The decision also illustrates that the court may not give effect to requests that go beyond what is necessary, relevant and proportionate to enable the issues in the foreign proceedings to be litigated.
The High Court has rejected an application to set aside an order giving effect to a letter of request issued by a US court in support of copyright proceedings in the US. Although there had been non-disclosure of material relevant to the without notice application, that did not justify setting aside the order, but it did justify making the order conditional on paying costs into court. However, the High Court narrowed the scope of the letter of request: Topalsson Gmbh v Rolls-Royce Motorcars Limited, Matthew Scott [2025] EWHC 1584 (KB).
The decision underlines the need for letters of request to the English court to obtain evidence in support of foreign proceedings to be drafted carefully, with a close focus on the issues the foreign court will need to determine and the particular documents sought. The English court will generally rely on the requesting court's assessment of what is relevant, but it may consider relevance for itself where appropriate, such as where that is not considered by the foreign court in issuing the request. While the court may be able to narrow down a request, rather than refusing it entirely, it is better to ensure the request is sufficiently focused from the outset.
The decision also shows the importance of complying with the duty of full and frank disclosure on an application seeking to give effect to a letter of request – or any other "without notice" application. Although the court did not consider the failures in this case to be sufficiently serious to justify setting aside the order, any material non-disclosure will carry significant risks.
Background
This decision is part of a wider set of proceedings between Rolls-Royce Motorcars Limited and Topalsson GmbH.
In October 2019, Topalsson contracted to design, develop and implement a vehicle configurator sales tool for Rolls-Royce. The contractual relationship broke down and proceedings were issued in England & Wales, the US and Germany:
- Rolls-Royce issued breach of contract proceedings in the English court (the "Contract Proceedings"), which resulted in a damages and interim costs order in its favour. The Court of Appeal upheld the judgment but reduced the damages award. There are ongoing committal proceedings regarding the adequacy of Topalsson's compliance with funding disclosure orders in the proceedings.
- In Germany, there are three streams of proceedings: (i) a claim by Topalsson against insurers; (ii) a claim by Rolls-Royce seeking enforcement of the judgment debt and costs orders in the Contract Proceedings; and (iii) most importantly, a criminal copyright infringement claim by Topalsson against Rolls-Royce.
- In the US, Topalsson issued a copyright infringement claim against Rolls-Royce alleging that dealerships in the US were using software resembling Topalsson's configurator sales tool.
Topalsson applied to the US court for a letter of request to be issued to the English court in support of the US proceedings. It included requests to examine a witness as well as for the production of documents, including "complete copies of the portions of" the software being used by the dealership "relating to" Topalsson's software. The High Court made an order giving effect to the Letter of Request, without notice to Rolls-Royce.
Rolls-Royce then applied to set aside or vary the order, arguing that the Letter of Request was too wide and that, in any event, the order should be set aside for failure to give full and frank disclosure during the without notice hearing. The alleged non-disclosure included: (i) Topalsson's non-payment of the costs orders made in the Contract Proceedings; (ii) the alleged breach of the funding disclosure orders; and (iii) the fact a criminal copyright infringement claim had been made to the German prosecuting authorities.
Rolls-Royce argued, in the alternative, that any order should be made conditional on various matters including Topalsson complying with outstanding orders in the Contact Proceedings, purging any finding of contempt, and bearing Rolls-Royce's costs of the exercise (and making advance payment of those costs into court).
Decision
The High Court (Senior Master Cook) rejected Rolls-Royce's application to have the order set aside.
It referred to the Evidence (Proceedings in Other Jurisdictions) Act 1975, which confers power on the High Court to give effect to a letter of request. Under the Act, the court can make an order only if satisfied that the evidence is to be obtained for the purposes of civil proceedings instituted before the requesting court. The court then has a discretion to make such orders as appropriate to give effect to the request, but the order cannot require wide-ranging disclosure of relevant documents: it must be limited to the production of particular documents specified in the order.
Here there was "no doubt" that the jurisdictional threshold under the Act was met, as the request was to obtain evidence for the purposes of civil proceedings before the US court. The court emphasised that the Letter of Request "was not simply rubber stamped by the US Judge" but a full hearing took place and a written decision was given. The court rejected the submission that the Letter of Request was seeking "pretrial discovery" or "train of enquiry" disclosure, which is not permitted.
As to the scope of the Letter of Request, the court highlighted that only the first three requests sought production of the software, which was the focus of the application and the hearing before the US judge and the other requests were not given much if any scrutiny. Topalsson accepted that an analysis of that software would be sufficient to establish or disprove the copyright infringement claim, and so the court considered only the first three requests. It was satisfied that those three requests were sought to support Topalsson's case in the US proceedings. The other requests went well beyond what was "necessary, relevant and proportionate to enable the issues in the US proceedings to be litigated".
As to the duty of full and frank disclosure, the court was satisfied that there had been non-disclosure of material relevant to the application (as listed in the Background section above). The question was whether the non-disclosure resulted in the court being materially misled, and if so whether that would justify refusing the application to give effect to the Letter of Request. The Senior Master noted that he was concerned with a request for assistance from a foreign court and that the "principles of judicial comity" require the court to do all it can to assist the foreign court, in the context that the UK and the US are both signatories to the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters 1968.
Noting that the "overriding consideration will always be the interests of justice", the Senior Master said he had carefully considered the evidence submitted in support of the application to give effect to the Letter of Request.
He commented that a failure to disclose the non-payment of damages and breach of court orders was "always a serious matter". Topalsson had exhibited the Court Appeal judgment from the Contract Proceedings which mentioned the breaches of the court orders, but that was not sufficient. Although those court orders had been made in the Contract Proceedings, which were not material to the Letter of Request issues, Topalsson should have drawn them to the court's attention, rather than burying the material among a mass of detail.
The failure to refer to the German criminal complaint was "more important" as it was a "complete omission" and entailed the need for provisions to protect the witness. However, these concerns were addressed by existing protective measures contained in the Letter of Request.
Ultimately, the court found "by a very small margin" that the admitted non-disclosures did not materially mislead it in granting the order, and declined to set it aside – though the Senior Master commented that his conclusion would probably be very different if there had been a finding of contempt of court against Topalsson. Even if he was wrong in declining to set aside the order, he would nevertheless have re-granted the order.
However, the court agreed that its order giving effect to the Letter of Request should be made conditional on Topalsson paying into court, in advance, the costs of the application and of Rolls-Royce complying with the Letter of Request. Imposing this condition was proportionate and just, given Topalsson's history of non-payment.
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