January 14, 2019

The claimant, the collection society Phonographic Performance Ltd, had asked Mr Justice to award additional damages following his imposition of a suspended prison sentence on the defendant, Mr Ellis, for breach of an injunction previously granted restraining copyright infringement by the unlicensed playing of recorded music in public.

Birss J refused on the ground that it was inappropriate to award such damages at the same time as imposing a prison sentence, on the basis that the court should not fine a contemnor at the same time as imposing a suspended custodial sentence. Birss J granted permission to appeal, saying that there was a “self-contained but important point of principle”. PPL argued that the principle that the judge had formulated was wrong.

Giving the lead judgment, Lord Justice Lewison noted that s 97 (2) of the Copyright Designs and Patents Act 1988 empowers a court to award additional damages in cases of flagrant copyright infringement. In a line of cases decided at first instance, judges of the Chancery Division have awarded such damages at the same time as imposing a suspended sentence of imprisonment for contempt in breaching an injunction previously granted to restrain copyright infringement.

Lewison LJ held that there was no authority to say that a fine could not be combined with a custodial sentence in an appropriate case, and cases in the criminal courts have upheld that practice. There was, in Lewison LJ’s view, equally no objection in principle to the combination of a fine and a custodial sentence in a case of contempt.

Lewison LJ did not, therefore, consider that the proposition that underlay the judge’s decision was right, either as a matter of the criminal law or as a matter of the civil law. It followed that his exercise of discretion proceeded on a flawed basis, with the consequence that the Court of Appeal was entitled to exercise the discretion again.

However, although PPL had established the point of principle on which it had been given permission to appeal, Lewison LJ declined to exercise the discretion to award additional damages on the facts of the case and dismissed the appeal.

Lewison LJ said that the fact that an infringement takes place in breach of a court order does not automatically make the infringement flagrant, although it usually will. However, even if the breach is flagrant, the court still has a discretion to decline to award additional damages.

In this case, the facts were that Mr Ellis had not intended to breach the order and that he had misunderstood the circumstances in which he found himself. In Lewison LJ’s view, that was not a finding of flagrancy, which implied scandalous conduct or deceit. Accordingly, the appeal was dismissed. (Phonographic Performance Ltd v Andrew Ellis t/a Bla Bla Blar [2018] EWCA Civ 2812 (18 December 2018 — to read the judgment in full, click here).