Scottish Court of Session Decisions

You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> Tayplan Ltd v. D & A Contracts [2005] ScotCS CSOH_17 (28 January 2005)
URL: http://www.bailii.org/scot/cases/ScotCS/2005/CSOH_17.html
Cite as: [2005] CSOH 17, [2005] ScotCS CSOH_17

[New search] [Help]

Tayplan Ltd v. D & A Contracts [2005] ScotCS CSOH_17 (28 January 2005)

OUTER HOUSE, COURT OF SESSION

[2005] CSOH 17

A516/03

OPINION OF LORD KINGARTH

in the cause

TAYPLAN LIMITED

Pursuers;

against

D & A CONTRACTS

Defenders:

________________

Pursuers: Clancy, Q.C., McKay; Burness

Defenders: Johnston; Brodies

28 January 2005

[1] The pursuers are a property development company. One of their projects is a residential development of 60 houses at Castle Drive, West Kilbride. The development includes a semi-detached house type known as D2. The defenders (originally designed as first defenders) are a partnership who wish to develop elsewhere a residential development known as "Muirfield Gate" in Dreghorn. They have lodged a planning application with drawings which show the design for a semi-detached house type known as "Dunlop". In this action the pursuers claim that if the defenders were to develop their site in accordance with these drawings they would infringe copyright in drawings for the house type D2. They seek interdict against the defenders from doing so. When the action was raised the pursuers also sought interdict against a firm of architects and a firm of estate agents (as second and third defenders respectively). At the outset of the debate before me, however, I was informed that all matters of dispute between the pursuers and the firm of estate agents had been settled, and I was informed that an accommodation had been reached with the firm of architects at some point after the debate before me was partly heard.

[2] The matter came before me on procedure roll, when counsel for the defenders advanced argument in support of their first plea-in-law, being a place of "No title to sue". Before rehearsing the arguments advanced, it is appropriate that I record the important averments in the pursuers' pleadings and certain matters which were agreed between the parties in the course of the hearing.

[3] It is averred on record (and was accepted at debate) that copyright in the relevant drawings for house type D2 originally belonged to Murray Watt, "then of Classic Design Partnership", who prepared them. It is further averred that the drawings were instructed in or around April 1999 by Alan Smith, then a director of Braid Homes Limited. It is said that the drawings were to conform to a planning brief which already existed for the site and that Mr Smith understood at the time that the drawings were prepared to his design criteria.

[4] It is further averred that it was agreed by Mr Watt and Mr Smith on behalf of Braid Homes Limited that copyright in the drawings would pass to Braid Homes Limited. In relation to that agreement reference is made to a letter from Mr Watt to Mr Smith dated 18 May and a letter from Braid Homes Limited to Mr Watt dated 19 May, both dates in 1999, the terms of which documents - copies of which were produced for the debate - are held as incorporated into the pleadings brevitatis causa. In the first of these documents, headed with Classic Design Partnership notepaper, Mr Watt, who signs as partner, writes, "Further to our meeting of 11 May 1999 and our subsequent conversation of 18 May regarding the above proposal, I can confirm the following as requested...". Thereafter reference is made inter alia to proposed costs for professional services required to submit both planning and building warrant applications. The letter ends, "I trust that I have interpreted your requirements correctly and look forward to receiving your instructions to proceed." The response dated 19 May 1999 from Braid Homes Limited appears to confirm acceptance of the proposals which had been made. It is also stated, "Once completed the copyright to all designs, drawings, perspectives, layouts and art work relating to the above development will become the sole property of Braid Homes Limited".

[5] It is the pursuers' position on record that these letters, "the oral discussions to which they refer, and the subsequent actings of Mr Watt and Braid Homes Limited created a binding legal contract....". In the course of the debate it was accepted that the letters themselves could not be said to have created an agreement (the second letter falling to be regarded as having contained the offer of a new condition relative to copyright etc.). It was also accepted that the pursuers could not seek to suggest that the contract was completed by reference to previous oral discussions. It was nevertheless argued that the pursuers had made relevant averments of subsequent actings sufficient to indicate that a binding contract, including the proposed condition relating to copyright, was agreed. Reference in particular was made to averments in condescendence 3 to the effect that Classic Design Partnership, on behalf of Braid Homes Limited, submitted Mr Watt's original drawings to the planning department for the purpose of, and resulting in, the grant of planning permission. Reference in this connection was also made to a document dated 10 April 2003, signed by Mr Watt, which purported to assign the relevant copyright to Braid Homes Limited (a document which will be discussed in more detail later). At the end of the day I did not understand counsel for the defenders to dispute (despite certain arguments initially advanced by him) that the pursuers had made averments on this matter at least sufficiently relevant to entitle them to a proof before answer. I should also add that although there is an averment at p.8B to the effect that in terms of the agreement it was agreed that Braid Homes Limited "were entitled to the copyright in Mr Watt's drawings", counsel for the pursuers indicated that there was no intention to imply anything more than an agreement that the copyright would be transferred to Braid Homes Limited. It was not suggested that by this agreement copyright had in fact been transferred.

[6] It is further averred that on 1 March 2000, Alan Smith and Helen Smith, on behalf of Braid Homes Limited, executed an assignation of the copyright in each of the drawings produced by Mr Watt, including both his original and revised drawings for each house type, in favour of the pursuers (who were incorporated on 29 February 2000). A copy of the assignation is produced and referred to for its terms. The document is headed "Letter of Assignation... Assigning all Braid Homes Limited's interest regarding development site... to Tayplan Limited." In the body of the document it is said,

"This letter confirms the Assignation of all interests in the development site... from Braid Homes Limited to Tayplan Limited.

This Assignation is to include all obligations under the missives concluded with the previous owners Mr John Young and family, as well as all rights pertaining to all planning and building consents and copyright of house types... D2... and all drawings and designs thereof, relating to all matters in connection with the proposed development...".

Despite the averment referred to above to the effect that this document amounted to an assignation of the copyright in each of the drawings produced by Mr Watt, it was accepted by counsel for the pursuers that it could not be said to have assigned the copyright in question, Braid Homes Limited themselves not owning the copyright at the relevant date. Nevertheless, it was counsel's submission that this document clearly assigned, in favour of the pursuers, the contractual right which the pursuers claim Braid Homes Limited had, by virtue of the 1999 exchange of letters, to an assignation from Mr Watt of the relevant copyright. Reference in particular was made to the fact that the document purported to transfer all rights pertaining to the copyright in question. Reference was also made to Miller v Muirhead 1894 21 R. 658 where (at p.660) Lord Rutherford-Clark said:

"If I assign a thing which is not mine, I assign all the rights I have to make it mine. If I assign a thing which I have bought, but which remains in the possession of the seller, I assign what is not my property, but I also assign the right to obtain delivery. The law implies that a cedent confers on his assignee everything which is necessary to make the assignation effectual."

The pursuers' submissions to this effect were not, as I understood it, disputed by counsel for the defenders.

[7] The present action was raised on 26 February 2003. It is averred that thereafter:

"On 10 April 2003, as confirmation of the agreement between the parties as to the ownership of copyright in the drawings produced by the Classic Design Partnership, Mr Watt executed an Assignation in favour of Braid Homes Limited of copyright in all drawings for house type D2... together with all accrued causes of action in respect of infringement of that copyright. A copy of the assignation is produced herewith and referred to for its terms. By letters dated 14 April 2003 the pursuers' solicitors intimated the assignation of copyright and accrued causes of action to each of the defenders to this action."

The document itself states:

"We, Ronald W Watt, Chartered Architects, at Seven Roman Road, Balfron, Stirlingshire G63 0PW, formerly Classic Design Partnership, pursuant to an Agreement made in June Nineteen Hundred and Ninety Nine between us and Braid Homes Limited, having their registered office at 92 Newbattle Terrace, Edinburgh, Do Hereby ASSIGN with full title guaranteed to the said Braid Homes Limited and to the Assignees whomsoever, Copyright and all other rights of a like nature conferred under the Copyright, Designs and Patents Act 1988 including all accrued causes of action in respect of infringement of the Copyright, in and to the initial architectural drawings for house types D2 ... for the residential development... and that absolutely for the remainder of the period during which the said rights shall subsist; I hereby waive any right to which I have to be identified as the author of the Plans and any right to object to any variation to or any derogatory treatment of the Plans."

The document bears to be "subscribed by Murray G Watt, Partner, on behalf of the said Ronald W Watt, Chartered Architects...".

[8] It is averred further on record that esto the purported assignation of 1 March 2000 did not convey a valid title to the copyright,

"the assignation dated 10 April 2003 simply completed the pursuers' title (by accretion or ratification) to copyrights to which they were contractually entitled as a result of the 1999 agreement and the assignation of 1 March 2000."

Submissions for the defenders
[9] It was plain that only the owner of copyright had title to sue for infringement. A licensee, for example, could not. Reference was made to Copinger and Skone James on Copyright (14^th Edition), (hereafter referred to as "Copinger"), para.5-190. The critical question was whether the pursuers could be said to have had title at the date of the raising of the action. If they did not, title could not, in general, be acquired later. Reference was made to Bentley v Macfarlane 1964 S.C. 76 and in particular to the passage at p.79 where the Lord President (Clyde) said:

"As McLaren, in his Court of Session Practice at p.189, says... If at the date of raising an action the pursuer has no title to sue, the defect cannot be cured by a subsequent assignation (Compare also the same writer in the same work, p.218). The authority cited for this proposition in MacLaren is Symington v Campbell, and that decision, in my opinion, amply justifies the statements in MacLaren."

It was accepted that, as recognised in Bentley v Macfarlane, there were cases where a pursuer's title to sue had been affirmed during the course of the action, although that title was not complete or was subject to some qualification at the date of the raising of the action. However, it was necessary that "basically the title" was in the pursuer before he could be allowed to complete the steps required during the course of an action. In the present action, at the time the action was raised ownership of the copyright rested in Murray Watt. The pursuers' claimed personal right to acquire it was not enough. The cases on which the pursuers sought to rely did not, fairly read, assist them. It could not be said that the pursuers required to take only a formal step which only they required to take. At the raising of the action there was no certainty they would ever acquire the copyright. The position of the pursuers was substantially different from that, for example, of executors who only required confirmation to complete their right to sue. Even if the principle of accretion could be said to apply to moveable property (which was doubtful, reference being made to The Stair Memorial Encyclopaedia (Vol.18, paras.677 and 678), and even if the purported Assignation of 10 April 2003 could be said to have assigned Mr Watt's right in the copyright to Braid Homes Limited (which it could not), the pursuers could only be said to have right to the copyright from that date. Insofar as the principle of accretion could be said to backdate the acquisition of title to the date of an original grant, this was a legal fiction which operated for two purposes only - (1) to validate the original grant, so removing the need for a fresh one and (2) to determine reckoning as between competing grantees. The fiction of retrospective ownership had no application outside the two situations described. Reference was again made to The Stair Memorial Encyclopaedia vol. 18 at para.677.

[10] Further, and in any event, the purported Assignation of 10 April 2003 could not be said to have completed the pursuers' title to the copyright even from that date. The document bore to be granted by the partnership of Ronald W Watt, Chartered Architects, described as "formerly Classic Design Partnership". There was, however, no link in the averments, nor any document produced, to indicate that Mr Watt himself had assigned the copyright to the partnership. Reference was made to Copinger at para.5.173 where it is said, inter alia:

"Where a work is made by one partner in the ordinary course of the partnership business and for the purposes of the partnership, the copyright will become the partnership property, in the sense that as between the partners it is to be regarded as an asset of the partnership. In the absence of a written assignment, however, the legal title will remain with the partner who was the author and will not devolve upon the partners. The other partners' right is to have the copyright applied for the benefit of the partnership."

It was not even clear that Ronald W Watt, Chartered Architects was simply a change of name for the partnership formerly known as Classic Design Partnership. Although the document of 10 April 2003 purported to assign copyright to Braid Homes Limited "and to their assignees whomsoever", the natural meaning of these words was "future assignees whomsoever" and, indeed, future assignees of the right to copyright. Although reference was made in the pleadings to "ratification" it was difficult to see how that concept could apply.

[11] Although counsel also argued that it appeared from the documents that the Assignation of 1 March 2000 referred to a different development from the 1999 letters, and that the Assignation of 10 April 2003 appeared to refer to yet another, he did not, it seemed to me, having heard the pursuers' counsel in reply, seriously seek to challenge the submission that the pursuers were offering to prove that the development referred to in all the documents was the same, albeit known at different stages by different names.

Submissions for the pursuers
[12] The defenders' plea of no title to sue should be repelled, or at least reserved. By virtue of the exchange of letters in 1999, and the actings which followed thereon, it was agreed that the relevant copyright (originally that of Mr Murray Watt) would be conveyed to Braid Homes Limited on completion of the drawings or at least of the development (for present purposes it mattered not which). Although the Assignation of 1 March 2000 could not be said to have assigned the relevant copyright from Braid Homes Limited to the pursuers (no written assignation signed by or on behalf of Mr Murray Watt having previously been effected in favour of Braid Homes Limited - section 90(3) of the Copyright, Designs and Patents Act 1988) it plainly did operate as an assignation of Braid Homes Limited's contractual right to obtain an assignation of the copyright. It bore to assign inter alia "all rights pertaining to... copyright of house type... D2...". Reference was also made to Miller v Muirhead.

[13] In these circumstances the pursuers' personal right to acquire the copyright, which existed at the time the action was raised, was sufficient title to enable them to raise the action, that right thereafter having been completed by the document of 10 April 2003 or being capable of completion prior to any proof or at least before final decree is obtained. The pursuers could be said to have had a substantial right requiring only formal completion, consistent with language used in Symington v Campbell 1894 21 R. 434 and Bentley v Macfarlane. They could be said to have been substantially in possession of the right to bring the action, in accordance with language used in Donald v Nicol 1866 5 M. 146. It could not be said that at the time of raising the action they had absolutely no title. Although the circumstances of each case was no doubt different, support could be found in The Doughty Shipping Company Limited v The North British Railway Company 1909 1 S.L.T. 267, Mackay v Mackay 1914 S.C. 200, Welsh v Robertson 1857 19 D. 404 and Cranston & Elliot Limited v Dobson 1900 2 F. 271. More general reference was made to D & J Nicol v Dundee Harbour Trustees 1915 SC (HL) 7 and Mackay's Manual of Practice at p.126. Parties in the position of the pursuers in England would be regarded as having an equitable right to the copyright which would enable them to bring proceedings for infringement, subject to perfecting legal title prior to trial (Copinger at paras.5-66 and 5-182). A licensee would plainly have a lesser right.

[14] Even if that was wrong, the Assignation in favour of Braid Homes Limited of 10 April 2003 could be said to have completed, by operation of the accretion, the pursuers' right under the a non domino assignation of March 1990, and that with retrospective effect from said latter date. The application of the principles of accretion to moveable property was recognised in Mackay v Mackay, Garvie's Trs. v Garvie's Tutors 1975 S.L.T. 94 and in Buchanan v Alba Diagnostics Limited (an unreported decision of the First Division of 6 February 2001, in particular in the opinion of Lord Clarke at paras.42 and 43).

[15] On any view it could be said that the pursuers' right to the copyright was completed on 10 April 2003 by virtue of the document of that date. On a proper construction it could be said to have amounted to an assignation in favour of the pursuers. The assignation was in favour of Braid Homes Limited "and their Assignees whomsoever". This could be said to relate to their assignees at any time, or to their assignees of the contractual right under the 1999 agreement, which agreement the document bore to implement. The pursuers were such assignees by virtue of the March 2000 Assignation. Alternatively, by operation of accretion, the pursuers could be said as of 10 April 2003 to be in right of the copyright. Although the document bore to be granted by the partnership of Ronald W Watt, Chartered Architects, it could be assumed that partnership was by then (indeed by May 1999) vested in the copyright. At any rate, Murray Watt, who signed the document, could not conceivably assert any contrary right.

Discussion
[16] In light of the arguments, the primary question is whether it can be said that the pursuers have relevantly averred sufficient title, at the time the action was raised, at least to raise it. If they have not, it is accepted that that would be an end of the matter. The secondary question is whether, if they have relevantly averred sufficient title to raise the action, that title could be said to have been completed by the Assignation of 10 April 2003 or whether the pursuers' title would require to be completed by a further assignation by Murray Watt, agreed to be the original owner of the copyright. I shall deal with the primary question first.

[17] The argument that the pursuers could be said, by virtue of accretion, to have had full ownership of the relevant copyright at the time the action was raised clearly falls, in my view, to be rejected. It was, in the event, an argument only faintly pressed. Although there are indications in the authorities referred to that the principles of accretion could be applied to moveable property (and indeed in relation to copyright - Mackay v Mackay), there can be little doubt that the legal fiction of retrospective ownership would have no application to the question of whether the pursuers could be said to have had legal title to sue the defenders at the date the action was raised. Instead, it seems clear that the fiction operates for two purposes only - (1) to validate the original grant, so removing the need for a fresh one and (2) to determine ranking as between competing grantees (see e.g. Stair Encyclopaedia vol.18, para.678). There are, in any event, as discussed below, formidable difficulties in construing the document of 10 April 2003 as an assignation of the copyright - agreed to have been originally vested in Mr Murray Watt - even in favour of Braid Homes Limited.

[18] That, however, is not the end of the matter. Although it is accepted that, strictly speaking, the title to bring proceedings for infringement rests in the owner of copyright, the question has been raised as to whether at the time this action was raised the pursuers had at least sufficient right to entitle them to do that; that is, sufficient right to raise the proceedings even if that right required to be completed thereafter prior to any decree being pronounced. Although there are no doubt arguments on this matter either way, I have come to the view that the pursuers' submissions are to be preferred.

[19] It is not disputed that what the pursuers had at the date of the raising of the action (assuming relevant averments of the 1999 contract) was a clear and unqualified personal right to demand an immediate assignation of the copyright from Murray Watt. What the pursuers had could therefore be described as a jus ad rem in relation to the copyright. Further there is nothing in the averments (nor was anything submitted in argument) to suggest that Murray Watt would at any stage have done anything other than to comply with any request for an assignation.

[20] It has long been recognised that there are circumstances when a party may at least raise an action, albeit not then having a full and complete title to do so. This was clearly recognised in the opinions delivered in Symington v Campbell, Donald v Nicol and Bentley v Macfarlane. Although, no doubt, much will depend upon the nature of the action in question, it is not obvious, in a case such as the present, that the pursuers could not be said, as a matter of language, to have been substantially in possession of the right to bring the action, or to have had a substantial right to do so, requiring only formal completion - to use the somewhat broad language of the judges in those cases. This is certainly not a case of pursuers having no right at all when the action was raised, which was true of the pursuers in both Symington v Campbell and Bentley v Macfarlane. In such a case it is understandable that such a defect cannot be cured by a subsequent assignation, on the basis that when the action starts it is a nullity (see in particular the Lord President (Clyde) in Bentley v Macfarlane at p.79). On the other hand, it is not, I think, without significance that the Lord President (Robertson) in Symington v Campbell said:

"The title of the pursuer here depends on an assignation, which he does not say had been gone into at all before the action was raised. The whole transaction took place after the summons had been served."

There is more than a hint in that that the approach of the court would have been different had the pursuer had a contractual right to an assignation at the time the action was raised.

[21] As to the authorities, I was referred to no case in which it was held that a jus ad rem, or personal right to acquire title, was insufficient to enable proceedings to be raised. On the contrary, Lord Salvesen in The Doughty Shipping Company Limited v The North British Railway Company said, in upholding the title of the pursuers to raise the proceedings:

"The circumstances here, however, are different, for the pursuers had paid the charterers the sum in respect of which they sue before the action was raised; and I think it is not doubtful that if they were not liable to pay that sum to the charterers, they were entitled to an assignation from them of their claim against the defenders. There was here, therefore, not a radical defect in the title as in Symington's case, but a title which was - to use Lord Adam's language - 'a good title at bottom, which they only required to have formally made absolute'."

That decision has not since, so far as I am aware, been disapproved of, although it was, for example, a case referred to by counsel in Bentley v Macfarlane.

[22] Further, in Mackay v Mackay, the trustees and executors of the deceased, acting under his trust disposition and settlement which contained a general disposition in their favour, granted an assignation of certain copyrights forming part of his estate, before they had obtained confirmation. The assignee having brought an action in respect of infringement of the copyrights, it was held that he had a good title to sue, although confirmation would have to be expede by the trustees before he could extract a decree for payment. Although the circumstances were arguably stronger than in the present case, nevertheless, it seems that what weighed in particular with the court - who took the view that if the trustees subsequently obtained confirmation the defect in their title could be effectively cured and the cure would draw back to the date of the assignation - was that, so far as the pursuer was concerned, he was, at the time of raising the action, "vested with the right to demand that the trustees should complete their title by expeding confirmation", by virtue of the assignation in his favour. This could only properly be described as a personal right to demand that third parties take action to complete the title. Equally, the case cannot be said to support any proposition that a pursuer must always himself be in a position directly to complete his title.

[23] It can of course be said that the rights of the uninfeft proprietors of heritable property who were entitled to sue in Welsh v Robertson, and the rights of executors to sue prior to obtaining confirmation (such as referred to by Lord Adam in Symington v Campbell) were, and are, perhaps stronger, in the sense that they may be said to have had, or to have, a beneficial interest. Nevertheless, their rights in essence still fall to be regarded as personal rights.

[24] As regards the cases of Donald v Nicol and Cranston & Elliott Limited v Dobson, while counsel for the defenders was, I think, right to distinguish both for a number of reasons from the present circumstances, and to argue that the pursuers could not obtain significant direct support from either, nevertheless, neither, in my view, could be said to offer any real support to the defenders.

[25] If the pursuers could thus be said to have had at least sufficient title to raise the present proceedings, this would, it seems, mean that the position in Scotland, in practice at least, was the same as the position in England, where, in similar circumstances, a so-called equitable owner could, it appears, at least raise proceedings for infringement. It would be unfortunate if the right to bring proceedings for infringement of copyright, the substantive law of which is common to both jurisdictions and is governed by the Copyright, Designs and Patents Act 1988, was thought to be significantly different as between them.

[26] On the secondary question, however, I am unable to find that the pursuers' rights have already been completed by the document of 10 April 2003. In the first place, it bears to be an assignation from the partnership of Ronald W Watt, Chartered Architects. It may well be that that partnership is the same in all but name as Classic Design Partnership, but the pursuers have no averments that Murray Watt himself assigned the relevant copyright to the partnership at any stage. This is not something which, in my view, the court could assume (as argued by counsel for the pursuers) in the absence of averment. It may be difficult to imagine circumstances in which Mr Watt would challenge the document itself, but neither that nor any concept of derogation of grant would assist in answer to the claim that the document was not an assignation by the person in right of the copyright, namely Mr Watt himself. If it had been, no doubt the pursuers could have taken advantage, at least from 10 April 2003, of the law of accretion, to argue that their title was complete. On the other hand they could not, in my view, properly argue that the Assignation to Braid Homes Limited "and to their assignees whomsoever" directly assigned anything to them. I agree with counsel for the defenders that the obvious meaning of the words quoted, in their context, denotes a grant to future assignees of the right purportedly being conveyed, namely the copyright.

[27] In all the circumstances I shall reserve the defenders' plea of no title to sue, and allow a proof before answer.