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*403 Pearce v Ove Arup Partnership Ltd.

and Others
Court of Appeal
21 January 1999

[2000] 3 W.L.R. 332


[2000] Ch. 403
Roch L.J. , Chadwick L.J. and May L.J.
1998 Nov. 23, 24, 25; 1999 Jan. 21
Conflict of LawsCopyrightJurisdiction under European ConventionAction in England for
infringement of Dutch copyrightOne defendant domiciled in United KingdomEnglish court
having jurisdictionWhether claim for infringement of Dutch copyright 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) Berne Convention of the International Union for the Protection of Literary and Artistic
Works 1886 as revised (1990) (Cm. 1212), art. 5(2)
1 2
In 1986 the plaintiff created original drawings and plans for a town hall as an exercise
while he was an architectural student in London. The second defendant, his tutor who was an
architect and director of the third defendant, was alleged to have taken copies of the
drawings in 1986. In 1996 the plaintiff brought an action for breach of his United Kingdom
and Dutch copyright, alleging that the second and third defendants had used his drawings in
designing a building in Rotterdam constructed between 1990 and 1993 by the first defendant,
a firm of civil engineers domiciled in the United Kingdom, and owned by the fourth defendant.
The plaintiff sought injunctions to restrain infringement of both copyrights and damages or an
account of profits. The defendants applied to strike out the statement of claim as an abuse of
process on the grounds that actions for breach of Dutch copyright were not justiciable in the
English courts and that in any event the action was purely speculative. The judge accepted
that the English court had jurisdiction under articles 2 and 6 of the Convention on Jurisdiction
and the Enforcement of Judgments in Civil and Commercial Matters 1968 to entertain a claim
for breach of Dutch copyright against a defendant domiciled in the United Kingdom or in
contracting states but struck out the action as speculative and an abuse of process. The
plaintiff appealed, and the defendants by respondent's notices sought to affirm the judge's
ruling on the ground that the alleged infringements of Dutch copyright were not actionable
torts under English law.
On the appeal:
Held, allowing the appeal, that English conflict of law rules did not require the court to regard
as local, and therefore to refuse to entertain, a claim in respect of the alleged infringement,
by acts done outside the United Kingdom in a state which was a contracting party to the
Convention of 1968, of a statutory intellectual property right granted by that state; that, in
those circumstances, the court was not required by the double actionability rule to hold that
the claim was bound to fail on the basis that acts done in Holland could not amount to an
infringement of a United Kingdom copyright; that the provisions of the Convention of 1968
were not excluded from applying to such a claim by article 5(2) of the Berne Convention of
the International Union for the Protection of Literary and Artistic Works 1886 , *404 which
did not seek to confer jurisdiction relating to infringement of copyright on the courts of one
country to the exclusion of any other but left it to the courts in the country where
proceedings were brought to decide whether the claim for protection should be upheld; that,
therefore, since the English court had to accept jurisdiction against the defendants under
article 6(1) of the Convention of 1968 and could entertain an action for breach of Dutch
copyright, the plaintiff had been entitled to sue in England for such a breach; that, on the
evidence before him, the judge had erred in striking out the claim as speculative and an
abuse of process; and that, accordingly, the action should be allowed to proceed to trial with
the plaintiff's portfolio of drawings used as a forensic aid to issues of similarity (post, pp.
419F, 422G-H, 436C-D, 442C-F, 444F-445B).
Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C. 190, P.C. applied .
Phillips v. Eyre (1870) L.R. 6 Q.B. 1 and British South Africa Co. v. Companhia de
Moambique [1893] A.C. 602, H.L.(E.) considered .

Def Lepp Music v. Stuart-Brown [1986] R.P.C. 273 and Tyburn Productions Ltd. v. Conan
Doyle [1991] Ch. 75 distinguished .
Decision of Lloyd J. [1997] Ch. 293; [1997] 2 W.L.R. 779; [1997] 3 All E.R. 31 reversed .
The following cases are referred to in the judgment of the court:

Bauman v. Fussell [1978] R.P.C. 485, C.A. .

Boston Scientific Ltd. v. Cordis Corporation (unreported), 18 November 1997; Court of


Appeal (Civil Division) Transcript No. 1838 of 1997, C.A. .

Boys v. Chaplin [1968] 2 Q.B. 1; [1968] 2 W.L.R. 328; [1968] 1 All E.R. 283,
C.A. .; [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 Moambique [1892] 2 Q.B. 358,


C.A. .; [1893] A.C. 602 , H.L.(E.) .

Deeks v. Wells [1933] 1 D.L.R. 353, P.C. .

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

Doulson v. Matthews (1792) 4 Durn. &; E. 503

Fort Dodge Animal Health Ltd. v. Akzo Nobel N.V. [1998] F.S.R. 222, C.A. .

Hesperides Hotels Ltd. v. Aegean Turkish Holidays Ltd. [1979] A.C. 508; [1978] 3
W.L.R. 378; [1978] 2 All E.R. 1168, H.L.(E.) .

Khan v. Kensington and Chelsea Royal London Borough Council (unreported), 10


October 1990; Court of Appeal (Civil Division) Transcript No. 850 of 1990, C.A. .

Ladd v. Marshall [1954] 1 W.L.R. 1489; [1954] 3 All E.R. 745, C.A. .

Langdale v. Danby [1982] 1 W.L.R. 1123; [1982] 3 All E.R. 129, H.L.(E.) .

Lawrance v. Lord Norreys (1890) 15 App.Cas. 210, H.L.(E.) .

Mlnlycke 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

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. .

Reg. v. International Stock Exchange of the United Kingdom and the Republic of
Ireland Ltd., Ex parte Else (1982) Ltd. [1993] Q.B. 534; [1993] 2 W.L.R. 70; [1993] 1 All E.R.
420, C.A. . *405
*405

Rudra v. Abbey National Plc. (1998) 76 P. &; C.R. 537, C.A. .

Skinner v. East India Co. (1666) 6 St.Tr. 710

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

Weller v. Dunbar (unreported), 27 January 1984; Court of Appeal (Civil Division)


Transcript No. 18 of 1984, C.A. .

Wenlock v. Moloney [1965] 1 W.L.R. 1238; [1965] 2 All E.R. 871, C.A. .

Williams v. Attridge Solicitors (unreported), 8 July 1997; Court of Appeal (Civil


Division) Transcript No. 1144 of 1997, C.A. .

Woodhouse v. Consolidated Property Corporation Ltd. (1992) 66 P. &; C.R. 234, C.A. .
The following additional cases were cited in argument:

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 .

Buttes Gas and Oil Co. v. Hammer [1982] A.C. 888; [1981] 3 W.L.R. 787; [1981] 3 All
E.R. 616, H.L.(E.) .

Canada Trust Co. v. Stolzenberg (No. 4) , The Times, 14 May 1998; Court of Appeal
(Civil Division) Transcript No. 665 of 1998, C.A. .

Chiron Corporation v. Murex Diagnostics Ltd. (No. 2) [1994] F.S.R. 187, C.A. .
Coin Controls Ltd. v. Suzo International (U.K.) Ltd. [1999] Ch. 33; [1998] 3 W.L.R.
420; [1997] 3 All E.R. 45

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

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

Duke v. Reliance Systems Ltd. [1988] Q.B. 108; [1987] 2 W.L.R. 1225; [1987] 2 All
E.R. 858, C.A. .

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; [1976] E.C.R. 1735, E.C.J. .

Harrods (Buenos Aires) Ltd. (No. 2), In re [1992] Ch. 72; [1991] 3 W.L.R. 397;
[1991] 4 All E.R. 348, C.A. .

James Burrough Distillers Plc. v. Speymalt Whisky Distributors Ltd. [1991] R.P.C. 130
Kalfelis v. Bankhaus Schrder, Mnchmeyer, 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. I1845, E.C.J. .

L.A. Gear Inc. v. Gerald Whelan & Sons Ltd. [1991] F.S.R. 670
Langley v. North West Water Authority [1991] 1 W.L.R. 697; [1991] 3 All E.R. 610,
C.A. .

McDonald's Corporation v. Steel [1995] 3 All E.R. 615, C.A. .

Mecklermedia Corporation v. D.C. Congress G.m.b.H. [1998] Ch. 40; [1997] 3 W.L.R.
479; [1998] 1 All E.R. 148

Morelle Ltd. v. Wakeling [1955] 2 Q.B. 379; [1955] 2 W.L.R. 672; [1955] 1 All E.R.
708, C.A. .

Plastus Kreativ A.B. v. Minnesota Mining and Manufacturing Co. [1995] R.P.C. 438
Rutten v. Cross Medical Ltd. (Case C-383/95) [1997] I.C.R. 715; [1997] E.C.R. I-57;
[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. Press 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. . *406
*406

Star News Shops Ltd. v. Stafford Refrigeration Ltd. [1998] 1 W.L.R. 536; [1998] 4 All
E.R. 408, C.A. .

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

Williams v. Glasbrook Brothers Ltd. [1947] 2 All E.R. 884, C.A. .


Appeal from Lloyd J.
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 Koolhaas, 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, inter alia, injunctions restraining the defendants from infringing
the plaintiff's United Kingdom and Dutch copyright in drawings and plans for a town hall in
Docklands, London in the construction of the Kunsthal in Rotterdam and inquiries as to
damages for infringement or an account of profits.
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; or alternatively that the
action was frivolous, vexatious and an abuse of the process of the court and had been
brought outside the statutory limitation period. By an order dated 7 March 1997 Lloyd J.
struck out the plaintiff's claim as speculative and as an abuse of process.
By a notice of appeal dated 7 September 1997 with leave granted by Aldous L.J. on 15
August 1997 the plaintiff appealed, seeking an order (i) to dismiss the application of the
second, third and fourth defendants to strike out the amended statement of claim and (ii) to
strike out sentences from the defences of the first to fourth defendants which alleged that

infringement of Dutch copyright was not an actionable tort in English law as disclosing no
reasonable defence, on the grounds, inter alia, that the judge had erred (1) in law by
determining on the striking-out application whether there was sufficient similarity between
the plaintiff's plans and the defendants' plans, which should only have been determined at
the trial of the action; (2) in failing to pay regard to the principle that the power to strike out
should only be exercised in plain and obvious cases or where it was beyond doubt that the
action could not succeed; (3) in finding there was insufficient similarity between the plaintiff's
plans and the defendants' plans and the hall as built to give rise to an inference of copying;
(4) in failing to pay sufficient regard to the fact that the plaintiff claimed that the plans had
been physically or mechanically copied; (5) in finding features militating against the inference
of copying when there was an increased likelihood of copying; and (6) in placing undue
weight on the evidence of the second defendant.
By applications dated 23 September 1997 and 29 September 1997 the first, second, third
and fourth defendants sought leave to serve respondent's notices seeking to affirm the
judge's order on the alternative *407 ground that infringement of Dutch copyright was not
justiciable in English law.
At the hearing the plaintiff sought leave to adduce further evidence.
The facts are stated in the judgment of the court.
Julia Clark for the plaintiff. Where there has not been a trial or hearing on the merits, Ladd v.
Marshall [1954] 1 W.L.R. 1489 does not apply: see Star News Shops Ltd. v. Stafford
Refrigeration Ltd. [1998] 1 W.L.R. 536 . An application to strike out is not a hearing on the
merits: see Williams v. Attridge Solicitors (unreported), 8 July 1997; Court of Appeal (Civil
Division) Transcript No. 1144 of 1997 .
A decision of a two-judge Court of Appeal Williams v. Attridge is binding on the full court
since Boys v. Chaplin [1968] 2 Q.B. 1 does not reflect current practice: see Langley v. North
West Water Authority [1991] 1 W.L.R. 697 . The decision in Williams v. Attridge was not per
incuriam. [Reference was made to Duke v. Reliance Systems Ltd. [1988] Q.B.
108 ; Woodhouse v. Consolidated Property Corporation Ltd. (1992) 66 P. & C.R.
234 and Langdale v. Danby [1982] 1 W.L.R. 1123 ; Williams v. Glasbrook Brothers Ltd.
[1947] 2 All E.R. 884 ; Morelle Ltd. v. Wakeling [1955] 2 Q.B. 379 ; Khan v. Kensington and
Chelsea Royal London Borough Council (unreported), 10 October 1990 ; Court of Appeal (Civil
Division) Transcript No. 850 of 1990; Weller v. Dunbar (unreported), 27 January 1984 ; Court
of Appeal (Civil Division) Transcript No. 18 of 1994 and Rudra v. Abbey National Plc. (1998)
76 P. & C.R. 537 .]
Justice requires the admission of relevant and credible evidence not adduced at trial through
a legal adviser's mistake. There was, in any event, a limited opportunity for putting the
plaintiff's evidence before the judge: compare Canada Trust Co. v. Stolzenberg (No. 4), The
Times, 14 May 1998 ; Court of Appeal (Civil Division) Transcript No. 665 of 1998.
The test to apply to a decision to strike out is whether the judge was plainly wrong:
see Chiron Corporation v. Murex Diagnostics Ltd. (No. 2) [1994] F.S.R. 187 . A plaintiff should
not be deprived of the right to trial unless the pleading is "incurably bad:" McDonald's
Corporation v. Steel [1995] 3 All E.R. 615 . The action should not be struck out even if the
allegation in the pleadings is improbable and difficult to believe: see Lawrance v. Lord Norreys
(1890) 15 App.Cas. 210 . There should not be a minute and protracted examination of the
documents and facts of the case: see Wenlock v. Moloney [1965] 1 W.L.R. 1238 .
In the cases relied on by the defendants before the judge there was no factual dispute
between the parties which the judge had to resolve: 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 A.M. Computer Technology Ltd. v. 4-Sight Ltd. (unreported), 14 January
1992 . Here, the only issue with which the judge was concerned was sufficient similarity, a
question of mixed fact and law which is inherently unsuitable for determination in an
interlocutory application.
The defendants' cross appeal is unlikely to succeed: see Fort Dodge Animal Health Ltd. v.
Akzo Nobel N.V. [1998] F.S.R. 222 . [Reference was also made to Coin Controls Ltd. v. Suzo
International (U.K.) Ltd. [1999] Ch. 33 ; Boston Scientific Ltd. v. Cordis Corporation
(unreported), 18 November 1997 ; Court of Appeal (Civil Division) Transcript No. 1838 of
1997; *408 Mlnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R. 1112 and Duijnstee v.
Goderbauer (Case 288/82) [1983] E.C.R. 3663 .]
The judge was correct in holding that the rule in British South Africa Companhia de
Moambique [1892] 2 Q.B. 358 and the double actionability rule did not preclude the court

from hearing an action which, under the Convention of 1968, may or must be brought in the
English court: see Handelskwekerij G. J. Bier B.V. v. Mines de Potasse d' Alsace S.A. (Case
21/76) [1978] Q.B. 708 ; Kalfelis v. Bankhaus Schrder, Mnchmeyer, Hengst and Co. (Case
189/87) [1988] E.C.R. 5565 ; Sanicentral G.m.b.H. v. Collin (Case 25/79) [1979] E.C.R. 3423
; Kongress Agentur Hagen G.m.b.H. v. Zeehaghe B.V. (Case C-365/88) [1990] E.C.R. 11845 ; Shevill v. Press Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18 and Rutten v. Cross
Medical Ltd. (Case C-383/95) [1997] I.C.R. 715 .
The Moambique rule was applied by analogy to patents in Potter v. Broken Hill Pty. Co. Ltd.
(1906) 3 C.L.R. 479 and Norbert Steinhardt and Son Ltd. v. Meth (1961) 105 C.L.R. 440 , but
the reasoning in those cases cannot be sustained in the context of the U.K.'s accession to the
Convention of 1968. [Reference was made to Def Lepp Music v. Stuart-Brown [1986] R.P.C.
273 ; Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75 and In re Harrods (Buenos Aires)
Ltd. (No. 2) [1992] Ch. 72 .]
There are two further reasons why the plaintiff's claim can be brought in the English court.
(1) If the doctrine that the locality of the act is inseparable from the wrong is relinquished,
the plaintiff's claim satisfies the double actionability rule. (2) The case falls within the
exception in rule 203(2) (see Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C.
190 ) and the law having the most significant relationship with the occurrence and the parties
is Dutch law, since the only connection with England is the domicile of the plaintiff and two of
the defendants.
If the defendants' appeal succeeds the appropriate course is a reference to the European
Court of Justice under article 3 of the 1971 Protocol to the Convention .
Christopher Floyd Q.C. , Richard Hacon and Heather Lawrence for the defendants. On the
application to adduce evidence, the court should apply the law inLangdale v. Danby and not
Williams v. Attridge , since the full Court of Appeal is not bound by a previous interlocutory
decision of a two-judge court: see Boys v. Chaplin . [Reference was also made to Weller v.
Dunbar ; Woodhouse v. Consolidated Property Corporation ; Khan v. Kensington and Chelsea
Royal Borough Council and Rudra v. Abbey National Plc. (1998) 76 P. & C.R. 537 .] The court
should not admit the further evidence because the plaintiff chose to defend the application to
strike out on limited evidence and did not object to the affidavit in reply or seek an
adjournment: see Canada Trust Co. v. Stolzenberg (No. 4), The Times, 14 May 1998 .
The plaintiff's allegation against the defendants was fanciful and preposterous and was
correctly struck out under the court's inherent jurisdiction: seeDavey v. Bentinck [1893] 1
Q.B. 185 .
The Convention is concerned solely with jurisdiction and not with what English law regards as
actionable. The fact that jurisdiction is obligatory has no bearing on the question whether
English law must recognise an infringement of Dutch copyright as an actionable wrong.
The *409 conflict of law rules do not directly affect the application of the Convention. The
plaintiff must therefore say that the Convention's effectiveness is indirectly influenced by the
rules. But that assertion confuses the plaintiff's right to bring an action anywhere provided for
by the Convention and the permitted variation in laws of contracting states making it more
attractive for a plaintiff to bring an action in the courts of one state rather than another:
see Shevill v. Press Alliance S.A. (Case C-68/93) [1995] 2 A.C. 18 . There are matters other
than infringement of foreign intellectual property rights which English law treats as non
justiciable: see Buttes Gas and Oil Co. v. Hammer [1982] A.C. 888 . The fact that the law in
England is such that an action under article 2 of the Convention would be worthless is of no
account. The Convention does not influence the justiciability rules: see the Mlnlycke case
[1992] 1 W.L.R. 1112 ;L. A. Gear Inc. v. Gerald Whelan & Sons Ltd. [1991] F.S.R. 670 ;
the Tyburn case [1991] Ch. 75 ; James Burrough Distillers Plc. v. Speymalt Whisky
Distributors Ltd. [1991] R.P.C. 130 ; Plastus Kreativ A.B. v. Minnesota Mining and
Manufacturing Co. [1995] R.P.C. 438 and Mecklermedia Corporation v. D. C. Congress
G.m.b.H. [1998] Ch. 40 . The judge was therefore wrong to treat the justiciability rules as
abrogated by the Convention. [Reference was made to the Coin Controls Ltd. case [1999] Ch.
33 ; the Fort Dodge case [1998] F.S.R. 222 and the Boston Scientific case, 18 November
1997 .]
As the present case is a copyright case it comes within article 5(2) of the Berne Convention
and the Brussels Convention of 1968 does not apply.
Clark replied.
Cur. adv. vult.
21 January 1999. ROCH L.J.

handed down the following judgment of the court. The plaintiff, Mr. Pearce, is an architect. In
1986 he completed his diploma in architecture at the Architectural Association School of
Architecture in London. Between December 1985 and June 1986 he undertook an
architectural project for his diploma in which he produced drawings, detailed plans and
paintings of a design for a town hall for the Docklands Development in London. He claims, so
far as is relevant to these proceedings, that he is the owner of United Kingdom and Dutch
copyright in his Docklands plans.
Between 1990 and 1993 the City of Rotterdam, the fourth defendants, had constructed in
Rotterdam a public building known as the Kunsthal. The first defendants, Ove Arup
Partnership Ltd., were appointed as civil engineer for the construction of the Kunsthal. The
third defendants and their director Mr. Koolhaas, the second defendant, were the architects
who designed the building. In the Autumn of 1992 Mr. Pearce visited Rotterdam as a tourist.
He saw the Kunsthal in the course of construction and believed that features of its design had
been copied from his Docklands plans. In these proceedings he claims that each of the
defendants has infringed his United Kingdom or Dutch copyrights. It is accepted on his behalf
that a damages claim for infringement of his United Kingdom copyright would be statutebarred, although the possibility of claiming an injunction is forensically retained. The main
claim is for infringement of his Dutch copyright.
*410
The first defendants are domiciled in the United Kingdom. Mr. Koolhaas may be domiciled in
the United Kingdom. The third and fourth defendants are domiciled in the Netherlands. Mr.
Pearce claims that the English courts have jurisdiction in relation to his claims against those
defendants not domiciled in the United Kingdom under article 6(1) of the Brussels Convention
on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968 .
This provides that a person domiciled in a contracting state may be sued, where he is one of
a number of defendants, in the courts for the place where any one of them is domiciled.
The plaintiff's writ and statement of claim were issued on 25 September 1996. The statement
of claim was amended on 30 October 1996. The second, third and fourth defendants served a
defence dated 13 November 1996 and the first defendants filed a defence dated 29
November 1996. Each of them denied infringement of the plaintiff's copyright. There were
requests for particulars of the amended statement of claim and the plaintiff eventually, on 31
January 1997, served amended particulars of similarity, giving particulars of the similarities
which he alleged between his copyright works and the defendants' plans. Meanwhile on 16
December 1996 the second, third and fourth defendants had issued a notice of motion
seeking to strike out those parts of the amended statement of claim which concerned alleged
infringements of Dutch copyright on the ground that these were not acts which constitute
torts actionable under English law. The notice of motion also invited the court to strike out
the whole of the amended statement of claim under its inherent jurisdiction on the ground
that the plaintiff's allegations were speculative. The notice of motion also applied to strike out
those paragraphs of the amended statement of claim which alleged breach of United Kingdom
copyright on the ground that these allegations were statute-barred. By summons dated 19
December 1996 the plaintiff applied to strike out allegations in each of the defences which
asserted that infringement of Dutch copyright is not actionable as a tort under English law.
These matters came before Lloyd J. [1997] Ch. 293 on 12 February 1997. In his judgment
given on 7 March 1997 the judge declined to strike out the allegations of infringement of
Dutch copyright on the ground that they were not justiciable under English law. But he
upheld the defendants' submission that on the facts alleged the plaintiff's claim was bound to
fail. He held that the degree of similarity between the plaintiff's Docklands design and the
Kunsthal drawings was not sufficient to give rise to an inference of copying. He considered
that the claim was based on speculation. He accordingly ordered the whole claim against each
of the defendants to be struck out.
The plaintiff appeals, with leave granted on paper by Aldous L.J., against the judge's decision
that on the facts which he alleged his claim was bound to fail and should be struck out. The
second, third and fourth defendants by respondent's notices contend that the judge's order
should be affirmed on the additional ground that the alleged infringements of Dutch copyright
against them are not actionable torts under English law. This judgment deals with each of
these contentions. *411

Abuse of process

The plaintiff's pleaded case relies on two limbs. He alleges, first, that the second and third
defendants had an opportunity to take copies of his Docklands plans and he asks the court to
infer that they did so. Secondly, he alleges that there are remarkable similarities between his
plans and the Kunsthal drawings. From a combination of these facts, he says that it should be
inferred that the second and third defendants used graphic copies of his plans as a basis for
their design. In striking out the plaintiff's claim on the basis that it was speculative, the judge
in essence decided that the claim was bound to fail because no court would ever be
persuaded to draw the necessary inferences.
The plaintiff pleads that one of his tutors at the Architectural Association School of
Architecture was Alexander Wall, who also worked for the third defendants in 1986. The
plaintiff says that, for approximately six weeks in the autumn of 1986, he was employed in
London by the third defendants at the invitation of Mr. Wall to complete the construction of a
model. After he had been so employed for about a week, he was asked by Mr. Wall to take his
Docklands plans to work so that Mr. Wall might show them to another employee of the third
defendants. The plaintiff took his Docklands plans to the third defendants' London office. Mr.
Wall asked him to leave them there over the weekend, and the plaintiff agreed to do so. He
retrieved his plans from the third defendants' offices on the following Monday morning,
noticing that the detailed plans had been physically detached from the paintings and
drawings. He cannot prove directly that they had been copied, but he alleges that the second
defendant or an employee of the third defendant not only had the opportunity to, but did in
fact, copy his plans over that weekend.
The second, third and fourth defendants plead that the third defendant is a Dutch company
incorporated in 1988 to continue the work of a Dutch partnership called the Office for
Metropolitan Architecture ("O.M.A.") based in Rotterdam. The second defendant was a
partner in O.M.A., which had been founded in 1979, and is also a director of the third
defendants. The second defendant was not a partner in a different firm, also called the Office
of Metropolitan Architecture, founded in 1975 in London. The two firms were separate and
carried on separate work. The London firm and O.M.A. were not the same legal person. Mr.
Wall worked on a freelance basis for the London firm and the defendants understand that for
a short period in 1986 the plaintiff did temporary freelance work for the London firm. The
defendants plead that they do not know or admit whether the plaintiff took his Docklands
plans to the premises of the London firm and they have no knowledge of what he alleges may
have happened to them. They deny that the second defendant or an employee of the third
defendant copied the plaintiff's plans. It is pleaded that the second defendant had never seen
the plaintiff's Dockland plans before the beginning of this litigation and had never heard of
them before the plaintiff began to make allegations which are said to be untrue. So far as is
within his knowledge, these pleaded matters are verified in an affidavit of Mr. Koolhaas which
was before the judge. In his judgment, the judge noted that there would be a dispute about
the plaintiff's allegations *412 that the second and third defendants had access to his
drawings, but he assumed in the plaintiff's favour for the purposes of the matters before him
that the plaintiff's allegations about access to the drawings was true. This was of course the
correct approach, since striking-out applications normally proceed on the basis that pleaded
allegations are capable of being established. The assumption must extend to one that the
second or third defendants had a practical opportunity to have access to the plaintiff's plans
whatever the precise relationship may have been between the English and the Dutch O.M.A.
Since this part of the defendants' application was made under the courts' inherent
jurisdiction, they were entitled (as they would not have been if the application had been only
under R.S.C., Ord. 18, r. 19(1)(a) ) to tender affidavit evidence. The application was
supported by Ian Starr's first affidavit, which maintained that the plaintiff's allegations were
based on pure speculation. At the time of his affidavit, the plaintiff had been asked to
particularise the factual basis of his allegation of infringement. There had been
correspondence between solicitors but no proper particulars had been supplied. Subsequently,
the plaintiff did provide particulars and amended particulars of similarity which the
defendants said needed further explanation. There was a meeting on 30 January 1997 at
which the plaintiff gave explanations of his allegations of similarity to representatives of the
defendants' solicitors. Copies of the plaintiff's Docklands plans and of the deposited Kunsthal
plans were annotated by reference to the amended particulars of similarity to explain what
was alleged.
The only evidence before the judge on behalf of the plaintiff was an affidavit of his then
solicitor. This verified parts of the plaintiff's pleaded narrative, but said nothing informative

about the details of the plans. The defendants, however, having received the explanations
given at the meeting on 30 January 1997, served a long affidavit of Mr. Koolhaas. This was
served on the plaintiff's solicitors about five days before the hearing before the judge. It
exhibited relevant parts of the plaintiff's drawings, JKM 5, JKM 6 and JKM 8 whose scale was
1:250 and a sketch JKM 9, and copies of the third defendants' Kunsthal drawings, V-02A, V03A, V-04A and V-08A, whose scale was 1:200. The versions exhibited included those which
had been annotated at the meeting on 30 January 1997. Mr. Koolhaas denied any allegation
that he copied any of the plaintiff's drawings in any way. He said that any degree of similarity
between the drawings was due to the school of architecture to which the designs belong. He
said that when the defendants first saw the plaintiff's drawings in October 1996 they came to
the conclusion that there were no similarities between the plaintiff's designs and the Kunsthal
designs. Most of the plaintiff's particulars referred to single dimensions of different elements
of design which were taken out of context and randomly compared with elements of the
design of the Kunsthal. The plaintiff had explained at the meeting on 30 January 1997 that
the allegations related, not to full scale measurements, but to exact copying of dimensions
from his 1:250 scale drawings into the defendants 1:200 scale drawings, thus treating the
drawings purely as graphics and disregarding the difference in scale. Mr. Koolhaas said that to
an architect a single dimension was meaningless *413 and that an architect would not just
copy a different dimension used in a different element in a different position in another
design and at a different scale. It was his understanding that the plaintiff had taken mostly
single measurements on his plans and found, by a process of trial and error, comparable
measurements often in unrelated parts of the Kunsthal and from unrelated features. Mr.
Koolhaas produced and exhibited a relatively detailed initial response to the plaintiff's
particulars. He denied that the design of the Kunsthal had square, rectangular or triangular
elements which were the same as or comparable with equivalent elements in the plaintiff's
Docklands drawings such as the plaintiff alleged. He gave detailed examples of two specific
areas where the plaintiff alleged that dimensions were exactly the same but where, on Mr.
Koolhaas's analysis and explanation, there was no sensible comparison.
At the hearing before the judge, the plaintiff did not tender any evidence in answer to Mr.
Koolhaas's affidavit, nor was there any application for an adjournment to enable him to do so.
Submissions before the judge proceeded by reference to the amended particulars of similarity
and by comparing the two sets of drawings exhibited to Mr. Koolhaas's affidavit.
In his judgment, the judge gave detailed consideration to the allegations of similarity, and
their rebuttal. He described the two buildings shown on the respective drawings in these
terms:
"The Kunsthal is a more or less square building, at the southern end of a park called
Museumpark. It abuts, on the south, onto a dyke, the Westseedijk. More or less parallel with
the dyke there is a service road which runs through the building. The public access to the
building is from the north, from the Museumpark (hence Parklevel). The public gains access
at a point about one third along the northern side from the west, and ascends a ramp of
constant width as far as the middle of the building, where the ticket office and access to the
principal areas within the building are to be found. The ramp continues as far as the southern
end of the building, across the service road. At the lower level, -1, which is slightly lower than
the level of the road, but in spaces at least partly open to a higher level, there are a large,
more or less square exhibition space, on the eastern side of the building, and a
caf/restaurant on the western side, rectangular in shape. Intruding into the space about the
caf/restaurant, at a level above that of the ticket office, is a balcony which forms the
beginning of an angled ramp, higher than the central access ramp, and parallel to it in crosssection, but at a different angle from it in plan, which comes out at the roof level and
constitutes at least in part a roof garden. At the highest level (for which I have only the
cross-sections, not any plans) the building seems to be continuous across the service road
and thus joins the part of the building to the south of the service road. At a lower level the
continuation of the access ramp provides a sort of bridge over the service road. On the west
side of the building, about the caf/restaurant and its kitchen and bar, there is a further ramp
rising to the north, and also of constant width, from the level of the service road at the south
to about level + 1 at the northern end of *414 the building (best seen in cross-section A-A
on plan V-08Aexhibit RLK12but also seen in part on plan V-04Aexhibit RLK11). The
second defendant explains in his affidavit that this is the auditorium. The plaintiff's Docklands
town hall would have been a broadly rectangular construction, next to the river and
separated from it by a promenade, but with a jetty for access by boat. At ground level it

consists largely of supporting structures below the main structure at a higher level, which
itself is surmounted by a large tower over part of it. The drawings I have for this are plans at
ground level and main deck level, two cross-sections and an overall impression from the
north. At the main deck level there is, to the east, a rectangular area which includes two
magistrates' courts and associated areas. To the west of this is, to the north, the access to
the building, starting at ground level, by way of an uncovered ramp widening as it rises to the
main deck level to a point about half way into the building on the north-south axis. To the
south of this is a conference chamber/cinema, also rising to the south and widening, and
protruding somewhat beyond the rest of the south wall of the building. To judge from the
cross-section, the roof of this area also rises noticeably beyond the general level of the roof
at this level, and thus overall it presents a quite striking feature of the design. Immediately to
the west of these rising and widening elements is an area, partly of offices and partly of
public access. This area also has a rather striking feature, on the north side, in that the wall
(mostly consisting of glass) is curved twice (horizontally) in a gentle sort of S shape. Neither
this feature nor that mentioned above as regards the protrusion of the conference
chamber/cinema is to be seen in the Kunsthal. The western part of the plaintiff's building at
main deck level comprises various offices and an open courtyard, arranged in different
shapes, sizes and dispositions, some of them being open plan. There appear to be two
balconies off this area, one to the north and the other to the south."
Paragraph 1 of the plaintiff's amended particulars of similarity was a general allegation:
"The plaintiff's copyright works depict a building (a) comprising a pedestal and slab; and (b)
located on the intersection of two axes, one being a ramp running into the building and the
other a promenade running parallel to the river. The Kunsthal is also a building (a) comprising
a pedestal and a slab; and (b) located on the intersection of two axes, one being a ramp
running into the building and the other a service road."
Mr. Koolhaas in his affidavit took issue with this, saying that the service road, which runs
through the Kunsthal at a low level, is not so significant a feature as the relationship between
the two opposed ramps, one running not just into but through the building, and the other
rising in the opposite direction, being the auditorium. Of this the judge said that he could not
himself see a similarity such as the plaintiff here alleged. He concluded that he could not
accept that the overall concept of the two designs showed any sufficient similarity as to raise
an inference of copying.
*415
Paragraphs 2 and 4 to 7 of the particulars of similarity allege that each building comprised
three basic elements: a rectangular volume, a triangular volume and a square volume. It is
said that the areas of each of these in plan is identical. (The pleading alone does not, so it
now seems, accurately state the plaintiff's case. The essential case is not that the volumes or
the areas are identical but that the graphic lines on the paper drawings are the same lengths
and configurations, although at different scales.) The contention is that it is to be inferred
that elements from the plaintiff's drawings were transferred mechanically or graphically to the
defendants' drawings and that, although their precise interrelationship was altered, the same
spacial elements were used and an essential conceptual interrelationship retained. The judge
acknowledged that there was a rectangular element and a square element in each design, but
pointed to differences in their relationship and to other features separating them on each of
the plans. Of the triangular elements the judge said:
"In the plaintiff's drawing these two elements are separated by a further rectangular element
but this includes what on the plan is a prominent triangular element, consisting of two parts:
the ramp from the narrow entrance, effectively the apex of the triangle, rising and widening
as already described to the point at which one enters the building, and then, across a
passage area, the further area described as 'conference chamber/cinema' which I have also
described above. On the third defendant's plan the plaintiff has sought to describe a
triangular element defined by points which are marked as P6 on exhibit RLK11. This is not a
real element at all. Its north-western point is a genuine point: it is the starting point of the
diagonal ramp which ascends through the upper floor of the building to the roof and provides
a roof garden. The north-eastern point is merely a point level with this on the wall to the
east, the left hand wall of the entrance ramp as one walks up it into the building and the apex
point at the south is a notional point across the roadway which runs through the lower levels
of the building. I do not accept that there is a triangular element in the third defendant's
design comparable to, and capable of being regarded as resembling and copied from, the

ramp and the cinema in the plaintiff's drawing. There are diagonal elements, but the attempt
to make out a comparable triangular element in the Kunsthal is artificial."
The judge considered in some detail two further allegations of similarity, concluding that they
were wholly unconvincing and that it was impossible to see that any permissible inference
could be drawn of copying from such coincidences. He then explained that counsel for the
plaintiff had not pressed others of the 52 points relied on in the particulars of similarity. The
judge said that some of them were preposterous and constituted absurd comparisons. They
did not show a sufficient degree of similarity to give rise to an inference of copying. He
concluded, at p. 309:
"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 *416 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."
The judge stressed on more than one occasion in his judgment that there was no evidence
before him answering Mr. Koolhaas's detailed evidence.
In this court, the plaintiff applied for leave to adduce additional evidence, which included: (a)
his own second affidavit which, among other things, explained the details of his allegations of
similarities in the plans; (b) a portfolio of 18 pairs of drawings, each pair consisting of a part
of his own Docklands drawings overlaid with a transparency of what he alleged to be a
comparable part of the Kunsthal drawings; and (c) an expert's report of Frederick Hill, among
whose qualifications is that of Fellow of the Royal Institute of British Architects, expressing
opinions about the drawings which are the subject of this dispute.
The grounds upon which the application to adduce the additional evidence is made, as
explained by Miss Clark on behalf of the plaintiff, include that the evidence relates directly to
the issue of similarity; that Mr. Koolhaas's affidavit was served only shortly before the hearing
before the judge and that the judge placed great reliance on it; and that the failure to seek to
put evidence of this kind before the judge or to apply for an adjournment was not caused by
any personal fault of the plaintiff, but rather by the fault of, or error of judgment by, his then
solicitors or counsel. In his affidavit in support of the application, the plaintiff says that he
had prepared 10 pages of handwritten notes in response to Mr. Koolhaas's evidence which he
gave to his solicitor. He believed that he himself would be asked to give oral evidence but also
that his solicitor would prepare any affidavit evidence that was needed. There was however
no response to Mr. Koolhaas's evidence on his behalf. When his present solicitors received the
papers from his former solicitors, only one of the 10 pages of notes was among them. We
were also told that the plaintiff had brought his portfolio of drawings, which had been used at
the meeting on 30 January 1997, to the hearing before the judge but that he was not asked
to produce them and they were not referred to. Counsel on behalf of the defendantsMr.
Floyd on behalf of the second, third and fourth defendants and Miss Lawrence on behalf of
the first defendantssubmitted that the evidence should not be admitted.
Ord. 59, r. 10(2) gives the Court of Appeal power to receive further evidence on questions of
fact
"but, in the case of an appeal from a judgment after trial or hearing of any cause or matter
on the merits, no such further evidence (other than evidence as to matters which have
occurred after the date of a trial or hearing) shall be admitted except on special grounds."
*417 For there to be "special grounds," the conditions referred to in Ladd v. Marshall [1954]
1 W.L.R. 1489 must be satisfied. The first of those conditions is that it must be shown that
the evidence could not have been obtained with reasonable diligence for use at the trial. Mr.
Floyd submits, by reference to the decision of the House of Lords in Langdale v. Danby
[1982] 1 W.L.R. 1123 , that the hearing before Lloyd J., which resulted in the plaintiff's claim
being struck out on the basis that on the facts it was bound to fail, was a hearing on the
merits and that accordingly the Ladd v. Marshall conditions are to be applied. Mr. Floyd
submits that the plaintiff came nowhere near satisfying the first Ladd v. Marshall condition. All
the additional evidence could have been obtained with reasonable diligence. This was plainly
so of the plaintiff's own evidence and his portfolio of drawings. Mr. Hill had been consulted in

1995, and was concerned at the time when the plaintiff's claim was formulated in September
1996. He either was or could have been available when the matter was heard by the judge.
Mr. Floyd submitted that evidence and correspondence since the hearing before the judge,
which included inquiries of the plaintiff's former solicitors (but surprisingly did not include
inquiry of his former counsel), indicated either incompetence on the part of one or more of
the lawyers or, more probably, a conscious decision by counsel in consultation with his
solicitor not to seek leave to adduce additional evidence.
Miss Clark on behalf of the plaintiff relies on the recent decision of this court in Williams v.
Attridge (unreported), 8 July 1997; Court of Appeal (Civil Division) Transcript No. 1144 of
1997 . In that case the master had struck out the plaintiff's claim. The plaintiff's appeal came
before Sir Peter Webster, sitting as a judge of the High Court. After an adjournment to enable
the plaintiff to obtain further evidence, Sir Peter Webster dismissed the plaintiff's appeal.
Upon appeal to this court, the plaintiff applied for leave to adduce additional evidence. It was
common ground between the parties that, if the fresh evidence were not admitted, Sir Peter
Webster's order must stand. Brooke L.J., giving the judgment of the court, referred
to Langdale v. Danby [1982] 1 W.L.R. 1123 , in which the House of Lords had held that
summary judgment given under Order 14 (or Order 86) was a judgment after a hearing of a
cause on the merits. On the other hand, in Weller v. Dunbar (unreported), 27 January 1984;
Court of Appeal (Civil Division) Transcript No. 18 of 1994 Stephenson and Dunn L.JJ. had
accepted that, upon the hearing of an appeal by a plaintiff against an order setting aside a
default judgment, the court was able to go wider than the tests in Ladd v. Marshall [1954] 1
W.L.R. 1489 in deciding whether to admit new evidence. Stephenson L.J. had said in Weller v.
Dunbar , 27 January 1984 that counsel had properly conceded that in that case there had
been no judgment on the merits. He concluded that the court must look at the whole position
and consider whether, in the interests of justice, it was right or wrong to allow the evidence
to be given. Brooke L.J. said of this that on the face of it there was no detectable difference in
the context of Williams v. Attridge, 8 July 1997 between an interlocutory decision to set aside
a default judgment and an interlocutory decision to strike out an action under Ord. 18, r.
19 or under the inherent jurisdiction of the court. In neither case had there been a judgment
on the merits. He then referred to the decision of Nourse L.J., *418 sitting as a single Lord
Justice, in Khan v. Kensington and Chelsea Royal London Borough Council (unreported), 10
October 1990; Court of Appeal (Civil Division) Transcript No. 850 of 1990 , when he refused a
plaintiff leave to appeal against a decision striking out part of his statement of claim. Nourse
L.J. refused to consider additional evidence on the basis that it would not satisfy the
principles of Ladd v. Marshall [1954] 1 W.L.R. 1489 . There was however nothing to suggest
that Nourse L.J. was referred to the precise wording of Ord. 59, r. 10(2) or to the judgment of
the court in Weller v. Dunbar, 27 January 1984 . Brooke L.J. in Williams v. Attridge, 8 July
1997 concluded:
"We are quite satisfied that Sir Peter Webster's order, though the judge considered the
possible merits of the plaintiff's claim, was not 'a judgment after trial or hearing of any cause
or matter on the merits' ..."
Counsel for the plaintiff had told the court that the necessary evidence was not placed before
Sir Peter Webster because of a misunderstanding on his part for which the plaintiff was not
responsible. A detailed explanation of this was given, which the court accepted, saying:
"and in the circumstances we consider that justice demands that we should admit the fresh
evidence, which corrects the effect of the mistake ... and allow this appeal. It would be the
reverse of justice if we permitted this striking-out order to stand in circumstances where a
mistake had clearly been made through no fault of the plaintiff and where he has a properly
arguable claim, disclosing a viable cause of action, which he wishes to bring."
Miss Clark submits that the grounds upon which the plaintiff in the present appeal applies to
be able to adduce fresh evidence are stronger than those in Williams v. Attridge, 8 July
1997 , from which in principle this appeal is indistinguishable. Mr. Floyd submits that Williams
v. Attridge was wrongly decided in that this court ought to have held itself bound by the
House of Lords decision of Langdale v. Danby [1982] 1 W.L.R. 1123 . If a hearing when the
court gives summary judgment under Order 14 is a hearing on the merits, so too is a hearing
when the court strikes out a plaintiff's claim upon the basis that factually it is bound to fail.
We heard interesting submissions on the status before this court consisting of three Lords
Justices of a decision of this court by two Lords Justices, and on whether, if it is considered
that another division of this court had reached a decision which was inconsistent with a

decision of the House of Lords, that was remediable in this court or only in the House of
Lords.
In our judgment, it is not necessary to reach a conclusion on these submissions in this case
and we do not do so. We only observe that, whichever submission on the question before us
may be correct, it seems unsatisfactory if the criteria for admitting fresh evidence in the
Court of Appeal in matters such as this differ upon the same subject matter depending on the
outcome in the court below. For summary judgment applications, this appears to be so:
see Woodhouse v. Consolidated Property Corporation Ltd. (1992) 66 P. & C.R. 234 , 239,
where Glidewell L.J. agreed with a passage in The Supreme Court Practice 1991, vol. 1 , pp.
94-95, para. 59/10/8 *419 suggesting that an order refusing summary judgment or granting
conditional leave to defend is not an order made after a hearing on the merits and that
therefore the Ladd v. Marshall [1954] 1 W.L.R. 1489 conditions do not apply. In Rudra v.
Abbey National Plc. (1998) 76 P. & C.R. 537 this court held that the Ladd v.
Marshall conditions applied where a claim had been struck out after a ruling on a preliminary
issue under R.S.C., Ord. 14A , this being closer to an application for summary judgment than
to a strike out application. It appears that Robert Walker L.J. saw some logical difficulty in
distinguishing between the situation in Langdale v. Danby [1982] 1 W.L.R. 1123 and that in
Williams v. Attridge, 8 July 1997 . It is, we think, quixotic if a party against whom a summary
order has been made, bringing to an end his ability to deploy his case in court, has less
opportunity to rely on further evidence in the Court of Appeal than the other party would
have had if the summary order had not been made. In the first case, the appellant has lost
his case; in the second case, he has not lost his case and retains the opportunity to rely on
additional evidence at a later stage.
We do not need to decide these matters in this appeal because, in our judgment, subject to
one gloss, the plaintiff should not be permitted to adduce the additional evidence even upon
the more liberal test propounded by Miss Clark. We are satisfied that the evidence was
available, or could readily have been available, for the hearing before Lloyd J. If time was a
problem, the plaintiff could have applied for an adjournment. We are also satisfied that the
plaintiff's lawyers probably took a conscious decision not to seek to adduce additional
evidence and not to apply for an adjournment. They probably reckoned that this part of the
notice of motion could be resisted successfully without it. The general merits of the
application to adduce fresh evidence are therefore poor since, generally speaking, parties
have to live with tactical decisions which they, or their lawyers on their behalf, make. Our
main reason, however, is that in our view the additional evidence is unnecessary. Our
conclusion later in this judgment is that Lloyd J. was wrong to hold that the plaintiff's pleaded
claim was so speculative that it was bound to fail. We reach this conclusion on the material
which was before the judge. We accordingly dismiss the plaintiff's application to adduce
further evidence.
The gloss is that we consider that the plaintiff's portfolio of drawings is receivable, not as
additional evidence, but as explanation of counsel's submission on behalf of the plaintiff for
which leave is not needed. The portfolio illustrates 18 of the particulars of similarity. It is a
useful visual aid to the court's understanding of the plaintiff's case and it was indeed so used,
we are told, at the meeting on 30 January 1997. Mr. Floyd has three related objections to its
use for this purpose. The first objection is that the drawings used to make the transparencies
of parts of the Kunsthal drawings are not, as the plaintiff originally said they were, the V
series drawings referred to in his particulars of similarity, but design plans of the defendants
as they appeared in a French architectural magazine entitled "AMC Revue d'Architecture" in
September 1989. The plaintiff admits that this is correct and that he made a mistake in his
earlier affidavit. The second objection is that the transparencies have been prepared to show
that the relevant comparisons are of identical dimensions, when some of *420 the
dimensions may be shown to be slightly different as between the two sets of drawings (and
therefore significantly different on the ground). The third objection is that in making the
transparencies the plaintiff has made some changes of detail to the defendants' plans to help
his case. These are, in our view, legitimate objections (so far as they go) to the substance of
the plaintiff's case, but not to the forensic use to which the portfolio may be put in this court.
The portfolio is a clear and helpful forensic aid to the understanding of the plaintiff's case
which has, we are sure, put this court at an advantage over Lloyd J., who had to struggle with
the greater difficulty of comparing the annotated plans.

It is not usually possible to allege copying other than as a deduction by inference from all the
surrounding circumstances. In Copinger and Skone James on Copyright, 13th ed. (1991) , p.
168, para. 8-13 it is said:
"The proper test, in all cases, probably involves four propositions: (1) in order to constitute
reproduction within the meaning of the Act there must be (a) a sufficient degree of objective
similarity between the two works, and (b) some causal connection ... (3) Where there is a
substantial degree of objective similarity, this, of itself, will afford prima facia evidence to
show that there is a causal connection between the plaintiff's and the defendant's work; at
least it is a circumstance from which the inference may be drawn. (4) The fact that the
defendant denies that he consciously copied affords some evidence to rebut the inference of
causal connection arising from the objective similarity, but is in no way conclusive. Thus if
there is a sufficient similarity in the plaintiff's work and the defendant's, and the defendant
has had an opportunity to copy the plaintiff's work directly or indirectly, this will establish a
prima facia case of copying which the defendant has to answer."
Each case will, of course, depend on its own circumstances. There will be cases, such as
those referred to by Lloyd J. where a claim based upon access alone will be held to be
speculative and bound to fail because the necessary inference could not be drawn from the
facts pleaded. In the present case, the facts alleged by the plaintiff from which he invites the
court to infer that copies of his plans were made by the third defendants or an associated
organisation in London are on the face of it reasonably persuasivewe say no more than this
even if Mr. Koolhaas's evidence is taken into account. The judge assumed these facts in the
plaintiff's favour but may, we think, have given them too little weight.
Miss Clark submitted that the judge should not have embarked upon a detailed inquiry into
the alleged similarities between the two sets of plans at all. In our view, this submission goes
too far. The defendants' essential contention was that a proper evaluation at the outset of the
plaintiff's pleaded allegations with the aid of Mr. Koolhaas's evidence would show that the
similarities were fanciful and that the claim was bound to fail. The judge had to consider
these contentions. We consider, however, that, in doing so, he was persuaded to go further
than was warranted on an application to strike out in the circumstances of this case. The
jurisdiction to strike out an action as an abuse ought to be very sparingly exercised (see e.g.
Lawrance v. Lord Norreys (1890) 15 App.Cas. 210 , 219), and *421 should not be extended
to become a trial of contentious matters on affidavit (see Wenlock v. Moloney [1965] 1 W.L.R.
1238 ). In the present case, for practical purposes, the judge tried a quite complicated
technical case on incomplete affidavit evidence. Mr. Koolhaas's evidence was in its nature
expert evidence, but was necessarily partisan. There was no independent expert evidence
and none in support of the plaintiff's case. There did not need to be, if the pleadings and the
material before the court raised a sufficient case for the defendants to have to answer. In
such circumstances, the judge would not in our view have been correct to conclude, if he did,
from Mr. Koolhaas's partisan evidence that expert evidence in support of the plaintiff's claim
could never be available.
The critical question remains whether the judge was right to conclude that the inferences
necessary for the plaintiff's case to succeed could never be drawn. In our judgment, he was
not. We have, as we say, had the advantage of the plaintiff's portfolio which we are sure
explains his case forensically far more clearly than did the material before the judge.
The essential case is that there are so many examples where dimensions and their shapes
coincide on drawings of a different scale that the inference should be drawn that the
defendants used a graphic copy of the plaintiff's plans as a starting point for their own plans.
The allegation is not, as we understand it, limited to dimensions in plan only but to the
conceptual juxtaposition of shapes and spaces. It is a positive part of the plaintiff's case for
graphic copying that the two sets of drawings are at different scales. The portfolio seeks to
show that both the Docklands Town Hall and the Kunsthal have the same superstructure in
plan. Portfolio plans A seek to show that the square from the plaintiff's plans has been
reproduced exactly for the square exhibition space in the Kunsthal. Portfolio plans B seek to
demonstrate the same for the rectangle. Portfolio plans D seek to show that the overall
square of the Kunsthal plan has been taken from the ground floor plan to the Docklands Town
Hall both in length and width. Portfolio plans E to R seek to demonstrate that other
dimensions or shapes in the Kunsthal design derive dimensionally from equivalent features in
the plaintiff's Docklands plans.

Portfolio plans C seek to show that a triangular element in the Kunsthal plans is congruent
with a triangle in the plaintiff's Docklands plan. This was one of the elements which the judge
considered in detail and found quite unpersuasive. The plaintiff's version of this triangle is
shown on his drawing JKM 6 to be a narrow right-angled triangle. The long side running
vertically up the plan is on the line of a structural wall which, for about half its length, is the
side wall of a widening and rising ramp. The acute-angled apex of the triangle is at one side
of the entrance to the ramp. Beyond the top of the ramp the wider part of the base of the
triangle represents a conference chamber or cinema with rising tiers of seats. The short base
of the triangle is a projection of the conference chamber behind the tiers of seats beyond the
main line of the building at this level. The hypotenuse of the triangle is the line of the side of
the conference chamber projected down the ramp. In the Kunsthal drawing V-04A, the
triangle on which the plaintiff relies has been flipped over and moved substantially down the
building, so that the acute-angled apex of *422 the triangle is a notional point outside the
relevant line of the structure. The hypotenuse of the triangle is on the line of a ramp coming
up from below to a balcony and the short base of the triangle is on a line where this ramp
arrives at the balcony. The ramp itself is not triangular but has parallel sides. The long
vertical side of the triangle is a different part of the structure altogether. The fact however
remains that each of these designs has a triangular spacial concept which, according to the
plaintiff, when appropriate projections are made, constitute in plan graphically congruent
triangles. Additionally, a main element of each of these triangles in plan is a plane rising
through the building.
A judge at trial may conclude that these and other similarities alleged by the plaintiff were
coincidental. But we have all reached the clear conclusion, with the aid of the plaintiff's
portfolio, that the plaintiff's allegations of similarity are not so fanciful that his claim as a
whole should be regarded as speculative. The allegations are amenable, in our view, to
opinion evidence. But we think that expert evidence may be admissible in this case, for
instance, to explain the plans; to point out similarities and dissimilarities; to explain how
architects proceed conceptually and how they produce their plans and drawings; and to
explain generally what factors bear upon the shapes and dimensions of buildings such as
these: see Deeks v. Wells [1933] 1 D.L.R. 353 and Bauman v. Fussell [1978] R.P.C. 485 ,
489. The plaintiff has, we think, pleaded a case of similarity which, with his evidence about
access to his drawings, might be sufficient for an inference of graphic copying. Needless to
say, we say nothing about the eventual strength of the parties' respective cases. Our present
decision is, and only is, that the defendants do not establish that the plaintiff's claim is in this
respect bound to fail.
In reaching this conclusion, we take fully into account all the matters urged upon us by Mr.
Floyd on behalf of the defendants, many of which have considerable force. The elements
relied on are not in precisely the same place in each of the sets of drawings. You have to
move the transparencies around to demonstrate the dimensions and shapes which are said to
coincide. The elements do not have the same functional use. Some of the comparisons are in
quite different parts of the building. We are prepared to accept that some of the pleaded
comparisons, taken alone, may merit the adjective "preposterous" given to them by the
judge. The dimensions may not, upon detailed examination, be precisely the same. Some of
the dimensions may require points to be taken which are not points which have any meaning
on the drawings. The alleged similarity of the triangular elements is plainly amenable to
criticism and so forth. Yet, for all this, we consider that there are sufficient basic coincidences
of shapes, and a sufficient accumulation of other dimensional coincidence, such that this is a
case which ought not to be struck out without full consideration of oral evidence, including
expert opinion.
We consider, therefore, the judge's decision that the plaintiff's claim was bound to fail on the
facts was wrong and should be reversed. *423 Actionability
We turn, therefore, to the defendants' contention, raised by notices served under R.S.C., Ord.
59, r. 6 , that, nevertheless, the judge's order should be affirmed on the ground that the
infringements of Dutch copyright alleged against the defendants are not actionable torts
under English law.
In addressing this contention it is necessary to keep in mind that the acts alleged to be
infringements of the plaintiff's Dutch copyright were done in Holland. There is no suggestion
that, if the acts had been done anywhere other than in Holland, they would have constituted
an infringement of the plaintiff's Dutch copyright, or, to put the point another way, that the
rights conferred by the plaintiff's Dutch copyright extend to acts done outside Holland.

Further, those acts, because they took place in Holland, could not constitute infringements of
the plaintiff's United Kingdom copyright. Those acts are not actionable under English
domestic law.
The relevant inquiry, therefore, is whether (assuming that the English court would otherwise
have jurisdiction to hear proceedings against the relevant defendants) English law permits
the English court, in the present context, to entertain a claim based on the infringement, by
acts done in Holland, of a local right conferred in Holland by Dutch law. That is an inquiry
which must be answered by reference to English private international law rules, in particular,
by reference to those rules whichin the light of the provisions of the Civil Jurisdiction and
Judgments Act 1982 and the Conventions which, bysection 2(1) of that Act, have the force of
law in the United Kingdomgovern the resolution of disputes in civil and commercial matters
between persons domiciled in the states ("contracting states") which are parties to those
Conventions.
If the English court is permitted by English private international law rules to entertain a claim
based on the infringement, by acts done in Holland, of a local right conferred in Holland by
Dutch law, then it must follow as a necessary corollary that the same rules permit, or require,
the English court to apply Dutch law in order to determine whether the claim is well founded.
There is no other law which the English court could sensibly apply for that purpose. To put the
point another way, if there is some English conflict of laws rule which prevents the English
court from applying Dutch law to determine whether the claim is well founded, then that
must be a powerful, if not conclusive, indication that the English court should not entertain
the claim at all.
Subject to an argument based on the provisions of article 5(2) of the Berne Convention of the
International Union for the Protection of Literary and Artistic Works 1886 , as revised at Paris
on 24 July 1971 (1990) (Cm. 1212) ("the Berne Convention"), the defendants accept, as they
must, that the English court has jurisdiction to hear an action against a defendant who is
domiciled in England in respect of the infringement in Holland of a Dutch copyright. That
must follow from the provisions in articles 2 and 16(4) of the Convention on Jurisdiction and
the Enforcement of Judgments in Civil and Commercial Matters 1968 ("the Brussels
Convention"). The relevant provisions are: *424
" Article 2. Subject to the provisions of this Convention, persons domiciled in a contracting
state shall, whatever their nationality, be sued in the courts of that state ..."
" Article 16. The following courts shall have exclusive jurisdiction, regardless of domicile ... 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 ..."
It is not suggested that the present proceedings (being proceedings in respect of copyright in
which no question of deposit or registration arises) fall within article 16(4) . It follows that the
English court must accept jurisdiction in the proceedings against the first defendant (who is
domiciled here) and, perhaps, also against the second defendant (who may be domiciled
here): see paragraph 78 of the Schlosser Report on the accession in 1978 of the United
Kingdom to the Brussels Convention (O.J. 1979 C. 59, p. 71). Further, article 6(1) provides:
"A person domiciled in a contracting state may ... be sued1. Where he is one of a number
of defendants, in the courts for the place where any one of them is domiciled." It is accepted
that the third and fourth defendantsand also the second defendant, if not domiciled here
are domiciled in Holland. It follows that the English court must accept jurisdiction against
those defendants also.
Nevertheless, it is submitted that jurisdiction is one thing; justiciability or actionability is
another. It is not enough for the plaintiff to establish that he can bring proceedings against
the defendants in the English court. Where the wrong of which he complains has been
committed outside England, he must also establish that the English court, applying its own
conflict of laws rules, will regard his complaint as giving rise to a cause of action that it will
recognise and entertain.
The judge accepted that, but for the Brussels Convention, an action in the English courts
which was founded on an alleged breach of Dutch copyright must be struck out as nonjusticiable on one or both of two grounds. First, because the rule in British South Africa Co. v.
Companhia de Moambique [1893] A.C. 602 required that a claim for breach of a foreign
statutory intellectual property right must be regarded as local and so could not be entertained

by an English court; and, secondly, because such a claim could not satisfy the doubleactionability rule derived from Phillips v. Eyre (1870) L.R. 6 Q.B. 1 . But he was satisfied that
to apply those rules in a case where the English court was given jurisdiction by articles 2 and
6 of the Brussels Convention would be inconsistent with, and would impair the effectiveness
of, the Convention; with the consequence that the English conflict of laws rules must be
regarded as overridden by the Convention in such a case and so inapplicable.

Non-justiciability under the Moambique rule


On its face the rule in the Moambique case [1893] A.C. 602 does not provide self-evident
support for the proposition that a claim for breach of *425 a foreign statutory intellectual
property right cannot be entertained by an English court. It is convenient to take the
statement of the rule, as it stood before the Civil Jurisdiction and Judgments Act 1982 , from
the judgments of the House of Lords in Hesperides Hotels Ltd. v. Aegean Turkish Holidays Ltd.
[1979] A.C. 508 . Both Lord Wilberforce (with whom Lord Salmon and Lord Keith of Kinkel
expressed agreement) and Lord Fraser of Tullybelton were content to adopt the formulation
which appeared as rule 79 in Dicey & Morris, The Conflict of Laws, 9th ed. (1973) , p. 516 :
"Subject to the exceptions hereinafter mentioned, the court has no jurisdiction to entertain an
action for (1) the determination of the title to, or the right to possession of, any immovable
situate out of England (foreign land); or (2) the recovery of damages for trespass to such
immovable."
The exceptions are not material in the present context. The second limb of the rule was
abrogated by section 30 of the Act of 1982:
"(1) The jurisdiction of any court in England and Wales or Northern Ireland to entertain
proceedings for trespass to, or any other tort affecting, immovable property shall extend to
cases in which the property in question is situated outside that part of the United Kingdom
unless the proceedings are principally concerned with a question of the title to, or the right to
possession of, that property. (2) Subsection (1) has effect subject to the 1968 Convention
and the Lugano Convention and to the provisions set out in Schedule 4."
Article 16(1) of the Brussels Convention gives exclusive jurisdiction, in proceedings which
have as their object rights in rem in, or tenancies of, immovable property, to the courts of the
contracting state in which the property is situated. The position as it now is, following the Act
of 1982, is that (subject to the Convention) the English court has jurisdiction to entertain
proceedings for trespass to land, wherever situate, unless the proceedings are principally
concerned with a question of title or the right to possession: see rule 116 in Dicey & Morris,
The Conflict of Laws, 12th ed. (1993) .
Nevertheless, in order to evaluate the arguments put to us on behalf of the defendants, it is
necessary to examine in some detail the grounds upon which the House of Lords held, in
the Moambique case [1893] A.C. 602 , that an English court had no jurisdiction to entertain
an action for trespass to foreign land. The claims, as originally advanced in that case, were (i)
for a declaration that the plaintiff company and others (respondents to the appeal) were
lawfully in possession of certain lands, mines and mining rights in South Africa, (ii) for an
injunction restraining the British South Africa Co. from continuing to trespass in respect of
those lands, mines and mining rights and (iii) for damages for trespass. There was no dispute
that, as the law stood before the procedural reforms introduced by the Supreme Court of
Judicature Act 1873 (36 & 37 Vict. c. 66) , those claims could not have been advanced in an
English court. The *426 issue was whether that bar was substantive or procedural. As Lord
Herschell L.C. explained [1893] A.C. 602 , 617:
"It is not in controversy that prior to the Judicature Acts no such jurisdiction could have been
exercised; but it is asserted on behalf of the respondents that the only barrier to its exercise
was the technical one, that the venue in such a case must be local, and that the rules made
under the Judicature Acts which have abolished local venues have removed the sole
impediment which prevented the courts entertaining and adjudicating on cases of this
description."
The majority of the Court of Appeal (Lord Esher M.R. dissenting) [1892] 2 Q.B. 358 held that,
the requirement that a "local" action must be tried at a local venue having been abolished by
rules made under the Judicature Acts, the Supreme Court of Judicature had jurisdiction to
entertain the action. But Lord Esher M.R., at pp. 395-396, in a dissenting judgment which
was expressly approved by Lord Halsbury in the House of Lords and which was much relied

upon by the High Court of Australia in Potter v. Broken Hill Pty. Co. Ltd. (1906) 3 C.L.R. 479 ,
defined the question in these terms:
"With regard, then, to acts done within the territory of a nation, all are agreed that such
nation has without more jurisdiction to determine the resulting rights growing out of those
acts; but, with regard to acts done outside its territory it has no jurisdiction to determine the
resulting rights growing out of those acts, unless such jurisdiction has been allowed to it by
the comity of nations. This reduces the question under discussion to be, whether, in regard to
an act of trespass done to land situated outside its territory, there is evidence to justify the
inference that by the comity of nations the jurisdiction to determine the rights resulting from
such an act has been allowed by other nations to this country, and has been accepted by this
country. And the form of the inquiry shows, that the solution of that question does not
depend upon the laws of procedure in litigation adopted by this country, but upon the comity
of nations as between this country and other countries."
After an extensive review of the principles set out in Story's Conflict of Laws, Lord Esher M.R.,
at p. 398, reached the conclusion that an action for trespassin the old form, an action quare
clausum fregitcould not be entertained by an English court in respect of an alleged wrongful
entry on land situated abroad:
"and that the ground of the inability is, not that by the procedure regulating English litigation
there can be no local venue given for the purpose of trial, but that no consent of other
nations by way of comity to the exercise of such jurisdiction can be inferred, and that all
countries, including England, have consented or agreed that such an action is a real or mixed
action, as distinguished from a personal actionthat it is an action which regards the rights
resulting from the ownership, by possession or otherwise, of the immovable property, the
land, and, therefore, that any claim in respect of any alleged injury of *427 any kind to those
rights to land cannot be tried in any nation but that in which is the situs of the landi.e., in
which the land is situated."
On the appeal to the House of Lords the claims for a declaration and injunction were
abandoned. Lord Herschell L.C. [1893] A.C. 602 , 617 identified the principal question as
"whether the Supreme Court of Judicature has jurisdiction to try an action to recover
damages for trespass to lands situate in a foreign country." The House of Lords rejected the
contention that the refusal of the English courts, prior to the Judicature Acts, to exercise
jurisdiction in actions for trespass to lands situate abroad was based on the procedural
requirementabolished by Ord. XXXVI, r. 1 of the new rulesthat an action which was local
in nature must be tried at a local venue. Lord Herschell L.C. said, at p. 629:
"My Lords, I have come to the conclusion that the grounds upon which the courts have
hitherto refused to exercise jurisdiction in actions of trespass to lands situate abroad were
substantial and not technical, and that the rules of procedure under the Judicature Acts have
not conferred a jurisdiction which did not exist before."
The other members of the House agreed. The conclusion is clear enough: there were
substantive grounds for refusing to entertain an action for trespass to foreign land. What is,
perhaps, less clear is what the House of Lords thought those grounds were.
The Moambique case was reconsidered, some 85 years later, by the House of Lords
in Hesperides Hotels Ltd. v. Aegean Turkish Holidays Ltd. [1979] A.C. 508 . Lord Fraser, at p.
543, expressed the view (not expressly endorsed by the other four members of the House)
that:
"The decision [in the Moambique case] was based, as the speech of Lord Herschell L.C.
clearly shows, on a historical distinction drawn in English law between local and transitory
actions. Lord Herschell held that actions for trespass to land were local and that for that
reason the English courts had no jurisdiction to try them if the land was outside England."
In Tyburn Productions Ltd. v. Conan Doyle [1991] Ch. 75 , the only English case cited to us
which provides direct support for the proposition that a claim for breach, outside England, of
a foreign intellectual property right cannot be entertained by an English court, Vinelott J., at
pp. 80-81, identified the central issue before him as:
"whether the distinction between transitory and local actions, which was considered by the
House of Lords in British South Africa Co. v. Companhia de Moambique [1893] A.C. 602 ,
was fundamental to that decision ... or whether that distinction was, as it were, an historical
prologue setting out the basis of the narrower rule that the English courts will not entertain
proceedings raising questions as to the title to, or for damages for trespass to, land."

It is necessary, therefore, to understand what the distinction between local and transitory
actions was. Lord Herschell L.C., when tracing the historical antecedents of that distinction in
the Moambique case [1893] A.C. 602 , *428 617-618, had pointed out that originally it was
necessary to state the true place, or venue, of every fact in issuebecause each fact in issue
would have to be determined by a jury drawn from the place where the fact was said to have
arisen. Lord Herschell L.C. went on, at p. 618:
"When juries ceased to be drawn from the particular town, parish, or hamlet where the fact
took place, that is, from amongst those who were supposed to be cognisant of the
circumstances, and came to be drawn from the body of the county generally, and to be bound
to determine the issues judicially after hearing witnesses, the law began to discriminate
between cases in which the truth of the venue was material and those in which it was not so.
This gave rise to the distinction between transitory and local actions, that is, between those
in which the facts relied on as the foundation of the plaintiff's case have no necessary
connection with a particular locality and those in which there is such a connection. In the
latter class of actions the plaintiff was bound to lay the venue truly; in the former he might
lay it in any county he pleased."
Lord Herschell L.C. pointed out the difficulty that arose where a fact occurred outside the
realm, and described the fiction that was developed to overcome that difficulty where a fact
which had occurred outside the realm arose in a transitory action. But he went on to say, at
p. 619:
"My Lords, I cannot but lay great stress upon the fact that whilst lawyers made an exception
from the ordinary rule in the case of a local matter occurring outside the realm for which
there was no proper place of trial in this country, and invented a fiction which enabled the
courts to exercise jurisdiction, they did not make an exception where the cause of action was
a local matter arising abroad, and did not extend the fiction to such cases. The rule that in
local actions the venue must be local did not, where the cause of action arose in this country,
touch the jurisdiction of the courts, but only determined the particular manner in which the
jurisdiction should be exercised; but where the matter complained of was local and arose
outside the realm, the refusal to adjudicate upon it was in fact a refusal to exercise
jurisdiction, and I cannot think that the courts would have failed to find a remedy if they had
regarded the matter as one within their jurisdiction, and which it was proper for them to
adjudicate upon."
Lord Herschell L.C. then traced the development of the law from Skinner v. East India Co.
(1666) 6 St.Tr. 710 to Doulson v. Matthews (1792) 4 Durn. & E. 503 . He referred [1893]
A.C. 602 , 621, to a passage in the judgment of Buller J. in the latter case, at p. 504a
passage which was later to be cited by three members of the House of Lords in
the Hesperides Hotels case [1979] A.C. 508 , 534:
"It is now too late for us to inquire whether it were wise or politic to make a distinction
between transitory and local actions: it is sufficient for the courts that the law has settled the
distinction, and that an action quare clausum fregit is local. We may try actions
here *429 which are in their nature transitory, though arising out of a transaction abroad,
but not such as are in their nature local."
Lord Herschell L.C. observed [1893] A.C. 602 , 621:
"In saying that we may not try actions here arising out of transactions abroad which are in
their nature local, I do not think that the learned judge was referring to the mere technical
difficulty of there being no venue in this country in which these transactions could be laid, but
to the fact that our courts did not exercise jurisdiction in matters arising abroad 'which were
in their nature local.' The case of Doulson v. Matthews, 4 Durn. & E. 503 has ever since been
regarded as law, and I do not think it has been considered as founded merely on the
technical difficulty that in this country a local venue was requisite in a local action."
Lord Halsbury took the same view. He said, at p. 633:
"in Doulson v. Matthews , Lord Kenyon and Buller J., in judgments which were supposed to
have settled the law, held that as a matter of settled practice actions of trespass to land were
local. In the opinions of the judges delivered to your Lordships' House by Willes J. it is stated,
without any qualification, that an action of trespass to land abroad did not lie."
It is plain that both Lord Herschell L.C. and Lord Halsbury were satisfied that there was ample
authority in past decisions for the rule that the English court did not entertain an actionor,
as Lord Herschell L.C. put it, did not exercise jurisdictionin a case where the cause of action

depended on some matter, arising outside England, which was local in nature. But they did
not leave the matter there. They each went on to consider the basis for that rule. Lord
Herschell L.C. said, at pp. 622-623:
"The distinction between matters which are transitory or personal and those which are local in
their nature, and the refusal to exercise jurisdiction as regards the latter where they occur
outside territorial limits, is not confined to the jurisprudence of this country. Story, in his work
on the Conflict of Laws (section 551), after stating that by the Roman law a suit might in
many cases be brought, either where property was situate or where the party sued had his
domicile, proceeds to say that 'even in countries acknowledging the Roman law it has become
a very general principle that suits in rem should be brought where the property is situate;
and this principle is applied with almost universal approbation in regard to immovable
property. The same rule is applied to mixed actions, and to all suits which touch the realty.'"
He then referred, at p. 623, to passages at sections 553 and 554 in Story's Conflict of Laws,
8th ed. (1883) :
"In section 553, Story quotes the following language of [Vattel's Law of Nations (1797)]: 'The
defendant's judge' (that is, the competent judge) says he, 'is the judge of the place where
the defendant has his settled abode, or the judge of the place where the defendant is
when *430 any sudden difficulty arises, provided it does not relate to an estate in land, or to
a right annexed to such an estate. In such a case, as property of this kind is to be held
according to the laws of the country where it is situated, and as the right of granting it is
vested in the ruler of the country, controversies relating to such property can only be decided
in the state in which it depends.' He adds, in the next section: 'It will be perceived that in
many respects the doctrine here laid down coincides with that of the common law. It has
already been stated that by the common law personal actions, being transitory, may be
brought in any place where the party defendant can be found; that real actions must be
brought in the forum rei sitae; and that mixed actions are properly referable to the same
jurisdiction. Among the latter are actions for trespasses and injuries to real property which
are deemed local; so that they will not lie elsewhere than in the place rei sitae.'"
He observed:
"The doctrine laid down by foreign jurists, which is said by Story to coincide in many respects
with that of our common law, obviously had relation to the question of jurisdiction, and not to
any technical rules determining in what part of a country a cause was to be tried."
It is, we think, plain that Lord Herschell L.C. was concerned with the question of comity. He
was concerned that the rules as to jurisdiction under English law should conform to generally
accepted principles of private international law. He said, at p. 624:
"The question what jurisdiction can be exercised by the courts of any country according to its
municipal law cannot, I think, be conclusively determined by reference to principles of
international law. No nation can execute its judgments, whether against persons or movables
or real property, in the country of another. On the other hand, if the courts of a country were
to claim, as against a person resident there, jurisdiction to adjudicate upon the title to land in
a foreign country, and to enforce its adjudication in personam, it is by no means certain that
any rule of international law would be violated. But in considering what jurisdiction our courts
possess, and have claimed to exercise in relation to matters arising out of the country, the
principles which have found general acceptance amongst civilised nations as defining the
limits of jurisdiction are of great weight."
Lord Halsbury, at pp. 631-632, followed Lord Herschell L.C. in placing reliance upon Story and
Vattel:
"There is a concurrence of opinion of most jurists, if not all, as to the difference between
what we call realty and personalty, by whatever words those things are distinguished in the
jurisprudence of foreign countries, which affects materially the right to try. Vattel
distinguishes the questions which may properly be tried where defendant has his settled
place of abode, but always subject to this, that if the matter relates to an estate in land or to
a right annexed to such an estate, 'in such a case, inasmuch as property of the kind is to be
held according *431 to the laws of the country where it is situated, and as the right of
granting it is vested in the ruler of the country, controversies relating to such property can
only be decided in the state in which it depends.' I am quoting Story's version of Vattel's
language. That very learned lawyer proceeds to point out that the distinction between local
and transitory actions is one which is known to the common law ... I think that what Story J.

intended to refer to was the actual system of our common law at the time he wrote; and
undoubtedly the current of authority at that time was all in one direction. Although the
original state of our law may not be very important in respect of the controversy now before
your Lordships, there is one view of it that seems to me to throw a considerable light upon
the question now in controversy."
Lord Halsbury then described the development of the fiction which enabled the plaintiff to
assert without contradiction that, where the actual place was not material, some fact had
taken place in England; but went on, at p. 632:
"But wherever the place was material, as the unvarying current of authorities establishes that
it was in all controversies relating to land, the defendant might traverse the place, and, even
if he did not, if it appeared in proof that the place was out of England, the plaintiff was
nonsuited."
As we have already mentioned, Lord Halsbury expressly adopted the reasons given by Lord
Esher M.R. in the Court of Appealto which we have referred. Lord Morris agreed with Lord
Herschell L.C.; and the fourth member of the House, Lord Macnaghten, agreed with both
judgments.
It is, we think, clear from an analysis of the judgments in the Moambique case [1893] A.C.
602 that the House of Lords treated the question whether the English courts should entertain
an action for trespass to foreign land as one of justiciability. The English courts should not
claim jurisdiction to adjudicate upon matters which, under generally accepted principles of
private international law, were within the peculiar province and competence of another state.
We think it significant that both Lord Herschell L.C. and Lord Halsbury placed emphasis on the
same passage in Vattel's Law of Nations , written one hundred years earlier:
"as property of this kind is to be held according to the laws of the country where it is
situated, and as the right of granting it is vested in the ruler of the country, controversies
relating to such property can only be decided in the state in which it depends."
We think that the approach of the House of Lords was, in substance, the same as that of Lord
Esher M.R. in the Court of Appeal [1892] 2 Q.B. 358 , 395. He had identified the question, in
a passage to which we have already referred, as:
"whether, in regard to an act of trespass done to land situated outside its territory, there is
evidence to justify the inference that by the comity of nations the jurisdiction to determine
the rights resulting *432 from such an act has been allowed by other nations to this country,
and has been accepted by this country"
and had answered that question in the negative, at p. 398: "no consent of other nations by
way of comity to the exercise of such jurisdiction can be inferred."
The second limb of the rule in the Moambique case was much criticised: see the
observations of Lord Wilberforce and Lord Fraser in Hesperides Hotels Ltd. v. Aegean Turkish
Holidays Ltd. [1979] A.C. 508 , 536c-d, 543e-544d. Although recognising the force of that
criticism, the House of Lords declined to reconsider the rule. They thought that change, if
desirable, should be left to Parliament. Lord Fraser referred, at p. 545c, to "a new European
convention dealing with jurisdiction of national courts" which was in preparation, "so that
legislation is likely to be required before long."
That legislation was enacted in the Civil Jurisdiction and Judgments Act 1982. We have
pointed out that Parliament took the opportunity, by section 30 of that Act, to abrogate the
second limb of the rulewherever the land was situate. But, in relation to land situate in a
contracting state, the Act goes further. Where the land is situate in a contracting state (other
than the United Kingdom) the English court may not adjudicate on a claim which has as its
object rights in rem in, or a tenancy of, that land: see article 16(1) of the Brussels
Convention and section 2(1) of the Act. That may be seen as a refinement of the principle
stated by Vattel in 1797 and recognised by the House of Lords in the Moambique case
[1893] A.C. 602 one hundred years later. Matters which are within the peculiar province and
competence of the state in which the land is situate should be adjudicated upon only by the
courts of that state. But matters relating to land which do not fall within article 16(1) may be
adjudicated upon by the courts of other contracting states, in accordance with the provisions
as to jurisdiction contained in the Convention itself. The answer, now, to the question posed
by Lord Esher M.R.,

"whether, in regard to an act of trespass done to land situated outside its territory, there is
evidence to justify the inference that by the comity of nations the jurisdiction to determine
the rights resulting from such an act has been allowed by other nations to this country,"
is clear. Where the land is situate within a contracting state, that state, by signing or acceding
to the Convention, has given consent, as a matter of comity, to an action for trespass being
determined by the English court, provided, of course, that the English court has jurisdiction
under article 2 or other provisions of the Convention.
We are satisfied that, at least in relation to land situate within a contracting state, there is no
longer any basis for the rule in the Moambique case. The questions which the House of Lords
addressed in that case are now, as a matter of English private international law, determined
by section 2(1) of the Act of 1982giving effect to the accession of the United Kingdom to
the Brussels Convention. *433 The extension of the Moambique rule to intellectual property
disputes: the Australian cases
We have sought to point out that the rule in the Moambique case was founded, in part at
least, upon the principle, identified in the passage in Vattel's Law of Nations to which Lord
Herschell L.C. and Lord Halsbury each referred, that, where property is to be held according
to the laws of the foreign state in which it is situated, or where the right of granting it is
vested in the sovereign power of the foreign state, controversies relating to such property
can only be decided in that foreign state. That principle was applied, by the High Court of
Australia in Potter v. Broken Hill Pty. Co. Ltd., 3 C.L.R. 479 , to an action for the infringement
of a patent.
The action was brought in the state of Victoria for an injunction and damages in respect of
the alleged infringement in New South Wales of the plaintiff's New South Wales patent. The
defence alleged that the patent was invalid. The High Court of Australia held that the
plaintiff's cause of action was not justiciable in Victoria. Griffith C.J. identified the issue as
being whether the validity of a patent granted in one state could be examined in the courts of
another state. He held that it could not be. He said, at p. 500:
"... I am of opinion that the substantial question sought to be raised by the defendant is the
validity of the act of the governing power of New South Wales in granting the patent sued on,
and that such a question can only be dealt with by the proper courts of the state."
His reasoning may be summarised as follows. (1) The right conferred by the grant of a patent
was a monopoly right to prevent others from making, using or selling the thing patented
without the consent of the patentee. It had no effective operation beyond the territory of the
state under whose laws it was granted. The title to it must devolve according to the laws of
that state. In those respects the patent right was analogous to an immovable: see pp. 493494. (2) The right was created by the exercise of the sovereign power of the grantor state.
The general rule was that the acts of a state done within its own territory are not examinable
in the courts of another state: see p. 495. (3) The grant of a monopoly right fell within that
general rule. (4) Although the challenge to the validity of the patent was said to be founded
on the fact that the invention was not noveland did not involve any challenge to the right of
the state of New South Wales to grant patents in accordance with its own lawnevertheless
"the fundamental question is whether the tribunal has jurisdiction to inquire into the fact."
That question had to be answered in the negative. He said, at pp. 498-499:
"if the court cannot inquire into the fact, no person can be allowed to raise the question in
any form of proceedings. It is settled law that an English court cannot entertain a suit in
which the question of title to foreign land is directly in controversy: British South Africa Co. v.
Companhia de Moambique [1893] A.C. 602 . The courts will no doubt entertain such a
question of title if it arises merely incidentally in a case in which the foundation of the
jurisdiction is a personal *434 obligation arising from contract or quasi-contractual
relationship between the parties. But this is the only exception ... In my opinion the same
rule must be applied to foreign patents that is applied to foreign lands. The reasons upon
which the rule in the one case are founded are, I think, equally applicable to the other."
In reaching the conclusion that the grant of a monopoly right, such as a patent, fell within the
general rule that the acts of a state done within its own territory are not examinable in the
courts of another state, Griffiths C.J. relied on the passage in Vattel's Law of Nations which
had been referred to in theMoambique case [1893] A.C. 602 . He said, 3 C.L.R. 479 , 496497:
"But I apprehend that any exercise by a de facto repository of any power of sovereignty,
which results in the creation of a right of property that can only be created by such an

exercise, must be regarded as an act of the state itself. This appears to be the foundation of
the doctrine referred to in the passage cited by Story J. from Vattel in British South Africa Co.
v. Companhia de Moambique ... the right of creating a title to such property as land, being
vested in the ruler, that is in the sovereign power, of the country, controversies relating to
such property can only be decided in the state in which the property is situated. The reason
appears equally applicable to patent rights, which, as already pointed out, are created by a
similar exercise of the sovereign power."
Barton J. agreed that the relevant question was whether the validity of a patent granted by
the government of one country can be tested in the courts of another. He held that the
answer was to be found by inquiring into the limits which the courts impose on their own
jurisdiction in recognition of international comity: see p. 500. He pointed out that the
government of one state (A) would not presume to confer on a patentee the right to exclude
others from making and using the invention in another state (B); so that it would be strange
if the courts of state B assumed jurisdiction to adjudicate upon and enforce the right
conferred in state A against those who made and used the invention in state A. He went on,
at p. 503:
"The governing power of New South Wales, in the execution of its statute, has granted by its
patent this right of exclusion from manufacturing and using this invention within the limits of
that state. As already pointed out, that is a right which cannot possibly exist outside the
limits of New South Wales. In the absence of legislative power to interfere with the right of
any other state to exclude its own subjects from the use of a manufacture, the whole subject
matter is excluded from the cognisance or competence of the state itself, and its courts
cannot sit in judgment to determine whether such rights are validly granted."
The third member of the court, O'Connor J., agreed that the only question was whether the
Supreme Court of Victoria had jurisdiction to try an issue involving the validity of a patent
granted by the Governor of *435 New South Wales in accordance with the New South Wales
Patent Act 1899. He held that the grant of a patent was the exercise of the executive power
of the state of New South Wales. He expressed the principles on which the courts must act in
such a case in these terms, at pp. 510-511:
"The question whether a court can or cannot inquire into the validity of the executive acts of
a foreign state depends principally upon the application of a well known principle of
international law. The courts of a country have and must exercise the jurisdiction within their
own territory which their laws give them. If their laws give them express jurisdiction to
inquire into the validity of the executive acts of a foreign government, their right to do so and
to bind persons subject to their jurisdiction by their decisions could not be questioned. But
the courts of every country are bound to give effect to the principles of international law
unless to do so would be to decline the exercise of jurisdiction expressly conferred on them
by their own laws. The principles of international law, which systematises the comity of
nations, generally recognise that the courts of a country will not inquire into the validity of
the acts of a foreign state, except subject to some well known limitations. The principle upon
which the limitations rest are concisely stated ... in British South Africa Co. v. Companhia de
Moambique [1892] 2 Q.B. 358 , 395 by Lord Esher M.R. ... 'With regard, then, to acts done
within the territory of a nation, all are agreed that such nation has without more jurisdiction
to determine the resulting rights growing out of those acts; but, with regard to acts done
outside its territory it has no jurisdiction to determine the resultant rights growing out of
those acts, unless such jurisdiction has been allowed to it by the comity of nations.' For
instance, the courts of most nations will refuse to adjudicate upon claims of title to foreign
land in proceedings founded upon an alleged invasion of the proprietary rights attached to it.
It was on that ground that the House of Lords in British South Africa Co. v. Companhia de
Moambique [1893] A.C. 602 held that the Supreme Court of Judicature in England had no
jurisdiction to entertain an action to recover damages for trespass to land situate in a foreign
country. Similarly, the courts of most nations will refuse to inquire into the validity of the acts
of a foreign government done within the territory of that government."
He expressed his conclusion, 3 C.L.R. 479 , 515-516:
"... I am of opinion that the Supreme Court of Victoria could not try this case without
inquiring into the validity of the patent grant, and could not make that inquiry without
violating a fundamental principle of the comity of nations which is binding upon the Victorian
courts in the absence of any Victorian law authorising them to make such inquiry."

The principle that the courts of another contracting state should not make inquiry into the
validity of a patentor into the registration or validity of similar intellectual property rights
is, of course, recognised and preserved by article 16(4) of the Brussels Convention . That
this *436 exclusive jurisdiction is based on considerations of sovereignty is made clear by
the commentary in the Jenard Report (O.J. 1979 C. 59, p. 36): "Since the grant of a national
patent is an exercise of national sovereignty, article 16(4) of the Judgments Convention
provides for exclusive jurisdiction in proceedings concerned with the validity of patents."
Where proceedings are concerned with the registration or validity of patents, trade marks,
designs or other similar rights required to be deposited or registered the local court has
exclusive jurisdiction. But, where the action is not concerned with registration or validity, the
Convention gives jurisdiction to the courts of the defendant's domicile, or to the courts of
other contracting states in accordance with articles 5 and 6. The question "Can the English
court inquire into the validity of a patent granted by a contracting state?" is answered by
article 16(4). The question "Does the English court have jurisdiction to entertain proceedings
in respect of the alleged infringement of an intellectual property right conferred by the law of
a contracting state where the proceedings fall outside article 16(4)?" is answered by article 2,
5 or 6. There is, in our view, nothing in the reasoning of the High Court of Australia in Potter
v. Broken Hill Pty. Co. Ltd., 3 C.L.R. 479 which requires the answer: "No, notwithstanding that
the proceedings fall outside article 16(4) and the English court has jurisdiction to entertain
the proceedings by reason of article 2, 5 or 6, the English court must nevertheless decline
jurisdiction because the question is non-justiciable." We find it impossible to accept that that
answer has any place in a rational scheme of jurisprudence.
We were referred, also, to the decision of Fullagar J., sitting as a single judge in the High
Court of Australia in Norbert Steinhardt and Son Ltd. v. Meth (1961) 105 C.L.R. 440 . He held
that an action under section 121 of the Australian Patents Act 1952-1955 was not
maintainable in Australia in respect of threatened proceedings for infringement of an
Australian patent where the threat was made in England. The reason appears at pp. 443-444:
"A patent for an invention gives a monopoly within the territory of the country which grants
it. Outside that territory it has no force or effect. The English Patents Act relates exclusively
to English patents, and the infringements which it makes unlawful are infringements of
English patents only. In the same way, the Australian Patents Act relates exclusively to
Australian patents, and the infringements which it makes unlawful are infringements of
Australian patents only. If, therefore, an Australian patentee sues in Australia for an
infringement alleged to have been committed in England, and it is asked whether the act
complained of was actionable in England, the answer must be: No. For his Australian patent
gives him no monopoly in England, and what the defendant has done in England is perfectly
lawful according to English law. There can, in truth, be no such thing as an infringement in
England of an Australian patent: see Potter's case, 3 C.L.R. 479 . I have been speaking of
actions for infringement. But the position must be the same with regard to an action for
'threats' ... It is not unlawful to threaten in England to infringe an *437 Australian patent, or
to threaten in Australia to infringe an English patent."
The logic is, if we may say so, beyond criticism. No action could be maintained in Australia in
respect of what was done in England (the threat to infringe an Australian patent) because
neither the Australian Patents Act nor the English Patents Act had any extraterritorial effect.
So a threat, in England, was not within the Australian Act; and a threat to infringe an
Australian patent was not within the English Act. What was done was not a wrong in either
country. But that incontrovertible logic is of no assistance in the present case. The
comparable question would have been whether an action could be brought in Australia in
respect of a threat in England to infringe an English patent. That was not the question before
Fullagar J.; and the fact that (if it had been) he would, as he makes clear, 105 C.L.R. 440 ,
443, have followed the earlier decision of the same court in Potter v. Broken Hill Pty. Co. Ltd.,
3 C.L.R. 479 adds nothing to the defendants' argument.

The English cases


Lloyd J. considered the Moambique rule in the following passage of his judgment [1997] Ch.
293 , 299-300:
"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 Moambique [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 shall call the Moambique rule, was found to be supported by Australian
decisions concerning patent infringement including Norbert Steinhardt and Son Ltd. v. Meth,
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 should have to
strike out the action as regards breach of Dutch copyright as not being justiciable."
We have explained why we find no support in the Norbert Steinhardt case for the proposition
that a claim for breach of a foreign statutory intellectual property right should not be
entertained by an English court. We turn, therefore, to the two English cases, Def Lepp Music
v. Stuart-Brown [1986] R.P.C. 273 and Tyburn Productions Ltd. v. Conan Doyle [1991] Ch.
75 .
As Lloyd J. himself observed, there was no allegation of infringement of foreign copyright in
the Def Lepp case [1986] R.P.C. 273 . The plaintiffs claimed to be the owners of the United
Kingdom copyright in a tape recording. It was alleged that the sixth and eighth defendants
had infringed the plaintiffs' United Kingdom copyright by transactions which had taken place
in Luxembourg and Holland. The sixth and eighth *438 defendants applied to the English
court to set aside leave granted to serve them with the proceedings outside the jurisdiction,
on the ground that the material relied upon by the plaintiffs disclosed no cause of action
against them. Sir Nicolas Browne-Wilkinson V.-C. upheld that contention. After analysing the
relevant provisions of the Copyright Act 1956 he said, at p. 275:
"It is therefore clear that copyright under the English Act is strictly defined in terms of
territory. The intangible right which is copyright is merely a right to do certain acts
exclusively in the United Kingdom: only acts in the United Kingdom constitute infringement
either direct or indirect of such a right."
Sir Nicolas Browne-Wilkinson V.-C. went on to consider, and reject, an argument advanced by
the plaintiffs on the scope and effect of the double-actionability rule. We shall return to that
part of his judgment in due course. He concluded, at pp. 276-277:
"In my judgment, therefore, a successful action cannot be brought in England for alleged
infringement of United Kingdom copyright by acts done outside the United Kingdom. I am
fortified in this view by the fact that it accords not only with the views of the traditional
textbooks but also with two decisions in the Australian courts in the analogous field of patents
which are also intangible rights in a limited and defined territory: see Potter v. Broken Hill Pty.
Co. Ltd., 3 C.L.R. 479 ; Norbert Steinhardt and Son Ltd. v. Meth, 105 C.L.R. 440 ."
We doubt whether Potter's case, 3 C.L.R. 479 , at least in the High Court of Australia, can
properly be regarded as authority for the proposition that an action cannot be brought in
England for the infringement of United Kingdom copyright by acts done outside the United
Kingdom. In Potter's case the question was whether an action could be brought in the state of
Victoria for an injunction and damages in respect of the alleged infringement in New South
Wales of the plaintiff's New South Wales patent. But we do not doubt the proposition itself;
nor that it is supported by the Norbert Steinhardt case, 105 C.L.R. 440 . An action cannot be
brought in England for the infringement of United Kingdom copyright by acts done outside the
United Kingdom because, as Sir Nicolas Browne-Wilkinson V.-C. pointed out in the earlier
passage of his judgment in the Def Lepp case [1986] R.P.C. 273 , 275 to which we have
referred, the rights conferred by United Kingdom copyright are territorial, and acts done
outside the United Kingdom cannot infringe those rights. But, that said, the proposition is of
no assistance in the present case. In the present case the question is not whether an action
can be brought in England for the infringement of United Kingdom copyright by acts done
outside the United Kingdom; rather, the question is whether an action can be brought in
England for the infringement of Dutch copyright by acts done in Holland. That is, of course,
closely analogous to the question in Potter's case, 8 C.L.R. 479 ; but it is not analogous to
the question in the Def Lepp case [1986] R.P.C. 273 . On this aspect of the present case the
defendants can gain no assistance from theDef Lepp case.
*439
The defendants place reliance on the decision of Vinelott J. in Tyburn Productions Ltd. v.
Conan Doyle [1991] Ch. 75 . That is the only decision cited to us which could be said to
provide direct support for the proposition that a claim for breach, outside England, of a
foreign intellectual property right cannot be entertained by an English court. The plaintiff

sought a declaration from the English court that the defendant (who claimed to be entitled to
copyright in the works of her father, the late Sir Arthur Conan Doyle) had no rights under the
copyright, unfair competition or trademark laws of the United States which would entitle her
to prevent the distribution of a television film, produced by the plaintiff, which featured the
characters Sherlock Holmes and Dr. Watson. The defendant applied to strike out the
proceedings on the ground that they disclosed no cause of action. Vinelott J. acceded to the
defendant's application. His reasoning is, we think, adequately summarised in the headnote:
"the distinction between transitory and local actions which precluded English courts from
entertaining questions as to the title, or of damages for trespass, to land abroad should be
applied to intellectual property rights so that an action relating to the copyright laws of a
foreign state was a local action, not justiciable in the English courts ..."
Vinelott J. considered the passages in the speeches in the House of Lords in British South
Africa Co. v. Companhia de Moambique [1893] A.C. 602 and in the judgments in the High
Court of Australia in Potter v. Broken Hill Pty. Co. Ltd., 3 C.L.R. 479 to which we have already
referred. He considered, also,section 30(1) of the Act of 1982 but derived no assistance from
it. He did not, of course, find it necessary to consider the Brussels Convention. The foreign
state with which he was concerned (whether that be the United States of America or one of
the states within that country) was not party to the Convention.
We do not find it necessary to decide whether Vinelott J. was correct to take the view (if he
did) that an action for alleged infringement of a foreign copyright by acts done outside the
United Kingdom in a state not party to the Brussels Convention, in a case where no question
as to the validity or registration of the right was in issue, was not justiciable in an English
court. It is important to keep in mind that the question which he actually had to decide was
whether to make a declaration that the defendant had no rights under the copyright, unfair
competition or trademark laws of the United States which would be infringed by what the
plaintiff was proposing to do. He was invited to investigate the existence and validity of the
rights claimed; not to decide whether there had been an infringement of rights the existence
and validity of which were not in issue. He was, in our view, plainly correct to refuse to make
the declaration sought, for the reason given in the penultimate paragraph of his judgment, at
p. 89:
"In the instant case there is no evidence that, if the validity of the rights claimed were
justiciable in the English courts, the decision of the English courts would be treated as binding
on any of the states of *440 the United States of America and it would in my judgment be an
exercise in futility to allow these claims, which raise complex issues which may require a
survey by the English courts with the assistance of experts of the laws of each of the states of
the United States of America, to continue."
We can derive little or no assistance from the decision in the Tyburn Productions case [1991]
Ch. 75 on the question whether an action for alleged infringement of a foreign copyright by
acts done outside the United Kingdom, in a case where the existence and validity of the right
is not in issue, is justiciable in an English court; and no assistance from that case where the
question arises in the context of acts done in a contracting state.
We were referred, also, to the decision of this court in Mlnlycke A.B. v. Procter & Gamble
Ltd. [1992] 1 W.L.R. 1112 . The plaintiffs, who were the registered proprietor of an English
patent and the exclusive licensee under that patent, brought proceedings against the
defendants for alleged infringement of that patent by acts done in England. In the course of
those proceedings the plaintiffs sought to join as a defendant a German companya member
of the same group of companies as the existing defendantswhich was said to be engaged in
the manufacture, in Germany, of the infringing product. It was held that the plaintiffs were
entitled to rely on the provisions of article 5(3) of the Brussels Convention as a ground for
joining the German company to an action in England, provided that they could satisfy the
English court that there was a serious question which called for a trial. On the facts this court
was satisfied that the plaintiffs had shown a good arguable case that the German company
and the first defendant had a common design to market the product in the United Kingdom
which infringed the plaintiffs' patent. But, in the course of his judgment, Dillon L.J. said, at
pp. 1117-1118:
"It is not in doubt that patent infringement falls within the rubric in article 5(3), 'matters
relating to tort, delict or quasi-delict.' It is also not in doubt that, for the purposes of article
5(3), the 'harmful event' was the marketing of the allegedly infringing nappies in England; so
the 'harmful event' occurred in England. Infringement is not within the exclusive jurisdiction

provisions of article 16, paragraph (4) of which refers to 'proceedings concerned with the
registration or validity of patents' and similar rights. In these proceedings registration and
validity are not in issue. But from the nature of a United Kingdom patent, proceedings for
infringement of a United Kingdom patent can only be brought in a United Kingdom court, in
the present case the English court, and could only be founded on infringement in England.
The German court could entertain an action for infringement of the comparable German
patent, but could not entertain a claim for infringement of an English patent. Conversely, the
English court could not entertain a claim for the infringement of a German patent. English
patent law as embodied in the Patents Act 1977 is founded on international convention, not
just European Community convention, but, subject to certain special provisions of*441 the
Act, its application by the English court is a matter of English law."
The defendants, of course, seek to rely on the observation by Dillon L.J. that "the English
court could not entertain a claim for the infringement of a German patent." It is unnecessary
for us to express a view whether that observation was correct; but we note (i) that it was
plainly obiterin that there was no claim in the action (so far as appears from the report) in
respect of alleged infringement of the plaintiffs' German patent (if they were entitled to a
German patent), (ii) that the question does not appear to have been the subject of any
argumentneither the Moambique case [1893] A.C. 602 nor Potter's case, 3 C.L.R. 479 is
referred to in the report, and (iii) the observation finds no support in the judgments of the
other two members of the court.
It was pointed out to us that it was on the basis of Dillon L.J.'s observation in the Mlnlycke
case [1992] 1 W.L.R. 1112 that this court decided, in Boston Scientific Ltd. v. Cordis
Corporation (unreported), 18 November 1997; Court of Appeal (Civil Division) Transcript No.
1838 of 1997 to refer to the Court of Justice of the European Communities, pursuant to
article 177 of the E.E.C. Treaty , the question whether:
"in the case of patents granted pursuant to European applications pursuant to the European
Patent Convention, the provisions of articles 2 and/or 64 of the European Patent Convention
[are] provisions which govern jurisdiction in relation to particular matters (i.e. proceedings
for infringement of such patents) within the meaning of article 57 of the Brussels
Convention."
We are satisfied that what led to the reference was the perception that, in the light of Dillon
L.J.'s observation that English patent law was founded "on international convention, not just
European Community convention," the question whether article 64(3) of the European Patent
Conventionwhich requires that any infringement of a European patent should be dealt with
by national lawgoverned jurisdiction could not be regarded as acte clair; so reversing the
view which this court had expressed in Fort Dodge Animal Health Ltd. v. Akzo Nobel N.V.
[1998] F.S.R. 222 , 242. We are not persuaded that this court, in the Boston case, 18
November 1997, intended to endorse the view that the English court could not entertain a
claim for the infringement of a German patent. Nor are we persuaded that the view
expressed, obiter, by Dillon L.J. in the Mlnlycke case [1992] 1 W.L.R. 1112 in relation to
patent infringement requires us to alter the conclusion which we have reached as to the
scope and effect of the Moambique rule.

The Berne Convention


Encouraged, perhaps, by the reference made by this court in the Boston Scientific case, 18
November 1997 the defendants contended that the provisions of the Brussels Convention are
excluded, by article 57, from application to copyright infringement by the provisions of article
5(2) of the Berne Convention for the Protection of Literary and Artistic Works . Article 5(2) of
the Berne Convention is in these terms: *442
"The enjoyment and exercise of these rights shall not be subject to any formality; such
enjoyment and such exercise shall be independent of the existence of protection in the
country of origin of the work. Consequently, apart from the provisions of this Convention, the
extent of protection, as well as the means of redress afforded to the author to protect his
rights, shall be governed exclusively by the laws of the country where protection is claimed."
Article 57(1) of the Brussels Convention provides:
"This Convention shall not affect any conventions to which the contracting states are or will
be parties and which, in relation to particular matters, govern jurisdiction or the recognition
or enforcement of judgments."

We note that, although the Berne Convention (unlike the European Patent Convention) was in
force at the time when the Brussels Convention came into effect, it is not referred to in the
Jenard Report in the commentary under article 57 (O.J. 1979 C. 59, pp. 59-61). We think
that there is good reason for that. Article 5(2) of the Berne Convention does not purport to
govern jurisdiction in relation to infringement of copyright. "National law," in the context of
article 64 of the European Patent Convention, means the law of the state in respect of which
the patent is granted: see article 64(1). But, in relation to copyright, the question is not "in
respect of which country is the protection claimed," but "where is the protection claimed."
The protection is claimed in the country in which the proceedings are brought. Article 5(2)
requires that the extent of the protection to be afforded is governed by the laws of that
country. There is, of course, no reason to assume that the laws of that country do not include
its own rules of private international law. What article 5(2) does, in our view, is to leave it to
the courts of the country in which the proceedings are brought to decide whether the claim
for protection should be upheld. It does not seek to confer jurisdiction on the courts of one
country to the exclusion of any other. We reject the submission that the Berne Convention
excludes the application of the Brussels Convention to proceedings in respect of infringement
of copyright.

The requirement of double-actionability


The defendants rely on the rule, derived from Phillips v. Eyre, L.R. 6 Q.B. 1 and Boys v.
Chaplin [1971] A.C. 356 , which is now formulated in Dicey & Morris, The Conflict of Laws,
12th ed. vol. 2 , pp. 1487-1488 :
" Rule 203 (1) As a general rule, an act done in a foreign country is a tort and actionable as
such in England, only if it is both (a) actionable as a tort according to English Law, or in other
words is an act which, if done in England, would be a tort; and (b) actionable according to the
law of the foreign country where it was done. (2) But a particular issue between the parties
may be governed by the law of the country which, with respect to that issue, has the most
significant relationship with the occurrence and the parties."
*443 The rule has been abolished, with effect from 1 May 1996, by section 10 of the Private
International Law (Miscellaneous Provisions) Act 1995 . Section 11(1) of that Act requires
that, where the Act applies, the general rule is that the applicable law is the law of the
country in which the events constituting the tort in question occur. If the Act applied in the
present case (which it does not, because the relevant events in respect of which the plaintiff
complains occurred before 1996) the applicable law would be Dutch law.
The difficulty, if the effect of the first limb of rule 203(1) requires the English court to
determine actionability by English domestic law in a case like the present case, is illustrated
by a passage from the judgment of Sir Nicolas Browne-Wilkinson V.-C. in Def Lepp Music v.
Stuart-Brown [1986] R.P.C. 273 . It was asserted in argument (although not, it seems,
pleaded or proved) that the acts of the sixth and eighth defendants would constitute legal
wrongs under the laws of Luxembourg and Holland. Sir Nicolas Browne-Wilkinson V.-C.
rejected the submission that, in the light of what became rule 203(1)and was then rule 172
in Dicey & Morris, The Conflict of Laws, 10th ed. (1980) that would be sufficient to support
an action in England. He said, at p. 276:
"The majority decision in Boys v. Chaplin [1971] A.C. 356 seem to me to show that rule 172
is a rule for regulating the choice of law to be applied to the tort. In cases brought in England
under rule 172, the court generally gives effect to the substantive law of England (lex fori) as
opposed to the law of the place where the act is committed (lex delicti): see per Lord
Donovan, at p. 383h; Lord Wilberforce, at pp.385c, 387e and 389f; Lord Pearson, at p. 400f.
Having once applied rule 172 to establish which law is applicable and found that the
applicable law is the law of England, the question must be whether under English law those
acts constitute an actionable wrong."
That question, for the reasons which Sir Nicolas Browne-Wilkinson V.-C. had already identified
(and to which we have referred above) had to be answered in the negative. The acts in
Luxembourg and in Holland could not constitute an actionable wrong under the Copyright Act
1956, because that Act was strictly territorial. It did not apply to acts done outside the United
Kingdom. So, ifdespite the rule in the Moambique case [1893] A.C. 602 the claim was
justiciable, it was bound to fail the requirement in the first limb of the double-actionability
rule.
If that were a correct analysis, the effect would be that the first limb of rule 203(1) imposed
a requirement as to jurisdiction; and not simply a rule for the choice of law. The view that the

first limb of the rule does impose a requirement as to jurisdiction had found expression in the
dissenting judgment in the Court of Appeal of Diplock L.J. in Boys v. Chaplin [1968] 2 Q.B. 1 ,
38:
"This first condition states what is strictly a rule of jurisdiction comparable to that whereby
English courts decline jurisdiction over actions relating to foreign land to which Willes J. [in
Phillips v. Eyre, L.R. 6 Q.B. 1 , 28] also refers in the same passage. It is a rule of public policy
that our courts do not hear and determine liability for acts of a *444 kind which are not
regarded as giving rise to liability in tort in England, notwithstanding that such acts give rise
to civil liability under a foreign system of law and could be the subject of a foreign judgment
which would be recognised here."
But that view was plainly rejected by the House of Lords on the appeal. Lord Wilberforce
said [1971] A.C. 356 , 385:
"The first part of the rule'actionable as a tort according to English law.' I accept what I
believe to be the orthodox judicial view that the first part of the rule is laying down, not a test
of jurisdiction, but what we now call a rule of choice of law: is saying, in effect, that actions
on foreign torts are brought in English courts in accordance with English law."
In Red Sea Insurance Co. Ltd. v. Bouygues S.A. [1995] 1 A.C. 190 , 198g Lord Slynn of
Hadley, delivering the opinion of the Privy Council, described the first limb of the rule:
"as a starting point in the exercise, not of deciding whether the English courts should have
jurisdiction, but of deciding which law should be chosen to determine the relevant issue or
issues."
After an extensive review of the authorities, the academic writings and the views of the Law
Commission in England and the American Law Institute, the Privy Council accepted in the Red
Sea case that the choice of the lex fori as the applicable law was not an invariable rule. It
was, as indicated in the formulation which now appears as rule 203(1), "the general rule"or,
as Lord Slynn put it, in the passage which we have just cited, "a starting point." The Privy
Council accepted that English law recognised that a particular issue between the parties to
litigation may be governed by the law of the country which, with respect to that issue, has
the most significant relationship with the occurrence and with the parties. Further, they
accepted, at p. 206, that:
"in principle the exception can be applied in an appropriate case to enable a plaintiff to rely
exclusively on the lex loci delicti ... though the fact that the forum is being required to apply
a foreign law in a situation where its own law would give no remedy will be a factor to be
taken into account when the court decides whether to apply the exception."
In the present case, the plaintiff's claim would be defeated if the court were to refuse to
apply the exception. But the claim (if established on the facts) is one where the English court
would have given a remedy, under United Kingdom copyright law, if the facts alleged had
occurred in England. This is not a case in which the claim is in respect of some wrong which is
conceptually unknown in English law. In our view this is a case where, if the claim is
justiciable at all, the exception to the double actionability rule enables the English court to
apply Dutch law; and the English court ought to do so. We are encouraged in that view by the
fact that it accords with the policy subsequently adopted by Parliament when enacting section
11 of the Act of 1995. *445Conclusion
For the reasons which we have set out we are satisfied that the Moambique rule does not
require the English court to refuse to entertain a claim in respect of the alleged infringement
of Dutch copyright; and that, in those circumstances, the court is not required by the first
limb of the double actionability rule to hold that the claim is bound to fail because the acts
done in Holland cannot amount to an infringement of United Kingdom copyright. It follows
that we are not persuaded that the judge's order should be affirmed on the alternative
ground advanced in the respondent's notice.

The need for a reference to the Court of Justice


It was submitted to us that the respondent's notices raised questions on which we should
seek rulings from the Court of Justice under article 177 of the E.E.C. Treaty or under article
3(2) of the 1971 Protocol to the Brussels Convention . Those questions were not formulated,
but, in substance, they are (i) whether the rules of English private international law derived
from the Moambique case [1893] A.C. 602 and Phillips v. Eyre, L.R. 6 Q.B. 1 are in conflict
with, and so must yield to, the basic principle, embodied in article 2 of the Brussels
Convention, that a defendant must (subject to the special jurisdictions of the Convention) be

sued in the country in which he is domiciled, and (ii) whether, by reason of article 5(2) of the
Berne Convention, in conjunction with article 57(1) of the Brussels Convention, the Brussels
Convention has no application to proceedings in respect of infringement of copyright. We
have considered this submission in the light of the guidance given by this court in Reg. v.
International Stock Exchange of the United Kingdom and the Republic of Ireland Ltd., Ex
parte Else (1982) Ltd. [1993] Q.B. 534 , 545d-f. We are satisfied that it would not be
appropriate to make a reference in this case. We are not persuaded that the first of the two
questions identified above is, on a true analysis, a question of European Community law or a
question of the interpretation of the Brussels Convention. In our view it is properly to be
regarded as a question which turns on the policy underlying the relevant rules of English
private international law. We regard the answer to the second question as sufficiently clear to
enable us to resolve it without the need for a ruling from the Court of Justice.
In those circumstances this appeal must be allowed.

Representation
Solicitors: Landau & Cohen, Edgware ; Berrymans Lace Mawer ; Ashurst Morris Crisp .
Appeal allowed. Plaintiff to recover half costs on appeal. ([Reported by Alison Sylvester,
Barrister] )

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