Fit to sue; Forthcoming AIPPI talk

It wasn't exactly a Highland Fling, but the IPKat found himself roamin' in the gloamin' the other day and encountered a rare Scottish IP decision: a ruling on an interim application in Performing Right Society Ltd v Kwik-Kit Group Ltd [2007] CSOH 167, this being heard by Lord Emslie in the Court of Session last Friday, 5 October.

Right: Kwik-Fit's employees practise the Haka before going to battle against their arch foes the PRS

The pursuers (that's the Scottish word for 'plaintiff') PRS, as owners of the copyright in a vast portfolio of musical works, sought damages and injunctive relief in respect of alleged long-term infringement by the playing of music at Kwik-Fit motor car service centres throughout Scotland. According to PRS, Kwik-Fit employees

"routinely use personal radios at work in such a way as to make copyright works audible to colleagues and customers alike. This, it is said, constitutes the "playing" or "performance" of such works "in public" for the purposes of section 16 of the Copyright, Designs and Patents Act 1988, and renders the defenders guilty of copyright infringement either directly or through others authorised by them. Alternatively, the defenders are charged with infringement under section 26(3) of the same Act, by permitting employees to bring personal radios on to the premises in the knowledge, or with reason to believe, that infringing acts were likely to occur".

Kwik-Fit - who for 10 years have had a formal ban on employees taking their radios to work - sought dismissal of this action as irrelevant or as not providing fair notice of the case they have to meet. Lord Emslie however allowed the action to proceed. He said, in relevant part:

"[8] In my opinion there is some force in the defenders' contentions regarding lack of specification in the pursuers' averments. By way of illustration, I think that the precise conduct alleged against the defenders themselves could have been more clearly and specifically averred; more could have been said about the degree of audibility of music played at different premises at different times; the same applies to the extent to which copyright works were involved; and explicit averments might have been included as to the defenders having done or authorised infringing acts, or as to their having permitted the use of personal radios in the workplace in the knowledge, or with reason to believe, that copyright infringement was likely to occur. However, looking broadly at the pursuers' averments as a whole, I am not persuaded that they are irrelevant in the sense that, if they were all fully proved, the case would nevertheless be bound to fail. Equally, it does not seem to me that the defenders are currently denied fair notice of the case against them to such a degree that dismissal, or partial exclusion from probation, could be regarded as a realistic option.

[9] As characterised in the course of the debate, the pursuers' allegations are of a widespread and consistent picture emerging over many years whereby routine copyright infringement in the workplace was, or inferentially must have been, known to and "authorised" or "permitted" by the defenders' local and central management. If that picture were to be satisfactorily established after proof, it is in my view at least possible that liability for copyright infringement would be brought home against the defenders under either or both of sections 16 and 26(3) of the Act. At this stage, certainly, such an outcome cannot be ruled out, especially in circumstances where the true scope and application of the law regarding the "playing" or "performance" of copyright works "in public" have not been explored in argument. On relevancy grounds, therefore, the pursuers are in my view entitled to the inquiry which they seek. Having reached that conclusion, however, I am not to be taken as accepting that, on proof of the averments in question, the pursuers would necessarily succeed in their claims against the defenders. In the course of the debate various hypothetical situations were figured in which charges of copyright infringement might arguably go beyond the contemplated scope of the legislation and/or offend against common sense. Whether, in the event, any such difficulties materialise in this case will depend on how the evidence turns out at the proof.

[10] Reverting to the defenders' complaint of a lack of fair notice, it seems to me that, with the assistance of the incorporated schedule, they now know the scale and geographical extent of the picture which the pursuers seek to paint against them. They also know from the associated averments that the pursuers are offering to prove consistent findings on each recorded inspection visit, to the effect that copyright works played on personal radios are routinely audible to the workforce and customers alike. In addition the pursuers offer to prove a long-term state of awareness on the part of the defenders' central and local management from which inferences of "authorisation" and "permission" may legitimately be drawn. Against that background, it is hard to see what further notice the defenders can now truly require, bearing in mind that formal averments of the statutory wording of sections 16 and 26(3) of the Act would tell them nothing that they do not already know. The defenders fairly acknowledge that proof of every single instance of alleged infringement might be an unwieldy and excessive exercise, but for the pursuers it was stressed that without some agreed identification of a representative sample for the purposes of proof there might be little alternative but to go the whole way. At this stage, ... I am not persuaded that the court can or should curtail the pursuers' freedom to lead evidence, if they have to, on all of the matters particularised on Record and in the incorporated schedule.

[11] Finally, as regards the defenders' averments of their long-standing company policy prohibiting the use of personal radios in the workplace, I am satisfied that they are relevant to go to inquiry and that the pursuers' challenge is not well founded. At the very least, as it seems to me, the existence of such a policy must be one of the many factors to be considered in any assessment of the defenders' alleged responsibility for primary or secondary infringing acts".

The IPKat looks forward to the ruling at trial, noting the decision of the Danish Supreme Court in Marius Pedersen A/S v KODA [2007] ECDR 15 that an employer was not carrying on a public broadcast of copyright-protected work even if it supplied its employees with radios and players at the workplace.


A grand treat is promised to all who attend "Keeping Copyright in its place: Copyright as an Industrial Property Right", a talk which will be given by Cambridge academic Lionel Bently to the UK chapter of the AIPPI next Wednesday, 17 October 2007. Lionel, who is Herchel Smith Professor of IP Law, speaks at 6pm, following the AIPPI's AGM at 5pm. According to the rubric,

"It has long been recognised in the context of industrial designs that copyright law has the potential to confer rights that affect the manufacturing and distribution of products. In order to rectify some of the perceived problems with copyright in the industrial arena, the UK legislature introduced the "unregistered design right" and stripped copyright for designs down to size through section 51 of the CDPA 1988. This talk will consider the remaining potential for copyright in the UK, and elsewhere, to affect manufacturing trade. It will ask whether protecting works that are the product of industry - logos, slogans, recipes, instructions, packaging and so on - is good for industry, and, if not, whether and how such rights can or should be limited".

If you'd like to attend this event, whether you are a member or not, please email Colin Baker. If you are not a member, application forms can be obtained here. It won't cost you more than £20 ...