Shazam Productions Ltd v Only Fools the Dining Experience Ltd & Ors

Proceedings may be transferred to the Intellectual Property Enterprise Court where the parties’ means, the complexity of the issues and the likely trial length make that forum more suitable. Access to justice is a powerful consideration, particularly where defendants can afford to defend the claim only in the IPEC and costs protection is unavailable in the High Court.

The potential value of an injunction, or the wider importance of the intellectual property issues, does not by itself prevent transfer. The court must assess whether the case can fairly be focused and tried within the IPEC’s procedures. Parties may be required to tailor their cases, and failure to do so may justify transfer back to the High Court.

The claimant brought copyright infringement and passing-off proceedings concerning an interactive theatrical dining experience based on the sitcom Only Fools and Horses. Several defendants applied to transfer the proceedings from the High Court’s Intellectual Property List to the IPEC.

The applications raised the defendants’ ability to fund High Court litigation, the value of the claim and proposed injunctions, the complexity of the copyright and passing-off issues, the likely trial length, and the effect of case management. The central issue was whether the claim was appropriate for determination in the IPEC under the applicable procedural provisions.

1. Transfer ordered. The proceedings were transferred to the IPEC for a case management conference. The court considered the criteria in Civil Procedure Rules 1998 rule 63.18(2) and Practice Direction 30, paragraphs 9.1 and 9.2.
2. The relevant considerations included whether a party could afford to bring or defend the claim only in the IPEC, and whether the claim was appropriate having regard to its value, complexity and estimated trial length. The defendants’ evidence established that the individual and corporate defendants, including proposed additional defendants, could afford to defend the claim only in the IPEC.
3. Access to justice was a powerful factor. The claimant’s proposed costs protection did not extend to all defendants, so there remained a real risk that access to justice would not be secured if the claim stayed in the High Court.
4. The court could not conclude with sufficient clarity that the proceedings were unsuitable for the IPEC. The defendants were required to focus their factual and legal cases so that the issues could be tried in no more than three days. This did not require abandonment of any legal defence, but required clarity about how and by whom the show and scripts were created.
5. The potential value of injunctive relief was not itself a reason to refuse transfer. Nor was the potential importance of the copyright claim in other cases. Those considerations were outweighed by the defendants’ inability to fund High Court proceedings.
6. The IPEC case management judge could give directions to focus the issues. If the defendants failed to cooperate or allowed peripheral issues to proliferate, the claim could be transferred back to the High Court. The provisional view was that costs of the transfer applications should be costs in the claim, subject to written submissions.