Intellectual property (IP) assets, whether in the forms of patents, designs, trade marks, copyright or trade secrets are very valuable assets. It is important that IP owners take steps to protect and enforce their rights against copycat competitors, to maintain the value and competitiveness of their IP. A key court order which IP owners apply for is an interdict (Scottish equivalent to an injunction) to prevent, possibly on an immediate basis, any further infringement.
If an interdict is granted but the infringer continues to infringe the IP, it is possible for the IP owner to raise a court action for breach of interdict. There is a criminal element to breaching an interdict as disobeying a court order amounts to contempt of court. A finding of breach of interdict leads to criminal punishment, most usually a fine or, more rarely, a period of imprisonment. The appropriate sentence is a matter for the judge. However, where valuable IP rights are continuing to be infringed, it is easy to understand why an IP owner might want to offer a view on the appropriate sentence.
Sky v McGregor Clachar (2018)
The recent case of Sky Plc v McGregor Clachar is an example of the Scottish court's approach to sentencing for breach of interdict. The case was brought by Sky Plc against Mr McGregor Clachar due to his continuing infringement of their copyright in televised football matches in his pub. Sky had previously obtained an interdict against Mr McGregor Clachar which he had breached.
The judge decided to sentence Mr McGregor Clachar to 14 days in prison for the breach. However, the judge's comment on Sky's submissions on sentencing is particularly interesting and should be considered by IP owners and their advisors. The judge made clear that sentencing is a matter for the court and the rights holder should not try to convince the Court to impose a particular sentence.
The judge stated in his sentencing remarks available here that
"Sky has strongly urged me to send you to prison... I wish to make absolutely clear that the penalty to be imposed on you is a matter for me and not for Sky. You are not being punished for the showing of Sky football matches in a pub. You are being punished for breach of a court order."
Why imprisonment?
The facts of this case serve as a reminder that it can be difficult to convince a judge to send an infringer to prison for breach of interdict. In this case, the infringer had disregarded multiple court orders and had failed to pay a fine ordered in respect of a previous breach of interdict. He had also been shown leniency by the judge on previous occasions and was reminded that any repetition would be met with more serious punishment. Interestingly Mr McGregor Clachar did explain to the court that he was no longer in the pub industry but the court did not give that point any weight. In the circumstances, the judge decided that there was no alternative but to send him to prison.
In Scotland the court would usually impose a fine for a breach of interdict. This can be contrasted with the English courts who are more readily prepared to imprison those who have breached an interdict. The judgement is a welcome reminder that Scottish Courts are also prepared to imprison an infringer if the circumstances merit it.
This is an important decision for Sky as they can use it to send a clear message to the pub industry that they take infringement of their copyright seriously and will take steps to ensure that an interdict granted by the court is adhered to.
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