Sergio Mendes Costa v Dissociadid Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 22 July 2022 |
| Neutral Citation | [2022] EWHC 1934 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2021-000028 |
[2022] EWHC 1934 (IPEC)
HIS HONOUR JUDGE Hacon
Case No: IP-2021-000028
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (Ch.D)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
John Eldridge (instructed by Brandsmiths) for the Claimant
Thomas Elias (instructed by Brett Wilson LLP) for the Defendants
Hearing dates: 21–22 June 2022
Approved Judgment
This judgment was handed down remotely at 10.30 on 22 July 2022 by circulation to the parties or their representatives by email and released to BAILII .
HIS HONOUR JUDGE Hacon
Introduction
In about March 2018 the second defendant (“Ms Wilkinson”) set up a YouTube channel under the name “DissociaDID”. Ms Wilkinson is affected by a condition known as dissociative identity disorder (“DID”), formerly called multiple personality disorder. DID is characterised by an individual taking on two or more alternative and distinct personality states, which Ms Wilkinson referred to as “alters”. Ms Wilkinson uploaded videos about DID and herself on to the channel, raising awareness and providing help and support to others with the same condition. The channel became successful and by May 2021 it had over 1 million subscribers.
From August 2018 Ms Wilkinson began to monetise the channel. In 2019 gross earnings were over £57,000 and in 2020 nearly £105,000.
The first defendant was set up by Ms Wilkinson as a corporate vehicle for running her business and operated as such from August 2020.
In March 2020 the claimant (“Mr Costa”) emailed Ms Wilkinson for the first time making comments and suggestions about the DissociaDID channel. Mr Costa is not affected by DID but said that he wished to support Ms Wilkinson's project. For three months or so Ms Wilkinson kept a cautious distance but then they began to work together to some degree. Ms Wilkinson is based in England, Mr Costa in Portugal, so the co-operation was remote. Nine literary works later emerged. It is common ground that of these, eight are works of joint authorship (“the Joint Works”). The ninth, referred to as “the Disclaimer”, involved some input from Mr Costa but it is Ms Wilkinson's case that his contribution was too insubstantial to have made him a joint author.
There was a falling out in early November 2020. At this point Mr Costa took issue with the channel's continued use of the Joint Works and the Disclaimer. He submitted takedown notices to YouTube which led to videos being removed from the DissociaDID channel.
Subsistence of copyright in the Joint Works and the Disclaimer is not in dispute. Mr Costa claims an injunction to restrain the defendants from infringing the copyrights in the Joint Works and Disclaimer, together with damages or an account and related relief.
Ms Wilkinson's case is that on 16 June 2020 a contract was formed between her and Mr Costa. This was before the Joint Works and the Disclaimer had been created. Ms Wilkinson says that the agreement contained implied terms according to which Mr Costa granted to her, and to her successors and assignees, a perpetual irrevocable licence to use any works created by the two of them on Ms Wilkinson's YouTube channel. There is also a pleaded defence that Mr Costa effected an equitable assignment of the Joint Works to Ms Wilkinson but that was not pursued.
Ms Wilkinson's counterclaim is that Mr Costa's submission of takedown notices to YouTube was in breach of the contract and also constituted unlawful interference in Ms Wilkinson's business.
Mr Costa accepts that he granted the defendants a bare licence to use the Joint Works and the Disclaimer but says that the licence was terminated by him in November 2020. He contends that there was no contract and his submission of takedown notices did not in law constitute unlawful interference with Ms Wilkinson's business.
John Eldridge appeared for Mr Costa, Thomas Elias for the defendants. They were both instructed shortly before the trial and neither was responsible for the pleadings, about which I make some comments below.
The issues
Annexed to an order of Recorder Amanda Michaels dated 4 January 2022 following the CMC there is in the usual way a list of issues. The issues have narrowed and the following remain:
(1) Whether the Disclaimer was a work of joint authorship.
(2) Whether a binding contract was concluded on 16 June 2020.
(3) If there is a contract, whether it contains the implied terms alleged by Ms Wilkinson.
(4) When the bare licence granted by Ms Costa to the defendants to use the Disclaimer and Joint Works was terminated.
(5) Whether Mr Costa's instructions to YouTube to take down videos were an act of unlawful interference with the defendants' business.
(6) Whether such instructions were in breach of the contract.
(7) If the answer to either ( 5) or (6) is yes, the quantum of loss suffered by the defendants.
The witnesses
I heard oral evidence from both Mr Costa and Ms Wilkinson. They were clear and careful witnesses and my impression was that both stated the facts as they believed them to be, at least by the time of the trial. It does not follow that I accept all the evidence given for the reasons explained further below. Ms Wilkinson found the stress of giving evidence difficult and was given a break at one point, but she recovered her composure. I commend Mr Eldridge for his conduct of Ms Wilkinson's cross-examination which was courteous and considerate.
The background in more detail
Before Mr Costa's first approach to Ms Wilkinson, he had been following the DissociaDID project's social media for some months.
On 28 March 2020 Mr Costa sent an email to the project's address. He introduced himself as one of DissociaDID's tier-2 patrons and said that he had binge-watched all of Ms Wilkinson's videos. He made some suggestions of improvements to the channel. A correspondence followed. From DissociaDID's side these were all written by Ms Wilkinson although the name she gave at the end of the emails varied according to her alter at the time.
On 20 April 2020 Mr Costa took a step further and offered to assist in the running of Ms Wilkinson's channel:
“So, about my proposal. I know that you have a ton of things to think about right now and I'd hate to add to that. Please don't feel pressured to reply to this email any time soon, although I kindly ask you to reply to it, regardless of your decision. This is something for you to think about when (and if) you're ready to come back.
I'm offering you my help to work behind the scenes improving your content and communication so you can feel safer and focus on what you do best: creating content. You don't have to pay me or credit me. I'm doing this for the sole reason that I believe in your project and would like to help.
…
So nothing too fancy, mostly just a little advice here and there. Although, if we decide to move forward, we should sign an NDA as a safeguard for both of us.”
Ms Wilkinson declined to show an interest in Mr Costa's offer. He persisted, although on more than one occasion stating that he may not be the right person to help the channel.
A short email from Mr Costa on 16 June 2020 ended with this:
“If you need help with research, planning, writing, keeping tabs on things, etc, my offer still stands.”
On the same day Ms Wilkinson replied:
“Thank you, that would be a really big help! Nin and the others are having a hard time trusting anyone right now but we would really love this! Thank you for offering
Nadia”
Nin and Nadia are two of Ms Wilkinson's alters. Ms Wilkinson's case is that a contract arose from the above quoted words of the emails of 16 June 2020 with a single express term, namely that any help rendered by Mr Costa concerning the DissociaDID channel would be provided for free. More significantly she says that the contract contained the implied terms I have mentioned.
In August 2020 the parties entered into non-disclosure agreements. There were two, one dated 5 August 2020 between Mr Costa and Ms Wilkinson (“the First NDA”) and the second dated 21 August 2020 between Mr Costa and the first defendant company.
Between August and November 2020 Mr Costa and Ms Wilkinson collaborated in the creation of the eight Joint Works. There were three scripts used in making videos for the DissociaDID channel, three documents described as “pre-scripted comments” which appear to be discussion documents on content and/or presentation, an Instagram post and a post for a tab on the channel.
On 6 August 2020 Mr Costa and Ms Wilkinson co-operated in the creation of the Disclaimer. Mr Costa said that after observing that Ms Wilkinson was receiving criticism online for describing herself as a “professional” and the channel a “mental education service” even though she was not professionally qualified, he looked into the manner in which similar channels described themselves. He took the view that the channel should stop using the term “professional” and should clarify the limitations on the advice given. In WhatsApp exchanges on 6 August 2020 Mr Costa shared his view with Ms Wilkinson. She drafted a disclaimer. Mr Costa's pleaded case is:
“D2 wrote the first draft of the disclaimer. The Claimant added a sentence and made some other minor edits.”
The WhatsApp transcript indicates that Ms Wilkinson showed her first draft to Mr Costa. The following extract begins with that first draft (Nin is Ms Wilkinson, Sérgio is Mr Costa):
“06/08/20, 09:52 — Nin: We would like to stress that while this channel exists for educational purposes only, we are not qualified professionals. DissociaDID partially acts as a hub for collating scientific resources, and we combine...
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