JHP Ltd v BBC Worldwide Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Norris |
| Judgment Date | 16 April 2008 |
| Neutral Citation | [2008] EWHC 757 (Ch) |
| Docket Number | Case No: HC06C01995 |
| Court | Chancery Division |
| Date | 16 April 2008 |
[2008] EWHC 757 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Norris
Case No: HC06C01995
Ms J Mulcahy (instructed by Forbes Anderson Free) for the Claimant
Ms C May (Mr J Whyte with her) (instructed by BBC Worldwide Legal Department) for the First Defendant
The Second Defendant did not appear
Hearing dates: 23 rd-25 th and 29 th-30 th October 2007
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Date……………………………… Mr Justice Norris…………………………………
The Daleks first became known to humankind in 1963 when they appeared in the first series of “Dr Who”. They were some of the most engaging and enduring creations of the fertile mind of the late Terry Nation, though the conceit he used was that he simply learned of their existence through his discovery of “The Dalek Chronicles”, which he translated. More was learned of their origins and mode of existence as they featured in various further episodes of “Dr Who”, and there grew up around them a separate narrative and lore which was developed not only through television, but also through novelisations, comic strips, audio plays and the publication of books and “annuals”.
Paul Fishman's father (Jack Fishman) was an acquaintance of Terry Nation, and the Daleks were naturally a subject of conversation between them. As a schoolboy Paul Fishman would overhear these conversations. He himself believed that Terry Nation had discovered “The Dalek Chronicles”, and he became interested in and enquired about this alien technology. He may even be the model for the 11-year-old Roger Marlow who features in a story called “The Orbitus” published as part of “The Dalek World”. Terry Nation was interested in Paul Fishman's questions, because it gave him an insight into what intrigued the schoolboy mind. This is not of legal relevance but it explains Paul Fishman's deep personal engagement with legal issues with which this action is concerned.
Jack Fishman established (and Paul Fishman is now the sole director of) the Claimant JHP Limited (“JHP”). JHP was originally a book production company. It worked in association with a publishing company called Souvenir Press Ltd (“Souvenir”), whose proprietor was Ernst Hecht. It is the undisputed evidence of Mr Hecht that Jack Fishman conceived the idea of publishing a book about the Daleks and worked with Terry Nation to develop the idea. According to Mr Hecht the BBC “owned rights in the Dalek characters”, and it was necessary to obtain their permission for the venture: and it appears that in due course an agreement was made between the BBC and Souvenir by which the BBC granted Souvenir the right to produce a children's book containing drawings based on the Dalek design (in relation to the artistic drawings of which the agreement recited the BBC owned the copyright). This agreement and its successors were not examined at trial.
Agreements were also entered into between Terry Nation and Souvenir. The first was dated 7 th May 1964 and related to a book provisionally entitled “The Daleks Book” (“the 1964 Agreement”). The second was a letter dated the 12 th March 1965 by which Terry Nation's agent accepted the same terms for a further book provisionally referred to as “The Dalek Annual No.2” (“the March 1965 Agreement”). The third was a formal Memorandum of Agreement dated the 14 th of July 1965 relating to a further book provisionally called “The Dalek Pocket Book and Space Travellers Guide” (“the July 1965 Agreement”). Pursuant to the 1964 Agreement there was published “The Dalek (sic) Book”; pursuant to the March 1965 Agreement “The Dalek World”; and pursuant to the July 1965 Agreement (shortly put) “The Dalek Pocket Book” (together “the Books”). “The Dalek Pocketbook” in particular was regarded by those who thought of Terry Nation as the discoverer of “Tthe Dalek Chronicles” as a reference work that sought to document the threat of the Daleks in a serious and coherent manner. These Agreements and Books provided the essential material examined at trial.
Terry Nation died in March 1997. In the early part of 2001 Paul Fishman decided to explore the exploitation of the Books in some way as part of “a serious effort..to explore other potential Dalek related merchandise”. On 4 th June 2001 he wrote to Ben Dunn (“Mr Dunn”) at BBC Worldwide Ltd (“BBCW”) drawing attention to “a series of children's publications that had been produced by [his] company in conjunction with the BBC during the 1960's” and suggesting that they may be now worth republishing. He stated:-
“The company produced all these publications and continues to retain all of its rights relating to the content (text and graphics)…..As the Daleks have continued to grow in their cult status, passing from generation to generation, I believe there is a lot of potential for a revised and compiled publication”
(Where Paul Fishman referred to “the company” he was treating Souvenir and JHP as one and the same, because the relationship between the companies had always been very informal: there was no formal agreement assigning Souvenir's rights in the Books to JHP until the 19th of December 2002). Mr Dunn consulted Mr Justin Richards (a writer well-versed in all things Dalek) who was unclear exactly what Paul Fishman was proposing, but whose immediate reaction was that the BBC should look at “doing one or more Dalek books which re-use the material available, but with extra stuff as well”.
It will be necessary later to examine the progress of the project and the creative sources of the book that eventually emerged. It suffices for present purposes to note, first, that no agreement was entered between JHP or Souvenir or Paul Fishman on one side and BBCW on the other concerning the use by BBCW of any rights in the Books that Souvenir held: and second, that in October 2002 BBCW published a book called “The Dalek Survival Guide”, produced by a team of writers (“the Guide”).
By his Re-re-amended Particulars of Claim in this action Paul Fishman alleges that Souvenir was and JHP now is the owner of the copyright in the Books, that BBC Worldwide has infringed that copyright by virtue of its unauthorised use of a substantial part of the Books in the publication of the Guide, that in so acting BBC Worldwide acted in flagrant disregard of JHP's rights, so that JHP is entitled to damages (and to additional damages under section 97(2) of the Copyright, Designs and Patents Act 1988) (“ CDPA 1988”) in respect of the past infringement, and to an injunction to restrain further infringement.
A sufficient statement of the law by reference to which I must decide the initial group of issues in connection with this claim to relief is as follows. Copyright is a property right which subsists in an original literary work. In this context work is “original” if it originates with its author i.e. its creation involved him in the expenditure of a substantial amount of independent skill or labour : see Laddie “Modern Law of Copyright and Design” 3rd edition paragraph 1.9. In essence “the right” is a right to prevent others committing infringing acts in relation to original work, thereby leaving the owner of the copyright with the exclusive right to undertake those acts. By section 90 CDPA 1988 such copyright is transmissible by assignment, and such assignment may be partial (i.e. limited to some only, but not all, of the things that the copyright owner has the exclusive right to do). By section 92(1) CDPA 1988 instead of entering into a partial assignment of the copyright the owner may grant “an exclusive license”, authorising the licensee to the exclusion of all other persons (including the grantor) to exercise a right which would otherwise be exercisable exclusively by the copyright owner. The rights and remedies of an exclusive licensee against third parties are concurrent with those of the copyright owner: s.101(2) CDPA 198But by section 101(3) CDPA 1988 in any action brought by an exclusive licensee the defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner. Because of this and because of the concurrency of the rights of the exclusive licensee and of the copyright owner, section 102(1) CDPA 1988 provides that in an infringement action the exclusive licensee must add the copyright owner as a claimant or as a defendant. (To cover the possibility that this section applied to the case before me the estate of Terry Nation was added as the Second Defendant: but it has not been represented or addressed any argument to me. A representative of the estate, Timothy Hancock (“Mr Hancock”), was a called to give evidence by BBCW). By section 104 CDPA 1988, where a name purporting to be that of the author appears on the copies of the work as published then it is to be presumed (until the contrary is proved) that that person is the author of the work: and where that author is dead it is to be presumed (subject to proof to the contrary) that the work is an original work.
With that summary I can turn to consider the first key issue. In order to succeed in its claim for relief JHP must establish that it is the owner of some right capable of being infringed by the publication of the Guide. In correspondence JHP has asserted ownership of very wide rights. In a letter dated the 25 th of June 2002 solicitors instructed by JHP asserted ownership of rights in material “including any graphic images, text, original material written by Terry Nation and/or any other artistic concept included in the original publications”: and he had...
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