Sean Sweeney (plaintiff) v National University of Ireland, Cork, trading as Cork University Press (defendant).

Practice and Procedure - Injunction - Interlocutory - Copyright - Whether damages adequate compensation - Whether alleged loss capable of being compensated in damages - Copyright Act 1963, section 8(3) - European Communities (Term of Protection of Copyright) Regulations 1995, Article 14.

The High Court (Mr Justice Smyth); judgment delivered 9 October 2000.

The governing principle upon which interlocutory injunctive relief can be granted is to consider, if the plaintiff were to succeed in his claim for a permanent injunction at the trial, whether an award of damages for the loss he would have sustained before the trial as a result of the continuing acts of the defendant, would be adequate compensation. The nature of copyright is that it is a right that cannot be wrested from the owner by a person even tendering a fee in full.

The courts cannot condemn the owner of the right to be content until the hearing of the action to permit the breach of a right in respect of which there is a statutory presumption.

The High Court so held in granting the relief sought by way of interlocutory injunction.

Donal O'Donnell SC and Cian Ferriter BL for the plaintiff; Paul Gallagher SC and Jonathan Newman BL for the defendant.

Mr Justice Smyth said that the plaintiff was the trustee of the estate of James Joyce and the defendant was a constituent college of the National University of Ireland and traded as Cork University Press. The defendant is a non-profit making publishing house publishing non-academic texts with charitable status. The defendant intended to put into the market an anthology entitled "Irish Writing in the Twentieth Century: A Reader" (hereinafter "the anthology") and to contain extracts from a number of works by James Joyce. The estate of James Joyce was the owner of the copyright in the works of James Joyce with the sole beneficiary of the estate, his grandson, Stephen James Joyce. The trustees and beneficiary perceived the role of the estate to be the guardian of the literary heritage James Joyce entrusted to it.

In April 2000 the defendant wrote to Stephen James Joyce requesting permission for the inclusion of a number of pieces from James Joyce's works in the anthology. Mr Justice Smyth said that the reasonable inference to be drawn from this letter was that the consent of Mr Joyce was required prior to publication and that the copyright was in the estate. Various correspondences ensued between the parties and disagreement arose concerning the estate's licence fee of £7,000 stg.

Mr Justice Smyth said that one Danis Rose, a Joycean scholar, had edited some work of James Joyce which was published by McMillan Publishing Limited entitled "James Joyce Ulysees A Reader's Edition" in 1997 and was freely available in Ireland. Lilliput Press Limited in Ireland published a text identical to that of McMillan in 1997. Notwithstanding the fact that proceedings concerning both breach of copyright and passing off the works of James Joyce had been taken by the plaintiff against both McMillan and Danis Rose in England which were pending, Danis Rose gave his consent to the defendant for the use of his edition of Ulysees. McMillan informed the defendant of their dispute with the Joyce estate but indicated that it would not object to the defendant's use of the text it had published as expressly edited by Danis Rose.

On or about 24 August 2000, Mr Joyce learned that the defendant had completed editing the anthology. The plaintiff's solicitors then sought confirmation that no extracts from the works of James Joyce had been included and that no such exploitation of the works would be made without first obtaining the permission of the estate. When no unequivocal assurance was forthcoming, the plaintiff sought and obtained an interim injunction on 11 September 2000 restraining inter alia the defendants from infringing the plaintiff's copyright in James Joyce's work, and from passing off a work not being a work of or authorised by James Joyce or his estate.

Mr Justice Smyth said that it was clearly stated in the anthology that the extracts were from the Danis Rose edition, both in text and in index. He said that the defendant's defence in substance was that it had acquired the right to publish certain excerpts from the Danis Rose edition of Ulysees from Danis Rose via his licensee.

Mr Justice Smyth said that it must be recognised that there are several matters of fact and points of law that call for resolution upon a full hearing of the action. He said that the work "Ulysses" was first published in 1922 and that James Joyce died on the 13 January 1941. Copyright in the text of the 1922 edition of "Ulysses" and all other editions and other works published before James Joyce died expired on 1 January 1992 - i.e. 50 years after the end of the year in which he died (s. 8(4) Copyright Act 1963). Mr Justice Smyth stated that with effect from 1 July 1995 all the copyrights which expired were revived by virtue of the European Communities (Term of Protection of Copyright) Regulations, 1995 which extended copyright protection to the life of the author plus 70 years. Article 14 of the Regulations provides that any person who before 29 October 1993 undertook the exploitation of the literary work or made preparations of a substantial nature to exploit such work when such work was not protected (shall not be liable) to the owner of the copyright as revived.

Mr Justice Smith said that the principles upon which injunctive relief can be granted were not disputed or that there existed a fair question to be tried. Both parties relied on and quoted from the judgment of Ms Justice Laffoy in Symonds Cider & English Wine Co Ltd v Showerings (Ireland) Ltd [1997] 1 ILRM 481. Mr Justice Smyth stated that the governing principle would be to consider if the plaintiff were to succeed in his claim for a permanent injunction at the trial whether an award of damages, for the loss he would have sustained before the trial as a result of the continuing acts of the defendant, would be adequate compensation.

Mr Justice Smyth said that the nature of copyright is such that while the owner may voluntarily permit licence or consent to the use in whole or in part of a protected work (for a fee or otherwise), it is a right that cannot be wrested from the owner by a person even tendering the fee in full. The terms and conditions, if not agreed upon, cannot be imposed by the applicant proceeding in the face of objection and seeking to publish in whole or part a protected work in the hope or knowledge that it can pay a sum of money. The courts cannot by failing to recognise and uphold the right condemn - most particularly at interlocutory stage when so many facts are in dispute, and points of law require determination - the owner of the right to be content until the hearing of the action to permit a breach of a right in respect of which there is a statutory presumption.

Mr Justice Smyth said that the granting of an interlocutory injunction could not determine the final outcome of the whole proceedings. He said that it might very well cause loss and damage to the defendant and that both parties expressed their willingness and ability to meet a claim in damages by their respective undertakings.

Mr Justice Smyth examined the nature and extent of the loss of the plaintiff which the defendants queried. This loss was stated in the original grounding affidavit of the plaintiff as follows, " . . . the estate seeks to protect the integrity of the reputation of James Joyce as a major literary figure, and to protect the spirit, letter and integrity of his works . . . this matter is not simply about the amount of a licence fee for the use of a given set of extracts; it is more importantly about the source of the material for the extracts and the input the estate would have in relation to the treatment of those works . ."

Mr Justice Smyth said that in his opinion this alleged loss was not quantifiable or capable of being compensated by an award of damages. In coming to his view he said that he was not unmindful of the reputation of the defendant or its primary educational role. The fact that the book was intended not to make a loss and be profitable does not make its primary or sole purpose commercial. He said that in all the circumstances of the case the plaintiff is entitled to succeed and have the relief sought by way of injunction.

Solicitors: McCann Fitzgerald (Dublin) for the plaintiff; Ronan Daly Jermyn (Cork) for the defendant.