- Copying of preparatory drafts of major novel deemed to be infringement
- First case to construe the UK Regulations implementing the EC Directive 93/98/EEC
On 22 November 2001 Judgment was handed down in Sean Sweeney and Graham Edward Camps (Suing as Trustees of the Estate of James Joyce) v Macmillan Publishers Limited and Danis Rose. The case concerned "A Readers' Edition" of Ulysses by James Joyce edited by Danis Rose and published by Macmillan ("RE"). The Joyce Estate sued for copyright infringement and passing off.
The Estate claimed that RE infringed copyright in:
- editions of Ulysses published during Joyce's lifetime (chiefly the first edition published in 1922) ("the 1922 Edition"); and
- the manuscripts, typescripts and proofs of Ulysses ("the Working Papers") which were published in the 1970s (which remain in copyright for 50 years from publication).
Infringement of copyright in the 1922 Edition
Mr Rose admitted that RE copied the 1922 Edition. The 1922 Edition went out of copyright on 1 January 1992, 50 years after Joyce's death (in accordance with the Copyright Act 1956). The copyright was "revived" on 1 January 1996 when the UK implemented the EC Directive 93/98/EEC of 29 October 1993 ("the Directive") which harmonised the term of protection of copyright in the EC at 70 years from the death of an author. The Directive was implemented in the UK by the Duration of Copyrights and Rights in Performances Regulations 1995 SI 1995/3297 ("the Regulations"). Although the Directive was binding as to the result to be achieved, it was up to each Member State to implement it, including the provisions made to deal with acquired rights of persons who, in the period 1992-1995, undertook exploitation of works in which copyright had revived. The UK chose to do this by virtue of Regulations 23 and 24:
Reg 23(2) provides that it is not an infringement of revived copyright in a work:
(a) to do anything after 1 January 1996 in pursuance of arrangements made before 1 January 1995 at a time when copyright did not subsist in the work, or
(b) to issue to the public after 1 January 1996 copies of the work made before 1 July 1995 at a time when copyright did not subsist in the work.
Regulation 23(3) makes the same provision in respect of works containing a copy or adaptation of a revived copyright work. "Arrangements" are defined in Reg 23(5) as meaning "arrangements for the exploitation of the work in question."
Regulation 24 provides for a compulsory licence subject to the payment of a reasonable royalty or other remuneration (to be determined by the Copyright Tribunal if not agreed) in respect of acts which would otherwise infringe revived copyright. However, a person intending to avail himself of this right "must give reasonable notice of his intention to the copyright owner, stating when he intends to begin to do the acts" (Regulation 24(2)) and "shall not be treated as licensed" (Regulation 24(3)) if such notice is not given.
The Defendants sought to rely on the Regulations. Mr Rose claimed that he had carried out the bulk of the work on RE when the 1922 Edition was out of copyright. He had not entered into a contract with Macmillan until August 1996 although he had discussions with various publishers during the period when the 1922 Edition was out of copyright and in May 1995 set up his own publishing imprint through which he claimed that he would have published RE. Lloyd J found that, although "arrangements" were not necessarily limited to a contract, "some degree of solidity or certainty" was required such that later acts could be said to be done in pursuance of them. He said that Mr Rose's discussions with publishers were limited contacts and could not constitute arrangements. The work carried out by Mr Rose on RE between 1992 and 1995 could not be relied on to constitute an arrangement. He commented that a concept of arrangements based on work done would be too wide because it would be very difficult to say that someone who had only done a little work in the window had not also made arrangements. Lloyd J was prepared to countenance that an understanding or negotiations between an author and publisher in pursuance of which all/a great deal of the work preparatory to publishing was done in the window could constitute arrangements. Likewise he did not exclude the possibility that unilateral work (e.g. an author with his own printing company) could constitute arrangements but this would not apply here. As a result of the Judge's finding, RE could not take advantage of Regulation 23 which would have allowed the 1922 Edition to be published without payment of any royalties to the Estate.
The Judge did however, find that the Defendants should be granted a compulsory licence subject to payment of a reasonable royalty under Regulation 24. Whether the requirements of Regulation 24 were satisfied depended on construction of a letter sent by Macmillan to the Estate's solicitors in March 1997. The letter did not state the date of publication nor did it enclose a copy of RE. The Judge held that the Regulation did not require that a copy of the proposed text be supplied. While he thought that it would be sensible for a Regulation 24 notice to state the intended date it was sufficient that the Estate had found out about the June 1997 publication date in oral exchanges. Given that a compulsory licensor under Regulation 24 could not stop intended acts once notice was given Lloyd J concluded that a short period of notice (in this case about 3 months) was reasonable. The Claimant argued that the notice given in the letter had been on a contingent basis - i.e. if the publication was not covered by Regulation 23 - and contended that such contingent notice was not sufficient. The Judge rejected this argument although he acknowledged that if the contingency led to delay in royalty payments it was possible that the Copyright Tribunal might award interest.
Infringement of copyright in the Working Papers
The Defendants had argued that the Working Papers were published by virtue of the publication of the 1922 Edition. Lloyd J rejected this argument. Although he attributed most importance to the Rosenbach Manuscript (a fair copy of the text of Ulysses which Joyce made in instalments between 1920 and 1922 and sold to John Quinn) which he called "perhaps the most important single item in the preparatory materials" he held that each of the Working Papers was the subject of a separate copyright. Because of the way in which Joyce worked, continually amending and adding text at successive stages in the production process, the text underwent a series of changes from one stage to the next - "as Joyce allowed each part of the text to move on from one stage to the next, after making such changes as he wanted, he created a new work in which copyright subsisted". Lloyd J held that the publication of the 1922 Edition only published the whole text set out in that edition not earlier versions. The Working Papers remained unpublished even though a lot of the text was the same as that in the 1922 Edition.
Although the Judge concluded on the evidence that Mr Rose had not copied the Working Papers wholesale (he found that the bulk of the text copied in RE was the 1922 Edition) he held that what Mr Rose had done with the Working Papers amounted to copyright infringement. In English law, infringement depends on whether a substantial part of the copyright work has been taken and is a qualitative test. The Judge said that it was not sufficient for the Defendants to say that what was taken constituted just a few lines, particularly because the restoration of the unpublished material to the text was of importance in qualitative terms - "their inclusion is one of the things which makes A Readers Edition special and distinct". Indeed the edition had been marketed on the basis of the inclusion of this new material.
On the basis of the above, Lloyd J ordered an injunction for copyright infringement in respect of the work entitled 'A Reader's Edition'. He did not accept the Defendants' argument that because the unpublished material copied might be described as quantitatively small in terms of the number of words (although the number of changes including punctuation is much higher) it was merely a trivial infringement.
The Estate claimed that the Defendants were passing RE off as falling within a class of editions which could legitimately be called Ulysses by James Joyce. Passing off requires, in general terms, the Claimant to show that he has goodwill attached to goods or services which he supplies under an identifying mark or get up, that the Defendant has made a misrepresentation that is likely to lead the public to believe that his goods or services are those of the Claimant, and that the misrepresentation has caused damage to the Claimant. Members of a class of persons or businesses who supply goods or services under an identifying mark are also able to sue for passing off.
In RE Mr Rose corrected what he believed to be mistakes in Ulysses (for example, correcting a budget which did not add up and correcting misspelled names). He also inserted capitals and punctuation into the text and hyphenated many compound words. The total number of changes made has been estimated to be in the region of 8,000-10,000. The Estate argued that this deprived Ulysses of certain essential characteristics, such as the use of compound words, stream of consciousness dialogue and nuances of meaning for which Ulysses is famous. The Estate suggested alternative definitions of the class - either Ulysses as written by Joyce and as presented in works published prior to 1997 or Ulysses as written by Joyce and published in his lifetime with his approval or thereafter with the approval of his Estate.
Lloyd J rejected the passing off claim. Although the Estate did not produce or sell products he was prepared to assume (without deciding) that it could potentially be protected by passing off on the grounds that it received royalties and therefore had an interest in maintaining the value of Ulysses. The difficulty was in defining the class of "real" Ulysses editions (since there had been several variant editions) and establishing that RE did not fall within that class - Lloyd J held that the class of products in respect of which one claimed passing off had to be clearly defined because the trade name must distinguish in the minds of the public goods of that class from other goods not of that class. He held that a definition of class hinging on the Estate's approval would be unworkable because it allowed the Estate to control admittance to the class on a subjective basis. The Claimant's evidence had sought to demonstrate that RE by its changes had lost or weakened the distinctive characteristics of the "real" Ulysses, such that it did not fall within the class of editions which have historically come down to us as the famous work, Ulysses by James Joyce. The Judge held that the definition of Ulysses by reference to essential characteristics depended on academic opinion and was equally uncertain and unworkable. Therefore, the class could not be defined objectively such that a given work could be said to be inside or outside it (although the Judge did not entirely dismiss the possibility that there could, in theory, be a work passed off as Joyce's Ulysses which did fall outside some clearly objectively defined class.)
This is the first case in the UK courts to deal with the interpretation of the Regulations and in particular, to shed some much needed light on the meaning of "arrangements" and the requirements for notice if one seeks a compulsory licence in respect of a work which is only protected by "revived copyright".
The case is also important as the first UK case to hold explicitly that preparatory materials for a work of literature such as a novel are sufficiently original to be separate copyright works (although this has been established in previous cases in respect of drawings).
Although the passing off action failed, the case may have interesting implications for the law in this area. While an author has sued in passing off for false attribution of authorship (Clark v Associated Newspapers Ltd (1998) WLR 1558 ) this is the first reported UK case, so far as we are aware, in which an author's Estate has taken such action and it is interesting that the court was prepared to consider the possibility that an Estate's rights as copyright licensor might give them title to sue in passing off.
Due to be published in WLLR in December 2001 and WIPR in January 2002.