The parties, the plaintiff who was the equitable assignee of performing rights and the infringing defendant, joined specific issue on the absence of the legal owner of the rights.
Held: His absence was critical. PRS failed to obtain a perpetual injunction against music hall proprietors to prevent unlicensed public performances of ‘the Devonshire Wedding’ and ‘Love in Lilac Time’ because they did not own the legal right to the copyright and had not joined the legal owners.
Viscount Cave LC said: ‘That an equitable owner may commence proceedings alone, and may obtain interim protection in the form of an interlocutory injunction is not in doubt; and is, I think, the rule of the Supreme Court, that, in general, when a plaintiff has only an equitable right in the thing demanded, the person having the legal right to demand it must in due course be made, a party to the action: Daniells’ Chancery Practice (7th ed), Vol 1, p 172. If this were not so, a defendant after defeating the claim the equitable claimant might have to resist like proceedings by the legal owner or by persons claiming under him as assignees for value without notice of any prior equity, and proceedings might be indefinitely and oppressively multiplied. No doubt the rule does not apply to a mortgagor at least since the passing of section 25(6) of the Judicature Act 1873; and there may be special reasons, were, it will not be enforced as in William Brandt’s Sons and Co v Dunlop Rubber Co  AC 454, where the defendant disclaimed any wish to have the legal owners made parties.’
Viscount Finlay said: ‘Except under very special circumstances the ordinary rule should be observed, that the legal owner should be a party to the proceedings . . But whatever may be the balance of convenience, the established rules of practice should be adhered to, even in cases, of which I think the present is one, when their observance in all probability will serve no useful purpose. The parties have joined battle on the applicability to the present case of this particular rule of practice, and we must decide according to law, however much we may regret that success in the action should depend on mere technicality which has no relation to the merits of the case.’
Viscount Finlay, Viscount Cave LC, Lord Sumner
 AC 1,  All ER Rep Ext 794
England and Wales
Cited – Barbados Trust Company Ltd v Bank of Zambia and Another CA 27-Feb-2007
The creditor had assigned the debt, but without first giving the debtor defendant the necessary notice. A challenge was made to the ability of the assignee to bring the action, saying that the deed of trust appointed to circumvent the reluctance of . .
Cited – Roberts v Gill and Co and Another CA 15-Jul-2008
The claimant sought damages in negligence against solicitors who had advised the executors in an estate of which he was a beneficiary. He now sought to amend his claim to make a claim in his personal and in derivative capacities. Sums had been paid . .
Cited – Roberts v Gill and Co Solicitors and Others SC 19-May-2010
The claimant beneficiary in the estate sought damages against solicitors who had acted for the claimant’s brother, the administrator, saying they had allowed him to take control of the assets in the estate. The will provided that property was to be . .
Cited – Weddell v JA Pearce and Major 1988
A cause of action in negligence was assigned in February 1986. The writ was issued by the assignee alone on 2 May 1986, at which time no notice of the assignment had been given to the defendants. It was argued that the action was a nullity.
Cited – B4U Network (Europe) Ltd v Performing Right Society Ltd CA 16-Oct-2013
Composers had entered an agreement with the respondent, assigning all copyrights in their works to the respondent. The respondent asserted also an equitable assignment of all future works. The appellant asserted that the rights in the particular . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Contract, Litigation Practice
Updated: 01 November 2021; Ref: scu.249318