Kemal Akhtar v Bhopal Productions (UK) Ltd and Others
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 03 February 2015 |
| Neutral Citation | [2015] EWHC 154 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Date | 03 February 2015 |
| Docket Number | Case No: IP14M01375 |
[2015] EWHC 154 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: IP14M01375
Chris Pearson (instructed by Keystone Law) for the Claimant
Thomas St Quintin (instructed by Lee & Thompson LLP) for the Second, Third and Fourth Defendants
Tom Cleaver (instructed by Radcliffes LeBrasseur) for the Fifth Defendant
Daniel Metcalfe (instructed by JMW Solicitors LLP) for the Sixth Defendant
Hearing date: 11 December 2014
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.
Background
In these proceedings the claimant seeks relief for the alleged infringement by the six defendants of the copyright in a film called "Bhopal: A Prayer for Rain". The film is about the severe industrial accident which took place at the Union Carbide facility in Bhopal, India, 30 years ago.
The claim form was issued on 1 April 2014 and was served on the defendants with Particulars of Claim shortly thereafter. The Particulars of Claim were rightly criticised in correspondence, particularly by the first to fourth defendants, as being inadequate. The sixth defendant served a Defence on about 22 May 2014 and the fifth defendant on 11 June 2014. The claimant indicated that he proposed to amend his Particulars of Claim and by an order dated 11 June 2014 made in writing, with the consent of the claimant and the first to fourth defendants, I allowed the first to fourth defendants to serve their defence 28 days after service of the Amended Particulars of Claim.
On 22 July 2014 the defendants were sent draft Amended Particulars of Claim.
On 29 July 2014 the first defendant was dissolved and thus has played no further part in the proceedings.
In a letter dated 29 August 2014 the solicitors acting for the second to fourth defendants advanced detailed criticisms of the new draft and stated that it disclosed no cause of action in respect of which the claimant had any prospect of success. The fifth and sixth defendants in due course agreed.
By an Application Notice dated 22 September 2014 the claimant applied to amend his Particulars of Claim in the form of the draft sent to the defendants.
At a hearing on 11 December 2014 I dismissed the claimant's application to amend. I was not persuaded by the defendants that the claimant had no prospect of advancing a case for joint ownership of copyright in the film and infringement of that copyright but I took the view that the draft Amended Particulars were unsatisfactory in a number of respects. Thus, the claimant is not shut out from trying again to draft a pleading which both satisfies the rules of court and supports a sufficiently arguable case.
Unreasonable behaviour
In relation to costs, I ruled that the claimant had behaved unreasonably, for a combination of two reasons. First and most importantly, the initial Particulars of Claim (not drafted by counsel) were on any view wholly inadequate and came nowhere close to satisfying CPR 63.20. It is never appropriate for a claimant to serve undeveloped Particulars of Claim in the hope that some sort of pleading might be enough to provoke a settlement. Particulars should either be served in conformity with the rules or not at all. Failure to do that will almost inevitably waste time and costs.
Secondly where, as here, the claimant concedes that amended Particulars are undoubtedly required, he should take particular care to ensure that the amended pleading both satisfies the rules and sets out sufficient matters to support his case. In my view bearing in mind the detailed criticisms made against the draft Amended Particulars of Claim, insufficient account was taken of those criticisms. A claimant in that position should anyway come prepared with a further alternative draft to be advanced in whole or in part in the event that the court is not satisfied with the amendments currently proposed. In the present instance the claimant can have been in no doubt what the inadequacies in the amended draft pleading were alleged to be. Counsel for the claimant was entitled to dispute the criticisms raised and he did. But once I had ruled that the claimant could not amend the Particulars in the form proposed, though I was not shutting out the possibility of the claimant advancing a properly pleaded case, he had no fall-back pleading to put before the court. This was not the sort of instance where a bit of tweaking could be done on the spot. The upshot was that the claimant could go away and try again but this was not satisfactory. For those reasons taken together, I ruled that the claimant had acted unreasonably.
Costs consequences
Where a party has behaved unreasonably there are two express consequences set out in the rules. Pursuant to CPR 63.26(2) the court may make an order for costs at the conclusion of the hearing, rather than reserving the costs according to the usual practice ( CPR 63.26(1)). Also CPR 45.32 provides that costs awarded under rule 63.26(2) are in addition to the total costs awarded under CPR 45.31.
At the hearing not all the defendants were in a position to provide the information necessary for me to make a summary assessment of costs there and then. I said that I would make such an assessment in writing following receipt of statements of costs from the defendants. I also asked all the parties to make submissions on the relevance and application in this case of the stage cap of £3,000 on the costs of an application in the IPEC. Counsel for the various parties provided very helpful written submissions which together dealt with the following matters:
(1) Whether the effect of CPR 45.32 is that costs awarded under CPR 63.26(2) may exceed the maximum imposed for the relevant stage of the claim set out in Practice Direction 45. The alternative is that the effect of the rule goes no further than removing the costs awarded under CPR 63.26(2) from consideration when the court comes to consider the cap on total costs (set out in CPR 45.31).
(2) If the stage cap applies, whether there should be a separate cap for each defendant.
(3) If the stage cap would normally apply, whether the court should exercise its discretion to ignore the cap in this case.
(4) Whether the claimant's conduct had amounted to an abuse of process such as to remove the usual limitations on the award of costs in the IPEC.
Whether the stage costs cap applies where there has been unreasonable behaviour
The starting point is CPR 45.30.
" (1) Subject to paragraph (2), this Section applies to proceedings in the Intellectual Property Enterprise Court.
(2) This Section does not apply where –
(a) the court considers that a party has behaved in a manner which amounts to an abuse of the court's process; or
(b) the claim concerns the infringement or revocation of a patent or registered design or registered trade mark the validity of which has been certified by a court or by the Comptroller-General of Patents, Designs and Trade Marks in earlier proceedings.
(3) The court will make a summary assessment of the costs of the party in whose favour any order for costs is made. Rules 44.2(8), 44.7(b) and Part 47 do not apply to this Section.
(4) 'Scale costs' means the costs set out in Table A and Table B of the Practice Direction supplementing this Part."
Before turning to the main issue under this head, I should say that I have avoided using the term 'scale costs' except where I am directly referring to a rule in which the term appears. This is because, at least on one view, 'scale costs' is used ambiguously in the rules notwithstanding what appears to be a clear definition in rule 45.30(4). That paragraph states that 'scale costs' mean the maximum stage costs set out in Tables A and B of Practice Direction 45, Section IV. On another occasion there may be argument about how strictly the definition should be applied. I do not attempt to decide the matter here since it is not necessary to do so. However for reasons of clarity, particularly having in mind the written submissions filed by the parties, where possible I will use instead the term 'stage costs' to mean the costs set out in Tables A and B, often as opposed to 'total costs', being the costs of the proceedings as a whole.
There are limits to the use of costs caps in the IPEC, as appears from paragraph (2) of rule 45.30. Where either (a) there has been an abuse of process or (b) the proceedings concern a registered right which has been certified, costs are not subject to either of the usual limits in the IPEC. (Circumstance (a) presumably only relates to costs against the offending party.)
Paragraph (3) provides for another feature of IPEC costs: they are always assessed summarily; there is no provision for detailed assessments. This has general application – paragraph (2) provides for exclusions from the capping regime but even where the exclusions apply the costs will still be assessed summarily.
Next there is rule 45.31:
" 45.31 (1) Subject to rule 45.32, the court will not order a party to pay total costs of more than –
(a) £50,000 on the final determination of a claim in relation to liability; and
(b) £25,000 on an inquiry as to damages or account of profits.
(2) The amounts in paragraph (1) apply after the court has applied the provision on set off in accordance with rule 44.12(a).
(3) The maximum amount of scale costs that...
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...the Order by trading in AGEs and smoke dampers. 53 I was helpfully referred by counsel to Akhtar v Bhopal Productions (UK) Limited [2015] EWHC 154 (IPEC) where HHJ Hacon set out in a detailed judgment how the various caps in the IPEC work. In that case, His Honour found that the relevant p......