When is a secret not a secret?

Question: when is a secret not a secret? Answer: when everyone who wants to be told has a right to find out. This is the moral of a fascinating and really important decision of Mr Justice Arnold on Wednesday in the Patents Court, England and Wales, in LG Electronics Inc v Sony Europe Ltd, Sony Computer Entertainment Europe Ltd, Sony Computer Entertainment Inc and Sony Corporation.

LG sued Sony for infringement of three Blu-Ray patents. In these proceedings LG applied for summary judgment in relation to Sony's defence that LG's patents were invalid in light of an item of alleged prior art. The earliest priority date for any of those patents was March 2003.

Sony's defence was based on invalidity, basing its position on a document on DVD specifications for read-only discs which was available to the public in 1997.  According to LG, this 1997 document was not prior art that was capable of undermining its patents' novelty. The information in it was held by a standards body, the DVD Format/Logo Licensing Corporation, for the limited purpose of developing DVDs and related products. This document was only accessible by people who paid the required fee and signed a non-disclosure agreement. Accordingly it was not made available to the public.

Mr Justice Arnold refused the application for summary judgment. Among other reasons for doing so, he concluded that, even though he would accept LG's evidential submissions in support of confidentiality and the restriction of the use of the information in the 1997 document, a not-unrealistic possibility remained that Sony would be able to establish that all interested persons, who might want to manufacture under the standard, had an opportunity to gain knowledge of the contents of that document and to use that information for their own purposes.

Notes the IPKat: if a standard truly is a standard, everyone who wants to make any product that is governed by the standard has to make it in accordance with that standard -- or it wouldn't be standard.  What's more, since we allow the setting of standards and don't stigmatise them automatically as being anticompetitive clubs where information concerning the standard is pooled between club members so that no-one else can make products that conform to the standard, it would be not just anti-competitive but positively churlish to refuse to provide details of a standard to anyone who asks. Now, what sort of people ask for details of standards? Obviously, anyone who is interested in making DVDs.

This case raises another important question: is information which is available in the public domain to be treated as confidential for the purposes of patent law by virtue of the fact that it's labelled "confidential"? The answer must be "no": though the information may not be available to the public free, what the public does have is a known source for the information which will be available to all on similar, justifiable terms as of right.  In these circumstances, the purpose of the obligation of confidence is clearly only to ensure that a standards body is able to recover its own charges. That is quite different from an obligation of confidence designed to restrict the supply of information per se.

This case is not yet available on BAILII.  Merpel keeps hearing dire rumours of cases which have recently been posted on BAILII and then have suddenly disappeared again, apparently for "copyright reasons". She fervently hopes that copyright is not about to come into conflict with the public's interest in gaining access to the law, including decided cases with precedental value by which that public is bound. If any readers have experienced this phenomenon, will they please let Merpel know.

Blu-Ray here
Sting Ray here
Sugar Ray here
Catt Ray here
When is a secret not a secret? When is a secret not a secret? Reviewed by Jeremy on Friday, July 29, 2011 Rating: 5


  1. "copyright reasons"?


  2. Judgments are Crown copyright, and may be reproduced freely as long as they are acknowledged as such.

  3. Take a look at BoA case T 300/86, where the citation had the word "confidential" on the front cover. Even though it seemed that pretty well everybody who was anybody had read it, the board took the following view: "The fact that document D1 was passed to a large circle of persons, namely a great many colour TV set manufacturers, does not of itself make the document publicly available, since in the first place - as already stated - a significant proportion of colour TV set manufacturers is not to be equated with the public". Hmmm.

  4. I was a bit surprised to read that Bailii has been removing judgements due to copyright reasons since, as a trustee of Bailii, I have never heard of such a thing. There are instances where judgements are removed at the request of the court service, but usually these are re-sent to Bailii within a day or so. Infrequently, Bailii is asked to remove a judgment because it may prejudice a current case. All publishers working with these materials have to accord with these requests.

    I should point out that there is no system which automatically sends judgments to Bailii. Each HC judge (and their clerk) is responsible for making the judgment available. CoA and SC judgements arrive with us automatically.

    I have been keen to have more IP judgments appear - particularly from the copyright tribunal and the patents county court, for example, but we cannot make anyone send us judgments. As practitioners you can help Bailii by encouraging the forwarding of anything you think would be useful to us. We hope to provide an efficient service and try to upload within a few hours of receiving a judgment but - given our very small staff - there may be periods when the time taken is just a bit longer.

  5. I should also point out to the earlier respondent that some IP judges have asserted - even relatively recently - that they own the copyright in judgments (see Laddie et. al. for the reasoning) so it is not the case that 'crown copyright' is the simple answer to 'who owns the law?' We would ideally like to digitise older judgments from law reports (excluding, of course, the headnotes) but the current copyright regime does not enable us to do this, further demonstrating the weakness of the crown copyright thesis.


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