England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION, INTELLECTUAL PROPERTY
(MR ROGER WYAND QC)

		Royal Courts of Justice Strand, London, WC2A 2LL
		24th September 2008

Lord Justice Lloyd:

1. This is an application by the Respondent for an adjournment of an appeal, which is due on next week. It is an application made in rather odd circumstances, but I will say immediately that I propose to accede to the application, subject to discussion in due course of the details. The appeal arises from a judgment of an order of Mr Wyand QC, sitting as a High Court judge, handed down on 18 October 2007, and an order made, as I understand it, about ten days later in which he gave permission to appeal and made the consequential order for costs. It is an intellectual property case and I do not need to go further into the details save to say that it relates among other things to the rights to a drawing called World Cup Willie, which goes back to 1966 when England won the World Cup. On 22 October 2007 -- so four days after Mr Wyand handed down judgment -- a consent order was made in other proceedings to which the Football Association is not party but where the claimant is FIFA and the defendants include the present appellant, Jules Rimet Cup Limited, now known as "Coralbay Limited" (to which I will refer as JRC) and other parties. That consent order included a number of provisions relating to matters at issue in those proceedings, and it also included the following three paragraphs, of which the second is the relevant one:

"11. The Claimant acknowledges that claims have been made by The Football Association Limited (the "FA") as to the World Cup Willie Rights and that no warranty given by the Active Defendants is or will be breached if such claims are upheld;

12. Subject to the FA agreeing to bear its own costs to date in Claim No HC05 C02965 (the 'FA proceedings'), the First Defendant shall immediately withdraw its claims and shall bear its own costs to date in the FA proceedings;

13. Subject to the FA agreeing to withdraw its oppositions to the World Cup Willie Trade Marks (the 'Oppositions'), and agreeing to bear its own costs to date in the Oppositions, the First Defendant shall also bear its own costs in the Oppositions"

2. The FA was not, of course, a party to those proceedings, and the provision made by paragraph 12 was therefore not legally binding, which is why it had to be made conditional on the FA agreeing to bear its own costs. Unfortunately, the paragraph did not say anything about time limits or the circumstances in which it was to be open, or remain open, to the FA to satisfy that condition. The FA did not in fact do anything which could even be said to get anywhere towards satisfying that condition for another five months, although it was aware of the consent order from a very early stage. Mr Wyand, as I say, had handed down his judgment, and on 29 October I believe he gave permission to appeal to JRC, and he made an order for costs under which the FA obtained much of its costs that it had sought. Not until 27 March 2008 did the FA's solicitors write to JRC's solicitors notifying them that the FA agreed to bear its own costs and asking it to withdraw its claims. JRC had, in the meantime, served an Appellant's Notice pursuant to the permission granted by the judge, and a date of 2 October had been fixed in early February for the hearing of the appeal. I am told that 'without prejudice' negotiations had taken place, but those had come to an end during the course of February.
3. The FA was therefore acting in a somewhat leisurely fashion about calling on Jules Rimet to withdraw the proceedings; and in the meantime a number of things had happened, including the incurring of further costs, and indeed the FA had sought to enforce the order for costs made by Mr Wyand, including seeking particulars of third party funding and obtaining a payment of a certain amount which was ordered to be paid on account of costs. Mr Cuddigan, who acts for JRC, tells me that in order to pay those costs JRC had to change its corporate structure so that its ownership has changed irrevocably.
4. JRC, on the other hand, was pretty dilatory or leisurely about responding to the correspondence. It did not, as it might have done if Mr Cuddigan's submissions are right, write back on 28 March saying, "You have to be joking; you had only a short time before the position had changed to take advantage of paragraph 12 and because you did not do so and, on the contrary, you sought to enforce your right to costs, it is now too late." I am not sure that there was a substantive reply until September. What the reason for that is I do not know.
5. In May an application was made to Master Bragge in the FIFA proceedings to specify a date by which compliance with some of the other obligations under the consent order was required, and that was a precursor to an application that was made at the end of July -- in relation to which I have seen the basic documents although I have not read them in any detail -- namely, for the committal of the first, fourth, fifth, sixth and seventh defendants (which include JRC) for failure to comply with their obligations under the consent order, including the obligation under paragraph 12. That application, as I say, was made towards the end of July and is now due for hearing on, I think I am right in saying, 11 November.
6. If that application were successful to the extent that the JRC did, in order to avoid sanctions for contempt, withdraw the FA proceedings, then that would mean that the appeal would not proceed. The point about the FA's application for an adjournment is that the appeal ought to be adjourned to wait and see what happens in that contempt application, because if it ought to be withdrawn by virtue of paragraph 12 of the consent order there is no point in it proceeding now.
7. It does seem to me a matter of some comment -- and critical comment -- that the application for an adjournment was not made until September when the date has been fixed since February and is coming on, in effect, on the first effective day of a new term, so that the application is heard only a week before the effective date. I can see that this application could not have been made until the FIFA's committal application had been made, but I think I am entitled to assume that there is some degree of collaboration between the FA and FIFA, and it is very much to be regretted that the adjournment application was not made a whole lot earlier, accepting that that would have meant that the committal application had to be made a whole lot earlier. As it is, if the case is adjourned, that leaves a blank slot on the 2 or 3 October and very little time in which to make use of it by bringing forward another case.
8. But that is not the ground of Mr Cuddigan's opposition on behalf of JRC. He makes essentially one point. He does not put forward a case based on prejudice to his client, save in a very marginal respect alluded to by the maker of a witness statement, which is so devoid of detail that I pay no serious attention to it. What he says is that the contention that it is now open to the FA to say that JRC must immediately withdraw the FA proceedings is so plainly unarguable, so plainly wrong, that it would be wrong to adjourn the proceedings.
9. The committal application has, of course, other content, but he says it is just not conceivable that on that application it would be held that JRC is in breach of the order by not having withdrawn the FA proceedings. The reason for that is the FA's extraordinary tardiness in putting forward any kind of offer to bear its own costs and the inadequacy of the offer made. As I say, in late March there was an offer to bear the FA's own costs. That said nothing about, for example, the £38,000 that had already been paid on account. That was ultimately dealt with in a letter of 21 May which said that the previous letter had not mentioned the £38,000. The 21 May letter said: "for the avoidance of doubt we would return a sum of £38,000 previously paid, which repayment is agreed on the withdrawing of the appeal". Mr Cuddigan says that it really cannot be seriously contended that it was open to the FA to play fast and loose, by waiting until Mr Wyand had decided what order for costs to be made, and by enforcing the order made and then by waiting until March to say anything at all, even purporting to comply with the condition of paragraph 12. I see a great deal of force in that.
10. However, it seems to me that since the committal application does on its face involve the judge deciding whether paragraph 12 has been infringed, it would be inappropriate for this court to act on a basis which might prejudge the result of that debate and given that, if the judge were to find that paragraph 12 had not yet been complied with and were to direct JRC to withdraw the proceedings, the appeal would fall by the wayside. It may well be that Mr Cuddigan is right and that that will not be the result of the committal application. If that is the case then the appeal can be restored. But it seems to me that because of that and because of the absence of any argument based on prejudice to JRC, I will, with some reluctance, from the point of view of inconvenience to the court, nevertheless order that the hearing of this appeal be vacated from the 2/3 October and be re-listed on a date as to which I will hear submissions.

Order: Application granted