Claim No: IL-2024-000036 - [2025] EWHC 2172 (Ch)

This is my judgment following the hearing of an application brought by the Defendants, The Northern Block Limited (Northern Block) and Mr Jonathan Hill (Mr Hill) for strike out and summary judgment of the whole of the action brought by the Claimant, Mrs Mariya Vasilyevna Lish (Mrs Lish).

Mrs Lish is a designer of typefaces. She worked with Northern Block between 2012 and 2022 designing typefaces. Mrs Lish is a native speaker of Belarusian, and worked for Northern Block on a number of Cyrillic typefaces (amongst other things) – the Cyrillic typefaces are relevant to an aspect of her claim. Northern Block is a type foundry – a business which provides designs for typefaces. Mr Hill is a director and owner of Northern Block.

Mrs Lish’s arrangement with Northern Block (to which I return below) was based on an agreement entered into in 2012 (the 2012 Agreement) which was informally varied in 2015, although there is disagreement on the terms of the 2015 variation. The arrangement, whatever its terms, concluded on 20 September 2022 by notice from Mrs Lish in writing dated 17 May 2022. Northern Block continued to exploit typefaces developed by Mrs Lish, leading to complaints from Mrs Lish. Northern Block said that Mrs Lish had been an employee and therefore did not own rights in the typefaces she had developed in the course of her employment. Mrs Lish relied on the terms of the 2012 Agreement to say that she owned copyright in the typefaces she had developed, and that Northern Block was therefore infringing.

Shortly thereafter, on 1 November 2022 Mrs Lish commenced proceedings against Northern Block and Mr Hill in the County Court at Newcastle (the Newcastle Claim) seeking under the terms of the 2012 Agreement: (a) a declaration that she was the owner of the intellectual property rights in various typefaces; (b) injunctions to restrain further infringement of her rights; (c) financial remedies for past acts of infringement; and (d) an account for sums Northern Block had received after termination of the 2012 Agreement. Mr Hill was said to be a joint tortfeasor with Northern Block.

On 5 May 2023 Mrs Lish made an offer under Part 36 of the CPR to settle the Newcastle Claim (the Part 36 Offer). Correspondence ensued and a month later, on 13 June 2023, Northern Block and Mr Hill accepted the Part 36 Offer thus settling the Newcastle Claim.

On 22 March 2024, Mrs Lish then commenced these proceedings. The Claim Form for these proceedings describes the claim as “for breach of contract, namely a licence agreement [meaning the 2012 Agreement], breach of obligations following acceptance of a Part 36 offer, and copyright infringement”.

This application for strike out and summary judgment was issued by the Defendants shortly thereafter on 30 April 2024 and prior to filing a Defence. It was not heard for over a year for reasons that do not presently matter. For the purposes of the strike out application, the Defendants say that these proceedings should be struck out because the claims relate to matters which either were, or could have and should have been, raised in the Newcastle Claim. The Defendants say they should not be vexed twice with litigation concerning the same subject matter. The summary judgment application involves interpretation of the Part 36 Offer in relation to one typeface.

At the commencement of the hearing of the Defendants’ application, I asked the parties if they wished the matter to be transferred to the Intellectual Property Enterprise Court (the IPEC), with the application then to be heard immediately but subject to the costs protections provided in the IPEC. Mrs Lish declined that invitation. I return to this issue below.

Mr Thomas St Quintin appeared for Mrs Lish instructed by McDaniels Law. Ms Nicole Bollard appeared for the Defendants instructed by Loney Stewart Holland. It is also relevant to note that the Defendants were represented by Harper James Solicitors until January 2025. I had the advantage of full written skeleton arguments from both sides, and nearly a full day of submissions. The parties were agreed as to the principles of law I should apply.