|Breach of confidence cases can often be a game of|
Kat and mouse....
Yes, but in a varied form with safeguards in place.
|Goulding's Employee Competition,|
but no mention of Gurry or
- Identify which course is likely to involve the least risk of injustice if it turns out to be wrong.
- Recognize that a mandatory injunction - requiring a party to carry out steps rather than merely to stop something - may well carry a greater risk of injustice if it turns out to be wrong.
- Consider whether the court is assured, to a high degree, that the claimant will be able to establish this right at trial.
- Determine whether there are any other factors that make it appropriate to grant a mandatory injunction at an interim stage (even if the court does not feel highly assured that the claimant will establish its right).
- delivery up of the defendants' devices and computers to an external computer expert appointed by the defendants;
- imaging of the devices, to the extent not already carried out, such images being kept and preserved by the external expert;
- a search for confidential information and material using such information conducted in accordance with agreed search terms;
- material found from the search determined by the expert to fall within the scope of the order to be listed and shown to the defendants;
- if the defendants agree that the listed information uses the claimants' confidential information, they will agree to the destruction of the material on the devices that are to be returned to the defendants (provided that all material is preserved on a copy); and
- if the defendants do not agree that the information uses the claimants' confidential information, the material will still be removed from their devices if the computer expert considers it should be removed, and kept (but not made available to the defendants) pending trial.
|Next time, Merpel would remember to specify the form in which|
the confidential information should be delivered up....
- Admissions: The defendants' draft Defence admitted to the taking and misusing of the claimants' confidential information. Although the extent and scope of the taking and misuse would be left to be determined at trial, the admission was enough to establish a case for misuse of confidential information.
- Smoking gun disclosure: The disclosure provided thus far demonstrated the defendants' misuse and that the defendants knew that their conduct was wrong. In particular the Court referred to an email from the third defendant to the fifth defendant thanking him for sending some some information statistics (related to pricings) which stated:
"As mentioned to Andrew I don't think you can formally put these in any presentation as we would obviously be breaching confidentiality but would suggest that we keep in our back pocket to show on a nudge nudge wink wink basis to interested parties."
- The defendants' conduct: The fact that there has been no complaint of non-compliance of the original order did not, in the Court's view, diminish the need for an interim order enabling the search of the defendants' devices. The Court declared:
"Whilst the defendants have disclosed a large number of documents and complied with the orders, their behaviour as admitted and shown in the e-mails, to which attention has been drawn in the course of this hearing shows a high degree of subterfuge in the use of the claimants' confidential material."
There are three practice points to note:
First, this case is unusual. Most claimants can only dream of defendants who, like Mr Skriptchenko and Portsoken Ltd, submit to an injunction and disclose, by consent, a treasure trove of documents. Without this disclosure, the "smoking gun" style e-mails and documents would have been unlikely to be found or found so easily. This evidence, together with the resulting admissions, paved the wave for the Court to order mandatory interim relief. This case again underlines the the game-changing nature of early disclosure in helping to support a claimants' breach of confidence case and to provide a firm basis for interim relief. It also highlights why many consider that the EU Trade Secrets Directive missed a trick in not ensuring that all Member States' national courts have the power to grant such disclosure (of course, the AmeriKat is not suggesting that the material here would necessarily fall within the definition of a "trade secret").
|The AmeriKat pondering Mrs Justice Slade's|
Second, the AmeriKat was also struck by an aspect of the relief which provided that the defendants confirm whether they agreed with their appointed expert that the information he or she identifies as being subject to the order is confidential and should be destroyed. It seems curious that the parties did not agree to jointly appoint an independent expert. Of course experts have a duty to the court as set down in CPR 35 and accompanying Practice Direction. That being said, it still seems strange that the defendants, who were acknowledged by the court to be untrustworthy, were permitted to appoint their own expert who would decide, in consultation with them, whether the information is confidential to the claimants and should to be deleted.
The in-built safeguards seem to cater for this risk where there is a dispute between the expert and the defendants, but what about the information that does not even reach the eyes of the defendant? This is the third observation - what about information that the defendants' expert determines falls outside the scope of the order? If the defendants' expert decides that material is not the claimants' confidential information (falling outside the order), it will not be listed and shown to the defendants for agreement/dispute. It will remain on the devices that are eventually returned to the defendants. As the first port of call in deciding what material falls within or outside the scope of the order, it could be argued that the defendants' expert has a lot of control in what material remains on the devices that are eventually returned to the defendants. How does the claimant go about safeguarding that initial analysis conducted by the defendants' expert? A suggestion could be a jointly agreed instruction or primer to the expert, together with the nomination of the claimants' own independent expert who could help to ensure that no potentially confidential information gets through the net on the first pass (subject to a confidentiality regime).
Of course all of these concerns may well have been dealt with by the final Order. In the meantime, the AmeriKat are sure there are claimants out there who will be dreaming of such a fairytale set of facts....