Factual and Procedural Background
The Claimants are the current trustees of the estate of the late author, referred to as Joyce, who died in 1941. The Defendants are the publisher and editor responsible for a 1997 edition of Joyce's novel "Ulysses," known as the Reader's Edition. The Claimants allege infringement of their copyright rights in three respects: unauthorized publication of the bulk of the text published during Joyce's lifetime; unauthorized publication of text not published during his lifetime; and misrepresentation of the Reader's Edition as Joyce's authentic work without adequate warning of its differences, amounting to passing off.
It is undisputed that the Claimants hold the copyright title. The Defendants deny the Claimants' standing to sue in passing off but accept that, if an estate of a deceased author can sue, the Claimants would be entitled.
Joyce's works published during his lifetime entered the public domain on 1 January 1992 under the Copyright Act 1956 (50 years post mortem). However, unpublished works first published posthumously retain copyright for 50 years from first publication. The Reader's Edition includes material not published during Joyce's lifetime, necessitating separate copyright analysis for published and unpublished materials.
Following the European Directive 93/98/EEC, the UK extended copyright protection to 70 years post mortem from 1 January 1996, reviving some expired copyrights. The relevant regulations include provisions for revived copyright and compulsory licensing, which are central to the dispute.
The Reader's Edition was prepared primarily by Mr Rose, the Second Defendant, who began work after 1991 and published the edition in 1997 through Macmillan. The Claimants initiated proceedings shortly before publication to obtain copies and assert their rights.
Legal Issues Presented
- Whether the Reader's Edition infringes copyright in material published during Joyce's lifetime, considering the effect of revived copyright regulations (Regulations 23 and 24).
- Whether the Reader's Edition infringes copyright in material not published during Joyce's lifetime.
- Whether the Claimants have standing and a valid claim in passing off against the Reader's Edition.
- The interpretation and application of the Duration of Copyright and Rights in Performances Regulations 1995 relating to revived copyright and compulsory licensing.
Arguments of the Parties
Claimants' Arguments
- The Reader's Edition infringes copyright by unauthorized copying of both published and unpublished material.
- The Reader's Edition misrepresents itself as Joyce's authentic work without adequate differentiation, causing damage to the goodwill associated with Joyce's "Ulysses."
- The estate retains goodwill in the work and can sue in passing off to protect its commercial interests in royalties.
- The Defendants' reliance on Regulation 23 to avoid infringement is misplaced because "arrangements" must be bilateral or contractual and were not established before 1 January 1995.
Defendants' Arguments
- The Reader's Edition is lawful as to material published during Joyce's lifetime due to revived copyright provisions and compulsory licensing under Regulations 23 and 24.
- The work done by Mr Rose before 1995 constitutes "arrangements" for exploitation, protecting the publication under Regulation 23.
- The Claimants lack standing to sue in passing off because the estate does not have goodwill distinct from Joyce himself and cannot define a clear class of goods protected by the name "Ulysses."
- Any copying of unpublished material is denied or justified under fair dealing, implied licence, or estoppel, though these defences were not pursued in argument.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Interlego AG v. Tyco Industries Inc [1988] RPC 343 |
Successive reproductions with minor variations do not create new copyright extending monopoly indefinitely. |
Supported the view that successive drafts or versions of Ulysses each have separate copyright but do not extend monopoly beyond original work. |
| L.A. Gear Inc v. Hi Tec Sports [1992] FSR 121 |
Each original drawing or version by the author remains original work despite being an adaptation or copying of an earlier version. |
Supported the court's conclusion that successive versions of Ulysses drafts each subsist as original works. |
| Cala Homes (South) Ltd v. Alfred McAlpine Homes East Ltd [1995] FSR 818 |
Originality of designs and their development; slight amendments may not create new copyright but still evidence original protected work. |
Reinforced the principle that minor changes do not create new copyright but copying such variants infringes original copyright. |
| Robin Ray v. Classic FM Ltd [1998] FSR 622 |
Copyright in earlier writings subsists independently of later works incorporating them. |
Supported the court's view that earlier drafts retain copyright even if incorporated into later works. |
| Black v. Murray [1870] Scots Law Reporter 261 |
Extent of copyright in new editions with notes and annotations; minor emendations insufficient to create new copyright. |
Applied to distinguish between mere reprints and substantially new editions; relevant to successive drafts of Ulysses. |
| Fairlie v. Boosey (1879) 4 App Cas 711 |
Protection under International Copyright Act related to registration of particular published versions. |
Found not helpful for present copyright questions due to different statutory context. |
| Merchant Adventurers Ltd v. M Grew & Co Ltd [1973] RPC 1 |
Copyright in designs for manufacture |
Not found relevant to literary work copyright issues in this case. |
| British Northrop Ltd v. Texteam Blackburn Ltd [1974] RPC 57 |
Copyright in designs for manufacture |
Not found relevant to literary work copyright issues in this case. |
| Butterfly Music srl v. Carosello Edizioni Musicali e Discographiche srl Case C-60/98 [1999] ECJ I-3939 |
Scope of transitional provisions protecting acquired rights under EU Directive; discretion of Member States in implementation. |
Guided interpretation of Regulation 23, emphasizing narrow scope for exceptions to revived copyright. |
| Reckitt & Colman v. Borden Inc [1990] 1 WLR 491 |
Classic passing-off case involving misrepresentation of product origin. |
Referenced to contrast conventional passing-off cases with the novel issues in this case. |
| Taittinger v. Allbev [1993] FSR 641 |
Passing off concerning product identity (Champagne). |
Referenced to illustrate differences from the present case's passing-off claim. |
| Erven Warnink BV v. J Townend & Sons (Hull) Ltd [1980] RPC 31 |
Passing off and product misdescription. |
Referenced to distinguish conventional passing-off principles from the unique context of literary works. |
| Clark v. Associated Newspapers [1998] 1 WLR 1558 |
Passing off involving imitation of style and presentation of a public figure's diary. |
Used as a comparative example, highlighting differences with the current claim. |
| Advocaat case (Erven Warnink BV v. J Townend & Sons) [1980] RPC 31 |
Essential requirements of passing off including goodwill and damage to it. |
Formulated the legal test applied by the court to the passing-off claim. |
Court's Reasoning and Analysis
The court began by distinguishing copyright in material published during Joyce's lifetime from that in unpublished material first published posthumously. The court accepted that each successive draft or version of Ulysses, including the Rosenbach manuscript, typescripts, and proofs, constitutes a separate copyright work. Publication in 1922 covered only the final approved text, not earlier drafts or manuscripts.
Regarding what Mr Rose copied, the court found that the bulk of the Reader's Edition was copied from the 1922 edition, not directly from earlier manuscripts. However, some material derived from unpublished manuscripts was included, constituting infringement of copyright in those works.
The court analyzed the revived copyright provisions under the 1995 Regulations implementing the EU Directive. It held that Regulation 23, which protects acts done in pursuance of arrangements made before 1 January 1995, did not apply because Mr Rose's preparatory work and negotiations with publishers did not amount to sufficiently definite "arrangements" before that date. The court rejected the Defendants' broad interpretation of "arrangements," emphasizing the need for a degree of certainty and bilateral commitment.
The court found that Regulation 24, providing a compulsory licence subject to notice and reasonable royalty, applied to the use of material from the 1922 edition. The Defendants had given sufficient notice, and the court accepted that notice could be given on a contingent basis. Thus, the use of material published during Joyce's lifetime was lawful subject to payment.
As to unpublished material included in the Reader's Edition, the court held that this constituted copyright infringement for which no defence under the revived copyright regulations was available.
On the passing-off claim, the court examined whether the Claimants had goodwill in a clearly defined class of goods and whether the Reader's Edition was misrepresented as part of that class. The court found the Claimants' definition of the class too subjective and vague, relying on approval by the estate or academic opinion, which is incompatible with the objective test required in passing off. The court also noted the novelty of the claim and the absence of direct sales by the Claimants, casting doubt on their standing. Consequently, the passing-off claim failed.
Holding and Implications
The court held that the Reader's Edition infringed the Claimants' copyright in unpublished material derived from the Rosenbach manuscript and other preparatory sources. The copying of material published during Joyce's lifetime was lawful under Regulation 24, subject to payment of a reasonable royalty following proper notice.
The passing-off claim was dismissed.
The decision means the Defendants must account for and pay royalties for use of the 1922 edition text under the compulsory licence regime but cannot rely on Regulation 23 to avoid liability. The inclusion of unpublished manuscript material constitutes copyright infringement without statutory defence. The Claimants cannot rely on passing off to prevent publication based on the present arguments and evidence.
No new legal precedent was established beyond the application of existing principles to the complex facts of this case.