Sergio Mendes Costa v DissociaDID Ltd & Anor.

Joint authorship requires collaboration pursuant to a common design, together with authorial and non-distinct contributions. Mere editorial suggestions or criticism do not suffice. Consideration must exist when the contract is made; a later change of position cannot support an earlier agreement. Contractual terms are implied only where necessary, assessed from the parties’ position at formation, and any implied copyright licence must be no wider than necessary. A bare copyright licence is revocable on clear notice, subject to a reasonable notice period. The tort of causing loss by unlawful means requires actionable interference with a third party’s freedom to deal with the claimant, together with an intention to cause loss. Knowingly maintaining a false representation which causes a platform to remove content may satisfy those requirements.

The claimant collaborated remotely with the second defendant, who operated a monetised YouTube channel concerning dissociative identity disorder. Eight literary works were accepted to be works of joint authorship. The dispute concerned a ninth work, a disclaimer, the alleged formation of a contract, the scope and termination of any copyright licence, and liability arising from copyright takedown notices sent to YouTube.

The claimant sought copyright relief. The defendants counterclaimed for breach of contract and causing loss by unlawful means. The principal issues were whether the disclaimer was jointly authored, whether the parties had contracted, when any bare licence ended, whether post-termination infringement occurred, and whether the takedown notices constituted the tort.

1. Disclaimer. Applying Kogan v Martin [2019] EWCA Civ 1645, the court considered the nature of the parties’ cooperation first. The claimant’s role was that of a friend and critic. His addition of commonplace wording was not collaboration pursuant to a common design. The disclaimer was therefore the sole work of the second defendant.
2. Contract and implied terms. The claimant received no consideration on 16 June 2020. The second defendant made no commitment, consciously or otherwise, to a detriment or to provide an indirect professional benefit. There was consequently no contract. In any event, applying Ali v Petroleum Company of Trinidad and Tobago [2017] UKPC 2 and the reasoning in Robin Ray v Classic FM Ltd [1998] FSR 622, the alleged perpetual and exclusive licence terms were not necessary and would have been assessed by reference to what was contemplated at formation, not later events.
3. Licence. The claimant granted a bare licence by conduct. Under Mellor v Watkins (1873-74) LR 9 QB 400, it was revocable on clear notice, subject to a reasonable period. Withdrawal of access to shared documents and a threat to seek legal advice were insufficient. The solicitors’ letter of 23 November 2020 was effective notice. The appropriate period was eight months, expiring on 23 July 2021, having regard to the time needed to replace the works, the effect on the channel, and the absence of demonstrated harm to the claimant. Use after that date infringed his rights.
4. Unlawful means. Applying OBG Limited v Allan [2007] UKHL 21 and Secretary of State for Health v Servier Laboratories Ltd [2021] UKSC 24, the tort required acts against a third party in which the defendants had an economic interest, actionable conduct, interference with the third party’s freedom to deal with the defendants, and an intention to cause loss. The claimant knowingly maintained a false representation that the disclaimer was being used without permission. YouTube relied on it and removed videos. The claimant intended that result and intended harm to the defendants. The unlawful-means counterclaim therefore succeeded.
5. The counterclaim for breach of contract was dismissed. Assessment of loss was adjourned, with any assessment of the claimant’s copyright remedies to take place at the same time, subject to proportionality.