Tumber v Independent Television News Ltd (ITN) & Anor

In January of this year the claimant, Mr. Tumber, wrote a love poem. It contains about 2,400 words and it is 244 lines in length. It is said to be the longest love poem ever written. The first defendant is a well known producer of TV news, which I will refer to as "ITN". ITN also creates news content for an ITV website "ITV.com". The second defendant ("ITV") is the parent company of the regional ITV companies. Earlier today I gave permission to join one of the subsidiaries of ITV as a third defendant, ITV Consumer Limited.

Mr. Tumber's poem gained some publicity and came to the notice of ITN. On 24th May 2017 Amanda Nunn, an employee of ITN, phoned Mr. Tumber to ask about the possibility of an interview and about a piece that might be written about the poem on the ITV website. She asked for a copy of the poem, which Mr. Tumber provided. An article about the poem duly appeared on the website. Later at 12.30pm on 24th May 2017, a copy of the poem appeared on the website. On 25th May Mr. Tumber emailed ITN complaining about the publication of his poem. It was removed from website at 13.04 on 25th May. So it was on the website for just over 24 hours.

During that period there were 137 unique users who looked at the poem on the ITV website, including Mr. Tumber. It appears that two other websites, not controlled by the defendants, found the poem on ITV.com and put a link to it on their own websites. A third website copied and published the poem. The defendants deny either authorising or having been aware of what these three other websites had done, referring to them as “content crawlers”. No figures are available as to how many further unrecorded hits were generated.

On 26th June 2017 Mr. Tumber brought the present action against the defendants for infringement of the copyright in his poem. He claims an injunction and damages. In the pleaded defence the defendants admit the subsistence of copyright in the poem and admit that Mr. Tumber owns the copyright. The defendants deny infringement on a number of grounds. First, they say Mr. Tumber granted an implied licence to the defendants to copy and publish the poem. Second, they say Mr. Tumber is estopped from alleging infringement of copyright. Third, they say the publication of the work constituted fair dealing within the meaning of section 30(2) of the Copyright, Designs and Patents Act 1988. Fourth, they say any infringement by the third party websites was not authorised by the defendants. Finally, and fifthly, they say the claim for infringement of copyright is an abuse of possess. Here the defendants rely on Jameel (Yousef) v Dow Jones & Co Inc [2005] QB 946.

Today the proceedings come before me in a case management conference and, in addition, there are several applications made by three application notices. The first of these, is the application by the claimant to strike out the defendant's defence of implied licence or summary judgment pursuant to CPR Part 24. I have to determine whether the defendants have no prospect of successfully defending the claim based on an implied licence and whether there is no other compelling reason why the case should be disposed of at trial.

It was not argued by Mr. Muir Wood, who appears for Mr. Tumber, that there was any such compelling reason, so I am looking only at the first limb of Part 24.2.

The pleading of the implied licence appears primarily in paragraph 14.4 of the defence which says this:

"14.4

The claimant granted an implied licence to ITN to publish the Work in connection with any news broadcast or article about the Claimant by sending the Work to ITN and thereby impliedly authorising ITN to publish the Work. The Claimant granted an implied licence by sending the Work without qualification to Ms. Nunn when he well knew (a) Ms. Nunn was a journalist employed by ITN; (b) Ms. Nunn had requested a copy of the poem for and on behalf of ITN; and (c) ITN intended to write an article and/or create a news broadcast about the Claimant and the Work.”

There is also paragraph 14.6 which Ms. Michalos relied on as part of the defence of implied licence. It is not self-evident from the pleading, but I accept that para.14.6 is intended to be part of that defence.

Ms. Michalos who appeared for the defendants, also relied on the phone conversation that took place between Ms. Nunn and Mr. Tumber to which I referred earlier. This too is not self-evidently part of the pleaded case on implied licence but to the extent that it is relevant, what the defendants rely on is set out in paragraph 14.2. The relevant part is as follows:

"Ms. Nunn made no representation that the reason for her request was solely to assist in preparation for the Interview and/or the Article. Ms. Nunn would have merely asked the Claimant to send a copy of the Work which the Claimant agreed to do."

It is well established and I do not think it was disputed today, that if a short point of law or construction arises and the court has all the evidence necessary for a proper determination of the point, the court may deal with it in an application for summary judgment.

Mr. Muir Wood referred me to Redwood Music Ltd v. Chappell [1982] RPC 109 and to two other cases, namely Soulier v. Premier Ministre (C-301/15) [2017] 2 CMLR 9 and Marussia Communications Ireland Ltd v. Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch). Mr. Muir Wood submitted that all the evidence necessary for deciding the point is available before me today. The trial judge would not be in any better position to decide the question of implied licence. He also submitted that the essence of the defence is that an implied licence was granted by silence and, on the authorities I have referred to, this is not a manner in which Mr. Tumber could, in law, have granted an implied licence as alleged.

Ms. Michalos, characterised the defence as consisting of two limbs. The first, she said, was based on the exchanges between ITN and Mr. Tumber which, at least arguably, provided a defence implied licence. Those exchanges were in the telephone conversation to which I have referred. However in that regard nothing has been pleaded by the defendants which seems to raise even an arguable case of an implied licence being granted by Mr. Tumber.

Ms. Michalos said that it would be necessary to cross-examine the parties on the words spoken in the telephone conversation to explore that further. However, had there been anything significant said by Mr. Tumber, that would have been pleaded. Moreover, Mr. Tumber has put in evidence about what was said in that telephone conversation. No evidence, I am told, has been put in by the defendants in response to that part of Mr. Tumber's evidence suggesting that he said anything which now could be construed as an implied licence. I reject this first limb of the implied licence argument. It seems to me that there is no prospect of successfully defending the claim on that basis.

The second limb is an implied licence resulting from custom and practice. I was taken to a number of authorities by Ms. Michalos, namely Hall-Brown v Iliffe & Sons [1928-35] MCC 88. Also to De Garis v Neville Jeffres PidlerPty Limited (1990) 18 IPR 292 and I was referred to a passage at pages 302 to 303. These were cases concerning implied licences which were inferred by reference to custom and practice. Included were implied terms as to payment for the copyright work in question. It seems to me that very little can be inferred from the particular facts of those cases.

Ms. Michalos also referred me to a passage from Copinger & Skone James on Copyright (16th ed at 5-232) in which it is pointed out that letters to newspapers will give rise to an implied licence, granted by the sender to the newspaper, to publish the letter. No doubt that is the case. But it does not follow that the same will apply to a poem.

Ms. Michalos said, that in law the question of whether there was an implied licence in relation to a poem depends on its length. There is a sliding scale and at a certain point the work in question will be long enough for there to be no implied licence. She argued that that was not the case here. Alternatively that is something that would have to be explored at trial and evidence would have to be adduced to establish the tipping point between a work submitted to a newspaper too long to generate an implied licence and one which did.

Although I have serious doubts about whether an implied licence can be inferred by custom and practice in the present case, I do not believe that I am in a position to rule it out altogether. For that reason I will not strike out the implied licence defence arising from custom and practice.

I am not at all convinced that the defence of estoppel is not strikable. But in any event it certainly does not satisfy the cost/benefit test. As presented, it stands or falls with the implied licence defence. To waste time with further legal argument on estoppel seems to me not in accordance with the cost/benefit test. The estoppel argument will, for that reason, will go no further.

There is also an application by the claimant to strike out the defence of fair dealing. The defendants rely on section 30(2) of the 1988 Act which is in the following terms:

"Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that (subject to subsection (3)) it is accompanied by a sufficient acknowledgement."

I do not think that it is in dispute that there was a sufficient acknowledgment within the meaning of section 178 of the Act.

Mr. Muir Wood directs my attention to the judgment of Arnold J in England and Wales Cricket Board Ltd v. Tixdaq Ltd [2016] EWHC 575 (Ch) and in particular the passage at paragraph 83:

"In Ashdown Lord Phillips cited with approval at [70] the following summary of the law in Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs (3rd edition, 2000) at 20.16:

'It is impossible to lay down any hard-and-fast definition of what is fair dealing, for it is a matter of fact, degree and impression. However, by far the most important factor is whether the alleged fair dealing is in fact commercially competing with the proprietor's exploitation of the copyright work, a substitute for the probable purchase of authorised copies, and the like. If it is, the fair dealing defence will almost certainly fail. If it is not and there is a moderate taking and there are no special adverse factors, the defence is likely to succeed, especially if the defendant's additional purpose is to right a wrong, to ventilate an honest grievance, to engage in political controversy, and so on. The second most important factor is whether the work has already been published or otherwise exposed to the public. If it has not, and especially if the material has been obtained by a breach of confidence or other mean or underhand dealing, the courts will be reluctant to say this is fair. However this is by no means conclusive, for sometimes it is necessary for the purposes of legitimate public controversy to make use of 'leaked' information. The third most important factor is the amount and importance of the work that has been taken. For, although it is permissible to take a substantial part of the work (if not, there could be no question of infringement in the first place), in some circumstances the taking of an excessive amount, or the taking of even a small amount if on a regular basis, would negative fair dealing."

There Arnold J approved the three criteria set out in Laddie, Prescott & Vitoria, namely, first, said to be the most important, whether the alleged fair dealing is in fact commercially competing with the proprietor's exploitation of the copyright work as a substitute for the probable purchase of authorised copies and the like. The second most important factor is said to be whether the work has already been published or otherwise exposed to the public. The third most important factor is said to be the amount and importance of the work that has been taken.

I asked Ms. Michalos whether there were any relevant facts which could emerge at trial and which are not already known to me. She pointed to the question whether sales of the poem increased or decreased after the poem was put on the ITN website for 24 hours. She said one likely possibility is that sales increased due to the publicity on the website, in which case it could not be said that ITN had been competing with Mr. Tumber in the manner contemplated in the passage from Laddie, Prescott & Vitoria which I have just quoted.

It seems to me that this is at least arguably a point which the trial judge would want to take into account. I bear in mind the fact that Arnold J approved the proposition that the presence or absence of commercial competition is by far the most important factor in assessing whether alleged fair dealing has taken place.

For that reason I will not strike out that defence.

There is an application to allocate this case to the small claims track. Generally speaking when this arises the most important matter is whether the claimant is likely to establish a claim that rises above the figure of £10,000, which is the cap in small claims.

I know that Mr. Tumber sells copies of his poems on Amazon at £1.62 per copy. Unfortunately, Mr. Tumber has chosen not to provide figures for how many copies he has sold already and how those sales have varied over time. I asked Mr. Muir Wood for the figures, but he said he has no instructions to give them.

My strong suspicion is that the sum that Mr. Tumber is likely to gain by way of damages is going to fall well below the £10,000 limit. I bear in mind that there is a claim of flagrancy and additional damages under section 97(2) of the 1988 Act and there is also a claim for further damages under Article 13 of the Enforcement Directive. Even bearing those in mind I have real doubts that the claim will rise to £10,000. I asked Ms. Michalos whether her clients would waive the cap of £10,000 on damages if this were allocated to the small claims and she told me they would.

Mr. Muir Wood relies on the decision of the CJEU in United Video Properties Inc. V. Telenet (C-57/15) ECLI:EU:C:2016:611. The passage he quotes from that judgment says this:

"Article 14 of [the Enforcement Directive] precludes national legislation providing flat-rates which, owing to the maximum amounts that it contains being too low, do not ensure that, at the very least, page 13 of 15 that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party.
Article 14 of [the Enforcement Directive] must be interpreted as precluding national rules providing that reimbursement of the costs of a technical adviser are provided for only in the event of fault on the part of the unsuccessful party, given that those costs are directly and closely linked to a judicial action seeking to have such an intellectual property right upheld."

First, there is no issue relating to a technical adviser in this case. The point emphasised by the CJEU is that a significant and appropriate part of the reasonable costs incurred by a successful party are to be borne by an unsuccessful party. The whole purpose of IPEC small claims is that it would be unusual for the payment of those costs to be appropriate. It provides a low cost forum for parties to litigate IPEC cases which is undoubtedly in the public interest.

The rules also provide for the payment of costs by a successful party in circumstances in which, in the view of the IPEC small claims court, are appropriate. In my judgment that regime satisfies the requirements set out by the CJEU in United Video Properties Inc. v. Telenet.

The one point that has given me pause for doubt on the question of which court should hear this case is the following. Unusually, it is the well funded party which is seeking transfer to IPEC small claims. This does have a bearing because Mr. Muir Wood expressed a concern of Mr. Tumber that he, having far shallower financial resources than ITV, may succeed at trial and yet not have his costs reimbursed. Although not quite spelt out this way, I detect a concern on the part of Mr. Tumber that ITV being well funded could make their case in the small claims track quite complex, that he, Mr. Tumber, would be required to respond in kind, that is to say his legal team would have to deal with relatively complex issues of law and fact, and that this would generate costs which he could never recover. I am just, on balance, persuaded that this concern has to be met and for that reason I will not allocate this case to the small claims track.

I think it is perfectly fair of Ms. Michalos to raise the question of whether I was alleging impropriety. Let me make it absolutely clear, I was not suggesting that ITN would act in an improper way. I was suggesting that it could be perceived by Mr. Tumber that ITV is employing extensive resources, even though ITN were just pursuing their entitlement to run a case. The question of properly defending a party's interests can appear to other litigants as going beyond what is appropriate. It is really a question of perception that I had in mind.

The other thing I should have said is that if ITN is right about the quantum of damages that Mr. Tumber is likely ever to be able to claim, the solution from ITV's point of view is to make a Part 36 offer which would safeguard its position. I now come on to the question of whether Mr. Tumber should provide the information he has been asked to provide since it is relevant to a potential Part 36 offer.

There is an application to strike out the claim on two related grounds. One is based on Jameel which I referred to earlier. I am not satisfied that this is a case that is sufficiently similar either to Jameel itself or to a case in this court to which I was referred, namely Lilley v DMGEvents Ltd [2014] EWHC 610 (IPEC). Whilst I do have doubts about the quantity of damages that Mr. Tumber would be entitled, assuming he were to succeed at trial, I am not in a position to quantify damages with any certainty, therefore to reach a conclusion that this is a matter which should have been struck out on the Jameel principles.

The other way that the application to strike out was put was that Mr. Tumber has been conducting this litigation in an improper way. First it is said that he and his legal team have been uncooperative. Second, that there is evidence that Mr. Tumber is now using the fact of this litigation to generate further publicity for himself. I was shown some copies of publicity which Mr. Tumber is presumably responsible for and an email dated 8th July 2017 from Mr. Tumber to a press organisation which suggests he is trying to sell his story about this litigation. I was also referred to the case of Broxton v McLelland No 1 [1995] EMLR 485.

It seems to me that Mr. Tumber's behaviour may be unwise but it does not cross over into the territory of being improper or the kind of conduct that was disapproved in Broxton v McLelland No 1. For those reasons I do not strike out the claimant's case.

I will strike out that defence. There is nothing further that is really relevant that would be before the trial judge and is not in evidence today. Ms. Michalos refers to the sales figures but whatever those sales figures may be, they do not affect today's application. If by the time of the trial those sales figures turn out to be tiny, such that in retrospect the case for striking this out on Jameel principles looks to have been rather stronger than it appears today, then by that time the case will be before the court for trial in any event. The sales figures may become an issue as to costs when the trial judge comes to resolve those.

I would add this, that as I have said previously, the defendants’ position can be easily protected by an appropriate part 36 offer.