You don't own my email!
snIPpets – January 2013
- Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases
- Warning for owners of trade marks with a "figurative figleaf of distinctiveness"
- Advocate General advises that registering a CTM should not be a defence to infringement
- 3-D Scrabble Tile: not a sign capable of graphic representation
- Use of a different form of trade mark can still be genuine use
- Yoghurt is Yoghurt
- China trade Mark Practice Note – Retail Services
- You don't own my email!
- English Court flexes its muscles on declarations of non-infringement
- Proposal to make clinical trials less risky and online drug sales safer
- Court of Appeal confirms invalidity of patent for EXELON because it was obvious to resolve racemate using standard techniques
Patents / Competition
The High Court has recently confirmed the legal principle that there is no property in the content of an email.
This wasn't an IP case as such. The Claimant shipping company was being investigated by the Oslo stock exchange and, in order to put its best case forward, the Claimant wanted to inspect emails of its former Chief Executive. Because of a jurisdiction clause, the Claimant's request to inspect the emails was reliant on it owning the contents of the emails.
Mr Justice Edwards-Stuart dismissed the application. In reviewing the case law, he thought there was nothing in English case law to support the idea of property in the content of information. However, this hadn't yet been considered in the context of emails and the employer/ employee relationship. He therefore considered the legal possibilities surrounding ownership of emails.
Possible owners of email content
First there was the idea that title remained with the creator of the e-mail, an idea supported by the standard rubric in many e-mail footers. However, the upshot of this interpretation was that the creator of an email could assert his title against all of the world and could ask any recipient, however far down the chain, to delete it. This was unrealistic. The reverse concept that title passed to the recipient when the e-mail was sent also didn’t make sense. The sender would cease to have any right in the e-mail contents the moment he sent it, and the recipient could require the sender to delete it. The final recipient would be the only one with any right and this was impractical when emails are sent to multiple recipients at the same time.
He also considered the idea that title might remain with the creator of the email and the recipient might obtain a licence to use the content for any legitimate purpose consistent with the circumstances in which it was sent. This option was workable, but would render any proprietary interest in the e-mail contents worthless. The only way of controlling use would be to show that the use was illegitimate, which was akin to the existing equitable or contractual right of confidence. The reverse idea that title passed to the recipient when the e-mail was sent, but the sender had a licence to retain the content and use it for any legitimate purpose, was rejected for the same reasons.
Finally, there was a possibility that title was shared between sender and all recipients (including those to whom the message was forwarded) once the e-mail had been sent. However, it was questionable what value this would have.
Accordingly, the Judge could find no practical reasons that would support a proprietary right in the content of e-mails and, indeed, practical considerations militated against it. The application for inspection was therefore dismissed.
The judge thought that there was already adequate protection against misuse of information contained in e-mails under existing laws of confidentiality, copyright and breach of contract. This therefore reinforces the need for companies to ensure that employee contracts contain clear provisions regarding confidentiality and the use of emails.
Beverley Potts, Senior Associate (PSL) in the IP protection & enforcement Group at Field Fisher Waterhouse LLP.