This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 7: Simplified or Fast Track Procedures for Certain Intellectual Property Claims
Patents County Court of England and Wales [2011]: Temple Island Collection Ltd v New English Teas Ltd & Anor [2011] EWPCC 19
Date of judgment: June 22, 2011
Issuing authority: Patents County Court of England and Wales
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Copyright; Enforcement of IP and Related Laws
Plaintiff: Temple Island Collection Limited
Defendant: New English Teas Limited; Nicholas John Houghton
Keywords: Copyright infringement, Case management conference, Amending statements of case, Cost-benefit analysis, Costs scale
Basic facts: The present judgment was handed down by the Patents County Court (PCC) following a case management conference in an action for infringement of copyright.
The claimant (Temple Island) supplies gift and souvenir items. It contends that it is the owner of copyright which subsists in an original artistic work, namely a stylized photograph of a red Routemaster bus depicted on a greyscale image of Westminster Bridge, before the Houses of Parliament. The work was created in about August/September 2005 and has been used on various items of merchandising from about late 2005, including souvenir items such as posters, mugs and key rings. The work was created by the claimant’s founder and managing director Mr. Fielder. This work can be referred to as the “2005 Work.”
The first defendant (New English Teas) sells tea. The second defendant (Mr. Houghton) is the sole director of New English Teas. On one of the defendants’ boxes of tea is an image of a red bus depicted on a greyscale image of Westminster Bridge, before the Houses of Parliament (the “Tea Box Image”). The claimant contended that image infringed their copyright in the 2005 Work. That copyright claim was settled in correspondence starting from a Part 36 offer in March 2010.
However, in October 2010, the claimant discovered that the defendants were using a second image of a red bus depicted on a greyscale image of Westminster Bridge, before the Houses of Parliament. The second image appears (at least) on a tin for tea bags. The image can be referred to as the “Tea Bag Tin Image.” The claimant’s case is that this also infringes its copyright.
Although there were some outstanding disputes involving the settlement agreement, by December 2010, the main dispute concerned the Tea Bag Tin Image. The claimant commenced proceedings in the High Court on December 15, 2010. Shortly thereafter, the case was transferred to the Patents County Court.
As regards infringement, the claimant understood that the defendants were maintaining a case of independent design, i.e., a case that even if it might be said objectively that there were substantial and relevant similarities between the Tea Bag Tin Image and the 2005 Work, those similarities were a coincidence and not the product of copying. A defense of independent design in a copyright case can magnify the cost and complexity of a copyright claim significantly. Accordingly, the only issue on which the claimant sought disclosure of documents was on independent design.
Reviewing the matter in court, it emerged that while defendants deny infringement, they do not advance a case of independent design. They contend that the question of infringement can be decided objectively, by considering what exactly is original about the claimant’s copyright work and by conducting an objective comparison between the Tea Bag Tin Image and the 2005 Work. Thus, to decide the question of copyright infringement of the Tea Bag Tin Image, the focus of the trial will be on an objective comparison between the 2005 Work and the Tea Bag Tin Image, in the context of an appreciation of the skill and labor which went into the 2005 Work itself. The parties agreed that this did not require disclosure in relation to independent design. Neither side suggested expert evidence would be needed in any event.
The claimant applied to amend the Particulars of Claim to add a new second artistic work (the “2009 Work”) to its copyright claim. The claimant then seeks to plead that the Tea Bag Tin Image reproduces the whole or a substantial part of the 2005 Work or the 2009 Work or both and thus infringes copyright in either the 2005 Work or the 2009 Work or both. Crucially, the 2009 Work shows the bus in a different position from the 2005 Work, and the position of the bus in the Tea Bag Tin Image is much closer to the position of the bus in the 2009 Work than it is to the bus in the 2005 Work.
The claimant further submits that the fact that the defense had been filed while the case was in the High Court meant that on top of recovering its costs incurred in the High Court, the defendants could recover the full allocation for the Defence stage in the PCC costs scale, and so could be compensated in costs.
The defendants resist the application to amend. The defendants also contend that in light of the new PCC regime as to costs and the costs cap, they cannot be compensated in costs.
Held: The Patents County Court held that the claimant’s requested amendment does not satisfy a cost-benefit analysis, which is a sufficient reason to refuse the amendment. Thus, the PCC dismissed to application to amend the Particulars of Claim.
Relevant holdings in relation to simplified or fast track procedures for certain intellectual property claims: Every application to amend statements of case involves a balance between allowing the amendment and a consideration of the prejudice the amendment may cause. When considering an application to amend the statements of case in the Patents County Court in a regime with capped costs, that balancing exercise will include an assessment of whether the likely benefit of the amendment appears likely to justify the cost of taking and dealing with it.
The PCC determined that including the amendment sought by the complainant would add substantially to the cost and complexity of the case, without a corresponding benefit to the resolution of the dispute that is in any way proportionate to that cost or complexity. The Court noted that the 2009 Work is not merely an alternative way of putting the existing case; rather, it is a wholly new allegation, raising a number of complexities and difficulties. Further, the PCC judged the chance to be low that adding the 2009 Work into the case would make the difference between success and failure from the claimant’s point of view.
The PCC rejected the claimant’s submission that the defendants could be compensated in costs, finding that if the relevant costs scale stage took place in the High Court, then the cost of that stage will be dealt with as High Court costs. Stages that straddle the High Court and the PCC will be dealt with as they arise, but recovery of the full amount for a given stage, if the PCC scale is applicable, is likely only to be possible if the whole of that stage was conducted in the PCC.
Relevant legislation:
The Civil Procedure Rules 1998