Assessment – Detailed assessment – Conduct of parties

Wilkinson v London Strategic Health Authority: Patents County Court (Judge Birss QC): 23 November 2012

The proceedings originated from the claimant's claim for infringement by the defendant of the copyright in the claimant's established works, which consisted of training material for nurses (see [2012] All ER (D) 165 (Nov)). The claim alleging copyright infringement failed. The claimant succeeded on a second claim, seeking a declaration that the claimant owned the copyright in the established works, and an appropriate declaration was made. Prior to the case coming to court, attempts had been made to settle the claim through without prejudice correspondence.

The relief granted by the court included orders that each side had wanted, despite resistance from the other. The parties were unable to decide who had won overall, and, following the giving of the judgment, further submissions were made as to the issue of costs.

The issue for consideration was what the appropriate order for costs would be: in particular, the impact of the without prejudice correspondence between the parties on the costs. During that correspondence, the defendant had made an offer to settle. The claimant had also made an offer to settle, which was very much higher than that of the defendant and would have entailed the spending of several million pounds.

The court ruled: Based on a consideration of the open conduct of the proceedings and the trial, it would be unreal simply to pick a winner in the case and try to declare one party the winner and the other the loser. Both sides had achieved a measure of success and the relief had granted included orders that each side had wanted against resistance from the other. Simply considering the relative importance of the successes achieved by both sides, the defendant's success was of much more weight than the claimant's, but when the issues dealt with during the proceedings on which costs had been incurred were considered, the balance shifted the other way.

Absent the without prejudice correspondence, the defendant would pay 35% of the defendant's costs, and the defendant would pay 55% of the claimant's costs. With regard to the correspondence, the action had been taken all the way to a full trial and it had not been a case in which a separate order relating to costs incurred pre-action would be justified. It would be wrong to adjust the order in a manner more favourable to the claimant as a result of the correspondence, but it would be wrong not to make an adjustment in favour of the defendant as a result of the correspondence.

However, although the defendant had made a sensible offer of settlement, that did not entitle it to litigate unreasonably or absolve it from the costs consequences of fighting and losing certain issues. A fair reflection of the impact of the without prejudice correspondence would be to adjust the costs order by depriving the claimant of half of her costs but not increasing the sum to be paid to the defendant in relation to its costs (see [24], [27], [49], [50] of the judgment).

The defendant would pay 27.5% of the claimant's costs of the proceedings and the claimant would pay 35% of the defendant's costs (see [50] of the judgment). Omnipharm Ltd v Merial [2012] All ER (D) 21 (Jan) considered; MMI Research Ltd v Cellxion Ltd [2012] All ER (D) 181 (Jan) considered.

George Hamer (instructed by Hewlett Swanson LLP) for the claimant. Jacqueline Reid (instructed by Capsticks Solicitors LLP) for the defendant.