Burrows v Smith & Anor

The Claimant (“Mr Burrows”) is a designer of computer games. He was employed from 2005 until 2007 by Circle Studio Limited (“Circle”), one of whose directors was at that time Adrian Smith (“Mr Smith”). Mr Smith was also a minority shareholder. Circle’s business was the creation, development and supply of computer games: but it entered creditors’ voluntary liquidation on 9 March 2007. In June 2007 Mr Smith (together with Martin Carr (“Mr Carr”)) incorporated Crush Digital Media Limited (“Crush”). In August 2007 Crush purchased some of Circle’s intellectual property assets from its liquidator.

In this action Mr Burrows accuses Crush (and Mr Smith personally) of infringing his copyright in a document which recorded an idea for a computer game and of breaching an obligation of confidence owed to him in relation to the idea. His complaints have been pursued in somewhat opaque terms and this has no doubt contributed to the regrettable fact that the action reached trial at all. I have concluded that I must dismiss the claim, which appears to have been pursued as the result of a misunderstanding.

I propose to set out the facts as I find them (for they were in the event not substantially in dispute at trial), then to look at the complaints made in the pleaded case, then to identify the legal principles which must underpin those complaints, and then to explain the conclusion to which the application of those principles to the found facts compels me.

Mr Burrows has since 1992 been a computer games designer. He works by developing an initial idea for a game, and then liaising with different experts who will develop that idea into a playable game. Such games can be played on various platforms which are themselves at differing stages of development: thus a game that is now too simple and unsophisticated to be played on a video arcade machine may find a renewed life on a portable games console.

At some time prior to 21 August 1998 (the date of the oldest computer file record) Mr Burrows had an idea for a game. It was to move a ball from one side of an environment to another by laying a track or path in front of the ball as it continuously rolled. The pieces of track or path were randomly provided and the player had to improvise the course: and the ball would encounter obstacles (such as gates or hoops or holes) that would have to be overcome (e.g. by making the ball hover or by filling in a hole with concrete). As the game progressed the environments became more complex to navigate, the ball speeded up and the track pieces were provided faster. The idea was not entirely novel and contained no wholly unique feature. It combined elements drawn from other games. Mr Burrows himself described it as “Marble Madness meets Tetris/Wetrix and a Scalectric track” and “Super Monkey ball meets Tetris”. The expert evidence of Mr Grant Dean referred also to the very similar Pipemania (an arcade game dating from 1990 in which the player laid randomly provided pipe sections in front of flowing water), and to Spindizzy (a video game dating from 1986 which used a gyroscope and not a ball).

Mr Burrows gave the idea a variety of names, beginning with “Forever Rolling” and ending with “Traktris”. He made a written description of the game, setting out its objectives, possible variations (the ball could be a standard ball, or a hamster ball, or an eyeball, or a fish in a bowl or a bouncy rubber ball), alternative gameplays (randomly provided track or a finite number of track pieces), different environments (swamp, ice, caves, space) and sundry enhancements (“power ups”, bombs to destroy obstacles, ice makers to freeze over water hazards, cannon to fire the ball through obstacles etc). The evidence established that most (if not all) of these were tried and tested game mechanics evident in dozens of games. But Mr Burrows brought them together in his game idea: and he recorded them.

In the pleadings the document in which he recorded his idea was called “the 1998 Document”. This nomenclature was productive of confusion and dispute because from internal evidence (references to other games and playing platforms) the document bearing that description and disclosed as being the relevant document was plainly produced after 1998. I propose to ignore these issues. All that matters for the purposes of this action is that from 1998 Mr Burrows was producing and constantly revising a document recording his ideas for a game, and that such a document existed (though its precise form cannot now be determined and no copy survives) at the beginning of 2005. In this judgment I will call that document in the form in which it existed at the end of 2004 “the Original Document”.

Mr Burrows had been a freelance designer. But in January 2005 he decided to become an employee of Circle. Circle had been the creator and developer of the well known “Tomb Raider” game. It was known to operate an “open door” policy and to be receptive to new ideas; and it was regarded as generous to its staff. When seeking employment Mr Burrows “pitched” a number of his ideas to Circle (but did not include “Traktris”). He was engaged as a senior games designer at a salary of £32,000 p.a.. Naturally the contract of employment dealt with the ownership of the designs he would produce during his employment.

By clause 14.1.1 of his contract Mr Burrows agreed that

“Every trade secret, invention,…. design,…….know how……process, method scheme, product or product design (each of which is hereinafter called “an invention”) whether patentable or not, and every design note….idea, algorithm…..source code, graphic, artwork, picture or like material, and any other matter which is the subject of copyright or is otherwise capable of protection through intellectual property rights……..which is made, developed, perfected, devised, conceived or first reduced to practice by [you] either solely or in collaboration with others during your employment with the company, whether or not during regular working hours, relating in any way to the business …products or activities of the company or which is capable of use in relation thereto shall be the sole and exclusive property of the company”

The clause thus dealt with two groups of ideas: those ideas themselves which were defined as “inventions” (which Mr Ward for Circle categorised as “hard IP”) and those records of ideas which were the subject of copyright or otherwise protectable as intellectual property (which he categorised as “soft IP”).

Clause 14.1.2. said that the terms of clause 14.1.1 did not apply to “an invention” for which no company facilities were used and which was developed entirely in the employee’s own time. Clause 14.1.3 said that any invention disclosed to the company during Mr Burrow’s employment should be deemed to have arisen out of that employment unless Mr Burrows either disclosed it in the contract itself or established that it fell within clause 14.1.2. Mr Burrows did not in the employment contract disclose the idea he had for his game called “Traktis”.

In May 2006 (after he had been working for Circle for over a year) Mr Burrows put forward a proposal for a game that he now called “Traktrix”. He did so using a two page document setting out some rough ideas. This document was not identified in the evidence, and it was not suggested that any copy survived. It would not have been the Original Document. Mr Smith thought the idea worth developing: it was regarded as the strongest concept amongst those put forward by Mr Burrows due in part to its similarities to a number of other successful games. Mr Burrows was therefore detailed to develop the concept, and he did so working with a team of designers, artists and animators employed by Circle who tried to move the project towards offering the consumer a more compelling game. One of the team, Mr Estell, produced visual representations of the game (which hitherto had existed only as a verbal description). The game as developed by the team contained many enhancements over that worked up by Mr Burrows as at the end of 2004.

The results of this work were gathered together in a document called “Traktrix: a puzzle playground for PSP, DS and Wii”. The document (which I will call “the 2006 Document”) bore the legend “Design Document by Stuart Burrows © 2006”. It was not in the pleaded case or at trial suggested that this legend had any significance. The 2006 Document had been created during Mr Burrows’ employment with Circle and he had been paid by Circle for its production. It was the result of collaboration with other Circle employees and was the not the work of Mr Burrows alone: for example, it contained Mr Estell’s visual realisations. But in preparing the 2006 Document Mr Burrows had (unknown to Circle or any of its employees) drawn upon the Original Document. The 2006 Document contains a much more detailed and complicated specification for the game it describes than does the Original Document: but (although no detailed comparison was undertaken at trial and no schedule of similarities had been prepared) it is apparent that some of the language used to describe some of the longstanding features of the game is identical to that used in the Original Document. Nobody other than Mr Burrows had seen the Original Document: and nobody other than Mr Burrows could have known of the existence or extent of any “copying”. To the team of which Mr Burrows was part the 2006 Document would have appeared entirely original.

Circle was pleased with the outcome. Mr Jeremy Heaton-Smith (Circle’s managing director) offered Mr Burrows a minimum of £5000 out of the discretionary bonus pool if Traktrix was sold commercially.

Mr Heaton-Smith took the 2006 Document and a video presentation to Mr Ian Livingstone OBE. He was the founder of Eidos plc (a leading software publisher and distributor of computer games) and of Games Workshop: he was regarded within the industry as an authority. The feedback he gave was not good. What Circle had regarded as a strength (the similarity to existing established games) was seen by Eidos as a real weakness. Eidos also had concerns about the length of the gameplay and a lack of things to do (which Eidos thought was a fundamental flaw). Mr Livingstone gave some advice as to what might make the game attractive from a publisher’s point of view. The ball should become a train. The train should collect and transport commodities (so as to introduce a performance measure): it could collect and drop characters. The game should be called “TrainTrax”. There should be an attempt to licence a character (such as “Thomas the Tank Engine”) to give the game personality.

With the benefit of this advice (reinforced by a lack of interest from any other publisher in “Traktrix” itself) Circle set about developing “TrainTrax”. This caused a degree of tension with Mr Burrows, because he saw the essence of the game as laying the track, whereas Eidos had seen the essence of the game as the interaction of characters and environment (with the track laying merely as the means to an end). In his evidence Mr Burrows said that the further development resulted in “slight (mainly thematic) changes”: but he recognised that “Traktrix” had been abandoned by Circle “in name at least”. In his evidence Mr Livingstone described them as “major changes” which gave the game depth, enabled the player to become emotionally attached, and offered a differential to other products on the market: so much so that he put “TrainTrax” forward to the Eidos selection committee. Although at trial there was no detailed comparison between the two concepts it was accepted that the two were recognisably different. Having myself considered “Traintrax” as described in a design document prepared by Circle on 18 January 2007 and compared it with the 2006 Document I prefer the assessment of Mr Livingstone to that of Mr Burrows as to the extent of the development. The evidence establishes that the game design document which evolved into that dated 18 January 2007 had its first iteration by the end of October 2006.

Unfortunately Traintrax (as described in the January 2007 document) did not in the end appeal to Eidos (or to any of the other publishers to whom Circle had been offering it since October 2006). The general feeling was that it required further characterisation (preferably by obtaining a licence to use an established “railway” character). The process of marketing Traintrax was still in progress when Circle entered insolvency. The liquidation put an end to Mr Burrows’ employment.

Mr Smith was then approached by Mr Carr with a proposal to establish a new software development company. Crush was incorporated on 11 June 2007 with a view to servicing the Nintendo DS and Wii platform market. Mr Smith and Mr Carr decided that the fastest route to market would be to purchase from the liquidators some of the software under development by Circle. They reached an agreement in principle (which included a purchase of Circle’s rights in “Traintrax”). Mr Smith and Mr Carr regarded this agreement in principle as “a verbal “go-ahead” from the liquidators”. However, the formal Asset Sale Agreement itself was only entered on 21 August 2007. It covered “any right title or interest [Circle] may have in the intellectual property comprised in the game concepts “Blended” “Rock Star Riot” and “Train Tracks”…..”. Crush did not acquire any right to the game concept “Traktrix”. It is clear that Crush had access to the January 2007 game design document relating to “Traintrax”. But the evidence did not establish that Crush received the 2006 Document (which described “Traktrix”).

Although Crush had not formally acquired the relevant rights to Circle’s assets Mr Smith and Mr Carr began making preparations for their exploitation. Mr Smith (who focussed on the creative side of the business, leaving Mr Carr to deal with commercial matters and marketing) approached two designers (Mr Jenkins and Mr Lloyd) to further enhance the concepts. They suggested that Crush might retain Mr Burrows to work on Traintrax. So on 19 June 2007 Mr Smith and Mr Burrows met for 3 hours. In preparation for the meeting Mr Smith sent Mr Burrows the game design for Traintrax as embodied in the January 2007 design document (which Mr Burrows did not have). As Mr Burrows acknowledged in cross-examination it was obvious that it was Traintrax (not the abandoned Traktrix) in which Mr Smith was interested. At the meeting Mr Smith explained that Crush was talking with a publisher about exploiting Traintrax, but the publisher wanted to see how the title would work on the Nintendo DS and Wii platform. Mr Smith held out the prospect of freelance work for Crush, and asked Mr Burrows to set out his ideas on the gameplay features and key elements specific to the Wii format.

There was a conflict between the evidence of Mr Burrows and that of Mr Smith as to what was held out as an inducement to Mr Burrows before or at this meeting. In his written evidence Mr Burrows said he was “offered £3000 for Traintrax”. In cross-examination he said there was a £3000 offer along the same lines as the earlier offer of £5000, but it was difficult to recall the exact conversation (though he assumed the payment was made in recognition of some rights he had). Mr Smith denied making any offer of any description, save for holding out the prospect of freelance work. I consider it highly improbable that Mr Smith offered Mr Burrows £3000 for some supposed rights in the “Traintrax” concept. Mr Smith had at that very time agreed with the liquidators of Circle to acquire such rights in three games for £300 and was in the course of negotiating a formal assignment. It is incredible that he should offer Mr Burrows ten times as much for the informal acquisition of such rights in one game. It is, however, more probable than not that Mr Smith offered Mr Burrows £3000 if the Traintrax concept was successfully commercially marketed. That would be entirely consistent with the incentivised reward philosophy Mr Smith adopted at Circle. It is more likely that Mr Smith has forgotten such a casual offer than that Mr Burrows should have invented it.

Mr Burrows produced a Wii-specific gameplay overview for Traintrax which (after modification by Mr Smith) was sent out to publishers on 20 June 2007. Nobody would give it the green light. But whilst it was under consideration Mr Burrows sent an e-mail to Mr Smith on 8 July 2007 asking “When are you going to be able to pay me for the IP on Traktrix/Traintrax?”. This received only an anodyne reply, though Mr Smith said he was completely taken aback by the request for payment.

Mr Burrows went straight to solicitors (Messrs Nelsons, who in fact had acted for Circle). On 10 July 2007 they wrote asserting that Mr Burrows had been employed by Circle after he had pitched a number of games

“..including a game he had designed a number of years previously known at the time as “Trak Trix”. That game subsequently became known as “Train Trax” after various changes to the graphic style. The basis of the game however was exactly as had been designed prior to his employment.”

They asserted that the game was a literary work in which copyright subsisted, and that Mr Burrows was its author. They alleged that Mr Smith was infringing that copyright by “[taking] the game to various publishers”: and they threatened proceedings unless they received a written acknowledgement “that all intellectual property rights in the game known at various times as “Traktrix” or “Traintrax” (the Game) belong to our client”, delivery up of all copies of the Game, and payment of damages (or an account of profits) together with costs on an indemnity basis. This aggressive and ill-advised letter contained a number of factual and legal errors: but most crucially it proceeded on the footing that there was a single identifiable “Game” which simply bore different names.

Crush instructed solicitors. They responded to Nelsons, adopting Nelsons’ analysis. They said that Crush had purchased “all subsisting rights of [Circle] in Traktrix/Traintrax”: they challenged the assertion that the basis of the game was exactly as had been designed before Mr Burrows’ employment, and themselves asserted that “the lion’s share of all and any IPR in this game belonged to [Circle]”. They expressed particular surprise that complaint should be made about the current attempt to resurrect the Traintrax project when it was Mr Burrows himself who had drafted the document to enable that to be done.

The subsequent correspondence proceeded upon the foundation thus established by Nelsons, namely, that there was a single “Game” the IPR in which belonged to Mr Burrows, and that the current attempts to interest publishers in the current version of Traintrax (directed at handheld games consoles) was an infringement of his rights.

On 12 December 2007 Crush made full disclosure of all publishers (13 in number, and all of whom it appeared had previously been contacted by Circle) to whom it had presented “the Traintrax project”, and stated that no publisher had decided to move forward on any commercial terms whatsoever and that at the current time Crush did not see any viable way forward of exploiting the Traintrax project. In the face of that “obvious commercial reality” they expressed the hope that that would be the end of the matter.

That was not, however, to be: for on 22 January 2008 Mr Burrows sent what was (in effect) his second letter before action. He now asserted that in 1998 he had “created and crystallised an original concept (“the Concept”) for a computer game which he then named Traktrix”, that the Concept was confidential information and that its record in a document was the subject of copyright in a literary work . He asserted that during his employment he developed the Concept, that the Concept “matured into a closely similar game and is described in [the 2006 Document]”. He then alleged that since June 2007 “Mr Smith and [Crush] have been disclosing the Concept and/or the 2006 Document… to third parties in order to try and sell onward the rights in the same”. The claim was that Mr Smith and Crush were acting unlawfully in “using or disclosing the ideas embodied in the Concept” and “copying the 2006 Document (infringement of copyright in the 1998 Document)”. Draft Particulars of Claim accompanied the letter.

Neither Mr Smith nor Crush had since June 2007 either sought to sell “Traktrix” or use the 2006 Document. All they had tried to do was (with Mr Burrows’ help) to promote Traintrax, as described in a game design document dated January 2007. They plainly understood the 22 January 2008 letter as complaining that, in so doing, they were “disclosing the Concept and/or the 2006 Document”. So they responded by saying that there was no commercial value in the Traintrax project because nobody was interested in taking it on, that they were not working on the Traintrax project and had no ongoing negotiations (or indeed any plans for such), that they considered that they had substantial intellectual property rights in the Traintrax project, but that they were willing to consider any sensible financial offer which Mr Burrows might like to put forward to acquire their rights. After a nine month delay they received the answer from Mr Burrows that he was not prepared “to pay to purchase back intellectual property rights that he already owns and which [Crush and Mr Smith] ha[d] infringed”. So once again it appeared clear that Mr Burrows was asserting that there was but a single game and that he owned all of the relevant rights in it.

The proceedings followed. On learning of their issue Mr Smith and Crush instructed their solicitors to write in these terms:-

“Without admission of liability, our client is prepared to transfer ownership of all its intellectual property rights in Traintrax to your client. We would be grateful if you could provide a draft assignment for our client’s approval.”

The proceedings were pursued. Mr Burrows wanted a permanent injunction, his entire costs (including a CFA uplift) and damages or an account of profits.

The heart of the case advanced in the Particulars of Claim was found in nine paragraphs:-

The Defence:-

When the Defence was served, Mr Burrows’ legal representatives did not suggest that it proceeded upon a misunderstanding or addressed a case that was not in fact being made. Indeed Mr Burrows himself shared the view that his complaint was about a single game and that he was entitled to complain about any dealing by Crush or Mr Smith with it. Thus paragraph 5 of his witness statement began:-

“This claim is based on a game known variously as “Forever Rolling”, “Trax Tris” “Traktrix” and “Traintrax”. For ease I shall refer to the various stages of the game as “Trak Trix” as my generic description of the game in its various guises”.

Furthermore, the expert report which Mr Burrows’ solicitors commissioned from Mr Sykes (but did not in the event adduce at trial) had as a key part a “comparison of Traktrix and the 2007 Traintrax games”. Finally, the apparent connection between the two was maintained in Mr Chapple’s skeleton argument, paragraph 22 of which identified the matter of complaint as “the use by the Defendant of each of the Concept and the 1998 Document in the Traintrax concept and documentation”: that seems to be a clear assertion that Mr Burrows had some sort of interest in “Traintrax”.

It therefore came as something of a surprise when in opening Mr Chapple said that Mr Burrows’ actual complaint was about attempts to sell “Traktrix”, that Crush and Mr Smith were probably entitled to sell “Traintrax”, that all the action sought to do was to stop Crush/Mr Smith selling a game that consisted of a ball rolling down a track (“that was the Concept”) and that the idea of a train passing over a track was accepted as a different concept (which belonged to Circle). Mr Ward said he regarded this statement in opening as “a bombshell” which rendered pursuit of the action incomprehensible.

It would appear clear that anything to do with “Traintrax” that had belonged to Circle was acquired by Crush under the August 2007 Assignment. Crush entered administration on 23 March 2009 and no permission had been sought to pursue the action against the company in administration: so at trial this complaint was now directed at Mr Smith. The question is: has it been made out against him?

There were two limbs to the complaint: breach of confidence and infringement of copyright. I will take each in turn.

To make out a case in breach of confidence it must first be established that the relevant material was of such a nature as to be capable of being treated confidentially. In De Maudsley v Palumbo [1996] FSR 447 it was stated that (in the context of the entertainment industry) in order to attract confidence an idea must (a) contain some significant element of originality; (b) be clearly identifiable (as an idea of the confider); (c) be of potential commercial attractiveness; and (d) be sufficiently well developed to be capable of actual realisation. By this measure I hold that the idea for the game “Traktrix” (what is called “the Concept” in paragraph 6 of the Particulars of Claim and what is described in paragraph 9 of the Particulars of Claim) was an idea capable of being protected by the equitable rules of confidence. Even if no single element in it was novel the combination of elements was original.

Mr Ward submitted that if “the idea” had been capable of protection by the equitable rules of confidence it had lost that quality because it was set out in full in Mr Chapple’s Particulars of Claim (instead of being contained in a confidential schedule). There may be cases in which such a point would have weight: but I do not regard this as such a case. I do not intend to decide this case on the form of the pleadings, but on the facts found on the evidence led.

It must then be established that the idea was imparted to the Defendant in circumstances importing an obligation of confidence. Since the evidence did not establish that either Crush or Mr Smith personally was the direct recipient of the idea Mr Burrows’ case has to be that the idea was imparted to Circle in circumstances which imported an obligation of confidence and that Crush (and Mr Smith) are bound by the obligation of confidence which was created on that disclosure to Circle. I hold that Mr Burrows has failed to make good this element.

Mr Burrows was employed as a senior games designer by Circle. It was his job to come up with ideas. If he came up with an idea and shared it with his employer he was doing what he was paid to do: the disclosure would not be in circumstances importing any duty of confidence owed by the employer to the employee. After he had been employed for over a year Mr Burrows disclosed the idea for “Traktrix” (in the form in which it the was in the Original Document). There is no evidence that in so doing he told Mr Smith or the creative team at Circle that this was an idea he had thought up before he joined Circle and one he had been working on since 1998. He had not claimed it as an original personal idea in the Schedule to his contract of employment. The whole purpose of disclosing the idea was to enable Circle and its team to work up the idea and to take it to market (and if they were successful in that endeavour then Mr Burrows would get a share of the bonus pool). There is in my judgment nothing in the circumstances of the disclosure to impose upon the conscience of Circle (or the individual consciences of its management, including Mr Smith) any obligation of confidence in relation to Mr Burrows.

I do not consider that clause 14 of the contract of employment has any real bearing on the “breach of confidence” argument. The clause addresses ownership (declaring things to be the “sole and exclusive property of the company”). But Mr Burrows is not running a case about “ownership” of the idea, in which he seeks to identify some recognisable intellectual property right and to establish where title rests. If he were to do so I do not think Clause 14 would assist him. If his “idea” were “hard IP” then it was something which was “developed, perfected…or first reduced to practice” during his employment and so was the exclusive property of Circle unless he could establish that no facilities of the company had been used and that it was developed entirely in his own time. This could be true only of the “idea” in the form in which it appeared in the Original Document, and Mr Burrows would then have to establish that the “hard IP” remained protectable in that original form and remained vested in him notwithstanding its actual incorporation into a developed or perfected form. If his “idea” were “soft IP” then it belonged to Circle (because the “own time” exception applied only to “inventions” (i.e. “hard IP”). So I do not think clause 14 assists Mr Burrows in the way he is actually putting his case: nor would it assist him if he put his case a different way.

Assuming (contrary to my holding) Mr Burrows’ idea to have been imparted to Circle in circumstances which imported an obligation of confidence it would then have to be established that that obligation bound Crush and Mr Smith. This step in the analysis was not the subject of argument at trial, and it was not the subject of evidence. On my findings of fact the requirement could not be satisfied. Since nobody at Circle knew that Mr Burrows’ idea was one he had thought up in 1998 nobody at Crush could have known that either.

The final step in the “breach of confidence” claim would be to establish that Crush (and Mr Smith as its “guiding mind” – assuming for present purposes that to be a sufficient condition) made disclosures in breach of confidence. Here the evidence is wholly against Mr Burrows. If his complaint is about “Traktrix” then it is as clear as can be that the disclosures of “Traktrix” by Circle itself were authorised by Mr Burrows (because they were the means by which he hoped to get his bonus), and that Circle itself abandoned “Traktrix” after the unfavourable feedback from Eidos. It is equally clear that Crush never sought to acquire any rights in “Traktrix”, never regarded it as commercially viable and never marketed it. What Crush did (and Mr Smith undertook) was to promote “Traintrax” as described in a game design document dated January 2007 (drawing attention to specific features suitable for handheld portable consoles in a document prepared by Mr Burrows himself in June 2007). There was no disclosure by Crush of “Traktrix” in the form described in the 2006 Document or in any earlier form.

For these reasons the breach of confidence claim must fail.

I turn to the copyright claim. It may be taken as a starting point that Mr Burrows owned the copyright in the Original Document (or in what the Particulars of Claim call “the 1998 Document”). What he must do is establish that Crush has created or copied an infringing work or issued an infringing work to the public. Since only Mr Smith survives as a defendant, Mr Burrows must establish either that Mr Smith personally carried out those infringing acts or is personally responsible for Crush having done so.

Mr Burrow’s argument was that Circle had created an infringing document by producing the 2006 Document which (he asserted) copied significant parts of the Original Document. But nobody at Circle, other than Mr Burrows, knew of the Original Document. If the 2006 Document “copied” parts of the Original Documents then it did so because Mr Burrows himself incorporated them without telling anyone. Crush pleaded that there must (at the least) be an implied licence. Mr Chapple accepted that that must be so: but he argued that the licence was personal to Circle (and could not be assigned to Crush) and that it contained an implied term (required to give it business efficacy) that it was automatically terminable on the liquidation of Circle (or the termination of Mr Burrows’ employment by Circle). The admission that there was a licence and the alleged terms of the licence had not been pleaded.

I reject this argument. The incorporation of parts of the Original Document in the 2006 Document was not consensual (in that Circle and its team did not know that it was occurring). To suggest that there was an agreement between Mr Burrows and Circle into which terms must be implied to give it business efficacy does not fit with the facts. What happened was that Mr Burrows voluntarily and without the imposition of any express conditions used work that he had previously completed for the purpose of performing the tasks required for the fulfilment of his current duties as an employee. If that has to be put into a legal category for the purposes of the application of the law of copyright then it would most naturally be viewed as an assignment- a unilateral act requiring no agreement on the part of the recipient.

That analysis would be consistent with the terms of clause 14 of the employment contract. The copyright in a work is not an “invention” for the purposes of clause 14.1.1. Copyright falls within the part of the clause dealing with “soft IP” as Mr Ward described it. There is no “own time” exception for soft IP. Clause 14.1.2 applies only to “inventions”. On this reading of the clause copyright in a work created in Circle’s time and at its expense (as the 2006 Document actually was) vested in Circle. There is no means by which the clause can be read as entitling Mr Burrows to retain copyright but to licence Circle to use it. As Jacob J pointed out in IBCOS (post) when construing an agreement the Court will not, unless there is no other reasonable construction, read a clause in such a way that it then has to go on to imply a term to make sense of the contract as a whole.

That analysis would also be in line with the decision in IBCOS Computers Ltd V Barclays Mercantile Highland Finance Ltd.[1994] FSR 275. P owned the copyright in a computer programme (“Mark 3”). P established a company (PK Ltd) with another to develop Mark 3. It was developed into a programme called ADS. P claimed that in selling ADS PK Ltd was infringing his copyright in Mark 3. Having described this copyright claim as “preposterous” Jacob J set about explaining why.

“The argument ran that [P] owned the copyright in the Mark 3 software. This had become embedded in ADS as it stood in 1986. [Counsel] said it followed that there was a licence from [P] which he could revoke. This would mean that all the improvements and additions made over the years, mainly by [P] himself, would be useless. The whole foundation of PK’s (or any successor in title’s) business would be at his mercy. Even given the premise of ownership of copyright there would surely be an estoppel on those facts. That must be so even without the clause providing that all PK software is the property of PK. That clause makes it even more inconceivable that [P] could have any right to stop the use of it”.

But even if copyright in some sentences in the 2006 Document remained vested in Mr Burrows (so that the 2006 Document he helped create at Circle was to that extent an infringing copy) there is no evidence that Crush ever used such an infringing copy. The evidence only established that Crush marketed Traintrax and in doing so used the January 2007 game design document. It was never put to Mr Smith that Crush had (under his direction) ever used the 2006 Document.

Finally, if Crush itself had used or made available to the public any infringing copy no case has been made out that Mr Smith (the only remaining Defendant) was personally responsible. It was merely asserted in the pleadings that Mr Smith was the “guiding mind” of Crush. But this assertion was not made good on the evidence. Mr Smith was one of two directors: he was no more “the guiding mind” of Crush than was his co-director. Mr Smith had responsibility for game development: it was his co-director Mr Carr who was responsible for the commercial aspects of the Crush business. There is no basis for a finding that Mr Smith personally carried out any infringing acts or is personally responsible for Crush having done so, so as to support the sort of analysis that succeeded in MCA Records Inc v Charly Records Ltd [2001] EWCA 1441 (especially at para 53).

The claim in copyright against Mr Smith therefore also fails.

It was suggested that Mr Burrows might be entitled to injunctive relief (if not the account or damages, including damages for flagrancy) because although Mr Smith did not assert any right to market “Traktrix” or disclose any intention so to do yet he had declined to give an undertaking that he would not. This is not a proper basis for relief. If Mr Burrows seeks a quia timet injunction he must demonstrate both an actionable right to prevent that of which he complains and “a strong case of probability that the apprehended mischief will, in fact, arise”: see A-G v Corporation of Manchester [1893] 2 Ch 87 at 92. This Mr Burrows cannot do. From the outset the position of Mr Smith has been that any attempt to market “Traktrix” was abandoned by Circle and has never been revived, and that all attempts to market “Traintrax” have failed so that it too has been abandoned, and that there were no current negotiations and none envisaged. So there is no case at all that any confidential idea concerning “Traktrix” (assuming such to exist) or the 2006 Document will be used in any way by Mr Smith.

For these reasons I dismiss the action.