Mr Edward Christopher Sheeran MBE v Mr Sami Chokri
| Jurisdiction | England & Wales |
| Judge | Master Kaye |
| Judgment Date | 28 October 2020 |
| Neutral Citation | [2020] EWHC 2806 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: IL-2018-000095 |
| Date | 28 October 2020 |
[2020] EWHC 2806 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
7 Rolls Building
Fetter Lane, London, EC4A 1NL
Master Kaye
Case No: IL-2018-000095
Ian Mill QC and Jesse Bowhill (instructed by Brais & Krais Solicitors) for the Claimants
Hugo Cuddigan QC (instructed by Keystone Law) for the Defendants
Hearing dates: 16 July 2020
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 was the hearing of the Costs and Case Management Conference and the Defendants application dated 8 May 2020 for an unless order that the Claimants do file and serve “complete and sufficient” responses to Requests numbered 1–18 of its Part 18 Request dated 1 April 2020.
The CCMC set a timetable for the future conduct of this case to trial which had been agreed between the parties for disclosure (27 November 2020), witness evidence (16 April 2021), expert evidence (June 2021 onwards) and a 15 day trial from January 2022. The parties had agreed the list of issues for disclosure in the DRD including the scope of the searches and costs budgets for future costs. The Claimants' future costs were agreed at approximately £1m. The Defendants' future costs were agreed at just over £1m. The parties anticipated that they would incur costs in the region of £3m between them on this dispute.
The only contentious issue was the Defendants' application.
Background
The First to Third Claimants are well known songwriters (“the songwriters”). The other Claimants are publishers. This litigation concerns a composition entitled “Shape of You” which is said to have been created jointly by the songwriters before being recorded by the First Claimant. It has been successful.
The Defendants allege that “Shape of You” infringes the First and Second Defendants' copyright in a composition called “Oh Why”. The alleged infringements do not relate to the entirety of the composition only to particular phrases or lines.
In May 2018, the Claimants issued these proceedings for negative declaratory relief that they had not infringed the Defendants' copyright. In July 2018, the Defendants defended and counterclaimed for copyright infringement, damages, and an account of profits in relation to the alleged infringement. The reply and defence to counterclaim was served in November 2018 and the Defendants then filed a reply to that in March 2019. Pleadings had therefore closed in March 2019.
The proceedings have already had a long journey to get to the CCMC. Whilst a CCMC was originally listed in 2019 it was displaced by an application to strike out parts of the reply to the defence to counterclaim. That application was partially successful in June 2019. The Claimants' appeal against that order was dismissed by Nugee J in December 2019. The Claimants sought permission for a second appeal which was refused in February 2020. The CCMC, re-listed for 30 March 2020, was delayed again eventually being listed for hearing remotely on 16 July 2020.
In the meantime, the Defendants had made a Part 18 request in November 2019 to which the Claimants responded in December 2019. Following the refusal of permission to appeal the Claimants raised two Part 18 requests in March 2020 to which the Defendants responded, the last response being on 1 April 2020.
On 1 April 2020, the Defendants served their second Part 18 request (“the Request”) on the Claimants. The Request consisted of 22 requests and sought a response by 15 April 2020, 14-days after service.
The Claimants did not respond to the Request either to acknowledge receipt, object or to seek an extended period of time to respond. The Claimants did respond to the email serving the Request on a different issue and there is no suggestion that the Request was not received. I note that the Claimants are represented by specialist solicitors and leading and junior counsel.
CPR r.18.1(1) provides that:
“The court may at any time order a party to—
(a) clarify any matter which is in dispute in the proceedings; or
(b) give additional information in relation to any such matter,
whether or not the matter is contained or referred to in a statement of case.”
Practice Direction (“PD”) 18 provides additional guidance on the manner in which the parties should approach a request for clarification or additional information.
1.1 Before making an application to the court for an order under Part 18, the party seeking clarification or information [the Defendants] should first serve on the party from whom it is sought [the Claimants] a written request for that clarification or information (a Request) stating a date by which the response to the Request should be served. The date must allow [the Claimants] a reasonable time to respond.
1.2 A Request should be concise and strictly confined to matters which are reasonably necessary and proportionate to enable [the Defendants] to prepare [their] own case or to understand the case [they have] to meet.
The Defendants say they complied with the requirements of PD18.1 by serving the Request on 1 April 2020 including a date for a response. The Claimants say that the Request is not concise and strictly confined to matters that are reasonably necessary and proportionate to enable the Defendants to understand the case they have to meet. They argue it is not a proper Part 18 request.
PD18.4 sets out what the Claimants should do if they object to the Request in whole or in part and/or require more time to respond.
4.1
(1) If [the Claimants] objects to complying with the Request or part of it or is unable to do so at all or within the time stated in the Request [they] must inform [the Defendants] promptly and in any event within that time.
(2) [They] may do so in a letter or in a separate document (a formal response), but in either case [they] must give reasons and, where relevant, give a date by which [they] expects to be able to comply.
4.2
(1) There is no need for [the Claimants] to apply to the court if [they] objects to a Request or is unable to comply with it at all or within the stated time. [They] need only comply with paragraph 4.1(1) above.
(2) Where [Claimants] considers that a Request can only be complied with at disproportionate expense and objects to comply for that reason [they] should say so in [their] reply and explain briefly why [they] has taken that view.
The Claimants did not do this prior to 15 April 2020 nor before the Defendants made their without notice application on 23 April 2020 or indeed at any time prior to serving their response on 6 May 2020.
PD18.5 provides:
“ 5.2 An application notice for an order under Part 18 should set out or have attached to it the text of the order sought and in particular should specify the matter or matters in respect of which the clarification or information is sought.
5.3
…
(2) If a Request for clarification or information has been made, the application notice or the evidence in support should describe the response, if any.”
5.5
(1) Where [the Claimants] has made no response to a Request served on [them], [the Defendants] need not serve the application notice on [the Claimants], and the court may deal with the application without a hearing.
(2) Sub-paragraph (1) above only applies if at least 14 days have passed since the Request was served and the time stated in it for a response has expired.
The Defendants issued an application notice dated 23 April 2020 pursuant to PD18.5.5(1). They confirmed in the application notice, which was signed with a statement of truth, that they had had no response from the Claimants. They asked the court to deal with the application without a hearing in accordance with PD18.5.5.
By order dated 27 April 2020 (“the 27 April Order”) the Claimants were ordered to file and serve their response to the Request by 4.30pm on 15 May 2020. The Defendants' costs were summarily assessed at £1055.
The court amended the draft Order such that the 27 April Order specifically included provision for any party to apply to set aside or vary the order by way of application to be made no later than 7 days from service of the order.
No application was made by the Claimants to seek to vary or set aside the 27 April Order:
i) within 7 days of service of the Order;
ii) in advance of 4.30pm on 15 May 2020; or
iii) in advance of the CCMC on 16 July 2020.
Not only did the Claimants do nothing to seek to set aside or vary the 27 April Order, they both paid the summarily assessed costs and on 6 May 2020 they filed and served a response to the Request. In respect of requests 1–18 they responded:
“This is an inappropriate use of CPR Part 18. Requests 1–18 are not confined strictly to matters which are necessary and proportionate for the Defendants to prepare their case, or to understand the case they have to meet, to the avoidance of disproportionate expense. The Defendants have sought to employ CPR Part 18 to compel the Claimants to engage in an analysis of documents provided to the Defendants at their request by way of voluntary disclosure and/or provide evidence in advance of the exchange of witness statements....
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