PEARCE v. OVE ARUP PARTNERSHIP LTD. AND OTHERS
[Ch. 1996 P. No. 6040]

Conflict of Laws - Copyright - Jurisdiction under European Convention - Action in England for infringement of Dutch copyright - One defendant domiciled in United Kingdom - Whether action for breach of copyright within scope of Convention - Whether justiciable in England - Civil Jurisdiction and Judgments Act 1982 (c. 27), Sch. 1 (as substituted by Civil Jurisdiction and Judgments Act 1982 (Amendment) Order 1990 (S.I. 1990 No. 2591)), art. 6(1)¹

In 1986 the plaintiff, who was domiciled in the United Kingdom, created original drawings and plans for a town hall as a diploma exercise while he was an architectural student. The plans were never used. The second defendant, an architect and director of the third defendant, was alleged to have had access to, and to have taken copies of, the plaintiff's drawings in 1986. In 1996 the plaintiff brought an action of breach of his United Kingdom and Dutch copyright, alleging that the second and third defendants used his drawings in designing a building in Rotterdam constructed between 1990 and 1993 by the first defendant, a firm of civil engineers, and owned by the fourth defendant. The plaintiff sought injunctions to restrain infringement of his English and Dutch copyright and damages or an account of profits.

¹ Convention on Jurisdiction and the Enforcement of Judgments in Civil Commercial Matters 1968, as amended, art, 6(1): see post, p. 302B-C.

On an application to strike out the statement of claim as an abuse of process on the grounds that acts of breach of Dutch copyright were not justiciable in the English courts and that in any event the action was purely speculative:--

Held, accepting jurisdiction but striking out the action, that the rules of English law on double actionability and by which an action relating to the copyright laws of a foreign state was regarded as a local action not justiciable in the English courts were overridden by the mandatory provisions of the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968 which by section 2(1) of the Civil Jurisdiction and Judgments Act 1982 had the force of law directly in the United Kingdom; that by virtue of article 1 of the Convention an action for breach of copyright was plainly within the scope of the Convention; that by article 6(1) a defendant could be sued in a contracting state where any one of a number of defendants was domiciled and since the first defendant was domiciled in the United Kingdom the second to fourth defendants, who were domiciled in a contracting state, could be sued in the United Kingdom; that the English court had no discretion to decline to accept jurisdiction or to apply the doctrine of forum conveniens because such national rules would impair the effectiveness of the Convention; and that, accordingly, the action for breach of Dutch copyright was justiciable in an English court; but that, on the evidence, the plaintiff's pleaded claim was based on speculation and surmise and had no chance of success, and should be struck out as an abuse of process (post, pp. 300G-301A, 302B-D, 308E-309A).

Sanicentral G.m.b.H. v. Collin (Case 25/79) [1979] E.C.R. 3423, E.C.J. and Shevill v. Presse Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18, E.C.J. applied.

British South Africa Co. v. Companhia de Moçambique [1893] A.C. 602, H.L.(E.) and Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273 distinguished.

Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75 considered.

The following cases are referred to in the judgment:

AM Computer Technology Ltd. v. 4-Sight Ltd. (unreported), 14 January 1992, Parker J.

A-Z Couriers Ltd. v. Comspec Computer Software Ltd. (unreported), 9 November 1988, Aldous J.

Boys v. Chaplin [1971] A.C. 356; [1969] 3 W.L.R. 322; [1969] 2 All E.R. 1085, H.L.(E.)

British South Africa Co. v. Companhia de Moçambique [1893] A.C. 602, H.L.(E.)

Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273

Duijnstee v. Goderbauer (Case 288/82) [1983] E.C.R. 3663, E.C.J.

Handelskwekerij G.J. Bier B.V. v. Mines de Potasse d'Alsace S.A. (Case 21/76) [1978] Q.B. 708; [1977] 3 W.L.R. 479, E.C.J.

James Burrough Distillers Plc. v. Speymalt Whisky Distributors Ltd. [1991] R.P.C. 130

Kalfelis v. Bankhaus Schroder, Munchmeyer, Hengst and Co. (Case 189/87) [1988] E.C.R. 5565, E.C.J.

Kongress Agentur Hagen G.m.b.H. v. Zeehaghe B.V. (Case C-365/88) [1990] E.C.R. I-1845, E.C.J.

L.A. Gear Inc. v. Gerald Whelan & Sons Ltd. [1991] F.S.R. 670

Molnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R. 1112; [1992] 4 All E.R. 47, C.A.

Norbert Steinhardt and Son Ltd. v. Meth (1961) 105 C.L.R. 440

Phillips v. Eyre (1870) L.R. 6 Q.B. 1

Plastus Kreativ A.B. v. Minnesota Mining and Manufacturing Co. [1995] R.P.C. 438

Potter v. Broken Hill Pty. Co. Ltd. (1906) 3 C.L.R. 479

Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C. 190; [1994] 3 W.L.R. 926; [1994] 3 All E.R. 749, P.C.

Rutten v. Cross Medical Ltd. (Case C-383/95) [1997] All E.R. (E.C.) 121, E.C.J.

Sanicentral G.m.b.H. v. Collin (Case 25/79) [1979] E.C.R. 3423, E.C.J.

Shevill v. Presse Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18; [1995] 2 W.L.R. 499; [1995] All E.R. (E.C.) 289, E.C.J.

Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75; [1990] 3 W.L.R. 167; [1990] 1 All E.R. 909

Upjohn Co. v. T. Kerfoot & Co. Ltd. [1988] F.S.R. 1

The following additional cases were cited in argument:

Davey v. Bentinck [1893] 1 Q.B. 185, C.A.

Ronex Properties Ltd. v. John Laing Construction Ltd. [1983] Q.B. 398; [1982] 3 W.L.R. 875; [1982] 3 All E.R. 961, C.A.

MOTION

By a writ endorsed with a statement of claim dated 25 September 1996 and an amended statement of claim dated 30 October 1996 the plaintiff, Gareth Pearce, brought an action against the defendants, (1) Ove Arup Partnership Ltd., a firm of civil engineers domiciled in the United Kingdom, (2) Remment Koolhas, an architect, (3) Office for Metropolitan Architecture (O.M.A.) Stedebouw B.V., of which the second defendant was a director, and (4) the City of Rotterdam, for infringement of his English and Dutch copyright in drawings and plans for a town hall in Docklands, London in the construction of the Kunsthal in Rotterdam. The plaintiff sought, inter alia, injunctions restraining the defendants from infringing the plaintiff's United Kingdom and Dutch copyright, and inquiries as to damages or an account of profits for infringement.

By a notice of motion dated 16 December 1996 the second, third and fourth defendants sought, inter alia, an order striking out the amended statement of claim on the grounds that the alleged acts of infringement of Dutch copyright did not constitute actionable torts under English law, alternatively that the allegations were speculative, alternatively that the action was frivolous, vexatious and an abuse of the process of the court and was outside the statutory limitation period.

The facts are stated in the judgment.

Christopher Floyd Q.C. and Richard Hacon for the second, third and fourth defendants. Two of the alleged infringements occurred more than six years before the issue of the writ. The causes of action in respect of those actions are therefore barred under the Limitation Act 1980 and ought to be struck out: Ronex Properties Ltd. v. John Laing Construction Ltd. [1983] Q.B. 398.

The third alleged infringement infringement relies on Dutch copyright. An action for infringement of a foreign copyright law is not justiciable in England. An action for infringement of copyright is local and not transitory. The English courts have consistently declined to try actions concerned with foreign intellectual property rights because they are "local" to the territory in which the rights exist and the alleged alleged infringement occurs: see Def Lepp Music v. Stuart Brown [1986] R.P.C. 273, 276; Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75, 87 and British South Africa Co. v. Companhia de Moçambique [1893] A.C. 602, 618-622, 632. [Reference was also made to Boys v. Chaplin [1971] A.C. 356 and Phillips v. Eyre (1870) L.R. 6 Q.B. 1.] Section 30 of the Civil Jurisdiction and Judgments Act 1982 partially abolished the Moçambique rule, but in respect only of actions concerning "immovable property" abroad. Copyright is not "immovable property:" see section 90(1) of the Copyright, Designs and Patents Act 1988. The rule continues to apply to actions for infringement of intellectual property rights: see L.A. Gear Inc. v. Gerald Whelan & Sons Ltd. [1991] F.S.R. 670, 674; Molnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R. 1112 and Copinger & Skone James on Copyright, 13th ed. (1991), pp. 318-319, 417-418.

It has been argued that the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968 ("the Brussels Convention"), brought into force in England on 1 January 1987 by the Civil Jurisdiction and Judgments Act 1982, has by implication abrogated the Moçambique rule so the English court can entertain an action for infringement abroad of a foreign right on the basis of the defendant's domicile here: see Vitoria, Jacob, Cornish, Clark and Alexander, Encyclopaedia of United Kingdom and European Patent Law, paras. 10-501--10-505. That argument confuses justiciability with jurisdiction. The Brussels Convention established a new primary basis for jurisdiction: domicile. The previous United Kingdom law enabled a party to be sued if a writ could be served on him here or, in limited circumstances, outside the jurisdiction. The Convention does not require courts to try matters which they had formerly regarded as non-justiciable. If the rule had been abolished for local actions, the English court would be bound to treat as actionable disputes over intellectual property rights created by the laws of any country, not just of Convention states. The true position is that the Convention does not affect the common law rules as to justiciability unless it expressly says so.

Actions based on intellectual property rights which are territorial in nature cannot satisfy the first limb of the "double actionability" rule, rule 203 in Dicey & Morris, The Conflict of Laws, 12th ed. (1993), vol. 2, p. 1487. Section 10 of the Private International Law (Miscellaneous Provisions) Act 1995 abolished the rule, but without retrospective effect. All the acts in the present case occurred before the Act commenced in 1995. Copyright is by nature territorial: see sections 16 and 157 of the Copyright, Designs and Patents Act 1988 and the Def Lepp case. There is no suggestion that Dutch law is any different in this respect, therefore acts done in Holland cannot infringe United Kingdom copyright. The case in relation to those acts is based on Dutch copyright so cannot satisfy rule 203(1)(a). An act done in England does not infringe Dutch copyright:

see the Tyburn case, p. 87. [Reference was made to Potter v. Broken Hill Pty. Co. Ltd. (1906) 3 C.L.R. 479.] Similar conclusions were reached for trade marks in James Burrough Distillers Plc. v. Speymalt Whisky Distributors Ltd. [1991] R.P.C. 130 and patents in Norbert Steinhardt and Son Ltd. v. Meth (1961) 105 C.L.R. 440 (High Court of Australia). The rule admits of exceptions where the law of only one country can be applied to the whole dispute: see Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C. 190. However the general rule applies unless "clear and satisfying grounds are shown why it should be departed from:" the Red Sea Insurance Co. case, p. 206. If it is a matter of discretion, the words of Aldous J. in Plastus Kreativ A.B. v. Minnesota Mining and Manufacturing Co. [1995] R.P.C. 438 are apt.

A pleading which is no more than speculative should be struck out under the inherent jurisdiction of the court: see Upjohn Co. v. T. Kerfoot & Co. Ltd. [1988] F.S.R. 1; A-Z Couriers Ltd. v. Comspec Computer Software Ltd. (unreported), 9 November 1988 and AM Computer Technology Ltd. v. 4-Sight Ltd. (unreported), 14 January 1992. The purpose of having particulars is to examine whether a pleaded bald allegation has any prospect of success. Where the particulars do not support the claim the allegation should be struck out: Davey v. Bentinck [1893] 1 Q.B. 185.

Heather Lawrence for the first defendant adopted the argument of the second, third and fourth defendants.

Adrian Speck for the plaintiff. The Brussels Convention introduced a uniform code for the allocation of jurisdiction in civil and commercial matters between European jurisdictions. The old rules of jurisdiction were swept away, at least in Convention countries. In construing the Convention judicial notice must be taken of principles laid down by the European Court of Justice and the official reports of Jenard and Schlosser (O.J. 1979 C. 59, p. 1 and O.J. 1979 C. 59, p. 70): see section 3 of the Act of 1982. Now the general rule is that a defendant must be sued in the state of his domicile: article 2. Where there are several defendants all may be sued in the place where any one of them is domiciled: article 6(1). Article 5 provides for special jurisdiction which the plaintiff may opt for. These derogations from the general rule must be construed narrowly: see Handelskwekerij G.J. Bier B.V. v. Mines de Potasse d'Alsace S.A. (Case 21/76) [1978] Q.B. 708; Shevill v. Presse Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18 and the Jenard report. [Reference was also made to Kalfelis v. Bankhaus Schroder, Munchmeyer, Hengst and Co.(Case 189/87) [1988] E.C.R. 5565.]

The first defendant is domiciled here and the second defandant may also be domiciled here. The general rule of domicile under the Brussels Convention therefore applies, and the English courts have jurisdiction to entertain the claim. The Def Lepp case [1986] R.P.C. 273, decided before the Brussels Convention was law, and the Tyburn case [1991] Ch. 75, which did not concern the Brussels Convention at all, do not assist the defendants. If it were right that intellectual property infringement could not be heard in foreign courts under the Brussels Convention (because of some additional rule not expressed in the Convention) article 16(4) would be otiose. That article is a derogation from the general rule and gives

exclusive jurisdiction in proceedings concerned with the validity of registered rights to the courts in which they are registered. The policy expressed by Vinelott J. in the Tyburn case is the policy behind article 16(4): see the Jenard report. The contracting parties must have intended that article 16(4) went as far as necessary to protect national sovereignty. There is no room for considering the same policy again and imposing an extra unwritten rule rendering the express rule otiose. Indeed, the Jenard report expressly states that other actions, including those for infringement of patent, are governed by the general rules of the Convention. Copyright is not a registered right so there can never be any dispute on validity of registration: see Duijnstee v. Goderbauer (Case 288/82) [1983] E.C.R. 3663. Other Convention jurisdictions, particularly the Netherlands, have entertained actions based on foreign intellectual properties. Textbooks and academic articles support the view that an English court may entertain an action for infringement of foreign (Brussels Convention) intellectual properties: see Vitoria, Jacob, Cornish, Clark and Alexander, Encyclopaedia of United Kingdom and European Patent Law, vol. 1, paras. 10-501-10-505 and Tritton, Intellectual Property in Europe (1996), p. 771, para. 13.050. Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, 2nd ed. (1995), although expressing no concluded view, suggests that not only may a plaintiff sue a defendant domiciled in the United Kingdom on a foreign copyright, but circumstances may arise when he must be sued in the United Kingdom. The contrary view of Dillon L.J. in Molnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R. 1112 was obiter and per incuriam. Those paragraphs in the defence raising the plea that a claim for infringement of Dutch copyright is not actionable in England should be struck out.

The acts infringing United Kingdom copyright took place more than six years ago, the defendants have pleaded limitation, and the claim for damages and an account must go. The claim for an injunction on United Kingdom copyright is not hopeless as injunctions granted subsequent to an infringement of copyright often extend beyond the precise copyrights proved to have been infringed. The court has a discretion to grant an injunction covering United Kingdom copyright if infringement of Dutch copyright is established. The statement of claim is not "speculative." This is a far cry from a plainly hopeless case.

Floyd Q.C. replied.

Cur. adv. vult

7 March. LLOYD J. handed down the following judgment. In this action the plaintiff complains of breaches of what he claims to be his copyright as the author of drawings created by him as an architectural student in London in about 1986 for a town hall in Docklands. The plans were prepared as a diploma exercise and were never used. The plaintiff says that, in circumstances which it is not necessary to describe here, the second and third defendants had access to, and took copies of, his drawings in 1986. He then says that his drawings, or a substantial part or parts of them, were copied by the second and third defendants in designing a building called the Kunsthal in Rotterdam, which was built between

about 1990 and 1993. He alleges that, as the author of the drawings, he had not only United Kingdom but also Dutch copyright, and that this use in relation to the building in Rotterdam was a breach of his Dutch copyright. He further says that the first defendant, civil engineers retained for the construction of the building, and the fourth defendant, the owner of the building, also breached his Dutch copyright. By this action he claims damages and accounts for breach of his United Kingdom and Dutch copyrights and injunctions and other relief. The claims are denied on the facts by all the defendants.

The second to fourth defendants apply to strike out all or parts of the claim as an abuse of the process at this preliminary stage on three bases. First, they say the claims based on breach of United Kingdom copyright are based on acts more than six years before the issue of the writ and, since they have pleaded the Limitation Act 1980 in defence, these claims should be struck out. The plaintiff admits this as regards the monetary claims but not as regards his claim for an injunction. Secondly, they say that a claim for breach of Dutch or any other foreign copyright is not justiciable in the English courts: that is the first main issue in the case and depends on the effect of the Brussels Convention, applied as part of United Kingdom domestic law by the Civil Jurisdiction and Judgments Act 1982. Thirdly, in any event they say that the claim ought to be struck out as purely speculative, on the basis that the particulars of similarity served by the plaintiff do not show a remotely arguable inference of copying. That is the second main issue in the case. The first defendant has not applied to strike out, but was represented before me because the plaintiff has applied to strike out from its defence, as well as from that of the second to fourth defendants, the plea that the infringement of Dutch copyright is not an actionable tort under English law. It is not alleged that the first defendant has infringed anything other than the plaintiff's Dutch copyright. Although the first defendant has not applied to strike out, the fate of the claim against the first defendant really stands or falls with the claim against the other defendants in respect of Dutch copyright.

Can the English court hear an action for breach of a Dutch copyright against a defendant domiciled in the United Kingdom?

Apart from the effect of the Brussels Convention, an action in England complaining of breach of a foreign copyright would be bound to fail. There are two reasons for this. A claim for breach of a foreign statutory intellectual property right (copyright, patent, trade mark or registered design) is regarded as local, just as a claim for damages for trespass to foreign land is, and as one which should not be entertained by an English court: see British South Africa Co. v. Companhia de Moçambique [1893] A.C. 602 (foreign land); Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273 (copyright), where there was no allegation of a foreign copyright as such but it was alleged that a United Kingdom copyright had been infringed by acts done outside the jurisdiction which were held not to be actionable. This proposition, which I will call the Moçambique rule, was found to be supported by Australian decisions concerning patent infringement, including Norbert Steinhardt and Son Ltd. v. Meth (1961) 105 C.L.R. 440. The Def Lepp Music decision was followed in Tyburn

Productions Ltd. v. Conan Doyle [1991] Ch. 75. But for the Brussels Convention, therefore, I would have to strike out the action as regards breach of Dutch copyright as not being justiciable.

Moreover the Def Lepp Music case shows that such a claim would also fail because the choice of law rule as regards double actionability, deriving from Phillips v. Eyre (1870) L.R. 6 Q.B. 1, and discussed in Boys v. Chaplin [1971] A.C. 356, would not be satisfied. That rule is currently set out as rule 203 in Dicey & Morris, The Conflict of Laws, 12th ed. (1993), vol. 2, pp. 1487-1488, and I will refer to it, for short, as rule 203. The rule has been abolished by section 10 of the Private International Law (Miscellaneous Provisions) Act 1995 but only with prospective effect as from 1 May 1996. The repeal therefore does not assist the plaintiff and I do not have to consider its effect.

The Moçambique rule has been modified by section 30 of the Civil Jurisdiction and Judgments Act 1982. This, however, provides only that the jurisdiction of the English court to entertain proceedings for trespass to, or any other tort affecting, immoveable property extends to cases in which the property is situated outside the United Kingdom unless the proceedings are principally concerned with the question of the title to, or the right to possession of, that property. The categorisation of an intangible right such as a copyright as either moveable or immoveable is not straightforward, and is described by Dicey & Morris, at p. 918, as an illogical distinction. In any event it is difficult to regard it as immoveable property under English conflict of laws rules. In Australia a patent has been held to be analogous to an immoveable, so as to fall within the scope of the Moçambique rule: Potter v. Broken Hill Pty. Co. Ltd. (1906) 3 C.L.R. 479; it does not follow, and that court did not decide, that it is to be classified as an immoveable for all conflict of laws purposes. Nor did Vinelott J. so decide in Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75. According to Dicey & Morrisintangibles are classified as moveables even though, from their very nature, they cannot be moved. If they are not immoveables, section 30, even though in force from 1 January 1987, does not assist the plaintiff to overcome the constraints of the Moçambique rule.

The plaintiff says, however, that these rules have to be regarded as abrogated, or modified, in so far as they preclude the court from hearing an action which, in accordance with the Brussels Convention, may or must be brought in the English court. Mr. Speck for the plaintiff also says that rule 203 is not so inflexible as to preclude the present action in any event, and relies on Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C. 190. However, it seems to me that only the Convention can enable him to overcome the Moçambique rule and, if it does so, it would also remove any problem presented by rule 203. I therefore do not need to consider the precise ambit of rule 203.

The Brussels Convention has the force of law in the United Kingdom directly, not as applied by national legislation: see section 2(1) of the Act of 1982. Any question as to its meaning and effect is to be determined in accordance with the principles laid down by, and any relevant decision of, the European Court: section 3(1). Such questions may be referred to the European Court only by an appellate court, so I cannot avoid deciding

this difficult and controversial question in that way. I am to take judicial notice of any decision of, or expression of opinion by, the European Court on any such question, I may consider the so-called Jenard and Schlosser reports--the report by Mr. P. Jenard on the Brussels Convention and the 1971 Protocol on its interpretation by the European Court (O.J. 1979 C. 59, p. 1) and the report by Professor Peter Schlosser on the 1978 Convention on the accession to the Brussels Convention and the 1971 Protocol of Denmark, Ireland and the United Kingdom (O.J. 1979 C. 59, p. 71)--in ascertaining the meaning and effect of the Convention and I am to give those reports such weight as is appropriate in the circumstances: section 3(2) and (3). Of course the Act of 1982 was not solely concerned with bringing the Brussels Convention into effect, and section 30 is not part of that process, although its effect as regards land is no doubt similar to that of article 16(1) of the Convention.

The first concern of the Brussels Convention is with the enforcement and recognition of judgments within the European Community: cf. article 220 of the E.E.C. Treaty and the preamble to the Convention. The Convention adopts the direct approach, rather than the indirect approach, to that problem, by laying down the circumstances in which the courts of the contracting states are to have jurisdiction to entertain actions involving an international element within the Community. The alternative indirect approach would not prescribe the circumstances in which an action may be brought in the courts of a contracting state but only the circumstances in which a judgment of such a court is one which is to be recognised by the courts in other contracting states. By adopting the direct approach the Convention establishes an autonomous system of international jurisdiction in relations between the member states. The rules are applicable independently of any proceedings for international recognition or enforcement. This approach was seen as allowing increased harmonisation of laws, providing greater legal certainty, avoiding discrimination, and facilitating the ultimate objective of "free movement" of judgments: see the Jenard report, chapter 2, section C (O.J. 1979 C. 59, p. 7).

An action for breach of copyright is plainly within the scope of the civil and commercial matters to which the Convention applies: article 1. The fundamental rule as to jurisdiction is laid down by article 2: a person domiciled in a contracting state shall be sued in the courts of that state. There are exceptions to that principle, some of which provide an alternative forum in particular circumstances, and others which exclude the court of domicile in favour of another forum which is to have sole jurisdiction. All of these exceptions are to be interpreted narrowly, as appears from decisions referred to below. That article 2 provides the fundamental position is emphasised by article 3, whose first sentence is: "Persons domiciled in a contracting state may be sued in the courts of another contracting state only by virtue of the rules set out in sections 2 to 6 of this Title"--that is to say articles 5 to 18. Article 4 leaves national law to govern local jurisdiction as regards defendants who are not domiciled in a contracting state, except where any of the exclusive provisions of article 16 applies.

Two of the special rules of jurisdiction could be relevant to such a case as the present. The first is article 5(3):

"A person domiciled in a contracting state may, in another contracting state, be sued . . . 3. In matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred."

An action for compensation for infringement of copyright is a matter relating to tort, delict or quasi-delict. It would therefore be possible to bring this action, as regards Dutch copyright, in the Netherlands, no doubt in the courts of Rotterdam, as the place where the harmful event occurred.

The second alternative which is relevant is article 6(1): "A person domiciled in a contracting state may also be sued--1. Where he is one of a number of defendants, in the courts for the place where any one of them is domiciled." The first defendant is certainly domiciled in the United Kingdom and it seems that the second defendant may be. The fourth defendant certainly is not and it seems that the third defendant is not, so they are sued in England on the basis of this article.

I should also note two of the exclusive jurisdiction provisions, in article 16(1) and (4):

"The following courts shall have exclusive jurisdiction, regardless of domicile: 1. (a) in proceedings which have as their object rights in rem in immoveable property or tenancies of immoveable property, the courts of the contracting state in which the property is situated; . . . 4. In proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the contracting state in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place."

Copyright is not a right required to be deposited or registered, so article 16(4) has no application to a copyright action. Even in relation to a registered right such as a patent, an action in which registration or validity are not at issue, for example where the only issue is ownership of the patent or (unusually) where only infringement is at issue, is not within article 16(4) and is governed by the general rules: see Duijnstee v. Goderbauer (Case 288/82) [1983] E.C.R. 3663. It was not argued before me that article 16(1) applied to the present case and, even though article 19 requires the court to consider such a question of its own motion, I am satisfied that article 16(1) does not apply. Whether or not an intellectual property right such as a copyright could be regarded as within the category of "immoveable property" for the purposes of this article, a phrase which no doubt requires a Convention-based uniform interpretation rather than resorting to the interpretations applied by each national law (such as section 90(1) of the Copyright, Designs and Patents Act 1988), the action is not one which has as its object rights in rem to the copyright.

Thus, applying the articles of the Convention, I would come to the conclusion that the English courts have jurisdiction in relation to an

action against the first defendant on the basis of its domicile and against the other defendants together with the first defendant on the basis of article 6(1), even though the courts of the Netherlands would also have jurisdiction, on the basis of the domicile of the fourth defendant and possibly the third defendant, and in particular the courts of Rotterdam would have jurisdiction as being the place where the harmful event occurred, under article 5(3).

If the territorial approach of English law were applied so as to exclude an action being brought against a defendant domiciled in the United Kingdom (or, for that matter, any other defendant properly served in accordance with the rules as to jurisdiction) for breach of a Dutch copyright, the quixotic position would be reached that the court is required to accept jurisdiction under article 2 but would immediately strike out the action as non-justiciable. Of course, in every such case there would be an alternative forum under article 5(3) even if there were not, as here, a yet further alternative forum under article 6(1). But it is said for the plaintiff that this approach would impair the effectiveness of the Convention, by eliminating one of the jurisdictions provided for under the Convention--and the basic one at that. It would not be a case in which article 2 provides the general rule and article 5 (and 6) provides optional special jurisdictions which the plaintiff may choose: see Handelskwekerij G.J. Bier B.V. v. Mines de Potasse d'Alsace S.A. (Case 21/76) [1978] Q.B. 708, 729, paras. 9-10. In this case, the plaintiff would only be able to choose the supposedly alternative jurisdictions under article 5(3) or 6(1). Dealing with the other alternative which is relevant here, under article 6(1), the European Court said, in Kalfelis v. Bankhaus Schroder, Munchmeyer, Hengst and Co. (Case 189/87) [1988] E.C.R. 5565, 5583, para. 8:

"The principle laid down in the Convention is that jurisdiction is vested in the courts of the state of the defendant's domicile and that the jurisdiction provided for in article 6(1) is an exception to that principle. It follows that an exception of that kind must be treated in such a manner that there is no possibility of the very existence of that principle being called in question."

It might therefore be said that to apply the Moçambique rule or rule 203 deprives the fundamental rule of its content and calls into question, in the particular case, the very existence of the principle. The question here is not of the interpretation or effect of the exception, but the effect of the defendants' submission would be similar to that which the European Court warned against in that case.

Against that, it is said that the Convention only governs rules as to jurisdiction; it does not affect rules of substantive law or choice of law (such as rule 203) or other rules, procedural or otherwise, as to the admissibility of proceedings, such as the Moçambique rule. The objections raised by the defendants to the claim on this aspect are based on a choice of law rule and a justiciability rule, neither of which has to do with jurisdiction and which, it is said, are therefore not affected by the Convention.

In Sanicentral G.m.b.H. v. Collin (Case 25/79) [1979] E.C.R. 3423, 3434 Mr. Advocate General Capotorti made the point that there is a certain

degree of similarity between the two problems of the choice of law and the designation of the court which is to have jurisdiction, even though they are different matters. That case was concerned with the effect of a choice of forum clause in a contract, which was invalid under national law but was validated by the Convention by the time of the institution of the proceedings. In its judgment the court said, at p. 3429, para. 5:

"It is appropriate to answer this point by stating, on the one hand, that the Convention does not affect rules of substantive law and, on the other hand, that, as the Convention seeks to determine the jurisdiction of the courts of the contracting states in the intra-Community legal order in regard to matters of civil jurisdiction, the national procedural laws applicable to the cases concerned are set aside in the matters governed by the Convention in favour of the provisions thereof."

It is also relevant to note what the court said in Kongress Agentur Hagen G.m.b.H. v. Zeehaghe B.V. (Case C-365/88) [1990] E.C.R. I-1845. That case concerned the desire of the defendant to bring third party proceedings based on a guarantee, in order to cover itself against the plaintiff's claim, which the national court refused to allow on the basis that the foreign domicile of the proposed third party would result in delay and should therefore not be allowed. In its judgment the court said, at pp. 1865-1866:

"17. It should be stressed that the object of the Convention is not to unify procedural rules but to determine which court has jurisdiction in disputes relating to civil and commercial matters in intra-Community relations and to facilitate the enforcement of judgments. It is therefore necessary to draw a clear distinction between jurisdiction and the conditions governing the admissibility of an action.

"18. With regard to an action on a warranty or a guarantee, article 6(2) therefore merely determines which court has jurisdiction and is not concerned with conditions for admissibility properly so called.

"19. Moreover the court has consistently held that, as regards procedural rules, reference must be made to the national rules applicable by the national court . . .

"20. It should be noted, however, that the application of national procedural rules may not impair the effectiveness of the Convention. As the court has held (in particular in Duijnstee v. Goderbauer(Case 288/82) [1983] E.C.R. 3663), a court may not apply conditions of admissibility laid down by national law which would have the effect of restricting the application of the rules of jurisdiction laid down in the Convention."

It observed that the effectiveness of the Convention would be impaired if the court had regard to the fact of the domicile or residence of the third party outside the territory of the particular court and in another contracting state, but that otherwise the court could and should apply its

own procedural rules. In its ruling on the case the court said, at p. 1867, para. 2:

"the national court may apply the procedural rules of its national law in order to determine whether that action is admissible, provided that the effectiveness of the Convention in that regard is not impaired . . ."

Correspondingly, in Shevill v. Presse Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18, 63-64, para. 41, the court said that national conflict of law rules should determine whether an event is harmful, and what evidence is required of the existence and extent of the harm, for the purposes of article 5(3), "provided that the effectiveness of the Convention is not thereby impaired."

On the one hand it is said that the national rules relied on are conditions of admissibility which have nothing to do with the designation of the court which is to have jurisdiction and which are therefore left by the Convention to the application of national law, just as the Convention would leave unaffected rules such as about acts of state. On the other hand it is said that the operation of the rules relied on here (unlike rules as to acts of state) would impair the effectiveness of the Convention and they must therefore be overridden, although only so far as is necessary to allow article 2 to have its full effect.

The English rules would have a similar effect to article 16(4) as regards excluding jurisdiction from English courts, but in a wider range of cases, not being limited to registrable rights. However, that point by itself does not necessarily demonstrate that the English rules are incompatible with the Convention. The Convention applies to all contracting states, and I know not what the local law of other contracting states may have said on this point. If any of them would otherwise have permitted an action within the scope of article 16(4) to be brought in a state other than that of the registration of the relevant right, that rule would be automatically overridden by the article. It is true that this article derives from the same policy as the English rule of territoriality, as mentioned by the House of Lords in the Moçambique case and by Vinelott J. in Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75, but that does not of itself mean that the article is the only permissible extent of such an exclusionary rule.

So far as authority in the English courts is concerned, Dillon L.J. in Molnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R. 1112, 1117-1118 said that proceedings for the infringement of a patent, even though not involving any question of validity, could only be brought in the courts of the state whose patent was said to be infringed. That passage was obiter but Mr. Floyd relies on it as sound. Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273 was concerned with acts done before the Convention came into force as part of English law on 1 January 1987 and is therefore not in point. Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75 on the other hand came after that date, and on one view of the law is inconsistent with the argument that the Convention does confer jurisdiction, although this view requires that the Convention be read as determining jurisdiction in a case where the defendant is domiciled in the United Kingdom but the possible competing jurisdiction is not that of a contracting state. This does not seem to have been argued.

In Plastus Kreativ A.B. v. Minnesota Mining and Manufacturing Co. [1995] R.P.C. 438 Aldous J. struck out part of an action, in which relief was sought in respect of German and French patents, on grounds not relating to the Convention, but made pertinent observations, at p. 447, as to why an English court might properly be reluctant to have to decide whether a person had infringed a foreign patent.

In L.A. Gear Inc. v. Gerald Whelan & Sons Ltd. [1991] F.S.R. 670, 674 Mummery J. was clearly of the view, having had submissions on the Convention (though not the same submissions as have been put to me), that the Irish court, assuming Irish law to be the same as English law in this respect, could not hear an action against a defendant, although domiciled in Ireland, for infringement of a United Kingdom trade mark.

In Scotland, in James Burrough Distillers Plc. v. Speymalt Whisky Distributors Ltd. [1991] R.P.C. 130, Lord Coulsfield, in the Outer House of the Court of Session, would have refused to grant an interdict restraining breach of an Italian trademark even if (as was not the case) the same person held both the United Kingdom and Italian trade marks, relying on rule 203. It seems not to have been argued that this rule was overridden by the Brussels Convention.

By contrast, although the cases have not been cited to me, I have been told that the courts in the Netherlands and Germany have accepted jurisdiction and granted remedies in respect of the infringement of patents in other contracting states.

So far as I know this is the first English case in which the point put to me has been argued. The comments of judges that I have cited and referred to show a reluctance to accept jurisdiction in relation to the infringement of foreign intellectual property rights. There may well be sound policy reasons for that reluctance, including a judge's natural hesitation at having to decide, possibly in the absence of national decisions, what some unclear provision of foreign law means. I note that in the Schlosser report, O.J. 1979 C. 59, p. 97, para. 78, it is remarked that under the Convention the contracting states are not only entitled to exercise jurisdiction in accordance with the provisions laid down in Title 2; they are also obliged to do so. It is not, therefore, a case in which this court has a discretion, to which such policy considerations are relevant: either the case is not justiciable, because of the Moçambique rule and rule 203, or it must be accepted because article 2 prevails. The Schlosser report continues:

"A plaintiff must be sure which court has jurisdiction. He should not have to waste his time and money risking that the court concerned may consider itself less competent than another. In particular, in accordance with the general spirit of the 1968 Convention, the fact that foreign law has to be applied, either generally or in a particular case, should not constitute a sufficient reason for a court to decline jurisdiction. Where the courts of several states have jurisdiction, the plaintiff has deliberately been given a right of choice, which should not be weakened by application of the doctrine of forum conveniens."

These views are reflected in a very recent judgment of the European Court in Rutten v. Cross Medical Ltd. (Case C-383/95) [1997] All E.R. (E.C.) 121, 131, para. 13:

"That autonomous interpretation alone is capable of ensuring uniform application of the Convention, the objectives of which

include unification of the rules on jurisdiction of the contracting states, so as to avoid as far as possible the multiplication of the bases of jurisdiction in relation to one and the same legal relationship and to reinforce the legal protection available to persons established in the Community by, at the same time, allowing the plaintiff easily to identify the court before which he may bring an action and the defendant reasonably to foresee the court before which he may be sued."

The passage cited above from the Schlosser report appears in a commentary on the discretionary powers of United Kingdom and Irish courts under forum conveniens and similar rules, which had no equivalent in continental legal systems, and do not feature in the Convention. Within the ambit of the Convention, these rules no longer feature in English law either. Following the repeal of rule 203, an English court will not be able to refuse to adjudicate on an action, if brought here against an English domiciled defendant, based on the infringement of the French law of privacy, or an artist's droit de suite, or some other legal right under the law of another contracting state to which English law has no equivalent. Even though it might seem eccentric to choose an English rather than a French court to sue for breach of privacy in France, there would be no discretion to refuse to hear the action. In circumstances of increasingly international dealings as regards intellectual property rights and articles created using them, including the dramatic potential effects of the Internet and other transnational communication systems, and the possible supply of articles in breach of copyright in a contracting state by a person who does not establish a place of business there, it might be said to be convenient to be able to sue a person who is said to have infringed such rights in two or more contracting states by one action in the court of domicile (unless article 16(4) requires otherwise) instead of proceeding separately in each relevant jurisdiction: this might result in an economic and efficient resolution of a dispute of an international character, and avoid inconsistent results. On the other hand there are undoubtedly anomalies which could result from the court applying its own adjectival rules, especially of procedure and remedy, in relation to a cause of action arising under a different state's law. There would be scope for forum shopping, in relation to which the plaintiff might wish to bear in mind any number of factors such as the rules as regards the quantification of compensation or other remedies, including interim protection, procedural differences such as rules about discovery and witnesses, and rules and practices as regards costs and their recovery, or such matters as contingency fees or legal aid. However, that is something which the courts of the contracting states are already faced with in relation to all other matters governed by the Convention and not reserved to the courts of one contracting state under article 16.

An issue as to the scope and the effect of the Convention which I do not have to decide but must note (since it could make Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75 an authority directly in point) is whether article 2 (and other rules of the Convention) apply only when the competing jurisdictions are or include contracting states, or rather apply

in every case where an action is brought against a person domiciled in a contracting state, even if the "rival" jurisdiction is, for example, one of the states of the United States of America. Inasmuch as the purpose of the Convention is to produce a system in which the judgments of the courts of the contracting states will be recognised by each other, it could be said that there is no need to extend the effect of the Convention to a case, for example, of the infringement of a United States copyright by an English domiciled defendant. On the other hand the use of the direct approach, prescribing the circumstances in which the national courts are to accept jurisdiction, leading to the mandatory terms of article 2 and the absence of any express qualification as regards cases not within the ambit of the European Community, makes it difficult to imply such an exception, even if, as Vinelott J. said in the Tyburn Productions case, there may be grave doubt as to whether the non-contracting state court would recognise the English judgment. It has been suggested that, consistently with the Convention, the court which has jurisdiction under the Convention could decline to exercise jurisdiction on the grounds that the courts of a non-contracting state also have jurisdiction, in three cases: a valid jurisdiction agreement not overridden by a provision of the Convention other than article 16, lis alibi pendens in a non-contracting state if the judgment in those proceedings could be recognised in England, and where the proceedings are principally concerned with one of the matters provided for by article 16 but the subject matter is based in or connected with a non-contracting state: see O'Malley and Layton, European Civil Practice (1989), pp. 30-32. Although in the Tyburn Productions case it was argued that the Act of 1982 gave a statutory right to come to the court, in circumstances where the defendant lived in England, the case was clearly not argued in the way that the matter has been put to me. I therefore find that it offers me no guidance on the issue before me and I have to make up my own mind on the rival contentions.

My conclusion on this point is that the Convention does require an English court to accept jurisdiction where an action is brought against an English domiciled defendant (with or without other defendants) for breach of a Dutch copyright, and to hear that action on the merits, and thus overrides, so far as is necessary for that purpose, both rule 203 and the Moçambique rule, even though neither of them is a rule as to jurisdiction. Each of them, to the extent that they would preclude the English court from hearing such an action, would in my judgment impair the effectiveness of the Convention by frustrating the operation of the basic rule in article 2, and must therefore give way in order to allow the jurisdictional rules of the Convention to have their proper effect. The position is quite different from other exclusionary rules, such as acts of state, because both rule 203 and the Moçambique rule proceed on the clear premise that the English courts are not a suitable forum for such an action whereas the courts of another country are appropriate. It seems to me that, where that other country is another contracting state, this is a position which subverts the policy and provisions of the Convention. To borrow a phrase from another area of Community law, although they are not rules as to jurisdiction, they are "measures having an equivalent effect" to rules of jurisdiction, and are inconsistent with the mandatory

effect of the Convention and its basic rule as to domicile-based jurisdiction in article 2.

One consequential issue which could arise from this is, where rule 203 is overridden, in relation to events to which the Act of 1995 does not apply, what is the choice of law? The answer is presumably the law of the protecting country, copyright arising under which is alleged to have been infringed (lex protectionis), here Dutch law, but that is not a matter which arises on this application. Although the plaintiff's case is challenged on the merits, to which I will turn next, there is no allegation of any particular proposition of Dutch copyright law diverse from English law by reference to which the merits are to be tested, nor any evidence of that law. I must therefore proceed on the basis that, for present purposes, there is no relevant difference between Dutch and English law and I do not have to decide which applies.

On this aspect of the case, therefore, in so far as the action is based on allegations of the breach of Dutch copyright, I decline to strike the action out as non-justiciable.

Is the plaintiff's claim purely speculative and bound to fail?

However, on the other main issue, I have come to the conclusion that the action should be struck out as an abuse of process, on the basis that it has no chance of success, for reasons which follow.

The allegation is that the design and construction of the Kunsthal involved the copying of at least a substantial part of the plaintiff's drawings. The case made is of course one of inference. The plaintiff says that he can show that the second and third defendants had access to his drawings, and thereby satisfies the necessary causative link. That would be in dispute but I assume it in the plaintiff's favour for present purposes. He further says that there is a sufficient resemblance, a sufficient degree of objective similarity between the building as constructed and his drawings to permit the inference of copying and to shift the evidential burden to the defendants.

[His Lordship then considered the evidence, describing the Kunsthal and the plaintiff's design, and detailed the alleged points of similarity between them. His Lordship concluded:] I do not accept that any of this shows a sufficient degree of similarity to permit an inference of copying. Taking the plaintiff's case as pleaded and particularised at its best, and in the light of the annotated drawings which are necessary to its understanding, but also in the light of the second defendant's comments in, and exhibited to, his affidavit, which have not been answered, I am satisfied that the claim is as much based on speculation and surmise as the claims that were struck out in Upjohn Co. v. T. Kerfoot & Co. Ltd. [1988] F.S.R. 1, A-Z Couriers Ltd. v. Comspec Computer Software Ltd. (unreported), 9 November 1988 and AM Computer Technology Ltd. v. 4-Sight Ltd. (unreported), 14 January 1992. Just as in those cases, the claim is one which cannot succeed and ought therefore to be struck out as an abuse of process.

Conclusion

Accordingly I accede to the part of the second to fourth defendants' application set out in paragraph 2 of their notice of motion dated

16 December 1996 and order that the whole of the amended statement of claim be struck out as an abuse of the process of the court. I would in any event have struck out the claims both for monetary and for injunctive relief based on breach of United Kingdom copyright, but that is not necessary. Although no equivalent application has been made by the first defendant it seems to me to follow that the statement of claim be struck out as against the first defendant as well and therefore that the whole action should be dismissed. For that reason, even if the plaintiff might otherwise have been entitled to the relief sought by his summons of 19 December 1996, I will make no order on that summons since there would be no point in doing so.

Solicitors: Ashurst Morris Crisp; Berrymans; Sheratte Caleb & Co.

[Reported by SUSAN DENNY, Barrister]