UKSC 28
On appeal from:  EWCA Civ 48
Phillips (Respondent) v Mulcaire (Appellant)
Lord Hope, Deputy President
JUDGMENT GIVEN ON
4 July 2012
Heard on 8, 9 and 10 May 2012
Gavin Millar QC
(Instructed by Payne Hicks Beach)
Michael Beloff QC
(Instructed by Taylor Hampton)
LORD WALKER (with whom Lord Hope, Lord Kerr, Lord Clarke and Lord Dyson agree)
"Ms Phillips's clients often leave voicemail messages on her mobile phone and she on theirs. In addition to dealing with their commercial affairs, Ms Phillips often develops amicable relationships with her clients over the course of time. Accordingly, voicemail messages left by Ms Phillips's clients sometimes contain factual information, some of which is private information and some of which is commercially confidential information. This includes private and/or confidential information relating to her clients' personal lives and relationships, health, finances, incidents in which the police have become involved, personal security or publicity issues, commercial business transactions, professional relationships and future career plans."
The first issue, in more concrete terms, is whether the information described in this pleading is "technical or commercial information" falling within the definition of "intellectual property" in section 72(5) of the 1981 Act.
Section 72 of the 1981 Act
"(1) In any proceedings to which this subsection applies a person shall not be excused, by reason that to do so would tend to expose that person … to proceedings for a related offence or for the recovery of a related penalty–
(a) from answering any questions put to that person in the first-mentioned proceedings; or
(b) from complying with any order made in those proceedings.
(2) Subsection (1) applies to the following civil proceedings in the High Court, namely–
(a) proceedings for infringement of rights pertaining to any intellectual property or for passing off;
(b) proceedings brought to obtain disclosure of information relating to any infringement of such rights or to any passing off; and
(c) proceedings brought to prevent any apprehended infringement of such rights or any apprehended passing off.
(3) Subject to subsection (4), no statement or admission made by a person–
(a) in answering a question put to him in any proceedings to which subsection (1) applies; or
(b) in complying with any order made in any such proceedings,
shall, in proceedings for any related offence or for the recovery of any related penalty, be admissible in evidence against that person or (unless they married or became civil partners after the making of the statement or admission) against the spouse or civil partner of that person.
(4) Nothing in subsection (3) shall render any statement or admission made by a person as there mentioned inadmissible in evidence against that person in proceedings for perjury or contempt of court.
(5) In this section–
'intellectual property' means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property;
'related offence', in relation to any proceedings to which subsection (1) applies, means–
(a) in the case of proceedings within subsection (2)(a) or (b)–
(i) any offence committed by or in the course of the infringement or passing off to which those proceedings relate; or
(ii) any offence not within sub-paragraph (i) committed in connection with that infringement or passing off, being an offence involving fraud or dishonesty;
(b) in the case of proceedings within subsection (2)(c), any offence revealed by the facts on which the plaintiff relies in those proceedings;
'related penalty', in relation to any proceedings to which subsection (1) applies means–
(a) in the case of proceedings within subsection (2)(a) or (b), any penalty incurred in respect of anything done or omitted in connection with the infringement or passing off to which those proceedings relate;
(b) in the case of proceedings within subsection (2)(c), any penalty incurred in respect of any act or omission revealed by the facts on which the plaintiff relies in those proceedings.
(6) Any reference in this section to civil proceedings in the High Court of any description includes a reference to proceedings on appeal arising out of civil proceedings in the High Court of that description."
"Inasmuch as the application of the privilege in question can go a long way in this and other analogous fields to deprive the owner of his just rights to the protection of his property I would welcome legislation somewhat on the lines of section 31 of the Theft Act 1968: the aim of such legislation should be to remove the privilege while at the same time preventing the use in criminal proceedings of statements which otherwise have been privileged."
"I would take this opportunity to express my support for the view that PSI has had its day in civil proceedings, provided that its removal is made subject to a provision along the lines of section 72(3). Whether or not one has that opinion, however, it is undoubtedly the case that, save to the extent that it has been cut down by statute, PSI remains part of the common law, and that it is for the legislature, not the judiciary, to remove it, or to cut it down."
The second sentence of this paragraph must carry no less weight than the first.
"The purpose of section 72 is self-evidently to remove PSI in certain types of case, namely those described in section 72(2). While there have been significant judicial observations doubting the value of PSI in civil proceedings, it would be wrong to invoke them to support an artificially wide interpretation of the expression, as it is clear that Parliament has decided that section 72 should contain only a limited exception from the privilege. On the other hand, in the light of the consistent judicial questioning as to whether PSI is still appropriate in civil proceedings, it would be rather odd for a court to interpret such a provision narrowly. Further, the fact that PSI is an important common law right does not persuade me that the expression should be given a particularly narrow meaning."
He then referred with approval to some observations of Moore-Bick LJ in Kensington International Ltd v Republic of Congo  EWCA Civ 1128,  1 WLR 1144, para 36, as to the significance of the removal of the privilege being "largely, if not entirely, balanced" by the disclosed material being made inadmissible in criminal proceedings. Mr Millar QC (for Mr Mulcaire) submitted that the correct approach was to be found in cases like Sociedade Nacional de Combustiveis de Angola UEE v Lundqvist  2 QB 310, 337 (Beldam LJ) and R v Director of Serious Fraud Office, Ex p Smith  AC 1.
"That there is strong presumption against interpreting the statute as taking away the right of silence, at least in some of its forms, cannot in my view be doubted. Recently, Lord Griffiths (delivering the opinion in the Privy Council in Lam Chi-ming v The Queen  2 AC 212, 222) described the privilege against self-incrimination as 'deep rooted in English law,' and I would not wish to minimise its importance in any way. Nevertheless it is clear that statutory interference with the right is almost as old as the right itself. Since the 16th century legislation has established an inquisitorial form of investigation into the dealings and assets of bankrupts which is calculated to yield potentially incriminating material, and in more recent times there have been many other examples, in widely separated fields, which are probably more numerous than is generally appreciated.
These statutes differ widely as to their aims and methods. In the first place, the ways in which the overriding of the immunity is conveyed are not the same. Sometimes it is made explicit. More commonly, it is left to be inferred from general language which contains no qualification in favour of the immunity. Secondly, there are variations in the effect on the admissibility of information obtained as a result of the investigation. The statute occasionally provides in so many terms that the information may be used in evidence; sometimes that it may not be used for certain purposes, inferentially permitting its use for others; or it may be expressly prescribed that the evidence is not to be admitted; or again, the statute may be silent."
Since then Parliament has (by section 59 of and Schedule 3 to the Youth Justice and Criminal Evidence Act 1999) amended a considerable number of different statutory provisions of this type so as to introduce a prohibition on material disclosed under compulsion being used in evidence in criminal proceedings. This was no doubt in anticipation of the coming into force of the Human Rights Act 1998.
The structure and language of section 72
The definition of "intellectual property"
"A review of intellectual property textbooks shows that there is no universal definition of the term, which is no doubt why Parliament has adopted a variety of definitions for different situations."
"A common remedy is to specify the main ingredients, and rely for any others on the potency of the term defined. This greatly reduces the danger area. The form is 'T means A, B, C or D, or any other manifestation of T'."
"a definition may give the words a meaning different from their ordinary meaning. But that does not mean that the choice of words adopted by Parliament must be wholly ignored. If the terms of the definition are ambiguous, the choice of the term to be defined may throw some light on what they mean."
"If section 72 were to avail the plaintiffs, they would have to show that they had brought proceedings to obtain disclosure of information relating to an infringement of rights pertaining to commercial information. In fact they are seeking information relating to alleged breaches of quite different rights, namely, the rights to damages for fraud or breach of trust in the various respects alleged in the statement of claim."
Technical or commercial information
"It is clear that the obligation not to use or disclose information may cover secret processes of manufacture such as chemical formulae (Amber Size and Chemical Co Ltd v Menzel  2 Ch 239), or designs or special methods of construction (Reid & Sigrist Ltd v Moss & Mechanism Ltd (1932) 49 RPC 461), and other information which is of a sufficiently high degree of confidentiality as to amount to a trade secret."
He also said at p 138:
"It is clearly impossible to provide a list of matters which will qualify as trade secrets or their equivalent. Secret processes of manufacture provide obvious examples, but innumerable other pieces of information are capable of being trade secrets, though the secrecy of some information may be only short-lived."
Whatever the difficulties of exhaustive enumeration, it is clear that the scope of trade secrets extends not only to products and processes, but also to a wide range of financial information about the management and performance of a business, and plans for its future.
"Many [employers] have great difficulty in understanding the distinction between genuine trade secrets and skill and knowledge which the employee may take away with him ... . Judges dealing with ex parte applications are usually also at a disadvantage in dealing with alleged confidential knowledge of technical processes described in technical language, such as the electric circuitry in this case. It may look like magic but turn out merely to embody a principle discovered by Faraday or Ampere."
It is only if the information is indeed confidential in the eyes of the law that a claim for breach of confidence (that is, infringement of a right of confidence) can arise.
"As a matter of ordinary language, just as 'technical information' means information of a technical nature, it seems to me that 'commercial information' means information which is commercial in character, rather than information which, whatever its nature, may have a value to someone. In other words, the word 'commercial' appears to be a description of the character of the information rather than the fact that it has value."
But he went on to consider, in paras 45 to 52, whether confidential information about a person's private life might instead come in as "other intellectual property". This was a point that Mann J (para 48) had noted and regarded as arguable, but said no more about. Vos J in Gray and Coogan  2 WLR 1401, para 84, noted that this point had been raised but received "less and less emphasis" in the argument of Mr Reed (who then appeared for both claimants). Vos J commented that it would be "stretching the statutory definition far too widely to hold that it included confidential private information even where such information could be protected by action."
"At first sight, it might seem that the answer [to the question: can personal information be 'other intellectual property'?] is no, as the draftsman of the definition limited its ambit to 'technical and commercial information'."
He then considers a number of arguments leading towards the opposite conclusion. I have to say that I do not find these arguments at all convincing.
"Whatever may have been the position of the Douglases, who, as I mentioned, recovered damages for an invasion of their privacy, 'OK!'s' claim is to protect commercially confidential information and nothing more. So your Lordships need not be concerned with Convention rights. 'OK!' has no claim to privacy under article 8 nor can it make a claim which is parasitic on the Douglases' right to privacy. The fact that the information happens to have been about the personal life of the Douglases is irrelevant. It could have been information about anything that a newspaper was willing to pay for. What matters is that the Douglases, by the way they arranged their wedding, were in a position to impose an obligation of confidence. They were in control of the information."
"Related offence": the authorities
"(i) any offence committed by or in the course of the infringement . . . to which those proceedings relate; or
(ii) any offence not within sub-paragraph (i) committed in connection with that infringement ... , being an offence involving fraud or dishonesty."
So the offence must be committed by or in the course of the infringement, unless the offence involves fraud or dishonesty, in which case a looser connection (not further defined in the statute) is sufficient.
"A charge of conspiracy to defraud, so far from being, as it sometimes is, a contrived addition to other charges, is here an appropriate and exact description of what is being done. So far from it being contrived, fanciful or imagined, it is the charge on which [an associate of the individual defendants] is to stand trial."
Similar views were expressed in the cases mentioned in the next two paragraphs.
"Related offence": discussion and conclusions
"though the offence of conspiracy is complete when the agreement to do the unlawful act is made and it is not necessary for the prosecution to do more than prove the making of such an agreement, a conspiracy does not end with the making of the agreement. It continues so long as the parties to the agreement intend to carry it out. It may be joined by others, some may leave it."
"A conspiracy involves an agreement express or implied. A conspiratorial agreement is not a contract, not legally binding, because it is unlawful. But as an agreement it has its three stages, namely (1) making or formation (2) performance or implementation (3) discharge or termination. When the conspiratorial agreement has been made, the offence of conspiracy is complete, it has been committed, and the conspirators can be prosecuted even though no performance has taken place: R v Aspinall (1876) 2 QBD 48, per Brett JA, at pp 58-59. But the fact that the offence of conspiracy is complete at that stage does not mean that the conspiratorial agreement is finished with. It is not dead. If it is being performed, it is very much alive. So long as the performance continues, it is operating, it is being carried out by the conspirators, and it is governing or at any rate influencing their conduct. The conspiratorial agreement continues in operation and therefore in existence until it is discharged (terminated) by completion of its performance or by abandonment or frustration however it may be."