“(1) A declaration as to ownership of the copyright in the Claimants’ Copyright Works [The Claimants’ Copyright Works aredefined in paragraph 10 of the Particulars of Claim to mean the sound recording copyrights subsisting in the three albums]. (2) A declaration as the extent of their performer’s rights including any duty on the Defendant to pay to a relevant collecting society remuneration due under CDPA 1988, s 191HB. [The statutory reference is toSection 191HB of the Copyright, Designs and Patents Act 1988 (“the 1988 Act”)]. (3) A declaration as to any beneficial rights. (4) An inquiry as to damages for infringement of copyright (including damages under reg.3 of the Intellectual Property (Enforcement etc.) Regulations), alternatively and at the Claimant’s option an account of profits, together with an order for the payment to the Claimants of all sums found due upon the making of the said inquiry or the taking of the said account together with interest pursuant tosection 35A of the Senior Courts Act 1981 or under the equitable jurisdiction of the court. (5) An order that the measures be taken at the Defendants’ expense for the dissemination and publication of any judgment favourable in whole or in part to the Claimants or either of them herein. (6) Further or other relief. (7) Costs.”
“On their face, they appear to be very comprehensive waivers of any present and future rights of action for copyright infringement. In consequence of the settlement embodied in these documents, both claims were discontinued “with prejudice”, meaning that they could not be revived.”
“13. Mr Malynicz says that he has an answer to all the points made in the skeleton and, indeed, has taken me through some of the arguments he would deploy. In my view, however, this is not the occasion for the court to decide whether the Claimant or the Defendant will prevail on all or some of these particular points in issue, some of which involve quite complex areas of intellectual property law. For present purposes, therefore, I am entitled to and do assume that the claim form and particulars of claim disclose viable causes of action against the Defendant which, subject to the jurisdiction challenge, are properly justiciable in this court. The claims advanced subsist under the law of copyright and performers’ rights applicable to the United Kingdom.”
“Those are the rival arguments on this application and, in considering these submissions and the evidence, I return to the guidance given by Lord Goff in The Spiliada case which requires me to identify in which forum the case could most suitably be tried for the interests of all the parties and for the ends of justice. Specifically, it is for the Defendant to show not only that England is not the natural or appropriate forum for the trial but that there is another available forum which is clearly or distinctly more appropriate than the English forum. Having regard to all the evidence before me, and to the comprehensive submissions by leading counsel on both sides for which I am very grateful, I conclude that the Defendant has been unable to demonstrate that New York is the appropriate forum for the disposal of the dispute between the parties, principally but not exclusively for the following reasons:”
“(a) As the claim is presently constituted, it seems to me obvious that England is the most natural and appropriate forum i.e. the forum with which the claim has the most real and substantial connection. The Claimants and the Defendant are UK entities, UK and applicable EU law is the governing law of the claim and the acts complained of by the Claimants occurred in the UK. (b) Looking through the pleaded claim and anticipating the defence, this will introduce consideration of the Releases which were executed in New York in proceedings in that jurisdiction. That clearly provides some connection with New York, albeit that it appears that none of the New York plaintiffs are actually registered or established in that jurisdiction. It is unlikely that much in the way of evidence would be required since the critical documents speak for themselves. (c) However, although the Releases were executed in New York in the context of proceedings in that jurisdiction, their meaning and effect must be tested by reference to the claims actually being made in these UK proceedings. It makes no practical sense to construe them, albeit under New York law, in a vacuum. If the Claimant is right, and for these purposes I must assume that this is at least a possibility, their effect will or may be modified by the relevant UK and EU law relating to consent. It would be perverse to require the New York courts to deal with these issues of UK law. Essentially, indeed expressly, the New York court is being asked to determine whether Sony UK has a good defence to the claims brought in England by English Claimants. (d) The New York claim, in the form that the New York Plaintiffs have chosen, namely seeking declaratory relief, deals only with one aspect of the dispute. If the Plaintiffs fail to obtain a declaration that has the effect of barring the Claimants from pursuing the claim, what is to happen to the claim itself? Either it must then be revived here or the Claimants would have to counter sue in New York for infringement in the UK of their copyright and ask a New York court to determine issues of UK law. I have no doubt the New York courts would do their utmost to apply this technical area of UK law in a competent fashion. with the assistance of UK law experts. but this is obviously an undesirable and unnecessarily back to front method of dispute resolution. (e) If at some stage in the proceedings it proved necessary to join one or both of the Hendrix Companies, both registered in Washington State, this can be achieved by agreement if necessary or by an application for service out. I do not regard the failure to join them at this stage before the Defendant has formally pleaded reliance on the Releases as in any way culpable or fatally damaging to the claim as currently constituted. (f) Accordingly, although there is, of course, a New York element to the claim as framed within its wider parameters, it cannot be said that New York is the natural or appropriate forum for the claim as a whole, and England is clearly the forum with the most real and substantial connection to it. (g) It follows that the Defendant has failed to establish that there is another available forum, New York in this case, which is clearly or distinctly more appropriate than the English forum. The issue of the Releases can be pleaded by way of defence in the claim. If it is necessary to construe the meaning by reference to New York law, this can be done in the usual way with the assistance of foreign law experts but the effect as regards the instant claims is likely to be decided by reference to wider considerations and legal framework. I do not see that the Defendant is disadvantaged in any way. As it happens, it is not a party to the New York claim so will not have wasted any costs to date. If it is right about the defects in the claim as currently pleaded, it can take appropriate steps under the CPR to dispose of it at an early stage.” of foreign law experts but the effect as regards the instant claims is likely to be decided by reference to wider considerations and legal framework. I do not see that the Defendant is disadvantaged in any way. As it happens, it is not a party to the New York claim so will not have wasted any costs to date. If it is right about the defects in the claim as currently pleaded, it can take appropriate steps under the CPR to dispose of it at an early stage.”
“27 Since the Defendant is unable to show that New York is the forum conveniens and there is no basis for granting a stay, it is not necessary to consider Lord Goff’s final point (as cited above): namely, whether there are circumstances by reason of which justice requires that the stay should nevertheless not be granted. It also follows from the above that I do not consider that there is any merit in the Defendant’s alternative submission: namely, that the court should order a stay of the current claim for case management reasons. I therefore dismiss the Claimants’ application.”
“Lord Goff’s six principles are summarised below, although they are not strictly relevant to a case where the claimant is applying to serve proceedings out of the jurisdiction (see para. 6.37.16 above). It is commonly said that his lordship formulated “a two-stage test” for the determination of the question whether proceedings should be stayed on forum non conveniens grounds. At the first stage, it is for the defendant to satisfy the court that there is another forum which is prima facie the “appropriate” forum for the trial of the action. If the defendant does so, then the second stage is to decide whether there are special circumstances by reason of which justice requires that the trial should, nevertheless, take place in England (476D to 476E). That test is apparent in the principles below.”
“1. The basic principle is that a stay will only be granted on the ground of forum non conveniens where the court is satisfied that there is some other available forum, having competent jurisdiction, which is the appropriate forum for the trial of the action, i.e., in which the case may be tried more suitably for the interests of all the parties and the ends of justice. 2. In general the burden of proof rests on the defendant to persuade the court to exercise its discretion to grant a stay. However, each party will seek to establish the existence of factors which it relies upon, and in respect of any such matter the evidential burden will rest on the party who asserts its existence. If the court is satisfied that there is another available forum which is prima facie the appropriate forum, the burden will shift to the claimant to show that there are special circumstances by reason of which justice requires that the trial should nevertheless take place in England. 3. The defendant has the burden not just to show that England is not the natural or appropriate forum for the trial, but to establish that there is another available forum which is clearly or distinctly more appropriate than the English forum. 4. Since the question is whether there exists some other forum that is clearly more appropriate for the trial of the action, the court will look first to see what factors there are which point in the direction of another forum. The natural forum is that with which the action has the most real and substantial connection. Connecting factors will include not only factors affecting convenience or expense (such as availability of witnesses), but also other factors such as the law governing the relevant transaction, and the places where the parties respectively reside or carry on business. 5. If the court concludes at that stage that there is no other available forum which is clearly more appropriate for the trial of the action, it will ordinarily refuse a stay. 6. If, however the court concludes at that stage that there is some other available forum which prima facie is clearly more appropriate for the trial of the action, it will ordinarily grant a stay unless the circumstances by reason of which justice requires that the stay should nevertheless not be granted. In this inquiry, the court will consider all the circumstances of the case, including circumstances which go beyond those taken into account when considering connecting factors with other jurisdictions. One such factor can be the fact, if established objectively by cogent evidence, that the claimant will not obtain justice in the foreign jurisdiction, and the burden is on the claimant to prove this.”
“32 In identifying the forum in which the case can suitably be tried for the interests of all parties and for the ends of justice, it is important to recognise that the "case" is not restricted to an analysis of the claim and relief sought by the claimant. Mr Layton submitted, and I accept, that one must have regard to the totality of the dispute, including where necessary the defendant's answer to the claim. So much is clear from VTB Capital Plc v Nutritek International Corp[2013] UKSC 5 ,[2013] 2 AC 337 , in particular from the speech of Lord Mance at [57], Lord Neuberger at [90]-[91] and Lord Clarke at [192].”
“34 As Bingham L.J. went on to explain at p. 111 E-G, Harman J.' s approach built the answer into the question: "With every respect to the judge, the answer is only "blindingly obvious" to him because of the premises which are built into the way he has posed his question.... in my judgment he has failed to keep in mind at this crucial stage in his judgment that this company is by Argentine law to be considered as a local, Argentinian company. I do not regard it as at all blindingly obvious that relief for the dishonest management of an Argentinian company in Argentina should be granted by a court other than the Argentinian court. That illustrates that the question formulated may by limiting the premises on which it is formulated dictate the answer. That is in my respectful view what the judge has done here, instead of concentrating on the question as put in Spiliada Maritime Corporation v Cansulex Ltd. [1987] A.C. 460." 35 At p.123 F-G Bingham L.J. put the matter in this way: "Before applying The Spiliada ... test, the judge posed the question: "What is this action?" That was a very pertinent question. One cannot decide where a matter should be most appropriately and justly tried without being clear what is to be tried. But I do not think the question should be answered simply by reference to the relief claimed, since in an English action the relief claimed will almost inevitably be framed in English terms, particularly where it is statutory. An English leader will not claim triple damages or dommage-interet, appropriate as such relief may be elsewhere. Thus when the judge answered the question by quoting part of the language ofsection 459 of the Companies Act 1985 he was unconsciously building in a bias towards the choice of an English forum".” "With every respect to the judge, the answer is only "blindingly obvious" to him because of the premises which are built into the way he has posed his question.... in my judgment he has failed to keep in mind at this crucial stage in his judgment that this company is by Argentine law to be considered as a local, Argentinian company. I do not regard it as at all blindingly obvious that relief for the dishonest management of an Argentinian company in Argentina should be granted by a court other than the Argentinian court. That illustrates that the question formulated may by limiting the premises on which it is formulated dictate the answer. That is in my respectful view what the judge has done here, instead of concentrating on the question as put in Spiliada Maritime Corporation v Cansulex Ltd. [1987] A.C. 460." "Before applying The Spiliada ... test, the judge posed the question: "What is this action?" That was a very pertinent question. One cannot decide where a matter should be most appropriately and justly tried without being clear what is to be tried. But I do not think the question should be answered simply by reference to the relief claimed, since in an English action the relief claimed will almost inevitably be framed in English terms, particularly where it is statutory. An English leader will not claim triple damages or dommage-interet, appropriate as such relief may be elsewhere. Thus when the judge answered the question by quoting part of the language ofsection 459 of the Companies Act 1985 he was unconsciously building in a bias towards the choice of an English forum".”
“I for my part recognise fully the risks to which Mr Carr draws attention, but I have no doubt that judges (not least commercial judges) will be alive to these risks. It will very soon become clear that stays are only granted in cases of this kind in rare and compelling circumstance. Should the upholding of the judge’s order lead to the making of unmeritorious applications, then I am confident that judges will know how to react.”
“58. It is interesting to see how an observation by Lord Bingham that there was no need to be concerned about a "floodgates" argument because in fact it would only be in rare cases, where there was a compelling reason to do so, that a stay of English proceedings would be granted in order to await the outcome of proceedings abroad has been elevated almost into a legal test that "rare and compelling circumstances" must exist before the apparently unfettered jurisdiction to grant such a stay can be exercised. 59. There is, as it seems to me, no reason to doubt that it is only in rare and compelling cases that it will be in the interests of justice to grant a stay on case management grounds in order to await the outcome of proceedings abroad. After all, the usual function of a court is to decide cases and not to decline to do so, and access to justice is a fundamental principle under both the common law andArticle 6 ECHR . The court will therefore need a powerful reason to depart from its usual course and such cases will by their nature be exceptional. In my judgment all of the guidance in the cases which I have cited is valuable and instructive, but the single test remains whether in the particular circumstances it is in the interests of justice for a case management stay to be granted. There is not a separate test in "parallel proceedings" cases. Rather, considerations such as the existence of an exclusive English jurisdiction clause and the danger of circumventing a statutory scheme for the allocation of jurisdiction (such as the Judgments Regulation) will be weighty and often decisive factors pointing to where the interests of justice lie.”
“96 Lord Mance JSC in paras 41 and 42. of his judgment has set out the passages in the judgments of Arnold J and the Court of Appeal respectively, which contain the centrally relevant reasoning of those tribunals on the first question which we have to decide. At least on the face of it, those passages each involve a classical interlocutory weighing up exercise with which an appellate court should be slow to interfere. Of course, that does not detract from the point that the Court of Appeal will consider any argument that the judge took into account any irrelevant or mistaken material, or omitted some relevant material, which could well have influenced the conclusion reached, or that the case is one of those even more unusual cases where the judge's conclusion was one that no reasonable judge could have reached. 97 It is worth emphasising that, as Lord Wilson JSC says, the exercise carried out by the judge and by the Court of Appeal on the first question was not the exercise of a discretion but an evaluative, or a balancing, exercise, with which, as Lord Goff said in The Spiliada at p 465, an "appellate court should be slow to interfere" (also reflected in Lord Bingham's observation in Lubbe quoted in para 92 above).”
“156 The forum issue required Arnold J not (in my view) to exercise a discretion but, rather, to reach an evaluative judgment upon whether, in the light of these and the many other points pressed upon him by each side, England was clearly the more appropriate forum. "The appellate court should be slow to interfere" (Lord Goff in The Spiliada[1987] AC 460 , 465); and I agree with Lord Mance JSC at para 68 and with Lord Neuberger PSC at para 98 that the errors which the Court of Appeal identified in the judgment of Arnold J (in particular his adoption of the two-part test apt to an application for stay) were, on analysis, of materiality insufficient to justify a re-evaluation of its own. Furthermore, notwithstanding its own error about the governing law of the torts, alongside which, however, one must weigh its assertion that an English governing law would not have led it to a different conclusion, I agree with Lord Neuberger PSC's alternative conclusion at para 96 that there are no grounds for interfering with the Court of Appeal’s own evaluative conclusion.”
“Where the application is for permission to appeal from a case management decision, the court dealing with the application may take into account whether— (a) the issue is of sufficient significance to justify the costs of an appeal; (b) the procedural consequences of an appeal (e.g loss of trial date) outweigh the significance of the case management decision; (c) it would be more convenient to determine the issue at or after trial. Case management decisions include decisions made under rule 3.1(2) and decisions about disclosure, filing of witness statements or experts’ reports, directions about the timetable of the claim, adding a party to a claim and security for costs.”
“27. The starting point is that this was a case management decision, reached after a full day's argument. In Mannion v Ginty[2012] EWCA Civ 1667 at [18], Lewison LJ said that it was "vital for the Court of Appeal to uphold robust, fair case management decisions made by first instance judges". That point was reiterated in Abdulle v Commissioner of Police of the Metropolis[2015] EWCA Civ 1260 ;[2016] 1 WLR 898 , where it was made plain that this principle applied, even if the case management decision in question had a very significant impact upon the proceedings. 28. In such a case, this court can only interfere with the decision of the lower court if the judge had regard to a factor that was irrelevant or failed to have regard to a factor that was relevant, or if the judge's discretion was "clearly wholly wrongly exercised": see Eagil Trust Co Ltd v Pigott-Brown[1985] 3 All ER 119 and Royal and Sun Alliance Insurance PLC v TcCEN Ltd[2002] EWCA Civ 1964 , at [38] and [47]. That is, on any view, a high hurdle for the claimants to overcome in this case. This was a decision of the judge in charge of the TCC, with considerable experience of case-managing challenging claims through to a conclusion.”
“1. I hereby release the Estate of JIMI HENDRIX, deceased, “ARE YOU EXPERIENCED”, a corporation, the stock of which is owned by the Estate of JIMI HENDRIX, deceased, Warner Brothers Records, and any and all other record companies throughout the world with whom JIMI HENDRIX in his lifetime, or the Estate of JIMI HENDRIX, deceased, have entered into contracts or agreements for the distribution and sale of recordings of JIMI HENDRIX on which I performed, from any and all liability or responsibility to me to account for any royalities [royalties?] or compensation to me in connection with said recordings. I further covenant not to sue any such record companies for compensation arising out of distribution of such recordings. By this release I acknowledge full settlement of any compensation which I may claim in connection with earnings on said recordings in the past, as well as any earnings which might result in the future, both in the United States and throughout the rest of the world.”
“42. If the concept of consent were a matter for the national laws of the Member States, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned. The objective of "the same protection" under the legal systems of all the Member States set out in the ninth recital in the preamble to Directive 89/104, where it is described as "fundamental", would not be attained. 43 It therefore falls to the Court to supply a uniform interpretation of the concept of "consent to the placing of goods on the market within the EEA" as referred to in Article 7(1) of the Directive.”
“45. In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated. 46 Such intention will normally be gathered from an express statement of consent. Nevertheless, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights. 47 The answer to the first question referred in each of Cases C-414/99 to C-416/99 must therefore be that, on a proper construction of Article 7(1) of the Directive, the consent of a trade mark proprietor to the marketing within the EEA of products bearing that mark which have previously been placed on the market outside the EEA by that proprietor or with his consent may be implied, where it is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his right to oppose placing of the goods on the market within the EEA.”
“53. It follows from the answer to the first question referred in the three cases C-414/99 to C-416/99 that consent must be expressed positively and that the factors taken into consideration in finding implied consent must unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights. 54 It follows that it is for the trader alleging consent to prove it and not for the trade mark proprietor to demonstrate its absence. 55 Consequently, implied consent to the marketing within the EEA of goods put on the market outside that area cannot be inferred from the mere silence of the trade mark proprietor. 56 Likewise, implied consent cannot be inferred from the fact that a trade mark proprietor has not communicated his opposition to marketing within the EEA or from the fact that the goods do not carry any warning that it is prohibited to place them on the market within the EEA. 57 Finally, such consent cannot be inferred from the fact that the trade mark proprietor transferred ownership of the goods bearing the mark without imposing contractual reservations or from the fact that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA. 58. A rule of national law which proceeded upon the mere silence of the trade mark proprietor would not recognise implied consent but rather deemed consent. This would not meet the need for consent positively expressed required by Community law. 59 In so far as it falls to the Community legislature to determine the rights of a trade mark proprietor within the Member States of the Community it would be unacceptable on the basis of the law governing the contract for marketing outside the EEA to apply rules of law that have the effect of limiting the protection afforded to the proprietor of a trade mark by Articles 5(1) and 7(1) of the Directive. 60 The answer to be given to the second question and to question 3(a)(i), (vi) and (vii) in Cases C-415/99 and C-416/99, and to the second question inCase C-414/99 , must therefore be that implied consent cannot be inferred: from the fact that the proprietor of the trade mark has not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA; from the fact that the goods carry no warning of a prohibition of their being placed on the market within the EEA; from the fact that the trade mark proprietor has transferred the ownership of the products bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA.” from the fact that the proprietor of the trade mark has not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA; from the fact that the goods carry no warning of a prohibition of their being placed on the market within the EEA; from the fact that the trade mark proprietor has transferred the ownership of the products bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA.”
“33. Next, it is important to emphasise that the rights guaranteed to authors by art.2(a) and art.3(1) of Directive 2001/29 are preventive in nature, in the sense that any reproduction or communication to the public of a work by a third party requires the prior consent of its author (concerning the right of reproduction, see, to that effect, Infopaq International EU:C:2009:465 at [57] and [74], and Football Association Premier League Ltd v QC Leisure (C-403/08 & C-429/08) EU:C:2011:631; [2012] 1 C.M.L.R. 29 at [162], and, concerning the right of communication to the public, see, to that effect, Societa Consortile Fonografici (SCF) v Del Corso (C-135/10) EU:C:2012:140 at [75], and Svensson v Retriever Sverige AB (C-466/12) EU:C:2014:76; [2014] 3 C.M.L.R. 4 at [15]). 34 It follows that, subject to the exceptions and limitations laid down exhaustively in art.5 of Directive 2001/29, any use of a work carried out by a third party without such prior consent must be regarded as infringing the copyright in that work (see, to that effect, UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH (C-314/12) EU:C:2014:192 at [24] and [25]). 35 Nevertheless, art.2(a) and art.3(1) of Directive 2001/29 do not specify the way in which the prior consent of the author must be expressed, so that those provisions cannot be interpreted as requiring that such consent must necessarily be expressed explicitly. It must be held, on the contrary, that those provisions also allow that consent to be expressed implicitly. 36 Thus, in a case in which it was questioned about the concept of a "new public", the Court held that, in a situation in which an author had given prior, explicit and unreserved authorisation to the publication of his articles on the website of a newspaper publisher, without making use of technological measures restricting access to those works from other websites, that author could be regarded, in essence, as having authorised the communication of those works to the general internet public (see, to that effect, Svensson [2014] 3 C.M.L.R. 4 at [25]—[28] and [31]). 37 However, the objective of increased protection of authors to which recital 9 of Directive 2001/29 refers implies that the circumstances in which implicit consent can be admitted must be strictly defined in order not to deprive of effect the very principle of the author's prior consent. 38 In particular, every author must actually be informed of the future use of his work by a third party and the means at his disposal to prohibit it if he so wishes. 39 Failing any actual prior information relating to that future use, the author is unable to adopt a position on it and, therefore, to prohibit it, if necessary, so that the very existence of his implicit consent appears purely hypothetical in that regard. 40 Consequently, without guarantees ensuring that authors are actually informed as to the envisaged use of their works and the means at their disposal to prohibit it, it is de facto impossible for them to adopt any position whatsoever as to such use.”
“18. Next, it should be noted that, by its last two questions, the national court is asking essentially whether there is consent within the meaning of Article 7 of the 15 Directive where the trade-mark proprietor has consented to the marketing in the EEA of goods which are identical or similar to those in respect of which exhaustion is claimed or if, on the other hand, consent must relate to each individual item of the product in respect of which exhaustion is claimed. 19. The text of Article 7(1) of the Directive does not give a direct answer to that 20 question. Nevertheless, the rights conferred by the trade mark are exhausted only in respect of the individual items of the product which have been put on the market with the proprietor's consent in the territory there defined. The proprietor may continue to prohibit the use of the mark in pursuance of the right conferred on him by the Directive in regard to individual items of that product which have 25 been put on the market in that territory without his consent. 20. That is the interpretation of Article 7(1) that the court has already adopted. Thus, the court has already held that the purpose of that provision is to make possible the further marketing of an individual item of a product bearing a trade mark that has been put on the market with the consent of the trade-mark 30 proprietor and to prevent him from opposing such marketing (Case C-337/95 Parfums Christian Dior v. Evora [1997] E.C.R. 1-6013, paragraphs 37 and 38, andCase C-63/97 BMW v. Deenik19 paragraph 57). That interpretation is, moreover, confirmed by Article 7(2) of the Directive which, in its reference to the "further commercialisation" of goods, shows that the principle of exhaustion concerns only 35 specific goods which have first been put on the market with the consent of the trade-mark proprietor. 21. Furthermore, in adopting Article 7 of the Directive, which limits exhaustion of the right conferred by the trade mark to cases where the goods bearing the mark have been put on the market in the Community (in the EEA since the EEA 40 Agreement entered into force), the Community legislature has made it clear that putting such goods on the market outside that territory does not exhaust the proprietor's right to oppose the importation of those goods without his consent and thereby to control the initial marketing in the Community (in the EEA since the EEA Agreement entered into force) of goods bearing the mark. That 45 protection would be devoid of substance if, for there to be exhaustion within the meaning of Article 7, it were sufficient for the trade-mark proprietor to have consented to the putting on the market in that territory of goods which were identical or similar to those in respect of which exhaustion is claimed. 22. In the light of the foregoing, the answer to the questions referred must be that Article 7(1) of the Directive must be interpreted as meaning that: — the rights conferred by the trade mark are exhausted only if the products have been put on the market in the Community (in the EEA since the EEA Agreement entered into force) and that provision does not leave it open to the Member States to provide in their domestic law for exhaustion of the rights conferred by the trade mark in respect of products put on the market in non-member countries; — for there to be consent within the meaning of Article 7(1) of that directive, such consent must relate to each individual item of the product in respect of which exhaustion is pleaded.” — the rights conferred by the trade mark are exhausted only if the products have been put on the market in the Community (in the EEA since the EEA Agreement entered into force) and that provision does not leave it open to the Member States to provide in their domestic law for exhaustion of the rights conferred by the trade mark in respect of products put on the market in non-member countries; — for there to be consent within the meaning of Article 7(1) of that directive, such consent must relate to each individual item of the product in respect of which exhaustion is pleaded.”
“28. Further and in the alternative, should NR and/or MM be found to have assigned, transferred, waived, released or otherwise be precluded from enforcing their rights (either copyright or performers' property rights), the Claimants are entitled to claim remuneration under CDPA 1988, s. 191HB (being 20% of the revenue from the exclusive rights of distribution, reproduction and making available), and the owners or exclusive licensees to the sound recordings are obliged to pay that remuneration to PPL. This right was introduced by the Copyright and Duration of Rights inPerformances Regulations 2013 , SI 2013/1782, regs 3, 9 to implement Directive 2011/77/EU (amending Directive 2006/116/EC, by introducing into the latter Directive Art. 3(2b)- 3(2d)). This right 'may not be waived by the performer' (Directive, Art 3(2)(b)): or as CDPA, s191HB (7) puts it, 'an agreement is of no effect in so far as it purports to exclude or restrict the entitlement' (a provision applicable to pre-existing agreements under SI 2013/1782, reg 26). The right arises where there is an agreement or contract relating to a transfer or assignment which provides for a 'non-recurring' payment or remuneration. The duty of the phonogram producer/owner of the sound recording copyright/exclusive licensee to pay this remuneration became due at the end of the 50th year following the release of the recordings, that is, from1 January 2018 (in relation to Are You Experienced? And Axis: Bold as Love, and1 January 2019 for Electric Ladyland, and continues for the remainder of the period of protection of copyright in the sound recording.”
“(1) A performer who, under an agreement relating to the assignment of rights referred to in section 191HA(1) (an "assignment agreement"), is entitled to a non-recurring payment in consideration of the assignment, is entitled to an annual payment for each relevant period from— (a) the producer, or (b) where the producer has granted an exclusive licence of the copyright in the sound recording, the licensee under the exclusive licence (the "exclusive licensee"). (2) In this section, "relevant period" means— (a) the period of 12 months beginning at the end of the 50-year period, and (b) each subsequent period of 12 months beginning with the end of the previous period, until the date on which copyright in the sound recording expires. (3) The producer or, where relevant, the exclusive licensee gives effect to the entitlement under subsection (1) by remitting to a collecting society for distribution to the performer in accordance with its rules an amount for each relevant period equal to 20% of the gross revenue received during that period in respect of— (a) the reproduction and issue to the public of copies of the sound recording, and (b) the making available to the public of the sound recording by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. (4) The amount required to be remitted under subsection (3) is payable within 6 months of the end of each relevant period and is recoverable by the collecting society as a debt. (5) Subsection (6) applies where— (a) the performer makes a written request to the producer or, where relevant, the exclusive licensee for information in that person's possession or under that person's control to enable the performer— (i) to ascertain the amount of the annual payment to which the performer is entitled under subsection (1), or (ii) to secure its distribution by the collecting society, and (b) the producer or, where relevant, the exclusive licensee does not supply the information within the period of 90 days beginning with the date of the request. (6) The performer may apply to the county court, or in Scotland to the sheriff, for an order requiring the producer or, where relevant, the exclusive licensee to supply the information. (7) An agreement is of no effect in so far as it purports to exclude or restrict the entitlement under subsection (1). (8) In the event of any dispute as to the amount required to be remitted under subsection (3), the performer may apply to the Copyright Tribunal to determine the amount payable. (9) Where a performer is entitled under an assignment agreement to recurring payments in consideration of the assignment, the payments must, from the end of the 50-year period, be made in full, regardless of any provision in the agreement which entitles the producer to withhold or deduct sums from the amounts payable. (10) In this section— "producer" and "50-year period" each has the same meaning as in section 191HA, "exclusive licence" has the same meaning as in section 92, and "collecting society" has the same meaning as in section 191G.” (a) the producer, or (b) where the producer has granted an exclusive licence of the copyright in the sound recording, the licensee under the exclusive licence (the "exclusive licensee"). (a) the period of 12 months beginning at the end of the 50-year period, and (b) each subsequent period of 12 months beginning with the end of the previous period, until the date on which copyright in the sound recording expires. (a) the reproduction and issue to the public of copies of the sound recording, and (b) the making available to the public of the sound recording by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. (a) the performer makes a written request to the producer or, where relevant, the exclusive licensee for information in that person's possession or under that person's control to enable the performer— (i) to ascertain the amount of the annual payment to which the performer is entitled under subsection (1), or (ii) to secure its distribution by the collecting society, and (b) the producer or, where relevant, the exclusive licensee does not supply the information within the period of 90 days beginning with the date of the request. "producer" and "50-year period" each has the same meaning as in section 191HA, "exclusive licence" has the same meaning as in section 92, and "collecting society" has the same meaning as in section 191G.”
“21 The essence of the jurisdiction argument for the Defendant is this. Since the Releases are central to the issues in the claim and since they were executed by way of settlement of New York proceedings, New York is clearly or distinctly the appropriate forum. Although he says, the Claimants have attempted to frame their case as exclusively involving UK law and UK parties, the court must look through that tactical formulation and see the real dispute as existing between the Hendrix companies in the United States and the Claimants, by reference to the effect of the Releases.”
“(d) The New York claim, in the form that the New York Plaintiffs have chosen, namely seeking declaratory relief, deals only with one aspect of the dispute. If the Plaintiffs fail to obtain a declaration that has the effect of barring the Claimants from pursuing the claim, what is to happen to the claim itself? Either it must then be revived here or the Claimants would have to counter sue in New York for infringement in the UK of their copyright and ask a New York court to determine issues of UK law. I have no doubt the New York courts would do their utmost to apply this technical area of UK law in a competent fashion. with the assistance of UK law experts. but this is obviously an undesirable and unnecessarily back to front method of dispute resolution.” “(f) Accordingly, although there is, of course, a New York element to the claim as framed within its wider parameters, it cannot be said that New York is the natural or appropriate forum for the claim as a whole, and England is clearly the forum with the most real and substantial connection to it.”
“27 Since the Defendant is unable to show that New York is the forum conveniens and there is no basis for granting a stay, it is not necessary to consider Lord Goff’s final point (as cited above): namely, whether there are circumstances by reason of which justice requires that the stay should nevertheless not be granted. It also follows from the above that I do not consider that there is any merit in the Defendant’s alternative submission: namely, that the court should order a stay of the current claim for case management reasons. I therefore dismiss the Claimants’ application.”
“not readily exercised and should be exercised only in “rare and compelling circumstances” and account is always taken of the legitimate interests of claimants which are to be prejudiced no more than the interests of justice require (Reichhold Norway ASA v Goldman Sachs International[2000] 1 WLR 173 CA, at 186 per Lord Bingham CJ).”
“56. The Supreme Court discussed briefly the court's power to order a stay where there are proceedings in another jurisdiction in Unwired Planet International Ltd v Huawei Technologies (UK) Co Ltd[2020] UKSC 37 , [2020] Bus LR 2422: "99. We therefore turn to case management. The English courts have wide case management powers, and they include the power to impose a temporary stay on proceedings where to do so would serve the Overriding Objective: seeCPR 1.2 (a) and 3.1(2)(f). For example a temporary stay is frequently imposed (and even more frequently ordered by consent) in order to give the parties breathing space to attempt to settle the proceedings or narrow the issues by mediation or some other form of alternative dispute resolution. A temporary stay may be ordered where there are parallel proceedings in another jurisdiction, raising similar or related issues between the same or related parties, where the earlier resolution of those issues in the foreign proceedings would better serve the interests of justice than by allowing the English proceedings to continue without a temporary stay: see Reichhold Norway ASA v Goldman Sachs International[2000] 1 WLR 173 . But this would be justified only in rare or compelling circumstances: see per Lord Bingham CJ[2000] 1 WLR 173 at 185-186, and Klockner Holdings GmbH v KlocknerBeteiligungs GmbH[2005] EWHC 1453 (Comm) .” "99. We therefore turn to case management. The English courts have wide case management powers, and they include the power to impose a temporary stay on proceedings where to do so would serve the Overriding Objective: seeCPR 1.2 (a) and 3.1(2)(f). For example a temporary stay is frequently imposed (and even more frequently ordered by consent) in order to give the parties breathing space to attempt to settle the proceedings or narrow the issues by mediation or some other form of alternative dispute resolution. A temporary stay may be ordered where there are parallel proceedings in another jurisdiction, raising similar or related issues between the same or related parties, where the earlier resolution of those issues in the foreign proceedings would better serve the interests of justice than by allowing the English proceedings to continue without a temporary stay: see Reichhold Norway ASA v Goldman Sachs International[2000] 1 WLR 173 . But this would be justified only in rare or compelling circumstances: see per Lord Bingham CJ[2000] 1 WLR 173 at 185-186, and Klockner Holdings GmbH v KlocknerBeteiligungs GmbH[2005] EWHC 1453 (Comm) .”
“59. There is, as it seems to me, no reason to doubt that it is only in rare and compelling cases that it will be in the interests of justice to grant a stay on case management grounds in order to await the outcome of proceedings abroad. After all, the usual function of a court is to decide cases and not to decline to do so, and access to justice is a fundamental principle under both the common law andArticle 6 ECHR . The court will therefore need a powerful reason to depart from its usual course and such cases will by their nature be exceptional. In my judgment all of the guidance in the cases which I have cited is valuable and instructive, but the single test remains whether in the particular circumstances it is in the interests of justice for a case management stay to be granted. There is not a separate test in "parallel proceedings" cases. Rather, considerations such as the existence of an exclusive English jurisdiction clause and the danger of circumventing a statutory scheme for the allocation of jurisdiction (such as the Judgments Regulation) will be weighty and often decisive factors pointing to where the interests of justice lie.”