Factual and Procedural Background
The Claimant ("FTS") alleges that the Defendants infringed its copyright and database rights in certain tables of data known as "the PM Abs Lists" and misused confidential information contained therein. The First Defendant is sued in his representative capacity for West Yorkshire Police ("WYP"), and the Second Defendant ("Mr Hirst") was formerly a detective constable employed by WYP.
FTS developed software called FTS Hex, which includes PM Abs Lists used for extracting data from Nokia mobile phones. The Defendants, through WYP's High Tech Crime Unit ("HTCU"), developed their own lists of PM Abs addresses ("WYP Lists") and distributed them via a website. The claim concerns whether these WYP Lists and a related list distributed with software called Pandora's Box infringe FTS's rights.
FTS commenced proceedings on 29 May 2009. The case involved detailed factual findings about the development and use of the PM Abs Lists, the methods of data extraction from mobile phones, and the relationships and interactions between the parties, including meetings and exchanges of information between FTS, WYP, and third parties.
Legal Issues Presented
- Whether copyright subsists in the PM Abs Lists compiled by FTS.
- If copyright subsists, whether the Defendants infringed that copyright by reproducing a substantial part of the PM Abs Lists.
- Whether database right subsists in the PM Abs Lists and if the Defendants infringed that right.
- Whether the Defendants misused confidential information contained in the PM Abs Lists.
- Whether the Defendants can rely on the defence of fair dealing for research or other exceptions.
- Whether the Defendants have an innocence defence to damages under section 97(1) of the Copyright, Designs and Patents Act 1988.
Arguments of the Parties
Appellant's Arguments (FTS)
- FTS claims copyright subsists in the PM Abs Lists as original literary works or compilations other than databases, being the author's own intellectual creation.
- The Defendants copied the PM Abs Lists, as evidenced by strong similarities and shared errors in the WYP Lists and Pandora's Box List.
- The Defendants misused confidential information when disseminating the PM Abs Lists.
- The Defendants' use was not fair dealing as it was competitive, the extent of copying was substantial, and no acknowledgement was given.
- FTS denies that the Defendants have an innocence defence to damages, asserting that Mr Hirst knew or had reason to believe copyright or database rights subsisted.
- If copyright does not subsist, database right does subsist due to substantial investment in obtaining and verifying the data.
Appellee's Arguments (Defendants)
- The PM Abs Lists do not attract copyright protection as they are databases, not original literary works or compilations other than databases.
- The similarities between the PM Abs Lists and WYP Lists can be explained by independent ascertainment of PM Abs addresses.
- The Defendants deny infringement and rely on fair dealing for research purposes, asserting the use was non-commercial and for scientific research.
- The Defendants argue that any investment relates to obtaining data, supporting database right subsistence if copyright does not subsist.
- The Defendants contend they had no knowledge or reason to believe copyright subsisted, seeking an innocence defence to damages.
- The Defendants dispute that they authorised infringement by third parties such as those distributing the Pandora's Box List.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Marleasing SA v La Comercial Internacional de Alimentación SA [1990] ECR I-4135 |
Strong duty of interpretation of domestic legislation in conformity with EU directives. |
Applied to interpret domestic copyright and database legislation consistently with EU directives. |
| Litster v Forth Dry Dock and Engineering Co Ltd [1990] 1 AC 546 |
Principle of interpreting legislation compatibly with Convention rights. |
Supported interpretation of domestic law in line with EU law. |
| Pfeiffer v Deutsches Rotes Kreuz, Kreisverband Waldshut eV [2004] ECR I-8835 |
Interpretation of EU directives consistent with their objectives. |
Used to guide interpretation of copyright and database directives. |
| R (IDT Card Services Ireland Ltd) v Commissioners for Her Majesty's Revenue and Customs [2006] EWCA Civ 29 |
Interpretation of domestic legislation in conformity with EU directives. |
Reinforced approach to statutory interpretation. |
| Angelidaki v Organismos Nomarkhiaki Aftodiikisi Rethimnis [2009] ECR I-3071 |
Interpretation of EU legislation in light of objectives and context. |
Applied in interpreting database and copyright directives. |
| Churchill Insurance Co Ltd v Wilkinson [2010] EWCA Civ 556 |
Strong duty of interpretation of domestic legislation in conformity with EU directives. |
Supported consistent interpretation of copyright law. |
| SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch), [2011] RPC 1 |
Distinction between protectable expression and unprotectable ideas, procedures, methods. |
Guided analysis of originality and copyright subsistence in software and compilations. |
| Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-0000 |
Test for reproduction of a substantial part of a literary work as expression of intellectual creation. |
Applied to assess infringement and originality. |
| Fixtures Marketing Ltd v Organismos Prognostikon Agonon Podosfairou [2004] ECR I-10549 |
Definition and characteristics of a database under EU law. |
Used to classify the PM Abs List as a database. |
| Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 1 WLR 3281 |
Originality requiring skill, labour and judgment in creating a work. |
Considered and distinguished from the present case regarding numerical data. |
| Coco v A.N. Clark (Engineers) Ltd [1969] RPC 41 |
Elements of breach of confidence: confidential information, obligation of confidence, unauthorised use. |
Applied to assess breach of confidence claim. |
| Attorney General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 |
Approval of breach of confidence principles. |
Confirmed legal framework for breach of confidence. |
| Campbell v MGN Ltd [2004] UKHL 22, [2004] AC 457 |
Further approval of breach of confidence elements. |
Used to support breach of confidence analysis. |
| Douglas v Hello! Ltd (No 3) [2007] UKHL 21, [2008] 1 AC 1 |
Clarification of breach of confidence principles. |
Applied in breach of confidence context. |
| Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 |
Definition of "necessary quality of confidence". |
Used to assess confidentiality of PM Abs List. |
| Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142; [2002] Ch 149 |
Factors relevant to fair dealing, including competition and extent of use. |
Guided fair dealing assessment. |
Court's Reasoning and Analysis
The court began by examining the nature of the PM Abs Lists, concluding that the individual PM Abs addresses do not attract copyright protection because they are data or facts, not original expressions. The court classified the PM Abs List as a database, a collection of data arranged systematically and individually accessible, but found that the arrangement lacked the necessary intellectual creation to qualify for copyright protection.
Applying relevant international treaties, EU directives, and domestic legislation, the court interpreted copyright and database rights consistently with the principle that copyright protects expression, not ideas or data. It found that copyright did not subsist in the PM Abs List, but database right did subsist due to FTS's substantial investment in obtaining and verifying the data.
The court then considered infringement, finding that the WYP Lists and Pandora's Box List reproduced a substantial part of the PM Abs List, supported by strong similarities and shared errors. The Defendants failed to rebut the inference of copying, particularly regarding the WYP Lists posted by Mr Hirst.
The defence of fair dealing was narrowly construed in accordance with the Information Society Directive and case law. The court held that the Defendants' use was not fair dealing because it was competitive, involved substantial reproduction, and lacked acknowledgement.
Regarding breach of confidence, the court found that the PM Abs List had the necessary quality of confidence and that Mr Hirst received the information under circumstances imposing an obligation of confidence. Mr Hirst misused the confidential information by posting the WYP List publicly.
Liability was established for Mr Hirst as a primary infringer and for WYP vicariously for acts committed by Mr Hirst and others in the HTCU prior to Mr Hirst's departure. The claim against the Defendants for the Pandora's Box List failed as there was insufficient evidence of authorisation or direct infringement.
The Defendants' innocence defence to damages was rejected because Mr Hirst knew or had reason to believe that rights subsisted in the PM Abs List.
Holding and Implications
The court held that copyright does not subsist in the PM Abs List, but database right does subsist and has been infringed by the Defendants. The Defendants misused confidential information in relation to the WYP Lists, and the claims for breach of confidence succeed in respect of those lists but not the Pandora's Box List.
The fair dealing defence was rejected, and the Defendants have no innocence defence to damages. Liability for infringement and breach of confidence attaches to Mr Hirst and vicariously to WYP for actions prior to Mr Hirst's departure.
No new precedent was established beyond the application of existing principles to the facts. The decision clarifies the distinction between copyright and database rights in compilations of data and confirms the strict interpretation of fair dealing exceptions. The ruling underscores the importance of protecting confidential information and the liability of individuals and public authorities in such contexts.