Phonographic Performance (Ireland) Ltd v C.I.C.P.

• Jurisdiction: Ireland
• Judgment Date: 01 January 1993
• Date: 01 January 1993
• Docket Number: [1991 No. 227 J.R.]
• Court: High Court

High Court

[1991 No. 227 J.R.]

[1991 No. 243 J.R.]

Phonographic Performance v. Controller of Industrial Property

Phonographic Performance (Ireland) Limited

Applicant

and

The Controller of Industrial and Commercial Property and Radio Telefís Éireann éireann

Respondents

Phonographic Performance v. Controller of Industrial Property

Phonographic Performance (Ireland) Limited

Applicant

and

The Controller of Industrial and Commercial Property, John Ryan, White Sands Hotel Limited and Hotel Imperial Dundalk Limited

Respondents

Case mentioned in this report:—

Performing Rights Society Ltd. v. Workingmen's Club and Institute Union Ltd. [1988] F.S.R. 586.

Copyright - Sound recordings - Copyright subsisting therein - Copyright owners entitled to equitable remuneration in respect of broadcasting and public performance of sound recordings - Licence schemes fixing equitable remuneration - Dispute - Reference to Controller of Industrial and Commercial Property - Whether reference properly brought - Copyright Act, 1963 (No. 10), ss. 17, 31 and 32.

Judicial Review.

The facts are fully set out in the judgment of Barr J., post, and are summarised in the headnote, supra.

On the 3rd October, 1991, the applicant was granted leave by the High Court (Denham J.) to apply by way of judicial review for orders of certiorari, prohibition and mandamus quashing the decision of the Controller of Industrial and Commercial Property to proceed with the reference brought by the second respondent in the first set of proceedings pursuant to s. 31, sub-s. 3 of the Copyright Act, 1963. Similar leave was given by the High Court (Lavan J.) on the 23rd October, 1991, in relation to the decision of the Controller in the reference brought before him by the second, third and fourth respondents in the second set of proceedings. Forty members of the Irish Dance and Entertainment Industry Association, a body representing the interests of discotheque operators, who had referred disputes with the applicant to the Controller, were joined as notice parties to the second set of proceedings. It was agreed by all the parties that the cases would be heard and determined together and the cases came on for hearing before the High Court (Barr J.) on 14th, 15th, 16th and 17th January, 1992.

Section 17, sub-s. 1 of the Copyright Act, 1963, provides, inter alia, that copyright shall subsist in certain sound recordings.

Section 17, sub-s.4 (b) of the Act of 1963 provides that causing a published recording or any reproduction thereof to be heard in public, broadcast or transmitted to subscribers to a diffusion service without the payment of equitable remuneration to the owner of the copyright subsisting in the recording constitutes an act restricted by copyright.

Section 31, sub-s. 3 of the Act of 1963 provides that:—

"[w]here a dispute arises between a person who causes a sound recording . . . to be heard in public, or to be broadcast, and the owner of the copyright subsisting in the recording regarding the equitable remuneration payable under paragraph (b) of subsection (4) of section 17 of this Act in respect of the recording, the dispute may be referred by either party to the Controller [of Industrial and Commercial Property], who shall consider the case and either determine the amount of the remuneration so payable, or refer the case to an arbitrator . . ."

Section 32, sub-s. 1 of the Act of 1963 provides as follows:—

"Where, at any time while a licence scheme is in operation, a dispute arises with respect to the scheme between the licensing body operating the scheme and

• (a) an organisation claiming to be representative of persons requiring licences in cases of a class to which the scheme applies, or

• (b) any person claiming that he requires a licence in a case of a class to which the scheme applies, the organisation or person in question may refer the scheme to the Controller in so far as it relates to cases of that class."

Section 32, sub-s. 5 of the Act of 1963 provides that the Controller shall, on any reference under s. 32 of the Act, "consider the matter in dispute, and, after giving to the parties to the reference an opportunity of presenting their cases respectively, shall make such order, either confirming or varying the scheme, in so far as it relates to cases of the class to which the reference relates, as the Controller may determine to be reasonable in the circumstances".

The applicant was a limited company, the members of which were record companies who issued to members of the public "records" of "sound recordings" within the meaning of the Copyright Act, 1963. The applicant was engaged, inter alia, in the collection and distribution amongst its members of revenue from the broadcasting, diffusion and public performance of such sound recordings. This was achieved by means of licence schemes whereby tariffs were fixed for different classes of user.

The first respondent in both sets of proceedings ("the Controller") was appointed under the Industrial and Commercial Property (Protection) Act, 1927, and his functions under the Act of 1963 included adjudicating upon disputes regarding copyright in sound recordings and matters relating thereto which had been referred to him for decision under s. 31 or s. 32 of that Act.

The second respondent in the first set of proceedings, Radio Telefís Éireann éireann("R.T.E.") was the authority established under the Broadcasting Act, 1960, for the purpose of providing a national sound and broadcasting service, and in the course of its operations caused sound recordings made by members of the applicant to be broadcast. The second, third and fourth respondents in the second set of proceedings ("the disco operators") were the owners and operators of discotheques where sound recordings made by members of the applicant were played in public.

R.T.E. and the disco operators were in dispute with the applicant over the amount of equitable remuneration payable to the applicant in connection with such broadcasting or public user, and made separate applications under s. 31, sub-s. 3 of the Act of 1963 to the Controller for his determination as to the equitable remuneration payable to the applicant for past and future broadcasting of its members' sound recordings, including as yet unpublished works. The applicant objected to both references arguing that the Controller had no jurisdiction under s. 31, sub-s. 3 of the Act to deal with the references, and that the references ought to have been submitted pursuant to s. 32, sub-s. 1 of the Act. The Controller dismissed these objections.

The applicant applied by way of judicial review for orders of certiorari, prohibition and mandamus in respect of the Controller's decisions, and as the issues raised in both applications were identical, it was agreed by the parties that they should be heard and determined together.

On behalf of the applicant it was argued, inter alia, that R.T.E. and the disco operators were obliged to make their applications to the Controller under s. 32, sub-s. 1 of the Act, on the grounds that licence schemes which applied to the classes of which R.T.E. and the disco operators were members were at all material times in existence.

Held by Barr J., in granting the relief sought, 1, that having regard to the wording of s. 31, sub-s. 3 and s. 17, sub-s. 4 (b) of the Act of 1963, which must be read together, disputes concerning the equitable remuneration payable in respect of broadcasting or public performance of a published recording in the future, including recordings not yet in being, could not be referred to the Controller pursuant to s. 31, sub-s. 3 of the Act.

2. That s. 31, sub-s. 3 of the Act of 1963 was of limited application and was not intended to be resorted to when there was in being a licence scheme and tariff relating to the class of which the user of the sound recording was a member.

3. That s. 32 of the Act of 1963 provided the framework for referring to the Controller for adjudication any dispute which might arise under a licence scheme. It was not necessary that the relationship of licensor and licensee should exist between the licensing authority and the user at the time. Licence schemes did not have to be accepted by users, but were in the nature of a standing invitation to treat, setting out the terms upon which licences would be granted. It was sufficient that a licence scheme be in operation for the relevant class when the dispute arose.

Performing Rights Society Ltd. v. Workingmen's Club and Institute Union Ltd. [1988] F.S.R. 586 considered.

4. That s. 32, sub-s. 5. of the Act empowered the Controller to take into account special factors relating to an individual case before him pursuant to s. 32, sub-s. 1 and to make an order relating to such case. He was not confined to making orders which had general application to a class as a whole. However, he must be satisfied that there were special circumstances relating to that case which did not apply to the rest of the class.

5. That, at all material times, licence schemes had existed which applied to the classes of which R.T.E. and the disco operators were members. Accordingly, their disputes should have been referred to the Controller pursuant to s. 32, sub-s. 1 of the Act of 1963.

Cur. adv. vult.

Barr J.

The issues raised in these applications for judicial review are essentially the same. All parties have agreed that they should be tried and determined together.

The applicant...