Caxton Publishing Company Ltd v Sutherland Publishing Company

I have had the privilege of considering the opinion of my noble and learned friend Lord Porter, with which I find myself in agreement, and I only desire to add some further observations on two of the four contentions of the Plaintiff-Appellants, videlicet, as to the applicability of the limitation provision of section 10 to proceedings under section 7, and as to the proper measure of damages.

On the question of limitation, I have felt less difficulty than my noble and learned friend, and I agree with the view expressed by my noble and learned friend Lord Russell of Killowen, whose opinion I have also been privileged to consider, with regard to the proper construction of section 14. The question depends on whether proceedings under section 7 constitute an action "in respect of infringement of copyright" within the meaning of section 10. The Plaintiffs contended that proceedings under section 7 in respect of "infringing copies" might be taken in a case in which no infringement had occurred, having regard to the definition of "infringing" in section 35, and the provisions of section 14 as to the importation of copies. The argument is that copies imported in breach of the provisions of section 14 are "imported in contravention of the provisions of this Act" and are therefore infringing copies within the definition in section 35, though there has been no infringement of copyright. I agree with my noble and learned friend Lord Russell that, by its terms, section 14 is made a substantive part of the Customs Act, and that a contravention of the provisions of section 14 constitutes a contravention of the provisions of the Customs Act, and not a "contravention of the provisions of this Act" within the meaning of the definition in section 35. The use in section 14 of the phrase "prohibited by this section", in my opinion, presents no difficulty, when you find the express direction that the section is to have effect as if it was part of the Customs Act, for that, in my opinion, makes the prohibitions of the section substantive prohibitions of the Customs Act.

On the question of assessment of damages, I have little to add to the reasoning of my noble and learned friend Lord Porter. Under section 7 the Plaintiffs are to be treated as fictional owners of infringing copies, which they did not create and would never have created. The conception of these infringing copies, where the Plaintiffs' copyright matter is inextricably mixed by manufacture with the non-infringing matter, is in itself rather imaginary and problematical, and the question of their value is bound to be different from the question of what I may call the virgin value of the Plaintiffs' copyright. The infringing copies are found in a setting created by the Defendants and I agree with my noble and learned friend that the Court, in assessing the damages, is entitled and bound to take that setting into account, and that this will fairly be done in taking some proportion of the total value of the volume, after making due allowance for expenses incurred after the act of conversion.

I concur in the motion about to be proposed by my noble and learned friend Lord Russell of Killowen.

In the course of the hearing of these consolidated appeals four matters arose for discussion and decision, viz.: —

1. Whether on the true construction of the Copyright Act, 1911, the respondents are entitled in respect of the same copies both to damages for infringement under section 6 and to damages for conversion under section 7? Farwell J. held that they were not. The Court of Appeal held that they were.

2. Whether section 10 of the Act applies to proceedings under or by virtue of section 7? Crossman J. held that it did apply. The Court of Appeal (MacKinnon LJ. dissenting) held that it did not apply.

3. What was the act of the appellants by which the infringing copies were converted?

4. What is the proper measure of the damages which the respondents sustained by reason of the conversion?

Upon the first question I have had the advantage of reading and considering the opinions prepared by your Lordships upon this point, and I agree with the view that it is impossible to find any safe ground upon which we would be justified in holding that the legislature intended that these remedies should be alternative and not cumulative.

The second question is one of some difficulty. One would think that since section 10...