Confidential information - Intellectual property

Phillips v Mulcaire: Supreme Court (Lords Hope DP, Walker, Kerr, Clarke and Dyson SCJJ): 4 July 2012

Section 72 of the Senior Courts Act 1981 (the 1981 act), so far as material, provides: '(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 question 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; ... (5) In this section - "intellectual property" means any patent, trademark, copyright, design right, registered design, technical or commercial information or other intellectual property.'

The claimant worked for the well-known public relations consultant Max Clifford. Her responsibilities included both trying to place in the media favourable stories about clients of Mr Clifford, and trying to prevent the placing in the media of unfavourable stories about them. In 2005-2006, the defendant was working as a private investigator and as such was often engaged by staff on the News of the World, then a Sunday newspaper published by News Group Newspapers Ltd (NGN). During the same period, an individual, CG was employed by NGN as a reporter on the NoW.

After a police investigation, the defendant and CG were charged with one count of conspiracy to intercept communications, contrary to section 1(1) of the Criminal Law Act 1977 relating to voicemail messages of three members of the royal household. The defendant was also charged with five further counts under section 1(1) of the Regulation of Investigatory Powers Act 2000, one relating to voicemail messages on Max Clifford's mobile phone. The defendant pleaded guilty to all counts, and CG pleaded guilty to the count of conspiracy. In due course they were both sentenced to terms of imprisonment.

From 2008-2010, a large number of civil 'phone-hacking' claims were commenced against NGN and the defendant by individuals who claimed that messages on their mobile phones had also been unlawfully intercepted. In May 2010, the claimant commenced such proceedings against NGN alleging, inter alia, that the messages on her mobile phone sometimes contained commercially confidential information relating to her clients personal lives including information about 'finances, incidents in which the police have become involved, personal security or publicity issues, commercial business transactions, professional relationships and future career plans'. 

The claimant applied for an order that the defendant be joined in the proceedings and that he should serve a witness statement disclosing certain information. The defendant resisted the order for disclosure on the ground of his privilege against self-incrimination. Against that, the claimant relied on section 72 of the 1981 act as excluding the privilege. She was successful before Mann J (see [2010] All ER (D) 182 (Nov)). The Court of Appeal dismissed the defendant's appeal. The defendant appealed.

The main issues before the court were: (i) the meaning of the words 'proceedings for infringement of rights pertaining to... intellectual property' in section 72(2)(a) of the 1981 act and whether the claimant's proceedings relating to commercial information fell within that definition; (ii) whether, on the footing that the defendant would, by complying with Mann J's order, tend to expose himself to criminal proceedings for conspiracy, such proceedings would or would not be for a related offence within the meaning of section 72(5) of the 1981 act. In relation to (i) it was submitted by the defendant, inter alia, that the natural meaning of 'technical or commercial information' in section 72(5) was limited by the sweeping-up words 'or other intellectual property'. The appeal would be dismissed.

(1) In a case where parliament had left no room for doubt that it intended the privilege against self-incrimination to be withdrawn, there was no need for the court to lean in favour of the narrowest possible construction of the reach of the relevant provision. The starting point had to be the language of the definition in section 72(5) of the 1981 act. The essential point was that the definition in section 72(5) contained the words 'technical or commercial information'. Parliament had made plain that information within that description was, for the purposes of section 72 of the 1981 act, to be regarded as intellectual property, whether or not it would otherwise be so regarded.

Such limited potency as there was in the expression 'intellectual property' (and more generally, the legislative purpose of section 72 in enhancing protection against unlawful trade competition) might be of assistance in determining the meaning of 'technical or commercial information'. It had to be something in which a civil claimant had rights capable of being infringed, since infringement of rights pertaining to intellectual property was what section 72(2)(a) of the 1981 act was concerned with. The fact that technical and commercial information ought not, strictly speaking, to be described as property could not prevail over the clear statutory language. Whether or not confidential information could only loosely, or metaphorically, be described as property was simply irrelevant (see [14], [19], [20] of the judgment).

The claimant's proceedings were 'proceedings for... rights pertaining to... intellectual property' within the meaning of section 72 of the 1981 act (see [33] of the judgment). Boardman v Phipps [1966] 3 All ER 721 considered; Istel (AT & T) Ltd v Tully [1992] 2 All ER 28 considered; Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617 considered.

(2) There had to be a sufficient connection between the subject-matter of the claimant's civil proceedings and the offence with which the defendant had a reasonable apprehension of being charged. Pursuant to section 72(5) of the 1981 act the offence had to be committed by or in the course of the infringement to which the proceedings related unless the offence involved fraud or dishonesty, in which case a looser connection was sufficient. Conspiracy was a continuing offence. While the offence was committed as soon as the unlawful agreement was made, the conspiracy continued until the point when the agreement was terminated by completion, abandonment or frustration (see [34], [43] of the judgment).

In the instant case, if the defendant had conspired with one or more persons to intercept messages on mobile phones, an offence had been committed when the unlawful agreement had been made. However the offence continued so long as the agreement was being performed. Every interception pursuant to the unlawful agreement would be in the course of the infringement. The conspiracy proceedings to which the defendant would expose himself amounted to a 'related offence' (see [45] of the judgment). Renworth Ltd v Stephansen [1996] 3 All ER 244 distinguished.

Per curiam: On this point [whether confidential information about a person's private life might instead come in as 'other intellectual property'] I respectfully disagree with Lord Neuberger and the other members of the Court of Appeal. In paragraph 45 Lord Neuberger takes as the starting point of his discussion a proposition that I regard as the obviously correct conclusion: '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"' (see [25], [27] of the judgment). Decision of the Court of Appeal [2012]
All ER (D) 12 (Feb) affirmed in part.

Gavin Millar QC and Alexandra Marzec (Instructed by Payne Hicks Beach) for the appellant; Michael Beloff QC and Jeremy Reed (Instructed by Taylor Hampton) for the respondent.