Television Jamaica Ltd v CVM Television Ltd

• Jurisdiction: Jamaica
• Judge: Sykes J
• Judgment Date: 09 January 2017
• Neutral Citation: [2017] JMSC Comm 1
• Docket Number: CLAIM NO. 2015CD00112
• Court: Supreme Court (Jamaica)
• Date: 09 January 2017

[2017] JMSC COMM 1

IN THE SUPREME COURT OF JUDICATURE OF JAMAICA

COMMERCIAL DIVISION

CLAIM NO. 2015CD00112

Between

Television Jamaica Limited

Claimant

and

CVM Television Limited

Defendant

M Georgia Gibson Henlin QC and Kristen Fletcher instructed by Henlin Gibson Henlin for the claimant

Charles Piper QC and Petal Brown instructed by Charles E Piper and Associates for the defendant

COPYRIGHT INFRINGEMENT — DAMAGES — MEASURE OF DAMAGES — WHETHER MEASURE IS COST OF LICENCE THAT OUGHT TO HAVE BEEN OBTAINED — FACTORS THAT GO INTO COSTS OF LICENCE — WHETHER ADDITIONAL DAMAGES SHOULD BE AWARDED UNDER SECTION 32 (2) OF THE COPYRIGHT ACT — EXPLOITATION OF THE COPYRIGHT — COSTS — BASIS OF AWARD OF COSTS

IN OPEN COURT

Sykes J

Election of remedy, disclosure, split trials and their rationale

1 The court found that CVM Television Limited (‘CVM’) was in breach of Television Jamaica Limited's (‘TVJ’) exclusive licence which TVJ had for the 2015 broadcast of the World Athletic Championship (‘WAC’) ( [2016] JMSC COMM 21). The court also held that the practice is that the successful claimant may elect the remedy believed to be appropriate to the particular case.

2 The court will deal with each of Mr Piper's QC's objections to this split trial approach. The court while seeing the point being made has concluded that there is good and sound authority supporting it, though the court accepts that it is not necessarily the method to be adopted in every case.

3 Mr Piper took objection to the manner in which TVJ went about this aspect of the case. His view was that, as it has now turned out, what TVJ is claiming could have been pleaded as special damages and proved accordingly. He submitted that until this phase of the trial, CVM did not know the full case it had to meet and therefore was somewhat in the dark. The case law is not with Mr Piper on this. The split trial is rooted in the idea that a claimant does not necessarily have to elect between two inconsistent remedies before liability has been determined. The claimant can plead the inconsistent remedies but at the end of the trial, if successful in liability, he must choose between them. This position is expressed in the dictum of Viscount Simon LC in United Australia Limited v Barclays Bank Limited [1941] AC 1, 30:

I therefore think that on a question of alternative remedies no question of election arises until one or other claim has been brought to judgment. Up to that stage the plaintiff may pursue both remedies together, or pursuing one may amend and pursue the other: but he can take judgment only for the one, and his cause of action on both will then be merged in the one.

4 That was not a copyright case but it sums up the principle quite well and it is of general application. The election of remedy may result in a split trial, where liability is determined separately and before the remedy.

5 Intellectual property cases are perhaps those where the split trial approach occurs more often. In the case of Island Records Ltd v Tring International PLC [1995] 3 All ER 444 Lightman J refers to what his Lordship described as the practice ‘in particular in intellectual property cases’ to have a split trial. In that case the claimant sued for infringement of copyright. The remedies sought were the usual combination of an injunction, delivery up of infringing copies, an enquiry as to damages and in the alternative, an account of profits. The latter two are the inconsistent remedies from which the claimant must choose one. It was common ground that the claimant was entitled to summary judgment but the remaining issue was, when was the election to be made? The claimant contended that the election should not be made until he had, ‘by means of discovery or otherwise, sufficient information to make an informed election.’ The defendants ‘contended that the election had to be made at the hearing of the motion [for summary judgment’.’

6 Lightman J responded to both submissions by noting at page 446:

With a view to the saving of costs, the practice has developed, in particular in intellectual property cases, when this is practicable, to have a ‘split trial’. The action is divided into two stages. The first stage is the trial at which the issue is limited to that of liability, ie whether the plaintiff's rights have been infringed. The second stage, which is contingent upon liability being established at the first stage, is concerned with the question of assessment of damages and calculation of profits. In this way, the costs of exploring the issue of damages and profits are put off until it is clear that the defendant is liable and the issue really arises and requires determination. As a concomitant with this practice, there has likewise developed the practice of limiting discovery at the first stage to documents relevant to the issue of liability and excluding documents relevant only to the second stage. In this way the burden of discovery at the first stage is reduced, and the invasion of confidence necessarily involved in discovery is postponed and (if liability is not established) entirely obviated (see Baldock v Addison [1995] 3 All ER 437, [1995] 1 WLR 158). ( It may be noted that this practice was in appropriate cases adopted by the courts of equity in the nineteenth century: seeBenbow v Low (1880) 16 Ch D 93at 98 andFennessy v Clark (1887) 37 Ch D 184.)

7 The first stage determines liability and the second, deals with the remedy. According to Lightman J this practice was not uncommon in the nineteenth century. His Lordship cites two cases in support of the proposition. These are Benbow v Low (1880) 16 Ch D 93, 98 and Fennessy v Clark (1887) 37 Ch D 184, 187. Having read both cases it is not entirely clear that Benbow is strong authority for the proposition for which it was cited. Fennessy provides stronger support. In that case the claimant brought an action alleging infringement of his trade mark. He sought delivery up of all labels that imitated the claimant's labels, damages or account for profits. During the trial the claimant's counsel sought discovery, via interrogatories, of the number of sales the defendant made and he also wanted the defendant to provide records of business transactions relating to the infringing product of the defendant. The defendant objected on the ground that the request for such information was premature. The claimant appealed the trial judge's decision upholding the defendant's objection.

8 In Fennessy Cotton LJ says at page 187:

Now, I do not say that the damage sustained by the Plaintiff is not a question of fact, but is it a question of fact within the meaning of that order? At the time when the order was made the Plaintiff had not elected to waive his account of profits. Would it then be right to allow the Plaintiff to get a jury to determine what damages he was entitled to before he has made his election between damages and profits? Should the jury award him a large sum for damages he would probably accept it, but if they gave him a small sum only, then he might say, “No, I would rather have an account of profits, as I see by the Defendant's books that he has made a much larger sum.”

By “questions of fact” I think that the order means questions of fact on which the Plaintiff's title to relief depends. In my opinion the decision of Mr. Justice Kay is right, and the Plaintiff's application for discovery and inspection of the Defendant's books is premature. It is not necessary to refer to the authorities. The Court is always unwilling before the right to relief is established to make an order for discovery which may be injurious to the defendant, and will only be useful to the plaintiff if he succeeds in establishing his title to relief.

9 Here is a plain statement that until the right to relief is established then the details sought by the claimant were premature. The idea here is to provide some measure of protection for the defendant who in giving the information may pass on sensitive information about his business operations. It is not just about saving costs although Lightman J expresses this as one of the reasons for the split trial. If the defendant is forced to hand over important records of his business and the claimant is unsuccessful in establishing liability then the defendant could well be placed at a disadvantage. This is another reason why discovery on the second phase of the trial is limited to what is necessary to enable the claimant to make his election.

10 In light of the more recent practice and the reasons behind it the courts confined discovery in the first phase of the trial to what was necessary to determine liability. Once liability has been established then discovery appropriate to the second stage was granted ( Island Records at page 446 cited above).

11 This approach was applied as recently as 2014 in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] IP & T 1008[47] – [48]. So entrenched has the practice become in England that the order is known as an Island Records v Tring disclosure.

12 The Privy Council endorsed Island Records, split trials and discovery at the second phase in Tang Man Sit (decd) (personal representative) v Capacious Investments Ltd [1996] 1 All ER 193. That was a case of breach of trust. The claim brought sought account for profits and damages. An issue arose as to the claimant's right to elect between alternative and inconsistent remedies. The Board held that an account for profit and damages were inconsistent and not cumulative and in such circumstances the claimant had to elect between them when judgment was given in his favour. The Board, importantly, did appreciate that a court may order disclosure of information so that the claimant may make an informed decision. Lord Nicholls said at pages 197 – 198:

Faced with alternative and inconsistent remedies a plaintiff must choose, or...