133-137 Fetter Lane
London EC4A 1HD
B e f o r e :
| BEECHWOOD HOUSE PUBLISHING LIMITED
|- and -
|(1) GUARDIAN PRODUCTS LIMITED
(2) PRECISION DIRECT MARKETING LIMITED
Lawrence Power (instructed by Ashton Bond Gigg) for the Defendant
Hearing dates: Wednesday 13th October 2010
Crown Copyright ©
His Honour Judge Birss QC:
i) There was no settlement and the allegation that there was is "legally unsustainable". Therefore those parts of the defences should be struck out or alternatively summarily dismissed.
ii) The estoppel should also be struck out or summarily dismissed.
iii) On the questions of subsistence and ownership of database right, there may not be a dispute at all but if there is then summary judgment on those issues can and should be given.
iv) On the question of infringement, the only realistic explanation for the situation is that substantial quantities of practice nurse data were taken and therefore summary judgment should be given on that issue too and with it the whole claim.
i) The claim was settled. At the very least there is evidence the claim was settled and therefore the application for a strike out/summary judgment should be dismissed.
ii) In any event the estoppel is a good and (for present purposes) perfectly arguable defence.
iii) Sensibly in my view the defendants did not advance a case about subsistence or ownership of database right.
iv) On infringement however, they contend there is simply no evidence showing that a substantial part of the database was used. Therefore no summary judgment should be given.
Judgment on the settlement point
"would propose the following to draw a line under matters-
1) [a financial proposal the details of which are irrelevant]
2) Each party be responsible for its own costs incurred to date in this matter;
3) [an undertaking offered by the first defendant, the terms of which are irrelevant]
4) An appropriate full and final settlement agreement with confidentiality provisions be entered into, such settlement agreement covering both our client its holding company and any subsidiaries of such holding company."
"Our client is willing to settles (sic) its claim on the following terms:
1) [This refers to payment of a sum to settle the damages and gives account details for its payment. The details are irrelevant]
2) Your client to enter into a settlement agreement in the form enclosed at Appendix 1 of this letter ("the Settlement Agreement"), within 7 days of accepting this Revised Offer, and for the parties to comply with the terms of the Settlement Agreement accordingly.
3) The Settlement Sum does not include costs and, as mentioned above, your client will be liable to pay our clients costs on the standard basis, to be assessed if not agreed, up to the date of service of notice of acceptance if this Revised Offer is accepted with the Relevant Period.
4) [an irrelevant point on interest]"
"We refer to our open correspondence of today's date, to earlier correspondence, and to without prejudice telephone conversations between our Chris Sleep and your Paul Kalaher on 21 August 2008 and 10 September 2008.
There has been an extensive period of pre-action correspondence between the parties in relation to this matter, the majority of which has been marked as "without prejudice". It is our view , however, that this correspondence to date has been of little value to the parties because of the inappropriateness of a non-contentious solicitor having conduct of the matter on behalf of your clients for almost a year.
This matter has never been anything other than contentious (given that our first letter to your client dated 22nd October 2008 was a cease and desist letter). Much of the correspondence to date has shown a lack of understanding of intellectual property disputes, and in particular database right infringement disputes.
In the recent telephone discussions between our Chris Sleep and your Paul Kalaher, we attempted to explain in detail why your clients will have difficulty in defending a claim brought by our client. This was intended to steer the parties towards a more sensible way of resolving the matter.
In that regard, our client has made it clear that it is prepared to settle this matter on the following basis:
1 The draft settlement agreement (the terms of which have largely been agreed) be entered into by the parties
2 Payment by your client of the sum of £3095.11
3 The parties will agree the wording of a joint statement
4 Your clients will pay our clients costs, to be assessed if not agreed.
You have acknowledged that the only remaining issue to be resolved is our clients costs, and have indicated on a number of occasions that you would take instructions from your client and would make a suitable proposal in this regard.
Given that you have put forward no basis on which our client's costs should not be recovered, we struggle to understand how it can be in your client's interests to jeopardise its chances of achieving settlement without the need to involve the courts by failing to reach agreement in relation to our clients costs. This is particularly so given the concerns that your client has raised over potential damage to its reputation, given that an agreement to prepare a joint statement is your clients last chance of resolving the matter in a way in which it has any control over the damage to its reputation.
Our costs will inevitably be increased as a result of such actions, and our client will seek to recover these increased costs from your client also.
Our clients costs are currently £8,817 (exclusive of VAT).
Furthermore we remind you that your client rejected our client's Part 36 Offers dated 22 November 2007 and 27 February 2008. We trust your clients have been fully advised of the potential consequences of rejecting those offers.
We confirm that we have been instructed to prepare and issue claim documents in the event that your clients fail to provide a satisfactory proposal in respect of settlement (primarily in relation to our clients costs) by close of business on 8 October 2008. We reserve our client's right to serve those documents upon your clients without further notice, and to bring this correspondence to the attention of the4 court when determining the issue of costs.
We trust such actions will not prove necessary, and look forward to receiving a satisfactory response by 8 October 2008."
"We refer to your privileged letter of 1st inst & write this letter without prejudice save as to costs & we reserve the right to produce it to the court should the need ever arise in detailed assessment proceedings (if any) along with all of the other of our previous letters sent on the same basis.
Our client will accept points 1-4 of your letter as follows
1- Agreed but of course the final draft will need to be engrossed after there is a meeting of minds between our respective clients on the final content.
2- Our client will send yours the sum of £3095.11 (approx £3K) by bank to bank. Please let us have the recipient's (sic) details.
4- Our client will pay your client's reasonably incurred costs arising from the contested issues in this matter on the standard basis to be assessed in the absence of agreement. Our client reserves it's position on the argument relating to allocation & the real issues which the court would have been asked to determine in the event that your client had actually issued proceedings; which are now superfluous in the light of the agreement reached arising from the exchange of our correspondence
Finally we would mention that we disagree with some of the contents made in your letter & its contents represent your own views."
Payment of the £3,095.11 in February 2009
Conclusion on the settlement
Summary judgment on database right
The court may give summary judgment against a claimant or defendant on the whole of a claim or on a particular issue if
(a) it considers that
(i) the claimant has no real prospect of succeeding on the claim or issue; or
(ii) the defendant has no real prospect of successfully defending the claim or issue; and
(b) there is no other compelling reason why the case or issue should be disposed of at a trial.
Paragraph 5 of the particulars of claim is admitted. Sub-paragraphs (a) through to (f) are not pleaded to as they are matters of law and fact for the claimant to prove.
Subsistence and Ownership of database right the law
12.(1) In this Part
"extraction", in relation to any contents of a database, means the permanent or temporary transfer of those contents to another medium by any means or in any form;
"insubstantial", in relation to part of the contents of a database, shall be construed subject to Regulation 16(2);
"re-utilisation", in relation to any contents of a database, means making those contents available to the public by any means;
"substantial", in relation to any investment, extraction or re-utilisation, means substantial in terms of quantity or quality or a combination of both.
16.(1) Subject to the provisions of this Part, a person infringes database right in a database if, without the consent of the owner of the right, he extracts or re-utilises all or a substantial part of the contents of the database.
(2) For the purposes of this Part, the repeated and systematic extraction or re-utilisation of insubstantial parts of the contents of a database may amount to the extraction or re-utilisation of a substantial part of those contents.
i) The fact that the claimant only received a single letter sent to one of its seeds does not mean that that address was the only address that made its way from the database into the address data used by the first defendant, via BDO and the second defendant. Such a scenario is wholly fanciful, given the parties position as suppliers of bulk data.
ii) There is a letter in evidence dated 20 April 2008 from Philip Bothwell exhibited as CS3 and that makes this clear beyond question. Mr Bothwell acknowledges that BDO supplied a substantial quantity of nurse data to the second defendant (over 8,000 records) and failed to remove the claimant's data from that data.
iii) The only realistic explanation for the situation is that substantial quantities of practice nurse data were taken from the database by BDO and provided ultimately to the first defendant.