A newspaper has failed in its attempt to rely on “Fair Dealing” as a defence for its use in comparative advertising of the copyright logos and front cover of a rival publication. News Group Newspapers, publishers of The Sun, were found liable for copyright infringement (as well as a related breach of contract) for copying the cover of IPC Media’s What’s on TV magazine.
TV Mag is a free listings magazine available through The Sun that re-launched itself last July using a half-page ad in the style of an “Editor’s Letter” and depicting a recent cover of What’s on TV. The text of the ad compared the prices and number of pages of the listings magazines and, as such, News Group argued that their re-printing of the front cover of What’s on TV constituted Fair Dealing for the purpose of criticism or review and/or reporting current events. News Group further argued that this use of its rival’s copyright material in the context of comparative advertising was not only permissible but indeed promoted the public good (as identified in the Comparative Advertising Directive) of ensuring that consumers were informed of opportunities.
News Group cited the case of ProSieben Media, in which the parameters of Fair Dealing were widened with the words “for the purpose of” being held to be equivalent to “in the context of” or “as part of an exercise in”. The terms “criticism or review” and “reporting of current events” were interpreted as “expressions of wide and indefinite scope” which should be interpreted liberally.
The court in this case was generous in allowing that News Group’s reproduction of IPC’s copyright work was, at least arguably, “for the purpose of criticism and review” although, the judge commented, “the tongue has to perform an act of no small intimacy with the cheek” in making that argument.
Nevertheless, The Sun had gone too far. The court held that “all that needed to be done to make the desired criticism of [the] product was to identify it [and] that could readily be done without infringing [IPC’s] copyright”. News Group had argued that they were merely using the copyright to identify the product, but the court found that News Group was taking advantage of IPC’s copyright: “The claimant has devoted its skill and labour in the production of literary and artistic work for the very purpose of identifying its product for its own commercial purposes. In copying the work to advance its own competing commercial purposes at the expense of the claimants, the defendant was taking advantage of the fact that the claimant’s work has created that literary/artistic identify for its product.”
News Group also suggested that this sort of use of copyright material was acceptable in contemporary newspaper culture, but the judge was not convinced, noting that News Group had failed to produce even one example of such a usage.
News Group was also found to be in breach of a contract which it had entered into with IPC in 1998. That contract was a settlement agreement arising from an almost identical situation in which the same comparative advertising tactic had been used and News Group had subsequently paid £8,000 and undertaken not to do it again.
Subject to any successful appeal by News Group, it seems that the position regarding copyright law and comparative advertising remains as it was in 1998, when IPC won a very similar case against the Sunday Mirror. Advertisers can use competitors’ registered trade marks, but must be careful to avoid infringing the copyright in competitors’ logos and other artistic material.