Hodgens v Beckingham [2003] EWCA Civ 143

Case No A3 2002 1457 CHANF[2003] EWCA Civ 143
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM HIGH COURT
CHANCERY DIVISION
(Mr Christopher Floyd QC
sitting as a Deputy High Court Judge)
Venue Royal Courts of JusticeDate Wednesday 19 February 2003
Strand,
London, WC2A 2LL
Before
LORD JUSTICE WARDLORD JUSTICE LAWSLORD JUSTICE JONATHAN PARKER
Between
ROBERT HODGENSAppellantROBERT JAMES BECKINGHAMRespondent
(Transcript of the Handed Down Judgment ofSmith Bernal Wordwave Limited, 190 Fleet StreetLondon EC4A 2AGTel No: 020 7421 4040, Fax No: 020 7831 8838Official Shorthand Writers to the Court)
Philip Engelman (instructed by Payne Hicks Beach) for AppellantIan Peacock (instructed by Davenport Lyons) for Respondent
JudgmentAs Approved by the CourtCrown Copyright ©
[1]This is an appeal by Mr Robert Hodgens, the first defendant in the action, against an order made by Mr Christopher Floyd QC, sitting as a Deputy High Court Judge in the Chancery Division, on 2 July 2002. By his order, the judge entered judgment for the claimant in the action, Mr Robert Beckingham (professionally known as Bobby Valentino), on the issue of liability for infringement of copyright in the music of a version of the song ‘Young at Heart’ performed in February 1984 by a group known as the Bluebells and released in about May 1984 (such music being defined in the order as “the Work”). The order also declared that Mr Valentino (as I shall call him) is a joint author of the Work and joint owner (to the extent of 50 per cent) of the copyright in it; that in 1984 he gratuitously licensed Mr Hodgens to exploit the copyright in the Work but that he was entitled to, and did, revoke that licence in March 1993; and that he is entitled to claim damages in respect of, or an account of profits arising from, any infringement of his copyright in the Work on or after 18 October 1993. The judge refused permission to appeal.[2]There are five other defendants in the action, in addition to Mr Hodgens, but by an order dated 17 January 2000 the action was stayed as against them pending determination of Mr Valentino’s claim against Mr Hodgens. By an order dated 13 August 2001 the stay was continued pending judgment on the issue of liability between Mr Valentino and Mr Hodgens, subject to determination by notice.[3]Mr Hodgens applied to this court for permission to appeal on a number of grounds. Having considered the application on paper, I refused permission to appeal against the judge’s findings of fact on the issue as to joint authorship. That refusal was confirmed at a subsequent oral hearing on 4 December 2002 (Schiemann and Hale LJJ and myself). I also refused permission on paper to raise a point of law as to the true construction of section 11(3) of the Copyright Act 1956 relating to joint authorship, but with liberty to renew the application at the hearing of the appeal. That application is renewed before us, on the footing that if permission is granted the substantive appeal on that issue (which I will call ‘the section 11(3) issue’) will follow. I granted permission on paper to appeal against the judge’s conclusion that Mr Valentino was not estopped from revoking the implied gratuitous licence in March 1993. The appeal on that issue (which I shall call ‘the estoppel issue’) is now before us.

THE FACTUAL BACKGROUND

[4]The factual background is set out in detail in the judge’s careful and lucid judgment. For present purposes, only a brief summary is required.[5]In 1984 Mr Valentino (who was then aged about 23) was a professional fiddle player. Although he was not a member of the Bluebells (the leader of which was Mr Hodgens), he was hired as a session musician at a recording session held at Red Bus Studios in London in February 1984, at which the re-recording of the Bluebells’ version of the song ‘Young at Heart’ was completed. In the action he claims that at that session he not merely performed but wrote the violin part which features in the introduction to the song, consisting of four bars (repeated three times during the song), without any significant input from anyone else; and that his contribution in writing the violin part was such as to render him a joint author of the music (‘the Work’) and hence a joint owner of the copyright in it. That claim is denied by Mr Hodgens, who claims to have written all the music (including the violin part) himself. Mr Hodgens alleges that at the recording session Mr Valentino merely followed instructions in relation to the violin part given by him. In the result, as already noted, the judge found in favour of Mr Valentino on this issue and upheld his copyright claim. Subject only to permission being granted to appeal on the section 11(3) issue, therefore, there is now no possibility of appeal against that part of the judge’s order whereby it is declared that Mr Valentino is a joint author and hence a joint copyright owner of ‘the Work’. Nor is there any separate appeal against the quantification of his interest in the copyright at 50 per cent.[6]The background facts in relation to the estoppel issue are as follows. Following its release in mid-1984 the Bluebells’ version of the song (incorporating the disputed violin part), achieved a degree of commercial success, reaching number 8 in the charts. At that time, Mr Valentino made no claim to be a joint author of the music. Indeed, his own evidence was that he told Mr Hodgens in around 1984 that he had taken advice as to whether he should make such a claim but had decided not to do so (transcript bundle, tab 1, page 60D).[7]In 1986 the Bluebells disbanded.[8]In 1993 the Bluebells’ version of the song was (adventitiously so far as the parties were concerned) used as backing in a Volkswagen commercial. This caused a substantial resurgence in its popularity, as a result of which it reappeared in the charts and was at no. 1 for a number of weeks. Its success was such that the group re-formed for the purpose of performing it on a number of occasions on the television programme ‘Top of the Pops’.[9]Following this resurgence of popularity, Mr Valentino, for the first time, claimed a share of future royalties on the basis that he was a joint author of the music. Mr Valentino’s evidence was that he made this claim in March 1993; Mr Hodgens’ evidence was that he did not do so until November 1997 at the earliest. THE JUDGMENT The section 11(3) issue

THE JUDGMENT

[10]Section 11(3) provides as follows:
“In this Act “work of joint authorship” means a work produced by the collaboration of two or more authors in which the contribution of each author is not separate from the contribution of the other author or authors.”
[11]The judge therefore had to consider, in the context of Mr Valentino’s claim, whether the requirements of the subsection were met in the instant case. Having referred to the terms of the subsection in paragraph 42 of the judgment, the judge considered its application in paragraphs 43 to 53 inclusive of the judgment, under the heading ‘Work of Joint Authorship’. On the facts, the judge concluded that Mr Valentino had collaborated in the creation of ‘the Work’ (i.e. the music); that he had made a significant contribution to it; and that his contribution was not “separate” within the meaning of the subsection. Mr Hodgens does not challenge these conclusions. The judge then addressed a submission made by Mr Philip Engelman (appearing for Mr Hodgens, as he does before us) to the effect that the subsection imposes a further requirement, viz. the requirement of an intention as to joint authorship (as the judge put it in paragraph 47 of the judgment, “a joint intention to create a joint work”). The judge rejected this contention, and Mr Engelman now seeks permission to appeal against that rejection.

The judge addressed the section 11(3) issue in paragraphs 47 to 50 of the judgment, as follows:

“47. Mr Engelman argued that there is, in law, a fourth requirement before a work can be regarded as a work of joint authorship, namely a joint intention to create a joint work. In support he relied principally on a decision of Mr Justice Cohen in the Supreme Court of British Columbia in Darryl Neudorf v Network Expressions [1999] RPC 935. After an extensive review of authority in Canada, the United States and England, Cohen J said at pp 962-3: “In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows: i) Did the plaintiff contribute significant original expression to the songs? If yes, ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes, iii) Did each of the plaintiff and Ms McLachlan intend the other to be a joint author of the song?” 48. I am afraid that, for my part, I cannot see any basis in the English cases, or in the statutory definition which I am bound to apply, for the importation of this third requirement. Plainly, for there to be a collaboration at all, the parties must have a common design to produce the work. Those authors who reach the threshold of a “significant and original” contribution in furtherance of that common design should, in my view, be entitled to call themselves a co-author. Any other test introduces undesirable problems of proof for which I can see no basis in the Act. 49. Applying those principles to the facts as I have found them in the present case, I hold that the Bluebells’ version was created by a collaboration between Mr Hodgens and Mr Valentino in furtherance of a common design. Whilst accepting that it was ultimately a question of fact and degree for the Court, both sides called expert evidence on the question of whether the violin part made a significant and original contribution to the Bluebells’ version of Young at Heart. Both experts thought the violin riff memorable and catchy. Mr Chandler, a musicologist and copyright consultant called by the Claimant thought the violin part more memorable than anything else in the song. Mr Protheroe, the expert called by Mr Hodgens, was inclined to accord the chorus rather more importance, yet nevertheless described the violin part as a reasonably striking feature of the work. In the end the dispute between them came down to whether the violin part made its contribution largely or wholly because of its prominence at the beginning of the work. 50. Having heard the piece played, and reflected on the evidence given, I conclude that the violin part does make a significant and original contribution of the right kind of skill and labour to the Bluebells’ version of the song. Thus Mr Valentino is a joint author of the copyright in that work.” “In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows: i) Did the plaintiff contribute significant original expression to the songs? If yes, ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes, iii) Did each of the plaintiff and Ms McLachlan intend the other to be a joint author of the song?”

The estoppel issue

[13]As noted earlier, it is common ground that, prior to 1993, Mr Valentino made no assertion of copyright ownership nor did he assert any claim to royalties; and that in consequence from 1984 until March 1993 there existed an implied gratuitous licence for Mr Hodgens to exploit the copyright in ‘the Work’. It is Mr Valentino’s case that that licence was effectively revoked in March 1993 when he gave Mr Hodgens notice of his intention to claim a share of future royalties. Mr Hodgens asserts that Mr Valentino gave no indication of such a claim until November 1997 at the earliest, and that in any event Mr Valentino was estopped on grounds of unconscionability from revoking the licence.[14]The judge accepted Mr Valentino’s evidence that he first asserted a claim to future royalties in March 1993. In paragraphs 59 to 61 of the judgment the judge said this:
“59. When the song became a hit again in 1993 there was a further conversation between Valentino and Hodgens at the Top of the Pops studio. Mr Hodgens said to Mr Valentino that he would “see him alright”
. Mr Valentino replied that if he did not do so he would “go to law this time”. Mr Hodgens repeated his assurance to Mr Valentino’s then girlfriend, now his wife Anne Marie, at a party in a restaurant after one of the TOTP [Top of the Pops] performances. At a further TOTP in December 1993 Valentino asked Hodgens about his earlier assurance, to which Mr Hodgens replied that he had not yet received any royalties. 60. Nothing further occurred, apart from a few telephone messages from Mr Valentino which went unanswered, until 1997. In November 1997 there was a telephone conversation between Mr Valentino and Mr Hodgens. Although there was some dispute about what was said, it is clear that Mr Valentino made his intention to claim royalties on the basis of his contribution to the song plain. 61. Claims were put in writing to certain of the defendants (not including Mr Hodgens) in January 1998. A formal letter before action to Mr Hodgens was sent in February 1999.”[15]The judge went on to consider (in paragraph 62 of his judgment) whether in March 1993 Mr Valentino had, as he put it, done enough to make it clear to Mr Hodgens that the licence was revoked, and that he was claiming a share of future royalties. The judge found that he had. He went on to note that the new royalty stream had not yet reached Mr Hodgens, as such royalties took time to filter through the system.[16]The judge then turned to the estoppel issue. He dealt with this issue in paragraphs 63 to 72 of the judgment, as follows:
“63. Was Mr Valentino estopped from taking this course? The approach applicable in this type of case is that set out by Oliver LJ in Taylor’s Fashions Ltd v Liverpool Victoria Trustees [1982] 1 QB 133 at 151H-152A where he said: “Furthermore the more recent cases indicate, in my judgment, that the application of the Ramsden v Dyson L.R. 1 H.L.129 principle – whether you call it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement is really immaterial – requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly, or unknowingly, he has allowed or encouraged another to assume to his detriment than to enquiring whether the circumstances can be fitted within the confines of some preconceived formula serving as a universal yardstick for every form of unconscionable behaviour.” 64. In the first period of the song’s success, from 1984, Mr Valentino certainly knowingly permitted The Bluebells to assume that he would make no claim to a share in the royalty income they were receiving from exploitation of the work. If matters had rested there, and if it were necessary to do so, I would have no hesitation in holding that any attempt by Mr Valentino to change his position in relation to those royalties, brought after the passage of so many years, would be unconscionable. However the Claimant recognises that he has no such claim, having impliedly licensed all such use. Any claim to such royalty income would in any event now be statute barred. 65. Very different considerations apply in relation to the position in 1993. I see no reason why Mr Valentino should not be entitled to say at that stage “I have let you have free use of my composition until now. But this new success is different, and I claim my share of it”
. I believe that Mr Hodgens recognised this in 1993 and his statements to Mr Valentino and his then girlfriend were a recognition by him of the fairness of such an approach. Subject to the two special points pleaded, which I consider later, I do not think it was unconscionable for Mr Valentino to revoke the licence in 1993. 66. Notwithstanding that finding, I should also consider whether it is now unconscionable for Mr Valentino to assert his rights by this action first intimated some 6 years after the TOTP performances. Throughout that period Mr Hodgens has been aware of the claim being made by Mr Valentino. Without wishing to detract from the quality of the composition, the success of the record in this period was due to its somewhat fortuitous use in the Volkswagen commercial. This is not, therefore, a case like Godfrey v Lees [1995] EMLR 307 where the group had laboured long and hard to ensure the song’s success: see pages 332-335. The Bluebells had broken up in 1986. Furthermore the receipts since 1993 cannot be said to have been made, at least as far as Mr Hodgens is concerned, in the belief that no claim to those monies would ever be made by Mr Valentino. In short, I do not think that Mr Valentino can be said to have changed his position in relation to his entitlement to royalties in this second period. 67. As originally pleaded, the First Defendant’s allegation of estoppel did not rely on any specific detriment alleged to have been the result of reliance on the Claimant’s inactivity. Moreover no evidence was directed to this topic in Mr Hodgens’ or any other witness statement. On the second day of the trial, in the course of Mr Hodgens’ evidence, Mr Engelman informed me that he was about to lead such evidence. Mr Peacock reserved his position in relation to the evidence until he had seen the facts relied on set out in a pleading, which was delivered the following morning. I allowed Mr Engelman to amend his pleadings to add certain allegations, but refused permission for him to rely on an allegation that all the royalty income from Young at Heart had been “spent”. This seemed to me to raise a factual inquiry which could not sensibly be dealt with in a fair way at this trial. 68. The two further matters relied upon were these: i) Firstly it was said that the failure to assert the rights had deprived Mr Hodgens of the opportunity of deleting the violin part from the recording altogether. ii) Secondly it was said that the present assertion of Mr Valentino’s rights will be harmful to Mr Hodgens’ reputation as a songwriter. The argument runs as follows. Mr Hodgens’ reputation is based in substantial measure on his writing of the music of Young at Heart. For a songwriter who has had one number one hit in the UK to be shown to have denied a co-author a credit on that song would be harmful to that reputation. It is unconscionable for Mr Valentino, having allowed Mr Hodgens and Ms Fahey to assert to the world at large that only they were responsible for the words and music of Young at Heart, now to change his position and assert his rights. 69. I am unimpressed by the first point. The window of opportunity for deleting the violin part was the narrow one between recording and release of the record. I doubt whether in fact, had Mr Valentino asserted his rights at that time, the group would have changed the violin part on the recording. 70. The second point was the subject of evidence. Mr Chandler, who was called by Mr Valentino, was of the view that to be found to have wrongly denied a co-author a credit to which he was entitled was not really harmful. Well known composers, such as George Harrison of the Beatles, had survived claims of piracy. Mr Protheroe thought that such a finding would be seriously harmful to a composer in his dealings with recording companies. No one wishes to be involved with someone who attracts copyright claims. I prefer Mr Protheroe’s evidence which seems to me to accord more with common sense. 71. However, I do not think any of this makes it unconscionable for Mr Valentino to assert his rights in the way that he seeks to do in this action. His position is that he accepts that he has licensed the use of the work from 1984 to 1993. Thereafter he made his claim known to Mr Hodgens. In my judgment Mr Hodgens should then have accepted and settled his claim to a share of the new royalty stream. Had he done so there would have been no damage to Mr Hodgens’ reputation. Mr Protheroe was inclined to accept that the damage of which he was speaking of was caused by the existence of litigation. 72. Accordingly these estoppel defences fail. I would only add that I have approached them on the basis of whether it is unconscionable for Mr Valentino to claim, through the mechanism of this action, a share in the royalties received since the 1993 revival. The Particulars of Claim also include a claim to an injunction. That seems to me to raise different and more difficult issues not specifically addressed in evidence or in argument, and I am not deciding those issues here.” “Furthermore the more recent cases indicate, in my judgment, that the application of the Ramsden v Dyson L.R. 1 H.L.129 principle – whether you call it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement is really immaterial – requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly, or unknowingly, he has allowed or encouraged another to assume to his detriment than to enquiring whether the circumstances can be fitted within the confines of some preconceived formula serving as a universal yardstick for every form of unconscionable behaviour.” i) Firstly it was said that the failure to assert the rights had deprived Mr Hodgens of the opportunity of deleting the violin part from the recording altogether. ii) Secondly it was said that the present assertion of Mr Valentino’s rights will be harmful to Mr Hodgens’ reputation as a songwriter. The argument runs as follows. Mr Hodgens’ reputation is based in substantial measure on his writing of the music of Young at Heart. For a songwriter who has had one number one hit in the UK to be shown to have denied a co-author a credit on that song would be harmful to that reputation. It is unconscionable for Mr Valentino, having allowed Mr Hodgens and Ms Fahey to assert to the world at large that only they were responsible for the words and music of Young at Heart, now to change his position and assert his rights.

THE ARGUMENTS

[17]Mr Engelman turned first to the issue whether (absent estoppel) Mr Valentino effectively revoked the implied licence in March 1993. He began his submissions by challenging the findings of fact made by the judge in paragraph 59 of the judgment as to what was said by Mr Valentino and Mr Hodgens in 1993. He submits that it is to be inferred from the fact that the judge did not expressly acknowledge that there was a direct conflict of evidence between Mr Valentino and Mr Hodgens on this aspect of the case that the judge did not have in mind Mr Hodgens’ evidence when making those findings. Alternatively, he challenges the judge’s conclusion (in paragraph 62 of the judgment), based on those findings, that Mr Valentino did enough to make it clear to Mr Hodgens that the implied licence was revoked. Mr Engelman submits that the implied licence was revoked at the earliest in November 1997.[18]Turning to the estoppel issue, Mr Engelman reminds us of the well-known passage in the judgment of Oliver J in Taylor Fashions quoted by the judge in paragraph 63 of his judgment (see above). On the facts of the instant case, Mr Engelman identifies seven factors (the last of which he had not sought to rely on before the judge) which, severally or cumulatively, lead (as he submits) to the conclusion that it was unconscionable for Mr Valentino to deny, whether in March 1993 or (as Mr Hodgens contends) in November 1997, that which he had at all times previously encouraged Mr Hodgens to believe, viz. that he would not make any claim to be a joint author of the music. The factors identified by Mr Engelman are as follows: 1.The delay in making the claim (around 9 years if the claim was first made in March 1993; almost 14 years if it was first made in November 1997). 2.The terms of the representations made by Mr Valentino in around 1984 to the effect that he would not make such a claim. 3.The fact that in first making his claim following the resurgence of the recording’s popularity in 1993 Mr Valentino “jumped on the bandwagon”. 4.The effect of the claim on Mr Hodgens’ professional reputation. 5.The opportunity for excising the violin part from the recording had Mr Valentino asserted a claim to joint authorship prior to the release of the recording in mid-1984. 6.The judge’s refusal to allow Mr Hodgens to lead evidence to the effect that he had spent the royalties which he had received pre-1993 in reliance on Mr Valentino’s representations that he would not be making any claim to them. 7.By way of a new point, Mr Engelman informs us (there having been no investigation of the matter before the judge) that Mr Hodgens had warranted to publishers and other parties concerned in the exploitation of the recording that he was the sole owner of the copyright and had agreed to indemnify them against any claims by a third party for infringement of copyright.[19]In the course of his submissions directed to factor 1 above (delay), Mr Engelman seeks to challenge the judge’s findings (in paragraph 59 of the judgment) as to what was said by Mr Valentino and by Mr Hodgens in March and December 1993. As to what was said by Mr Valentino in November 1997, Mr Engelman submits that that was not in any event sufficient to amount to a revocation of the implied licence. In support of these submissions, (the last of which does not appear in the notice of appeal), Mr Engelman relies on the decision of Robert Goff J in Redwood Music Ltd v. Chappell & Co Ltd [1982] RPC 109. As to the effect of delay, in the context of unconscionability, Mr Engelman cites Godfrey v. Lees & Ors [1995] EMLR 307 (a decision of Blackburne J) and Hadley & Ors v. Kemp & Ors [1999] EMLR 589 (a decision of Park J). Mr Engelman submits that there is a direct analogy between these two cases and the instant case. Mr Engelman also relies in this connection on the fact that, as the judge found in paragraph 60 of the judgment, nothing of relevance occurred between 1993 and 1997.[20]As to factor 2 above (the 1984 representations), Mr Engelman relies on the fact that in the instant case not merely was no claim made, but there were express representations to the effect that no claim would be made. Why, he asks rhetorically, should Mr Valentino be permitted to resile from those representations?[21]As to factors 3 and 4 above (“jumping on the bandwagon” and the effect on Mr Hodgens’ professional reputation), Mr Engelman submits that these are further elements which weigh in the scales in favour of unconscionability.[22]As to factor 5 above (excision of the violin part), Mr Engelman points to the fact that there was, as the judge accepted in paragraph 69 of the judgment, a window of opportunity – albeit brief – for excising the violin part from the recording. He referred us to Mr Hodgens’ oral evidence in chief (transcript bundle, tab 2, page 124E-F) to the effect that had Mr Valentino asserted a claim prior to the release of the recording in mid-1984, he would have taken that opportunity.[23]As to factor 6 above (the judge’s refusal to let in evidence as to expenditure of pre-1993 royalties), Mr Engelman submits that such evidence ought to have been allowed in since it would have been relevant to the existence of detriment – although he submits that it is not strictly necessary for Mr Hodgens to prove detriment.[24]As to factor 7 above (Mr Hodgens’ potential contractual liability to other parties) Mr Engelman seeks permission to rely on this additional factor as constituting further detriment suffered by Mr Hodgens in consequence of Mr Valentino’s assertion of a claim.[25]Seeking permission to appeal on the section 11(3) issue, Mr Engelman submits that support for his contention that, under the terms of the subsection, there can be no joint authorship in the absence of a common intention to that effect is to be found in the decision of the Court of Common Pleas in Levy v. Rutley (1871) LR 6 CP 523 and in the decision of the Supreme Court of British Columbia in Darryl Neudorf v. Nettwerk Productions Ltd [2000] RPC 935. Relying on those two authorities, he submits firstly that the requirement for such a common intention is a free-standing requirement imposed by the subsection. In the alternative, he submits that it is implicit in the concept of ‘collaboration’ that there must be “joint labouring in the furtherance of a common design” (see Levy v. Rutley at p.529 per Keating J, quoted by the judge in paragraph 44 of the judgment), and that “common design” in that context means common intention as to joint authorship.[26]Mr Ian Peacock (for Mr Valentino), in his written skeleton argument, submits essentially that on the estoppel issue the judge was right for the reasons he gave.[27]Mr Peacock submits that the judge was fully entitled to make the findings of fact which he made in paragraph 59 of the judgment, and that on those findings his conclusion (in paragraph 62 of the judgment) that in March 1993 Mr Valentino “had done enough to make it clear to Mr Hodgens that the gratuitous licence was revoked” was plainly correct. As to estoppel, he submits that the judge was in the best position to determine whether, applying Oliver J’s test in Taylor Fashions, it was unconscionable for Mr Valentino to be permitted to assert a claim to future royalties; and that this court should not interfere with his conclusion on that question unless he misapplied the law or reached a decision on the facts which no reasonable judge could have reached. He submits that the judge did neither of those things. He stresses that Mr Valentino makes no claim to royalties received pre-1993 (a claim which, as the judge accepted in paragraph 64 of the judgment, would have been unconscionable).[28]As to “jumping on the bandwagon”, Mr Peacock submits that Mr Valentino was entitled to take what was essentially a commercial decision not to pursue a claim in respect of the original success of the recording, in the light of advice which (as he told the court in evidence) he had received, to the effect that his share of such royalties would be eaten up by legal costs and that to make a claim might affect his developing career as a session musician.[29]Mr Peacock submits that Godfrey v. Lees is distinguishable from the instant case in that in Godfrey v. Lees the claimant had stood by and allowed the members of the group to work hard to generate a market for their recordings in the belief that the claimant had no claim.[30]He submits that the judge was fully entitled to conclude that it would not have been possible fairly to investigate in the course of the trial Mr Hodgens’ assertion that he had spent the pre-1993 royalties, and thus in the exercise of his discretion to decline to admit evidence directed to that topic. In any event, he submits that Mr Hodgens’ reliance on such expenditure is misconceived, given that Mr Valentino makes no claim in respect of pre-1993 royalties.[31]As to Mr Hodgens’ evidence to the effect that had he been aware prior to the release of the recording that Mr Valentino was asserting a claim he would have excised the violin part from the recording, Mr Peacock submits that if that were sufficient detriment to support an estoppel, the estoppel would take effect once and for all when the recording was released.[32]As to possible damage to Mr Hodgens’ reputation, Mr Peacock points out that Mr Protheroe (Mr Hodgens’ expert witness) conceded in the course of cross-examination (transcript bundle, tab 6, pp.386E-387B) that a finding that Mr Valentino wrote the violin part but was estopped from asserting his rights in that respect would be almost as damaging to Mr Hodgens as a finding in his favour on liability. In any event, he submits that possible damage to Mr Hodgens’ professional reputation if the true position is known cannot amount to sufficient detriment to support an estoppel.[33]By a Respondent’s Notice, Mr Peacock puts forward a number of additional grounds for upholding the judge’s order. CONCLUSIONS Revocation of the implied licence

CONCLUSIONS

[34]I can see no basis whatever for challenging the judge’s findings (in paragraph 59 of his judgment) as to what was said by Mr Valentino and Mr Hodgens in 1993; or his conclusion, based on those findings, that what Mr Valentino said to Mr Hodgens in March 1993 was sufficient (absent an estoppel) to revoke the implied licence. With respect to Mr Engelman, the suggestion that in making those findings the judge overlooked the fact that there was a conflict of evidence about what was said in 1993 seems to me to be fanciful.[35]I turn, then, to the estoppel issue.

The estoppel issue

[36]I begin by rejecting Mr Engelman’s submission that, in order to raise an estoppel against Mr Valentino, it is not necessary for Mr Hodgens to show that he has suffered any detriment by reason of his reliance on Mr Valentino’s statements in around 1984 that he did not intend to claim a share of the royalties. In my judgment, that submission is contrary to principle. As Oliver J made clear in Taylor Fashions (at p.151H-152A, in the passage quoted by the judge in paragraph 63 of the judgment), a party who seeks to set up an estoppel must establish that it would be unconscionable for the other party to be permitted to deny that which he has allowed or encouraged the first party to assume “to his detriment”. Absent detriment in some form suffered by the party seeking to set up an estoppel, no question of unconscionability sufficient to support an estoppel can arise (see Gillett v. Holt [2001] Ch 210 at 232D-E per Robert Walker LJ). In the context of estoppel, unconscionability is the product of detriment.[37]On that footing, therefore, I turn to the seven specific factors on which Mr Engelman seeks to rely as raising an estoppel against Mr Valentino.[38]In relation to factor 1 (delay), it is important to bear in mind that Mr Valentino makes no claim to any pre-1993 royalties. His claim relates only to the royalties generated by the resurgence in the popularity of the recording resulting from its use in the Volkswagen commercial in 1993. As he put it in his witness statement, which he confirmed in oral evidence when cross-examined about his assertion of a claim in March 1993 (transcript bundle, tab 1, page 66A):
“Although I had not taken any action before, I would ‘go to law’ this time. I was not prepared to let him continue to make money for a second time out of something that I had written.”
[39]It has not been (nor could it be) suggested that in the period from mid-1984 to March 1993 Mr Hodgens acted in a way which renders it unconscionable for Mr Valentino to claim his due share of post-1993 royalties. On the judge’s findings, the regeneration of the royalty stream following the Volkswagen commercial was both adventitious and unforeseeable.[40]Nor, given the judge’s finding that Mr Hodgens’ response to Mr Valentino’s assertion of a claim in March 1993 was that he would “see him all right”, can Mr Hodgens derive any comfort from the fact that (as the judge recorded in paragraph 60 of the judgment) thereafter nothing much happened until 1997.[41]Nor do I derive any assistance from the authorities cited by Mr Engelman in relation to delay (i.e. Godfrey v. Lees and Hadley v. Kemp). The facts in those cases were, in my judgment, materially different from those of the instant case.[42]As to factor 2 (the statements made by Mr Valentino in around March 1984), the fact that Mr Valentino did not merely forbear to make a claim but stated positively that he would not make one does not put Mr Hodgens in any stronger position in seeking to set up an estoppel. The reason is that, as is common ground, those statements merely confirmed an existing implied licence which was revocable on reasonable notice. Absent consideration, no irrevocable licence could arise. So the question remains the same: in all the circumstances, is it unconscionable to permit Mr Valentino to claim his share of future royalties, thereby revoking the implied licence?[43]As to factor 3 (“jumping on the bandwagon”), this is simply a pejorative way of describing Mr Valentino’s reasons for making a claim to future royalties, as summarised in the passage from his witness statement quoted earlier.[44]As to factor 4 (possible effect on Mr Hodgens’ professional reputation) and factor 5 (the opportunity to excise the violin part from the recording), the judge deals with these factors in paragraphs 71 and 69 of the judgment, and I cannot improve on what he says in those paragraphs.[45]As to factor 6 (the judge’s refusal to admit evidence directed at establishing that Mr Hodgens had spent the royalties which he had received pre-1993), in the first place the judge was fully entitled to conclude that (as he said in paragraph 67 of the judgment) the issue sought to be raised could not be dealt with in a fair way in the current trial: in other words, that it had been raised far too late. But in any event the fact (if proved) that Mr Hodgens had spent all the royalties which he had received pre-1993 in reliance on Mr Valentino’s statements in around March 1984 that he did not intend to make a claim could not render it unconscionable for Mr Valentino, in March 1993, to claim a share of future royalties arising in circumstances which no one could have foreseen.[46]In my judgment, therefore, factors 1 to 6, whether one takes them singly or collectively, are insufficient to raise an estoppel against Mr Valentino.[47]As to factor 7 (Mr Hodgens’ position vis-à-vis publishers and other third parties involved in exploiting the copyright), that was not a matter which was raised before the judge and in consequence there was no evidential investigation into it. In my judgment, that in itself is enough to debar Mr Engelman from raising it for the first time on appeal. But in any event, despite Mr Engelman’s attempts to explain the position, I remain wholly at a loss to understand in what respect it could be alleged that Mr Hodgens has suffered detriment in this respect by reason of Mr Valentino’s claim to a share of future royalties.[48]Accordingly I have no hesitation in upholding the judge’s decision on the estoppel issue. I would therefore dismiss the appeal.

THE SECTION 11(3) ISSUE

[49]I reject the submission that section 11(3) requires, as one of the elements of joint authorship, the existence of a common intention as to joint authorship. I do so for essentially the reasons which the judge gave.[50]In the first place, I agree with the judge that there is nothing in the express wording of section 11(3) which warrants the imposition of such a requirement. The only requirements for a ‘work of joint authorship’ expressed in section 11(3) are that the authors should have collaborated and that their contributions should not be ‘separate’.[51]As Levy v. Rutley makes clear, these requirements will not be met unless there has been “joint labouring in furtherance of a common design” (see ibid. p.529 per Keating J). But the “common design” in that context is not an intention that there should be joint authorship. What Keating J was describing, as I read his judgment, was the process of jointly creating the work in question: as the judge in the instant case put it in paragraph 48 of the judgment, a “common design to produce the work”. So much is clear, in my judgment, from the passage in Keating J’s judgment which follows his reference to “common design”, where he says:
“I fail to discover any evidence that there was any co-operation of the two in the design of this piece [a play], or in its execution, or in any improvements either in the plot or the general structure. …. If the plaintiff and the author had agreed together to rearrange the plot, and so to produce a more attractive piece out of the original materials, possibly that might have made them joint authors of the whole. So, if two persons undertake jointly to write a play, agreeing in the general outline and design, and sharing the labour of working it out, each would be contributing to the whole production, and they might be said to be joint authors of it. But, to constitute joint authorship, there must be a common design. Nothing of the sort appears here. The plaintiff made mere additions to a complete piece, which did not in themselves amount to a dramatic piece, but were intended only to make the play more attractive to the audience.”
[52]As to the Canadian case of Darryl Neudorf, on which Mr Engelman naturally relies strongly, I agree with the judge that there is no basis in the English cases for importing the requirement of an intention as to joint authorship. In Darryl Neudorf, Cohen J followed the United States case of Childress v. Taylor 945 F.2d 500. At page 962 of the report of Darryl Neudorf, Cohen J said this:
“… the creation of the intent to co-author requirement in Childress v. Taylor happened despite the statutory definition of joint authorship …, not because of it. The court looked beyond the language of the section and moved on to review policy considerations in the application of the section. In particular, the court could not accept that Congress intended to extend joint authorship to, for example, editors and researchers. It was for this reason that the court created the intent to co-author requirement.”
[53]In my judgment, the judge in the instant case was clearly right to confine his consideration to the language of section 11(3) and not to look beyond the section into the uncertain realms of policy. So doing, he plainly reached the correct conclusion.[54]I would accordingly refuse permission to appeal on the section 11(3) issue, confirming my earlier refusal of permission on the papers.

Lord Justice Laws :

[55]I agree.

Lord Justice Ward :

[56]I also agree.

Order

appeal dismissed; renewed application for permission to appeal refused; appellant to pay respondent's costs of the appeal and of the renewed application for permission, to be subject to a detailed assessment, but questions of basis of assessment, rate at which and period during which interest is to be paid reserved to the trial judge or the master dealing with issues of quantum still outstanding; appellant to make interim payment on account of costs in sum of £8,000. (Order does not form part of the approved judgment)

Cited in 5 later judgments