The Football Association Premier League Ltd v Patrick O'Donovan and Another
| Jurisdiction | England & Wales |
| Judge | Chief Master Marsh |
| Judgment Date | 03 February 2017 |
| Neutral Citation | [2017] EWHC 152 (Ch) |
| Docket Number | Case No: HC-2016-001625 |
| Court | Chancery Division |
| Date | 03 February 2017 |
[2017] EWHC 152 (Ch)
Chief Master Marsh
Case No: HC-2016-001625
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Lindsay Lane (instructed by DLA Piper UK LLP) for the Claimant
No attendance by any other party
Hearing dates: 18 th January 2017
This judgment relates to an application made by the claimant to lift the stay imposed by CPR 15.11 and to amend the particulars of claim. The outcome of these applications affects this claim and a number of other similar claims and this judgment provides my reasons for lifting the stay and granting permission in the terms sought by the claimant.
The claimant is the governing body of the association football competition known as the Premier League. In both the United Kingdom and abroad there is a great deal of interest in televised live footage of matches played as part of the competition. The claimant alleges that the first defendant, who is the licence holder for and responsible for a public house known as the Bird in Hand 81 West Wycombe Road, High Wycombe, Bucks HP11 2LR, has infringed the claimant's copyright in what are defined in paragraph 7 of the particulars of claim as the "Copyright Works". They broadly comprise the corporate logos and onscreen graphics used by the claimant in live feeds of Premier League matches up to the end of the 2015/16 football season, including the "Barclays logos". The infringement arises from communicating or authorising the communication of the Copyright Works which form part of the live feed created by the claimant for a number of matches. In short, it is alleged that matches from the Premier League have been screened at the Bird in Hand for the benefit of its customers and by doing so the first defendant infringed the Copyright Works.
The first defendant has not played any part in the claim since being served in June 2016 despite having told the claimant that he had filed a defence. The second defendant is a passive party to the claim and has been joined because it is joint owner of some of the logos that form part of the live feeds along with logos belonging solely to the claimant and its consent to the claim is required. The second defendant is not playing any part in the proceedings and no relief is sought against it.
The application is supported by a witness statement made by John Wilks who is a partner with DLA Piper. He explains the procedural history to the claim and the reasons for seeking permission to amend. The two are interlinked. It suffices, however, to summarise the relevant background.
The claim was issued on 25 May 2016 and served on 13 June 2016. There was some initial contact with the first defendant thereafter by telephone and in without prejudice letters. On 10 August 2016 the first defendant wrote to DLA Piper saying he had filed a defence, albeit that he was by then out of time for filing an acknowledgement of service. A copy of the defence was not supplied to them and enquiries with the court showed that a defence had not been filed. DLA Piper both telephoned and wrote to the second defendant to follow up the missing defence but he did not reply. Nothing has been heard from the first defendant following his initial contact with DLA Piper and the position at the date of issue of the application notice, and the hearing, was that no acknowledgment of service or defence has been filed and the first defendant has not responded to the application.
In September 2016 the claimant decided to amend its claim. By letter dated 19 December 2016 the first defendant was asked to consent to the proposed amendment to the particulars of claim. He did not respond to that letter.
The amendment arises for two principal reasons. First, because the claimant has adopted new logos and onscreen graphics for the 2016/17 season ("the New Logos and Graphics"). Secondly, an amendment to s72 of the Copyright Designs and Patents Act 1988 was brought into effect on 15 June 2016 by The Copyright (Free Public Showing or Playing) (Amendment) Regulations 2016. This removed a potential defence to a claim for copyright infringement to the public showing or playing of a film work included in a broadcast by organisations that do not charge an entry fee. The claimant now seeks to pursue claims based upon the infringement of the 2015/16 logos and graphics, the New Logos and Graphics and the copyright subsisting in the film made of each match. The amendments also include some changes that can be characterised as tidying up the original claim. They are uncontroversial and it is unnecessary to make further reference to them.
The New Logos and Graphics were adopted at the beginning of the 2016/17 Premier League season on 13 August 2016. The amendments set out the chain of title by which the claimant has acquired proprietary rights in the New Logos and Graphics. They were not concluded until an agreement was entered into between the claimant and IMG Media Limited in November 2016, although the claimant says it had acquired equitable title before that date. In any event, it is possible to understand why there was a delay in making the application for permission to amend taking into account the time taken for the commercial arrangements to fall into place, advice to be obtained, the draft to be prepared and to seek consent from the defendants.
CPR 15.11 provides that:
(1) Where –
(a) at least 6 months have expired since the end of the period for filing a defence specified in rule 15.4;
(b) no defendant has served or filed an admission or filed a defence or counterclaim; and
(c) the claimant has not entered or applied for judgment under Part 12 (default judgment), or Part 24 (summary judgment),
the claim shall be stayed.
(2) Where a claim is stayed) under this rule any party may apply for the stay to be lifted.
The effect of CPR 15.11 is that the claim became stayed on 27 December 2016 because 6 months had passed following the end of the period for serving a defence. Even though this date fell after the application for permission to amend was issued the claimant rightly sought the court's approval to the stay being lifted.
The purpose served by CPR 15.11 is not immediately obvious other than, perhaps, it encourages claimants to make a decision about what steps to take to pursue a claim and renders inactive claims that might otherwise lie merely somnolent on the court file. It might also, perhaps more in theory than in reality, provide comfort to a defendant that no further action in the claim can be taken save with the court's permission However, it seems to me that the rule is not intended to place an especially heavy burden on the claimant to discharge before the court will agree to the stay being lifted. In the usual way, the court must weigh the competing interests of the parties in the balance. Here, there is an adequate explanation of the delay and the claimant has a claim with real prospects of success. These two factors are closely linked because the claimant wishes to amend its claim to bring it into line with changes that have occurred since the claim was issued. The delay has been largely caused by steps being taken to give effect to those changes. So far as the merits are concerned, having already dealt with a considerable number of similar claims, I am aware that most other similar claims have not been contested. In any event, the amended claim demonstrates a claim based upon reasonable grounds. Added to that, there has been an almost complete lack of engagement by the first defendant and part of the delay has been caused by the defendant himself. On the other side of the balance, there is no obvious prejudice to the defendant caused by the delay of 6 months and I note that steps were taken to revive the claim within that period. In all the circumstances I am satisfied that it is appropriate to lift the stay.
The Amendment
In most respects the amendments are uncontroversial. The claimant wishes to bring the claim in line with the changed circumstances both as to a change in the law since the claim was issued and the new football season and the New Logos and Graphics. Applying the usual considerations, the application is a strong one:
i) The amended claim shows reasonable grounds and has a real prospect of success.
ii) The claim is at an early stage and the amendment in relation to the New Logos and Graphics could not have been made earlier than November 2016.
iii) There is no prejudice to the first defendant because he has opted not to serve a defence.
During the course of the hearing I raised a concern with Ms Lane, who appeared for the claimant, about whether the claimant was seeking to add new causes of action which had not arisen when the claim was issued and, if so, whether there was an entitlement to do so. No limitation issue arises and the provisions of s.35 of the Limitation Act 1980 and CPR 17.4(2) have no bearing. However, the cases that have considered those provisions have had to grapple with the sometimes elusive notion of what constitutes a new claim – see Aldi Stores Ltd v Holmes Buildings Ltd [2003] EWCA Civ 1882 at [21] to [28] and HMRC v Begum [2010] EWHC 1799 (Ch) at [29] to [32]. I do not consider, however, there is any great difficulty here in determining that the claimant is seeking to add two new causes of action. In the case of the New Logos and Graphics, they were not broadcast for first time until after the claim was issued and in the case of the Film claim, the law was changed to permit such a claim after the same date and it is a distinct claim of a different nature to the claims pursued previously. Ms Lane relied upon the general indorsement on the claim form...
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