English judge rejects passing off claim in dispute between half-brothers who formed Jamaican sound system

By Mitchell Skilling

Ian Thomas, who performed under the name “Luv Injection” alongside his half-brother Winston Thomas, argued that his half-brother was attempting to pass off his group as connected to their original group through use of the name as well as elements of their performances alluding to the original group members.

The case was heard by Deputy High Court Judge Nicholas Caddick QC. Aaron Wood appeared for the claimant and Michael Hicks for the defendant.

Personal goodwill

The parties, alongside other group members, formed Luv Injection in 1986. The claimant acted as the group’s mic-man while the defendant was more involved on the managerial side but occasionally performed in front-of-house roles. The group broke up after the half-brothers fell out at an event in Oxford in 2016 and never performed together again.

After the split, the defendant formed a new group and played with them under the name Luv Injection starting from October 2016. He successfully filed an application to register “Luv Injection” as a trade mark in February 2017. The claimant also started to perform under that name with a new group, which included some of the other members of the original group, starting in August 2017.

On 21 October 2019, the claimant initiated passing off proceedings. In earlier proceedings, it was determined by the Court of Appeal that the defendant was entitled to rely on alternative defences to the claim to personal goodwill, including an argument that, as the goodwill for the name was a partnership asset owned by the members of the original Luv Injection as a whole, only the partners as a whole could sue him for passing off.

It was the claimant’s position that the goodwill of the partnership had now passed entirely to his new group, which contained the majority of the founder members and all of the musical members. Additionally, the defendant had been using customised lyrics or “dub plates” toasting Luv Injection that referred to the claimant and other founding group members in his performances with his new group, which constituted passing off.

Some form of transfer

In his judgment, Deputy Judge Caddick said of the use of the Luv Injection name: “The evidence shows that, after the split, Luv Injection 3 (Winston’s new group) was the first group to start performing using the Luv Injection name. As a result, it was vulnerable to being sued by the partners of Luv Injection 1. However, it was not vulnerable to being sued by the partners of Luv Injection 2 (Ian’s new group) for the simple reason that Luv Injection 2 was not then in existence.”

He continued: “Where property is owned by someone, another person cannot generally acquire title to that property simply by appropriating it. Generally, there would have to be some form of transfer by the owner to that other person either by way of an agreement or by operation of law. The position is no different where the property is goodwill and where the owner is a partnership and the other person is one of the partners.”

On whether the defendant had abandoned any interest he had in the name, the judge said: “In the present case, Winston had continued using the name after the split and without any break. Indeed, before the Court of Appeal handed down its judgment, it was Winston’s case that he was the sole owner of the name. He may have been wrong in that, but it makes it difficult to argue that he intended to abandon such rights as he did have in the name. I was not taken to any evidence that Winston had ever said or done anything to suggest that he intended such an abandonment.”

Finally, addressing whether the use of the dub plates constituted passing off, Deputy Judge Caddick concluded: “In these circumstances, I am unable to make a finding that there has been any act of passing off or that there is a threat of passing off and I reject Ian’s passing off claim insofar as it is based on the use of dub plates recorded before the split. I should note that I make no findings as to the ownership of the various dub plates. As Mr Wood submitted, the issue of ownership of the dub plates is largely irrelevant to the passing off issue before me, although it is likely to arise in relation to Winston’s counterclaim.”

The claimant’s claim was therefore dismissed. A counterclaim by the defendant ordering the original Luv Injection partnership be wound up was adjourned to allow the parties to propose directions for its future resolution.

Sturgeon: Human rights laws an impediment to banning abortion protests

Ms Sturgeon said progress was being stalled on introducing a 150m buffer zone outside clinics to keep keep anti-abortion campaigners away from women using their services.

She said any law would have to comply with the European Convention on Human Rights.

“On all legislation we have to ensure that legislation is ECHR compliant and when you are, as some people would say, interfering in the right to protest there’s just a complex legal issue that we have to work our way through,” she said.

A working group has been established to consider changes to the law. Its most recent minutes detail that members “reflected that understanding the issues and perspective from all sides may still be useful”.

Ms Sturgeon said: “I think people know my views on abortion and people know my views on the right of women to control their own bodies and the right to choose.”

More than 100 people demonstrated outside Queen Elizabeth University Hospital in Glasgow last month, prompting 76 consultants at the hospital to sign a letter calling on health minister Maree Todd to “show courage” and introduce protest-free buffer zones across all clinics following a surge in anti-abortion protests.

Buffer zones are already set to be introduced in Northern Ireland, where abortion has long been a particularly contentious political issue, after MLAs voted for the Abortion Services (Safe Access Zones) Bill by 55-29 votes at the end of March.

Alice Minick: Adjudicators – off on a frolic of their own?

It is unusual these days to see a successful challenge, on the grounds of natural justice, to an adjudicator’s decision. There has to be a good reason for the courts not to grant enforcement. Most challenges fail.

However, a successful challenge has recently been reported in Scotland.

The case in question relates to the Aberdeen Harbour Expansion Project. The dredging sub-contract for the project between Van Oord UK Limited (Van Oord) and Dragados UK Limited (Dragados) was terminated on 6 March 2020. So far, there have been seven separate adjudications between the parties.

The decision of the adjudicator in adjudication six was challenged on the grounds that there had been a breach of natural justice.

The facts

Van Oord argued that it was denied access to the open quay excavation works because Dragados had delayed in carrying out piling works. Van Oord argued this was a compensation event (CEN 048) and sought an extension of time. Dragados said that Van Oord had caused the delay.

Each party had an expert. In order to assess critical delay, it was necessary to establish a baseline programme. Van Oord’s expert favoured a baseline programme dated October 2018. Dragados’s expert favoured an April 2019 programme. Using their respective baselines, each expert undertook a windows analysis of critical delay.

The adjudicator’s decision

The adjudicator did not fully accept the view of either expert. Instead, he selected a 15 March 2019 baseline programme. That programme had been considered but rejected by both experts. The adjudicator then reworked the analysis and concluded that the critical delay date for CEN 048 was 31 July 2019. This was two days earlier than the date proposed by Van Oord. In short, the adjudicator used a baseline programme that both parties had rejected and did not canvass the views of either party in relation to the critical date, nor the consequences of selecting it.

The court action

Van Oord went to the Court of Session to enforce the adjudicator’s decision. Dragados argued that the adjudicator should not have adopted the course he did without giving the parties an opportunity to comment. In particular, Dragados said that, had they been given an opportunity to respond to the adjudicator’s critical date, they would have advanced a time bar argument, which would have provided them with a complete defence. Dragados said this was a breach of natural justice.

Van Oord, on the other hand, argued that the adjudicator was entitled to adopt an intermediate position between the parties’ cases.

The law

The courts are generally reluctant to set aside an adjudicator’s decision. The need to have the “right” answer in an adjudication is subordinate to the need to have an answer quickly (Carillion Construction Ltd v. Devonport Royal Dockyard Ltd [2005] EWCA Civ 1358). However, enforcement will be refused if the adjudicator has acted contrary to the principles of natural justice.

In the Van Oord case, Lord Braid listed six key principles:

1. Each party must be given a fair opportunity to present its case (Costain Limited v. Strathclyde Builders Limited 2004 SLT 102).
2. An adjudicator can make his own investigations and inquiries, and use his own knowledge and experience, but it will normally be appropriate to canvass the views of the parties before making a decision (Costain).
3. The adjudicator should not make a finding on a factual or legal basis where it has not been argued or put before him (Roe Brickwork Ltd v. Wates Construction Ltd [2013] EWHC 3417).
4. However, an adjudicator can reach a decision based on materials put before him on a basis not put forward by the parties, provided the parties’ views have been canvassed (Roe Brickwork).
5. For a breach of natural justice to vitiate a decision, it must be a material breach, such as failing to give the parties an opportunity to comment upon a decisive point or issue. The question is whether the adjudicator has gone off on a frolic of his own (Balfour Beatty Engineering Services (HY) Ltd v. Shepherd Construction Ltd [2009] EWHC 2218).
6. However, an adjudicator can adopt an intermediate or compromised position between the parties, without giving notice (Miller Construction (UK) Ltd v. Building Design Partnership Ltd [2014] CSOH 80).

Bringing these principles together, Lord Braid decided that the acid test is: when an adjudicator has departed from the four corners of the submissions made by the parties, was it fair not to seek further submissions?

In this case, Lord Braid decided that the adjudicator had not adopted an intermediate position between the parties’ submissions. The critical date chosen by the adjudicator was not a compromise between the position put forward by each expert. It was earlier than the date put forward by Van Oord.

As such, fairness demanded that the adjudicator should have given the parties a further opportunity to address him. This would have allowed Dragados the opportunity to advance its time bar argument, which was not otherwise available on the date range submitted by the parties and their experts. In short, there was an opportunity for injustice to be done.

Lord Braid therefore decided that there had been a breach of natural justice and reduced the adjudicator’s decision.

Key takeaways

Time is short in an adjudication process. Fair play is therefore extremely important. The message for adjudicators is that, if they intend to take a different approach to the one being put forward by the parties, the safe course is for the parties to be given the opportunity to comment on it. Otherwise, the adjudicator’s decision may be unenforceable and the parties may have to incur the considerable expense of starting again.

Alice Minick is an associate at Dentons UK and Middle East LLP

Gillespie Macandrew bolsters planning team with the appointment of Sandy Telfer

He joins from law firm DLA Piper as the second partner in the firm’s planning team alongside Colin Hamilton, and brings over 20 years’ experience advising developers, landowners and public sector bodies on large, complex projects.

Mr Telfer is accredited by the Law Society of Scotland as specialist in planning law, ranked highly in both industry legal directories and is a legal associate of the Royal Town Planning Institute

Chief executive officer Robert Graham-Campbell said: “I am delighted to welcome Sandy to our partnership and at a particularly exciting time for our firm in terms of the size and complexity of the developments we are currently advising on.

“His track record is considerable and will bring further breadth to our existing planning team alongside Colin Hamilton, supporting our ambitions of growing both our planning practice and our Glasgow office where he will be primarily based.”

Partner appointments at MacRoberts

Nicole Cook is an experienced property lawyer specialising predominantly in transactional matters. Her work includes the acquisition and disposal of investment properties, vacant properties and land for development, industrial properties and shopping centres, including refinancing as well as the negotiation of commercial leases and sub-leases for both landlords and tenants and associated lease management transactions.

Mark Quinn has acted in connection with a wide range of property matters including acquisitions and disposals of commercial properties, acquisition of land for development, lease management on behalf of landlords, managing leasehold portfolios on behalf of corporate occupiers and acting for banks on finance transactions.

Neil Kennedy, managing partner, said: “Our real estate practice is one of the longest-established specialist teams in Scotland and we are delighted to have promoted two new partners from within that team. Both Nicole and Mark are talented lawyers and have grown and developed their careers at MacRoberts. We are delighted to welcome them to the partnership and I have no doubt that they will continue to make a significant contribution to the ongoing success of the real estate team and the firm.”

Two Glasgow lawyers among new DAC Beachcroft partners

Annis MacKay and Karen Railton, both in claims solutions, took up their appointments on 1 May.

The promotions are among a raft of partner and legal director appointments across DAC Beachcroft’s offices.

Ms MacKay specialises in defending high value claims on behalf of insurer clients, including fatal and life changing catastrophic injury claims such as spinal injuries, brain injury and complex psychological disorders.

Ms Railton specialises in the defence of individuals and organisations in relation to Health & Safety investigations and prosecutions and of Road Traffic prosecutions. She is head of the Criminal Motor Defence Team in Scotland.

Managing partner David Pollitt said: “Congratulations to our new partners and legal directors on their well-deserved promotions. On behalf of the entire firm, I want to wish them every continued success in their careers and thank them for their contributions to our business so far.

“Our aim is to be the place where talented people want to work, and it’s especially pleasing to note that 35 per cent of our new partners started their careers at DACB. Investing in and helping our colleagues succeed means we can better help our clients succeed. It’s all part of our culture and how we deliver bespoke solutions, one client at a time.”

Study: UK immigration rules hamper attempts to give domestic workers minimum wage

People who live and work in private households have been excluded from minimum wage regulations if they live in their employer’s family home and are treated as a member of the family, which is part of broader failings in the protection of domestic workers in labour law.

The government recently agreed to repeal the exemption, but an academic has warned domestic workers will continue to face difficulties in enforcing payment of the minimum wage if they lack permission to work. The research claims this creates a “significant obstacle” if they want to bring to wage claims.

The study, by Dr Natalie Sedacca from the University of Exeter Law School, has been published in the Industrial Law Journal. It argues that the longer hours of domestic workers and complexities in determining which hours are counted as ‘work’ leads to abusive employment relationships.

Dr Sedacca said: “The ‘family worker’ exemption and its application to domestic workers devalues domestic labour as work that is performed in the home, primarily by women, and leads to it being viewed as unskilled work or even not work at all. Although not specifically intended by Parliament, in some cases courts and tribunals have sanctioned employers’ use of the exemption to avoid the payment of minimum wage to domestic workers who are clearly not au pairs.

“It is very positive that the government finally agreed to repeal the ‘family worker exemption’ in March 2022. Yet there remains a pressing need for further reform to prevent the law reinforcing and reproducing the devaluation of domestic labour.”

The study suggests the lack of secure immigration status will also prevent domestic workers from bringing wage claims. Section 34 of the Immigration Act 2016 created an imprisonable offence of ‘illegal working’ when a person works with knowledge or reasonable cause to believe that they do not have permission to work.

Dr Sedacca added: “The current position makes claims by irregular migrants highly uncertain and difficult to bring. At the same time, domestic workers are particularly vulnerable to falling into irregular status because of the unfavourable visa, which is limited to a six-month non-renewable period based on the supposedly ‘low-skilled’ nature of domestic work and the reproductive needs of employers.

“The impact of the migration regime is to ‘produce workers with particular types of relations to employers and to labour markets. In the case of domestic work, this means producing workers who are systematically disadvantaged in enforcing their rights.”

Next steps to improve regulation of aquaculture outlined

Speaking at an industry sector conference in Aviemore, Ms Gougeon announced the formation of a consenting task group to make rapid progress on streamlining the aquaculture consenting system.

This includes making a change to the marine licence validity period for finfish and shellfish farms from six to 25 years.

Ms Gougeon said: “Aquaculture is a significant contributor to our rural economy, providing well paid jobs in some of Scotland’s most fragile communities and will play a major role in our green recovery and transition to net zero.

“It makes a significant contribution to our national economy and provides a source of tasty, nutritious food that is enjoyed at home and abroad.

“Developing world-leading legislation for aquaculture is key to developing a sector that is both environmentally and economically sustainable, operating within environmental limits and with social licence, ensuring there is a thriving marine ecosystem for future generations.

“Delivered in a way that reflects the co-operation agreement with the Scottish Green Party and our own manifesto commitments.”

A Ministerial Aquaculture Strategy Forum will deliver the recommendations made by Professor Griggs in the first stage of the aquaculture regulatory review.

The forum will advise on the development of the Scottish government’s vision for sustainable aquaculture.

The vision, set to be published by the end of the year, will have enhanced emphasis on environmental protection and community benefit at its core.

The Scottish Science Advisory Council have been asked to consider the scientific recommendations of the review to ensure changes to the sector support its sustainable development and tackle environmental challenges.

Faculty lends helping hand to mooters

The Willem C Vis International Commercial Arbitration Moot, now in its 29th year, featured over 300 teams from around the world. The competition, which is normally staged in person in Vienna in the week before Easter, took place online this year and is aimed at fostering the study of international commercial law and arbitration. It is named after Willem Cornelius Vis, a Dutch expert in international commercial law and dispute settlement who worked with UNCITRAL (the United Nations Commission on International Trade Law) and at Pace University, New York.

The University of Edinburgh team was composed of five LLM students and supported by Dr Ana-Maria Daza Vargas, a lecturer in international law. The team was one of three from Scotland that participated in the event this year, alongside teams from the University of Glasgow and Robert Gordon University.

Advocate Fergus Whyte acted as lead coach having previously coached the team. Devils Jordanna Blockley, Tom Mulhall, Emma Boffey and Jonathan Deans also acted as coaches for the team to assist them in developing their written and oral advocacy skills.

The Faculty’s director of training, Hugh Olson, and advocates David Bartos and John Brannigan also assisted with aspects of advocacy training.

Mr Whyte said: “This year’s team did an amazing job, even more so under the continuing challenges posed by the pandemic.

“It was particularly impressive to see them switch effortlessly between in-person and online advocacy, a skill which will no doubt serve them well in future. I am sure they will all go on to great success after their LLM degrees. I am immensely grateful to all of the devils and other advocates who assisted with the team this year. It was a pleasure to work with them and I know that the students greatly valued their input.”

Mr Mulhall said: “The students were very responsive and hardworking, which allowed us to quickly move to the point of refining the legal submissions. Watching the students develop as advocates was a real pleasure.

“The saying goes ‘if you want to learn, then teach’. Coaching for the moot was an opportunity to pass on the lessons taught by Mr Olson, Ms Gillian Ross, the deputy director of training at the Faculty, as well as the members of the Faculty that have assisted in the world-class training it offers to devils.”

Ms Blockley added: “I took part in mooting at university but is the first time I have been involved in coaching.

“Mooting competitions are a great way to build practical skills and confidence. Normally the competition is held in person but was done online this year. This meant that the students had the opportunity to work on both their online and their in-person presentation styles, which will be an invaluable skillset in the future. I am grateful to have been able to assist with this, and I’m proud of the team for all their hard work.”

Quote of the day

DOUBLETHINK means the power of holding two contradictory beliefs in one’s mind simultaneously, and accepting both of them. The Party intellectual knows in which direction his memories must be altered; he therefore knows that he is playing tricks with reality; but by the exercise of DOUBLETHINK he also satisfies himself that reality is not violated. The process has to be conscious, or it would not be carried out with sufficient precision, but it also has to be unconscious, or it would bring with it a feeling of falsity and hence of guilt.

George Orwell, ‘Nineteen Eighty-Four’ (1949)

And finally… got your goat

The court this week ruled that the city violated the rights of a Christian group after snubbing its formal request for their flag to be flown outside of City Hall, CNN reports.

The Satanic Temple has now joined the fray by requesting that its own flag – which includes a depiction of its goat idol, Baphomet – be raised for Satanic Appreciation Week in July.

A spokesperson for the office of Boston’s mayor said it was “carefully reviewing the court’s decision”. The city is not currently accepting flag-raising applications.

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