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Do “only fools” resist IPEC transfer applications?22nd October 2020 Intellectual Property
The choice of court venue is, for the most part, that of the Claimant in any intellectual property proceedings. However, the tiered court system often means that large Claimants will choose the High Court, rather than the Intellectual Property Enterprise Court (“IPEC”), with the latter having an effective case management and cost cap regime. The true reason behind this choice is usually cost recovery. However, Claimants will attest to the complexity and value of the case in order to justify choosing the High Court.
On 19 October 2020, Master Teverson sitting in the High Court, handed down a judgment in the case of Shazam Productions Limited vs Only Fools The Dining Experience Limited, Peter Mansergh and three others.
Mr Mansergh, the fourth defendant in the proceedings, was represented by Philip Partington, JMW’s IP specialist partner, while at his previous firm. Indeed, it was Mr Partington who proposed and issued an application for transfer from the High Court to the IPEC in September 2019. It has now taken the parties and the court over a year to reach the same conclusion.
The Claimant is a company that was established by the late John Sullivan who sought to exploit his works and associated intellectual property rights. John Sullivan is famously the creator of the sitcom “Only Fools and Horses” (“the Sitcom”), which was originally broadcast on the BBC between 1981 and 2003. Since John Sullivan’s death in 2011, the Claimant is controlled by members of his family.
The proceedings relate to copyright infringement and passing off in relation to the Defendants’ interactive theatrical dining experience called Only Fools The (cushty) Dining Experience (“the Show”) created and put on at various venues around the United Kingdom from September 2018. According to the judgment, the Show is a part-scripted, part-improvised dramatic performance which takes place while the audience eats a three-course dinner and involves interactions between the cast and audience.
The key dispute between the parties is whether the Claimants can successfully claim copyright in the body of scripts for the Sitcom taken together, which collectively establish the characters, stories and imaginary “world” of the Sitcom and the well-known Characters, namely Del Boy and Rodney etc. In addition, the court will ultimately need to decide whether the Defendants can rely upon the defences of fair dealing for the purposes of parody or pastiche – i.e. a parody of a parody; all in all, an interesting case!
In correspondence over a year ago, Mr Partington explained to the Claimant’s legal team that any proceedings ought to be brought in the IPEC, rather than the High Court. In particular, the Defendants would be unable to afford to defend proceedings brought in the High Court; the value, complexity and expected length of the trial would render this case to be most effectively dealt with by the IPEC. Despite this, the Claimant’s legal team repeated that it would take more than 2-3 days for any trial and therefore issued proceeding in the High Court.
In the circumstances, Mr Partington prepared an immediate application to transfer the proceedings to the IPEC. In particular, Mr Mansergh filed evidence that his personal circumstances and lack of means, living in temporary rented accommodation in Australia and working as an Uber driver earning around £500 per week before expenses, meant he would be unable to defend himself in notoriously expensive High Court proceedings. The other Defendants filed similar evidence with the assistance of their own legal team.
This was in stark contrast to the financial position of the Claimant, who has posted significant earnings for decades. As such, it was truly a David versus Goliath tale.
In his judgment, Master Teverson concluded that “the Defendants… will only be able to afford to defend the claim if it is transferred to the IPEC” and, “without costs protection being in place for all the Defendants… there is a real risk of access to justice not being afforded”.
It is understood that the Claimant had incurred around £50,000 in resisting these applications.
Philip Partington, JMW’s IP specialist partner, said of the decision:
“This case is becoming all too common in the field of intellectual property. In particular, all too often large companies are desperate to stay outside of the IPEC costs regime and will go to great lengths and costs (their own and that of their opponents) to resist transfer from the High Court to IPEC.
It is positive that Master Teverson seemingly agrees with my assessment of this case from September 2019, but it is disappointing it has taken the parties and the court over a year to reach the same conclusion, at a great unnecessary expense to all concerned and, frankly, a waste of court time.
In my view, claimants (understandably) know little as to the choice of court venue, so rely upon the advice of their representatives and it ought to be the advisors to pay a wasted costs award for an unnecessary skirmish such as this.