JHP Ltd v BBC Worldwide Ltd & Anor

An agreement granting a publisher the sole and exclusive right to publish a specified work in book form may create an exclusive licence rather than an assignment of copyright. The document must be construed as a whole, in its factual and commercial context; no single expression, including a reverter clause, is conclusive.

An exclusive licensee’s infringement action remains subject to any defence available against the copyright owner. Copying requires proof of a sufficient degree of similarity, but infringement arises only where the copied material is a substantial part of the particular copyright work. Substantiality is a question of fact and degree, assessed by the quantity and quality of the material taken in relation to the work as a whole. Material lacking originality will not normally constitute a substantial part.

JHP claimed to be the assignee or exclusive licensee of copyright in three Dalek books created by Terry Nation and published by Souvenir Press. It alleged that BBC Worldwide had infringed the copyright by using text from the books in The Dalek Survival Guide.

The court considered whether the 1964 and 1965 agreements assigned copyright or granted limited exclusive licences, whether BBC Worldwide could rely on a defence available against the copyright owner, and, alternatively, whether the Guide copied a substantial part of any individual book.

1. Nature of the rights granted. The agreements were to be construed by asking what they conveyed to a reasonable person with the relevant background knowledge. Decisions on different agreements were of limited assistance. The 1964 Agreement granted a limited exclusive licence to publish the specified text in book form. The March and July 1965 Agreements likewise granted exclusive licences, not assignments. The conclusion followed from the language as a whole, including the use of “grant”, the limited publishing right, royalty provisions, restrictions on the author’s residual rights and the commercial context. A reverter clause was suggestive but not conclusive.
2. Defence under the Copyright, Designs and Patents Act 1988. JHP was, by succession, the exclusive licensee of the right to publish the Books. Under section 101(3), BBC Worldwide could rely on any defence available had the proceedings been brought by the copyright owner. The evidence established that the Terry Nation estate had agreed to the use of material from the Books in circumstances giving rise to a licence by estoppel. Although no legally enforceable contract had been concluded, the estate had led BBC Worldwide reasonably to believe that it could use the material and had not insisted on its strict rights. This provided a complete defence.
3. Alternative copying claim. The court accepted that there had been some copying by members of the writing team, but not copying of a substantial part of any Book considered individually. Similarity arising from common television sources, or from descriptions of an existing artistic concept, did not establish copying from the Books. Substantiality required assessment of the quantity and quality of the material taken by reference to the particular work as a whole. The material copied was quantitatively small and of limited significance, and much of it lacked originality because it repeated material from earlier television scripts or other sources.
4. The claim was dismissed on the primary ground. The alternative copying claim also failed. The issue of additional damages under section 97(2) therefore did not arise; had it arisen, the copying would not have been regarded as deliberate, intentional or calculated.

First-instance decision. No prior appellate decision was stated in the judgment.