Bonnier Media Ltd v Greg Lloyd Smith and Another

[Donald ramsbottom]

Below is a case on internet jurisdiction (Scottish) from the Times Law
report. As this subject came up a week or two ago it maybe of interest. As
ever ignore if you do not like law.




Bonnier Media Ltd v Greg Lloyd Smith and Another

 
Before Lord Drummond Young Judgment July 1, 2002Where a threatened wrong
complained of related to the infringement of a trade mark by use of a
domain name on the internet, it was sufficient to establish jurisdiction if
it could be demonstrated that the infringer's website was intended to be of
significant interest in the country in which jurisdiction was claimed. Lord
Drummond Young, sitting in the Outer House of the Court of Session, so
held, refusing a motion for recall of an order for interim interdict
awarded to Bonnier Media Ltd in an action brought by them against Greg
Lloyd Smith and Kestrel Trading Corporation Ltd. Mr Graeme Henderson for
the pursuers; Mr Derek O'Carroll for the defenders. LORD DRUMMOND YOUNG
said that the pursuers were the owners, printers and publishers of the
newspaper known as business a.m.. They had registered a trade mark under
the Trade Marks Act 1994 which included the words "business a.m.". They
provided an online service at their website under the domain name
www.businessam.co.uk. They had averred that an online service was a vital
addendum to their business activities and had built up a substantial
goodwill in its own right. They had further averred that the first defender
had a history of making use of domain names calculated to pass himself off
as other organisations. The pursuers had also averred that the defenders
would set up or have set up websites passing themselves off as the pursuers
and in breach of section 10 of the 1994 Act. They had accordingly concluded
for interdict and interim interdict. The first defender had argued that the
pursuers' averments did not disclose a prima facie case in relation to
jurisdiction. He was domiciled in Greece. He had argued that article 5(3)
of Schedule 1 to the Civil Jurisdiction and Judgments Act 1982 applied not
to threatened delicts, but only to completed delicts. That argument was not
correct. That was for two principal reasons. First, it was frequently of
vital importance that the courts of a country should be able to take
effective action against any civil wrong of a delictual nature that was
threatened within that country, without any need for recourse to a foreign
court. Such a jurisdiction was essential to secure proper maintenance of
the rule of law. Second, it was frequently not easy to draw a clear
distinction between a threatened delict and a completed delict. The
Scottish courts had jurisdiction over the first defender to interdict a
threatened wrong that was likely to produce a harmful event within
Scotland. The crucial question was whether in the present case a wrong was
threatened within Scotland. The defenders had referred to 800-Flowers Trade
Mark ((2002) FSR 191) and Euromarket Designs Inc v Peters and Trade and
Barrel Ltd ((2001) FSR 288). In the former case, it had been held that the
mere existence of a website in New York was not sufficient to establish the
use of a trade mark within the United Kingdom. In the latter, it had been
held that although a website could be accessed from the United Kingdom,
that was not sufficient to hold that the defendants carried on trade within
the United Kingdom. The critical question was the location of a wrong that
was said to have been committed by way of the internet. The person who set
up a website could be regarded as potentially committing a delict in any
country where the website could be seen, in other words, in any country in
the world. The overwhelming majority of websites would be of no interest in
more than a single country or a small group of countries. A website should
not be regarded as having delictual consequences in any country where it
was unlikely to be of significant interest. In the present case, an
inference might readily be drawn that the defenders intended to set up a
website which was designed to pass themselves off as the pursuers and to
make use of a name sufficiently close to the pursuers' trade mark to amount
to an infringement of that trade mark. Those acts were clearly aimed at the
pursuers' business. It was obvious that the defenders' actings were
intended to have their main effect in Scotland. The Scottish courts
therefore had jurisdiction. Law agents: 

Donald Ramsbottom BA LLb (Hons) PGdip
Ramsbottom & Co Solicitors
Internet and Global Encryption Law Specialists & General UK  Law Matters
5 Seagrove Avenue Hayling Island Hampshire UK
Tel (44) 023 9246 5931 Fax (44) 023 9246 8349
Service by Fax or Email NOT accepted