It’s all in the small print!
Designer of the iconic and world famous “Index” series of chopping boards for Joseph Joseph in 2007, ACID member Damian Evans went on to design other products for the company, as well as numerous iterations of the Index boards.
But, sadly, now a dispute has arisen, about how some of the terms of the contract between them should be interpreted. Since the contract was first agreed, the products subject to it, and the parties have had much success and many of products continue to have significant longevity, and Damian and Joseph Joseph now disagree on how various areas of that contract should be interpreted, including: –
- Damian’s right to inspect and audit manufacturing data (for calculating royalties)
- Joseph Joseph’s obligation to inform Damian of the number of disposals (for example by giving away promotional products or free samples) as well as the number of sales of his products; and
- Joseph Joseph’s strategy to register and protect IP rights in Damian’s products, and whether and to what extent it must collaborate with him on such a strategy
Damian Evans said, “In accordance with our licensing contract, I believe I am entitled to know how many units of my products are made: not just how many are sold, and that I am entitled to appoint an auditor to undertake a comprehensive audit of the manufacture of my designs to verify that my royalty payments are accurate. I also believe that I am entitled to a better understanding of, and to be consulted about, Joseph Joseph’s strategy for IP protection and enforcement.”
Kelly Hudson of McDaniels Law who is acting on behalf of Damian said, “On the other hand, Joseph Joseph (represented by Gowling WG) claims that Damian cannot have an audit of its manufacturing completed and has presently offered to provide sales information for limited example data. Further, in relation to IP protection, Joseph Joseph has stated that if it decides it is not beneficial to Joseph Joseph to register a product, it does not need to consult with Damian in deciding not to register or protect his designs (or explain its reasoning), despite the contractual agreement requiring ‘mutual agreement’ as to registration decisions. There are also several other points on which the parties do not agree in terms of construction.
Damian and Joseph Joseph have had considerable dialogue to try and settle these issues, both with and without lawyer involvement, but ultimately reached an impasse. Consequently, proceedings were issued under what is known as the ‘Part 8’ procedure.
Part 8 refers to Civil Procedure Rule 8 and contains a set of rules specifically designed for parties where the underlying facts are either agreed or are not relevant to the dispute in question, and only a question of law must be decided. In Damian’s case, this means asking the Court to decide the meaning of the terms in the contract between the parties.
The case is to be heard in the Business and Property Courts in London in the coming months.
Dids Macdonald, OBE., CEO of ACID said, “We will be keeping a close eye on how things unfold, as many of our members will be involved in agreements with retailers and distributors where there is a power or stature imbalance, and the outcome of this case could help designers better understand their rights as it will give clarification on interpretation.”