Copyright - Ukoumunne v The University of Birmingham

Author Brianboru100 Licence CC BY-SA 3.0 Source Wikipedia University of Birmingham 

Jane Lambert

Intellectual Property Enterprise Court (Miss Recorder Amanda Michaels) Ukoumunne v The University of Birmingham and others [2020] EWHC 184 (IPEC) (5 Feb 2020)

On 5 Dec 2019 Miss Recorder Michaels heard applications by the claimant for the transfer of her claim for copyright infringement, breach of confidence and other complaints to be transferred to the Queen's Bench Division and for an order for disclosure. The recorder also heard applications by the defendants to strike out the action under CPR 3.4 (2) (a) and summary judgment under CPR 24.2.

The claimant is a graduate student of the University of Birmingham who has taught at Manchester Metropolitan University and the University of Greenwich. The first defendant is the University of Birmingham, the second, third, fourth and fifth defendants are academics at that University. The claimant alleged that the second, third and fourth defendants had written articles and a book that infringed her copyright. The sixth defendant is the publisher of journals that contained articles by the second, third and fourth defendants and a book by the second that were alleged to infringe the claimant's copyrights and breach her confidence.

The learned recorder delivered judgment in  Ukoumunne v The University of Birmingham and others [2020] EWHC 184 (IPEC) on 5 Feb 2020.   At paragraph [88] of her judgment, she announced that she would make an order substantially in the following terms:

"a. that unless the Claimant amends her claim for breach of confidence and/or provides proper particulars of her claim, the claims for breach of confidence against the 1st to 4th Defendants and the 6th Defendant shall be struck out forthwith;
b. that any surviving claim for breach of confidence against the 6th Defendant shall be stayed;
c. that unless the Claimant amends her claim for breach of contract and/or provides proper particulars of her claim, the claim for breach of contract against the 1st Defendant shall be struck out forthwith; and
d. striking out the claim for breach of contract against the 2nd to 5th Defendants, the claims for infringement of copyright, professional negligence and racial harassment, bullying and sex discrimination, and 'loss of earnings' as against all of the Defendants; and (for the avoidance of doubt) all of the claims against the 5th Defendant."

She reserved the claimant's application to transfer the case to the Queen's Bench Division and initial disclosure until it was clear whether or not any intellectual property issues remained to be determined.  

The claimant's case was that she had submitted chapters of her proposed doctoral dissertation entitled "Black Activism in Education: Lessons from the Unheard" between 2008 and 2011 and a complete draft towards the end of 2011.  In August 2011 the claimant discovered an article by the fourth defendant entitled  "Immigrants and ethnic minorities in the history of education" which had been published in the sixth defendant's journal "Paedagogica Historica" International Journal of the History of Education in 2009 and an article by the third and fourth defendants entitled "Exploring supplementary education: margins, theories and methods" which appeared in sixth defendant's History of Education in 2011. In 2012 she discovered an article by the second defendant entitled "A tradition in ceaseless motion: critical race theory and black British intellectual spaces" which had been published in the sixth defendant's journal Race, Ethnicity and Education.  She also found that the second defendant had written a book entitled  Black British Intellectuals and Education: Multiculturalism's hidden history which was published by the sixth defendant in 2014.

Believing that those publications reproduced material from her dissertation, the claimant complained of plagiarism to the University. The University carried out some investigations but rejected her complaint. There was correspondence between the parties until January 2019 when the claimant issued proceedings out of the Queen's Bench Division.  The claim was transferred to the Intellectual Property Enterprise Court in June 2019.  Judge Hacon ordered the claimant to supply further information of the claim which she partially provided.  The first five defendants applied to strike out the claim under CPR 3.4 (2) (a). The sixth also applied to strike out the claim under CPR 3.4 (2) (a) but, in addition, it relied upon CPR 24.2. 

Referring to Case C-5/08, Infopaq International A/S v Danske Dagblades Forening [2012] Bus LR 102, ECLI:EU:C:2009:465, [2010] FSR 20, [2009] ECDR 16, [2009] ECR I-6569, EU:C:2009:465, [2009] EUECJ C-5/08 and Case C-683/17 Cofemel - Sociedade de Vestuario SA v G-Star Raw CV EU:C:2019:721, ECLI:EU:C:2019:721, [2019] EUECJ C-683/17 and Kogan v Martin and others (Rev 1) [2019] EWCA Civ 1645 (9 Oct 2019), the recorder instructed herself that:

"(1) For the right to be infringed, two elements have to be established, (a) a sufficient degree of objective similarity between the copyright work and the alleged infringing work and (b) that this was the result of the copyright work having been copied, i.e. that there is a causal connection between the two;
(2) The exclusive right relates not only to the entire work but also to any substantial part of it, that is to any part that contains elements that are the expression of the intellectual creation of the author of the work;"

She noted at paragraph [38] of her judgment that:

"The Claimant does not allege copying in terms of the reproduction of a substantial part or parts of the text of her copyright, whether copied verbatim or by paraphrasing her language. She had previously complained that the plagiarism detection tool Turnitin, used in the University's investigations of her complaint, was not relevant to her complaint because it detects copying of textual material and not the "replication of ideas and sources." The Claimant told me that her case was not one of textual copying, but of rewriting her ideas and using sources which were not necessarily in the public domain, for which she had "joined the dots." The Claimant also told me that the Book was structured in a similar manner to her thesis, running chronologically from and to the same dates, with chapters roughly covering decades, and with a separate chapter on the position of women towards the end. She said that the overall subject matter of the Book was the same as that of the thesis, that is to say it related to black activists, rather than (as suggested by the title) black British intellectuals."

She acknowledged in the next paragraph that "textual copying is not the only kind of reproduction which may be relevant, for substantial copying of the original collection, selection, arrangement, and structure of literary material may also infringe, as long as that amounts to copying of the expression of the author's ideas, not simply of the ideas or theories found in the copyright work,"

The recorder invited the claimant to select her best examples of the alleged copying.  The claimant produced four. The recorder considered each of those examples and found none that raised a prima facie case of copyright infringement.  The recorder also considered examples in the further information that the claimant had supplied pursuant to Judge Hacon's order but could find no evidence of copying,  Miss Recorder Michaels concluded that this was not a claim that should go to trial and struck out the allegations of copyright infringement.

After referring to Coco v AN Clark (Engineers) Ltd [1968] FSR 415, Fraser v Thames TV [1984] QB 44 and  Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, [1996] EWHC Patents 1, (1997) 20 (3) IPD 2002. the recorder instructed herself at [57] that:

"Potentially, in a case such as this, despite there being no infringement of copyright, because the expression of the Claimant's ideas has not been reproduced by the Defendants, there may nevertheless have been a breach of confidence. Such a case might be made out if there was unauthorised use by one or more of the Defendants of some identifiable confidential information found in the Claimant's works."

She accepted that the claimant's research had the necessary quality of confidence about it and that it would have been disclosed in circumstances giving rise to an obligation of confidence. However, Judge Hacon's order for further information on the confidence claim had not been obeyed fully.  if the claimant carried out her obligation, the recorder was prepared to allow the confidence action against the University and the second to fourth defendants go to trial.   No complaint had been made against the fifth defendant other than his handling of the plagiarism complaint. The complaint against the publisher was more tenuous but it was not impossible for it could to succeed if the claimant won against the first four defendants. The recorder stayed the claim against the sixth defendant upon its undertaking to be bound by any finding that may be made by the court. 

Miss Recorder Michaels was of opinion that an action for breach of contract might lie against the University if it could be pleaded properly and particularized and she gave the claimant one last opportunity to amend and particularize her claim. She found no merit in the claims for professional negligence, racial harassment, bullying or sex discrimination, 

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