QUEEN'S BENCH DIVISION
COMMERCIAL COURT
Strand, London, WC2A 2LL |
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B e f o r e :
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SALT SHIP DESIGN AS |
Claimant |
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- and - |
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PRYSMIAN POWERLINK SRL |
Defendant |
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Andrew Hunter QC, Henry Byam-Cook QC and Jonathan Hill (instructed by Wikborg Rein LLP) for the Defendant
Hearing dates: 13th December 2021
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Crown Copyright ©
Mr Justice Jacobs :
A: Introduction
B: The application for a publicity order
The application and its legal basis
The Defendant shall display the following notice to all persons accessing its home page (https://uk.prysmiangroup.com/) from an internet protocol (IP) address identifying the United Kingdom, for a period of 12 months from the date hereof, such notice to be in no smaller than 12-point type:
"On 30 September 2021 the High Court of Justice of England and Wales ruled that Prysmian Powerlink SRL had misused Salt Ship Design AS's confidential information in relation to the design of Prysmian Powerlink SRL's Leonardo da Vinci cable laying vessel. A copy of the full judgment of the High Court is available on the following link [link given]"
Publication of judicial decisions
"18.—(1) In proceedings for the unlawful acquisition, use or disclosure of a trade secret, a court may order, on the application of the trade secret holder and at the expense of the infringer, appropriate measures for the dissemination of information concerning the judgment, including its publication in whole or in part.
(2) Any measure a court may order under paragraph (1) must preserve the confidentiality of trade secrets as provided for in regulation 10.
(3) In deciding whether to order a measure under paragraph (1) and when assessing whether such measure is proportionate, the court must take into account where appropriate—
(a)the value of the trade secret,
(b)the conduct of the infringer in acquiring, using or disclosing the trade secret,
(c)the impact of the unlawful use or disclosure of the trade secret,
(d)the likelihood of further unlawful use, or disclosure of the trade secret by the infringer, and
(e)whether the information on the infringer would be such as to allow an individual to be identified and, if so, whether publication of that information would be justified, in particular in the light of the possible harm that such measure may cause to the privacy and reputation of the infringer."
"(31) As a supplementary deterrent to future infringers and to contribute to the awareness of the public at large, it is useful to publicise decisions, including, where appropriate, through prominent advertising, in cases concerning the unlawful acquisition, use or disclosure of trade secrets, on the condition that such publication does not result in the disclosure of the trade secret or disproportionally affect the privacy and reputation of a natural person. "
"[52] These authorities indicate that it is common practice to make such orders in IP litigation, and that policy favours doing so, in view of the difficulties which owners of IP rights face in identifying and successfully pursuing infringers. The court will take account of all the circumstances, but the following factors may count in favour of making such an order: (a) deterrence of the infringing defendant; (b) that publication of the result would be a deterrent to other infringers. Factors that may count against the grant of such an order include the strength of the policy grounds on the particular facts of the case, and any procedural or practical obstacles to making an effective and proportionate order. The applicant will need to present the court with a precise form of order, and a workable solution. The solution will need to identify appropriate platforms or publications for the notice. It may include a notice, with a hyperlink to the main judgment. "
The parties' arguments
Discussion
"The Defendant shall display the following notice to all persons accessing the following Leonardo da Vinci page on the Prysmian Group website (https://www.prysmiangroup.com/en/new-vessel-leonardo-da-vinci) from an internet protocol (IP) address identifying the United Kingdom, until 30 June 2022, such notice to be in no smaller than 12-point type:
"On 30 September 2021 the High Court of Justice of England and Wales ruled that Prysmian Powerlink SRL had misused Salt Ship Design AS's confidential information in relation to the design of Prysmian Powerlink SRL's Leonardo da Vinci cable laying vessel. A copy of the full judgment of the High Court is available on the following link [link given]. On * December 2021, the High Court of Justice of England and Wales made further rulings in the case. A copy of the further judgment is available on the following link [link given]. The court has not granted any order which prevents Prysmian from trading the Leonardo da Vinci."