On 14 November 2024, Mr Justice Calver handed down judgment on Motorola’s claim to enforce in England parts of a US judgment worth over half a billion dollars against Hytera Communications. The US judgment related to breaches of US copyright and trade secrets legislation.

In 2020 Motorola obtained a judgment from the District Court for the Northern District of Illinois, Eastern Division against Hytera. That judgment was comprised of compensatory damages under the Copyright Act ($136.3m) and under the Defend Trade Secrets Act (DTSA) ($135.8m), punitive damages under the DTSA ($271.6m), pre-judgment interest (c.$51m), attorney fees (c.$34m), disbursements (c.$2.7m) and post-judgment interest.

On 4 and 5 November 2024, Calver J heard the trial of Motorola’s claim to enforce the US judgment as to pre-judgment interest, attorney fees, disbursements and post-judgment interest. The Judge held that all these elements of the US judgment were unenforceable by reason of s.5 of the Protection of Trading Interests Act 1980, which precludes enforcement proceedings in England to recover “any sum payable under” a judgment “for multiple damages …”.

First, Calver J held that the punitive damages awarded under the DTSA were multiple damages within the meaning of s.5. It did not matter that the DTSA did not oblige the Illinois Court to multiply the compensatory award: it was sufficient that the Illinois Court had in fact chosen to treble the compensatory damages under the DTSA.

Second, Calver J held, following the decision of Cockerill J in SAS Institute Inc v World Programming Ltd [2018] EWHC 3452 (Comm), that insofar as the US judgment related to Motorola’s cause of action under the DTSA it was a “judgment for multiple damages” within s.5.

Finally, Calver J held that the Illinois Court’s awards of interest, attorney’s fees and disbursements were rendered unenforceable by s.5, each of them being a “sum payable under” the judgment containing the award of multiple damages. Further, there was no scope for apportioning the awards as between Motorola’s causes of action under the Copyright Act and the DTSA.

Stephen Rubin KC, Alexander Milner KC and Leah Gardner acted for Hytera Communications, instructed by Ivan Gordienko and Alex Green of Steptoe International (UK) LLP.

The judgment is available here.