The court discussed exclusive licenses of a copyright: ‘First, I would not expect a licensee to be treated as having a property interest in the copyright. Under the general law a licensee is a person who enjoys contractual rights as against the property owner. I can find nothing in the Act which conflicts with the principle that the licensee’s rights rest in contract and are not proprietary. Under section 19 of the Act an exclusive licensee is given a procedural right of action to sue for infringement. But the section is purely procedural, and, save in the case of interlocutory injunctions, requires the owner of the copyright to be joined as a party. Section 19(4) provides that any defence available against the owner of the copyright shall be available against the licensee, i.e., the licensee is enforcing the proprietary rights of the owner. Section 36(4) gets nearer to enlarging the rights of a licensee into a proprietary right since his licence is made binding on successors in title of the original grantor of the licence. On the other hand, the Act clearly distinguishes between assignees and licensees: see section 36. Indeed, in section 19(2) for procedural purposes a licence is to be treated as though it were an assignment: if, as the plaintiffs contend, under section 49(5) an exclusive licensee has to be treated as owner of the rights, section 19(2) is wholly otiose. Therefore in my judgment the scheme of the Act preserves the normal distinction between assignees who have proprietary rights and licensees whose substantive rights are contractual. Therefore an exclusive licensee cannot show, as the words of section 49(5) require, that he is ‘entitled to the copyright’.’
Judges:
Browne-Wilkinson J
Citations:
[1981] 1 Ch 91
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 30 April 2022; Ref: scu.230288
