NO STAY -- ENGLAND'S A FINE FORUM FOR INDIAN COPYRIGHT ROYALTY SPAT

A logo reflecting happier days for the two litigants in this case

The Queen's Bench decision of Mrs Justice Gloster in Pearson Education Ltd v Prentice Hall of India Pte Ltd, 22 April 2005, [2005] EWHC 655 (QB), a head-on clash between two publishers, has only just come to the IPKat's attention.

This was an application by Prentice Hall to set aside an order giving Pearson permission to serve the proceedings on it in India, or to stay the proceedings on forum grounds. Prentice Hall published a number books in India under licence, but Pearson said those licences -- which were governed by English law -- had been assigned to it in 1999. Pearson also assumed the books were no longer in print, since Prentice Hall had stopped paying royalties. When Pearson found that Prentice Hall was indeed continuing to print those titles, it served default notices under the agreements for non-payment of royalties. Meanwhile, failure to remedy those breaches automatically terminated the licence agreements. Prentice Hall conceded it was in breach of the licence agreements but claimed that (i) Pearson had no title to sue, (ii) Pearson could not establish that its claim had a reasonable prospect of success and (iii)India was the most appropriate forum for the determination of any dispute between the parties.

Gloster J refused Prentice Hall's application and held as follows:

* It was seriously arguable, considering the provisions of the Copyright, Designs and Patents Act 1988 and its predecessor in 1956, that Pearson had a contractual relationship with Prentice Hall even if it hadn't given written notice of the assignments at the it served default notices under the licence agreements. This meant that Pearson was entitled, as legal proprietor of the titles, to serve such notices.

* England was clearly the more appropriate forum since the relevant agreements were governed by English law: Pearson's entitlement to sue under the agreements raised English law issues and involved events and evidence mainly located in England.

* The existence of Indian proceedings involving Prentice Hall (but not Pearson) and the fact that further Indian proceedings were contemplated did not demonstrate that India was clearly a more appropriate forum for the action, nor that England was not the appropriate forum.

The IPKat notes how reluctant the English courts currently are to hold that any other jurisdiction is more convenient or appropriate: does anyone keep statistics on this matter? Merpel adds that she's heard that Indian civil litigation is reputed to be very slow -- but is this still the case, now that India has beefed up its IP enforcement procedures in the wake of TRIPs? Do please let us know!

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