Estate of the Nation vulnerable to terror attack of the Dalek exclusive licensees

Wednesday was the day the Daleks had their day in court, in JHP Ltd v BBC Worldwide Ltd and another [2008] EWHC 757 (Ch), a decision of Mr Justice Norris in the Chancery Division of the High Court, England and Wales (thank you, Simon Haslam of Abel & Imray for letting the IPKat know about it).

The Daleks appeared in the first series of the popular British Dr Who children's TV series in 1963. Their creator Terry Nation entered into agreements in 1964 and 1965 with SP (the predecessor of JHP,the claimant in this action), for the publication of books featuring the Daleks. These agreements provided the basis for the publication of The Daleks Book, The Dalek Annual No. 2, The Dalek Pocket Book and Space Travellers Guide', The Dalek Book and The Dalek Pocket Book .

Terry Nation died in 1997. Four years later JHP wrote to the BBC, seeking to explore the possibility of exploiting these earlier books and other Dalek-related merchandise, but no agreement was reached. Meanwhile, the BBC began negotiations with the trustees of Nation's estate. While no written agreement was reached as to the use of the contents of the earlier books, subsequent evidence indicated that representatives of the BBC and Nation's estate had reached an accord as to the BBC's use of those earlier works. In 2002, the BBC published The Dalek Survival Guide, which referred to text used in the earlier works. JHP, as the exclusive licensee of the right to publish the earlier works, sued the BBC for copyright infringement, seeking damages. The BBC maintained that it had acquired a licence by estoppel from Nation's estate to use the material featured in the earlier books in its new books.

Norris J dismissed JHP's action. In his view, on the true construction of the agreements, JHP was the exclusive licensee of the right to publish material found in the earlier books. The BBC however acted in the belief that it had the permission of the estate to use material derived from the earlier works in which the estate held the copyright, acting on that belief in paying writers to prepare text in publishing and marketing the new book in which the text in issue had been referenced. The BBC therefore had a complete defence to the claim, even if it had infringed the rights of the exclusive licensee.

The IPKat says, this may seem strange, but that's how the Copyright, Designs and Patents Act 1988, s.101(3) works: it provides that, in any action brought by an exclusive licensee, the defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner. So JHP will have to take the matter up with Nation's estate, it seems, who are apparently authorising an infringing act under s.16(2) of the same Act.

Merpel says, isn't it unusual these days to see a dispute like this get as far as a full trial when there's a knock-out statutory defence like this one sitting here?

What's really inside a Dalek here
Brave cat takes on Dalek here