On July 30, 2009, the House of Lords upheld a 2006 High Court ruling holding that the mere passage of time does not work to bar a claim to a share of copyright ownership. Despite a thirty-eight-year delay in bringing his claim for a share of copyright in the musical work A Whiter Shade of Pale, the equitable doctrines of estoppel and laches did not work to defeat Matthew Fisher's claim where the defendants, Gary Brooker and Onward Music Ltd. suffered no detriment. Rather, the House of Lords held that not only Mr. Fisher's claim was not defeated by the delay, but also that he is a co-author and 40% joint owner of the musical copyright in the song, and that the defendants' license to exploit his share was revoked as of May 31, 2005, when his claim was first brought.
Background
A Whiter Shade of Pale, a cult classic of the 1960s, was originally composed in 1967 by Gary Brooke, the lead singer and pianist of the British rock band Procol Harum, with lyrics written by Keith Reid, the band's manager. The band then signed a contract with Essex Music by which all of the copyrights to the words and music were assigned to Essex in exchange for a percentage of royalties generated from exploitation of the song. Shortly after the agreement was signed, Fisher joined the band as organist and composed the organ solo comprising the beginning of the song and organ melody which appears throughout the duration. After the song was recorded, the band members entered into a recording contract with Essex granting Essex rights to exploit any recording the band made. Mr. Fisher left the band two years later. In 1993, Essex assigned its rights to the song to Onward Music Ltd. In May 2005, Mr. Fisher brought suit to claim a share of the musical copyright in the song.
2006 High Court Ruling
After rejecting Brooker's claim that a fair trial was impossible after such a delay, the High Court found that Fisher was a joint owner of the work. The Court looked at the circumstances under which the song was written, the philosophy of the band being that each musician made his own musical contributions, and specifically whether Mr. Fisher's contribution of the organ solo could be regarded as invention separate from the song as it was originally written. The court drew on the evidence from Mr. Fisher that the solo was inspired by "Wachet auf, ruft uns die Stimme" by J.S. Bach, a completely different work from the one the original song was inspired by, and Mr. Brooker's own admissions that the solo was a result of a "careful creative process on [Mr. Fisher's] part." Based on the facts, the Court found that Fisher had a copyright interest in the song, but that he had granted Brooker and Essex Music an implied license to exploit the copyright in the song, which the Court deemed was terminated when Fisher gave notice to defendants of his intention to claim copyright ownership.
Next, the Court considered whether any equitable defenses might apply to bar Fisher's claim given the considerable delay in bringing it. Defendants asserted that the defenses of estoppel, acquiescence and laches were applicable in five instances: 1) Fisher's failure to assert his claim before the release of the Work in 1967; 2) Fisher's decision in 1967 not to pursue his claim so as to benefit from membership in Procol Harum; 3) the circumstances under which Fisher left Procol Harum in 1969; 4) Brooker's efforts in continuing to promote the Work, keeping it in the public eye; and 5) Fisher's delay in bringing his claims. The Court first noted that for estoppel to work, detriment to the defendant is an essential element. The Court rejected that Fisher's delay caused Essex to rely on the fact that he was foregoing his rights. The Court also found the second instance irrelevant as it relied on a statement in connection with advice Fisher sought at the time, and was only raised during these proceedings. Further there was no evidence to suggest that the defendants suffered detriment as a result of Fisher's failure to speak out. Finally, the Court found that not only was no detriment suffered by defendants by the delay, but rather the defendants benefited significantly in that they received all of the musical royalties to the Work over the years without having to pay Fisher. The Court found that delay itself is no defense to bringing a copyright claim under English law, especially where no equitable relief is sought. The court found that considering the case involved a "valuable property right" it would be "wholly unjust" to deprive Fisher for the remainder of his life and 70 years thereafter of his interest in the Work, when the defendants have enjoyed the fruits of the Work for years with no need to account to Fisher.
To assess what share was appropriate for Mr. Fisher's contribution, the Court first looked to evidence provided in Fisher's case in chief, finding that when Brooker was given a keyboard to play the song as it had been originally written without Fisher's contributions, there was "nothing akin to the flowing organ melody which is such a distinctive feature of the Work." The Court then went on to reject an argument made during the presentation of evidence suggesting that it is custom and practice in the music industry that where an arrangement is a result of collaborative effort from band members, because the skill and labor of each member relates to the musical elements of the arrangement of the original work, and not to creation of the original song itself, the persons contributing should not be entitled to any share in the copyright. The Court stated that it is well established under Copyright Law, despite what practice may or may not be customary, that the fact that a musical work is an arrangement of an earlier work does not mean the arrangement cannot attract separate copyright. Considering that Fisher's pleaded claim was for a 50% share of the copyright and no positive case was advanced by the defendants against this result, the Court granted Fisher a 40% share, as his share was definitely substantial, but not as great as that of Mr. Brooker.
Court of Appeal
The Case was ultimately appealed to the Court of Appeal, which upheld that a fair trial was possible and that Fisher was a joint owner entitled to a 40% share of the copyright, but held that Fisher was not entitled to his share because it was either assigned to Essex under the terms of the recording contract, or in the alternative, if deemed an implied license rather than an assignment, that implied license was made irrevocable by virtue of acquiescence as a result of Fisher's "excessive and inexcusable delay" in bringing his claim. The Court of Appeal found it would be unjust to permit Fisher to succeed in his claim, and that Fisher's implied license to Essex Music was irrevocable due to acquiescence and laches.
Appeal to House of Lords
Fisher further appealed the decision to the House of Lords, the highest court for copyright infringement. Here, there were three matters left to be considered: 1) the implied license issue; 2) the recording contract issue, and 3) the laches, estoppel and acquiescence defenses.
Defendants' argument regarding the implied license was that Essex had taken an assignment of the copyright in the original song, and since it was intended by Essex and the members of the band that Essex would exploit the song as developed for the recording, it also took an assignment of the copyright in the Work, as completed with Fisher's contribution. The House found this argument to be based on implication, meaning that for it to be successful, the elements of implication must be met, namely: 1) it would have to have been obvious to Fisher and Essex that Fisher's copyright was to be assigned, and 2) the commercial relationship between the parties could not sensibly have functioned without the assignment. The House rejected the argument finding it undermined by the fact that the agreement was reached between musicians in their early twenties on the one hand and the highly-experienced music-recording company, Essex, on the other. Further, the House found that an assignment of copyright was not necessary for Essex to exploit the recording; all that was needed was a license.
Turning to the recording contract issue, the House found that the High Court judge was right to reject the contention that the recordal contract worked as an assignment of copyright, finding that the contract operated as a provision licensing rights to Essex to exploit the Work.
The House then addressed the arguments based on laches, estoppel and acquiescence. First, the House noted that acquiescence does not really add anything beyond estoppel and laches. Turning to estoppel, the House noted that for the defense to be successful, defendants had to show that they have reasonably relied on Fisher having no claim, have acted on that reliance, and that it would now be unfair to permit Fisher to claim a share. The House noted that there was no evidence that the defendants would have acted any differently had Fisher brought his claim in 1967. Further, rather than suffer detriment, the House agreed that defendants had benefited considerably by his delay, collecting royalties for nearly 40 years without having to account for any part of them to Fisher.
For laches, the House noted that there is no explicit requirement of detriment, but suggested that it was an immutable requirement and covered by the evaluation of the facts on equitable principles. Thus, something more than mere delay would be required. The House found that the laches defense fails in two ways. First, laches can only act to bar equitable relief, and a declaration as to ownership of a property right recognized by statute is not an equitable remedy. Second, the House found that defendants failed to demonstrate that the delay resulted in an imbalance of justice justifying barring relief claimant would otherwise be entitled to.
Conclusion
While Fisher cannot recoup any royalties earned over previous years, he can now enjoy his share of the copyright in the song. He now also has a right to seek an injunction, although this would have to be decided by a trial judge on the merits.
For musicians and their lawyers, the decision is a victory. Musicians may now be more confident to seek what they believe to be their fair share of the riches from exploitation of their songs over the years. The decision will not be felt as a victory for music companies, on the other hand, who are likely to now be more concerned about the risks of a claim due to old poorly-drafted agreements. In addition, music companies now may fear that the decision may open up the prospect of countless claims from musicians who feel their rights have been overlooked.
Vol. 53, June 2010