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England and Wales Patents County Court
You are here: BAILII >> Databases >> England and Wales Patents County Court >> Slater v Wimmer  EWPCC 7 (16 February 2012)
Cite as:  EWPCC 7
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7 Rolls Buildings
London EC4A 1NL
B e f o r e :
| STEPHEN SLATER
|- and -
Ben Longstaff (instructed by Memery Crystal) for the Defendant
Hearing dates: 30th November 2011
Crown Copyright ©
His Honour Judge Birss QC :
(a) There are a considerable number of authorities where a copyright, brought into existence by a person ("the contractor") pursuant to a contract for services with another ("the client"), has been held to belong in equity to the client;
(b) The issue in every such case is what the client under the contract has agreed to pay for and whether he has "bought" the copyright.
(c) The alternatives in each case are that the client has bought the copyright, some form of copyright licence or nothing at all.
(d) The general principles governing the respective rights of the contractor and client are as follows:
(1) the contractor is entitled to retain the copyright in default of some express or implied term to the contrary effect;
(2) the contract itself may expressly provide as to who shall be entitled to the copyright in work produced pursuant to the contract;
(3) the mere fact that the contractor has been commissioned is insufficient to entitle the client to the copyright. Where Parliament intended the act of commissioning alone to vest copyright in the client e.g. in the case of unregistered design rights and registered designs, the legislation expressly so provides […]. In all other cases the client has to establish the entitlement under some express or implied term of the contract.
for a term to be implied, the following conditions (which may overlap) must be satisfied: (1) it must be reasonable and equitable; (2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract is effective without it; (3) it must be so obvious that "it goes without saying"; (4) it must be capable of clear expression; (5) it must not contradict any express term of the contract.
The courts' usual role in contractual interpretation is, by resolving ambiguities or reconciling apparent inconsistencies, to attribute the true meaning to the language in which the parties themselves have expressed their contract. The implication of contract terms involves a different and altogether more ambitious undertaking: the interpolation of terms to deal with matters for which, ex hypothesi, the parties themselves have made no provision. It is because the implication of terms is so potentially intrusive that the law imposes strict constrains on the exercise of this extraordinary power . . .
The question of whether a term should be implied, and if so what, almost inevitably arises after a crisis has been reached in the performance of the contract. So the court comes to the task of implication with the benefit of hindsight, and it is tempting for the court then to fashion a term which will reflect the merits of the situation as they can appear. Tempting, but wrong.
(7) circumstances may exist when the necessity for an assignment of copyright may be established. As Mr Howe has submitted, these circumstances are, however, only likely to arise if the client needs in addition to the right to use the copyright works the right to exclude the contractor from using the work and the ability to enforce the copyright against third parties. Examples of when this situation may arise include: (a) where the purpose in commissioning the work is for the client to multiply and sell copies on the market for which the work was created free from the sale of copies in competition with the client by the contractor or third parties; (b) where the contractor creates a work which is derivative from a pre-existing work of the client, e.g. when a draughtsman is engaged to turn designs of an article in sketch form by the client into formal manufacturing drawings, and the draughtsman could not use the drawings himself without infringing the underlying rights of the client: (c) where the contractor is engaged as part of a team with employees of the client to produce a composite or joint work and he is unable, or cannot have been intended to be able, to exploit for his own benefit the joint work or indeed any distinct contribution of his own created in the course of his engagement: see Nichols Advanced Vehicle Systems Inc. v. Rees  R.P.C. 127 at 139 and consider Sofia Bogrich v. Shape Machines, unreported, November 4, 1994, Pat Ct and in particular page 15 of the transcript of the judgment of Aldous J. In each case it is necessary to consider the price paid, the impact on the contractor of assignment of copyright and whether it can sensibly have been intended that the contractor should retain any copyright as a separate item of property;
Guidance as to the approach to be adopted is provided in a passage in the judgment of Jacobs J. in Beck v. Montana Constructions Pty [1964–5] N.S.W.R. 229 at 235 cited with approval by Widgery L.J. in Blair v. Osborne &Tomkins, supra at 87:
it seems to me that the principle involved is this; that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission, or consent, or licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.
These authorities [the ones he found difficult to reconcile] accordingly afford limited guidance today where the issue raised is whether the necessary implication is of an assignment or some form of licence. Indeed today it may be rare that necessity requires an assignment and the grant of an exclusive licence will not suffice.
i) Was Mr Slater bound by any agreement(s) with Mr Wimmer or Wide Eyed?
ii) If so what were the terms as regards ownership and licensing of copyright?
iii) How much footage had been used?
i) A second witness statement of Ian Bishop responding to Mr Gifford's evidence. This relates to Mr Gifford putting High & Wild into voluntary liquidation and asserting that the list of creditors produced in that process was not complete or correct. Mr Bishop also asserts that Mr Gifford has been in breach of his director's fiduciary duties. He says he has been questioned by and given evidence to the police to assist their investigations into Mr Gifford and High & Wild.
ii) A copy of a Nepalese film production permit which permits Mr Slater to film between 27th September and 10th October 2008.
iii) What I am told is a Nepalese arrest warrant issued for the arrest of Mr Gifford.
Finding the primary facts
Application of the law to the facts
Producer or principal director?
The effect of the contract