Salt Ship Design AS v Prysmian Powerlink SRL

An interim payment may be ordered on a claim for an account of profits where the court can make a reasonable estimate of the likely final judgment and the payment represents a reasonable proportion of it. In assessing causation, the court identifies the gain fairly attributable to the wrongful use. It is no answer that comparable profits could have been obtained lawfully. Where the wrongful use created the only alternative transaction and its associated saving, the gain may be measured by the difference between the alternatives without apportioning the infringer’s internal pricing factors.

A publicity order under regulation 18 of the Trade Secrets (Enforcement, etc) Regulations 2018 requires proportionality and an assessment of the listed factors. The statutory test is appropriateness, not necessity.

Following a liability judgment finding that Prysmian had misused Salt’s confidential design information in breach of contract, equitable confidence and through unlawful means conspiracy, Salt sought consequential relief.

The applications were for an interim payment on a proposed account of profits and a publicity order under regulation 18 of the Trade Secrets (Enforcement, etc) Regulations 2018. Prysmian argued that any account should be limited to the contractual payment that could have been made for the design work, that the misuse was merely an occasion for a price reduction, and that publicity was unnecessary and disproportionate.

1. Interim payment. The application was not premature. Under CPR 25.7, the court had to assess the likely amount of the final judgment and award a reasonable proportion. After a contested liability trial, the judge was able to make a sufficiently informed rough estimate.
2. An account of profits is available for misuse of confidential information. Causation required identification of the profits fairly attributable to the wrongful act. It was no answer that Prysmian could have obtained similar benefits lawfully by paying under the Short Form Agreement or settling with Salt. Prysmian had not done so and had instead misused the information.
3. Payment under clause 6.3 would not have overridden clause 6.4, which prohibited disclosure of the design documents to third parties without Salt’s consent. The alleged contractual entitlement to provide the documents to Vard therefore did not exist.
4. The misuse created the only available alternative to the Salt-designed vessel: a Vard vessel using the benefit of Salt’s design at a lower price. The resulting gain was fairly attributable to the misuse and was measured by the difference between the prices offered for the two vessels, namely €5,710,000 on the February 2018 figures. It was unnecessary to investigate how Vard internally allocated the price reduction. The court therefore ordered an interim payment of €5 million as a reasonable proportion of the likely final account.
5. Publicity order. Regulation 18 required consideration of proportionality, with the statutory factors at the forefront, but did not impose a test of necessity. The factors were not exhaustive. The value of the trade secrets, Prysmian’s conduct and the impact on Salt favoured dissemination. Publicity also served the deterrent purposes identified in Recital (31) of the Trade Secrets Directive.
6. The order was appropriate but should be confined to the principal webpage concerning the Leonardo da Vinci and last six months. The notice was to explain that no order prevented Prysmian from trading the vessel, so that the measure remained informative rather than punitive or misleading.

The judgment followed the liability judgment in [2021] EWHC 2633. Permission to appeal on limited issues concerning unlawful means conspiracy and exemplary damages was postponed until determination of the exemplary damages claim. No appeal was pursued against the findings concerning breach of contract or confidence.