England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		St. Dunstan's House
		26th November 2009

JUDGE FYSH:

1. This is an appeal from the order for directions of Master Bragge made on 2^nd October 2009 as a result of a case management conference in three actions. In fact, Master Bragge gave two judgments, the first of which stems from the case management conference itself and is dated 23^rd July 2009. The other appears to have been given orally on 7^th October 2009 and arises from the rival contentions of counsel relating to the form of order which should be made.
2. Master Bragge's order is to be found in file A3B of the trial bundle. In essence the Master ordered the trial of one of the two issues in the action as a preliminary point. He also identified a trial window for the determination of that issue – the window opening in March of next year – and stayed the other issue until over the judgment on the preliminary point. He also consolidated the three actions then involved, which are to be found as the claim numbers at the top of the first page of his approved judgment.
3. These actions involved three different defendants but the same claimants in each case. The three defendants thereupon became known as "the defendants" in the consolidated action and I shall so refer to them in this judgment; and I will return to various points in the order, not all of which I should add, is under appeal.
4. The six claimants, for whom Miss Lindsay Lane appears, now appeal the part of the order directing that all the pleaded issues "shall be tried together.^[1] The claimants include both the English and Scottish Football leagues. The defendants may now be regarded, as I have noted, as being essentially three in number and they were represented by Mr. Philip Roberts. A fourth defendant, which was a Danish company called "Enet Pulse", though mentioned at times during the hearing, was not represented and may, I think, at present at any rate, be ignored. I should also add that the major facts of the case, sufficient for present purposes, are fully set out in the judgments of Master Bragge and, save as appears hereafter, need not be repeated; I therefore incorporate that part of his judgments, which also appears to me to be uncontroversial, into this judgment.
5. One of the issues raised by counsel at the start of their addresses was the question of the approach to appeals based on discretion. This is an appeal from an order made in a case management conference and it is based purely on the exercise of Master Bragge's discretion. As is well known, under such circumstances special and well established considerations arise. I was in fact referred to the White Book in this connection , p.1509 under "Part 52 Appeals" – 52.11.4:

"As to what constitutes a sufficient error in the exercise of discretion to warrant interference by the Appeal Court see Tanfern Limited v Cameron MacDonald [2000] 1WLR 1311 para. 32. Brooke LJ suggested that guidance might be gained from the speech of Lord Fraser in G v G (Minors Custody Appeal) [1985] 1WLR 647 at 652. In the latter part of the passage cited by Brooke LJ, Lord Fraser stated:

' ... the appellate court should only interfere when they consider that the judge of the first instance has not merely preferred an imperfect solution which is different from an alternative imperfect solution which the Court of Appeal might or would have adopted, but has exceeded the generous ambit within which a reasonable disagreement is possible ...'"

6. An alternative formulation of the threshold test for interference with the exercise of the discretion by an Appeal Court is that stated by Lord Woolf, MR in PPL v AEI Rediffusion Music Ltd [1999] 1 WLR 1507 at 1523:

"Before the court can interfere it must be shown that the judge has either erred in principle in his approach, or has left out of account, or taken into account, some feature that he should, or should not, have considered, or that his decision is wholly wrong because the court is forced to the conclusion that he has not balanced the various factors fairly in the scale."

Mr. Roberts preferred the first quotation, Miss Lane the second, but I do not think there is anything for present purposes that flows from that. There is a further quotation I shall mention (which is cited in the AEI case), which is from a case called: Roache v News Group Newspapers Ltd [1998] E.M.L.R. 161 at 172:

"Before the court can interfere it must be shown that the judge has either erred in principle in his approach, or has left out of account, or taken into account, some feature that he should, or should not, have considered, or that his decision is wholly wrong because the court is forced to the conclusion that he has not balanced the various factors fairly in the scale. See per Griffiths L.J. in Alltrans Express Ltd v C.V.A. Holdings Ltd. [1984] 1 W.L.R. 394 at 403G."

So those are the authorities that were cited to me by way of guidance in this appeal.

7. Summarising therefore on approach, we get to this position: it is common ground that this is an appeal by way of review and not rehearing. Secondly, I have to be satisfied that the Master has gone, may I say, seriously wrong in the exercise of the discretion; in other words – quoting from one of those authorities – that he has "erred in principle". The fact that I myself might have come to a different conclusion myself appears to be irrelevant. Miss Lane says the Master has made "a simple but fundamental mistake" and that is why we are all here. Thirdly, I have, of course, always to bear in mind the overriding objective, CPR Parts 1 and 3. I must assess whether the Master has observed it, and further ensure that it is adhered to in this appeal.
8. I would add that Mr. Roberts has no criticism of the Master's approach to the case management conference or its result enshrined in the order.
9. Let me next look at the parties and the actions. The case management conference which took place was in relation, as I have said, to three actions, which were consolidated without opposition in the same case management conference. The common causes of action were twofold: copyright infringement and infringement of the database right. The defendants' commercial activities concerned what I may call a "spin-off" of the football industry, namely that they are concerned with the use of various kinds of data for betting ^[2] and, I believe, in other ways as well. Other than to note that the defendants were selected by the claimants so as to reflect different sorts of allegedly infringing activities, nothing turns on the details of what the defendants actually do, at any rate for present purposes. Miss Lane told me that this is a test case and, by reference to the evidence which was before the Master, she has satisfied me that the claimants' data has attracted relatively interesting fees for its use with obvious benefits to the claimants. Mr. Roberts agreed and following this, suggested that in truth the most important reward of this litigation as far as the claimants are concerned in each of the cases, was money. This being so, he said, a number of issues now in active contention and debate could easily be resolved by reference to the availability of interest in appropriate measure, were the claimants to be successful. Miss Lane denied this and said there was more to it than money and pointed to one or two other factors which I need not go into. This is obviously an important group of cases. It is perhaps worth mentioning, as delay also comes into the equation, that two of the actions were started some time ago in 2006. Mr. Roberts relies on that, though it is, I would add, at this stage simply a factor which the court must take into account.
10. Let me next take a closer look at the defendants. I think Yahoo speaks for itself and needs no introduction. The two Stan James' companies, one from Abingdon, the other from Gibraltar, have attracted particular attention in the litigation; I shall explain why in due course. They are substantial betting companies. I will also deal with the other company in the trio, Brittens Pools Limited. Brittens Pools Limited ('Brittens') are a husband and wife pools company with a turnover of about £300,000. It has no employees – as I understand it. I would mention in parenthesis that a good deal of evidence was filed regarding Brittens and I have been taken to some of it. The point about Brittens is that they are mere minnows in this drama. This position has been frankly put in evidence by Mr. Melvin Britten, and Britten's modest position evidently moved the Master as an element in the exercise of the discretion. Both Brittens are very worried about the effect of this litigation on their business. Their business is being undermined, they say, by the ongoing uncertainty of this litigation and, reading between the lines, they both seem understandably to be worried by becoming participants in major IP litigation. But, as we shall see, they also have an important procedural concern in this litigation which also exercised Master Bragge in reaching the decision he reached. Miss Lane invites me to pay no attention to these matters and submits that Master Bragge was wrong to have even taken the Brittens' position into account. She also suspects that there is a secret funding arrangement among the defendants. Her instructing solicitors have tried to find out about it – but without success. It is suggested that the Brittens are being "piggy-backed" by the others and so will suffer no harm financially as a result of this litigation. There has been a silence on the other side as regards this suggestion. In my view the law must cater for both may I call them – "the plump carp" and "the minnow". I am quite sure that Master Bragge was right to take into account the position of the Brittens, in exercising his discretion. It is no fun watching one's life work crumble under the strains of IP litigation among the mighty.
11. I now turn to Fixture Lists and Live Data ^[3] because here there is basically a fundamental bifurcation which was crucial to the exercise of the discretion. Though copyright and database infringement are common causes of action, the proceedings concern rights in two different but related sets of data; football Fixture Lists, and I here called those "the Fixture Lists' issue", and the Live Data issue relating to football matches. The evidence gives some examples of these sets of data. For the purposes of this application I have not needed to go into the matter in detail but it seems to me that the latter issue, i.e. the Live Data issue, is likely to be rather more complex and factually complicated than the Fixture Lists issue. The Brittens' case concerns only the Fixtures Lists' issue, nothing more; and that is one of the matters which struck the Master as being relevant and important. The Yahoo case is also concerned only with the Fixture Lists' issue, but Yahoo have also included a defence of public interest and fair dealing which is absent from the other cases.
12. Finally, I turn to at the Stan James' companies. Made against them are allegations of infringement involving both the Fixture Lists issue and the Live Data issue, so the situation is more complicated. The Fixture Lists issue is therefore common to all three cases and it is this issue which Master Bragge ordered to be tried as a preliminary point. I accept Mr. Roberts' insistence that this is an important and self-contained issue, but the matter really goes rather further. There have been developments with regard to the Fixture Lists issue before, during and even since Master Bragge's hearing in July, which have played a part in his decision, alternatively which will now play a part in mine.
13. I mention at this juncture however, a sub-issue. In 2005 the European Court of Justice decided the so-called "Fixtures' Marketing" cases: Cases C-46/02, C-338/02 and C-444/02. I am going to summarise what they are about but not go into detail. They affect the Fixtures Lists issue. Mr. Roberts submits that, having regard to these cases, we are concerned in that part of the litigation with charted legal territory. He adds that because of the ECJ decision the claimants here are going to be facing an uphill struggle on their Fixture Lists issue. The ECJ has already considered the subsistence of database rights in English football Fixture Lists in these cases where it effectively ruled that no database rights subsisted in the Fixture Lists because the investment of the second and third of the appellants involved today did not constitute the correct type of 'investment' required to give rise to this sui generis right. Miss Lane said that the claimants had found a factual way around the effect of these judgments and much more pertinently, she drew my attention to the Copyright Designs and Patents Act 1988 (As amended) and in particular to s.3A(2) thereof:

"(2) For the purposes of this Part a literary work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author's own intellectual creation."

This, she stressed, is an entirely new area of law, and I think she may be right. What she says in essence is that the Fixtures Marketing cases are by no means the end of the story; there is the copyright issue as well which has to be adjudicated. This question of s.3A(2) will evidently be one of the claimants' primary arenas of argument at trial in response to the defendants' denial of the subsistence of copyright rights in the Fixtures Lists. She said, rightly I think, that whatever may be said about the subsistence of database rights in the light of the European Court of Justice decision, there was here, new legal territory. Thus, she added, there would almost certainly be a reference in this part of the case to the European Court of Justice and/or an appeal. I can well believe that.

14. At the October hearing before the Master, the Stanley James companies undertook not to pursue the Live Data issue if the Fixture List issue went against it. This is an important point which also played its part in the exercise of the discretion, and I turn to read a recital in the order under appeal relating to the matter. It is in the fourth recital, para. II:

"If the issue relating to the alleged subsistence of rights in fixtures for football matches as more particularly detailed in paragraphs 35 to 41 inclusive of the claimants' Particulars of Claim, and paragraphs 10 to 15 inclusive of the Defendants' Defence ('fixture list subsistence issue') is decided finally [emphasis added] in the claimants' favour all three defendants shall submit to judgment being entered against them in respect of all of the claimants' claims in relation to both Fixture Lists and Live Data."

15. Another matter I would mention (which the Master did not take into account because it was put before me for the first time), is the fact that a substantial number of factual admissions have now been made by the defendants regarding the creation of the subject matter in the Fixture Lists case. These were somewhat dramatically highlighted in bright green in a copy of the particulars of claim in the Britten case which was handed at the appeal. Miss Lane pointed out that there are still a number of important facts that will have to be established, and that is perfectly true. On the other hand, one only has to glance at the "greened" document to see that there is now quite a bit of fact that is no longer in contention. A number of facts have now been delineated with some clarity. Master Bragge was unaware of this development but, as I believe, this in fact supports the order for the trial of the preliminary point.
16. A fourth relevant matter is that it is common ground that, unlike the Fixtures Lists issue, the Live Data issue is in uncharted legal waters.
17. What is practical impact of all this? Let me look first at what may happen at trial in March 2010. The Fixture Lists subsistence issue will have a binary outcome, either rights subsist in the Fixture Lists or they do not. Either way, once the issue is decided, other major issues will, as the Master rightly thought, fall away completely.
18. First, if the Fixture Lists issue is determined in the respondents' favour then the Brittens' action and the Yahoo action will be dismissed and the only triable residue will be the Stan James Live Data issues i.e. the appellants/claimants would probably say that even if they had no rights in the Fixture Lists they still do in the Live Data. There will of course be no need to determine Yahoo's additional defence i.e. the defence of public interest as there will have been no infringement. Alternatively, if the Fixtures Lists subsistence issue is determined in the appellants' favour then there can be judgment in the appellants' favour in the Brittens' action and Stan James' actions, and the only triable residue will be the Yahoo defences of public interest. There will be no need to determine the Live Data claim against Stan James because, as noted, Stan James will not contest that claim in this eventuality. Of course, in this case, as in many others, where one is considering matters at the case management stage, in what may happen there is some element of speculation. This 'either/or' scenario was recited, as I say, in the first Judgment (pp. 7and 8) and in my view it rightly played an important part in the exercise of the discretion.
19. I next look at the correct approach to the trial of preliminary points . Miss Lane drew my attention to a number of authorities on this topic, several of them being quite old. I agree with Mr. Roberts here that these older authorities must be read in the light of the Woolf reforms, and I thus prefer to cite the guidance of David Steel J in McLoughlin v Jones [2002] QB 133 at para.66 where said:

"In my judgment, the right approach to preliminary issues should be as follows:-

(a) Only issues which are decisive or potentially decisive should be identified;

(b) The questions should usually be questions of law.

(c) They should be decided on the basis of a schedule of agreed or assumed facts;

(d) They should be triable without significant delay, making full allowance for the implications of a possible appeal;

(e) Any order should be made by the court following a case management conference."

Applying those criteria here:

"(a) ... decisive or potentially decisive ..."

Certainly the resolution of the first factual issue will be so.

"(b) ... questions of law..."

We are concerned here with the subsistence of the rights relied upon and they, though involving questions of fact, are also questions of law.

"(c) They should be decided on the basis of a schedule of agreed or assumed facts"

David Steel J did say that all the facts have to be agreed. We now have the Brittens' case with the 'greened' agreed facts (as I have called them); so we now know where we stand on many of the facts.

"(d) They should be triable without significant delay, making full allowance for the implications of a possible appeal."

We are presently at the end of November and the trial window for this preliminary point starts in March 2010; and

"(e) Any order should be made by the court following a case management conference."

That has been done.

I shall have to deal with a question of delay in a moment but that guidance, which includes the possible question of delay (see item (d)) was recorded in the Master's judgment. I was also taken by Miss Lane to the parties' skeleton argument before Master Bragge, and I was also taken to other passages in them by Mr. Roberts where, again, looking ahead, the issue of delay was actively canvassed.

20. The next question is: where then did the Master err in principle? I am going to quote from Miss Lane's two skeletons of argument. In the first she said:

"In short he has failed anywhere in the two decisions leading to his order (that there be trial of a preliminary issue on one cause of action and a stay on the other) to take into account at all of the fact that this will prevent the appellants from enforcing their rights and obtaining relief in relation to the other action for a significant period of time – in the circumstances of this case, realistically, several years."

Then in the second skeleton of argument in para. 3, she says:

"The claimants make three points: the Master erred in that:

(i) he failed to take any account of the delay to the determination of the Live Data issue.

(ii) he took into account the supposed financial burden on Brittens; and

(iii) gave insufficient weight to the fact that his orders would prevent probable ECJ references on Fixture Lists and Live Data being heard together."

It was the last of that tripartite elaboration which was forefront in Miss Lane's argument. First it is said that the Master ignored the question of delay caused by the appeals and the possible references to the ECJ. This, of course, spills over into the third item. I cannot believe that (even though not exactly recorded as a separate topic in the Judgments under appeal) a Chancery Practice Master of the experience of Master Bragge did not take timing into account. Moreover, it was certainly debated. As noted, I was referred to the skeletons of argument before him and to various other matters by Mr. Roberts. Furthermore, the Master does refer to the McLoughlin case wherein delay is brought up in his own judgment.

21. I have already considered the point about the Brittens; I cannot accept that the Master erred in taking their position into account. With regard to the possible references to the European Court of Justice (assuming they take place), I am of the view (though I have not been into it in detail) that, even at this distance from trial, they do not necessarily have to be made conjoint references, or made together; different subject matters involved and they could thus be separate references. In any event it often happens that clusters of congruent references are made to the European Court of Justice, which have come from different courts at different times for simultaneous resolution; so evidently there are procedural mechanisms in Luxembourg (the details of which I am presently unaware) for enabling this to take place. Indeed, in the Fixtures Marketing cases, as we saw ^[4] the different references spanned almost a year. Yet they were all heard at the same time.
22. Finally in this connection, I am unsure as to what period of delay Miss Lane considers to be realistic, and thus damaging to her client's interests. If one looks at ECJ references in general, the period of delay can indeed be lengthy, but on the assumption that the fixtures list case can indeed be heard by March and Judgment given by, say, early May, a new state of affairs may well arise at that time which may alter or skew the time line. There was also, I feel, some exaggerated pessimism on Miss Lane's part as to when – and if it occurs – the live match day rights case can be got on and its probable duration, and whether, indeed, some of the matter generated by the fixtures case can be used in it as well.
23. I have read and reread the Master's judgments and, bearing in mind the principles and what I have said already, I can find in them no discernible cause to say that the Master wrongly exercised the discretion, let alone erred in principle on the issue of ordering the Fixtures List issue to be adjudicated as a preliminary point.
24. There are one or two other matters. There is the question of the stay. That brings me to the second judgment of Master Bragge (the one in October) wherein the precise form of order was established. The arguments of counsel are sufficiently set out in that second judgment and I need not repeat them here. Basically, there was disagreement as to how to deal with the Live Data issue, and other matters possibly outstanding after the determination of the preliminary point. In this connection I was referred to paras 1.2 and 12 of the order:

"1.2 The fixture list subsistence issue be heard and determined at a single trial at which the identical issues in the three claims ..."

I paraphrase "... are dealt with."

"No further issues in the third claim shall be heard or determined at the Fixture Lists trial. For the avoidance of doubt any further issues shall be stayed pending Judgment of the High Court at the Fixture Lists' trial."

I was also referred to para. 12 – Subsequent proceedings:

"If necessary ..."

and this is more or less the wording of Mr. Roberts at the October hearing:

"... following the Fixture Lists trial the court shall give directions for the further conduct of the action ..."

I am reading incidentally from the Stanley James order for directions –

"... including any directions for the trial of all remaining claims and defences in this claim ..."

and those are identified:

"... in relation to the alleged infringement of the claimants' rights which they allege subsist in data obtained during a football match."

25. Having found the basic decision of Master Bragge cannot be faulted, I am therefore now concerned with Miss Lane's fallback position, which I have mentioned already. It was also called the "slow train/fast train" scenario. As I understand it, in this fallback position, Miss Lane was not primarily concerned with the ongoing stay imposed by Master Bragge pending judgment in the Fixtures List case. Her primary concern is that I should now actually provide for the future conduct of the Live Data issue in the Stanley James litigation and not leave it to the decision of the trial Judge in May, as envisaged in Master Bragge's order. She suggested that I was now actually in a better position to do the needful than the trial Judge will be. She also argued that as the two cases were more or less hermetically sealed from each other (which, I would add, I do not accept) to give these directions was a logical, convenient, and progressive thing to do in the light of the overriding objective and the litigation overall.
26. As before, the question of delay was forefront in this discussion and, as before, gloomy predictions regarding the impact of possible references to the European Court of Justice were again raised by Miss Lane. These were addressed by Mr. Roberts, who pointed to the fact (which, he said, had exercised the Master) that there was much work to be done in the Live Data case. As I mentioned above, this might well turn out to be a waste of time and in this connection disclosure of experts' reports various such matters were mentioned. He also raised the position of the Brittens who had no interest whatever in this part of the litigation, though Miss Lane suggested that there were no doubt procedural ways in which their position could be dealt with fairly.
27. I have given this development my consideration and must reject the claimants' invitation further to modify the Master's order in this way. I feel, first, that there is simply too much crystal-ball gazing and speculation involved to be really sure that I am in a seriously better position now to modify this part of Master Bragge's order. More importantly, this was also part of the order under appeal which involved an exercise of the discretion. For the reasons mentioned earlier in this judgment I am not satisfied that in this respect there was any serious error in its exercise by the Master.
28. For all of the above reasons I would therefore dismiss this appeal.
________

Note 1   During the course of argument, Miss Lane developed a fall back position not spelt out as such in the appellants’ notice, but nothing turns on that.    [Back]

Note 2   ‘Fixture Lists’ and ‘Live Data’; see below.    [Back]

Note 3   See footnote 2    [Back]

Note 4   Some documentation was produced to me in this connection.     [Back]