Copyright - Shazam Productions Ltd v Only Fools the Dining Experience Ltd

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Chancery Division (Master Teverson)  Shazam Productions Ltd v Only Fools the Dining Experience Ltd and others [2020] EWHC 2799 (Ch) (19 Oct 2020)

This was an application by the defendants to an action for copyright infringement and passing off for the transfer of the claim to the Intellectual Property Enterprise Court ("IPEC").  The claimant, Shazam Productions Ltd. ("Shazam") was a company established by the late John Sullivan who created the TV sit come Only Fools and Horses to manage his intellectual property rights. The defendants offered an "interactive theatrical dining experience called Only Fools The (cushty) Dining Experience ("the Show")." According to Master Teverson who heard the application, "the Show is a part-scripted, part- improvised dramatic performance which takes place while the audience eats a three-course dinner and involves interactions between the cast and the audience." The claimant contends that the theatrical dining experience infringes its copyright in the sitcom's scripts and its characters and constitutes an act of passing off. The application came on before the master on 3 June 2020 and he delivered judgment on 19 Oct 2020.

By his judgment, the master transferred the proceedings to the IPEC.  In reaching his decision Master Teverson considered CPR 63.18 (2), paragraphs 9.1 and 9.2 of the Part 30 Practice Direction, paragraph ]16] of Lord Justice Floyd's judgment in Kogan v Martin and others [2020] EMLR 4, [2019] EWCA Civ 1645, Judge Hacon's decisions in Kwikbolt v Airbus [2019] EWHC 2450 and  77 Ltd v Ordnance Survey Ltd and others [2017] EWHC 1501 (IPEC).  At paragraph [17] of his judgment, the master noted that in that last case Judge Hacon had said that there were some proceedings that have far too many issues and would plainly take too much time at trial to be heard in the IPEC. Where that is the case, even important matters such as access to justice cannot assist a party who wants the case heard in IPEC.  However, the master also noted that Judge Hacon had said: "if the proceedings were of a nature such that they could be heard within 2 to 3 days, possibly following some focussing of the issues, by far the most important factor was to ensure that parties with limited means were afforded access to justice."

The defendants produced evidence that they were all in difficult financial circumstances.   The master concluded at [35]:

"On the totality of the evidence now before the court, I consider it is shown that the Defendants including the proposed additional Defendants will only be able to afford to defend the claim if it is transferred to the IPEC."

The claimant contended that the copyright claim was comparable in complexity to the well-known Da Vinci Code case, Baigent v Random House Publishing [2006] EWHC 719 (Ch) which took 11 days to try with an appeal lasting 4 days. The master did not buy that.   He said at [32]: "I do not consider this case is comparable either in terms of evidential weight or value."

The claimant offered to limit the costs that they might claim against the 4th, 5th and proposed 8th defendants but not the 1sr, 2nd and 3rd to the amounts recoverable under CPR 63.26 and Section IV of Part 45.  The master was unimpressed:

"In my judgment, without costs protection being in place for all the Defendants including all the proposed additional Defendants, there is a real risk of access to justice not being afforded. This is in my view a powerful factor in favouring of transferring the claim to the IPEC."

He concluded at [40]:

"The most important consideration is in my view to ensure this case can be tried fairly with all parties having access to justice. On balance, I have come to the conclusion that the overriding objective is likely to be better served by my ordering the claim to be transferred to the IPEC for a case management conference at which any outstanding issues on the Claimant's application for further information can be determined. It will be open to the judge at the IPEC hearing the case management conference to give case management directions which will focus the issues between the parties. If the Defendants do not participate in that process and help the court strip away peripheral issues between the Defendants they will expose themselves to the real risk of the case being transferred out of the IPEC."

This short decision provides some very useful guidance to procedural judges, litigators and advocates when faced with an application for transfer to or from IPEC.  The paramount consideration seems to the complexity of the case and the time it will take to try.  If it is clear that the case cannot be tried fairly in IPEC it will stay in or go to the Intellectual Property list of the Chancery Division.  If it is on the borderline and at least one of the parties cannot afford to litigate outside the IPEC then there will be a compelling case for keeping it in or transferring it to the IPEC.

Anyone wishing to discuss this case may call me on 020 7404 5252 or send me a message through my contact form.


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