Johnny Duhan v Radius Television Production Ltd

CourtHigh Court
JudgeMr. Justice Herbert
Judgment Date18 July 2007
Neutral Citation[2007] IEHC 292
Docket Number[2002 No. 6045P]
Date18 July 2007





[2007] IEHC 292

[No. 6045P/2002]




Documents - Intellectual property rights - Copyright - Alleged infringement - Purpose of discovery in context of copyright suit - Whether documents should be ordered to be discovered - Ryanair plc v Aer Rianta cpt [2003] 4 IR 264 followed; Pearce v Ove Arup Ltd [2000] Ch 403 adopted; R v Secretary of State for Transport; Ex p Factortame Ltd (No 2) [1991] 1 AC 603, Sterling Winthrop Group Ltd v Fabenfabriken Bayer AG [1967] IR 97, Marleasing SA v La Commercial Internacional de Allimentación SA (Case C-106/89) [1990] ECR I-4135 considered and Allibert SA v O'Connor [1982] ILRM 40 considered - European Communities (Enforcement of Intellectual Property Rights) Regulations 2006 (SI 360/2006), reg 3(1) - Rules of the Superior Courts 1986 (SI 15/1986), O 31, r 12 - Limited discovery ordered (2002/6045P - Herbert J - 18/7/2007) [2007] IEHC 292

Duhan v Radius Television Ltd

The plaintiff claimed to be the author and entitled to the copyright and moral rights in music and words of a song called "The Voyage". The plaintiff sought discovery against the first and second defendants.

Held by Herbert J. in ordering discovery that the Court had to construe O. 31, r. 12 of the Rules of the Superior Courts, so far as the language of the rule permitted, consistently with Directive 2004/48/EC on the Enforcement of Intellectual Property Rights.

Reporter: RW



Mr. Justice Herbert delivered on the 18th day of July, 2007.


This application for discovery of documents, brought against the first and the second named defendants, was referred to this court by the Master of the High Court, in exercise of the jurisdiction conferred upon him by the provisions of O. 63 r. 7 of the Rules of the Superior Courts.


In his statement of claim delivered on 23 rd December, 2002, the plaintiff claims to be the author and entitled to the copyright and moral rights in the music and words of a song called "The Voyage".


In their amended defence delivered on 28 th April, 2006, the defendants plead that they are strangers to the precise authorship and copyright entitlements alleged by the plaintiff to subsist in the said song and make no admissions in this regard.


In his statement of claim, the plaintiff asserts that this court has power, by virtue of Council Regulation (EC) No. 44/2001, of 22 nd December, 2000, to hear and determine his claim against the defendants and, this court should assume jurisdiction accordingly pursuant to the provisions of Articles 5(1) and 3 of the said Regulation. This is denied by the defendants in their amended defence, who also plead, in the alternative, that no cause of action subsists on the part of the plaintiff in respect of the following matters:-


(a) Complaints arising out of or in connection with the Copyright and Related Rights Act, 2000 which pre-date 1 st January, 2001, and,


(b) Complaints which relate to Acts or the authorisation of Acts outside this State or alternatively, outside the European Union.


It is pleaded in the statement of claim that the first named defendant is a limited liability company engaged, inter alia, in the business of music and television production and has its registered office at 37-39 Fitzwilliam Square, Dublin. The second named Defendant is described as, "a Dutch Company" engaged, inter alia, in the business of television production with its registered office at De Ruyterkade 142, 1011 AC, Amsterdam.


In the statement of claim it is alleged that on a date unknown in or about 1999, at the premises of the Royal Dublin Society and on diverse dates and at diverse venues in the United States of America, particulars of which would be furnished following discovery, certain persons - believed to be Anthony Kearns, Ronan Tynan and Finbar Wright, performing under the style and title of, "The Irish Tenors", without the licence or consent of the plaintiff, performed in public the said song, or an unlicensed adaptation thereof, thereby infringing the plaintiff's copyright in the work. In replies to particulars dated 6 th June, 2003, this adaptation is identified as consisting of a small number of unlicensed alterations to the words of the song. The plaintiff alleges that the defendants were at all times aware that these alleged performances infringed his copyright in the said song.


The plaintiff claims, that following upon this performance at the premises of the Royal Dublin Society, the first and second named defendants and each of them, their servants or agents, have infringed his copyright by, inter alia, without his consent:-

"[Paragraph 11] Reproducing or causing to be reproduced the said song or the unlicensed adaptation of it, performed by, "The Irish Tenors" in the form of video recordings, compact discs, radio cassettes or gramophone records.

[Paragraph 12] Accompanying these reproductions with literature containing the words of the song or the unlicensed adaptation of it. [Paragraph 14] Selling or offering for sale to the public, large numbers of the items described at paragraphs 11 and 12 above."


In addition to injunctive relief, an order for delivery-up and interest pursuant to the provisions of s. 22 of the Courts Act, 1981, the plaintiff also claims:-

"[Paragraph 8] An inquiry as to damages, including additional damages for infringement of copyright and infringement of moral right or, at his option, an account of the profits made by the Defendants, their servants or agents, by reason of their infringement of copyright and infringement of moral rights, and

[Paragraph 9] An Order for the payment of all sums found due to the Plaintiff upon taking such inquiry or account."


In their amended defence, in addition to the pleadings to which I have already referred and, to a general joinder of issue on each of the several allegations contained in the statement of claim, the Defendants also plead as follows:-

"[Paragraph 2] They deny any liability for breach of copyright by reason of the alleged publication, manufacture, copying or distribution of all or any of the alleged works outside this State."


[Paragraph 4] that they will rely, inter alia, upon the following licensing and licence-fee payment arrangements, which they plead were in place at all material times in relation to the manufacture distribution, sale and broadcasting of the said work by means of CD/MC, Video, VHS and TV:-


(a) The manufacture, distribution and sale of CD/MC Worldwide was granted to Point Entertainment Limited and/or Point Entertainment Inc. Pursuant to this Point Entertainment Inc. was licensed under American law by way of compulsory licence provision to manufacture and/or distribute CD/MC within the United States by virtue of licence No. 100-322/0178. The manufacture and/or distribution of such products was governed by American law and Point Entertainment Limited/Point Entertainment Inc. were entitled to seek and receive such licence from and were liable on foot of such licence to make appropriate payments for and on behalf of the Plaintiff. In the premises, any liability arising in relation to the sale, manufacture or distribution of CD/MC was the liability of Point Entertainment Inc/Point Entertainment Limited. These Companies went into Receivership or Liquidation in or about March, 2000, following which the First and/or Second-named Defendants sought to deal directly with the Plaintiff in respect of the further exploitation of rights. The First and Second-named Defendants deny any liability to the Plaintiff arising from the exploitation of rights by Point Entertainment Limited/Point Entertainment Inc.


(b) Subsequently, such distribution took place in the United States and Canada through Navarre and in Ireland through RMG from the 10 th March, 2000. The Plaintiff was made aware of this and the First and Second-named Defendants offered to pay the appropriate market rate relative to rights of this type.


(c) MCPS Licence was issued dated the 23 rd November, 1999 in respect of CD/MC sales in this jurisdiction, the distribution of monies which was a matter for MCPS which at all times acted as agent for the Plaintiff. The First and Second-named Defendant are strangers to the precise amounts received by MCPS or the Plaintiff arising in relation to these Licences but will assert that such exhausts the Plaintiff's rights in respect of such copyright and/or that the amounts payable should be given as credit to these Defendants.


(a) All video copies distributed and/or sold in the United States or Canada were manufactured by Point Entertainment Inc/Point Entertainment Limited until the 10 th March, 2000 and it is denied that any liability arises on the part of the First and Second-named Defendants arising from such importation, distribution or sale. Distribution in a sale in the United States and Canada was effected via Navarre as from the 10 th March, 2000. The Defendants will rely on any payments made to the Plaintiff by or on behalf of Navarrre as being in satisfaction of the Plaintiff's claim.


(b) The sale-manufacture or distribution of VHS in Ireland was carried out by the Third-named Defendant and the First and Second-named Defendants will rely upon any arrangements or payments made by or on behalf of the Third-named Defendant. Insofar as any liability may be established by the Plaintiff, they will seek credit against the amounts paid in respect of the aforesaid rights.


(a) In relation to broadcasting by television, the necessary Synchronisation Licences...

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    ...or could assist him in making his case, or hinder that of his opponent.' 6.5Herbert J., in Duhan v Radius Television Production Limited [2008] 1 I.R. 506 refers to 'procurement' at para 47: 'As a matter of justice and proper proportion and having regard to the issues joined between the part......

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