Performing Right Society Ltd v B4U Network (Europe) Ltd
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Vos |
| Judgment Date | 22 October 2012 |
| Neutral Citation | [2012] EWHC 3010 (Ch) |
| Docket Number | Case No: HC11CO2553 |
| Court | Chancery Division |
| Date | 22 October 2012 |
[2012] EWHC 3010 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Vos
Case No: HC11CO2553
Mr. Robert Howe Q.C. (instructed by Taylor Wessing LLP) appeared for the Claimant.
Mr. James Mellor Q.C. and Mr. James Abrahams (instructed by Field Fisher Waterhouse LLP) appeared for the Defendant.
Introduction
By an Application Notice dated 16th March 2012, the claimant, Performing Right Society Limited ("PRS"), seeks summary judgment under Part 24 of the CPR in relation to part of its claim in these proceedings. It claims judgment for infringement of copyright in relation to a single musical work called 'Shukran Allah', or in English 'Thank you God', which I shall call the 'Song'.
The Song is one of some 2,500 musical works composed by Mr. Salim Merchant and Mr. Suleiman Merchant (the "Composers"). The Composers are well-known composers of songs that feature predominantly in Bollywood musicals made in India.
PRS is a well-known music rights collecting society. The defendant, B4U Network (Europe) Limited ("B4U"), is a satellite television broadcaster. In 1999, B4U launched B4U Music and B4U Movies, which are television channels showing Bollywood films and music videos, as I understand the position, within the United Kingdom.
The case before me is said to have significance beyond the Song itself and even the compositions of the Composers, because there are many Bollywood songs which are very popular and may be affected by similar types of agreements.
Despite the ramifications of what I have to decide, the issue that has ultimately been distilled in the course of argument is extremely narrow. It is a point of construction and law, which can be quite shortly stated.
In essence, the question is whether there is a material difference in their legal effect between an assignment of rights which the assignor may in the future acquire or own, on the one hand, and a present assignment of all future rights in any musical works, on the other hand.
PRS claims that this is a distinction without a difference and that the assignment which it took from the Composers of the rights which they "may acquire or own" took effect as a present assignment of a future copyright. PRS, therefore, says that its assignment took priority over a subsequent present assignment of future copyrights in the songs that the Composers would create for a Bollywood movie called Kurbaan, which the Composers entered into with the producers of that film, Dharma Productions Private Limited, ("Dharma" or the "Producers").
Conversely, Mr. James Mellor Q.C. and Mr. James Abrahams, counsel for B4U, argue that there is all the difference in the world between the two formulations and that the assignment to the PRS was in fact an assignment subject to a condition precedent, namely, the acquisition of the copyright or the ownership of it, which cannot have taken place until after the assignment to the Bollywood producer, Dharma. Thus, they say, the subsequent assignment takes priority and the copyright in the Song passed, on its creation, by the operation of sections 11 and 91 of the Copyright, Designs and Patents Act 1988 ("the 1988 Act") straight to Dharma, without having any opportunity to be caught by the terms of the assignment to PRS.
Several other points were previously taken, but this is what the case came down to. Before dealing with this central point, I shall set out a brief chronology of the relevant events, the test under Part 24 and the relevant authorities that have been relied on by the parties.
Chronological background
On 9th June 2004 the Composers each entered into written agreements with the claimant (the "PRS Agreements"), which provided in part as follows:
"1. Definitions
In this agreement…
(d) 'territory' means the territory for which you transfer the rights to us under clause 2(a) [including the UK];
(e) 'transfer' means (depending on the context) assign or assignment; and
(f) 'the rights' means, in respect of any musical work:
(i) the performing right; and
(ii) the film synchronisation right…
2. The Transfer
(a) you transfer to us absolutely for all parts of the world the rights which belong to you on the date of this Agreement or which you may acquire or own whilst you remain our member.
(b) the transfer mentioned in clause 2(a) shall last for so long as you remain our member and for any additional period which is specified in our Constitution…
4. Your Obligations You:
(a) warrant and represent that you own or have full power to transfer the rights and that the musical works (the rights in which you have transferred to us under this Agreement) do not and will not infringe the copyright in any other musical work…
(c) promise to…
(iii) do all such acts as are necessary to vest the rights in us and enable us to enforce all or part of the rights;
(iv) insert in each relevant contract you make with a third party a clause expressly reserving to us the rights and to make such contract subject to this Agreement;
(v) refrain from licensing any of the rights and from otherwise dealing with the rights which you have transferred to us;
(vi) avoid doing anything which is likely to prejudice our ability to meet our obligations to you and to our other members."
On 15th September 2008 the Composers entered into a written agreement with the film producers, Dharma, to write music for the forthcoming film Kurbaan (the "Commissioning Agreement"). Both parties to the Commissioning Agreement were Indian, and it seems most likely that it is governed by Indian law. Certainly, the Commissioning Agreement makes reference to the Copyright Act 1957, which may well be the Indian Copyright Act. Neither party has pleaded or made any submission as to Indian law. The PRS has complained that a complete copy of the Commissioning Agreement is not available today, but, as it seems to me, the relevant provisions are available, and I have been told by Mr. Mellor that the copy that has been made available is the only copy that B4U has in its possession, power, custody or control. In those circumstances, it seems to me that I should do the best I can with the copy that I have got, and that is how I intend to proceed.
Mr. Robert Howe Q.C., counsel for PRS, speculated that B4U might have argued that the Commissioning Agreement was a contract of service under which the Composers were employed; but in the result, this was not pleaded or, indeed, alleged. It was common ground that the Commissioning Agreement created a contract for the Composers' services.
The Commissioning Agreement provided as follows:
"1. ENGAGEMENT
(a) The producer engages the Music Directors [the Composers] to inter alia create, recreate, write, arrange, orchestrate, conduct, perform, record and deliver to the Producer [Dharma] music to be included in the Film … and provide all services usually rendered by a music director to a first class Animated Film ('Services'), on the terms and conditions contained in this Agreement…
2. COPYRIGHT
(a) The Music Directors hereby confirm and agree that the entire copyright (if any) or any performer's rights, if any, or any other rights arising from the Services or the product of the Services of the Music Directors, including without limitation the Music shall vest with the Producer as the first owner of the same pursuant to this contract of service executed. This shall be applicable to all present and future work arising out of the Services. This right shall be exercised for the whole period of the right and in all territories of the world;
(b) The Music Directors hereby expressly consent to the incorporation of the Music and the performance of the Music Directors, if any, arising consequent to the rendering of the Services in the Film. Consequent to the same the Music Directors confirm that the Music Directors do not have and shall not exercise any performer's rights under the provisions of the Copyright Act 1957 ('the Act');
(c) Without prejudice to the aforesaid, in the event of any copyrights or any other rights, including performer's rights being vested by law in the Music Directors, in respect of the Music, the Music Directors hereby assign to the Producer without any limitation, reservation or condition the entire copyright and performer's rights and all other right, title or interest of whatsoever nature … whether vested, contingent or future in or to the product, results or proceeds … of the Services … whether now known, or in the future created to which the Music Directors are now or may at any time after the date of this Agreement be entitled by virtue of or pursuant to any of the laws in force in any part of the world to hold to the Producer, its successors, assignees, and licensees absolutely for the whole period of such rights for the time being capable of being assigned…"
Clauses 2(q) and (r) of the Commissioning Agreement sought to deem that the works carried out under it were carried out under a contract of service; but as I have said, no reliance is placed by B4U on those clauses.
On 11th February 2009 Dharma entered into a Licence Agreement with UTV Software Communications Limited in relation to the right to distribute and exhibit certain listed films, including Kurbaan.
On or shortly before 26th October 2009, PRS was notified by the Composers that they had composed the Song for Kurbaan.
On 15th December 2009 UTV Software...
To continue reading
Request your trial
-
Performing Right Society Ltd v B4U Network (Europe) Ltd
...OF APPEAL (CIVIL DIVISION) ON APPEAL FROM THE HIGH COURT OF JUSTICE CHANCERY DIVISION INTELLECTUAL PROPERTY The Hon. Mr Justice Vos [2012] EWHC 3010 (Ch) Royal Courts of Justice Strand, London, WC2A 2LL Lord Justice Moses Lord Justice Kitchin And Lord Justice Underhill Case No: A3/2012/2929......