Information Technology

Data Direct Technologies Ltd v Marks & Spencer Plc [2009] EWHC 97 (Ch) (26 January 2009)

Mon, 26 Jan 2009 00:00:00 GMT

C was supplier of software to D under a licence agreement that involved payment of a maintenance fee each year until such time as D gave written notice to C that it no longer required maintenance. In 2007, D purchased a licence extension that provided (amongst other things) as follows: “At the Customer's option, annual maintenance for the licence extension (including upgrade) contained herein for the period 26th October 2007 to 25th October 2008 shall be 17.5% of £750,000”. D did not pay the maintenance fee (in respect of the extension or at all), and a dispute arose.

It was common ground that D did not give notice of its intention to cease maintenance payments as envisaged by the licence agreement. However, D submitted that payment of the fee in 2007-8 was “at the customer’s option” owing to the wording of the licence extension; it had not specifically elected to take up the option, and was therefore not compelled to pay the fee. C disagreed, submitting that the new term did not alter the basis of payment or requirement for notice; the reference to an “option” merely reflected the terms of the initial licence and the fact that the fee would not have applied if D had availed itself of the notice mechanism (which it had not).

Held: C’s construction was to be preferred. The term in question related only to the licence extension (i.e. not to the entirety of the maintenance fee for the software), but as software must be maintained in toto or not at all, whatever the true construction of the maintenance provisions, they must likewise govern maintenance of the whole of the software. That being so, and given that the licence extension expressly referenced the maintenance fee provisions in the initial agreement, the “option” referred to was the option to terminate as provided by the initial agreement and not some new, additional option. As D had not availed itself of the notice provisions, the fee was payable.

Sony Computer Entertainment UK Ltd v Cinram Logistics UK Ltd [2008] EWCA Civ 955 (08 August 2008)

Fri, 08 Aug 2008 00:00:00 GMT

D was contracted to store memory cards for C’s PlayStation 2 console and deliver them to C’s UK customers. X was a repeat customer of C’s and regularly ordered shipments of several thousand cards. The cards comprising one such shipment were stolen while in D’s custody. It was common ground that D was liable to make good C’s losses, but a dispute arose as to the correct measure of loss. C, having refunded X, argued it was entitled to recover the full sale price from D; D argued that recovery should be limited to the manufacturing costs because in the light of further orders for cards by X it could not be said that C in fact lost any profits. Held: prima facie, a Claimant in C’s position was entitled to recovery of the full sale price. The evidential burden was on D to show that future orders of memory cards by X amounted to ‘replacement’ orders such that C had not actually suffered a loss of profit; D had failed to do so.

Ardentia Ltd. v British Telecommunications Plc [2008] EWHC B12 (Ch) (19 June 2008)

Mon, 16 Jun 2008 00:00:00 GMT

D was the main contractor for the provision of IT services to the NHS. The contract between the parties stated that in the event of a dispute the parties would refer the matter to arbitration. However, there was an exception for interim injunctions. D had subcontracted certain services to C who had then licensed those programmes to D. It was alleged that D had started using more licences than it had paid for and C referred the dispute to arbitration. Once the arbitration had commenced C leant than D intended to engage another sub-contractor to supersede C’s programmes. C then sought an interim injunction restraining D from breaching the terms of a contract. D applied to stay the proceedings. The Court made an order restraining D from engaging a new sub-contractor conditional upon C undertaking to co-operate fully in the appointment of an arbitrator to hear the claim for a permanent injunction. Given the nature of the dispute resolution clause, the Court was only entitled to determine matters arising in the limited context of an application for an interim injunction and not all the claims in the case. The matter concerning D’s use of additional licences should be referred to arbitration and the Court proceedings were accordingly stayed.

Fujitsu Services Ltd v Electronic Data Systems Ltd [2008] EWHC 211 (Comm) (12 February 2008)

Tue, 12 Feb 2008 00:00:00 GMT

D was a supplier of IT services to various government departments. C had supplied mainframe computers to D including some computers used to back up other "live" mainframe computers in the case of disaster. C licensed D to use C's operating system and associated software and also provided repair, maintenance and support services for the mainframes (the live estate). The parties had entered into two agreements (1) an umbrella agreement providing for payment for licensing and system services; and (2) a business continuity agreement in relation to the back up system. Subsequently, C supplied 2 new mainframe computers for business continuity purposes but no agreement was reached regarding the method of charging (although the computers were treated as part of the business continuity estate and not as part of the umbrella agreement). Later on the parties concluded new agreements intended to replace the umbrella agreement and C claimed that the 2 mainframe computers should be treated as part of the live estate governed by the umbrella agreement and sought additional licensing and system service charges. It was held that no further payment was due from D to C. Whilst the supply of the 2 mainframe computers was subject to the umbrella agreement, the charging for software licensing and system service in relation to the mainframe computers was governed by the new agreements, which replaced the umbrella agreement and applied to all use of software for business continuity purposes. Accordingly even if the terms of the umbrella agreement did apply they only did so for the six month period from when the computers were installed until the new agreements came into force and under the terms of the umbrella agreement no charges would have been incurred until the end of that period.

Sumukan Ltd v Commonwealth Secretariat [2007] EWCA Civ 1148 (15 November 2007)

Sat, 15 Dec 2007 00:00:00 GMT

The three judgments of this unanimous decision set out the principles which will determine whether procedural defects in the establishment of an arbitral tribunal will justify a jurisdictional challenge to the award – a topic on which there is little English authority. C had entered into a contract with D to create a prototype website for the government of Namibia. The contract included a term providing for disputes to be referred to the Commonwealth Secretariat Arbitral Tribunal (“CSAT”) for settlement by arbitration in accordance with CSAT’s “Statute” (a set of terms agreed upon by Commonwealth Governments). In 2003, a contractual dispute was referred to CSAT as to title to the prototype website. The Tribunal handed down an Award in April 2005 ruling that title to the prototype website rested with D. It transpired, upon disclosure provided by the Commonwealth Secretariat after the Award was handed down, that CSAT’s President had not been appointed in accordance with the appointment procedure in the Statute. C challenged the Award under s.67 of the Arbitration Act 1996. The Court of Appeal, overturning LJ Toulson’s decision at first instance, allowed C’s appeal under s.67. It was held that if arbitrators were to be selected from a panel, and if there was a procedure for the appointment of the panel aimed at guarding against any apparent lack of independence, a substantial failure to comply with that procedure should affect the jurisdiction of the Tribunal itself. C was prima facie entitled to have the agreed procedure for appointment of any arbitrator complied with. Non-compliance having been established, it was for D to show that the failure to comply was inconsequential in some way. The Court of Appeal held that there was no room for applying in the arbitration field the common law de facto doctrine which, in some circumstances, validates the acts of an apparent and reputed judge. Where one party had failed to abide by the procedure required for appointing the President it lay ill in his mouth to seek to rely on any de facto principle. This is the first case to consider the possibility that the doctrine of a “judge de facto” could be extended into a theory of an arbitrator de facto.

Meridian International Services Ltd v Richardson & Ors [2007] EWHC 2539 (Ch) (18 October 2007)

Thu, 18 Oct 2007 00:00:00 GMT

C was retained by a healthcare company to develop financial forecasting software. C entered into financial difficulties itself and D1, a computer programmer and a director of C, refused to continue working for C. At a meeting it was agreed that D1 and D3 would complete development of the software and would be paid by the customer via D2 (a company controlled by D1). It was also agreed that C would receive a percentage of those payments as a "finder's fee". C subsequently claimed copyright in the computer software written and notwithstanding that D3 had been author of the software while working as an independent contractor maintained that it was an express or implied term of the agreement reached at the meeting that the copyright in the software would be assigned to C given the terms of the contract with the customer and the necessity of preventing the customer and D2 from reusing the software. The Court rejected these contentions (1) the evidence did not show that it was not an express term that the copyright would be assigned to C; (2) A term would only be implied if it was necessary and then only of what was necessary. At the time of the agreement the contract with the customer was still in draft form and therefore still open to negotiation and was an insufficient basis for the implication of a term. (3) D2 was the legal and equitable owner of the copyright.

Benfield (Trading As Autoroute Circuits) v Life Racing Ltd [2007] EWHC 1505 (TCC) (13 July 2007)

Fri, 13 Jul 2007 00:00:00 GMT

D was a designer and supplier of engine control units to the racing car industry. C had been engaged by D to advise on the design of the layout of printed circuit boards used in two successive versions of the control units. C alleged that the circuit layouts that resulted from those services caused malfunctioning of the circuit boards and control units and claimed that the contract contained an implied term of fitness for purpose. D denied liability and alleged (i) that C's decision to use blind and buried vias in the design process was negligent and there were other more appropriate methods available which would not have caused the problems that occurred; and (ii) C’s decision to use blind and buried vias had led inevitably to manufacturing and operating problems. In determining questions of liability only the Judge held (1) There was no implied term of fitness for purpose. C had not been given a written specification, the circuitry and conditions under which it was to be manufactured and operated were identified informally, the design process was a collaborative one and C was not working to a defined purpose. (2) C’s design was based on a mistaken understanding regarding the size of via and this was attributable to C’s failure to keep up to date with his technical knowledge. Judgment for D.

Roger Benfield (t/a Autoroute Circuits) v Life Racing Limited QBD (TCC) (Judge Thornton QC) 13/7/2007

Fri, 13 Jul 2007 00:00:00 GMT

Pennwell Publishing (UK) Ltd v Ornstein and others QBD (Justin Fenwick QC) 18/6/2007

Mon, 18 Jun 2007 00:00:00 GMT

D1, D2 and D3 had been employed by C as senior executives. A’s employment contract provided that he should not have any other job or be interested in any other business during his contract of employment without C's written consent. During the course of their employment, D1, D2 and D3 formed a company (D4) which D5 later joined. D1, D3 and D5 resigned but not before removing confidential information (comprising lists of potential customers, suppliers and advertisers). D3 remained in post in order to complete a conference run by C which he was directing. D1 attended the conference and solicited business amongst C’s customers. C obtained an interim injunction against D3 requiring the return of the property (including information in electronic form). D3 complied with the order but forensic examination of his computer disclosed that he had created an address list of contacts partly through using a program that was part of C's email system. The court was required to determine D3 had breached the express terms of his employment and whether he was entitled to retain a list of contacts created by him. C argued the information in the list had been prepared and maintained on its computers and was confidential information; D3 argued that the information was essentially his personal contact list built up over his entire career. It was held (amongst other things) that where an address list was contained on an employer's email program and backed up by the employer or by arrangement made with the employer, the list or database belonged to the employer. The position would not change where the database was accessed not from the employer's computer but from the employee's home computer by remote access. In all those circumstances such lists were the properties of the employer and could not be copied or removed.

Intel Corporation Inc v CPM United Kingdom Ltd [2007] EWCA Civ 431 (15 May 2007)

Tue, 15 May 2007 00:00:00 GMT

C was the registered owner of a number of UK and Community trade marks including the ‘INTEL’. The goods and services covered by the registrations were for computers and computer-linked goods and services. D had registered a trade mark consisting of the word ‘INTELMARK’ in relation to integrated telephone marketing. C sought a declaration of invalidity on the basis that D's use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of C's trade marks under the Trade Marks Act 1994. C's application was dismissed on the basis that there would not be any material damage to the distinctiveness or repute of the INTEL brand if INTELMARK was used in a normal and fair manner in relation to the services for which it was registered (which were different from the computer based products with which INTEL was concerned). C's appeal against that decision was also dismissed and C appealed to the CA arguing it was sufficient to establish invalidity if it could show that the reputation enjoyed by the INTEL mark was sufficient for the average consumer to focus on INTEL in INTELMARK. The ECJ had previously held that protection could be given under Article 5(2) of Directive 89/104 if there was a sufficient degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public established a link between the sign and the mark. The CA decided to refer the question to the ECJ, however, because it was not clear whether by "a link" the ECJ meant there should be a mental association between the later mark and the earlier mark, so that a mere bringing to mind of the earlier mark was enough.

Johnson v Medical Defence Union [2007] EWCA Civ 262 (28 March 2007)

Wed, 28 Mar 2007 00:00:00 GMT

A was a consultant orthopaedic surgeon. R was a mutual socity which amongst other things provided advice and assistance to its professional members in relation to professional questions and problems. A had availed himself of this advice, including in relation to complaints which had been made against him, but had never been subject to a professional negligence claim. R had carried out a risk assessment review on the basis of A's 'track record' and a decision had been made to terminate his membership. A large amount of the information relied upon had been stored on a computer. At first instance A argued that R had unfairly processed his personal data. It had been held that the unfair processing was of such a minor and inconsequential nature that he was not entitled to compensation. A appealed and D cross-appealed against finding that its treatment of A's data fell within under the Data Protection Act 1998. Held (1) That the selection of data by R did not amount to processing of data within the terms of the Act : the selection of information was not "partly by automated means" because it had not involved any automated means at all (because the data had been selected manually).

Sandisk Corporation v Koninklijke Philips Electronics NV & Ors [2007] EWHC 332 (Ch) (27 February 2007)

Tue, 27 Feb 2007 00:00:00 GMT

C was a US corporations which imported and sold MP3 players and compliant memory cards in the European Union. The Defendants were patentees and licensing companies which owned the patents relating to MP3 technology. The Defendants had previously obtained a number of border detention orders and domestic remedies in Germany and Italy against C. C had been offered a licence by the Defendants but had refused it and issued proceedings in the UK claiming breach of dominant position. The Court held that the complaints regarding the tying of distinct technologies and essential and non essential patents in relation to the MP3 compliant memory cards failed on the facts and there was no jurisdiction to entertain the remainder of the claims. Insofar as C had suffered any damage, that damage accrued in the USA.

Inquam Telecom (Holdings) Ltd v Primus Telecommunications Ltd [2007] EWHC 181 (Comm) (07 February 2007)

Wed, 07 Feb 2007 00:00:00 GMT

This was a dispute between telecommunications service providers as to the construction of a service agreement between them. C provided mobile phone numbers to telecommunications service providers, including D (a company who enabled mobile phone users to make cheap international calls). Under their agreement, C agreed to pay royalties to D in return for D allowing C to access D’s international network. Subsequently, C entered into an agreement with another provider, X, and C and D consequently attempted to renegotiate the method of calculating the royalty fee. It was held by Aikens J that no agreement was reached on royalty fees, so D was entitled to remuneration on a quantum meruit basis. The judge found that the parties had adopted unrealistic positions in the litigation, and that neither had emerged the clear victor.

Research In Motion UK Ltd v Inpro Licensing SARL & Ors [2007] EWCA Civ 51 (07 February 2007)

Wed, 07 Feb 2007 00:00:00 GMT

A was the owner of a patent which concerned how a small field computer could access the internet. R was the owner of a blackberry device (which gave access to internet features via a field computer). R had issued proceedings against A for revocation of A's patent on the basis that it was obvious and was not inventive considering that mowser technology had previously enabled the world wide web to be browsed from a mobile host. The CA upheld the decision of the judge at first instance revoking A's patent. A argued that the judge had failed to identify the difference between the prior art (mowser) and the inventive concept in A's patent. The CA disagreed with A stating that there was nothing inventive in tailoring an image to fit a small screen or in combining files so that a single file was sent to the field computer.

Point Solutions Ltd v Focus Business Solutions Ltd & Anor [2007] EWCA Civ 14 (23 January 2007)

Tue, 23 Jan 2007 00:00:00 GMT

The Court of Appeal held that the appellant had failed to prove on the balance of probabilities that all of the individual literary works comprising its software product had been created without copying or adaptation from any corresponding part of the respondent’s product.

Microsoft Corporation v McDonald (Also Known As Gary A Webb) (t/a Bizads and Bizads UK) [2006] EWHC 3410 (Ch) (12 December 2006)

Tue, 12 Dec 2006 00:00:00 GMT

The Court granted C’s application for summary judgment against D for breach of regulation 22 of the Privacy and Electronic Communications (EC Directive) Regulations 2003. It was held that C, the operator of a web-based email service (MSN Hotmail), had a cause of action under the Regulations because it fell within the class of persons for whom the requirements in the Regulations were imposed. D operated a business which sold details of email addresses to companies who wished to send spam by email. C argued that D was the instigator of the sending of spam and was therefore in breach of regulation 22 and consequently it had suffered loss by damage to its goodwill and the cost of fighting spam. The Court found that D had no reasonable prospect of defending the allegation that he was behind the business.

Ashton Investments Ltd. & Anor v OJSC Russian Aluminium (Rusal) & Ors [2006] EWHC 2545 (Comm) (18 October 2006)

Wed, 18 Oct 2006 00:00:00 GMT

In other proceedings, C alleged that D had wrongfully ousted C from a joint venture in Tajikstan. In the present proceedings, C alleged that D had hacked into its computer system in London in order to view confidential and privileged information relating to the litigation. C issued proceedings for breach of confidence and wrongful interference with C’s business. C sought to serve out of the jurisdiction on the basis of tortious damage and breach of confidence within the jurisdiction. The Court held that C had shown that there was a serious issue to be tried, and that significant damage had occurred in England. Both limbs of CPR r.6.20(8) were satisfied, and the Court was satisfied that England was the appropriate forum.

Scansafe Limited v Messagelabs Limited, Ch D, 26/07/06

Wed, 26 Jul 2006 00:00:00 GMT

C was a provider of internet services who had developed a security system which enabled employers to limit employees' access to the internet. D was the developer of an email security system. C and D entered into an agreement which permitted D to sell C's system under its own name. C applied for interim injunctions restraining D from (i) breaching that agreement; and (ii) passing off after D indicated that it had decided to develop a competing system to that designed by C. D contended that there was no passing off as C had acquired no reputation or goodwill in the system used by D's customers. The interim injunction was refused on the basis that C could be adequately compensated if D's potential customers were supplied with a press release concerning the new system provided that it included certain information. On the substantive issues the Judge held : (1) If D's marketing material for the new system misrepresented the technical basis of the system C would have a seriously arguable case against D because permission to brand the original security system as D's own did not afford a right to trade on the reputation of the security system in order to launch a similar product as if it came from the same source and the goodwill in the system could not be used to market a product that had a different trade origin. (2) D had given 2 months' notice and under the agreement was permitted to organise the transfer of customers to its new system which could be implemented after 9 months.

Intel Corporation Inc v CPM UK Ltd Ch D, 26/07/06

Wed, 26 Jul 2006 00:00:00 GMT

C appealed against the decision of a hearing officer not to grant a declaration of invalidity under section 5(3) of the Trade Marks Act 1994 against the registration of D’s mark. C owned a number of trade marks for the marks INTEL and INTEL.INSIDE; D applied to register the mark INTELMARK. It was held that, in assessing whether a declaration of invalidity should be granted against a trade mark registration, the enquiry should focus on whether use of the later mark would either take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. The assessment required the court to carry out a similar process of global appreciation to that conducted under section 5(2) to assess the likelihood of confusion. The Court dismissed the appeal.

Mohammed Hussein Al Amoudi v Jean Charles Brisard & ors, HC (QBD), 16/05/06

Tue, 16 May 2006 00:00:00 GMT

C claimed that two publications on D’s website about him were defamatory and that D had published the articles to a substantial but unquantifiable number of readers on the internet. D’s defence was on the basis that the articles complained of were not downloaded within the jurisdiction. C argued that there was a presumption that the articles were published via the Internet to a substantial but unquantifiable number of readers and that the defence should be struck out. Gray J dismissed the strike out application, holding that the claimant to a libel action bore the burden of proving that the words complained of were read or seen by a third party. It was therefore for C to prove that the two articles had been accessed and downloaded. C was not entitled to rely on a presumption of substantial publication.

Director of Public Prosecutions v Lennon [2006] EWHC 1201 (Admin) (11 May 2006)

Thu, 11 May 2006 00:00:00 GMT

The DPP alleged that, after being dismissed from his employment, D has used a “mail bombing” program that autmotically sent continious emails to his former company’s server. The server received over 500,000 emails. The DPP successfully argued that for the purposes of the Computer Misuse Act, s.17(8)(b), the owner of a computer able to receive emails would ordinarily be taken to have consented to the sending of emails to his computer, but that such implied consent was not without limits; the consent did not cover emails that had been sent with the purpose of interrupting or blocking the computer system.

Apple Corps Ltd. v Apple Computer, Inc [2006] EWHC 996 (Ch) (08 May 2006)

Mon, 08 May 2006 00:00:00 GMT

C, a record company, claimed that D, a computer and software company, had breached a trademark agreement between them by operating its iTunes music download service with an ‘apple’ graphic. C had registered its ‘apple’ trade mark as both a word and a graphic symbol (a whole apple). D had also adopted the word ‘apple’ and also used a graphic (an apple with a bite taken out of it). The parties entered into a trademark agreement that defined C’s field of use as the record business and D’s field of use as the computer, date processing and telecommunications industry. Where certain goods and services that were within D’s field of use were also capable of ebing within C’s field of use, clause 4.3 provided that D should have exclusive right to use its marks “on or in connection with” goods or services in its field of use to pay or deliver content provided its marks were not used “on or in connection with” physical media delivering pre-recorded content within C’s field of use. D introduced an online iTunes Music Store and C claimed that the presence of D’s marks on the store were a clear association with the musical content on the screen so as to make it “in connection with” the music. C’s claim was dismissed. It was held that D had no right to apply its marks to musical recordings, including recordings transmitted in intangible form. However, in considering whether there had been a breach it was necessary to think about how things would appear to the “average consumer”. The presence of a logo that was the logo of the download service would not be likely to be taken by the average consumer to be an association with the musical content itself.

Mehta v J Pereira Fernandes SA [2006] EWHC 813 (Ch) (07 April 2006)

Fri, 07 Apr 2006 00:00:00 GMT

D presented a winding up order against a company of which C was a director. C had asked a member of his staff to send an email to D asking for an adjournment of the hearing of the petition and in return C would personally guarantee to pay the debt. The email was not signed and neither C’s name nor initials appeared in the email, but C’s email address was automatically included in the email header. D agreed orally to the proposal. C successfully argued that C could rely on the personal guarantees in the email. By virtue of s.4 Statute of Frauds Act 1677, a party can sign a document by giving a full name or psuedonym, providing that the intention of adding the signature was to give authenticity to the document. Absent evidence to the contrary, it was not possible to hold that the automatic insertion of an email address was intened to be a signature; the inclusion of the name was merely incidental. Therefore the email did not satisfy the requirements of s.4 and C was not obliged to pay the sums under the personal guarantee.

Michael Keith Smith v Tracy Williams, HC (QBD), 21/03/06

Tue, 21 Mar 2006 00:00:00 GMT

In a landmark ruling, D became the first individual to be successfully sued for libel arising out of comments posted on an internet chatroom, after falsely accusing C, a UKIP parliamentary candidate, of being a sex offender and “racist bigot” on a Yahoo! discussion site. D was ordered to pay damages of £10,000 to C and was issued with a restraining order preventing her from saying anything detrimental about him on any websites. C had previously obtained a court order requiring the telecommunications company, NTL to hand over D’s personal details.

Bunt v Tilley & Ors [2006] EWHC 407 (QB) (10 March 2006)

Fri, 10 Mar 2006 00:00:00 GMT

C brought defamation claims against various individuals and against T, an internet service provider, in respect of allegedly defamatory comments posted on the internet. T’s application to strike out the claim against him was successful on grounds that an internet service provider that performed no more than a passive role in facilitating postings on the internet could not be deemed to be a publisher in the context of defamation proceedings. Publication was a question of fact depending on the circumstances of the case, and the state of the defendant’s knowledge could be an important factor.

Global Coal Ltd v Icap Energy Ltd [2006] EWCA Civ 167 (08 March 2006)

Wed, 08 Mar 2006 00:00:00 GMT

C designed and developed increased standardization in the specification and trading of coal, including a reference price index for price swap contracts. Traders paid an annual fee to use C’s internet service under a product licence agreement (PLA). D, a broker for the trade of price swap contracts, used C’s products in an on-screen trading environment in alleged breach of its PLA with D. It was held that C had shown that he had a seriously arguable case for the grant of an injunction to restrain D from using an online system that breached the PLA.

Tesco Stores Ltd v Elogicom Ltd & Anor [2006] EWHC 403 (Ch) (08 March 2006)

Wed, 08 Mar 2006 00:00:00 GMT

C was the owner of the registered trade marks TESCO and TESCO.COM which it used to sell goods and services on the web using its brand name. D was the owner of two websites (Avon4me.co.uk and Avonlady.co.uk) and was also the registered owner of a number of domain names which incorporated the word 'Tesco'. Company X (which was not party to the litigation) was the provider of a web based service for C which enabled D to register Avon4me.co.uk and Avonlady.co.uk as affiliated sites of C such that if individuals went to those websites they were able to click on a link to C's website and, if there was any resultant purchase, X would become entitled to a commission from C and D would become entitled to receive a commission from X. D, however, linked those other domain names which incorporated the word 'Tesco' to Avon4me.co.uk and Avonlady.co.uk such that those domain names also resulted in customers being directed to C's website and X would register an entitlement to a commission. C sought injunctive relief to restrain D from passing off and infringing its trade marks and D counterclaimed for commission payments earned as an affiliate. It was held (1) there was a likelihood of confusion on the part of the public such that D's use of Tesco related domain names infringed T's trade marks under s.10(2) of the Trade Marks Act 1994; (2) D's domain names were similar to C's trade marks and D had taken unfair advantage of them contrary to s.10(3) of the Trade Marks Act 1994; and (3) there was sufficient implication of a risk of future or continuing violation of C's trade mark rights to warrant the injunctive relief. The counterclaim was dismissed on the basis that the commission sought by D could not validly be earned by it in respect of artificial traffic.

Johnson v The Medical Defence Union Ltd (2) [2006] EWHC 321 (Ch) (03 March 2006)

Fri, 03 Mar 2006 00:00:00 GMT

C, a surgeon, brought an action against D, a mutual society which provided discretionary professional indemnity cover to medical professionals, under section 13 of the Data Protection Act 1998 for compensation arising out of allegedly unfair processing of C’s data. C had never been the subject of a claim for professional negligence, but had over a period of years sought advice from D in relation to a number of complaints made against him. Due this track record, D carried out a risk assessment and subsequently terminated C’s professional indemnity cover. Held that the risk assessment amounted to “processing” within section 1(1) of the Act; C had consented to this use by D of his personal data; D’s processing of data in the “non-lead files” had been unfair, but in accordance with D’s policy and it did not amount to a contravention of the Act; the overall summary of all files did not reflect any unfairness. Judgment was given for D.

Stanford, R. v [2006] EWCA Crim 258 (01 February 2006)

Wed, 01 Feb 2006 00:00:00 GMT

D appealed against his conviction pursuant to the Regulation of Investigatory Powers Act 2000, s.1(2). Section 1(6) of the Act provides that a person is not guilty of a criminal offence if the circumstances in which a communication is intercepted are such that he is a person with a right to control the operation or use of the system. The Judge interpreted this section and held that the 'right to control' meant more than merely an entitlement to access or operate the system and required a right to authorise or forbid the use of the system. The CA agreed with this interpretation and held that the objective of s.1 was to protect the privacy of private telecommunications and this purpose would have been undermined if those with unrestricted access were exempt from liability even if they had no ability to control such use.

Global Projects Management Ltd & anr v Citigroup Inc & ors, HC (ChD), 17/10/05

Mon, 17 Oct 2005 00:00:00 GMT

D sought summary judgment on its counterclaims alleging passing off and trade mark infringement. C had successfully registered the domain name “citigroup.co.uk”; D’s subsequent application to register the domain name “citigroup.com” was refused. D threatened legal action against C; C issued proceedings claiming damages under section 21 of the Trade Marks Act 1994 for the unfounded threat of trademark proceedings. Mr Justice Park granted D’s application for summary judgment, finding that the mere registration and maintenance in force of a domain name that led people to believe that the holder of the domain name was linked to D had been enough to make the domain a potential instrument of fraud and amounted to passing off.

Global Projects Management Ltd and others v CitiGroup Inc, Ch D, Park J, 17/10/2005

Mon, 17 Oct 2005 00:00:00 GMT

The formation of the D had been announced in April 1998 following merger of 2 companies. On the following day C2, a director of C1, registered the domain name "citigroup.co.uk". C1 had no business connection with the domain name. D became aware of the existence of "citigroup.co.uk" in 2003. Following a threat of legal action by D, C1 issued proceedings against D for damages under the Trade Marks Act 1994. D counterclaimed against C1 and C2 on the basis that registration and ownership of the domain name "citigroup.co.uk" amounted to passing off and/or infringed D's registered trade marks. Court granted summary judgment in favour of D on the basis that (1) registration and maintenance of domain name could amount to passing off; (2) there had been an infringement of D's registered trade mark; and (3) C2 also had tortious liability because he had participated personally in the registration.

Village Investigations Ltd v Gardner & anr, QBD, Judge Seymour QC, 10/10/05

Mon, 10 Oct 2005 00:00:00 GMT

C sought delivery up of a copy of a database, an injunction and damages in claim against D for breach of a confidentiality clause that prohibited the use of C’s hardware or software data by D without permission. D had made a copy of C’s database without permission. It was held that C was only entitled to nominal damages because the information was publicly available and no loss could be shown as no use had been made of the copy.

BE Studios Ltd. v Smith & Williamson Ltd [2005] EWHC 1506 (Ch) (15 July 2005)

Fri, 15 Jul 2005 00:00:00 GMT

C, a specialist in computer software, had retained D, a firm of accountants, to provide taxation and accounting services. The Income and Corporation Taxes Act 1988 (as amended by Section 837A of the Finance Act 2000) now clarified the extent and meaning of 'research and development' and defined expenditure qualifying for research and development relief. D had failed to inform C and C claimed that had it been told of the availability of the relief it would not have mothballed its software business so as to benefit from the relief. Held that C had not established that it had suffered damage because it was for C to satisfy the court that it had been entitled to receive the relief because it had been engaged in a qualifying project. D could not be held responsible for C's failure to retain sufficient records.

Clearsprings Management Ltd v (Businesslinx Ltd & Anor [2005] EWHC 1487 (Ch) (14 July 2005)

Thu, 14 Jul 2005 00:00:00 GMT

C brought an action against D, a software company, concerning the nature and extent of a copyright C had acquired in a web-based database system designed and developed by D under a contract with C. Under the contract, D supplied software tailored for the requirements of C’s business. C wished to sell the software, and alleged that D had always been aware that this was C’s intention and that a licence to re-sell the software should be implied into the contract. Mr Christopher Floyd QC found that on the evidence sub-licensing the software to third parties had not been contemplated at the time of the contract, and that no term permitting such re-selling should be implied into the contract. He found that the question of whether to imply a term into a contract was entirely dependent on the circumstances of the individual case. Robin Ray v Classic FM plc [1998] FSR 622 approved.