Samsung Electronics (UK) Ltd v Apple Inc

A court may vary or supplement a prior order where necessary to make its meaning and intended effect clear, provided the further order implements rather than enlarges the original obligation. A party directed to publish a notice cannot intersperse the required text with false or misleading material, or add material that changes its context and undermines its purpose. The court may require removal of a non-compliant notice and publication of the ordered notice without modification. Such relief must remain focused on enforcing the order and must not impose a prior restraint on other statements the party may wish to publish. Serious non-compliance, particularly conduct showing disregard for the court’s order, may justify indemnity costs.

Apple appealed from HHJ Birss QC’s decision in the Patents Court that Samsung’s Galaxy Tab 10.1, 8.9 and 7.7 tablets did not infringe Apple’s Community registered design. The Court of Appeal dismissed that appeal in [2012] EWCA Civ 1339 and ordered Apple to publicise the decisions through its website and specified newspapers and magazines.

Samsung applied for a further order, alleging that Apple had delayed the advertisements and had published a website notice containing additions that misrepresented the nature and effect of the English decision. The issues were whether the Court of Appeal had jurisdiction to make a further or clearer order, whether the added material was legitimate, and what form of relief and costs order was appropriate.

1. Further order. Samsung’s application succeeded. The Court of Appeal had power to vary its earlier order so as to make its meaning and intention clear. The further order merely implemented the original requirement that Apple properly publicise the absence of infringement of the registered design; it did not enlarge that obligation (para [26]).

2. Non-compliance. Apple had failed to comply with the newspaper and magazine requirement by not arranging publication in the earliest available issue. That breach was an additional reason for an indemnity costs order (paras [7]–[9]).

3. Website notice. Apple was not entitled to intersperse the ordered notice with its own material. In any event, the additions were false or misleading. They wrongly suggested that the English case concerned comparison with the iPad, referred inaccurately to a patent and German proceedings, omitted that the US jury had rejected the corresponding design-patent claim, and created the false impression that the English decision was inconsistent with foreign decisions. The English court had formed no view on whether Samsung had copied the iPad. The additions therefore altered the context of the required notice and undermined its purpose of removing confusion (paras [19]–[25]).

4. Scope of relief. The misleading notice was ordered to be removed. A corrective notice had to appear on Apple’s homepage, with the ordered notice reproduced without modification or addition, for the period specified by the court. The order did not restrain Apple from making other comments or publishing other information elsewhere. Such restraint would have been inappropriate (paras [29]–[30]).

5. The court indicated that its inherent jurisdiction enabled it to compel obedience to its orders, but considered it unnecessary to explore that power further in the circumstances (para [27]). Apple was given 48 hours to comply. Indemnity costs were ordered because its conduct demonstrated disregard for the court’s order (paras [31]–[32]).

• Court of Appeal (Civil Division): The earlier appeal was dismissed in [2012] EWCA Civ 1339. The present judgment made a further order after finding that Apple had not complied with the publicity order.
• High Court of Justice, Chancery Division, Patents Court: HHJ Birss QC held that Samsung’s Galaxy Tab tablets did not infringe Apple’s Community registered design in [2012] EWHC 1882 (Pat).