Case Nos: IL-2023-000080 and IL-2024-000038 - [2025] EWHC 2561 (Ch)

The defendants relied on the time it took for RMG to issue proceedings to infer consent. RMG wrote to Mr Smith on 20 November 2014 asking whether he was using the PAF. Mr Smith responded five days later stating that this was not the case and that the data on GetAddress came from other sources. Ian Evans, Head of the Address Management Unit at RMG gave evidence about the slow investigation process which followed. A report commissioned from RMG’s audit supplier provided in 2015 suggested that an old version of the PAF had been used to create GetAddress but RMG still wanted more information. The auditor was asked to contact Mr Smith which was done several times between 2017 and 2022 without any response from Mr Smith. RMG did not communicate its complaint to the defendants until 2023. The claim form was issued in May 2024.

The defendants relied on the following passage from the judgment of Blackburne J in Fisher v Brooker [2006] EWHC 3239, at 94:

Fisher concerned a claim for a share in copyright in a song and the royalties generated. The claimant was a member of the band Procol Harum. The defendants were another member who had been solely credited with writing the music and an assignee of the copyright. The judge found that the claimant was a joint author of the work and joint owner of the copyright to the extent of 40%. There was a restitutionary claim for a share in the royalties paid out up to the date of the claim form, which was rejected by the judge on the ground of the implied licence which continued up to the date of the claim form, when it was revoked. In the passage quoted above the judge explains his finding of an implied licence in the context of his ruling on the claim for restitution.

The defendants appealed. The appeal succeeded on the ground that the defendants were entitled to a defence of laches and acquiescence. On a further appeal to the House of Lords their Lordships rejected the Court of Appeal’s finding of laches and acquiescence (and proprietary estoppel, which was found to apply in a largely indistinguishable way on the facts). The finding of an implied licence by the trial judge had not been appealed to the Court of Appeal and so was not an issue either there or before the House of Lords. In the appeals the claimant sought relief only from the date of the claim form going forward.

In the present case RMG seeks the option of an account of profits. In the event of an account there would be an claim by RMG for restitution; at present it is just a contingent claim.

The defendants’ Defence pleads the alleged licence by reciting the lack of communication of RMG’s contention until 2023 and states that the defendants ‘relied on that silence as informed consent.’

To the extent that the defendants’ submission is simply that RMG’s failure to formulate a complaint between 2014 and 2023 constituted consent, I reject the submission. For the reasons discussed above, if consent is to be implied the court must be satisfied that the relevant facts and circumstances unequivocally demonstrate that the proprietor of the intellectual property right has renounced any intention to enforce his exclusive rights. No attempt was made to point to such facts and circumstances. Mr Evans’ evidence indicates otherwise.

If the defendants’ argument is better seen as being based on acquiescence, laches and/or estoppel, no such defence was pleaded and RMG did not come to trial to meet that case. Had it been pleaded, it would have been necessary to consider the law discussed in Marussia Ireland and its application since Brexit.

I find that RMG did not at any time consent to use of the PAF by the defendants.