The Enemy, Formerly, Within

3rd March 2022 Intellectual Property

In recent years, there has been a great deal of movement in the labour market in the UK, with thousands of employees enduring furlough and seeking new pastures. Others have re-evaluated their work/life balance and sought alternative employment or set up their own business. In addition, an estimated 200,000 EU nationals have left the UK following Brexit. ​​​​​​

For many innovative businesses, their key assets are intangible creations which are developed for the benefit of their business and, ultimately, their customers. These intangible assets will include vital pieces of “know how”, which allows their employees to work their own product, as well as customer lists and contact details, and other material which takes much time and effort to develop. In short, all those materials that a competitor would be delighted to be in possession of. Unfortunately, the nature of intangible assets are that they are often easy for employees to electronically copy and retain, even following their employment. 

In addition, during the pandemic lock downs, many employees were encouraged by their employers to work from home on their own personal devices. As such, given the events of the last few years, there are likely to be large amounts of employer owned materials on their employee, or more troubling, former employee’s personal devices.

The JMW Intellectual Property team have been involved in a number of such instances in recent years and are skilled in assisting employers preventing employees removing vital material.

Case Study

In 2021, JMW’s IP team acted for a Claimant, a UK company, against two Defendants, an ex-employee (D1) and a competitor company (D2).

D1 was an employee of the Claimant but following his resignation he was placed on gardening leave. In quick succession, D1 became a shareholder in D2 , a direct competitor of the Claimant.

Upon investigation, it was discovered that D1 had removed a significant amount of Confidential Information, Company Property and Intellectual Property, during the course of his employment with the Claimant. This comprised of product and customer databases, designs, drawings, technical specifications, quotations and method statements for products. These documents were original works created and belonging to the Claimant. D1 had forwarded the documents to himself and to D2, which they in turn made use of forwarding some of the documentation to an unknown third party.

The Proceedings

On behalf of our client, JMW issued proceedings against D1 for breach of contract and confidentiality, and copyright infringement and as against D2 for inducement of copyright infringement.

While both the Defendants initially defended the proceedings, D1 agreed to allow the Claimant’s instructed IT experts to conduct a forensic search and deletion of the documents which had been retained on his personal devices. This ensured all Confidential Information, Company Property and Intellectual Property of the company was deleted from D1’s personal devices.

In addition, both Defendants agreed to pay the Claimant damages and legal costs of around £50,000.

Lessons learnt

For many businesses, copyright is not seen as a valuable asset. However, the effort, skill and labour which goes into creating simple documents can be extensive and investment heavy. Given that investment, it is important that businesses seek to prevent copy-cats from taking advantage of their efforts.

The Claimant’s actions in this case sent a clear message that it would take whatever steps necessary in order to protect its commercial interests and to mitigate any further reputation and or financial damage from occurring.

If you think that your work has been copied and you would like to discuss your legal options, please contact us on 0345 241 5305 and speak to our IP law experts.

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Kelsey Hall-Clarke is a Trainee Solicitor located in Londonin our Trainee Solicitors department

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Philip Partington is a Partner located in Londonin our Intellectual Property department

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