King's / Queen's Bench Division of the High Court

KF 2024 010445 - [2025] EWHC 1584 (KB)

Fecha: 01-Jul-2025

The United States

The United States

In March 2023, the Applicant issued the US Proceedings. They included the First Respondent together with Rolls-Royce North America LLC and BMW as defendants. The First Respondent alleged the proceedings against it were in breach of an exclusive jurisdiction clause (“EJC”) contained in the contract. The First Respondent therefore applied for an anti-suit injunction (“ASI”) on the basis of that breach. As a result of a motion to dismiss in the US Proceedings, the Applicant discontinued against the First Respondent. In this jurisdiction the TCC decided not to grant the ASI in respect of the other defendants in the US Proceedings: see Topalsson v Rolls-Royce [2023] EWHC 2092 (TCC) but did hold that the Applicant had breached the EJC in claiming against the First Respondent. The US Court then struck out the Applicant’s claims against Rolls-Royce North America LLC and BMW on jurisdiction grounds. The US Proceedings therefore continue against only the five US dealerships (the “US Dealerships”).

The Applicant’s case in the US Proceedings was usefully summarised, in Ms Pickard’s skeleton argument, as follows:

The Applicant is the creator of a real-time vehicle configurator that enables customers to configure thousands of combinations of product features and colours (the “Topalsson Configurator”). The Topalsson Configurator is a valuable tool for car dealerships seeking to secure a sale.

ii)

The Applicant alleges infringement of 4 pieces of software - DTE Releases R05 & R06 and VARY Releases R05 & R06 (together the “Topalsson Software”) – all of which have been registered with the US Copyright Office.

iii)

In 2019, the Applicant successfully tendered for a contract with the First Respondent to produce a real-time Rolls-Royce configurator. Following the tender process, the Applicant provided the Topalsson Software to the First Respondent who accordingly had access to it. The commercial relationship broke down and the contract was terminated in April 2020.

iv)

In March 2020, the First Respondent engaged Mackevision (a competitor of the Applicant who had unsuccessfully tendered back in 2019 for the contract) to create what has been referred to as a “stop-gap” solution – a Rolls-Royce configurator that was rolled out to the US Dealerships in late 2020.

In early 2023, the Applicant became aware via social media, YouTube videos and later visits to the US Dealerships, that the US Dealerships were using a real-time Rolls-Royce configurator with striking similarities to the Topalsson Configurator.

vi)

The software underlying the real-time Rolls-Royce configurator (referred to as the “Accused Software” in the US Complaint) comprises three elements: (i) the Showroom Visualizer (configurator software specific to US Dealership showrooms); (ii) RROC (the ordering-related software); and (iii) Web Configurator (the web version of the configurator software).

vii)

After roll-out of the ‘stop-gap’ solution in late 2020, further versions were rolled out in 2022/2023, which are referred to as the ‘permanent’ solution. The First Respondent used different suppliers, such as Sulzer, for these later solutions.

viii)

The Declaration of Mr Topal (filed under Protective Order in the US Complaint in support of the Letter of Request) explains the reasons why it is said that the Accused Software is alleged to infringe the Topalsson Software.

ix)

The US Complaint is drafted by reference to the Accused Software which includes the stop-gap as well as permanent solutions.

10.

The US Dealerships have stated, in response to the US Complaint, that they do not have the source code for the Accused Software but the First Respondent does. It is the Applicant’s case that the First Respondent has documents that are relevant to the issue of whether the Accused Software was copied from the Topalsson Software, including documents relevant to the issue of access to the Topalsson Software, as well as documents relevant to the issue of financial relief, including the anticipated benefit to the US Dealerships of using the Accused Software.