The case of Point Solutions Ltd v Focus Business Solutions Ltd and Another [2007], which was heard in the Court of Appeal, involved a claimant who carried on business as a provider of computer software services, and in particular software for the creation and use of electronic application forms for provision to the financial services sector.
At the material time the defendants had for a number of years been the dominant supplier in that market. In April 2001, the claimant and the defendants entered into an outsourcing agreement under which the claimant carried out work for the defendants, work which included a review of a module in the defendants’ Goal software. In order to carry out that work, the claimant was provided with three modules of the defendant’s Goal software.
In the course of its business the claimant supplied a product known as Acuo Software, a product which had been developed over a period between 2 July 2001 and August 2002. The development of Acuo Software was in response to an approach from CMI, a well known pension provider.
In October 2001, the outsourcing agreement between the claimant and the defendants came to an end. Apparently, the defendants had learned that the claimant had been awarded the CMI contract, for which the defendants had made an unsuccessful bid, and that the claimant intended to bid for a different contract with H (the parent company of CMI) in direct competition with the defendants.
The defendants asked for the return of the three modules of Goal software. The claimant claimed to have complied with this request. In October 2002, the defendants wrote to the claimant to:
“Seek confirmation of the provenance of the software you have developed in order to compete with [the defendants]”
The defendants also sought confirmation that the claimant had not undertaken any copying of the defendants' Goal software or solutions. The claimant replied, confirming that it had not copied the defendants' software, and offered to make voluntary disclosure (to a mutually agreeable third party) of material that would confirm that there had been no copyright infringement.
The parties agreed to the identity of the experts to be instructed, and terms of reference on the basis of which they should be asked to act. However, the matter did not progress. Eventually, in December 2004, the claimant commenced proceedings seeking a declaration of non-infringement of copyright. It was directed that an expert's report be obtained, however the parties failed to comply with that direction. The judge refused to grant the relief sought, saying that she had been asked to make a declaration that software, which she had not yet seen, did not infringe any copyright in another software product which she had also not yet seen. She went on to hold that copyright had not yet been demonstrated with regard to such software.
The claimant appealed. It submitted on appeal:
- That the judge was wrong to find that the claimant had failed to establish on the balance of probabilities that it did not copy the defendant's source code in creating the Acuo Software;
- That the judge had erred in finding that there was no utility in making a declaration even if there had been no copying; and
- That her finding that she would have exercised her discretion against granting a declaration even if she had found in its favour on the issue of non-infringement was perverse.
The appeal would be dismissed.
The claimant had not shown that the judge was wrong in finding that it had failed to establish on the balance of probabilities that it had not copied the defendants' source code in creating the Acuo Software. Therefore, the other two grounds did not arise.
It is interesting to note that a judge should be slow to allow proceedings of this nature to be brought to trial in circumstances where the parties have chosen (for tactical and forensic reasons) to disregard directions already given for the provision of the expert assistance needed if the court is to decide the real question in dispute.
If you require further information contact us at enquiries@rtcoopers.com
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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, designs, Copyright law, know-how, Patent Licensing, Patent Infringement, trade marks, trademarks, trademark searches, trademark infringement, Intellectual Property Law, IP lawyers, IP solicitors, copyright lawyers, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding, intellectual property lawyers, intellectual property solicitors, IP law firm, solicitors in Docklands, solicitors in Wapping, pharmaceutical lawyers, regulatory lawyers, regulatory solicitors, pharmaceutical solicitors
If you require further information contact us at enquiries@rtcoopers.com
Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php
Article Source: http://EzineArticles.com/?expert=Rosanna_Cooper
Thursday, July 12, 2007
Data Protection - Database Right For Sales Agencies
A ruling by the High Court has resulted in new case law governing sales agencies with regard to database rights. Where a sales agency has built up a database of customer details, they will now own a database right in that database in the event that there is not an agreement with another party as to the ownership of that database.
What this means in practice is that it is now important to ensure that agency or distribution agreements include an express assignment of any database rights to the supplier of the information (or principal), rather than relying on a general IP assignment clause. She says:
"The maker of a database is the first owner of database right in it. The claimant in the case tried to argue that the agent was a self employed consultant and therefore could not have the status of "maker" of the database - this was rejected by the court".
The case was decided with regards to the EC Database Directive and its implementation in the UK through the Copyright and Rights in Databases Regulations 1997. The facts of the case involved an agent selling home insulation which the principal manufactured. The agent sold the principal's insulation to customers and used the principal's name and business cards when doing so. The agent also created a database of customers to whom it had sold the insulation, however, the principal then began using this database to sell its other products.
Once the matter came into dispute, the agent issued a counter-claim for delivery up of the database claiming to be the rightful owner of it.
"The court held that the agent had created the database of customer names - they were, after all, customers of the agent, and accordingly the database belonged to the agent”.
The case was reasonably clear cut as there was no employment relationship, and there was no express agreement regarding the ownership of the intellectual property rights in the database. Consequently, the ownership of the database right was vested in the sales agent.
It means that Sales agents and distributors will be in a strong position on termination of the arrangement if ownership of the intellectual property rights including the database right has not been made expressly stated in an agency or distribution agreement. This case is consistent with the customer lists belonging to the agent, distributor or franchisee as part of their confidential information. Here there is an issue regarding the distinction between the database right and the copyright in the content of the database.
The William Hill case made a distinction between the rights in the database itself and rights in the contents and it is unclear whether the judge took this into account in deciding that the database (which presumably included the customer information contained within it), belongs to the sales agent.
Comment: In the future, agency and distribution agreements will have to deal with the ownership of any customer database i.e. customer list as well as other intellectual property rights. Not many agents or distributors would want to give us their customer lists. If not the principal/supplier may lose control of the customer database on termination, as well as paying potential compensation to the agent on termination to obtain the list.
© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
Please contact us for information on how to treat personal data of individuals at enquiries@rtcoopers.com or visit http://www.rtcoopers.com/practice_dataprotection.php
Article Source: http://EzineArticles.com/?expert=Rosanna_Cooper
What this means in practice is that it is now important to ensure that agency or distribution agreements include an express assignment of any database rights to the supplier of the information (or principal), rather than relying on a general IP assignment clause. She says:
"The maker of a database is the first owner of database right in it. The claimant in the case tried to argue that the agent was a self employed consultant and therefore could not have the status of "maker" of the database - this was rejected by the court".
The case was decided with regards to the EC Database Directive and its implementation in the UK through the Copyright and Rights in Databases Regulations 1997. The facts of the case involved an agent selling home insulation which the principal manufactured. The agent sold the principal's insulation to customers and used the principal's name and business cards when doing so. The agent also created a database of customers to whom it had sold the insulation, however, the principal then began using this database to sell its other products.
Once the matter came into dispute, the agent issued a counter-claim for delivery up of the database claiming to be the rightful owner of it.
"The court held that the agent had created the database of customer names - they were, after all, customers of the agent, and accordingly the database belonged to the agent”.
The case was reasonably clear cut as there was no employment relationship, and there was no express agreement regarding the ownership of the intellectual property rights in the database. Consequently, the ownership of the database right was vested in the sales agent.
It means that Sales agents and distributors will be in a strong position on termination of the arrangement if ownership of the intellectual property rights including the database right has not been made expressly stated in an agency or distribution agreement. This case is consistent with the customer lists belonging to the agent, distributor or franchisee as part of their confidential information. Here there is an issue regarding the distinction between the database right and the copyright in the content of the database.
The William Hill case made a distinction between the rights in the database itself and rights in the contents and it is unclear whether the judge took this into account in deciding that the database (which presumably included the customer information contained within it), belongs to the sales agent.
Comment: In the future, agency and distribution agreements will have to deal with the ownership of any customer database i.e. customer list as well as other intellectual property rights. Not many agents or distributors would want to give us their customer lists. If not the principal/supplier may lose control of the customer database on termination, as well as paying potential compensation to the agent on termination to obtain the list.
© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
Please contact us for information on how to treat personal data of individuals at enquiries@rtcoopers.com or visit http://www.rtcoopers.com/practice_dataprotection.php
Article Source: http://EzineArticles.com/?expert=Rosanna_Cooper
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