IPEC puts its Sensitive Touch on joint authorship claim in a musical work

Nedim Malovic

A few months ago the Intellectual Property Enterprise Court (IPEC) issued a very interesting decision regarding post-punk bands, copyright and joint authorship in musical works. The case is Minder Music & Another v Sharples.

At the time when this judgment was released the IPKat did not have the chance to report on it. This is why it is particularly grateful and truly delighted to host the following analysis by music and IP enthusiast Nedim Malovic (Stockholm University), which will be also published soon in the Journal of Intellectual Property Law & Practice.

Here's what Nedim writes:

"This case concerned the rights to a song, Touch Sensitive, recorded by the band “The Fall” and first performed in 1998. Julie Adamson, a band member, wrote the music and the vocalist, Mark Smith wrote the lyrics to the song. Mr Smith later assigned his rights in the song to one of the claimants, Minder Music. In 1999 Mr Smith and Ms Adamson agreed that the rights to the song should be split one-third to Mr Smith and two-thirds to Ms Adamson.        

The defendant in the proceedings, Steven Sharples, was engaged in the production of the album version of the song, having been assigned this task following an oral agreement between himself and a Mr Bernard McMahon.

Yes, this is indeed a picture of "The Fall"

Besides an inquiry as to damages, in their action before the IPEC the claimants sought a declaration that: Minder Music owned a 33.34% off the copyright share in the album version of Touch Sensitive, while Ms Adamson owned 66.66% to it (or such share as the Court would determine); and no part of the copyright to this song was owned by Mr Sharples at any point.

Mr Sharples denied that the claimants were entitled to such declarations and damages, on the ground that he had contributed substantially to both the lyrics and music, and had also entered into a settlement agreement with Ms Adamson that would entitle him to a one-third share in the copyright to the song. The agreement under which Mr Sharples had relied upon was one concluded in 2013 to settle a dispute regarding the division of royalties held by PRS, and according to which each party was to receive a third share.

The decision

In reaching her decision, deputy judge Miss Recorder Amanda Michaels considered whether: (1) the settlement agreement was valid and binding upon the parties; (2) any oral agreement was made by Mr McMahon and Mr Sharples, and if so, whether Mr McMahon had the actual authority of “The Fall” to enter into such agreement on their behalf; (3) Mr Sharples’s claim to be a joint author of the album version of Touch Sensitive was a valid one under s 10(1) of the Copyright, Designs and Patents Act 1988 (‘CDPA’).

A sensitive touch ...

(1) Whether the settlement agreement was valid and binding

The claimants submitted that the agreement was an unconscionable bargain because Mr Sharples had taken undue advantage of Ms Adamson’s precarious economic situation to press her into entering a substantially disadvantageous settlement.          

The judge declined to set aside the settlement agreement because the evidence provided did not show any undue pressure, and in part actually showed that Ms Adamson actively sought the agreement as a way of resolving her financial problems, through which she hoped for the release of the accrued royalties.

(2) Whether there was any valid agreement between Mr McMahon and Mr Sharples

The judge took the view that this agreement was void because Mr McMahon was not authorised – either in fact or by conduct – to act as agent for the band collectively or for Mr Smith and Ms Adamson as individuals.

(3) Whether Mr Sharples’s claim of joint authorship was a valid one

This point required the judge to consider relevant case law on joint authorship pursuant to s10 CDPA, notably Bamgboye v Reed and Brookerand Another v Fischer. These authorities suggest that joint ownership is not necessarily the same as equal ownership of copyright. Where two or more collaborators claim to have contributed to a copyright work the task of the judge is to discern the nature and extent of each party's contribution in order to determine his or her share of the copyright. To this end, what needs to be taken into account is the degree and quality of each party’s contribution, considering that in any case such contributions – while significant – do not need to be equal in terms of quantity, quality or originality.

This said, the judge considered Mr Sharples’s contributions to the lyrics and music of Touch Sensitive, respectively. With regard to the former, she dismissed any joint authorship claim. However, the judge found that the defendant’s contribution to the music of the song could entitle him to joint authorship and ownership of 20% of the copyright value of the album version of Touch Sensitive.

... and a slightly less sensitive one

Practical significance

The case indicates that not every contribution to the creation of a work justifies a share of the copyright in that work. More specifically the contribution at hand must add some value to the work, although it does not need to be equal in terms of quantity, quality or originality among all co-authors. In other words, the contribution must be of the right kind, ie sufficiently original. As regards the extent to which a derivative work is a new work, the judge took the view that it suffices to deploy the UK approach, namely that a work is the result of its author’s own skill, labour, or effort.

In determining to what extent a derivative work is a new work, one may consider that the degree of originality required would be less stringent in the event of deploying the UK approach in lieu of the standard of originality indicated by the Court of Justice of the European Union in Infopaq and its progeny. Among other things, this conclusion is supported by the Opinion of Advocate General Paolo Mengozzi in Football Dataco, in which he held the view that copyright protection requires something more than just labour and skill (para 35).

In this case the judge did not engage in any discussion of whether and to what extent the EU standard of originality differs from the traditional UK test. Indeed, on this very point there has not yet been any particularly thorough discussion in UK courts. The result is that the dictum by Mrs Justice Proudman in Meltwater, ie that “the test of quality has been re-stated but … not significantly altered by Infopaq” (para 81), possibly (and regrettably) still remains the most explicit stance in this respect."