Copyright claim – failure to fully identify basis of claim
In the summer of 2020, GL Law was involved in the widely reported case Oysterware Ltd v Intentor Ltd and Others  EWHC 2125 (Ch).
Headed by GL Law’s head of commercial dispute resolution, Richard Gore and James Ramsden QC of The Astraea Group, the team acted for the Defendants in a long running contractual and copyright claim. The Claimant, Oysterware Ltd, issued an application for summary judgment on its copyright claim in May 2019. The application was eventually heard by the court in July 2020.
The claim has an interesting history, having started in 2012 when Intentor Ltd sought to terminate the contract it had with Oysterware for the provision of hardware in relation digital signage used in dental surgeries and proceedings being issued in 2017.
The claim was for damages arising from breach of contract, copyright infringement and breach of confidence – the latter two being claimed brought against 2 of Intentor’s director shareholders as well as in their personal capacity. Intentor counterclaimed for breach of contract and, as against Oysterware’s director shareholder, procuring a breach of contract and conspiracy to injure.
Unsurprisingly, no love was lost between the parties.
The process prior to the summary judgment hearing was not without incident either.
Oysterware’s application was unsupported by expert evidence, with their lawyers arguing that there was no need for such evidence to prove the copyright claim, a position disputed by Intentor who successfully applied to the court for permission to rely on expert evidence in response to the application.
Before Douglas Campbell QC (sitting as a Judge of the Chancery Division), Oysterware argued that Intentor had copied its embedded product. It argued that the embedded product was a single homogenous runtime image comprising code derived from Microsoft and put together in such a unique manner to attract copyright.
Intentor argued that rather than being a product with any special features, the “embedded product” was a general-purpose computer with a standard Windows XP operating system and that no copyright was owed to Oysterware in a Microsoft operating system.
The Judge dismissed the application citing the following reasons:
- Subsistence – whilst Oysterware maintained that copyright existed in the design of the embedded product, it had not clearly defined what it meant be “design”. There was confusion, and a failing in the claim as drafted, arising from one witness who claimed that the “embedded product” was a compilation of components where the claim as drafted did not rely on copyright existing as a compilation. Further the witnesses’ s evidence was a matter of opinion and the Judge concluded he was unable to assess the evidence without further evidence.
- Infringement – when deciding whether Intentor had copied the original components of the “embedded product”, the Judge had reference to Intentor’s expert who stated that in his view 70% of the “embedded product” lacked originality. Oysterware sought to argue that this was irrelevant but this in turn raised questions (again) over the “embedded product’s” structure and whether it involved any intellectual creation alongside a significant dispute as to whether what Oysterware was trying to protect was functionality which, if the case, would have been outside the ambit of copyright protection
Taking into account all the issues, the Judge found that there were significant triable issues, highlighting the possible need for Oysterware to re-define its claim as drafted. He dismissed the application.
The learning from the decision is that where alleging copyright infringement, the Claimant must clearly identify the aspects of the application where protection is claimed and to define clearly how it is alleged to have been infringed. Where a party starts with an off the shelf toolkit (here produced by Microsoft) it is likely to be difficult to establish either the subsistence, or infringement, of copyright.
Richard Gore said: “This was a significant victory for my clients which fundamentally altered the course of the proceedings. Claimants who want to plead copyright infringement should take care in detailing the claim carefully rather than adopting a broad-brush approach.”
James Ramsden QC said: “The legal protection of software applications is a hugely important and unsurprisingly fast-moving area. What the summary judgment has already established is that great care needs to be taken by claimants to define what aspect of the software application they are seeking to protect and precisely how they say it has been infringed. Given that most commercial applications are adaptations of marketed software toolkits produced by major market participants such as Microsoft (which was the case here) that is not always easy.”
To contact Richard Gore please call 0117 906 9400 or email email@example.com