British Sky Broadcasting Group & Ors v Digital Satellite Warranty Cover Ltd & Ors

On summary judgment, the court may determine a short point of law where the evidence is sufficient and the parties have had a proper opportunity to address it. It must avoid a mini-trial and should ordinarily permit factual issues requiring fuller investigation to proceed to trial.

Database right investment in obtaining or verifying contents is distinct from investment in creating new information. Recording pre-existing customer information systematically may qualify as obtaining or verifying database contents. Use of a mark in misleading marketing may adversely affect its origin function and create a likelihood of confusion. Individuals may be jointly liable for a company’s torts where they participate in, procure or share a common design in the wrongful acts, but their individual responsibility ordinarily requires factual investigation.

Sky brought claims concerning the unlawful use of customer data and misleading marketing of competing extended warranty services. The claims included breach of confidence, infringement of database rights, trade mark infringement and passing off.

Sky sought summary judgment against three individual defendants. The individuals sought summary judgment on Sky’s database-right claim. The court first determined the liability of the corporate businesses and then considered whether the individuals’ personal responsibility could also be determined summarily.

1. Summary judgment. The court adopted the principles summarised in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch). A court should not conduct a mini-trial, but should determine a short point of law where it has the necessary evidence and the parties have had an adequate opportunity to argue the issue. Factual issues likely to benefit from fuller investigation should proceed to trial.
2. Corporate defendants. The businesses were liable for breach of confidence, following the concession made on the evidence. The customer data had been obtained from Sky’s confidential databases.
3. Database rights. The investment protected by article 7 of the Database Directive concerns obtaining, verifying or presenting existing database contents, rather than creating new information. The businesses’ argument that Sky created its customer data merely by entering it into the database was rejected. Sky generally recorded pre-existing information, such as names, addresses and telephone numbers, systematically. The individuals’ application for summary judgment therefore failed.
4. Trade mark infringement and passing off. The businesses’ use of the identical SKY sign for identical services, in the context of the marketing materials and telephone scripts, created an inescapable likelihood of confusion. The uses adversely affected the mark’s origin function and were not in accordance with honest practices. The same conclusion disposed of the passing-off claims.
5. Personal defendants. The principles in MCA Records Inc v Charly Records Ltd [2001] EWCA Civ 1441 applied. The evidence established a strong case that the individuals had procured or participated in wrongful acts, but Sky could not show at this stage who had carried out or authorised particular acts. Their respective roles might differ. Their joint liability therefore required trial.
6. Summary judgment was granted against the individuals as to the businesses’ liability for the four causes of action, but not as to the individuals’ joint liability. The individuals’ application was dismissed.