Performing Right Society Ltd v London Theatre of Varieties Ltd

Viscount Cave L.C. My Lords, this
appeal from the Court of Appeal in England raises the
'question whether the appellant society, which is entitled
in equity to the performing rights in certain musical
works, can obtain a perpetual injunction against an
infringement of those rights by third parties without
joining the legal owners of the copyright as parties to
the action. :

The society was registered in the year 1914 under the
Companies Acts as a company limited by guarantee, its
principal object being '"' to exercise and enforce on behalf
of members of the company, being the composers of any
musical works or the authors of any literary or dramatic
works, or the owners or publishers of or being otherwise
entitled to the benefit of or interested in the copyrights in
such works, all rights and remedies under the Copyright
Act, 1911, or otherwise in respect of the public performance
of their works." It was provided by the society's articles of
association that every member who was a publisher should,
during the period of his membership, assign to the company
his interest, whether present or future, in the right to perform
any musical or dramatic work which had been or should
be published by him, and that until such assignment and so
far as it might not extend every such member invested the
company during the period of his membership with the right
in his name to institute proceedings against all persons
performing such works without authority. The society was
to have the sole right of authorizing or forbidding the public
performance of any works published or to be published by
a member who was a publisher, of granting licences for the
public performance of such works, and of collecting fees
for the performance of any such works and damages and

(1) (1851) 17 Q. B. 281.

9

H. L. (E.)
1923

-——_
PERFORMING
RicHtT

10

H. L. (E.)
1923

HOUSE OF LORDS [1924]

compensation for unauthorized performances. The net
moneys so received, after providing for expenses and a reserve

Perrormine fund, were to be distributed among the proprietors in

Ricut
Soctzry,
Lp.

VARIETIES,
Lp.

Viscount Cave,
L.C.

accordance with rules to be made by the society. Rules were
made accordingly, but it is unnecessary to refer to them in
detail. It appears that the society has nearly 500 members
(persons, firms, or companies) and controls the performing
rights in over a million musical works. The practice of
the society is to grant general licences to perform all or any
of the works under its control to the proprietors of theatres,
music halls and other places of entertainment at an inclusive
fee, and it is said that the number of such general licences
exceeds 4000.

In the year 1916 Messrs. Chappell & Co., Ld., the well-
known music publishers, became members of the society ; and
by an indenture dated June 26, 1916, Chappell & Co., Ld.
(therein called "'the assignor''), in accordance with the
articles of association, assigned to the society (among other
things) "'the right of performance in all parts of the world
of each and every song with the words thereof or musical
work (not being a musical play) the right of performance
of which then belonged to, or should thereafter be acquired
by or be or become vested in, the assignor during the continu-
ance of the assignor's membership of the Society,' such
rights to be held by the society for the period of the
assignor's membership. In consideration of this assignment
the society covenanted with the assignor to collect and pay
to the assignor in respect of the said performing rights, such
sums of money out of the moneys collected by the society
in respect of the public performances of the works of its
members as should represent the share of the assignor therein,
in accordance with the rules of the society for the time being
in force. On January 3, 1919, Mr. W. Howard Fisher, the
author and composer of a song then called '"' My Wedding "
or " Down Exeter Way," but afterwards known as " The
Devonshire Wedding," assigned the copyright and sole right
of representation of that song to Chappell & Co., Ld., in
consideration of a cash payment and a royalty. Chappell &

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Fa Sy tng ahd ey apm

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Faerie

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A. C. AND PRIVY COUNCIL.

Co., Ld., had until the date of this assignment no interest
in the song.

11

H. L. (Ei)
1923

In the year 1918 Messrs. Keith, Prowse & Co., Ld., also PrrvoRMine

well-known music publishers, became members of the society,
and by an indenture dated July 30, 1918, which was in like
form with the deed executed by Messrs. Chappell & Co.,
they assigned to the society the right of performance of the
music of every song or musical work (not being a musical
play) the right of performance of which belonged to or should
thereafter be acquired by or be or become vested in them
during the continuance of their membership of the society,
such rights to be held by the society for the period of their
membership. On January 24, 1919, Mr. J. Lensen, the
author of a song then called '" Lullaby" but afterwards
"Love in Lilac Time," assigned to Messrs. Keith, Prowse &
Co., who until then had no interest in the song, his copyright
and performing rights in the song.

On November 1, 1920, the respondents, who had previously
held a licence from the society to perform at their places of
entertainment any musical works controlled by the society,
but who then had no such licence, caused '"' The Devonshire
Wedding"' and "' Love in Lilac Time " to be played and sung
at one of their music halls. There was some suggestion in
the action that the publishers, Messrs. Chappell & Co. and
Messrs. Keith, Prowse & Co., had authorized the performance
of the songs ; but this was not clearly established, and if any
authority was given it can hardly be doubted that it was
intended to be conditional on the consent of the society
being obtained.

After some correspondence, the society on November 17,
1920, commenced this action against the respondents, claim-
ing an injunction to restrain the respondents from performing
the above-mentioned songs in public without the leave of
the society and damages for infringement of their copyright.
The respondents in their defence denied the plaintiffs' title,
and further pleaded that the plaintiffs were a trade union
within the meaning of the Trade Union Acts, 1871 to 1913,
and that as such their registration and incorporation as a

RIGHT
Socrmtry,
Lp.

VARIETIES,
Lp.

Viscount Cave
L.C.

12 HOUSE OF LORDS [1924]

H.L.(E.) company was void and unlawful. The action was heard

1923 by Branson J., who gave judgment for the plaintiffs for an

Perrormine injunction and damages, holding that the society was not

eee a trade union, and that, although the equitable owner only

a of the performing rights, it was entitled to the relief

Loypon claimed. On appeal the Court of Appeal (Bankes, Atkin and

Vers Younger L.JJ.), while agreeing with the learned judge in his

'a al decision that the society was not a trade union, held that

Viscoumt Cave the society, being the owner in equity only of the performing

oe rights, could not obtain either damages or a perpetual

injunction without adding the legal owners of those rights as

parties to the action. The appeal was accordingly allowed

and the judgment of Branson J. set aside; but it was

ordered that the plaintiffs be at liberty, within fourteen days

of the date of the order, to elect to amend the writ and all

subsequent proceedings in the action by adding the legal

owners of the copyright of the songs as co-plaintiffs, and

in that event should pay the costs thrown away, including

the costs of the appeal. The appellants, although under their

articles of association and the indentures above referred to

they were entitled without further authority to add the

two publishing firms as co-plaintiffs, declined so to do and
presented the present appeal to this House.

My Lords, it is convenient to deal first with the question
whether the appellants, not having added the owners of the
performing rights as parties to the proceedings, can obtain
the relief sought. It was not maintained before your Lord-
ships that the appellants could obtain an order for damages ;
but it was argued that they could claim the injunction sought,
and that on two grounds.

First, it was said that by virtue of the two indentures of
June 26, 1916, and July 30, 1918, above referred to, the
appellants were the assigns of the performing rights within
the meaning of s. 5, sub-s. 2, of the Copyright Act, 1911,
and accordingly were entitled under s. 5, sub-s. 3, and gs. 6
of the Act to the injunction claimed. If this were so, the
appellants would be entitled, not only to an injunction, but
also to damages ; but in fact it appears to me that there is

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Fi
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A. ¢. AND PRIVY COUNCIL.

no foundation for the contention. Sect. 5, sub-s. 2, of the
Act provides that the author of a work may assign the copy-
right either wholly or partially and may grant any interest
in the right by licence, but that '"' no such assignment or grant
shall be valid unless it is in writing signed by the owner of
the right in respect of which the assignment or grant is made
or by his duly authorised agent.'"' Whether a document
. passing only an equitable interest in an existing copyright,
if signed by the person who was then the owner of the right,
would be an assignment within the section, it is not necessary
to determine, for no such question arises in the present case.
There was on the respective dates of the instruments under
which the appellants claim no existing copyright in the songs
in question, and therefore no owner of any such right; and
this being so, neither of those instruments can be held to
have been an assignment "' signed by the owner of the right "
within the meaning of the section. No doubt when a person
executes a document purporting to assign property to be
afterwards acquired by him, that property on its acquisition
passes in equity to the assignee: Holroyd v. Marshall (1) ;
Tailby v. Official Recewer (2); but how such a subsequent
acquisition can be held to relate back, so as to cause an
instrument which on its date was not an assignment under
the Act to become such an assignment, I am unable to under-
stand. The appellants have a right in equity to have the
performing rights assigned to them and in that sense are
equitable owners of those rights; but they are not assignees
of the rights within the meaning of the statute. This
contention therefore fails.

But secondly, it was strenuously argued that apart from
the statute the society, although equitable owners only of
the copyright, could sue for a perpetual injunction without
adding the legal owners either as plaintiffs or defendants ;
and counsel for the appellants went so far as to contend that
since the fusion of law and equity by the Judicature Acts an
equitable owner of property can in every case sue for and
obtain a perpetual injunction for the protection of such

(1) 10 H. L. C. 191. (2) 13 App. Cas. 523.

13

H. L. (E.)
1923

oS,
PERFORMING
Ricur

Viscount Cave
L.C,

14

H. L. (E.)
1923

HOUSE OF LORDS [1924]

property without joining the legal owner as a party. I am
unable to take that view. That an equitable owner may

Prrrormine Commence proceedings alone, and may obtain interim pro-

Ricut
Society,
Lp.

VARIETIES,
Lp.

Viscount Cave
L.C.

tection in the form of an interlocutory injunction, is not in
doubt ; but it was always the rule of the Court of Chancery,
and is, I think, the rule of the Supreme Court, that, in general,
when a plaintiff has only an equitable right in the thing
demanded, the person having the legal right to demand it
must in due course be made a party to the action: Daniell's
Chancery Practice, 7th ed., vol. i., p. 172. If this were not
so, a defendant after defeating the claim of an equitable
claimant might have to resist like proceedings by the legal
owner, or by persons claiming under him as assignees for
value without notice of any prior equity, and proceedings
might be indefinitely and oppressively multiplied. No doubt
the rule does not apply to a mortgagor, at least since the
passing of s. 25, sub-s. 5, of the Judicature Act, 1873; and
there may be special cases where it will not be enforced,
as in William Brandt's Sons & Co. v. Dunlop Rubber Co. (1),
where the defendant disclaimed any wish to have the legal
owners made parties. Further, under Order xvi., r. 11,
no action can now be defeated by reason of the misjoinder or
non-joinder of any party; but this does not mean that
judgment can be obtained in the absence of a necessary
party to the action, and the rule is satisfied by allowing
parties to be added at any stage of a case. Subject to these
observations, I think that the general rule is still operative,
that it was properly applied to the case of a patent in
E. M. Bowden's Patents Syndicate v. Herbert Smith & Co. (2)
and to the case of a copyright in University of London Press
v. University Tutorial Press (3), and that it applies in the
present case.

It was argued that, whatever may be the general rule,
there is authority showing that the equitable owner of a
copyright is entitled to an injunction against infringement,
and reference was made to Lord Eldon's decisions in

(1) [1905] A. C. 454, 462. (2) [1904] 2 Ch. 86.
(3) [1916] 2 Ch. 601.

A. C. AND PRIVY COUNCIL.

Universities of Oxford and Cambridge v. Richardson (1) and
Mawman v. Tegg (2), and to those of Shadwell V.-C. in

15

H. L. (E.)
1923

Sweet v. Shaw (3); Sweet v. Cater (4); and Bohn v. Bogue. (5) Purrormina

But in all these cases the injunction granted was interlocutory
only and pending the decision of an action at law, and there
is nothing to show that on the bills coming up for further
consideration permanent relief was, or would have been,
granted without proof of the plaintiffs' legal title. On the
other hand, in Colburn v. Duncombe (6) Shadwell V.-C. allowed
a demurrer to the bill on the ground that the legal owner
was not a party; and in Mitford's Chancery Pleadings, 5th
ed. (1847), p. 418, it is stated in terms that "the author of
a work is a necessary party to a suit by the publisher to
restrain an invasion of the copyright, where no actual assign-
ment has been made of the copyright, but only an agreement
to assign or dispose of it, and where, consequently, the legal
title to the copyright remains in the author." The decisions
quoted are, therefore, no authority for the appellants' claim.

For the above reasons, I am of opinion that the appellants
are prevented by the law and practice of the Courts from
obtaining the perpetual injunction which they claim; and
this being so, it is unnecessary to deal at length with the
contention of the respondents that the society is a trade
union, and on that ground unable to sue. As to this point,
it is sufficient to say that I agree with the reasoning and
conclusions of the Court of Session, who in Performing Right
Society v. Edinburgh Magistrates (7) held the appellant society
not to be a trade union, and with the judgments of Branson J.
and the Court of Appeal in the present case. In my opinion
this appeal fails and should be dismissed with costs.

Viscount Fintay. My Lords, it is unnecessary to restate
the facts of this case. The objection to the right of the society
to maintain the action is that they have only an equitable title

(1) (1802) 6 Ves. 689. (4) 11 Sim. 572.
(2) 2 Russ. 385. (5) 10 Jur. 420.
(3) 3 Jur. 217. (6) 9 Sim. 15].

(7) 1922 S. C. 165.

Ricur
Socrery,
Lp.

VARIETIES,
Lp.

Viscount Cave
L.C.

16 HOUSE OF LORDS [1924]

H.L.(E.) and that the legal owner ought to have been joined. The
1923 society were afforded by the Court of Appeal the opportunity
Prrrormine of amending by joining the legal owner upon terms, but they
eee, refused to accept this offer and have taken their stand upon
Lp. their supposed right to sue alone in virtue of their equitable

aos title.

oars The society was formed for the protection of copyright in
a, music and songs, and its members are authors, publishers
Viscount Pinay, 220 other owners of copyright in such productions. It had
= been found that a great deal of piracy of the right of repre-
sentation of such works was carried on with impunity owing
to the inability or reluctance of individual owners of such
copyright to take proceedings. The machinery adopted was
to vest in the society the copyrights of all members, leaving
it to the society to see that no performance took place without
a licence from the society, and to collect the fees payable
for such licences for division among the members of the

society.

In this action the society had claimed an injunction and
damages. The claim for damages was withdrawn, as it was
admitted that for this purpose the presence of the owner of
the legal estate would be necessary to avoid the possibility
that payment might be made to the wrong person. On
the other hand, the right of the society to an interlocutory
injunction for the protection of the property pendente lite
was not questioned. But it was maintained by the defend-
ants that it was impossible in the circumstances of the present
case to grant a perpetual injunction at the instance of a
plaintiff who was merely an equitable owner. Whether this
contention of the defendants is right is the question on this
appeal.

The action was brought to restrain the unlicensed per-
formance of two songs with their accompaniments—' Love
in Lilac Time' and "A Devonshire Wedding "—copyrights
in which were vested in Messrs. Chappell & Co. and Messrs.
Keith, Prowse & Co. by assignments from the authors dated
January 3, 1919, and January 24, 1919, respectively. Both
of these firms are members of the society and had executed

A. C. AND PRIVY COUNCIL.

general assignments to it dated June 26, 1916, and July 30,
1918, of the right of performance of each and every musical
work, the right of performance of which belonged to or should
thereafter be acquired by or become vested in the assignor
during the assignor's membership of the society, the society
covenanting to collect the fees and pay over his share thereof
to the author. At the date of this general assignment the
songs and music in question had not been composed, and
when they did come into existence they were assigned, as
already stated, to the two firms in January, 1919.

The assignment to the society by the two firms of the
performing rights with regard to these two songs was invalid
at common law. The property in the copyright was not
acquired by the assignors until dates subsequent to those
of the general assignments made by them as members to
the society, and the common law does not recognize as valid
any assignment of property to be afterwards acquired by the
assignor. But the assignment was good in equity. It
was made for valuable consideration, and as soon as
Messrs. Chappell and Messrs. Keith, Prowse acquired the
copyrights from the authors the prospective assignment
which each of them had made to the society attached,
and the society became the equitable owner of the
performing rights in respect of each of the songs.

The fifth section of the Copyright Act, 1911, enacts that
(subject to special provision for cases in which the work
was made to order for valuable consideration or was prepared
under a contract of service) the author shall be the first
owner of the copyright. The copyright in these songs accord-
ingly vested in the authors and was assigned by them to
Messrs. Chappell and to Messrs. Keith, Prowse & Co. respec-
tively, who thereby became and are now the legal owners of
the whole copyright. The fifth section goes on to provide
that the owner of the copyright may assign the right by
writing duly signed, and where there is a partial assignment
the assignee as respects the right so assigned, and the
assignor as respects the rights not assigned, is the owner
of the copyright for the purposes of the Act. The thirty-

A. C. 1924. 3 C

17

H. L. (E.)
1923

=~
PERFORMING
Ricur
Socrery,
Lp.

VARIETIES,
Lp.

Viscount Finlay.

18 HOUSE OF LORDS [1924]

H.L.(E.) first section provides that no person shall be entitled to copy-
1923 ~—rright or any similar right otherwise than under the provisions

Perrormine of the Act or any other statutory enactment, with a proviso
Senay that nothing in this section should be construed as abrogating
L

Gs any right or jurisdiction to restrain a breach of trust or
ee pele§ confidence.

oF In my opinion, the power of assignment given by the fifth
VaRmTIES, section is not confined to an assignment of the legal property,

Viscount Finlay, but will apply to the transfer of any interest, whether legal
a. or equitable. It follows that when Messrs. Chappell and
Messrs. Keith, Prowse & Co. respectively acquired the copy-
right in these songs, the equitable interest in the performing
rights in respect of them vested in the society as assignees
from them. The society became entitled to sue in respect
of the interests so acquired, but their right to sue is subject
to the general rule that the owner of the legal estate should
be joined as a party. It is true that the owner of a merely
equitable estate may in certain cases sue alone, as where
there are special circumstances which make it inconvenient
that the owner of the legal estate should sue, or where his
conduct with reference to the estate is in question. But
there is no case in which it has been held that the presence
of the legal owner in an action against a third party can
be dispensed with on such grounds as those which are alleged
in the present case.

It was urged that it would give a great deal of trouble to
join the legal owner, and that the society, as owners of the
equitable right, should be deemed competent to sue alone.
It is said that the appellants have the copyright in more
than a million works, consisting chiefly of popular light
music. It would, of course, be extremely troublesome and
expensive to take legal assignments from the members of the
copyright in each song or piece of music as it comes into
existence. But it would not be difficult for the society
before suing to take from the member a special assignment
conveying the legal interest in respect of any work which is
about to become the subject of litigation, or to get him to
join as a plaintiff or in case of refusal by him to add him as a

i

—
wise gel enw A aM AOC

rey tari oc

A. C. AND PRIVY COUNCIL.

defendant, and if, for any reason, all this were impossible,
the action might be allowed to proceed without the presence
of the legal owner. Except under very special circumstances
the ordinary rule should be observed, that the legal owner
should be a party to the proceedings. There may possibly
be cases in which a person who has made an equitable
_ assignment might by a subsequent assignment have trans-
ferred the legal interest in the same work to a purchaser
for value without notice, whose title would prevail over the
merely equitable right, and such a possibility is one reason
for the rule of making the legal owner a party. But whatever
may be the balance of convenience, the established rules of
practice should be adhered to, even in cases, of which I think
the present is one, when their observance in all probability
will serve no useful purpose. The parties have joined battle
on the applicability to the present case of this particular
rule of practice, and we must decide according to law, however
much we may regret that success in the action should depend
upon a mere technicality which has no relation to the merits
of the case.

A great many authorities have been cited in your Lord-
ships' House in the course of the argument. It is unnecessary
to go through them again. I think that in what I have already
said, I have sufficiently stated the general effect. The appel-
lant society particularly relied upon three cases before
Shadwell V.-C.: Sweet v. Shaw (1); Sweet v. Cater (2); and
Bohn v. Bogue. (3) These three cases arose on applications
for an interlocutory injunction. An order was made in each,
which restrained the defendant at the trial at law from
raising the point that the legal property was not in the
plaintiff. This, however, was for purposes of the interlocutory
injunction, and it does not appear that the Vice-Chancellor
would have granted any perpetual injunction without the
presence of the owner of the legal estate ; on this point there
is no report. The appellant society also relied upon Maw-
man v. Tegg (4), but that also was a case of interlocutory

(1) 3 Jur. 217. (3) 10 Jur. 420.

(2) 11 Sim, 572. (4) 2 Russ. 385.
3 C2

19

H. L. (E.)
1923

RLS,
PERFORMING
RicHtT
Society,
Lp.

Vv.
Lonpon
THEATRE
OF
VARIETIES,
Lp.

Viscount Finlay.

20 HOUSE OF LORDS [1924]

H.L.(E.) injunction and the suit was compromised without coming to
1923 ~+«trial. Some observations made by Lord Macnaghten in
Perrormine William Brandt's Sons & Co. v. Dunlop Rubber Co. (1) were,
oe it was argued, inconsistent with the claim of the defendant
Lo. in the present case to have the suit dismissed owing to the

Lonvon non-joinder of the owner of the legal estate. I do not think

OF that these observations should be read as overruling the
Varmries, general rule of practice as to the necessity of joining the

owner of the legal estate and the right of the defendant to
have the suit dismissed if the plaintiff refuses or neglects
to join him in any case not falling within the recognized
exceptions to the rule.

It is unnecessary to say anything of the other defences
raised. The contention in para. 2 of the defence that the
plaintiff society is a trade union and that therefore their
registration and incorporation as a company are void and
unlawful does not bear examination.

In my opinion, the appeal should be dismissed with costs.

Viscount Finlay.

Lorp ATxKinson. My Lords, the facts have been already
fully stated. I think it is quite possible to decide this appeal
on the terms of the Copyright Act of 1911 without entrenching
to any degree upon the general principles laid down by Lord
Macnaghten in the cases of Tailby v. Official Receiver (2),
and Willkam Brandt's Sons & Co. v. Dunlop Rubber Co.(1),
authorities, naturally, much relied upon by the appellants.
I arrive at that conclusion because it appears to me that
the express provisions of this Copyright Act render these
principles inapplicable to the present case. That statute is
entitled "An Act to amend and consolidate the Law relating
to Copyright." By its thirty-sixth section it repeals entirely
thirteen statutes dealing with copyright, extending from the
8 Geo. 2, c. 13, passed in the year 1734, up to and inclusive
of the 15 & 16 Vict. c. 12, passed in the year 1852. In
addition it repeals the whole of the International Copyright
Act passed in 1875, the Copyright (Musical Compositions)
Act passed in 1882, the International Copyright Act passed

(1) [1905] A. C. 454, 462. (2) 13 App, Cas. 523.

A. C. AND PRIVY COUNCIL.

in 1886, and the Copyright (Musical Compositions) Act passed
in 1888. It repeals in part other statutes, the Fine Arts
Copyright Act passed in 1862, the Customs Consolidation
Act passed in 1876, and the Revenue Act passed in 1889,
while its thirty-first section runs as follows: '31. No person
shall be entitled to copyright or any similar right in any
literary, dramatic, musical, or artistic work, whether published
or unpublished, otherwise than under and in accordance
with the provisions of this Act, or of any other statutory
enactment for the time being in force, but nothing in this
section shall be construed as abrogating any right or
jurisdiction to restrain a breach of trust or confidence."
These later provisions would in themselves suggest that
the Legislature considered that it had done what the title of
the statute would suggest it had intended to do—namely,
to consolidate, and embody within the four corners of this
Act, what was thereafter to be taken to be the law as regards
copyright. The special provisions dealing in detail with the
creation of copyright, its assignment, its infringement, and
with the persons in whom the right to copyright must be
vested in order to be protected would appear to lead to the
same conclusion. By s. 1, sub-s. 2, "copyright" for the
purposes of the Act is defined to mean the sole right to
produce or reproduce the work or any substantial part thereof
in any material form whatsoever, to perform, or in case of a
lecture, to deliver, the work or any substantial part thereof,
in public ; if the work is unpublished, to publish the work or
any substantial part thereof. This last provision, in my
view, obviously applies to a work which though unpublished
at the time is in existence. The section then proceeds to
describe the things which this definition is to include. In
sub-head (d) it provides that in a case of a literary, dramatic
or musical work it includes the sole right to make any record,
perforated roll, cinematograph film, or other contrivance
by means of which the work may be mechanically performed
or delivered, and also the sole right to authorize any of the
aforesaid acts. The definition could not well be wider.
In the following sub-section—namely, sub-s. 3 of s. 1—

21

HSL..(B)
1923

——
PERFORMING
RIGHT

Lord Atkinson.

22

H. L. (E.)
1923

——_
PERFORMING
RicuT
SocrIety,
Lp.
v.
LonDON
'THEATRE
OF
VARIETIES,
Lp.

Lord Atkinson

HOUSE OF LORDS [1924]

publication is for the purposes of the Act defined in relation to
any work to mean the issue of copies of the work to the
public, but does not include the performance in public of a
dramatic or musical work, the delivery to the public of a
lecture, the exhibition in public of an artistic work, the
construction of an architectural work of art, or the issue of
photographs or engravings of works of sculpture or
architectural works.

Sect. 2 deals with infringement. It enacts that '' Copyright
in a work shall be deemed to be infringed by any person
who, without the consent of the owner of the copyright, does
anything the sole right to do which is by the Act conferred
on the owner of the copyright." It then proceeds to define
negatively this same infringement, by enumerating in great
detail the things which do not amount to infringement, and
winds up by providing that copyright in a work is to be
deemed to be infringed by any person who for his private
profit permits a theatre or other place of entertainment
to be used for the performance in public of the work without
the consent of the owner of the copyright unless the person
so acting was unaware, and had no reasonable grounds for
suspecting, that the performance would be an infringement
of copyright.

Sect. 3 provides that the term "for which copyright shall
subsist '' shall be the life of the author and fifty years after
his death. Sect. 4 deals with the making of an order by the
Judicial Committee of the Privy Council compelling the owner
of the copyright in a literary, dramatic or musical work
which has been published, who, after the death of the author,
refuses to grant a licence to reproduce the work, to grant
such a licence.

Sect. 5, sub-s. 1, enacts that "Subject to the provisions
of this Act the author of a work shall be the first owner of
the copyright therein." Certain provisoes follow irrelevant
to the present case, and then in sub-s. 2 are found provisions
bearing directly, in my view, upon the question in controversy
in this appeal. The sub-section provides that the owner
of the copyright in any work may assign the right either

A. C. AND PRIVY COUNCIL.

wholly or partially, and either generally or subject to limita-
tion to the United Kingdom or to any self-governing Dominion
or other part of His Majesty's Dominions to which the Act
extends, and either for the whole term of the copyright or
for any part thereof, or may grant any interest in the right
by licence. The sub-section then proceeds to provide " that
no such assignment or grant shall be valid unless it is in
writing signed by the owner of the right in respect of which
the assignment or grant is made, or by his duly authorised
agent.'' Then follows a proviso to the effect that where the
author of a work is the first owner of the copyright thereof
no assignment of copyright and no grant of any interest
therein made by him (otherwise than by will) after the passing
of the Act shall be operative to vest in the assignee or grantee
any rights in the work beyond the expiration of twenty-five
years from the death of the author, the reversionary interest
in the copyright expectant on the termination of this period
vesting in the latter's personal representatives.

As the remedies for infringement are expressly given to
the owner of the copyright by ss. 2 and 6, and many other
sections refer to the owner alone, the following provision is
introduced to protect the assignee under any partial assign-
ment. It runs thus: '" (3.) Where, under any partial assign-
ment of copyright, the assignee becomes entitled to any right
comprised in copyright, the assignee as respects the right so
assigned, and the assignor as respects the rights not assigned,
shall be treated for the purposes of this Act as the owner of
the copyright, and the provisions of this Act shall have effect
accordingly."

I think the provisions of this sub-section on their proper
construction obviously apply only to assignments of things in
existence at the date of the assignments and to grants dealing
with interests carved out of those existing things at or before
the date of the grant. It may be that it would suffice if
those interests were only equitable as distinguished from
legal. For the purposes of this case it is not necessary to
decide that point, and I reserve my opinion upon it, but I
think those provisions cannot have any application whatever

23

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1923

oe
PERFORMING
RIGHT

VARIETIES,
Lp.

Lord Atkinson.

24

H. L. (E.)
1923

HOUSE OF LORDS [1924]

to assignments or grants of non-existent things, which may
never fructify, and which if they do fructify at all can only

Perrorminc do so at some future period when the assignor or grantor

RIGHT

VARIETIES,
Lp.

Lord Atkinson.

—

becomes possessed of or entitled to an interest which will
in equity feed his earlier disposition. This conclusion is
further indicated by the fact that the equitable interests
Lord Macnaghten alludes to may, as the authorities show, be
created by parol, whereas the assignments and grants dealt
with in this section must, to be valid, be in writing executed
by the owner of the right in respect of which the assignment
or grant is made or by his agent lawfully authorized. More-
over, the language of the sub-section is general in character.
It is not qualified by such words as "for the purposes of this
Act."

Sect. 6 secures to the owner of the copyright in any work
all the remedies for infringement by way of injunction or
interdict, damages, accounts and otherwise as may be con-
ferred by law for the infringement of a right, but this wide
enactment is qualified by the words found in the section
"except as otherwise provided by this Act." Sect. 8 affords
protection to an infringer against any of these remedies,
other than by injunction or interdict, if he proves that at
the date of the infringement he was not aware and had no
reasonable grounds for suspecting that copyright existed in
the work. When one reads through all the provisions of this
statute and realizes how almost every state of things, every
event and contingency, is dealt with and provided for, one is,
I think, reasonably led to the conclusion that the supple-
mentary provisions contained in s. 31 were designed to deprive
every person of copyright to whom it was not secured by
the provisions of the Act of 1911, or by those of some other
statute for the time being in force. It is, in my view,
impossible to suppose that the mode of acquisition of an
equitable interest in copyright under a grant or licence made
or given before the author's work or the copyright in it is in
existence would have been left unnoticed or unprovided for
by this statute as it has been if it had not been intended to
exclude and, impliedly, to prohibit it.

PMY RIEL OD
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AR CEM D AE LP ROS ORE

Al, AND PRIVY COUNCIL

Being of this opinion, I think the appeal fails, and that it
is therefore unnecessary to consider the point as to the Trade

Union Acts. I think the appeal should be dismissed with
costs.

Lorp Sumner. My Lords, beyond doubt the appellant
association is not a trade union. 'The imposition of restric-
tive conditions on the conduct of a trade or business and
the provision of benefits to members "' are not " the principal
objects " of the combination which it has formed, nor is either
of them. Neither is, in my opinion, even an incidental
consequence of its operations. It is concerned with the
trades of individual music publishers, not with the trade
of publishing music as a whole, and those individuals are
persons who elect to carry on their trades without trading
in the performing rights of such compositions as are their
copyright assets for trade purposes. True it is that only
persons who carry on a trade thus limited can become
members of the association, but as to that they can do
as they like. They need not join it, and if they restrict the
area of their trades in order to join it, that is their affair.
They do so, because they think it worth while to do so, not
because they are subjected to restrictive conditions. The
association exercises no control over them before. they become
members, and when they have become members it does not
restrict their trades at all. On the contrary, it takes the
members as it finds them and assists them by exercising
the assigned performing rights for the common good, As
for "' benefits,' none are provided. The members simply get
from the association the service and the money returns for
the sake of which they joined it. Any restriction is on
the membership, not on members' trades.

In the present action the association, which is admittedly
only an equitable assignee, had it in its power to join the
assignors of the performing rights as plaintiffs and elected not
to do so. The consequences of this election have been the
principal subject of debate. It is said that the assignors
would have been formal parties only ; that they claimed and

25

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PERFORMING

VARIETIES,
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Lord Sumner.

HOUSE OF LORDS [1924]

had no rights to be enforced, and that the defendants had
no answer or interest, which the joinder of the assignors
would have enabled or assisted them to establish. As it
turns out, provided the action was brought by the right and
necessary parties, the defendants had no answer at all, for
they failed to prove that such leave as was given by the
assignors to the performing artists was anything but a per-
mission to perform, if the music hall was licensed by the
association, which it was not, and they did not try to prove
their plea that they "' were not aware and had no reasonable
ground for suspecting, that the performance would be an
infringement of copyright." As a matter of fact, part of
the infringement—namely, the performance of the band
parts—was actually the work of the respondents' own band,
employed for that purpose among others.

Copyright, and performing right as part of it, is now so
fully regulated by statute, that it is the Copyright Act, 1911,
in which, in the first instance, is to be found the solution
of the question by what parties should this action have been
brought. In fact each party in turn, as an alternative to
the main contention in the appeal, claimed the statute as
conclusive, in the one case of the right of the assignee to
sue and succeed without joining the assignors, in the other
of the right of the defendant to claim the judgment, because
the statute declares the assignors to be the parties to sue.

The appellants argued that.s. 6, sub-s. 1, entitles '"' owners"
to an injunction, and by s. 5, sub-s. 2, they are owners, for
a person may become owner by " assignment,' and an
instrument purporting to assign after-acquired property is
undeniably an assignment. According to them copyright
is a personal property right, with which strangers have
nothing to do except that they infringe it at their peril. Not
being a chattel, there is no question of general law about
passing the right to it by delivery. Not being a debt—
where the obligation of a debtor, a third party, is of the
essence and has to be bound—there is no question of rules
about notice of assignment. The matter is, therefore,
eminently one for exclusive statutory regulation, and this

ASC. AND PRIVY COUNCIL.

is found in s. 5, sub-s. 2, where all that is required is a
written and signed assignment, without any limitations
upon the word. The question is whether there is an
"assignment '' here, and no one can say that there is
not, for the instrument is intended to assign, it purports
to assign, and if, in respect of after-acquired property, it is
an assignment only in equity, the statute does not exclude
equitable assignments, for an assignment, though equitable,
is an assignment still.

My Lords, my answer must be that s. 5 does not deal with
remedies for infringement, but only with modes of passing
title. It is necessary to look to s. 6, sub-s. 1, which declares,
possibly superfluously, that the owner of the copyright shall
be entitled to all such remedies by way of injunction (which
is the sole remedy sought in this case) as are or may be
conferred by law. "'Conferred by law" clearly means by
the legal system existing for the time being and has no
reference to the historic distinction between law and equity.
Accordingly, though an assignee may acquire title by coming
within s. 5, sub-s. 2, there is nothing in that section or in
s. 6, sub-s. 1, to exempt him from compliance with existing
legal forms, when he comes to seek a remedy conferred by law.

The respondents on the other hand rely on the use of the
word '"' owner" both in s. 5, sub-s. 2, and in s. 6, sub-s. 1,
and in many other sections, where it naturally means the
person who owns, not the person whom Courts exercising
an equitable jurisdiction will assist to become owner or will
treat as if he already were owner, though in truth he is not.
Here again I have come to the conclusion that the language
of the statute does not in itself conclude the matter. A
remedy is conferred by our present law on equitable owners,
subject to compliance with certain legal requirements, and
the owner of copyright is entitled to all remedies. I can
find nothing to show any intention in the Act to ignore
equitable rights throughout so wide and important a subject
as copyright, nor, in view of the long history of equitable rights
and of the enactment in favour of the rules of equity con-
tained in the Judicature Act, 1873, does it seem practicable

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Lord Sumner,

28 HOUSE OF LORDS [1924]

H.L.(E.) to hold that the words ''owner"' in s. 6, sub-s. 1, and "title "'
1923. +in s. 6, sub-s. 3, mean exclusively legal owner and legal title
Prrrorming a8 those terms were theretofore understood. So limited a
Ricet meaning of the words would not be a natural one to place
24 on legal language enacted in 1911. Again, I cannot think that
Lonpon_ s. 5, sub-s. 3, amounts to a statutory direction that assignor
de and assignee must concur in suing, when there has been an
VARIETIES, equitable assignment. The partial assignment mentioned in
s. 5, sub-s. 2, is, I think, an assignment of part of the whole
right, and the grant of an interest by licence is a grant of
such interest in the whole as a licence, in contradistinction
to an assignment, is capable of giving. The assignor under
a legal assignment, which does not divide the property or the
right owned into parts, divests himself of the ownership
of the whole. When the assignment is equitable, he either
divests himself of the whole, in the sense that equity will
compel him to do so when called upon, though till then he
remains capable of divesting himself or of investing a stranger
for value without notice, or else he divests himself of nothing,
but retains the whole "legal '' ownership till he is called on
to part with it. In either case there is nothing partial about
it nor anything in the nature of a licence. Accordingly,
I think that the statute leaves equitable assignees to enjoy
such position as is given to them by the general law, when
they require to vindicate the right, which the Copyright
Act, 1911, expressly confers and regulates.

My Lords, it appears to be admitted—and the researches
of counsel on both sides confirm the admission—that no
recorded instance can be found in which an equitable assignee
of copyright or of patent rights in an invention has obtained
a perpetual injunction to restrain infringement of those
rights in proceedings to which his assignor has not been
made a party. The claim to a perpetual injunction in the
present case was rested on the contention that in the cir-
cumstances the assignors could be no more than bare
trustees of the performing rights for the appellants and had
no present rights of their own, and I understand it to be
admitted, that the same contention must be applicable to

Lord Sumner,

A. C. AND PRIVY COUNCIL.

any other case of a trust. This appears to be a complete
innovation.

29

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1923

The recognition of an equitable title or a valid title in Prrrormxe

equity and the grant of relief to a person, so entitled, without
joinder of the legal owner are distinct matters. The second
is not necessarily involved in the first. The latter is essen-
tially a matter of practice, and the established practice ought
not to be disturbed, or at any rate only very sparingly. As it
is certain that there is no practice to regard the joinder of the
legal owner as generally unnecessary, it is for the appellants
to show that it has been the practice to dispense with it in
such cases as the present.

Their contention, I understand, in substance to be this.
The present appeal relates not to debts but to property in
the special form known as "' copyright, '"' and to an assignment,
which is not by way of security but is absolute, though it is
defeasible in the event of the dissolution of the association.
There are old cases in which an equitable assignee, suing in
equity for infringement of copyright without joining the
legal owner, has obtained an interim injunction, and further
has got the defendant put under terms not to dispute his title
in the action at law brought to establish the alleged infringe-
ment. From this it is inferred that the Court of equity
conceived itself to be competent to decide whether or not
the circumstances necessitated the joinder of the legal
owner, and did decide that, there being no substantial title
outstanding to compete with the title of the equitable owner,
no issue ought to be raised which would put the equitable
owner to the trouble of joining another party. If so,
it would follow as a matter of course that, when the
equitable owner began an action at law and the Court of law,
unaware of the absence of a legal title, decided in his favour
that the infringement was proved, the equitable owner could
come back to the Court of equity to get his perpetual
injunction as of course, and it would not be worth while to
oppose it. Hence it is that there has never been a report
of such a thing, because it would never be matter in contest.

My Lords, my answer to this ingenious argument must be

Ricut

Lord Sumner,

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ae
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Socinty,
Lp.
v.
Lonpon
THEATRE
OF
VARIETIES,
D.

Lord Sumner.

HOUSE OF LORDS [1924]

with respect, that I think it is mere speculation, nor can I
understand why it should be necessary now to go back to
the decisions of Lord Eldon and Shadwell V.-C., since, if such
a procedure was recognized, it ought to have been every day
practice ever since equitable and legal jurisdiction became
exercisable in the same Court fifty years ago. The absence
of contest might explain the fact that no law reporter has
reported the application for and the grant of the perpetual
injunction in such cases, he in the first place a search of
the records of Courts ofequity would surely result in the
discovery of many instances of such decrees, in suits in which
the bill disclosed only an equitable title without joinder of
the holder of the legal title, and in the second the practice
books ought to state among other regular proceedings in
such cases the application for and grant of the perpetual
injunction to the equitable owner after the favourable ter-
mination of his proceedings at law. The search has,
apparently, not been made, and the practice books are silent.
A good many were referred to by counsel, but on examining
them I think their tenor is wholly against the contention.
Passages that might seem to support it do not really bear
such a construction. I do not think we are called upon to
go further for the purpose of discovering some ground for
departing from the settled practice of joining the legal owner
with the equitable owner in such cases.

It was indeed suggested by the appellants that the passage
at the end of the opinion of Lord Macnaghten in Brandt's
Sons & Co. v. Dunlop Rubber Co. (1) supported and indeed
decided the point in issue in their favour, on the ground
that the same objection was taken then as is taken by
the respondents here, and that your Lordships' House
refused to give effect to it. The question is whether it was
really the same objection, for certainly the House did not
give effect to it. The subject of the dispute was the right
to be paid a debt which was due to the assignor till it was by
him equitably assigned to the appellants. There was accord-
ingly a possibility of the debtors being exposed to duplicate

(1) [1905] A. C. 454, 462.

A. C. AND PRIVY COUNCIL.

claims. Lord Macnaghten accepts the rule, for which the
respondents now contend, that the assignor ought to be
made a party in order that he might be bound, but points
out that Brandt's Case (1) was an exception to it. Plainly the
House did not consider itself to be departing from established
rules of practice, nor has the case ever been so regarded.
it has, therefore, now to be shown that the present case is
within the principle of the exception to which effect was then
given. If the assignor, Kramrisch, was not made a party,
he would not be bound; was it not possible that the debtors,
the Dunlop Company, might be exposed to claims by him
or his trustee in bankruptcy? Kramrisch, however, had
already been settled with and the Dunlop Company held
his receipt. It appears on reference to the arguments in the
Courts below (2) that this fact was relied on. Kramrisch
was therefore bound already. The respondents admitted that
what they wanted was not the presence but the absence of the
assignor, and that they did not propose to pay the assignor
but desired to pay nobody, and this mere non-joinder of
parties was not allowed to relieve them. Brandt's Case (1) is
thus distinguishable, for the present case is otherwise. In
the absence of the publishers, the assignors, the respondents
here have no means of excluding the possibility that some
assignment, other than the assignment to the appellants,
might rank before it, and in such event they would have no
answer to proceedings taken by such an assignee. If the
publishers had been joined they might have been inter-
rogated on the subject. In the absence of the publishers
the respondents are not even protected against proceedings
by the publishers themselves brought on some future occasion.
They are entitled to have them joined now, so that they
may be bound for the future. It is true that no suggestion
is made that the publishers either contemplate such
proceedings or have already created any title or any claims
of title to sue in any assignees but the appellants. It is
true that their position in their trade is unexceptionable

(1) [1905] A. C. 454, 462.
(2) (1903) 8 Com. Cas. 174, 177; [1904] 1 K. B. 387, 391.

31

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Lord Sumner.

32 HOUSE OF LORDS [1924]

H.L.(E.) and so well known that your Lordships might almost be

1923 invited to take judicial notice of it, but it is the right
Prrrormne of the respondents that they should be protected; they are
Saree not required to be satisfied with the respectability of the

2: assignors, however well known. They are not in possession
TERDON. of any such shield as protected the Dunlop Company, and

OF there is nothing here to deprive them of the benefit of a
Vantertrs, rule which is of general application and does not depend
on the particular character of the assignors in a given
case. I, therefore, think that Brandt's Case(1) is not in
point on the present occasion, for the respondents are not
asking here, as the Dunlop Company asked, that a claim,
otherwise undefended, should be defeated for mere non-

joinder of parties. In my opinion the appeal fails.

Lord Sumner.

Lorp Puittmore. My Lords, the title of the plaintiff
society to sue depends upon instruments which purport to
assign to the society rights in publications not already in
existence or even in contemplation at the date of the assign-
ment. Such assignments do not pass rights of property,
as has been stated in more than one case, notably by Sir
George Jessel M.R., in Collyer v. Isaacs. (2)

But the instruments amount to agreements to assign, and
something more, so much more that if the doctrine laid
down in In re Clarke (3) and In re Lind (4) be sound, the
property has relatively between assignor and assignee passed,
so that the assignee is in equity the real owner with the
assignor as his trustee.

This, however, means that in relation to all other persons
the assignee is still not the owner and cannot exercise the
rights of owner or maintain an action against a trespasser
or a pirate for an infringement of his supposed rights.

It is contended however, by counsel for the appellants
that there is an exception to this rule in cases where copyright,
and possibly also patent rights, have been pirated; and
this contention is founded upon certain decisions long anterior

(1) [1905] A. C. 454. (3) 36 Ch. D. 348.
(2) (1881) 19 Ch. D. 342, 352. (4) [1915] 2 Ch. 345.

A. C AND PRIVY COUNCIL. 33

to the present Copyright Act and indeed earlier than the 4H. L. (E.)

Judicature Acts and the fusion of law and equity. 1923
These cases are somewhat difficult to deal with, and I have Prrrormma

(as I imagine all your Lordships have) spent much trouble saoneee:

and time upon them; but I think they can be brought into 4
line with the general principle which I have already stated. Loxbox

The old Court of Chancery had three heads of jurisdiction. OF
It enforced equitable rights as between cestui que trust and Y48@7™=s,
trustee or any person in a fiduciary relation analogous to that ;,,4 Phillimore,
of a trustee. It assisted legal owners of property, giving
remedies in addition to those which they would get at law,
such as interlocutory orders to prevent mischief, and perpetual
injunctions to prevent continuance of trespass. It also in
aid of actions at law entertained suits for discovery and for
perpetuation of testimony. Further, where the title to land
was in question, and both disputants claimed under a pre-
decessor who had mortgaged the property so that the legal
estate was in the mortgagee, and the right of the disputants
was only to an equitable estate, the Court, in order that the
action might be fairly tried at law, forbade the defendant to
rely as against the plaintiff upon the latter's defect in not
having the legal estate.

I dwell upon this last head, because I think that it was in
a supposed analogy that some orders in the cases under
discussion were made.

Now here there is no question of equitable rights; and if
the second head, that of equitable remedies, be confined to
cases where the legal owner is suing, there would be no
question of equitable remedies. But it is urged that in cases
of copyright, possibly also of patents, the Court of Chancery
gave an equitable remedy to persons who were not legal
owners. I confess, my Lords, that I am most reluctant to
suppose that the great masters of equity procedure were
so illogical.

The most authoritative and the most difficult case is that
of Mawman v. Tegg (1), decided by Lord Eldon in 1826.
I think there is an earlier case which helps to explain it,

(1) 2 Russ. 385.
A. ©. 1924. 3 D

34

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VARIETIES,
Lp.

Lord Phillimore.

HOUSE OF LORDS [1924]

that of the Universities of Oxford and Cambridge v. Richard-
son (1), decided in 1802. In that case Lord Eldon comments
upon a statement by Lord Mansfield, that if the title was not
clear at law, the Court of Chancery would not grant or sustain
an injunction till it was made clear at law. Lord Eldon
observes that "' possession under colour of title is ground
enough to enjoin, and to continue the injunction, until it
shall be proved at law, that it is only colour and not real title."

Now in Mawman v. Tegg (2) counsel for the plaintiffs,
who had long been and still were in possession of the work
which was alleged to have been pirated, relied upon pos-
session and upon the right of a possessor, recognized in all
systems of jurisprudence with which I am acquainted, to
maintain legal proceedings against a mere trespasser, at any
rate until it is demonstrated that the possessor is not the
true owner; and the Lord Chancellor thought that the title
was sufficiently proved for the motion for an injunction; and
he thought without deciding whether or not the plaintiffs
had a good legal title (and there was much to be said for the
affirmative) that they had at any rate a good equitable title.
So Story, in his work on Equity Jurisprudence (1892 ed.), or
the English editor—it may be the latter—says that it is
sufficient for the plaintiff in these cases to have a clear
equitable title (s. 935); and he adds: "' Formerly indeed
Courts of equity would not interfere by way of injunction
to protect copyrights any more than patent rights, until the
title had been established by law. But the present course is
to exercise jurisdiction in all cases where there is a clear
colour of title founded upon a long possession and assertion
of right and a fair prima facie case of infringement is
made out."

After Mawman v. Tegg (2) came a group of cases decided
by Shadwell V.-C.: Sweet v. Shaw (8), decided in 1839;
Colburn v. Duncombe (4), decided in 1838; Sweet v. Cater (5),
decided in 1841; Bohn v. Bogue (6), decided in 1846; and

(1) 6 Ves. 689, 707. (4) 9 Sim. 151.
(2)2 Russ. 385. (5) 11 Sim. 572.
(3) 3 Jur. 217; 8L. J. (Ch.) 216. (6) 10 Jur. 420.

A. C. AND PRIVY COUNCIL.

besides these the case before the Irish Master of the Rolls
in 1840: Hodges v. Welsh. (1)

In all these cases except Colburn v. Duncombe (2) it was
considered that, for the purpose of an interlocutory order
in the nature of an injunction and for the purpose of directing
a trial at law, it was enough for the plaintiff to show that he
had a good equitable title. But on the other hand, in
Colburn v. Duncombe (2) the suit was held to be defective,
and the bill demurrable, because the legal owner of the
copyright was not a party; and upon reflection 1 come to
the conclusion that all these cases come to is that for
the purpose of an interlocutory order to restrain irreparable
mischief, the Court would not inquire too nicely into the
legal title of the bona fide possessor, who had always to
undertake in damages if he failed in the end to maintain
his suit.

I should add that in Mawman v. Tegg (3) it would seem
to be the case that the plaintiff had a legal title to at least
one-third of the copyright; that in Bohn v. Bogue (4) the
Vice-Chancellor seems to have thought (and I should respect-
fully agree) that the plaintiff had a good legal title, though
the point was not decided; and that in Sweet v. Cater (5)
much could have been said for the argument that the plaintiff
was the legal owner of a partial interest under the assignment
made to him. If this be so, only Sweet v. Shaw (6) and
Hodges v. Welsh (1) would create a difficulty.

But a further point is made. Your Lordships' attention
is called to the fact that in Mawman v. Tegg (3); Sweet v.
Shaw (6);and Sweet v. Cater (5), an order was made that
if the plaintiff proceeded to a trial at law, the defendant
should admit the plaintiff's title to copyright in the work
alleged to be pirated, so that the only question for the jury
would be whether or not one work was a piracy of the other.
Here, I think, some assistance can be derived from considering
the procedure on what has been sometimes called an Ejectment

(1) 2 Ir. Eq. Rep. 266. (4) 10 Jur. 420.
(2) 9 Sim. 151. (5) 11 Sim. 572.
(3) 2 Russ. 385. (6) 3 Jur. 217; 8 L. J. (Ch.) 216.

3 D 2

35

H. L. (E.)
1923
PERFORMING

Ricut
Socrety,
Lp.

Lord Phillimore.

36 HOUSE OF LORDS [1924]

H.L.(E.) Bill, something coming under the third head of Chancery
1923 jurisdiction—namely, the putting the matter into fair shape
Perrormine for a trial of the real point which it was desired to submit
Sheen to a judge and jury—the procedure which was used possibly
ae for the last time in the famous Tichborne Case, and has been
Lonpon now rendered unnecessary by an express provision in the

at he Judicature Act of 1873.

Eats en The Chancery judges did not feel themselves at liberty to
ae ae determine the legal question of piracy or no piracy. Their
Pe jurisdiction was only ancillary to help a plaintiff who had
a good case at law; and for this purpose they required the
determination at law of the substantive point. But in the
cases under consideration they did not think it necessary
that the question of ownership should be left to the common
law Courts. They thought it was a point that they could
determine for themselves, and that if prima facie the
plaintifis came before the Court as bona fide possessors
without themselves making statements which impeached their
own title, they might let the cases go to trial at law and come
back to them for a final decision, giving in each case to the
plaintiff, if the merits were all with him, every opportunity

of getting his tackle right.

In Colburn v. Duncombe (1) the plaintiff by his own state-
ment showed that he had no legal title, and this was too much
although he was a possessor, and his bill was demurred to ;
but he was given leave to amend and put himself straight if
he could.

As a result of this, I fear, somewhat long disquisition, I
come, my Lords, to the conclusion that if this case were to
be looked at as if the modern Copyright Acts had not been
passed, the plaintiff society would have failed.

But when all is said and done, the title of the plaintiff
society in this suit depends not upon considerations of ancient
law, but upon the language of the existing Copyright Act of
1911. By s. 31 of this Act no person is to be entitled to
copyright or any similar right in any work—whether published
or unpublished — otherwise than under and in accordance

(1) 9 Sim. 151.

A. C. AND PRIVY COUNCIL.

with the provisions of this Act or any other statutory
enactment for the time being in force. By s. 5, sub-s. 2,
the owner of the copyright, that is, in this case, the publishers
being the assignees of the authors, may assign the right
either wholly or partially, and either generally or subject to
limitations as to space or time, and may grant any interest
in the right by licence; and no such assignment or grant
shall be valid unless it is in writing signed by the owner or
his agent. By sub-s. 3, under any partial assignment of
copyright, the assignee becomes entitled to some right; and
he in respect of that right and the assignor in respect of the
rights not assigned, is severally to be treated in respect of
his interest as the owner of the copyright. Each therefore may
bring an action with respect to the infringement of his right.

How does the plaintiff society prove itself to be the owner
of the copyright or the assignee under a partial assignment ?
The only instruments in writing on which it relies are the
indentures entered into by the publishers before ever the
songs were composed, and as shown in the early part of
this judgment, these indentures, though they constitute
important relations between the parties to them, passed no
right in the properties as against the world in general. It
was suggested that in respect of the equitable interests passed
the indentures might be treated as partial assignments ;
but in my judgment, partial assignments do not mean
incomplete assignments but assignments of part, as, for
instance, of the performing rights only or of the rights outside
Great Britain or for a term of years. And therefore, my
Lords, I think that the plaintiff society fails, and that this
appeal should be dismissed.

I have not thought it necessary to comment specially
upon the case of Brandt's Sons & Co. v. Dunlop Rubber
Co. (1), because for present purposes it has been sufficiently
disposed of in the opinions of the noble and learned Lords
who have preceded me, and because further it seems to me

robbed of much weight by the fact that the objection in
that case was withdrawn at the Bar of the House.

(1) [1905] A. C. 454.

37

H. L. (E.)
1923

——
PERFORMING
Ricut
Socizty,
Lp.
v.
Lonpon
THEATRE
OF
VARIETIES,
Lp.

Lord Phillimore,

38 HOUSE OF LORDS [1924]

H. L. (E.) Neither, on the other hand, have I made any comment
i923 upon the suggestion made for the respondents that the

Prrrormine plaintiff society was debarred from suing in this case because
RicuT

Socrery, it was a trade union. If I had to express myself on this
arte point it would be difficult for me to do it in respectful
Lonpon_ language.
oa Order of the Court of Appeal affirmed and appeal
Va dismissed with costs.
D.
aia? Lords' Journals, November 5, 1923.