Novello & Company Ltd v Keith Prowse Music Publishing Company Ltd

The principal question which I have to decide in this action is whether a living author (in this case a composer) was able during the currency of the Copyright Act 1956 (“the 1956 Act”) to assign the reversionary interest in the copyright in his works, expectant on the termination of the period of 25 years from his death. I shall refer to this interest, for convenience, as “the reversionary interest”. Until the commencement of the 1956 Act on 1^st June 1957 the answer was clear. Section 5(2) of the Copyright Act 1911 (“the 1911 Act”), whilst conferring on the owner of the copyright a general power of assignment for the whole or part of the term of that copyright, made express provision that no inter vivos assignment would be operative to vest the reversionary interest in the assignee and that those rights would vest (notwithstanding any agreement to the contrary) in the author’s personal representatives. The proviso to s.5(2) was preserved by Sch 7, para 28(3) of the 1956 Act in relation to certain types of assignment made before 1^st June 1957: see para 28(1). The issue between the parties is whether the combined effect of these provisions was also to apply the proviso to s.5(2) to assignments made after that date, but in respect of existing works to which the provisions of the 1911 Act, including s.5(2), had previously applied.

Although it is now almost 50 years since the 1956 Act came into force and more than 10 years since it was repealed by the Copyright, Designs and Patents Act 1988 (“the 1988 Act”), this point of statutory construction remains unresolved. The only judicial statement on the point is a passage in the judgment of Goff J in Redwood Music Ltd v. Francis, Day & Hunter [1978] RPC 429 at page 434, where he said:

The leading textbooks are also ambivalent. The editors of Copinger and Skone James on Copyright (14^th edition) state that the position is unclear, but support the Claimant’s argument. Paragraph 5-113(b) states that:

The only issue in the action is which of the parties owns the reversionary interest. The Claimant relies for its title upon an assignment in writing dated 31^st October 2000 made by the trustees of the will of the late Richard S Addinsell, who died on 14^th November 1977. Mr Addinsell was a celebrated composer, particularly of film scores. He was responsible for the scores for a number of well-known films released during the 1940s, including Goodbye Mr Chips, Fire Over England, Tom Brown’s Schooldays, Beau Brummel and Dangerous Moonlight. Part of the music composed for Dangerous Moonlight was the Warsaw Concerto, the copyright to which forms part of this claim. All of the works in dispute were written before 1^st June 1957.

Between 1941 and 1946 Mr Addinsell assigned the “whole of his copyright” in the music and songs to Keith Prowse and Company Limited (“KPCL”) in exchange for a royalty. Thereafter KPCL assigned the rights to the Defendant. On 4^th December 1973 Mr Addinsell executed a further assignment in writing in favour of the Defendant of:

Miss Vitoria QC for the Claimant relies upon two arguments in support of her client’s title under the 2000 assignment. First, she submits that the effect of the transitional provisions contained in the 1956 Act was to apply to the 1973 assignment the proviso to s.5(2) of the 1911 Act. If this is correct, then it must follow that the 1973 assignment was not effective to transfer to the Defendant the reversionary interest. If she is wrong about that, she contends in the alternative that on its true construction the 1973 assignment did not convey to the Defendant any greater rights than were contained in the earlier assignments executed in the 1940s: i.e. did not include the reversionary interest. I turn first to consider the question of whether the 1973 assignment was capable of transferring the reversionary interest, having regard to the provisions of the 1956 Act.

There is a measure of agreement between the parties as to the statutory provisions which govern the effect of the 1973 assignment. Although the musical works in question were composed in the 1940s and attracted copyright under the 1911 Act, the existence and enforceability of those rights now depend on the 1988 Act: see s.171(2). Similarly, although the 1973 assignment took effect (if at all) under the provisions of the 1956 Act, it operated to convey rights created and continued under that Act and now replaced by the 1988 Act. It is therefore to the 1988 Act that one needs to turn in the first instance, in order to establish the current status of the 1973 assignment.

Under s.12(2) of the 1988 Act copyright in musical works expires at the end of the period of 70 years from the end of the calendar year in which the author dies. But in the case of works made prior to the commencement of the 1988 Act and of acts and events occurring before that date, the transitional provisions contained in Schedule 1 to the Act apply: see s.170. The general principles embodied in the transitional provisions are set out in paras 3 and 4 of Schedule 1. One of those principles is to ensure the continuity of the law, and para 3 provides that:

Paragraphs 25-29 of Sch 1 to the 1988 Act deal with assignments and licences. Paragraph 25 provides that:

It is clear that para 27(1) was intended to reproduce (although not by way of re-enactment) the provisions of s.5(2) of the 1911 Act, which deal with the power of the author as the first owner of the copyright to assign. Section 5(2) provides that:

On one view, para 27 of Sch 1 to the 1988 Act was unnecessary, because para 25 would have limited both the 1940s and the 1973 assignments to whatever legal effect they had at the time when they were executed. I suspect, however, that Miss Vitoria is right in her suggestion that the draftsman of the 1988 Act probably considered it necessary to include paragraph 27(1), if only to ensure that the statutory vesting of the reversionary interest was also preserved. The effect, however, of that sub-paragraph is to make it clear beyond doubt that assignments executed before 1^st June 1957 remain ineffective to pass the reversionary interest to the assignee. It is therefore common ground that nothing in the 1988 Act affected the assignments executed by Mr Addinsell in the 1940s and that those assignments remained subject to the restrictions imposed by the 1911 Act.

The meaning of para 27(2) of Sch 1 is also clear. Under s.90 of the 1988 Act copyright is freely assignable for the whole of its duration. The limitations imposed by the 1911 Act no longer exist and were abolished at least for new works by the 1956 Act (see s.36). Paragraph 27(2) will only therefore apply to works made during the currency of the 1911Act. It confirms that even in the case of those works a living author may after the commencement of the 1988 Act assign the reversionary rights, but that, in the absence of any such assignment, they will vest on his death in his personal representatives. What para 27 does not do in terms is to legislate for or re-state the legal effect of assignments of the reversionary interest made between 1^st June 1957 and 1^st August 1989. One is therefore thrown back to para 25(1), and the legal effect of instruments executed in this period is made to depend upon the provisions of the 1956 Act. Unlike in relation to the 1911 Act, the 1988 Act does not state what this was.

Both sides therefore accept that the 1988 Act makes the issue between them dependent upon the provisions of the 1956 Act in force at the time when the 1973 assignment was made and does not alter the legal effect which it had at the time. One can speculate as to why the draftsman of the 1988 Act passed the opportunity of clarifying the law on this point, but it does not really assist in the resolution of the question with which I am faced. It certainly looks as if he took the law on the point to be unsettled and therefore preferred to leave it to the Courts to resolve by construing the 1956 Act rather than risking the alteration by statute of established rights. The clue to this can, I think, be found in the Report of the Whitford Committee (Cmnd 6732) presented to Parliament in March 1977, which led ultimately to the passing of the 1988 Act. In chapter 12 of the Report, which deals with reversionary rights, the Committee noted that the Gregory Committee had in 1952 recommended the repeal of the proviso to s.3 of the 1911 Act and as a consequence the omission of the proviso to s.5(2). In paragraph 613 of its Report the Whitford Committee described the consequence of that recommendation as follows:

The 1956 Act retained the copyright period of the author’s life plus 50 years, but removed the compulsory licensing provisions contained in the proviso to s.3 of the 1911 Act. The proviso to s.5(2) was also abolished and s.36 of the 1956 Act creates an unrestricted right of assignment. However, as in the case of the 1988 Act, ss.46(5) and 50 of the 1956 Act, whilst introducing a new and entire statutory code for the creation and enforcement of copyright, also provided, in the form of Schedules 7 and 8 to the Act, various transitional provisions designed to regulate copyright in existing works and prior assignments of those rights created under the 1911 Act. The question to decide is whether the preservation of the 1911 code in respect of existing works extended to the capacity of a living author of such works to assign his copyright after the commencement of the 1956 Act or whether from 1^st June 1957 he became entitled to take advantage of s.36, free of the proviso to s.5(2) of the 1911 Act.

The transitional provisions contained in Sch 7 applied the 1911 Act regime to a number of fundamental aspects of copyright in existing works. The most obvious examples are those which occur in the opening few paragraphs of Sch 7. The conditions for the subsistence of copyright contained in ss.2 and 3 of the 1956 Act are amended (para 1); the duration of copyright in the case of photographs taken before 1^st June 1957 is 50 years from the end of the calendar year in which they were taken and not 50 years from the end of the year in which they were first published (para 2); and the provisions of s.5(1) of the 1911 Act relating to ownership are preserved in preference to the new provisions of s.4 of the 1956 Act (para 3). Assignments are dealt with in para 28 and both sides accept that these are the critical provisions in the present case. Paragraph 28(1)-(3) provides as follows:

Paragraph 28(1) preserves the legal effect of any assignment made before 1^st June 1957 which affected the title to copyright in works under the 1911 Act. This is the equivalent provision to para 25(1) of Sch 1 to the 1988 Act and was obviously the model for that paragraph. A pre-commencement assignment (e.g. the assignments executed by Mr Addinsell in the 1940s) therefore remained ineffective to transfer the reversionary interest, but remained effective insofar as it transferred the whole of the relevant copyright to the extent permitted by the 1911 Act. Nothing in para 28(1) assists either the Claimant or the Defendant. The effect of the 1940s assignments is not extended, but the paragraph does not deal with future assignments.

Paragraph 28(2) also deals with pre-commencement assignments of copyright in existing works under the 1911 Act and excludes from any such assignments or agreements (whose operation is continued after 1^st June 1957 by virtue of para 28(1) ) the provisions of s.37(1) of the 1956 Act, which permitted for the first time the assignment of a future copyright. This merely confirms that the 1911 Act regime continues to govern pre-commencement assignments or agreements to assign.

This takes one to para 28(3). The question is whether this sub-paragraph, like sub-paras 28(1) and (2), is also confined to pre-commencement assignments or whether it also applies the proviso to s.5(2) of the 1911 Act to new assignments, albeit of the copyright in existing works. It seems to me important to remember that unless limited in some way by these transitional provisions, s.36(1) of the 1956 Act clearly does confer an unrestricted right of assignment of copyright, and this would therefore apply to copyright in both existing and future works. For the Claimant to succeed, it is necessary to construe para 28(3) (because there is no other provision in the 1956 Act relied on for this purpose) as applying to and qualifying s.36(1) of the Act.

The form and language of para 28(3) contains no obvious indication that this was its purpose. There is no reference to s.36(1) as such, but, more significantly, there is the express statement that Sch 8, para 6 of the Act (which simply sets out in terms the proviso to s.5(2) of the 1911 Act) applies to arrangements and licences “having effect in relation to copyright under this Act in accordance with that sub-paragraph”. This formula is a repeat of the wording of para 28(1) and seems to me to limit the application of the s.5(2) proviso to pre-commencement assignments. That is all that para 28(1) deals with. Looked at in this way, para 28(3) forms part of an intelligible code with the earlier two sub-paragraphs, which preserve but restrict pre-commencement assignments to the legal effect which they had under the 1911 Act. If Parliament had intended to re-enact the proviso to s.5(2) so as to regulate even future assignments of copyright in existing works, one would have expected to find a paragraph in the transitional provisions expressly qualifying the operative provisions of the Act in relation to copyright in existing works. Copyright under the Act for all works, including existing works, is derived from the 1956 Act itself: see s.46(5). The retention of the old 1911 regime in respect of existing works therefore requires the amendment of the provisions governing existing copyright. One can see an example of this in para 3 of Sch 7, which expressly disapplies s.4(2)-(4) of the 1956 Act to existing works and subjects s.4(1) in such cases to the proviso to s.5(1) of the 1911 Act, which is set out in para 1 of Sch 8. The provisions of para 28(3) bear no resemblance to this.

The Claimant’s argument really comes down to saying that, by incorporating the whole of the proviso to s.5(2), para 28(3) has introduced provisions which by their very nature are prospective in effect. The proviso is applied “without prejudice to the generality” of para 28(1) and therefore has a wide application and effect. Miss Vitoria emphasises that the proviso has two limbs. The first sets up the reversionary interest. The second strikes down any attempt by the author to deal with the reversionary interest during his lifetime. Both parts of the proviso are applied by para 28(3). This is indicative of an intention by Parliament, she says, to apply these provisions to both past and future assignments. Parliament could have provided expressly that an author could, after 1^st June 1957, assign the reversionary interest, but it did not do so.

I am not persuaded by this argument. In the first place Parliament did expressly confer upon a living author the right freely to assign the entirety of his copyright. The old provisions of ss.3(1) and 5(2) of the 1911 Act were repealed and replaced by s.36(1) of the 1956 Act, which is not limited in terms to copyright in future works. Secondly, I am not convinced that there is such a clear-cut division between the first and second parts of the proviso as Miss Vitoria suggests. It is the first part which invalidates purported assignments of the last 25 years of the copyright. The second merely extends those provisions to agreements to assign. My principal reason, however, for rejecting Miss Vitoria’s submissions is that they leave the construction of para 28(3) to be determined by the proviso which they incorporate and not by the provisions of para 28(3) itself. This seems to me to be the statutory equivalent of the tail wagging the dog. In order to decide what the proviso applies to, one needs to look at para 28(3) itself and not at the proviso in isolation. What para 28(3) says is that it applies to pre-commencement documents or events. Nothing else. One point raised by Miss Vitoria was that the proviso as a whole was intended to have prospective effect, because it contains the vesting provisions for the reversionary interest in the author’s estate and these would continue to have effect (even on the Defendant’s case) where the author has previously assigned his copyright, but has made no further attempt after 1^st June 1957 to assign the reversionary interest. I accept that, but it is catered for by the Defendant’s construction of paras 28(1) and 28(3). The pre-commencement assignment remains effective to assign copyright in the works for all but the last 25 years of the 1911 Act term and creates and vests the reversionary interest (with the assistance of the proviso) in the author’s estate. To that extent the proviso continues to operate. But it does not, in my judgment, prevent the author, if living, from exercising the power of disposal conferred upon him by s.36.

For these reasons the provisions of para 28 of Sch 7 to the 1956 Act do not, as I see it, operate to invalidate the 1973 assignment, so far as it was, according to its terms, effective to pass to the Defendant the reversionary interest. Although I have reached this conclusion from my reading and interpretation of the statutory provisions themselves, it does in fact accord with the recommendations of the Gregory Committee which led to the passing of the 1956 Act. In paragraph 23 of its Report (Cmnd 8662) it said:

The issue of construction can be dealt with quite shortly. The Claimant’s case is that the 1973 assignment was not effective to pass to the Defendant the reversionary interest, because it was co-extensive with the earlier assignments. Miss Vitoria pointed to the relative informality of the document, compared with the detailed and much lengthier forms of assignment executed by Mr Addinsell in the 1940s. It is, she says, silent as to the term of the rights conveyed and contains no express reference to the reversionary interest as such at all. The language used is equally consistent with it being a confirmatory assignment to the Defendant of the rights they had previously acquired from KPML, so as to avoid any disputes about the effectiveness of the chain of title.

There is no evidence as to the circumstances in which the 1973 assignment came to be executed and I have not therefore been troubled with arguments about what constitutes the relevant factual matrix and the inferences I should draw from it. However, so far as any background is relevant, I am, I think, entitled to have in mind what must have been known to the parties at the time of the assignment: i.e. that there had been previous assignments of copyright in the 1940s; that the benefit of those rights had been assigned to the Defendant; and that the 1911 Act had been replaced by the 1956 Act. All these points are evident from the terms of the 1973 assignment itself.

The 1973 assignment purports to deal with the “whole of the copyright throughout the world of and in all the musical compositions written and/or composed by the undersigned, the copyrights in which have heretofore been acquired by the Company by earlier assignments to the intent that this assignment shall operate under the 1956 Copyright Act”. If the only purpose of the assignment was to confirm the earlier assignments but not to add to them, I see no reason for the concluding words containing the reference to the 1956 Act. It seems to me that in the absence of some definite context which requires the words used to be given a special or limited meaning, the proper approach must be to treat this as a commercial document made between persons with some knowledge of the subject-matter they were dealing with and to give the words, so far as possible, their ordinary meaning. Construed in that way, the document was effective, in my judgment, to include the reversionary interest. It assigns the whole of the copyright in the relevant works and it expressly does so with the intention that the assignment should operate under the 1956 Act. This must, at least in part, be a reference to s.36 of the 1956 Act, and the “whole of the copyright” in that context must include the reversionary interest. I express no view as to whether it was effective to convey more than the copyright in the musical works e.g. film rights) because this is an issue which does not arise between the parties in this case.

For these reasons the claim fails and will be dismissed. I will (if required) make a declaration that the 1973 assignment was effective to transfer to the Defendant the reversionary interest. In the absence of agreement, I will hear Counsel on the question of costs and any other consequential matters.