Island Records Ltd, ex parte
| Jurisdiction | England & Wales |
| Judge | THE MASTER OF THE ROLLS,LORD JUSTICE SHAW,LORD JUSTICE WALLER |
| Judgment Date | 21 March 1978 |
| Judgment citation (vLex) | [1978] EWCA Civ J0321-2 |
| Date | 21 March 1978 |
| Court | Court of Appeal (Civil Division) |
Re Musical Performances
[1978] EWCA Civ J0321-2
The Master of the Rolls (Lord Denning)
Lord Justice Shaw and
Lord Justice Waller
In The Supreme Court of Judicature
Court of Appeal
On Appeal from the High Court of Justice
Chancery Division
(Mr. Justice Walton)
MR. H. LADDIE (instructed by Messrs. A.E. Hamlin & Co., Solicitors, London) appeared on behalf of the Plaintiffs (Appellants).
MR. P. GIBSON (instructed by the Attorney-General) appeared as an amicus-curiae.
If you would like a caption for this case, I can suggest it. It is "Pop Artists want to stop Bootleggers". It needs explanation for the innocents. Take a popular group who play and sing live in a theatre or in a broadcasting studio. They give an exciting performance. This performance is transmitted on to a tape by a recording company. The company afterwards make records of it and sell them to the public. But there is a person in the audience or beside the wireless set who is listening to the performance. He has in his hand or his pocket one of the latest scientific devices. It is a tiny machine by which he records on tape this exciting performance. It is called an electret condenser microphone. Having recorded it on the one tape, he then uses the tape to make hundreds of copies and sell them in the form of cassettes and cartridges or gramophone records. Sometimes these are poor in quality. Sometimes they are as goods as the records made by the recording companies themselves. They are sold to the public by small shopkeepers at cut prices and eat into the sales of the recording companies. The performers suffer also: because they receive royalties from the recording companies according to the number sold.
The performers, however, have no copyright in their performance: nor have the recording companies. No matter how brilliant the performance - which no one else could rival - nevertheless it is so intangible, so fleeting, so ethereal, that it is not protected by law of copyright. The actual musical work which they play or sing may itself be the subject of copyright, but the performers have no right in that musical work itself. It may be out of copyright. It may be the work of an old composer who died long ago. Or it may be the copyright of a modern composer or owner, who has already beenpaid his due. The important thing to notice is that the performers themselves have no copyright.
No matter that the performers have no copyright, nevertheless the making of these secret tapes and records - and the selling of then - is quite illegal if it is done without the written consent of the performers. It is a criminal offence, punishable by fine or imprisonment. Those who engage in this trade are called "Bootleggers". That is a term which was coined in the United States one hundred years ago. Those engaged in illicit trading in liquor used to hide it in the upper part of their tall boots - the leg of the boot.
We must distinguish these "bootleggers" from the "pirates" in the trade. "Pirates" are different in this way: They do not reproduce live performances. They reproduce existing records. They take the sound records made by the recording companies and reproduce them illicitly on to their own tapes and records, and then sell these copies. They can sell them at a very low price, because they have a cheap apparatus for copying, and do not have to maintain studios, or pay artists. They are sold by small shopkeepers in poor surroundings. These copies are not only illegal. They are infringement of copyright. They infringe the copyright of the recording companies in their existing records. These infringers are called "pirates" because "piracy" has long been used to describe the infringement of copyright, as in the phrase "literary piracy".
These "pirates" used to do an enormous trade in infringing copies of recorded music. It was very difficult to catch them. As soon as one small shopkeeper was sued, he got rid of all infringing material. He passed his stock to a fellow pirate:and then declared that he never had any records except the one which the plaintiffs had discovered. This stratagem was, however, defeated by the enterprise, of Mr. Hugh Laddie of counsel. He persuaded the judges of the Chancery Division to make an order - ex parte - on the shopkeeper, before the writ is served. This order is served on him, with the writ, in-the presence of a solicitor. It catches the pirate unawares - before he has had time to destroy or dispose of his infringing stock or his incriminating papers. It requires him to disclose all relevant material that he has. The order "freezes" the stock which he has: and enables the plaintiff to inspect it. The order contained safeguards to see that no injustice was done. The first reported case was the order made by Mr. Justice Templeman in E.M.I. Ltd. v. Pandit (1975) 1 Weekly Law Reports 302: The practice was confirmed and consolidated by the decision of this court in Ancon Piller v. Manufacturing Processes Ltd. (1976) Chancery 55. The effect of these ex parte orders has been dramatic. When served with them, the shopkeepers have acknowledged their wrongdoing and thrown their hand in. So useful are these orders that they are in daily use - not only in cases of infringement of copyright, but also in passing-off cases, and other cases. They are called "Anton Piller" orders.
Now we have the question whether "Anton Piller" orders can be made against bootleggers. To a layman there would seem no difference between pirates and bootleggers. If an "Anton Piller" order can to made against a pirate, it should be possible, too, against a bootlegger. But there is a difference in law. "pirate" is guilty of a civil wrong. He is infringing the copyright of the recording companies in their tapes and records. But a "bootlegger" is not guilty of a civilwrong. He is only guilty of a crime. Many of the judges have ignored this difference. They have granted "Anton Filler" orders ex parte against bootleggers. We are told that Mr. Justices Cantley, Plowman, Foster, Whitford, Fox and Slade have granted them. None of those cases has been reported. But three judges have refused them: Mr. Justice McCardie in Musical Performers Protection Association Ltd. v. British International Pictures Ltd. (1930) 46 Times Law Reports 485: Sir Robert Megarry, Vice-chancellor, in Apple Corps Ltd. v. Lingasong Ltd., 3 Fleet Street P.L.R. (Patent Law Reports) 345: and Mr. Justice Walton in this present case on 3rd January, 1978. This is an appeal from Mr. Justice Walton's decision. It raised a point of such importance - in which the defendant was not represented - that we asked the Attorney-General if he would appoint an amicus curiae to help us. He appointed. - Mr. Peter Gibson, and his assistance has been invaluable.
THE STATUE
The first point is on the statute. It clearly makes "bootlegging" a crime. But does it confer a civil cause of action on the performers and recording companies?
There are two main statutes. The first in 1925. The second in 1958. There are two additional statutes increasing penalties One in 1963. The other in 1972. I will read only the material parts of the present statute: "If a person knowingly makes a record, directly or indirectly from or by means of the performance of a dramatic or musical work, without the consent in writing of the performers … he shall be guilty of an offence under this Act and shall be liable" to a fine of £20 for each record made or punishment of two years or both.
CIVIL ACTION FOR DAMAGES
The courts have discussed on many occasions whether or not the breach of a statute (which prescribes only criminal penalties) also gives a civil action for damages. On this point "the only rule" said Lord Simonds in Cutler's case (1949) Appeal Cases at page 407 "which in all circumstances is valid is that the answer must depend on a consideration of the whole Act and the circumstances, including the preexisting law, in which it was enacted". Mr. Laddie submitted that the statutes here were passed for the protection of a particular person or class of persons, namely, the performers. That was seen from the fact that the performers could give refuse their written consent. So this case came, he said, within the pro-cases, such as Groves v. Lord Wimborne (1898) 2 Queen's Bench 402, Monk v. Warbey (1935) 1 King's Bench 77, and Solomon v. Gertzdnstein (1954) 2 Queen's Bench 293. But Mr. Laddie's proposition is not universally true. There are numerous penal statutes which could be said to be passed for the protection of a particular class of persons which have been held not to give rise to a civil action for damages. These are the contra-cases, such as Atkinson v. Newcastle Waterworks (1877) 2 Ex D 447, Phillips v. Hygienic Laundry (1923) 2 Queen's-Beach 838, and Cutler v. Wandsworth Stadium (1949) Appeal Cases 398.
The truth is that in many of these statutes the legislature has left the point open. It has ignored the plea of Lord du Parcq in Cutler's case (1949) Appeal Cases at page 410. So it has left the courts with a guess-work puzzle. The dividing line between the pro-cases and the contra-cases is so blurred and so ill-defined that you might as well toss a coin todecide it. I decline to indulge in such a game of chance. To my mind, we should seek for other ways to do "what justice A shall appertain".
THE PROTECTION OF PRIVATE BIGHTS
The way was pointed out by Mr. Peter Gibson, who was engaged in the recent case of Gouriet v. Union of Post Office Workers (1977) 3 Weekly Law Reports 300. He draw attention to the rule of the Court of Equity in these natters. It intervened to protect a private individual in his rights of property, and in aid of this would grant an injunction to restrain a defendant from committing an unlawful act, even though it was a crime punishable by the criminal court: and would supplement...
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