Committal proceedings not the best way of resolving infringement issues

It’s not often that PatLit turns to a copyright case for inspiration, but the resolution of patent infringement issues gets a mention in Grisbrook v MGN Ltd and others [2009] EWHC 2520 (Ch), a 16 October decision of Lord Justice Patten sitting as a Chancery Division judge. This was an application for committal for contempt, or alternatively for sequestration of the assets, of MGN following an alleged breach of a consent order in copyright infringement proceedings. Said Patten LJ:

"72. To be a contempt the defendant's conduct must be intentional and the act complained of must be done with knowledge of all the facts which make it a breach of the order. It is not, however, necessary to prove that the defendant knows it is a breach of the order. [One of the infringements was], at most, a technical breach of the order which was remedied once the problem … had been recognised. …

73. The position with respect to [the operation of a back issues website which, the defendant argued, was impliedly licensed] is more complicated. Although…, their operation does constitute an infringement …, this is an important and by no means straightforward point of law on which MGN, on advice, was entitled to take a different view. …. The fact that its motivation is in part commercial does not detract from the importance of what is in issue.

74. I take the view that disputes of this kind should not be resolved through the medium of committal proceedings. This is not a point which featured in the two actions that led to the consent order and it should have been resolved in ordinary proceedings to determine whether an infringement was involved in the operation of the websites.

75. The dangers inherent in generally worded injunctions or undertakings not to infringe a patent or copyright have long been recognised. They can often lead to a further round of litigation in order to determine whether an infringement has occurred. The resolution of this issue in the context of a committal application was described by Romer LJ in Multiform Displays v Whitmarley Displays [1956] RPC 143 at page 158 as highly inconvenient. In the House of Lords ([1957] RPC 260) Viscount Simonds (at page 262) said this:

"Thus it is, my Lords, that upon what was a motion for sequestration and committal your Lordships are asked to try an action for infringement of a patent, and, inconvenient though such a procedure may be, it cannot be denied that there is ample precedent for it, nor that in certain cases it may be an expeditious way in which patentees can enforce their established rights. It may, nevertheless, well be doubted whether in the present case it would not have been a better course if advantage had been taken of the facilities offered by Sec. 66 of the Patents Act, 1949, to have the issue of infringement tried in proceedings unattended by threats of committal and sequestration."

76. The corollary to this is that a respondent who on advice and in good faith maintains that the conduct complained of does not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because the applicant has chosen to use committal proceedings rather than to bring an ordinary claim in order to resolve the infringement issue".