A logo had been created for the claimants, by an independent sub-contractor. They sought assignment of their legal title, but, knowing of the claimant’s interest the copyright was assigned to a third party out of the jurisdiction. The claimant sought an order for its transfer, and an order was so made. Before it was perfected the defendant brought this application, denying that the court had such power in the case of a foreign copyright.
Held: The court had power to hear a new point, but not merely because the parties so agreed. We should treat the fact that the land is situate abroad as affecting the choice of law, not jurisdiction, if the case is one in which it is sought to enforce an equitable claim in personam: ‘a claim to have foreign land conveyed to one, based on an English contract and made against a purchaser of the land with prior notice of that contract, could in principle succeed, provided the foreign law would not overreach our doctrine of notice. It would be a claim in personam, not in rem.’ This case concerned the court’s equitable in personam jurisdiction. As such it was not a breach of international comity to order transfer of the ownership of the foreign copyrights. This avoided the need for a multiplicity of proceedings, and it had not been shown that foreign courts would not respect the order made in equity here. The court did have power to make orders affecting the ownership of foreign intellectual property rights.
Judges:
Peter Prescott QC
Citations:
[2004] EWHC 1088 (Ch), Times 27-May-2004, [2005] Ch 153, [2004] FSR 939
Links:
Statutes:
Copyright, Patents and Designs Act 1988
Jurisdiction:
England and Wales
Citing:
See also – R Griggs Group Ltd and others v Evans and others ChD 2-Dec-2003
An advertising agency was requested to provide a logo. It employed an independent designer. Who owned the copyright, in this case of the AirWair logo? The defendants had taken an assignment of the copyright from the first author. The claimants . .
Cited – Oliver v Hinton 1899
The deposit of title deeds to secure the repayment of 400 pounds was accompanied by a memorandum of the deposit, with an undertaking to execute a legal mortgage if asked to do so.
Held: When, two years after the deposit of the title deeds, the . .
Cited – Deschamps v Miller 1908
The parties disputed land in India. A French couple, had married in France in community of property. So according to the French marriage contract the wife was supposed to be entitled to one half of the husband’s after-acquired property. The husband . .
Cited – Stewart v Engel, BDO Stoy Hayward CA 17-May-2000
A judge may reopen a case even after he has delivered his final judgment. A judge invited counsel to amend his pleading to incorporate an improvement, but in the face of his repeated failure to take up the invitation, entered final judgment against . .
Cited – Tyburn Productions Ltd v Conan Doyle ChD 1990
The rule in ‘British South Africa’ extends also to intellectual property. The court was asked whether, many years after the death of Sir Arthur Conan Doyle, there still existed copyrights or other intellectual property rights under the laws of the . .
Cited – Raja Setrucherla Ramabhadraraju v Maharajah of Jeypore PC 1919
. .
Cited – Upper Agbrigg Assessment Committee v Bents Brewery Co PC 1945
. .
Cited – Midland Bank Trust Co Ltd v Green (No 1) HL 11-Dec-1980
A father had granted an option over land to his son, but it had not been registered. The father later tried to frustrate the option by conveying the land to his wife for 500 pounds. The land was worth 40,000 pounds. When the son found out about it, . .
Cited – Muschinski v Dodds 1985
(High Court of Australia) The idea of conscience is too vague a notion to found the principles of equity, it would open the door to ‘idiosyncratic notions of fairness and justice’ and ‘That property was acquired, in pursuance of the consensual . .
Cited – Barclays Bank Plc v O’Brien and Another HL 21-Oct-1993
The wife joined in a charge on the family home to secure her husband’s business borrowings. The husband was found to have misrepresented to her the effect of the deed, and the bank had been aware that she might be reluctant to sign the deed.
Cited – Norris v Chambres 1861
A company director had committed suicide; the claim was brought by his estate. The company had been established in England to work a Prussian coal mine, and the director had personally advanced a large sum towards its purchase. The company agreed to . .
Cited – Nocton v Lord Ashburton HL 19-Jun-1914
The defendant solicitor had persuaded his client to release a charge, thus advancing the solicitor’s own subsequent charge on the same property. The action was started in the Chancery Division of the High Court. The statement of claim alleged fraud . .
Cited – Pilcher v Rawlins 1872
Equity has an interest in and a power over a purchaser’s conscience. Good faith is a separate test which may have to be passed even though absence of notice is proved. . .
Cited – Penn v Lord Baltimore 1750
The court compelled Lord Baltimore to comply with the obligations he had assumed to the Penn family, by setting the Mason-Dixon line, demarcating boundaries between the privately-owned territories of Maryland, Pennsylvania and Delaware, and . .
Cited – D C Thomson and Co Ltd v Deakin CA 1952
The defendant Trades Union was alleged to have indirectly prevented a supplier from performing its contract to supply paper to the plaintiffs by inducing its members to withdraw their services from the supplier.
Held: It is a tort at common . .
Cited – Northern Counties Fire Insurance Co v Whipp CA 1884
The court was asked whether a company which had a legal mortgage, had lost its priority to a subsequent equitable mortgage which had been created because the company’s manager, acting on his own account, had a duplicate key to the safe where the . .
Cited – Berwick and Co v Price 1905
A court of equity may enquire into the state of mind of a purchaser to see if he bought in good faith. . .
Cited – Bank of Montreal v Sweeny PC 1887
(Canada) A bank received property from a trustee knowing it to be trust property, although they knew not that the trustee was acting improperly, nor anything else, and made no enquiries. The bank was ordered to restore the property to the rightful . .
Cited – British South Africa Company v Companhia de Mocambique HL 8-Sep-1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .
Cited – Taylor v London and County Banking Co CA 1901
A mere volunteer was postponed to a subsequent equitable claimant for value without notice.
Stirling LJ said: ‘The ground of postponement relied on in this case is that the prior equitable claimants allowed Tasker to remain in possession of the . .
Cited – Norris v Chambres 1862
A company director had advanced part of a loan for the purchase of a mine in Prussia. He died, and because of lack of funds, his estate risked losing everything. His estate sought its recovery.
Held: ‘With respect to this advance, I think . .
Cited – Pearce v Ove Arup Partnership Ltd and others CA 21-Jan-1999
An English court does not have to refuse an application which sought to apply a foreign copyright law in a claim based on acts committed abroad on the basis that not actionable here. Such restrictions applicable to land actions only: ‘It is, we . .
Cited – Webb v Webb ECJ 17-May-1994
A Convention action must be based upon a right in rem not in personam. An action for a declaration that a person holds immovable property as a trustee and for an order requiring that person to execute such documents as are required to vest legal . .
Cited – In re Duke of Wellington ChD 1947
The court was asked to settle the fate of Spanish estates which had been granted to the first Duke together with a title of nobility. To do this it had to consider the effect of Spanish law: ‘It would be difficult to find a harder task than that . .
Cited – The Abidin Daver HL 1984
The House considered the application of the doctrine of forum conveniens.
Held: A stay of an English action on the ground of forum non conveniens could be resisted on the ground that justice could not be obtained in the otherwise more . .
Cited – Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd, Muftizahde HL 1978
No English action lay for trespass to a hotel on the island of Cyprus, but an action did lie for the conversion of the chattels present in that same hotel. Questions of comity might well be involved, and it had to be for Parliament to change the . .
Cited – Lord Cranstown v Johnston 1796
Lord Cranstown was the absentee owner of a valuable estate in a Caribbean island, but he owed the defendant Johnston a modest amount of money. Johnston sued for the money to be brought in the local court, whose laws permitted a form of substituted . .
Cited – Macmillan Inc v Bishopsgate Investment Trust Plc and Others (No 3) ChD 1-Jul-1993
Bona fide chargees for value of shares situated in New York and held on trust for Macmillan were able, by application of New York law, to take the shares free of Macmillan’s prior equitable interest of which the chargees had had no notice. Where . .
Cited – Duijnstee v Goderbauer ECJ 15-Nov-1983
There was a dispute between an inventor and the liquidator of a company concerning ownership of patents. The liquidator’s claim was that under Dutch law the inventions had been made on terms that the patents ought to belong to the company. He . .
Cited – Plastus Kreativ AB v Minnesota Mining and Manufacturing Co 1995
English law regards the rules for obtaining negative declaratory relief as being procedural
Aldous J said: ‘For myself I would not welcome the task of having to decide whether a person had infringed a foreign patent. Although patent actions . .
Cited – Def Lepp Music v Stuart-Brown 1986
A claim to infringement of copyright by acts performed in the Netherlands and Luxembourg was not justiciable in England, because such a claim cannot satisfy the double-actionability rule, namely, that the relevant acts must be actionable in the . .
Cited – Celltech Chiroscience Ltd v Medimmune Inc CA 17-Jul-2003
Patents had been granted in the US for human antibodies, and licences issued to the respondent who developed another product themselves. The claimants asserted infringement under the US doctrine of equivalence under which a product or process which . .
Cited – Rey v Lecouturier HL 1910
A ruling by the French courts that the ownership of the trade mark Chartreuse (formerly belonging to the monastery of Grand Chartreuse) had passed to a liquidator under French law, could not affect the title to the English trade mark, since the . .
Cited by:
See also – R Griggs Group Ltd, R Griggs and Co Ltd, Airwair Ltd v Evans, Raben Footwear Pty Ltd, Lewy, Lewy CA 25-Jan-2005
The claimants distributed Doc Marten footwear. They asked an agency to prepare a logo. The agency paid an independent contractor to prepare it, but did not take an assignment of copyright to it. The contractor sold the rights in the logo to the . .
Lists of cited by and citing cases may be incomplete.
Equity, Intellectual Property
Updated: 11 November 2022; Ref: scu.196791
