Case No. HC 0000445
Neutral Citation Number: [2000] EWHC Ch 456
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Date: 2 October 2000

Before
N. Strauss Q.C.
Deputy Judge Ch.D

B E T W E E N:
__________________________________
LUDLOW MUSIC INC
(a company incorporated pursuant to the
laws of the State of New York,
United States of America)
Claimant

-and-

(1) ROBBIE WILLIAMS
(2) GUY CHAMBERS
(3) EMI MUSIC PUBLISHING LIMITED
(4) BMG MUSIC PUBLISHING LIMITED
Defendants
__________________________________
Mr. Pushpinder Saini, instructed by Messrs Sheridans, appeared for the claimants
 Mr. Stephen Bate, instructed by Messrs Harbottle & Lewis, appeared for the defendants
.__________________________________

__________________________________

Judgment

This is an application for summary judgment in  copyright action.

	The claimants own the copyright in a song entitled ‘I am the way’, composed by Woody Guthrie in about 1961.  In about 1973, Loudon Wainwright III composed a parody of this song, entitled ‘I Am The Way (New York Town)’, with the claimants ‘ permission.  He assigned the copyright in it to them on 30th October 1973.  At some time in late 1997 or early 1998, the first and second defendants, Robbie Williams and Guy Chambers, co-wrote a composition entitled ‘Jesus in a Camper Van’.  The third and fourth defendants, EMI and BMG, publish their music and have acquired the copyright in this composition.

The lyrics of all three compositions are annexed at A to this judgment.  ‘I am the Way’ contains the line “Every good man gets a little hard luck sometimes”.  The fourth verse of ‘I am the way (New York Town)’ consists of the line “Every Son of God gets a little hard luck sometime” repeated three times followed by “Especially when he goes around saying he’s the way”.  ‘Jesus in a Camper Van’ contains the lines “I suppose even the Son of God/Gets it hard sometimes/Especially when he goes round/Saying I am the way”.  This is repeated, and then the first two lines are repeated three times.

According to the defendants’ evidence, ‘Jesus in a Camper Van’ was one of the songs in Robbie Williams’ second album, and was recorded some time between 12th March and 28th June 1998.  Robbie Williams had heard somebody singing the words ‘I am the way’ and had had the idea of writing a song about Jesus in a camper van going around singing ‘I am the way’.  Towards the end of June 1998, somebody in the studio told him that he thought a couple of lines might have come from a Loudon Wainwright III song.  He told Mr. David Enthoven of IE Music Limited, his managers, who thought it might be helpful to his career to be seen as having co-written a song with Loudon Wainwright III and contacted the latter’s managers, the Rosebud Agency.  Margot Nassau of the Rosebud Agency confirmed that Loudon Wainwright III would be happy to be named as a co-writer.

On 18th August 1998, she wrote to Mr. Enthoven enclosing a CD of Loudon Wainwright III’s works, including ‘I am the way (New York Town)’ and adding “I think you’ll find the lyrics are almost identical to the chorus of Robbie Williams’ ‘Jesus in a Camper Van’ and suggesting that he contact the claimants c/o The Richmond Organisation “regarding a writer’s split for the song”, giving Evelyn Sasko as the contact.

This was copied to Alison Rowden, EMI’s Sampling/Infringement Manager, who states that she thought it was borderline whether a substantial part of ‘I am the way’ had been copied and whether copyright clearance was required.  She wrote to Evelyn Sasko on 21st August enclosing a tape.  She said:-

‘With regard to ‘Jesus in a Camper Van’, you will note that its similarity to ‘I am the way (New York Town)’ is lyrical only and is limited to two lines.  Furthermore, the lyric we use is not exactly the same and in our opinion the context and the use of the two songs overall are very different.  We feel that ‘Jesus in a Camper Van’ contains elements inspired by, rather than directly copied from, ‘I am the way (New York Town)’.’

She went on to ask Evelyn Sasko whether she considered that authorisation was required and if so the terms on which she would be willing to grant a licence and asked for an urgent response.  This was not forthcoming.  Evelyn Sasko did not reply until 30th September; she said that the Richmond Organisation agreed to the proposed usage on condition that the claimants were the 50% copyright holder of the new composition on a worldwide basis.  In other words, the claimants wanted a half share of the copyright, even though only a small part of the lyrics of ‘Jesus in a Camper Van’ was derived from the earlier work and (as is common ground) there was no musical similarity between the two works at all.

On 6th October, Alison Rowden replied that this demand was excessive, that she did not believe that the similarity amounted to copyright infringement and offered a 10% copyright ownership, suggesting that this would be more than fair.  On the same day, Larry Richmond replied rejecting this proposal and stating that if any lyrical or musical excerpts from ‘I am the way (New York Town)’ were to be used, then a 50%/50% split was required; otherwise any reference to their copyrighted composition should be deleted.  By this date, copies of the album including ‘Jesus in a Camper Van’ had been manufactured and were with the distribution companies awaiting delivery to retailers.  The album states that the lyrics are reproduced “by kind permission of” the claimants; Mr. Enthoven states that it did not occur to him that permission would be refused.  The album was due for release on 26th October.  Alison Rowden also states that it never occurred to her for a moment that the claimants would refuse to consent to ‘Jesus in a Camper Van’ being released at all.

According to Mr. Richmond’s letter to Tom Bradley, a director of EMI, dated 22nd March 1999, there were conversations between them in October and early November 1998.  EMI’s file shows that on or about 23rd October Mr. Bradley sent Mr. Richmond a cassette and lyric sheet and asked him to telephone when he had the opportunity to consider his position.  There is also a note to the effect that Mr. Richmond telephoned Mr. Bradley on 10th March to say that it remained the claimants’ position that they would not accept anything less than 50%.  Certainly, although no reference is made to this conversation, Mr. Richmond’s letter of 22nd March takes this position and states that if the matter cannot be settled on that basis “we will take all necessary steps to protect our copyrighted composition, both in the United Kingdom and throughout the world”.  He then asked for a review of unit sales in all formats, including the composition from release date to the present.

At some point in this period, EMI decided to register the claimants at all collection societies with 25% of the copyright, representing 50% of the income attributable to the lyrics.  According to Alison Rowden, they felt that they were being held to ransom and that to register an interest which they believed was several times more than the claimants deserved would appease the claimants and protect themselves.

On 19th April 1999, Messrs Sheridans wrote to EMI and BMG, alleging copyright infringement, enclosing copies of letters to the MCPS and the PRS and asking for confirmation:-

‘1.	That all monies received by you with respect to the exploitation of the composition ... will forthwith be paid to our clients without deduction.

 2.	A full account of all sums received by you in respect of (the composition) will be prepared and forwarded to us ... no later than 14 days from the date hereof.

 3.	Your confirmation and undertaking that all future sums received by you in respect of the exploitation of (the composition) will be paid to our clients without deduction.

 4.	You will immediately notify the appropriate collection societies that the our client is the owner of 100% of the copyright in the composition...’

They added that all their clients’ rights and remedies were reserved.

Thus, the claimants now claimed all income derived from the composition, not merely the whole of the share attributable to the lyrics.

The letter to the MCPS asked it not to distribute any fees or royalties pending resolution of the dispute.  It did not ask the MCPS to withdraw any licence it had given to record the work, or to refrain from granting any further licence.

Correspondence between Sheridans and the defendants’ solicitors Harbottle and Lewis ensued.  As late as 3rd August Sheridans wrote:-

‘Having considered question of damages, we have received clear advice that the Court would uphold our client’s claim for 50% of the copyright of the new work by Robbie Williams as a reasonable licence fee’.

It is only in their recent letter of 16th August that, having again referred to their clients’ entitlement to “a licence fee of at least 50%”, Sheridans also say that the infringing material should have been deleted and express confidence that the court will uphold their clients’ property rights in the original recording.  Nothing further happened until Sheridans letter before action of 8th December, followed by the issue of proceedings on 3rd February of this year.

The first issue between the parties is whether there has been an infringement of the claimants’ copyright.  The defendants accept that they used elements of ‘I am the Way (New York Town)’, but they submit that these did not represent a substantial part of the song.  They further submit that, since the matter is arguable, it is not appropriate to be decided on the summary judgment application.  The claimants submit that this is a clear case of copying and that, even if this is an arguable issue, all the material is before me and I should decide it.

Accordingly, I must first consider whether an application for summary judgment is appropriate, in circumstances in which I do think that the issue is an arguable one.  In my view, the right approach is for a court to decide an issue of this kind on an application for summary judgment, even if it is arguable, if it is satisfied that all the relevant material is before the court, and that a judge at a full trial would be in no better a position to decide the matter.

I have been referred to the decision of the Court of Appeal in Leco Investments (UK) Ltd -v- Land Pyrometers [1982] R.P.C. 133, in which it was held that leave to defend should have been given on a similar issue, on the ground that whether copying was substantial depending in part on quality, which was a matter of degree.  However, I think that this decision depended on its facts.  The key sentence in the judgment of Fox L.J. (with whom Stephenson L.J agreed) was “I am not satisfied that no further evidence is relevant or admissible.”  He went on to refer to difficulties arising under section 9(8) of the Copyright Act as to the types of evidence admissible in cases of 3-dimensional copying and to the possibility of technical evidence.  This decision is therefore distinguishable.  In addition, CPR Pt. 1.4.2(c) emphasises the desirabiilty of a court deciding issues at the earliest possible time.

Mr. Bate submitted that a judge who had heard the matter at a full trial would or might be in a better position to decide for three reasons.  First, he might be in a better position to evaluate the significance of certain parts of the correspondence, and the acknowledgement given to Loudon Wainwright III, relied upon by the claimants as impliedly admitting infringement of copyright.  Secondly, it was possible that the defendants might be able to obtain evidence that further parts  of what they copied were not originated by Lowdon Wainwright III.  Thirdly, further relevant expert evidence might be available at a full trial.

I do not think that there is any substance in these points.  As to the first, paradoxically this is because I do not think that there is anything in the claimants’ contention that the defendants impliedly admitted infringing copyright; on the contrary they made it clear from the outset, in Alison Rowden’s letter of 21st August 1998, that they did not.  As to the second point, it seems to me that if there were any evidence that Loudon Wainwright III was not the author of other parts of the copied words of the lyric, it would have surfaced by now.  As to the third point, I do not think that any further expert evidence would be relevant.  There is no suggestion that any part of the musical copyright was infringed; the extent of the copying of lyrics is quite clear, as is the importance of the parts copied in relation to the whole of the song.  I have also heard tapes of all three songs.  The claimants have in fact put before the court some expert evidence on the extent of the copying, which I have read, but I do not think that it adds anything to what I can see and hear for myself.

I therefore conclude that nothing would be gained by allowing the matter to go on to trial on this issue, and that I should decide it for myself.  In my view, the extent of the copying is substantial, although not by much.  Quantitively, the defendants have copied one out of four verses, although allowance is to be made for the fact that “... get a little hard luck sometimes” was derived from the Woody Guthrie song.  More significantly, ‘Jesus in a Camper Van’ takes the central idea from ‘I am the way (New York Town)’, namely that the Son of God attracts bad luck by going round saying ‘I am the way’, and embodies it in virtually identical words. I think that this is of sufficient substance to amount to an infringement of copyright.  It is difficult to elaborate further; the point is one of first impression.

Mr. Bate submitted that the idea, and the words in which it was embodied, would be offensive to many, and that this feature of the composition fell to be taken into account because the court should consider the quality of what had been copied as well as the quantity.  He very properly referred me to Chappell & Co. Ltd v. D.C. Thomson & Co. [1928-35] Mac C.C. 467 in which Farwell J., having scornfully disparaged the quality of the plaintiffs’ song, said that the complete lack of literary value in its lyrics was irrelevant.  It seems to me that in this context what is mainly meant by considering quality as well as quantity is that it is necessary to see how important the part which has been copied is in relation to the whole work.  The court is not required to act as an arbiter of either artistic merit or good taste; otherwise it would be in danger of imposing a form of censure by refusing the protection of copyright law to artistic works, on the grounds of their lack of artistic or moral value in its eyes: as to the latter, see Laddie, Prescott & Vitoria ‘The Modern Law of Copyright & Designs’, 2nd ed. pp. 113 et seq.

It follows that the claimants’ are entitled to damages or an account, at their election.  Mr. Bate submits that they should be deprived of this on the ground that the 25% licence fee offered is obviously so much more than what they could possibly obtain by pursuing the action (including exemplary damages if any) that to do so is an abuse of the process.  I can see no basis for this novel submission, which is not supported by authority. The claimants are entitled to substantial damages, possibly including exemplary damages, and to have the court determine the amount rather than to be forced to accept the defendants’ assessment however generous.  If, as seems to me very possible, the claimants have overestimated the value of the infringed part of their lyrics and recover less than has been offered, they may well be ordered to pay the whole of the costs of the action, as is envisaged by CPR Pt. 36.

The final question is whether a permanent injunction restraining EMI and BMG from infringing the claimants' copyright should be granted.  This is a difficult issue.  Mr. Saini rightly submits that, in considering whether to grant a permanent injunction, the balance of convenience is irrelevant.  Although the remedy is discretionary, in the absence of special circumstances, the law will protect property rights; a person is not to be forced to sell his property for its reasonable market value, and a defendant is not to be permitted to buy the ability to infringe rights by the payment of damages: see for example, in copyright cases, MacMillan v. Thomas Reed [1993] F.S.R. 455 at 465-7 per Mummery J; Phonographic Performance Limited v. Maitra [1998] 1 W.L.R. 870 at 877, 878D-879D per Lord Woolf M.R., and more generally Halsbury’s Laws Vol. 24 para. 836.

However, there are circumstances in which an injunction will be refused.  One is acquiescence, where it is to be inferred from the claimant’s conduct (of which delay may be a part) that he has waived his right to claim an injunction: see Snell’s Equity 30th ed. p. 655.  Other circumstances are indicated in the well-known case of Shelfer v. City of London Electric Lighting Company [1895] Ch. 287, which concerned a nuisance, first in the judgment of Lindley L.J. at 316-7:-

“Without denying the jurisdiction to award damages instead of an injunction, even in cases of continuing actionable nuisances, such jurisdiction ought not to be exercised in such cases except under very exceptional circumstances.  I will not attempt to specify them, or lay down rules for the exercise of judicial discretion.  It is sufficient to refer, by way of example, to trivial and occasional nuisances: cases in which a plaintiff has shown that he only wants money; vexatious and oppressive cases; and cases where the plaintiff has so conducted himself as to render it unjust to give him other than pecuniary relief.  In all such cases as these, and in all others where an action for damages is really an adequate remedy - as where the acts complained of are already finished - an injunction can properly be refused.”

The other frequently cited passage is in the judgment of A.L. Smith L.J. at 322-3:-

“There are, however, cases in which this rule may be relaxed, and in which damages may be awarded in substitution for an injunction as authorised by this section.
In any instance in which a case for an injunction has been made out, if the plaintiff by his acts or laches has disentitled himself to an injunction the Court may award damages in its place.  So again, whether the case be of a mandatory injunction or to restrain a continuing nuisance, the appropriate remedy may be damages in lieu of an injunction, assuming a case for an injunction to be made out.

In my opinion, it may be stated as a good working rule that-

(1)	if the injury to the plaintiff’s legal rights is small,

(2)	And is one which is capable of being estimated in money

(3)	And is one which can be adequately compensated by a small money payment,

(4)	and the case is one in which it would be oppressive to the defendant to grant an injunction:-

then damages in substitution for an injunction may be given.

There may also be cases in which, though the four above-mentioned requirements exist, the defendant by his conduct, as, for instance, hurrying up his buildings so as if possible to avoid an injunction, or otherwise acting with a reckless disregard to the plaintiff’s rights, has disentitled himself from asking that damages may be assessed in substitution for an injunction.

It is impossible to lay down any rule as to what, under the differing circumstances of each case, constitutes either a small injury, or one that can be estimated in money, or what is a small money payment or an adequate compensation, or what would be oppressive to the defendant.  This can be left to the good sense of the tribunal which deals with each case is it comes up for adjudication.”

In the present case, Mr. Bate submitted first that no effective injunction could now be granted, as the appointment of the MCPS to act as EMI’s agent to grant or authorise the grant of a licence to exploit its catalogue, including ‘Jesus in a Camper Van’, followed by the grant of a licence to record to Chrysalis, put any further substantial infringement (except by the publication of sheet music) beyond the defendants' ability.  He relied on the decision of Rimer J. in MCA Records Inc. v. Charley Records Inc., 22nd March 2000 pp. 69-70 for the proposition that a licence to record is a one-off event authorising recording for the period of the licence.  However, although not initially attracted to it, I think that there is much to be said for Mr. Saini’s submission that in this case the provisions of the MCPS membership agreement entitle the member to notify the MCPS that it no longer controls the work, that the effect of such a ratification might well be to prevent the MCPS from granting any further licence and that (subject  to other points discussed below) EMI should be ordered to give such a notification.

Section 10 of the Membership Agreement starts as follows:-

“10.	 MEMBER’S WARRANTIES AND UNDERTAKING

10.1	The warranties undertakings and indemnities contained in this Clause are required for the protection of the membership of MCPS as a whole by ensuring that MCPS does not suffer damage or loss which might affect its ability to keep its administration expenses as low as possible or to make rebates.  MCPS will only seek to enforce a claim for breach of any such warranty or undertaking or for an indemnity where the Board in its absolute discretion determines that the circumstances are such that the claim should be enforced after giving the Member an opportunity to make representations to the Board in relation to the claim
10.2	The Member hereby warrants to MCPS:-

10.2.1	that he has full power and authority to enter into this Agreement and to grant the rights and powers referred to and to give MCPS all permissions and authorities contained in this Agreement

10.2.2	that the Rights in each work registered or hereafter registered by the Member with MCPS are or will be controlled or administered by the Member from the date of such registration or where the Member notifies MCPS on registration that he will control or administer the work at a later date then from that later date and in either case until such date as the Member both no longer controls or administers the Rights in the work and MCPS has been notified of this fact in writing either by the Member or his successor in title.”

Clause 16.28 defines “Works” in the following terms:-

“Work(s) means each and every Musical work or part of such work the Rights in which are directly or indirectly controlled or administered in the Territory by the Member at any time during the operation of this Agreement.”

Once it is held that the member does not have the right to the whole of the copyright in a composition, he is entitled to give a notice in accordance with clause 10.2.2  Whilst clause 10.2.2. does not in terms withdraw the MCPS’s authority to act upon receipt of notice, it might well have the effect in practice that the MCPS would decline to grant any further licence.  I have been provided with a copy of the licence scheme in operation between members of the MCPS and the BPI, which I am told contains the terms on which Chrysalis has been licensed to record the composition.  No detailed submissions have been made as to whether this licence could be terminated, for example under clause 33.4.  Unless it could be shown that a notification could have no practical effect, I think that in the ordinary way it would be right to enforce the claimant’s copyright by ordering EMI to send a notification in appropriate terms to the MCPS (all that it can do to prevent future infringement by sales of records), and in addition grant an injunction restraining EMI and BMG from any other infringement of the copyright.

However, Mr. Bate further submitted that this was in any event an exceptional case in which an injunction should be refused on a number of the discretionary grounds referred to in Shelfer including acquiescence, the fact that the claimants are only interested in money and oppression.  Although both Lindley L.J. and A.L. Smith L.J. were careful to avoid laying down any rigid general rule, there is a clear difference of emphasis between them.  Lindley L.J. sets out a number of discrete examples of situations (plainly only after money, oppressive use of injunction etc.) in which the court may exercise its discretion to award damages in lieu of an injunction, A.L. Smith L.J. set out a ‘working rule’ which envisaged that if all four features mentioned by him were present, the court would ordinarily consider exercising its discretion.  Although the passage in A.L. Smith L.J.’s judgment is probably cited more often, the passage in Lindley L.J’s judgment has by no means been ignored: see for example MacMillan v. Thomas Reed, supra at 465.

In Banks v. EMI Songs Ltd (No.2) [1996] E.M.L.R. 452 Jacob J, having referred to the judgment of A.L. Smith L.J., granted an injunction, even though he was not able to say that a small sum of money would be adequate compensation.  Citing the decision of the Court of Appeal in Jaggard v. Sawyer [1995] 2 All E.R. 189, he held that the “checklist” in A.L. Smith L.J.’s judgment was not an exhaustive statement and could very exceptionally be departed from, in the case before him appropriately so because the defendant had been exploiting the copyright for 11 years.

This too is a case which does not fall squarely within A.L. Smith L.J.’s rule of thumb, for the same reason as in Banks, namely that a small sum may or may not be adequate compensation.  Clearly, the right approach is to start with a strong bias in favour of granting an injunction, to be dispelled only if the circumstances of the case clearly make it unjust to do so. However, whilst A.L. Smith L.J.’s judgment clearly provides a rule of thumb which is often followed, it is to be noted that it ends with the words “... then damages in substitution may be given”.  He does not say that in no other case may damages in substitution be given, nor does he express any disagreement with Lindley L.J., in particular with the general proposition at the end of the relevant passage in Lindley L.J.’s judgment that an injunction may be refused in all cases in which damages are an adequate remedy.  It is to be remembered that the original reason for the general rule in courts of equity that an injunction would be granted as a matter of course to restrain infringements of property rights was the then inadequacy of damages as a remedy: see Hogg v. Kirby (1803) 8 Ves. 215, 223, per Lord Eldon.  Where a plaintiff only wants financial compensation, the financial remedies for breach of copyright are today adequate in most cases provided, of course, that the defendant is solvent.

I have reached the conclusion that it is at least arguable that this is an exceptional case in which an injunction should be refused, even though the appropriate compensation may be substantial, for the following reasons:-

(1)	There has clearly been an element of acquiescence in the claimant’s conduct.  Although, as Mr. Saini stresses, they started out by suggesting the deletion of the composition, there is no clear evidence as to what was said in the conversations in October and November 1998, at about the time the record was released, probably to their knowledge.  Sheridans' subsequent letters between 19th April and 3rd August gave the strong impression that the only remedy sought by the claimants was a large share (and one point the whole) of the income derived from the composition and that Sheridans did not seek to stop its exploitation.  It is true that Sheridans did not expressly say this, that in the letter of 19th April their clients’ rights were reserved and that it is possible to read the demand in the letter of 3rd August for a 50% licence fee as relating only to past exploitation.  Nevertheless, I think that anyone reading these letters would have seen a claim to stop exploitation of the recordings as a considerable change of tack.  In addition, the leisurely pace of the correspondence between October 1998 (when the claimants probably first knew of the infringement and certainly of threatened infringement) and the commencement of proceedings in February 2000 has led to a situation in which the album has now been on sale for nearly 2 years.

(2)	The correspondence suggests strongly that this is a case in which the claimants are only interested in money.  They appear to have no artistic or other objection to the defendants’ exploitation of their copyright.  There is no suggestion that it is harming their exploitation of ‘I am the way (New York Town)’.  They simply want a licence fee or other monetary compensation, which the defendants are well able to pay.

(3)	If it is oppression to seek to exploit a situation in which the defendants have infringed copyright by demanding excessive sums, which if paid would go beyond reasonable compensation for the use of their copyright and would amount to a penalty, then it is arguable that the claimants have acted oppressively.  Mr. Saini submitted that the fact that 50% was demanded in October 1998 in the actual negotiations is evidence of the market value.  I do not accept this; given that it was met with the response that 10% would be ample, the negotiations provide no guide to the market value. It is difficult to see how the market value of what on any view is only a small proportion of ‘Jesus in a Camper Van’ (much smaller than the corresponding proportion of ‘I am the way (New York Town)’) could be a licence fee corresponding to 50% of the entire composition (music and lyrics), let alone the 100% later demanded.  The effect of granting an injunction would be to enable the claimants to demand an excessive price for permitting the defendants to continue to sell the album containing ‘Jesus in a Camper Van’.

On this point, Mr. Saini relied on the Phonographic Performance case, to which I have already referred in support of his argument that the owner of property is entitled to change what he likes for its use, and that to do so cannot amount to oppression.  In that case it was held by the Court of Appeal that an injunction had been wrongly refused on the ground that the practice of the claimants in refusing to grant a licence without payment for past use was oppressive.  In giving the judgment of the Court, Lord Woolf M.R. said:-

“Section 1(1) of the Act of 1988 states in terms that copyright is a property right.  It entitles the owner to the exclusive right to do the acts restricted by copyright (see section 2) which, in this case, is public performance of a record (see sections 16 and 19).  The exclusive right has a duration fixed by statute (the 50 year period now specified in section 13A, as substituted by regulation 6(1) of the Duration of Copyright and Rights in Performances Regulations 1995 (S.I. 1995 No. 3297), in the case of sound recordings).  In an infringement action the copyright owner has available all relief, including injunctive relief, as is available in respect of any other property right (see section 96). Although the Act in other parts provides for licences as of right to be granted, there is nothing requiring an owner of copyright of the type being considered in this case to grant a licence, save where the Monopolies and Mergers Commission has become involved (see sections 98 and 144).  An owner may exercise and exploit his proprietary right by licensing some and not others.  He may charge whatever he wishes. ...

Although the terms upon which P.P.L. licence their copyright are subject to the control of the copyright tribunal, Parliament did not see fit to restrict the way that they enforced their copyright against infringers.  Parliament provided them with the same rights as ordinary copyright owners and prima facie they should be granted the same relief.

We accept that when a person established infringement of copyright and a threat to continue infringement, an injunction will in the ordinary case be granted without restriction.  This is especially true when the defendant takes no part in the proceedings.  But the court, when granting an injunction, is still required to exercise a discretion and in so doing there could be circumstances where restriction or refusal of an injunction would be warranted.  We do not believe that such circumstances arise in this case or would normally do so in similar cases.

At the heart of the judge’s decision to limit the injunction in time was his view that the injunctions obtained by P.P.L. were used as a lever to extract licence fees - a practice that he regarded as an abuse.  Although P.P.L . have since the judge first expressed his views, modified the letters they write, it remains their objective to make sure that all users of their rights pay the appropriate licence fee or stop infringing.  The purpose of the injunction is to prevent unlicensed use.  Inevitably it is an incentive to the injuncted person to obtain a licence or, when threatened with committal, to pay the fee which he should have paid or stop.

We do not take the same view as the judge.  A person who exploits his property right by licensing is entitled, unless there are special circumstances, to prevent another from using that property right without his licence and to refuse to grant a licence save on his terms and conditions as to payment and use.  In a case, such as the present, where the defendant did not contest the allegation in the P.P.L.’s statement of claim, was well aware of P.P.L’s rights that he was infringing and shows an intention to continue to infringe, we can see no reason why the use of an injunction in the normal form to prevent further infringement could be an abuse.  No doubt the consequence is that a defendant is forced to pay if he wishes to use the repertoire, but P.P.L.  are entitled to use the rights assigned to them for the purpose of requiring payment of fees in return for a licence to do what would, in the absence of a licence, be an infringement of the rights. ...

Use of an injunction by P.P.L. to obtain money to which they are not entitled would be an abuse, but there is no evidence that that ever occurs.  Where unauthorised use of P.P.L’s copyright is taking place, we do not believe it is an abuse to refuse to licence that copyright without an appropriate payment for past use and an agreement for future use.  No do we consider it an abuse for P.P.L. to require compliance with an injunction either by the person refraining from using the repertoire or by paying for such use that has taken place and will take place.”

However, the present case may be distinguishable.  Although it is of course true that a copyright owner “may charge whatever he wishes”, in the sense that he is legally entitled to do so, it is arguable that if he seeks to exploit this right unreasonably so as to take advantage of the defendant’s weak position (albeit one of his own making) his conduct may be regarded as oppressive. Phonographic Performance was a wholly different case on the facts; as Lord Woolf M.R. said at the end of the passage cited above, at 879B, PPL had asked for “an appropriate payment” (my emphasis), not “money to which they were not entitled” which the court would have held to be an abuse.  It may be that there is some limit to a claimant’s entitlement to hold the defendant to ransom, and if so it is arguable that the claimants’ conduct in this case has been sufficiently oppressive to warrant denying them an injunction.  In Jaggard as 203F Bingham L.J. emphasised that the question  of oppression must be judged as at the date on which the court is asked to grant an injunction.  The claimants’ conduct to date makes it likely that, if an injunction were granted, they would continue to make arguably excessive demands.

In the end, because (a) there is factual evidence not before the court which might affect the outcome of the acquiescence issue, (b) the way in which the court should exercise its discretion depends on an evaluation of both parties’ conduct (see Spry on Equitable Remedies) 5th ed.pp. 639-42), which I do not consider that I can legitimately undertaken on the basis of the evidence as it stands and (c) I have doubts as to the ambit of the exceptions to the general rule that an injunction will be granted to restrain an infringement property rights, and feel that this merits further argument, I have decided that this is not an issue which I can resolve summarily.

Accordingly, I hold that the defendants have infringed the claimants’ copyright in ‘I am the way (New York Town)’, that there should be an enquiry as to damages or an account of profits at the claimants’ election, but that the injunction issue will have to be tried.  If the claimants elect damages, it seems to me, subject to any submissions to the contrary which counsel may make, that the assessment will have to take place after trial, since it will depend in part on whether an injunction is granted or refused; if it is refused the assessment will have to take account of future loss.

N. Strauss Q.C.
Deputy Judge Ch.D
2nd October 2000

TITLE:	I AM THE WAY	
		
WORDS BY:	LOUDON WAINWRIGHT III	
		
MUSIC BY:	WOODY GUTHRIE	
		
LYRICS:	Standing down in Jerusalem town one day I was	
	Standing down in Jerusalem town one day I was	
	Standing down in Jerusalem town one day singing	
	I am the way	
	I am the way I am the way	
	I am the way singing I am the way	
		
2ND VERSE:	I can walk on water and I can raise the dead	
	I can walk on water and I can raise the dead	
	I can walk on water and I can raise the dead	
	It’s easy, I am the way	
		
3RD VERSE:	Don’t tell nobody but I kissed Magdalene	
	Don’t tell nobody but I kissed Magdalene	
	Don’t tell nobody but I kissed Magdalene	
	I said, “Mary, it’s O.K., I’m the way”.	
		
4TH VERSE:	Every Son of God gets a little hard luck some time	
	Every Son of God gets a little hard luck some time	
	Every Son of God gets a little hard luck some time	
	Especialy when he goes around saying he’s the way	

TITLE:	NEW YORK TOWN	
		
MUSIC BY:	WOODY GUTHRIE	
		
WORDS BY:	WOODY GUTHRIE	
		
LYRICS:	I was standing down in New York town one day,	
	Standing down in New York town one day,	
	I was standing down in New York town one day	
	Singing hey, hey, hey, hey.	
		
	I was broke, I didn’t have a dime... (3x each)	
	Every good man gets a little hard luck sometime	
	Down and out and he ain’t go a dime...	
	I’m gonna ride that new morning railroad (train)	
	Standin’ on my sidewalk curb today ...	
	Holdin’ my last old dollar in my hand ...	
	Lookin’ for a woman that’s lookin’ for a man...	
	If you don’t want me, you don’t have to stall ...	
	I can get more women than a passenger train can haul...	
	If you don’t want me, please just leave me be...	
	I can buy more lovers than the Civil War set free...	
	Never comin’ back to this man’s town again.... .	
		
TITLE:	JESUS IN A CAMPER VAN	
		
WORDS AND MUSIC BY:	ROBBIE WILLIAMS AND GUY CHAMBERS	
		
LYRICS:	Oo we’ve got a live one, featherweight icon	
	Heroes let ‘im down so he sleeps with the	
	Light on	
	And there’s nothin’ left to do but kneel down	
	And pray	
	Sail away with Caesar if you’re a non believer	
	Everybody get high if you’re a 	
	Diamond geezer	
	It’s the devil that needs ya so go out and play	
		
	Blame yourself it’s easier	
	There’s no need to trouble her you trouble her	
		
	Jesus in  a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes	
	Especially when he goes round	
	Saying I am the way	
		
	And now its four in the mornin’ yes yes y’all in	
	No one can shoot but everybody’s scoring	
	Trust me its boring get down and pray	
		
	They told you not to meddle with the bass	
	And the treble	
	There’s dust on you needle and you think	
	That you’re a rebel	
	You’re Evel Knievel so get down and pray	
		
	Blame yourself it’s easier	
	There’s no need to trouble her you trouble her	
		
	Jesus in a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes	
	Especially when he goes round	
	Saying I am the way	
		
	I am the way, I am the way	
	I am the way	
	I am, I am, I am, I am, I am, I am the way	
		
	Jesus in a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes	
		
	Jesus in a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes	
		
	Blame yourself it’s easier	
	There’s no need to trouble her	
	Blame yourself it’s easier	
	There’s no need to trouble her	
		
	Jesus in a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes	
		
	Jesus in a camper van he said sorry to	
	Leave you but I’ve done all I can	
	I suppose even the son of God	
	Gets it hard sometimes