Trappit S.A. v American Express Europe LLC
| Jurisdiction | England & Wales |
| Judge | Mr Justice Snowden |
| Judgment Date | 19 May 2021 |
| Neutral Citation | [2021] EWHC 1344 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: IL-2020-000048 |
| Date | 19 May 2021 |
[2021] EWHC 1344 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Royal Courts of Justice
Rolls Building
Fetter Lane,
London EC4A 1NL
Mr Justice Snowden
Case No: IL-2020-000048
Sara Masters QC and Josephine Davies (instructed by Hausfeld & Co LLP) for the Claimants
Stephen Houseman QC and George Spalton (instructed by Eversheds Sutherland (International) LLP) for the Defendants
Hearing dates: 19–20 January 2021
Approved Judgment
This is an application to strike out or stay proceedings claiming infringement of intellectual property rights in a computer programme and breach of non-contractual obligations of confidence that are said to have arisen when that programme was made available to the First Defendant for assessment. The application is made by the Defendants on the basis that the Claimants are contractually bound to litigate the claims in Spain rather than England, or that in light of proceedings that have already been brought and provisionally determined against the Second Claimant in Spain, this Court should decline jurisdiction or strike out the English proceedings as an abuse of process.
BACKGROUND
The parties and the computer programmes
The Claimants are three companies: (a) Trappit S.A. (“Trappit SA”) a Panamanian company, (b) Trappit Tecnologias S.L. (“Trappit Tec”) a Spanish company, and (c) 2MC Gestion Y Consultoria SA (“2MC”) a Spanish company. The relationship and distinctions between the Claimants is a matter of some dispute in this Application. The Defendants allege that each of the Claimants is under the direction and control of two individuals, Mr Luis Martín Lazaro (“Mr Martín Lazaro”) and Mr Daniel de Carvajal Aguilar (“Mr de Carvajal”). The Claimants dispute this and contend that each of the Claimant entities are distinct and act separately. Mr Martín Lazaro and Mr de Carvajal are both directors of Trappit Tec. However, only Mr de Carvajal is (or has been) a director of Trappit SA. By contrast, Mr de Carvajal has never had any role in 2MC, while Mr Martín Lazaro is an authorised representative of 2MC.
Mr Martín Lazaro and Mr de Carvajal are the creators of a computer programme known as “ARPO”. ARPO lies at the root of the substantive dispute between the parties. ARPO is a tool designed to allow customers to save money on their flight bookings, by using a system of computer ‘bots’ to monitor fluctuations in the price of booked flights and automatically cancel and re-book if the price drops. The development and commercialisation of ARPO was the principal activity of Trappit SA; later Trappit Tec fulfilled similar functions. 2MC's involvement in ARPO was limited to employing the Spanish individuals who had been identified by Trappit SA to write the code for ARPO. As described below, 2MC (and its employees) have transferred their rights to ARPO to Trappit SA. Accordingly, it is only Trappit SA and Trappit Tec who advance substantive claims in the English Proceedings.
The Defendants in the English Proceedings are: (a) American Express Europe LLC (“AmEx Europe”) a Delaware corporation with a registered branch in England, and (b) GBT Travel Services UK Limited (“GBT UK”) an English company. AmEx Europe is a part of the international American Express Group; prior to 30 June 2014 it operated travel management services under the ‘American Express Global Business Travel’ brand. GBT UK was created in 2014 as a joint venture between the American Express Group and certain private equity investors. From 30 June 2014 GBT UK acquired AmEx Europe's travel management services business in the UK.
The substantive claims brought in the English Proceedings relate to the development and/or use by the Defendants of two computer programmes, LastFare and Air Re-shop Expert (“ARE”). Like ARPO, these computer programmes also perform the function of fare re-booking at lower prices. The Claimants' case is that LastFare and/or ARE were produced by copying from ARPO's source code and misusing confidential information. The Defendants' case is that LastFare was independently developed by GBT Spain from February 2015 onwards based on source code provided by a company which is now known as Global Business Travel France SAS. ARE is said to be based on technology licenced to GBT UK by Yapta Inc. and is simply a branded version of Yapta's FareIQ programme. For the purposes of dealing with this Application it is not necessary to go any further into this dispute between the parties.
Discussions over ARPO and the NDA
In late 2013, Trappit SA was introduced to AmEx Europe. Trappit SA was interested in licensing ARPO to AmEx Europe for use in its Global Business Travel division. The first meeting between representatives of AmEx Europe and Trappit SA took place on 3 February 2014. After this, on 22 February 2014, Mr de Carvajal emailed Katrina Cliffe (“Ms Cliffe”) (General Manager, American Express Global Business Travel) asking AmEx Europe to sign a mutual non-disclosure agreement (NDA) prior to a meeting on 3 March 2014. Mr de Carvajal attached a draft NDA for consideration, which stated that it was governed by Spanish law but did not contain a jurisdiction clause.
It appears that Ms Cliffe responded by sending Mr de Carvajal an AmEx Europe standard draft NDA, because on 27 February 2014 Mr de Carvajal sent Ms Cliffe's assistant an email outlining a number of issues with the draft. It was agreed that the meeting on 3 March 2014 would go ahead without an NDA in place and be followed up with a discussion on the terms of the NDA. After the meeting of 3 March 2014, Mr de Carvajal emailed Ms Cliffe looking to push negotiations on by providing more detail on the economic potential and technical scope of ARPO. For this purpose, Mr de Carvajal again proposed that AmEx Europe and Trappit SA enter into an NDA and attached a draft. In her response to Mr de Carvajal on 5 March 2014, Ms Cliffe noted that:
“… In terms of a single contact at Amex this should really sit with our product team who are in fact already looking at similar systems to yours (fare iq etc). Next steps would be to set up some time with our VP products so she can compare the various tools she is looking at with yours. It would be interesting if you could also share why yours is different.
This is certainly a capability we want and the potential to have it exclusively with you seems a good one. The challenge for many of us is that for the next two months our focus will be on securing and transitioning the business to the new Joint venture so I personally will have very little time which is why I think this is best to sit with our global product team.”
Between 3 March 2014 and 7 March 2014 there were a series of emails between Ms Cliffe's assistant and Mr de Carvajal regarding the NDA. In particular, the draft produced by AmEx Europe had provided that:
“This Agreement (including any non-contractual obligations arising out of or in connection with the same) shall be governed in all respects by the laws of England without regard to conflict of laws principles, and any cause of action shall only be brought in a court of competent jurisdiction in England. Each party hereby expressly consents to, submits to, and acknowledges the jurisdiction of the courts of England in connection with this Agreement.”
However, in an email on 7 March 2014 Mr de Carvajal sent a number of suggested amendments to the draft NDA. These included amending the governing law and jurisdiction clause, including replacing the reference to English law with a reference to Spanish law and replacing the jurisdiction clause in favour of the courts of England to the courts of Madrid.
On 18 March 2014, Ms Cliffe emailed Mr de Carvajal to introduce him to Kevin Yeh (“Mr Yeh”) (Director of New Product Development at American Express Global Business Travel). Ms Cliffe noted that: “everyone [at AmEx Europe] has been very focussed on getting to the deal signing stage for our potential joint venture. That was announced last night which is great news and very exciting.” Later that day, there was an internal Trappit email from David Marcus to Mr de Carvajal discussing the effect of Spanish governing law and jurisdiction on the validity of a penalty clause in the draft NDA.
AmEx Europe and Trappit SA signed an NDA on 18 March 2014 (the “NDA”). As a result of the use of AmEx Europe's template and Trappit SA's amendment to change the governing law, the NDA is written in English and in a familiar form to an English lawyer but is governed by Spanish law.
After a paragraph giving the date of the agreement and another defining AmEx Europe and Trappit SA as “Amexco” and “Company” respectively, the third unnumbered paragraph of the NDA (“Recital 3”) provided that:
“Amexco and [Trappit SA] would like to exchange certain information regarding a potential business collaboration which may be considered trade secret, proprietary, confidential and/or sensitive information of each party and/or their respective subsidiaries and affiliates (collectively, “Confidential Information” and further defined below in clause 4). To ensure the protection of such Confidential Information and in consideration of the agreement to exchange information, the parties agree as follows…”
The NDA then set out and contained the following material numbered clauses:
“2. Permitted Use. Each party agrees to...
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