Novello and Company Ltd v Keith Prowse Music Publishing Company Ltd
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE LLOYD,LORD JUSTICE JACOB,LORD JUSTICE CHADWICK |
| Judgment Date | 14 December 2004 |
| Neutral Citation | [2004] EWCA Civ 1776 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | A3/2004/1070 |
| Date | 14 December 2004 |
[2004] EWCA Civ 1776
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION
(MR JUSTICE PATTEN)
Royal Courts of Justice
Strand
London, WC2
Lord Justice Chadwick
Lord Justice Jacob
Mr Justice Lloyd
A3/2004/1070
MR K GARNETT QC (instructed by Messrs Davenport Lyons) appeared on behalf of the Appellant
MR I MILL QC AND MS S FATIMA (instructed by Messrs Clintons) Appeared on behalf of the Respondent
Tuesday, 14th December 2004
On 1st June 1957 the Copyright Act 1956 came into force. It repealed almost all sections of the Copyright Act 1911, but it included transitional provisions as regards some of those sections. On 1st August 1989 the Copyright, Designs and Patents Act 1988 came into force and repealed the 1956 Act.
Claims in relation to United Kingdom copyrights now depend on the terms of the 1988 Act, but in this appeal we are concerned with the effect of a disposition of copyright made in 1973, while the 1956 Act was in force, in relation to copyright which arose for the first time during the currency of the 1911 Act. Thus the matters at issue cover periods during which each of the three Acts in turn was in force.
In summary, the point in issue is this. Under the 1911 Act (section 5), the term of copyright, relevantly, was the life of the author plus 50 years from his death, which was longer than it had been under the previous law. Under section 5(2) the owner of the copyright could assign the right for its whole term, or part of it, but where the author of the work was the first owner, no assignment (except by will) could confer rights beyond 25 years from his death, and the reversionary interest would devolve on his personal representatives as part of his estate. The 1956 Act repealed section 5 of the 1911 Act but preserved the proviso to section 5(2) by paragraph 28(3) of schedule 7.
The author presently in question, the well-known composer Richard Addinsell, composed film scores and other musical works, including many in the 1940s. During the 1940s he assigned the relevant copyrights to Keith Prowse and Co Limited which later assigned them to the defendant. Those assignments, made during the currency of the 1911 Act, necessarily were effective only for the period until 25 years after his death. He died in 1977 and accordingly the reversionary interest operated as from 2002, and the 1940s assignments gave the defendant the title to the copyright only until November 2002.
In 1973, however, he executed a further assignment to the defendant which the judge below held (and his decision on this is not now challenged) carried as a matter of its true construction the reversionary interest, that is to say a further 25 years from November 2002, if it could validly do so under the 1956 Act then in force.
In the year 2000, however, his personal representatives executed a further assignment to the claimant of relevant copyrights. If the 1973 assignment was capable of carrying the reversionary interest, there was nothing left to assign. If not, the 2000 assignment carried it. Patten J, before whom the matter came for trial, in his judgment, [2004] EWHC 766 Chancery, held that the 1956 Act did not prohibit an assignment of the full term of the copyright effected after it came into effect, and accordingly found for the defendant. The claimant appeals by permission of the judge.
The question is one of statutory construction on which there is an incidental observation by Robert Goff J, as he then was, in 1977, but no other authority before the judgment in this case. I will start with the relevant statutory provisions. Section 3 of the 1911 Act is, relevantly, as follows:
"The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author and a period of fifty years after his death:
"Provided that at any time after the expiration of twenty-five years, or in the case of a work in which copyright subsists at the passing of this act thirty years, from the death of the author of a published work, copyright in the work shall not be deemed to be infringed by the reproduction of the work for sale if the person reproducing the work proves that he has given the prescribed notice in writing of his intention to reproduce the work, and that he has paid in the prescribed manner to, or for the benefit of, the owner of the copyright royalties in respect of all copies of the work sold by him calculated at the rate of ten per cent on the price at which he publishes the work."
Then there were ancillary provisions.
The proviso to this section may have some connection with the proviso to section 5(2), but its scope is different because it applies whoever is the owner of the copyright, but only if the work has been published.
Section 5(1) deals with ownership. The author of the work is the first owner of the copyright except in two cases, neither of which is relevant to the particular case before us or illuminating on the point in issue. Section 5(2), however, is at the centre of the case. It is as follows:
"The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations to the United Kingdom or any self-governing dominion or other part of His Majesty's dominions to which this Act extends, and either for the whole term of the copyright or for any part thereof, and may grant any interest in the right by licence, but no such assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorised agent:
Provided that, where the author of a work is the first owner of the copyright therein, no assignment of the copyright, and no grant of any interest therein, made by him (otherwise than by will) after the passing of this Act, shall be operative to vest in the assignee or grantee any rights with respect to the copyright in the work beyond the expiration of twenty-five years from the death of the author, and the reversionary interest in the copyright expectant on the termination of that period shall, on the death of the author, notwithstanding any agreement to the contrary, devolve on his legal personal representatives as part of his estate, and any agreement entered into by him as to the disposition of such reversionary interest shall be null and void, but nothing in this proviso shall be construed as applying to the assignment of the copyright in a collective work or a licence to publish a work or part of a work as part of a collective work."
Thus the subsection applies to any owner but the proviso only applies when the author is the first owner, and that applies to any work except a collective work.
There are, as one sees, a number of elements to the proviso. There is first of all the basic provision prohibiting assignments having effect beyond the expiration of the 25-year period. There is what might be regarded as a confirmatory or consequential provision, that because the author cannot, except by will, effectively assign the copyright in respect of the reversionary period, that is to vest in his personal representatives. There is the third provision rendering null and void any agreement entered into by the author as to the disposition of such reversionary interest. Then there is the proviso to the proviso excluding collective works from its effect.
The 1956 Act, by section 50, repealed these sections of the 1911 Act and indeed almost all the rest of that Act. Part VI of the 1956 Act, which is headed " Miscellaneous and Supplementary Provisions", includes sections dealing with assignment. Section 36(1) is as follows:
"Subject to the provisions of this section, copyright shall be transmissible by assignment, by testamentary disposition, or by operation of law, as personal or moveable property."
An assignment must be in writing by virtue of subsection (3), but otherwise there is no relevant restriction on the effect of subsection (1) . The provisions of the 1911 proviso to section 5(2), however, reappear in schedule 7 to the 1956 Act which is introduced by section 50(1) as follows:
"The transitional provisions contained in the Seventh Schedule to this Act shall have effect for the purposes of this Act; and the provisions of the Eighth Schedule to this Act shall have effect in accordance with those transitional provisions."
The relevant part of schedule 7 is paragraph 28, of which sub-paragraphs (1) and (3) lie at the heart of the argument. Sub-paragraph (1):
"Where by virtue of any provision of this Act copyright subsists in a work, any document or event which -
(a) was made or occurred before the commencement of that provision, and
(b) had any operation affecting the title to copyright in the work under the Act of 1911, or would have had such an operation if the Act of 1911 had continued in force,
Shall have the corresponding operation in relation to the copyright in the work under this Act…"
That is subject to a proviso which matters not for the present purposes.
Sub-paragraph (3):
"Without prejudice to the generality of sub-paragraph (1) of this paragraph, the proviso set out in paragraph 6 of the Eighth Schedule to this Act (being the proviso to subsection (2) of section five of the Act of 1911) shall apply to assignments and licences having effect in relation to copyright under this Act in accordance with that sub-paragraph, as if that proviso had been re-enacted...
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