Copyright - DPA (London) Ltd v D'Aguanno and Others

Author David Cane Licence CC BY-SA 2,0 Source Wikipedia
 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke)  DPA (London) Ltd v D'Aguanno and others [2020] EWHC 2374 (IPEC) (3 Sept 2020)

This was an action for copyright infringement and breach of contract brought by a firm of architects against two of its former architectural designers and the company that those designers had set up after they stopped working for the claimant. It is not clear when proceedings were issued but the first and second defendants left the claimant at the end of Dec 2019 and there was a case management conference before His Honour Judge Hacon on 4 March 2020.   The action was tried by Judge Melissa Clarke on 14 and 15 July 2020.  She handed down judgment on 3 Sept 2020.

While working for the claimant the defendants produced architectural plans and drawings for a number of projects.  The first defendant, Andrea D'Aguanno also produced 3-dimensional computer models and computer-generated images for those projects. It was common ground that copyright in those works belonged to the claimant. The claimant alleged that the defendants had infringed those copyrights. It also contended that the defendants had been bound by restrictive covenants.  It accused the second defendant, Gretel Muller, of breaching those covenants.  Finally, it complained that both defendants had breached their retainers by failing properly to store their work on the claimant's server and by removing that work when they ceased working for the claimant.

Save that Mr D'Aguanno admitted that he had been in possession of "one copy of some 3D models drawings" belonging to the claimant, which he offered to return, the defendants denied liability. In response to a request for further information, Mr D'Aguano said that on ceasing to work for the claimant he had stored on his personal laptop a 3D model from three projects which he later transferred to a pen-drive storage device. In May 2020 he returned that storage device to the claimant. He denied that he had ever made any use of those models. He said he kept them only for the purposes of his portfolio. He added that he did not have, and had never kept, any other of the claimant's works.

At the CMC, Judge Hacon ordered the following issues to be tried:

"Copyright Infringement
1. Have the Defendants reproduced a substantial part of the Claimant Works, or any of them, in a material form, including storing the Claimant Work in any medium by electronic means?
2. Have the Defendants possessed the Claimant Works, or any of them, in the course of a business?
3. Have the Defendants reproduced a substantial part of the Claimant Works or otherwise used the Claimant Works in their ongoing work for Mr Simpson, including but not limited to in relation to the Wellington House project?
4. Have the Defendants or any of them authorised the acts set out at paragraph 1 to 3 above?

Breach of contract
5. Did the First and/ or Second Defendants fail to store the Claimant Works or any of them on the Claimant's server?
6. Did the First and/ or Second Defendants remove the Claimant Works or any of them from the Claimant's offices and/ or prevent the Claimant from having access to its files?
7. Does the Claimant have access to the Claimant Works which are in the possession of the Defendants?
8. Did the First and/ or Second Defendants fail to return all of the Claimant's property (including the Claimant Works or any of them) when their contracts with the Claimant ended?

Restrictive covenants
9. Were the Restrictive Covenants part of the Second Defendant's contract with the Claimant?
10. Did the Second Defendant breach either or both of the Restrictive Covenants?
11. In particular, has the Second Defendant provided like services to any competitor of the Claimant's in Hertfordshire in the 12 months following the termination of her contract with the Claimant?
12. In particular, has the Second Defendant either during the provision of her services to the Claimant or in the twelve months following the termination of her contract solicited Edward Simpson or Jeffrey Benedyk?"

At trial, Judge Melissa Clarke considered first the terms on which the first and second defendants had worked for the claimant and in particular whether they were bound by any restrictive covenants.  The claimant alleged that the defendants had accepted a written agreement that contained restrictive covenants.  In the case of Ms Muller, it relied on an agreement dated 28 Dec 2016.  She was able to prove from a credit card statement that she had been out of the office with her family on the day she was alleged to have signed the agreement.  The judge found Ms Muller to be a straightforward, credible and honest witness in contrast to the director who gave evidence for the claimant.   She "thought it more likely than not" that his evidence, and the document purportedly signed by him had been fabricated.  She concluded that Ms Muller was not bound by any of the restrictive covenants. It was therefore not necessary for her to consider whether Ms Muller had breached any of them. That disposed of issues 9 to 12.

By removing copies of his work from the claimant's computer for his portfolio, Mr D'Aguanno infringed the claimant's copyrights and infringed implied terms of the contract upon which he worked for the claimant.   However, the judge did not consider the infringement or breach to be very serious.  She assessed damages at £1.  For the rest of the trial, Her Honour considered whether Mr Aguanno or Ms Muller had copied, removed or used any of the claimant's other copyright works. She could find no evidence that they had.  She, therefore, dismissed the rest of the claim.

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