Case No. IP-2017-000113

18. I am not at all convinced that the defence of estoppel is not strikable. But in any event it certainly does not satisfy the cost/benefit test. As presented, it stands or falls with the implied licence defence. To waste time with further legal argument on estoppel seems to me not in accordance with the cost/benefit test. The estoppel argument will, for that reason, will go no further. (For proceedings see separate transcript) 19.There is also an application by the claimant to strike out the defence of fair dealing. The defendants rely on section 30(2) of the 1988 Act which is in the following terms:20.I do not think that it is in dispute that there was a sufficient acknowledgment within the meaning of section 178 of the Act.21.Mr. Muir Wood directs my attention to the judgment of Arnold J in England and Wales Cricket Board Ltd v. Tixdaq Ltd [2016] EWHC 575 (Ch) and in particular the passage at paragraph 83:"In Ashdown Lord Phillips cited with approval at [70] the following summary of the law in Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs (3rd edition, 2000) at 20.16:22.23.I asked Ms. Michalos whether there were any relevant facts which could emerge at trial and which are not already known to me. She pointed to the question whether sales of the poem increased or decreased after the poem was put on the ITN website for 24 hours. She said one likely possibility is that sales increased due to the publicity on the website, in which case it could not be said that ITN had been competing with Mr. Tumber in the manner contemplated in the passage from Laddie, Prescott & Vitoria which I have just quoted. 24.It seems to me that this is at least arguably a point which the trial judge would want to take into account. I bear in mind the fact that Arnold J approved the proposition that the presence or absence of commercial competition is by far the most important factor in assessing whether alleged fair dealing has taken place.25.For that reason I will not strike out that defence. ( For proceedings see separate transcript) 26.There is an application to allocate this case to the small claims track. Generally speaking when this arises the most important matter is whether the claimant is likely to establish a claim that rises above the figure of £10,000, which is the cap in small claims.27.I know that Mr. Tumber sells copies of his poems on Amazon at £1.62 per copy. Unfortunately, Mr. Tumber has chosen not to provide figures for how many copies he has sold already and how those sales have varied over time. I asked Mr. Muir Wood for the figures, but he said he has no instructions to give them. 28.My strong suspicion is that the sum that Mr. Tumber is likely to gain by way of damages is going to fall well below the £10,000 limit. I bear in mind that there is a claim of flagrancy and additional damages under section 97(2) of the 1988 Act and there is also a claim for further damages under Article 13 of the Enforcement Directive. Even bearing those in mind I have real doubts that the claim will rise to £10,000. I asked Ms. Michalos whether her clients would waive the cap of £10,000 on damages if this were allocated to the small claims and she told me they would.29.Mr. Muir Wood relies on the decision of the CJEU in United Video Properties Inc. V. Telenet (C-57/15) ECLI:EU:C:2016:611. The passage he quotes from that judgment says this: "Article 14 of [the Enforcement Directive] precludes national legislation providing flat-rates which, owing to the maximum amounts that it contains being too low, do not ensure that, at the very least, page 13 of 15 that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party.Article 14 of [the Enforcement Directive] must be interpreted as precluding national rules providing that reimbursement of the costs of a technical adviser are provided for only in the event of fault on the part of the unsuccessful party, given that those costs are directly and closely linked to a judicial action seeking to have such an intellectual property right upheld."30.First, there is no issue relating to a technical adviser in this case. The point emphasised by the CJEU is that a significant and appropriate part of the reasonable costs incurred by a successful party are to be borne by an unsuccessful party. The whole purpose of IPEC small claims is that it would be unusual for the payment of those costs to be appropriate. It provides a low cost forum for parties to litigate IPEC cases which is undoubtedly in the public interest.31.The rules also provide for the payment of costs by a successful party in circumstances in which, in the view of the IPEC small claims court, are appropriate. In my judgment that regime satisfies the requirements set out by the CJEU in United Video Properties Inc. v. Telenet. 32.The one point that has given me pause for doubt on the question of which court should hear this case is the following. Unusually, it is the well funded party which is seeking transfer to IPEC small claims. This does have a bearing because Mr. Muir Wood expressed a concern of Mr. Tumber that he, having far shallower financial resources than ITV, may succeed at trial and yet not have his costs reimbursed. Although not quite spelt out this way, I detect a concern on the part of Mr. Tumber that ITV being well funded could make their case in the small claims track quite complex, that he, Mr. Tumber, would be required to respond in kind, that is to say his legal team would have to deal with relatively complex issues of law and fact, and that this would generate costs which he could never recover. I am just, on balance, persuaded that this concern has to be met and for that reason I will not allocate this case to the small claims track. (For proceedings see separate transcript) 33.I think it is perfectly fair of Ms. Michalos to raise the question of whether I was alleging impropriety. Let me make it absolutely clear, I was not suggesting that ITN would act in an improper way. I was suggesting that it could be perceived by Mr. Tumber that ITV is employing extensive resources, even though ITN were just pursuing their entitlement to run a case. The question of properly defending a party's interests can appear to other litigants as going beyond what is appropriate. It is really a question of perception that I had in mind. 34.The other thing I should have said is that if ITN is right about the quantum of damages that Mr. Tumber is likely ever to be able to claim, the solution from ITV's point of view is to make a Part 36 offer which would safeguard its position. I now come on to the question of whether Mr. Tumber should provide the information he has been asked to provide since it is relevant to a potential Part 36 offer. (For proceedings see separate transcript) 35.There is an application to strike out the claim on two related grounds. One is based on Jameel which I referred to earlier. I am not satisfied that this is a case that is sufficiently similar either to Jameel itself or to a case in this court to which I was referred, namely Lilley v DMG Events Ltd [2014] EWHC 610 (IPEC). Whilst I do have doubts about the quantity of damages that Mr. Tumber would be entitled, assuming he were to succeed at trial, I am not in a position to quantify damages with any certainty, therefore to reach a conclusion that this is a matter which should have been struck out on the Jameel principles. 36.The other way that the application to strike out was put was that Mr. Tumber has been conducting this litigation in an improper way. First it is said that he and his legal team have been uncooperative. Second, that there is evidence that Mr. Tumber is now using the fact of this litigation to generate further publicity for himself. I was shown some copies of publicity which Mr. Tumber is presumably responsible for and an email dated 8th July 2017 from Mr. Tumber to a press organisation which suggests he is trying to sell his story about this litigation. I was also referred to the case of Broxton v McLelland No 1 [1995] EMLR 485.37.It seems to me that Mr. Tumber's behaviour may be unwise but it does not cross over into the territory of being improper or the kind of conduct that was disapproved in Broxton v McLelland No 1. For those reasons I do not strike out the claimant's case. (For proceedings see separate transcript) 38.I will strike out that defence. There is nothing further that is really relevant that would be before the trial judge and is not in evidence today. Ms. Michalos refers to the sales figures but whatever those sales figures may be, they do not affect today's application. If by the time of the trial those sales figures turn out to be tiny, such that in retrospect the case for striking this out on Jameel principles looks to have been rather stronger than it appears today, then by that time the case will be before the court for trial in any event. The sales figures may become an issue as to costs when the trial judge comes to resolve those.39.I would add this, that as I have said previously, the defendants’ position can be easily protected by an appropriate part 36 offer.