The claimant had asserted a joint authorship of the song ‘A Whiter Shade of Pale’ written in the sixties. The defendant appealed saying that the claim had been brought too late, and that the finding ignored practice in the music industry. The copyright in the song had already been assigned by the authors before the recording and contribution suggested by the claimant, who later left in 1969 under an agreement that he would be released from the group’s debts in return for an assignment of his some of his interests. His claim was first made in 2005.
Held: The appeal succeeded (Richards dissenting) to the extent that the declaration as to payment of future royalties should be set aside. The claim was not barred for limitation becaue it was limited to future royalties. The submission that a fair trial was impossble was made only after all the evidence had been heard. As to laches ‘Laches looks to undue delay, to any change of position by the defendants resulting from the delay and to the unreasonableness and injustice of stopping the defendants from carrying on doing what they have been doing for very many years. The concept of unconscionability, which, as I shall explain, underpins the doctrine of proprietary estoppel, also appears in formulations of the defences of laches and acquiescence. The change of position aspect of acquiescence and laches is less stringent than the requirement of detrimental reliance in cases of proprietary estoppel. Undue delay by the claimant and the defendant’s intervening activities over a long period may suffice to make it unjust to disturb the situation, especially if it is impossible to return the defendants to their original position without some injustice to them. ‘ By virtue of the claimants acquiescence and laches, the judge ought not to have granted all of the three declarations that he did. The declaration as to future royalties would unduly restrict further exploitation of the work. The later alterations to the work were to be taken to be impliedly assigned to avoid vitiating the earlier assignment: ‘the making of the arrangement of the Song during the course of the rehearsals would have been an infringement of the copyright in the Song vested in Essex Music. But the band were performing the music for the purposes of making the recording for Essex Music. It is therefore necessary to imply a licence by Essex Music. ‘
Sir David Richards said: ‘There is a clear conflict in this case between the policy of discouraging stale claims, which underpins both the Limitation Act and the equitable defences, and the protection of property rights. While the former would justify the imposition of a limitation period for claims to assert an entitlement to copyright, it has not been enacted. In a case where the claimant has not agreed by deed or agreed (whether expressly or implicitly) for consideration to give up his property right, it must on existing principles be unconscionable for the claimant to assert his entitlement before he is deprived for the future of that right. Where the defendant cannot show any detriment resulting from the delay, it is not on existing principles unconscionable for the claimant to assert his right for the future. In my judgment this is justifiable: a property right should not in effect be extinguished without either consideration or detriment, although delay amounting to laches may properly be a bar to equitable remedies such as an injunction.’
Judges:
Mummery LJ, David Richards J, Sir Paul Kennedy
Citations:
[2008] EWCA Civ 287, [2008] Bus LR 1123, [2008] FSR 26, [2008] EMLR 13
Links:
Statutes:
Copyright Designs and Patents Act 1988
Jurisdiction:
England and Wales
Citing:
Appeal from – Fisher v Brooker and Another ChD 20-Dec-2006
The claimant said that he had contributed to the copyright in the song ‘A Whiter Shade of Pale’ but had been denied royalties. He had played the organ and particularly the organ solo which had contrbuted significantly to the fame of the record.
Cited – Birkett v James HL 1977
Exercise of Power to Strike Out
The court has an inherent power to strike out an action for want of prosecution, and the House set down the conditions for its exercise. The power is discretionary and exercisable only where (a) there has been inordinate and inexcusable delay and . .
Cited – Barrett v Universal-Island Records Ltd and others ChD 15-May-2006
The claimant was entitled to share in the copyright royalties of Bob Marley and the Wailers, and claimed payment from the defendants. The defendants said that the matters had already been settled and that the claim was an abuse of process, and also . .
Cited – In re Grayan Building Services Ltd CA 1995
The degree to which an appellate court will be willing to substitute its own judgment for that of the tribunal will vary with the nature of the question. Hoffmann LJ said: ‘The concept of limited liability and the sophistication of our corporate law . .
Cited – Habib Bank Ltd v Habib Bank AG Zurich CA 1981
A combination of defences based on delay was pleaded in a passing off action objecting to the use of a name which the defendants had been using without objection for many years. A permanent injunction was claimed.
Held: Oliver LJ said as to . .
Approved – Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd ChD 1981
The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is . .
Cited – Gillett v Holt and Another CA 23-Mar-2000
Repeated Assurances Created Equitable Estoppel
Repeated assurances, given over years, that the claimant would acquire an interest in property on the death of the person giving the re-assurance, and upon which the claimant relied to his detriment, could found a claim of equitable estoppel. The . .
Mentioned – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Cited – Jennings v Rice, Wilson, Marsh, Norris, Norris, and Reed CA 22-Feb-2002
The claimant asserted a proprietary estoppel against the respondents. He had worked for the deceased over many years, for little payment, and doing more and more for her. Though he still worked full time at first, he came to spend nights at the . .
Cited – Cluett Peabody and Co Inc v McIntyre Hogg Marsh and Co Ltd 1958
Each party had, to the knowledge of the other, been infringing the other’s trademarks over a considerable period. There had been discussions over the years between the parties and the effect of a letter written on behalf of the plaintiff was that . .
Cited by:
Appeal from – Fisher v Brooker and Others HL 30-Jul-2009
The claimant sought a share in the royalties from the song ‘A whiter shade of pale’ but had delayed his claim for 38 years. He had contributed the organ solo which had contributed significantly to the song’s success. He now sought a share of future . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Limitation
Updated: 14 July 2022; Ref: scu.266453
