LEGALLY SPEAKING

Paul Sugden on Copyright Infringement

What is a substantial part of a work for purpose of defining copyright infringement? - Versus 'allowable use'.

The basic principle of copyright law is that the whole work need not be copied for there to be an infringement of copyright in the work. To be an infringement of copyright, a substantial part of the work needs to be taken because anything less than a substantial part is considered allowable use. What comprises a substantial part is the piece of wearable art, what precisely is 'substantial part of the work'?

This issue has been set out on the basis of the fact of each case because the Copyright Act does not itself define the word substantial nor the word part, so the definitions must come from the examination of court judgments where works have been compared. This means there are no absolutes as to percentage parts of a work.

The public perception that changing a textile design by 10% means that a substantial part has not been taken is false, as the issue of substantial part looks both at the issue of quantity - and quality. This has been examined in numerous cases, and in Hawkes & Son (London) Ltd v Paramount Film Service Ltd the court held that taking the principle air from the "Colonel Bogey" work meant the copyright in the work had been infringed. In the decision, Joy Music Ltd v Sunday Pictorial Newspaper Ltd, Justice Nair ruled that it is a question of fact that is to be determined, which is not achieved solely through a process of arithmetic. Substantial part has been interpreted to mean: has the essential feature or vital or material part of the work been copied? This vital or essential part of the work may only be a small fraction of the total work.

In the case of a textile design, the essential feature of the design may be the central focus of a repeat, or a central grouping in the work. In the case of Milpurru v Indofern Pty Ltd, the court found that with carpets, the fact that the feature of a snake had been used for a border in the infringing item did constitute a substantial part as it was the central theme of the original work.

The issue of a substantial part as a question of fact is tempered however by the reality that the simpler or more commonplace the work, the more exactly (or closely) the reproduction will have to represent or resemble it for copyright to exist. An example: if a black and white cow-spots printed fabric design was copied, then the actual spots and positioning of them would have to be copied for it to be an infringement because the issue of cow spots is a simple idea that can be expressed by others drawing their own cow spots. Copyright will not protect the idea of cow spots, only the actual cow spots made by the textile artist.

Readers are referred to issue #52 (1998) of this magazine where my column, "Design is Worth Payment" was about the plight of Samantha Fermo whose prize winning design for a carpet turned up as an actual carpet in the Cairns International Airport Terminal with no payment or acknowledgement to Fermo. In this case, the central panel of the carpet used her design very clearly, although a different coordinating motif was used for the border. I noted in that article that, "The addition of a border does not prevent this from being an infringing copy of Samantha's form of expression, which had been substantially reproduced and the essential items that made up the design were copied."

The ultimate issue with substantial part is that if you can recognise the original work in the copy, then a substantial part will have been taken. So the message is Be creative, but not a copyist.