Motorola Solutions Inc. and Another v Hytera Communications Corpn Ltd and Others
| Jurisdiction | England & Wales |
| Neutral Citation | [2024] EWHC 2891 (Comm) |
| Year | 2024 |
| Court | King's Bench Division (Commercial Court) |
2024 Nov 4, 5; 14
Conflict of laws - Foreign judgment - Enforcement - Foreign court in single composite judgment awarding claimant compensatory damages and exercising statutory power to award double compensatory amount as punitive damages - Court in subsequent judgments awarding claimant interest, fees and costs - Punitive award constituting judgment for multiple damages and therefore unenforceable in English court - Whether award of interest, costs and fees “sum payable under” judgment for multiple damages and therefore also unenforceable -
A court in the United States of America held that the first defendant and two of its subsidiaries were liable to the claimant for breach of the US statute on trade secrets. In addition to awarding compensatory damages, the court exercised the discretionary power in the statute to award double the compensatory amount as punitive damages. The court subsequently also awarded interest, costs and fees. The claimant brought a claim in the High Court of England and Wales to enforce parts of the judgment. The first defendant contended that the entire judgment was unenforceable by virtue of section 5 of the Protection of Trading Interests Act 1980F1, which barred recovery of any sum payable under a foreign “judgment for multiple damages”, defined as a judgment for an amount arrived at by doubling, trebling or otherwise multiplying a sum assessed as compensation.
On the claim—
Held, dismissing the claim, that while section 5 of the Protection of Trading Interests Act 1980 was most likely to affect US anti-trust actions, in principle it could apply to any judgment rendered outside the UK pursuant to a rule or statute in which the amount of damages was arrived at by multiplying the compensatory element; that if the foreign court as a matter of fact chose to double the damages by way of a punitive award, then on the clear wording of the 1980 Act there was no reason why the judgment should not fall foul of section 5, notwithstanding that the multiple element had been applied pursuant to a non-mandatory rule or statutory power; that where a judgment was based on multiplication, no part of it, including the compensatory element, could be enforced; that an award of interest, fees or costs which was ancillary to an award of damages was properly to be characterised as a “sum payable under” the judgment containing the award of damages; that the punitive damages awarded by the US court were multiple damages, being an amount of damages arrived at by doubling the compensatory award under the trade secrets statute; that although the US court had given its judgment on interest, costs and fees by way of separate orders, they were not freestanding judgments in their own right, and therefore the sums were all payable under the trade secrets judgment on liability; and that, accordingly, no part of the trade secrets judgment, including the interest, costs and fees elements, was enforceable (post, paras 39–41, 45, 48, 49, 53, 66, 73, 79–81, 95–96, 119).
Per curiam. Where a foreign statute does not mandate double or treble damages and the foreign court does not do so as a matter of fact, but simply imposes an additional punitive sum on top of the compensatory amount, it is less likely that the judgment will fall foul of section 5 of the Protection of Trading Interests Act 1980. In such a case, it is necessary for the court to consider how and in what sum the foreign court calculated the additional element of damages in order to determine whether or not the court has, in the wording of section 5, otherwise multiplied the compensatory amount. The burden of proof rests upon the objecting party and they would have to do so by reference to the foreign court’s judgment, opinion and associated orders (post, para 44).
The following cases are referred to in the judgment:
British Airways Board v Laker Airways Ltd[
Brownlie v FS Cairo (Nile Plaza) LLC
Hangzhou Jiudang Asset Management Co Ltd v Hung
Henderson v Henderson(
Lewis v Eliades
Lucasfilm Ltd v Ainsworth
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Pepper v Hart[
Rookes v Barnard[
SAS Institute Inc v World Programming Ltd
Service Temps Inc v MacLeod
Suppipat v Narongdej
Swiss Life AG v Kraus
The following additional cases were cited in argument or referred to in the skeleton arguments:
Hensley v Eckerhart(
Moore v Anderson(
Moss v Martin
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Motorola Solutions Inc v Hytera Communications Corpn Ltd
Nouvion v Freeman(
Oneida Indian Nation of New York v County of Oneida(
Pace Europe Ltd v Dunham
Sears, Roebuck and Co, In re (unreported) 3 August 2018
Simon Engineering plc v Butte Mining plc[
Société Commerciale de Réassurance v Eras International Ltd (No 2)[
Sottoriva v Claps(
Tran v Tran (unreported) 23 September 2002,
CLAIM
On 14 March 2017 the claimants, Motorola Solutions Inc and Motorola Solutions Malaysia Sdn Bhd, commenced proceedings against the defendants, Hytera Communications Corpn Ltd, Hytera America Inc and Hytera Communications America (West) Inc, before the US District Court for the Northern District of Illinois, Eastern Division (“the US court”) for breaches of the Copyright Act 1976 and the Defend Trade Secrets Act 2016. On 14 February 2020 a jury awarded the claimants compensatory damages under both the 1976 Act and 2016 Act, and punitive damages under the 2016 Act. The punitive damages were quantified by doubling the compensatory damages awarded under the 2016 Act. By judgments dated 6 August 2021, 10 August 2021 and 15 October 2021, the court awarded the claimant costs, interest and attorney fees. By a claim form dated 28 April 2022, the claimants commenced a claim in the High Court of England and Wales to enforce, inter alia, the costs, interest and fees awards.
The facts are stated in the judgment, post, paras 1–6, 12–29.
Tom Sprange KC and Kabir Bhalla (instructed by
Stephen Rubin KC, Alexander Milner KC and Leah Gardner (instructed by
The court took time for consideration.
14 November 2024. CALVER J handed down the following judgment.
Subject matter of this trial1 On 4 and 5 November 2024 this court heard the trial of the claimant (“Motorola”)’s claim to enforce at common law parts of a judgment of the US District Court for the Northern District of Illinois, Eastern Division (the “Illinois Court”) (Motorola Solutions Inc v Hytera Communications Corpn Ltd (Case 1:17-cv-01973) (unreported) 8 January 2021) (the “US Judgment”). The US Judgment was entered after a trial before a jury at which the first defendant (“HCC”) and two of its subsidiaries (collectively “Hytera”) were found liable to Motorola for serious breaches of two US statutes—the Copyright Act 1976, and the Defend Trade Secrets Act 2016 (“DTSA”).
2 HCC is a company incorporated and headquartered in China. It was founded in 1993 and is a developer and manufacturer of two-way radio equipment and related technology. Motorola is also a major player in the radio technology industry and is a competitor of HCC. Motorola is headquartered in Chicago, Illinois.
3 Following various further orders made by the Illinois Court post-trial, the US Judgment is made up of a number of different components, namely:
(1) compensatory damages of $136.3m under the Copyright Act;
(2) compensatory damages of $135.8m under the DTSA;
(3) punitive damages under the DTSA of $271.6m (i e double the compensatory damages awarded under that statute);
(4) $51,128,975 in pre-judgment interest;
(5) $34,244,385.50 in attorney fees (i e costs);
(6) $2,674,631.36 in “costs” (i e disbursements); and
(7) post-judgment interest, which Motorola quantifies in the sum of either $618,042.29 or $374,922.51.
4 Of the above seven elements, only the last four (totalling some $73m
5 So far as the other three elements are concerned, the Copyright Act damages ($136.3m) are already the subject of an English judgment in favour of Motorola which was entered by consent on 9 November 2023. The English judgment was stayed by order of Jacobs J (Motorola Solutions Inc v Hytera Communications Corpn Ltd[2024] EWHC 149 (Comm)) pending an appeal by Hytera against the US Judgment to the US Court of Appeals for the Seventh Circuit (“the Seventh...
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Motorola Solutions, Inc & Anor v Hytera Communications Corporation Ltd & Ors
...PTIA issue. 119. In the light of my clear finding that none of the interest, costs or fees are enforceable by reason of section 5[2024] EWHC 2891 (Comm) Case No: CL-2022-000219 IN THE HIGH COURT OF JUSTICE KING'S BENCH DIVISION BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES COMMERCIAL CO......