Performing Right Society Ltd. v B4u Network (Europe) Ltd.

An assignment of rights which the assignor may later acquire or own can operate as a present assignment of future rights. It does not necessarily impose a condition precedent postponing the assignment until acquisition or ownership. Under Copyright, Designs and Patents Act 1988, sections 9, 11 and 91, the author may remain the first owner when copyright arises, but section 91 then vests the copyright in the assignee entitled as against all other persons. Where competing assignments of future copyright exist, priority ordinarily follows the first assignment. The expressions “rights which may be acquired or owned” and “future rights” may therefore have the same legal effect.

Performing Right Society Limited sought partial summary judgment against B4U Network (Europe) Limited for infringement arising from B4U’s broadcast of a musical work composed for a Bollywood film. The composers had previously agreed to transfer to PRS rights in musical works which belonged to them or which they might acquire or own while members. They later entered into a commissioning agreement assigning copyright in present and future work to the film producers. B4U argued that the PRS agreement operated only after the composers acquired or owned the copyright, so that the later assignment to the producers had priority. The central issue was whether the two forms of assignment had materially different legal effects.

1. The court granted partial summary judgment for PRS in relation to the Song. There was no real prospect that B4U could successfully defend that part of the claim, and no other compelling reason for a trial.

2. Part 24 permits the court to determine a short point of law or construction summarily where it has the evidence necessary for proper determination and the parties have had an adequate opportunity to argue the issue. The court applied the principles summarised in FG Wilson (Engineering) Limited v John Holt & Company (Liverpool) Limited [2012] EWHC 2477 (Comm).

3. Section 11 of the Copyright, Designs and Patents Act 1988 identifies the first owner of copyright. Section 91 is a vesting provision. It does not make the assignee the first owner, or eliminate the existence of a first owner. Where the composer is the first owner, section 91 operates when copyright comes into existence to vest it in the assignee or successor entitled against all other persons.

4. Clause 2(a) of the PRS agreement was a present assignment of future rights. The words “which you may acquire or own” did not create a condition precedent. There was no material legal difference between assigning now a right which did not yet exist and assigning now a right when it was acquired.

5. The later commissioning agreement could not displace the earlier PRS assignment. The PRS agreement was first in time and therefore took priority. The court considered that the reasoning in Chaplin v Leslie Frewin (Publishers) Ltd [1966] 1 Ch 71 and Peer International Corporation v Termidor Music Publishers [2004] Ch 212 supported that conclusion.