No summary judgment where copyright claim is mixed up in more knotty issues

Sorry about the delay in posting this note: Devonshire Pine Ltd v Day has been at the back of my mind for a while, but I keep getting distracted. Devonshire Pine Ltd v Day is a Chancery Division, England and Wales, decision from 19 July, handed down by Stuart Isaacs QC, sitting as a Deputy Judge. It hasn't found its way on to BAILII and is in probability not going to do so.

In short, this was an application by Devonshire Pine for summary judgment in its claims against Day for copyright infringement and breach of statutory duty. According to Devonshire Pine, Day had taken copyright-protected photographs from its website and then published them, without authorisation, on the latter's own website, and was then indulging in "reverse passing off" by creating the impression that the items portrayed in the photos of Devonshire Pine were those of Day.  Day however denied any liability, asserting that the images in question had been provided by a company in China, where similar images were commonplace. Devonshire Pine made a further allegation that Day had, as a person providing an information society service on a website, failed to make available its name, address and other details as were required under the Electronic Commerce (EC Directive) Regulations 2002 (here), reg. 6. Again, Day denied liability, maintaining that the requirements of the Regulations had been fulfilled and that, in any case, Devonshire Pine had failed to show that it had suffered loss.

As to the application for summary judgment, Day submitted that there was a compelling reason for the infringement claim to go to trial because a grant of summary judgment on the copyright infringement claim would determine an issue in the related reverse passing off claim, which was too complex to be dealt with summarily. Also, Devonshire Pine actually had to establish a case in respect of the breach of statutory duty; the mere absence of a detailed defence was not a sufficient basis for a summary judgment application.

Stuart Isaacs QC refused the application for summary judgment.

A factual connection between the copyright infringement claim and the reverse passing off claim did exist. Although there were grave doubts about the prospects of Day's defence to the infringement claim, there was still a compelling reason for the matter to go to trial since there would in any event still be a trial of other issues and even Devonshire Pine accepted that there was a factual overlap between these two claims. It was therefore appropriate to determine all of the issues together -- even though Day's prospect of success in defending the copyright claim was so poor.

Regarding damages for breach of statutory duty in failure to comply with the 2002 Regulations, the court was not satisfied that this breach was enforceable by Devonshire Pine as a recipient of an information society service suffering damages. It was uncertain whether Day was a supplier  of an information society service within the meaning of the Regulations, since there was an arguable distinction between Day as a company and Day's director in relation to the provision of the service. It was also unclear whether Devonshire Pine was to be treated as a recipient for the purposes of the regulations.

The moral of the story seems clear: if the claim had been based on copyright infringement alone, Devonshire Pine would have had judgment on a plate -- and surely, since the IP Enforcement Directive, the court could order the same damages in respect of copyright alone as it would order for copyright infringement plus reverse passing off (this is a controversial point: readers, please discuss!).