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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Brooker& Anor v Fisher [2008] EWCA Civ 287 (04 April 2008) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2008/287.html Cite as: [2008] EMLR 13, [2008] EWCA Civ 287, [2008] Bus LR 1123, [2008] FSR 26 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INELLECTUAL PROPERTY
MR JUSTICE BLACKBURNE
HC05CO1374
Strand, London, WC2A 2LL |
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B e f o r e :
MR JUSTICE DAVID RICHARDS
and
SIR PAUL KENNEDY
____________________
GARY BROOKER![]() ONWARD MUSIC LIMITED |
Appellants |
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| - and - |
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| MATTHEW FISHER |
Respondent |
____________________
MR IAIN PURVIS QC and MR HUGO CUDDIGAN (instructed by Jens Hills & Co) for the Respondent
Hearing dates : 3rd & 4th October 2007
____________________
Crown Copyright ©
LORD JUSTICE MUMMERY:
Introductory summary
Gary Brooker
wrote the music and that the publishing and record company, to which he sold the rights, and its successor possessed and controlled the copyright. The registrations with the societies responsible for the collection of copyright royalties for performing rights and mechanical recording rights and the payments and distributions of royalties and fees have been made on the same shared and uncontested understanding.
Gary Brooker
and Onward Music Limited (the defendants). He claimed that he composed a significant part of the music, as recorded by the band in May 1967. A letter of 19 March 2004 from his solicitor to
Gary Brooker
's manager, Chris Cooke, mentioning a "writer's share" was followed a year later by his first clear assertion of a legal claim in the letter sent by his present solicitors to
Gary Brooker
on 14 April 2005. In the 38 years after the issue of the record Matthew Fisher played no part and had no say in the exploitation of the copyright in the music. He neither claimed nor received payment of any royalties earned from it. In the action he did not claim damages or an account of profits from the defendants for infringement of copyright by unauthorised use of the music before the commencement of the action. He confined his claim to declarations of the court as to his contribution to the music on the 1967 record, his joint interest in the copyright and the size of his copyright share. At the trial questions also arose about an implied licence for past exploitation by the defendants and the need to obtain his prior consent for exploitation after 31 May 2005. He made an unsuccessful application for an injunction.
Issues in appeal
Gary Brooker
on his own, recorded by him on a demonstration tape (a demo) and assigned by him to Essex Music Limited (Essex Music, the predecessor in title of the defendant Onward Music Limited) on 7 March 1967. This happened before Matthew Fisher could have made any contribution to the composition of the Work. Matthew Fisher does not claim any rights in music composed before he joined Procol Harum. His claim is to a joint interest in the copyright in the Work as an arrangement of the music previously composed by
Gary Brooker
. The arrangement was improvised during the course of the band's rehearsals for the record released on 12 May 1967.
Gary Brooker
's music on the demo tape did not provide the defendants with a defence to Matthew Fisher's claim that his subsequent contribution resulted in a jointly owned arrangement of
Gary Brooker
's original music. The judge held that the arrangement was a separate copyright work, in which Matthew Fisher had a joint interest with the defendants. His share was assessed at 40%. Blackburne J rejected the contention that Matthew Fisher had made an assignment, express or implied, of his joint interest in the copyright in the arrangement to Essex Music. Instead, he held that the defendants had an implied licence to exploit Matthew Fisher's interest in the copyright in the arrangement until the licence was terminated by him with effect from 31 May 2005.
Outline facts
Gary Brooker
was composing music in the mid-1960s. He was introduced to his future collaborator, Keith Reid, by a mutual friend,
Gary
Stevens, in about the middle of 1966. Keith Reid wrote the words for their songs.
Gary Brooker
wrote the music.
Gary
Stevens as project adviser, to form a band to play their songs. On 28 January 1967 they placed an advertisement in the "Melody Maker" magazine - "lead guitar, organist, bass wanted for new project." On 25 February 1967 Matthew Fisher placed an advertisement in "Melody Maker"- "Hammond Organist, harmony vocals, seeks pro. group."
Gary Brooker
was lead singer and pianist; Dave Knights, bass player; Ray Royer, guitarist; and Matthew Fisher, organist. A session drummer, Bill Eyden, was used for the recording sessions. A Management Agreement was made between the band and New Breed Management Limited (New Breed). It had no bearing on the copyright position.
Gary Brooker
had composed the music of "A Whiter Shade of Pale" around lyrics written by Keith Reid. From this point on I shall use the same definitions as were used by Blackburne J in his excellent judgment. The combined words written by Keith Reid and the music originally composed by
Gary Brooker
for "A Whiter Shade of Pale" will be called "the Song." This is to distinguish the Song from the arrangement of it performed by the band on the record, which Mr Fisher claims included his unacknowledged contribution to the arrangement of the music. The arrangement of the Song on the record will be called "the Work." This dispute is about the authorship of the Work, the ownership of the copyright in it and the exploitation of the copyright and entitlement to royalties earned after 31 May 2005.
Gary Brooker
made a demo tape of the Song with his vocals and piano accompaniment. Keith Reid took the demo tape to David Platz of Essex Music, who considered it to be a "certain hit."
Gary Brooker
and Keith Reid executed a written assignment of the copyright in the Song (and another song) to Essex Music Limited (Essex Music) in return for 50% of the publishing royalties and fees received from sheet music, and of mechanical royalties, synchronisation fees, performance fees and broadcasting fees. The rights acquired by Essex Music in the Song and in the sound recording of the Work were subsequently vested with effect from December 1991 in Onward Music Limited (Onward Music), the second defendant. Onward Music also owns the rights in the master recording, as released in May 1967, and the rights under the New Breed Agreement.
Gary Brooker
or Essex Music of any claim to an interest in the copyright in the Work or to royalties earned by the exploitation of it.
Gary Brooker
in a solicitor's letter in April 2005, is that he became a joint author of the Work and joint owner of the copyright in it by composing the distinctive 8 bar melody of the organ solo, including the variation during its second repetition. The judge agreed with the description of the organ solo as "significant and as hugely famous." He found that Matthew Fisher's organ solo is
"11. ….a distinctive and significant contribution to the overall composition and, quite obviously, the product of skill and labour on the part of the person who created it."
Blackburne J's judgment: overview
"42. Reviewing the evidence as a whole, it is abundantly clear to me that Mr Fisher's instrumental introduction (i.e. the organ solo as heard in the first eight bars of the Work and as repeated) is sufficiently different from what MrBrooker
had composed on the piano to qualify in law, and by a wide margin, as an original contribution to the Work. The result in law is that Mr Fisher qualifies to be regarded as a joint author of the Work and, subject to the points to which I shall next turn, to share in the ownership of the musical copyright in it."
Gary Brooker
, Essex Music and Onward Music. In particular, his claim was not defeated by an express or implied assignment to Essex Music of the copyright in the Work as an arrangement of the Song authorised by Essex Music.
Gary Brooker
's efforts in promoting Procol Harum's repertoire, including the Work, and in keeping it in the public eye for nearly 40 years; and (v) Matthew Fisher's long delay in asserting his claims.
"Mr Fisher sat back and permitted the two societies to account to the defendants for royalties in respect of the musical copyright in the Work for nearly 40 years."
Gary Brooker
when he was sent a letter before action in April 2005 and, in the case of Onward Music, when it was notified of the claim in May 2005. It is agreed that the revocation of the implied licence did not operate as a revocation of the 1967 Agreement between
Gary Brooker
and Essex Music and the copyright assignments made in it. Matthew Fisher was not a party to that agreement or to the express assignments made by it. The revocation did, however, terminate the implied licence of the defendants' exploitation of the Work. This meant that, after termination, unless the defendants obtained the prior consent of Matthew Fisher to the exploitation of the Work by third parties, they were liable for infringement of copyright and to an injunction against infringing it. It was, however, made clear to this court by Mr Ian Purvis QC, who appeared for Matthew Fisher, that he had no wish to interfere with the continued collection of royalties by the PRS or the MCPS, though he did wish to be paid his proper writer's share of the royalties in future.
Gary Brooker
.
Basic copyright points
(1) The case is essentially about title to copyright with an eye to control of the copyright in the future. This is unusual. Most copyright cases are about claims for compensation for past infringements of copyright and for injunctions preventing repetitions of infringements. The claim here is for declarations of rights in relation to a copyright that will not expire until much later this century. The declaratory nature of the relief sought and granted explains why the claims are not statute barred under the Limitation Acts of 1939 and 1980. It is common ground that the provisions of the Limitation Acts do not bar the declaratory relief claimed by Matthew Fisher. It is also common ground that, although the Copyright, Designs and Patents Act 1988 (the 1988 Act), like its predecessor the Copyright Act 1956, is silent on the question, the equitable defences of acquiescence, laches, delay and proprietary estoppel are potentially available to the defendants as grounds entitling the court to refuse to grant relief. It is clear that the declarations sought are not simply to establish the existence of Matthew Fisher's attribution and property rights. The declarations are the foundation for enforcement by the more drastic equitable remedy of an injunction restraining the defendants' future unauthorised exploitation of the Work, save on agreed terms.
(2) It is accepted by Matthew Fisher that the exploitation of the copyright in the Work in the period 1967 to 2005 did not infringe his copyright, as the defendants exploited the Work with his consent. There was an implied licence. He knew about the defendants' activities, but made no objection to them. Copyright is not infringed if the act restricted by the copyright is done with the licence of the copyright owner: section 16 (2) of the 1988 Act reproducing similar provisions in the Copyright Act 1956, which were in force for part of the relevant period. The licence may be in writing. It may be oral. It can be implied from conduct. It may be for a consideration or gratuitous, exclusive or non-exclusive, revocable or irrevocable, of limited duration and ambit or for the full term of copyright and embrace the entirety of its statutory scope.
(3) Copyright subsists as "a property right": section 1(1) of the 1988 Act. In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to the claimant as is available in respect of the infringement of any other property right: section 96(2) of the 1988 Act. Although the damages may be assessed by reference to the royalties which the copyright owner would have obtained under a hypothetical contractual licence, the copyright and damages awarded for infringement are distinct from royalties and fees earned by exploitation of the copyright under contractual licence terms. In general, there is no statutory right to the payment of royalties. Royalties are usually the consideration payable under a contract made between the copyright owner and the person who wishes to exploit one or more of the rights comprised in the copyright in a work.
(4) These distinctions between property rights and contractual rights are particularly relevant in this case, as the legal and practical consequences of the three declarations granted by the judge have not been explored by the judge or by the parties as fully as they could have been: for example, the purpose of the declaration of a joint interest in the copyright and of revocation of the implied licence in relation to Matthew Fisher's future control, by means of an injunction, over its exploitation by the defendants.
(5) Copyright law distinguishes between different descriptions of work in which copyright subsists: between, for example, a musical work and a sound recording of a musical work: section 1(1), 3(1) and 5(1) of the 1988 Act. Both works are distinct from each other and also from performers' property rights in a performance of a musical work, which may itself be recorded: see Part II of the 1988 Act. This case is about title to the Work as a musical work. It is not about title to the Song, to the sound recordings of the Work, or to the rights of Procol Harum in their performances of the Work.
(6) Copyright law also distinguishes between an original work, in which copyright may subsist, and an original adaptation or version of that work, in which a separate copyright may also subsist. There can be copyright in an original work created by A and a separate copyright in an adaptation or version of A's work created by B. Obvious examples are translations of literary and dramatic works and arrangements or transcriptions of musical works. In cases of contested title the different copyright works and the separate copyrights in them must be clearly distinguished from one another. Thus, in this case the copyright in the music of the Song was originally vested inGary Brooker
, as the creator of it, then assigned by him to Essex Music before the Work was improvised and later assigned to Onward Music. The Work, to which Matthew Fisher made creative contributions during the rehearsals of the band's performances, is a copy of a substantial part of the music of the Song. If made without the express or implied consent of Essex Music, it would have been an infringement of Essex Music's copyright in the music of the Song. It could at the same time, whether it was authorised or not, itself be a copyright arrangement of the Song.
(7) As explained above, the consequence of express or implied consent by the copyright owner is that there is no infringement of the copyright. Thus, as Matthew Fisher consented to the 1967 recording of the Work in which he participated, there was no infringement of his copyright in the Work in the making or exploitation of the record by the defendants. At the very least Essex Music had Matthew Fisher's implied consent to make the sound recording of the Work and to publish and issue the record of the sound recording that included the Work as performed by the band.
(8) By virtue of improvised changes made to the music of the Song during the course of the rehearsals, an arrangement ofGary Brooker
's music of the Song was created and a separate copyright in the arrangement came into being. The key question on title to the Work is who, in the circumstances of the arrangement of the music of the Song, became entitled to exploit the copyright in it. Was it the maker(s) of the arrangement? Or was it the owner of the copyright in the underlying Song with whose consent the arrangement was made? The resolution of this issue requires a careful examination of all the circumstances in which improvised changes were made to the music of the Song during the band's rehearsals in 1967.
Issues: discussion and conclusions
A. Delay
(1) Impossibility of a fair trial
Gary Brooker
's demo tape of the Song delivered to Essex Music in March 1967 has been lost or destroyed. Key witnesses have died: David Platz of Essex Music, who heard the recording of the song made by
Gary Brooker
in March 1967, died in 1994; Guy Stevens could, if the claim had been made earlier, have given evidence about the rehearsals in 1967, but he died in 1981; Denny Cordell, the producer of the 1967 recording of the band performing the Work, died in 1995. As for the members of the band, Ray Royer could not be located and Dave Knights had no recollection of what happened in rehearsals in 1967. The recollection of
Gary Brooker
and Keith Reid, who gave evidence, had dimmed over time.
Gary Brooker
. He regarded both as honest witnesses, who could well recall the roles that each had played in the process of composition of the Work and the distinctive organ solo. The other possible witnesses, who were no longer available, would not have been in a position to add much nor could the demo tape, which had disappeared, possibly even having been destroyed.
Gary Brooker
's evidence was that Matthew Fisher had composed the precise melodic line which featured in the organ solo.
Gary Brooker
did not claim to have written the same notes. His point was rather that the form taken by the melodic line was circumscribed by, and effectively dictated by, a descending base line in the Song that he had composed before Matthew Fisher had become involved and that its character was inspired by the Bach-like flavour of the Song's original piano accompaniment.
(2) Equitable defences
Acquiescence, laches, delay and estoppel: general
Gary Brooker
and the remaining members of the band released Matthew Fisher from certain debts incurred by the band in exchange for which he gave up his right to receive record royalties, to which release they would not have consented, had they known that he claimed to be entitled to a share of a writer's royalties generated by exploitation of the work. Secondly, the large amount of time, hard work and effort and cost invested by
Gary Brooker
and Keith Reid in promoting the band's repertoire over the years in the belief that they were solely entitled to the fruits of its success and were solely entitled to represent themselves as the writers of it. Thirdly, the very fact that he had waited almost 40 years before bringing the claim was unfairly prejudicial to the defendants, having regard to the likely conflict of oral evidence about the relevant events and the death of potential witnesses in the intervening period. Fourthly, Onward Music and its predecessors had allowed numerous cover versions of the Work to be released and it would be very burdensome to identify which cover versions made use of the material contributed by Matthew Fisher. It would be unconscionable now to permit him to assert any interest in the copyright and /or to withdraw his consent to the exploitation by the defendants. The plea that the claim was barred by laches was repeated.
Gary Brooker
. He had deliberately chosen to continue to benefit from that association rather than making a claim. When faced with a choice in 1967 of suing or leaving the band he had elected to stay with the band and thereafter continued to benefit from his association with it rather than bringing proceedings. It would, it is alleged, be unconscionable to permit him to go back on his decision not to claim a share in the publishing income from exploitation.
"Of course, estoppel by conduct has been a field of the law in which there has been considerable expansion over the years and it appears to me that it is essentially the application of a rule by which justice is done where the circumstances of the conduct and behaviour of the party to an action are such that it would be wholly inequitable that he should be entitled to succeed in the proceeding."
"Now the doctrine of laches in Courts of Equity is not an arbitrary or a technical doctrine. Where it would be practically unjust to give a remedy, either because a party has, by his conduct, done that which might fairly be regarded as equivalent to a waiver of it, or where by his conduct and neglect he has, though perhaps not waiving that remedy, yet put the other party in a situation in which it would not be reasonable to place him if the remedy were afterwards to be asserted, in either of these cases lapse of time and delay are most material. But in every case, if an argument against relief, which otherwise would be just, is founded upon mere delay, that delay of course not amounting to a bar by any statute of limitations, the validity of that defence must be tried upon principles substantially equitable. Two circumstances, always important in such cases, are the length of the delay and the nature of the acts done during the interval, which might affect either party and cause a balance of justice or injustice in taking the one course or the other, so far as relates to the remedy ."
Gary Brooker
and Keith Reid was that they would not have released him on the terms that they did, had they been made aware of the claim now made by him.
Proprietary estoppel: general
(1) As for the suggestion that Matthew Fisher should have asserted his claim before Essex Music released the record, he held that there was no evidence that he did anything to encourage Essex Music to believe that he would not be asserting his copyright interest or that he had indicated in any way that he was foregoing his rights. He had kept silent and failed to assert his rights. It was not clear that Essex Music had suffered detriment. The work was very successful and benefited all concerned, save Matthew Fisher.
(2) As for the point that, after the release, he decided to stay with the band, the judge was unable to see how the defendants could rely on that as giving rise to the pleaded estoppel. No detriment had been suffered by them as a result of the failure to make the claim at that time.
(3) As for the circumstances in which Matthew Fisher left the band in August 1969, the judge was not persuaded that, if the claim had been made at the parting of the ways between him and the other band members, the situation would have been significantly different.
(4) As for the promotion of the Procol Harum repertoire byGary Brooker
over many years, the judge said that
Gary Brooker
had accepted in cross examination that the fact that he had been named as sole composer of the Work made no difference to the extent to which he had performed the Work over the years.
(5) Finally, noting that delay in itself was no defence, the judge rejected a clutch of other factors relied on by Mr Sutcliffe as relevant when considering the justice of the claim: the fact that, if the claim had been asserted in 1967, he might have been required to assign his interest to Essex Music on the same terms as applied betweenGary Brooker
and Keith Reid and the fact that it hardly seemed fair to
Gary Brooker
to deprive him of a portion of his publishing income which he had reasonably regarded as his own for nearly 40 years.
" On the facts of this case, where it is difficult to discern any or any appreciable detriment, it would in my judgment be a wholly extravagant and unjust result to deprive Mr Fisher for the remainder of his life and 70 years thereafter of his interest in the Work's musical copyright on the basis of the estoppels that have been pleaded, the more so when for almost 40 years the defendants have enjoyed the fruits of that copyright interest without the need to account for any part of them to Mr Fisher."
The declarations
"85. That said, I can see no reason why I should not grant the declaration that Mr Fisher seeks which is that he is a co-author of the Work and a joint owner of the musical copyright in the Work. Not only will such a declaration serve to put beyond doubt what his interest is in the musical copyright and thus enable the two collecting societies to adjust their records and account for the royalties accordingly, but it will also serve to indicate what Mr Fisher's rights are in case he should enforce them against third parties either here or abroad. Relevant to this is that Mr Fisher's interest in the musical copyright is a property right. It has many years to run. The fact that for whatever reason he has not sought to establish that interest before now does not mean that, by declining a declaration, the court should make it difficult for him to vindicate and enforce that interest, so long as it lasts, in the future."
"88. … any intention on the defendants' part to continue to exploit the musical copyright in the Work in defiance of any interest in it which Mr Fisher is able to establish. "
Gary Brooker
alone was the author of the music in the Work. The defendants had been unjustly enriched at his expense and should now be made to disgorge the amount that they had unjustly received.
"94. … he must be taken to have gratuitously licensed the exploitation of his copyright. That implied licence must have continued at least until 19 March 2004 when, through his then solicitors, his claim was first indicated to MrBrooker
. Even then it was scarcely clear from the letter that he was revoking the licence. In my judgment any revocation of the implied licence only came about, at the earliest, when his present solicitors sent their letter before action to Mr
Brooker
. That was in April 2005. It was only in May 2005 that his solicitors notified the second defendant of any claim.
95. Given those circumstances there is, in my judgment, no injustice to Mr Fisher in the fact that the defendants have received all of the royalties prior to receiving the letters before action. The claim was issued on 31 May 2005. In my judgment, any right by Mr Fisher to share in the royalties only arose from that time."
Gary Brooker
alone was such that
Gary Brooker
would, if the attribution were corrected for the future, suffer damage to his reputation or substantial professional embarrassment in consequence of Matthew Fisher asserting his right to attribution.
Gary Brooker
. As Mr Purvis QC pointed out the declaration is potentially valuable in relation to his client's moral rights under the 1988 Act, in particular the right to the attribution of authorship of a work.
Discussion and conclusion on joint interest and revocation of licence declarations
Gary Brooker
may have benefited by not having to split the writer's share with Matthew Fisher is not, in my view, a satisfactory answer to the asserted right of Matthew Fisher to use a copyright interest to terminate the defendants' continued exploitation as from 31 May 2005 and to obtain an injunction to restrain future exploitation without his consent.
(3) Discretionary relief
B. Arrangement/implied assignment
Gary Brooker
and Keith Reid Essex Music became the owners of the copyright in the Song before Matthew Fisher made any creative contribution to the musical arrangement. As copyright owners, Essex Music had the exclusive right to control the making of copies of the Song in any material form, including the making of adaptations and arrangements: sections 2(5) (a) and (f) of the Copyright Act 1956, the provision in force at that time. The Work was an arrangement of the earlier original musical work composed for the Song by
Gary Brooker
alone. The Work was improvised during the rehearsals for the recording for Essex Music of the band's performance of the Song. It was accepted by Mr Purvis that the Work was made with the licence of Essex Music. The issue is whether the licence was subject to conditions relating to the ownership of the copyright in the resulting arrangement. Mr Baldwin submitted that Essex Music, as the owner of the copyright in the Song, had the right to dictate the terms on which the arrangement of it was made by Matthew Fisher and
Gary Brooker
in the form of the Work and the terms on which it was exploited.
Gary Brooker
and Keith Reid for a copyright share in the summer of 1967, they would have refused his request. It was also to be inferred from the conduct of the parties for nearly 40 years thereafter during which time he never claimed or asserted any right to share in the copyright in any version or any right to share in the income from its exploitation.
Gary Brooker
) should vest in Essex Music. In that way no copyright claim could be made against Essex Music by the members of the band in respect of the exploitation of the copyright in the Work or in the sound recording of it. Nor, in the absence of an agreement, could any publishing royalties be claimed by Matthew Fisher from Essex Music.
Gary Brooker
he was party to an assignment to Essex Music on 28 May 1968 of the copyright in another work.
C. Recording Contract
Gary Brooker
and Matthew Fisher were members) and Essex Music and New Breed (referred to in the Recording Contract as "the Company"). It was for a term of 1 year with 4 options to renew. Procol Harum agreed to record performances for the Company and to grant to the Company rights in records embodying their performances.
D. Other unfair consequences of order
Gary Brooker will have a lesser share than Matthew Fisher. His 60% share is halved to 30%, because he agreed with Essex Music to receive only half of his share of the publishing royalties.
Result
(1) Matthew Fisher is guilty of excessive and inexcusable delay in asserting his claim to title to a joint interest in the Work. He silently stood by and acquiesced in the defendants' commercial exploitation of the Work for 38 years. His acquiescence led the defendants to act for a very long period on the basis that the entire copyright in the Work was theirs. They controlled the commercial exploitation of the Work without any reference or reward to him.
(2) His acquiescence has made it unconscionable and inequitable for him to seek to exercise control over the commercial exploitation of the copyright in the Work. The combination of a declaration of a joint interest and a declaration of revocation of the implied consent would enable him to control future commercial exploitation by means of a final injunction against the defendants. For this reason declarations (2) and (3) should be set aside.
(3) If the implied licence has become irrevocable by acquiescence Matthew Fisher cannot claim damages for infringement of copyright, or any share of the monies collected by the copyright collecting societies, or obtain any contractual right for payment of royalties in the future as the price for granting an express licence for the exploitation of the copyright in the Work. For these reasons the order for an inquiry as to damages since 31 May 2005 should be set aside.
MR JUSTICE DAVID RICHARDS:
"The term 'acquiescence' is, however, properly used where a person having a right, and seeing another person about to commit, or in the course of committing, an act infringing that right, stands by in such a manner as really to induce the person committing the act, and who might otherwise have abstained from it, to believe that he assents to its being committed; a person so standing by cannot afterwards be heard to complain of the act. In that sense the doctrine of acquiescence may be defined as quiescence under such circumstances that assent may be reasonably inferred from it, and is no more than an instance of the law of estoppel by words or conduct, the principle of estoppel by representation applying both at law and in equity, although its application to acquiescence is equitable. The estoppel rests upon the circumstances that the person standing by in effect makes a misrepresentation as to a fact, namely, his own title; a mere statement that he intends to do something, for example to abandon his right, is not enough. Furthermore, equitable estoppel is not applied in favour of a volunteer."
Much of this passage is based on the judgment of the Court of Appeal in De Bussche v Alt (1878) 8 ChD 286. It can be seen that estoppel and acquiescence are treated as closely related.
"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."
The essential element, as made clear in subsequent decisions of this court and as accepted by the parties, is detriment.
"Nevertheless, while falling short of estoppel, in my judgment the behaviour of the Plaintiffs, coupled with the very long delay, really amounted to an acknowledgement by them of the Defendants' right to continue the use of their (the Defendants') marks, and to a waiver of the Plaintiff's right to sue for infringement by such continued user. I accept the Defendants' submission that really the course of conduct between the parties showed a mutual policy of restraint to one another, or, putting it more colloquially, a mutual agreement to live and let live."
In that case, each party had to the knowledge of the other been infringing the other's trademarks over a considerable period. There had been discussions over the years between the parties and the effect of a letter written on behalf of the plaintiff was that anyone "might reasonably think that the Defendants were being told inferentially that no complaint was being made of the Defendants' then present user of their trademark (device and words) on shirts, nor was any complaint made for twenty-nine years thereafter". It was the course of dealing between the parties, including this letter, to which Upjohn J referred when he spoke of "a mutual agreement to live and let live". There has been no similar course of dealing or mutual agreement in the present case. Upjohn J's reference to estoppel was to "an estoppel in the strict common law sense", which could not exist because the defendants knew all the relevant facts and did not act in reliance on any representation by the plaintiff. The facts of the case would probably support an estoppel as now understood.
SIR PAUL KENNEDY: