THE COURT WILL GRANT A DECLARATION THAT AN ED SHEERAN SONG DID NOT BREACH COPYWRIGHT: OH WHY PUT YOURSELF THROUGH THIS

The judgment of Mr Justice Zacarolli in Sheeran & Ors v Chokri & Ors [2022] EWHC 827 (Ch) contains some observations as to why the court should grant a declaration that a song had not breached another composer’s copyright.  The judge held that the claimants were entitled to the declaration sought, it had practical benefit.  Not least because £2,200,000 worth of royalties had been suspended.

 

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THE CASE

The claimants sought a declaration that a song written by Ed Sherran and others “Shape of You” did not breach copyright of a song “Oh Why”.  The judge found that the song did no breach copyright. An issue then arose as to whether the claimants should be granted the injunction.

 

THE JUDGMENT IN RELATION TO REMEDY

    1. The claimants seek a declaration that in creating and exploiting Shape they have not infringed copyright in Oh Why. The conclusion that they have not done so follows inevitably from the findings set out in this judgment.
    1. The defendants nevertheless contend that the declaration sought should not be granted. The court’s power to make declarations is a discretionary one. When considering whether to grant a declaration, the court should take into account “justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any special reasons why or why not the court should grant the declaration“: Financial Services Authority v Rourke [2002] CP Rep 14, per Neuberger J at p.11. In Nokia Corp v InterDigital Technology Corp [2006] EWCA Civ 1618, the Court of Appeal said:
“15. Normally before the Court will exercise its discretion to grant a declaration, there must be some real reason for doing so. Normally it will decline to grant a declaration in favour of a party against whom no claim has been formulated for the obvious reason that there is no real point in doing so.
20. … There would have to be a real commercial reason for the person seeking the declaration to have standing to do so.”
    1. The defendants contend that the declarations sought should be refused on the following grounds.
    1. First, because there is no commercial basis for the declaration, given that the total amount of royalties in suspense as a result of the defendants’ actions is “only” £2,200,000, and the claimants have refused to reveal the total amount of income from Shape that they continue to receive (but it is to be inferred that it was considerably more). I have no hesitation in rejecting this ground.
    1. While it is true that each of Mr Sheeran, Mr McCutcheon and Mr McDaid said that they were unaware of the amount of royalties that were frozen, that the money was unimportant and that they were here to clear their names, that does not apply to the corporate claimants and £2,200,000 is in itself a substantial amount of money. That alone provides a commercial justification for declaratory relief. In addition, the desire of the songwriters to clear their names is also a reason to grant this declaratory relief. Each is someone highly successful in the industry, whose reputation would be at risk from accusations of deliberate copying. It was not until after they had been cross-examined that it was made clear that Mr McCutcheon and Mr McDaid were not accused of deliberate copying.
    1. As for Mr Sheeran, the justification for declaratory relief was only increased by the fact that although the case only relates to Shape, it was pursued against him on a basis (which I reject) that he is a “magpie” who habitually deliberately copies and conceals the work of other songwriters.
    1. Second, the claim was said to be premature, because the claimants failed to comply with pre-action protocols, there being no letter of claim, no pre-action disclosure, and no attempt to engage in alternative dispute resolution. The dispute commenced with a phone call from the defendants’ former solicitors to the fourth claimant in September 2017, in which – as evidenced by the letter from the claimants’ former solicitors that followed shortly afterwards – he claimed that Shape infringed copyright in Oh Why and stated that his clients were in the process of taking steps to place Shape in suspense at collecting societies. In their response, the claimants’ solicitors denied the allegation, referred to a report from the musicologist Peter Oxendale who confirmed there was no basis for infringement, and stated “we hereby put you on notice that our clients will take immediate action to protect their interests should you or your clients be so misguided as to take steps to implement your threat.”
    1. Correspondence continued between solicitors, albeit slowly. On 26 March 2018, the defendants’ solicitors sent a copy of a preliminary report by Mr Siddell. They said that their clients were “very upset” that their work had been taken without permission and exploited commercially “on such a grand scale”, and had been urged by others to freeze collection society payments (but they – the solicitors – were trying to persuade them not to do so).
    1. On 14 May 2018, the claimants’ solicitors wrote to the defendants’ solicitors stating that it was incumbent upon them properly to set out their allegations and that the preliminary report of Mr Siddell fell far short of that. At that point, unbeknown to the claimants, the defendants had in fact already put Shape into suspense with the PRS a couple of days earlier. As soon as the claimants’ solicitors found out, they acted on the warning they had given in September 2017 and issued this claim.
    1. The defendants rely on an email from their former solicitor of 23 May 2018, in which he objected to the claim having been issued quickly, in disregard of the CPR, and said that his clients had acted against his advice in putting Shape into suspense at the PRS, and that he continued to advise them that they should agree to cease suspension “if we can agree a way forward with your clients.”
    1. The defendants suggest that in these circumstances, it was heavy-handed and premature of the claimants to issue the proceedings and that this disentitles them to the declaratory relief sought. I disagree. Whether it was true or not, the claimants were justified in thinking that putting Shape into suspense at the PRS was a tactic designed to extract a settlement. They had given fair warning that they would protect their position if such a step was taken, and they could take little if any comfort from the defendants’ solicitor saying he had advised his clients to lift the suspension, given that he had already said that his clients had taken that step in the first place against his advice. In any case, even if the claimants’ actions were premature, that is water under the bridge: the defendants have maintained, and widened, their attack on the claimants – and on Mr Sheeran in particular – ever since.
    1. Third, the defendants point to disclosure failings on the part of the claimants. These were the subject of prior applications, with appropriate costs orders being made where necessary. I find nothing in this which would count against the declaration being granted.
    1. Finally, the defendants complain that Mr Oxendale (whose report was relied on merely at the pre-action stage) is not independent, because he has been instructed many times by the claimants and is effectively their “in-house adviser”. Even if he was, that provides no reason to deny the declarations sought. I reject, in any event, that his prior connection with the claimants meant that he did not provide his report independently. As one of a handful of expert musicologists in this field, it is not surprising that he has been called on in an advisory capacity by the claimants on many occasions.
  1. Accordingly, none of these points dissuades me from exercising my discretion to grant the declaration sought.