Jonathan Malcolm-Green v and so to Bed Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,HHJ Hacon |
| Judgment Date | 16 December 2013 |
| Neutral Citation | [2013] EWHC 4016 (IPEC) |
| Docket Number | Case No: CC 13 P 01694 |
| Court | Intellectual Property Enterprise Court |
| Date | 16 December 2013 |
[2013] EWHC 4016 IPEC
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
His Honour Judge Hacon
Case No: CC 13 P 01694
Mr Tom Alkin (instructed by Lewis Silkin LLP) for the Claimant
Ms Victoria Jones (instructed by Metcalfes) for the Defendant
Hearing dates: 5 th December 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This is an application by the Defendant to set aside the Order of District Judge Lambert dated 15 August 2013 by which the Claimant was granted an extension of time to 30 September 2013 in which to serve his claim form. The Defendant also applies for the claim to be struck out. At the hearing the Defendant was represented by Ms Victoria Jones and the Claimant by Mr Tom Alkin, both of counsel.
The Claimant is a professional photographer. He alleges that the Defendant, a former client of his, has infringed his copyright in certain photographs. The Defendant is a retailer with a number of stores that sell beds and bedroom furniture.
The Claimant was commissioned by the Defendant to take photographs at shoots which took place on various dates between 6 December 2005 and 4 April 2007. The Claimant's case is that in line with the parties' conduct in previous such commissions the Defendant was granted a non-exclusive licence under the Claimant's copyright in the photographs to use the photographs in the Defendant's in-store album and in its next catalogue. The Claimant alleges that the Defendant used the photographs for purposes outside the licence and thus infringed the Claimant's copyright.
No Defence has yet been pleaded due to this application but I was informed that the Defendant denies the Claimant's allegations in their entirety.
The Claimant raised his complaint in a letter dated 24 February 2009 in a letter written by him to Andy Hills of the Defendant. The complaint was rejected by the Defendant but it was renewed in a letter dated 6 May 2011 to Mr Hills from the solicitors then acting for the Claimant. There followed further correspondence in which the Defendant continued to reject the claim.
The claim form was issued on 29 April 2013. The brief details of the claim are:
"Claim for artistic copyright, copyright infringement in photographs and/or breach of contract, injunction preventing further infringing activity, delivery up or destruction of infringing articles, damages or an account of profits, costs and interest."
In about April 2013 the Claimant instructed new solicitors who wrote to the Defendant's solicitors on 30 April 2013 informing them that a claim form had been issued against the Defendant in the Patents County Court "in order to protect our client's position" but a copy of it was not provided. Further correspondence followed.
Under CPR 7.5(1) the time for serving the claim form expired on 29 August 2013. On 6 August 2013 the Claimant applied without notice for an extension of time for service until 30 September 2013.
Under CPR 7.6(4)(a) the Claimant was obliged to supply evidence supporting the application when applying for the extension of time. That evidence, and thus the reasons advanced for requiring the extension of time, appeared in the Application Notice. Those reasons were:
— the Defendant had been informed that the claim form had been issued;
— no substantive reply to the Claimant's letter of complaint had been received until 17 July 2013 and the Claimant had not been able to progress its claim until receipt of that letter;
— the Claimant's counsel was abroad for the whole of August and would not be in a position (or would be in a very rushed position) to draft pleadings by 12 September 2013;
— the Claimant wished to have a further conference with counsel in the light of the letter dated 17 July 2013 1.
District Judge Lambert made an Order granting the extension of time on 15 August 2013. No reasons for making the order were given.
The claim form and particulars of claim were served on 30 September 2013. On 11 October 2013 the Defendant acknowledged service, indicating both an intention to defend the claim and to contest jurisdiction.
By an Application Notice dated 24 October 2013 the Defendant applied to set aside the order of 15 August 2013 and to strike out the claim. The application is made under CPR rule 11 or alternatively under CPR rule 23.10. In relation to the latter the Defendant seeks an order extending the time for making the application which has expired under CPR 23.10(2).
Before me the Claimant took no point as to whether rule 11 or rule 23 was the correct rule under which to make this application, nor was the request for an extension of time in relation to rule 23 resisted, should it be needed. Accordingly since the Defendant is entitled to make this application by one or other route, there is no need for me to explore which of them is appropriate.
The Law — general principles
In Hashtroodi v Hancock [2004] 1 WLR 3206 CA the Court of Appeal considered the principles that govern an extension of time for service of a claim form under CPR 7.6. Dyson LJ, who delivered the judgment of the court, said this at paragraph 20:
"One of the important aims of the Woolf reforms was to introduce more discipline into the conduct of civil litigation. One of the ways of achieving this is to insist that time limits be adhered to unless there is good reason for a departure. In the Biguzzicase [1999] 1 WLR 1926 Lord Woolf MR said, at p 1933: "If the court were to ignore delays which occur, then undoubtedly there will be a return to the previous culture of regarding time limits as being unimportant.""
The strict approach to the time limit for serving a claim form was also emphasised by Rix LJ in Aktas v Adepta [2010] EWCA Civ 1170; [2011] QB 894:
"[91] The reason why failure to serve in time has always been dealt with strictly (even if CPR r 7.6(3) represents a still further tightening of the rules where a retrospective request for an extension is made out of time) is in my judgment bound up with the fact that in England, unlike (all or most) civil law jurisdictions, proceedings are commenced when issued and not when served. However, it is not
until service that a defendant has been given proper notice of the proceedings in question. Therefore, the additional time between issue and service is, in a way, an extension of the limitation period. A claimant can issue proceedings on the last day of the limitation period and can still, whatever risks he takes in doing so, enjoy a further four-month period until service, and his proceedings will still be in time. In such a system, it is important therefore that the courts strictly regulate the period granted for service. If it were otherwise, the statutory limitation period could be made elastic at the whim or sloppiness of the claimant or his solicitors. For the same reason, the argument that if late service were not permitted, the claimant would lose his claim, because it would become time-barred, becomes a barren excuse. But even where the claimant is well within the limitation period despite his delay in serving, there is a clear public interest in the rules and the courts curtailing the efficacy of a claim form which, because it has not been served, is not very different from an unposted letter. Therefore, the strictness with which the time for service is supervised has entirely valid public interest underpinnings which are quite separate from the doctrine of abuse of process. It is sufficient for the rules to provide for service within a specified time and for the courts to require claimants to adhere strictly to that time limit or else timeously provide a good reason for some dispensation."
Notwithstanding the general need for strict compliance with the four month deadline, under CPR 7.6 the court clearly has a discretion to allow an extension of time. The reasons for the failure by the claimant to serve the claim form in good time are highly material to the exercise of that discretion but not determinative. In Hashtroodi the Court of Appeal declined to give any hard and fast guidelines:
"[22] In view of the importance of this appeal, we have considered whether we should try to give some guidance as to how the discretion should be exercised beyond merely saying that it should be exercised in accordance with the overriding objective, and that the reason for the failure to serve within the specified period is a highly material factor. We do not, however, think that it would be right to go further than this…"
In Euro-Asian Oil SA v Abilo (UK) Ltd & ors [2013] EWHC 485 (Comm) Burton J reviewed the cases in relation to CPR 7.6 and whether the claimant had provided good reason for his failure to serve in time:
"[15] It is clear from the authorities that good reason is not required as a threshold: see Dyson LJ in Hashtroodi at paragraph 17:
"Against the background of the case law on [RSC] O 6 r 8, and in view of the introduction of new and stringent conditions in rule 7.6(3), it cannot have been intended that rule 7.6(2) should be construed as being subject to a condition that a "good reason" must be shown for failure to serve within the specified period, or indeed subject to any implied condition."
But the approach has been dealt with in a number of differing, although analogous ways:
i) Per Dyson LJ in Hashtroodi at paragraph 19:
"Whereas under the previous law, a plaintiff who was unable to show a good reason for not serving in time failed at the threshold, under the CPR a more calibrated...
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