Mr Edward Christopher Sheeran MBE v Mr Sami Chokri
| Jurisdiction | England & Wales |
| Judge | Sir Gerald Barling |
| Judgment Date | 26 January 2022 |
| Neutral Citation | [2022] EWHC 187 (Ch) |
| Docket Number | Claim No: IL-2018-000095 |
| Court | Chancery Division |
[2022] EWHC 187 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
7 Rolls Buildings,
Fetter Lane, London
EC4A 1NL
THE HON Sir Gerald Barling
(SITTING AS A JUDGE OF THE CHANCERY DIVISION)
Claim No: IL-2018-000095
Ian Mill QC and Jessie Bowhill and Rayan Fakhoury (Instructed by Bray & Krais, Fulham Business Exchange, Suites 9 & 10, The Blvd, London, SW6 2TL) appeared on behalf of the Claimants.
Andrew Sutcliffe QC AND Tom Rainsbury (Instructed by Keystone Law, 48 Chancery Lane, London, WC2A 1JF) appeared on behalf of the Defendants.
This pre-trial review is in a copyright action relating to a song called “Shape of You” written by claimants (1) to (3), Mr Edward Sheeran, Mr Steven McCutcheon and Mr John McDaid. The song has been very popular and successful. The claimants brought the action for a declaration that they have not infringed any copyright of the defendants in a song called “Oh Why”, it having been suggested in correspondence that “Shape of You” had infringed that copyright. The defendants filed a Defence and a Counterclaim alleging infringement. There followed a Reply and a Defence to Counterclaim by the claimants denying infringement, and ultimately a Reply to the Defence to Counterclaim.
In the Reply to the Defence to Counterclaim, other examples were pleaded of what were said to be instances of copying by one or more of the claimants. One concerned a song called “The Rest of our Lives”, which was said to be in part copied from another song. That allegation was struck out at an earlier stage of the proceedings. However, certain other instances survived the strike out application; in particular, paragraph 4(3) of the pleading alleges that “Shape of You” itself was in part copied from a song called “No Scrubs”. Paragraph 6 of the pleading refers to a song called “Photograph” which, according to the evidence, was written by the first and third claimants, Mr Sheeran and Mr McDaid, and which is said to be in part copied from a song called “Amazing”.
In June 2016 proceedings were brought in California by the songwriters of “Amazing” against the songwriters of “Photograph” alleging copyright infringement. The latter denied infringement, and Mr Sheeran and Mr McDaid maintained that denial in the present proceedings. The Californian proceedings were settled. The Settlement Agreement, dated 6 March 2017, has been disclosed. Whilst the claimants maintained their position that no infringement had occurred, the Settlement Agreement involved a very substantial payment to the writers of “Amazing” and a 35 per cent share of the musical rights in the allegedly infringing song. No claim in the Californian proceedings was based on infringement of copyright in the lyrics.
In the present proceedings, the defendants rely upon the settlement as giving rise to an inference that, despite their denial, the claimants had copied “Amazing”, and this, together with the other similar fact material, is said by the defendants to show that the claimant songwriters were engaged in habitual copying, a factor in turn said to support the claim that in their song “Shape of You” they copied the defendants' song “Oh Why”.
With that preamble I turn to the issues before me in this PTR. These have been helpfully narrowed, as explained in their written and oral submissions by Mr Ian Mill QC, who appears with Ms Jessie Bowhill and Mr Rayan Fakhoury for the claimants and by Mr Andrew Sutcliffe QC and Mr Tom Rainsbury for the defendants.
The present application — Paragraphs 17 and 18 of CPR PD51U
By reference to the draft minutes of order provided to me at the hearing, the only remaining contentious issues relate to paragraph 2.2 of the draft. One or two other aspects of the draft may require some further discussion and tweaks as between the parties, but neither side envisaged that agreement would not be reached on those. So it is the two-part proposed order at paragraph 2.2 with which I am now concerned.
In the version given to me yesterday (it may have changed slightly overnight) paragraph 2.2 reads as follows:
“2.2 The claimants are to produce unredacted copies of —
(1) the musicologist's report which was sent to Bray & Krais by Loeb & Loeb on or after the request from Bray & Krais on 15 January 2016; and
(2) all communications to and from Mr Guy Protheroe concerning ‘Photograph’.”
The defendants invite me to make these orders under paragraph 17.1(4) of CPR PD51U, on the ground that there has been or may have been a failure adequately to comply with an order for Extended Disclosure and it is reasonable and proportionate (as defined in paragraph 6.4) to make the order. In defining “reasonable and proportionate”, paragraph 6.4 refers to the overriding objective and a number of specific factors to which regard is to be had. These include the complexity of the issues, the importance of the case, the likely probative value of the documents in question, their number, the ease and expense of searching for and retrieving them and the need to ensure that the case is dealt with expeditiously, fairly and at a proportionate cost.
Alternatively, the defendants seek the disclosure pursuant to paragraph 18 of CPR PD51U, on the ground that the disclosure in issue is “necessary for the just disposal of the proceedings and is reasonable and proportionate” as defined in the provision referred to above.
The Loeb & Loeb report
I deal first with the issue relating to the expert report sent to the claimants' solicitors by Loeb & Loeb, who were the lawyers acting for the plaintiff in the Californian proceedings. I need to explain a little background.
This report was apparently prepared on behalf of the plaintiff in those proceedings, which were brought against the claimants in the present proceedings in respect of the alleged copying of the plaintiff's song “Amazing” by the claimants' song “Photograph”. It is the report of an expert musicologist, although for convenience I will refer to it as the Loeb & Loeb report.
The claimants have disclosed the following emails relating to that report:
(1) An email dated 15 January 2016 from the claimants' solicitors to the Californian plaintiff's lawyers, Loeb & Loeb, as follows:
“Before replying fully to your claims, our client would like to receive a copy of the musicologist's report your firm commissioned … In the meantime no admissions are made and all of our clients' rights and remedies remain expressly reserved.”
(2) An email in reply from Loeb & Loeb dated 5 February 2016 as follow:
“Thank you for your email dated January 15 below. My client is willing to share the report of their musicologist as part of settlement discussions.
Please confirm that our providing a copy of the musicologist's report to you is for settlement purposes only and shall be deemed a confidential settlement communication.
Upon your confirmation we will be happy to provide you with a copy of the report.
All rights continue to be reserved.”
(3) An email in redacted form from the claimants to Loeb & Loeb dated 23 February 2016 (before me at page 356 of the defendants' application bundle). I was told by Mr Mill that the first paragraph of this email states as follows:
“With regard to your email, I confirm that I agree that the furnishing of your musicologist's report will be considered a privileged and confidential communication.”
The next paragraph of that email reads:
“I have some further questions that I think are important in order to evaluate your clients' claims beyond the musicologist's report.”
It is not in dispute that a copy of the Loeb & Loeb report was then provided to the claimants' solicitors.
I note that in the present proceedings there are expert musicologist reports on both sides dealing with, amongst other things, the same question of whether the claimants' song “Photograph” infringed the Californian plaintiff's copyright in “Amazing”. I have been shown these reports briefly. It seems that the defendants' expert expresses the view that it does infringe, whereas the claimants' expert expresses the contrary view.
The defendants submit that the Loeb & Loeb report is equally disclosable as the Settlement Agreement. (Mr Sutcliffe also relied upon a number of clauses in that agreement as supporting his application. I will refer to those clauses in a moment.) The report is said to be relevant and important; the present case is significant and complex; the material sought is likely to be highly probative, as shining a light on the claimants' decision to settle the Californian proceedings; the documents are limited in number, easily produced and necessary for the expeditious and fair resolution of the case. Mr Sutcliffe expanded on these submissions as follows. If the Loeb & Loeb report were produced, he would be able to use it to cross-examine the claimants' expert in the present proceedings in order to challenge his view that the song Photograph does not infringe the Californian plaintiff's copyright in the song Amazing. This could bolster the similar fact argument relating to that alleged copying. Mr Sutcliffe relies on the same points mutatis mutandis in respect of the relevance and importance of what have been called the Protheroe communications, which comprise the second element in paragraph 2.2 of the draft order. I will return to that aspect in due course.
I do not share the defendants' view...
To continue reading
Request your trial
-
Mr D Rogerson v Erhard-Jensen Ontological/Phenomenological Initiative Ltd and W Erhard: 2305524/2021
...should have done (Wall’s Meat Co Ltd v Khan 1979 ICR 52). 21. Mr Kemp referred me to paragraphs 30, 31 and 32 of Sheeran -v- Chokri [2022] EWHC 187 (Ch) which sets out the principles relating to without prejudice material in the judgment of Newey J in EMW Law LLP v Halborg [2017] EWHC 1014 ......
-
Specific Disclosure Application In A Music Copyright Infringement Claim Fails (Sheeran And Others v Chokri And Others)
...brought under CPR PD51U against Ed Sheeran and others responsible for writing 'Shape of You'. Sheeran and others v Chokri and others [2022] EWHC 187 (Ch) What are the practical implications of this This is an interest judgment in a high-profile music copyright claim which considers in detai......
-
Specific Disclosure Application In A Music Copyright Infringement Claim Fails (Sheeran And Others v Chokri And Others)
...brought under CPR PD51U against Ed Sheeran and others responsible for writing 'Shape of You'. Sheeran and others v Chokri and others [2022] EWHC 187 (Ch) What are the practical implications of this This is an interest judgment in a high-profile music copyright claim which considers in detai......