DPA (London) Ltd v D'Aguanno & Ors

In a civil claim, the claimant must prove infringement and breach of contract on the balance of probabilities. Copying and storing copyright works for inclusion in a professional portfolio may constitute reproduction in material form and possession in the course of business, even where the works are not commercially used. Where the evidence does not establish that works were missing, removed, or used in a subsequent project, those allegations fail. A co-defendant is not liable for authorising another defendant’s acts without evidence of knowledge or authorisation. Copyright infringement and breach of contract may justify nominal damages where no financial loss is proved.

An architectural practice brought a liability-only claim against two former architectural designers and their newly established company. It alleged copyright infringement, breach of implied contractual obligations concerning the storage and return of electronic files, and breach of restrictive covenants allegedly agreed by one designer.

The defendants denied the alleged written agreement and disputed that works had been removed, retained, or used in a subsequent architectural project. One defendant admitted retaining three-dimensional models from three projects on a storage device for a personal portfolio. The issues included the existence of the restrictive covenants, the alleged loss or use of other architectural works, authorisation, breach of contract, and damages.

1. Restrictive covenants. The court preferred the evidence of Ms Muller and found that the purported written contracts had not been provided or agreed. She was therefore not bound by the alleged restrictive covenants, and it was unnecessary to decide whether they had been breached.
2. Alleged missing works. The claimant failed to prove that the three-dimensional models for the named projects were missing from its server. The evidence established that the models had been found and were sufficient to enable further rendering and finishing of computer-generated images. There was no credible evidence that Mr D’Aguanno had failed to save other works or had removed them.
3. Wellington House. The defendants had created an entirely new scheme using a new third-party survey. The claimant therefore failed to prove possession, use, or reproduction of the whole or a substantial part of the earlier works.
4. Admitted retained works. Mr D’Aguanno had copied and stored three-dimensional models from three projects for his portfolio. This was reproduction in material form and possession in the course of his business as an architect or architectural designer. It infringed copyright and breached the implied contractual obligations not to remove the claimant’s documents and to return its property.
5. Authorisation and other liability. There was no evidence that Ms Muller knew of or authorised Mr D’Aguanno’s conduct. MUDA could not have authorised acts occurring before its incorporation. The claimant also failed to prove that Ms Muller had removed or failed to return any works.
6. Damages and order. The retained works had not been put to commercial use and caused no proved loss. Nevertheless, the infringement and contractual breach warranted nominal damages of £1. Mr D’Aguanno was ordered to pay that sum. The remainder of the claim was dismissed.