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Thursday, 9 February 2012

No self incrimination privilege for phone hacking

This Kat finds that, as a patent attorney, just as in his previous life as a chemist, there is little about his day job that overlaps with anything that his non-IP friends have ever heard of.  So while he was reading a racy report of another episode in the News of the World telephone hacking saga, he was astonished to come across the words “intellectual property”.  So what was going on?

It all comes down to the Decision
[2012] EWCA Civ 48 of the Court of Appeal, and the IPKat can do no better than defer to the Master of the Rolls (MR) giving the leading judgement in explaining the background (in this post, italics refer to direct quotations from the Decision):

1.  The issues raised on these two appeals concern the extent and effect of section 72 of the Senior Courts Act 1981 ('section 72'), which cuts down the common law privilege against self-incrimination in relation to certain types of claim. The issues arise in the context of claims brought by two individuals who allege that their mobile telephone voice messages have been unlawfully intercepted (i.e. that their phones had been hacked into) by Glenn Mulcaire, a private investigator engaged by News Group Newspapers Ltd ('NGN'), the owners of the recently closed newspaper, the News of the World.

2.  The claims are brought by (i) Nicola Phillips, a former assistant to Max Clifford, the well known public relations consultant, and (ii) Stephen Coogan, the well known comedian. Mr Coogan and Ms Phillips (together 'the claimants') each allege that voice messages on their mobile telephones ('voice messages') have been unlawfully intercepted by, or on the instructions of Mr Mulcaire and/or NGN, and that they have a cause of action in breach of confidence and in misuse of private information.

The IPKat notes that Glenn Mulcaire sought to avoid giving evidence relying, inter alia, on the privilege against self-incrimination (PSI).
  However, he ran into the problem of Section 72 of the above-mentioned Act.  Returning to the MR:

10.  The issues which have been debated on these appeals concern section 72, which is, so far as relevant, in the following terms:

'(1) In any proceedings to which this subsection applies a person shall not be excused, by reason that to do so would tend to expose that person … to proceedings for a related offence … :
(a)from answering any question put to that person in the first-mentioned proceedings; or
(b)from complying with any order made in those proceedings.

(2) Subsection (1) applies to the following civil proceedings in the High Court, namely:
(a) proceedings for infringement of rights pertaining to any intellectual property or for passing off;
(b) proceedings brought to obtain disclosure of information relating to any infringement of such rights or to any passing off;
(c) proceedings brought to prevent any apprehended infringement of such rights or any apprehended passing off.

(3) …. [N]o statement or admission made by a person:
(a) in answering a question put to him in any proceedings to which subsection (1) applies; or
(b) in complying with any order made in any such proceedings,
shall, in proceedings for any related offence ... , be admissible in evidence against that person …

(5) In this section:
"intellectual property" means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property;
"related offence", in relation to any proceedings to which subsection (1) applies, means:
(a) in the case of proceedings within subsection (2)(a) or (b):
(i) any offence committed by or in the course of the infringement or passing off to which those proceedings relate; or
(ii) any offence not within sub-paragraph (i) committed in connection with that infringement or passing off, being an offence involving fraud or dishonesty;
(b) in the case of proceedings within subsection (2)(c), any offence revealed by the facts on which the plaintiff relies in those proceedings;

So, in feline summary, Section 72 says that there is no protection against self incrimination in the case of intellectual property litigation.  Instead, statements made by a person in the litigation are not admissible in evidence against that person in proceedings for a “related offence”.

Glenn Mulcaire put forward the following arguments “which appear to be of some general significance” according to the MR (presaging an appeal to the Supreme Court?) as to why privilege against self-incrimination should apply:

i) Information obtained by Mr Mulcaire from intercepting the voice messages of Ms Phillips and/or Mr Coogan was not 'intellectual property' and therefore section 72 cannot apply;

ii) If the information in question was 'intellectual property':
(a) Mr Mulcaire would, if he were required to provide all the information ordered by Mann J, and some of the information ordered by Vos J, be at risk of being prosecuted for an offence which is not a 'related offence', so section 72 does not apply;
(b) Section 72 is inconsistent with Article 6 of the European Convention on Human Rights ('the Convention'), and the court should accordingly make a declaration of incompatibility.

Observing first at para 18:

I would take this opportunity to express my support for the view that PSI has had its day in civil proceedings, provided that its removal is made subject to a provision along the lines of section 72(3). Whether or not one has that opinion, however, it is undoubtedly the case that, save to the extent that it has been cut down by statute, PSI remains part of the common law, and that it is for the legislature, not the judiciary, to remove it, or to cut it down.

(which Merpel notes was not a promising start for Mr Mulcaire)

In the USA they call it the
Fifth Amendment....
the MR went on to examine the slightly curious definition of “intellectual property” in sub-section (5) of s72.  He had no difficulty in deciding that some of the voicemails would be “commercial information” according to the definition, and, moreover (at para 45) “that, as a matter of both principle and practice, non-commercial confidential information is within the ambit of the definition, because of the words 'or other intellectual property'

Mr Mulcaire did not even prevail in relation to non-confidential messages, with MR stating (at para 56):  “if a defendant has intercepted a claimant's voice messages, it seems to me that, even where there is a significant preponderance of plainly non-confidential messages, he should nonetheless disclose them as part of the overall disclosure exercise.

The MR also dismissed the arguments that Mr Mulcaire would be at risk of being prosecuted for an offence which is not a “related offence”, and that s 72 was incompatible with the Convention.

Therefore, the MR concluded (at para 83):

Accordingly, I would dismiss these appeals, as:

i) Much of the information on the voicemail messages of the claimants which have been intercepted by Mr Mulcaire is likely to have been 'commercial information or other intellectual property' within section 72(5);
ii) Although some of the information was not 'commercial information or other intellectual property', and, in Ms Phillips's case, the confidence may have been that of her clients, section 72 can be relied on against Mr Mulcaire in both cases;
iii) Para (a)(i) of the definition of 'related offence' in section 72(5) applies, and, while paras (a)(ii) and (b) do not, that does not assist Mr Mulcaire in resisting any aspect of the orders he is appealing;
iv) Section 72, as so interpreted, is not incompatible with the Convention, and in particular Article 6; so the orders requiring Mr Mulcaire to give the information ordered by Mann and Vos JJ were correct;
v) It would be inappropriate to impose any safeguards in favour of Mr Mulcaire over and above those contained in section 72(3);

Lord Justice Maurice Kay and the Lord Chief Justice simply agreed.

A local straw poll suggests that s72 is not well-known amongst non-litigating patent attorney types, so the IPKat would like to spread the word.

Merpel has heard that the provision was originally intended to help combat video music piracy by making Anton Piller orders more difficult to evade, but now wonders whether PSI is on its way out altogether.  Merpel also suspects that our friends in the USA may be shocked by this, as PSI is enshrined in the US Constitution as the Fifth Amendment.

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