Copyright - Duchess of Sussex v Associated Newspapers Ltd

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Jane Lambert

Chancery Division (Lord Justice Warby) Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 1245 (Ch) (12 May 2021)

At a directions hearing before Lord Justice Warby on 5 May 2021, His Lordship granted summary judgment to the Duchess of Sussex in her claim for copyright infringement against the publisher of The Mail on Sunday and The Mail Online. He made a number of consequential orders and gave directions for the taking of an account of profits.  His judgment in Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 1245 (Ch) (12 May 2021) sets out the reasons for those orders and directions.

The Litigation

The Duchess of Sussex sued Associated Newspapers because The Mail on Sunday and The Mail Online published large extracts of a letter that she wrote to her father.  Her causes of action were misuse of private information, breach of her statutory rights under the Data Protection Act 1998 and copyright infringement.  Upon an application for summary judgment in the copyright claim, Lord Justice Warby was narrowly persuaded that he could not rule out the possibility that the duchess might not be the sole author of the letter. In his judgment in HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 273 (Ch) (11 Feb 2021) which I discussed in Summary Judgment - Duchess of Sussex v Associated Newspapers on 12 Feb 2021, the learned judge gave summary judgment to the duchess on her data protection and most of her copyright claims but ordered a trial on the outstanding issues of the copyright proceedings.

The Outstanding Copyright Issues

The reason why the judge thought that it was possible that the duchess might not be the sole author of the letter is that she received some help when drafting her letter from one Jason Knauf of the Kensington Palace Communications Team.  Following the 11 Feb judgment, Mr Knauf consulted leading counsel onhis rights in the matter.   After his consultation, Mr Knauf said that he did not consider that he was an author of the draft, or that he owned any copyright in that work. He had made only a very minor suggestion on the text, namely that a reference to Mr Markle's ill-health be included. This advice was accepted, but Mr Knauf did not suggest any specific wording. In his view, any copyright in the letter belonged to the duchess alone. 

The publisher had also argued that Crown copyright might apply.  Solicitors for the Crown confirmed that Mr Knauf was not a Crown employee and that the Crown made no claim to copyright in the duchess's letter.

The duchess's solicitors invited the publisher to consent to judgment on the outstanding copyright issues.  The publisher accepted that it could no longer challenge the duchess's ownership of copyright in the letter but it did not consent to judgment.  The duchess applied for summary judgment.

Summary Judgment

Lord Justice Warby said at para [13] pf his judgment:

"In all these circumstances, I find that there is no longer any realistic prospect that the claimant would fail to prove her full case on the issue of liability at a trial. She would be bound to establish that she was the sole author of, and exclusive owner of copyright in, the Electronic Draft. There is no reason, compelling or otherwise, for this issue to go to trial. I have therefore now directed that an unqualified summary judgment on liability for copyright infringement be entered for the claimant."

Publication of a Report of the Judge's Decision

On 11 Feb 2021 the judge had ordered the publisher to publish in the Mail on Sunday and on the  MailOnline, a short report of his decision that it had infringed the duchess's copyright pursuant to para 26.2 of the Part 63 Practice Direction:

"Where the court finds that an intellectual property right has been infringed, the court may, at the request of the applicant, order appropriate measures for the dissemination and publication of the judgment to be taken at the expense of the infringer."

The judge had stayed that part of the order pending the publisher's application to the Court of Appeal for permission to appeal against his judgment of 11 Feb 2021.   As that application had not been heard he did not lift the stay.   However, the order had allowed the publisher to refer to a trial on the ownership issues. As that issue had not been resolved in the duchess's favour, the judge ordered the publisher to delete the reference to such a trial once the stay no longer applied.

Injunctions and Orders for Delivery Up

It appears from para [21] that the parties agreed the terms of an order for injunctions and delivery up:

"The order that I am now invited by both parties to make is one that removes any need for a stay. It does not involve immediate destruction but provides for the defendant to use its best endeavours to deliver up to its own solicitors all hard and soft copies of the offending articles and all complete copies of the Electronic Draft or the Letter. The documents are to be held and destroyed at the end of the action, so long as the claimant ultimately succeeds. These obligations are subject to four agreed carve-outs for archiving and record-keeping, legal professional privilege, and use in litigation."

Account of Profits

As the duchess had elected an account of profits rather than an inquiry as to damages the judge made an order for the taking of an account of the publisher's  profits from the infringement of the her copyright. She also indicated that she would seek an account for misuse of private information.  The publisher challenged her entitlement to such relief.  The duchess was taken by surprise by that challenge and said that she could not respond to the challenge at the hearing.  She suggested a hearing where the point could be resolved as a preliminary issue.   The publisher suggested that the whole matter should be adjourned until after the hearing of its appeal.  The judge concluded that the duchess's proposal was an appropriate one, at this stage. Adjourning an issue is never attractive, but although it appears vanishingly unimportant in practice (except perhaps in respect of costs), this was a big issue of principle. 

Consequential Orders and Directions

As the copyright ownership issue had been resolved the judge could reduce the time estimate and directions for the hearing of the outstanding issues that had been listed for October 2021.  He ordered the publisher to provide both (1) a general account and an account specific to the wrongful publications, of what revenues it generates what expenses it incurs and how, coupled with (2) disclosure of documents sufficient to evidence both the general and the specific to be done within 28 days. The process of further pleading and initial disclosure may then proceed on a reasonably informed basis.   The judge had already given permission for expert forensic accountancy evidence to be adduced on each side, with the experts to meet and seek to agree. The issues for consideration by the experts need to be identified before they report. It seemed to the judge that that will need to be after the statements of case are comple.

Costs

The copyright ownership issue having been resolved, His Lordship ordered the publisher to pay the duches the 10% of her costs that had been withheld pending the resolution of that issue.  He ordered the costs to be assessed on the standard basis.  He did not see the case for awarding indemnity costs except in respect of the publisher's refusal to consent to judgment.   He ordered those costs to be paid on an indemnity basis.

Further Information

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