§ Mr. Walker-SmithI beg to move, in page 28, line 30, to leave out from "section" to the end of line 46 and insert:
(a) the exclusive licensee shall (except against the owner of the copyright) have the same rights of action, and be entitled to the same remedies, under section seventeen of this Act as if the licence had been an assignment, and those rights and remedies shall be concurrent with the rights and remedies of the owner of the copyright under that section ;(b) the exclusive licensee shall (except against the owner of the copyright) have the same rights of action, and be entitled to the same remedies, by virtue of the last preceding section as if the licence had been an assignment ; and(c) the owner of the copyright shall not have any rights of action, or be entitled to any remedies, by virtue of the last preceding section which he would not have had or been entitled to if the licence had been an assignment.(3) Where an action is brought either by the owner of the copyright or by the exclusive licensee, and the action, in so far as it is 776 brought under section seventeen of this Act, relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action under that section, the owner or licensee, as the case may be, shall not be entitled, except with the leave of the court, to proceed with the action, in so far as it is brought under that section and relates to that infringement, unless the other party is either joined as a plaintiff in the action or added as a defendant:Provided that this subsection shall not affect the granting of an interlocutory injunction on the application of either of them.It might be convenient, Mr. Speaker, with your approval, to take with this Amendment and the three other Amendments in the name of my right hon. Friend to page 29, line 3, line 6 and line 32. The purpose of these Amendments is to remove doubts about the operation of Clause 19 as drafted. That Clause deals with the position of its exclusive licensees.These Amendments, which I am afraid take up rather a lot of space on the Order Paper, do not represent any change in the Government's intentions in this matter. The main features of the scheme in Clause 19 remain unchanged, though I hope clarified. These features are, first, that the exclusive licensee is empowered to sue in his own right under Clause 17 in actions for infringement, and, secondly, he can sue in his own right under Clause 18 in actions for detinue and conversion. Coming to the copyright owner, he can sue in his own name under Clause 17 for infringement, but he cannot sue under Clause 18 for detinue and conversion because this right is reserved to the exclusive licensee, who is, of course, the only person, where he holds the exclusive licence, who is entitled to exercise the copyright.
Coming to the Amendments in a little more detail, the Amendments to subsection (2) are merely drafting, and the new subsection (3), which I am now moving, maintains the provision that the exclusive licensee must join the copyright owner in the action either as plaintiff or defendant. That seems to us a reasonable provision, because it is desirable that in these matters the copyright owner and the exclusive licensee should co-operate together so far as is possible.
Hon. Members who were on the Standing Committee will recall that the main difficulty which we envisaged in 777 the provisions which we were making for defining the respective rights of the copyright owner and the exclusive license; was to avoid any danger of a duplication of damages in this context arising from the possibility of successive actions by the copyright owner and the licensee respectively. We have avoided this, I think successfully, in the case of actions for detinue and conversion by the provision to which I have already referred, whereby the copyright owner cannot sue for detinue and conversion but only the exclusive licensee, but two possible difficulties have arisen out of the consideration which we have given to this matter since the Committee stage.
The first is an action for infringement under Clause 17, in which, as the House will appreciate, both the copyright owner and the exclusive licensee have the right to sue. Our intention is and always has been that the owner should recover damages only for his loss, and the exclusive licensee only for the loss that he suffered. Consequently, there would in principle be no duplication of damages. The difficulty that arises is when the actions are individually brought and the court may feel bound to disregard the contractual rights of the licensee in an action brought by him and award him damages on the basis of the full loss suffered by the copyright owner, and, conversely, the same thing might happen in respect of the copyright owner.
To meet that difficulty, we propose this new subsection (5), which, in effect, directs the court to have regard to the fact that the copyright owner and the exclusive licensee have each got distinct and limited interests in the copyright and in the remedies in respect thereof.
10.15 p.m.
The other difficulty which has suggested itself to us is that the remedy of an account of profits was likely to cause difficulty under the old drafting. It is as a solution for this possibility that we propose the new subsections (6) and (7). Under subsection (6) the Court is to apportion the profits between the copyright owner and the exclusive licensee and the new subsection (7) will save the infringer from the duplication of proceedings and thereby save him consequentially from the danger of a 778 duplication of damages awarded against him.
§ Amendment agreed to.
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Further Amendments made: In page 29, line 3, leave out from "if" to "shall" in line 4 and insert:
this section had not been enacted and the action had been brought by the owner of the copyright".
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In line 6, leave out subsections (5) and (6) and insert:
(5) Where an action is brought in the circumstances mentioned in subsection (3) of this section, and the owner of the copyright and the exclusive licensee are not both plaintiffs in the action, the court, in assessing damages in respect of any such infringement as is mentioned in that subsection—
(6) Where an action, in so far as it is brought under section seventeen of this Act, relates (wholly or partly) to an infringement in reapect of which the owner of the copyright and the exclusive licensee have concurrent rights of action under that section. and in that action (whether they are both parties to it or not) an account of profits is directed to be taken in respect of that infringement, then, subject to any agreement of which the court is aware, whereby the application of those profits is determined as between the owner of the copyright and the exclusive licensee, the court shall apportion the profits between them as the court may consider just, and shall give such directions as the court may consider appropriate for giving effect to that apportionment.
(7) In an action brought either by the owner of the copyright or by the exclusive licensee,—
(8) Where, in an action brought in the circumstances mentioned in subsection (3) of
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this section, whether by the owner of the copyright or by the exclusive licensee, the other party is not joined as a plaintiff (either at the commencement of the action or subsequently), but is added as a defendant, he shall not be liable for any costs in the action unless he enters an appearance and takes part in the proceedings.
In line 32, at end insert:
the other party", in relation to the owner of the copyright, means the exclusive licensee, and, in relation to the exclusive licensee, means the owner of the copyright ; and "if the licence had been an assignment" means if, instead of the licence, there had been granted (subject to terms and conditions corresponding as nearly as may be with those subject to which the licence was granted) an assignment of the copyright in respect of its application to the doing, at the places and times authorised by the licence, of the acts so authorised.—[Mr. Walker-Smith.]