Judgments - Fisher (Original Respondent and Cross-appellant) v Brooker and others (Original Appellants and Cross-respondents)

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31.  On the following day, 7 March 1967, Mr Brooker and Mr Reid entered into a written agreement with Essex (“the assignment”), whereby they assigned to Essex “all the Copyright as defined by the Copyright Act 1956… in the words and music of the composition ‘A Whiter Shade of Pale’ [and another song] … absolutely". In the assignment, Essex agreed to pay Mr Brooker and Mr Reid specified percentages (normally 50% between them) of the sheet music and mechanical royalties, and of the synchronisation, performing, broadcasting and rediffusion fees, receivable in connection with the song. Mr Brooker and Mr Reid also recorded in the assignment that they would share the payments due to them thereunder equally. Around 17 March 1967, the song was registered with the Performing Rights Society (“the PRS”) and with the Mechanical Copyright Protection Society (“the MCPS”). These two societies collect, and distribute, to the persons entered in their records as the copyright owners, any royalties due in respect of works registered with them.

32.   Shortly thereafter, Matthew Fisher joined the band as organist, and, together with Mr Brooker and the other members of the band (Bobby Harrison, Ray Royer, and Dave Knight), he rehearsed and added to the music of the song, so that it evolved into its final form (“the work”) which the band recorded in April 1967 (“the first recording”). Crucially for present purposes, Mr Fisher composed the familiar organ solo at the beginning of the work, and the organ melody which is a counterpoint throughout most of the four minutes during which the work lasts. The recording of the work was released on 12 May 1967 as a “single” record on the Decca label, under Essex’s licence, and it became an instant “hit".

33.  On 16 May 1967, the five members of the band, effectively acting through Mr Reid (therein “the manager”) entered into a further contract (“the recording contract”) with Essex. The effect of this contract was to enable Essex to exploit any recording made by the band over the period of a year (subject to renewal by Essex a maximum of four times). In return, Essex was to pay the members of the band a specified royalty in respect of every record of any such recording which was manufactured. The main purpose of the recording contract from the point of view of Essex was that it operated as “the consent required by section 1 of the Dramatic and Musical Performers Protection Act 1958” - clause 3(a). Unfortunately, there are two clauses with that assignation, so I shall refer to it as clause 3(ii)(a). By the first clause 3(a) - “clause 3(i)(a)” - the band members granted to Essex “the right to manufacture… sell, lease, license or otherwise use or dispose of …. records embodying the performances to be recorded hereunder ….". Further by what I shall for consistency’s sake refer to as clause 3(i)(e), the members of the band also granted to Essex “the right to incorporate in records to be made hereunder instrumentations, orchestrations and arrangements owned by the manager at the time of recording them". It has been common ground that the recording contract applies to the first recording.

34.  Thereafter, over the next two years or so, apart from enjoying great acclaim in connection with the work, the band recorded other songs (with words written by Mr Reid and music composed by Mr Brooker, sometimes together with Mr Fisher), whose musical and lyrical copyrights were assigned to Essex in the same form, and on the same terms, as the assignment.

35.  In his evidence, Mr Fisher said that, during 1967, he had raised the question of his having a share in the rights in respect of the music with Mr Brooker and Mr Reid, but had been rebuffed or ignored by them. He explained that he had not wanted to push his claim as he feared that, if he did so, he would be asked to “say goodbye to a career in … a number one pop group". In 1969, however, Mr Fisher did indeed leave the band, which by then had accrued certain debts. A relatively informal agreement was reached whereby the remaining members agreed to release (or, more accurately, I think, to indemnify) Mr Fisher from any liability in respect of such debts in return for his waiving any right to certain specified royalties (not including any copyright royalties in respect of the work).

36.   Despite leaving the band, Mr Fisher was invited to play with them at various functions from time to time between 1969 and 2003. On a couple of occasions during that period, once in 1971 and once in 1991, Mr Fisher contended that he was entitled to certain royalties which he was not receiving, but he never suggested that he was entitled to any money in respect of the exploitation of the work.

37.  In or about 1993, Essex’s rights under the assignment and the recording contract were purportedly assigned to Onward Music Ltd (“Onward”), and Onward was registered with the PRS and MCPS as the owner of the copyright in the work. Meanwhile, the first recording was proving very successful, resulting in substantial royalties, which were collected by the PRS and MCPS and distributed to Essex (or their successors), as they were registered with the societies as owners of the copyright, and Mr Brooker and Mr Reid were then paid their shares under the terms of the assignment.

38.    Quite apart from the first recording, the work has been extraordinarily successful over the 38 years since it was first released. It has been the subject of many articles and interviews, and has a dedicated following, as can be seen from the number of websites devoted to the work and the band. There are over 770 versions of the work performed by other groups, and themes of the work (especially the introductory bars) are available, and popular, as mobile telephone ring tones.

39.    During April and May 2005, Mr Fisher, through his solicitors wrote to Essex and Mr Brooker (together “the respondents”) notifying them of his claim to a share of the musical copyright in the work, explaining the grounds for his claim, threatening proceedings if his claim was not acknowledged, and putting forward terms of settlement. Those terms were rejected; accordingly, Mr Fisher began proceedings on 31 May 2005, and they came before Blackburne J, who gave a judgment which was largely favourable to Mr Fisher - [2005] EWHC 3239 Ch. However, on appeal, the respondents substantially succeeded: Mummery LJ and Sir Paul Kennedy set aside two of the three declarations made at first instance, although David Richards J dissented - [2008] Bus LR 1123.

The issues before the judge and the Court of Appeal

40.    The judge had to decide a number of issues, only some of which are now raised in your Lordships’ House. First, there was the question whether a fair trial was possible, bearing in mind the passage of time between the composition of the work and the issue of Mr Fisher’s claim. Although the judge rightly described Mr Fisher’s silence about his claim between 1967 and 2004 as “remarkable” and “quite extraordinary", he concluded that a fair trial was possible - [2006] EWHC 3239 Ch, paras 16 and 17, and 24. This conclusion was strongly challenged by the respondents on appeal, but the Court of Appeal rightly upheld the judge on this point - [2008] Bus LR 1123, para 43. There is no appeal on this point by the respondents.

41.    Secondly, the judge had to determine whether, and if so to what extent, Mr Fisher could, in principle, claim any share of the musical copyright in the work. He decided that “Mr Fisher’s instrumental introduction (i.e the organ solo … as repeated) is sufficiently different from what Mr Brooker had composed on the piano to qualify in law, and by quite a wide margin, as an original contribution to the work” - [2006] EWHC 3239 Ch, para 42. Consequently, he held that “Mr Fisher qualifies to be regarded as a joint author of the work” - ibid. After considering various arguments raised by the respondents, the judge concluded that “Mr Fisher’s interest in the work should be reflected by according to him a 40% share in the musical copyright” - ibid, para 98. Rightly, the Court of Appeal had little difficulty in dismissing the respondents’ appeal on this issue - [2008] Bus LR 1123, para 44. The respondents do not seek to appeal further on this issue.

42.    The third issue was whether, nonetheless, Mr Fisher had no right to claim a share of the musical copyright owing to the circumstances in which he made his contribution to the work. In effect, the respondents argued that, given that the song in its original form had been recorded, and the musical copyright in it had been assigned to Essex, in March 1967, Mr Fisher impliedly assigned to Essex any interest he acquired in the musical copyright in the work. The judge rejected that argument - [2006] EWHC 3239 Ch, para 63. However, the Court of Appeal, or at least the majority, left the point open - [2008] Bus LR 1123, para 100. This “implied assignment” argument is raised by the respondents by way of cross-appeal.

43.    The fourth issue was whether Mr Fisher had lost his right to maintain his claim to an interest in the musical copyright by virtue of the recording contract. The judge held that the agreement “did not purport to take from Mr Fisher any copyright interest he had in the musical composition", and therefore rejected the argument - [2006] EWHC 3239 Ch, para 66. The Court of Appeal, or at least the majority, left the point open - [2008] Bus LR 1123, para 111. The respondents maintain their case in this House on this issue by way of cross-appeal.

44.    The fifth issue was whether Mr Fisher had lost his interest in the copyright as a result of estoppel, laches or acquiescence. The respondents failed on this issue before the judge - [2006] EWCA Civ 3239, para 82. The Court of Appeal accepted that the judge was entitled to come to this conclusion, and that they could not interfere - [2008] Bus LR 1123, paras 67 (Mummery LJ, with whom Sir Paul Kennedy agreed) and 117 (David Richards J). On this “laches, estoppel or acquiescence” issue, the respondents maintain their case by cross-appealing.

45.    The sixth issue at first instance was whether Mr Fisher could claim his share of the monies paid out by the PRS and the MCPS in respect of the work during the six years before the issue of proceedings (it being rightly accepted by Mr Fisher that any claim going further back would be time-barred). The monies collected by the societies had been paid to Essex, or, since 1993, Onward, as the copyright owner registered with the societies, and the appropriate share in accordance with the assignment had then been paid to Mr Reid and Mr Brooker. The judge rejected this claim, on the basis that “for so long as Mr Fisher chose not to make … his claim [and] allowed the societies to account to the [respondents], … he must be taken to have gratuitously licensed the exploitation of his copyright” - [2006] EWHC 3239 Ch, para 94. The judge went on to find that this implied licence was revoked when the letter before action was sent to the respondents in May 2005 - ibid. There was no appeal to the Court of Appeal by Mr Fisher on this finding.

46.    The final matter to be considered by Blackburne J was the nature of the relief to be accorded to Mr Fisher. The judge refused an injunction restraining Essex from exploiting the musical copyright in the work, as there was no evidence of the respondents seeking to do so “in defiance of any interest in it which Mr Fisher is able to establish” - [2006] EWHC 3239 Ch, para 88. There was no appeal by Mr Fisher on this issue.

47.    However, the judge granted declarations in these terms:

“1.  [Mr Fisher] is a co-author of … ‘A Whiter Shade of Pale’ as recorded by … Procol Harum (‘the work’) and released as a single on 12 May 1967.

2.  [Mr] Fisher is a joint owner in the musical copyright in the work, with a share of 40%.

3.  The [respondents’] licence to exploit the work was revoked on 31 May 2005".

Allowing the respondents’ appeal, the majority of the Court of Appeal held that it was unconscionable, in all the circumstances, for Mr Fisher to have revoked the implied licence, and that “the defences of acquiescence and laches operated to disentitle [Mr] Fisher from the exercise of the court’s discretion to grant the second and third declarations” - [2008] Bus LR 1123, para 85. Accordingly, they held that the licence continued and the second and third declarations should be set aside - ibid, para 89. David Richards J dissented - ibid, para 140. Mr Fisher’s appeal against the setting aside of the second and third declarations raises a point which I regard as an aspect of the laches, estoppel, and acquiescence issue.

48.    Accordingly, there are three matters to be considered, namely the implied assignment issue, the recording contract issue, and the laches, estoppel and acquiescence issue. In relation to the first two of these matters, it is right to mention that there was some discussion whether the rights granted to Essex under the assignment or the recording contract were assignable, at least without the consent of the other parties to the agreement. This point, which is of particular apparent force in the case of the recording contract (given that, as pointed out by my noble and learned friend, Baroness Hale of Richmond, it describes itself as concerned with “personal services”), was not decided by Blackburne J or by the Court of Appeal and was only lightly touched on in argument in this House. Although it would be desirable to resolve all issues between the two parties, I do not consider that this is one which we can properly determine at this stage. For present purposes I am prepared to proceed on the assumption that Onward effectively stands in the shoes of Essex.

Was there an implied assignment?

49.    The respondents contend that the circumstances in which the work came into existence are consistent only with the copyright in the work becoming vested solely in Essex, and, in particular, with Mr Fisher having impliedly assigned his interest in the musical copyright to Essex. The essence of this argument is that Essex had taken an absolute assignment of the musical (and lyrical) copyright in the song in its original form, and was intending, and was intended by the members of the band, to exploit the song as developed for the first recording and released in May 1967, i.e. as the work. Accordingly, runs the argument, it must have been intended by Essex and by all members of the band, including Mr Fisher, that Essex would be the sole owner of the copyright in the work.

50.    This argument is based on implication, which is normally invoked in order to give rise to an unexpressed term into an existing contract. However, it is clear, as a matter of principle, commercial reality, and indeed authority, that an unexpressed contract can arise by way of implication. In order to succeed in such an argument, it is, of course, necessary for the well established requirements for implication to be satisfied. Thus, in this case, the respondents have to show that, at the time of the alleged assignment, (a) it would have been obvious to Mr Fisher (as well as Essex) that his interest in the musical copyright was being, or had to be, assigned to Essex, or, which may amount to the same thing, (b) the commercial relationship between the parties could not sensibly have functioned without such an assignment.

51.    In my judgment, this argument faces a number of insurmountable problems. First, it assumes that Mr Fisher knew that the song in its original form had been recorded and that the copyright had been assigned to Essex. He may have known these facts as at the time the work was recorded in April 1967 or when it was released in May 1967, but he did not say that he did and it was not put to him that he did. In this connection, it is relevant to mention that he had not, by that time, effected any assignment to Essex of copyright in relation to other musical works, so it could not be said that he must have been aware of Essex’s usual practice. Where a party contends for an implied term or an implied contract, it is up to that person to establish the relevant factual foundation for his case. Indeed, the fact that these points were not put to Mr Fisher is scarcely surprising, as the contention was not pleaded, although it was advanced before the judge in argument, albeit in somewhat different terms from the way it is now put.

52.    Secondly, the fact that the recording contract was only entered into on 16 May 1967, about a month after the work was first recorded, and four days after the release of the recording, undermines the notion that, before that date, Mr Fisher had impliedly assigned his interest in the musical copyright to Essex. The date of the recording contract shows that, as one would have expected, the members of the band were content to leave it to Essex, an experienced record and publishing company, to produce the relevant documentation for them to execute as and when appropriate. That is scarcely consistent with the alleged implied assignment having taken place before 16 May 1967. The unattractiveness of the respondents’ argument is reinforced by the fact, identified by Baroness Hale, that one is here concerned with five musicians, all of whom were in their early twenties, and a highly experienced music recording and publishing company, on whom they were no doubt relying.

53.    Thirdly, having heard the evidence, the judge found that the question of what was to be done in relation to any interest in the musical copyright in the work as a result of additions to the original song “was left at large” - [2006] EWHC 3239 Ch, para 63. The question whether there was an implied contract is one of inference rather than primary fact, but it is a question which, at least in this case, turned to a significant extent on the precise factual circumstances, which were very much for the trial judge to evaluate. It is also true that those circumstances had arisen nearly 40 years earlier, and some of the important witnesses (in particular the relevant employees of Essex, including Mr Platz) were dead, but there was a significant amount of relevant oral evidence. In my judgment, there would have been no warrant for an appellate tribunal interfering with the clear and carefully considered conclusion reached by the judge on this issue.

54.    Finally, there is the point that, even if there was some sort of implied contract, it is very unlikely to have been an outright free assignment of Mr Fisher’s interest in the musical copyright. First, such an arrangement would have been more than was necessary to give business efficacy: all that would have been needed was a licence by Mr Fisher, as someone with a share of the copyright in the work, permitting Essex to exploit the first recording. Secondly, particularly in the light of the terms of the assignment, it would very probably have been appropriate to include provision for a reasonable payment, or quantum meruit, in respect of any implied assignment or licence. In the light of the other problems this argument faces, it is unnecessary and inappropriate to expand on this aspect.

The effect of the recording contract

55.    There is no doubt that one of the main purposes of the recording contract was to ensure that Essex was able to exploit the first recording free from any rights which band members had in the sound recording itself - i.e. free the publishing right, as it is often called: hence clause 3(ii)(a). However, the more difficult question concerns the effect of clause 3(i)(e), when read together with clause 3(i)(a). For the respondents, Mr Baldwin QC, who appears with Ms Bowhill, (neither of whom appeared at first instance), places considerable reliance on paras (a) and (e) of clause 3(i). At one point, he appeared to go so far as to say that the effect of those provisions was to assign to Essex any copyright interests in the work owned by any member of the band.

56.    The judge rejected this argument, on the basis that the recording contract was not concerned with copyright in the work - [2006] EWHC 3239 Ch, para 66. As he put it, the contract “merely gave to [Essex] the right to exploit the [April 1967] recording” and any other recording of the work played during the currency of the agreement.

57.    In my view, the judge was right to reject the contention that, by executing the recording contract, Mr Fisher effectively assigned his share of the musical copyright in the work to Essex. Indeed, in the Court of Appeal, Mr Baldwin disclaimed any reliance on such a contention - [2008] Bus LR 1123, para 107. However, I would be inclined to accept (indeed Mr Purvis QC and Mr Cuddigan, who appeared for Mr Fisher did not seem strongly to resist) the contention more strongly advanced by Mr Baldwin that clause 3(i)(a) and (e) operated as a licence to Essex from Mr Fisher, in his capacity as part owner of the musical copyright in the work, to exploit the first recording.

58.     If this were not so, a member of the band with a copyright interest in the work would have been able to enjoin Essex from exercising its apparently unfettered rights under clause 3(i)(a), which seems inconsistent with the purpose of the recording contract. Further, it is hard to resist the contention that clause 3(i)(e) has precisely the effect which is contended on behalf of the respondents. Commercial sense suggests that Essex could well have been concerned to ensure that, although they had the benefit of the assignment from two of the five members of the band, other members may have contributed to the work as it had been developed in the mean time and acquired intellectual property rights which might interfere with the unimpeded exercise of the rights granted by the recording contract. The notion that clause 3(i)(e) is concerned with such rights is supported by the use of the word “owned", as pointed out by my noble and learned friend, Lord Walker of Gestingthorpe.

59.    On this basis, the terms of the recording contract may have the effect of depriving Mr Fisher of any royalties he might otherwise seek as a result of the exploitation of the work, in so far as it is through the medium of the first recording. However, even if that is right, it in no way impinges on the issue before your Lordships’ House, namely whether the three declarations granted by the judge should be affirmed.

Laches, estoppel, and acquiescence

Preliminary observations

60.    There are a few preliminary points in relation to the equitable arguments raised by the respondents and based on laches, estoppel, and acquiescence. First, a number of such arguments, which were raised and rejected at first instance, have not been raised before your Lordships. Save for the purpose of referring to them in connection with the points which have been pursued in this House, it is inappropriate to discuss them further.

61.    Secondly, the equitable arguments raised by the respondents arise at three different stages, and, as my noble and learned friend, Lord Hope of Craighead, pointed out, there has been a tendency to conflate these stages, which has led to confusion. Having said that, it is only fair to add that the subsequent passage of time may, at least in some circumstances, reinforce (or even diminish) the unconscionability of a party raising a claim which he could have raised at an earlier stage. In this case, the three different stages are (i) during 1967, around the time the first recording was made and released; (ii) in 1969, when Mr Fisher left the band; and (iii) in 2005, when the current proceedings were started.

62.    Thirdly, laches and estoppel are well established equitable doctrines. However, at least in a case such as this, I am not convinced that acquiescence adds anything to estoppel and laches. The classic example of proprietary estoppel, standing by whilst one’s neighbour builds on one’s land believing it to be his property, can be characterised as acquiescence - see per Oliver J in Taylor Fashions Ltd v Liverpool Victoria Trustees Ltd (Note) [1982] QB 133, 151. Similarly, laches, failing to raise or enforce an equitable right for a long period, can be characterised as acquiescence.

63.    Fourthly, in so far as the respondents’ argument is put on the basis of estoppel, they would have to establish that it would be in some way unconscionable for Mr Fisher now to insist on his share of the musical copyright in the work being recognised. As Robert Walker LJ said in Gillett v Holt [2001] Ch 210, 225D, “the fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine” of estoppel. Given that their case at each of the three stages is based on the fact that Mr Fisher did not raise his entitlement to such a share, one would expect the respondents to succeed in estoppel only if they could show that they reasonably relied on his having no such claim, that they acted on that reliance, and that it would be unfairly to their detriment if he was now permitted to raise or to enforce such a claim. As was also said in Gillett [2001] Ch 210, 232D, the “overwhelming weight of authority shows that detriment is required” although the “requirement must be approached as part of a broad inquiry” into unconscionability.

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