Sweeney v National University of Ireland Cork

• Jurisdiction: Ireland
• Judge: T.C. Smyth J.
• Judgment Date: 09 October 2000
• Neutral Citation: [2000] IEHC 70
• Date: 09 October 2000
• Court: High Court
• Docket Number: [2000 No. 10497P]

[2000] IEHC 70

THE HIGH COURT

No. 10497P/2000

SWEENEY v. NATIONAL UNIVERSITY OF IRELAND CORK T/A CORK UNIVERSITY PRESS

BETWEEN

SEAN SWEENEY

PLAINTIFF

AND

NATIONAL UNIVERSITY OF IRELAND CORK TRADING AS CORK UNIVERSITY PRESS

DEFENDANT

Citations:

EUROPEAN COMMUNITIES (TERM OF PROTECTION OF COPYRIGHT) REGS 1995 SI 158/1995 REG 14(2)

PHONOGRAPHIC PERFORMANCE (IRL) LTD V CODY 1994 2 ILRM 241

MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD V GOLDEN VALE FOOD PRODUCTS UNREP COSTELLO 12.12.1985 1985/9/2534

EEC DIR 93/98 PARA 5

EEC DIR 93/98 PARA 11

EEC DIR 93/98 PARA 26

EEC DIR 93/98 PARA 27

EEC DIR 93/98 ART 10(1)

EEC DIR 93/98 ART 10(2)

EEC DIR 93/98 ART 13(1)

INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT 1998 S2

COPYRIGHT ACT 1963 S26

COPYRIGHT ACT 1963 S8

COPYRIGHT ACT 1963 S8(4)

EUROPEAN COMMUNITIES (TERM OF PROTECTION OF COPYRIGHT) REGS 1995 SI 158/1995 REG 14

EUROPEAN COMMUNITIES (TERM OF PROTECTION OF COPYRIGHT) REGS 1995 SI 158/1995 REG 14(1)

SYMONDS CIDER & ENGLISH WINE CO LTD V SHOWERINGS (IRL) LTD 1997 1 ILRM 481

Synopsis:

Intellectual Property

Copyright; passing off; interlocutory injunction; plaintiff, trustee of the estate of James Joyce, seeks interlocutory injunction restraining defendant from publishing anthology before determination of passing off action; defendant sought permission to include a number of extracts from works of James Joyce in proposed educational anthology; plaintiff had stipulated that permission would only be forthcoming if licence fee of £7,000 sterling was paid and 1922 original edition of "Ulysses" used; defendants sought to use extracts from a readers edition of "Ulysses", allegedly published during period when copyright to same had expired; permission to publish extracts had been granted by editor of readers edition; whether damages an adequate remedy if plaintiff were to succeed in claim for permanent injunction at trial of action.

Held: Interlocutory injunction granted; alleged loss not quantifiable or capable of compensation by award of damages; statutory entitlement to publish was a matter of fact and degree that could only be established at full hearing of action.

Sweeney v. National University of Ireland Cork - High Court: Smyth J. - 09/10/2000 - [2001] 2 IR 6 - [2001] 1 ILRM 310

The plaintiff was a trustee of the estate of the writer James Joyce. The defendant sought permission to include a number of extracts from the works of James Joyce in an anthology. Correspondence ensued between the parties but they failed to reach agreement. Copyright in the works of James Joyce expired on 1 January 1992 but were revived from 1 July 1995 by virtue of European legislation. Works which had been initiated after 1 January 1992 but prior to 29 October 1993 were exempt from the revived copyright and a Joycean scholar, Danis Rose, claimed that his version of Ulysses fell under this exemption. The defendant procured permission from Danis Rose to use extracts from his version of Ulysses. The estate of James Joyce was also engaged in litigation with Danis Rose. The plaintiff as trustee sought an injunction to restrain the defendant's forthcoming anthology. Smyth J held that only a full hearing of the action could properly determine the substantive points. In the circumstances the plaintiff was entitled to the injunction sought and the relief in question was granted.

1 JUDGMENT of T.C. Smyth J. delivered the 9th day of October 2000

2 The Plaintiff is the Trustee of the Estate of James Joyce. The Defendant, is a constituent college of the National University of Ireland and trades as Cork University Press. The Defendant is minded to put into the market an anthology entitled "Irish Writing in the Twentieth Century: A Reader" (hereinafter referred to as "the Anthology"). Edited by David Pierce, Department of English, University College of Ripon and York, St. John. The Defendant which is the publisher has a publishing officer, one Sara Wilbourne. The Cork University Press is a non profit making publishing house, publishing non academic texts with charitable status as part of the National University of Ireland, Cork. It was intended that the Anthology should contain extracts from a number of works by James Joyce.

3 The Estate of James Joyce is the owner of the copyright in the works of James Joyce, and in particular, the work known as "Ulysses" by James Joyce, and all drafts of Ulysses. The chair of title which establishes the Plaintiff's entitlement to sue to protect the works, and in particular the copyright in the works of James Joyce is set out in paragraphs (10) and (11) of the Plaintiffs affidavit sworn on 9th September 2000. The sole beneficiary of the Estate of James Joyce is his grandson Stephen James Joyce. The trustees and beneficiary perceive the role of the Estate to be the guardian of the literary heritage James Joyce entrusted to it. The Estate is sought to preserve and protect the spirit, letter and integrity of his works. The Plaintiff considers he has the responsibility of the literary works of James Joyce vested in the Estate.

4 By letter dated 11th April 2000 Sara Wilbourne wrote to Stephen James Joyce requesting permission for the inclusion of a number of pieces from James Joyce's works in the Anthology then proposed. The letter indicates the editions which the Defendant then proposed using, and that she would be happy to send Mr. Joyce proofs, if permission was granted. Specifically the letter states:-

"The text is mainly for student use and will be priced at £25 to suit that market, with the option of a hardback edition in the United States. We require world English language rights, and our combined print run will not exceed 10,000 copies."

(emphasis added)

5 The reasonable inference to be drawn from this letter is that the consent of Mr. Stephen James Joyce was required prior to publication and that the copyright was in the Estate. Mr. Joyce replied by letter dated 22nd April 2000 indicating that permission would be forthcoming on certain conditions and a licence fee of £7,000 Sterling, in respect of which he stated:-

"- lt's take it or leave it,

- We are not prepared to argue or haggle over the amount of this fee".

6 A further letter from Mr. Joyce dated 12th May was largely to the same effect, but expressly stipulating that, as regards Ulysses, the version of the proposed 1922 original edition to by used. The letter concludes by stating that:-

"If we could agree on sources, that is editions from which extracts and the story are to be reproduced, we will let you know the Estate's other requirements which will not cause you any problems."

7 The response to these letters came from Mr. Pierce by letter dated 16th June 2000 enquiring if the fee could be reduced otherwise the number of extracts might have to be cut. There was an unequivocal refusal by Mr. Joyce in a letter of 20th June 2000. The Defendant's response is a faxed letter of 22nd June 2000 in which Miss Wilbourne states that "the fees you have quoted are extraordinarily high and we will not pay them." A counter offer was proposed and the letter concludes:-

"If you decide to persist with your original figure we will be not be seeking permission from you to use the extracts."

8 Mr. Joyce's response to that letter was of the same date and to say that:-

9 "permission is refused to include any James Joyce in this volume unless our financial terms are accepted".

10 Mr. Joyce followed this up by a letter of the 27th June indicating that the Estate's fee had now gone up to £7500 sterling in any event because of the actions of third parties in engaging in unauthorised "exploitation of my grandfather and his image". Mr. Joyce also wrote a letter dated 10th July 2000 reiterating his refusal of permission and specifically drew the attention of the Defendant to the fact that all of James Joyce's work is covered by copyright throughout the European Union until 2011. Mr. Joyce's letter to this effect is addressed to both Miss Wilbourne and Mr. Pierce.

11 The Defendant it appears then considered that their aspirations might find realisation by pursing another route. One Danis Rose a Joycean Scholar, had edited some work of James Joyce and in particular Ulysses, which was published by McMillan Publishing Limited (hereinafter referred to as McMillan) under the Picador imprint, this book is entitled "James Joyce Ulysses A Reader's Edition" edited by Danis Rose. It was published in 1997. It was and is for some two years or more past or thereabouts freely available in bookstores throughout Ireland. Lilliput Press Limited in Ireland published a text identical to that of McMillan in or about the year 1997. Neither the publication of McMillan or Lilliput Press Limited were proceeded against before publication and Lilliput Press Limited not at all. The Plaintiff says that in the case of the McMillan publication, the book was for sale to the public before they became aware of the publication. Notwithstanding the fact that proceedings concerning both breach of copyright and passing off the works of James Joyce have been taken by the Plaintiff against both McMillan and Danis Rose in England, Danis Rose has given his consent to the Defendant for the use of his edition of Ulysses; and when asked, McMillan effectively informed the Defendant of the dispute between the Joyce Estate and Danis Rose and McMillan but indicated it would not object to the Defendant's use of the text it had published as expressly edited by Danis Rose. The proceedings in England are not settled but an offer to settle on terms has been disclosed; those proceedings are pending and await hearing.

12 On or about 24th August Mr. Joyce learned as a result of an enquiry by him of David Pierce that he (Mr. Pierce) had just completed editing the Anthology. On the day following the Plaintiffs Solicitors wrote seeking...