Costs in the Intellectual Property Enterprise Court: Considering conduct of the parties when assessing costs – Access to Justice?

Please find attached an interesting short article (following the previous Blog of 26 March 2014 herein) on the issue of costs in the recent case for making groundless threats of infringement of patent (contrary to section 70 of the Patents Act 1977), that was brought against Mr Perry.

Mr Perry apparently on 26 March 2014 circulated a letter purportedly written by ‘Mr Justice Hacon’; bizarrely reversing the decision in the proceedings. What happens in relation to costs in the light of this and other ‘intemperate’conduct as classified by the Judge?

One of the reasons the IPEC has been celebrated as a great success in terms of Access to Justice for Intellectual Property litigants, small businesses and individuals alike, is that win, lose or draw, the costs cap is set at £50,000.00. The IPEC has been a successful model Court because of the constraint put on costs – can a party’s conduct lead to release of such constraint?

The Judge indicated that the circulation of the purported letter by Mr Perry was a further example of ‘intemperate and eccentric behaviour’ (paragraph 14) in the conduct of of those proceedings; however it is difficult (in the view of the writer) to discern when the conduct of a party becomes ‘truly exceptional’ having regard to the conduct of the parties when assessing costs. Judge Hacon’s decision, notably paragraphs 10 to 17 (under the heading ‘Departure from the costs cap and scale of costs’) explains why in this case the total award of costs against Mr Perry was not granted above the cap of £50,000.00.

Further Judgment of Judge Hacon of the Intellectual Property Enterprise Court (IPEC) dated 2 April 2014

IPKat Blog discussing the above costs decision:

New legislation removing unlimited liability of Cooperatives: a challenge to the Community Interest Company and others?

Please find attached an article in the Guardian related to new legislation (the Cooperative and Community Benefit Societies Act 2014) that appears to remove the historic burden of unlimited liability on Cooperatives; perhaps this will lead to a Renaissance of the Cooperative Society as an economic and social force?

The legislative changes will be reviewed in a separate blog.

Speed Plus: for starting business and supporting business growth

Please note the following Speed Plus opportunities for graduates:

If you know (students graduating this year, graduates from any year, staff or other ‘associates’ of Staffordshire University) who are interested in starting their own business and looking for dedicated support and business grants then apply NOW for the next SpeedPlus intake.

Speed Plus is a business support programme for graduates, alumni and associates of the University which provides, training, mentoring, advice and guidance on any aspect of starting a business, self-employment, freelancing and commissioning. There is also financial assistance for everybody on the programme.

Please find further information on the following link:
( ).

Please feel free to forward this to anyone who might be interested in applying. The application closing date is 3rd March 2014.

An application form can be found on the following link, but you can also download it from the website

Interviews for the programme will take place during the week of 7th to 11th April with induction and training being held on 28th, 29th April and 5th May 2014.

Should you require any further information or advice on completing the application form please feel free to contact the BeInspired office below:

Kind Regards,

It only takes one idea, one second in time, one friend, one dream, one leap of faith, to change everything, forever. Just one!……Yet eternity lies in the palm of your hand¬¬¬.
be Inspired Team
Faculty of Business, Education and Law,
Staffordshire University,
K166 The Octagon, Beaconside,
Stafford, ST18 0AD.
01785 353809 Direct | 07825 979278 Mobile
 /

SPEED Plus is part-funded by the European Regional Development Fund

Speed Plus Business Start-Up Programme.
This programme is aimed at graduates, alumni and associates of the University who wish to start up their own business or freelance. Benefits include: Business consultants, business training, business clubs, networking opportunities and financial support. For more information contact
Dorota Wiernikowska;; 01785 353809;

Valuing Consultancy Services: Benedetti v Sawaris revisited

This short note of the appeal in Benedetti, is an attempt to summarise parts of the decision from the extraordinarily learned judgment of Lord Reed, and Lords Clarke and Neuberger, which emphasise the following:

Where ‘Services’ are provided without agreement – regard should be had to Objective market value or market price, at the time of the provision of the service – the value to the recipient of the services is assessed on an objective basis, i.e. the price which a reasonable person in the position of the Defendant would have paid for the Services.

The arguments of the Appellant included whether it should be the value the parties put on the services? Including the late offers by the Defendants, the answer was a decisive no, as Lord Clarke emphasised below:

Lord Clarke at paragraph 30:

‘In the present case it is accepted that Mr Benedetti’s services had an objective value. The issue is whether subjective revaluation can be relied upon, not in order to identify a benefit, but in order to value the benefit so conferred. In my opinion, that is not permissible. Although there is some academic support for such a solution, there is no authority for the proposition that, in cases where a benefit has an objective market value, the Claimant should be entitled to invoke the Defendant’s subject willingness to pay a higher sum for the benefit as reason for valuing the benefit at a higher rate.’

Market value depends critically upon the identification of the relevant market and it is ‘specific to a given place at a given time’. As Lord Reed illustrated using the episode in Vanity Fair – Becky Sharp employing the panic of the British community in Brussels, selling horses prior to rumour of an impending attack by Napoleon (per Lord Reed paragraph 105); Becky obtained a price far in excess of ordinary value. Identification of the market you are in, is perhaps a little paradoxically, an important element in identifying ‘objective’ market value.

Save in exceptional circumstances, the principle of ‘subjective revaluation’ was not recognised; either for identifying a benefit, or for valuing a benefit received. Mr Sawaris made a late offer (i.e. after provision of Services by Mr Benedetti) of €75.1m to Mr Benedetti who he valued highly and wanted to be ‘generous’ to. This late offer, in the absence of contractual agreement, was not to be the high water mark for the enrichment – in addition to the €67 million Mr Benedetti already received for consultancy services.

What lessons can be learnt from the great case of Benedetti?

‘Value’ of consultancy should be governed by an agreement of the parties, by contract, otherwise the Court will have to determine market value – and strive for a measure of objective value. ‘Contract is King’ in all likelihood as Mr Howard, Counsel for Mr Benedetti said in discussion; but if you want to agree value for Services, agree a price.
There was a distinct theme that the Consultant in the case eluded all labels by which a measure for consultancy services could be fixed – was he an investment banker? No. A broker? No, probably not, too limited as a definition. A promoter? Too vague as a definition. This made it (in my view) all too easy for the Defendants to corral the Claimant into a (rough and ready) market rate and reduce the enrichment gained by Mr Sawaris to zero. The Supreme Court upheld judge’s conclusion as to ‘valuation by brokerage’; in the sum of €36.3m. (0.1 to 0.3% of the transaction value). In which case, in light of the fact that Mr Benedetti had already received €67m, he had already achieved, a quantum meruit, ‘as much as he deserved’.

The case (and the judgment of Lord Reed) can be found at:

Click to access UKSC_2011_0087_Judgment.pdf

The helpful Supreme Court Press Summary of the case can be found at:

Click to access UKSC_2011_0087_PressSummary.pdf

In the Supreme Court UK this week: Disclosure of previous warnings or cautions in a Student’s past and the right to private and family life

In the Supreme Court this week (The Queen on the Application of T v Secretary of the Home Department and others, there was consideration of the thorny issue of disclosure of a person’s past in terms of ‘spent’ criminal convictions; including cautions warnings and reprimands, and in this appeal to minors (persons under 18).

The case is of interest because in the case of one of the Appellants, T, born on 3 May 1991, when aged 11, received two warnings from the police in connection with two stolen bicycles. Although the warnings were in the jargon “stepped down” – in that only the police would retain access to the warning or caution, and not be disclosable to third parties. Nonetheless, when T sought to apply to study at University, the University sought an Enhanced Criminal Record Certificate (ECRC) and received notification of the stepped down warnings. It was apparent that stepping down the cautions and warnings, was not a procedure the police could follow, and they were obliged pursuant to amendments made to the Rehabilitation of Offenders Act 1974, to disclose details of the warnings to the University upon request.

The Court of Appeal decision is attached, containing the full facts of all the combined appeals (with appeals in relation to more serious offences than the alleged theft of two bicycles in the case of T.

It will be helpful to have clarification as to the extent to which a person in a similar situation to T, being minors at the time of offending, making applications into further education, and then into employment would continue to be either required to continue to disclose their own past, or be affected by disclosure of previous offences by third party agencies. The Court of Appeal indicated that in their view such disclosure was disproportionate and in breach of his Article 8 rights (please see the Court of Appeal decision for the wording of Article 8 – right to respect for private and family life), and it remains to be seen whether the Supreme Court would take a similar view.

The facts of the case of T, potentially relevant to those entering in to full time education or employment, with similar past infractions, are set out in the Court of Appeal judgment attached.

Click to access r-t-chief-constable-manchester-judgment-29012013.pdf

Disability and rights of persons with reduced mobility (under EU law) only applicable when on ‘terra firma’?

Today’s case in the Supreme Court (Hook v British Airways; and Stott v Thomas Cook) – listed for one day, is on appeal from the Court of Appeal and involves a joint appeal brought by two disabled persons in respect of claims to injury to feelings and failure to meet seating needs (including those for persons of reduced mobility) pursuant to contractual claims arising at the time of booking of air flights (in the course of international carriage by air). The following facts are taken from the judgment of the Court of Appeal at paragraph 6. The facts in relation to Mr Hook can be found at paragraph 8 of the same judgment attached.

The facts in the appeal of Mr Stott

The Appellant (Mr Stott) is disabled and a permanent wheelchair user. When he travels by air he relies on his wife to assist with his personal needs because he cannot move around the aircraft cabin. He and his wife made a booking with the Respondent to fly from East Midlands Airport to Zante departing on 22 September and returning on 29 September. After making the booking the Appellant spoke to the Respondent by telephone to say that he had booked and paid to sit next to his wife on both flights. On 19 September he telephoned again and was assured that he and his wife would be seated together.

At the check-in for the return flight they were informed that they would not be sitting together. When they protested, a supervisor told them that the problem would be solved at the departure gate, but at the gate they were told that other passengers had already boarded and the seat allocated could not be changed. The Appellant was then seated in an aisle seat in front of his wife. It was very difficult for her to assist with his catheterisation and other personal needs during the flight. No assistance was forthcoming from the cabin crew. At trial, the judge granted a declaration that the Respondent had breached the Appellant’s rights under the EC Disability Regulation, but dismissed the claim for damages by reference to the limits imposed by the Montreal Convention, to which the European Union recognised and was a party. The Court of Appeal dismissed the Appellant’s appeal in relation to damages; see below the final paragraph of Lord Justice Maurice Kay below.

The Montreal Convention of 1999 (‘MC’) provides a uniform code in relation to the carrier’s liability under the contract of carriage by air. The provisions have been interpreted and found to be the exclusive code in regard to this specific liability: passengers being effective barred from seeking reliance on applicable law in their member states. Article 29 states that

‘In the carriage of passengers, baggage and cargo, any action for damages, however founded, whether under this Convention or in contract or in tort or otherwise, can only be brought subject to the conditions and such limits of liability as are set out in this Convention […]’

Without delving into the case law and the exclusive regime, it appears to be the general position that injury to feelings is not included within the exclusive regime of the Convention, albeit such categories of loss and injury are recognised and compensated under EC law.

EC provisions that do recognise the heads of loss in this appeal

The breaches under EC law brought by the Claimants include the Disability Regulation EC 1107/2006, incorporated into UK law by the Civil Aviation (Access to Air Travel for Disabled Persons and Persons with Reduced Mobility) Regulations 2007 (SI 2007/1895), notably as regards appropriate seating arrangements. In their defence, British Airways and Thomas Cook seek to rely upon the exclusivity of the Montreal Convention as a comprehensive code, as incorporated into EU law by Regulation (EC) 889/2002.

Giving judgment in the Court of Appeal Maurice Kay LJ found in favour of the airlines on the basis of the exclusive application of Article 29 of the Convention, displacing any other EC applicable law stating at paragraph 54:
‘…I am satisfied that the case for Mr Hook and Mr Stott is unsustainable. The real injuries to their feelings (for which they deserve and have my sympathy) were sustained at times when the Montreal Convention governed their situations. Its exclusivity both provided and limited their rights and remedies. Accordingly, their claims for compensation for injury to feelings could not succeed.’

In today’s hearing the Supreme Court, constituted of Baroness Hale and Lords Neuberger, Reed, Hughes and Toulson, will have to consider whether the Montreal Convention can operate to exclude a claim for damages arising from a breach of EU law. This raises several important issues:

– to what extent can the well-established line of exclusivity cases (such as Sidhu) be relied upon in the case of ‘novel’ heads of claim?

– on what basis, if any, can claims under the EU’s Disability Regulation be distinguished from claims under the Passenger Rights Regulation, which have been held to fall outside the scope of the Montreal Convention?

– should the exclusivity of the Montreal Convention be determined by reference to a ‘timeline’ of events (as the Court of Appeal’s judgment seems to suggest), or by the type of damage sustained by passengers (the approach favoured by the CJEU)?

The Secretary of State and the Equality and Human Rights Commission are intervening in today’s case (i.e. will be represented and entitled to make submissions in the appeal).
It is perfectly possible that this case will go further on a reference to the European Court of Justice in light of the core issue of effectiveness of EC law and on the facts, the fact that persons who are intended to benefit from EU laws are left without an effective remedy.

The decision of the Court of Appeal can be found at:
A very informative blog on this case (which was used to set out most of the above points) can be found on the Supreme Court blog site at:

Coventry v Lawrence: Nuisance and planning permission in the UK Supreme Court: from the Court of Appeal

There are recognised causes of action beyond the contractual, (or asserting rights in property) which in the University sector it is easy to become preoccupied with. This week in the UK Supreme Court, on appeal from the Court of Appeal, is a case involving the tort of nuisance, tied up in a planning permission. Coventry v Lawrence involves nuisance created from motor sports, and the issue whether the grant of planning permission sanctions any nuisances flowing from the permitted activity.

As every student of the law knows, In Miller v Jackson [1977] QB 966 (nuisance created by the sport of Cricket) Lord Denning MR began his judgment in classic style: ‘In Summertime, village Cricket is the delight of everyone.’ Doubtless Miller v Jackson is a case of its time, but Lord Denning’s judgment is a good frame of mind to begin any query into the law of ‘nuisance’.

The Court of Appeal decision in Coventry v Lawrence is attached. The Supreme Court appeal hearings run today and tomorrow.

Miller v Jackson, and the Court of Appeal decision in Coventry v Lawrence are available from the links below:

Volkswagen v Garcia: Academic publication and interaction with commercial interest

Please find attached a link to an interesting short discussion of the Injunction case of Volkswagen v Garcia, heard in the Intellectual Property Enterprise Court before Justice Birss (formerly the Patents County Court) in June 2013, from the Lexology legal feed; illustrating that there are limits to freedom of academic publication when balanced against legitimate commercial interests. Further discussion of the Volkswagen injunction, involving UK academics will follow in a later blog.

Liability of Educational authorities (Essex County Council) to pupils in their (educational) care

Please find attached a Note and link to the case of Woodland v Essex County Council [2013] UKSC 66 recently decided in the Supreme Court; extending the ambit of the educational authority’s liability (via the educational function of the schools) to school pupils for personal injury (in this tragic case, catastrophic hypoxic brain injury) on the basis of the educational authority’s ‘non-delegable’ duty of care.

The extension (or if preferred, redefinition) of the educational authority’s non-delegable duty now covers the negligence of independent contractors engaged in work that the schools would ordinarily have carried out themselves (usually via their direct employees) – in this case swimming lessons to primary school pupils. Swimming lessons, were on the available evidence, part of the national curriculum. The case, replete with tragic consequences, will be remitted back to the High Court for trial, but the Supreme Court in its judgment appears to have found the Defendant with the ‘deepest pocket’ for the Claimant to bring an action against.

Click to access UKSC_2012_0093_PressSummary.pdf

Click to access UKSC_2012_0093_Judgment.pdf

Drafting and negotiating agreements: A ‘process’ driven approach

Please find attached a link to an article written on Mark Anderson’s Intellectual Property and drafting blog, which is concerned with the process of contractual drafting, and practical methods that could be adopted to achieve successful results when negotiating agreements. The Anderson website also contains many useful articles on drafting skills underpinned with relevant legal sources. Enjoy.