BSI Enterprises Ltd & Anor v Blue Mountain Music Ltd

Factual and Procedural Background

The Claimants seek declarations that the First Claimant owns and the Second Claimant exclusively licenses the copyrights in certain songs ("the Works") originally written by the famous reggae musician Bob Marley. They also claim an account of sums mistakenly received by the Defendant from copyright collecting societies in respect of the Works, contingent on establishing ownership.

The Works consist of 13 songs written in the early 1970s, including the well-known "No Woman No Cry". The ownership dispute centers on the interpretation of a March 1992 Agreement between Island Logic Limited ("Island") and Cayman Music Inc. ("CMI"), a New York company distinct from the Second Claimant.

It is agreed that at the time of the March 1992 Agreement, CMI owned the copyrights. The Defendant contends the copyrights passed to Island under that agreement, while the Claimants assert they remained with CMI and were later acquired by the First Claimant in 2008.

The background includes a complex history starting with a 1968 publishing agreement between Bob Marley and Johnny Nash Music Limited, Bob Marley's recording contracts, and a 1973 publishing agreement with CMI. Bob Marley engaged in a deliberate "Misattribution Ploy," attributing authorship of the Works to others to gain control and remuneration, which damaged CMI's royalty interests.

Island was aware of this ploy in the 1970s and paid royalties to the misattributed authors. Following Bob Marley's death in 1981, CMI initiated litigation in New York in 1984 against multiple parties, including Island Records, Inc., alleging damages from the Misattribution Ploy. The claim was dismissed in 1988 on limitation grounds, but a counterclaim by the Estate sought to rescind earlier publishing agreements, potentially affecting ownership of all works from 1968 to 1976.

Island sought to acquire rights to Bob Marley's works, culminating in an April 1988 agreement with the Estate and a subsequent September 1992 agreement confirming the 1988 deal. In March 1992, Island Logic Limited entered into the disputed agreement with CMI. Later, in 2008, the First Claimant contracted with CMI to acquire copyrights in the Works, and in 2011 granted an exclusive licence to the Second Claimant.

The proceedings commenced in April 2012. Island received royalties for the Works but payments were frozen due to the dispute.

Witness evidence included testimony from independent consultants and accountants supporting the Claimants, and from Mr Blackwell representing Island. The court found the witnesses generally fair and honest, though some evidence was considered irrelevant or of limited weight.

Legal Issues Presented

1. Whether the copyrights in the Works were transferred to Island under the March 1992 Agreement.
2. If not transferred to Island, whether the copyrights were transferred to the First Claimant in 2008.
3. Assuming the First Claimant owns the copyrights, whether the Claimants have a restitutionary claim for royalties paid to Island.
4. Whether Island had an implied licence to exploit the Works arising from the Claimants' failure to notify Island of any claim.

Arguments of the Parties

Claimants' Arguments

• Clause 1.8 of the March 1992 Agreement includes known compositions in Schedule 2 and a "sweep up" of unknown songs, but does not include the Works subject to the Misattribution Ploy.
• The Works, including "No Woman No Cry," are notably absent from the agreement, suggesting deliberate exclusion.
• The March 1992 Agreement did not resolve disputes over accrued royalties, which should have been addressed if the Works had been transferred.
• The Works are missing from warranty schedules (8A and 8B), indicating they were not conveyed.
• There are no "Encumbrances" or "Restrictions" related to the Works in the agreement, which would be expected if they were included.
• The parties agreed, for the purposes of the agreement, that the Works were not owned by CMI, adopting a special meaning of ownership limited to the agreement's context.

Defendant's Arguments

• Clause 1.8 broadly includes all compositions written or recorded by Bob Marley owned by CMI, encompassing the Works and "No Woman No Cry".
• There was no deliberate decision to exclude misattributed songs; the New York counterclaim was referenced because it was extant, unlike the dismissed claim regarding the Misattribution Ploy.
• Outstanding royalties passed to Island by operation of clauses 1.2 and 1.22, consistent with the transfer of copyrights.
• Absence of the Works from warranty schedules does not necessarily indicate exclusion; warranties do not define the scope of transferred assets precisely.
• Songwriter agreements with misattributed authors are non-exclusive and do not constitute "Restrictions"; the New York claim is not an encumbrance on the Acquired Assets.
• Clause 1.22 conveys the benefit of the 1973 publishing agreement to Island, including music publishing rights in the Works.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by identifying the central dispute as the interpretation of the March 1992 Agreement to determine ownership of the Works. It applied established principles of contract interpretation under English law, emphasizing the objective meaning of the agreement's language in its factual matrix, excluding subjective intentions or prior negotiations.

The factual matrix included prior agreements, the Misattribution Ploy known to Island, ongoing and dismissed litigation, and Island's acquisition efforts. The court noted the broad and sweeping language of clause 1.8 defining "Composition" and "Catalogue," which included all musical compositions written or recorded by Bob Marley owned by CMI, without explicit exclusion of the Works.

The court rejected the Claimants' argument that the Works were deliberately excluded or treated as not owned by CMI for the agreement's purposes, finding no language to support such a special meaning. It found it commercially implausible that Island and CMI would leave such valuable works out, as Island sought to acquire as complete a catalogue as possible.

The court also rejected arguments based on the absence of the Works from warranty schedules and the lack of encumbrances or restrictions, explaining these did not determine the scope of the transfer. Regarding accrued royalties, the court found clauses 1.2 and 1.22 supported their transfer to Island.

The court accepted Island's argument that clause 1.22 conveyed the benefit of the 1973 publishing agreement, including music publishing rights, to Island.

On the restitution claim, the court declined to decide the legal boundaries due to incomplete argument but made factual findings: the Claimants had delayed asserting rights despite Island collecting royalties, and Island had a reasonable belief in its ownership.

Regarding implied licence, the court followed the reasoning in Fisher v. Brooker, holding that Island had a gratuitous licence to exploit the Works until the claim was issued, which terminated the licence.

Holding and Implications

The court held that the copyrights in the Works passed to Island (specifically Island Logic Limited) under the March 1992 Agreement.

As a result, the Claimants' claim fails. The court did not make a definitive ruling on the restitutionary claim but made factual findings relevant if the decision on ownership is overturned on appeal.

Had the Claimants owned the copyrights, Island would have had a gratuitous licence to exploit the Works until the claim form was issued.

No new legal precedent was established; the decision applied established principles of contract interpretation and licence law to the facts of this dispute.