The Beatles: The Lost Concert, a documentary about a Beatles’ concert held in Washington DC in 1964, was at the centre of a copyright infringement claim in the recent case of Sony/ATV Music Publishing LLC, Sony/ATV Music Publishing (UK) Limited v WPMC Limited, Iambic Media Limited (In Liquidation). The documentary incorporated video clips from the concert, which included the performance of twelve Beatles’ songs. Claims were brought against WPMC/Iambic, the documentary-maker, by both the US and UK entities of Sony/ATV as the copyright holders of the twelve songs in the US and UK respectively. The judge had three issues to decide as set out below; the first two were concerned with contract law issues and the third a copyright law issue.
WAS A SYNCHRONISATION LICENCE GRANTED TO THE WPMC/IAMBIC?
Various email correspondence passed between Mr Hunt (director of WPMC/Iambic) and Ms Masters (head of synchronisation and marketing at Sony/ATV) which WPMC/Iambic contended culminated in the granting of a licence. The judge held that whilst the emails certainly discussed the possibility of such a grant, all communications were headed “subject to signed contract” which made it clear that such a licence would not be granted until a signed contract was in place. Accordingly, it was held that WPMC/Iambic did not have a licence to exploit the copyright in the video clips of the concert.
ARE SONY/ATV ESTOPPED FROM DENYING THEY HAVE GRANTED A LICENCE?
The next issue for the judge to decide was whether Sony/ATV were estopped from denying they had granted a licence. The judge acknowledged that a defence of proprietary estoppel can be advanced in respect of copyright and WPMC/Iambic put forward the argument that despite the use of “signed contract” in the email header, Sony/ATV represented that a licence would be granted if certain conditions were met and WPMC/Iambic had reasonably relied on these representations to spend considerable sums in producing the documentary. In making his decision, the judge noted that Sony/ATV had been careful to use the wording “signed contract” (emphasis added) which highlighted that it was only an agreement in principle and not a legally binding contract. Accordingly, Sony/ATV were entitled not to grant the licence and WPMC/Iambic’s use of the copyrighted works was an infringement.
WOULD EXPLOITATION OF THE DOCUMENTARY IN THE US AMOUNT TO FAIR USE OF A US COPYRIGHT?
Although the documentary was made in the UK, it was intended for use in the US and a claim was therefore brought by the US copyright holders of the songs performed in the concert footage for breach of copyright. Under US copyright law, fair use of a copyrighted work is not infringement of a copyright even if there is no licence in place. In determining whether the use of a copyrighted work is “fair” a number of factors need to be considered including whether the use is commercial and the amount and substantiality of the portion used in relation to the copyrighted work as a whole. In this case, the documentary was commercial in nature and the twelve songs in the footage were played almost in whole. Accordingly, the judge determined that the documentary did not amount to “fair use”.
This case sets out some clear take-away points for programme-makers including:
- Ensure all necessary licences have been issued. Where, as in this case, licences will not be issued without the licensor’s final approval of the programme, ensure there is an appropriately drafted and robust agreement to grant a licence if a defined set of conditions are met. This will mitigate against the risk of incurring large sums of money producing the programme without comfort that a licence might be granted.
- One piece of music might have a number of copyright holders, each in different jurisdictions. Consider where programmes are being made, where the programme might be shown and where the original music was recorded to ensure that you engage with licence holders in all relevant jurisdictions to avoid facing an unexpected claim for copyright infringement.
- If using works that are protected by US copyright, get advice on whether use of the copyrighted work will amount to “fair use” before using it.