Phonographic Performance Ltd v Raine

A court has a discretion to stay copyright infringement proceedings where a related licensing dispute has been referred to the Copyright Tribunal. The court is not obliged to grant a stay merely because the Tribunal may determine an issue relevant to the proceedings. A stay may nevertheless be appropriate where the Tribunal’s decision could retrospectively affect whether infringement occurred and could therefore undermine the claim against a person alleged to have authorised or procured infringement. Appropriate conditions may protect the claimant, including undertakings to prosecute the Tribunal proceedings promptly, an undertaking to be bound by the Tribunal’s determination, and security for potential licence fees or damages.

Phonographic Performance Ltd brought copyright infringement proceedings against Simon Noel Raine, who was closely associated with companies operating nightclubs. The claimant alleged that music had been performed without effective licences after the companies entered administration and new companies took over the club operations.

Two successor companies subsequently applied to the Copyright Tribunal under section 121 of the Copyright, Designs and Patents Act 1988 for declarations that they were entitled to licences, potentially with retrospective effect. Mr Raine applied to stay the infringement proceedings pending the Tribunal’s determination. The central issue was whether a stay was appropriate and, if so, on what terms.

1. The application for a stay was granted. The court had a discretion whether to stay the proceedings; it was not obliged to do so merely because a related issue had been referred, or might be referred, to the Copyright Tribunal.

2. The Tribunal applications raised issues capable of materially affecting the infringement claim. If the Tribunal granted a licence, or declared a retrospective entitlement to one, the companies might not have infringed copyright during the relevant period. That could remove the foundation for an allegation that Mr Raine had authorised or procured infringement as a joint tortfeasor.

3. The court considered that it was unlikely to be able itself to make the type of order contemplated by section 121(4) of the Copyright, Designs and Patents Act 1988, concerning entitlement to a licence and its terms. In any event, the issue would require fuller pleadings, evidence and submissions.

4. The lateness and defects in the Tribunal applications were criticised but did not justify refusing a stay. Questions concerning the merits of those applications were matters for the Tribunal, subject to any application by the claimant to strike them out.

5. The stay was conditional on the companies prosecuting the Tribunal proceedings with all reasonable expedition, Mr Raine taking steps to secure that expedition and undertaking to be bound by the Tribunal’s findings, and the companies paying £25,000 into court as security. Further undertakings were required concerning the accuracy of future licence applications. The claimant had liberty to apply to lift the stay for material non-compliance or a material change of circumstances.

The judgment records earlier procedural steps in the High Court, including an adjourned summary judgment application before Peter Smith J. This court granted a stay pending proceedings before the Copyright Tribunal.