English High Court exterminates Daleks claim

In JHP Ltd v BBC Worldwide Ltd & Trustees of the Estate of Terry Nation the English High Court grappled with a claim that JHP Ltd was the owner of copyright in certain books that had been published in the 1960s relating to the Daleks and the BBC had infringed the copyright in those books by incorporating material from them in its own book in 2002 - The Dalek Survival Guide.

In order to determine whether JHP Ltd could succeed, the court first had to consider and construe a number of agreements that were entered into by Terry Nation (the individual who created the Daleks) and the predecessor of JHP, a company called Souvenir. There were three relevant agreements. The first was dated 7 May 1964 and related to a book provisionally entitled The Daleks Book. The second was a letter dated 12 March 1965 by which Terry Nation's agent accepted the same terms for a further book provisionally referred to as The Dalek Annual No.2. The third was a formal Memorandum of Agreement dated 14 July 1965 relating to a further book provisionally called The Dalek Pocket Book and Space Travellers Guide.

After carefully analysing the three agreements, Mr Justice Norris found that they constituted limited licenses to publish the three books to which they related. In other words, they did not constitute assignments of the respective copyright in the three works.

This finding raised the second key issue for determination, namely whether, given that JHP as exclusive licensee of the right to publish the books had commenced proceedings against BBC Worldwide in respect of alleged infringements of that right, could BBC Worldwide avail itself as a matter of law of any defences which would have been available had the proceedings been brought against it by the estate of Terry Nation (i.e. the owner of the copyright)? This was important because section 101(3) of the Copyright Designs & Patents Act 1988 (UK) provides that in any action brought by an exclusive licensee the defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner. The New Zealand Copyright Act 1994 contains an identical provision (s 123(3)).

The answer to this question turned on evidence which demonstrated that BBC Worldwide acted in the belief that it had the permission of the Terry Nation estate to use material derived from the texts in which the Nation estate held copyright. BBC Worldwide had approached the manager of the entire Terry Nation catalogue of rights in 2002 (a Mr Hancock) and by July 2002 had obtained from him a "clear and firm understanding" that BBC Worldwide could use material from the three books in question. It followed from this that if the estate of Terry Nation had sued BBC Worldwide in respect of the infringements which were alleged by its exclusive licensee, BBC Worldwide could have successfully defended those proceedings on the ground that it had acquired a licence by estoppel from the estate. JHP's claim therefore failed.

The Daleks case demonstrates two important aspects of copyright law:

First, publishing agreements do not always involve the assignment of copyright in the work that is to be published. There are many reasons why an author may wish to retain ownership in the copyright and only provide the publisher with an exclusive right to publish a work in return for a royalty. As Justice Norris correctly pointed out in this case, an author may wish to do this in circumstances were he is commercialising the relevant work in different media and over a period of time. The lesson to be learned: as a publisher, if you want an assignment of the copyright in the work you intend to publish, make sure that your publishing agreement is expressed clearly to effect such an assignment.

Secondly, an exclusive licensee's rights of action can be curtailed by the conduct of the copyright owner. Accordingly, it is very important to investigate whether the copyright owner may have undermined its own and its exclusive licensee's ability to successfully sue to enforce copyright before commencing copyright infringement proceedings.

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