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Attorney General v.

Guardian Newspapers (1990)


Summary: Wright worked at M.I.5 as a senior counter-espionage officer. Throughout his
20 or so years of service, he had gained many information regarding the security of his
country. When he resigned, he wrote his memoir called Spycatcher. This was published
in various countries. Britains Attorney General filed an action to enjoin the publishing
thereof. Meanwhile, 3 newspapers published certain articles regarding said book. As
such, they filed a case against them for breach of confidentiality.
Facts:
For 20 years, Peter Wright was employed in a senior capacity by the counter-espionage
branch of the British Security Service known as M.I.5. In that capacity he acquired
knowledge of a great many matters of prime importance to the security of the
country. Following his retirement from the service he went to live in Australia and later
formed the intention of writing and publishing a book of memoirs describing his
experiences in the service.
The Attorney-General, in learning of the intended publication of the book, instituted an
injunction to restrain the publication in Australia (Oct 1987) and the US (July 1987).
However, this did not prosper. As such, the book Spycatcher was published.
Thereafter, it was published in Canada, Ireland, etc. Thus, the contents of the book have
been disseminated word wide and anyone in this country who is interested can obtain a
copy without undue difficulty.
In 1986, Observer and The Guardian published articles on the forthcoming hearing in
Australia. While on July 1987, The Sunday Times published the first extract of an
indented serialisation of Spycatcher.
Issue:
(1) Whether the Observer and The Guardian were in breach of their duty of
confidentiality. NOT LIABLE
(2) Whether Sunday Times was in breach of their duty of confidentiality. LIABLE
Held:
The law has long recognised that an obligation of confidence can arise out of particular
relationships. Examples are the relationships of doctor and patient, priest and penitent,
solicitor and client, banker and customer. The obligation may be imposed by an express
or implied term in a contract but it may also exist independently of any contract on the
basis of an independent equitable principle of confidence.
In some instances disclosure of confidential information entrusted to a servant of
the Crown may result in a financial loss to the public. In other instances such
disclosure may tend to harm the public interest by impeding the efficient
attainment of proper governmental ends, and the revelation of defence or intelligence
secrets certainly falls into that category.
The Crown, however, as representing the nation as a whole, has no private life or
personal feelings capable of being hurt by the disclosure of confidential
information. In so far as the Crown acts to prevent such disclosure or to seek redress for
it on confidentiality grounds, it must necessarily be in a position to show that the

disclosure is likely to damage or has damaged the public interest. A communication


about some aspect of government activity which does no harm to the interests of the
nation cannot, even where the original disclosure has been made in breach of
confidence, be restrained on the ground of a nebulous equitable duty of conscience
serving no useful practical purpose.
The court will not prevent the publication of information which merely throws light on
the past workings of government, even if it be not public property, so long as it does not
prejudice the community in other respects. Then disclosure will itself serve the public
interest in keeping the community informed and in promoting discussion of public
affairs. If, however, it appears that disclosure will be inimical to the public interest
because national security, relations with foreign countries or the ordinary business of
government will be prejudiced, disclosure will be restrained.
The work of a member of M.I.5 and the information which he acquires in the course of
that work must necessarily be secret and confidential and be kept secret and
confidential by him. There is no room for discrimination between secrets of greater or
lesser importance, nor any room for close examination of the precise manner in which
revelation of any particular matter may prejudice the national interest.
I am of the opinion that the reports and comments proposed by 'The Guardian" and the
"Observer" would not be harmful to the public interest, nor would the continued
serialisation by 'The Sunday Times." The first two of these newspapers wish to report
and comment upon the substance of the allegations made in Spycatcher. They say that
they have no intention of serialising it.
On the other hand, Sunday Times, for their part, wish to complete their serialisation of
Spycatcher. They well know that the material was confidential in character and had not
as a whole been previously published anywhere. The purpose of "The Sunday Times"
was of course to steal a march on the American publication so as to be the first to
reveal, for its own profit, the confidential material.
Sunday Times should be held liable to account to the Crown for profits made from
past and future serialisation of Spycatcher. An account of profits made through breach
of confidence is a recognised form of remedy available to a claimant

Exxon Corporation v. Exxon Insurance Consultants Ltd. (San Pedro)


Doctrine:
This is not to suggest that a word which is used as a title can as a matter of law, never in
any circumstances be the subject of copyright. Such a word would, however, have to
have qualities or characteristics in itself, if such a thing is possible, which would justify
its recognition as an original literary work rather than merely as an invented word.
Facts:
Prior to 1970, the first plaintiff (Standard Oil Co.) set up a committee to devise and select
a new name and trade mark for itself and which could also be used by overseas
associates and subsidiary companies when appropriate. 3 basic conditions must be
satisfied in the new name:

1) Capable of being readily identified with the first plaintiff and its associates or
subsidiary companies, their goods & services;
2) Was invented and was devoid of any meaning in English or in any other language
spoken in any place in which the goods and/or services of the first plaintiff and/or
its associates and/or subsidiary companies were marketed or likely to be
marketed;
3) Was short, distinctive and easily memorized.
After careful research and testing the word Exxon came to be. So the company,
Standard Oil Co. was changed to Exxon. Soon after, the 3 associates (licensees) adapted
Exxon in their name also. All 4 contributed money for its US & UK promotion of their
diverse business groups and services. Further, the plaintiffs have acquired a substantial
multinational business reputation and goodwill in the name Exxon amongst relevant
trade and public in the US & UK.
Plaintiffs Exxon Corp., Esso Petroleum, Exxon Ltd. and Exxon Intl claimed copyright in
an invented word Exxon which formed part of their corporate names, as being
original literary work entitled to copyright protection. Another company, Exxon
Insurance (EIC) wanted to use the same name but the 5 companies have agreed that
Exxon Insurance (EIC) will no longer use the name Exxon and the 4 will pay EIC upon
showing that it has changed its name in the certificate of incorporation, but EIC breached
their contract.
They sought to enjoin the 5th company, Exxon Insurance, from using Exxon or any
similarly confusing name so as to pass of its business goods, services as those of the 4
plaintiff or be associated with them. EIC was without license or consent. During hearing
only plaintiffs were represented. The court held that if the plaintiffs argument is right,
all invented words which might be registrable as trademarks could be argued to be the
subject of copyright whether they were registered or not. This was held to be
far-reaching.
Issue:
Whether the word Exxon, a single invented word where time & work was expended, is
an original literary work falling within the provisions of section 2(1) of the Copyright Act
1956? NO!
Held:
Exxon is not copyrightable.
The defense of the plaintiff in dissecting the word original literary work is absurd.
According to them it is obviously a work due to the efforts and research invented in
coming up with it, its original because they invented it and the fact that it is a form
composed of letters makes it literary also, as a conclusion in joining all 3 words it
qualifies as such. Although the size of a literary work is immaterial, a literary work is
intended to afford either information or instruction, or pleasure, in the form of literary
enjoyment, no such enjoyment or instruction can be derived from Exxon as a word st
anding alone.
Under the Copyright Act 1842 which protected books, many things which had no
pretensions to literary style acquired copyright. The term literary work refers to
written or printed matter, irrespective if the quality or style is high. The word literary
is used in a sense somewhat similar to the use of literature in political or electioneering
literature and refers to written or printed matter. The word original does not demand
inventive thought, but only that it originated from the author. So to consider a work
original, it is wrong to start by considering individual parts as done by petitioners but

must be taken as a whole.


Exxon is an invented word with no meaning and suggests nothing in itself. To give
substance and meaning, it must be accompanied by other words or used in a particular
context or juxtaposition. When used together with the companies or their goods and
services it gives a meaning or quality or origin. It is not in itself a title or distinguishing
name and only takes on meaning or significance when used with other words in
association. The mere fact of research and expense in the creation of the word Exxon
using the above 3 guidelines does not in itself qualify it to be an original literary work. It
is in fact an invented word with no meaning, which is the typical subject for trade mark
registration, and with adequate user, is capable of becoming, if it has not already
become, distinctive of plaintiffs and their goods at common law. It is not itself a title or
distinguishing name and only takes meaning or significance when actually used with
other words.
This is not to suggest that a word which is used as a title can as a matter of law, never in
any circumstances be the subject of copyright. Such a word would, however, have to
have qualities or characteristics in itself, if such a thing is possible, which would justify
its recognition as an original literary work rather than merely as an invented word.
Note: Exxons purpose was its downfall since the purpose of the name was primarily to
serve as a corporate name easy to remember,etc (read the 3 guidelines above) so it is
inconsistent with the purpose of a literary work. Here the court after stating numerous
arguments for both sides found that typically there is no copyright in a name, invented
or otherwise, and that a trade mark can only be infringed when there the infringing
party shares part of the market segment. The fact that Exxon insurance uses the word
Exxon in a field that is totally in a different market from Exxon Corp. (Petroleum
business), it in no way dilutes the brand name nor infringe on its trademark.

Falwell v Penthouse

Summary: Falwell was interviewed by two freelance journalists. Despite voicing his dislike
about Penthouse magazine, the results of the interview were published in the magazine
anyway. Falwell filed a case against Penthouse and the journalists for copyright infringement in
relation to his answers given in the interview. The US District Court of Virginia found in favor of
Penthouse.
Doctrine: Thoughts or opinions are too general and abstract to rise to the level of a literary or
intellectual creation that may enjoy the protection of copyright.
Facts: The Reverend Jerry Falwell (Falwell) was an evangelical fundamentalist minister who
appeared in weekly broadcasted sermons (also known as a TELEVANGELIST). Penthouse
magazine (Penthouse) is in the business of publishing adult-related material (explicit sexual
content! Or so Ive been told). Two freelance journalists Andrew Duncan and Sasthi Brata
conducted a sit down interview with Falwell.
The results of the interview appeared in Penthouse. According to Falwell, he gave
specific oral conditions to the journalists prior to the interviews publication. In short, Falwell
did not approve of Penthouse and that it was inconsistent with his ministry (obviously). Falwell

filed cases for defamation, invasion of privacy, injuring his trade, commercializing his
personality, and most important to us, copyright infringement.
Issue: Whether or not Falwell is protected by common law copyright, in relation to the results of
the interview
Held: NO.
The District Court held that Falwell was not subject to copyright protection. His claim is
based on this common law finding spoken word is a medium that can be afforded copyright
protection. In short, Falwell posits that every utterance he makes is a valuable property right.
The District Court found that Falwells claim is not founded on any principle of law, nor
is it analogous to any circumstances decided by the courts. To accede to Falwells claim would
have been to defeat the freedom of speech and of the press. The Virginia District Court
explained:
Plaintiff cannot seriously contend that each of his responses in
the published interview setting forth his ideas and opinions is a
product of his intellectual labors which should be recognized as a
literary or even intellectual creation. There is nothing concrete
which distinguishes his particular expression of his ideas from
the ordinary. Although it is sometimes difficult to differentiate, the
expression of ideas is a separate and distinct concept from that
of the ideas themselves.
Xxx
However different or unique plaintiffs thoughts or opinions may
be, the expression of those opinions or thoughts is too general
and abstract to rise to the level of a literary or intellectual creation
that may enjoy the protection of copyright. Although the general
subject matter of the interview may have been outlined in the
reporters minds prior to their meeting with the plaintiff, the actual
dialogue, including the unprepared responses of plaintiff, was
spontaneous and proceeded in a question and answer format.
There is no defined segregation, either by design or by
implication of any of plaintiffs expressions of his thoughts and
opinions on the subjects discussed which would aid in identifying
plaintiffs purported copyrighted material.
Drawing once again from the dichotomy of idea and expression, the Court explained
that although Falwell may be sharing his own ideas, the manner in which they are expressed is
the subject of copyright. There being no semblance of creativity or intellectual creation in hi
statements, as well as no way to determine which of his statements was the copyrightable
material, the Court could not possibly find in his favor.
In addition, it should be noted that the Court characterized the interview as public, such
as press conferences. It was NOT a private conversation. Falwell knew that it was public in
nature, in that it would used for publication. The Court added that Falwell may proceed against
the journalists for breach of contract, but not for copyright infringement, as that would violate
the freedom of speech and of the press.

Bibbero Systems, Inc. v. Colwell Systems, Inc. (1990)


Summary
The Plaintiff designed and marketed for blank forms, known as superbills, which doctors use
to obtain reimbursements from insurance companies. Later, the Defendants catalogue
displayed a superbill form identical to the Plaintiffs form, except the typefaces, shading, and
sample information were different. The Plaintiff, thus, submitted a copyright application to
register the superbill form with the Copyright Office, which was granted. Plaintiff demanded
that the Defendant stop infringing its copyright. The Defendant didnt case so the Plaintiff
brought suit for a preliminary injunction.
The district court granted summary judgment to the Defendant. On appeal, the Plaintiff argues
the "superbill" form conveys information and therefore is copyrightable. First, the Plaintiff cited
the well-established exception asserting when copyrightable text on the blank forms has
explanatory force, the blank form becomes copyrightable. Additionally, the Plaintiff cited
Norton Printing Co. v. Augustana Hospital and Harcourt Brace & World, Inc. v. Graphic Controls
as support to the claim that the "superbill" form is copyrightable.
The court concluded the well-established exception is inapplicable. The court reasoned,
because the form contained simple instructions for the patient to follow, and did not carry the
same instructional effect presented in precedent cases, the "superbill" form did not qualify as
an exception. Since doctors do not look to the [Plaintiffs] superbill in diagnosing or treating
patients. The 'superbill' is simply a blank form, which gives doctors a convenient method for
recording services performed.
The court rejected the cases cited as defense because they were highly criticized anyway, and
they refused to allow those doctrines in this case.
Therefore, the "superbill" form is an uncopyrightable blank form for recording information.

Doctrines:
The following are examples of works not subject to copyright:

Blank forms, such as time cards, graph paper, account books, diaries, bank checks,
scorecards, address books, report forms, order forms and the like, which are designed
for recording information and do not in themselves convey information.

Exception: Where a work consists of text integrated with blank forms, the forms have
explanatory force because of the accompanying copyrightable textual material.
Facts:
Bibbero designs and markets blank forms known as superbills which doctors use to obtain

reimbursement from insurance companies.


The superbills contain simple instructions to the patient for filing insurance
claims;
Boxes for patient information;
simple clauses assigning insurance benefits to the doctor and authorizing
release of patient
information; and
two lengthy checklists for the doctor to indicate the diagnosis and any services
performed, as well as the applicable fees.
The forms are personalized to include the doctors name and address, the
nature of the doctors practice, and the hospitals or clinics at which services
may be performed.
Bibbero had 25 to 30 sample superbills in its catalog and claims copyright in each of these
forms, as well as those
designed by its customers. The superbills contain a notice of copyright.
In its fall 1987 catalog, Colwell featured a superbill which was nearly identical to
Bibberos superbill, except for slightly different typefaces and shading.
When Bibbero saw Colwells catalog, it submitted an application to register its superbill with
the Copyright Office, and a certificate of copyright was issued.
Upon the issuance of the certificate, Bibbero demanded that Colwell to cease infringing
upon its copyright in the superbill.
Because Colwell refused to comply, Bibbero instituted a case in the district court. The
district court held that Bibberos superbill is a blank form which, under the doctrine of
Baker v. Selden (the blank account books case, dental taxonomy), is not copyrightable.
Issues:
1. Whether Bibberos blank form superbill is copyrightable
Held/Ratio:
NO. As a general rule, blank forms, such as :
time cards, graph paper, account books, diaries, bank checks, scorecards, address
books, report forms, order forms and the like,
which are designed for recording information and do not in themselves convey information, are
not copyrightable. There is, however, a well-established exception where text is integrated with
blank forms (but was shown inapplicable in this instance).

Bibbero contends that its superbill is within the exception. It stated that the
superbill is a form which conveys information, that it contains concise

descriptions of medical procedures and diagnoses.


Moreover, its copy of certificate of copyright registration is a prima facie
evidence of copyrightability.

Bibbero also invoked the doctrines in the cases of Norton Printing Co. v. Augustana Hospital
and Harcourt Brace & World, Inc. v. Graphic Courts Corp.
In Norton Printing, the court found copyrightable a medical laboratory test form
containing a checklist of possible laboratory tests,
in and Harcourt Brace & World, the court held that test answer sheets were
copyrightable because these were designed to guide the students in recording
his answer and thus conveyed information.
The use of the two cases should be disapproved because that rule has been strongly
criticized and would appear to be without foundation. Also, to the extent that such
cases contravene the principles established in Baker, the court will not follow it.

The purpose of Bibberos superbill is to record information.


Until the superbill is filled out, it conveys no information about the patient, the
patients diagnosis, or the patients treatment.
It is simply a blank form which gives doctors a convenient method for recording
services performed.
The fact that there is a great deal of printing on the face of the form - because
there are many possible diagnoses and treatments - does not make the form
any less blank.
Also, though it includes some simple instructions to the patient on how to file an
insurance claim, these instructions are far too simple to be copyrightable as text
in and of themselves (unlike in the case of Williams v. Williams were the account
books had several pages of instructions on the use of the forms and advice on
the successful management of a service station).