With the benefit of a crystal ball or hindsight, the gut instinct of most companies in reading the above heading would almost unanimously be “No way”. However, despite not achieving the desired outcome for the claimant, this case demonstrates how important a trial can be in dissecting the legal issues and understanding the facts.
The Intellectual Property Enterprise Court (IPEC) has handed down its decision in DPA (London) Limited v Andrea D’Aguanno, Gretel Muller and MUDA Architecture Ltd  EWHC 2374. The case concerned a claim for copyright infringement brought by an architect firm, DPA, against two architectural designers who previously worked for DPA and their newly created firm, MUDA Architecture. HHJ Clarke first dealt with issues relating to the legal status of the defendant architects; were they employees or self-employed contractors, and had they signed a contract containing restrictive covenants? It was agreed that services were provided on implied terms, including that DPA would own copyright in any works produced by the defendant architects during their period of service. A reminder that it is always imperative to establish the legal status of your staff.
The nub of the copyright infringement issue was whether the defendant had reproduced a substantial part of the architectural plans, drawings, 3D models and CGIs (that were produced for DPA during the period of service) for the purpose of MUDA’s architectural projects (being the "Wellington House scheme"). The scheme had been initially designed whilst working for DPA, but the evidence before HHJ Clarke convinced her that the scheme had been effectively redesigned by the defendants under their new company and so there was no reproduction of a “substantial part” of DPA's documents.
The court did find, however, on Mr D’Aguanno’s admission, that he had copied and stored 3D models created during his time working with the DPA for the purpose of his portfolio. This breached DPA’s policy to return all copies of drawings and reproduced part of the models, but ultimately did not cause any loss to DPA as the models were not put to any commercial use.
Despite the admission, the Judge considered that there was no other infringement and the limited infringement of the stored works regarding the Wellington House scheme was minimal as Mr D’Aguanno could not make any other use of the models. Unusually, but following an earlier case management decision, the Judge considered quantum following liability and ordered Mr D’Aguanno to pay the princely sum of £1 to DPA as damages for the limited infringement and breach of contract.
So the lesson from this? It’s always a difficult business quantifying an IP claim, but don’t lose sight of this throughout proceedings, otherwise the eventual trial could be a very costly outing.
The Defendants' primary submission is that Mr D'Aguanno's retention of material for his portfolio caused no loss to the Claimant as the material was put to no commercial use. I agree that there is no loss to DPA arising from the actions of Mr D'Aguanno in respect of the ADA Stored Works. Nevertheless, it amounts to copyright infringement and breach of contract, so I award nominal damages of £1 to be paid by Mr D'Aguanno to DPA.