It’s official: confidential information is intellectual property

The Court of Appeal’s judgment in the case of Stephen John Coogan v News Group Newspapers Limited and Glenn Michael Mulcaire (and a conjoined case brought by Nicola Phillips) [2012] EWCA Civ 48 was published on 1st February 2012.

The case concerns allegations of phone-hacking by Glenn Mulcaire.  Steve Coogan is a comedian whose most famous creation is Alan Partridge.

The immediate issue before the court was whether Mr Mulcaire was entitled to avoid giving evidence based on privilege against self-incrimination (PSI), and the effect of section 72 of the Senior Courts Act 1981 in this context. Section 72 effectively withdraws PSI in the case of proceedings for infringement of intellectual property.  Section 72(5) defines intellectual property as follows:

“intellectual property” means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property;

A question arose as to whether claims in relation to hacking of a person’s phone messages amounted to infringement of intellectual property, and in particular whether such messages amounted to “technical or commercial information or other intellectual property” within the above definition.

Lord Neuberger, Master of the Rolls, giving the only judgment of the court, concluded (see paragraph 31 of his judgment as it appears on BAILII) that “technical or commercial information” was

confidential information which is technical or commercial in character.  As for the confidential aspect, in order to be protected in law, and to be even arguably characterised as ‘intellectual property’ information must be confidential…

Lord Neuberger referred to various cases and the commentary in various intellectual property textbooks.  From these he concluded that while confidential information might not be “property” as a matter of English law, confidential information was often treated as part of intellectual property.  He concluded (paragraph 39):

In my view, the upshot of this summary of the current position as discussed in the cases and the books is that, while the prevailing current view is that confidential information is not strictly property, it is not inappropriate to include it as an aspect of intellectual property.

Lord Neuberger made further comments that focussed on the meaning of the definition of intellectual property in the context of PSI, which are not of direct concern to intellectual property transactions, including whether personal information, that was not commercial, came within the above definition.  He also appeared to dismiss a suggestion of Gavin Millar QC, counsel for Mr Mulcaire, that “technical and commercial information” in the definition should be restricted to trade secrets (a sub-set of confidential information) – see paragraph 40.

Conclusions

Transactional intellectual property lawyers have long treated confidential information as a type of intellectual property.  For example, patent and know-how licence agreements are commonly seen, where the main protection given to the licensed know-how may be that it is confidential information.  If official support for this view is needed, it can be seen in the EU Technology Transfer Block Exemption Regulation which, together with its predecessor regulations, has long recognised know-how licensing for competition law purposes.

IP Draughts is not convinced that Lord Neuberger is right to say (paragraph 38) that section 72 is the first attempt at a statutory definition of intellectual property, as he seems to recall that there have been definitions in tax legislation for many years.

The main point of this case for transactional IP lawyers is the recognition given by the judgment of a very senior judge that, even though confidential information may not amount to “property” in English law, it is part of what is commonly understood by the expression “intellectual property”.  These comments are part of a unanimous decision by three of the most senior judges in England – Lord Chief Justice, Master of the Rolls and Vice-President of the Court of Appeal – after consideration of relevant authorities.  The moment should be savoured.