Experience Hendrix LLC v Purple Haze Records Ltd & Anor

This is the claimant’s application for summary judgment under CPR 24.2 on its claim for infringement of performer’s rights in performances given by the late Jimi Hendrix at the Konserthuset Stockholm Sweden on 9^th January 1969 (“the Stockholm Performances”). Although there is no formal admission by the defendants on the pleadings that the Stockholm Performances took place, the proposition that the claimant will be unable to prove that they did is fanciful. They took the form of performances given in two sets by Jimi Hendrix performing together with Mitch Mitchell and Noel Redding as “The Jimi Hendrix Experience”. A sound recording and/or film and sound recording of the Stockholm Performances was made by a Swedish broadcasting organisation.

At the time the only protection afforded by English law to performers against the unauthorised exploitation of their performances was achieved by the criminal sanctions provided for by the Performers’ Protection Acts 1958-1963. Subject to a qualification which it is unnecessary to elaborate (see the decision of the Court of Appeal in Rickless v. United Artists Corp [1988] QB 40 and the illuminating discussion of that decision in Arnold, Performers’ Rights, 3^rd Edition at paras 1.64-1.84) a performer had no private law right or remedy in respect of such exploitation. Such a right (and accompanying remedy) was first expressly provided for by the provisions contained in Part II of the Copyright Designs and Patents Act 1988 which had a commencement date of 1^st August 1989.

On 18^th September 1970 Jimi Hendrix died intestate in London. The defence puts the claimant to strict proof of those facts. However, both the date of death and the fact of intestacy are in reality incontrovertible as matters of record.

By order of the Surrogate’s Court of the County of New York, New York State made on 19 February 1971, Mr Kenneth D Hagood (“the New York Administrator”), was appointed as administrator de bonis non of the goods, chattels and credits (“the Estate”) of Jimi Hendrix. On 23 January 1973 Mr Alan Leighton-Davis (“the English Administrator”) was appointed as administrator of the estate of Jimi Hendrix pursuant to letters of administration granted by the High Court of Justice, Family Division, Principal Probate Registry by virtue of a power of attorney granted by the New York Administrator for this purpose. By an instrument made in New York County, New York State, USA and dated 30 March 1977 the New York Administrator distributed, transferred and set over to Mr James A. Hendrix (“Mr Hendrix”), father of Jimi Hendrix, all right, title and interest in the assets of the Estate. On 13 November 2000 with the consent and at the direction of the New York Administrator and Mr Hendrix, the English Administrator executed a Deed of Assignment and Assent which transferred to the Claimant, inter alia “all… the property comprised in [Jimi Hendrix’s] estate now vested in or belonging to or under the control of [the English Administrator] as administrator thereof”.

As already stated, the provisions of Part II of the 1988 Act came into effect on 1^st August 1989. These conferred rights on a performer by requiring his consent to the exploitation of his performances (as more particularly set out in sections 181-184) and also on a person having recording rights in relation to recordings made without his consent or that of the performer (as set out in sections 185-188). In relation to the rights conferred on performers the following points should be noted:

The rights conferred are conferred retrospectively, s. 180(3) providing that:

The rights only subsist in “qualifying performances”, an expression defined in s. 181 by reference to the provisions of s. 206.

The rights were neither assignable nor transmissible save as provided in s. 192(2) to (5). Section 192(2) provided that:

The content of the performer’s rights was defined by reference to the acts which infringe. Three categories of infringing acts were specified by, respectively, s. 182, 183 and 184. Section 182 dealt with infringement by the direct or indirect recording of a qualifying performance or the live broadcast of a qualifying performance without the consent of the performer. Section 183 dealt with the use of a recording by a person who knew or had reason to believe that the recording was made without such consent. Section 184 dealt with business dealings in “illicit recordings” where the dealer knew or had reason to believe that the recording was an illicit recording.

The rights are quite separate from copyright, section 180(4) providing that:

These provisions were substantially amended and expanded by the Copyright and Related Rights Regulations 1996 (SI 1996/2967) (“the 1996 Regulations”) which were made in order to implement, inter alia, Council Directive No. 92/100/EEC of 19^th November 1992. The commencement date of the 1996 Regulations was 1^st December 1996. A new section 182 was substituted in similar terms to the old section 182 but restricting its ambit to direct recording of a qualifying performance, and direct recording of a broadcast. A new section 182A provided that a performer’s rights were infringed by a person who without his consent made a copy of a recording of a qualifying performance, and labelled the resulting right “to authorise or prohibit the making of such copies” a “reproduction right”. A new section 182B provided that a performer’s rights were infringed by a person issuing to the public copies of a recording of a qualifying performance without the performer’s consent and labelled the resulting right as a “distribution right”. A new section 182C (with which this case is not concerned) conferred on the performer a “rental right” and a “lending right”; and a new section 182D made provision for a performer to be entitled to equitable remuneration from the owner of the copyright in a sound recording of a qualifying performance when it was played in public or broadcast.

A new section 191A declared the rights granted by section 182A, 182B and 182C to be “property rights”, and a new section 191B provided that a performer’s property rights were transmissible “by assignment, by testamentary disposition or by operation of law, as personal or moveable property”. Section 191(B)(3) provided that an assignment of property rights should not be effective unless in writing signed by or on behalf of the assignor.

The 1996 Regulations also contained the following provisions material to the arguments in this case:

Although it is not admitted in the pleadings, Mr Miller QC on behalf of the defendants did not seek to challenge the proposition that, if the Hendrix Estate ever had any performer’s rights in respect of the Stockholm Performances, those rights are now vested in the claimant as a result of the deed of assignment executed by the English administrator on 13^th November 2000.

It is not in issue that the first defendant has made and sold in this country copies of a recording of the Stockholm Performances. It is not suggested that in doing so it had the consent of the claimant or of the Estate. The claimant contends that the Stockholm Performances were qualifying performances and that the first defendant has infringed Jimi Hendrix’s performer’s rights under s. 182A and 182B. It further contends that the second defendant, as the allegedly controlling mind of the first defendant is also liable in respect of those infringing acts.

It was submitted on behalf of the defendants that the claimant’s case depended on my accepting certain submissions of law on the true construction of the 1988 Act and the 1996 Regulations which did not properly lend themselves to summary determination and that, for that reason alone, I should decline to rule on them at this stage of the proceedings. As to that, I have concluded that the two main points relied on by the defendants ought to be decided before this action proceeds further. The correct answer to them does not depend on the establishment of any facts. It was further submitted that additional points on which the defendants rely can only be determined after a full investigation of the contemporary facts has been conducted. These additional points concern the true construction of an agreement called the Yameta Agreement which is discussed in more detail below. For reasons which appear below, I have concluded that investigation of the exact factual matrix of the Yameta Agreement is unnecessary for the purposes of deciding whether the defendants have a prospect of successfully invoking it as a defence to these proceedings.

The first point taken by the defendants is that the performances were not qualifying performances. Section 181 provides that:

Sweden joined the EEC on 1^st January 1995. Sweden was also designated by an Order in Council made under section 208 (The Performances (Reciprocal Protection) (Convention Countries) (No. 2) Order 1989 which came into force on 1^st August 1989, and continued to be so designated in subsequent orders which replaced that order until (in 1999) the view seems to have been taken that it was unnecessary to designate EC members in that way.

It was submitted on behalf of the defendants that the relevant date at which the qualification requirements have to be satisfied is the date when the performance in question took place. In support of that submission Mr Miller QC drew my attention to the absence of any transitional provisions in the Orders made under section 208 (contrasting the position of comparable Orders made under section 159 of the 1988 Act in relation to copyright) or of any transitional provisions in the case of countries joining the EU after the commencement date of the 1996 Regulations. Unless the statute is construed as only applying to foreign performances given after the relevant foreign country has become a qualifying country, the effect of that country becoming a qualifying country will be retrospectively to render acts in the UK infringing acts except to the extent that they occurred before 1^st August 1989 (the “springing interest” problem).

Mr Arnold QC submitted on behalf of the claimant that this approach was irreconcilable with the fact that the 1988 Act expressly provided (by section 180(3)) that it applied to performances taking place before 1^st August 1989, and that Regulation 26(1) similarly provided expressly that the 1996 Regulations applied to performances given before 1^st December 1996. Unless retrospective effect was given also to the definition of qualifying country, those provisions were meaningless. It was clear, he submitted, that such retrospectivity applied in relation to the qualifying country identified in section 206(1)(a), namely the United Kingdom: to place a different construction on section 206(1)(b) was unwarranted by the language used, and would involve discrimination on grounds of nationality contrary to Article 12 EC. In connection with the latter submission he referred me to Case C-360/00 Land Hessen v. G Ricardi & Co. [2003] EMLR 13. In further support of this submission Mr Arnold also referred me to Article 14.6 of the Agreement on Trade – related Aspects of Intellectual Property Rights (“TRIPS”) dated 15^th December 1993 providing that Article 18 of the Berne Convention (1971), should mutatis mutandis apply to performers’ rights, to Article 18 itself, and to the decision of the ECJ in Schieving-Nijstad VOF v. Groeneveld [2002] FSR 22 (in support of the proposition that EC Member States should apply national rules not merely so far as possible in conformity with the applicable EC legislation but also as far as possible in conformity with TRIPS). He submitted that the springing interest problem was simply a consequence, admittedly unsatisfactory, of the way in which the Act was drafted.

I am unable to accept the submissions made on behalf of the defendants on this short point of construction. Mr Miller QC was constrained to concede that a performance given in the UK prior to 1^st August 1989 was a qualifying performance for the purposes of Part II of the Act. I cannot see how it is possible to take a different view in relation to the countries identified by the description in section 206(1)(b) (i.e. Member States of the EEC) or to draw a distinction either between countries which were members as at 1^st August 1989 and those who joined after 1^st August 1989 and before 1^st December 1996, or between the latter and those who joined after 1^st December 1996, or between the last mentioned category and countries who may hereafter join. Subject to the theoretical possibility of impugning the validity of Orders made under section 208, the same applies in relation to countries which are, without more, designated under section 206(1)(c). The springing interest problem is simply a consequence of the way in which the Act has been drafted. It is not a problem which calls to be solved in the present case. Whatever the solution may be to it (if there is one), it is not to be found by interpolating an artificial temporal restriction into the definition of a qualifying country. In fact, a partial solution to the problem may exist in s. 191J which provides a defendant to an action for infringement with a defence to a damages claim if at the time of the infringement he did not know and had no reason to believe that the rights subsisted in the recording to which the action relates. It is only a partial solution because the section is unclear as to the extent to which a remedy by way of account of profits might nonetheless subsist.

Accordingly, the Stockholm Performances were, in my judgment, qualifying performances.

The next point taken on behalf of the defendants was that the relevant performance, or performances, was or were not by Jimi Hendrix alone but by Jimi Hendrix performing together with Mitch Mitchell and Noel Redding. If the correct analysis of what happened was that the performance(s) were by the three of them acting together as a group, then (so the argument ran) the Act bestows only a single right on the three of them jointly.

Mr Miller QC submitted that the ordinary meaning of the word performance was apt to refer to a single event participated in by more than one person, and relied also on the statutory definition of “performance” in section 180(1) which requires it to be, inter alia, “a live performance given by one or more individuals”. Accordingly, he submitted, if the Stockholm Performances were properly to be seen as performances by the group, as opposed to being performances by Jimi Hendrix alone, the performers’ rights were co-owned by the Estate, Mitch Mitchell and Noel Redding (or their respective estates or assigns) and the present action was not properly constituted. He also relied on the provision in section 191A(4), which was introduced by the 1996 Regulations, which reads as follows:

Section 191I(1) provides that:

In my judgment the proposition that an individual who participates in a group performance does not enjoy, in his own individual right, performer’s rights under the 1988 Act, either as originally enacted or as amended, is not sustainable. Section 180(2) does indeed contemplate that a performance may be given by one or more individuals, but the Act proceeds on the basis that each individual performer has the rights conferred by the Act provided that the performance is a qualifying performance or he is a qualifying individual. As Mr Arnold pointed out, the construction urged by the defendants raises insuperable difficulties when considering whether a group performance (some members of the group being qualified individuals and others not and the performance not taking place in a qualifying country) is or is not a qualifying performance.

Section 191A(4), far from being inconsistent with, in my judgment supports the claimant’s construction. It is directed to the case where there is joint ownership of rights in a single performer’s performances, a situation made possible by the possibility of transmissibility introduced by the 1996 Regulations. The possibility existed under the original provisions in relation to testamentary dispositions although the statutory solution was somewhat different: see the now repealed section 192(3). Neither of the provisions points to a performer’s rights in a performance given by more than one individual as only being capable of existing as a jointly owned right.

Having reached that conclusion I prefer to express no view on the question whether one co-owner of a performer’s rights (or performers’ rights) may sue in respect of them without joining his co-owners to the action. A respectable body of authority in the analogous field of copyright allowed such an action by a co-owner, and it would be surprising if CPR 19.3 had altered this. On the other hand section 191I, read with section 191(A)(4), appears to contemplate all the owners being parties to the infringement suit at least where the co-ownership is “joint”. I do not decide this point.

The remaining arguments on behalf of the defendants are that they have a more than fanciful prospect of persuading the court at trial of one or more of the following propositions:

that Jimi Hendrix had in his lifetime either assigned, or agreed to assign, his performer’s rights in the Stockholm Performances in such a way as to have prevented the Estate from having been the person entitled to exercise them either under the old section 192(2)(b) or under Regulation 30(1) of the 1996 Regulations (“the assignment argument”);

that Jimi Hendrix had in his lifetime authorised a person to make a copy of a recording of the performance so that the reproduction rights and distribution rights vested on 1^st December 1996 not in the Estate but in that person (“the Regulation 31 argument”);

that the acts of the defendants were done pursuant to an agreement made before 19^th November 1992 and therefore cannot be infringing acts (“the Regulation 27 argument”);

that the defendants have the benefit of a licence granted by Jimi Hendrix (“the licence argument”).

Each of these arguments requires a consideration of an agreement made between a Bahamian company Yameta Company Limited (“Yameta”) and Jimi Hendrix dated 1^st December 1966 (“the Yameta Agreement”) in which Yameta was described as “the Manager” and Jimi Hendrix as “the Performer” and which was governed by Bahamian law.

The material provisions of the Yameta Agreement were as follows:

There is considerable dispute between the parties as to the background to the Yameta Agreement and as to the role played by various personalities involved in Jimi Hendrix’s professional life at this period. A bare matter of weeks prior to the conclusion of the Yameta Agreement Jimi Hendrix had entered into a 6-year management agreement dated 11^th October 1966 with one Bryan Chandler. The Yameta Agreement envisaged the possibility of its benefits and burdens being assigned to Michael Jeffrey. A letter dated 5^th June 1967 from Mr Jeffrey to Yameta authorised Yameta to split the commission owed to Mr Jeffrey between himself and Mr Chandler. All this lends support to the belief that at this period the reality was that Jimi Hendrix was being co-managed by Mr Chandler and Mr Jeffrey, Yameta simply being a corporate vehicle for Mr Jeffrey’s interest. Yameta itself, however, was (so far as the evidence before me goes) owned by another Bahamian company of which a Mr Hillman claims to have been both legal and beneficial owner. Mr Hillman was a Bahamian lawyer. None of this is capable of being resolved on this application for summary judgment.

There is also a dispute as to whether or not the Yameta Agreement was still subsisting as at the date of the Stockholm Performances. The claimant has been able to produce a document dated 11^th November 1968 apparently made between Yameta, Jeffrey and Chandler in which all Yameta’s interests in various artists including Jimi Hendrix, were terminated and/or assigned to Jeffrey and Chandler. An agreement between Jimi Hendrix and Yameta, presumably being the Yameta Agreement, was referred to as an “employment agreement” and expressly treated as terminated as from 31^st December 1967.

That agreement appears to bear Mr Hillman’s signature on behalf of Yameta. Without expressly denying the signature, Mr Hillman in his evidence on this application has disputed the authenticity of this agreement. Although unimpressed by the quality of the evidence relied upon, I cannot resolve this issue on this application.

The first defendant contends that it is entitled to rely on the Yameta Agreement by virtue of a resolution of the board of Yameta passed at a meeting held on 5^th December 1975 which purports to record that:

The case presented on behalf of the defendants was, in essence, that by the Yameta Agreement, Jimi Hendrix had so committed himself to Yameta that Yameta had become entitled either in law or in equity to all rights appertaining to performances by Jimi Hendrix. Such rights would have included all copyrights in original works produced by Jimi Hendrix during the currency of the Yameta Agreement and extended to rights, such as performer’s rights, which were not known to the law at the date of the Yameta Agreement. This result was said to obtain either from the fact that the Yameta Agreement was on its true construction a contract of employment (with the result that such copyrights were owned by Yameta by virtue of section 4(4) of the Copyright Act 1956 and that copyrights in recordings commissioned by Yameta were owned by Yameta by virtue of section 12(4) of the 1956 Act), or that a term should be implied in the Yameta Agreement which precluded Jimi Hendrix (or his estate) from doing any act which would frustrate Yameta in the exercise of its function under the Yameta Agreement of achieving the fullest possible commercial exploitation of Jimi Hendrix’s services rendered during its currency.

In my judgment there is a very short answer to this way of putting the defendants’ case. True it is that by the Yameta Agreement Jimi Hendrix in a sense delivered himself “body and soul” to Yameta for its duration. But the purpose of his so subjecting himself was to enable, and entitle, Yameta to fulfil its contractual role and duty of promoting and furthering his “career and interest”, and for that purpose of finding suitable employment for him. What Yameta got from this agreement was not the intellectual property rights which were generated by Jimi Hendrix but, by Clause 2, 40% of “all gross payments made to the Performer excluding gross payments made in respect of recording royalties or publishing under the control of the Manager in respect of the entertainment industry”. The agreement was no doubt wide enough to allow Yameta to require Jimi Hendrix to enter into, for example, recording contracts, and wide enough to allow Yameta to enter into such contracts on his behalf. What it plainly did not do is entitle Yameta to sell his services to third parties and pocket 100% of the proceeds for itself. A construction of the agreement which permitted that would be quite incompatible with the express provision for Yameta’s compensation to come from gross payments made to Jimi Hendrix. Yameta’s role under the agreement was plainly that of agent for and manager of Jimi Hendrix and not as his employer.

Clause 12 of the agreement was relied on by Mr Miller QC as in some way supporting his contrary argument. However, clause 12 appears to me to be wholly consistent with what I regard as the only possible construction of the agreement. It tells one that, even after the termination of the agreement, Jimi Hendrix is to continue to be liable to pay the 40% commission on “the gross income of the Performer in respect of any engagement in the entertainment industry entered into by the Performer during the currency of this agreement”. How that is compatible with the assertion that the agreement somehow entitles Yameta to claim 100% of the benefit of a notional and proleptic assignment of performer’s rights completely escapes me. It only works if Jimi Hendrix is entitled to income in respect of the engagement and is obliged to pay Yameta a commission out of that income.

For these reasons in my judgment none of the arguments listed in paragraph 23 above has any prospect of succeeding at trial. The assignment argument fails because the Yameta Agreement on its true construction contains no assignment of, or agreement to assign, the relevant rights, and it is unnecessary to give the agreement business efficacy to imply a term to that effect. It is unnecessary therefore for me to consider the effect of clause 13 of the Yameta Agreement, although as at present advised it appears to me to place a fundamental obstacle in the defendants’ way: see Linden Garden Trust Ltd v. Linesta Sludge Disposals Ltd [1994] 1 AC 85. The Regulation 31 argument fails because the Yameta Agreement did not authorise Yameta to make a copy (for its own as opposed to Jimi Hendrix’s benefit) of the Stockholm Performances. I find it unnecessary to decide for this purpose the interesting questions which were argued before me, first, as to whether the reproduction right was a “new right” for Regulation 31 purposes as opposed simply to a right “corresponding” to the original section 183 right (see the definition in Regulation 25(3)), and, secondly, as to whether the copies referred to in Regulation 31 are restricted to copies made before commencement. The Regulation 27 argument fails because the defendants acts were not done pursuant to the Yameta Agreement: nothing in that agreement authorised it to exploit for its own sole benefit the fruits of engagements which it had procured for Jimi Hendrix. The licence argument similarly fails. Doubtless it was open to Yameta to give a relevant consent to a third party which would have subsequently precluded an action for infringement against the third party. But such consent would have been given on Jimi Hendrix’s behalf. Nothing in the Yameta Agreement entitled it to grant such a consent to itself.

Accordingly, the first defendant has, in my judgment, no realistic prospect of successfully defending this action and I can see no other reason why it ought to go to trial.

The case against the second defendant raises questions of a quite different kind. The particulars of claim allege against him that he:

Evidence in support of the allegation for the purposes of the summary judgment application was given by Patrick John Gardiner a solicitor employed by the claimant’s solicitors, Eversheds. He states his belief that the second defendant is the controlling mind of the first defendant, and exhibits a number of letters from the first defendant all of which are signed by the second defendant on its behalf. The second defendant does not deal with the allegation in his witness statement dated 20^th January 2005, although he does there refer to the first defendant as “my company”. That is entirely consistent with the exhibited letters (amongst them letters to President Bush, Lord Goldsmith and Sir John Stevens) where the second defendant writes in the first person as if he were the first defendant.

The circumstances in which a director or member of a company may be held liable with the company as a joint tortfeasor have been identified in a number of authorities of which the most recent is the decision of the Court of Appeal (Brown, Chadwick and Tuckey LJJ) in MCA Records Inc. v. Charly Records [2002] EMLR 1. In that case Chadwick LJ, after noting that there was a balance to be struck in each case and echoing earlier judicial statements as to the elusive nature of the question, held:

The plea in paragraph 10 of the Particulars of Claim, if proved, is in my judgment sufficient to support a finding of personal liability under these principles. The second sentence in particular fits Chadwick LJ’s second proposition. The second defendant’s decision simply to put the claimant to proof of the allegation and to decline the opportunity presented by this application to controvert it by evidence permits, if it does not compel, the inference that the allegation is true despite the absence of any direct evidence in its support. There is nothing before me to suggest that the second defendant’s stance at trial will be different.

Accordingly the claimant is entitled to summary judgment against both defendants.