|Not everyone needs|
an endoscope ...
MI sought summary judgment on its claims for infringement of database right, breach of confidence and repayment of the money paid to Eakins under the compensation agreement, at which point Eakins began to resist: no, he said, MI had no database rights in the distributor database because the effort that had gone into it was insufficiently substantial and because it contained data created by MI, rather than data obtained by MI; in any event, MI had no database rights in the customer database because third party material had been incorporated into it.
Richard Meade QC granted summary judgment in relation to infringement of database right but not for the claim of breach of confidence. In his view
* while it was clear that a trial would be needed to determine the issues of intellectual property ownership as well as other causes of action that were not subject to the application for summary judgment, if MI could establish a proper claim for summary judgment to the requisite standard, it would not be right to withhold summary judgment merely because there would still have to be a trial on the other matters.
* as to the distributor database, Eakins's argument that no substantial work had gone into it was hopeless. MI had clearly entered into correspondence with potential distributors to find out their likely level of interest in the products and, while work done internally within MI might amount to creation, the database clearly went beyond that: it reflected research in the commercial world.
* equally, while Eakins was working for MI, substantial work had gone into adding to the customer database and maintaining it -- and Eakins could not escape liability by saying that the database contained copyright material belonging to someone other than the database owner. The fact that the customer database contained material from another source did not mean that there was no database right in relation to it.
* though Eakins had clearly perpetrated a number of acts of taking and misusing confidential information, there was a significant dispute about both the extent of these acts and their consequences and an important dispute remained to be resolved as to whether MI's claim was too broad. This being so, the burden was on MI to identify the scope and nature of its confidential information in order to support its claims for an injunction to prevent the production of competing products, On the facts before it, the court was unable to frame any useful relief to reflect Eakins's extensive breach of confidence: a declaration would be neither clear nor useful, and an order relating to financial relief would be pointless as that would be considered on an inquiry into damages. Summary judgment was therefore refused in relation to breach of confidence.
* Eakins had clearly breached the terms of the compromise agreement and there was no reason to delay the repayment of his severance pay-off, so MI could recover that straight away.
This Kat continues to find it strange that the parties to a legal action should have to focus on issues such as whether a database is created from within or acquired from outside, and how much effort has gone into creating the data itself rather than creating the database, since these issues seem so irrelevant to the world of business and commerce in which investment in databases is made. There, the questions asked are along the lines of "is it a valuable business asset?", "what would happen if our competitors could also use it?" and "how can we stop them getting their hands on it?"
Endoscopy and other-endoscopy here