Thames & Hudson v Design and Artists Copyright Society Limited
6 July 1994
Copyright Designs and Patents Act 1988 ss. 107, 110
criminal prosecution; declaration of non-infringement; stay of proceedings; concurrent proceedings
David Kitchin QC, Kevin Garnett QC, Gwilym Harbottle
Clifford Chance; Stephens Innocent
High Court (Chancery Division)
 FSR 153
In an action in which the plaintiff was seeking declarations of non-infringement of the defendant's artistic copyright, the plaintiff brought a motion seeking a stay of criminal proceedings brought by the defendant against it under section 107 of the Copyright, Designs and Patent Act (CDPA) 1988 based on the same alleged infringement. A stay would be granted 'if it is just and convenient to do so or if the circumstances are such that one set of proceedings is vexatious and an abuse of the process of the Court': Imperial Tobacco Ltd v A-G  AC 718, 752.
It was argued that the criminal provisions of the CDPA were designed for pirate publications, and that the Magistrates' Court was not an appropriate forum for the resolution of what was in essence a commercial dispute. Moreover, whilst the criminal proceedings would not resolve the civil action, the civil action would be likely to resolve the issues in dispute in the criminal prosecution. The criminal proceedings were therefore brought to apply undue pressure to settle.
The judge held that it was not shown that the criminal proceedings were vexatious; they had been brought before the civil action was started, Parliament had not restricted the criminal remedies to 'pirate' cases, and it was legitimate to use this cheaper procedure in the circumstances.