We recently reported the judgment of the High Court of England and Wales that Ed Sheeran did not infringe copyright relating to the song “Oh Why”, by Sami Chokri. Our legal analysis on that decision can be found here.

The High Court has now ordered costs, refusing the Defendant’s application to depart from the general rules.

Summary

Following the successful decision, Sheeran et al (‘the Claimants’) sought an order for costs against Sami Chokri, his co-writer Ross O’Donoghue and Artists and Company Limited (‘the Defendants’), on a standard basis – i.e., costs which were reasonable, necessary and proportionate to the matters in issue.[1] The Defendants contended that the Claimants should pay its own costs, due to their conduct in these proceedings[2].

General principles

The general rule in the UK is that the unsuccessful party pays the costs of the successful party.[3]

This general rule can be departed from, if a party fails to comply with the “Overriding Objective”[4], which in essence, is the governing principle behind court rules – namely, to deal with cases justly and at a proportionate cost. Some of the factors considered are:

• an equal footing for the parties;
• the amount of money involved;
• the importance of the case;
• the complexity of the issues; and
• ensuring the case is dealt with expeditiously and fairly.

The facts

The Defendants sought to rely on this departure from the general rule and alleged that the Claimants acted in a way which should mean they are deprived of all of their costs because of its conduct (both before and during the proceedings). Specifically, the Defendants alleged, inter alia, that the Claimants:

• failed to engage in pre-action correspondence;
• failed to disclose documents (primarily voice notes and project files) in relation to how Shape of You was written;
• demonstrated “awkwardness and opacity” resulting in the Defendants believing that the copyright infringement had occurred; and
• that Ed Sheeran specifically did not provide an adequate response to failings in disclosure, regarding how Shape of You was written.

Judgment

The Judge was not persuaded and rejected all of the Defendants allegations, noting.

• That the Claimants “had done as much, if not more, than the defendants, who were asserting infringement” (paragraph 11 of the judgment) on the issue of pre-action conduct. The Practice Direction – Pre-Action Conduct and Protocols[5] states that parties should provide each other with sufficient information so that they can understand each other’s position and make decisions on how to proceed.
• Sheeran et al complied with the Pre Action Protocol, immediately responding to the claim made against them and making efforts to supply the Defendants with two expert musicologists’  reports (one of which, directly responded to an expert report of the Defendants), prior to the commencement of proceedings.
• The allegation on failure to disclose key documents came from Sheeran making comments on a BBC programme “Newsnight”, saying he now films his recording sessions to prove he does not infringe copyright belonging to other artists. In this case, Sheeran was working for the first time with a well-established but new music producer “so it was hardly likely that Mr Sheeran would insist on filing their writing sessions” (paragraph 21 of the judgment).

In any event, the Judge held that Sheeran’s media comments do not warrant an obligation “to go this far”.

• The Defendants alleged that the Claimants’ evidence on how Shape of You came to be written was “dragged out” of them (paragraph 32 of the judgment). This was not accepted by the Judge and the Claimants had provided the necessary information which was otherwise included in its witness evidence.

Conclusion

In light of the above, the Judge ordered that the Defendants make an interim payment (an immediate part payment) of £916,200. The Judge stated:

“I consider it is appropriate that the claimants’ success is reflected in an order that their costs are paid by the defendants, without reduction save for that which is made as part of the process of detailed assessment.” (paragraph 37 of the judgment)

This essentially means that the remainder of the costs will be dealt with by detailed assessment – watch this space.

Comment

The case serves as a reminder that it is generally challenging to overturn the general rule in litigation, unless it is clear that a party has acted in a way which departs from the Overriding Objective.

It also illustrates costs risks in the High Court, particularly in complex copyright cases, with the financial caps of the IPEC still proving a very popular forum in most IP cases.

Read the decision here: Sheeran & Ors v Chokri & Ors [2022] EWHC 1528 (Ch) (21 June 2022) (bailii.org)

[1] See CPR rule 44.3(2) – https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part-44-general-rules-about-costs#rule44.3

[2] https://www.bailii.org/ew/cases/EWHC/Ch/2022/1528.html

[3] See CPR rule 44.2(2)(a) – https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part-44-general-rules-about-costs#rule44.2

[4] https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part01

[5] https://www.justice.gov.uk/courts/procedure-rules/civil/rules/pd_pre-action_conduct