The first Jimmy Hendrix Experience album Are you experienced? was released in 1967. Forty years later, the album is still rocking the headlines.
A 1969 concert by the Jimmy Hendrix Experience, recorded live at the Royal Albert Hall in London was at the centre of the legal battle in the UK launched by the estate of the late Jimmy Hendrix (a company called Experience Hendrix) against The Times Newspapers.
Experience Hendrix, which owned the author’s rights to the music, together with another company which owned the mechanical rights to the recording of the concert had agreed to co-produce a feature length film for worldwide cinematic release. The film was ready for worldwide release in late 2006, however two months prior to the cinematic debut, The Times Newspapers distributed CDs containing tracks from the concert together with its Sunday edition, as part of a three week programme offering CDs to readers which coincided with the new price (at an increase of 20 pence) for the paper.
The two companies, owning the rights to the music and to the recordings respectively wrote to The Times asking them to halt the release of the CD, yet The Times was quick to point out that it had bought the rights to the music from a third company, and thus clearly thought that it had cleared all rights for producing the Jimmy Hendrix CDs and offering it to its readers. Questions centred on the third party and its licensing of the rights.
As a consequence the film project was delayed and set back considerably. The two aggrieved companies therefore decided to sue The Times Newspapers for copyright infringement and damages.
The presiding judge accepted that the film’s release was delayed by the release of the CD by The Times. He continued to describe the CD distributed with the newspaper as “containing very poor quality” recordings which the claimants [Experience Hendrix et] “would never have permitted”. However he did accept that The Times Newspapers had engaged a reputable agent to obtain all necessary licences. The Times had therefore carried out its obligation towards due diligence in seeking to obtain, and obtaining, rights to distribute the music.
The hardest challenge for the courts was to assess the loss suffered by the claimant companies, and in which way to quantify said loss. The learned judge examined the EU directive (which has also been incorporated into Maltese law) on the enforcement of intellectual property law.
The directive states that when calculating damages, the courts shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement.
Alternatively, the directive allows the courts to set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.
The UK court in this assistance adopted the first approach, that being of calculating the loss sustained. This presented the court with a difficult, but not impossible, task since there were no box-office figures or other takings to present as evidence since the film had been delayed by 12 months.
The judge accepted the calculations presented, in that the profits expected to be made from the film amounted to approximately $5.58m. Damages were then calculated on the basis of a complex formula, resulting in an award far lower than the expected $30m.
The European directive has proved to be a step in the right direction in harmonising the way damages are calculated across the Union for infringements of intellectual property rights. As with all cases, it then depends on the facts of the case to back up the amounts claimed with evidence of damage suffered.
www.fenechlaw.com
Dr Rizzo specialises in intellectual property law at Fenech & Fenech Advocates.