Topalsson GmbH v Rolls-Royce Motorcars Limited & Anor [2025] EWHC 1584 (KB)

[2025] EWHC 1584 (KB)This judgment was handed down by release to The National Archives on 1 July 2025 at 11am.Case No KF 2024 010445
IN THE HIGH COURT OF JUSTICE
KING’S BENCH DIVISION
IN THE MATTER OF THE EVIDENCE (PROCEEDINGS IN OTHER JURISDICTIONS) ACT 1975
AND IN THE MATTER OF THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS
AND IN THE MATTER OF RULES 32.16 TO 34.21 OF THE CIVIL PROCEDURE RULES 1998
AND IN THE MATTER OF PROCEEDINGS IN A CIVIL OR COMMERCIAL PROCEEDING NOW PENDING BEFORE THE UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA
Venue Royal Courts of Justice, Strand London WC2A 2LLDate 1 July 2025
Before
SENIOR MASTER COOK
Between
TOPALSSON GmbHApplicant(1) ROLLS-ROYCE MOTORCARS LIMITEDRespondents(2) MATTHEW SCOTT
Kathryn Pickard KC (instructed by Spring Law) for ApplicantAlex Charlton KC and Iain Munro (instructed by Clarkslegal LLP) for RespondentsHearing Hearing date: 9 June 2025
Approved Judgment

Senior Master Cook:

[1]This is my judgment on the hearing of the Respondents’ application dated 7 January 2025 for an order setting aside, alternatively, varying my order dated 11 December 2024 (the “Order”), granting a Letter of Request issued at the request of the Honorable Pedro V Castillo, a United States Magistrate Judge in the District Court for the Central District of California, on 4 September 2024 in support of copyright complaint proceedings being pursued in that court by the Applicant (the “US Complaint” and the “US Proceedings”) .[2]The application is supported by the witness statements of Emma Butcher dated 23 December 2024 and 23 May 2025. The Respondents’ application is opposed by the Applicant. The Applicant relies upon the witness statements of Callum Knight dated 25 November 2024, 2 May 2025, 15 May 2025 and 30 May 2025, and Lydia Raw dated 6 May 2025.

The background and associated litigation

[3]In October 2019, the First Respondent contracted with the Applicant to design, develop and implement a new real-time vehicle configurator sales tool for the launch of the First Respondent’s new Rolls-Royce “Ghost” motor car. This contractual relationship did not end well. Proceedings have been commenced in three separate jurisdictions, England and Wales, the United States of America and Germany.[4]The parties have been engaged in a breach of contract claim, concerning termination of the 2019 contract, since September 2020. Proceedings were issued in the TCC and remain ongoing (the “Contract Proceedings”). The substantive first instance decision in the Contract Proceedings was handed down by O’Farrell J on 12 July 2023, finding that the First Respondent was entitled to terminate the contract and awarding damages in its favour, see Topalsson v Rolls-Royce [2023] EWHC 1765 (TCC). On 5 November 2024, the Court of Appeal allowed the Applicant’s appeal in part and reduced the damages award, see Topalsson v Rolls-Royce [2024] EWCA Civ 1330. In giving judgment, Coulson LJ referred to the fact that the Applicant had not paid the judgment debt or an interim costs order and that there remained a dispute between the parties as to whether the Applicant had complied with two funding disclosure orders made in the Contract Proceedings. Coulson LJ observed that the Applicant’s failures in this regard were a reason why he would have declined to exercise the Court’s discretion to permit a late amendment sought by the Applicant, see paragraphs [6]-[9] and [56] of the Judgment. The adequacy of the Applicant’s compliance with the funding disclosure orders in the Contract Proceedings, is the subject of a committal application in those Proceedings, brought by the First Respondent on 15 April 2025 against both the Applicant and Mr Topal (the Applicant’s founder and CEO).

Germany

[5]The First Respondent is seeking to enforce the judgment debt and costs orders in the Contract Proceedings against the Applicant, by way of parallel proceedings in Germany.[6]On 4 August 2022, the Applicant made a criminal complaint of copyright infringement to the Munich Prosecutors relating to the use of the “stop-gap” Rolls-Royce configurator by a German dealer.[7]There is also litigation started in the Munich Regional Court between the Applicant and its insurer (Hiscox) in relation to the Applicant’s liability in the Contract Proceedings. It would appear the first instance court ruled substantially in favour of the Applicant however both parties have filed notices of appeal and matter remains unresolved.

The United States

[8]In March 2023, the Applicant issued the US Proceedings. They included the First Respondent together with Rolls-Royce North America LLC and BMW as defendants. The First Respondent alleged the proceedings against it were in breach of an exclusive jurisdiction clause (“EJC”) contained in the contract. The First Respondent therefore applied for an anti-suit injunction (“ASI”) on the basis of that breach. As a result of a motion to dismiss in the US Proceedings, the Applicant discontinued against the First Respondent. In this jurisdiction the TCC decided not to grant the ASI in respect of the other defendants in the US Proceedings: see Topalsson v Rolls-Royce [2023] EWHC 2092 (TCC) but did hold that the Applicant had breached the EJC in claiming against the First Respondent. The US Court then struck out the Applicant’s claims against Rolls-Royce North America LLC and BMW on jurisdiction grounds. The US Proceedings therefore continue against only the five US dealerships (the “US Dealerships”).[9]The Applicant’s case in the US Proceedings was usefully summarised, in Ms Pickard’s skeleton argument, as follows: i) The Applicant is the creator of a real-time vehicle configurator that enables customers to configure thousands of combinations of product features and colours (the “Topalsson Configurator”). The Topalsson Configurator is a valuable tool for car dealerships seeking to secure a sale. ii) The Applicant alleges infringement of 4 pieces of software - DTE Releases R05 & R06 and VARY Releases R05 & R06 (together the “Topalsson Software”) – all of which have been registered with the US Copyright Office. iii) In 2019, the Applicant successfully tendered for a contract with the First Respondent to produce a real-time Rolls-Royce configurator. Following the tender process, the Applicant provided the Topalsson Software to the First Respondent who accordingly had access to it. The commercial relationship broke down and the contract was terminated in April 2020. iv) In March 2020, the First Respondent engaged Mackevision (a competitor of the Applicant who had unsuccessfully tendered back in 2019 for the contract) to create what has been referred to as a “stop-gap” solution – a Rolls-Royce configurator that was rolled out to the US Dealerships in late 2020. v) In early 2023, the Applicant became aware via social media, YouTube videos and later visits to the US Dealerships, that the US Dealerships were using a real-time Rolls-Royce configurator with striking similarities to the Topalsson Configurator. vi) The software underlying the real-time Rolls-Royce configurator (referred to as the “Accused Software” in the US Complaint) comprises three elements:(i) the Showroom Visualizer (configurator software specific to US Dealership showrooms);(ii) RROC (the ordering-related software); and(iii) Web Configurator (the web version of the configurator software). vii) After roll-out of the ‘stop-gap’ solution in late 2020, further versions were rolled out in 2022/2023, which are referred to as the ‘permanent’ solution. The First Respondent used different suppliers, such as Sulzer, for these later solutions. viii) The Declaration of Mr Topal (filed under Protective Order in the US Complaint in support of the Letter of Request) explains the reasons why it is said that the Accused Software is alleged to infringe the Topalsson Software. ix) The US Complaint is drafted by reference to the Accused Software which includes the stop-gap as well as permanent solutions.[10]The US Dealerships have stated, in response to the US Complaint, that they do not have the source code for the Accused Software but the First Respondent does. It is the Applicant’s case that the First Respondent has documents that are relevant to the issue of whether the Accused Software was copied from the Topalsson Software, including documents relevant to the issue of access to the Topalsson Software, as well as documents relevant to the issue of financial relief, including the anticipated benefit to the US Dealerships of using the Accused Software.

The Letter of Request

[11]The Applicant’s request for the issue of the Letter of Request was made on 10 June 2024 and was supported by the Declaration of Kubilay Topal and associated exhibits. The US Dealerships filed their response in opposition to the request on 21 June 2024. The Applicant filed its Reply on 28 June 2024. A hearing took place before the judge on 8 August 2024 and he gave a written decision on 20 August 2024. It is clear from the decision that the judge required a number of amendments to the draft Letter of Request.[12]It is important to note that the Letter of Request states at section 8 (b) “The evidence sought in this Letter of Request is for the purpose of obtaining admissible and relevant evidence for use in the trial of the US Proceedings”. The Order granting the Letter of Request also contained the following provisions: i) Examination of Mr Scott is to be in accordance with English law and procedure and with the same privilege as under US rules; ii) The Applicant’s counsel have leave to examine and re-examine Mr Scott; iii) The First Respondent’s counsel have leave to cross-examine; iv) Questions are limited to those identified at §10(6) of the Order; v) The purpose of the questioning is specifically to be to elicit and record testimony appropriate for trial of the US Complaint; vi) Privilege applies to documents to be produced by §21 of the Order; vii) The Examination is to take place in private and non-parties were not entitled to obtain a copy of the documents or transcript.[13]As is apparent from the above the Letter of Request contained provisions for the production of documents, twenty requests in all set out in “Attachment A” and for the examination of Mr Scott in relation to 11 topics set out in “Attachment B”.[14]My Order of 11 December 2024 was made, in the usual way, without notice to the Respondents on consideration of the first witness statement of Callum Knight dated 25 November 2024. In the circumstances it is beyond argument that the duty to make full and frank disclosure of those matters which are relevant to the application including any matters adverse to the application was engaged. See paragraph 11.9 of the King’s Bench Guide and the commentary to CPR 25.8 at 25.8.1 in the White Book.

The Respondents’ submissions

[15]On behalf of the Respondents Mr Charlton mounted a full scale attack on the Letter of Request and the manner in which it was obtained, which he submitted gave rise to a threshold issue as to whether it should be aside for failure to give full and frank disclosure and which in any event should persuade the Court to exercise its discretion against the making of any order.[16]In particular Mr Charlton pointed to the Applicant’s failure to disclose; i) The Applicant’s non-compliance with Court orders relating to judgment and costs and, importantly, Coulson LJ’s finding on the Applicant’s application to amend its Particulars of Claim at its appeal. ii) That it had initiated a criminal investigation by the German Prosecuting Authority against both RRMC and Mr Scott and that investigation is ongoing. iii) That the US Court’s Ruling only considered the Letter of Request by reference to the test for US pre-trial discovery and its own principles, not the 1975 Act. It was concerned only with source code, not the other Requests/Topics. iv) That Mr Knight’s witness statement focuses exclusively on Mackevision source code; the requests for other documents and Topics are not addressed at all. In doing so, Mr Knight fails to identify that multiple Requests/Topics concern software and suppliers about which no allegations, let alone particularised allegations, are made in the US Complaint.[17]Mr Charlton submitted that all of the above matters go to the root of the application and cannot be dismissed as matters of ‘borderline’ relevance and as such my Order should be set aside.[18]Mr Charlton then went on to make detailed submissions in relation to each of the requests contained in Attachments A and B to the Letter of Request. For reasons which will become clear I will only set out his submissions in relation to the first three Requests under Attachment A.[19]Request 1 required the production of, “Complete copies of the portions of the Showroom Visualizer software relating to Topalsson’s DTE and VARY software that were added in March 2020 or later, including executables, the underlying source code, accompanying release notes, and the passwords required to access encrypted portions of the Software.”[20]Mr Charlton identified four reasons why the Request should be set aside. First, it proceeds on the false assumption that there are portions of the “Showroom Visualizer”relating to Topalsson’s DTE or VARY software; i.e. that such software has been copied, incorporated or used in or for the purposes of developing the “Showroom Visualizer”. He submits that this is simply not the case. Second, the word “portion”and the phrase “relating to”(or “corresponds to”) are extremely vague and imprecise and wholly lacking in the particularity required by s.2(4)(b) of the 1975 Act. Third, the fundamental problems identified in the previous two paragraphs are magnified and exacerbated by the multiplicity of defined terms in Request 1 in that the defined terms refer to open-ended categories and sub-categories of software, documents and artefacts which are included, qualified and then excluded. He submitted, the result is an incomprehensible mass of uncertainty which requires the reader to guess what is to be inspected and disclosed and, having guessed, requires new documents to be created containing ‘portions’. The relevance of the documents introduced by these definitions is nowhere explained. Fourth, by reason of the first three reasons the Request is oppressive.[21]Request 2 required production of, “Complete copies of the portions of the RROC software relating to Topalsson’s DTE and VARY software that were added in March 2020 or later, including executables, the underlying source code, accompanying release notes, and the passwords required to access encrypted portions of the Software.”, and Request 3 required production of ‘Complete copies of the portions of the Web Configurator software relating to Topalsson’s DTE and VARY software that were added in March 2020 or later, including executables, the underlying source code, accompanying release notes, and the passwords required to access encrypted portions of the Software.”[22]Mr Charlton submitted that Requests 2-3 suffer from the same issues as Request 1 and are, additionally objectionable because they concern the Web Configurator and RROC, when neither is identified in the US Complaint and both involve other suppliers also not criticised in the US Complaint.[23]Lastly, Mr Charlton submitted that to the extent that any order is made any actions required by either Respondent should be conditional upon; i) The Applicant complying with outstanding orders; ii) Any finding of contempt by the TCC being purged; iii) The Applicant bearing (and making advance payment into Court) the Respondents’ costs of the exercise; iv) Oral evidence protections; v) Confidentiality protections.

The Applicant’s submissions

[24]Ms Pickard submitted that the two jurisdictional requirements are met by the Letter of Request: the request was issued by and on behalf of the US Court and the evidence to which the application relates is to be obtained for the purpose of the US Proceedings, which are civil proceedings before the US Court.[25]Ms Pickard accepted that the Applicant did not, in Mr Knight’s witness statement, refer to the three points raised in Ms Butcher’s evidence, namely:(i) the non-payment of costs orders;(ii) the alleged breach of funding disclosure orders; and(iii) the complaint to the German prosecuting authorities.[26]Ms Pickard accepted that non-payment of costs orders is a serious matter, but submitted there were mitigating circumstances, namely the refusal of Hiscox to indemnify the Applicant and the consequent need for the Applicant to pursue Hiscox in the German courts.[27]Ms Pickard accepted that with the benefit of hindsight, it might have been better for the Applicant to bring Coulson LJ’s remarks to my attention and fully explain the Hiscox situation to put the point in its proper context. But the Applicant did not seek to conceal those remarks, on the contrary, the Court of Appeal decision was referred to and included in the exhibited evidence.[28]In the circumstances Ms Pickard submitted that none of the alleged omissions constituted a breach of sufficient materiality to justify or require the immediate discharge of the Order without examination of the merits.[29]Lastly Ms Pickard conceded that in light of the evidence of Ms Butcher that the requests for specific documents in Attachment A 4, 5 and 16 would not be pursued.[30]As in relation to Mr Charlton’s submissions I will only set out Ms Pickard’s submissions in relation to the first three requests under Attachment A.[31]Ms Pickard pointed out that Requests 1-3 are for copies of the portions of the Showroom Visualizer software, RROC software and Web Configurator software relating to Topalsson Software that were added in March 2020 or later. These requests are time limited to avoid capturing Rolls Royce’s pre-existing configurator software.[32]Ms Pickard did not accept the argument made on behalf of the First Respondent that neither the RROC or the Web Configurator software are part of the US Proceedings. She submitted that this was factually wrong as the evidence demonstrated that the Showroom Visualizer, RROC and Web Configurator are each part of the “Accused Software” referred to in the US Complaint.[33]Ms Pickard pointed out that the complaint that the Applicant has not identified the specific aspects of the Topalsson Software said to be infringed was in fact one of the points raised by the US Dealerships before the US Judge and that he was content that this was not a reason to deny the request.[34]In the event that the Court was concerned with the definitions relating to the software in Requests 1 to 3, Ms Pickard submitted that the words “relating to Topalsson’s DTE and VARY software” could be omitted leaving the requests relating to, portions of the relevant software that were added in March 2020 or later. Ms Pickard accepted the source code should be provided subject to the Protective Order already operating in the US Proceedings or with any necessary extension granted by this court.[35]Lastly, in relation to restrictions or conditions, Ms Pickard repeated the point she made in relation to the non-payment of costs and the Applicant’s dispute with its insurer Hiscox and submitted they are not material to the issues arising in respect of the Letter of Request. As to the alleged breach of the funding disclosure orders she pointed out that there is a separate Committal Application in the Contract Proceedings and in the circumstances, it would be wrong for this court to speculate on whether or not they are well founded.

The law

[36]There was little dispute as to the applicable legal principles which I can set out briefly. The court’s powers are contained in the 1975 Act. Section 1 sets out the jurisdictional thresholds for granting a Letter of Request and section 2 confers discretion on the court to make an order. As to jurisdiction, the court can only make an order if satisfied that:(a) The application is made in pursuance of a request issued by and on behalf of the requesting court; and(b) The evidence to which the application relates is to be obtained for the purposes of civil proceedings instituted before the requesting court.[37]As to discretion the court can make such orders “as may appear to the court to be appropriate for the purposes of giving effect to the request in pursuance of which the application is made”. By s.2(3) no steps can be taken other than “steps which can be required to be taken by way of obtaining evidence for the purposes of civil proceedings in the English court”. Section 2(4) states that an order shall not require a person to “(a) state what documents relevant to the proceedings …are or have been in his possession, custody or power; or (b) to produce any documents other than particular documents specified in the order as being documents appearing to the court making the order to be, or to be likely to be in, in his possession, custody or power”.[38]In the case of In Re Foreign Exchange Benchmark Rates Antitrust Litigation[2018] EWHC 2255 (QB) at [32] to [41] Senior Master Fontaine helpfully summarised the principles derived from the leading cases: i) The starting point for the exercise of the court’s discretion is the dictum of Lord Denning MR in Rio Tinto Zinc Corporation v Westinghouse Electric Corp[1978] AC 547, CA at p560G-H:
“It is our duty and our pleasure to do all we can to assist that court, just as we would expect the United States to help us in like circumstances. Do unto others as you would be done by”. a) The court’s powers cannot be used in aid of a fishing expedition – the examination must be confined to eliciting evidence for trial; b) If the width of the topics for questioning is too wide, or uncertain or vague, it may be refused on the grounds that it is oppressive to the witness; c) If the request is considered too wide ranging, the court retains a discretion whether to grant if it can ‘blue pencil’ the request, but is not permitted to redraft it; d) The English court should rely on the requesting court’s determination of the issue of relevance of the evidence sought to the issues for trial; e) There are limited circumstances where the court can consider the relevance of the evidence sought, where the relevance of the topics for examination in the request are not considered by the requesting court; f) As regards testamentary evidence, the test is identified as “Can the intended witness reasonably be expected to have relevant evidence to give on the specified topics?”
The test has been described as importing a low threshold.[39]In relation to the principles set out at (ii) a) above and specifically in the context of requests from the United States of America it is important to understand that no pre-trial discovery or ‘train of enquiry’ disclosure is permitted. As such there is a distinction to be drawn between seeking information (i.e. “anything that it would be useful for a party or potential claimant to know about the subject matter of the dispute”), which is impermissible under the 1975 Act; and evidence to support pleaded “allegations of fact which have been raised bona fide with adequate particulars”, see Kerr LJ in In re State of Norway's Application[1987] Q.B. 433 at p.482.[40]Lastly the principles of full and frank disclosure were recently considered by the Court of Appeal in Mex Group (Worldwide) v Ford[2024] EWCA Civ 959; [2025] 1 WLR 975 at [119] where Coulson LJ said:
“(v) Material facts are those “which it is material for the judge to know in dealing with the application as made. The duty requires an applicant to make the court aware of the issues likely to arise and the possible difficulties in the claim, but need not extend to a detailed analysis of every possible point which may arise. It extends to intention and for example proceedings in another jurisdiction. (vi) Where facts are material in the broad sense, there will be degrees of relevance and a due sense of proportion must be kept. Sensible limits have to be drawn, particularly in more complex and heavy commercial cases where the opportunity to raise arguments about non-disclosure will be all the greater. The question is not whether the evidence in support could have been improved (or one to be approached with the benefit of hindsight). The primary question is whether in all the circumstances its effect was such as to mislead the court in any material respect.”
The Court of Appeal therefore recognised that in any given case there will be degrees of relevance and that it is important to keep a sense of proportion.[41]The court has the power under CPR 3.1(2)(m), (3) & (6A) to impose conditions, including, if necessary, payments into court in the exercise of its case management powers.

Conclusions

[42]I have come to the following conclusions, which I shall set out before stating my reasons for arriving at them. i) There has been non-disclosure by the Applicant of material which is relevant to this application, namely;(i) the nonpayment of the adverse costs orders made in the English proceedings,(ii) the alleged breach of the funding disclosure orders and(iii) the fact a complaint had been made to the German Prosecuting authorities relating to events in Germany. ii) The non-disclosure of this material did not materially mislead the court with the exception of that relating to the German complaint. This however is not a basis for refusing the Letter of Request but does provide a reason to impose conditions. Alternatively, the Court would regrant the application subject to conditions. iii) The Requests as drafted go well beyond that which is necessary, relevant and proportionate to enable the issues in the US Proceedings to be litigated. iv) The court will give effect only to the first three Requests set out in Requests 1 to 3 of Attachment A to the Letter of Request, as set out and without alteration. v) The disclosure provided will be subject to an appropriate Protective Order. vi) The Applicant must pay into court in advance, the Respondents’ costs of this application and compliance with it as a condition of the granting of the modified Letter of Request.

Reasons

[43]I have no doubt that the jurisdictional threshold under the 1975 Act is met. There can be no question that the Letter of Request has been validly made by the US Court or that the evidence requested is sought for the purpose of civil proceedings before that court.[44]It is also important to understand that the Letter of Request was not simply rubber stamped by the US Judge. A full hearing took place before him and submissions were made by the parties to the litigation following which the judge delivered a decision in writing granting the Letter of Request. I also reject the submission that the Letter of Request is seeking “pretrial discovery” or “train of enquiry” disclosure. One only has to look at the terms of the US Complaint in the US Proceedings to see the factual basis for the allegation of breach of copyright: “5. In connection with the project, Topalsson delivered portions of its proprietary software in late 2019. In 2020, the world shut down. Topalsson diligently worked to transition its workforce and continued to make software deliveries in early 2020. Unbeknownst to Topalsson, Rolls-Royce secretly hired one of Topalsson's competitors in approximately March 2020. After benefitting from Topalsson's work and software deliveries for several more weeks, Ida Biot (a joint Rolls-Royce/BMW AG employee) terminated Topalsson.[6]At that point, Topalsson believed that its software would no longer be a part of any future configurator for Rolls-Royce vehicles. Topalsson's belief was further supported by written statements made by Rolls-Royce UK following the termination.[7]Rolls-Royce UK, through counsel, admitted in writing that Topalsson had revoked any license to use the Topalsson DTE (Digital Twin Engine) software, TWIN software, and Sologic software. Rolls-Royce UK was not authorized or permitted to use Topalsson's configurator software to sell Rolls-Royce vehicles.[8]Rolls-Royce UK "confirmed" in writing through its counsel that it was not using and "does not intend to make use of" Topalsson's DTE software, TWIN software, and Sologic software.[9]Rolls-Royce UK further stated, through its counsel, that it "undertakes to destroy all copies within its possession or control" of Topalsson's DTE software, TWIN software, and Sologic software, subject to any steps taken to ensure the proper preservation and inspection of evidence relating to litigation. Rolls-Royce UK further stated that it "undertakes not to make any commercial use of the same."[10]Topalsson therefore understood that the Rolls-Royce configurator would be moving forward without making any use of Topalsson's market-leading configurator software platform.[11]However, Topalsson began to suspect that, contrary to its understanding and belief, its software had been incorporated into a configurator being used to sell Rolls-Royce vehicles in the US-the largest market for Rolls-Royce vehicles in the world.[12]In early 2023, Topalsson began noticing social media posts and YouTube videos demonstrating Rolls-Royce configurators being used at U.S. dealerships that bore a striking resemblance to multiple unique features provided by Topalsson.[13]Mr. Topal ultimately visited the United States in person to see for himself whether the configurators being used and shown at the Dealership Defendants were using his configurator software. Mr. Topal saw firsthand that the configurators being used at those dealerships included the same distinctive features he was seeing on social media and YouTube posts, as well as other features that indicated that Topalsson software was being used to sell Rolls-Royce vehicles in the United States. Such features include, without limitation, simultaneous real-time display on a television screen or projector and a tablet, real-time 3D configurator generation, feature code nomenclature, and a full interior modules structure for granular customization. In addition, Topalsson's software creates a unique visual view that remains evident in the software currently used in Rolls-Royce dealerships, including certain stitching textures and locations, illuminations, screen layouts, thumbnails, overlay "dots," navigation bars, rear seat entertainment mechanics, wheel angles, and summary image page generation.[14]On information and belief, and based on the further facts set forth below, configurator software that includes copyrighted elements of Topalsson's proprietary software and/or software derived from copyrighted elements of Topalsson's proprietary software has been rolled out to all Rolls-Royce authorized sellers in the United States without authorization and in violation of U.S. copyright laws.”[45]As Ms Raw points out at paragraph 22 of her witness statement Mr Topal provided a declaration to aid the US Judge’s consideration of the Letter of Request which included further detail on why he believed the Applicant’s copyrighted source code had been used without permission in the configurator software used by the US dealerships.[46]Mr Charlton drew my attention to the fact that a reading of the materials before the US Judge demonstrated that the focus of the application for the Letter of Request and the hearing was on the software which was the subject of the first three Requests and that the remaining requests were not subjected to much if any scrutiny. This led me to query with Ms Pickard what the remainder of the Requests and the questions directed at Mr Scott were designed to achieve. I pointed out that if the software requested was produced and subjected to analysis either the copyright claim would be made out or it would fail. Ms Pickard accepted that this would be the case. The remaining documents sought in Requests 4 to 20 all related to issues connected with establishing copyright infringement and the purpose of the questions to be put to Mr Scott was document authentication, see paragraph 74 of Ms Raw’s witness statement. In the circumstances I indicated that I would be restricting my consideration to the first three Requests for the production of software.[47]In the circumstances I am satisfied there is a sufficiently pleaded and evidenced inferential case of copyright infringement in the US Proceedings and that the evidence requested in the first three Requests is sought to support that case at trial.[48]I now turn to consider the issues relating to full and frank disclosure. Ms Pickard accepted that Mr Knight did not explicitly refer to the nonpayment of costs orders, the alleged breaches of the funding disclosure orders and the complaint to the German prosecuting authorities and that with the benefit of hindsight it would have been better to address them head on. The question for me amounts to whether the effect of this non-disclosure resulted in me being materially misled and if so whether this would justify refusing the Application.[49]I start by reminding myself that I am concerned with a request from a foreign Court for assistance and that the principles of judicial comity require me, in the words of Lord Denning, to do all I can to assist that court in the context that the United Kingdom and the United States are both signatories to the Hague Convention on the Taking of Evidence Aboard in Civil and Commercial Matters 1968. Having considered the authorities it seems to me that in the context of a request for assistance from a foreign Court there are two particulars strands to be considered. The first is whether there has been a material non-disclosure of material facts which it is material for me to know in relation to the application, the second is whether there has been material non-disclosure of other matters which would affect my decision to grant assistance to the foreign court, such that I might conclude that an Applicant’s conduct in this jurisdiction would make it unconscionable for me to grant the request. The overriding consideration will always be the interests of justice.[50]I have carefully considered the contents Mr Knight’s witness statement in light of the submissions made to me. He starts by giving an overview of the US Proceedings, see paragraphs 12 to 21. As part of that overview he identified the Contract Proceedings in respect of the breaches of the Service Agreement and exhibited the judgment of O’Farrell J. He dealt with the dismissal of the anti-suit injunction and exhibited the judgment of Waksman J. Lastly, he dealt with the Applicant’s appeal, noted the Applicant’s liability to the First Respondent had been reduced to €4,865,312.97 and exhibited the judgment of the Court of Appeal, see paragraphs 18 to 21. He then moved on to give detailed consideration of the issues relating to obtaining of the Letter of Request, the need to substitute Mr Scott for Mr Hoffmann, and the requirement for the proposed examination of Mr Scott to be in private, see paragraphs 22 to 64. Finally he dealt with his duty of full and frank disclosure. He confirmed that he understands the need for full and frank disclosure on the basis that the Application is being made without notice.[51]The non-payment of damages and costs orders is always a serious matter. The Court of Appeal judgment in the Applicant’s appeal was exhibited to Mr Knight’s witness statement. I set out the relevant parts of Coulson LJ’s judgment: “6. Although the two issues that arise on this appeal affect the amount due from Topalsson to RRMC, they cannot reduce that sum below €4.2m odd. Neither would success by Topalsson on those two issues make any difference to the interim payment on account of costs which the judge ordered in favour of RRMC in the sum of £1,246,000. Notwithstanding that, no part of either sum has been paid.[7]Concurrently with their application for permission to appeal, Topalsson sought a stay in respect of both the judgment sum and the interim payment on account of costs. That was refused by Stuart-Smith LJ. Topalsson renewed that application. I reconsidered it, and again refused to grant a stay. I am concerned that Topalsson continue to pursue this appeal, whilst at the same time they have failed to pay any part of the judgment sum, or any part of the interim payment on account of costs.[8]In addition, I note that, on 20 February 2024, Constable J ordered Topalsson (amongst other things) to serve a witness statement addressing the identity and source of their funding of this litigation. Topalsson failed to comply. On 20 May 2024, Constable J issued another order, accompanied with a penal notice, warning Topalsson that they may be in contempt of court if they did not serve the necessary witness statement. Topalsson have now served such a statement, although there is a dispute as to its adequacy.[9]In my judgment, this unsatisfactory background is directly relevant to the exercise of discretion that arises in respect of the second issue on appeal: see para 56 below.” And “56. For these reasons, I would not allow the late amendment proposed by Topalsson as a matter of principle. Still further, since allowing such a late amendment is a matter of discretion for this court, I would not exercise that discretion in favour of Topalsson in any event. That is for the reasons foreshadowed at paras 6–9 above. Topalsson are in breach of numerous court orders. They are not a party who should be granted any further indulgence by this court. Again, costs would not be an adequate remedy for any late amendment because there is nothing to suggest that Topalsson will pay them.”[52]Whilst I accept that the Contract Proceedings are not material to the issues arising on the Letter of Request it would have been much better if the above passage had been specifically referred to by Mr Knight rather than simply exhibited to his witness statement. The charge against the Applicant here is really one of burying relevant material amongst a mass of detail.[53]The failure to refer the German criminal complaint is potentially more important as this was a complete omission. This issue had particular importance in view of the potential for protective provisions to be required to protect Mr Scott. However, I would however note that the complaints made by Ms Butcher in her witness statement are effectively met by the protections already in place in the Letter of Request.[54]By a very small margin I have decided these admitted non-disclosures did not mislead me to a material extent in my decision to grant the Letter of Request. It is also of importance that there is no current finding of contempt against the Applicant. In the event that such a finding had been made my conclusion would probably be very different. In the circumstances I decline to set aside the Letter of Request on the basis of Mr Charlton’s threshold issue. However, even if I were to be wrong on that point I would nonetheless re-grant the Letter of Request in a modified form on the basis of the information now before me.[55]The scope of the Letter of Request has considerably reduced in view of the concession made by Ms Pickard. This deals with the majority of the argument I heard in relation to the relevance of the material and the position of Mr Scott.[56]There remains an issue as to the wording of the first three Requests of Attachment A. Having considered the competing arguments I accept the submission of Ms Pickard that the issue of the specific aspects of the Topalsson Software said to be infringed was raised by the US Dealerships before the US Judge. There are extensive definitions contained in the parties’ submissions and in the Letter of Request which have been formulated having regard to the issues in the US Proceedings. In the circumstances I am satisfied the Requests are clear and identify precisely what should be produced.[57]It is common ground that I should grant an order mirroring the US Protective Order in relation to the software produced in response to the three Requests. I understand that the parties can agree a suitable form of wording.[58]Lastly, I have considered the extent of any conditions to be imposed upon the Applicant. I take into account that the Contract Proceedings in which costs and damages have not been paid are separate proceedings. The Applicant is a German Company and enforcement proceedings have been commenced in that jurisdiction. To that extent the First Respondent has its remedies in that action and has embarked upon implementing them.[59]As I am of the view that it is “the pleasure and duty” of this court to give assistance to the US Court the proportionate and just step would be to require the Applicant to pay into court, in advance, the costs of compliance with the Letter of Request and of this application. Given the history of this matter I do not imagine that the US Court would fail to understand the reason for such a condition being imposed. I have the jurisdiction to make such a condition under my general case management powers, see for example, Olatawura v Abiloye [2002] EWCA Civ 998 and the note in the White Book at 3.1.16.[60]CPR 3.1 (3) provides so far as it relevant:
“3.1 (3) When the court makes an order, it may – (a) make it subject to conditions, including a condition to pay a sum of money into court; and (b) specify the consequence of failure to comply with the order or a condition. (5) The court may order a party to pay a sum of money into court if that party has, without good reason, failed to comply with a rule, practice direction or a relevant pre-action protocol. (6) When exercising its power under paragraph (5) the court must have regard to – (a) the amount in dispute; and (b) the costs which the parties have incurred or which they may incur. (6A) Where a party pays money into court following an order under paragraph (3) or (5), the money shall be security for any sum payable by that party to any other party in the proceedings.”
[61]I am satisfied the failure of the Applicant to pay the costs and damages awarded in the Contract Proceedings demonstrates a want of good faith which in turn justifies the use of the court’s power under CPR 3.1 (3) (a) and is within the limits provided by CPR 3.1 (6) and (6A) in that the security to be provided relates to sums payable in these proceedings.[62]I would be grateful if counsel would now attempt to agree the final wording of the order and modified Letter of Request.