Paymaster (Jamaica) Limited and another v Grace Kennedy Remittance Services Limited

Under the Copyright Act 1993, the author is first owner of copyright unless an agreement provides otherwise. An implied assignment requires necessity for business efficacy. It is insufficient that the client paid for bespoke software or would have preferred ownership with hindsight. An exclusive licence may meet the client’s commercial purpose.

For breach of confidence, the claimant must identify the information allegedly used and establish use to detriment. A general business concept, similarities between businesses, or use of software embodying the concept is insufficient. Subconscious springboard use may qualify, but the information used must be identified. Appellate interference with factual findings requires identifiable error or a decision that cannot reasonably be explained or justified.

Paymaster commissioned Paul Lowe to develop software for a Jamaican multi-payment agency business. Lowe retained copyright and granted Paymaster a non-exclusive licence. He later licensed the software to Grace Kennedy Remittance Services Limited (GKRS), which entered the same market.

Paymaster alleged copyright infringement and breach of confidence against GKRS and Lowe. Jones J rejected the claims. The Court of Appeal of Jamaica dismissed the copyright claim, but found that GKRS had misused Paymaster’s confidential business plan. It also dismissed the claim against Lowe and allowed Lowe’s cross-appeal concerning loss caused by an injunction. The Board considered the implied assignment of copyright and whether either defendant had used confidential information.

The Board allowed GKRS’s appeal concerning breach of confidence and dismissed Paymaster’s appeal concerning copyright ownership and the claim against Lowe. Costs were reserved for written submissions.

1. Copyright ownership. Section 22(1) of the Copyright Act 1993 made the author the first owner unless there was an agreement to the contrary. Paymaster was not the author and therefore had to establish an express or implied agreement assigning copyright.
2. Implied term. The Board applied the business-efficacy principle in Marks and Spencer plc v BNP Paribas Securities Services Trust Co (Jersey) Ltd [2016] AC 742, together with the necessity guidance in Philips Electronique Grand Public SA v British Sky Broadcasting Ltd [1995] EMLR 472 and Trollope & Colls Ltd v North West Metropolitan Regional Hospital Board [1973] 1 WLR 601. The proposed assignment was inconsistent with Lowe’s established business model of retaining copyright and licensing modified software. Paymaster’s business purpose could have been secured by an exclusive licence, so assignment was not the only or undoubtedly preferred contractual solution. The work said to be assigned was also insufficiently defined and its additional functionality had not been shown to be separable. The copyright pointer identified in Robin Ray v Classic FM Plc [1998] 25 FSR 622 was absent because no pre-existing copyright material belonging to Paymaster had been used.
3. Appellate review. Applying the principles in Thomas v Thomas [1947] AC 484 and Henderson v Foxworth Investments Ltd [2014] UKSC 41, the Court of Appeal had no sufficient basis to overturn Jones J’s assessment of the evidence. The trial judge had not been shown to have disregarded relevant evidence or to have been plainly wrong.
4. Breach of confidence against GKRS. The concept of a multi-payment agency was not shown to be novel or confidential merely because it had not previously been developed in Jamaica. GKRS had independent research, an existing Western Union branch network and business practices, and evidence supporting the use of those resources. No particular element of Paymaster’s business plan was identified as having been used. Use of Lowe’s software did not establish use of the plan, since Lowe owned the copyright and was free to license the software.
5. Breach of confidence against Lowe. The information in the user manual consisted of Paymaster’s name, three client names and six branch locations. It was not shown to be confidential or to have been exploited. The claim therefore failed.

• Privy Council: In [2017] UKPC 40, GKRS’s appeal was allowed and Paymaster’s appeal was dismissed. Costs were left for written submissions.
• Court of Appeal of Jamaica: Paymaster’s copyright appeal and its claim against Lowe were rejected. Its claim against GKRS for breach of confidence was allowed. Lowe’s cross-appeal concerning loss caused by the injunction was also allowed.
• Trial: After a seven-day trial, Jones J rejected Paymaster’s claims for copyright infringement and breach of confidence.