Facts

In March 2018 Chloe Wilkinson, who is affected by dissociative identity disorder (DID), set up a YouTube channel under the name “DissociaDID” (the Channel). DID is characterised by an individual taking on two or more alternative and distinct personality states. Ms Wilkinson uploaded videos about DID and herself on to the Channel, raising awareness and providing help and support to others with the condition. The Channel was successful and by May 2021 had over one million subscribers.

In March 2020, Sergio Costa emailed Ms Wilkinson for the first time. He was not affected by DID but said that he wished to support Ms Wilkinson’s project. Ms Wilkinson, based in England, began to work with Mr Costa, who was based in Portugal. Over time, nine literary works emerged. It was common ground that of these, eight were works of joint authorship (Joint Works). The ninth, referred to as “the Disclaimer”, involved some input from Mr Costa but Ms Wilkinson said that his contribution was too insubstantial to have made him a joint author.

The parties fell out in November 2020, at which point Mr Costa took issue with the Channel’s continued use of the Joint Works and the Disclaimer. He submitted takedown notices to YouTube, alleging copyright infringement, which led to videos being removed from the Channel. He then issued copyright infringement proceedings against Ms Wilkinson.

Ms Wilkinson argued that the parties had entered into a contract on 16 June 2020, before the Joint Works and the Disclaimer had been created, which contained an implied licence from Mr Costa allowing Ms Wilkinson to use the Joint Works on the Channel. She counterclaimed that Mr Costa’s submission of takedown notices to YouTube was in breach of the contract and constituted unlawful interference in her business.

Mr Costa denied there was a contract but accepted that he had granted Ms Wilkinson a bare licence to use the Joint Works and the Disclaimer. However, he said that he had terminated that licence.

Decision

Copyright

His Honour Judge Hacon found that, on the facts, Ms Wilkinson was the sole author of the Disclaimer because there was no collaboration in the sense explained by the Court of Appeal in Kogan v Martin [2019] EWCA Civ 1645. It was Ms Wilkinson who had first proposed the Disclaimer and had created the first draft. Mr Costa’s contribution was minimal.

Contract

The alleged contract consisted of two short emails from June 2020. Ms Wilkinson said that the consideration she had provided was a promise to work with Mr Costa in the future in a manner detrimental to her.

HHJ Hacon noted that when consideration is given in the form of a promise, the promise must be live at the time of the contract. Here, the evidence did not show that Ms Wilkinson had committed herself to anything at the relevant date. Therefore, there was no contract.

Implied licence

No contract meant no terms, either express or implied. However, HHJ Hacon still considered the law on implied terms in relation to the alleged implied licence. He found that, at the relevant date, the parties had not contemplated that Mr Costa would provide content for the Channel or that they would create copyright works jointly. Rather, it was understood that Mr Costa would provide advice, feedback, proposals and research. Therefore, even if there had been a contract, it would not have contained an implied licence.

Bare licence and infringement

HHJ Hacon found that it was not until Mr Costa’s solicitors had written to Ms Wilkinson alleging copyright infringement on 23 November 2020 that Mr Costa had given notice to terminate the licence. As for the notice period, he found that it had probably taken around four months to complete the Joint Works. In his view, assuming that Mr Costa was acting reasonably, the parties would have agreed a notice period of twice this, i.e. eight months expiring on 23 July 2021. On the evidence, Ms Wilkinson had continued to use the Joint Works on the Channel after this date, meaning that Mr Costa’s rights in the Joint Works had been infringed.

Loss by unlawful means

Ms Wilkinson’s counterclaim for breach of contract was dismissed as there was no contract. As for loss by unlawful means, in the end this was only relevant to the Disclaimer. The main issue was whether Mr Costa’s requests to YouTube had included acts against YouTube in the sense of being actionable by YouTube. Ms Wilkinson said that YouTube had a cause of action against Mr Costa for deceit. HHJ Hacon agreed in part, finding that:

1. Mr Costa’s representation to YouTube that he was a joint author of the Disclaimer was clearly false: he had already been found not to be a joint author; on 13 March 2021, Mr Costa had noticed that Ms Wilkinson had removed the Disclaimer from the Channel and had noted this in an email to YouTube (the March Email); after this date, therefore, the representation that Ms Wilkinson was using the Disclaimer without Mr Costa’s permission was also false;
2. while Mr Costa had honestly believed that he was a joint author of the Disclaimer, from 13 March 2021, he knew that the Disclaimer was no longer being used by Ms Wilkinson; therefore, from that date, he knew that that representation was false;
3. on 25 June 2021, YouTube had taken down 46 videos from the Channel as a result of Mr Costa’s false representation that the Disclaimer was being used without his permission; the March Email did not state that Mr Costa wanted to withdraw this representation; further, after 25 June 2021, Mr Costa did not subsequently contact YouTube to explain that there had been a mistake; he had therefore allowed YouTube to continue to believe that the Disclaimer was being used without his permission and had done so because he had intended that YouTube should act on that belief; and
4. YouTube had relied on Mr Costa’s misrepresentation and, after 13 March 2021, had a claim against Mr Costa for deceit.

HHJ Hacon also found that the remaining elements of the tort of causing loss by unlawful means were satisfied because:

1. after 13 March 2021, Mr Costa’s misrepresentation on use of the Disclaimer had maintained YouTube’s belief that Mr Costa’s rights were being infringed; this had affected YouTube’s freedom to host the relevant videos and therefore to deal with Ms Wilkinson;
2. Mr Costa had intended all his representations to cause YouTube to act by removing the videos; and
3. it could be inferred that Mr Costa had done this because he had wanted to cause Ms Wilkinson harm, i.e., harm generated by her videos vanishing from the Channel.

This part of the counterclaim therefore succeeded. (Sergio Mendes Costa v DissociaDID Ltd [2022] EWHC 1934 (IPEC) (22 July 2022) — to read the judgment in full, click here).