When Anti Copying in Design (ACID) member Mariya Lish recently sought to terminate her distribution agreement with a typeface foundry, The Northern Block, they claimed Mariya was an employee and, therefore, did not own the intellectual property (IP) in the typefaces she had created.

Following proceedings being against The Northern Block and its director, Jonathan Hill, to confirm her ownership of the typefaces, and a failed transfer application made by the defendants to move the case to the Intellectual Property Enterprise Court (IPEC) for which Ms Lish was awarded her costs, the defendants accepted a Part 36 offer which had been made by Mariya, confirming her ownership of the relevant typefaces and agreeing to cease any further use of the same and pay her costs.

The Facts of the Case

Proceedings were issued against The Northern Block and a Director, Jonathan Hill, for a declaration that Ms Lish was the owner of the relevant fonts, an injunction to restrain any further infringements, damages, or an account as appropriate, under claim no. J80NE032.

The Defendants filed a deficient defence which potentially facilitated an application for strike out on parts of it, which was subsequently made. The Defendants then made an application for transfer of the claim to IPEC and, at the same time, served a proposed amended defence and a counterclaim (which was served out of time) just prior to the transfer application being heard. Mariya Lish opposed the transfer as based on various factors, including based on the purported scope of the Defendants’ proposed amended pleading. On the basis of this document the matter required at least a 7-day trial. The transfer application failed and Mariya was awarded £9,600 in costs  as in interim payment in respect of that, with a further balancing costs payment to be the determined by detailed assessment proceedings. Shortly after that hearing, the Defendants accepted a Part 36 offer (Mariya had previously made which, amongst other things, acknowledged Ms Lish’s ownership). A “Part 36” is a form of offer used to settle all or part of a dispute between parties in civil litigation under defined rules set out in Part 36 of the Civil Procedure Rules 1998, one of the key points of this offer being that the Defendants would also agree to pay Mariya’s costs of the matter, to be assessed if not agreed.

Kelly Hudson, Director of McDaniel’s Law, an ACID Legal Affiliate said, “Whilst we are delighted that there has been a settlement in favour of Ms Lish’s IP ownership unfortunately there is still further legal work to be done and it is disappointing that the case was ever necessary”.

Owner and Founder of Mariya Lish, Mariya said, “Finding yourself in a situation where you’re aware of your rights, yet a larger, better-capitalised entity is on the other side, and everyone is aware of the disparity in position, is truly distressing. Fortunately, with the support of Kelly and her team, I successfully reclaimed my intellectual property through legal channels”.

Dids Macdonald OBE, CEO of ACID said, “This illustrates just how important it is to be able to rely on the “small print” in any agreements about IP. Northern Block claimed that Mariya was an employee and, as such would not own her IP rights, but Mariya felt her rights were clear under a distribution agreement and was prepared to pursue them”.

Mariya Lish

Inhouse Type