Experience Hendrix LLC v Purple Haze Records Ltd & Ors

The Copyright Designs and Patents Act 1988 (the “CDPA”) came into effect on 1^st August 1989. It has since been amended. Part II created “Rights in Performances”. No-one doubts that it did so in respect of pre-Act performances in the case of performers still alive when the Act came into force. But what if he or she had died by then (the “dead performer” point)? And what if the place of performance was in a country which only became a “qualifying country” after the date of the performance although it was a “qualifying country” at the time of the alleged infringement (the “qualifying country” point)?

These are the two main questions which arise on this appeal from a decision of Park J, [2006] EHWC 968 (ch), [2006] EMLR 25. There is also a third point, special to this case, about whether certain factual matters are fit for summary judgment (the summary judgment point). Given our conclusions, all other questions (including whether we should grant permission to appeal the decision of Hart J [2005] EWHC 249 (ch) [2005] EMLR 18) fall away. Hart J had decided the qualifying country point in favour of the claimants in an earlier, related case. Park J agreed with him on that. The dead performer point was not raised before Hart J.

Unless the appellants win on at least one of the three points, it is common ground that this appeal must fail.

Jimi Hendrix was a US citizen who became a famous innovative rock guitarist in the late 60s. He died on 18^th September 1970, domiciled in New York State. The performances with which this case is concerned took place in the UK, Sweden and the US in the years from 1967 to 1970.

Subject to the summary judgment point, there is now no dispute that if there are performer’s rights in these performances they are owned by the claimants. It is not necessary to say any more about the facts at this stage.

The case actually turns on the provisions of the CDPA as amended. However the arguments of both sides involved a lot more by way of background treaties and Directives than just these provisions. Here I just list the most important of these along with the abbreviations I will use. In the Appendix I set out the relevant provisions of each instrument which is relevant, save where it has been more convenient to include it in the present text. In some cases the legislation has been replaced and re-enacted but nothing turns on this and I do not need to set out any of this material. Nor do I cite or refer to other material cited to us but which is not necessary for this decision. What is necessary is quite enough.

The Berne Convention for the Protection of Literary and Artistic Works 1886 as amended (the Paris Act, 1971) (“Berne”). The provisions with which we are concerned date back to the Rome Act of 1928

Besides these instruments there are also the Statutory Instruments made under the powers conferred by s.2 of the European Communities Act 1972 by which the CDPA 1988 was amended so as to comply with the RR and Term Directives. They are the Copyright and Related Rights Regulations 1996 (SI 1996/2967) and the Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297).

This requires signatory states to confer rights in respect of performances. The UK acceded to this in 1964, having passed the Performers Protection Act 1963 for this purpose. Of particular significance is that by Art.7 the Treaty required a civil remedy for performers (see below), and by Art 14 it required a minimum term of protection of 20 years from the end of year of the performance.

The pre-1988 legislation consisted of the Dramatic and Musical Performers’ Protection Act 1958 as amended by the Performers’ Protection Act 1963. Under these, unauthorised recording of a performance and sale of such recordings was a criminal offence. During the 1970s and 1980s attempts were made in the civil courts to enforce the Acts. They met with varying degrees of success. The basic argument was that the Acts were intended to protect a particular class of person (i.e. performers) and that accordingly a member of the class had a private right to sue for breach of statutory duty. Attempts were made to extend the argument so that a record company which had an exclusive contract with a performer could also sue.

RCA v Pollard [1983] Ch 135 was a claim solely by such a record company. It failed on the simple basis that whether or not performers had a right of action, the recording companies with whom they had exclusive contracts did not. However the court also cast doubt on whether performers themselves had a right of action in the civil courts, see per Oliver LJ at p.150.

Pollard was expressly considered in the White Paper leading to the CDPA. It concluded:

After the White Paper, but before the Bill preceding the CDPA was presented, this court decided Rickless v United Artists [1988] QB 40. The personal representatives of Peter Sellers were held to have a civil cause of action by virtue of the Acts against the makers of a film who, without his or his personal representatives’ consent, used recorded material of his performances for Pink Panther films made with his consent to make a further such film for which consent had not been given.

Sir Nicholas Brown-Wilkinson V-C gave the leading judgment. The other members of the Court agreed with him on the interpretation and effect of the Performers’ Protection Acts. He concluded that, notwithstanding the contrary suggestion in RCA, performers did have a civil right of action for breach of the Acts. And that such a right devolved on a dead performer’s personal representatives.

Two parts of his reasoning are relevant here. First he noted that the 1963 Act was expressly stated to be “to enable effect to be given to” Rome 1961. Moreover Rome 1961 required a civil remedy because it called for a right to prevent unauthorised recording (Art. 7(1)). So if the UK provided no civil remedy then it would be in breach of the convention. That was unlikely.

Second he rejected an argument to the effect that no rights lay in the personal representatives of dead performers or that they could not give any consent. In so doing he rejected an argument that the legislation was merely to encourage performers for the future of performers so that, once dead, they needed none. He said (p.56):

So Rickless clearly establishes that Jimi Hendrix, prior to then, had a civilly enforceable right to protect them. And that that right would have devolved on his personal representatives. If Mr Turner’s contentions for the defendants are right, the 1988 Act took away such a right for the future. Although possible, this seems unlikely.

I also think it right to assume that Parliament (perhaps in reality the policy makers advising on the Government Bill) would have been well aware of Rickless. Not only were they already aware of Pollard as the White Paper shows, but Rickless would have been well-known to all lobbyists and others concerned with the passing of the legislation. This makes it even more unlikely that, by a sidewind, Parliament meant to take away the rights of dead performers. If there had been an intention to remove Rickless rights for the future there would have been explicit provision to achieve this.

It is still less likely given that Parliament expressly considered the period during which such rights should subsist – 50 years from the year of the performance (s.191). If the rights were to subsist only in the case of performers who were still alive when the Act came into force, surely the Act would have said so. And surely a sharp dividing line between those who survived, even by one day, the coming into force of the Act, and those who did not would have been spelt out if that was intended.

And all the more so since that would have meant a deliberate derogation from Rome 1961, pursuant to which the UK had been under a continuing obligation from its accession in 1964 to confer a civil remedy. As I have already noted Rome 1961 provided for a minimum term of 20 years from the end of the year of fixation (see Art.14). That term was in no way dependent on whether the performer lived or died – what mattered was when the performance occurred. Taking away Rickless rights for the future could, depending on the date of performance, give a shorter term than 20 years.

I accordingly approach the unamended Act with a strong supposition that it is unlikely to have been intended to cut out from protection performances by performers who had died before the Act came into force. Mr Jonathan D.C. Turner submits that nonetheless it had such an effect. His essential reasoning runs thus:

He relied on the old case of Lauri v Renad [1892] 3 Ch 402, for the proposition that an Act should not be construed as applying to pre-Act events in the absence of a clear indication to the contrary. I put that case on one side at once. It was concerned with an argument that the International Copyright Act 1886 had revived expired copyrights. There were no transitional provision and the effect of a revival would have been to turn some past lawful acts into infringements. Nothing like that is present here. On the contrary the CDPA is expressly retrospective subject to a qualification about past acts and arrangements (see s.180(3)). No-one can be turned retrospectively into an infringer or criminal – there is no “hard” retrospectivity as Mr Turner called such cases.

Mr Turner also raised a convenience argument. How difficult, he submitted, it would be for the estates of long-dead performers if this new right was suddenly conferred, in many cases years after the estate was wound up. And how difficult it would be to obtain clearances for use of performances if you have to try and find personal representatives years after the estate is wound up.

I do not regard these arguments as at all convincing. Here are my reasons:

Accordingly I reject the “dead performer” point so far as the unamended CDPA is concerned. The Act was passed to protect the economic interests of performers – their estates, whether they are alive or dead, form those interests.

Strictly that is an end of this whole point, for Mr Turner conceded that if the unamended Act conferred rights in respect of pre-Act deceased performers, the later amendments did not take them away. But it would not be right not to consider the amendments in view of the detailed argument we heard.

Before coming to the amended provisions, their background must be understood. Both the Term and RR Directives were passed in the early nineties, followed by TRIPS in 1994. Both sides accepted that the amended legislation must be interpreted so as to conform to all three of these instruments unless this was quite impossible on the language used.

It is trite that this must be so in the case of Directives. Why it is so in the case of TRIPS calls for a little more explanation. The WTO, of which TRIPS forms part, is primarily a Treaty between nations across the globe. But the EU was also a party to it. And by SI 1995 No. 265 the WTO Agreement is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972. This makes it fall within s.3(1) which says:

So the next thing to do is to see what TRIPS requires in relation to performing rights. It builds on Berne, which applies only to “ordinary copyright” (literary, musical and artistic works). For performing rights, Art. 14 lays down requirements. They follow Rome 1961. Importantly Art. 14(6) says that the provisions of Art. 18 of Berne shall apply mutatis mutandis to performers’ rights.

So what does Art. 18 of Berne call for? It says that the Convention applies to all works which on its coming into force, have not yet fallen into the public domain in the country of origin through the expiry of the term of protection. The only exception is where a work has fallen into the public domain in the country where protection is claimed. By virtue of Art. 14 of TRIPS this rule also applies to performers’ rights.

Art. 70(2) of TRIPS confirms the position, see the second sentence.

Now it is not suggested that rights in Jimi Hendrix’s performances ever fell into the public domain through expiry of a term of protection. The argument is that they ceased because the 1988 Act did not confer any rights in respect of dead performers.

The upshot of all this is that if the Directives and our implementing Acts deny protection to a performance on the grounds of the death of its performer, they will be in breach of TRIPS Art. 14. That is wholly improbable.

It is upon this that Mr Turner based his principal argument. He made two basic submissions, first that the Directive was a harmonising Directive. The second and main submission was based particularly on Recitals (7) and (8).

I must elaborate the second submission, for which it is necessary to set out the recitals relied upon:

The argument is that Recital (7) not only sets out the purpose of a performing right but thereby limits its extent. The identified purpose is to secure an adequate income as a basis for further creative work and that is all. Once a performer is dead he is no longer capable of further creative work. Hence no rights need be created pursuant to this Directive in respect of already dead performers. To do so would be to go beyond its purpose. And the Directive should not be construed to go beyond that purpose.

Thus, he submitted, the only performers to which the Directive applies are those capable of further performances. So wherever the Directive speaks of a “performer” it means a live person, the dead being incapable. It follows that the obligation on Member States to provide protection for performers (the “fixation right” called for by Art. 6.1, the reproduction right called for by Art. 7.1, the broadcasting and communication to the public right called for by Art. 8.1 and the Distribution Right called for by Art. 9.1) is limited to live performers.

The first submission is then called into play. Because the Directive is harmonising, Mr Turner submits, Member States may not provide more protection than is required by the Directive.

I do not accept the second, and main submission. Mr Turner reads far too much into the recital. If he were right, not only would the dead be excluded, but also those incapable of further performance. And what about amateurs and those who have retired? Does the Directive call for an examination by doctors to see if a performer can still perform, or a questionnaire to a performer who has retired asking whether he is thinking of a come-back? All this shows the non-viability of the argument.

Mr Turner sought to deflect that, saying only death provided the necessary certainty. That is just not so. And if the recital was intended to mean that the performer had to be alive at the date of implementation, it would have said so. It is miles from doing that.

I think the recital is to be read as no more than a general justification for conferring rights on performers. It is not to be read as defining, specifically as limiting, those who are to be granted rights.

Mr Turner’s submission runs into other difficulties too. For instance rights are to be given to record companies (dealing with the Pollard problem, which had been addressed in the unamended CDPA). What about a record company which had invested in a performance but found that the performer died shortly thereafter? Is its protection to die too? Or does the Directive contemplate the record company’s rights continuing? If so would it have to pay the widow or could it deny liability on the basis she had no rights to devolve upon her?

Most formidably recital (10) stands in Mr Turner’s way. It says:

Now Rome 1961 requires both a civil right for performers and a minimum term of 20 years (see above). And it had so required for many years (in the case of the UK from the 1964 accession). If the RR Directive forbade protection in respect of performances by performers dead at implementation of the Directive, it would involve a breach of Rome 1961. Recital (10) says the opposite – compliance with international conventions is intended.

Moreover although TRIPS is not referred to in the RR Directive and cannot have been since it had not yet been agreed, it is clear that those who drafted the Directive were aware of the TRIPS negotiations which were going on at the time. Art. 13 of the Directive contains language taken from a draft of TRIPS in circulation at the time. It is inconceivable that the Council of the EU would have made a Directive incompatible with the requirements of the shortly to be agreed TRIPS. I refuse to construe it so, yet that it what Mr Turner’s argument would require.

In the circumstances it is not necessary to go into Mr Turner’s harmonisation point. I merely record that it could run into trouble with the curious Recital (20):

This requires harmonisation of the term of ordinary copyright, putting it up from 50 to 70 years from the year of death of the author by Art. 1. So far as performers’ rights are concerned, Art. 3(1) provides a basic rule that the term shall be 50 years from the end of the year of the performance. But there is an exception: the period will be longer if there is lawful publication or communication to the public within that basic period. If so the period expires 50 years after such first publication or communication. In the case of a sound recording of a performance, for example, the period expires 50 years from the date when a record of that performance was first issued to the public.

The basic rule was all that was in the unamended CDPA. So amendment to comply with the exception was called for and duly made by a statutory instrument.

What is important for present purposes is there is no mention of expiry of any performer’s right on death. The focus is solely on the date of the performance or publication or communication of copies. This is not of course conclusive, but is another pointer to the conclusion that the term of a performer’s right is unrelated to the date of his death.

Finally I come to the Act as amended. It should be construed in accordance with the RR and Term Directives and TRIPS. Having already looked at these it is hardly necessary to look at the amended Act. The arguments before us, rightly in my view, reflected that. My own analysis of the Act before amendment covers all the essential ground.

Perhaps the only extra point worthy of mention is that based on the SI 1996/2967 implementing the RR Directive. Park J summarised the point and his answer to it:

I cannot fault that or indeed express it better – save perhaps that the word “unlikely to be correct” understates the point. It is near fantastic to suppose that Parliament meant to cater only for performances of those who had died between coming into force and amendment of the Act.

Accordingly, like Park J, I reject the dead performer argument.

I turn to the qualifying country argument, one that has been rejected by both Hart J and Park J. Mr Turner conceded that if it was right, the UK would be in derogation of TRIPS and in breach of the EC treaty. So it would need strong unequivocal language to reach such a conclusion.

I begin by outlining the argument. It relates only to those performances which Jimi Hendrix gave in Sweden and the US. S.181 of the Act (unaffected by amendment) reads:

The heart of the argument lies in the use of the present tense – “is given” or “takes place.” Mr Turner submits that to be protected a performance must have been in a qualifying country at the time of the performance or have been given by a person who was a qualifying individual at that time. So far as the UK performances are concerned, the condition was satisfied at the time. But not so for Sweden or the USA. Hence these performances are not protected.

I reject the argument for three reasons. It makes no sense as a matter of construction. It involves ignoring the whole way in which the international system of copyright recognition works. And it involves a derogation from TRIPS and a violation of the EC Treaty. All that is supposed to come about because of the use of the present tense. You need lots more than that for such profound effects. I elaborate on the three reasons.

As a matter of construction one cannot really read the tense as meaning the present at all. The whole point is protection is for past performances. “Is” in context must mean “was,” and “is given” must mean “was given.”

Moreover the Act expressly applies to pre-commencement performances (s.180(3)). Yet before the Act no country was a “qualifying country” as defined in the Act save for the UK and the then existing members of the EEC. So if the country had to be qualifying at the date of the performance, s.180(3) would be denied any effect for all other countries. That cannot be so.

Next the Berne system of recognition and TRIPS. As I have said, by virtue of TRIPS Art. 14 the system applies to rights in performances. And as I have already said Art. 18 of Berne requires that protection is conferred in respect of past works when a country accedes to Berne. The position is described more fully by Ricketson and Ginsburg International Copyright and Neighbouring Rights, 2^nd Edn.at 6.117:

This retrospectivity does not mean that someone could later be made into an infringer for what, when it was done, was lawful. That is for the simple reason that you have to ask whether the person or country was qualified at the date of the alleged infringement. Mr Turner so accepted in the course of argument, withdrawing his submission that this was a case of “hard” retrospectivity.

So his argument, if right, would involve a breach of TRIPS. It would involve a breach of the EU Treaty too. Consider a 1969 performance. If in the UK or any Member State of the EEC as it was at the time of the performance (the original six) there would be protection. But there would be none for performances in subsequently acceding states (e.g. Sweden or Ireland). This would infringe Art. 12 EC which forbids discrimination on the grounds of nationality. The same argument applies, mutatis mutandis, in relation to the nationality of a qualifying performer.

The ECJ’s ruling in Tod’s v Heyraud Case C-28/04 confirms this:

Accordingly I think the “qualifying country” point fails too.

Mr Turner submits that Park J wrongly held that the defendants had “no real prospect of defending” the claim (CPR 24.2). Park J summarised the argument thus:

So was Mr Hendrix an employee of Yameta? The agreement relied upon, dated 1^st December 1966, says:

Clause 2 begins:

Park J said:

What I would add, however, is that this agreement clearly has nothing to do with vesting rights in Yameta. The idea, for instance, that the copyright in any musical work composed by Jimi Hendrix would belong to Yameta is absurd. The same must go for rights in performances. This was a point noticed by Hart J.

In the face of this, Mr Turner placed reliance on a witness statement by Jimi Hendrix’s girlfriend at the time. Park J dealt with this point as follows:

Mr Turner says it was wrong for the Judge to reject this evidence on a summary judgment application and that a trial at which it can be tested is necessary. I do not see why. Nor can I see any fault in the Judge saying, as he in effect did, that even if proved it would not provide a defence. It is wholly unrealistic to think that the conversations allegedly remembered amount to a variation of the actual written agreement or could provide an estoppel. Indeed if you take the word “employment” in a purely general sense they are consistent with the written agreement.

That is sufficient to dispose of this point. But there are other reasons too, set out in Park J’s judgment, for instance the insuperable difficulty of the 1968 agreement which terminated Yameta’s rights with effect from 31^st December 1967. It is not necessary to go to them separately, though I agree with all of them.

So in my opinion Park J was right on all three points and this appeal should be dismissed.

Mr Turner’s central arguments on the construction of the were seductively simple.

His first argument was about the meaning of the words in s.180 “This Part confers rights on a performer…”. He accepted that the word performer must include a person who has carried out a past performance, since s.180 (3) states that “The rights conferred by this Part apply in relation to performances taking place before the commencement of this Part…”, but he submitted that on its natural construction the Act did not confer rights on the personal representatives of a past performer who had died before the Act came into force.

His second argument was about the meaning of “qualifying country” in ss.181 and 206, the relevant parts of which have been set out by Jacob LJ in paragraph 56. Mr Turner submitted that the natural meaning was that for a country to qualify under paragraph (b) or (c) of the definition in s.206 it must have been a European Member State or a country designated by an Order under s.208 at the time of the performance.

I could see considerable force in these points if the legislation were to be construed without reference to its international context or the pre-existing law, but those external considerations drive me to the conclusion that the legislation should be construed as the respondents contend for the reasons so fully explained by Jacob LJ.

Mr Turner candidly accepted that his interpretation of “qualifying country” would involve the UK being in breach of TRIPS. I accept Mr Arnold’s argument that the appellant’s construction of “performer” would also place the UK in breach of its international obligations. To my mind his strongest argument in this regard was based on the Term Directive. Paragraph 18 of the preamble to that Directive recites that “in order to avoid differences in the term of protection as regards related rights it is necessary to provide the same starting point for the calculation of the term throughout the Community”. Curiously, the Directive does not then specify in express terms the starting point. Rather, article 3 specifies the date of expiry as 50 years after the date of the performance (or, is a fixation of the performance if lawfully published or communicated to the public within that period, the period of protection extends to 50 years from the date of such publication or communication to the public), but it seems to me that the plain effect is to prescribe the date of the performance as the starting point of the protection which is to apply throughout the Community. Under article 10 there are qualifications to the retrospectivity of the protection, but the qualifications do not assist the appellant. As Jacob LJ has pointed out in paragraph 50, the protection provided by the Directive is unrelated to the date of death of the performer.

I also agree with Jacob LJ on the summary judgment point.

I agree with both judgments.

On the death of a person entitled to performer’s rights –

the rights pass to such person as he may by testamentary disposition specifically direct, and

if or to the extent that there is no such direction, the rights are exercisable by his personal representatives;

Member States shall provide the exclusive right to authorize or prohibit the direct or indirect reproduction:

for performers, of fixations of their performances,

for phonogram producers, of their phonograms,

for producers of the first fixations of films, in respect of the original and copies of their films, and

for broadcasting organizations, of fixations of their broadcasts, as set out in Article 6(2).

The reproduction right referred to in paragraph 1 may be transferred, assigned or subject to granting of contractual licences.