HomeInsightsHigh Court refuses permission to amend Particulars of Claim to include claims for infringement of moral rights and passing off in housing design sketches

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Facts

This claim arose out of the development of a holiday village at Warmwell Quarry, Weymouth, Dorset, known as Silverlake, comprising holiday homes with ancillary facilities.

The claimant, The Front Door (UK) Ltd, is an architectural practice, trading as Richard Reid Associates (RRA). Mr Reid is an architect who previously worked for WFA Associates Ltd, now in liquidation, when it used the trading name of RRA. The claims were based on an assignment of rights from WFA to RRA under a Deed of Assignment dated 19 October 2018.

The defendant, Lower Mill Estate Ltd (LME) is the developer of the project.

In April 2012, LME appointed WFA to provide a sketch design for the proposed development. WFA produced the sketch design and received a fixed fee in return for which it assigned copyright to LME.

RRA claimed that WFA had become entitled to additional fees in respect of the design work carried out once planning permission had been granted. It also claimed damages for loss of profits which would have been earned if WFA’s involvement in the project had continued. Further, it said that it was not properly attributed as the author of drawings used in the planning permission applications and on a website for the development, giving rise to a claim for infringement of moral rights under s 77 of the Copyright, Designs and Patents Act 1988.

RRA applied to join further defendants to the proceedings and to amend its Particulars of Claim to include a claim for damages for breach of moral rights, as well as a claim for an injunction, damages and/or an account of profits for passing off against all defendants.

LME applied to have certain paragraphs of the Particulars of Claim struck out on the grounds that they disclosed no reasonable grounds for bringing the claim for infringement of moral rights set out in them. LME also opposed RRA’s application to join the proposed defendants and to amend the Particulars of Claim on the grounds that it had no real prospect of success.

Decision

Moral rights

RRA claimed that in assigning the copyright in the sketch designs, it had agreed that they belonged to LME in accordance with the terms of the contract, but it had not waived or assigned its moral rights. RRA said that its moral right to be identified as the author of the sketch designs had been asserted by way of the title block of the drawings, which identified it as the author. RRA said that, despite this, LME had acted in breach of contract and in breach of RRA’s moral rights by not attributing authorship in the sketch designs to RRA in the planning application. RRA said that the failure to properly attribute the work to RRA had diminished RRA and its opportunity for recognition and to gain further commissions.

Mrs Justice O’Farrell DBE held that the moral rights claim did not disclose an arguable cause of action and was bound to fail because:

  1. RRA was not the author of the sketch designs and therefore did not have, and could not acquire, any moral rights in them; the author of the work was Mr Reid, who was not a party to the claim; moral rights are personal in nature and are not assignable; therefore, they were, and remained, incapable of assignment by Mr Reid to WFA or to RRA; the 2018 Deed of Assignment provided for WFA to assign all its rights under three contracts, but it did not purport to assign any moral rights, or any cause of action arising out of any moral rights;
  2. there was no assertion of any moral rights in respect of the sketch designs for the purpose of s 78 of the CDPA so as to give rise to an actionable claim; the pleaded case relied upon the insertion of the name “RRA” on the title block of the sketch designs, but Mr Reid, not RRA, was the author of the work; in any event, this could not amount to a positive statement or assertion of a right or claim to attribution; and
  3. LME had a complete defence to any claim for moral rights under s 79(3) of the CDPA, by reason of LME’s ownership of copyright; Mr Reid had produced the work in the course of his employment with WFA, trading as RRA, and copyright had accordingly vested in WFA by reason of s 11 of the CDPA; RRA had pleaded that WFA had assigned the copyright to LME and that the uses of the sketch designs were authorised by LME as owner of copyright; therefore, no moral right applied.

Passing off

RRA claimed that, by not attributing the authorship of the sketch designs to RRA, the defendants had misrepresented that they were the authors and that this misrepresentation had led to deception on the part of the public such as to cause damage to and/or misappropriation of RRA’s goodwill.

O’Farrell J noted that WFA had assigned copyright in the sketch designs to LME. Further, RRA had expressly pleaded that their use by the proposed defendants was made with the authorisation, and at the direction, of LME. Therefore, there could be no misrepresentation as to the commercial source of the design shown to the public. LME was entitled to publish the design for the development as its design because it owned the copyright.

In fact, RRA had accepted that in assigning copyright in the sketch designs to LME, it had agreed that its design could be used by LME. RRA said that it did not waive or assign its moral rights in the design but, as O’Farrell had already found, RRA did not have a claim in respect of moral rights.

Further, although the proposed pleading stated that the alleged misrepresentation was likely to lead and had led to deception, RRA had not set out any facts and matters in support of such assertion.

Therefore, RRA had failed to plead a case that: (i) it owned the goodwill of WFA’s business; (ii) there was any misrepresentation in the light of LME’s ownership of copyright in the design; or (iii) reliance on any misrepresentation. Accordingly, the claim for passing-off had no real prospect of success and was bound to fail. Permission to amend to introduce the claim was refused.

Limitation

In any event, O’Farrell J found that it was at least arguable that some of the claims were statute-barred. Therefore, even if the claims had a real prospect of success, she would have refused the application to amend to join the additional defendants and to add the new claims as they were being made over six years from the date when the causes of action were said to have accrued.

Conclusion

O’Farrell therefore refused the application to join additional defendants and to amend the Particulars of Claim. She also granted LME’s application to strike out the paragraphs concerning moral rights in the original Particulars of Claim. (The Front Door (UK) Ltd t/a Richard Reid Associates v The Lower Mill Estate Ltd [2021] EWHC 2324 (TCC) (17 August 2021) — to read the judgment in full, click here).

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