„(…) LORD JUSTICE ROCH:
This is the judgment of the Court.
The plaintiff, Mr P., is an architect. In 1986, he completed his diploma
in architecture at the Architectural Association School of Architecture
in London. Between December 1985 and June 1986, he undertook an
architectural project for his diploma in which he produced drawings,
detailed plans and paintings of a design for a Town Hall for the Docklands
Development in London. He claims, so far as is relevant to these
proceedings, that he is the owner of United Kingdom and Dutch copyright
in his Docklands plans.
Between 1990 and 1993, the City of Rotterdam, the fourth defendants,
had constructed in Rotterdam a public building known as the Kunsthal.
The first defendants, O. A. Partnership Limited, were appointed as civil
engineer for the construction of the Kunsthal. The third defendants and
their director Mr K., the second defendant, were the architects who
designed the building. In the Autumn of 1992, Mr P. visited Rotterdam as
a tourist. He saw the Kunsthal in the course of construction and believed
that features of its design had been copied from his Docklands plans. In
these proceedings, he claims that each of the defendants has infringed
his United Kingdom or Dutch copyrights. It is accepted on his behalf that
a damages claim for infringement of his United Kingdom copyright would
be statute barred, although the possibility of claiming an injunction is
forensically retained. The main claim is for infringement of his Dutch
copyright.
The first defendants are domiciled in the United Kingdom. Mr K. may
be domiciled in the United Kingdom. The third and fourth defendants
are domiciled in the Netherlands. Mr P. claims that the English courts
have jurisdiction in relation to his claims against those defendants not
domiciled in the United Kingdom under Article 6(1) of the Brussels
Convention. This provides that a person domiciled in a Contracting State
may be sued, where he is one of a number of defendants, in the courts
for the place where any one of them is domiciled.
The plaintiff's writ and statement of claim were issued on 25 September
1996. The statement of claim was amended on 30 October 1996. The
second, third and fourth defendants served a defence dated 13 November
1996 and the first defendants filed a defence dated 29 November 1996.
Each of them denied infringement of the plaintiff's copyright. There
were requests for particulars of the amended statement of claim and
the plaintiff eventually, on 31 January 1997, served amended particulars
of similarity, giving particulars of the similarities which he alleged
between his copyright works and the defendants' plans. Meanwhile on
16 December 1996 the second, third and fourth defendants had issued
a notice of motion seeking to strike out those parts of the amended
statement of claim which concerned alleged infringements of Dutch
copyright on the ground that these were not acts which constitute torts
actionable under English law. The notice of motion also invited the
court to strike out the whole of the amended statement of claim under
its inherent jurisdiction on the ground that the plaintiff's allegations
were speculative. The notice of motion also applied to strike out those
paragraphs of the amended statement of claim which alleged breach
of United Kingdom copyright on the ground that these allegations were
statute barred. By summons dated 19 December 1996, the plaintiff
applied to strike out allegations in each of the defences which asserted
that infringement of Dutch copyright is not actionable as a tort under
English law.
These matters came before Mr Justice Lloyd on 12 February 1997. In his
judgment given on 7 March 1997, the judge declined to strike out the
allegations of infringement of Dutch copyright on the ground that they
were not justiciable under English law. But he upheld the defendants'
submission that on the facts alleged the plaintiff's claim was bound to fail.
He held that the degree of similarity between the plaintiff's Docklands
design and the Kunsthal drawings was not sufficient to give rise to
an inference of copying. He considered that the claim was based on
speculation. He accordingly ordered the whole claim against each of the
defendants to be struck out.
The plaintiff appeals, with leave granted on paper by Lord Justice Aldous,
against the judge's decision that on the facts which he alleged his claim
was bound to fail and should be struck out. The second, third and fourth
defendants by respondents' notices contend that the judge's order should
be affirmed on the additional ground that the alleged infringements of
Dutch copyright against them are not actionable torts under English law.
This judgment deals with each of these contentions.
Abuse of Process
The plaintiff's pleaded case relies on two limbs. He alleges, first, that
the second and third defendants had an opportunity to take copies of his
Docklands plans and he asks the court to infer that they did so. Secondly,
he alleges that there are remarkable similarities between his plans and
the Kunsthal drawings.
The plaintiff pleads that one of his tutors at the Architectural Association
School of Architecture was A. W. who also worked for the third defendants
in 1986. The plaintiff says that, for approximately six weeks in the
autumn of 1986, he was employed in London by the third defendants at
the invitation of Mr W. to complete the construction of a model. After he
had been so employed for about a week, he was asked by Mr W. to take
his Docklands plans to work so that Mr W. might show them to another
employee of the third defendants. The plaintiff took his Docklands plans
to the third defendants' London office. Mr W. asked him to leave them
there over the weekend, and the plaintiff agreed to do so. He retrieved his
plans from the third defendants' offices on the following Monday morning,
noticing that the detailed plans had been physically detached from the
paintings and drawings. He cannot prove directly that they had been
copied, but he alleges that the second defendant or an employee of the
third defendant not only had the opportunity to, but did in fact, copy his
plans over that weekend.
The second, third and fourth defendants plead that the third defendant is
a Dutch Company incorporated in 1988 to continue the work of a Dutch
partnership called "the O. for M. A." based in Rotterdam ("OMA"). The
second defendant was a partner in OMA, which had been founded in 1979,
and is also a director of the third defendants. The second defendant was
not a partner in a different firm, also called "the O. of M. A.", founded in
1975 in London. The two firms were separate and carried on separate
work. The London firm and OMA were not the same legal person. Mr
W. worked on a freelance basis for the London firm and the defendants
understand that for a short period in 1986 the plaintiff did temporary
freelance work for the London firm. In his judgment, the judge noted
that there would be a dispute about the plaintiff's allegations that the
second and third defendants had access to his drawings, but he assumed
in the plaintiff's favour for the purposes of the matters before him that
the plaintiff's allegations about access to the drawings was true. This was
of course the correct approach, since striking out applications normally
proceed on the basis that pleaded allegations are capable of being
established. The assumption must extend to one that the second or third
defendants had a practical opportunity to have access to the plaintiff's
plans whatever the precise relationship may have been between the
English and the Dutch OMA.
Since this part of the defendants' application was made under the courts'
inherent jurisdiction, they were entitled (as they would not have been if
the application had been only under Order 18 rule 19(1)(a)) to tender
affidavit evidence. The application was supported by Ian Starr's first
affidavit, which maintained that the plaintiff's allegations were based on
pure speculation. At the time of his affidavit, the plaintiff had been asked
to particularise the factual basis of his allegation of infringement. There
had been correspondence between solicitors but no proper particulars
had been supplied. Subsequently, the plaintiff did provide particulars
and amended particulars of similarity which the defendants said needed
further explanation. There was a meeting on 30 January 1997 at
which the plaintiff gave explanations of his allegations of similarity to
representatives of the defendants' solicitors. Copies of the plaintiff's
Docklands plans and of the deposited Kunsthal plans were annotated by
reference to the amended particulars of similarity to explain what was
alleged.
The only evidence before the judge on behalf of the plaintiff was an
affidavit of his then solicitor. The defendants, however, having received
the explanations given at the meeting on 30 January 1997, served a
long affidavit of Mr K.. This was served on the plaintiff's solicitors about
five days before the hearing before the judge. It exhibited relevant parts
of the plaintiff's drawings and (…) a sketch JKM 9; and copies of the
third defendants’ Kunsthal drawings, V-02A, V-03A, V-04A and V-08A
whose scale was 1:200. The versions exhibited included those which
had been annotated at the meeting on 30 January 1997. Mr K. denied
any allegation that he copied any of the plaintiff's drawings in any way.
He said that any degree of similarity between the drawings was due to
the school of architecture to which the designs belong. The plaintiff had
explained at the meeting on 30 January 1997 that the allegations related,
not to full scale measurements, but to exact copying of dimensions from
his 1:250 scale drawings into the defendants 1:200 scale drawings, thus
treating the drawings purely as graphics and disregarding the difference
in scale. At the hearing before the judge, the plaintiff did not tender any
evidence in answer to Mr K.s' affidavit, nor was there any application for
an adjournment to enable him to do so. Submissions before the judge
proceeded by reference to the amended particulars of similarity and by
comparing the two sets of drawings exhibited to Mr K.s' affidavit.
In his judgment, the judge gave detailed consideration to the allegations
of similarity, and their rebuttal. He described the two buildings shown on
the respective drawings in these terms:
The Kunsthal is a more or less square building, at the southern end
of a park called Museumpark. It abuts, on the south, onto a dyke, the
Westseedijk. More or less parallel with the dyke there is a service road
which runs through the building. The public access to the building is
from the north, from the Museumpark (hence Parklevel). The public
gains access at a point about one third along the northern side from the
west, and ascends a ramp of constant width as far as the middle of the
building, where the ticket office and access to the principal areas within
the building are to be found. The ramp continues as far as the southern
end of the building, across the service road. At the lower level, – 1, which
is slightly lower than the level of the road, but in spaces at least partly
open to a higher level, there are a large, more or less square exhibition
space, on the eastern side of the building, and a cafe/restaurant on the
western side, rectangular in shape. Intruding into the space about the
cafe/restaurant, at a level above that of the ticket office, is a balcony
which forms the beginning of an angled ramp, higher than the central
access ramp, and parallel to it in cross-section, but at a different angle
from it in plan, which comes out at the roof level and constitutes at least
in part a roof garden. At the highest level (for which I have only the
cross-sections, not any plans) the building seems to be continuous across
the service road and thus joins the part of the building to the south of
the service road. At a lower level the continuation of the access ramp
provides a sort of bridge over the service road. On the west side of the
building, about the cafe/restaurant and its kitchen and bar, there is a
further ramp rising to the north, and also of constant width, from the level
of the service road at the south to about level + 1 at the northern end
of the building (best seen in cross-section A-A on plan V-08A – exhibit
RLK12 – but also seen in part on plan V-04A – exhibit RLK11). The second
defendant explains in his affidavit that this is the auditorium.
The plaintiff's Docklands town hall would have been a broadly rectangular
construction, next to the river and separated from it by a promenade,
but with a jetty for access by boat. At ground level it consists largely of
supporting structures below the main structure at a higher level, which
itself is surmounted by a large tower over part of it. The drawings I have
for this are plans at ground level and main deck level, two cross-sections
and an overall impression from the north.
At the main deck level there is, to the east, a rectangular area which
includes two magistrates' courts and associated areas. To the west of this
is, to the north, the access to the building, starting at ground level, by
way of an uncovered ramp widening as it rises to the main deck level to
a point about half way into the building on the north-south axis. To the
south of this is a conference chamber/cinema, also rising to the south and
widening, and protruding somewhat beyond the rest of the south wall of
the building. (…)
Paragraph 1 of the plaintiff's amended particulars of similarity was a
general allegation that:
The plaintiff's copyright works depict a building (a) comprising a pedestal
and slab; and (b) located on the intersection of two axes, one being
a ramp running into the building and the other a promenade running
parallel to the river. The Kunsthal is also a building (a) comprising a
pedestal and a slab; and (b) located on the intersection of two axes, one
being a ramp running into the building and the other a service road.
Mr K. in his affidavit took issue with this, saying that the service road,
which runs through the Kunsthal at a low level, is not so significant a
feature as the relationship between the two opposed ramps, one running
not just into but through the building, and the other rising in the opposite
direction, being the auditorium. Of this the judge said that he could not
himself see a similarity such as the plaintiff here alleged. He concluded
that he could not accept that the overall concept of the two designs
showed any sufficient similarity as to raise an inference of copying.
Paragraphs 2 and 4 to 7 of the particulars of similarity allege that each
building comprised three basic elements: a rectangular volume, a
triangular volume and a square volume. The judge acknowledged that
there was a rectangular element and a square element in each design,
but pointed to differences in their relationship and to other features
separating them on each of the plans. Of the triangular elements the
judge said:
(…) I do not accept that there is a triangular element in the third
defendant's design comparable to, and capable of being regarded as
resembling and copied from the ramp and the cinema in the plaintiff's
drawing. There are diagonal elements, but the attempt to make out a
comparable triangular element in the Kunsthal is artificial.
The judge considered in some detail two further allegations of similarity
concluding that they were wholly unconvincing (…). He concluded:
(…) I am satisfied that the claim is as much based on speculation and
surmise as the claims that were struck out in The Upjohn Company v. T.
Kerfoot & Co. Ltd [1988] F.S.R. 1, A-Z Couriers Ltd v. Comspec Computer
Software Ltd (unreported, November 9, 1988) and AM Computer
Technology Ltd v. 4-Sight Ltd (reported, January 14, 1996). Just as in
those cases, the claim is one which cannot succeed and ought therefore to
be struck out as an abuse of process.
In this Court, the plaintiff applied for leave to adduce additional evidence,
which included: (a) his own second affidavit which, among other things,
explained the details of his allegations of similarities in the plans; (b) a
portfolio of 18 pairs of drawings, each pair consisting of a part of his own
Docklands drawings overlaid with a transparency of what he alleged to be
a comparable part of the Kunsthal drawings; and (c) an expert's report
of Frederick Hill, among whose qualifications is that of Fellow of the Royal
Institute of British Architects, expressing opinions about the drawings
which are the subject of this dispute.
Order 59 rule 10(2) gives the Court of Appeal power to receive further
evidence on questions of fact
... but, in the case of an appeal from a judgment after trial or hearing of
any cause or matter on the merits, no such further evidence (other than
evidence as to matters which have occurred after the date of a trial or
hearing) shall be admitted except on special grounds.
For there to be "special grounds", the conditions referred to in Ladd
v. Marshall [1954] 1 W.L.R. 1489 must be satisfied. The first of those
conditions is that it must be shown that the evidence could not have
been obtained with reasonable diligence for use at the trial. Mr Floyd
submits, by reference to the decision of the House of Lords in Langdale
v. Danby [1982] 1 W.L.R. 1123, that the hearing before Mr Justice Lloyd.,
which resulted in the plaintiff's claim being struck out on the basis that
on the facts it was bound to fail, was a hearing on the merits and that
accordingly the Ladd v. Marshall conditions are to be applied. Mr Floyd
submits that the plaintiff came nowhere near satisfying the first Ladd v.
Marshall condition. All the additional evidence could have been obtained
with reasonable diligence. This was plainly so of the plaintiff's own
evidence and his portfolio of drawings. (…)
We do not need to decide these matters in this appeal because, in our
judgment, subject to one gloss, the plaintiff should not be permitted
to adduce the additional evidence even upon the more liberal test
propounded by Miss Clark. We are satisfied that the evidence was
available, or could readily have been available, for the hearing before Mr
Justice Lloyd. If time was a problem, the plaintiff could have applied for
an adjournment. We are also satisfied that the plaintiff's lawyers probably
took a conscious decision not to seek to adduce additional evidence and
not to apply for an adjournment.
The gloss is that we consider that the plaintiff's portfolio of drawings is
receivable, not as additional evidence, but as explanation of counsel's
submission on behalf of the plaintiff for which leave is not needed.
It is not usually possible to allege copying other than as a deduction
by inference from all the surrounding circumstances. In Copinger and
Skone James on Copyright (13th edition, 1991), it is said on page 168 at
paragraph 8-13:
The proper test, in all cases, probably involves four propositions: (1)
in order to constitute reproduction within the meaning of the Act there
must be (a) a sufficient degree of objective similarity between the two
works, and (b) some causal connection. (2)... (3) Where there is a
substantial degree of objective similarity, this, of itself, will afford prima
facia evidence to show that there is a causal connection between the
plaintiff's and the defendant's work; at least it is a circumstance from
which the inference may be drawn. (4) The fact that the defendant denies
that he consciously copied affords some evidence to rebut the inference
of causal connection arising from the objective similarity, but is in no way
conclusive. Thus if there is a sufficient similarity in the plaintiff's work and
the defendant's, and the defendant has had an opportunity to copy the
plaintiff's work directly or indirectly, this will establish a prima facia case
of copying which the defendant has to answer.
The critical question remains whether the judge was right to conclude that
the inferences necessary for the plaintiff's case to succeed could never
be drawn. In our judgment, he was not. We have, as we say, had the
advantage of the plaintiff's portfolio which we are sure explains his case
forensically far more clearly than did the material before the judge.
The essential case is that there are so many examples where dimensions
and their shapes coincide on drawings of a different scale that the
inference should be drawn that the defendants used a graphic copy of
the plaintiff's plans as a starting point for their own plans. The allegation
is not, as we understand it, limited to dimensions in plan only but to the
conceptual juxtaposition of shapes and spaces. It is a positive part of the
plaintiff's case for graphic copying that the two sets of drawings are at
different scales. The portfolio seeks to show that both the Docklands Town
Hall and the Kunsthal have the same superstructure in plan. Portfolio
plans A seek to show that the square from the plaintiff's plans has been
reproduced exactly for the square exhibition space in the Kunsthal.
Portfolio plans B seek to demonstrate the same for the rectangle. Portfolio
plans D seeks to show that the overall square of the Kunsthal plan has
been taken from the ground floor plan to the Docklands Town Hall both
in length and width. Portfolio plans E to R seek to demonstrate that other
dimensions or shapes in the Kunsthal design derive dimensionally from
equivalent features in the plaintiff's Docklands plans.
Portfolio plans C seek to show that a triangular element in the Kunsthal
plans is congruent with a triangle in the plaintiff's Docklands plan. This
was one of the elements which the judge considered in detail and found
quite unpersuasive. (…)
But we have all reached the clear conclusion, with the aid of the plaintiff's
portfolio, that the plaintiff's allegations of similarity are not so fanciful that
his claim as a whole should be regarded as speculative. The allegations
are amenable, in our view, to opinion evidence. But we think that
expert evidence may be admissible in this case, for instance, to explain
the plans; to point out similarities and dissimilarities; to explain how
architects proceed conceptually and how they produce their plans and
drawings; and to explain generally what factors bear upon the shapes and
dimensions of buildings such as these (see Deeks v. Wells The Times, 4
November 1932 and Bauman v. Fussell [1978] R.P.C. 485 at 489).
We consider, therefore, the judge's decision that the plaintiff's claim was
bound to fail on the facts was wrong and should be reversed.
Actionability
We turn, therefore, to the respondents’ contention, raised by notices
served under Order 59 rule 6 of the Rules of the Supreme Court 1965,
that, nevertheless, the judge’s order should be affirmed on the ground
that the infringements of Dutch copyright alleged against the respondents
are not actionable torts under English law.
In addressing this contention it is necessary to keep in mind that the acts
alleged to be infringements of the plaintiff’s Dutch copyright were done in
Holland. Further, those acts, because they took place in Holland, could not
constitute infringements of the plaintiff’s United Kingdom copyright. Those
acts are not actionable under English domestic law.
The relevant inquiry, therefore, is whether (assuming that the English
court would otherwise have jurisdiction to hear proceedings against
the relevant defendants) English law permits the English court, in the
present context, to entertain a claim based on the infringement, by acts
done in Holland, of a local right conferred in Holland by Dutch law. That
is an inquiry which must be answered by reference to English private
international law rules; in particular, by reference to those rules which –
in the light of the provisions of the Civil Jurisdiction and Judgments Act
1982 and the Conventions which, by section 2(1) of that Act, have the
force of law in the United Kingdom – govern the resolution of disputes
in civil and commercial matters between persons domiciled in the states
(„Contracting States“) which are parties to those Conventions.
If the English court is permitted by English private international law rules
to entertain a claim based on the infringement, by acts done in Holland,
of a local right conferred in Holland by Dutch law, then it must follow as
a necessary corollary that the same rules permit, or require, the English
court to apply Dutch law in order to determine whether the claim is well-
founded.
Subject to an argument based on the provisions of Article 5(2) of the
Berne Convention for the protection of literary and artistic works, the
respondents accept, as they must, that the English court has jurisdiction
to hear an action against a defendant who is domiciled in England in
respect of the infringement in Holland of a Dutch copyright. That must
follow from the provisions in Articles 2 and 16(4) of the 1968 Convention
on jurisdiction and the enforcement of judgments in civil and commercial
matters („the Brussels Convention“). The relevant provisions are:
Article 2. Subject to the provisions of this Convention, persons domiciled
in a Contracting State shall, whatever their nationality, be sued in the
courts of that State.
Article 16. The following courts shall have exclusive jurisdiction,
regardless of domicile:
(4) in proceedings concerned with the registration or validity of patents,
trade marks, designs, or other similar rights required to be deposited or
registered, the courts of the Contracting State in which the deposit or
registration has been applied for, has taken place or is under the terms of
an international convention deemed to have taken place;
It is not suggested that the present proceedings (being proceedings
in respect of copyright in which no question of deposit or registration
arises) fall within Article 16(4). It follows that the English court must
accept jurisdiction in the proceedings against the first defendant (who is
domiciled here) and, perhaps, also against the second defendant (who
may be domiciled here) – see paragraph 78 of the Schlosser Report on
the Accession in 1978 of the United Kingdom to the Brussels Convention.
Further, Article 6(1) provides that a person domiciled in a Contracting
State may be sued, where he is one of a number of defendants, in the
courts for the place where any one of them is domiciled. It is accepted
that the third and fourth defendants – and also the second defendant, if
not domiciled here – are domiciled in Holland. It follows that the English
court must accept jurisdiction against those defendants also.
Nevertheless, it is submitted that jurisdiction is one thing; justiciability
or actionability is another. It is not enough for the plaintiff to establish
that he can bring proceedings against the defendants in the English court.
Where the wrong of which he complains has been committed outside
England, he must also establish that the English court, applying its own
conflict of laws rules, will regard his complaint as giving rise to a cause of
action that it will recognise and entertain.
The judge accepted that, but for the Brussels Convention, an action in
the English courts which was founded on an alleged breach of Dutch
copyright must be struck out as non-justiciable on one or both of two
grounds. First, because the rule in The British South Africa Company
v The Companhia de Moçambique and others [1893] AC 602 required
that a claim for breach of a foreign statutory intellectual property right
must be regarded as local and so could not be entertained by an English
court; and, secondly, because such a claim could not satisfy the double-
actionability rule derived from Phillips v Eyre (1870) LR 6 QB 1. But he
was satisfied that to apply those rules in a case where the English court
was given jurisdiction by Articles 2 and 6 of the Brussels Convention
would be inconsistent with, and would impair the effectiveness of, the
Convention; with the consequence that the English conflict of laws rules
must be regarded as overridden by the Convention in such a case and so
inapplicable.
Non-justiciability under the Moçambique rule
On its face the rule in the Moçambique case does not provide self-evident
support for the proposition that a claim for breach of a foreign statutory
intellectual property right cannot be entertained by an English court. It
is convenient to take the statement of the rule, as it stood before the
Civil Jurisdiction and Judgments Act 1982, from the judgments of the
House of Lords in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd
[1979] AC 508. Both Lord Wilberforce (with whom Lord Salmon and Lord
Keith expressed agreement) and Lord Fraser were content to adopt the
formulation which appeared as rule 79 in Dicey & Morris on Conflict of
Laws (9th Edition, 1973):
Rule 79 Subject to the exceptions hereinafter mentioned, the court has
no jurisdiction to entertain an action for (1) the determination of the title
to, or the right to possession of, any immovable situate out of England
(foreign land); or (2) the recovery of damages for trespass to such
immovable.
The exceptions are not material in the present context. The second limb
of the rule was abrogated by section 30 of the 1982 Act:
30(1) The jurisdiction of any court in England and Wales or Northern
Ireland to entertain proceedings for trespass to, or any other tort
affecting, immovable property shall extend to cases in which the property
in question is situated outside that part of the United Kingdom unless the
proceedings are principally concerned with a question of the title to, or
the right to possession of that, property.
(2) Subsection (1) has effect subject to the 1968 Convention and the
Lugano Convention and to the provisions set out in Schedule 4.
Article 16(1) of the Brussels Convention gives exclusive jurisdiction, in
proceedings which have as their object rights in rem in, or tenancies of,
immovable property, to the courts of the Contracting State in which the
property is situated. The position as it now is, following the 1982 Act,
is that (subject to the Convention) the English court has jurisdiction to
entertain proceedings for trespass to land, wherever situate, unless the
proceedings are principally concerned with a question of title or the right
to possession – see rule 116 in the 12th Edition (1993) of Dicey & Morris.
Nevertheless, in order to evaluate the arguments put to us on behalf of
the respondents, it is necessary to examine in some detail the grounds
upon which the House of Lords held, in the Moçambique case, that an
English court had no jurisdiction to entertain an action for trespass to
foreign land. The claims, as originally advanced in that case, were (i) for
a declaration that the plaintiff company and others (respondents to the
appeal) were lawfully in possession of certain lands, mines and mining
rights in South Africa, (ii) for an injunction restraining The British South
Africa Company from continuing to trespass in respect of those lands,
mines and mining rights and (iii) for damages for trespass. There was no
dispute that, as the law stood before the procedural reforms introduced
by the Judicature Act 1873, those claims could not have been advanced
in an English court. The issue was whether that bar was substantive or
procedural. As Lord Herschell LC explained, [1893] AC 602 at page 617:
The majority of the Court of Appeal (Lord Esher MR dissenting) held that,
the requirement that a „local“ action must be tried at a local venue having
been abolished by rules made under the Judicature Acts, the Supreme
Court of Judicature had jurisdiction to entertain the action. But Lord Esher
MR, in a dissenting judgment which was expressly approved by Lord
Halsbury in the House of Lords and which was much relied upon by the
High Court of Australia in Potter v The Broken Hill Proprietary Company
Limited (1906) 3 CLR 479, defined the question in these terms, [1892] 2
QB 358 at pages 395-6:
With regard, then, to acts done within the territory of a nation, all are
agreed that such nation has without more jurisdiction to determine the
resulting rights growing out of those acts; but, with regard to acts done
outside its territory it has no jurisdiction to determine the resulting rights
growing out of those acts, unless such jurisdiction has been allowed to it
by the comity of nations. After an extensive review of the principles set
out in Story’s Conflict of Laws, Lord Esher MR reached the conclusion, at
page 398, that an action for trespass – in the old form, an action quare
clausum fregit – could not be entertained by an English court in respect of
an alleged wrongful entry on land situated abroad:
... and that the ground of the inability is, not that by the procedure
regulating English litigation there can be no local venue given for the
purpose of trial, but that no consent of other nations by way of comity to
the exercise of such jurisdiction can be inferred, and that all countries,
including England, have consented or agreed that such an action is a
real or mixed action, as distinguished from a personal action – that
it is an action which regards the rights resulting from the ownership,
by possession or otherwise, of the immovable property, the land, and,
therefore, that any claim in respect of any alleged injury of any kind to
those rights to land cannot be tried in any nation but that in which is the
situs of the land – i.e. in which the land is situated.
On the appeal to the House of Lords the claims for a declaration and
injunction were abandoned. Lord Herschell LC identified the principal
question as „whether the Supreme Court of Judicature has jurisdiction to
try an action to recover damages for trespass to lands situate in a foreign
country“. The House of Lords rejected the contention that the refusal of
the English courts, prior to the Judicature Acts, to exercise jurisdiction in
actions for trespass to lands situate abroad was based on the procedural
requirement – abolished by Order XXXVI rule 1 of the new rules – that
an action which was local in nature must be tried at a local venue. Lord
Herschell LC said this, at page 629:
My Lords, I have come to the conclusion that the grounds upon which
the Courts have hitherto refused to exercise jurisdiction in actions of
trespass to lands situate abroad were substantial and not technical, and
that the rules of procedure under the Judicature Acts have not conferred a
jurisdiction which did not exist before.
The other members of the House agreed. The conclusion is clear enough:
there were substantive grounds for refusing to entertain an action for
trespass to foreign land. What is, perhaps, less clear is what the House of
Lords thought those grounds were.
The Moçambique case was reconsidered, some 85 years later, by the
House of Lords in Hesperides Hotels v Aegean Turkish Holidays Ltd,
[1979] AC 508. At page 543 Lord Fraser expressed the view (not
expressly endorsed by the other four members of the House) that:
In Tyburn Productions Ltd v Doyle [1991] Ch 75, the only English case
cited to us which provides direct support for the proposition that a claim
for breach, outside England, of a foreign intellectual property right cannot
be entertained by an English court, Mr Justice Vinelott, at page 80H,
identified the central issue before him as:
... whether the distinction between transitory and local actions, which
was considered by the House of Lords in British South Africa Company
v The Companhia de Moçambique and others [1893] AC 602, was
fundamental to that decision...; or whether that distinction was, as it
were, an historical prologue setting out the basis of the narrower rule that
the English courts will not entertain proceedings raising questions as to
the title to, or for damages for trespass to land.
It is necessary, therefore, to understand what the distinction between
local and transitory actions was. Lord Herschell LC, when tracing the
historical antecedents of that distinction in the Moçambique case, at
[1893] AC 602, 617-8, had pointed out that originally it was necessary
to state the true place, or venue, of every fact in issue – because each
fact in issue would have to be determined by a jury drawn from the place
where the fact was said to have arisen. Lord Herschell LC went on, at
page 618:
When juries ceased to be drawn from the particular town, parish, or
hamlet where the fact took place, that is, from amongst those who were
supposed to be cognisant of the circumstances, and came to be drawn
from the body of the county generally, and to be bound to determine the
issues judicially after hearing witnesses, the law began to discriminate
between cases in which the truth of the venue was material and those in
which it was not so. This gave rise to the distinction between transitory
and local actions, that is between those in which the facts relied on as
the foundation of the plaintiff’s case have no necessary connection with
a particular locality and those in which there is such a connection. In the
latter class of actions the plaintiff was bound to lay the venue truly; in the
former he might lay it in any county he pleased.
Lord Herschell LC observed, at page 621:
In saying that we may not try actions here arising out of transactions
abroad which are in their nature local, I do not think that the learned
judge was referring to the mere technical difficulty of there being no
venue in this country in which these transactions could be laid, but to the
fact that our courts did not exercise jurisdiction in matters arising abroad
‘which are in their nature local’. The case of Doulson v Matthews has ever
since been regarded as law, and I do not think it has been considered
as founded merely on the technical difficulty that in this country a local
venue was requisite in a local action.
Lord Halsbury took the same view. At page 633 he said this:
... in Doulson v Matthews, Lord Kenyon and Buller J, in judgments which
were supposed to have settled the law, held that as a matter of settled
practice actions of trespass to land were local. In the opinions of the
judges delivered to your Lordships House by Willes J it is stated, without
any qualification, that an action of trespass to land abroad did not lie.
It is plain that both Lord Herschell LC and Lord Halsbury were satisfied
that there was ample authority in past decisions for the rule that the
English court did not entertain an action – or, as Lord Herschell LC put
it, did not exercise jurisdiction – in a case where the cause of action
depended on some matter, arising outside England, which was local in
nature. But they did not leave the matter there. They each went on to
consider the basis for that rule. Lord Herschell LC said this, at page 622:
The distinction between matters which are transitory or personal
and those which are local in their nature, and the refusal to exercise
jurisdiction as regards the latter where they occur outside territorial
limits, is not confined to the jurisprudence of this country. Story, in his
work on the Conflict of Laws (s.551) after stating that by the Roman
law a suit might be brought, either where property was situate or where
the party sued had his domicile, proceeds to say that „even in countries
acknowledging the Roman law it has become a very general principle
that suits in rem should be brought where the property is situate; and
this principle is applied with almost universal approbation in regard to
immovable property. The same rule is applied to mixed actions, and to all
suits which touch the realty“
He then referred, at page 623, to passages at sections 553 and 554 in
Story’s Conflict of Laws (8th Edition, 1883):
In section 553, Story quotes the following language of Vattel [Vattel’s
Law of Nations (1797)]: „The defendant’s judge“ (that is, the competent
judge) says he, „is the judge of the place where the defendant has his
settled abode, or the judge of the place where the defendant is when
any sudden difficulty arises, provided it does not relate to an estate in
land, or to a right annexed to such an estate. In such a case, as property
of this kind is to be held according to the laws of the country where it
is situated, and as the right of granting it is vested in the ruler of the
country, controversies relating to such property can only be decided in
the state in which it depends.“ He adds, in the next section: „It will be
perceived that in many respects the doctrine here laid down coincides
with that of the common law. It has already been stated that by the
common law personal actions, being transitory, may be brought in any
place where the party defendant can be found; that real actions must
be brought in the forum rei sitae; and that mixed actions are properly
referable to the same jurisdiction. Among the latter are actions for
trespasses and injuries to real property which are deemed local; so that
they will not lie elsewhere than in the place rei sitae.“
He observed:
The doctrine laid down by foreign jurists, which is said by Story to
coincide in many respects with that of our common law, obviously had
relation to the question of jurisdiction, and not to any technical rules
determining in what part of country a cause was to be tried.
It is, we think, plain that Lord Herschell LC was concerned with the
question of comity. He was concerned that the rules as to jurisdiction
under English law should conform to generally accepted principles of
private international law. He said this, at page 624:
The question what jurisdiction can be exercised by the Courts of any
country according to its municipal law cannot, I think, be conclusively
determined by reference to principles of international law.
Lord Halsbury, at page 631, followed Lord Herschell LC in placing reliance
upon Story and Vattel:
There is a concurrence of opinion of most jurists, if not all, as to the
difference between what we call realty and personalty, by whatever
words those things are distinguished in the jurisprudence of foreign
countries, which affects materially the right to try. Vattel distinguishes the
questions which may properly be tried where defendant has his settled
place of abode, but always subject to this, that if the matter relates to an
estate in land or to a right annexed to such an estate, „in such a case,
inasmuch as property of the kind is to be held according to the laws of the
country where it is situated, and as the right of granting it is vested in the
ruler of the country, controversies relating to such property can only be
decided in the state in which it depends.“ I am quoting Story’s version of
Vattel’s language. That very learned lawyer proceeds to point out that the
distinction between local and transitory actions is one which is known to
the common law.... I think that what Story J intended to refer to was the
actual system of our common law at the time he wrote; and undoubtedly
the current of authority at that time was all in one direction. Although
the original state of our law may not be very important in respect of the
controversy now before your Lordships, there is one view of it that seems
to me to throw a considerable light upon the question now in controversy.
Lord Halsbury then described the development of the fiction which
enabled the plaintiff to assert without contradiction that, where the actual
place was not material, some fact had taken place in England; but went
on, at page 632:
But wherever the place was material, as the unvarying current of
authorities establishes that it was in all controversies relating to land, the
defendant might traverse the place, and, even if he did not, if it appeared
in proof that the place was out of England, the plaintiff was nonsuited.
As we have already mentioned, Lord Halsbury expressly adopted the
reasons given by Lord Esher MR in the Court of Appeal – to which we
have referred. Lord Morris agreed with Lord Herschell LC; and the fourth
member of the House, Lord Macnaghten, agreed with both judgments.
It is, we think, clear from an analysis of the judgments in the Moçambique
case that the House of Lords treated the question whether the English
courts should entertain an action for trespass to foreign land as one of
justiciability.
The second limb of the rule in the Moçambique case was much criticised
– see the observations of Lord Wilberforce (at page 536C-D) and Lord
Frazer (at pages 543E-544D) in Hesperides Hotels v Aegean Turkish
Holidays Ltd, [1979] AC 508. Although recognising the force of that
criticism, the House of Lords declined to reconsider the rule. They thought
that change, if desirable, should be left to Parliament.
The extension of the Moçambique rule to intellectual property disputes:
the Australian cases
The English cases
The respondents place reliance on the decision of Mr Justice Vinelott
in Tyburn Productions Ltd v Doyle [1991] Ch 75. That is the only
decision cited to us which could be said to provide direct support for
the proposition that a claim for breach, outside England, of a foreign
intellectual property right cannot be entertained by an English court. The
plaintiff sought a declaration from the English court that the defendant
(who claimed to be entitled to copyright in the works of her father,
the late Sir Arthur Conan Doyle) had no rights under the copyright,
unfair competition or trademark laws of the United States which would
entitle her to prevent the distribution of a television film, produced by
the plaintiff, which featured the characters „Sherlock Holmes“ and „Dr
Watson“. The defendant applied to strike out the proceedings on the
ground that they disclosed no cause of action. Mr Justice Vinelott acceded
to the defendant’s application. His reasoning is, we think, adequately
summarised in the headnote:
... the distinction between transitory and local actions which precluded
English courts from entertaining questions as to the title, or of damages
for trespass to land abroad should be applied to intellectual property
rights so that an action relating to the copyright laws of a foreign state
was a local action, not justiciable in the English courts;...
Mr Justice Vinelott considered the passages in the speeches in the House
of Lords in British South Africa Co v Companhia de Moçambique and in
the judgments in the High Court of Australia in Potter v The Broken Hill
Proprietary Co Ltd to which we have already referred. He considered, also,
section 30(1) of the Act of 1982 but derived no assistance from it. He did
not, of course, find it necessary to consider the Brussels Convention. The
foreign state with which he was concerned (whether that be the United
States of America or one of the states within that country) was not party
to the Convention.
We do not find it necessary to decide whether Mr Justice Vinelott was
correct to take the view (if he did) that an action for alleged infringement
of a foreign copyright by acts done outside the United Kingdom in a state
not party to the Brussels Convention, in a case where no question as to
the validity or registration of the right was in issue, was not justiciable
in an English court. It is important to keep in mind that the question
which he actually had to decide was whether to make a declaration that
the defendant had no rights under the copyright, unfair competition
or trademark laws of the United States which would be infringed by
what the plaintiff was proposing to do. He was invited to investigate the
existence and validity of the rights claimed; not to decide whether there
had been an infringement of rights the existence and validity of which
were not in issue. He was, in our view, plainly correct to refuse to make
the declaration sought, for the reason given in the penultimate paragraph
of his judgment:
In the instance case there is no evidence that, if the validity of the rights
claimed were justiciable in the English courts, the decision of the English
courts would be treated as binding on any of the states of the United
States of America and it would in my judgment be an exercise in futility
to allow these claims, which raise complex issues which may require a
survey by the English courts with the assistance of experts of the laws of
each of the states of the United States of America, to continue.
We can derive little or no assistance from the decision in the Tyburn
Productions case on the question whether an action for alleged
infringement of a foreign copyright by acts done outside the United
Kingdom, in a case where the existence and validity of the right is not in
issue, is justiciable in an English court; and no assistance from that case
where the question arises in the context of acts done in a Contracting
State.
We were referred, also, to the decision of this Court in Molnlyke AB
v Procter & Gamble [1992] 4 All ER 47. The plaintiffs, who were the
registered proprietor of an English patent and the exclusive licensee
under that patent, brought proceedings against the defendants for alleged
infringement of that patent by acts done in England. In the course of
those proceedings the plaintiffs sought to join as a defendant a German
company – a member of the same group of companies as the existing
defendants – which was said to be engaged in the manufacture, in
Germany, of the infringing product. It was held that the plaintiffs were
entitled to rely on the provisions of Article 5(3) of the Brussels Convention
as a ground for joining the German company to an action in England,
provided that they could satisfy the English court that there was a serious
question which called for a trial. On the facts this Court was satisfied that
the plaintiffs had shown a good arguable case that the German company
and the first defendant had a common design to market product in the
United Kingdom which infringed the plaintiffs’ patent. But, in the course of
his judgment Lord Justice Dillon said this, at page 52f-j:
It is not in doubt that patent infringement falls within the rubric in art
5(3), matters relating to tort, delict or quasi-delict. It is also not in doubt
that, for the purposes of art 5(3), the ‘harmful event’ was the marketing
of the allegedly infringing nappies in England; so that the ‘harmful event’
occurred in England.
Infringement is not within the exclusive jurisdiction provisions of art 16,
para (4) of which refers to proceedings concerned with the registration or
validity of patents or similar rights. In these proceedings registration and
validity are not in issue.
But, from the nature of a United Kingdom patent, proceedings for
infringement of a United Kingdom patent can only be brought in a United
Kingdom court, in the present case the English court, and could only be
founded on infringement in England.
It was pointed out to us that it was on the basis of Lord Justice Dillon’s
observation in the Molnlyke case that this Court decided, in Boston
Scientific Limited v Cordis Corporation (unreported, 18 November 1977)
to refer to the European Court of Justice, pursuant to Article 177 of the
Treaty of Rome, the question whether:
In the case of patents granted pursuant to European applications
pursuant to the European Patent Convention, the provisions of Article
2 and/or 64 of the European Patent Convention [are] provisions which
govern jurisdiction in relation to particular matters (i.e. proceedings for
infringement of such patents) within the meaning of Article 57 of the
Brussels Convention?
We are satisfied that what led to the reference was the perception that,
in the light of Lord Justice Dillon’s observation that English patent law
was founded „on international convention not just European Community
Convention“, the question whether Article 64(3) of the European Patent
Convention – which requires that any infringement of a European patent
should be dealt with by national law – governed jurisdiction could not
be regarded as „acte clair“; so reversing the view which this Court had
expressed in Fort Dodge Animal Health Limited v Akzo Nobel NV [1998]
FSR 222, at page 242. We are not persuaded that this Court, in the
Boston case, intended to endorse the view that the English court could
not entertain a claim for the infringement of a German patent. Nor are
we persuaded that the view expressed, obiter, by Lord Justice Dillon in
the Molnlyke case in relation to patent infringement requires us to alter
the conclusion which we have reached as to the scope and effect of the
Moçambique rule.
The Berne Convention
Encouraged, perhaps, by the reference made by this Court in the Boston
Scientific case, the respondents contended that the provisions of the
Brussels Convention are excluded, by Article 57, from application to
copyright infringement by the provisions of Article 5(2) of the Berne
Convention for the protection of literary and artistic works. Article 5(2) of
the Berne Convention is in these terms:
Article 5(2) The enjoyment and exercise of these rights shall not be
subject to any formality; such enjoyment and such exercise shall be
independent of the existence of protection in the country of origin of
the work. Consequently, apart from the provisions of this Convention,
the extent of protection, as well as the means of redress afforded to the
author to protect his rights, shall be governed exclusively by the laws of
the country where protection is claimed.
Article 57(1) of the Brussels Convention provides that:
Article 57(1) This Convention shall not affect any conventions to which
the Contracting States are or will be parties and which in relation to
particular matters, govern jurisdiction or the recognition or enforcement
of judgments.
We note that, although the Berne Convention (unlike the European Patent
Convention) was in force at the time when the Brussels Convention came
into effect, it is not referred to in the Jenard Report in the commentary
under Article 57. We think that there is good reason for that. Article
5(2) of the Berne Convention does not purport to govern jurisdiction
in relation to infringement of copyright. „National law“, in the context
of Article 64 of the European Patent Convention, means the law of the
state in respect of which the patent is granted – see Article 64(1). But,
in relation to copyright, the question is not „in respect of which country
is the protection claimed“, but „where is the protection claimed“. The
protection is claimed in the country in which the proceedings are brought.
Article 5(2) requires that the extent of the protection to be afforded is
governed by the laws of that country. There is, of course, no reason
to assume that the laws of that country do not include its own rules of
private international law. What Article 5(2) does, in our view, is to leave
it to the courts of the country in which the proceedings are brought to
decide whether the claim for protection should be upheld. It does not
seek to confer jurisdiction on the courts of one country to the exclusion of
any other. We reject the submission that the Berne Convention excludes
the application of the Brussels Convention to proceedings in respect of
infringement of copyright.
The requirement of double-actionability
The difficulty, if the effect of the first limb of rule 203(1) requires the
English court to determine actionability by English domestic law in a case
like the present case, is illustrated by a passage from the judgment of
Sir Nicholas Browne-Wilkinson V-C in Def Lepp Music v Stuart-Brown
[1986] RPC 273. It was asserted in argument (although not, it seems,
pleaded or proved) that the acts of the sixth and eighth defendants would
constitute legal wrongs under the laws of Luxembourg and Holland. The
Vice-Chancellor rejected the submission that, in the light of what became
rule 203(1) – and was then rule 172 in the 10th Edition of Dicey & Morris
– that would be sufficient to support an action in England. He said this, at
page 276 line 35 ff:
The majority decision in Chaplin v Boys... seems to me to show that rule
172 is a rule for regulating the choice of law to be applied to the tort. In
cases brought in England under rule 172, the court generally gives effect
to the substantive law of England (lex fori) as opposed to the law of the
place where the act is committed (lex delicti): see per Lord Donovan page
383H; Lord Wilberforce page 385C, 387E and 389F; Lord Pearson page
400F. Having once applied rule 172 to establish which law is applicable
and found that the applicable law is the law of England, the question must
be whether under English law those acts constitute an actionable wrong.
If that were a correct analysis, the effect would be that the first limb of
Rule 203(1) imposed a requirement as to jurisdiction; and not simply a
rule for the choice of law. The view that the first limb of the rule does
impose a requirement as to jurisdiction had found expression in the
dissenting judgment of Lord Justice Diplock in Boys v Chaplin [1968] 2 QB
1 (CA), at page 38F-G:
This first condition states what is strictly a rule of jurisdiction comparable
to that whereby English courts decline jurisdiction over actions relating
to foreign land to which Willes J [ in Phillips v Eyre ] also refers in the
same passage. It is a rule of public policy that our courts do not hear and
determine liability for acts of a kind which are not regarded as giving rise
to liability in tort in England, notwithstanding that such acts give rise to
civil liability under a foreign system of law and could be the subject of a
foreign judgment which would be recognised here
But that view was plainly rejected by the House of Lords on the appeal,
[1971] AC 356.
Lord Wilberforce said this, at page 385B-C:
The first part of the rule – „actionable as a tort according to English law“.
I accept what I believe to be the orthodox judicial view that the first part
of the rule is laying down, not a test of jurisdiction, but what we now call
a rule of choice of law: is saying, in effect, that actions on foreign torts
are brought in English courts in accordance with English law.
In Red Sea Insurance Co Ltd v Bouygues SA [1995] AC 190 Lord Slynn,
delivering the
opinion of the Privy Council, described the first limb of the rule, at page
198G:
... as a starting point in the exercise, not of deciding whether the English
courts should have jurisdiction, but of deciding which law should be
chosen to determine the relevant issue or issues.
After an extensive review of the authorities, the academic writings and
the views of the Law Commission in England and the American Law
Institute, the Privy Council accepted in the Red Sea case that the choice
of the lex fori as the applicable law, was not an invariable rule. It was,
as indicated in the formulation which now appears as Rule 203(1), „the
general rule“ – or, as Lord Slynn put it, in the passage which we have
just cited, „a starting point“. The Privy Council accepted that English law
recognised that a particular issue between the parties to litigation may be
governed by the law of the country which, with respect to that issue, has
the most significant relationship with the occurrence and with the parties.
Further, they accepted, at page 206G-H, that:
... in principle the exception can be applied in an appropriate case to
enable a plaintiff to rely exclusively on the lex loci delicti.... though the
fact that the forum is being required to apply a foreign law in a situation
where its own law would give no remedy will be a factor to be taken into
account when the court decides whether to apply the exception.
In the present case, the plaintiff’s claim would be defeated if the court
were to refuse to apply the exception.
Conclusion
For the reasons which we have set out we are satisfied that the
Moçambique rule does not require the English court to refuse to entertain
a claim in respect of the alleged infringement of Dutch copyright; and
that, in those circumstances, the court is not required by the first limb
of the double actionability rule to hold that the claim is bound to fail
because the acts done in Holland cannot amount to an infringement of
United Kingdom copyright. It follows that we are not persuaded that the
judge’s order should be affirmed on the alternative ground advanced in
the respondents’ notice.
The need for a reference to the Court of Justice
It was submitted to us that the respondents’ notices raised questions
on which we should seek rulings from the Court of Justice under Article
177 of the EEC Treaty or under Article 3(2) of the 1971 Protocol to the
Brussels Convention. Those questions were not formulated; but, in
substance, they are (i) whether the rules of English private international
law derived from the Moçambique case and Phillips v Eyre are in conflict
with, and so must yield to, the basic principle, embodied in Article 2 of
the Brussels Convention, that a defendant must (subject to the special
jurisdictions of the Convention) be sued in the country in which he
is domiciled, and (ii) whether, by reason of Article 5(2) of the Berne
Convention, in conjunction with Article 57(1) of the Brussels Convention,
the Brussels Convention has no application to proceedings in respect of
infringement of copyright We have considered this submission in the light
of the guidance given by this Court in R v The Stock Exchange, Ex parte
Else (1982) Ltd [1993] QB 534, at page 545D-F. We are satisfied that it
would not be appropriate to make a reference in this case. We are not
persuaded that the first of the two questions identified above is, on a
true analysis, a question of European Community law or a question of the
interpretation of the Brussels Convention. In our view it is properly to be
regarded as a question which turns on the policy underlying the relevant
rules of English private international law. We regard the answer to the
second question as sufficiently clear to enable us to resolve it without the
need for a ruling from the Court of Justice.
In those circumstances this appeal must be allowed. (…)“