Noah v Shuba and Another Case Summary [1991] F.S.R.

14 Summary of the facts: [Noah was a doctor who worked for the Public Health Laboratory Scheme (PHLS). He wrote a book called A Guide to Hygienic Skin Piercing. It was the practice at that time for PHLS employees to retain copyright in works written by them. The book also showed that Noah was the author and owner of copyright. In December 1985 Noah sent Shuba a section of his book. He sent it along with a copyright notice. In June 1986 Shuba delivered a lecture in which he quoted verbatim Dr. Noahs procedure for hair electrolysis. Shuba also sent a typed report of the lecture to a magazine for publication. The report included two substantial extracts from Dr. Noahs book and a short passage which was attributed to Dr. Noah but not written by him, which gave the impression that Noah endorsed Shubas views. Dr. Noah claimed damages for copyright infringement and additional damages.] [What was held in the case: 1. Dr. Noah did not write the book in the course of his employment. 2. There was in any event an implied term in his contact that the Dr. Noah was entitled to retain the copyright in works written by him during the course of his employment. 3. Consent given by Dr. Noah to include in the lecture sections of the book did not constitute a license for them to be used in the article he (Shuba) wrote for the magazine. 4. Two sentences not written by Dr. Noah had been falsely attributed to him.] In the course of employment: The contention that Dr. Noah was not the owner of the copyright in the Guide was based on section 4(4) of the Copyright Act 1956 which provides that where: . . . a work is made in the course of the author's employment by another person under a contract of service . . . that other person shall be entitled to any copyright subsisting in the work . . . Mummery J: Before going to the evidence on the terms of Dr. Noah's contract of service and of the circumstances in which he wrote the Guide, it is important to note that the effect of section 20(2) of the Copyright Act 1956 is to presume that, as Dr. Noah's name appeared as author of the Guide on the copies of it as published, he is presumed, unless the contrary is proved, not only to be the author of the work but also to have made it in circumstances not falling within section 4(4). The burden of proof is, therefore, on Mr. Shuba to establish that the Guide was made by Dr. Noah in the course of his employment by PHLS.

[Dr. Noah discussed the work with his colleagues, made use of the PHLS library and had the manuscript typed up by his secretary. Dr. Noah had used PHLS notepaper in order to send out

letters to those from whom he solicited comments and views before settling on the final version of the Guide. In addition the guide was published by the PHLS at its own expense.] But Mummery J held: I have not been persuaded by these points that Mr. Shuba has discharged the burden of proving that Dr. Noah made the Guide in the course of his employment. Reasons given by Mummery J: Dr. Noah's position is very similar to that of the accountant in Stevenson Jordan and Harrison Limited v. McDonald & Evans [1952] 1 T.L.R. 101 in relation to copyright in lectures delivered by the accountant author who was employed under a contract of service. It was held that the provisions of the Copyright Act 1911 equivalent to section 4(4) did not apply. At page 111 Denning L.J. pointed out that it had to be remembered that a man employed under a contract of service may sometimes perform services outside the contract. He gave the instance of a doctor on the staff of a hospital or the master on the staff of a school employed under a contract of service giving lectures or lessons orally to students. He expressed the view that if, for his own convenience, he put the lectures into writing then his written work was not done under the contract of service. It might be a useful accessory to his contracted work, but it was not part of it and the copyright vested in him and not in his employers. Morris L.J. also pointed out at page 113 that, even though the employer in that case paid the expenses of the lecturer incurred in the delivery of a lecture and was prepared to type the lectures as written by any lecturer and even though it would not have been improper for that lecturer to have prepared his lecture in the company's time and used material obtained from its library, it had not been shown that the accountant could have been ordered to write or deliver the lectures or that it was part of his duty to write or deliver them. In those circumstances the lectures were not written in the course of his employment.

[An important factor that influenced this decision was that Dr. Noah had written the draft at home in the evenings and at weekends. Ultimately the test seems to be whether writing the book was an act that fell within the scope of the tasks he was employed to carry out.] Note: merely doing something outside work time with ones own equipment does not mean it will fall outside the scope of employment. This can be seen in Missing Link Software v Magee where an employee wrote software in his own time with his own equipment but it fell within the scope of tasks he was employed to do. Agreement to the Contrary Mummery J also held: Although that conclusion is sufficient to dispose of the issue on ownership of copyright, I should add that, even if I had found that the Guide had been written by Dr. Noah in the course of his employment, I would have found on the evidence before me that there was an implied term of his contract of service excluding the operation of the statutory rule in section

4(4) vesting the copyright in the work so made in the employer PHLS. Evidence was given by Dr. Noah and also by Dr. Christine Miller, who was a consultant epidemiologist at PHLS from 1967 to 1987 and the author of numerous publications on vaccination, that it had for long been the practice at PHLS for employees there to retain the copyright in work written by them, usually in the form of articles, in the course of their employment there. If, for example, the articles were published in learned journals, it was the author of the article and not the PHLS who, at the insistence of most learned journals, assigned the copyright to the publishers of the journal in question. At no relevant time has the copyright in those articles been claimed by PHLS. It has acquiesced in a practice under which that copyright was retained and then assigned by the employee authors. The position of the PHLS in relation to this case is consistent with that practice. It has accepted that the copyright in the Guide is vested in Dr. Noah. In my judgment, this longstanding practice is sufficient material from which I can and do imply that it was a term of Dr. Noah's appointment as consultant that he should be entitled to retain the copyright in works written by him in the course of his employment.
[The 1988 Act provides, as did the 1956 and 1911 Acts, that these employment provisions are subject to any agreement to the contrary. The agreement must have been made before the work came into existence. Such a term may be express, whether in writing or oral, or implied, for example, as a result of a long-standing practice adopted by an employer whereby the employee retains the copyright. The agreement must be one such that (a) notwithstanding the existence of a contract of employment, the title to works created during its course should not vest in the employer, and (b) it is legally effective. Generally, it will no doubt be hard for an employee to establish such an implied term. The normal inference from employment and payment will be that copyright should belong to the employer.]

Licence Assigning Copyright Mummery J It is not necessary that the consent of Dr. Noah should be given in writing or even in an express oral form. Consent to do an act that would otherwise be an infringement of copyright may be inferred from all the circumstances of the case. In any event, even if Mr. Shuba had established on the evidence that Dr. Noah approved the contents of the memorandum and had either expressly or impliedly consented to the reproduction of extracts from his Guide in the memorandum, that would not, in my judgment, have constituted a licence or consent to reproduce those passages in the article published in Health & Beauty Salon. In relation to the defence of licence or consent it is always important to bear in mind that the person raising the defence must establish not only the existence of the licence or consent, but also its extent. Mr. Shuba has not adduced any evidence that any licence or consent given by Dr. Noah at the meeting on 14 May 1986 extended to the infringing act committed by him. The infringing act committed by him was the authorisation of the publication of an article in the magazine reproducing extracts from Dr. Noah's Guide.