An interesting and potentially important corollary to the recent judgment of the Court of Appeal in the case between  Samsung and Apple ([2012] EWCA Civ 1339) was the development of a new form of order requiring the publication by the losing party (in this case Apple) of a summary of the judgment.   Such publication orders, if developed, could have obvious and significant application in defamation and other actions to assist in the vindication of a party.

In the Samsung case, the Court of Appeal dismissed Apple’s appeal against the earlier judgment in July of HHJ Birss QC in the Patents Court, which had ruled that Samsung had not infringed Apple’s registered design rights in the iPad by its Galaxy tablet computers.

In July, in a separate judgment, HHJ Birss QC ordered that Apple go to significant trouble to publicise the fact that the designs between their respective products are different in “a font size no smaller than Arial 14pt… on a page earlier than page 6 in the Financial Times, the Daily Mail, The Guardian, Mobile Magazine and T3 Magazine“.  He also ordered Apple to post a notice prominently on the homepage of its UK website to last for six months, together with a link to the full judgment.   Apple had appealed this order as well as the determination on infringement.

Publication orders

Orders of this type are a relatively new development in this jurisdiction. Article 15 of the IP Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights) expressly provides for such a remedy to be granted in favour of successful claimants in the following terms.

Member States shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part. Member States may provide for other additional publicity measures which are appropriate to the particular circumstances, including prominent advertising.

However, no similar specific statutory provision – whether under the Directive or otherwise – exists to grant a remedy in favour of a defendant which has successfully defended a claim for infringement.

In making the order against Apple, HHJ Birss QC relied instead upon the general jurisdiction of section 37(1) of the Senior Courts Act 1981 to “grant an injunction … in all cases in which it appears to the court to be just and convenient to do so.”   The Judge thought this could extend to a publicity order and that such an order should be made.

In light of the new material before the court relating to the order, Court of Appeal considered question of the publicity order de novo.   It agreed that section 37 provided jurisdiction for such an order.  Sir Robin Jacob (who retired from the Court of Appeal last year but was making one of his occasional reappearances) in giving the leading judgment noted Lord Nicholls in Mercedes Benz v Leiduck [1996] AC 284, p.308:

“The court may grant an injunction against a party properly before it where this is required to avoid injustice […] The court habitually grants injunctions in respect of certain types of conduct. But that does not mean that the situations in which injunctions may be granted are now set in stone for all time…”

Moreover, the Court considered that in the circumstances of the case, a publicity order should be made although it reduced the duration for which it had to appear on Apple’s website to a single month.  Sir Robin stated in respect of the order:

“The grant of such an order is not to punish the party concerned for its behaviour. Nor is it to make it grovel – simply to lose face. The test is whether there is a need to dispel commercial uncertainty…  The acknowledgement must come from the horse’s mouth. Nothing short of that will be sure to do the job completely.”

Sir Robin also made it clear that any publicity order should be no “more than that which is proportionate“.

The application of publicity orders

Although the grant of the publicity order in this case was in the context of IP rights and in the shadow of the express power conferred under the IP Enforcement Directive, the source of the jurisdiction, section 37, is equally applicable to all types of litigation.  The question thus arises whether such publicity orders could be awarded in other types of litigation.  One particularly obvious candidate would be in defamation actions, the essential purpose of which is vindication from false accusations.

A limited power to grant what amounts to publicity orders in respect of defamation cases has existed for some time under the summary disposal procedure.  Under section 9(1)(b) of the Defamation Act 1996, where a claimant has been successful under the procedure (that is in clear cut cases) and where agreement cannot be reached on the form of an apology, the Court has the ultimate power to order the defendant to publish of a summary of the Court’s judgment.  However, this statutory power is not available for final judgment and has been rarely used.

The Samsung judgment therefore provides the basis for a potentially much broader use of publicity orders.

It seems that the Court intended a two-fold test for the grant of such orders.  Firstly that there be a “need to dispel commercial uncertainty“.  Secondly, that the order be proportionate. 

Some – but by no means all – defamation cases to relate to commercial reputation.   On the basis of the Court of Appeal judgment, where a libel has created commercial uncertainty, there would appear to be strong grounds in the right case for the Court to consider granting of a suitable publicity order requiring the defendant to publish a clarification.  In respect of those that do not relate to commercial matters, there seems no obvious reason why the Courts would not seek to extend the ambit of publicity orders to cover personal as well as commercial reputation, particularly given the increasing judicial understanding of personal reputation to be comprised in the right of privacy under Article 8 of the European Convention on Human Rights and so worthy of particularly protection and remedy.

In terms of whether a publicity order would be proportionate, it should be noted that in Samsung, the Patents Court and the Court of Appeal were both prepared to grant such an order despite the fact that there was no doubt that Samsung certainly had the resources to publicise the result of the judgment itself.  Sir Robin stated firmly:

Apple itself must (having created the confusion) make the position clear: that it acknowledges that the court has decided that these Samsung products do not infringe its registered design. The acknowledgement must come from the horse’s mouth. Nothing short of that will be sure to do the job completely.

Moreover the extensiveness of the publication required by the order was remarkable, prominently in three national newspapers and on Apple’s own website.  It is true that the circumstances were unusual with very substantial media coverage of the injunction obtained by Apple in Germany which Samsung claimed had led to drop in market share for it from 10% to 1%.  Nevertheless, in a defamation case for example against a media organisation where the claimant may not have the resources that Samsung has, it would seem difficult to argue on this analysis that the grant of a publicity order requiring a summary of the judgment to appear in the organisation’s own publication would be disproportionate.

Of course, defamation cases are often settled on the basis of the publication of any apology and/or clarification, voluntarily agreed by the defendant.  However, previously it was not understood that there was any general power on the part of the Court to require this against a reluctant party.  Whilst it remains to be seen where the courts would draw this line in the context of defamation proceedings, it is not difficult to envisage a scenario where the Courts would readily grant publicity orders.

And publicity orders could be a useful remedy in other media cases, for example where false allegations are made in the context of litigation.  In the Ryan Giggs privacy case, Imogen Thomas was wrongly labelled a blackmailer.  It would be quite plausible to imagine in future a litigant wrongly accused in such a way seeking redress by way of a publicity order.

So the Court of Appeal may have invented a powerful new remedy for media lawyers.  If the media judges adopt these types of orders and adapt them for the purposes of media cases, there may be a useful new remedy for media claimants and a further burden for media defendants.

Dan Tench is a partner and Jack Gilbert an associate in the Olswang Commercial Litigation team, specialising in media and commercial dispute resolution.