Trade Secrets infringer publicly shamed
UK’s first reported publicity order granted for trade secrets infringements.
Publicity orders for the dissemination of judgments are a well-established remedy for IP infringement but until recently they have not been used in trade secrets cases. That has changed, however, with the Trade Secrets (Enforcement) Regulations 2018 (SI 2018/597) (the Regulations) which give the courts new powers to order appropriate measures to publicise judgments where trade secrets have been infringed. These provisions were first used in a UK publicity order application in December 2021, which proved successful in the High Court.
Facts of the Case
The application related to the case of Salt Ship Design AS v Prysmian Powerlink SRL heard in September 2021. Prysmian Powerlink (Prysmian), an Italian cable laying company, was found liable for the unlawful disclosure of confidential design information relating to a new cable laying vessel designed by architects, Salt Ship Design (Salt). The court found that Prysmian had made this design information available to a rival vessel designer, Vard Design, and encouraged them to use it in designing Prysmian’s new cable laying vessel, Leonardo di Vinci. Following this decision, Salt sought an order requiring Prysmian to publish a notice and link to the judgment on its website.
Salt’s application was made under Regulation 18. This provides for the factors to be considered when determining whether a publicity order should be made. The judge paid particular regard to three of these factors:
- the value of the trade involved;
- the conduct of the infringer in acquiring, using, or disclosing the trade secret; and
- the impact of the unlawful use or disclosure of the trade secret.
The court accepted Salt’s evidence that the trade secrets were valuable, and that Prysmian had engaged in flagrant misuse of confidential information. Furthermore, Salt had been negatively impacted by losing the opportunity to earn additional design fees because their design information had been unlawfully disclosed. The judge rejected Prysmian’s argument that a publicity order must be both ‘necessary and proportionate’, stating that Regulation 18 requires only that it is proportionate. The court also highlighted its discretionary powers in deciding whether or not to grant such an order. Accordingly, it considered policy reasons a valid justification for granting the order, since the Regulations are intended to act as a deterrent to future infringers.
The judge therefore granted the order, requiring Prysmian to publish a statement and a link to the judgment on the page of its UK website that publicises Leonardo da Vinci. The duration of the order was for 6 months, which the judge considered allowed enough time for a reasonable number of people to see the notice, as visits to this webpage were likely to be infrequent. The period would span the time of the official launch of the Leonardo di Vinci, scheduled for the second quarter of 2022, when webpage visits might be expected to increase.
Whilst this decision was ultimately uncontroversial, it provides some reassurance to the holders of trade secrets that the new legislative powers are now being used effectively. It shows how publicity orders can offer additional redress on top of remedies like damages and account of profits, by bringing the conduct of the wrongdoer to light. If you would like further guidance on this topic, please contact Cathrine Ripley at [email protected]