77M Ltd v Ordnance Survey Ltd

When confidential material is relevant to a potential counterclaim or to a prospective party’s decision whether to participate in proceedings, the court must balance confidentiality against the proper and proportionate conduct of the litigation. A person who must decide whether to bring or join a claim should ordinarily receive complete and informed advice, including access to the relevant confidential documents. Where the prospective party is likely to become involved, joinder and access through a properly controlled confidentiality club may be ordered at an early stage. General caution about misuse of confidential information is insufficient without an identified real risk.

The claimant sought declarations and injunctions concerning alleged copyright, database rights and contractual restrictions arising from its Matrix geospatial database product. The defendant had not yet served its defence and counterclaim. It applied to extend an existing confidentiality club so that the Controller of HMSO and a representative could review confidential pleadings and product information.

The defendant said that the relevant rights were Crown rights for which it was an exclusive licensee, and that the Crown Rights Agreement required HMSO to be consulted about enforcement and litigation. The issue was whether HMSO needed access to the confidential material before deciding whether to become involved and whether the time for serving the defence and counterclaim should be extended.

1. Application granted. The confidentiality club was extended to the Controller of HMSO and her representative, and a short extension was granted for service of the defence and any counterclaim.
2. The court applied a balancing exercise, derived principally from IPCom GmbH v HTC Europe Co. Limited [2013] EWHC 52 and Wobben Properties v Siemens & Ors [2014] EWHC 1967. The competing interests were preserving the claimant’s commercially sensitive information and enabling the defendant to conduct the proceedings properly and obtain informed advice.
3. HMSO had to be consulted about whether a counterclaim should be brought and whether it should participate. It was not realistic to expect the Controller to make an informed decision without seeing the confidential documents. The information in the public particulars of claim was insufficient for that purpose.
4. The confidentiality club provided adequate protection. No real risk of misuse, whether deliberate, inadvertent or subconscious, had been identified. General caution about HMSO’s possible competitive position did not justify withholding the documents.
5. Early access and likely early joinder were proportionate. Refusing the application would risk an incomplete pleading, an uninformed decision by HMSO or later delay. HMSO would become a party in one capacity or another, subject to the possible application of Copyright, Designs and Patents Act 1988, section 102.

First-instance decision. No earlier appellate decision is stated in the judgment.