ATARI CAN'T GET CASE SHIFTED TO NY; GOOD NEWS FROM IRAQ

The IPKat picked this case up off Butterworths' All England Direct subscription service: Sawyer v Atari Interactive Inc [2005] EWHC 2351 (Ch), a Chancery Division decision of Mr Justice Lawrence Collins yesterday.

Sawyer, a Scotsman, designed and developed of computer games in which he owned the copyright. His business being based in Scotland, he had an agent in England: that was Atari Interactive, a Delaware corporation and games distributor that was licenced to market Sawyer's games. It was a subsidiary of New York-based Atari Inc. Atari Interactive sent all its accounting paperwork to Atari Inc in New York, for world-wide royalty accounting to be processed. The agreements under which Sawyer licensed Atari Interactive specified that they were governed by English law but did not contain a choice of court or arbitration.

After a dispute arose in relation to royalties claimed by Sawyer, he sued in England for, inter alia, an audit and disclosure. He obtained permission to serve the writ out of the jurisdiction. Atari Interactive applied to stay the action on the ground that England was not the forum conveniens, arguing that most of the issues involved accounting matters and that the relevant witnesses and documents were in the USA. Sawyer submitted that the issues in the action related essentially to questions of construction governed by English law and that, accordingly, England was the appropriate forum.

Lawrence Collins J refused to stay the action and refused Atari Interactive permission to appeal, holding as follows:

* The express choice of English law might, or might not, be a significant factor in the determination of the appropriate forum, depending on the likely issues and other questions normally put in the balance;

* The factors that were relevant included whether there was any substantial difference between English law and the law to be applied by the foreign court; if there was a difference, would the foreign court apply English law under its rules of the conflict of laws; and to what extent the dispute turned on questions of law.

* In this case England was the clearly appropriate forum since the essence of the dispute between the parties rested on the interpretation of provisions of contracts governed by English law. The case was not a largely fact-based dispute with little, if any, law involved, nor would the resolution of the dispute turn in large part on accountancy evidence as to what sales have been made.

* Sawyer's claim did indeed include a claim for specific performance of the agreements to allow him to conduct an audit and to give him disclosure of documents, but those claims focused on matters of relief and stemmed largely from the differing approach of the parties to the important questions of the construction of the relevant provisions of the agreements. Moreover, Atari Interactive had exaggerated the New York connections of the evidence.

The IPKat thinks this decision is right, given the learned judge's reasoning, but he notes how infrequently an application to stay UK proceedings in favour of a foreign action is ever successful - at least in IP disputes.


2 At last, some good news from Iraq

The IPKat has read on Portal Iraq that Nearly 30 Iraqi businessmen, lawyers and government officials have now received training in intellectual property rights. Led by Izdihar (a US Agency for International Development project), the training was designed to increase awareness of intellectual property rules, part of the World Trade Organization (WTO) multilateral trading system.

Right: infringers may get more than they bargain for if Iraq adopts a shoot-to-kill policy against them.

Iraq currently has protection for only three types of IP rights: copyright, trade marks and patents. Before it can join the WTO, Iraq will need to protect most other forms of IP rights too.

The IPKat is delighted that intellectual property protection remains among the fledgling democracy's main objectives and hopes that Iraq is able to attract investment and generate fresh IP of its own. Merpel adds, "and just think of all those geographical indications waiting to be protected ...".