In litigation over whether representatives of U.K. estate
of deceased American guitarist Jimi Hendrix are entitled to poshumous royalties
from sale of CDs of his live performances in Sweden and U.S. before effective
date of Copyright Designs and Patents Act of 1988, as amended, English Court of
Appeal (Civil Division) rules in favor of Hendrix’s estate
The Copyright Designs and Patents Act of 1988 (CDPA) came
into effect in the UK on August 1, 1989 and has since been amended. Part II
created “Rights in Performances.” No‑one doubts that it did so in respect of
pre‑Act performances in the case of performers still alive when the Act came
into force.
Jimi Hendrix was a U.S. citizen who became a world famous
and innovative rock guitarist in the late 1960s. He died on September 18, 1970,
domiciled in New York State. Experience Hendrix LLC (Plaintiff) is a company
incorporated in the U.S. and the assignee of all property in the U.K. estate of
Mr. Hendrix. Defendant Purple Haze Records Ltd. and its owner (Defendants) had
profited from the sale of CD’s reproducing some of Hendrix’s live performances
in the U. K., U.S. and Sweden. between 1967 and 1970. Plaintiff seeks to
enforce the performer’s rights arising under the CDPA. Subject to the summary
judgment issue (not covered here), it is now undisputed that if performer’s
rights in these performances do exist, Plaintiff does own them. The case
specifically turns on the provisions of the CDPA, as amended. The arguments of
both sides, however, involved a lot more by way of background Treaties and
Directives.
These include the Berne Convention for the Protection of
Literary and Artistic Works of 1886 as amended by the Paris Act of 1971
(Berne). The provisions with which this Court is concerned date back to the
Rome Act of 1928 (Rome 1928). Also cited are the Rome Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting
Organizations (1961) (Rome 1961); the 1994 Agreement on the Trade‑Related Aspects
of Intellectual Property Rights (TRIPS); and the Treaty Establishing the
European Union (EU Treaty).
Finally, two items of EC legislation are pertinent: (1)
Directive 92/100/EEC on rental rights and lending rights and on certain rights
related to copyright in the field of intellectual property (RR); and (2)
Directive 93/98/EEC harmonizing the term of protection of copyright and certain
related rights of 29 October 1993 (HTP). Rome 1961 requires signatory states to
confer copyrights with respect to live performances. The UK acceded to this
Convention in 1964, having passed the Performers Protection Act of 1963 for
this purpose. Of particular significance is that Art.7 of Rome 1961 provided
for a civil remedy for performers and Art. 14 laid down a minimum term of
protection of 20 years from the end of the performance year.
Before the CDPA, various English provisions regulated
performers’ rights. The pre‑1988 legislation consisted of the Dramatic and
Musical Performers’ Protection Act of 1958 as amended by the Performers’
Protection Act of 1963. These, inter alia, made unauthorized recording of a
performance and sale of such recordings a criminal offense. During the 1970s
and 1980s, many plaintiffs tried to enforce the Acts in the civil courts. They
met with varying degrees of success. Before the Bill preceding the CDPA was
presented, the instant Court handed down Rickless v. United Artists [1988] Q.
B. 40. The Court there decided that, by virtue of the Acts, the personal
representatives of Peter Sellers had a civil cause of action against the makers
of a film who used recorded material of his performances in “Pink Panther”
films (made with his consent) to make a further such film to which neither Mr.
Sellers nor his personal representatives had consented.
On the interpretation of the performers’ protection acts,
the Court concluded that, notwithstanding the contrary suggestion in prior
cases, performers did have a civil right of action for breach of the Acts. Most
significantly to this case, such a right devolved on the deceased
performers’ personal representatives.
First, the Court noted that the 1963 Act was expressly
stated to be “to enable effect to be given to” Rome 1961. Moreover, Rome 1961
required a civil remedy because it called for a right to prevent unauthorized
recording (see Art. 7(1)). So if the U.K. provided no civil remedy then it
would be in breach of the Convention. That would be an improbable
interpretation.
Second, the Court rejected an argument that no rights lay in
the personal representatives of deceased performers or that they could not give
any consent. In so doing, it spurned an argument that the legislation was
merely to protect living performers because, once dead, they needed none. So
Rickless clearly established that Mr. Hendrix, prior to then, had a civilly
enforceable right to protect them. Moreover, that right would have passed down
to his personal representatives. If the present Defendants are right, the 1988
Act took away such a right for the future. This reading, although possible,
also seems unlikely.
The lead opinion here explains “I accordingly approach the
unamended Act with a strong supposition that it is unlikely to have been
intended to cut out from protection performances by performers who had died
before the Act came into force.
Defendant submits that, nonetheless, it did have such an
effect. His essential reasoning runs thus: (a) Section 180(1) says ‘this Part
confers rights on ‘a performer;’ (b) A dead person cannot be a performer; (c)
Putting it another way, the subsection does not confer rights on a deceased
performer’s personal representatives.” [¶ 21]
“[Defendants] also raised a convenience argument. How
difficult, ... it would be for the estates of long‑dead performers if this new
right was suddenly conferred, in many cases years after the estate was wound
up. And how difficult it would be to obtain clearances for use of performances
if you have to try and find personal representatives years after the estate is
wound up.”
“I do not regard these arguments as at all convincing. Here
are my reasons: (a) The whole of Part II of the Act is expressed in the present
tense. Even ‘performance’ is defined in the present tense (‘is ... a live
performance’), § 180(2), yet the Act must apply to what was a performance. A
sensible way to read the Part is to recognise that the past is also being
referred to where the context so requires.”
“(b) The draftsman would clearly have been aware of the
possibility of tying a right’s existence or term to the time of death of the
‘creator’. That is the position in respect of ‘ordinary’ copyrights under Part
I (literary, musical and artistic works) and had been in successive Acts since
the very beginning of copyright protection. Yet no such provision was made
here. On the contrary, the term runs from the end of the year of the
performance.”
“(c) Such an important limitation is hardly likely to be
found in that section of Part II which is headed Introductory and in which §
180 falls. ... The whole emphasis of these provisions is the conferring of
protection on performances. To say that performances by pre‑Act deceased
performers are not protected simply by the use of ‘a performer’ is making that
noun do more work than in context it can reasonably do. ...”
“(e) Sections 191‑193 (which deal with ‘duration and
transmission of rights; consent’) are hardly likely to have taken their present
form if [Defendants are] right. Section 191 makes rights ‘continue to subsist
until the end of the period of 50 years from the end of the [year of
performance]’. [Defendants] submit that this only applies where rights are
conferred by this Part.”
“I agree, but one might have at least supposed some sort of
caveat if performances by pre‑Act deceased performers were excluded. So also
for the provisions in § 192 about transmission on death....”
“(f) The very form of § 180(1) is essentially by way of a
chatty introduction. It is telling you what this Part of the Act is about. That
is unarguably so in relation to the bit about the creation of offences. It
would make no difference if it was struck from § 180(1) entirely. ...”
“(g) Section 180(3) is also phrased oddly if [Defendants
are] right. It says the rights conferred apply in relation to performances
taking place before commencement, adding the rider that no pre‑Act conduct or
in conduct pursuance of pre‑Act arrangements shall infringe. Surely this would
have been qualified if it was intended to exclude any case where the performer
had died before the Act came into force? Yet it was not.”
“(h) As to the argument that § 180(1) confers rights on a
performer, not on his personal representatives, I think it specious. If you
confer rights retrospectively on a ‘person’ and that ‘person’ is dead, the
rights simply go to the person’s personal representatives by operation of law.
They go to the ‘person’s’ estate. ...”
“(I) The appeal to convenience also fails. First, because,
before the CDPA, the right to prevent infringements already existed and fell
into a deceased performer’s estate (Rickless). So the supposed problem was a
problem already. Secondly, because in any event such inconveniences are
possible in this area of the law ‑‑ the same must have happened when ordinary
copyright was extended by 20 years following implementation of the Term Directive,
for instance. And, thirdly, if no‑one can be found to be asked for a clearance,
recourse can be had for a permission to be granted by the Copyright Tribunal.
This, for instance, happened in the case of a long dead performer of the
original production of ‘Under Milk Wood,’ see ex parte Sianel Pedwar Cymru
[1993] E. M. L. R. 251.”
“Accordingly I reject the ‘dead performer’ point so far as
the unamended CDPA is concerned. The Act was passed to protect the economic
interests of performers ‑‑ their estates, whether they are alive or dead, form
those interests.”
“Strictly that is an end of this whole point, for
[Defendants] conceded that, if the unamended Act conferred rights in respect of
pre‑Act deceased performers, the later amendments did not take them away. ...”
The Court then discusses the effects of the amended
provisions of the CDPA and how TRIPS might affect this case.. “Both the Term
and R R Directives were passed in the early nineties, followed by TRIPS in
1994. Both sides accepted that the amended legislation must be interpreted so
as to conform to all three of these instruments unless this was quite
impossible on the language used.”
“It is trite that this must be so in the case of Directives.
Why it is so in the case of TRIPS calls for a little more explanation. The
World Trade Organization (WTO), of which TRIPS forms part, is primarily a
Treaty between nations across the globe. But the EU was also a party to it. The
WTO Agreement is to be regarded as a Community Treaty as defined in § 1(2) of
the [UK’s] European Communities Act 1972. This makes it fall within § 3(1)
which says: ‘For the purposes of all legal proceedings, any question as to the
meaning or effect of any of the Treaties, or as to the validity, meaning or
effect of any Community instrument, shall be treated as a question of law (and,
if not referred to the European Court of Justice (ECJ) [under Article 234EC] be
for determination as such in accordance with the principles laid down by, and
any relevant decision of, the [ECJ).’”
“The ECJ’s principles of interpretation require that
European Legislation (including the two Directives in play here) be interpreted
so as to conform to EU Treaty obligations. So the Directives (and hence our
implementing legislation) should be interpreted so as to conform to TRIPS .
That is not to say that TRIPS itself creates rights in Member States or the EU.
It does not.”
“... TRIPS ... builds on Berne, which applies only to
‘ordinary copyright’ (literary, musical and artistic works). For performing
rights, Art. 14 lays down requirements. They follow Rome 1961. Importantly,
Art. 14(6) says that the provisions of Art. 18 of Berne shall apply mutatis
mutandis to performers’ rights.”
“So what does Art. 18 of Berne call for? It says that the
Convention applies to all works which, on its coming into force, have not yet
fallen into the public domain in the country of origin through the expiry of
the term of protection. The only exception is where a work has fallen into the
public domain in the country where protection is claimed. By virtue of Art. 14
of TRIPS this rule also applies to performers’ rights.” [ ¶¶ 23‑30].
“Now it is not suggested [by Defendants] that rights in Jimi
Hendrix’s performances ever fell into the public domain through expiry of a
term of protection. The argument is that they ceased because the 1988 Act did
not confer any rights in respect of dead performers.”
“The upshot of all this is that, if the Directives and our
implementing Acts deny protection to a performance on the grounds of the death
of its performer, they will be in breach of TRIPS Art. 14. That is wholly
improbable.”
Defendants base their main argument on the RR Directive.
“[Their attorney] made two basic submissions, first that the Directive was a
harmonizing directive. The second and main submission was based particularly on
Recitals (7) and (8): ‘(7) Whereas the creative and artistic work of authors
and performers necessitates an adequate income as a basis for further creative
and artistic work, and the investments required particularly for the production
of phonograms and films are especially high and risky; whereas the possibility
for securing that income and recouping that investment can only effectively be
guaranteed through adequate legal protection of the rightholders concerned;
...’”
“The argument is that Recital (7) not only sets out the
purpose of a performing right but thereby limits its extent. The identified
purpose is to secure an ‘adequate income as a basis for further creative work’
and that is all. Once a performer is dead he is no longer capable of further
creative work. Hence no rights need be created pursuant to this Directive in
respect of already dead performers. ...” [¶¶ 32‑36]
The Court, however, rejects the second, and main submission,
on the grounds that [Defendants] read far too much into the recital. “If [they]
were right, not only would the dead be excluded, but also those incapable of
further performance. And what about amateurs and those who have retired? Does
the Directive call for an examination by doctors to see if a performer can
still perform, or a questionnaire to a performer who has retired asking whether
he is thinking of a come‑back? All this shows the non‑viability of the
argument.” [¶ 29]
“Most formidably, recital (10) stands in [Defendants’] way.
It says: ‘(10) Whereas the legislation of the Member States should be
approximated in such a way so as not to conflict with the international
conventions on which many Member States’ copyright and related rights laws are
based.’ So there is to be no conflict with international conventions. One of
these is Rome 1961 ....”
“Now Rome 1961 requires both a civil right for performers
and a minimum term of 20 years. And it had so required for many years (in the
case of the UK from the 1964 accession). If the RR Directive forbade protection
in respect of performances by performers dead at implementation of the
Directive, it would involve a breach of Rome 1961. ...”
Moreover, the Court notes, though the RR Directive does not
refer to TRIPS, [that] could not have happened since TRIPS had not yet been
finalized. “... Art. 13 of the Directive contains language taken from a draft
of TRIPS in circulation at the time. It is inconceivable that the Council of
the EU would have made a Directive incompatible with the requirements of the
shortly to be agreed TRIPS. I refuse to construe it so, yet that it what
[Defendants’] argument would require.” [¶¶ 43‑45]
“Finally, I come to the [CDPA] as amended. It should be
construed in accordance with the RR and Term Directives and TRIPS . Having
already looked at these, it is hardly necessary to look at the amended Act. The
arguments before us, rightly in my view, reflected that. My own analysis of the
Act before amendment covers all the essential ground. Accordingly, ... I reject
the dead performer argument.”
The Court then addresses the “qualifying country” issue
which applies only to performances that Mr. Hendrix had given in Sweden and the
U.S. [Defendants] conceded that, if their position was sound, it would put the
UK in conflict with TRIPS and in breach of the EC treaty. This Court demands
strong, unequivocal language to reach such a conclusion.” [¶¶ 53, 54]
“The heart of the [Defendants’] argument lies in the use of
the present tense ‑‑ ‘is given’ or ‘takes place.’ [Defendants] submit that, to
be protected, a performance must have been in a qualifying country at the time
of the performance or have been given by a person who was a qualifying
individual at that time. So far as the UK performances are concerned, the
condition was satisfied at the time. But not so for Sweden or the U.S.A. Hence
these performances are not protected.”
“I reject the argument for three reasons. It makes no sense
as a matter of construction. It involves ignoring the whole way in which the
international system of copyright recognition works. And it involves a
derogation from TRIPS and a violation of the EC Treaty. All that is supposed to
come about because of the use of the present tense. You need lots more than
that for such profound effects.”
“As a matter of construction, one cannot really read the
tense as meaning the present at all. The whole point is protection for past
performances. ‘Is’ in context must mean ‘was,’ and ‘is given’ must mean ‘was
given.’”
“Moreover, the Act expressly applies to pre‑commencement
performances (§ 180(3)). Yet before the Act, no country was a ‘qualifying
country’ as defined in the Act save for the U K and the then existing members
of the EEC. So if the country had to be qualifying at the date of the
performance, § 180(3) would be denied any effect for all other countries. That
cannot be so.”
“... [B]y virtue of TRIPS Art. 14, the system applies to
rights in performances. Art. 18 of Berne requires that protection is conferred
in respect of past works when a country accedes to Berne.”
See the description by Ricketson and Ginsburg International
Copyright and Neighbouring Rights, 2nd Edn. at § 6.117: ‘ ... The obligation to
protect other Union works also extends to works which the new member had once
protected but which now are in the public domain because the new member’s prior
term of copyright protection was shorter than the Berne minimum term. Equally
importantly, the obligation to provide or restore copyright protection applies
to previous Berne members with respect to works from the newly acceding state.
...”
“So [Defendants’] argument, if right, would involve a breach
of TRIPS. It would involve breach of the EU Treaty too. Consider a 1969
performance. If in the UK or any Member State of the EEC as it was at the time
of the performance (the original six), there would be protection. But there
would be none for performances in subsequently acceding states (e.g. Sweden or
Ireland). This would infringe Art. 12EC which forbids discrimination on the
grounds of nationality. The same argument applies, mutatis mutandis, in
relation to the nationality of a qualifying performer.” [¶¶ 56‑62]
“Accordingly I think the ‘qualifying country’ point fails
too.” [¶ 64] The other two members of the Court agree. Since both the U.S. and
Sweden had become ‘qualifying countries’ for the purpose of the 1988 CDPA by
the time the infringement took place, it was irrelevant whether or not they
were qualifying countries at the time of the live performances. Since the Court
also agrees that Defendants were not entitled to summary judgment in this case,
it dismisses their appeal.
Citation: Experience Hendrix LLC v. Purple Haze
Records Ltd., [2007] E.W.C.A. Civ. 501; 2007 WL 1484095 (CA (Civ. Div.) May
24).
**** Terik Hashmi is a business consultant serving businesses in the marketing realm. Among his clients are a medical service provider and an Online Reputation Management company. - Attorney Website at: https://terikhashmiattorney.com/ - Attorney Profile at: https://solomonlawguild.com/terik-hashmi%2C-esq# - Attorney News at https://attorneygazette.com/terik-hashmi%2C-consultant#eec97f53-49a0-4c94-869a-4847514cb694