High Court Assesses Damages In Eminem Copyright Infringement Case

• Published date: 09 June 2021
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Wiggin
• Author: Ms Joanne Gibbs

Facts

Marshall Bruce Mathers III, better known as "Eminem", became very famous after the release of his second album in 1999. This case concerned his lesser known and less successful first album entitled "Infinite", recorded in 1996.

FBT Productions LLC brought the claim for copyright infringement against Let Them Eat Vinyl Distribution Ltd (LTEV) and a second company, Plastic Head Music Distribution Ltd, alleging infringement of the copyright in Eminem's first album. The claim covered both vinyl and CD formats of the album.

His Honour Judge Hacon found that LTEV had infringed the copyright in the album by making vinyl copies of the work. However, neither of the defendants was liable for any of the secondary acts of infringement pleaded, namely importing, offering for sale and selling copies of the album. HHJ Hacon accepted that the defendants neither knew nor had reason to believe that the vinyl and CD copies of the album sold by Plastic Head were infringing copies of another party's copyright work.

LTEV made 2,891 vinyl copies, all of which were supplied to and distributed by Plastic Head. Distribution of vinyl copies continued until 9 October 2016. Plastic Head also sold CDs obtained from a business known as Boogie Up Productions which was based in the US and run by a Mr David Temkin, who had advised the defendants that he had the right to license vinyl format copies of the album.

On 12 January 2017, Plastic Head withdrew from sale the CD copies of the album supplied by Boogie Up following receipt of a letter before action to LTEV from FBT. Advertising and marketing of the album by the defendants came to an end.

FBT elected an inquiry into damages and claimed on three bases:

1. the loss of an opportunity to license a third party to exploit the album (and various tracks comprised in the album) to celebrate the album's 20^th anniversary;
2. the losses flowing from the licence that FBT would have offered the LTEV for the exploitation of the album; or

• a reasonable royalty for the actual sales made by LTEV based on the notion of a willing licensee/willing licensor negotiation.

FBT's main claim was under the first head. It said that its loss was the loss of a chance to trade generally, rather than the loss of a particular chance. It did not rely on a particular third party to buy its goods but rather on the opportunity to market copies of singles and, subsequently, an album, generally, using a third party as the conduit for those sales.

Decision

Ian Karet...