Whitfield Robertson v Amanda David
| Jurisdiction | St Lucia |
| Judge | Smith J |
| Judgment Date | 25 July 2017 |
| Judgment citation (vLex) | [2017] ECSC J0725-1 |
| Docket Number | CLAIM NO.: SLUHCV2010/0905 |
| Court | High Court (Saint Lucia) |
| Date | 25 July 2017 |
THE EASTERN CARIBBEAN SUPREME COURT
IN THE HIGH COURT OF JUSTICE (Civil)
CLAIM NO.: SLUHCV2010/0905
Mr. Thaddeus Antoine for the Claimant
Mr. Gregory Delzin SC and Ms. Cleopatra McDonald for the Defendant
The Claimant, a registered collective society under the Copyright Act of Saint Lucia (“the Act”), says that the Defendant, a cinema, has refused to obtain a license from it, as required by the Act, before airing movies which incorporate music sound tracks. This, the Claimant asserts, is a copyright infringement for which it is entitled to damages or an accounting of profits from the Defendant.
The Defendant pleaded in its defence, inter alia, (1) that the Claimant was not a collective society as contemplated by the Act; (2) that it has a license to air movies which incorporate sound tracks from a film distributor for the Caribbean, and as such does not need a license from the Claimant; (3) that no licensing scheme establishing tariffs as required by the Act was in force; (4) the Court was not empowered to exercise its jurisdiction to determine the dispute in the absence of a licensing scheme and rules and regulations giving effect to the Act. However, by the time the Defendant made its written closing submissions, its defence had assumed a different focus.
It is not in dispute that the Claimant entered into a Reciprocal Representation Agreement with the Performing Rights Society Limited (PRS) of the United Kingdom on 25 th April 2001 under which it was given the non-exclusive right to administer certain aspects of the copyright of members of the PRS and its affiliates within Saint Lucia. Such affiliates included members of the Broadcast Music Inc (BMI) and members of the American Society of Composers, Authors and Publishers (ASCAP) both of the United States of America.
The Claimant later, on 25 th February 2009 and 8 th April 2009, respectively, entered into Reciprocal Representation Agreements directly with BMI and ASCAP. It is the position of the Claimant that the agreements (read along with the Act) expressly provided for the right to institute and pursue legal proceedings for infringement and to recover damages. The Defendant disputes this interpretation.
The specific copyright infringement complained of is that the Defendant continually airs movies to the public, seven days a week, inclusive of soundtrack material in which the performing rights are owned by the Claimant (as representative of the copyright owners), without a license or the consent of the Claimant and fails to comply with the Claimant's demands for it to be licensed and to pay the tariff.
This claim was filed in 2010 and following a period of interlocutory skirmishing, including an appeal to the Court of Appeal, the matter finally came to trial on 2 nd February 2017. The Defendant had filed an application to stay the proceedings but on the day of trial withdrew the application.
The Claimant called two witnesses: Stevenson Etienne and Keen Cotter. Their witness statements stood as their evidence in chief. Each witness was cross-examined by Mr. Delzin, SC, counsel for the Defendant. At the close of the Claimant's case, Mr. Delzin made an application that the Claimant must be put to his election “now” as to whether it was seeking (i) an inquiry as to damages or (ii) an account of profits, both of which was claimed in the Claim Form. He relied on De Vitre v Betts 1 and Redrow Homes Ltd. v Betts Brothers plc 2 as authority for the proposition that in intellectual property proceedings a Claimant may choose between an inquiry of damages or an accounting of profits, but it could not have the benefit of both.
Secondly, he submitted that since no order for a split trial had been made at case management, the Court could not at this juncture order a split trial. That meant that the Claimant had to prove its entire case, including damages and quantum, at the trial and since the Claimant had closed its case without adducing evidence as to damages and accounts, he would therefore be limited, if successful, to nominal damages only.
Thirdly, he further submitted that the Claimant's failure to plead the existence of the licensing scheme renders all the evidence on the applicable tariff irrelevant. He argued that there is a principle of law that one can only produce evidence of facts that have been pleaded or evidence of facts that is ancillary to pleaded facts.
Mr. Antoine, counsel for the Claimant, naturally asked for time to respond to Mr. Delzin's oral application, which he had no prior notice of. The Court granted the time requested, but rather than adjourning the trial pending submissions on Mr. Delzin's application and protracting a claim already seven years old, the Court, with the agreement of counsel, proceeded to hear the evidence of the Defendant's single witness, Cleotha Nervais, after which the Defendant closed its case.
The Court directed that the Claimant file its submissions by 24 th February 2017 and that the Defendant file any response to the Claimant's submissions by 17 th March 2017. The parties were directed to make submissions on both the preliminary issues raised as well as the substantive matters. The Court would deliver one judgment encompassing preliminary as well as substantive issues, depending on the outcome of the preliminary issues. The parties later sought the Court's approval to be given a further two weeks, respectively, to file submissions. The Claimant eventually filed its written submissions 13 th March 2017 and the Defendant filed its response on 13 th April 2017.
In reviewing the written closing submissions, the Court noted that the Defendant had raised the issue of the locus standi of the Claimant. Given that the parties had agreed to narrow the issues in the pre-trial memorandum to three, and locus standi was not one of those issues, I thought it only right that the Claimant be given the opportunity to respond to the locus standi point in supplementary submissions. The Claimant filed its supplementary submissions on locus standi on 16 th May 2017.
The three issues that the parties had narrowed down (from the pre-trial memorandum) for the Court's determination were:
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(1) Whether the Defendant had to get a license to screen movies with music soundtracks incorporated in it, having gotten a distribution license to screen the movies?
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(2) Whether the Claimant first had to apply to the High Court to fix its tariff or licensing scheme before it could request a user of copyright to pay a license in accordance with its tariff?
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(3) What remedies are available to the Claimant for infringement of copyright?
The issues that now arise for the Court's determination are as follows:
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(1) Did the Claimant have locus standi to bring the action?
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(2) Must the Claimant elect between inquiry as to damages or accounting of profits and when must this be done?
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(3) No bifurcation order having been made, can the Court now give directions for assessment of damages/accounting after the trial?
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(4) Can the Claimant rely on its licensing scheme (tariff) since it was not specifically pleaded?
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(5) Did the Defendant have to get a license to screen movies with music soundtracks incorporated therein, having gotten a distribution license to screen the movies?
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(6) Did the Claimant have to first apply to the High Court to fix its tariff or licensing scheme, before it could request a user of copyright to pay a license in accordance with its tariff?
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(7) Is the Claimant entitled to damages and how should it be assessed?
The Defendant contends that in order to obtain relief, the owners of the copyright are a necessary party to the action because the owners of the copyright have concurrent rights and the Claimant is not an exclusive licensee. To buttress this, the Defendant argues that the Act makes no provision for proceedings to be brought by a non-exclusive licensee for infringement of copyright, without making the owner of the copyright a party to the claim.
It is perhaps useful to set out in full, tedious as that might be, the relevant provisions of the Act as it relates to action for infringement in order to get an appreciation of the scheme:
25. Assignments and licences
(1) Subject to this section, copyright shall be transmissible by assignment, by testamentary disposition or by operation of law, as personal or moveable property.
(2) An assignment of copyright may be partial, that is, limited so as to apply—
a) to one or more, but not all, of the things which, by virtue of this Act, the owner of the copyright has the exclusive right to do;
b) to part, but not the whole, of the period for which the copyright is to subsist.
(3) An assignment of copyright (whether total or partial) shall not have effect unless it is in writing signed by or on behalf of the assignor.
(4) A licence granted by a copyright owner is binding upon every successor in title to his or her interest in the copyright, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Act to doing anything with, or without, the licence of the copyright owner shall be construed accordingly.
26. Meaning of copyright owner
Where different persons are entitled (whether in consequence of a partial assignment or otherwise) to different aspects of copyright in a work, the copyright owner for any purpose of the Act is the person who is entitled to the aspect of copyright relevant for that purpose.
32. Infringement
(1) The copyright in a protected work is infringed by any person who, not being the owner of the...
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