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England and Wales Court of Appeal (Civil Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Hodgens v Beckingham [2003] EWCA Civ 143 (19 February 2003) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2003/143.html Cite as: [2003] EWCA Civ 143 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM HIGH COURT
CHANCERY DIVISION
(Mr Christopher Floyd QC
sitting as a Deputy High Court Judge)
Strand, London, WC2A 2LL | ||
B e f o r e :
LORD JUSTICE LAWS
and
LORD JUSTICE JONATHAN PARKER
____________________
ROBERT HODGENS | Appellant | |
- and - | ||
ROBERT JAMES BECKINGHAM | Respondent |
____________________
Smith Bernal Wordwave Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Ian Peacock (instructed by Davenport Lyons) for the Respondent
____________________
AS APPROVED BY THE COURT
Crown Copyright ©
Lord Justice Jonathan Parker LJ :
THE FACTUAL BACKGROUND
THE JUDGMENT
The section 11(3) issue
"In this Act "work of joint authorship" means a work produced by the collaboration of two or more authors in which the contribution of each author is not separate from the contribution of the other author or authors."
"47. Mr Engelman argued that there is, in law, a fourth requirement before a work can be regarded as a work of joint authorship, namely a joint intention to create a joint work. In support he relied principally on a decision of Mr Justice Cohen in the Supreme Court of British Columbia in Darryl Neudorf v Network Expressions [1999] RPC 935. After an extensive review of authority in Canada, the United States and England, Cohen J said at pp 962-3:
"In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows:
i) Did the plaintiff contribute significant original expression to the songs? If yes,
ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes,
iii) Did each of the plaintiff and Ms McLachlan intend the other to be a joint author of the song?"
48. I am afraid that, for my part, I cannot see any basis in the English cases, or in the statutory definition which I am bound to apply, for the importation of this third requirement. Plainly, for there to be a collaboration at all, the parties must have a common design to produce the work. Those authors who reach the threshold of a "significant and original" contribution in furtherance of that common design should, in my view, be entitled to call themselves a co-author. Any other test introduces undesirable problems of proof for which I can see no basis in the Act.
49. Applying those principles to the facts as I have found them in the present case, I hold that the Bluebells' version was created by a collaboration between Mr Hodgens and Mr Valentino in furtherance of a common design. Whilst accepting that it was ultimately a question of fact and degree for the Court, both sides called expert evidence on the question of whether the violin part made a significant and original contribution to the Bluebells' version of Young at Heart. Both experts thought the violin riff memorable and catchy. Mr Chandler, a musicologist and copyright consultant called by the Claimant thought the violin part more memorable than anything else in the song. Mr Protheroe, the expert called by Mr Hodgens, was inclined to accord the chorus rather more importance, yet nevertheless described the violin part as a reasonably striking feature of the work. In the end the dispute between them came down to whether the violin part made its contribution largely or wholly because of its prominence at the beginning of the work.
50. Having heard the piece played, and reflected on the evidence given, I conclude that the violin part does make a significant and original contribution of the right kind of skill and labour to the Bluebells' version of the song. Thus Mr Valentino is a joint author of the copyright in that work."
The estoppel issue
"59. When the song became a hit again in 1993 there was a further conversation between Valentino and Hodgens at the Top of the Pops studio. Mr Hodgens said to Mr Valentino that he would "see him alright". Mr Valentino replied that if he did not do so he would "go to law this time". Mr Hodgens repeated his assurance to Mr Valentino's then girlfriend, now his wife Anne Marie, at a party in a restaurant after one of the TOTP [Top of the Pops] performances. At a further TOTP in December 1993 Valentino asked Hodgens about his earlier assurance, to which Mr Hodgens replied that he had not yet received any royalties.
60. Nothing further occurred, apart from a few telephone messages from Mr Valentino which went unanswered, until 1997. In November 1997 there was a telephone conversation between Mr Valentino and Mr Hodgens. Although there was some dispute about what was said, it is clear that Mr Valentino made his intention to claim royalties on the basis of his contribution to the song plain.
61. Claims were put in writing to certain of the defendants (not including Mr Hodgens) in January 1998. A formal letter before action to Mr Hodgens was sent in February 1999."
"63. Was Mr Valentino estopped from taking this course? The approach applicable in this type of case is that set out by Oliver LJ in Taylor's Fashions Ltd v Liverpool Victoria Trustees [1982] 1 QB 133 at 151H-152A where he said:
"Furthermore the more recent cases indicate, in my judgment, that the application of the Ramsden v Dyson L.R. 1 H.L.129 principle – whether you call it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement is really immaterial – requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly, or unknowingly, he has allowed or encouraged another to assume to his detriment than to enquiring whether the circumstances can be fitted within the confines of some preconceived formula serving as a universal yardstick for every form of unconscionable behaviour."
64. In the first period of the song's success, from 1984, Mr Valentino certainly knowingly permitted The Bluebells to assume that he would make no claim to a share in the royalty income they were receiving from exploitation of the work. If matters had rested there, and if it were necessary to do so, I would have no hesitation in holding that any attempt by Mr Valentino to change his position in relation to those royalties, brought after the passage of so many years, would be unconscionable. However the Claimant recognises that he has no such claim, having impliedly licensed all such use. Any claim to such royalty income would in any event now be statute barred.
65. Very different considerations apply in relation to the position in 1993. I see no reason why Mr Valentino should not be entitled to say at that stage "I have let you have free use of my composition until now. But this new success is different, and I claim my share of it". I believe that Mr Hodgens recognised this in 1993 and his statements to Mr Valentino and his then girlfriend were a recognition by him of the fairness of such an approach. Subject to the two special points pleaded, which I consider later, I do not think it was unconscionable for Mr Valentino to revoke the licence in 1993.
66. Notwithstanding that finding, I should also consider whether it is now unconscionable for Mr Valentino to assert his rights by this action first intimated some 6 years after the TOTP performances. Throughout that period Mr Hodgens has been aware of the claim being made by Mr Valentino. Without wishing to detract from the quality of the composition, the success of the record in this period was due to its somewhat fortuitous use in the Volkswagen commercial. This is not, therefore, a case like Godfrey v Lees [1995] EMLR 307 where the group had laboured long and hard to ensure the song's success: see pages 332-335. The Bluebells had broken up in 1986. Furthermore the receipts since 1993 cannot be said to have been made, at least as far as Mr Hodgens is concerned, in the belief that no claim to those monies would ever be made by Mr Valentino. In short, I do not think that Mr Valentino can be said to have changed his position in relation to his entitlement to royalties in this second period.
67. As originally pleaded, the First Defendant's allegation of estoppel did not rely on any specific detriment alleged to have been the result of reliance on the Claimant's inactivity. Moreover no evidence was directed to this topic in Mr Hodgens' or any other witness statement. On the second day of the trial, in the course of Mr Hodgens' evidence, Mr Engelman informed me that he was about to lead such evidence. Mr Peacock reserved his position in relation to the evidence until he had seen the facts relied on set out in a pleading, which was delivered the following morning. I allowed Mr Engelman to amend his pleadings to add certain allegations, but refused permission for him to rely on an allegation that all the royalty income from Young at Heart had been "spent". This seemed to me to raise a factual inquiry which could not sensibly be dealt with in a fair way at this trial.
68. The two further matters relied upon were these:
i) Firstly it was said that the failure to assert the rights had deprived Mr Hodgens of the opportunity of deleting the violin part from the recording altogether.
ii) Secondly it was said that the present assertion of Mr Valentino's rights will be harmful to Mr Hodgens' reputation as a songwriter. The argument runs as follows. Mr Hodgens' reputation is based in substantial measure on his writing of the music of Young at Heart. For a songwriter who has had one number one hit in the UK to be shown to have denied a co-author a credit on that song would be harmful to that reputation. It is unconscionable for Mr Valentino, having allowed Mr Hodgens and Ms Fahey to assert to the world at large that only they were responsible for the words and music of Young at Heart, now to change his position and assert his rights.
69. I am unimpressed by the first point. The window of opportunity for deleting the violin part was the narrow one between recording and release of the record. I doubt whether in fact, had Mr Valentino asserted his rights at that time, the group would have changed the violin part on the recording.
70. The second point was the subject of evidence. Mr Chandler, who was called by Mr Valentino, was of the view that to be found to have wrongly denied a co-author a credit to which he was entitled was not really harmful. Well known composers, such as George Harrison of the Beatles, had survived claims of piracy. Mr Protheroe thought that such a finding would be seriously harmful to a composer in his dealings with recording companies. No one wishes to be involved with someone who attracts copyright claims. I prefer Mr Protheroe's evidence which seems to me to accord more with common sense.
71. However, I do not think any of this makes it unconscionable for Mr Valentino to assert his rights in the way that he seeks to do in this action. His position is that he accepts that he has licensed the use of the work from 1984 to 1993. Thereafter he made his claim known to Mr Hodgens. In my judgment Mr Hodgens should then have accepted and settled his claim to a share of the new royalty stream. Had he done so there would have been no damage to Mr Hodgens' reputation. Mr Protheroe was inclined to accept that the damage of which he was speaking of was caused by the existence of litigation.
72. Accordingly these estoppel defences fail. I would only add that I have approached them on the basis of whether it is unconscionable for Mr Valentino to claim, through the mechanism of this action, a share in the royalties received since the 1993 revival. The Particulars of Claim also include a claim to an injunction. That seems to me to raise different and more difficult issues not specifically addressed in evidence or in argument, and I am not deciding those issues here."
THE ARGUMENTS
1.The delay in making the claim (around 9 years if the claim was first made in March 1993; almost 14 years if it was first made in November 1997).
2.The terms of the representations made by Mr Valentino in around 1984 to the effect that he would not make such a claim.
3.The fact that in first making his claim following the resurgence of the recording's popularity in 1993 Mr Valentino "jumped on the bandwagon".
4.The effect of the claim on Mr Hodgens' professional reputation.
5.The opportunity for excising the violin part from the recording had Mr Valentino asserted a claim to joint authorship prior to the release of the recording in mid-1984.
6.The judge's refusal to allow Mr Hodgens to lead evidence to the effect that he had spent the royalties which he had received pre-1993 in reliance on Mr Valentino's representations that he would not be making any claim to them.
7.By way of a new point, Mr Engelman informs us (there having been no investigation of the matter before the judge) that Mr Hodgens had warranted to publishers and other parties concerned in the exploitation of the recording that he was the sole owner of the copyright and had agreed to indemnify them against any claims by a third party for infringement of copyright.
CONCLUSIONS
Revocation of the implied licence
The estoppel issue
"Although I had not taken any action before, I would 'go to law' this time. I was not prepared to let him continue to make money for a second time out of something that I had written."
THE SECTION 11(3) ISSUE
"I fail to discover any evidence that there was any co-operation of the two in the design of this piece [a play], or in its execution, or in any improvements either in the plot or the general structure. …. If the plaintiff and the author had agreed together to rearrange the plot, and so to produce a more attractive piece out of the original materials, possibly that might have made them joint authors of the whole. So, if two persons undertake jointly to write a play, agreeing in the general outline and design, and sharing the labour of working it out, each would be contributing to the whole production, and they might be said to be joint authors of it. But, to constitute joint authorship, there must be a common design. Nothing of the sort appears here. The plaintiff made mere additions to a complete piece, which did not in themselves amount to a dramatic piece, but were intended only to make the play more attractive to the audience."
"… the creation of the intent to co-author requirement in Childress v. Taylor happened despite the statutory definition of joint authorship …, not because of it. The court looked beyond the language of the section and moved on to review policy considerations in the application of the section. In particular, the court could not accept that Congress intended to extend joint authorship to, for example, editors and researchers. It was for this reason that the court created the intent to co-author requirement."
Lord Justice Laws :
Lord Justice Ward :