Full case report

Michael O’Mara Books Ltd & Others v Express Newspapers plc

Reference [1998] EMLR 383, [1999] FSR 49
Court Chancery Division

Judge Neuberger J

Date of Judgment 3 Mar 1998


Summary

Intellectual property – Copyright – damages – summary judgment – breach of confidence – journalists’ sources – Contempt of Court Act 1981 s 10


Facts

The Claimants were the publisher and authors of the book “Fergie – Her Secret Life”. The Defendants were the publisher, editor and deputy editor of the Sunday Express, and the deputy editor’s wife. The Claimants granted Associated Newspapers the exclusive right to serialise the book, but learned of a plan by the Sunday Express to run a “spoiler”, and that a woman (Fourth Defendant) was offering to sell a copy of the book’s proofs to a newspaper for £4000. The police found another copy at the home of the Third and Fourth Defendants. The Sunday Express then published a set of articles which the Claimants said (and the Defendants denied) were from the book. The Claimants sought summary judgment against the Third and Fourth Defendants in respect of possession by the Third Defendant and the offering to sell by the Fourth Defendant of infringing copies. The Third and Fourth Defendants did not dispute liability for breach of copyright.


Issue

1. Whether the First Claimant was an exclusive licensee in respect of the copyright in the book so as to be able to obtain judgment against the Third and Fourth Defendants.
2. Whether damages (compensatory and additional) should be assessed summarily, or whether an inquiry should be ordered.
3. Whether the Third and Fourth Defendants should be ordered to disclose the source of the infringing copies of the book. The Third Defendant invoked s10 Contempt of Court Act 1981.


Held

1. The First Claintiff was an exclusive licensee.
2. It was unrealistic to assess compensatory damages on the basis of a proposed sale which had not succeeded or a price which had not been agreed: instead, damages should reflect the Defendant’s enjoyment of the book in advance of publication, and were fixed at £125 each. However, the Defendants could be prejudiced by a summary assessment of additional damages, since factors such as mitigation and means could not be ruled out as irrelevant to the assessment, and the Defendants should be allowed to put in evidence on the questions of whether additional damages should be awarded, and if so, in what amount.
3. The Fourth Defendant was ordered to give further disclosure. As for the Third Defendant, it was necessary in the interests of justice under s10 that disclosure be ordered, because of the need to identify the dishonest employee who had stolen a copy of the book.


Comment

This was a most unusual case on the facts. Its interest lies primarily in the judge’s view that the Defendants’ means and mitigation could not be ruled out as irrelevant to the assessment of additional damages in copyright, and in his determination of the s10 issue, on which, following Camelot v Centaur [1999] QB 124, he held that the importance of enabling the Claimants to identify a dishonest employee, and to protect their commercial reputation, were sufficient to make disclosure necessary in the interests of justice. Note that this is a pre-Human Rights Act case, so Article 10 considerations were given less weight than they would receive now.


Instructing Solicitors

Swepstone Walsh