Exclusive licensee's Dalek claim is exterminated

On 16 April 2008, Mr Justice Norris passed down his judgment on the High Court case of JHP Limited v BBC Worldwide Limited and another ([2008] EWHC 757 (Ch)) in favour of the BBC.

JHP is the successor of a publisher which printed four Dalek books in the 1960's in association with the late Terry Nation- creator of the Daleks. JHP claimed that The Dalek Survival Guide published by the BBC in 2002 infringed copyright in the original books. Mr Justice Norris found that while JHP had an exclusive license to publish the original books, it was "inherently improbable" that Mr Nation's copyright had ever been assigned to JHP.

Even if the BBC had copied a substantial amount of JHP's copyright works, it could rely upon an estoppel defence. The BBC had been in regular communication with Mr Nation's estate throughout the production of The Dalek Survival Guide and had (to the knowledge of Mr Nation's estate) acted in the belief that it had the permission of the estate to use the copyright work. The effect of s101(3) of the Copyright, Designs and Patents Act 1988 (CDPA) was such that the defendant of a claim brought by an exclusive licensee had available any defence which would have been available if the action had been bought by the copyright owner.

Background

The Daleks were introduced to the public in the Doctor Who series of December 1963 and quickly became part of British popular culture.

Mr Nation entered into a number of agreements with a publisher (the predecessor of JHP) in the 1960's for the publication of several books featuring the Daleks. The original publisher was headed-up by Jack Fishman, a friend of Mr Nation, and the two men would sometimes discuss the character of the Daleks. As a school boy, Paul Fishman would overhear the conversations between Mr Nation and his father and Paul's curiosity may have inspired certain aspects of Mr Nation's work. Paul Fishman went on to become the Managing Director of JHP and claimed that, in succession to his father's company, JHP held the copyright to the early Dalek books.

Paul Fishman approached the BBC in 2001 to discuss a new venture using the original books together with other Dalek-related merchandise, but Fishman was not happy with the BBC's proposals and no agreement was ever reached. In the meantime, the BBC was in communication with Nation's estate and went on to publish the Dalek Survival Guide in 2002 in order to "provide the public with the information they need to withstand the inevitable – a Dalek attack". Mr Fishman claimed that the manual infringed copyright in the early books.

Outcome

Analysis of the terms used in the publishing agreements between JHP's predecessor and Mr Nation led Mr Justice Norris to find the grant of an exclusive licence rather than assignment of copyright.

Mr Justice Norris was not persuaded that a substantial part of the BBC manual was taken from the previous Dalek books but that much of the material was taken straight from the TV series produced by the BBC.

More importantly, section 101(3) CDPA provides that in any action bought by an exclusive licensee, the defendant may avail himself of any defence which would have been available to him if the action had been bought by the copyright owner. The result of this was that even if the BBC had copied a substantial part of the copyright in the original books, the BBC could invoke any defence that it would have if the late Mr Nation himself was bringing a claim. As the BBC had been acting in reliance of the agreement of Mr Nation's estate, this provided a complete defence against the claim bought by JHP.

Comment

Mr Justice Norris' judgment is clearly correct. Once it had been found that JHP was merely an exclusive licensee of the copyright in the original books, the statutory defence provided by s101(3) CDPA was predictably fatal to the claim.

Nonetheless, this case provides an important reminder about the ambiguities regarding intellectual property ownership which arise so frequently in commercial agreements. Much of the judge's time was spent interpreting uncertain terms within the early publishing contracts. Perhaps more worryingly, the evidence concerning the involvement of Mr Nation's estate showed that as recently as 2002, the BBC was acting on the basis of unwritten agreements with copyright owners.

Copyright is the asset arising from the creativity, skill and investment of time and money by authors and employers. There has never been greater acceptance of how valuable copyright can be and businesses must protect it in the same was as they would protect tangible assets. Not only does a failure to recognise the value in copyright lead to a loss of potential royalty income or sale value, but a company which falsely believes that it is still the owner of copyright runs a high risk of finding itself on the wrong side of an infringement claim.

This analysis was written by Janine Harborne (janine.harborne@wragge.com), a solicitor in the IP team.