“The Parties hereby submit any dispute arising from in connection with, or related to this Agreement or its enforceability to the exclusive jurisdiction of the Courts of England and Wales.”
“40. The evidence of D’s Mr Hoffman (paragraphs 143 to 145) constitutes evidence of a breach of clause 21.1 of the Agreement by D and breach of C’s IPR: “…we should begin to explore putting in place a fallback solution for the Ghost launch events…” “Some of the DeltaGen data which Topalsson had delivered to us as part of DP10 was shared with Mackevision for them to use in producing the 3D models needed for EVE.” 41. Since appreciating the significance of Mr Hoffman’s evidence, C has become aware of documents in the Defendant’s Extended Disclosure which further support allegations of unlawful sharing of the Claimant’s Confidential Information with Mackevision. 42. This is an extremely serious matter for C. D appears to have made use of C’s Confidential Information and IPR, without paying for it. This claim concerns the very subject matter of this litigation. D’s conduct may well cast light on the attitude the Court should take to D’s evidence about C’s alleged failings and D’s reasons for purported termination. To permit the amendment will ensure that the real dispute between the parties can be adjudicated upon. C’s breach claim overlaps with the “Bespoke Software” issue which is already before the Court (Technical Expert’s Issue 4). 43. C has prepared a detailed Amended Particulars of Claim.” “…we should begin to explore putting in place a fallback solution for the Ghost launch events…” “Some of the DeltaGen data which Topalsson had delivered to us as part of DP10 was shared with Mackevision for them to use in producing the 3D models needed for EVE.”
“Section 2….. 1. Services, Specification and Deliverables 1.1 Services comprise the delivery of the 1.1.1 Supplier Software (clause 5); 1.1.2 Bespoke Software (clause 6); and 1.1.3 Provision of Services and Deliverables as set out in the Tender Document- further to be specified in DP1… 1.1 Services comprise the delivery of the 1.1.1 Supplier Software (clause 5); 1.1.2 Bespoke Software (clause 6); and 1.1.3 Provision of Services and Deliverables as set out in the Tender Document- further to be specified in DP1… 5. Supplier Software Supplier Software (all of which shall be deemed to be “Licenced Software” pursuant to clause 22 of Section 7 of this Agreement) means all hardware and software provided by the Supplier to RRMC to provide the Services including the Supplier Hardware, Supplier Standard Software, Third-Party Software, Modified Software (Supplier), Modified Software (Third Party) and Supported Software including but not limited to those listed below: 5.1 DTE (Digital Twin Engine) Software – Version 2019 (R6) FUNCTIONS… 5.2 TWIN Software – Version 2019 (R6) FUNCTIONS… 5.3 SOLOGIC Software – Version 2019 (R6) FUNCTIONS… For the avoidance of doubt and notwithstanding any other provision of this Agreement, the Intellectual Property Rights in any Supplier Software used or created by the Supplier in providing the Services, including but not limited to any modifications or improvements to such Supplier Software, will be owned by the Supplier or any relevant third party licensor. The Supplier hereby grants a non-exclusive, revocable, global licence to BMW Group to use the Supplier Software for the Term for usage solely in connection with the design of Rolls Royce model vehicles (and not, for the avoidance of doubt for vehicles in the wider BMW Group that are not branded as Rolls Royce). FUNCTIONS… FUNCTIONS… FUNCTIONS… 6. Bespoke Software Bespoke Software means any software created pursuant to the terms of this Agreement to be used by RRMC solely in relation to RRMC products, including but not limited to those software listed below: • Bespoke TWIN RRMC Plugin/Extension to read RRMC data • Bespoke DTE RRMC POS Plugin/Extension for specific RRMC POS Use • Bespoke SOLOGIC RRMC Plugin/Extension to read RRMC data. For the avoidance of doubt, and notwithstanding any other provision of this Agreement, the Intellectual Property rights in any Bespoke Software shall be owned by RRMC and RRMC shall grant the Supplier an exclusive licence to use the Bespoke Software for the purpose of providing the Services for the duration of the Term of this Agreement. • Bespoke TWIN RRMC Plugin/Extension to read RRMC data • Bespoke DTE RRMC POS Plugin/Extension for specific RRMC POS Use • Bespoke SOLOGIC RRMC Plugin/Extension to read RRMC data. Section 6: Definitions “Background IPR” means any and all Intellectual Property Rights that are owned by or licensed by third parties to either Party and which are or have been developed independently of this Agreement and the Services, whether prior to the Commencement Date or otherwise; “Deliverables” means the goods or services or other things to be delivered to RRMC or BMW Group as deliverables as a product of the Services, with such deliverables including RRMC Data and those deliverables set out in Section 2 … and all documents, products and materials developed by Supplier or its agents, contractors, consultants and employees in relation to the provision of the Services in any form, including drawings, plans, diagrams, pictures, computer programs, data, reports and specifications (including drafts of the same).” “Services” means the services to be provided by the Supplier under this Agreement and the delivery of the Deliverables with such services being specified in Section 2: Services, Specification, Deliverables, Service Credits, Exit Plan and Business Continuity Plan and any Additional Services. Section 7: General Terms 23. Intellectual Property Rights 23.1 All right, title and interest including all Intellectual Property Rights that are legally capable of being assigned under Applicable Law in and to the Deliverables and any other product of the Services shall immediately upon their creation vest in RRMC. Accordingly the Supplier hereby assigns to RRMC with full title guarantee all such Intellectual Property Rights that the Supplier has now or may have in the future throughout the world to RRMC absolutely so far as possible in perpetuity… 23.8 All right, title and interest including Intellectual Property Rights in and to all BMW Group background IPR, RRMC Materials and RRMC Data is vested in and shall remain vested in BMW Group… 23.10 All right, title and interest including Intellectual Property Rights in and to all Supplier Background IPR and Supplier Materials is vested in and shall remain vested in the Supplier…”
“Issue 7 – Intellectual Property Issues 371 The following matters arise for determination by the court: i) Topalsson’s claim for a declaration that on a proper construction of clause 13.10 of section 7 of the Agreement, RRMC is not entitled to make any use of any Deliverables, save for those limited artefacts for which RRMC has paid. ii) Topalsson’s claim for an order for delivery up or destruction of all copies of Supplier Software in RRMC’s possession. iii) RRMC’s claim for an order for delivery up or destruction of all copies of Bespoke Software and other property in Topalsson’s possession. Deliverables 372. Topalsson seeks a declaration that on a proper construction of clause 13.10 of section 7 of the Agreement, RRMC is not entitled to make any use of any documents, products or materials developed by Topalsson, including any drawings, plans, diagrams, pictures, computer programmes, data, reports or specifications, save for those limited artefacts for which RRMC has paid. 373. RRMC’s position is that clause 23.1 of Section 7 prevails and provides that all right, title and interest including all intellectual property rights to the Deliverables and any other product of the services shall immediately upon their creation vest in RRMC… 375. It is apparent from the above definition [in Section 6] that Deliverables comprised the documents, goods, materials and information to be provided by Topalsson under the Agreement. It does not appear to include software developed by Topalsson, whether falling within the definition of Supplier Software or Bespoke Software. 376. Regardless whether Supplier Software or Bespoke Software might fall within the definition of Deliverables, intellectual property rights in such software is expressly covered by the provisions set out in clauses 5 and 6 of Section 2 which take precedence and are addressed below. 377. Clause 23.1 of Section 7 provided:… 378. Clause 13.10 provided that “Title to the Deliverables passes to RRMC on payment.” 379. That must be a reference to payment in accordance with the terms of the Agreement. In the quantum section above, I have set out my findings as to the value of work done by Topalsson as at the date of termination and that value has been included in the accounting exercise required under the Agreement. It follows that payment in accordance with the Agreement has been made in respect of the Deliverables provided to RRMC and title has passed to RRMC. Supplier Software 380. Topalsson’s case is that on termination of the Agreement, RRMC's right to make any use of the Supplier Software ceased. Close 24.7 of section 7 of the Agreement prohibited RRMC from making any adaptations or variations to the Supplier Software without consent and clause 24.8 prohibited any disassembly, de-compilation, reverse translation or any other form of decoding save as permitted by law. It follows that RRMC has no legitimate use for any copies of Topalsson’s software in its possession and any copying of the same would amount to infringement of its copyright. On that basis, an order for delivery up or destruction of all copies of Topalsson’s software in RRMC’s possession is sought. 381. Clause 5 of Section 2 defined Supplier Software as follows:… 382. RRMC’s position is that the software supplied by Topalsson is not functional and none of it is of use. It has admitted that RRMC is not entitled to make use of or copy the Supplier Software and RRMC confirmed by letter dated12 August 2020 that it is not using, and does not intend to use, the Supplier Software. 383. In paragraph 77.5 of the Re-Amended Defence and Counterclaim RRMC has offered the following undertaking: “the Defendant undertakes to destroy all copies within its possession or control of the Supplier Software (for avoidance of doubt, subject to the preservation of the Defendant’s Software) under oath, after steps have been taken to ensure to the proper preservation and inspection of evidence. Such steps should be capable of agreement by consent and are best considered during the disclosure stage. In the meantime, the Defendant undertakes not to make any commercial use of the same.” 384. On the basis of the above, there is no dispute about the status of the Supplier Software. RRMC’s undertaking can be incorporated into the final order made in these proceedings. Bespoke Software 385. RRMC’s case is that it has retained all right, title and interest, including all intellectual property rights in Bespoke Software, the Deliverables and any other product of the Services. It seeks orders for delivery up and/or destruction of the property requested by letter dated3 September 2020 and all copies of RRMC’s software in Topalsson’s possession. It has confirmed that it does not seek destruction or delivery up of any Supplier Software. 386. I have found that payment in accordance with the Agreement has been made in respect of the Deliverables provided to RRMC and title has passed to RRMC. Therefore, it is entitled to delivery up or destruction of any such material held by Topalsson. 387. Clause 6 of Section 2 defined Bespoke Software as follows:… 388. Clause 23.8 of Section 7 provided:.. “All right, title and interest including Intellectual Property Rights in and to all BMW Group background IPR, RRMC materials and RRMC Data is vested in and shall remain vested in BMW Group.”… 390. It is admitted by Topalsson that it is not entitled to make use of or copy the Bespoke Software, including the data and materials identified in clause 23.8 of section 7. 391. In paragraph 143.1 of the Reply Topalsson has offered the following undertaking: “the Claimant hereby undertakes to destroy under oath all copies of materials to which clause 23.8 of Section 7 applies that are within its possession or control, after steps have been taken to ensure the proper preservation and inspection of evidence. Such steps should be capable of agreement by consent and are best considered during the disclosure stage. In the meantime, the Claimant undertakes not to make any commercial use of the same.” 392. In its closing submissions, it goes slightly further, accepting that it has no right to use RRMC-specific data. On the basis of the above, an appropriate undertaking can be incorporated into the final order made in these proceedings. However, there is a dispute as to the categorisation of software as Bespoke Software (as distinct from Supplier Software or Deliverables). 393. Bespoke Software does not automatically cover all Deliverables within the meaning of the Agreement but also is not confined to the specific software identified in clause 6 of section 2 above, which was expressed to be an inclusive, rather than exclusive list. 394. Dr Hunt performed a code review to try and identify code that was bespoke for RRMC’s use or contained RRMC data or intellectual property. The results of this exercise are set out in Appendix F of her first report. However, in cross-examination, she confirmed that she did not ask for, or have access to the source code and therefore her review was limited to identified items that contain Bespoke Software and RRMC data or intellectual property; that description did not necessarily apply to the whole folder. 395. This was not the subject of discussions or joint statements between the IT experts and there has been no detailed investigation at trial as to which sections or lines of code were Bespoke Software or Supplier Software. As a result, the court is not in a position to make any order for delivery up or destruction of specific software and the remedy is confined to a declaration.” i) Topalsson’s claim for a declaration that on a proper construction of clause 13.10 of section 7 of the Agreement, RRMC is not entitled to make any use of any Deliverables, save for those limited artefacts for which RRMC has paid. ii) Topalsson’s claim for an order for delivery up or destruction of all copies of Supplier Software in RRMC’s possession. iii) RRMC’s claim for an order for delivery up or destruction of all copies of Bespoke Software and other property in Topalsson’s possession. “Title to the Deliverables passes to RRMC on payment.”
“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.”
“34. Topalsson’s core software is called DTE. Topalsson has registered copyrights in two versions of its DTE software. DTE Release R05 is registered as Copyright Registration No. TX 9-217-235 and is attached as Exhibit A. DTE Release R06 is registered as Copyright Registration No. TX 9-217-240 and is attached as Exhibit B. Collectively, these registrations comprise the infringed “DTE Software.” 35. Topalsson’s software portfolio also includes a software platform called Vary. The Vary software simplifies the generation of 3D master models that power the real-time generation of customized images and videos. Vary builds the logic of the models and enables the full configuration ability. 36. Vary Release R05 is registered as Copyright Registration No. TX 9-217-245 and is attached as Exhibit C. Vary Release R06 is registered as Copyright Registration No. TX 9-217-249 and is attached as Exhibit D. Collectively, these registrations comprise the infringed “Vary Software.” 37. Topalsson is the owner of all rights in the DTE Software and Vary Software. 38. Rolls-Royce has no license to use any of Topalsson’s software, including the DTE Software and Vary Software.”
“34. Paragraph 13 of the Amended Complaint makes additional factual assertions as to the nature of the alleged infringement which were not included in the Original Complaint. These include the assertion that Topalsson's software creates a unique visual view which 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". While paragraph 13 does not provide a level of detail which is sufficient for Rolls-Royce UK to properly understand the particular software features Topalsson alleges have been infringed, it is clear from these allegations that the Amended Complaint remains fundamentally connected to the Agreement. 35. Stitching textures and locations, layouts, thumbnails and wheel angles are all examples of data, information and images which Rolls-Royce UK either supplied to Topalsson pursuant to the Agreement or Topalsson worked on as part of the Deliverables due under the Agreement; and/or are data or information owned by Rolls-Royce UK, in whom all intellectual property rights vest pursuant to the Agreement. These matters were explored at trial, for example:.. 36. Paragraph 13 of the Amended Complaint further states that Mr Topal observed, when viewing the configurator software being used by the Dealership Defendants, distinctive features which indicated to him that Topalsson software was being used, Including for example simultaneous real-time display on a television screen or projector and a tablet at the same time. I am informed by Mr Hoffmann that such features are neither unique to Topalsson nor distinctive. Any similarity which may have been observed by Mr Topal arises from the fact that the visualiser software now being used by Rolls-Royce dealerships has been built by Rolls-Royce UK’s suppliers to a similar specification and requirements as Topalsson’s software would have been, had it been completed and delivered in accordance with the Agreement.”
“IV Specific findings of Topalsson GmbH regarding the infringements As far as is known here - contrary to what the BMW Group claims in the enclosed letter of1 August 2022 (Annex 3) - the following offences, among others, have been committed. Topalsson GmbH recently discovered that the vehicle configurator and/or its components had been passed on to a third party, specifically to Schmidt Premium Cars GmbH with its headquarters and salesroom in Munich, where the configurator is used for the sale of Rolls-Royce vehicles. A sales meeting took place there in June 2022. In the course of the sales talk, the configurator was used. Typical features of the technology developed by Topalsson GmbH could be recognised: The software and the user interface developed by Topalsson GmbH. O The configurator is operated in such a way that the salesperson controls the configurator via an iPad. For the buyer, the display is shown on additional, significantly larger screens. O The user interface of Topalsson GmbH is designed in such a way that the user interface is only visible on the iPad, where it is "superimposed" on the vehicle image (so-called overlay). The user interface is not visible on the customer's screen. O This is exactly how it was used and presented in the sales talk. From the type of presentation and the structure of the vehicle figurations it is recognisable that the POS files (databases) of Topalsson GmbH have been used. Specific image files/image representations created and/or edited by Topalsson GmbH were visible. Schmidt Premium Cars GmbH uses performance components provided by BMW AG and Rolls-Royce Motor Cars Ltd. Von Topalsson GmbH were made available. The vehicle configurator can therefore only have been used by employees of BMW AG/BMW Group and/or Rolls-Royce Motor Cars Ltd. whohave made the vehicle configurator available to Schmidt Premium Cars GmbH - and have possibly already done so or will do so to other sales partners. The transfer to sales partners cannot have taken place and/or be effected in any other way than by unlawful reproduction and exploitation of the copyright-protected services of Topalsson GmbH by employees of BMW AG and/or Rolls-Royce Motor Cars Ltd. The software and the user interface developed by Topalsson GmbH. O The configurator is operated in such a way that the salesperson controls the configurator via an iPad. For the buyer, the display is shown on additional, significantly larger screens. O The user interface of Topalsson GmbH is designed in such a way that the user interface is only visible on the iPad, where it is "superimposed" on the vehicle image (so-called overlay). The user interface is not visible on the customer's screen. O This is exactly how it was used and presented in the sales talk. In addition, the use of the vehicle configurator is not solely based on the data copied to the dealer's hardware; rather, the vehicle configurator connects to the system on the BMW servers in order to use certain functionalities, so that the use of the configurator results in public playback. In the course of further fact-finding by Topalsson GmbH, it had to be established on26 July 2022 that the configurator was not only in use at the company Schmidt Premium Cars GmbH in Munich, but also at the company Riller & Schnauck GmbH with its headquarters and salesroom in Berlin… According to the findings here, BMW AG's reference to the use of software from a "third-party supplier" and the assertion that no software components from Topalsson GmbH were used (Annex 3) proved to be false: It may well be that the BMW Group uses software from a third-party supplier in connection with the vehicle configuration. But in any case components from Topalsson GmbH plants were also used.”
“a. The submission notes that the files delivered by Topalsson to Rolls-Royce UK consist primarily of binary files and executable programs, and do not contain any source code. b. It further notes that a subfolder containing a small amount of source code was located which included, amongst other things, code for a website for a configurator. However, it was noted that this code was in a format which would make it very difficult to pass on and re-use. It was also confirmed that the software was not fully executable. The remaining code was thought to be for unrelated software used to enable permission management or infrastructure administration of servers. c. The submission does not state that any source code for Vary or DTE was located. d. The submission attaches a letter from Mackevision…the third party supplier to whom Rolls-Royce UK and/or BMW AG are alleged to have passed Topalsson’s software. The letter lists the data which Mackevision received from Rolls-Royce UK, which does not include Topalsson’s Vary or DTE software, or indeed any software at all.”
“c) Files delivered to Mackevision by RRMC Prior to commissioning Mackevision, RRMC signed a contract with Topalsson in October 2019 for the development of a configurator landscape (including Web Configurator, Point of Sale Configurator) for Rolls-Royce vehicles. RRMC terminated the contract in April 2020. As described in the introduction under A above, this contract or its termination is the subject of civil proceedings in England. The contract concluded between RRMC and Topalsson stipulates that all rights to the services to be provided by Topalsson specifically for RRMC automatically become the property of RRMC upon creation. Paragraph 23.1 of the contract states:….. As contractually agreed, RRMC provided Topalsson with data with 3D models of existing Rolls-Royce vehicles. This data served as the basis for the 3D Rolls-Royce image data to be developed by Topalsson. Under the existing contract, Topalsson developed 3D models of Rolls-Royce vehicles based on data provided by RRMC. These 3D Rolls-Royce image files developed by Topalsson are exclusively services which, in accordance with the contract, are automatically the property of RRMC and RRMC and BMW are entitled to use them. To the best of our knowledge, RRMC has met the contractual payment obligations for the image files delivered by Topalsson. From our point of view, there is no doubt as to the ownership of the image files, as, in accordance with section 23 of the contract, they were automatically transferred from Topalsson to RRMC when they were created. Some of the 3D Rolls-Royce image files developed by Topalsson and transferred to RRMC/BMW were sent to Mackevision in FBX and/or Delta Gen format for preparation, correction and integration into the Rolls-Royce "EVE" system. Mackevision has listed the transferred files in the letter in Appendix 1. These are exclusively files in PDF or PowerPoint format. As part of the development of the RR Visualizer, Mackevision generated its own image files based on the PDF or PowerPoint files we provided and Mackevision delivered its own development service. An example of other information provided to Mackevision is shown in Appendix 5. It is a PowerPoint presentation with excerpts from the front-end design concept, which shows models of Rolls-Royce vehicles. Topalsson delivered RRMC's first software components on March 18, 2020. This software delivery was incomplete and not functional. The first order from RRMC and BMW to Mackevision to develop the RR Visualizer was received as early as March 3, 2020, as shown under B. No. 1 b). Mackevision completed a working prototype of the RR Visualizer at the beginning of April 2020. This rapid development shows that it is based on the existing BMW and MINI software for the "EVE" system. In addition, at the time Mackevision was commissioned, RRMC or BMW did not have any functional Topalsson software at all, which could have been made available to Mackevision. BMW/RRMC did not deliver any software, other technologies or source code from Topalsson to Mackevision… D. RESULT Based on our findings, there is no evidence or clue that copyright-eligible data belonging to Topalsson is used in the RR Visualiser or in the RR Online Configurator. This can be excluded, in particular, due to the time schedule associated with commissioning Mackevision and the delivery of incomplete and incorrect data from Topalsson. According to the contract concluded between RRMC and Topalsson, RRMC/BMW was entitled to use and share certain files, as they became the property of RRMC/BMW. Overall, our audit did not result in any findings that RRMC or BMW has passed on software, technologies, data or source code owned by Topalsson to third parties. According to the findings from internal investigations, there is therefore no copyright infringement or infringement of trade secrets.”
“14. Whether a claim falls within an agreed jurisdiction clause is a question of interpretation of the clause in question. That question is to be decided according to national law…In my judgement there is no distinction to be drawn between the approach to the interpretation of a clause in an agreement which confers jurisdiction on the courts of a particular territory and a clause in an agreement which confers jurisdiction on a particular tribunal, such as an arbitrator. Both types of clause represent the parties’ agreement about how disputes are to be resolved. Both should be interpreted in accordance with the same principles. The correct approach to the interpretation of arbitration agreements has been considered recently by both the Court of Appeal and the House of Lords. In Fiona Trust…a charterparty contained a clause which referred “any dispute arising under this charter” to arbitration. Longmore L.J. said at [17]: “Ordinary businessmen would be surprised at the nice distinctions drawn in the cases and the time taken up by argument in debating whether a particular case falls within one set of words or another very similar set of words. If businessmen go to the trouble of agreeing that their disputes be heard in the courts of a particular country or by a tribunal of their choice they do not expect (at any rate when they are making the contract in the first place) that time and expense will be taken in lengthy argument about the nature of particular causes of action and whether any particular cause of action comes within the meaning of the particular phrase they have chosen in their arbitration clause.” 15. He added at [18]: “As it seems to us any jurisdiction or arbitration clause in an international commercial contract should be liberally construed. The words ‘arising out of’ should cover ‘every dispute except a dispute as to whether there was ever a contract at all’ ... .” 16. It will be noticed that Longmore L.J. approached both jurisdiction clauses and arbitration clauses in the same way. In the House of Lords, Lord Hoffmann said ([2008] 1 Lloyd’s Rep 254 ;[2007] UKHL 40 at [13]): “In my opinion the construction of an arbitration clause should start from the assumption that the parties, as rational businessmen, are likely to have intended any dispute arising out of the relationship into which they have entered or purported to enter to be decided by the same tribunal. The clause should be construed in accordance with this presumption unless the language makes it clear that certain questions were intended to be excluded from the arbitrator’s jurisdiction.”” “Ordinary businessmen would be surprised at the nice distinctions drawn in the cases and the time taken up by argument in debating whether a particular case falls within one set of words or another very similar set of words. If businessmen go to the trouble of agreeing that their disputes be heard in the courts of a particular country or by a tribunal of their choice they do not expect (at any rate when they are making the contract in the first place) that time and expense will be taken in lengthy argument about the nature of particular causes of action and whether any particular cause of action comes within the meaning of the particular phrase they have chosen in their arbitration clause.” “As it seems to us any jurisdiction or arbitration clause in an international commercial contract should be liberally construed. The words ‘arising out of’ should cover ‘every dispute except a dispute as to whether there was ever a contract at all’ ... .” “In my opinion the construction of an arbitration clause should start from the assumption that the parties, as rational businessmen, are likely to have intended any dispute arising out of the relationship into which they have entered or purported to enter to be decided by the same tribunal. The clause should be construed in accordance with this presumption unless the language makes it clear that certain questions were intended to be excluded from the arbitrator’s jurisdiction.””
“Governing Law and Jurisdiction. Any claim arising under or relating to this Agreement shall be governed by the internal substantive laws of England and Wales and the parties submit to the exclusive jurisdiction of the English courts.”
“But the heart of the current dispute between the parties is whether the License Agreement has or has not been validly terminated. That issue has not been determined, and it is the issue which this court will decide. The fact is that if Skype Technologies is right in saying that the License Agreement remains in force and that it has the effect that it says it has, then Joltid’s claims against Skype Technologies in the US proceedings will fail. It is only if Joltid succeeds in this court that the claims made in the US proceedings get off the ground against Skype Technologies. Mr Calver relied on part of the speech of Lord Scott of Foscote in Donohue v Armco Inc [2002] 1 Lloyd’s Rep. 425 at [60] in which his Lordship appeared to distinguish between a clause which covered “any dispute” between the parties and one which covered “any claim against” one of the parties. But this was both hypothetical and obiter, and none of the other Law Lords associated themselves with it. More to the point, Lord Scott’s observations were made five years before the House of Lords in Fiona Trust drew a line under the authorities and made a fresh start (per Lord Hoffmann at [12]). In Fiona Trust, Lord Scott himself said that he was in complete agreement both with Lord Hoffmann’s conclusion and his reasoning ([36]).”
“Such reasoning, however, does not carry over into a situation where there is no contractual dispute (by which I intend to include disputes about contracts), but all that has happened is that a buyer has bought goods from a seller who has participated in a cartel. I think that rational businessmen would be surprised to be told that a non-exclusive jurisdiction clause bound or entitled the parties to that sale to litigate in a contractually agreed forum an entirely non-contractual claim for breach of statutory duty pursuant to art 101, the essence of which depended on proof of unlawful arrangements between the seller and third parties with whom the buyer had no relationship whatsoever, and the gravamen of which was a matter which probably affected many other potential claimants, with whom such a buyer might very well wish to link itself.”
“(a) …The main evidence for probative similarity is the works themselves, but the Agreement may also be relevant to the extent it identifies similarities in the works that arise from a prior common source; (b) …The Agreement is relevant evidence to the extrinsic part of the test because it both assigns certain material to Rolls-Royce UK in perpetuity, and also licensed material to Rolls-Royce UK and such material will have to be filtered out from this analysis…”
“26. Evidence of Ownership. Topalsson’s US copyright registrations provide prima facie evidence of a valid copyright. The evidence of ownership ultimately presented in a case generally depends on what defenses are raised by the defendant. 27. Evidence of Copying: Access. My understanding from reviewing the US Complaint is that the copyrighted works at issue were provided by Topalsson directly to RRMC. Therefore, the evidence supporting access may include emails and other communications from Topalsson to RRMC providing access to Topalsson's copyrighted software. Access to the software can be shown, for example, by providing evidence that Topalsson made the software available (through a fileshare or similar) and that it was then accessed or downloaded by one or more defendants. 28. Evidence of Copying: Substantial Similarity. To establish substantial similarity will require a side-by-side analysis of Topalsson's copyrighted configuration software and the accused configuration software used by the defendants. This analysis would depend on the works themselves, and not on the terms of any contract between the parties… 32. Therefore, each of the elements of Topalsson’s copyright infringement claims - ownership, access, substantial similarity, acts of infringement, secondary liability, and damages - can be established without reference to the agreement between Topalsson and RRMC. In some copyright infringement cases, a defendant may assert an affirmative defense that its conduct was licensed under an agreement. However, here, I understand that the acts of copyright infringement alleged in Topalsson’s US complaint post-date the acknowledged termination of the agreement. In other words, it is my understanding that RRMC has acknowledged that the agreement was no longer in force at the time of the alleged acts constituting copyright infringement.”
“The basis for what remains of the rule was said by the House of Lords in the Moçambique case[1893] AC 602 , 623 to be that controversies should be decided in the country of the situs of the property because the right of granting it was vested in the ruler of the country and in the Hesperides case[1979] AC 508 to be the maintenance of comity and the avoidance of conflict with foreign jurisdictions. It is possible to see how the rationale of the Moçambique rule can be applied to patents, at any rate where questions of validity are involved. For example the claims might touch on the validity of patents in sensitive areas, such as armaments, and that no doubt is part of the rationale for article 22(4) of the Brussels I Regulation. But it is very difficult to see how it could apply to copyright. It is true that copyright can involve delicate political issues. Thus in a very different context, Brightman J had to deal with the international consequences for copyright protection of the samizdat circulation in the Soviet Union of Solzhenitsyn’s August 1914 without having been passed by the Soviet censor: The Bodley Head Ltd v Flegon[1972] 1 WLR 680 . But such cases can be dealt with by an application of the principles of public policy in appropriate cases.”
“The UX/UI concept, I do recall that we tried heavily to agree on design frames on15 November 2019 which Rolls−Royce did not agree on and they kept changing and changing the UI concept, they have been not clear about how different pieces of thumbnails should look like, how colour selection modes should look like, how hotspots and configuration hotspots should look like . They had specific requests for changing backgrounds and environments by the CEO Torsten Muller−Oetvoes, and the overall flow in UX/UI design. It was a moving document which was, in my view, never agreed.”
‘[60] There is a point of construction of the exclusive jurisdiction clause that it is convenient to deal with at this point. It is accepted that the clause is not restricted to contractual claims. A claim for damages for, for example, fraudulent misrepresentation inducing an agreement containing an exclusive jurisdiction clause in the same form as that with which this case is concerned would, as a matter of ordinary language, be a claim in tort that arose ‘out of or in connection with’ the agreement. If the alleged fraudulent misrepresentation had been made by two individuals jointly, of whom one was and the other was not a party to the agreement, the claim would still be of the same character, although only the party to the agreement would be entitled to the benefit of the exclusive jurisdiction clause. The commencement of the claim against the two alleged tortfeasors elsewhere than in England would represent a breach of the clause. The defendant tortfeasor who was a party to the agreement would, absent strong reasons to the contrary, be entitled to an injunction restraining the continuance of the foreign proceedings. He would be entitled to an injunction restraining the continuance of the proceedings not only against himself but also against his co-defendant. The exclusive jurisdiction clause is expressed to cover “any dispute which may arise out of or in connection with” the agreement. It is not limited to “any claim against” the party to the agreement. To give the clause that limited construction would very substantially reduce the protection afforded by the clause to the party to the agreement. The non-party, if he remained alone as a defendant in the foreign proceedings, would be entitled to claim from his co-tortfeasor a contribution to any damages awarded. He could join the co-tortfeasor, the party entitled to the protection of the exclusive jurisdiction clause, in third party proceedings for that purpose. The position would be no different if the claim were to be commenced in the foreign court with only the tortfeasor who was not a party to the exclusive jurisdiction clause as a defendant. He would be able, and well advised, to commence third party proceedings against his co-tortfeasor, the party to the exclusive jurisdiction clause. [61] In my opinion, an exclusive jurisdiction clause in the wide terms of that with which this case is concerned is broken if any proceedings within the scope of the clause are commenced in a foreign jurisdiction, whether or not the person entitled to the protection of the clause is joined as defendant to the proceedings. An injunction restraining the continuance of the proceedings would not, of course, be granted unless the party seeking the injunction, being someone entitled to the benefit of the clause, had a sufficient interest in obtaining the injunction. It would, I think, be necessary for him to show that the claim being prosecuted in the foreign jurisdiction was one which, if it succeeded, would involve him in some consequential liability. It would certainly, in my opinion, suffice to show that if the claim succeeded he would incur a liability as a joint tortfeasor to contribute to the damages awarded by the foreign court. [62] This point is of direct relevance in the present case. In the New York proceedings … several claims are made but most of them are based upon the allegation that Mr Donohue, Mr Atkins, Mr Rossi and Mr Stinson conspired together fraudulently to extract in various ways substantial sums of money from the Armco group of companies. If the allegations can be made good, the liability of the conspirators would be a joint and several liability. There are substantial issues as to which of the claims fall within the language of the exclusive jurisdiction clause but I think it is clear that some of them do. Of the four alleged conspirators only Mr Donohue and Mr Atkins are contractually entitled to the benefit of the exclusive jurisdiction clause. Mr Atkins has settled with Armco, so it was Mr Donohue alone who commenced an action in this country for an injunction enforcing the clause. If Mr Donohue is entitled to an injunction enforcing the clause he is entitled, in my opinion, to an injunction that bars the continuance of the claims in question not only against himself but also against Mr Rossi and Mr Stinson with whom he is jointly and severally liable. If claims against Mr Donohue are within the clause, then so too are the corresponding claims against Mr Rossi and Mr Stinson. Mr Rossi and Mr Stinson are not contractually entitled to enforce the clause, but Mr Donohue is, in my opinion, entitled to ask the court to enforce it by restraining the prosecution in New York of all claims within its scope in respect of which Mr Donohue would be jointly and severally liable.’ [22] In Cavendish Square Holding BV v Joseph Ghossoub one of the questions facing Laurence Rabinowitz QC, sitting as a Deputy High Court Judge, was whether an exclusive jurisdiction clause in a contract between Mr Ghossoub (A) and Cavendish Square Holding BV (B) could be enforced (by B against A) by an anti-suit injunction so as to prevent proceedings against third parties (ie by A against C). It was held that it could not because, as a matter of interpretation, the exclusive jurisdiction clause did not extend to cover claims against third parties. After reviewing several of the authorities listed in para [20] above, Laurence Rabinowitz QC summarised the legal position as follows: ‘[82] In light of the consideration given to this question by earlier authorities, it seems to me possible to make the following observations: (1) Whether an exclusive jurisdiction clause should be understood to oblige a contractual party to bring claims relating to the contract in the chosen forum even if the claim is one against a non-contracting party, requires a consideration of the contract as a whole including not just the language used in the exclusive jurisdiction clause but also all other terms in the contract that may shed light on what the parties are likely to have intended. (2) The principle that rational businessmen are likely to have intended that all disputes arising out of or connected with the relationship into which they had entered would be decided by the same court cannot apply with the same force when considering claims brought by or against non-contracting third parties. More particularly, whilst it is well established that the language of an exclusive jurisdiction clause is to be interpreted in a wide and generous manner, the starting position in considering whether disputes involving a non-contracting third party might come within the scope of the clause must be that, absent plain language to the contrary, the contracting parties are likely to have intended neither to benefit nor prejudice non-contracting third parties. (3) Where it is clear from the express terms that the contracting parties have turned their minds to the position of third parties and more particularly whether such third parties are to benefit or bear the burden of rights and obligations agreed between the contracting parties, the absence of any express language in the exclusive jurisdiction clause that provides for the application of that term in relation to claims brought by or against third parties may be an indication that the clause was not intended either to benefit or prejudice such third parties. (4) Where the exclusive jurisdiction clause is silent on the question, the fact that any provision in the contract dealing with third parties indicates an intention that third parties should not acquire rights as against the contracting parties by virtue of the contract, may be a further indication that the clause was not intended either to benefit or prejudice such third parties. (5) Where a particular interpretation of the exclusive jurisdiction clause produces a material contractual imbalance because for example it results in one party to a dispute relating to the contract being subjected to an obligation to bring proceedings in the chosen jurisdiction in circumstances where the other party to the dispute is not similarly obliged, or where that interpretation would require a claim against a non-contracting third party to be brought in the agreed jurisdiction even where the chosen forum may not actually have jurisdiction over such a claim against that party, this too may be an indication that the clause was not intended to so apply because such a result is unlikely to be what the contracting parties as rational businessmen would have agreed. (6) The fact that there is nothing in the contract that might indicate a rational limit in terms of the identity of non-contracting third parties whose rights and interests might be affected by the application of an exclusive jurisdiction clause might provide a further indication that the clause was only intended to affect the rights and interests of the contracting parties. (7) It follows that where contracting parties intend that any claim relating to the contract be subject to the exclusive jurisdiction clause even where it is one brought by or against a non-contracting party, clear words should be used expressly setting out this intention, the parties to be affected and, if relevant, the manner in which submission of any non-contracting parties to the jurisdiction of the chosen court is to be ensured.’ [23] In principle, and consistently with what Lord Scott and Laurence Rabinowitz QC have said and with the other authorities listed in para [20] above, I would express the correct approach to this question (of whether the contracting party (B) can enforce against the other contracting party (A) an exclusive jurisdiction clause, by an anti-suit injunction, so as to prevent tort proceedings by the other contracting party (A) against a third party (C)) in the following way: (i) It is a matter for the interpretation of the jurisdiction clause whether the clause extends to cover the tort proceedings against the third party. Applying the general law of contract, the correct approach to that question of interpretation requires the application of the modern contextual and objective approach. One must ask what the clause, viewed in the light of the whole contract, would mean to a reasonable person having all the relevant background knowledge reasonably available to the parties at the time the contract was made (excluding the previous negotiations of the parties and their declarations of subjective intent). Business common sense and the purpose of the term (which appear to be very similar ideas) may also be relevant. Important cases of the House of Lords and Supreme Court recognising the modern approach, which marks a shift from an older more literal approach, include Investors’
“1. The district court correctly apportioned joint and several liability among the defendants. The district court stated, "where an upstream defendant causes, whether directly or indirectly, a downstream defendant's infringement, the upstream defendant is a joint tortfeasor in, and therefore jointly and severally liable for, the plaintiffs harm caused by the downstream defendant's conduct." The district court also concluded that "where a downstream infringer's conduct is not the legal cause of the upstream defendant's infringement, the downstream infringer will not be responsible, jointly and severally, for the upstream defendant's wrongdoing." The district court's conclusions were correct.”
“Paragraph 3.1 (6) (c) ofPD 6B provides jurisdiction where “a claim is made in respect of a contract where the contract… is governed by English law.”
“It is sufficient to dispose of the point in this case to indicate that the required connection between claim and contract must inevitably be the more difficult to establish in a case where the intended defendant is not party to the contract upon which reliance is placed than in a case where he is party to it.”” “It is sufficient to dispose of the point in this case to indicate that the required connection between claim and contract must inevitably be the more difficult to establish in a case where the intended defendant is not party to the contract upon which reliance is placed than in a case where he is party to it.””
“(2B) The claimant may serve the claim form on the defendant outside of the United Kingdom where, for each claim made against the defendant to be served and included in the claim form—… (b) a contract contains a term to the effect that the court shall have jurisdiction to determine that claim.”
“Indeed, in the trilogy of cases discussed above, the issue was precisely whether the defendant, an acknowledged party to the clause, was caught by it even in relation to claims made by him against third parties (with or without the claimant as well). In other words, from a jurisdiction point of view they were, or would have been sub-paragraph (a) cases.”
“1. Under English law the court may restrain a defendant over whom it has personal jurisdiction from instituting or continuing proceedings in a foreign court when it is necessary in the interests of justice to do. 2. It is too narrow to say that such an injunction may be granted only on grounds of vexation or oppression, but, where a matter is justiciable in an English and a foreign court, the party seeking an anti-suit injunction must generally show that proceeding before the foreign court is or would be vexatious or oppressive. 3. The courts have refrained from attempting a comprehensive definition of vexation or oppression, but in order to establish that proceeding in a foreign court is or would be vexatious or oppressive on grounds of forum non conveniens, it is generally necessary to show that (a) England is clearly the more appropriate forum ("the natural forum"), and (b) justice requires that the claimant in the foreign court should be restrained from proceeding there. 4. If the English court considers England to be the natural forum and can see no legitimate personal or juridical advantage in the claimant in the foreign proceedings being allowed to pursue them, it does not automatically follow that an anti-suit injunction should be granted. For that would be to overlook the important restraining influence of considerations of comity. 5. An anti-suit injunction always requires caution because by definition it involves interference with the process or potential process of a foreign court. An injunction to enforce an exclusive jurisdiction clause governed by English law is not regarded as a breach of comity, because it merely requires a party to honour his contract. In other cases, the principle of comity requires the court to recognise that, in deciding questions of weight to be attached to different factors, different judges operating under different legal systems with different legal polices may legitimately arrive at different answers, without occasioning a breach of customary international law or manifest injustice, and that in such circumstances it is not for an English court to arrogate to itself the decision how a foreign court should determine the matter. The stronger the connection of the foreign court with the parties and the subject matter of the dispute, the stronger the argument against intervention. 6. The prosecution of parallel proceedings in different jurisdictions is undesirable but not necessarily vexatious or oppressive… 8. The decision whether or not to grant an anti-suit injunction involves an exercise of discretion and the principles governing it contain an element of flexibility.”