England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand. London. WC2A 2LL
		15th July. 2008

Master Bragge:

1. I am concerned with several applications and even now there will remain to be considered other case management directions. The position is that the Claimant has its own application which is to amend the particulars of claim and the claim form in the form annexed to the application notice — that is to amend so as to add further infringements by two individuals, Glen Fox and Ruhshana Bi, neither of whom appear today.
2. The other matter that has concerned the court today has been the e-Bay Defendant's applications and the first application and the one that has occupied the most time is for disclosure of the confidential schedules to certain Tomlin form orders made in the claim. There is also an application for permission to make an additional claim.
3. I deal first with the application relating to the Tomlin orders. The position is that a number of orders have been made in Tomlin order form and these Defendants have requested sight of the agreement the subject of the schedules. Those are agreements between the Claimants and the individual Defendants and they are the parties to those agreements scheduled to the Tomlin orders. Those orders were made with the scheduled terms being produced to the court, and the court, in the shape of Master Moncaster, directed that the schedule terms should be separate from the order and should not be inspected without permission of the court.
4. Pursuant to CPR 5.4B(1) "A party to proceedings may, unless the court orders otherwise, obtain from the records of the court a copy of any document listed in paragraph 4.2A of the Practice Direction." The Defendants have issued an application notice. Evidence in support is provided in the first witness statement of Mr. Paul Stevens and he explains in some detail not only the background of the claim and the nature of how matters work in relation to eBay, but also the application under CPR 5.4B. He says that it is necessary and proportionate that eBay should be able to see the basis on which the claim was settled against the individual Defendants. He gives a number of reasons, as pointed out to me by Mr. Roberts, but the principal reason highlighted by Mr. Roberts is that set out in paragraph 6.6 of his skeleton argument, quoting from Foskitt on the Law and Practice of Compromise at paragraph 6-41. His position is that unless the settlement agreements contained in the Tomlin schedules contained a reservation of the right to pursue eBay, then L'Oreal will have released eBay from the claim against them as joint tort feasors.
5. I briefly turn to the way that the matter is pleaded in the very full pleading. It sets out the Claimant's business and then deals with the eBay Defendants, the first, second and third Defendants' and then deals with the individuals. There are set out the various registrations owned by the Claimants. In paragraph 32 it is pleaded that the eBay Defendants and each of them have infringed the Lancome marks pursuant to section 10(1) of the Trade Marks Act 1994. The pleading says:

"In each case it is alleged that eBay are responsible alone or jointly with the other Defendants for the advertisement and exposure for sale of the items on the Site."

So the pleading is "alone or jointly with the other Defendants", as far as concerns the liability of eBay.

6. There then follows a number of particulars with the usual caveat preceding them. The particulars at 32(i) relate to the use of LANCOME, RENERGIE and DEFINICILS, in relation to the sale of products by the Fourth Defendant sold under or by reference to signs identical to the Lancome Marks and particular (i) is "A cosmetic concealer described as "Lancome Maquicomplet Concealer, Light Buff ... advertised, offered and exposed for sale on the Site and was sold on 23^rd November 2006." That of course is the eBay site, and there are other similar references, for example under the second of the particulars, and so on.
7. There is then in paragraph 33 an allegation again of infringement by the Defendants and each of them of the Lancome Marks with particulars. In paragraph 34 is the allegation that eBay has infringed the Link Marks contrary to section 10(1) of the Act, and particulars are given in relation to that — that is an allegation against e-Bay in relation to infringement of the Link Marks which are defined earlier in the pleading. Then paragraph 36 is a direct pleading that eBay are joint tortfeasors. That I think is sufficient reference to the pleadings for present purposes.
8. The position taken by the Claimants is that this order should not be made, that the court should respect the confidentiality surrounding the agreements scheduled to the Tomlin orders and should remember that the confidence is that of the parties to the agreements and that in effect, although parties to the claim, eBay are strangers making the application. They submit, correctly, that the agreements do not form part of the formal court order. That is absolutely clear having regard to the nature of Tomlin orders. They submit that the application is, in a sense, a fishing expedition to see if the personal Defendants made any admissions in the confidential schedules which the eBay Defendants could use against them in their planned contribution claim, and indeed there is an application, as I think I have referred to, in that respect, namely to make a contribution claim. They submit too that no substantive reason has been given for overriding the confidence, and I was referred to a number of authorities emphasising the confidentiality of this type of material. All of this leads to the submission that the eBay Defendants have not overcome the hurdle required for the purposes of the court ordering disclosure or inspection of these documents. They submit that there is nothing in the point that the schedules would assist in any notice to admit, pointing to the fact that admissions have already been served. My attention was also drawn to the fact that the application is not made under Part 31, namely as a general disclosure application, and that a confidentiality type club would not be appropriate here.
9. It seems to me that looking at the particulars of claim it is clear from paragraph 32 that there is a pleading of responsibility alone or jointly with the other Defendants. That is simply looking at paragraph 32, bearing in mind the wording of section 10 of the Act and the wording of the pleading, namely in each case it is alleged that eBay are responsible alone or jointly with the other Defendants for the advertisement and exposure for sale of the items on the site.
10. eBay submit to me by their counsel that the substance of the matter is that the complaint is against the individual Defendants with whom the Claimants have in fact settled, that that is the meat of the allegation.
11. As far as today is concerned, and it is only as far as today is concerned, Miss Reid accepts that the release of liability of one joint tortfeasor would release the other tortfeasors. As far as the release of concurrent tortfeasors is concerned, I think it is common ground between Miss Reid and Mr. Roberts that that would depend on an analysis of the particular terms of any agreement. One can see the importance of an analysis of the particular terms, for example in Apley Estates Company Limited v. De Bernales and Others [1947] 1 Ch 217 where the terms of the settlement are clearly set out as part of the headnote. There was an acknowledgment that:

"the plaintiffs in the said actions will not nor will any of them sue or continue to sue the said defendants in respect of any of the matters the subject matter of the said actions or either of them ... but this agreement shall not be construed or operate as a release of any cause of action of the plaintiffs or any of them against the defendants or any of them in the said actions."

So it was that that did not constitute a release, bearing in mind an analysis of those words.

12. I was also referred to the decision of the House of Lords in Heaton v. AXA Equity and Law [2002] 2 AC 329, and in particular my attention was drawn to a passage from the opinion of Lord Mackay of Clashfern when dealing with the analysis of the agreement which was incorporated as a schedule to a consent order with which the court was concerned, and to his comment that the terms of the agreement are crucial. There are other statements to like effect.
13. It appears to me that although the scheduled agreements, whatever they say, will only have limited effect, by which I mean it will not be the end of the pleaded case against eBay, on balance it must be right that the eBay Defendants should be able to inspect the confidential terms so that they may analyse the terms in the agreements and take a view about it. In coming to that conclusion I try and take full account of the submissions made to me in relation to the question of confidentiality. Of itself, confidentiality will not be sufficient; for example, it is not a sufficient ground of itself for refusing disclosure. But, nonetheless, I do take account when weighing whether or not it is right to make an order for inspection of these documents the submissions made to me in relation to confidentiality. It does seem to me that for the reasons I have tried to briefly explain, it is important that the eBay Defendants should be able to see these agreements. It appears to me that it is reasonably necessary for them to do so, so that they can make the sort of analysis that, for example, the court was able to make in the Apley Estates case, but with a view to respecting, as far as possible, the confidentiality of the parties to the agreements. In the first instance at any rate the inspection should be by the Defendants' legal advisers. There can then be any further applications that may be necessary.
14. Just to get out of the way the other application of the Defendants, this is an application for permission to serve contribution notices. It appears to me that it is right to give that permission. The individuals have been warned of the possibility of the application some time ago and have not apparently raised any objection to the matter. It appears to me correct, as Mr. Roberts says, that it is preferable in terms of case management for all the disputes between the parties to be heard together rather than the Part 20 claims being stayed or deferred. I think on balance, bearing in mind that the parties will if there is a trial be likely to all be at the trial in any event, that there is quite a lot to be said for all matters being decided at the same time. In fact as it appears to me that if the individuals have been guilty of infringement, then it seems very likely that they are going to be found to be in breach of the terms of the eBay User Agreement, to which I was taken in the course of the hearing.
15. That then leads me to the joinder of the new defendants to which I have already referred. Permission is sought pursuant to CPR 17.1 and 19.4 for amendment of the claim form and particulars of claim and that these individuals should be joined, namely Glen Fox and Ruhshana Bi. It has been suggested that as recognition of the fact that there was short service of the relevant application notice the order should not take effect for a period, so as to permit those new defendants to apply to set aside the order. Although the claim itself has been in progress for quite some time, getting on for I think a year, it is only now that these individuals are sought to be joined and as far as I can gather there has been no letter before claim directed to them, and as I say, the application is served short of the requisite notice.
16. The position taken on behalf of eBay is, in substance, that it is premature to determine whether or not these individuals should be joined until there has been inspection of the scheduled agreements to the Tomlin orders and whether and to what extent there is an existing viable claim against the eBay Defendants. The eBay Defendants' submission is that if and in so far as there remains the concurrent claim and the other Link claim, those claims would in fact lack substance and might be the subject of appropriate applications.
17. I think it is unfortunate that full notice was not given to these individuals, but subject to what I shall say in a moment, it does appear to me that their position can be preserved by an ability to apply to vary or set aside any order joining them. I will have to work out with counsel the precise form of order in this respect, but the sort of order that I have in mind is to give permission for the amendment and for the joinder of these defendants, but with the provision that that order will not have effect until certainly twenty-eight days, or alternatively will not have effect at all — in other words the order would cease to be effective should an application be made by the eBay Defendants as a result of the inspection. In that event this application to join would have to come back. So it would come back in two events: first, in the event that the eBay Defendants made an application as a result of the inspection of the agreements; alternatively if it came back as the result of the initiative of the two new joined defendants. That will have the consequence that I will extend time generally for service of an acknowledgment of service and defence so that these new defendants can be fully informed in so far as possible of the position before they complete their acknowledgments of service and before they have to deal with the question of defences. The only reason why I am taking this slightly unusual course is that it might in fact be cheaper in the long run if I do this, because if for example there is no application as a result of inspecting the schedules and no application by these Defendants to vary or set aside the order, when to do otherwise would simply require a further attendance. There may, of course, in due course need to be a further case management conference, but that is something that can be considered. I know nothing about these new defendants or their position or their ability to obtain legal advice quickly, and I think this is about the best way that I can deal with it, as I say subject to hearing and being assisted by counsel.