The House of Lords has overturned the Court of
Appeal’s ruling of April 2008 that prevented the former
organist of the band Procol Harum, Matthew Fisher, from obtaining a
40% share in any future royalties from musical copyright in the
band’s 1967 hit single “A Whiter Shade of Pale”,
38 years after the record was first released.
Background
“A Whiter Shade of Pale” as recorded by
the Procol Harum and released on 12 May 1967 is one of the most
successful and well-known songs ever recorded, with world-wide
sales in excess 6 million and over 770 cover versions.
Before the band Procol Harum formed, its current
frontman Gary Brooker composed the music to “A Whiter Shade
of Pale”. Keith Reid wrote the lyrics. In March
1967, Mr Brooker and Mr Reid assigned their copyright in the
song’s lyrics and music to Essex Music Limited. Mr
Brooker and Mr Reid then formed the band and Matthew Fisher
subsequently joined as an organist. During rehearsals of the
song, Mr Fisher improvised a distinctive organ solo which features
in the song’s eight-bar introduction. The version of
the song containing this organ solo was recorded and released as a
single in 1967. It is referred to in this article as the
“Work”.
A clip of the song may be seen on YouTube here.
When Mr Fisher left the band in August 1969, he did
not relinquish his entitlement to a share of the copyright or to
royalties earned from the sale of his various compositions,
including the Work. Although he was aware of his ability to
claim an interest in the copyright in the Work or royalties earned
from it, at this stage, he did not notify Mr Brooker or Essex Music
of any such claim.
Essex Music Limited later assigned their rights to
Essex Music International Limited, which in turn assigned them to
Onward Music Limited in December in 1993. Onward Music
Limited was therefore a co-defendant in the legal
proceedings.
The facts
On 31 May 2005, Mr Fisher brought proceedings
against Mr Brooker and Onward Music Limited (the
“Defendants”) to claim what he believed to be his
rightful share of the copyright in the Work and its associated
royalties.
In the High Court case Mr Fisher claimed that he
owned the copyright in his organ solo in the Work and he
sought:
A declaration that he owned a 50% share of the
copyright in the Work.
An injunction to prevent the defendants from
exploiting the copyright in the Work without his consent.
Reimbursement of his share of past royalties paid
by societies who collected in and paid out royalties to the
defendants in the six years before the claim was issued (i.e.
the limitation period for a tort claim).
In a decision which broadly favoured Mr Fisher, The
High Court judge made the following declarations:
1. Mr Fisher was the co-author of the Work by
virtue of his “significant and hugely famous” 8 bar
organ solo melody.
2. Mr Fisher was a joint owner of the musical
copyright in the Work, of which he was entitled to a 40% share
rather than the 50% claimed. This was because Mr
Fisher’s contribution to the Work, although substantial, was
not as substantial as that of Mr Brooker.
3. The defendants’ implied licence to
exploit the Work was revoked on 31 May 2005 when Mr Fisher first
brought his claim against Mr Brooker and Onward Music Limited.
The judge refused to grant an injunction to prevent
the defendants from exploiting the work. This was due to the
absence of “any intention on the defendants’ part to
exploit the musical copyright in the Work in defiance of any
interest in it which Mr Fisher is able to
establish.” Further, he refused Mr Fisher’s
claim for royalties for the previous six years on the ground that
the defendants benefited from an implied licence from Mr Fisher to
exploit the Work until his claim was issued on 31 May 2005
(i.e. when the implied licence was revoked). Only after
that date did he have a right to share in the royalties.
The defendants appealed against the declarations to
the Court of Appeal.
By a majority ruling of two to one, the appeal
against two of the High Court’s three declarations was
allowed. In its judgment, the Court of Appeal commented that
Mr Fisher was guilty of excessive and inexcusable delay in
asserting his claim to title to a joint interest in the Work.
He had acquiesced in the defendants’ commercial exploitation
of the Work for 38 years and his acquiescence made it
unconscionable and inequitable for him to seek control over the
commercial exploitation of the copyright in the Work. For
this reason the appeal succeed and declarations (2) and (3) were
set aside by the court.
The House of Lords
Mr Fisher then appealed the Court of Appeal’s
decision to the House of Lords. The House of Lords allowed Mr
Fisher’s appeal and reinstated the declarations set aside by
the Court of Appeal. However, declaration (3) was not
reinstated in its entirety, as the House of Lords wished to keep
open the issue of whether Essex’s rights under the recording
contract have been validly assigned to Onward in 1993. The
House of Lords asked the parties for further submissions on this
point.
The House of Lords held that it was inconsistent of
the Court of Appeal to conclude that a claimant was not estopped
from asserting his copyright interest, but then to refuse on
equitable grounds, to declare that the right existed. Lord
Neuberger pointed out that if it was accepted that Mr Fisher
originally had 40% of the musical copyright and had not been
estopped from asserting it, then it was hard to see how he could be
prevented from bringing proceedings for financial compensation or
injunctive relief on the ground of copyright
infringement.
The Court of Appeal thought that it should refuse
on equitable grounds to declare that the right existed because they
did not think that Mr Fisher should be able to seek an injunction
to enforce his rights as the holder of an interest in the copyright
of the Work. Lord Neuberger explained that if Mr Fisher were
to apply for an injunction it would be for the court in that
instance to be satisfied as to whether such an application was
oppressive; it should not be dealt with in these proceedings.
Lord Neuberger also pointed out that the Court of Appeal had
deprived Mr Fisher of the chance to claim any royalties in respect
of the 40% of the Work which he owned by depriving him of the
ability to claim injunctive relief.
Lord Neuberger also confirmed that there was no
statutory time limit for bringing a copyright infringement action
and the respondents’ reliance on laches (that Mr Fisher had
“slept on his rights”) could not succeed. This is
because laches can only bar equitable relief and a declaration of a
property right is not equitable relief. Furthermore, to
defeat the claim on the ground of laches, the respondents would
have to show “acts” during the course of the delay
period that would result in a “balance of justice”
justifying the refusal of the relief.
The respondents were unable to show any prejudice
in the delay and they had no answer to the High Court judge’s
finding that the financial benefit they had obtained from the delay
in bringing the claim would outweigh any prejudice. The House
of Lords took into account the dissenting opinion of Mr Justice
David Richards in the Court of Appeal on this point. As we
referred in our law-now article on the Court of Appeal’s
decision, Mr Justice David Richards held the view that, where the
defendants had retained all part earnings and had suffered no
detriment from the delay, there would be no injustice in the
interest in the copyright being established for the
future.
Commentary
This case is good news for copyright owners as it
has shown that there is no time limit for bringing an action for
copyright infringement. On the other hand, the case has shown
that when a piece of work is created by more than one party,
arrangements need to be made to apportion the copyright
appropriately and, if the copyright is to be jointly held, how the
copyright may be exploited. Otherwise, copyright owners may
find themselves having their ownership challenged at any time
during the term of copyright (which is, in the main, the life of
the author(s) plus 75 years). However, it obviously remains
better to act when you believe your copyright has been infringed or
at the time you first consider you are a joint owner of copyright,
rather than to “wait and see”, because, as was the case
here, the court is unlikely to offer a share of past
royalties.
For the full text of the House of Lords judgment,
click here.