England and Wales High Court (Patents Court) Decisions

Before: THE HON. MR. JUSTICE JACOB

1. This is an application for summary judgment and for determination of a point of law pursuant to the provisions of Order 14 and Order 14A respectively. The plaintiffs are a company which provides, inter alia, close protection and security services to Mr Mohamed Al Fayed and his family. The first three defendants are the editor, publishers and printers of The Sun newspaper. The fourth defendant, Mr Murrell, is a former employee of the plaintiff's company.

5. The publicity surrounding the accident has been enormous and unceasing. At various times Mr Al Fayed has made comments about the intentions of his son and the Princess as regards marriage. The defendants say that Mr Al Fayed has told a number of falsehoods in a book entitled "Death of a Princess" published in 1998, in the 8th February 1998 edition of The Sunday Times, in the 12th February 1998 and 31st August 1998 editions of The Mirror Newspaper and in a television programme entitled "Secrets of the Crash" broadcast in July 1998. The defendants summarise what they say are these falsehoods in their skeleton argument:

7. The defendants further say that Mr Al Fayed arranged for employees of his at the Villa Windsor falsely to corroborate the story of the visit (and of an alleged earlier visit). Mr Murrell says that he was asked so to do, that he refused to lie, and that is why he resigned. He says he was entitled so to do and that all question of trust and confidence between him and his former employers was thereby destroyed. He says he was entitled, shortly before his departure, to remove the stills showing the exact timings of the arrival and departure and take them to The Sun. The Sun, after getting Mr Murrell to verify the authenticity of the photographs and of his own position as chief security officer at the Villa Windsor by taking further photographs inside the premises, published copies of the stills on 2nd September 1998. An article by Mr Al Fayed in The Daily Mirror had occurred only two days before. In it, Mr Al Fayed repeated his allegation, amongst others, that the period of the visit was two hours. The Sun and Mr Murrell say that The Sun was entitled to publish these pictures because any copyright that may exist in them is unenforceable by virtue of s.30(2) of the Act, alternatively in the general public interest. No point arises on the originals of the stills: they have been returned pursuant to a consent order.

10. Mr Bloch suggested that this case was similar to that considered by Walton J in Associated Newspapers v News Group [1986] RPC 515. In that case, shortly after the death of the Duchess of Windsor, The Daily Mail had acquired (for a limited period) the copyright in letters passing between the late Duke and Duchess. It was publishing these letters. The Sun acquired copies and was publishing them too, thus seeking to divert readers to itself who might otherwise have gone to The Daily Mail and spoiling The Daily Mail's exclusivity. Walton J had no difficulty in deciding that what The Sun was doing was not "fair dealing". But what Mr Bloch relied upon is what Walton J said in relation to "reporting current events" in the provision of the 1956 Copyright Act which corresponds to the present s.30(2):

11. Mr Bloch said the position was the same here: at the time of publication of the stills in The Sun the visit to the Villa Windsor was over a year old: it was no longer "current". That to my mind takes far too narrow a view of the meaning of "current events". Walton J himself in his example of old material relating to newly blown-up nuclear reactors contemplated just the sort of position that happened here. Only two days before the publication in The Sun of the stills, Mr Al Fayed had again put into the public domain the proposition that there had been a full two hour visit to the Villa Windsor. A report on what actually happened, which is in effect what these pictures were, was entirely topical at the time of publication: Mr Al Fayed had given them fresh impetus. Besides, at the time of publication the events were so much still under discussion that it would be pedantic to regard them as anything other than still "current".

12. I am reinforced in my view by what was said by Walker LJ in Sieben Media v Carlton C.A. Unreported 17th December 1998. In a judgment with which the other members of the court agreed, he said:

3. Accordingly I think that the use made of the stills by The Sun was within the phrase "reporting current events", giving those words wide scope.

13. That does not end the point because there is still the question of whether or not the publication of the photographs was "fair dealing". This case is not like one of those cases where the defendant is seeking to compete with the plaintiff (as in Walton J's case) and no attempt was made to suggest unfairness of that sort. What was said was that there was no need for The Sun to use this copyright work at all - a test of necessity. I do not think that is the right approach. One simply asks "is what the defendant did with this work 'fair'?" It may well be that in some cases what a defendant publishes is completely unnecessary so far as any reporting of public events is concerned. That may take the use outside the scope of "fair dealing". But it by no means follows that a use can only amount to "fair dealing" where it is necessary.

14. Besides, in this case I think The Sun was in the position where it was close to necessary to publish the photographs to refute what Mr Al Fayed said in The Mirror and elsewhere. Mr Bloch said The Sun could have said they had interviewed Mr Murrell and seen the photographs without actually publishing them. Or it could have first told Mr Al Fayed that it had the pictures and challenged him to withdraw his statement. But the former course would not have had anything like the same impact and force as actual publication of the stills. A picture says more than a thousand words. The Sun was showing that it had convincing evidence of the duration of the visit. The latter course would have been to invite pre-emptive legal action.

15. Further, Mr Al Fayed had clearly put into public debate the question of what happened at the Villa Windsor. It was used in part to support a matter which was not only interesting to the public but involving as it did the mother of a future sovereign was genuinely of public interest. The suggestions being made, if true, were of far reaching importance. They even had sinister hints of evil. So if they were false it was equally important that the falsity be exposed as soon as possible. It would have been inadequate for The Sun or Mr Murrell to supply the photographs merely to a relevant proper authority such as the investigating French Judge. By raising the matter in the public forum, in my judgment, Mr Al Fayed made it a "fair dealing" for The Sun to come back in that very forum.

16. Mr Bloch also said that I should view the matter differently because Mr Murrell was paid for the pictures and The Sun expected to make money out of printing the pictures. I suppose both are true. Mr Bloch pointed to what Lord Denning LR said in Initial Services v Putterill [1968] 1 QB 396 (when considering whether an alleged breach of confidence was justified in the public interest):

4. The reality is that the Press often have to pay for information of public importance. And when they publish they will always expect to make money. They are not philanthropists. I do not think that the fact that Mr Murrell was paid and that The Sun expected to make money derogates in any way from the "fair dealing" (or any public interest) justification. Besides, Lord Denning's comment seems to be confined to "scandalous information".

21. The plaintiffs reinforced their argument by reference to the work of learned authors, Laddie, Prescott and Vitoria 2nd Edn., 1995, paras 2.150-2.153. The learned authors hold that there is no general public interest defence to copyright infringement. They also say that in those cases where judges have suggested that there is such a defence, the judges concerned were wrong. Moreover they say, insofar as those judges justified their opinion by reference to earlier cases, those earlier cases do not support them. To some extent, though the point was not at all in issue, Laddie J in Pro Sieben indicated the same view.

24. With that summary of the arguments I turn to examine the cases I begin with that class of case where the courts have denied copyright altogether. No-one disputes that such cases exist, and indeed are of some antiquity. Copyright has been denied on the grounds that the work was grossly immoral, Glyn v Weston Feature Film [1916] 1 Ch. 261 or that it is fraudulent, Slingsby v Bradford Patent Truck. [1906] WN 51, CA Lord Jauncey put the position thus in Spycatcher - AG v Guardian Newspaper: [1991] AC 109

7. Such cases are rare, of course. And there can certainly be dispute if the courts go too far in appointing themselves as moralists (a criticism often levelled at Glyn). But that does not matter for present purposes. The point is that in principle public policy can prevent copyright enforcement completely. Some might say it is a remarkable thing for the courts to take away that which has been given by Parliament.. Yet that is what the courts have done in extreme circumstances. No-one suggests that they were wrong to do so or that one could go back on that now. It is far too late.

25. I now turn to cases where the courts have recognised a less draconion restriction on copyright enforcement, those where the court has merely recognised a defence of public interest in particular circumstances. The first of these is Beloff v Pressdram [1973] RPC 765 at page 783. Private Eye had published a memorandum written by the plaintiff who was an Observer journalist. She sued for copyright infringement. She lost because she did not own the copyright. Ungoed-Thomas J went on to consider the position if it had been otherwise. He clearly formed the view, which was merely obiter dictum, that there is a defence of public interest. He said p.783:

9. Ungoed-Thomas J based his observations primarily on two cases, Initial Services v Putterill [1968] 1 QB 396 and Hubbard v Vosper [1972] 2 QB 369. It is fair to say that neither case really supports those observations.. So far as copyright is concerned, the claim in Initial was not actually framed in copyright at all, though on the facts it seems it could have been so framed. The claim was only for breach of confidence and the case was decided on the basis that the courts will not grant an injunction to restrain a breach of confidence where the alleged breach will result in disclosure of an iniquity (in the case concerned, that the plaintiffs were acting in breach of the Restrictive Trade Practices Act, i.e. were acting against the common weal as specifically set out in a statute). The other case, Hubbard, was framed primarily in confidence though copyright was also asserted. So far as the claim was based in copyright the argument was merely whether or not a statutory defence (fair dealing for the purposes of criticism or review) might apply. There was no discussion or recognition of any wider defence of public interest. On the facts the court simply held that at the interlocutory stage the defence might apply and the balance of convenience was against the grant of an interim injunction.

26. Lion Laboratories v Evans [1985] QB 526 took the defence of public interest much further. The members of the Court of Appeal clearly were of the view that there was such a defence to a copyright claim. They were concerned with a defence to a claim for an interim injunction. But there is nothing in any of the judgments which indicates that the court was confining what was said to any special consideration arising from that fact. What was said could have applied equally at a full trial. And it is clear that the court was not concerned with any point relating to the discretionary nature of an injunction - it was concerned with a complete defence. The defendants had published a document which indicated that there were faults with the plaintiffs' intoximeter which was then in general use. The claim was in breach of confidence and copyright. Stevenson LJ, with whom O'Connor LJ agreed, said that it was right not to draw any distinction between the law of confidence and copyright and that the public interest may afford a "just cause or excuse" for breaking confidence or infringing copyright. Griffiths LJ was even more explicit:

27. Mr Bloch faced up to the fact that Ungoed-Thomas J and Griffiths LJ and to a lesser extent, Stevenson LJ, had formed the view that there was a defence of public interest to a copyright infringement claim. He suggested Lion could be explained on the basis that it was concerned only with the grant or refusal of an interim injunction and accepted that the public interest might be a defence to such a grant. But, as I have said, that is not what any of the Lords Justices in that case themselves said. As to Beloff Mr Bloch said that Ungoed-Thomas J was both obiter and wrong. In both cases he contended that the judges has simply misread the earlier judgments.

28. I have already indicated that I think Mr Bloch was right about the authorities relied upon by Ungoed-Thomas J in Beloff. They do not explicitly support Ungoed-Thomas J's obiter conclusion. Griffiths LJ, who was most explicit on the point in Lion, relied in addition to Fraser, upon Hubbard, Woodward, and British Steel. Mr Bloch demonstrated that two of these cases, Woodward and British Steel were simply not copyright cases at all. And Hubbard turned solely upon a statutory defence - "fair dealing for the purposes of criticism or review." All the Court of Appeal said is that the defence arguably applied and so no interim injunction should be granted. The upshot of Mr Bloch's analysis, which I think is correct, is that in neither in Beloff nor Lion was there any substantial basis in precedent for the judges' conclusions that a defence of public interest existed.

29. However that is not an end of the matter. Lion was referred to with apparent approval in Spycatcher, by Lord Griffiths p.269 and Lord Goff. p.268 It is true that the approval (which in the case of Lord Goff extended to Beloff) was only in the context of confidential information, but it would hardly make sense for it to be so limited: that would mean the law pointing in two opposite directions at the same time This appears all the more so given that both members of the House were alive to the potential impact of copyright law. Thus Lord Griffiths said p.275:

30. It seems to me that judicial authority in England and Wales over the years up to the 1988 Act had, albeit with little basis, been tending towards the recognition of this defence. Whether or not what was said before the 1988 Act (which had no equivalent to s.173(2)) was right, I think the better view is that that provision was intended to recognise a defence of public interest - either by way of refusing to recognise copyright altogether ("preventing enforcement") or by way of a defence in the particular circumstances of the case ("restricting enforcement"). The Act is not merely saying "if there is a defence, it is preserved" - what I earlier called hedging its bets. Nor do I read "restricting enforcement" as limited to witholding an equitable remedy. That is not what it says. In reaching my conclusion I bear in mind that the judicial expressions of opinion in Beloff and, particularly Lion were well known when the 1988 Act was passed. The Act was recognising what had been said by the judges in those cases. I would add this. Once it is conceded, as it must be, that the courts in certain limited classes of case can refuse to recognise copyright altogether, the concession amounts to saying that none of the acts which Parliament has said are infringements are such. If the courts can do that then surely they can do the lesser thing of refusing to recognise a particular act as infringement when that act is in the public interest.

32. It is constructive to consider the view of English law taken in Australia and Canada. Thus Mason J in the High Court of Australia in The Commonwealth of Australia v John Fairfax (1980) 147 CLR 39 said:

13. In so saying Mason J referred to Fraser, Beloff and Hubbard. In Collier Constructions v Foskett (1990) 97 ALR 460; 19 IPR 44 Gummow J concluded that there was no such defence in Australia. He encapsulated the argument against the existence of a public interest defence in the following language:

14. Gummow J fully subscribed to the criticisms of Beloff and Lion in Laddie, Prescott and Vitoria which also form the heart of Mr Bloch's argument. However Gummow J went on to say with characteristic acerbity:

33. In one other Australian case, Acohs v R. A. Bashford Consulting 9th May 1997 , Merkel J also formed the view that the English cases had established a public interest defence and that Parliament had chosen to recognise this. He said:

34. In Canada the Federal Court of Appeal, relying inter alia on Hubbard and Beloff, also took the view that the English cases established the existence of a defence of public interest. Mahoney JA, with whom Heald JA and Ryan JA agreed, said:

16. Turning to academic authors, I have already indicated that Laddie, Prescott and Vitoria support Mr Bloch. On the other hand Professor Dworkin and Mr Taylor take the opposite view as pointed out by Gummow J. So also does Professor Cornish. He said: Intellectual Property 3rd Edn., 1996.

17. Professor Cornish's two kinds of public policy grounds are those involving "the policy against legal protection", e.g. because it is obscene or deceptive, and the "policy favouring dissemination" such as was recognised as potentially existing in Beloff.

35. Furthermore the current edition 14th edn., 1999 of Copinger also accepts that the defence exists. The authors say:

36. I must deal a little more with Mr Bloch's submission that cases where the courts have refused injunctions it has been on the basis that injunctions are equitable remedies only. As I have said none of the authorities I have mentioned so far have been founded on this principle, although it is true that Sir Nicolas Browne-Wilkinson VC in Stephens v Avery [1988] FSR 510 accepted the principle that a court of equity will not enforce copyright. Mr Bloch submitted that even if all equitable relief was refused on the basis of public interest, his client was entitled to at least nominal damages. I reject that. It seems to me that the whole question of nominal damages is at the end of this century far too legalistic. A plaintiff who recovers only nominal damages has in reality lost and in reality the defendant has established a complete defence. So in my opinion if equity prevents relief on the grounds of public interest, it in substance provides a complete defence to the entire claim. Certainly that is how Lord Jauncey appears to have seen the position in Spycatcher in the passage I have quoted. He regarded equity as intervening completely.

38. Finally I must also deal with the suggestion that a public interest defence would involve judges in matters of public controversy and make the law uncertain. I do not agree. Given that no-one quarrels with the Lion defence of "just cause or excuse" so far as breach of confidence is concerned, I do not see why the position is any different or worse in respect of copyright. Recognition of a public interest defence to breach of copyright has not had the effect suggested thus far. Besides it may well be that balancing the "freedom of expression" conferred by Art.10 of the ECHR and the "right to respect for private life" conferred by Art.8 will involve the judges in just the same or a similar sort of exercise as is involved in judging whether there is a public interest defence. I say no more about the ECHR in the context of this case, because neither side argued its case by reference to it.

40. Mr Bloch said that, even if there is a public interest defence, disclosure in The Sun newspaper was not justified. And all the more so because Mr Murrell was apparently paid a sum of money, the amount of which is not as yet known. (I should incidentally say that Mr Bloch sought a specific order for disclosure of the sum paid which I refused although doubtless the sum will emerge in the ordinary course of discovery and be subject to the usual discovery rules). However what I have said in relation to "fair dealing" applies equally to the defence of public interest. Publication was justified.

18. Mr Bloch suggested that The Sun knew it was infringing copyright and so acted flagrantly, and that it did so intending to get and getting a benefit. So the case came within the provision. But this overlooks the fact that additional damages are discretionary ("may .. award"). Even if there is no complete public interest or statutory defence, Mr Bloch himself concedes that public interest is a defence to a discretionary remedy. I would have held that additional damages be not awarded on the ground of public interest.