DPA (London) Ltd v Andrea D'Aguanno
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 03 September 2020 |
| Neutral Citation | [2020] EWHC 2374 (IPEC) |
| Docket Number | Claim No: IP-2019-000175 |
| Court | Intellectual Property Enterprise Court |
| Date | 03 September 2020 |
[2020] EWHC 2374 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
HER HONOUR JUDGE Melissa Clarke
Sitting as a Judge of the High Court
Claim No: IP-2019-000175
Miss Nicole Bollard (instructed by Protopapas LLP) for the Claimant
Mr Kwabena Owusu (instructed by Peter Lyon and Partners) for the Defendants
Hearing dates: 14 and 15 July 2020
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic
INTRODUCTION
This is a claim in copyright and breach of contract brought by a firm of architects (“ DPA”) against two architectural designers who previously worked for it in that capacity (Mr D'Aguanno and Ms Muller), and the firm that they later set up, MUDA Architecture Limited (“ MUDA”).
Mr D'Aguanno worked with DPA as an architectural designer from 14 November 2016 (initially on a 3-month trial basis) until 27 December 2019. Ms Muller worked with DPA as an architectural designer from February 2015 (initially on a 3-week trial basis) to 31 December 2019. Both are fully qualified architects in their home countries of Italy and Argentina respectively, but not registered with the Architects' Registration Board of the United Kingdom. They are entitled to work as architectural designers in the UK.
DPA initially claimed that Mr D'Aguanno and Ms Muller were employees of DPA. It now accepts that they were self-employed contractors. Nevertheless, there remains some dispute about the terms upon which they provided services. DPA claims that each was provided with, and agreed, a written contract. Each denies this. Of particular relevance is DPA's claim that Ms Muller provided her services pursuant to a contract dated 28 December 2016, which contained the following restrictive covenants:
“6.1. The Sub-Contractor shall not, during the course of provision of the Work or for a period of 12 months following the termination or expiry of this Agreement, provide like services to any competitor of the Contractor within Hertfordshire.
6.2. The Sub-Contractor shall not, during the course of provision of the Work or for a period of 12 months following the termination or expiry of this Agreement, solicit any of the Contractor's clients and/ or employees with which the Sub-Contractor Ltd has dealings during the time that have been with DPA London Ltd and prior to the date of termination or expiry or any other clients of which the Sub-Contractor has knowledge. The Contractor may waive this restriction entirely or on a per-client, and/or per-staff- member basis upon receipt of a written request from the Sub-Contractor. No waiver may be given if it shall violate any prior agreement between the Contractor and the client in question as to the sharing of the client's details.”
(the “ Restrictive Covenants”).
Ms Muller denies that she entered into any written agreement with DPA or that any such agreement was sent to her or shown to her at any time before or while she was working with DPA. She denies being bound by the Restrictive Covenants.
There is some measure of agreement between them, however. DPA claims, and Mr D'Aguanno and Ms Muller accept, that they provided services to DPA on the following implied terms:
i) DPA would be the owner of the copyright in any drawings, computer generated images (“CGIs”) or models created by them during the period that they provided services to DPA;
ii) they would follow DPA's reasonable and lawful instructions;
iii) they would act in accordance with DPA's protocols including those relating to the storage of documents, including those in electronic form;
iv) they would not remove from DPA's possession documents, including those in electronic form;
v) they would return all of DPA's property, including electronic documents, when their contracts with DPA ended.
Both Mr D'Aguanno and Ms Muller accepted in cross-examination that they were made aware of DPA's protocol requiring them to store all electronic files on DPA's server and nowhere else. This was contained on a single A4 sheet of paper.
It is not disputed that during the period that Mr D'Aguanno and Ms Muller worked for DPA, they produced architectural plans and drawings for a number of DPA's projects, and Mr D'Aguanno also produced three-dimensional computer models (“ 3D models”) and computer-generated images (“ CGIs”) for such projects. I will refer to the architectural plans and drawings, 3D models and CGIs together as “ Claimant Works”.
In pre-action correspondence, Mr D'Aguanno and Ms Muller, by way of a letter through their previous solicitors Richards Solicitors, stated that since they were self-employed consultants, they owned the copyright in any drawings, CGIs and models prepared by them for DPA. However, in their Defence, they accept that the copyright in the Claimant Works belongs to DPA. DPA asks me to draw adverse inferences about the First and Second Defendant based on that pre-action correspondence, but I decline to do so, as I accept their oral evidence that they simply followed the legal advice which they were given, which was wrong.
DPA claims that:
i) the Defendants have infringed DPA's copyright in the Claimant Works; and
ii) Ms Muller has breached clause 6.1 and 6.2 of the Restrictive Covenants; and
iii) Mr D'Aguanno and Ms Muller have breached their contract by failing properly to store, and by removing when they ceased working for DPA, electronic files embodying Claimant Works.
In their joint defence, the Defendants denied breach of copyright or breach of contract as alleged, but Mr D'Aguanno admitted that he was in possession of “ one copy of some 3D models drawings” belonging to DPA, which he offered to return. He later provided further particulars: that on ceasing to work for DPA he had stored on his personal laptop a 3D model from each of three of DPA's projects (‘Bullsmoore Lane’, ‘Crawley’ and ‘Four Oaks’) which he later transferred to a pen-drive storage device. In May 2020 he returned that storage device to DPA. He denies that he made any use of those models, which he says he kept only for the purposes of his portfolio. He says he does not have, and has never kept, any other Claimant Works.
At a case management conference before His Honour Judge Hacon on 4 March 2020 a number of issues were identified in the Schedule to the Order. Those which remain live are the following:
Copyright Infringement
1. Have the Defendants reproduced a substantial part of the Claimant Works, or any of them, in a material form, including storing the Claimant Work in any medium by electronic means?
2. Have the Defendants possessed the Claimant Works, or any of them, in the course of a business?
3. Have the Defendants reproduced a substantial part of the Claimant Works or otherwise used the Claimant Works in their ongoing work for Mr Simpson, including but not limited to in relation to the Wellington House project?
4. Have the Defendants or any of them authorised the acts set out at paragraph 1 to 3 above?
Breach of contract
5. Did the First and/ or Second Defendants fail to store the Claimant Works or any of them on the Claimant's server?
6. Did the First and/ or Second Defendants remove the Claimant Works or any of them from the Claimant's offices and/ or prevent the Claimant from having access to its files?
7. Does the Claimant have access to the Claimant Works which are in the possession of the Defendants?
8. Did the First and/ or Second Defendants fail to return all of the Claimant's property (including the Claimant Works or any of them) when their contracts with the Claimant ended?
Restrictive covenants
9. Were the Restrictive Covenants part of the Second Defendant's contract with the Claimant?
10. Did the Second Defendant breach either or both of the Restrictive Covenants?
11. In particular, has the Second Defendant provided like services to any competitor of the Claimant's in Hertfordshire in the 12 months following the termination of her contract with the Claimant?
12. In particular, has the Second Defendant either during the provision of her services to the Claimant or in the twelve months following the termination of her contract solicited Edward Simpson or Jeffrey Benedyk?
I remind myself that the claim is for DPA to prove to the civil standard, i.e. the balance of probabilities.
PROCEEDINGS
Due to the COVID-19 pandemic, the trial was heard remotely over two days by means of the Cloud Video Platform. Miss Bollard appeared for the Claimant and Mr Owusu for the Defendants. I thank them both for their skeleton arguments, helpful oral submissions and I thank all participants for their patience with the inevitable small technical frustrations which arose.
DPA relies on evidence from two witnesses of fact: (i) Mr Domenico Padalino, an owner and director of DPA. He filed two witness statements, was cross-examined and re-examined; and (ii) Mr Amarjit Gill, who began working for DPA as an architectural technician in February 2019, after Mr D'Aguanno and Ms Muller had left. Mr Gill filed a witness statement, was cross-examined and re-examined.
The Defendants rely on evidence from Mr D'Aguanno and Ms Muller. Each filed two witness statements and was cross-examined and re-examined.
THE FACTS AND FACTUAL FINDINGS
Terms of Employment
Mr Padalino's written evidence was that Mr D'Aguanno was offered a three-month probationary period, after which he offered him a “ permanent position” at DPA. He says that he issued a contract to him after his...
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