Sergio Costa v Dissociadid Ltd
| Jurisdiction | England & Wales |
| Judge | Miss Recorder Amanda Michaels |
| Judgment Date | 02 December 2021 |
| Neutral Citation | [2021] EWHC 3275 (IPEC) |
| Docket Number | Claim No. IP-2021-000028 |
| Year | 2021 |
| Court | Intellectual Property Enterprise Court |
[2021] EWHC 3275 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Miss Recorder Amanda Michaels, sitting as a Deputy Judge of the Intellectual Property Enterprise Court
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Claim No. IP-2021-000028
Jacqueline Reid (instructed by Brandsmiths) for the Claimant
Mitchell Beebe (instructed by PAIL Solicitors) for the Defendants
Hearing date: 19 November 2021 (held remotely by Microsoft Teams)
HTML VERSION OF JUDGMENT APPROVED
Handed down remotely by email to the parties and by publication on Bailii at 10.30 am on 3 December 2021
This judgment deals with applications to strike out and/or for summary judgment made on behalf of both sides of this dispute.
The action is a claim for infringement of literary copyright in a number of works of joint authorship (“the Works”). Subsistence, copying and reproduction of a substantial part of the Works are not in issue. However, the Defendants counterclaim for breach of an alleged contract under which, they say, they were and remain entitled to use the Works, with additional counterclaims for breach of a non-disclosure agreement and unlawful interference.
Background
The background to the dispute is broadly agreed, and nothing in the summary in this judgment is intended to resolve any points which remain in dispute between the parties. I am told that the Second Defendant is affected by “dissociative identity disorder.” I was told that this was previously known as “multiple personality disorder,” and is a mental disorder characterised by the maintenance of at least two distinct and relatively enduring personality states. I hope it will not cause any offence if for convenience I refer to the Second Defendant as “Ms Wilkinson” without distinguishing between the different states of identity which she calls her “alters,” as it does not seem to me that any point relevant for present purposes turns on her different states of identity.
In about March 2018, Ms Wilkinson started a YouTube channel under the name ‘DissociaDID’ (“the Channel”) and continued to operate the Channel until August 2020 when the First Defendant was incorporated. Ms Wilkinson is the sole shareholder and director of the First Defendant. Since its incorporation the First Defendant has operated the Channel. The Channel was used to carry out activities relating to dissociative identity disorder, including giving information, support and advice, by reference to Ms Wilkinson's experiences. I was told that the Channel was very successful, had many subscribers and provided a significant monthly income to the Defendants.
At some point in early 2020, Ms Wilkinson was approached by the Claimant, Mr Costa. The date when the initial communication occurred, and the details of the discussions which ensued between Ms Wilkinson and Mr Costa, are not agreed between the parties. Ms Reid, for Mr Costa, told me that the application bundle (despite being over 500 pages long) contained only a modest selection of the correspondence, as around 500 emails and a similar number of WhatsApp messages passed between the parties during 2020. Certainly, the application bundle did not contain a number of significant documents, such as the correspondence in November 2020 to which I refer below.
Broadly speaking, however, I think it was accepted by both sides that in about March or April 2020 Mr Costa offered Ms Wilkinson some help and assistance in relation to the Channel. I was shown an email sent on 20 April 2020 in which he said:
“So, about my proposal. I know that you have a ton of things to think about right now and I'd hate to add to that. Please don't feel pressured to reply to this email any time soon, although I kindly ask you to reply to it, regardless of your decision. This is something for you to think about when (and if) you're ready to come back.
I'm offering you my help to work behind the scenes improving your content and communication so you can feel safer and focus on what you do best: creating content. You don't have to pay me or credit me. I'm doing this for the sole reason that I believe in your project and would like to help.”
Mr Costa went on to describe his background and work in “quality control and communication efforts” and said that he might be able to offer help in terms of improving communication. Mr Costa added “So nothing too fancy, mostly just a little advice here and there.”
Mr Costa's offer was not accepted at that stage, but after some further correspondence, during which Mr Costa offered at least to give some advice, on 16 June 2020 he wrote saying:
“If you need help with research, planning, writing, keeping tabs on things, etc, my offer still stands.”
The offer was accepted by Ms Wilkinson later the same day.
The Defendants say that these exchanges led to the formation of a contract between them (“the Contract”).
In August 2020, the parties executed two written non-disclosure agreements. The first NDA dated 5 August 2020 was between Mr Costa and Ms Wilkinson and the second dated 21 August 2020 was between Mr Costa and the First Defendant. It expressly superseded the earlier NDA.
Subsequently, Mr Costa helped Ms Wilkinson (and/or the First Defendant) write content for use on the Channel, leading to the production of the Works, which consist of a number of scripts, pre-scripted comments and statements, and a disclaimer. The dates when the Works were produced may, I think, be in contention, but the Particulars of Claim describes the Works as having been written in August and September 2020. I do not need for present purposes to go into the details of the collaboration between the parties or the details of the Works. Mr Costa claims joint authorship of the Works with Ms Wilkinson and joint ownership of the copyright subsisting in them as literary works (despite some ambivalence in the Particulars of Claim as to whether he claims sole or joint ownership of the copyright in the works). The Defendants accept the claim to joint authorship and joint ownership of copyright save in respect of one Work, the disclaimer, which is said by the Defendants to have been written by Ms Wilkinson.
The Works were used in content on the Channel. However, in about November 2020, the parties fell out. The Particulars of Claim pleads that Mr Costa sent a “communication” to Ms Wilkinson on 6 November 2020 about protecting his intellectual property and a letter of claim was sent on 23 November 2020. Neither of these documents were exhibited to the Particulars of Claim or otherwise included in the application bundle, but it is alleged that “any consent to the unilateral exploitation of the Works was revoked by the Claimant at that time.” It is also said that from 12 November 2020, the Defendants claimed a right unilaterally to exploit the Works and copied them and issued the copies to the public, etc, on the Channel, leading to infringement of the copyright.
The Defendants accept that they continued to use the Works on the Channel after Mr Costa is alleged to have withdrawn his consent to that use, but they allege that the Contract was not determined by him in November 2020. However, Mr Costa filed takedown notices with YouTube, initially in February 2021, resulting (according to the Defendants) in many of the First Defendant's videos being taken down by YouTube. Some were reinstated following counter-notices by the Defendants, but at least some have been taken down again following later objections from Mr Costa.
The claim form was issued on 17 March 2021, claiming an injunction, damages or account of profits and other relief usually sought in a copyright claim for unauthorised use of the Works. The Defence was mainly based upon the contention that the Contract gave the Defendants the right to continue to use the Works despite Mr Costa's objections, whether pursuant to a licence or an equitable assignment. In addition, the Defendants counterclaimed for:
a. damages for breach of the Contract: the loss of revenue from the Channel as a result of the takedown notices was said to be likely to exceed £100,000 by the date of the trial,
b. damages for unlawful interference (causing loss by unlawful means): alleging that Mr Costa did not honestly believe that he had withdrawn his consent for their exploitation of the Works, and
c. damages for the wrongful disclosure of private information by Mr Costa to a third party in breach of the NDA with the First Defendant.
All of those counterclaims are denied.
Various further statements of case were exchanged, and the CMC was listed to be heard on 19 November.
The applications
On 3 November, the Defendants issued an application to be heard at the CMC asking for the claim to be struck out in its entirety under CPR 3.4(2)(a) and/or CPR 3.4(2)(b) alternatively, summary judgment under CPR 24.2 in favour of the Defendants on the Defendants' Defence. The application was supported by a witness statement of the Defendants' solicitor, Mr Adediran. Mr Costa filed a witness statement in answer dated 15 November.
On 5 November, the Claimant issued his own application for strike out under CPR 3.4(2) or for summary judgment under CPR 24.2. That application had been foreshadowed by a letter dated 6 July 2021 (which I have not seen). The application was supported by the witness statement of his new solicitor, Mr Lee, who exhibited a marked-up, colour-coded version of the Defence showing which parts of it the Claimant sought to strike out on a variety of bases. The Claimant claimed that there was no defence to his claim. He did not seek to strike out the whole of the Counterclaim and in particular...
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