Summary judgment is a remedy intended to be applied when the issues in a case are so clear cut that the defendants have no real prospect of successfully defending the claim against them. However, even where the issues of fact are that clear cut, issues as to the appropriateness of the remedy applied for can still necessitate a claim proceeding to trial.

In Ludlow Music Inc v Robbie Williams & Ors, the facts underlying the dispute related to the chain of derivation of the Robbie Williams song 'Jesus in a Camper Van'. Ultimately, the idea derived from a Woody Guthrie song 'I am the Way', by way of a later parody entitled 'I am the Way (New York Town)'. The copyright in both versions is owned by the claimant, Ludlow Music. The defendants admitted that there had been some copying, but only of two lines of the chorus lyrics. Nevertheless, the publishers EMI Music Publishing Ltd ("EMI") had attempted to obtain a copyright licence in advance but had been unable to reach a deal since Ludlow Music had started out by demanding 50% of the copyright and subsequently (when the record was on the point of being distributed for release) increased the demand to 100%. Notably, they had not at any stage attempted to stop the song being used at all.

EMI attempted to resolve the dispute by registering Ludlow Music as owners of a 25% share with the relevant copyright collecting societies, believing that this represented a more than reasonable offer which was likely to be accepted. However, two years after the record had been released Ludlow Music brought a claim of copyright infringement against the defendants seeking damages and an injunction.

The real issue before the judge, N Strauss QC, was not whether copyright had been infringed - the judge concluded that the first impression was of sufficient copying to meet the requisite standard of 'substantial', although only just - but whether on the facts the extreme remedy of an injunction was justified. An injunction is an equitable remedy, which means it is entirely within the discretion of the court. Nevetheless, an injunction normally follows a finding of copyright infringement in all cases since, as affirmed by the courts in MacMillan v Thomas Reed and Phonographic Performance Ltd v Maitra, a defendant is not to be permitted to buy the ability to infringe rights simply by paying damages. As with all equitable remedies however, circumstances can lead the court to refuse and substitute damages instead. In particular, the court looks at the way the claimant has behaved - has it conducted itself in good faith and with 'clean hands'?

In this case, the judge was not at all impressed with Ludlow Music's conduct. The correspondence showed that Ludlow Music had accepted throughout that use of the copyright material could be compensated in money - there was no issue over any other matter such as, for example, the artistic integrity of the original work, or unfair competition with Ludlow Music' s own exploitation of it. Further, Ludlow Music had delayed bringing the proceedings until sales had been not only launched but on-going for a considerable period. Such a delay amounted to a degree of acquiescence in the defendants' use of the copyright work.

Finally, their initial demand for 50% royalties could arguably be seen as oppressive, when the music of 'Jesus in a Camper van' owed nothing at all to 'I am the Way' and only a small portion of the lyrics had been used. Raising the demand to 100% was also, arguably, unreasonable. In response to this allegation, Ludlow Music argued that they were entitled to charge whatever they liked for the use of their property, relying on the decision of the Court of Appeal in the 1998 case of Phonographic Performance Ltd v Maitra. The judge nonetheless concluded that there could be circumstances in which a copyright owner's attempts to exploit his right would be oppressive - raising echoes of the European Court of Justice's reasoning in the Magill decision. He noted especially that Phonographic Performance Ltd ("PPL") had only requested 'an appropriate payment' - in other words, their standard licence fee as regulated by the Copyright Tribunal - and that the defendants, Maitra, had declined either to pay anything or to defend the proceedings at all. Even though in both cases the defendants had an admitted intention to continue the infringement, on a proper view the circumstances of PPL case were wholly different from the present case.

Since the application was for summary judgement, in order to defeat it the defendants had only to show that there were issues which needed to be decided at a full trial. The judge's conclusions are therefore framed in terms of what is and is not arguable. He concluded that it was certainly arguable that this case was not one where an injunction would be appropriate, but that evidence of both parties' conduct would need to be considered by the trial judge in order to determine where precisely justice might lie. Damages (or, at Ludlow Music's election, an account of profits) were ordered, but the injunction issue alone will now proceed to be tried.

In principle an award of damages in lieu of an injunction amounts to a remedy only for the past infringements, leaving all future sales of 'Jesus in a Camper Van' as potential further infringements. It is to be hoped that, following the determination of an appropriate royalty in the course of the damages enquiry, the parties will be able to agree licence terms for future use.

First published in WIPR in November 2000.