American Cyanamid Co v Ethicon Ltd HL 5 Feb 1975 - swarb PDF

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Interim injunctions in IP litigation...

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12/02/2020

American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975 - swarb.co.uk

 Home (https://swarb.co.uk) » Intellectual Property (https://swarb.co.uk/category/intellectual-property/) » Litigation Practice (https://swarb.co.uk/category/litigation-practice/) » American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975

AME RI CAN CYANAMI D CO V E T HI CO N LT D: HL 5 F E B 1975

References: [1975] 2 WLR 316, [1975] AC 396, [1975] UKHL 1, [1975] 1 All ER 504, [1975] FSR 101, [1975] RPC 513 Links: Bailii (https://www.bailii.org/uk/cases/UKHL/1975/1.html) Coram: Lord Diplock, Viscount Dilhorne, Lord Cross of Chelsea, Lord Salmon and Lord Edmund-Davies Ratio: The plaintiffs brought proceedings for infringement of their patent. The proceedings were defended. The plaintiffs obtained an interim injunction to prevent the defendants infringing their patent, but they now appealed its discharge by the Court of Appeal. Held: The questions which applied when looking for an interim injunction in patent infringement cases were no different from those in other cases. The court must first look to the balance of convenience. There was no rule that the court must first look for the prospects of success of either party. The court must be satisfied the claim ‘is not frivolous or vexatious; in other words, that there is a serious question to be tried’. Where there was any doubt about damages being adequate compensation for the grant or withholding of an injunction, the court should preserve the status quo. The judge’s assessment of that balance of convenience was not to be disturbed. Lord Diplock said of the phrase ‘prima facie case’ that it ‘may in some contexts be an elusive concept’ and ‘the governing principle is that the court should first consider whether, if the plaintiff were to succeed at trial in establishing his right to a permanent injunction, he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the defendant’s continuing to do what was sought to be enjoined between the time of the application and the time of the trial. If damages in the measure recoverable would be [an] adequate remedy and the defendant would be in a financial position to pay them, no interim injunction should normally be granted, however strong the plaintiff’s claim appeared to be at that stage.’ Jurisdiction: England and Wales This case cites: Cited – Donmar Productions Ltd -v Bart (Note) (https://swarb.co.uk/donmar-productions-ltd-vbart-note-1967/) ([1967] 1 WLR 740, [1967] 2 All ER 338) .. Cited – Harman Pictures N V v Osborne (https://swarb.co.uk/harman-pictures-n-v-v-osborne-chd1967/) ChD ([1967] 2 All ER 324, [1967] 1 WLR 723) The plaintiffs asserted ownership in the copyright in a reproduction in a film of the book ‘The Reason Why’. There had been abortive discussions about the purchase of rights. The defendants intended to proceed with another production. They claimed a . . Cited – Hubbard v Vosper (https://swarb.co.uk/hubbard-v-vosper-ca-1971/) CA ([1972] 2 WLR 389, [1971] 1 All ER 1023 CA, [1972] 2 QB 84) Claims of infringement were made as to copyright works being various works about Scientology. Extracts had appeared in the defendant’s book which was critical of the cult. It was submitted by the plaintiff that the fair dealing section applied only . . Cited – Jones v Pacaya Rubber and Produce Co Ltd (https://swarb.co.uk/jones-v-pacaya-rubberand-produce-co-ltd-ca-1911/) CA ([1911] 1 KB 455) The court considered the standard of proof when considering an application for an interim injunction. There was a need to show that there is ‘certainly a case to be tried.’ . .

https://swarb.co.uk/american-cyanamid-co-v-ethicon-ltd-hl-5-feb-1975/

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American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975 - swarb.co.uk

Cited – Preston v Luck (https://swarb.co.uk/preston-v-luck-ca-1884/) CA ((1884) 27 ChD 497 CA) The court referred to the need to show ‘a probability that the plaintiff is entitled to relief’ . . Cited – Smith v Grigg Ltd (https://swarb.co.uk/smith-v-grigg-ltd-ca-1924/) CA ([1924] 1 KB 655 CA, 93 LJKB 237, 130 LT 697, 41 RPC 149, 68 SJ 561, 40 TLR 248) The plaintiff sought an interlocutory injunction to restrain infringement of a registered design. Held: Where the design was of recent origin, had not been established by a court of law, and where its validity could be doubted, the court would . . Cited – Wakefield v Duke of Buccleugh (https://swarb.co.uk/wakefield-v-duke-of-buccleugh-1865/) ((1865) 12 LT 628) The practice of taking undertakings from a party at an interlocutory hearing: ‘aided the court in doing that which was its great object, viz. abstaining from expressing any opinion upon the merits of the case until the hearing.’ . . (This list may be incomplete) This case is cited by: Cited – Imutran Ltd v Uncaged Campaigns Ltd and Another (https://swarb.co.uk/imutran-ltd-vuncaged-campaigns-ltd-and-another-chd-11-jan-2001/) ChD (Times 30-Jan-01, Gazette 05-Apr01, Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2001/31.html), [2001] EWHC Ch 31, [2001] 2 All ER 385, [2002] FSR 2, [2001] HRLR 31, [2001] EMLR 21, [2001] CP Rep 28, [2001] ECDR 16) The test for whether an interim injunction should be granted restraining publication of material claimed to be confidential, where such a grant would infringe the right to freedom of expression was slightly different under the 1998 Act. The . . Cited – Cream Holdings Limited and others v Banerjee and The Liverpool Daily Post and Echo Limited (https://swarb.co.uk/cream-holdings-limited-and-others-v-banerjee-and-the-liverpooldaily-post-and-echo-limited-ca-13-feb-2003/) CA (Bailii (https://www.bailii.org/ew/cases/EWCA/Civ/2003/103.html), [2003] EWCA Civ 103, Gazette 17-Apr03, [2003] Ch 650, [2003] 3 WLR 999, [2003] 2 All ER 318, [2003] EMLR 16, [2003] HRLR 18) The defendants considered publication of alleged financial irregularities by the claimant, who sought to restrain publication. The defendants argued that under the Act, prior restraint should not be used unless a later court would be likely to . . Cited – Belize Alliance of Conservation Non-Governmental Organisations v Department of the Environment and Another (No 2) (https://swarb.co.uk/belize-alliance-of-conservation-nongovernmental-organisations-v-department-of-the-environment-and-another-no-2-pc-13-aug2003/) PC (Bailii (https://www.bailii.org/uk/cases/UKPC/2003/63.html), [2003] UKPC 63, Times 25Sep-03, PC (http://www.privy-council.org.uk/files/other/belize-adv.rtf), PC (http://www.privycouncil.org.uk/files/other/belize.rtf), Gazette 16-Oct-03) (Belize) The applicants sought an interim order preventing continuation of the building of a dam, saying that the environmental damage had not been properly aanticipated. Held: The Board of the Council did have power to grant an interim . . Cited – Cream Holdings Limited and others v Banerjee and others (https://swarb.co.uk/creamholdings-limited-and-others-v-banerjee-and-others-hl-14-oct-2004/) HL (House of Lords (http://www.publications.parliament.uk/pa/ld200304/ldjudgmt/jd041014/jee-1.htm), Bailii (https://www.bailii.org/uk/cases/UKHL/2004/44.html), [2004] UKHL 44, [2004] 3 WLR 918, [2005] 1 AC 253, [2004] 4 All ER 617, 17 BHRC 464, [2004] UKHRR 1071, [2004] HRLR 39, [2005] EMLR 1) On her dismissal from the claimant company, Ms Banerjee took confidential papers revealing misconduct to the local newspaper, which published some. The claimant sought an injunction to prevent any further publication. The defendants argued that the . . Cited – Herbage v Pressdram Ltd (https://swarb.co.uk/herbage-v-pressdram-ltd-ca-1984/) CA ([1984] 1 WLR 1160) The court restated the principle in Bonnard -v- Perryman, ‘These principles have evolved because of the value the court has placed on freedom of speech and I think also on the freedom of the press, when balancing it against the reputation of a . . https://swarb.co.uk/american-cyanamid-co-v-ethicon-ltd-hl-5-feb-1975/

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American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975 - swarb.co.uk

Cited – Herbage v Times Newspapers Ltd (https://swarb.co.uk/herbage-v-times-newspapers-ltdca-30-apr-1981/) CA (Times 30-Apr-81) The principles in American Cyanamid did not affect the rule in Bonnard v Perryman. Sir Denys Buckley saiod: ‘the question what meaning the words complained of bore was primarily one for the jury. Suppose the words bore the second meaning alleged and . . Cited – University of Oxford and others v Broughton and others (https://swarb.co.uk/university-ofoxford-and-others-v-broughton-and-others-qbd-10-nov-2004/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2004/2543.html), [2004] EWHC 2543 (QB)) The claimants sought injunctions to protect themselves against the activities of animal rights protesters, including an order preventing them coming with a wide area around the village. Held: The orders made were justified with the additional . . Cited – Hall and others v Save Newchurch Guinea Pigs (Campaign) and others (https://swarb.co.uk/hall-and-others-v-save-newchurch-guinea-pigs-campaign-and-others-qbd17-mar-2005/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2005/372.html), [2005] EWHC 372 (QB), Times 07-Apr-05) The claimants ran a guinea pig farm. They and their neighbours applied for injunctions and an exclusion zone to keep away the defendants who campaigned against the breeding of animals for research. Held: The claimants had been subjected to a . . Cited – Jewellery Appraisal Services v Belson and others (https://swarb.co.uk/jewellery-appraisalservices-v-belson-and-others-qbd-11-apr-2005/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2005/758.html), [2005] EWHC 758 (QB)) The defendants had sold a business and included a non-compete covenant. The claimants sought to enforce it against them. It was said that they had approached insurers with a view to commencing business supplying jewelry. The defendants said their . . Considered – Regina v Secretary of State for Transport, ex parte Factortame (No 2) (https://swarb.co.uk/regina-v-secretary-of-state-for-transport-ex-parte-factortame-no-2-hl-11-oct1990/) HL ([1991] 1 AC 603, Bailii (https://www.bailii.org/uk/cases/UKHL/1990/13.html), [1990] UKHL 13, [1990] 3 CMLR 375, [1991] 1 All ER 70, (1991) 3 Admin LR 333, [1990] 3 WLR 818, [1991] 1 Lloyd’s Rep 10) The validity of certain United Kingdom legislation was challenged on the basis that it contravened provisions of the EEC Treaty by depriving the applicants of their Community rights to fish in European waters, and an interlocutory injunction was . . Cited – International Transport Workers’ Federation and Another v Viking Line Abp and Another (https://swarb.co.uk/international-transport-workers-federation-and-another-v-viking-line-abp-andanother-ca-3-nov-2005/) CA (Bailii (https://www.bailii.org/ew/cases/EWCA/Civ/2005/1299.html), [2005] EWCA Civ 1299) An order had been made restraining the defendant trades unions from taking industrial action. The unions said the UK court had no jurisdiction. Held: ‘It is at first sight surprising that the English Commercial Court should be the forum in . . Cited – NWL Ltd v Woods (https://swarb.co.uk/nwl-ltd-v-woods-hl-1979/) HL ([1979] 1 WLR 1294, [1979] ICR 867, [1979] 3 All ER 614) The phrase ‘trade dispute’ was defined by reference to (i) the parties to it and (ii) the subject matter. Lord Scarman referred to the legislative history of attempts to regulate strike actions by trades unions: ‘It is wrong to attempt to construe . . Cited – Adidas-Salomon Ag v Drape and others (https://swarb.co.uk/adidas-salomon-ag-v-drapeand-others-chd-7-jun-2006/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2006/1318.html), [2006] EWHC 1318 (Ch)) The claimants had sponsored tennis players to wear their logo. The respondents organised tennis tournaments whose intended rules would prevent the display of the claimant’s logos. The claimants said that the restriction interfered with their rights . .

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American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975 - swarb.co.uk

Cited – Garden Cottage Foods Ltd v Milk Marketing Board (https://swarb.co.uk/garden-cottagefoods-ltd-v-milk-marketing-board-hl-1984/) HL ([1984] AC 130) In English law a breach of statutory duty, is actionable as such by a private individual to whom loss or damage is caused by a breach of that duty. Lord Diplock said that it was quite unarguable: ‘that if such a contravention of Article 86 gives . . Cited – Smithkline Beecham Plc Glaxosmithkline UK Ltd and Another v Apotex Europe Ltd and others (No 2) (https://swarb.co.uk/smithkline-beecham-plc-glaxosmithkline-uk-ltd-and-another-vapotex-europe-ltd-and-others-no-2-ca-23-may-2006/) CA (Bailii (https://www.bailii.org/ew/cases/EWCA/Civ/2006/658.html), [2006] EWCA Civ 658, Times 09-Jun06, Gazette 08-Jun-06, [2006] 3 WLR 1146, [2007] Ch 71) The parties to the action had given cross undertakings to support the grant of an interim injunction. A third party subsequently applied to be joined, and now sought to take advantage of the cross undertakings to claim the losses incurred through . . Cited – Fiona Trust Holding Corp and others v Privalov and others (https://swarb.co.uk/fiona-trustholding-corp-and-others-v-privalov-and-others-comc-21-may-2007/) ComC (Bailii (https://www.bailii.org/ew/cases/EWHC/Comm/2007/1217.html), [2007] EWHC 1217 (Comm)) Allegations were made of different varieties of fraud. Applications were made for freezing orders. . . Cited – Boehringer Ingelheim Ltd and others v Vetplus Ltd (https://swarb.co.uk/boehringeringelheim-ltd-and-others-v-vetplus-ltd-ca-20-jun-2007/) CA (Bailii (https://www.bailii.org/ew/cases/EWCA/Civ/2007/584.html), [2007] EWCA Civ 584, Times 27-Jun07) The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . . Cited – Jacobs v Official Receiver; In re Jacobs (a bankrupt) (https://swarb.co.uk/jacobs-v-officialreceiver-in-re-jacobs-a-bankrupt-chd-3-apr-1998/) ChD (Times 16-Jun-98, [1999] 1 WLR 619) The bankrupt was due to have his automatic discharge, but the Official Receiver applied on the day before for the discharge for an interim suspension of the discharge to allow consideration of his alleged lack of co-operation. The bankrupt said the . . Cited – Intercall Conferencing Services Ltd v Steer (https://swarb.co.uk/intercall-conferencingservices-ltd-v-steer-qbd-15-mar-2007/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2007/519.html), [2007] EWHC 519 (QB)) The claimant company sought an interim injunction to prevent the defendant, a former employee, from working for a competitor in breach of a clause in his contract and from divulging any confidential information. The defendant said that the . . Cited – Les Laboratoires Servier and Another v Apotex Inc and others (https://swarb.co.uk/leslaboratoires-servier-and-another-v-apotex-inc-and-others-chd-9-oct-2008/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2008/2347.html), [2008] EWHC 2347 (Ch), [2009] FSR 3) The claimant had alleged that the defendant was producing generic drugs which infringed its rights in a new drug. The patentee had given a cross-undertaking in damages, but the patent was later ruled invalid. The court had to assess the damages to . . Cited – New ISG Ltd v Vernon and others (https://swarb.co.uk/new-isg-ltd-v-vernon-and-otherschd-14-nov-2007/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2007/2665.html), [2007] EWHC 2665 (Ch)) The claimant sought to continue an interim injunction obtained without notice. The claimant sought to restrain former employees misusing information it claimed they had taken with them. The claimants said that having objected to a transfer of their . . Cited – National Commercial Bank Jamaica Ltd v Olint Corp Ltd (Jamaica) (https://swarb.co.uk/national-commercial-bank-jamaica-ltd-v-olint-corp-ltd-jamaica-pc-28-apr2009/) PC (Bailii (https://www.bailii.org/uk/cases/UKPC/2009/16.html), [2009] UKPC 16, Times 06May-09, [2009] 1 WLR 1405) https://swarb.co.uk/american-cyanamid-co-v-ethicon-ltd-hl-5-feb-1975/

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American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975 - swarb.co.uk

Jamaica – The customer appealed against refusal of an order requiring its bank not to close the customer accounts after the customer had been accused of fraud. There was no evidence that the account was being used unlawfully. Held: In the . . Cited – Faisaltex Ltd and Others v Lancashire Constabulary and Another (https://swarb.co.uk/faisaltex-ltd-and-others-v-lancashire-constabulary-and-another-qbd-24-jul2009/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2009/1884.html), [2009] EWHC 1884 (QB)) The claimants wished to claim damages saying that in executing a search warrant, the defendant had made excessive seizures of material. The claimants sought inspection by independent counsel of the materials seized to establish this in a manner . . Cited – Dass Solicitors v Southcott (https://swarb.co.uk/dass-solicitors-v-southcott-chd-2-apr2009/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2009/B20.html), [2009] EWHC B20 (2009)) The claimant solicitors said that the defendant employed solicitor had sought to leave without giving the required three months’ notice and had sought to persuade clients of the firm to go to his new practice. Application was made on a without . . Cited – Associated Foreign Exchange Ltd v International Foreign Exchange (UK) Ltd and Another (https://swarb.co.uk/associated-foreign-exchange-ltd-v-international-foreign-exchange-uk-ltd-andanother-chd-26-may-2010/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2010/1178.html), [2010] EWHC 1178 (Ch), [2010] IRLR 964) The claimant sought interim injunctions to enforce a restrictive covenant against solicitation of customers in a former employee’s contract. The employee, a FOREX dealer, had been placed on garden leave for three months and then his contract . . Cited – British Broadcasting Corporation v Harpercollins Publishers Ltd and Another (https://swarb.co.uk/british-broadcasting-corporation-v-harpercollins-publishers-ltd-and-anotherchd-4-oct-2010/) ChD (Bailii (https://www.bailii.org/ew/cases/EWHC/Ch/2010/2424.html), [2010] EWHC 2424 (Ch), HC10C02684, [2011] EMLR 6) The claimant sought an injunction and damages to prevent the defendant publishing a book identifying himself as ‘the Stig’ saying that this broke his undertaking of confidentialty as to his identity, a necessary part of the character in the TV . . Cited – Smith v Inner London Education Authority (https://swarb.co.uk/smith-v-inner-londoneducation-authority-ca-1978/) CA ([1978] 1 All ER 411) Lord Denning MR doubted the applicability of the criteria in American Cyanamid to public law proceedings. It is appropriate at the interface of public law and private law for the public interest to be taken into account as one of the factors in the . . Cited – Coventry City Council v PGO and Others (https://swarb.co.uk/coventry-city-council-v-pgoand-others-ca-22-jun-2011/) CA (Bailii (https://www.bailii.org/ew/cases/EWCA/Civ/2011/729.html), [2011] EWCA Civ 729) The children had been placed with short term fosterers. On adopters being found, the fosterers themselves applied to adopt the children. The court was asked whether a county court judge had power to injunct the authority not to remove the children . . Cited – Caterpillar Logistics Services (UK) Ltd v Huesca De Crean (https://swarb.co.uk/caterpillarlogistics-services-uk-ltd-v-huesca-de-crean-qbd-2-dec-2011/) QBD (Bailii (https://www.bailii.org/ew/cases/EWHC/QB/2011/3154.html), [2011] EWHC 3154 (QB)) The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other . . Cited – Revenue and Customs v Rochdale Drinks Distributors Ltd (https://swarb.co.uk/revenueand-customs-v-rochdale-drinks-distributors-ltd-ca-13-oct-2011/) CA ([2011] ...