His Honour Judge Birss QC :
- This is a copyright case. George Hamer instructed by Hewlett Swanson LLP appears for the claimant and Jacqueline Reid instructed by Capsticks Solicitors LLP appears for the defendant.
- The action is about copyright in training materials. The materials are used to teach communication skills. The case arises from work done training doctors, nurses and other staff in the cancer field. Essentially the insight underlying this work is that staff can benefit from training in order to improve the handling of situations in which very bad news must be communicated, for example to patients or their families.
- The claimant, Dr Susan Wilkinson, has been working in this area for many years. She was responsible for an approach to communication skills training called the "Wilkinson Variant". Her case is that she owns the copyright in various training materials relating to the Wilkinson Variant.
- Dr Wilkinson's approach is one of three "variants", in other words three different, albeit related, ways of teaching communication skills. The other two are the Maguire Variant, associated with Prof. Peter Maguire; and the Fallowfield Variant, associated with Prof. Lesley Fallowfield. The three variants have a common origin in Prof. Maguire but differ in various respects. One respect is that the Wilkinson Variant is aimed at training nurses, the Fallowfield Variant is aimed at doctors and the Maguire Variant at "multi-professionals" (i.e. any healthcare professional).
- The defendant is the London Strategic Health Authority ("SHA"). It is the successor to various bodies within the NHS which play a part in this case. The SHA hosts NCAT, the National Cancer Action Team. NCAT is responsible for implementing cancer policy across the country. It employs a number of managers working in specific areas. One of NCAT's functions is to promote Advanced Communication Skills Training or ACST. Today it promotes a unified approach to ACST. The approach is "unified" because it was made as a synthesis of the three variants. The unified approach to ACST is also called the "Connected" programme.
- The question at the heart of this dispute is about the terms on which the Connected programme was produced and the respective rights of the claimant and the defendant in the copyright subsisting in materials used in the Wilkinson Variant and the Connected programme. In order to resolve the dispute it is necessary to consider a contract entered into between the parties in July/August 2007 but it is also necessary to consider the background. That is not only in order to place the contract in its context but because arguments about implied licences and estoppel need to be dealt with. I will do this bearing in mind that some matters in the background will not be relevant to some issues.
- I heard evidence from Dr Wilkinson and Anita Roberts for the claimant and from Dr Heaven, Teresa Moss, Prof. Ramirez and Justine Palin for the defendant. Each witness's evidence consisted essentially of a narrative of the history of this matter from their point of view.
- Dr Wilkinson was a defensive witness and refused to accept some quite self evident statements because I think she perceived it might hurt her case to accept them even though she could not see how. Nevertheless in the end I am sure Dr Wilkinson was not seeking to mislead and I am able to accept her evidence.
- Anita Roberts, who had worked with Dr Wilkinson since the late 1980s, was a good witness.
- Dr Heaven represented the Maguire Variant in the unification process. Before taking the oath, Dr Heaven took care to clarify certain aspects of her witness statement and Mr Hamer made no criticism of her. I thought Dr Heaven was a good witness.
- At the relevant times Teresa Moss and Justine Palin were at NCAT. They were also good witnesses and Mr Hamer did not criticise them.
- Mr Hamer did however criticise Prof. Ramirez. She represented the Fallowfield Variant for much of the relevant time. The Professor's evidence could be read as denigrating or belittling Dr Wilkinson and her achievements. When challenged in cross-examination, Prof. Ramirez clarified her evidence in some respects. She maintained a position which was relatively hostile to Dr Wilkinson. I put this down to a degree of personal animosity between two workers who are rivals in the same field of study. As far as I am aware nothing turns on it.
- I will decide any disputes of primary fact in context when I deal with the background below. There was rarely any direct conflict of testimony between the witnesses.
- In the 1970s and 1980s Prof. Maguire carried out research and published papers on communication skills. In 1980 Dr Wilkinson, who had trained originally as a nurse, was appointed as a part time research nurse by Prof. Maguire. This role was Dr Wilkinson's first exposure to the communication difficulties of cancer patients with nursing staff and she became interested in improving nurses' communication skills. By the late 1980s Dr Wilkinson was a full time PhD student and her PhD degree was awarded by Manchester University in 1991. The supervisors were Prof. Maguire, Baroness MacFarlane and Prof. Karen Luker.
- Whilst a PhD student Dr Wilkinson began facilitating courses for nurses in communication skills. She produced materials to use in these courses. There was a suggestion that all the text in materials of this kind was generic and rather unoriginal. It is true that the nature of the subject means that different texts dealing with it have similarities between them but I reject the suggestion that no copyright subsisted in Dr Wilkinson's written material prepared in the 1980s. They were original literary works.
- I heard evidence from Anita Roberts who worked with Dr Wilkinson at the time. She explained how they worked on preparing the materials outside working hours and on her (Dr Wilkinson's and Ms Roberts') own computers. Anita Roberts executed a confirmatory assignment of any copyright she might have held in favour of Dr Wilkinson. I am satisfied that the copyright belonged to Dr Wilkinson rather than any of the institutions with which she was involved at the time either as an employee or as a student.
- Following her PhD Dr Wilkinson was employed by the Sunny Bank Marie Curie Hospice in Liverpool and throughout the 1990s Dr Wilkinson's work teaching communication skills continued. This included developing a three day "Training the Trainers" course designed to train others how to run and facilitate training courses. The course materials included overhead projector slides and handouts. By 1998 Dr Wilkinson was employed by the University of London as a senior lecturer in palliative care and was Head of Palliative Care Research for Marie Curie Cancer.
- In September 2000 the NHS Cancer plan was published. The Dept of Health wished to sponsor a pilot study to try out a model of communication skills training that could be incorporated into the NHS and rolled out nationally.
- In March 2002 the NHS sought tenders for the NHS Cancer Plan Advanced Communication Skills Development Project. The conditions of contract included clauses dealing with intellectual property. Essentially copyright in original work done in performance of the services was to belong to the NHS. The contract did not refer to copyright in existing works.
- Sometime in 2002 Prof. Maguire approached Dr Wilkinson with a view to including the Wilkinson communication skills course for nurses as part of a combined bid for the pilot programme for this project. In September 2002 a combined tender bid was put forward. The contractors proposed in the bid were Cancer Research UK ("CRUK") and Marie Curie Cancer Care ("Marie Curie"). Professors Fallowfield, Maguire, Ramirez and Dr Wilkinson were identified as sub-contractors and leaders. The overview of the tender explained that the tender came from a group (naming those four persons) with an in-depth and comprehensive range of expertise and experience relevant to the successful delivery the programme. The bid shows that by that time the three separate variants (Maguire, Fallowfield and Wilkinson) existed. In terms of the bid, Dr Wilkinson was part of the project under the auspices of Marie Curie while Prof.s Maguire and Fallowfield were in an equivalent position via CRUK.
- The bid was accepted and in 2003 the programme began. This programme was called the ACST pilot study and it used all three variants led by all three course leaders.
- In Dec 2002 / Jan 2003 an email discussion took place between Dr Wilkinson and Trevor Lake of Marie Curie about copyright. Mr Lake was the person responsible for negotiating the contract with the NHS. The context was that the bid had been accepted by the NHS in November and the contract was being finalised. Dr Wilkinson was concerned about the copyright position relating to a pack of materials which had just been developed for use in the Wilkinson Variant. The upshot of the discussion was that it was clear that as far as Dr Wilkinson was concerned copyright in existing material had to be protected while any material developed during the programme would belong to the NHS. This is consistent with the terms mentioned above which do not relate to copyright in existing materials, but provide that copyright in original work done in performance of the contract will belong to the NHS.
- In 2003 the Government set up the NHS University or NHSU. One of its projects, before being abolished in 2005, was the ACST pilot study.
- There is a minute of a meeting of the National Advisory Board of the NHSU Advanced Communication Skills Programme on 29th May 2003 chaired by Prof. Mike Richards. The minute records that there was discussion about how to take the project forward beyond the pilot stage. The minutes record:
Susie Wilkinson proposed that in future phases any "new" material would belong to NHSU. It was agreed that issues of IPR needed to be further discussed with legal input.
- In summer 2004 further discussions took place, which led to the signing on 31st August 2004 of a "Project Collaboration Agreement" between the NHSU and the two cancer charities, CRUK and Marie Curie. The contract defines the charities as the "Contractors". The same individuals (and some others) were key members of the team set up under the contract. The point of this project was to take the ACST project forwards and develop a national programme of communication skills training. One of the terms to be sorted out as between NHSU and the cancer charities related to intellectual property rights (IPR).
- Just prior to the signing of the 2004 agreement, there is a record of a further conversation between Trevor Lake and Dr Wilkinson about copyright. As with the previous discussion between Dr Wilkinson and Mr Lake, there is no evidence the NHSU were parties to that conversation but it is nevertheless convenient to deal with it in its chronological context. The upshot of those discussions was that as far as Marie Curie were concerned, although at one time it had seemed as if Marie Curie might have been the owner of the copyright in Dr Wilkinson's materials since she was an employee, in fact Dr Wilkinson owned the copyright in materials associated with the Wilkinson Variant rather than Marie Curie. The reasons do not matter but essentially it was because the materials were based on her PhD. I believe this exchange answers a submission by Ms Reid that the exchange between Mr Lake and Dr Wilkinson in 2003 (above) showed that materials had been developed for Marie Curie and that Marie Curie therefore owned the copyright rather than Dr Wilkinson. In my judgment overall it is clear that Marie Curie and Dr Wilkinson were agreed that copyright in her materials belonged to Dr Wilkinson.
- Section 6 of the 2004 agreement contained fairly elaborate provisions relating to intellectual property rights. Essentially the agreement provided that the NHSU owned the copyright in two defined things called the Toolkit and the Competency Framework Checklists (clause 6.2). They were documents prepared for NHSU in the course of the pilot project. Clause 6.3 gave the NHSU a royalty free and non-exclusive licence by the charities (the Contractors) to use further material, defined as the "Content", in order to run the ACST courses. If the NHSU generated net profits from running the courses a royalty would be paid to the charities (subject to further agreement). There was a clause (6.6) whereby as the courses were developed, insofar as the NHSU had input into that process, the copyright would belong to the NHSU. This was called "Development IPR". Clause 6.6 ended with the words "but this does not erode the Contractors' respective underlying rights to IPR in the original Content or the input by the Contractors into updates which will be deemed to be included in the licence set out in clause 6.3". Clause 6.7 gave the charities a royalty free licence under the rights held by the NHSU (in Development IPR and in the Toolkit and the Competency Framework Checklists) to use that IPR to exercise their rights to offer courses themselves under the agreement and there were terms for notification of plans to do this and limits in sub-licensing.
- Before me the parties did not agree about the identity of the documents in clause 6.2 for which copyright belongs to the NHSU. There was no dispute about the "Competency Framework Checklists" but there was about the "Toolkit". The term is defined in clause 1:
"Toolkit" means a package of materials designed by the Contractors for NHSU to assist trainee facilitators in the set up and running of the ACST Course
- Dr Wilkinson's case is that this refers to a particular document which carries the names of the four ACST leaders (Profs Fallowfield, Maguire, Ramirez and Dr Wilkinson) and is entitled:
NHSU/NHS Advanced Communication Skills Training Development Project
'Toolkit' for Cancer Networks
Planning Communication skills Training For Senior Health Care Professionals From A Network Perspective
- Ms Reid submitted that this was not the "Toolkit" as defined in the agreement and that the Toolkit included a longer list of materials used as part of communication skills training itself.
- I accept Dr Wilkinson's evidence. On the face of it the document entitled "Toolkit" fits with the definition in the 2004 Agreement. It is a document concerned with how to set up and run an ACST course. It may not be entirely apt to call it a "package of materials" but the document does have appendices and the like. For example Appendix 3 gives a table of indicative costs of a 3 day course for each of the three variants.
- The ACST project continued. The steering group comprised different people over the years but the main contributors were Prof. Ramirez and Prof. Fallowfield (on behalf of the Fallowfield Variant), Prof. Maguire, Dr Cathy Heaven and Carolyn Pitceathly (on behalf of the Maguire Variant), Dr Wilkinson and Anita Roberts (on behalf of the Wilkinson Variant) and Jean King on behalf of the cancer charities.
- In 2005 the defendant took over the ACST programme as the host organisation for NCAT. Whether a formal transfer document was executed was not clear but does not matter. In January 2005 Prof. Richards, the National Cancer Director, chaired the first National Implementation Group meeting for the NHS ACST programme. Since that period the defendant has run the programme and from the summer of 2006, Justine Palin, the Associate Director for Supportive and Palliative Care for NCAT, managed the project. Also in 2006 Teresa Moss took over the chairmanship of the National Implementation Group for the NHS ACST programme from Prof. Richards.
- In about May/June 2006 the charities indicated that they were no longer interested in being involved in the development of a national ACST programme and so it became necessary to contract with the various individuals directly. In 2006 NCAT decided to send out annual consultancy contracts or "Service Level Agreements" (SLAs) to all leaders and co-leaders to cover their work. No copy of the 2006 SLA for Dr Wilkinson survives and it is not entirely clear one was actually signed. What do survive are a draft of a 2006 agreement sent by email from Justine Palin to Dr Wilkinson in July 2006 and drafts of the 2007 SLA for Dr Wilkinson dated 3rd March 2007 and 15th March 2007. None of these documents refers to IP rights. Essentially the drafts work on the basis that the services the contractor will provide are to act as a leader or, in the case of individuals like Dr Wilkinson, a "Managing Leader" to represent their variant in implementing the ACST programme. If it were necessary to make a finding on the point, I think it likely that Dr Wilkinson was indeed a party to an SLA for 2006, the best record of the terms being the 3rd March 2007 draft which seems to have been a starting point for the 2007 SLA.
- Dr Wilkinson's evidence was that sometime between about March and July 2007 she had conferred with Justine Palin about her (Dr Wilkinson's) need to protect her intellectual property rights. Dr Wilkinson's view was that the crucial term in the 2007 agreement relating to intellectual property rights (clause 6.6), which was inserted in the draft between March and July, arose from her comments to Justine Palin. Justine Palin did not remember the discussion. In my judgment if the point had been important, Justine Palin would have remembered it. I suspect the truth is that Dr Wilkinson did mention something about IP rights to Justine Palin because she did not strike me as someone who would make that up but I am not convinced it was raised with Justine Palin in a way which would or should have suggested that there was an important issue at stake. If it matters (and I do not think it does), I am not satisfied that Dr Wilkinson is right that the clause arose as a result of her raising the issue. Many of the contracts hitherto had had clauses about IP rights in them.
- Dr Wilkinson also recalled that on 30 June 2007 she had a discussion about ownership and intellectual property rights with Dr Heaven while they were waiting for a steering group meeting to start. In cross-examination Dr Heaven's evidence was that she remembered a conversation on that occasion but not that it involved intellectual property. In her answer she also referred to an occasion on which she remembered Dr Wilkinson being concerned about intellectual property and so she (Dr Heaven) asked "Anita" (I assume Anita Roberts) and Sandra Winterburn to check with Dr Wilkinson that she was happy, but her witness statement places that conversation in 2008. It is not necessary to decide upon what exactly Dr Wilkinson and Dr Heaven discussed outside the steering group in June 2007 since it does not have a bearing on the issues I have to decide.
- In June 2007 Prof. Richards decided to stop using the three variants but to take forward a unified approach to ACST. Until that point teams working in cancer in the NHS itself had been taking an ad hoc approach to deciding which variant they were going to use or in some instances developing their own programmes. One can see why a unified approach would be a good idea. One aspect Prof. Richards focussed upon was the issue of the use of actors and video evaluation. This was an area in which the variants differed. Prof. Richards decided that the unified approach was to involve a three day programme using actors and with video recording to enable role play.
- Ms Reid relied on a six page document entitled "ACST Transitional Process – Moving to a Unified Programme. Discussion Paper". At the end the document is marked "National Cancer Action Team 5 July 2007". The significance of the document from the defendant's point of view is that it mentions adapting the unified programme to other disease areas, mentioning coronary heart disease and "C & Y" (children and young persons) as well as the End of Life care strategy, and that it mentions embedding the programme in educational bodies outside the NHS such as the Royal Colleges, and higher education institutions (HEIs). Ms Reid put these parts of the document to Dr Wilkinson in cross-examination. Dr Wilkinson did not challenge the document or what was said in it. In closing Mr Hamer submitted that the document appeared to be an internal NCAT document and that Dr Wilkinson did not accept that the document had been shown to her before or at least at any time prior to the contract being entered into. My impression of Dr Wilkinson when she was cross-examined on this was that she did not find the document to be surprising but in fairness, it is right to record that she was never asked directly if she had seen the document before. Moreover I believe that none of the defendant's witnesses referred to the document at all. I infer this was an internal NCAT document. For what it is worth I am not satisfied it was shown to Dr Wilkinson before the contract was signed but equally, from Dr Wilkinson's evidence in cross-examination on it, it seems to me that its description of what NCAT intended to do with the unified programme would not have come as a surprise to Dr Wilkinson in July 2007 before she signed the contract.
- On 26th July 2007 Teresa Moss wrote to Dr Wilkinson about the new idea to work on a unified national ACST programme and sought her support and involvement. The proposal was to produce a unified programme in collaboration with the leaders of the three variants and Dr Wilkinson was asked to confirm her support on behalf of her variant. Similar letters will have been sent to the other individual leaders at the time. The letter enclosed a copy of the consultancy contract for Dr Wilkinson to sign. The letter calls it an "employment" contract but nothing turns on that.
- Brief negotiations took place and on 16th August 2007 Dr Wilkinson signed the contract. Her letter to Teresa Moss enclosing the signed contract makes clear that she and "the Wilkinson Variant" were signing up to the criteria laid out in the 26th July letter to achieve unification of the communication skills programme. This contract is at the heart of the dispute. Although there was a small dispute about when it was signed, I find it was actually signed on 16th August 2007. It bears a date of 3rd July 2007 and states it will commence on 1 April 2007 and continue for 12 months or until termination.
- As at July/August 2007 Dr Wilkinson had a body of material related to the Wilkinson Variant and referred to in the statements of case as her "Established Works". The documents had evolved over the years but it is clear and I find, that some parts derived originally from her PhD. I accept the claimant's case that the copyright in this material belonged to Dr Wilkinson at the point the 2007 agreement was signed.
- The 2007 agreement is between the SHA and Dr Wilkinson. Clause 6.6 provides:
All intellectual property rights associated with any intellectual property arising from the performance of the Services and the documents and other work prepared by the Consultant pursuant to this Agreement shall belong to SHA.
- The schedules define the roles of Leaders (A) and Managing Leaders (B). The duties amount to working to produce the unified programme. There is no dispute that Dr Wilkinson was a Managing Leader.
- A "Unification Workshop" was arranged to take place in December 2007 and before that the leaders and co-leaders worked to share information with each other in preparation. The meeting produced a document entitled "Towards unifying the National Advanced Communications Skills Training Programme" dated 3rd December 2007 and naming Prof. Ramirez, Dr Heaven and Dr Wilkinson. By then these individuals were the leaders representing the Fallowfield, Maguire and Wilkinson Variants respectively. The document summarised the progress made in the discussions between the leaders of these variants towards unification.
- Between January and March 2008 the three leaders and their colleagues worked hard together to produce a synthesised programme. This involved creating materials for use in the programme. The unified materials produced include some text derived from pre-existing Wilkinson Variant documents. Some (I imagine most) was put in as a result of Dr Wilkinson herself, or one of her team such as Anita Roberts, actually doing so. Sometimes other people who could be said to belong to a different variant also chose to use text from Wilkinson Variant materials. In any event it was all done with Dr Wilkinson's consent.
- Extensive documents were prepared by both sides to address the extent to which material from Dr Wilkinson's Established Works had been incorporated into the Connected programme materials. Although there were significant detailed disputes, the end result is clear. The materials related to the Connected programme, now referred to as the SHA works, include some extracts from Dr Wilkinson's Established Works which would, if they had been included without consent, amount to infringements of Dr Wilkinson's copyright in those Established Works (or some of them).
- However the extent of this reproduction must not be over stated. In the end only two SHA documents are in issue. They are an "ACST Facilitators Manual" and a "Learner Pack".
- Version 3 of the ACST Facilitators Manual has about 123 pages. The SHA accept eight instances in which, at least to some extent, some text reproduces parts of the Established Works. This acceptance is often limited to an acceptance of qualitative but not quantitative reproduction and at least one is said to be trivial. In total, in terms of what the SHA accept, by my count 17 pages from the whole ACST Facilitators Manual contain material from the Established Works. The claimant's case is that more pages of the ACST Facilitators Manual reproduce her Established Works. At its highest the case would add another 24 pages of the ACST Facilitators Manual. I do not need to resolve whether these further pages do or do not amount to a substantial reproduction. I cannot help but notice that they include pages on which the suggested reproductions are silly (such as the word "lunch" on p2 of the document, p135 of bundle F1/tab3). To say that 41 pages of the 123 page document amount to reproductions of the Established Works would create the wrong impression for a number of reasons, not least that in many cases not all the text on a page is alleged to amount to a reproduction. Overall the text in the ACST Facilitators Manual which is derived from the Established Works forms a fairly small part of the SHA works.
- The extent of the reproduction of Established Works in the Learner Pack is much greater. The document consists of about 21 pages of discussion and appendices setting out literature and references. Of the 21 discussion pages, by my estimate 13 pages include substantial reproductions from the Established Works.
- The Established Works relied on by Dr Wilkinson are listed below in the order pleaded in Schedule 1 to the Particulars of Claim. The dates given are the dates the particular versions of the documents relied on were created. They represent the culmination of Dr Wilkinson's work at the relevant time. Some parts of some of them are derived for instance from Dr Wilkinson's PhD in 1991. The documents are:
i) Senior Healthcare Communication Skills Workshop - 2002
ii) Communication Skills Course - 2003
iii) Communication Skills Training For Healthcare Professionals (Training the Trainers and Actors Manual) - 2006
iv) Actors Evaluation Form - 2006
v) Guidelines for Actors - March 2007
vi) Training for Actors (course timetable) - 2002
vii) Managing Role Play - 2004
viii) Facilitator Evaluation Form - 2006
ix) Training the Trainer Course Programme - 2002
x) Training the Trainers PowerPoint Presentation - 2004
xi) Communication Skills in Cancer Care PowerPoint Presentation - 2006
xii) CD Rom - Communication Skills Programme - 2006
- Elements from all of them (save for (v), (vi), and (ix)) are present in one or other of the SHA works. As I have understood the claimant's case, no actual allegation of reproduction from (v) or (vi) is made. For document (ix) Mr Hamer contends part of it is reproduced in the ACST Facilitators Manual but the SHA deny it. Document (ix) is a two page timetable for a 3 day course which took place in Liverpool in June 2002. It is alleged to be reproduced by a short section of the ACST Facilitators Manual dealing with the need to agree the ground rules for the course with the participants and the topics to cover. The only similarity is that the timetable mentions establishing group ground rules at the introduction stage. This is a hopeless allegation and I reject it. Document (ix) has not been reproduced substantially or at all.
- There was an argument about the extent to which Dr Wilkinson had been obliged to incorporate text from her Established Works in the unified materials. The defendant said she was not obliged to do so. Dr Wilkinson's position was that while it is true that she was not legally required to do this, nevertheless as a practical matter, incorporation was inevitable. I find the position was as follows. First, there was certainly no legal obligation to incorporate material. Second, I think the argument risks confusing what did actually happen with what was inevitable. That the text has been incorporated is a fact. That does not mean that any particular item of text had to be used. It may be time was saved by reproducing existing material but I have no firm evidence about that either. Third, I also think the argument risks confusing the Wilkinson Variant as a method of teaching communication skills with the particular literary works making up Dr Wilkinson's Established Works. The copyright held by Dr Wilkinson (at least as at July 2007) relates to her Established Works. The Established Works are employed in running Wilkinson Variant courses but there is no copyright in a method of teaching communication skills itself. The fact that the unification project certainly was supposed to include input from those experts identified as "the Wilkinson Variant" is not the same thing as saying that particular pieces of text which happened to be parts of Wilkinson Variant documents necessarily had to be included. To establish that it really was inevitable would have required more detailed analysis and evidence than is before me. Overall I am not satisfied that incorporation of any particular text was a practical necessity.
- This dispute arose in March 2008 and Dr Wilkinson's contract was terminated as a result. I will return to that below. In any event by July 2008 the unified programme had been piloted. The evaluation was very positive. It was described as drawing on the best of the three previous variants.
- Since then the Connected programme has been used successfully by NCAT in cancer care but also more widely. It has been licensed for use in Northern Ireland and also New Zealand (albeit there are arguments about the terms on which this has been done). In addition to cancer care, NCAT has run the Connected programme for end of life care, transplant teams, non-cancer palliative care for children and young people and local authority social care in the UK. The defendant's position is that it is free and entitled to do all this. A point arose about whether the defendant was making a profit from licensing the Connected programme. Teresa Moss's evidence was that any surplus funds obtained from the exploitation of the Connected programme could be used to secure and sustain the Connected programme within the NHS but could also be redirected elsewhere in the NHS. That surplus revenue is a profit in all but name.
- The individuals associated with the Maguire Variant and with the Fallowfield Variant do not contend that they have any rights over the Connected programme. That is clearly important for the SHA going forward but it does not shed any light on the issues I have to decide.
- Since the dispute arose in March 2008 the positions of both sides have altered somewhat over time. Fundamentally, Dr Wilkinson's position is that she did not surrender her existing intellectual property rights relating to the Wilkinson Variant when the Connected programme was produced. This involves two elements. First Dr Wilkinson claims to be free to use her Established Works in any way she sees fit and to continue to use and licence the Wilkinson Variant if she wishes. Second Dr Wilkinson claims that the incorporation of extracts of her Established Works into the Connected programme was pursuant to an implied licence, which licence was limited in scope to the purposes of the Connected programme which were explained to her in advance. While she says NCAT are free to use the Connected programme to teach communication skills in the NHS, she says she never agreed to the NHS entering into competition with her by licensing the programme to others for profit and she maintained that the course was limited to the cancer field and not to other disease areas, although her position on that shifted somewhat.
- The defendant does not accept that Dr Wilkinson has any right to limit or control the exploitation of the Connected programme. This is a key part of the dispute. At trial Ms Reid also submitted that the defendant does not object to Dr Wilkinson exploiting her Wilkinson Variant and makes no claim to any right to prevent her from doing so. So one might think the only issue relates to the freedom on the part of the defendant to use the Connected programme, however it is important to note that at an earlier stage Rob Cockburn of the NHS wrote to Dr Wilkinson and asserted in effect that copyright in her Established Works was caught by the 2007 agreement. It is clear that Dr Wilkinson has understood the defendant's position to be that it owns all or at least significant parts of the copyright in her Wilkinson Variant Established Works. Indeed in its Defence the defendant stated that it was willing to assign back any such copyright to Dr Wilkinson subject to a suitable licence. Necessarily therefore part of the defendant's case is that it may indeed own some copyright which formerly belonged to Dr Wilkinson.
- In any case the parties could not agree terms and these proceedings began.
The parties rival claims
- Dr Wilkinson argues as follows:
i) Clause 6.6 of the 2007 agreement relates to copyright coming into existence as a result of the work done pursuant to the contract. All copyright created by the work of the team in creating the Connected programme (including Dr Wilkinson herself) belongs to the defendant.
ii) Nothing in the 2007 agreement operated to transfer any existing copyright held by Dr Wilkinson in her Established Works.
iii) When extracts from the Established Works were incorporated into the SHA works, that was with her consent and is subject to an implied licence.
iv) The terms of implied licence permit the defendant/NCAT to exploit Dr Wilkinson's works for the purposes of which the defendant made her aware in advance of the 2007 agreement. These purposes limit the exploitation to use by NCAT with the NHS. In terms of diseases, the programme may be used for cancer and for other "end of life" care in England, but not otherwise. The implied licence does not permit the defendant/NCAT to exploit the Connected programme by licensing it to third parties.
- The defendant argues as follows:
i) Clause 6.6 certainly includes copyright coming into existence as a result of the contract but it also operates to assign any existing copyright in Established Works if those were incorporated into the Connected programme.
ii) Thus there is no need for an implied licence and the defendant is free to exploit the copyrights it owns in any way and without reference to Dr Wilkinson.
iii) If, which is denied, and insofar as Dr Wilkinson owns any legal rights which could prevent the defendant from exploiting the Connected programme in any way, Dr Wilkinson is estopped from asserting any such copyright or other right because it would be unconscionable for her to do so given the background and dealings between the parties.
- At one stage the defendant sought to rely on an entire agreement clause in the contract (clause 15). This provided that "This Agreement sets out the entire agreement of the parties and supersedes all prior agreements and understandings relating to its subject matter". Mr Hamer submitted it was irrelevant since neither party sought to rely on a collateral agreement, and in closing Ms Reid did not advance any arguments based on this clause.
- For the principles of contractual interpretation, the parties cited Investors Compensation Scheme v West Bromwich Building Society  1 WLR 896, (particularly Lord Hoffmann at p912-3), Chartbrook v Persimmon  AC 1101 (particularly Lord Hoffmann at paragraph 14 and 21) and ING Bank v Ros Roca  1 WLR 472 (at paragraph 22 Carnwath LJ).
- On the implication of terms I was referred to The Moorcock (1889) 14 PD 64, 68 and Liverpool CC v Irwin  AC 239 and I was also referred to the judgment of Lightman J in Robin Ray v Classic FM  FSR 622 approved by the Court of Appeal in Griggs v Evans  EWCA Civ 11 at para 14.
- In the context of implied terms Ms Reid also cited paragraph 19 from the judgment of Lord Clarke in Rainy Sky v Kookmin Bank  UKSC 50. This stresses the irrelevance of the parties' subjective intentions and the mere fact that a term in a contract appears particularly unfavourable to one party. The point was not made in the context of implying terms in a contract but in the context of construction. In that respect Lord Clarke also went on to deal with the fact that the language used by the parties will often have more than one potential meaning and that "if there are two possible constructions, the court is entitled to prefer the construction which is consistent with business common sense and to reject the other" (paragraph 21).
- On estoppel I was referred to The Indian Endurance (No 2)  AC 878 (Lord Steyn at p913-4) and ING Bank v Ros Roca (supra) (at paragraph 55-66 of Carnwath LJ).
- At different stages both sides also relied on the judgment of Clauson J in Metzler v Curwen [1928-1935] Mac.C.C 127. This case bore some similarity on its facts to the case before me although it is not the same. In Metzler an author had composed original music, adapted it first and assigned the copyright in the first adaptation to Metzler. He had then adapted the original music again and his widow purported to assign the copyright in the second adaptation to Curwen. The melody and harmony of the second adaptation was substantially the same as the original music and as the first adaptation. Metzler sued Curwen for infringement. Clauson J analysed the matter by focussing on exactly what rights the composer had at the moment he executed the first assignment and what rights were assigned. On that Clauson J decided on the facts that once he had executed the assignment, the composer no longer had any relevant right in the music and so for example he could not perform the music in public without Metzler's consent. Thus he had no right to assign on to Curwen. Clauson J rejected Curwen's case that there were three relevant copyrights and that as a matter of construction only one of them had been assigned to Metzler.
Apply the law to the facts
- There are essentially four issues before the court:
i) The extent to which the SHA works are derived from the Established Works;
ii) The construction of clause 6.6 of the 2007 agreement;
iii) The extent to which Dr Wilkinson owns copyright in the Established Works if and insofar as the SHA works are derived from them and the question of implied licence;
iv) Whether Dr Wilkinson is estopped from alleging infringement in the circumstances.
(i) The extent to which the SHA works are derived from the Established Works
- I have dealt with this above. Copyright subsists in the Established Works and was, at least prior to the 2007 agreement, owned by Dr Wilkinson. The SHA works include significant extracts from the Established Works such that reproduction of the SHA works would infringe that copyright unless there has been a transfer of that copyright or a licence.
(ii) The construction of clause 6.6 of the 2007 agreement
- There was a preliminary point about how the clause should be read although it was not clear whether in fact it made any difference. The two rival approaches were:
All intellectual property rights associated with:
(i) any intellectual property arising from the performance of the Services; and
(ii) the documents and other work prepared by the Consultant pursuant to this Agreement
shall belong to SHA.
(i) intellectual property rights associated with any intellectual property arising from the performance of the Services; and
(ii) the documents and other work prepared by the Consultant pursuant to this Agreement
shall belong to SHA.
- I prefer Approach 1 simply because I believe it fits the language more naturally. A further point in its favour is that it ensures that the whole clause is concerned specifically with intellectual property rights as opposed to other rights. This makes sense because other clauses in the agreement (e.g. clause 6.2) seem to me to deal adequately with paper documents and so there is no need to do so in clause 6.6.
- The parties were in agreement that the clause at least operated as an assignment of any copyright coming into existence during the project as a result of the work. It meant that the SHA would own any copyright arising from works created by Dr Wilkinson on the project. When executed this was an assignment of future copyright as provided for by s91 of the 1988 Act.
- The significant argument between the parties was about the ambit of the term "associated with". The defendant submitted this was broad and meant that if a part of an Established Work was copied in order to create an SHA work, then any pre-existing copyright in that Established Works was swept up and assigned to the SHA. If Dr Wilkinson chose to include in the SHA works excerpts from works in which she owned copyright, then to that extent the copyright in such works was transferred to the SHA pursuant to the 2007 agreement. That existing copyright was said to be "associated with" the intellectual property arising from the performance of the Services and/or associated with the documents thereby created.
- The claimant submitted that the clause was not so broad. Mr Hamer submitted that the clause simply meant, for example, that if a document was created during the project, the copyright coming into existence was what the clause was referring to as an intellectual property right associated with that document. Copyright in a document created on the project belongs to the SHA. Mr Hamer submitted the clause had nothing to do with pre-existing copyrights and did not purport to act as an assignment of them.
- It was not clear to me precisely how the SHA contended the clause would operate in practice and I put a schematic diagram to the parties, as follows:
[Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture]
- The diagram does not encompass all the possibilities and during the hearing there was a discussion about further aspects of it but for present purposes this will suffice. The left side of the diagram is meant to represent the Established Works. A and B are not separate works, they are different parts of the same works. The parts of the Established Works labelled A have not been reproduced in the SHA Connected works. The parts of the Established Works labelled B have been reproduced in the SHA works. B1 represents part B in situ in the Established Works and B2 represents the copy of B present in the SHA works. Parts C and D represent other parts of the SHA works written by Dr Wilkinson or by others. In fact there is more to the SHA works than that, including parts of the Established Works incorporated in the SHA works but not by Dr Wilkinson and also parts of the other variant's works incorporated into the SHA works.
- Ms Reid contended that clause 6.6 did not operate to sweep up the copyright in A but did operate to assign the copyright in B. However she also submitted that Dr Wilkinson should have nothing to fear from an assignment to the SHA of what Ms Reid regarded as the copyright in B because according to Ms Reid, Dr Wilkinson was free to reproduce her own part B (marked B1) because reproducing B1 did not reproduce B2 and so Dr Wilkinson was free to exploit the Wilkinson Variant in any way she liked just as the SHA was free to exploit its copyright in the SHA works without reference to Dr Wilkinson. The forensic purpose of this submission was to support the SHA's construction of clause 6.6 by demonstrating that it did not lead to Dr Wilkinson being unable to reproduce her own Wilkinson Variant works.
- However I think Ms Reid's submission is wrong. As the Metzler case shows, if the author did indeed assign the copyright in B, say as a result of the 2007 agreement, then the one thing they cannot do is retain the right to make copies of the existing work. The fact that the author is not copying B2 but only B1 is neither here nor there. Ms Reid accepted that that would be true for discrete works like the musical works in Metzler but contended it did not apply to the case in which parts of works were being considered. I do not accept that. It seems to me the principle applies in both cases.
- I also believe Ms Reid is in error when she contends that copyright in A is not caught by the SHA's construction of clause 6.6. Copyright subsists in original literary works (s1(1) and 3(1) of the 1988 Act). Document (i) of the Established Works is a 12 page paper (with references) called "Senior Healthcare Communication Skills Workshop". Parts of it have been reproduced in the SHA's "Learner Pack". If the SHA are right then it seems to me that the copyright in the paper as a literary work must be what is caught by clause 6.6. On the SHA's construction it seems to me that that copyright, the copyright subsisting in the original literary work as a whole, must be what is "associated with" the Learners Pack. On that basis the copyright in the paper would now belong to the SHA. Indeed I note that this is essentially what Rob Cockburn of the SHA asserted to Dr Wilkinson in 2008, that the agreement captured what he called "background" IPR, in other words Dr Wilkinson's existing copyrights.
- I prefer Mr Hamer's construction of the clause for essentially two separate reasons. First and foremost I think his way of reading the clause is what would be conveyed to a reasonable person with the background knowledge of the parties. The clause ensures that copyright (and any other IP rights) created during the project belongs to the SHA. The parties would know that the project was going to create new works. It makes sense for the copyright in those new works to belong to the SHA. I do not read the clause as referring to any existing copyright at all. The words do not refer to a transfer of something which already exists. It did not necessarily follow that any existing copyright would be relevant since, at the time the contract was entered into, the SHA works were yet to be created. It seems to me that much clearer wording would be needed in order for this clause to function in such a way as to assign property rights which were already in existence.
- Second and separately, a consideration of how the clause would work if the SHA's construction were adopted seems to me to work against that construction. If the SHA's construction is correct then it would sweep up the whole of the contractor's copyright in any existing work from which an extract might be used in the SHA works. That would give the SHA much more than they could possibly need or want and more than they could have any legitimate interest in. Ms Reid submitted that if the clause had the effect of depriving Dr Wilkinson of the copyright relating to what I have called part B above, then that was simply a reflection of it being a bad bargain from Dr Wilkinson's point of view and was not a reason not to read the clause that way. However I note that there is nothing else expressed in the contract itself, nor anything in the surrounding circumstances, which supports the idea that this contract was supposed to lead to a situation in which the SHA could prevent Dr Wilkinson from using her Established Works as part of her work teaching the Wilkinson Variant. Moreover, as mentioned already, I believe the SHA's construction would give them copyright in part A as well – in other words copyright covering text which has not been reproduced at all and which the SHA can have no interest in.
- A lesser, but not trivial, problem with the SHA's construction of clause 6.6 is that there is no mechanism for being able to tell which existing copyrights would be assigned and when. Say the drafting work under the contract began by preparing a draft document which reproduced only an insubstantial part of a prior work. At that stage no existing copyright has been "infringed" (but for a licence) and so presumably no assignment has taken place. Assume the next draft contains more text, now a substantial reproduction; does that mean copyright is now assigned? What if the drafting process then removes text again? Does the assignment remain in effect and therefore do the SHA keep the existing copyright?
- I accept that the clause is capable of bearing the meaning the SHA contend for (although in fact, as I have found first above, I think it is fairly clear that in its own terms Dr Wilkinson's construction is the right one). Given that choice between interpretations, (cf. Rainy Sky paragraph 21) I prefer the one which makes sense in the overall context. That is Dr Wilkinson's construction.
- I have considered whether the previous contracts relating to the ACST project assist either side. In my judgment they do not. It is clear that up to 2007 the arrangements were that copyright in works created during the projects was to belong to the NHS so there would be nothing surprising about that in future. It is true that the 2004 agreement contained fairly full clauses dealing with intellectual property rights with a licence to the NHS etc. but I do not see how any of this can affect the proper interpretation of clause 6.6.
- There is no evidence the discussions between Dr Wilkinson and Trevor Lake were ever communicated to the NHS and therefore they cannot be relevant.
- In summary I find that clause 6.6 does not operate to assign existing copyrights to the SHA.
- Ms Reid also referred on the passage in Copinger (16th Ed) in paragraph 5-93 as follows:
5-93 Separate assignments of derivative works.
Where the first assignment in time is of the later work, then its effect will depend on its construction but prima facie an assignee of the copyright in the later work can maintain an action for infringement against a person using the first work to the extent it can be said to reproduce the later work.1 This is on the basis that the assignment of the second work must generally be taken to include an assignment of the copyright in the preceding works to the extent that they are found in the final work. Otherwise the assignment would be valueless if confined only to what was new in the final work. The assignment could of course be expressly framed to have this effect.
(The footnote reference is to Metzler)
- I agree that the effect of an assignment must be a matter of construction of the assignment. As the learned authors explain, Metzler shows that if the assignment of copyright in the later work is taken to include an assignment of copyright in preceding works then the assignee can maintain an action against the assignor. I also agree that in very many cases that would be the correct construction of an assignment, if the alternative would render it valueless. However that is not this case since clause 6.6 is of real value to the SHA even on Dr Wilkinson's construction. This case is different from either the Metzler case or the scenarios discussed by the learned authors. In Metzler the assignment was one which assigned an existing copyright and could be construed on that basis. Here the question is whether a contract which provides for the creation of new works and deals with the copyright in them also gathers in and acts as an assignment of pre-existing works. As I have said above, in my judgment it does not.
(iii) The extent to which Dr Wilkinson owns copyright in the Established Works if and insofar as the SHA works are derived from them and the question of implied licence
- Given that the contract did not sweep up Dr Wilkinson's copyright in the Established Works and given that the work done pursuant to the contract to create the SHA works in fact involved copying part of some of the Established Works, there must plainly be an implied licence under Dr Wilkinson's copyright in favour of the SHA. The question is – of what scope? Mr Hamer referred to the Classic FM case (supra) and in particular to paragraphs (6) to (9) of Lightman J's analysis. In summary:
i) a minimalist approach is called for, an implication must only be made where it is necessary and then only of what is necessary and no more;
ii) although an implication of an assignment of copyright is possible, that would only likely arise if one party needed the right to exclude the other from using the work and needed the ability to enforce the copyright against third parties;
iii) if necessity requires only the grant of a licence, the ambit of the licence must be the minimum which is required to secure the relevant party the entitlement which the parties to the contract must have intended to confer on him;
iv) the licence accordingly is to be limited to what is in the joint contemplation of the parties at the date of the contract and does not extend to enable the relevant party to take advantage of a new unexpected profitable opportunity.
- I am sure there is no basis on which to imply an assignment of copyright in this case. The SHA do not need to exclude Dr Wilkinson from her use of the Wilkinson Variant Established Works. Moreover the SHA own the copyright in the SHA works, allowing them to enforce their rights in the SHA works against third parties.
- The claimant's case, as I have mentioned above, is that the licence is limited to the purposes of the Connected programme which were made known to Dr Wilkinson in advance. Her case is that this allows the SHA to exploit the works by providing centrally funded Advanced Communication Skills Training within the NHS (or at least within the NHS in England) but does not allow the SHA to exploit the SHA works more widely. There was a dispute about the internal NCAT document which mentioned the idea of moving outside the NHS and into Higher Education Institutions. There was no clear evidence that the idea of licensing the Connected programme abroad had ever been mentioned to Dr Wilkinson. On the matter of diseases, it was clear that the idea of expanding the Connected programme beyond the cancer field was in discussion before the contract in 2007 although the scope of that was disputed. Mr Hamer submitted in closing that the expansion was only into "End of Life care" and only in England.
- Ms Reid did not accept Dr Wilkinson's narrow characterisation of what she understood the purposes of the Connected programme would be but beyond that she did not engage directly with the argument about the scope of implied licence. That is because the defendant's case was focussed on the interpretation of clause 6.6 and on the estoppel point. Nevertheless it seems to me that a key submission by Ms Reid was that there is no term in the 2007 agreement which purported to limit the NHS's exploitation of the Connected programme or its contents (the SHA works). Nothing in the agreement suggests that the material which was to be written was being created for a limited purpose of any sort.
- The implied licence is a licence which arises in relation to work done pursuant to the 2007 agreement and it seems to me that the proper place to look in order to decide in the scope of the implied licence must be the terms of that agreement. The contract records the joint contemplation of the parties. No limit was placed on the SHA's exploitation of the new materials. There is no clause which provides that Dr Wilkinson was to have any right to control or veto what the SHA did with the Connected programme. Clause 6.6 shows that the parties intended to confer the benefit of that new copyright on the SHA. Again no limit is placed on the SHA's enjoyment of that copyright. As a minimum any implied licence must not fetter the SHA's enjoyment or exploitation of that copyright.
- If the terms of the licence did fetter the SHA's enjoyment or exploitation of the Connected programme or the copyright in the SHA works, then it would not secure for the SHA the benefit which the parties to the contract must have intended to confer. Thus it seems to me that the licence cannot act to limit the SHA's exploitation of the Connected programme in any way.
- I will assume, without deciding, that the idea of the SHA licensing the Connected programme abroad was not ventilated in advance. I believe it is irrelevant because, as owners of the copyright in the SHA works, the SHA can reasonably expect to be free to reproduce the SHA works for any purpose. This will include teaching communication skills in other disease areas, have third parties use them (e.g. in Northern Ireland or New Zealand) and earn revenue from that exploitation. Regardless of whether it was raised in advance, if the licence prevented the SHA from exploiting the Connected programme in these ways, then it would be contrary to the terms of the agreement in general and clause 6.6 in particular.
- In order not to fetter the SHA's own rights in the SHA works which the contract provides belongs to them, the implied licence must be irrevocable and royalty free. It must be assignable (with the SHA's copyright) and when the SHA grant a licence under the copyright they own in the SHA works, a sub-licence of Dr Wilkinson's copyright must go along with it.
- In my judgment this conclusion is the only one which satisfies the various criteria for implying terms. It is reasonable and equitable, necessary to give the contract business efficacy, clear and does not contradict any express term of the contract. The result is that the SHA are free to exploit the SHA works in any manner they see fit. Although it means they can compete with Dr Wilkinson in the provision of training courses, there is nothing wrong with that. The 2007 agreement did not purport to prevent the SHA from doing so and did not purport to give Dr Wilkinson the right to limit such competition. Equally however Dr Wilkinson is free to exploit her Wilkinson Variant in any manner she sees fit. She has not surrendered the copyright in the Wilkinson Variant. She can compete with the SHA and Mr Cockburn was wrong when he suggested to Dr Wilkinson in 2008 that the "background IPR" (i.e. the copyright in the Wilkinson Variant) now belonged to the SHA.
- On my findings, the issue of estoppel does not arise.
- I find that:
i) The 2007 Agreement did not operate to assign any of Dr Wilkinson's existing copyright in the Established Works;
ii) The SHA works do reproduce substantial parts of some of Dr Wilkinson's Established Works but the SHA has benefit of an implied licence under Dr Wilkinson's copyright; and
iii) The SHA's implied licence does not contain any of the limitations contended for by Dr Wilkinson. It does not limit the scope of the SHA's exploitation of the SHA works in any way.
- I will hear the parties as to the scope of appropriate declarations to be made following from this judgment.
- In paragraph 38 I stated that none of the defendant's witnesses had referred to the NCAT July 2005 document which had been put to Dr Wilkinson in cross-examination. That is an error in that Dr Heaven did refer briefly to the document however in doing so she did not suggest it was shown to Dr Wilkinson and did not suggest it was anything other than an internal NCAT document. It does not make any difference to the inference that it is an internal NCAT document nor to my conclusion that it was not shown to Dr Wilkinson before the contract was signed.
- In paragraph 54 I stated that the Connected programme had been licensed for use in Northern Ireland. The defendant's position is that the possibility of licensing in Northern Ireland had been explored but no licence was entered into. I do not believe it was common ground exactly what happened vis a vis Northern Ireland but as far as I am aware the details do not matter.