PRE-ACTION DISCLOSURE; NOT SO EASY

Pre-action disclosure: aid to settlement or a licence to fish?

Macdonald v French Connection Group plc, noted so far only on subscription service Lawtel, was a Chancery Division decision of Mr Justice Briggs last Friday, 14 July. In essence, Macdonald proposed to sue FC for copyright infringement in respect of the design on a fabric that had been made into garments which FC had imported. First, however, Macdonald sought pre-action disclosure under the Civil Procedure Rules, r.31.16, of documents held by FC relating to sales of the garments. The idea was that, by gaining disclosure, Macdonald would have more of an idea as to the likely value of the intended action, thus improving the chances of an out-of-court settlement. FC was not totally averse to disclosure, but was unhappy to make a disclosure on the scale demanded by Macdonald which, it said, would have been burdensome and expensive.

Briggs J granted Macdonald's application in part. He held that, where an intended claim concerned alleged copyright infringement, an application for disclosure required particular analysis because an alleged victim of copyright infringement had to choose between seeking damages or an account of profits. The disclosure which Macdonald sought would facilitate the making of that choice if copyright infringement were subsequently proved. Some disclosure would be allowed, but not on the scale demanded by Macdonald.

The IPKat is fascinated to know more about this. So far as he can see, the IP Enforcement Directive (2004/48), which is now in force, does not appear to justify forcing a copyright owner to choose between damages and an account of profits, but Briggs J was faced with an issue arising upstream, where infringement has not yet been established. Merpel wonders how much disclosure a judge can tolerate for the sake of enabling the parties to settle before liability is established without appearing to be allowing the IP owner to go on a fishing expedition.


Not so easy

Another case noted on Lawtel is Easynet Group plc v Easygroup IP Licensing Ltd, a Chancery Division decision from Mr Justice Mann last Friday. In this case, upholding the decision of the Trade Mark Registry hearing officer, Mann J agreed that the word mark EASY.COM (for which trade mark registration was sought for a wide variety of goods and services) was not devoid of distinctive character even if its individual components, "EASY", "." and "COM" might have been.

The IPKat says, this looks like a straightforward application of the European Court of Justice ruling in the SAT.2 case (Case C-329/02 SatellitenFernsehen GmbH v OHIM). Merpel says, damn the horribly formal writing convention for these case notes. The parties are Easynet and Easygroup. In the note, however, one is first referred to as "the appellant company" and then, mysteriously, as "C", while the other is called "the respondent company" and later "E", a letter that could equally refer to either of them. Why on earth can't headnotes just say "Easynet" and "Easygroup"? When can we cut out this "appellant" and "respondent" rubbish, which gets particularly unpleasant where there are counterclaims and both parties are appealing?