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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Cassie Creations Ltd v Blackmore & Anor (Rev 1) [2014] EWHC 2941 (Ch) (25 July 2014) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2014/2941.html Cite as: [2014] EWHC 2941 (Ch) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY
7 Rolls Buildings Fetter Lane London EC4A 1NL |
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B e f o r e :
(Sitting as a Deputy Judge of the High Court)
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CASSIE CREATIONS LIMITED |
Claimants |
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- and - |
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(1) SIMON BLACKMORE (2) MIRRORKOOL LIMITED |
Defendants |
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1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP
Telephone: 020 7067 2900 Fax: 020 7831 6864 DX: 410 LDE
Email: info@martenwalshcherer.com
Website: www.martenwalshcherer.com
MR. CHRIS PEARSON (instructed by Mirrorkool Limited) for the Defendants
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Crown Copyright ©
MR. RICHARD SPEARMAN QC:
(i) First of all, there is the question of whether the defendants have made threats against the claimants in accordance with section 26 of the Registered Designs Act 1949 as amended and section 253 of the Copyright, Designs and Patents Act 1988. Those threats are said to arise in a notice that was sent by the first defendant (and I will come to the details in a moment) to eBay and in a letter that was sent to the claimants. The notice was in a form used by eBay called "Notice of Claimed Infringement Statutory Declaration", or "NOCI" for short, and was sent pursuant to eBay's Verified Rights Owner ("VeRO") system. (In fact, I think there may have been two notices, relating to two different registered designs, but they were sent on the same date and were in all other material respects in identical form, and so it is convenient to refer to one alone).
(ii) The second issue, if there were threats, is whether those threats were groundless. In this regard, the claimants seek summary judgment in respect of the notice (which related to registered designs), but in respect of the letter (which related to unregistered designs) the claimants do not seek summary judgment, and contend instead that it cannot be said that their claim of an unjustified threat of infringement of design rights should be struck out on the basis that the threat is clearly and unarguably justified.
(iii) The third issue is whether the first defendant, Mr. Blackmore, is jointly liable with the second defendant company, Mirrorkool Limited, in respect of the sending of the notice to eBay and in respect of the sending of the letter; those matters to be considered separately.
(iv) The fourth issue is whether the defendants are able to avail themselves of the benefit of the protection conferred by section 26(2A) of the Registered Designs Act 1949 as amended and the equivalent protection in section 253(3) of the Copyright, Designs and Patents Act 1988.
(v) The fifth issue is one as to whether these proceedings ought to be stayed or struck out on the grounds that they are disproportionate and an abuse of process: the short answer being, on the defendants' case, that the game is not worth the candle in light of the value of the claims that are made.
"In summary, the term 'threat' covers any intimation that would convey to a reasonable man that some person has trade mark rights" as it was in that case "and intends to enforce them against another." He carried on "It matters not that the threat may be veiled or covert, conditional or future. Nor does it matter that the threat is made in response to an enquiry from the party threatened."
" I believe that the purpose of the letter was to give [the recipient] information and a warning. That requires the answer: a warning as to what?"
Lightman J continued:
"The test is whether the communication would be understood by the ordinary recipient in the position of the claimant as constituting a threat of proceedings for infringement."
"Using language in its ordinary sense, it is difficult to see that an intimation ceases to be a threat because it is addressed to a third party in response to an inquiry, or because it is addressed to the person himself. If I threaten a man that I will bring an action against him, I threaten him nonetheless because I address that intimation to himself, and I threaten him nonetheless because I address the intimation to a third person."
I believe I am right in saying that what informed the decision of the Court of Appeal in that case is the use of the word "otherwise" in the relevant section and, of course, that word is repeated, for example, in section 26(1) of the Registered Designs Act 1949 as amended.
"23. A working definition of an actionable threat is a statement from which a reasonable man in the position of a person to whom the statement is made understands is a statement that might well be the subject of infringement proceedings at some point in the future. The threat is of course in the legal proceedings, and these proceedings have a long and slightly confused history. No doubt they have their emotional roots in the well-known statement of Lord Esher in Ungar v Sugg [1892] 2 RPC 113 that 'better a man have anything happen to him except all his children die of the influenza than that he be involved in a patent action'. Although they have their roots in patent proceedings, they have spread out into many forms of intellectual property, and the reason is very straightforward.
24. It is entirely wrong for owners of intellectual property rights to attempt to assert them without litigation, or without the threat of litigation, in reply. If somebody goes around saying, 'I will sue you for infringement of patent unless you stop buying your goods from X', then the natural response of anybody to whom that statement is made was to stop buying the goods of X. The statement may be entirely truthful and it may also be made with the complete belief in its truth. In those circumstances, the action of malicious falsehood is not available. The action for threats was therefore invented to cover precisely the case where a bona fide statement which is untrue as to infringement was made and has caused the claimant loss. It enabled the claimant, and it enables the claimant, to start proceedings once somebody starts asserting infringement, but refuses to bring proceedings in which that assertion can be tested."
"The representation that was made to eBay is, it might said, consensual in this sense, that eBay offer a service whose purpose is to avoid eBay being involved in disputes with right owners. eBay take the line of least resistance. They insist upon a proper notification but, once the proper notification is made, they remove the listing. They do not themselves check the bona fides or accuracy of the notification. They rely upon the notifying person for that, but they say if we get a well-constituted notification, then we will remove the listing."
" I believe with considerable force, that what can be described as an institutionalised avoidance of litigation is a response in fact to a threat. After all, he says, if there were no threat implicit in the statement that was made to eBay, why would they withdraw the listing even by way of a standard response to any notification of this description. On the other hand, it might well be argued, if you went to eBay and said 'do you really fear being sued in relation to all these notifications?', they would have to say no."
"When eBay is notified by intellectual property rights owners of items that infringe their intellectual property rights such as copyright or trade mark, we are obliged to remove the listings as soon as possible"
"9.1 D2 asked eBay to confirm that 'if Mirrorkool files a NOCI to report a member for possible Infringement, that eBay in no way, shape or form views that NOCI (use of the VeRO system) as a threat of proceedings against eBay' (see email dated 13/4/14 [C/637]. The reply was, 'The VeRO programme is specifically designed for Right Owners to report their intellectual property rights through, and we will in no instance take it as an offense if you wish to do so. Please be assured we always wish to make a well researched judgment, so we will ask you to send any and all details of your intellectual property rights so the removals we will make in your name are fair and legally correct.' (see email dated 14/4/14 [C/637]);
9.2. D2 further asked eBay to clarify if they view a NOCI under the VeRO Programme as a threat of proceedings against eBay (see email dated 14/4/14 [C/638]). The reply was an emphatic 'No, we certainly don't' (see email dated 14/4/14 from Marieke Timmerman of the eBay VeRO Team [C/639]. Ms Timmerman goes on to say: 'We are actually quite happy when Right Owners are helping us keeping our site safe from infringing material. That is why we always encourage right owners to join our programme. A Verified Right Owner may send us as many NOCI's (sic) as he or she can fill with infringing material and we will be glad to take action if the claim is valid.'"
"There is no evidence from the claimants in response to that of [the defendants' witnesses who deny involvement]. But there has been no disclosure. As the Court of Appeal pointed out in [Cooper Tire & Rubber Company Europe Limited v Shell Chemicals UK Limited, [2010] EWCA Civ 864 at para 43] the strength of the claimants' case cannot be assessed, let alone particularised, until after disclosure of documents. The fact that the claimants do not now have evidence to refute that of [the defendants' witnesses] does not enable me to conduct a mini-trial, let alone, predict the outcome of the actual trial."
"Proceedings may not be brought under this section [that section provides a remedy for groundless threats of proceedings for infringement of the rights in registered designs] in respect of a threat to bring proceedings for an infringement alleged to consist of the making or importing of anything."
The like words are used in section 253(3) of the Copyright, Designs and Patents Act 1988 in respect of proceedings for infringement of design rights.
(Discussion re orders followed)