SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a fundamental building block for the fraud claim and that without it that claim – as it was formulated in the North Carolina proceedings – could not have been run. Accordingly, the enforcement claim failed on four grounds:
(1) First, the issue estoppel which would have defeated the breach of contract claim equally defeated the fraud claim, and hence the UDTPA claim which in turn was based on the fraud claim. That was because the fraud claim depended on the licence terms which the English court had held to be null and void.
(2) Second, even if enforcement of the North Carolina judgment were not barred by issue estoppel, it would have been barred as an abuse of process, applying Henderson v Henderson (1843) 3 Hare 100, because the claims in that action could and should have been brought as part of the original claim in England.
(3) Third, enforcement would be contrary to the important public policy, embodied in the Software Directive, of preventing the monopolisation of ideas and promoting competition and consumer welfare.
(4) Fourth, following the decision of Lord Hodge in the Scottish case of Service Temps Inc v MacLeod [2013] CSOH 162, [2014] SLT 375, enforcement of the UDTPA element of the judgment, including the compensatory damages awarded in respect of that claim, was barred by section 5 of the PTIA.
Judges:
Cockerill J
Citations:
[2018] EWHC 3452 (Comm)
Links:
Jurisdiction:
England and Wales
Citing:
See Also – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
See Also – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
See Also – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
See Also – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
See Also – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
Cited – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
Cited by:
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.
Litigation Practice, Estoppel
Updated: 24 November 2022; Ref: scu.631433
