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

The Defendants say that the Neusa Next Claim involves a discrete point of interpretation of the Part 36 Offer which settled the Newcastle Claim, and is therefore suitable for summary judgment.

Relevantly, the Part 36 Offer provided (emphasis added):

“Our client has confidence in her claim, as we have stated throughout. The only benefit realistically to our client in settlement now is to avoid the further costs of progressing to trial, a level of which will always be irrecoverable even when our client wins her case as expected. Further, our client simply wishes to move forward and progress with her own business rather than continue protracted litigation with your clients, as we have said previously. Therefore, we are instructed at this stage to make the following offer on Part 36 terms, and thus our client’s offer is as follows:

• Your clients will confirm and acknowledge our client’s ownership of the IP in the relevant typefaces, as particularised in our clients [sic] draft amended Particulars of Claim served on 04 May 2023. Please note this list sets out details of the typeface names but will include, obviously, every font/glyph within the relevant typeface family as is also clear from our client’s pleading. Your clients are aware of the full extent and ambit of each typeface, having marketed the same.

• Any relevant sub-licences your clients claim they are still contractually obliged to maintain under the [2012 Agreement] will be disclosed in full to our client. Your clients will pay our client 60% of the licence fee for that licence for the remainder of its term from the date of acceptance of this offer. Any licence that continues on a rolling basis unless terminated will be terminated by your clients at the earliest time that such licence permits.

• Your clients will cease offering and will not in future offer or purport to grant or renew any licence to use the typefaces or any infringing typefaces.

• Your clients will pay our client’s costs on Part 36 terms.”

The Defendants say that the Part 36 Offer was limited only to require disclosure of sublicences and payment of future income received by Northern Block in relation to those typefaces listed in paragraphs 9 and 16 of the draft Amended Particulars of Claim in the Newcastle Claim (to which I return below). Neusa Next was not listed in paragraphs 9 and 16 of the draft Amended Particulars of Claim, and therefore, the Defendants submitted, does not fall within the ambit of the requirements of the Part 36 Offer.

The Part 36 Offer and the draft Amended Particulars of Claim in the Newcastle Claim use different definitions. As can be seen from the above, the Part 36 Offer refers to “relevant sub-licences” as well as “relevant typefaces, as particularised in our clients [sic] draft Amended Particulars of Claim served on 04 May 2023”.

The draft Amended Particulars of Claim state at paragraph 9:

“9.

Pursuant to the [the 2012 Agreement], between 2012 and 2015 the Claimant provided to the First Defendant for licensing, and it accepted, the designs for the Typefaces known by the following names:

9.1.

Baufra

9.2.

Neusa …”

References follow to other typeface names, but not Neusa Next.

At paragraph 16, the draft Amended Particulars of Claim note:

“16.

Pursuant to the [2012 Agreement] as amended in 2015, between 2016 and 2021 the Claimant provided to the First Defendant for licensing, and it accepted, the designs for the Typefaces known by the following names:

16.1.

Erbaum

…

16.14.

Hefring Slab Variable

16.15.

Neusa Next

16.16.

Calder Script

…”

The Defendants say that, because Neusa Next is crossed out, that is an admission that Mrs Lish did not own rights in Neusa Next. However, paragraph 17A of the draft Amended Particulars of Claim states:

“17A. Further, in or around 2017, a design of a typeface called “Neusa Next” was created for the First Defendant by a person or by people other than the Claimant, in particular by Alessia Mazzarella. Neusa Next was created by copying the design of the typeface “Neusa”, and it reproduces the whole or a substantial part of the design of the typeface “Neusa”.”

Relevantly, the 2012 Agreement provides:

“This covers all finished typefaces that [Mrs Lish] provides to [Northern Block] with intent to license.”

The Defendants submit that as Neusa Next was not a “finished typeface” that Mrs Lish provided to Northern Block, it is not covered by the first two bullet points in the Part 36 Offer. Rather, the Defendants say that Neusa Next is only covered by the third bullet point, which refers to both “the typefaces or any infringing typefaces”. The Defendants say that Neusa Next falls within the latter category – and the claim in relation to it was compromised by acceptance of the Part 36 Offer, but not on the basis that the first two bullet points of the Part 36 Offer had to be complied with. Thus, the Defendants say that Mrs Lish’s claim for information and payment now in relation to Neusa Next is unsupportable, as the Part 36 Offer never provided for that.

Counsel for Mrs Lish submitted that the Defendants’ interpretation of the various documents is not correct, and that, in any event, the issue is not appropriate for summary judgment.

At the hearing, Mrs Lish’s counsel took me to images of the Neusa and Neusa Next typefaces, shown here:

He took me to further provisions of the 2012 Agreement, including the provision (on the last page of the 2012 Agreement) which deals with post-termination arrangements:

“[Northern Block] will continue to account to [Mrs Lish] for payment on sales of disks and all other products containing Typefaces from [Mrs Lish’s] work after the time of termination.”

I understand because Typefaces is capitalised that it refers to the earlier definition – being finished typefaces sent by Mrs Lish to Northern Block with intent to license to Northern Block.

Mrs Lish’s counsel also pointed to the second page of the 2012 Agreement which provides that the typefaces provided by Mrs Lish may be used by Northern Block “in any character or form, whether in a composite, blurred, distorted, enhanced or otherwise altered by any means.” He characterised Neusa Next as the Neusa typeface “altered”, and therefore said it falls within the first and second bullet points of the Part 36 Offer – such that it is clear that Mrs Lish claimed royalties in relation to it under the terms of the Part 36 Offer. This, he says, was expressed in paragraph 23 of the draft Amended Particulars of Claim (with the underlining showing the material added by the amendments):

“23.

As a consequence, from the end of 20/09/2022, the First Defendant had no right to deal in articles specifically designed or adapted for producing material in C’s Typefaces or any of them or any part of them, and/or in the design of the typeface “Neusa Next” or any part of it (“Articles”), and had no right to make or to possess such Articles for the purpose of dealing with them or to authorise and/or procure any such acts. Further, the First Defendant had no right to undertake any acts restricted by the Claimant’s copyright in relation to things that are not articles specifically designed or adapted for producing material in a particular typeface within the meaning of s.54 of the Copyright Designs and Patents Act 1988.”