“[Mrs Lish] has agreed to be paid an annual salary of£27,000 . If the royalties exceed the£27,000 then she’ll receive them as a bonus at the year’s end.”
“This year after careful discussion [Mrs Lish] has decided to accept a standard monthly salary based on the average sales of the previous two years. I would like her royalties to be reported quarterly as usual and then put into a template that totals up the four quarters. If the annual total is more than her annual salary, then she will be paid out the difference as a bonus at the year end (September 30th).”
“The [2012 Agreement] ceased to have effect on1 December 2015 , when our client stopped paying your royalty and after which [it] significantly increased your salary. You have been working under this employment arrangement and have accepted the increased salary ever since.”
“The only variation [to the 2012 Agreement] concerned our client being paid a flat yearly royalty rate, which coincidentally seems to have been a significant underpayment that has substantially benefited your client to our client’s detriment.”
“On the basis that you have confirmed your client’s intention to infringe our client’s intellectual property, our client intends to issue proceedings against your client for infringement of those rights and to recover monies owing to it from your client. This is on the basis that your client has not properly accounted to our client for 60% of sales received from exploitation of the fonts. All of our client’s rights are expressly reserved.”
“Once the dispute with [TNB] began, I did wonder whether they might not have paid me the right amount, but no more than that.”
“Our client has confidence in her claim, as we have stated throughout. The only benefit realistically to our client in settlement now is to avoid the further costs of progressing to trial, a level of which will always be irrecoverable even when our client wins her case as expected. Further, our client simply wishes to move forward and progress with her own business rather than continue protracted litigation with your clients, as we have said previously. Therefore, we are instructed at this stage to make the following offer on Part 36 terms … • Your clients will confirm and acknowledge our client’s ownership of the IP in the relevant typefaces, as particularised in our clients draft amended Particulars of Claim served on04 May 2023 …. • Any relevant sub-licences your clients claim they are still contractually obliged to maintain under the 2012 signed agreement will be disclosed in full to our client. Your clients will pay our client 60% of the licence fee for that licence for the remainder of its term from the date of acceptance of this offer. Any licence that continues on a rolling basis unless terminated will be terminated by your clients at the earliest time that such licence permits. • Your clients will cease offering and will not in future offer or purport to grant or renew any licence to use the typefaces or any infringing typefaces. • Your clients will pay our client’s costs on Part 36 terms. … This offer is generous to your clients as it effectively allows them to retain the revenues they have made from their infringements up to the date of acceptance. This offer is intended to be a Claimant’s Part 36 offer in respect of the entirety of our client’s issued claim no. J80NE032, as well as any perceived, but as yet completely unparticularised counterclaim your clients may purport to have…. If you consider this offer to be defective in any way or non-compliant withCPR Part 36 please inform us by return.”
“… we note from your clients proposed amended pleading that there is a clear indication that your corporate client has not paid our client the full extent of the royalties due to her under the distribution agreement, this being 60% of sums received for her works. Please therefore provide a full statement of sums received in respect of the relevant fonts for the full life of the contract by return.”
“There is no allegation in the draft Amended Particulars of Claim that any payment is due to your client relating to the period between September 2012 and20 September 2022 . Therefore no issue arises between the parties in relation to this. … If you believe we are wrong, please write again directing us to the relevant paragraph of the Amended Particulars of Claim and providing some sort of reasoned justification for your demands …”
“The request arises specifically from that set out in your clients’ Amended Defence and Counterclaim. These pleadings are not yet accepted into the proceedings, so the current Amended Particulars of Claim would not deal with them but it is apparent from that document there has been an underpayment. This is therefore a live issue, your clients have made it a live issue and we have made a proportionate and reasonable request on behalf of our client to see the relevant accounts and details of sales of the fonts in question. The fact this issue is currently not in the Amended Particulars of Claim is not a legally good reason to attempt to deny this request. … If your clients continue to unreasonably refuse to provide the information requested the obvious inference from this will be that there has been an underpayment and the same will be pleaded.”
“The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. … there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before.”
“i) Where A has brought an action against B, a later action against B or C may be struck out where the second action is an abuse of process. ii) A later action against B is much more likely to be held to be an abuse of process than a later action against C. iii) The burden of establishing abuse of process is on B or C as the case may be. iv) It is wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. v) The question in every case is whether, applying a broad merits based approach, A’s conduct is in all the circumstances an abuse of process. vi) The court will rarely find that the later action is an abuse of process unless the later action involves unjust harassment or oppression of B or C.”
“… what all the cases have in common is that the second claim is an attempt to reopen something that has already been decided. That is where the abuse lies. That does not mean there must have been a trial of the first claim. The principle is capable of applying if the previous proceedings have been settled by agreement. A settlement by the parties is just as much a final resolution of a claim as a judgment by a court, and it can be just as abusive to seek to circumvent it by putting forward a second claim. …”
“Failure to use reasonable diligence. As for the relevance of a claimant’s failure to use what the court might consider to be reasonable diligence in finding out facts relevant to whether he has a possible claim, it may be that this could possibly be relevant to the enquiry described by Lord Bingham, depending on the circumstances. On the other hand, it does not seem to me that there can be a general principle that a potential claimant is under a duty to exercise reasonable diligence, not yet having brought proceedings asserting a particular claim, to find out the facts relevant to whether he has or may have such a claim. Moreover, I do not see how it can be relevant at all that the claimant may have failed to use due diligence in attending to his own interests at the time of the transaction or the events giving rise to the claims asserted. Unless, on the merits, that is a complete and inevitable defence to the claim, it seems to me to be entirely irrelevant to the enquiry which is necessary under Johnson v Gore Wood ... Nothing in Wigram V-C’s observations in Henderson v Henderson … supports that. … If relevant at all, an enquiry as to any suggested lack of diligence on the part of the claimant would have to involve considering the circumstances of the particular claimant, including what knowledge he did have of the facts at any relevant stage, in order to decide whether he knew enough to put him on enquiry so as to try to find out more. In this context, as generally, it is also relevant that the onus is always on the defendant to show that the claimant’s conduct is an abuse of process.”
“… there can … only be one correct answer to whether there is or is not an abuse of process. Nonetheless an appellate court will be reluctant to interfere with the decision of the judge in the judgment he reaches on abuse of process by the balance of the factors … it will generally only interfere where the judge has taken into account immaterial factors, omitted to take account of material factors, erred in principle or come to a conclusion that was impermissible or not open to him.”
“79. … It seems to me unlikely on the face of it that Mrs Lish would not have noticed that her payments, for a period of 7 years, were in rounded numbers. Further, having been caused to wonder in July 2022 whether she was being underpaid (as she admitted) an amount I am now told could be as high as£300,000 , I am not convinced that an objective person in Mrs Lish’s position would not have taken further steps to ascertain the true position, particularly as she later commenced the Newcastle Claim against [TNB]. … The Defendants’ counsel urged on me that, having been caused to wonder, Mrs Lish ought to have taken further steps to find out the position of any underpayment. There is force in that submission …. 80. It does seem to me that it is likely that Mrs Lish was on notice from as early as 2022 that, since 2015, she had not been paid the 60% royalties under the 2012 Agreement. The Defendants' counsel describes as ‘entirely fanciful’ Mrs Lish's position that she was first on notice of the alleged underpayment when she received the draft Amended Defence and Counterclaim. That may put matters too highly, but it does seem to me that all the dots were there, and a reasonable person in Mrs Lish's position would have taken steps to join them.”
“81. …. Mrs Lish accepts that she had sufficient information to bring the Unpaid Royalties Claim having received and reviewed the draft Amended Defence and Counterclaim. ... There was a month between service of the proposed Amended Defence and Counterclaim and acceptance of the Part 36 Offer. At the hearing, I asked Mrs Lish’s counsel if it would have been open to her once she had received the proposed Amended Defence and Counterclaim to withdraw the Part 36 Offer, to provide her with sufficient time to regroup, and, if appropriate, replead the Newcastle Claim: he accepted that Mrs Lish could have taken those steps. Alternatively, she ought to have been clear to the Defendants that the Unpaid Royalties Claim was not included in the Part 36 Offer, that is, that she no longer wished to settle the whole dispute to ‘move forward and progress with her own business’. In my judgment, it was not open to Mrs Lish on the basis of Dexter to allow the Newcastle Claim to settle, and then commence further proceedings against the same parties in relation to the same arrangement and the same facts. To do so places the Defendants in a very difficult position. In compromising the Newcastle Claim, the Defendants made certain admissions as to copyright ownership that ran contrary to their pleaded case that Mrs Lish was an employee: they might not have done so had they known they were facing a further claim for unpaid royalties. It is not an answer, as Mrs Lish’s counsel submitted, that the Defendants were facing the Unpaid Royalties Claim as a fresh claim when Mrs Lish was entitled to amend the Newcastle Claim to include it – the Defendants are, in effect, now facing this claim with one hand tied behind their backs given the admissions made to settle the Newcastle Claim. That underlines the abusive nature of this claim. I also do not accept Mrs Lish’s counsel’s submission that the Defendants are not vexed twice because this claim ‘depends on different issues that were not in dispute, or were not central to’ the Newcastle Claim. I disagree – the meaning of the 2012 Agreement and any variation to it were central to the issues in the Newcastle Claim, and, as counsel for the Defendants pointed out, the Unpaid Royalties Claim involves the same parties, the same subject matter, the same agreement, the same issues and the same remedies. 82. Lord Bingham emphasised in Aldi [sic – this should presumably be a reference to Johnson] the need for finality in litigation. I am also mindful of the need for efficient use of court resources and the needs of other users. A multiplicity of actions is not in the interests of court users generally (because it occupies additional court days that could be used by other litigants) and, in this case, is certainly not in the interests of the Defendants, who have given detailed evidence of the negative impact on them of these proceedings. In my judgment, the Defendants have established that the Unpaid Royalties Claim is unjustly harassing and oppressive. The Unpaid Royalties Claim is abusive, and should be struck out.”