Small Claims Track IP Litigation in Leeds

Leeds Law Courts
© 2003 Jane Lambert: all rights reserved

Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Leeds (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patents, registered and registered Community designs, semiconductor topographies and plant varieties. In Small IP Claims, I gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or C of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Leeds should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 7404 5252 or send me a message through my contact page.

TIPSY

Granary Wharf

Author Mtaylor848

Licence Creative Commons Attribution-Share Alike 4.0 International

Source Wikipedia Granary Wharf

Jane Lambert

TIPSY stands for The Intellectual Property Society of Yorkshire.  It is an initiative of my fellow St Andrean, Andrew Clay, who has recently set up the specialist intellectual property law firm, Andrew Clay Legal, in Harrogate.  Before setting up that firm Mr Clay practised from the Leeds office of Squire Patton Boggs.

To launch TIPSY, Mr Clay organized a dinner at the DoubleTree by Hilton at Granary Wharf in Leeds on 15 Nov 2018 for some 80 intellectual property specialists at law firms, patent and trade mark agencies and other institutions throughout Yorkshire. I was invited as a member of the Intellectual Property Bar. So far as I could see, I was the only practising barrister there.

The guest of honour was His Honour Judge Hacon who has been the presiding judge of the Intellectual Property Enterprise Court ("IPEC") since 3 Dec 2013.  He was invited to speak to us after dinner.  When he was introduced to us we learned that Judge Hacon had been educated in Leeds which I had not known.

Judge Hacon succeeded Sir Colin Birss as the presiding judge of IPEC shortly after it had been formed.  As I explained in What does the Intellectual Property Enterprise Court mean for Litigants in the North West? 12 Oct 2013 IP Northwest. IPEC was formed to replace the Patents County Court which was abolished by paragraph 30 (3) of Schedule 9 of the Crime and Courts Act 2013. Unlike the Patents County Court IPEC is a specialist list within the Chancery Division.

The judge explained that he was assisted by Judge Melissa Clarke who usually sits at Oxford and by a number of recorders. There were also several district judges who sit in the Small Claims Track (see Small IP Claims last updated 13 Jan 2018). He described the work of IPEC and how it had evolved in the last 5 years.  When he took up his appointment he had to impose time limits on cross-examinations and submissions frequently.  He found that he had to do that much less frequently nowadays. The court was taking on more complex cases.  In answer to a question from the floor, he could see no reason why it should not entertain an Unwired Planet type of case.  Surprisingly, he said that the two-day limit on trials could be extended in suitable cases so long as the case management disciplines were observed.  In answer to a question from me, he agreed that his caseload had dropped in recent years but explained that was because other courts were managing their cases in the same way as IPEC and that there had been an increasing rate of settlement adding that was no bad thing.

The judge reminded his audience that his court (including the Small Claims Track) had a nationwide jurisdiction. He added that district judges were likely to be appointed who could hear small IP claims outside London.

After the judge's speech, I exchanged a few words with Mr Clay.  I congratulated him on his initiative and asked him about his plans for the future.  He replied that our next guest will be Geoffrey Hobbs QC and that he is expected to visit us early in the New Year.

The High Cost of Copying in Buttershaw: Absolute Lofts v Artisan Home Improvements

Bradford

Author Ordnance Survey
Source Wikipedia

Crown Copyright and Database Right

On 14 Sept 2015 a Buttershaw builder was ordered to pay £6,300 in damages to a London loft conversion company for downloading images of the London company's loft conversions from its website and posting them to his own (see Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another [2015] EWHC 2608 (IPEC)).

The parties were not competitors as they were separated by 200 miles of clogged motorway and the only loss that the claimant had suffered was a notional licence fee of £300 for the use of the pictures but the judge awarded the London company additional damages of £6,000 under art 13 (1) of Directive 2004/48/EC on the enforcement of intellectual property rights. His Honour made that award to take account of the defendant company's profits as a result of the infringement which he regarded as "unfair" and also to dissuade others from doing the same. I discussed the case in my case note
Damages for infringing Copyright in Photographs - Absolute Lofts v Artisan Home Improvements 22 Sept 2015 NIPC Law.

The judge made the award because art 13 (1) of the Directive comes into play when an infringer knowingly, or has reasonable grounds to know, that he or she is engaging in infringing material.  In this case there was an aggravating factor in that the defendants were misrepresenting the London company's handiwork as their own but that article can apply in any other case where the defendant knows he is copying without permission or copies anyway whether he or she has permission or not.

There is a widespread myth that if something is on the internet it must be free for anyone to use. Thus photos, videos and text including company's terms and conditions are downloaded and recycled with gay abandon. The number of times that clients have told me this week that their neatly drawn up terms of business have been lifted from a company in the same industry (sometimes even a competitor) does not bear thinking about. It has always been wrong to copy and now it is dangerous because the small claims track of the Intellectual Property Enterprise Court with its fixed costs makes it possible for copyright holders to pursue pirates at minimal cost and risk to themselves.

There is in truth a lot of stuff on the internet that is free to share or use under Creative Commons and other licences but check first.  Most but by no means all of the material on Wikipedia is free to use but click the image first and read the notes that appear on the Wikipedia Commons page. Usually you have to attribute the author and copyright owner and there are nearly always restrictions on use. Very much the same applies to clip art and other material. If in doubt ask the copyright owner for permission to use the material and if he or she says "no" then take your own photo or get a lawyer to draft your own terms. The few hundred pounds a professional will charge you is a fraction of the cost of litigation.

If you are accused of copying then remove the infringing material at once and apologize profusely. If the complainant wants money then take legal advice as a matter of urgency. Don't ignore the demand or you may find yourself in court with sky high costs and court fees.

Similarly, if you think your image, text or other work has been ripped off take legal advice before doing a thing. Some countries like Australia provide threats actions for unjustifiable threats of copyright infringement.

If you want to discuss this article call me during office hours on 01484 599090 or 020 7404 5252 or use my contact form.