Hodgens v Beckingham

Factual and Procedural Background

This appeal concerns an order made by Judge Floyd QC in the Chancery Division on 2 July 2002. The order entered judgment for the Plaintiff on the issue of liability for copyright infringement relating to the music of a version of the song "Young at Heart," recorded by a group known as Company A in 1984. The order declared the Plaintiff as joint author and joint owner (50%) of the copyright in the work, found that in 1984 the Plaintiff had gratuitously licensed the Defendant to exploit the copyright but revoked that licence in March 1993, and held that the Plaintiff was entitled to damages or an account of profits for infringements after 18 October 1993. Permission to appeal was initially refused.

There are five other defendants besides the first Defendant, but proceedings against them were stayed pending resolution of the claim between the Plaintiff and the first Defendant. The first Defendant applied for permission to appeal on several grounds. Permission was refused in relation to factual findings on joint authorship but granted on the issue of estoppel relating to revocation of the licence. The appeal now concerns the estoppel issue and a renewed application on a point of law regarding the construction of section 11(3) of the Copyright Act 1956.

In 1984, the Plaintiff, a professional fiddle player, was hired as a session musician for the recording session of Company A's version of "Young at Heart." The Plaintiff claims to have written the violin part, which the Defendant denies, alleging the Plaintiff merely followed instructions. The court found in favor of the Plaintiff on joint authorship and ownership of the copyright.

The song achieved commercial success in 1984, with no claim made by the Plaintiff at that time. The band disbanded in 1986. In 1993, the song was used in a commercial, causing renewed popularity and chart success. The Plaintiff then claimed a share of royalties, which the Defendant contests was asserted only in 1997. The court found the claim was made in 1993.

Legal Issues Presented

1. Whether the Plaintiff is a joint author of the copyright work under section 11(3) of the Copyright Act 1956, including whether a common intention to create a joint work is required.
2. Whether the Plaintiff effectively revoked the implied gratuitous licence granted to the Defendant in 1984 by asserting a claim in 1993.
3. Whether the Defendant is estopped, on grounds of unconscionability, from denying the Plaintiff's claim to joint authorship and revocation of the licence.

Arguments of the Parties

Defendant's Arguments

• Challenges the factual findings on what was said in 1993 regarding revocation of the licence, submitting the licence was revoked no earlier than November 1997.
• Asserts estoppel against the Plaintiff based on seven factors including delay in making the claim, prior representations that no claim would be made, the Plaintiff "jumping on the bandwagon" following resurgence, harm to Defendant's professional reputation, lost opportunity to excise the violin part, refusal to admit evidence of expenditure of royalties, and Defendant’s contractual indemnities given to third parties.
• Argues that section 11(3) requires a common intention to create a joint work for joint authorship, relying on foreign authorities and case law.

Plaintiff's Arguments

• Supports the judge’s findings of fact, submits the revocation of the licence was effective in March 1993.
• Contends the judge correctly applied the test for estoppel, emphasizing the need for detriment and unconscionability, and that no such estoppel arises here.
• Distinguishes cited cases on delay and estoppel, and submits that possible damage to Defendant’s reputation does not constitute sufficient detriment.
• Argues that section 11(3) does not impose a requirement of common intention to joint authorship, relying on statutory language and English case law.

Table of Precedents Cited

Court's Reasoning and Analysis

The court first affirmed the judge’s factual findings regarding joint authorship and the revocation of the implied licence in March 1993. It found no error in the judge’s assessment of the conflicting evidence about what was said between the parties in 1993. The court emphasized that the implied licence granted in 1984 was revocable on reasonable notice, and that the Plaintiff’s assertion of a claim in 1993 was sufficient to revoke it.

On the estoppel issue, the court applied the established principle that estoppel requires proof of detriment and unconscionability. It rejected the Defendant’s submission that detriment need not be shown. The court examined seven factors relied upon by the Defendant to establish estoppel but found them individually and collectively insufficient to demonstrate unconscionability or detriment. The court noted that the Plaintiff’s claim related only to royalties arising after 1993, not the earlier period, and that the resurgence of royalties was unforeseeable and adventitious.

The court distinguished relevant authorities cited by the Defendant on delay and estoppel, finding their facts materially different. It accepted that the Plaintiff’s prior representations in 1984 did not create an irrevocable licence and that the revocation in 1993 was not unconscionable. The court also found no sufficient detriment in the alleged harm to the Defendant’s reputation or lost opportunity to remove the violin part.

Regarding the legal construction of section 11(3) of the Copyright Act 1956, the court agreed with the judge that the subsection defines a work of joint authorship as one produced by collaboration where contributions are not separate. It rejected the argument that a common intention to create a joint work is a separate requirement, finding no basis in the statutory language or English case law for such a requirement. The court relied on the interpretation that "common design" refers to collaboration to produce the work, not a shared intention as to joint authorship status.

Holding and Implications

The court DISMISSED the appeal.

The court upheld the judgment that the Plaintiff is a joint author and joint copyright owner of the work, that the implied licence granted to the Defendant in 1984 was valid but revoked by the Plaintiff in 1993, and that the Plaintiff is entitled to claim damages or profits for infringements occurring after that date. The estoppel defence raised by the Defendant failed for lack of unconscionability and detriment. The court also refused permission to appeal on the construction of section 11(3), confirming that no common intention to joint authorship is required beyond collaboration.

The decision directly affects the parties by affirming the Plaintiff’s rights and rejecting the Defendant’s estoppel claim. It does not establish new precedent beyond clarifying the interpretation of joint authorship under section 11(3) and the application of estoppel principles in this context.