Law Report: 5 February 1998; Copyright owner can have unlimited injunction

Law Report
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The use of an injunction unlimited by time to prevent future infringement of copyright and to extract payment for past infringement was not an abuse of process.

Phonographic Performance Ltd v Maitra and other actions; Court of Appeal (Lord Woolf, Master of the Rolls, Lord Justice Aldous and Lord Justice Mummery) 3 February 1998

The Court of Appeal allowed the appeal of Phonographic Performance Ltd (PPL) against orders made in proceedings for infringement of copyright, whereby injunctions limited by time were granted against the defendants.

PPL, as assignees, administered the performing, broadcasting and cable programme rights in the sound recordings of the vast majority of record companies. A person who took one of its licences was entitled to use all the recordings in the repertoire of its member companies. PPL took infringement proceedings against persons discovered to be making unlicensed use of the repertoire, if they failed to apply for a licence after the need to do so had been drawn to their attention.

For many years PPL had obtained final judgment in default under RSC Order 19 rule 7(1) against persons making unlicensed use of the repertoire. The orders made included an injunction with immediate effect and without limit of time to restrain further infringement. In the current actions, the judge had made orders granting injunctions to take effect 28 days after the date of order, to continue for six months or until the defendant applied for a licence, whichever was the earlier.

Peter Goldsmith QC, Jonathan Rayner James QC and Amanda Michaels (Green Sheikh & Co, formerly Green David Conway & Co) for PPL; Mary Vitoria QC (Nick Kounoupias, Performing Right Society Ltd) for the Perfoming Right Society as intervener; Michael Silverleaf QC (Treasury Solicitor) as amicus curiae.

Lord Woolf MR handed down the judgment of the court. The issue of principle raised on the appeal was whether the judge had been entitled to refuse to grant injunctions with immediate effect and without limit of time.

In the present cases the judge had been aware, from earlier proceedings before him, of the practice of PPL to require a person who applied for a licence to take it from the first day on which they had used the repertoire. A person who had infringed would, thus, only be granted a licence when he had regularised his position. A person against whom an injunction had been granted would, similarly, not be granted a licence if he did not pay the appropriate licence fee in respect of past infringement.

The judge had been concerned at PPL's practice of using an injunction of unlimited duration as a lever to extract payment of past fees, a practice which he regarded as an abuse of process. He had therefore restricted the injunctions granted, and PPL submitted that that was a wrong exercise of his discretion.

A person who exploited his property right by licensing was entitled, except in special circumstances, to prevent unlicensed use of his property right and to refuse to grant a licence except on his terms and conditions as to payment and use. In cases such as the present there was no reason why the use of an injunction in the normal form to prevent future infringement should be an abuse. No doubt the consequence was that a defendant was forced to pay if he wished to use the repertoire, but PPL were entitled to use the rights assigned to them in that way.

A person who had knowingly infringed PPL's rights and had shown an intention to continue to do so should not be surprised to be told that, if he did continue to infringe, he risked committal to prison: nor should he be surprised that, when a breach of the injunction had occurred, it was pointed out that committal proceedings would follow unless he regularised his position.

The appeals would be allowed, with the result that the injunctions granted would be in the normal form sought by PPL.

- Kate O'Hanlon, Barrister