Topalsson GmbH v Rolls-Royce Motor Cars Limited

An exclusive jurisdiction clause must be construed in the context of the agreement as a whole. Broad words may cover non-contractual claims, but the mere fact that a claim refers to the agreement or has a contractual background is insufficient. Claims against non-contracting third parties require particular care. Clear contractual language, the parties’ treatment of third-party rights, and practical jurisdictional considerations are relevant.

An anti-suit injunction on a non-contractual basis requires more than parallel foreign proceedings. The applicant must generally show that England is clearly the more appropriate forum and that justice requires restraint, while the court must give substantial weight to comity and the foreign court’s connection with the dispute.

Rolls-Royce Motor Cars Limited applied for an anti-suit injunction restraining Topalsson GmbH from pursuing copyright proceedings in the United States District Court for the Central District of California. The US proceedings concerned alleged infringement of Topalsson’s software by BMW, a related US company and several Californian Rolls-Royce dealers.

Rolls-Royce relied on an exclusive jurisdiction clause in the parties’ service agreement and, alternatively, alleged that the US proceedings were vexatious and oppressive. The court had to determine whether the claims fell within the clause, whether the clause extended to claims against non-parties, and whether a non-contractual injunction was justified.

1. Subject matter. The exclusive jurisdiction clause was widely worded and covered the dispute raised by the US complaint. The likely defence would require detailed examination of the agreement, the parties’ dealings, the ownership and classification of software, access, and the creation of the replacement configurator. The claim was therefore sufficiently connected with the agreement.
2. Third parties. The clause did not extend to claims against BMW, the related US company or the dealers. The agreement defined “the Parties” as Topalsson and Rolls-Royce. Provisions referring expressly to BMW Group companies did not confer a right to enforce the jurisdiction clause, and the agreement contained no clear words extending the clause to claims against non-contracting parties. The global nature of the configurator and the possible existence of contribution or indemnity claims did not alter that conclusion.
3. The possibility of contribution or indemnity proceedings was highly fact-sensitive. The observations of Lord Scott in Donohue v Armco Inc were not treated as establishing that every claim against a foreign co-defendant falls within an exclusive jurisdiction clause.
4. Foreign copyright claims were not excluded by the Moçambique rule. The reasoning in Lucasfilm v Ainsworth supported the conclusion that such claims were justiciable in England where there was personal jurisdiction. That point did not make the jurisdiction clause applicable to the third-party claims.
5. Non-contractual injunction. The US proceedings were not vexatious or oppressive. California had a strong connection with the alleged infringements, the dealers and the relevant evidence. The application of Californian copyright law and the territorial nature of the alleged infringements favoured the US forum. England was not clearly the more appropriate forum, and comity also weighed against intervention.
6. The contractual ASI was therefore unavailable and the non-contractual ASI was refused. The ASI application was dismissed. Rolls-Royce’s claim for damages for breach of the jurisdiction clause arising from the original US complaint remained to be addressed separately.

First-instance decision. The judgment records that the Main Proceedings had been determined by O’Farrell J on 12 July 2023, but the present application concerned the separate US proceedings and the proposed anti-suit injunction.