Clutching at draws - whose moral rights are they anyway?

In what amounts to a really bad day at the office for architecture practice, Richard Reid Associates (RRA), the High Court recently refused its applications to: (1) add additional defendants to ongoing proceedings; and (2) amend its pleadings to include additional moral rights infringement and breach of contract claims. To make matters even worse, the original defendant, property developer LME, also succeeded in striking out parts of RRA's original claim. We look at the procedural lessons that can be learnt from the judgment below.

Background

RRA's claims related to LME's development of a holiday village, known as 'Silverlake' and a contract for the production of a sketch design in relation to it (the Contract). The Contract was entered into between LME and architecture firm, WFA Associates Limited ("WFA"), which is now in liquidation.

The sketch design was originally produced in April 2012, by one of WFA's then employees, Richard Reid. As the design was produced in the course of Mr Reid's employment, the copyright in it automatically vested in WFA. WFA subsequently assigned the copyright in the sketch design to LME and received a fixed fee in return.

Some years later, in a Deed of Assignment between WFA and RRA dated 19 October 2018, WFA assigned its rights in the Contract to RRA. RRA alleged that this included an assignment of moral rights in the sketch design. 

By reproducing (or procuring the reproduction of) the design sketch online and in planning submissions, RRA claimed:

(i) that its moral rights in the sketch design had been infringed; and

(ii) passing off, through the failure of LME, and the proposed additional defendants, to identify RRA as the original author of the sketch design.

Decision

With limited exceptions, under CPR 17 and 19, the court's permission is required to add additional claims and/or to join additional parties to ongoing proceedings, once those proceedings have been served. In determining the Claimant's application, the key question for the court was whether the claims had a realistic prospect of success against LME, or any of the proposed additional defendants. 

Permission to add the moral rights infringement claim was refused for the following reasons:

1. Mr Reid, and not WFA, was the original author of the sketch design. Under section 94 of the Copyright, Designs and Patents Act 1988 (CDPA), moral rights are a personal, non-assignable right. As such, it was simply not possible that the moral rights in the sketch had passed to RRA (through the Deed of Assignment or otherwise). 
2. There had been no assertion of any moral rights in the sketch design. As per s78 CDPA, moral rights cannot be infringed unless they have been expressly asserted. RRA attempted to argue that the use of its initials in a title block of the drawing amounted to an assertion but this was rejected by the court.  
3. Where the copyright in a work vests in an author's employer under s11(2) CDPA (i.e. by virtue of their employment), moral rights do not apply to anything done by, or with the authority of, the employer or any subsequent owner of copyright. The sketch design had been produced in the course of Mr Reid's employment with WFA and the copyright in it therefore vested in WFA. Copyright was subsequently assigned to LME by WFA and, as the legitimate owner of the copyright in the sketch design, LME had a complete defence to any moral rights claim. 

The Court also refused permission to add claims in passing off for the following reasons:

1. It was unable to determine whether RRA had acquired the goodwill in WFA's business; whilst the assignment of goodwill was pleaded, no evidence was provided in support and the Deed of Assignment was limited to an assignment of contractual rights alone; and
2. There could be no misrepresentation by LME as to the commercial source of the sketch design, by virtue of the fact that it owned the copyright in it. As the additional proposed defendants had produced the sketch design under LME's authorisation and direction, there could likewise be no misrepresentation on their parts.

Comment

The decision reiterates the well-known principle that moral rights are personal to the author of a work and cannot be assigned.  It also serves as a reminder of the limitations of moral rights: To be actionable, moral rights must be asserted and cannot be enforced against the legitimate copyright owner of the work, or those acting with its authority.

The full judgment, The Front Door (UK) Limited t/a Richard Reid Associates v The Lower Mill Estate and others [2021] EWHC 2324 (TCC), is available here.