JHP Ltd v BBC Worldwide Ltd & Anor

The Daleks first became known to humankind in 1963 when they appeared in the first series of “Dr Who”. They were some of the most engaging and enduring creations of the fertile mind of the late Terry Nation, though the conceit he used was that he simply learned of their existence through his discovery of “The Dalek Chronicles”, which he translated. More was learned of their origins and mode of existence as they featured in various further episodes of “Dr Who”, and there grew up around them a separate narrative and lore which was developed not only through television, but also through novelisations, comic strips, audio plays and the publication of books and “annuals”.

Paul Fishman’s father (Jack Fishman) was an acquaintance of Terry Nation, and the Daleks were naturally a subject of conversation between them. As a schoolboy Paul Fishman would overhear these conversations. He himself believed that Terry Nation had discovered “The Dalek Chronicles”, and he became interested in and enquired about this alien technology. He may even be the model for the 11-year-old Roger Marlow who features in a story called “The Orbitus” published as part of “The Dalek World”. Terry Nation was interested in Paul Fishman’s questions, because it gave him an insight into what intrigued the schoolboy mind. This is not of legal relevance but it explains Paul Fishman's deep personal engagement with legal issues with which this action is concerned.

Jack Fishman established (and Paul Fishman is now the sole director of) the Claimant JHP Limited (“JHP”). JHP was originally a book production company. It worked in association with a publishing company called Souvenir Press Ltd (“Souvenir”), whose proprietor was Ernst Hecht. It is the undisputed evidence of Mr Hecht that Jack Fishman conceived the idea of publishing a book about the Daleks and worked with Terry Nation to develop the idea. According to Mr Hecht the BBC “owned rights in the Dalek characters”, and it was necessary to obtain their permission for the venture: and it appears that in due course an agreement was made between the BBC and Souvenir by which the BBC granted Souvenir the right to produce a children’s book containing drawings based on the Dalek design (in relation to the artistic drawings of which the agreement recited the BBC owned the copyright). This agreement and its successors were not examined at trial.

Agreements were also entered into between Terry Nation and Souvenir. The first was dated 7^th May 1964 and related to a book provisionally entitled “The Daleks Book” (“the 1964 Agreement”). The second was a letter dated the 12^th March 1965 by which Terry Nation’s agent accepted the same terms for a further book provisionally referred to as “The Dalek Annual No.2” (“the March 1965 Agreement”). The third was a formal Memorandum of Agreement dated the 14^th of July 1965 relating to a further book provisionally called “The Dalek Pocket Book and Space Travellers Guide” (“the July 1965 Agreement”). Pursuant to the 1964 Agreement there was published “The Dalek (sic) Book”; pursuant to the March 1965 Agreement “The Dalek World”; and pursuant to the July 1965 Agreement (shortly put) “The Dalek Pocket Book” (together “the Books”). “The Dalek Pocketbook” in particular was regarded by those who thought of Terry Nation as the discoverer of “Tthe Dalek Chronicles” as a reference work that sought to document the threat of the Daleks in a serious and coherent manner. These Agreements and Books provided the essential material examined at trial.

Terry Nation died in March 1997. In the early part of 2001 Paul Fishman decided to explore the exploitation of the Books in some way as part of “a serious effort ..to explore other potential Dalek related merchandise”. On 4^th June 2001 he wrote to Ben Dunn (“Mr Dunn”) at BBC Worldwide Ltd (“BBCW”) drawing attention to “a series of children’s publications that had been produced by [his] company in conjunction with the BBC during the 1960’s” and suggesting that they may be now worth republishing. He stated:-

It will be necessary later to examine the progress of the project and the creative sources of the book that eventually emerged. It suffices for present purposes to note, first, that no agreement was entered between JHP or Souvenir or Paul Fishman on one side and BBCW on the other concerning the use by BBCW of any rights in the Books that Souvenir held: and second, that in October 2002 BBCW published a book called “The Dalek Survival Guide”, produced by a team of writers (“the Guide”).

By his Re-re-amended Particulars of Claim in this action Paul Fishman alleges that Souvenir was and JHP now is the owner of the copyright in the Books, that BBC Worldwide has infringed that copyright by virtue of its unauthorised use of a substantial part of the Books in the publication of the Guide, that in so acting BBC Worldwide acted in flagrant disregard of JHP’s rights, so that JHP is entitled to damages (and to additional damages under section 97(2) of the Copyright, Designs and Patents Act 1988) (“CDPA 1988”) in respect of the past infringement, and to an injunction to restrain further infringement.

A sufficient statement of the law by reference to which I must decide the initial group of issues in connection with this claim to relief is as follows. Copyright is a property right which subsists in an original literary work. In this context work is “original” if it originates with its author i.e. its creation involved him in the expenditure of a substantial amount of independent skill or labour : see Laddie “ Modern Law of Copyright and Design” 3rd edition paragraph 1.9. In essence “the right” is a right to prevent others committing infringing acts in relation to original work, thereby leaving the owner of the copyright with the exclusive right to undertake those acts. By section 90 CDPA 1988 such copyright is transmissible by assignment, and such assignment may be partial (i.e. limited to some only, but not all, of the things that the copyright owner has the exclusive right to do). By section 92(1) CDPA 1988 instead of entering into a partial assignment of the copyright the owner may grant “an exclusive license”, authorising the licensee to the exclusion of all other persons (including the grantor) to exercise a right which would otherwise be exercisable exclusively by the copyright owner. The rights and remedies of an exclusive licensee against third parties are concurrent with those of the copyright owner: s.101(2) CDPA 1988. But by section 101(3) CDPA 1988 in any action brought by an exclusive licensee the defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner. Because of this and because of the concurrency of the rights of the exclusive licensee and of the copyright owner, section 102(1) CDPA 1988 provides that in an infringement action the exclusive licensee must add the copyright owner as a claimant or as a defendant. (To cover the possibility that this section applied to the case before me the estate of Terry Nation was added as the Second Defendant: but it has not been represented or addressed any argument to me. A representative of the estate, Timothy Hancock (“Mr Hancock”), was a called to give evidence by BBCW). By section 104 CDPA 1988, where a name purporting to be that of the author appears on the copies of the work as published then it is to be presumed (until the contrary is proved) that that person is the author of the work: and where that author is dead it is to be presumed (subject to proof to the contrary) that the work is an original work.

With that summary I can turn to consider the first key issue. In order to succeed in its claim for relief JHP must establish that it is the owner of some right capable of being infringed by the publication of the Guide. In correspondence JHP has asserted ownership of very wide rights. In a letter dated the 25^th of June 2002 solicitors instructed by JHP asserted ownership of rights in material “including any graphic images, text, original material written by Terry Nation and/or any other artistic concept included in the original publications”: and he had earlier claimed ownership of “all… concepts taken or developed from the original published material”. But at trial JHP’s case was advanced on the footing that infringement was alleged only in relation to text and on the footing that Terry Nation was the author of that text. It claimed to have acquired a right capable of being infringed because it was the exclusive licensee or alternatively the assignee of the copyright in each of the Books. Each agreement must therefore be examined in turn to see what (upon its true construction) it achieved.

The process of construction is the ascertainment of the meaning which the document would convey to a reasonable person having all background knowledge which would reasonably have been available to the parties in the situation in which they were at the time of the contract. In this process reported decisions on the meaning of the same or similar words in other documents are of very little assistance (unless the words have a technical meaning in formal documents which the draftsman may be taken to have known), save for pointing up occasions on which the point may have arisen before and alerting the Court to the arguments then advanced. That is in part because the factual background known to the parties will invariably differ from document to document.

So far as the factual background is concerned, I make the following findings. At the time of the 1964 Agreement seven 25-minute episodes of the “Dr Who” Dalek story had been broadcast on BBC television between December 1963 and February 1964. These had established the fundamental nature and features of the Daleks, but left Terry Nation with effectively a free rein to develop them generally. He intended to do so, and did not treat the Daleks as fully formed characters who had made their only appearance in “Dr Who” and would feature no more. Indeed it is probable that at the very time when he was writing “The Dalek Book” Terry Nation was also preparing for a second Dalek story to be broadcast in November 1964.

The following provisions of the 1964 Agreement are in my judgement material:-

the agreement is the adaptation of a standard form;

the agreement is between Terry Nation (who is defined as “the Proprietors”) and Souvenir (which is defined as “the Publisher”);

the agreement relates to a book yet to be written and provisionally entitled “the Daleks Book”;

by clause 1 the Proprietors grant to the Publishers the “sole exclusive right to publish [the work] in book form in the English-language throughout the world”;

clause 3 contains a warranty that the work is not a violation of any existing copyright;

clause 6 contains an obligation on the part of Terry Nation not to publish any abridgement or part of the work in book form or to prepare otherwise than for the publishers any work which shall be an expansion or abridgement of the work or of a nature likely to compete with it;

clause 9 contains an obligation on the part of Souvenir to pay a royalty of 3.5 percent (and there is in clause 11 provision for the payment of an advance on such royalties);

all decisions as the manner of publication are by clause 12 to lie in the absolute discretion of Souvenir;

by clause 16 in the event of default by Souvenir then the agreement “shall be considered to be cancelled and all the rights granted in it shall revert to the proprietors forthwith”;

clause 18 contained a grant by Terry Nation to Souvenir of the right to negotiate certain book rights, including serialisation and reprints and licences to book clubs or publishers of cheap editions (but specifically excluding broadcast readings, dramatic adaptation for stage and/or radio and/or television and film rights).

In my judgement the 1964 Agreement constitutes a limited exclusive license to publish that particular text. This is most consistent with the language of clause 1 (particularly the use of the word “grant” rather than “assign” or “transfer”, the description “exclusive”, and the specific reference to “the right to publish… in book form”), that language occurring in an agreement the terms of which generally demonstrate that the parties understood copyright in the full sense of the word: compare Sampson Lowe v Duckworth [1923-1928] Mac CC 205. It is confirmed by the fact that the sole monetary consideration is the payment of a royalty (which is more consistent with the exploitation of a concurrent right than with an absolute assignment of the entire property: compare Hole v Bradbury (1879) 12 ChD 886); and that impression is reinforced by the apparent need to restrict Terry Nation’s residual rights (clause 6) and to extend the rights granted to Souvenir (clause 18, which lists rights than would have been included in an absolute assignment of the copyright in the text). A small degree of support is also afforded by the definitions, which are unlikely to have been selected at random and to have no bearing on the understanding of the parties as to their respective roles. This analysis of the whole language is consonant with the commercial context. I regard it as inherently improbable that Terry Nation should have thought of transferring the absolute property in the copyright in the text of his proposed work at a time when he was actively involved in the creative development of the Daleks for further television scripts and when he could not in practice create a stream of text (the copyright in which vested in Souvenir) and a stream of scripts (in which he retained the copyright) where both related to a single creation.

Ms Mulcahy resisted this conclusion by reference to authority.

In Chaplin v Frewin [1966] Ch 71 it was agreed that the publishers should during the legal term of the copyright have the exclusive right of producing, publishing and selling a work in volume form in any language throughout the world. The author warranted that he was the owner of the copyright. Lord Denning MR was inclined to the view that “the agreement… was an assignment of copyright; ….. or at any rate it was the grant of an interest in the copyright”. Dankwerts LJ thought the words “ample and effective to constitute an assignment”, though he also thought they might constitute an exclusive licence. Winn LJ unequivocally thought the words “should….. be regarded as, and given the effect of, an assignment of copyright”. There is, of course, a marked similarity between that case and the instant case. But it is not a binding authority relation to a different agreement: I have taken into account clauses which are not recorded as present in the Chaplin agreement, and a very different factual context. Moreover its persuasiveness is weakened by the fact that the actual decision was simply one setting aside an interlocutory injunction (not a final judgment).

In Jonathan Cape Limited v Consolidated Press Ltd [1954] 1WLR 1313 the author agreed to grant the publishers the exclusive right to print and publish an original work in volume form during the legal term of unrestricted copyright in the English language. Dankwerts J held that under the Copyright Act 1911 part of the copyright had been transferred or assigned to the plaintiff company. He said he had been referred to certain authorities in which the matter was to some extent discussed but he did not get much assistance in reaching the proper construction of the agreement before him from those authorities. The case is valuable for that observation: but not for the conclusion which he happened to reach on the form of words before him, the commercial context of which is not apparent from the form of the report. (The matter appears to have arisen for decision because a procedural point was taken that the author had not been joined to the action; so a robust adoption of one limb of the alternative - the other being that there was a licence conferring a right to sue - is unsurprising).

In Messager v BBC [1929] AC 151 the composers and authors of an opera granted the proprietor of the theatre the sole and exclusive right of representing a play. The agreement provided that the copyright in the music of the play should remain the property of the composer. As in the instant case there was also provision that in certain events the right of representation should “revert to and become again the absolute property of [the composer and the authors]”; also there was provision for payment of a percentage of the gross receipts. In the House of Lords the Lord Chancellor said that the language of reverter was to him “inept language in which to describe the mere cessation of a license and...much more apt to describe the reversion to the licensors of rights which had been assigned”. In Loew’s Inc v Littler [1958] Ch 650 a proprietor purchased “the sole rights of production in the English language in Great Britain etc” of Lehar’s “The Merry Widow”, in return for payment of a weekly royalty, with a provision that on default “all rights and interests in the said opera….shall then and there revert to [the German proprietor]”. The Court of Appeal (following Messager) took the language of reverter to suggest that the purchaser had acquired a transmissible right (a reading reinforced by the factual context set out at p.659 of the report).

Plainly the concept of reverter (rather than of termination or cessation) is strongly suggestive of the assignment or a transfer of a property right that does not depend for its existence on the very agreement which contains the reverter provision itself. But I agree with Miss May that there is no general principle that a reverter clause automatically indicates an assignment. In Frisby v BBC [1967] Ch 932 the agreement contained a provision that in certain events “all rights in [the work] should revert to the writer”; notwithstanding this Goff J. held that the agreement was not one designed to vest the copyright in the defendants even pro tanto, but merely to authorise or license them to perform the work. It is also relevant to note that in the 1964 Agreement what is to “revert” is a right “granted” by the Agreement (not a pre-existing right that was assigned or conveyed): so the language is not being used with the precision of a conveyancer and not too great a burden should be put on the technical concept of reverter.

Indicators in an agreement rarely all point one way; and its meaning is to be collected from its terms as a whole. Whilst I recognise the force of the argument based on the language of reverter these authorities do not persuade me to a view different from that which I formed on the language of the agreement as a whole read in the context in which it was entered.

In my judgement JHP is not the owner of the copyright in the text of “The Dalek Book” but under the 1964 Agreement was and is the holder of an exclusive license to publish it in book form. I must now address the March 1965 Agreement and the July 1965 Agreement, which may be conveniently taken together.

As to the factual background to these further agreements I make the following additional findings. First “The Dalek Book” had been published, bearing on its frontispiece the words “Copyright 1964 Terry Nation. All rights reserved”. (This happens to confirm my reading of the 1964 Agreement, but could not itself be used as an aid to the construction of that agreement: though plainly it can be so used in relation to the 1965 Agreements). Second, there had been published (by someone other than Souvenir) a novelisation of the first seven episodes featuring the Daleks with the title “Dr Who in an Exciting Adventure with the Daleks”. Third, there had also been published (certainly as from January 1965) by TV Century 21 a weekly comic strip of Dalek stories written by Terry Nation. Fourth there had been (or were being) broadcast two further Dalek stories, namely “The Dalek Invasion of the Earth” (November 1964) and “The Chase” (May 1965), both written by Terry Nation. Fifth, on 5^th March 1965 and 12^th March 1965 Souvenir entered agreements with the BBC for the production and publication of two new Dalek books “by arrangement with the British Broadcasting Corporation” on the same terms as had been set out in an Agreement dated 18^th June 1964 (which acknowledged that the BBC owned the copyright in the artistic drawings of the Daleks and granted Souvenir the right to print produce and publish drawings based on that design). The clear conclusion to be drawn from these facts is that Terry Nation was actively involved in the creation of substantial further text concerning the Daleks (and had been so involved since the 1964 Agreement), that he was thought to be the owner of the copyright in the text that had been incorporated in “The Dalek Book”, and that the BBC had an independent copyright that it was prepared to licence. Against that background it would, I think, require very clear words to be used if their effect in law was to be that Terry Nation assigned the copyright in the text of the proposed new works to Souvenir.

The language of the March 1965 Agreement is entirely straightforward. By a letter dated the 12^th March 1965 agents for Terry Nation confirmed that they were prepared to accept the same terms for the proposed “Dalek Annual No 2” as those set out in the 1964 Agreement. The language of the July 1965 Agreement is slightly different. It again granted sole and exclusive right to publish the proposed work in book form in the English language throughout the world; contained the same warranty (this time by Terry Nation’s agent) that the proposed work was not a violation of any existing copyright; restricted publication of abridgements, expansions or parts; contained a provision for payment of a royalty (but this time allowed a deduction for the cost to Souvenir of editorial services commissioned by them on behalf of “the author, Terry Nation”). Clause 10 referred to the possibility that Souvenir may “succeed in licensing the rights of the work …..for republication”. There was no provision for reverter.

Nothing in the language of these agreements understood in the commercial context in which they were entered causes me to reach a conclusion different from that which I reached on the 1964 Agreement. Indeed, it seems to me that the case for these Agreements granting only licences and not assigning copyright is even stronger.

I therefore hold that JHP is (by succession) the exclusive licensee of the right to publish the Books in book form. This was indeed the position taken by Paul Fishman in correspondence from 13^th September 2004 until 18^th November 2005, when the claim to be assignee of the copyright was asserted.

Upon this holding the second key issue arises. Now that JHP (as exclusive licensee of the right to publish “The Dalek Book”, “The Dalek World” and “The Dalek Pocketbook”) has commenced proceedings against BBCW in respect of alleged infringements of that right, can BBCW avail itself as a matter of law of any defence which would have been available had the infringement proceedings been brought by the estate of Terry Nation (as owner of the copyright)? The issue assumes that the apparent infringements can be established: and it enquires what right in law BBCW had for acting as it did.

In my judgement if the estate of Terry Nation were to sue BBCW in respect of the infringements which JHP alleges then BBCW could successfully defend those proceedings on the ground that it had acquired a licence by estoppel from the estate. In the course of argument Miss Mulcahy accepted (I consider correctly) that if the facts warranted a finding that the estate of Terry Nation had led BBCW to believe that it would not insist upon its strict legal rights in relation to infringement (knowing and intending that the BBC should act in accordance with that belief) then the Court would hold that the estate was estopped from denying that it had licensed BBCW to commit what would otherwise have been infringing acts. She drew my attention to Laddie (supra) at paragraph 24.8.

I make the following findings of fact. The entire Terry Nation catalogue of rights is managed by Mr Hancock of Roger Hancock Ltd, which has so acted since 1966. Although the arrangements between Terry Nation and Souvenir pre-date Mr Hancock’s involvement, he has always acted on the footing that the copyright in the Books was part of the portfolio under the agency’s management. When Paul Fishman proposed to BBCW in June 2001 that there should be a further exploitation of the Books the matter was taken up by Mr Dunn and Mr Justin Richards (a prospective member of the writing team). They were not clear what it was that Paul Fishman was proposing, but felt that with the existing collectors’ market and an emerging fresh market (already being exploited by the reissue of original programmes on DVD) consideration should be given to reusing the original material (perhaps in facsimile form) and with extra material added. One idea was that they could exploit this opportunity to negotiate a bulk deal with Mr Hancock which would enable them to write and publish a series of Dalek novels (and also perhaps to use other “Dr Who” characters such as the Cybermen). It was with this proposal in view that an approach was made by Mr Dunn to Mr Hancock. The evidence of Mr Dunn was that the approach was made in March 2002. I accept this evidence which is supported by references in contemporaneous e-mails and letters. Mr Hancock had a very informal way of conducting business and it is evident from the contemporaneous documents that he was chased time and again for a formal response – not so much upon the principle but rather on the acceptability of the specific financial terms which had been put. On the 8^th July 2002 there was a meeting between Mr Dunn and Mr Hancock at a restaurant in Camden. The probability is that it was at that meeting that agreement was reached. Both Mr Dunn and Mr Hancock were clear in their evidence that they had done a deal, but were unable to state with precision from recollection exactly when. The finding that the deal was done on the 8^th July is supported by a letter which the BBC Litigation Department wrote to solicitors acting for Mr Fishman on the 11^th July 2002 in which they stated that BBCW had “the full support of Terry Nation’s estate in this publication”, an assertion unlikely to have been made if no agreement had been reached.

As to the agreement itself, I find that whilst BBCW had hoped for more, the actual understanding reached related to the consent of the Terry Nation estate to the use of the Books. I accept the evidence of Mr Dunn that although there had been a desire to obtain consent to a broad range of proposals (including Dalek and other character novels), at the Camden meeting it was only possible to reach agreement on the use of material contained in the Books. First, by the time of the Camden meeting there had been a falling out between Paul Fishman and BBCW, and entitlement to use material found in the Books was a matter of hot controversy because the writing of the Guide was well under way: consent to use any derivative material was vital. Second Mr Hancock is clear in his evidence that he is “absolutely sure there was an agreement”, evidence given with conviction even though it may possibly place him in difficulty with an exclusive licensee of the right to publish. Third, although no contractual documentation was produced immediately, such was produced in September 2002. When produced it was specifically directed to the right “to use any previously published Dalek-related material copyrighted to the estate of Terry Nation” including (but not limited to) “The Dalek Pocketbook”.

I am satisfied that from 8^th July 2002 BBCW (to the knowledge of Mr Hancock) acted in the belief that it had the permission of the Terry Nation estate to use (if necessary) material derived from text in which the Nation estate held the copyright, and it so acted in paying writers to prepare that text and then in publishing and marketing the Guide.

On the balance of probabilities I am not satisfied that from the 8^th July 2002 there existed a legally enforceable contract entitling them so to do. In the past (as Mr Hancock explained) arrangements between the BBC and the Nation estate were very informal and would generally be conducted on the basis of “gentlemen’s agreements”. The controversy attending the preparation of the Guide might have put this agreement into slightly different category; I have therefore scrutinised the evidence to see whether on the 8^th July 2000 the parties may be taken to have entered into an oral agreement intended to be immediately binding and later to be supplanted by an agreement in writing: or whether they agreed in principle, intending to be formally bound by the entry of a written agreement setting out detailed terms yet to be negotiated (but in the meantime content to act on their agreement in principle). No formal agreement was produced until September 2002 and it was then proffered on the basis that it contained terms which had not been the subject of negotiation. I do not consider that towards the end of a four-hour lunch in a Camden brasserie Mr Hancock would have been inclined to grapple with the degree of detail necessary for an agreement sufficiently certain to be legally binding; I think Mr Dunn would have been content with a clear and firm understanding upon which both parties, with their long history of dealings, knew he would act pending the legal department drawing up an appropriate contract. When it was drawn up Mr Hancock declined to sign it for fear that it would “muddy the waters” in the face of complaints from Paul Fishman: but he has never at any time said that BBCW published the Guide without the approval of the Nation estate.

In the result it seems to me that the BBC has a complete defence to the claim in this action under s.101(3) of the CDPA 1988, even if it be found that they have infringed rights of which JHP is (by succession) the exclusive licensee. On this primary ground I dismiss the claim.

I should however consider the alternative claim of copying, in case I am wrong upon my primary ground. In summary the conclusions that I have reached on the facts are:-

in the initial stages of the preparation of the Guide it was anticipated that arrangements would be made whereby the BBCW writing team headed by Justin Richards would have freedom to use without restraint any of the materials in the Books;

the creative process was therefore undertaken taken without any particular sensitivity to the issue of copying;

part of the material that was available to the writing team was the text of and information contained in the Books, but there was also a very considerable body of Dalek lore deriving from TV and radio scripts, novels, plays and comic strips written or contributed to by Terry Nation or authorised by him subsequent to the publication of the Books;

Part of the material contained in each of the Books themselves could not be regarded as “original” because it derived from the scripts of the “Dr Who” episodes featuring the Daleks that had been broadcast in 1963 and 1964, and therefore was not the product of the skill and effort expended by Terry Nation as author of that Book;

in June 2002 there was a falling out between Paul Fishman and the BBCW production team;

the consequence of this was that the writing team was instructed to remove “ Fishman derived material” and substitute for it freshly written material;

the writing team made a serious attempt to comply with this instruction which for the first time involved them in a consideration of the precise source of the text included in the Guide;

because of the pressure under which they were having to produce the fresh text and because of the free use hitherto made of the Books there was a real risk of copying in fact taking place;

despite the serious and sustained attempt at independent creation there was some copying;

the copying was not (either in terms of quantity or in terms of quality i.e significance of the text copied) of a substantial part of any of the Books (for in applying that test each must be regarded as an individual work).

The principles which have directed my consideration of the evidence on this issue are these:-

the legal burden lies upon JHP to establish copying;

given that the BBCW writing team had undoubted access to each of the Books, if there is a sufficient degree of similarity between the text of any of those Books and the text of the Guide then an inference of copying may be drawn;

an evidential burden is then thrust upon the BBC to demonstrate independent creation (or derivation from a common source);

a sufficient degree of similarity may be established not simply by direct copying but also by “altered copying” (and in the instant case Ms Mulcahy submitted that significant parts of the Guide constituted “camouflage and gloss” and asked me to look behind that and see the text of the original Books);

if copying is established that copying will only amount to an infringement of copyright in the relevant Book if what has been taken comprises a substantial part of that Book (when assessed in relation to that Book as a whole) for the purposes of section 16(3) of CDPA 1988 (see Designers Guild v Russell Williams Textiles Ltd [2001] FSR 113 at 125 per Lord Millett at paras 41-43);

that is always a question of fact and degree and involves an assessment of the importance (in terms of quantity and/or quality) of the copied part to the recognition and appreciation of the copyright work because “what is protected is the skill and labour devoted to making the “artistic work” itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the “artistic work” ….” (per Buckley LJ in Catnic Components (1982) RPC 183 at 222 cited in Johnstone Safety v Cook [1990] FSR 161 at 176-178);

although Ms Mulcahy referred me to the practical test that “what was worth copying was prima facie worth protecting”, so that I should start with a bias towards anything that was “copied” being “substantial”, I have not found that test useful. I think it tends to confuse questions of “copying” with questions of “substantiality”, and to proceed upon the premise that if the text was “worth” copying for the Guide it was prima facie a substantial part of the relevant Book (which seems to me to focus on the importance of the text to the Guide rather than on the importance of the text to the whole of the relevant Book);

a part of the relevant Book which by itself has no originality will not normally be a substantial part of the copyright, and copying it into the Guide will not make it so (see Warwick Films v Eisinger [1969] 1 Ch 508 at 533g-534b).

I heard evidence from three members of the BBCW writing team, all full- or part-time freelance writers engaged for this project: Justin Richards, Stephen Cole and Michael Tucker. Each of them was straightforward and honest, and although I was alert to the possibility that each might be zealous to preserve his integrity as a creative writer (and accordingly ready to disown an existing primary source for the work produced) I did not in fact sense that this coloured their evidence in any way. Whilst each claimed (with minor exceptions) to be author of the text he produced, each from the outset acknowledged that he was not writing upon a blank slate: as Mr Tucker put it “essentially we were buying into an established universe that had already been created”.

I have already referred to Paul Fishman's approach to BBCW with his proposal for “a revised and compiled publication”. To place this proposal in context BBCW was at the time of that approach publishing 22 paperback “Dr Who” novels a year (including prior to 2000 at least two specific Dalek novels). As soon as Paul Fishman contacted the BBCW it contacted its Creative Consultant, Justin Richards. He is an acknowledged “Dr Who” expert - then the author of some 11 “Dr Who” novels and one “Dr Who” reference book, the author of very many short stories and articles, the editor of many “Dr Who” publications, and the writer of at least one play. He was unclear what was proposed by Paul Fishman, but thought the idea worth exploring. He rapidly came back with a proposal for a large format full-colour book celebrating 40 years of the Daleks, reprinting existing comic-strips and offering some new material. He proposed including some feature articles which were to be a mixture of reprinted material from the Books and new material, and he identified 33 pages of material in “The Dalek Book”, “The Dalek World” and “The Dalek Pocketbook” which he intended to include. This does not evidence an intention from the very first to misappropriate copyrighted material: Justin Richards understood that this material was to be made available by Mr Fishman by agreement.

By October 2001 Justin Richards was also developing an alternative proposal called “The Dalek Handbook”. This was to be a paperback novelty book that detailed the narrative history of the Daleks, derived as to two thirds from previous Dalek publications of the 1960’s, augmented by new text-based materials and illustrations. He again identified feature articles from “The Dalek Book”, “The Dalek World” and “The Dalek Pocketbook” which could potentially be included by way of reprint; but he also proposed reprinting other stories from books to which JHP could have no claim, and to prepare fresh material based on television series and on TV 21 comic strips, and recorded interviews with Terry Nation.

At this time Mr Fishman was in contact with Mr Dunn, discussing in general terms the development of the proposal, but in particular in connection with encouraging “a serious effort ….to explore other potential Dalek related merchandise” in preparation for the 2003 anniversary. By December 2001 the proposal for the handbook had evolved into a proposal for “The Ultimate Dalek Survival Guide” predicated on the possibility that one will meet and have to deal with a Dalek one day. The proposal does not on its face suggest a straight reprinting of anything previously published in the Books, but it is evident from the proposed contents that some of the same subject-matter would be covered (such as the anatomy of the Daleks, the Dalek machines, Dalek belief systems and history of the planet Skaro). It is interesting to note that in relation to source material it was suggested that “researchers will trawl the televised Dalek stories for hints (which we can then embellish) on Dalek functioning”. I am again clear that there was no intention in promoting this plan to misappropriate any rights vested in Paul Fishman or JHP

In preparation for his development of the proposals and his supervision of the writing team Justin Richards viewed the first broadcast series featuring the Daleks and made copious notes of every minute detail and reference. He took the view that these seven 25-minute episodes established the fundamental features of and key background to the Daleks, which Terry Nation thereafter developed in terms of narrative. I accept this evidence (both as to his genuinely held view and as to its accuracy), subject to the qualification that in the development of the narrative further detail about the Daleks was added (as the witness acknowledged). Mr Richards thereafter prepared a briefing document to be sent to the “prospective authorial helpers”, advising that the work was intended to be humorous and noting that it was the “intention not to contradict established Dalek continuity”. The brief went on to state:-

Understandably the passage I have just quoted was used to suggest that Mr Richards was prepared to undertake wholesale copying: his response was that existing published or broadcast material was “fair game” for the purpose of verifying cross-references (and that is indeed the context in which it appears). I do not consider that the brief encouraged wholesale copying by the proposed authors. Paul Fishman gave evidence to the effect that an early meeting with Mr Richards, Justin Richards admitted having already copied part of “The Dalek Pocketbook” without permission and that Paul Fishman was struck by the fact that he apparently thought that this was fine. In cross- examination Mr Richards denied both the admission and ever having done such a thing, pointing out that at that stage he had not written a Dalek book. Although it was elicited in cross-examination that Mr Richards had by that time written a Dalek audio play with a Shakespearean theme, his evidence on copying was unshaken and I accept it. The evidence does not establish that at the time of the briefing document Mr Richards intended straightforwardly to copy any of the Books. The only proposals were to republish parts of the text with permission, to use the artwork with permission, and to treat the Books (along with all other existing published or broadcast material) as a verification or review source in a new work in bringing together all available information about the Daleks together with advice about how to deal with them. In the execution of this proposal there was clearly the potential for infringing use: but it was not the intention.

Following circulation of the briefing document the writing team was assembled and the work divided up between them, with the objective of producing a working draft of the new work by the end of April 2002. Paul Fishman was regularly in touch with Mr Dunn at this stage, contributing ideas and commenting on proposals. I am satisfied that in fact Paul Fishman undertook some of the writing (e.g the material annexed to the e-mail dated 31^st May 2002) – and indeed that was part of the claim advanced by JHP in these proceedings; the actual writing team would not know this, since the material would reach them via Mr Dunn. At this stage Justin Richards was told that a deal was to be done between BBCW, Paul Fishman and Mr Hancock to reuse material that was copyright either to Paul Fishman/JHP (which Justin Richards understood to be the artwork) or to the Terry Nation estate (which Justin Richards understood to be the text) in the Books. Indeed at about this time Paul Fishman provided a quantity of photocopied material derived from the Books (although in fact members of the writing team would already have held copies as part of their “Dr Who” collections). This led to the straight incorporation of “The Dalekreed”, “Know Your Enemy” and “Strange to tell” from “The Dalek World”; and of “The Dalek Dictionary” and “The Dalek War Machines” and a modified versions of “The Anatomy of a Dalek”, “The Miscellaneous Dalek Devices” and “Frequently Asked Questions” from “The Pocketbook”. In a working file these were gathered together under the heading “Fishman Derivatives”, in the same way that contributions from other authors were drawn together under their individual headings. From this working file the various sections were cut and pasted into the draft work. The other contributors were not told of their freedom directly to use material from the Books, and they went about the business of creation in their own way.

One of the authors was Steve Cole. He had received the briefing note. He was not at any time given specific instructions to avoid using the Books in any way. He very honestly said that he could not remember in the course of his writing specifically sitting down and watching the TV series including the first (but said that he had been watching the programmes on video or DVD from the age of four and that they were “terribly well-known”); that he had owned a copy of “The Pocketbook” since he was about 12; and that he knew that “The Pocketbook” extrapolated on the original TV concepts, and that in his writing he was keen to build upon this. Although he said that information had been disseminated in so many ways that it was difficult to trace specific terms and phrases back to a primary source in “The Pocketbook”, I consider that where I can identify a close similarity of language between the text prepared by Mr Cole and “The Pocket Book” I should cast upon Mr Cole the burden of adducing evidence of independent creation sufficient to discharge the inference of copying the would otherwise arise. To his great credit Mr Cole did not insist upon absolutely independent creation for every word of the text that he had written. He has always acknowledged that whilst he wrote from his own general invention he may well have referenced “The Pocketbook” to ensure that he did not contradict established Dalek lore and in the process of so doing copied the text relating to details of the Daleks and their world referred to in the Book but not apparent from the TV series. I consider that part of the material he wrote for the Guide about “the Rangerscope” (the three sentences beginning “operated from the main Dalek City….” and concluding “…visualise precise areas on other planets” on page 118 of the Guide), “the Vibrascope” (one sentence beginning “This chilling device….” on page 119 of the Guide) and “the Perceptor” (the two sentences beginning “Working in a similar fashion to radar ..” to “..the faster it beeped” on page 116) was copied. I do not consider that the material he wrote about “The Time Space Visualizer” was copied: I am satisfied that the language and detail on that topic is derived from a memorably bad “Dr Who” series called “The Chase”.

Another of the writing team was Mike Tucker. He too was entirely open and honest as to the creative process he undertook. Once assigned his task he got out all the literature (including the Books) and all the video material and noted down the references relevant to his assignment, and his notes formed the basis of what he wrote up and delivered. He denied consciously copying but readily accepted that there may have been words or phrases or even sentences carried across from what he had read to what he produced. I again consider that close similarity of language raises the inference of (unconscious) copying, and that the evidence adduced by Mr Tucker does not displace that inference or entitle me on the balance of probabilities to find for independent creation. I consider that on page 99 of the Guide he copied about half a dozen phrases from “The Dalek Book” or from “The Dalek Pocketbook”. Without unduly lengthening this judgement by identifying each and every one and tracing its particular source I take as examples:-

“plant matter is ground into a fine powder and dispersed throughout the city by means of air ducts” is a modified copy of “plants were……strained into a whirling pulveriser….the plant dust was then turned into nutritious gases and circulated through the city” on page 49 of “The Dalek Book”;

“On the same level…. is the Master Control room, the nerve centre of the Dalek Empire” is a modified copy of “the Master Control room - nerve centre of the city” on page 50 of The Dalek Book;

“Here the city’s vital systems are checked and rechecked” is a modified copy of “Here every single activity of the city is recorded and checked” on page 24 of “The Pocket Book”.

As well as being the team coordinator Justin Richards was the main writer. The copying undertaken by Mr Cole and Mr Tucker which I have identified cannot be regarded as the copying of a substantial part either of “The Dalek Book” or of “The Dalek Pocketbook” having regard to its quantity or to its significance or quality. To succeed JHP must therefore establish on the balance of probabilities that Justin Richards copied material from the Books, and in addition that such material (when taken together with what was copied by Mr Cole and Mr Tucker) constitutes a substantial part of one or more of the Books. With that in mind I resume the narrative.

Paul Fishman was unhappy at the intended humorous angle in the emerging draft, believing that it did not accord with what he understood to be Terry Nation’s views. His own contributions reflected a more serious tone. Furthermore, Paul Fishman held certain views of his own about the “back history” of the Daleks i.e. what had already happened before they first appeared in the story. On the 13^th May 2002 he was sent a copy of the entire proposed book with annotations, accompanied by an e-mail from Mr Dunn pointing out that “accepted Dalek folklore is not something we can ignore: we can and have introduced new theories but we must follow a recognisable path as well”. It incorporated text that Paul Fishman had written, and text adapted from material that he had provided. It omitted substantial material that he had written, in particular relating to an attempt by him to tie in “The Dalek Chronicles” with other mythology and folklore (for example relating to stone circles). In relation to this work Justin Richards proposed to Mr Dunn that at the front there should be a copyright notice specifying the authors of the original text “together with a note that some material is reprinted from or adapted from the Fishman stuff”.

For reasons I need not explore this difference of view was productive of a rift between BBCW and Paul Fishman. On 7^th June 2002 Mr Dunn sent to Paul Fishman an e-mail declining a meeting and saying:-

BBCW immediately embarked on the removal of all JHP material. Justin Richards offered to provide a list of “the Fishman derived stuff”. He appreciated that if such text was removed there would remain artwork unaccompanied by text. He therefore proposed:-

There is no doubt that BBCW removed all of the text that had actually been provided by Paul Fishman himself. The issues are: what remains of the material originally derived from the Books which BBCW had thought it was free to incorporate but which following the breach with Paul Fishman would have to be removed if JHP’s claimed copyright was not be infringed? To what extent did Justin Richards, in the creation of replacement material, copy the Books?

The filleting of the existing text was undertaken by Ms Warman (an editorial assistant at BBCW and the assistant to Mr Dunn) at great speed. By 11^th June 2002 she had created a new “Fishmanless file”. It is quite clear that the view in BBCW and of Justin Richards was that “anything that could be linked back to [Mr Fishman] as a primary source in legal terms had to be excised” (a description of the exercise given in an e-mail of the 11^th of July 2002). So, for example, “The Dalekreed” came out. What is not clear is that there was a single shared understanding within BBCW as to what could be so “linked back” as a “primary source”. Mr Dunn appears possibly to have worked on the basis that material originally incorporated from the Books might remain because the copyright in that belonged to Terry Nation and he was seeking the permission of Mr Hancock on behalf of the Nation estate (though at other times his evidence was that all of the original text from the Books was taken out). Ms Warman’s exact understanding was not apparent from her written evidence and she did not give oral testimony. But a textual analysis shows that she removed some 37% of the original text to create the “Fishmanless file” which far exceeded what Mr Fishman had actually written. Mr Richards gave evidence (which I accept) that after this original “filleting” Ms Warman went through the entire text again to remove or change anything she thought was co-incidentally similar. But certainly Justin Richards understood that the Books could not feature in the Guide.

Justin Richards was sent “the Fishmanless file” and embarked on the creation of material to fill the gaps – the creation of “a new version”, or a “new version based on TV evidence” or one that “drop[ped] Fishman derived material and add[ed] new material”. In relation to one section he proposed that he “could use this with tweaks to make it less obviously Fishman-derived”. In evidence he expressed the view (which I consider accurate) that it would not be fair to say that he felt that all the good stuff had gone and that he simply set about putting it back. In my view he identified gaps essential to be filled and, having set himself the task, he set about discharging it. He produced what he considered to be “a re-worked i.e. completely different Dalek anatomy”. The form and principal features of the Dalek were of course established in the various TV series (especially the first): the parts to be described were determined by the markings on the artwork (which is not in this action said to belong to JHP). There is only a limited number of ways of describing those features. So any similarity might well arise not from copying Paul Fishman’s text, but from his text and that of Mr Richards each independently seeking to describe the same thing (which was not the original artistic work of either of them). One example might be that in the Guide it is explained that the Daleks derive their energy from static electricity. On page 11 of “The Dalek Pocketbook” it is explained that the Daleks had “obviously harnessed static electricity”. But in episode 3 of the first TV series there is a whole passage of dialogue leading up to the Doctor’s opinion “I believe the Daleks have discovered a way to exploit static electricity”. So the text in the Guide ultimately derives from the TV series. I accept Mr Richards’ evidence that he did not set about describing the anatomy of a Dalek by “tweaking” the wording from an open copy of the Books.

This evidence is corroborated by the careful and copious notes on the TV programmes which Justin Richards had prepared at the outset. I also regard as inherently improbable the possibility that having been told that he must not “cross into the path of the dangerous and confused JHP rhinoceros” he should proceed to see how close he could get in a text that might be seen by Paul Fishman (and indeed was offered for inspection to him) before the publication. But, probably most tellingly, Justin Richards’ evidence that he did not describe the anatomy of a Dalek by tweaking the wording from an open copy of the Books is confirmed by the fact that in one in respect (the location of the main environment chamber) the location in the Guide accords with the location given to it in the Terry Nation “Dalek Special” and not the location ascribed in the Books.

The same is true of everything about the world of the Daleks mentioned the initial TV episodes (in relation to “The Dalek Book”) or the subsequent TV episodes, the novel and the TV21 comic strips (and which also features in “The Dalek Pocketbook”). Similarity does not raise the inference of copying from that work: and Justin Richard gave clear evidence (which I accept) that what was in his head was what was derived from the television programmes, and that he knew that he had to be faithful to that material, supplemented by what was in the TV21 comics, a Terry Nation “Dalek Special”, the 1979 Dalek Annual, and similar material (to which he thought he may have -but did not assert that he had - specifically referred). I do not set out every passage of the evidence which has led to this conclusion (for it occupied much time); some examples will suffice. First, in the narrative about Skaro - planet of the Daleks – the Thals feature. The “Guide” describes them as “disgustingly mutated”; so does “The Dalek Pocketbook”. But the description is actually taken from episode two of the first TV series broadcast on the 28^th of December 1963. Second, another feature of Skaro is “The Petrified Jungle”. The Guide says that it is “white and ashen”, “veiled by a heavy mist” and apparently the result of heat that was “obviously incredible”. “The Dalek Pocketbook” says that it is “white and ashen” and the product of “indescribable heat”. But episode one of the first TV series contains dialogue which describes “the petrified jungle” as “white and ashen”, formed by heat that was “indescribable” and with a “funny mist”. Third, the Guide says that the Thals were forced to rely on “a sporadic rainfall that only occurred about every four or five years”: The Dalek Pocketbook says that the Thals seem to rely on “a great rainfall that only happens about every four or five years”. But in episode three of the first TV series there is dialogue which explains that the Thals “rely on a great rainfall that only happens about every four of five years”. In each of these cases it is demonstrated that the relevant passage in the Books is perhaps not itself an original work; and that in any event the apparent similarity does not justify the inference of copying and that Justin Richards’ account of his creation of the relevant text is entirely credible. Indeed it may be noted that in relation to “The Petrified Jungle” the Richards’ text refers to a “mist”, which is a feature present in the TV material but absent from “The Dalek Pocketbook” (see paragraph 45 above for a parallel situation in relation to the Dalek’s anatomy).

I have analysed the text prepared by Mr Richards, and compared it with that eventually published. That analysis leads me to the view that even after Mr Richards had prepared his text someone at the BBC revised it further to exclude from it anything that might be thought to have been copied: and indeed Mr Richards gave evidence that this was done (see above). Thus in part of Mr Richards “Anatomy” he had referred to an energy source focused into an energy beam, and said “The effect is like a bolt of lightning”. The quoted sentence was removed from the published version. That same draft had proposed that the sucker cup on the Daleks arm “produces a tremendously powerful vacuum”. In the published version the quoted sentence said that the arm “produced an intensely strong vacuum”. In each case the quoted sentence bears a marked similarity to something in the Books. Ms Mulcahy invited me to treat this as evidence of attempt to disguise plain copying by Justin Richards. The alternative (more in keeping with my estimation of Justin Richards as a witness) is that even after he had done his best to avoid copying the BBC was anxious to avoid the suggestion that he had.

Had it been material to my disposal of the case I would thus not have held that JHP had established on the balance of probabilities that Justin Richards copied from the Books. I believe Mr Richards as to the manner in which he created the material he inserted; and if there are similarities, they arise from the fact that both texts are referring to something that existed as a published artistic concept outside either of them.

Given that I am dealing with an alternative disposition of the case only relevant in the event that my primary ground is wrong, and given that I am able to determine that alternative disposition by concluding that save in insubstantial respects there was no copying, I would very briefly record that if (contrary to my view) Mr Richards did copy then, even taking his copying at its most extensive, I would not have found that (when taken together with the copying of Mr Cole and of Mr Tucker and any failure to remove on the part of Ms Warman) the Guide reproduced a substantial part of any of the Books viewed individually. In each case the quantity is small. The significance is relatively minor. Furthermore, amongst the items on this footing “copied” the most significant are not in truth text on which Terry Nation expended significant skill and effort as the author of that particular work, but copies or repetitions of text which Terry Nation had earlier produced in the course of other work.

Again, I will support this finding by illustrative examples, rather than a complete schedule itemising each of the extracts from the three books.

Ms Warman left in the Guide a reference to Terry Nation first discovering and translating the “The Dalek Chronicles”. “The Dalek Pocketbook” stated that that work was largely based on the “… “The Dalek Chronicles” which I [Terry Nation] discovered and translated…”. In the original draft the source of the reference in the Guide was explicitly acknowledged but somewhere in the editing process the attribution was removed. Ms Mulcahy says the importance of this reference cannot be overstated. I agree that it is the most significant instance of “copying”. But that one sentence (important as the idea it embodies is) does not constitute a substantial part of “The Dalek Pocketbook”.

Ms Warman left in the Guide a reference to Zolfian commissioning his chief scientist Yarveling to develop a powerful war machine. In the course of evidence it became apparent that rather than simply being “lifted” from an original source (“The Glossary” in “The Dalek Pocketbook”) the text had in fact been written by Mr Richards. Even if he had as a matter of fact plundered The Glossary for the names and events described in the text (which I have held he did not) it would not have amounted to copying a substantial part of The Glossary because The Glossary itself simply recorded what Terry Nation had already written on 30^th January 1965 in a TV 21 comic strip (about the Daleks perfecting their terrible weapon until war minister Zolfian was satisfied and declared “This is a mighty invention Yarvelling…..”).

The same original source (TV21) provides the first appearance of “Dalekenium” (the metal used for the Dalek casing) further referred to on p. 11 of the “The Dalek Pocketbook”; of the Dalek Zeg’s ability to absorb a chemical metal mixture produced by an explosion (ibid) ; and of the neutron bomb explosion on Skaro, Flidor Gold, and Arkellis Flower Sap (ibid p.14).

Looking at the whole of “The Dalek Book” (some 93 pages in length) the allegations of copying relate to parts of two pages, which concern the The Dalek City and which repeat (in the context of another narrative) parts of the dialogue from the first broadcast Dalek story ;

In the Guide it is said that “the area immediately behind the Dalek is the main blind spot”. On page 54 of “The Dalek Book” it is said “The main blind spot is immediately behind the Dalek” (and this is repeated in “The Dalek Pocketbook”). This text is no more than a simple and straightforward expression of what is evident in the TV series and a natural consequence of the anatomy of a Dalek (and in fact exactly the same text has been in circulation without apparent objection from JHP since the publication of the “The Dalek 1979 Annual”). Even if in fact copied, and copied from “The Dalek Book” and not from the 1979 Annual, this cannot be the copying of a significant part of the “The Dalek Book”

It is material of this character that has lead me to the conclusion that (aid it been material) Mr Fishman would not have persuaded me on the balance of probabilities that the material taken was a substantial part of any of the works.

It follows from my conclusions on copying that the issue of “flagrancy” does not arise under section 97(2) of the Act. But for completeness I would add that had I found there to have been substantial copying I would not have considered it is deliberate or intentional or calculated .

At the conclusion of this survey of an alternative disposition of the case I return my principal ground for dismissing the claim. I hold that the Agreements were exclusive licences to publish (not assignments of the copyright in the text); and I find that Mr Hancock agreed to the use of the text in circumstances which afford BBCW a defence to the claim for infringement.