House of Lords overturns A Whiter Shade of Pale royalties ruling

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.