England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (INTELLECTUAL PROPERTY)
The Hon Mr Justice Park
HC05 C02459

		Royal Courts of Justice Strand, London, WC2A 2LL
		24/05/2007

Lord Justice Jacob:

1. The Copyright Designs and Patents Act 1988 (the "CDPA") came into effect on 1^st August 1989. It 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. But what if he or she had died by then (the "dead performer" point)? And what if the place of performance was in a country which only became a "qualifying country" after the date of the performance although it was a "qualifying country" at the time of the alleged infringement (the "qualifying country" point)?
2. These are the two main questions which arise on this appeal from a decision of Park J, [2006] EHWC 968 (ch), [2006] EMLR 25. There is also a third point, special to this case, about whether certain factual matters are fit for summary judgment (the summary judgment point). Given our conclusions, all other questions (including whether we should grant permission to appeal the decision of Hart J [2005] EWHC 249 (ch) [2005] EMLR 18) fall away. Hart J had decided the qualifying country point in favour of the claimants in an earlier, related case. Park J agreed with him on that. The dead performer point was not raised before Hart J.
3. Unless the appellants win on at least one of the three points, it is common ground that this appeal must fail.

The Facts

4. Jimi Hendrix was a US citizen who became a famous innovative rock guitarist in the late 60s. He died on 18^th September 1970, domiciled in New York State. The performances with which this case is concerned took place in the UK, Sweden and the US in the years from 1967 to 1970.
5. Subject to the summary judgment point, there is now no dispute that if there are performer's rights in these performances they are owned by the claimants. It is not necessary to say any more about the facts at this stage.

The relevant legislation, Directives and international treaties generally

6. The case actually turns on the provisions of the CDPA as amended. However the arguments of both sides involved a lot more by way of background treaties and Directives than just these provisions. Here I just list the most important of these along with the abbreviations I will use. In the Appendix I set out the relevant provisions of each instrument which is relevant, save where it has been more convenient to include it in the present text. In some cases the legislation has been replaced and re-enacted but nothing turns on this and I do not need to set out any of this material. Nor do I cite or refer to other material cited to us but which is not necessary for this decision. What is necessary is quite enough.
7. The Berne Convention for the Protection of Literary and Artistic Works 1886 as amended (the Paris Act, 1971) ("Berne"). The provisions with which we are concerned date back to the Rome Act of 1928

The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (1961) ("Rome 1961")

The Agreement on Trade-Related Aspects of Intellectual Property Rights which forms Annex 1C to the WTO Agreement signed at Marakesh (1994) ("TRIPS")

The Treaty Establishing the European Union ("EU Treaty")

Directive 92/100/EEC on rental rights and lending rights and on certain rights related to copyright in the field of intellectual property ("RR Directive")

Directive 93/98/EEC harmonising the term of protection of copyright and certain related rights of 29 October 1993 ("Term Directive").

8. Besides these instruments there are also the Statutory Instruments made under the powers conferred by s.2 of the European Communities Act 1972 by which the CDPA 1988 was amended so as to comply with the RR and Term Directives. They are the Copyright and Related Rights Regulations 1996 (SI 1996/2967) and the Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297).

Rome 1961

9. This requires signatory states to confer rights in respect of performances. The UK acceded to this in 1964, having passed the Performers Protection Act 1963 for this purpose. Of particular significance is that by Art.7 the Treaty required a civil remedy for performers (see below), and by Art 14 it required a minimum term of protection of 20 years from the end of year of the performance.

Performers' Rights in the UK before the CDPA

10. The pre-1988 legislation consisted of the Dramatic and Musical Performers' Protection Act 1958 as amended by the Performers' Protection Act 1963. Under these, unauthorised recording of a performance and sale of such recordings was a criminal offence. During the 1970s and 1980s attempts were made in the civil courts to enforce the Acts. They met with varying degrees of success. The basic argument was that the Acts were intended to protect a particular class of person (i.e. performers) and that accordingly a member of the class had a private right to sue for breach of statutory duty. Attempts were made to extend the argument so that a record company which had an exclusive contract with a performer could also sue.
11. RCA v Pollard [1983] Ch 135 was a claim solely by such a record company. It failed on the simple basis that whether or not performers had a right of action, the recording companies with whom they had exclusive contracts did not. However the court also cast doubt on whether performers themselves had a right of action in the civil courts, see per Oliver LJ at p.150.
12. Pollard was expressly considered in the White Paper leading to the CDPA. It concluded:

New legislation will therefore provide that in respect of trading in unauthorised sound recordings and films of a protected performance, civil remedies, such as injunctions and damages, will be available, both to the performer and to any person (including a record or film company) to whom the performer has granted an exclusive contract.

13. After the White Paper, but before the Bill preceding the CDPA was presented, this court decided Rickless v United Artists [1988] QB 40. The personal representatives of Peter Sellers were held to have a civil cause of action by virtue of the Acts against the makers of a film who, without his or his personal representatives' consent, used recorded material of his performances for Pink Panther films made with his consent to make a further such film for which consent had not been given.
14. Sir Nicholas Brown-Wilkinson V-C gave the leading judgment. The other members of the Court agreed with him on the interpretation and effect of the Performers' Protection Acts. He concluded that, notwithstanding the contrary suggestion in RCA, performers did have a civil right of action for breach of the Acts. And that such a right devolved on a dead performer's personal representatives.
15. Two parts of his reasoning are relevant here. First he 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 unauthorised recording (Art. 7(1)). So if the UK provided no civil remedy then it would be in breach of the convention. That was unlikely.
16. Second he rejected an argument to the effect that no rights lay in the personal representatives of dead performers or that they could not give any consent. In so doing he rejected an argument that the legislation was merely to encourage performers for the future of performers so that, once dead, they needed none. He said (p.56):

"Like the judge, I consider that the Act of 1958 was not passed just to protect the performer's interests by prohibiting the reproduction of a performance which might damage the performer's chances of getting further employment. The Act is to protect performers generally. Although the protection of his reputation and future employment is important, so is the protection of a performer's economic interests by ensuring that he is paid for the use of his performance."

17. So Rickless clearly establishes that Jimi Hendrix, prior to then, had a civilly enforceable right to protect them. And that that right would have devolved on his personal representatives. If Mr Turner's contentions for the defendants are right, the 1988 Act took away such a right for the future. Although possible, this seems unlikely.
18. I also think it right to assume that Parliament (perhaps in reality the policy makers advising on the Government Bill) would have been well aware of Rickless. Not only were they already aware of Pollard as the White Paper shows, but Rickless would have been well-known to all lobbyists and others concerned with the passing of the legislation. This makes it even more unlikely that, by a sidewind, Parliament meant to take away the rights of dead performers. If there had been an intention to remove Rickless rights for the future there would have been explicit provision to achieve this.
19. It is still less likely given that Parliament expressly considered the period during which such rights should subsist – 50 years from the year of the performance (s.191). If the rights were to subsist only in the case of performers who were still alive when the Act came into force, surely the Act would have said so. And surely a sharp dividing line between those who survived, even by one day, the coming into force of the Act, and those who did not would have been spelt out if that was intended.
20. And all the more so since that would have meant a deliberate derogation from Rome 1961, pursuant to which the UK had been under a continuing obligation from its accession in 1964 to confer a civil remedy. As I have already noted Rome 1961 provided for a minimum term of 20 years from the end of the year of fixation (see Art.14). That term was in no way dependent on whether the performer lived or died – what mattered was when the performance occurred. Taking away Rickless rights for the future could, depending on the date of performance, give a shorter term than 20 years.

The CDPA before amendment

21. 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. Mr Jonathan D.C. Turner submits that nonetheless it had 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 performer's personal representatives.

22. He relied on the old case of Lauri v Renad [1892] 3 Ch 402, for the proposition that an Act should not be construed as applying to pre-Act events in the absence of a clear indication to the contrary. I put that case on one side at once. It was concerned with an argument that the International Copyright Act 1886 had revived expired copyrights. There were no transitional provision and the effect of a revival would have been to turn some past lawful acts into infringements. Nothing like that is present here. On the contrary the CDPA is expressly retrospective subject to a qualification about past acts and arrangements (see s.180(3)). No-one can be turned retrospectively into an infringer or criminal – there is no "hard" retrospectivity as Mr Turner called such cases.
23. Mr Turner also raised a convenience argument. How difficult, he submitted, 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.
24. 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), s.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 s.180 falls. The principal operative sections are headed Performers' rights, Rights of person having recording rights, Exceptions to rights conferred, Duration and transmission of rights: consent, Remedies for Infringement, Offences and so on. 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) ss. 191-193 (which deal with "duration and transmission of rights; consent") are hardly likely to have taken their present form if Mr Turner was right. S.191 makes rights "continue to subsist until the end of the period of 50 years from the end of the [year of performance]". Mr Turner submits 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 s.192 about transmission on death (a provision which again shows the draftsman having considered the effect of death).

(f) The very form of s.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 s.180(1) entirely. I see no reason to read the rest of the subsection as having more effect. It is telling the reader what he will find if he moves on – rights conferred on a performer by going to ss.181 to 184, on a person having recording rights by going to ss.185-184 and offences by going to ss.198 and 201.

(g) s.180(3) is also phrased oddly if Mr Turner is 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 s.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. Exactly the same will have occurred to ordinary copyrights extended (and in cases of authors dead for 50 but less than 70 years) when the copyright term was extended pursuant to the Term Directive.

(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] EMLR 251.

25. 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.
26. Strictly that is an end of this whole point, for Mr Turner conceded that if the unamended Act conferred rights in respect of pre-Act deceased performers, the later amendments did not take them away. But it would not be right not to consider the amendments in view of the detailed argument we heard.

The position under the CDPA as amended

How TRIPS applies

27. Before coming to the amended provisions, their background must be understood. Both the Term and RR 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.
28. 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 WTO, of which TRIPS forms part, is primarily a Treaty between nations across the globe. But the EU was also a party to it. And by SI 1995 No. 265 the WTO Agreement is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972. This makes it fall within s.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, be for determination as such in accordance with the principles laid down by and any relevant decision of the European Court).

The ECJ 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, see e.g. Dior Joined cases C-300/98 and C-392/98.

TRIPS and performers' rights

29. So the next thing to do is to see what TRIPS requires in relation to performing rights. It 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.
30. 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.
31. Art. 70(2) of TRIPS confirms the position, see the second sentence.
32. Now it is not suggested 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.
33. 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.

The RR Directive

34. It is upon this that Mr Turner based his principal argument. He made two basic submissions, first that the Directive was a harmonising Directive. The second and main submission was based particularly on Recitals (7) and (8).
35. I must elaborate the second submission, for which it is necessary to set out the recitals relied upon:

(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;

(8) Whereas these creative, artistic and entrepreneurial activities are, to a large extent, activities of self-employed persons; whereas the pursuit of such activities must be made easier by providing a harmonized legal protection within the Community;

36. 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. To do so would be to go beyond its purpose. And the Directive should not be construed to go beyond that purpose.
37. Thus, he submitted, the only performers to which the Directive applies are those capable of further performances. So wherever the Directive speaks of a "performer" it means a live person, the dead being incapable. It follows that the obligation on Member States to provide protection for performers (the "fixation right" called for by Art. 6.1, the reproduction right called for by Art. 7.1, the broadcasting and communication to the public right called for by Art. 8.1 and the Distribution Right called for by Art. 9.1) is limited to live performers.
38. The first submission is then called into play. Because the Directive is harmonising, Mr Turner submits, Member States may not provide more protection than is required by the Directive.
39. I do not accept the second, and main submission. Mr Turner reads far too much into the recital. If he 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.
40. Mr Turner sought to deflect that, saying only death provided the necessary certainty. That is just not so. And if the recital was intended to mean that the performer had to be alive at the date of implementation, it would have said so. It is miles from doing that.
41. I think the recital is to be read as no more than a general justification for conferring rights on performers. It is not to be read as defining, specifically as limiting, those who are to be granted rights.
42. Mr Turner's submission runs into other difficulties too. For instance rights are to be given to record companies (dealing with the Pollard problem, which had been addressed in the unamended CDPA). What about a record company which had invested in a performance but found that the performer died shortly thereafter? Is its protection to die too? Or does the Directive contemplate the record company's rights continuing? If so would it have to pay the widow or could it deny liability on the basis she had no rights to devolve upon her?
43. Most formidably recital (10) stands in Mr Turner's 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 (which is indeed specifically referred to in the context of presumptions in recital (19)).

44. Now Rome 1961 requires both a civil right for performers and a minimum term of 20 years (see above). 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. Recital (10) says the opposite – compliance with international conventions is intended.
45. Moreover although TRIPS is not referred to in the RR Directive and cannot have been since it had not yet been agreed, it is clear that those who drafted the Directive were aware of the TRIPS negotiations which were going on at the time. 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 Mr Turner's argument would require.
46. In the circumstances it is not necessary to go into Mr Turner's harmonisation point. I merely record that it could run into trouble with the curious Recital (20):

(20) Whereas Member States may provide for more far-reaching protection for owners of rights related to copyright than that required by Article 8 of this Directive;

Mr Arnold suggested that the Recital allowed more far-reaching protection in respect of a related right. Mr Turner disputed that. The language could mean either and I prefer not to express an opinion on it.

The Term Directive

47. This requires harmonisation of the term of ordinary copyright, putting it up from 50 to 70 years from the year of death of the author by Art. 1. So far as performers' rights are concerned, Art. 3(1) provides a basic rule that the term shall be 50 years from the end of the year of the performance. But there is an exception: the period will be longer if there is lawful publication or communication to the public within that basic period. If so the period expires 50 years after such first publication or communication. In the case of a sound recording of a performance, for example, the period expires 50 years from the date when a record of that performance was first issued to the public.
48. The basic rule was all that was in the unamended CDPA. So amendment to comply with the exception was called for and duly made by a statutory instrument.
49. What is important for present purposes is there is no mention of expiry of any performer's right on death. The focus is solely on the date of the performance or publication or communication of copies. This is not of course conclusive, but is another pointer to the conclusion that the term of a performer's right is unrelated to the date of his death.

The CDPA as amended

50. Finally I come to the Act 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.
51. Perhaps the only extra point worthy of mention is that based on the SI 1996/2967 implementing the RR Directive. Park J summarised the point and his answer to it:

[39(viii)] One of the transitional provisions of the Regulations, namely regulation 30, could be significant in the context of the dead performer argument. It is set out in one of the paragraphs of Hart J's judgment which I quoted earlier, but for convenience I will repeat it here. The reference in it to a 'new right' includes the rights under ss.182A and 182B. 'Commencement' means 1 December 1996. I italicise the words which could be significant for present purposes.

"30(1) Any new right conferred by these Regulations in relation to a qualifying performance is exercisable as from commencement by the performer or (if he has died) by the person who immediately before commencement was entitled by virtue of section 192(2) to exercise the rights conferred on the performer by Part II in relation to that performance."

On the face of it, s.192(2) provides, so far as the facts of this case are concerned, that the performer's rights are exercisable by Jimi Hendrix's personal representatives. As Mr Arnold submits, regulation 30 expressly contemplates a case where the performer has died before the commencement of the provision which is alleged to have been infringed. Mr Turner's response is that regulation 30 only applies in a case where the performer was alive on 1 August 1989 (the date of commencement of the original Part II of ) but has died before 1 December 1996. On that basis the regulation does not apply to a performer who, like Jimi Hendrix, had died before 1 August 1989. I cannot say that that interpretation is impossible, but it is certainly not made explicit by the regulation, and in my opinion it is unlikely to be correct.

52. I cannot fault that or indeed express it better – save perhaps that the word "unlikely to be correct" understates the point. It is near fantastic to suppose that Parliament meant to cater only for performances of those who had died between coming into force and amendment of the Act.
53. Accordingly, like Park J, I reject the dead performer argument.

The qualifying country point

54. I turn to the qualifying country argument, one that has been rejected by both Hart J and Park J. Mr Turner conceded that if it was right, the UK would be in derogation of TRIPS and in breach of the EC treaty. So it would need strong unequivocal language to reach such a conclusion.
55. I begin by outlining the argument. It relates only to those performances which Jimi Hendrix gave in Sweden and the US. S.181 of the Act (unaffected by amendment) reads:

A performance is a qualifying performance for the purposes of the provisions of this Part relating to performers' rights if it is given by a qualifying individual (as defined in section 206) or takes place in a qualifying country (as so defined).

s.206 (also unaffected) reads

In this Part:

- 'qualifying country' means:

(a) the United Kingdom,

(b) another member State of the European Economic Community, or

(c) to the extent that an Order under section 208 so provides, a country designated under that section as enjoying reciprocal protection;

- 'qualifying individual' means a citizen or subject of, or an individual resident in, a qualifying country;…

56. The heart of the argument lies in the use of the present tense – "is given" or "takes place." Mr Turner submits 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 USA. Hence these performances are not protected.
57. 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. I elaborate on the three reasons.
58. As a matter of construction one cannot really read the tense as meaning the present at all. The whole point is protection is for past performances. "Is" in context must mean "was," and "is given" must mean "was given."
59. Moreover the Act expressly applies to pre-commencement performances (s.180(3)). Yet before the Act no country was a "qualifying country" as defined in the Act save for the UK and the then existing members of the EEC. So if the country had to be qualifying at the date of the performance, s.180(3) would be denied any effect for all other countries. That cannot be so.
60. Next the Berne system of recognition and TRIPS. As I have said, by virtue of TRIPS Art. 14 the system applies to rights in performances. And as I have already said Art. 18 of Berne requires that protection is conferred in respect of past works when a country accedes to Berne. The position is described more fully by Ricketson and Ginsburg International Copyright and Neighbouring Rights, 2^nd Edn.at 6.117:

"When a new member state accedes to the Union, it must accord copyright protection to works from other Union members if those works remain under copyright in their Cos [country of origin]. This applies to foreign Berne works which never enjoyed copyright protection in the new member state, for example, because the new member previously had no copyright relations with other Union members, or because the new member had imposed formalities with which works from other Union members had not complied. 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. Thus, if the newly acceding state had no prior copyright relations with a longer-standing member state, not only must the new member extend copyright protection to works from the old member, but the old member must now provide coverage to works from the new member. Similarly, if works from the new member fell afoul of formalities that the old member imposed on works from non-Union states (as a Berne member it would have been prohibited from requiring Union works to comply with such conditions), the old member must now restore copyright in those works as well."

61. This retrospectivity does not mean that someone could later be made into an infringer for what, when it was done, was lawful. That is for the simple reason that you have to ask whether the person or country was qualified at the date of the alleged infringement. Mr Turner so accepted in the course of argument, withdrawing his submission that this was a case of "hard" retrospectivity.
62. So his argument, if right, would involve a breach of TRIPS. It would involve a 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. 12 EC which forbids discrimination on the grounds of nationality. The same argument applies, mutatis mutandis, in relation to the nationality of a qualifying performer.
63. The ECJ's ruling in Tod's v Heyraud Case C-28/04 confirms this:

Art. 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work

64. Accordingly I think the "qualifying country" point fails too.

The summary judgment point

65. Mr Turner submits that Park J wrongly held that the defendants had "no real prospect of defending" the claim (CPR 24.2). Park J summarised the argument thus:

[49] This argument, if correct, would accept that performer's rights exist in Jimi Hendrix's live performances, but would mean that the rights are not owned by EH, but rather by Mr Hillman. It will be recalled that the chain of title on which EH relies goes from Jimi Hendrix to his personal representatives, and from the personal representatives (in the person of Mr Leighton-Davis, the English administrator) to EH (by the assignment dated 13 November 2000). The chain of title on which Mr Hillman relies begins with the rights being owned by Yameta, and continues with them passing to Mr Hillman by an assignment made in a board resolution of Yameta on 5 December 1975. In my judgment, however, that chain of title does not stand up to analysis.

[50] The central thesis of the argument is that the contract between Jimi Hendrix and Yameta dated 1 December 1966 was a contract of employment, and that after the employment terminated all rights arising from Jimi Hendrix's services to the employer continued to be owned by the employer, Yameta.

66. So was Mr Hendrix an employee of Yameta? The agreement relied upon, dated 1^st December 1966, says:

1. The Performer [Hendrix] HEREBY APPOINTS the Manager [Yameta] to render and the Manager agrees to render its services or the services of its employees or servants to use its best endeavours in the promotion and furtherance of the career and interest of the Performer in every branch medium and form of the entertainment industry, and the Performer agrees to render to the Manager his exclusive services in respect of all activities of the Performer throughout the world…… for a the period of four years … from the date hereof.

67. Clause 2 begins:

"As compensation for the services herein agreed to be rendered the Performer agrees to pay to the Manager a sum equal to 40% of all gross payments made to the Performer …"

68. Park J said:

[52] The only tenable analysis of the agreement is that Jimi Hendrix is appointing Yameta as his manager. It is true that Yameta is his exclusive manager, and that he must accept and perform the engagements which Yameta makes for him. But it is still his manager, and he is not its employee. It is impossible to analyse the provisions of the agreement so as fit the concept of a contract of employment. I do not doubt that the flow of money went from outside parties (such as concert promoters) to Yameta and from Yameta to Jimi Hendrix, Yameta having deducted its 40% commission on the way. But the payments from Yameta to Jimi Hendrix were not payments of salary or other remuneration from an employer to an employee: they were payments from an agent accounting to its principal.

I think this is concise, elegant and entirely accurate. I cannot do better and there is no point in trying.

69. What I would add, however, is that this agreement clearly has nothing to do with vesting rights in Yameta. The idea, for instance, that the copyright in any musical work composed by Jimi Hendrix would belong to Yameta is absurd. The same must go for rights in performances. This was a point noticed by Hart J.
70. In the face of this, Mr Turner placed reliance on a witness statement by Jimi Hendrix's girlfriend at the time. Park J dealt with this point as follows:

[54] … She gives evidence of a meeting with a representative of Yameta (a Mr Jeffrey) at Mr Jeffrey's apartment. She says that she remembers Mr Jeffrey saying to Jimi Hendrix that he (Jimi Hendrix) would be employed by Yameta. To Jimi Hendrix it was a case of 'Whatever you say.' I cannot attach weight to this. It is wildly improbable that Miss Etchingham can reliably remember anything of that sort forty years after the time when she was a young woman living with Jimi Hendrix, sharing the sort of life he led, and most unlikely to have any interest in or understanding of the contractual arrangements for his activities. In any case, I do not see any conceivable basis on which there can be extracted from the evidence either a representation made by Jimi Hendrix to Yameta that he would be employed by it, or a convention accepted between Jimi Hendrix and Yameta to that effect, and reliance on that representation or convention by Yameta to its detriment. But that is what would be needed to found an estoppel which would be binding against Jimi Hendrix or his successors. In this connection EH is the successor of Jimi Hendrix.

71. Mr Turner says it was wrong for the Judge to reject this evidence on a summary judgment application and that a trial at which it can be tested is necessary. I do not see why. Nor can I see any fault in the Judge saying, as he in effect did, that even if proved it would not provide a defence. It is wholly unrealistic to think that the conversations allegedly remembered amount to a variation of the actual written agreement or could provide an estoppel. Indeed if you take the word "employment" in a purely general sense they are consistent with the written agreement.
72. That is sufficient to dispose of this point. But there are other reasons too, set out in Park J's judgment, for instance the insuperable difficulty of the 1968 agreement which terminated Yameta's rights with effect from 31^st December 1967. It is not necessary to go to them separately, though I agree with all of them.
73. So in my opinion Park J was right on all three points and this appeal should be dismissed.

Lord Justice Toulson:

74. Mr Turner's central arguments on the construction of the were seductively simple.
75. His first argument was about the meaning of the words in s.180 "This Part confers rights on a performer…". He accepted that the word performer must include a person who has carried out a past performance, since s.180 (3) states that "The rights conferred by this Part apply in relation to performances taking place before the commencement of this Part…", but he submitted that on its natural construction the Act did not confer rights on the personal representatives of a past performer who had died before the Act came into force.
76. His second argument was about the meaning of "qualifying country" in ss.181 and 206, the relevant parts of which have been set out by Jacob LJ in paragraph 56. Mr Turner submitted that the natural meaning was that for a country to qualify under paragraph (b) or (c) of the definition in s.206 it must have been a European Member State or a country designated by an Order under s.208 at the time of the performance.
77. I could see considerable force in these points if the legislation were to be construed without reference to its international context or the pre-existing law, but those external considerations drive me to the conclusion that the legislation should be construed as the respondents contend for the reasons so fully explained by Jacob LJ.
78. Mr Turner candidly accepted that his interpretation of "qualifying country" would involve the UK being in breach of TRIPS. I accept Mr Arnold's argument that the appellant's construction of "performer" would also place the UK in breach of its international obligations. To my mind his strongest argument in this regard was based on the Term Directive. Paragraph 18 of the preamble to that Directive recites that "in order to avoid differences in the term of protection as regards related rights it is necessary to provide the same starting point for the calculation of the term throughout the Community". Curiously, the Directive does not then specify in express terms the starting point. Rather, article 3 specifies the date of expiry as 50 years after the date of the performance (or, is a fixation of the performance if lawfully published or communicated to the public within that period, the period of protection extends to 50 years from the date of such publication or communication to the public), but it seems to me that the plain effect is to prescribe the date of the performance as the starting point of the protection which is to apply throughout the Community. Under article 10 there are qualifications to the retrospectivity of the protection, but the qualifications do not assist the appellant. As Jacob LJ has pointed out in paragraph 50, the protection provided by the Directive is unrelated to the date of death of the performer.
79. I also agree with Jacob LJ on the summary judgment point.

Lord Justice Keene:

80. I agree with both judgments.
APPENDIX The Berne Convention

Article 18

Works Existing on Convention's Entry Into Force

(1) This Convention shall apply to all works which, at the moment of 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.

(2) If, however, through the expiry of the term of protection which was previously granted, a work has fallen into the public domain of the country where protection is claimed, that work shall not be protected anew.

(3) The application of this principle shall be subject to any provisions contained in special conventions to that effect existing or to be concluded between countries of the Union. In the absence of such provisions, the respective countries shall determine, each in so far as it is concerned, the conditions of application of this principle.

(4) The preceding provisions shall also apply in the case of new accessions to the Union and to cases in which protection is extended by the application of Article 7 or by the abandonment of reservations.


 


Rome 1961

Article 7

1. The protection provided for performers by this Convention shall include the possibility of preventing:

……

Article 14

The term of protection to be granted under this Convention shall last at least until the end of a period of twenty years computed from the end of the year in which:

(a) the fixation was made–for phonograms and for performances incorporated therein;

(b) the performance took place–for performances not incorporated in phonograms;

(c) the broadcast took place–for broadcasts.

Copyright, Designs and Patents Act 1988 as unamended

PART II

RIGHTS IN PERFORMANCES

Introductory

s.180 (1) This Part confers rights –

...a) on a performer, by requiring his consent to the exploitation of his performances (see section 181 to 184),and

(b) on a person having recording rights in relation to a performance, in relation to recordings made without his consent or that of the performer (see sections 185 to 188),

And creates offences in relation to dealing with or using illicit recordings and certain other related acts (see sections 198 and 201).

(2) In this Part –

"performance" means –

(a) a dramatic performance (which includes dance and mime),

(b) a musical performance,

(c) a reading or recitation of a literary work, or

(d) a performance of a variety act or any similar presentation,

which is, or so far as it is, a live performance given by one or more individuals;

(3) The rights conferred by this Part apply in relation to performances taking place before the commencement of this Part; but no act done before commencement, or in pursuance of arrangements made before commencement, shall be regarded as infringing those rights.

Performers' rights

s.181 A performance is a qualifying performance for the purposes of the provisions of this Part relating to performers' rights if it is given by a qualifying individual (as defined in section 206) or takes place in a qualifying country (as so defined).

Duration of Rights

s.191 The rights conferred by this Part continue to subsist in relation to a performance until the end of a period of 50 years from the end of the calendar year in which the performance takes place.

Transmission of Rights

192 (1) The rights conferred by this Part are not assignable or transmissible, except to the extent that performers' rights are transmissible in accordance with the following provisions.

(2) On the death of a person entitled to performer's rights –

(a) the rights pass to such person as he may by testamentary disposition specifically direct, and

(b) if or to the extent that there is no such direction, the rights are exercisable by his personal representatives;

and references in this Part to the performer, in the context of the person having performers' rights, shall be construed as references to the person for the time being entitled to exercise those rights.

The Rental Right Directive 92/100/EEC

Recitals

(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;

(8) Whereas these creative, artistic and entrepreneurial activities are, to a large extent, activities of self-employed persons; whereas the pursuit of such activities must be made easier by providing a harmonized legal protection within the Community;

(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 right laws are based."

(20) Whereas Member States may provide for more far-reaching protection for owners of rights related to copyright than that required by Article 8 of this Directive.

CHAPTER II

RIGHTS RELATED TO COPYRIGHT

Article 6

Fixation Right

81. Member States shall provide for performers the exclusive right to authorize or prohibit the fixation of their performances.

Article 7

Reproduction right

82. Member States shall provide the exclusive right to authorize or prohibit the direct or indirect reproduction:

for performers, of fixations of their performances,

for phonogram producers, of their phonograms,

for producers of the first fixations of films, in respect of the original and copies of their films, and

for broadcasting organizations, of fixations of their broadcasts, as set out in Article 6(2).

83. The reproduction right referred to in paragraph 1 may be transferred, assigned or subject to granting of contractual licences.

Article 8

Broadcasting and communication to the public

[Details do not matter]

Article 9

Distribution Right

[Details do not matter]

The Term Directive 93/98/EEC

Recital (1)

Whereas the Berne Convention for the protection of literary and artistic works and the International Convention for the protection of performers, producers of phonograms and broadcasting organisations (Rome Convention) lay down only minimum terms of protection of the rights they refer to, leaving the Contracting States free to grant longer terms; whereas certain Member States have exercised this entitlement; whereas in addition certain Member States have not become party to the Rome Convention;

Article 3(1)

The rights of performers shall expire 50 years after the date of the performance. However, if a fixation of the performance is lawfully published or lawfully communicated to the public within this period, the rights shall expire 50 years from the date of the first such publication or the first such communication to the public, whichever is the earlier.

TRIPS

Article 14


Protection of Performers, Producers of Phonograms (Sound Recordings) and Broadcasting Organizations

1. In respect of a fixation of their performance on a phonogram, performers shall have the possibility of preventing the following acts when undertaken without their authorization: the fixation of their unfixed performance and the reproduction of such fixation. Performers shall also have the possibility of preventing the following acts when undertaken without their authorization: the broadcasting by wireless means and the communication to the public of their live performance.

2. Producers of phonograms shall enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.

…

5. The term of the protection available under this Agreement to performers and producers of phonograms shall last at least until the end of a period of 50 years computed from the end of the calendar year in which the fixation was made or the performance took place. The term of protection granted pursuant to paragraph 3 shall last for at least 20 years from the end of the calendar year in which the broadcast took place.

6. Any Member may, in relation to the rights conferred under paragraphs 1, 2 and 3, provide for conditions, limitations, exceptions and reservations to the extent permitted by the Rome Convention. However, the provisions of Article 18 of the Berne Convention (1971) shall also apply, mutatis mutandis, to the rights of performers and producers of phonograms in phonograms.

Article 70

Protection of Existing Subject Matter

1.    This Agreement does not give rise to obligations in respect of acts which occurred before the date of application of the Agreement for the Member in question.

2.    Except as otherwise provided for in this Agreement, this Agreement gives rise to obligations in respect of all subject matter existing at the date of application of this Agreement for the Member in question, and which is protected in that Member on the said date, or which meets or comes subsequently to meet the criteria for protection under the terms of this Agreement. In respect of this paragraph and paragraphs 3 and 4, copyright obligations with respect to existing works shall be solely determined under Article 18 of the Berne Convention (1971), and obligations with respect to the rights of producers of phonograms and performers in existing phonograms shall be determined solely under Article 18 of the Berne Convention (1971) as made applicable under paragraph 6 of Article 14 of this Agreement.

3.    There shall be no obligation to restore protection to subject matter which on the date of application of this Agreement for the Member in question has fallen into the public domain.