Who Owns Contacts Lists?

PennWell Publishing v Ornstien [2007] EWHC 1570 (QB) suggests that, where a contacts list is created in an employer’s Outlook programme, the employer has the prime right to the list, whatever the nature or origins of the contacts themselves (eg personal contacts or contacts predating the employment).

The facts of the case were summarised by Mr Justin Fenwick QC (sitting as a Deputy Judge of the High Court), who explained the basic nature of the dispute as follows:

At the heart of this case is the question of whether the information on the JuniorContacts.xls list:-

(a) belongs to PennWell to the exclusion of Mr Isles;

(b) belongs to Mr Isles to the exclusion of PennWell (although Mr Isles does not seek to prevent PennWell from now using the list in common with him);

The position taken by the Claimant through the evidence of Marybeth Dewitt is straightforward. They assert that the information was prepared and maintained on PennWell’s computers during Mr Isles’ employment with PennWell and for the purposes of that employment and it is therefore confidential information which is the property of the Claimant. It is said that that position remains the same even though parts of the information may originate from a spreadsheet originally legitimately in the possession of Mr Isles, although their overall position is that if Mr Isles can show that any part of the information pre-dated his employment, he should be entitled to that part of the list.

The case for Mr Isles was essentially that this was his personal contact list which he, in common with other journalists and editors, kept of the contacts that he had built up over his career. As such, it was his personal information rather than that of the Claimant and he was entitled to retain it.

Mr Isles also submitted that to deprive him of this list would be a breach of his rights under Article 10 of the European Convention on Human Rights. It is said that that would seriously diminish the quality of his journalistic output and disclose to the Claimant confidential sources for his journalism.

The judge sets out the issues considered by him, having dismissed the Article 10 argument:

have to decide what is the legal position in relation to e-mail address lists maintained by employees which is a situation which must occur in relation to many thousands of employees who have individual responsibilities and who develop and maintain a list of useful contacts for the purposes of their role.

Before deciding the legal status of this list on my findings and, in the alternative if I am wrong as to it being an e-mail address list, the conclusions that I would have reached had I found that it was a separately maintained list of contacts, it is necessary to consider the law in relation to confidential client lists and similar in a little detail.

It is clear from the decision in the Court of Appeal in Faccenda Chicken Ltd v. Fowler ([1987] 1 CH 117) that an employee cannot be restrained from using information obtained during his employment after that employment has come to an end unless it falls within the category of specific trade secrets. That applies even where the employee has gained knowledge of a large range of useful commercial information such as names of customers and how to contact them. Thus, although an employee will be restrained from using that information during his employment, he is not restricted from using it afterwards unless it falls into the restricted category. The Court of Appeal concluded that in order to assess whether particular information is protected it is necessary to consider all the circumstances of the case and they set out the following as matters to which attention must be paid:-

“(a) The nature of the employment. Thus employment in a capacity where “confidential” material is habitually handled may impose a high obligation of confidentiality because the employee can be expected to realise its sensitive nature to a greater extent than if you were employed in the capacity where such material reaches him only occasionally or incidentally.

(b) The nature of the information itself. In our judgment the information will only be protected if it can properly be classed as a trade secret or as material which, while not properly to be described as a trade secret, is in all the circumstances of such a highly confidential nature as to require the same protection as a trade secret eo nomine. The restrictive covenant cases demonstrate that a covenant will not be upheld on the basis of the status of the information which might be disclosed by the former employee if he is not restrained, unless it can be regarded as a trade secret or the equivalent of a trade secret.”

It is plain in this case that individual addresses and contact details were not in themselves sufficiently confidential to amount to a trade secret. Many of them would fall into the first category identified by the Court in Faccenda Chicken, namely material easily available in the public domain, although certain items, such as direct telephone numbers and private e-mail addresses, would not fall into that category.

Therefore, I do not consider that, if Mr Isles had obtained details of these contacts during the course of his employment and selectively identified contacts that he might want to use in future, he could have been prevented from using that information after the end of his employment.

In the circumstances, I do not consider that the use of individual contact names by Mr Isles would be a breach of clause 16 of his contract.

Of far greater difficulty is whether it falls within the definition of company property under clause 21 of his contract.

If what had happened on Mr Isles’ departure was that he had taken a copy of the list of contacts maintained in the PennWell offices, such as the one on an Apple Mac which I have referred to earlier in this Judgment, or such as the list maintained on some form of card index at his previous employers, then I would have concluded that that fell within the definition of documents, manuals, hardware and software provided for his use by the company.

However, the list with which we are concerned in this case was not a list of contacts which had been provided to Mr Isles but one which he had prepared himself from material brought with him at the outset of his employment and other contacts which he had developed during the course of and for the purposes of his employment.

The taking of copies of a list of customers or other contacts by an employee and its subsequent use has long been held to be a breach of an employee’s duty of fidelity (see Robb v. Green [1895] QB 315) and that remains the position today (Bullivant v. Ellis [1987] ICR 464).

Therefore, had this database list been provided to Mr Isles, as it subsequently was to Mr Blackaby, there would be no doubt that to take and use a copy of it would be a breach of the express terms of Mr Isles’ contract as to confidentiality and the return of the employer’s property. If the list was compiled by Mr Isles himself, but as part of his duties, in my judgment there would be no significant difference. A list which most employees cannot lawfully take, cannot be available to be copied by one employee simply because it is his duty to compile that list. Indeed, the duty to maintain its confidentiality is probably greater in the case of the employee whose task it is to compile that list.

At a late stage of this litigation, the Claimant sought to rely on the argument that this was a copyright database, under the Copyright Designs & Patents Act 1988 (“CDPA”) or under the sui generis property right created by the Copyright and Rights in Database Regulations 1997.

This argument, which I find had not been clearly signalled or pleaded, gave rise to the need for supplemental written submissions after the close of oral argument. I am grateful to both parties for the very detailed and full submissions which they have provided to me.

I can, however, state my conclusions on this topic relatively shortly:-

(a) where a database is made by an employee in the course of his employment, his employer is be regarded as the maker of the database subject to any agreement to the contrary (Regulation 14(2));

(b) otherwise, the maker of the database is defined by Regulation 14(1) which provides that “the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining verification or presentation shall be regarded as the maker of, and having made, the database”;

(c) thus, if the database was assembled by Mr Isles privately and for his own purposes, he would be treated as the maker of that database under Regulation 14(1) but if it can be said that the database was made in the course of this employment, then ownership will be that of the employer;

(d) for a relevant property right in a database to exist, there must be a substantial investment in obtaining, verifying or presenting the contents of the database under Regulation 13;

(e) if a database constitutes the author’s own intellectual creation by reason of the selection or arrangement of its contents, then it may be treated as an original work under Section 3A(2) of the Copyright Designs and Patents Act 1988;

(f) it is not necessary, in the light of my other findings, for me to reach a conclusion as to whether the database either in its form on the Outlook system or in the form of the JuniorContacts.xls spreadsheet was an original work within the meaning of the Copyright Designs and Patents Act 1988, but it is right to indicate that I was far from persuaded that the exercise of assembling a list of contacts addresses would be sufficient to qualify.

In relation to the Regulations, the answer will in my judgment turn on whether the database was one prepared by Mr Isles in the course of his employment, or one prepared by him outside his employment for his own long term purposes as a journalist, although in part using contacts developed in the course of his employment. In the former case, I would hold that the ownership of the database resided in the Claimant and in the latter in Mr Isles.

There are three subsidiary questions which I have to consider. The first is whether the fact that the database was derived in part from material brought by Mr Isles from his previous employment affects the conclusion. In my judgment, it does not. If the database was maintained as a separate spreadsheet by Mr Isles, it would reinforce the conclusion that any ownership of the database rested in him. If, however, the database was created in the course of his employment, the fact that some of the material was derived from information which he had already, does not in itself change the nature of the new database. In this context, it is clear on my findings that data from Mr Isles’ previous list on a spreadsheet was added to the Claimant’s Outlook system. As such, the Outlook system was not a development of the original database, but a new database to which old data was added.

Secondly, in his supplemental submissions Mr Duodu seeks to draw a distinction between the Excel spreadsheet which was finally delivered up by Mr Isles and the original Outlook database from which, on my findings, it was derived. The fact that the copy may be in Excel format and thus different in terms of presentation and usability does not in my judgment make it anything other than a copy of the original data. There is no evidence that any change or re-design of the data or the way that it was presented was carried out by Mr Isles in such a way as to create a new database.

Finally, Mr Duodu argues in the alternative that the database is a work of joint ownership. Again, this will turn on whether the database was created in the course of Mr Isles’ employment, or partly in the course of his employment and partly for his own purposes. In my judgment, on the facts that I have found, the Outlook database was created and maintained for the purposes of the Claimant’s business, although it may have been intended to be used in part for Mr Isles’ own journalistic purposes.

In the event, I do not consider that the analysis of the database regulations changes the position under the general law. The real question for me is whether the database containing the relevant information was the property of the Claimant or of Mr Isles, or whether there was some implied agreement either that although it was created in the course of Mr Isles’ employment he would be entitled to use it thereafter, or that there would be some form of sharing of information.

Had I reached the conclusion that this list had been maintained by Mr Isles separately, in the form of an electronic version of a personal address list, to which he had selectively added contacts which he regarded as journalistic and to be maintained by him for his career purposes, rather than for the purposes of his employment, I would have reached the conclusion that, in ordinary circumstances, Mr Isles was entitled as a journalist to develop and maintain such a list. I would have reached that conclusion because, in my judgment, there is a distinction to be made between on the one hand executives who are provided with and/or maintain and develop contact information for the purpose of doing their job properly, where the removal of that information would be detrimental to their employer and most obviously useable for the purposes of competition, with the position of a journalist who, on the evidence before me which I accept, needs to build up a collection of contacts which he can use when he needs information for his articles. I would also accept that a person in the position of Mr Isles who, by all accounts, is a highly capable and well respected journalist, editor and conference chairman, for the purpose of assembling expert boards for conferences, would be material which he could legitimately seek to develop as part of the body of experience which makes him attractive to employers.

In reaching such a conclusion, I would distinguish his position from that of the salesman who has a list of sales contacts of that business, and I take account of the fact that the protection from use of that material for reasonable periods can be obtained by the inclusion of suitable non-competition clauses in employment contracts, which was not the case with Mr Isles.

In reaching my conclusion I have considered various letters and representations, included without objection in the bundle before me which in my view point up the importance of journalists being allowed to maintain and add to a list of contacts which is independent of any list maintained by their employer and which they are entitled to preserve and use on leaving their employment. One Janet Wood who describes herself as currently news editor of Utility Week magazine and who has had significant previous experience, stated that “neither as a journalist or editor have I known of an occasion when a journalist moving jobs has been required to surrender his contacts to his employer. I do not think it is either practical or useful: they are personal relationships that may have been built up over many years.”

Mr James Lucky wrote on 8 December 2006 as follows:-

“One of the most important assets a journalist can have – regardless of industry or topic covered and be it national, regional or trade press – is a good contacts book. On the few occasions I have moved between journals (as I did when I left IPG for a while to join Energy Markets), I have always kept my contacts records and taken them with me to the new place of work. Quite simply, covering a technical field such as electricity supply I would be lost without them. Many of these contacts are not just people you have met in recent times but important business relationships built up over many years. Contacts for a salesman are a different matter. For a journalist they are your source of information enabling you to write about the industry you cover.”

John Toner who describes himself as a freelance organiser for the National Union of Journalists, has written a letter of support as follows:-

“It is important to draw a distinction between confidential information about a company’s business and the personal contacts that a journalist acquires over the course of his/her career. The former is clearly the property of the company, and should not be disclosed to third parties. The latter, however, is the property of the journalist. A journalist is often employed or engaged by a company on the strength of his/her contacts. It is those contacts, cultivated over many years, that make some journalists more sought after than others. When Mr Isles was headhunted by PennWell, his contacts list would be one of the reasons they were so attracted to employing him. In other words, his existing contacts list, compiled when in the employ of others, was something from which PennWell hoped to benefit. …. It is common practice within the industry that a journalist will take his contacts list from one engagement to another.”

However, the position is in my view rather different in the case of e-mail address books maintained on the employer’s computer. In this case, although I was provided during the trial with a copy of an e-mail policy of PennWell, I am not satisfied that that restriction was ever brought to the attention of Mr Isles or incorporated in his employment contract. I was provided with a copy of an e-mail sent by Mr Freddie Lauritzen, who gave evidence before me, on 16 May 2006 which stated as follows:-

“Compliance and monitoring – violations of these policies may result in disciplinary action up to and possibly including termination. All employees should be aware that e-mail, communications, information access, and network usage at PennWell is not considered private. PennWell may monitor, audit, access, or interrupt all communications, access to the computer network, and employee activites utilising PennWell provided resources without prior notice to users.”

Whilst I am satisfied that that e-mail will have come to the attention of Mr Isles, I am not satisfied that the two documents described as “Network Access and Usage Policy” and “E-mail Policy” were either attached to that e-mail or otherwise brought to Mr Isles’ attention. Mr Lauritzen fairly conceded that he could not be satisfied whether any and if so which attachments were sent with that e-mail.

The relevant section of the e-mail policy provides as follows:-

“Employees may only use the e-mail system for business use. Access to the e-mail system is granted to employees to facilitate communication with co-workers and customers. Employees may not use PennWell provided e-mail systems to send or redistribute any messages or files that are not directly related to their job responsibilities. Routinely receiving personal e-mail via the PennWell e-mail system causes significant increase in disk usage, tape back-up usage, and network usage. Employees are expected to use PennWell’s e-mail system for all business purposes, unless an exception has been granted, in writing, by the Chief Information Officer.”

In my judgment, had that e-mail policy been effectively communicated to Mr Isles, it would have made clear to him that the e-mail system provided to him was to be used only for business purposes and, therefore, that in adding to or maintaining contact details on that system, he was doing so exclusively for the employer’s benefit and not for his own.

However, in the absence of effective communication of such a policy, I have to consider the difficult issue of the status of such address lists on e-mail systems provided by employers for their employees when no express limitation has been imposed.

This raises the difficult issue of the status of such address lists on e-mail systems provided by employers for their employees.

On one view, these lists plainly consist of confidential information of the employer. They include details of the individuals with whom the employee is expected to and will have made contact during his employment for his employer’s purposes. They are backed up, generally, on a system maintained or at least paid for by the employer.

On the other hand, in the new electronic age, electronic address books, whether on mobile telephones, communicators or e-mail systems, are inevitably used by individuals, whether employees or executives, for the convenient storage of those that they wish to contact. In the absence of a declared e-mail policy, it may well be that such employees will use such systems, including on mobile telephones provided for their use, for retaining the records of all sorts of contacts, from personal friends and family, through friendships that they have developed in work and journalistic contacts of the kind I have referred to above, through to the normal business contacts of their employer.

It may well be the case that many employees do not think of the implications of using their mobile telephones or computers to record their own personal contacts and simply use them for convenience. In the case of mobile telephones, modern technology permits the transfer of contact details either one by one or as a block from one telephone or SIM card to another telephone or SIM card. Thus employees may routinely take copies of those contacts at the end of their employment before handing over the telephone to their employer. Similarly, they may well choose to use their employer’s e-mail system or even be required not to use a personal e-mail system such as hotmail on their work computers, so that the only means of communicating during working hours by e-mail is by using their employer’s computer.

I am satisfied that where an address list is contained on Outlook or some similar program which is part of the employer’s e-mail system and backed up by the employer or by arrangement made with the employer, the database or list of information (depending whether one is applying the Database Regulations or the general law) will belong to the employer. I do not consider that the position will change where the database is accessed not from the employer’s computer but from the employee’s home computer by “dialling up” or otherwise “logging on” to the employer’s e-mail system by some form of remote access.

In all those circumstances, I find that such lists will be the property of the employer and may not be copied or removed in their entirety by employees for use outside their employment or after their employment comes to an end.

Because this is not likely to be appreciated by many employees, it is in my judgment highly desirable that employers should devise and publish an e-mail policy of the kind which in this case was devised by PennWell but on my findings not adequately communicated to Mr Isles.

In the absence of such a laid down policy, I next have to consider the status of contact details which have been put on to an employer’s system by an employee for their own use outside their employment, in ignorance of the fact that they would thereby become part of the Claimant’s property. No problem arises, of course, where such details are duplicated elsewhere by the employee because that information is plainly theirs.

In my judgment it is reasonable to imply in the absence of any laid down guidance a term that an employee will at the end of their employment be entitled to take copies of their own personal information and, where the information is person and confidential to them, such as details of their doctor, banker or legal adviser, to remove them from the employer’s system.

Most forms of e-mail system will permit the creation of compartmentalised address books, so that ordinarily an employee will be able to put their own personal contact details of friends, relations, and the like into a personal address book. In those circumstances, in the absence of clear evidence of an e-mail policy, I would be inclined to the view that ownership of that part of the database resided with the employee. It would then only be if that part improperly contained information confidential to the employer which was being removed for the purpose of competition, that the employer could challenge its removal.

I accept that Mr Isles was in a position where he failed to appreciate that by maintaining his contact list exclusively on PennWell’s system, he was thereby keeping it in a form in which it was the property of PennWell. I am satisfied that had he addressed his mind to the position, he would have kept his earlier contacts separate and although he might have added some of them to his work e-mail for convenience, he would not have abandoned his own separate address book spreadsheet system.

I am also satisfied that he would have been entitled, from time to time, to add selected contacts which he had updated or gained during his employment and which were of general use to him in a journalistic context, to that private address book.

Such an approach is entirely consistent with the conclusions that I have reached as to the desirability of a journalist being entitled to develop personal contacts.

I have also reached the conclusion that had Mr Isles wished to do so immediately before leaving his employment, he would have been entitled to remove his private family contacts from the PennWell system and to have extracted information about key journalistic contacts which could properly be described as his personal sources as well as copying any information which he had put on to the system from his own previous resources. I do not consider that he would have been entitled to remove any of the items apart from purely private ones from the PennWell system.

I also consider it likely that had he asked PennWell if he could remove his personal contacts and take details of one or two of his best contacts, he would have been permitted to do so.

It follows therefore that in my judgment, the submissions made by Mr Duodu both as to the general rights of a journalist to develop contacts and to the rights which Mr Isles would have had if he had continued to maintain the JuniorContacts.xls spreadsheet separately, are well founded.

However, on the evidence, this is not what happened in this case. I am satisfied that the list of contacts which Mr Isles downloaded from the Claimant’s Outlook system and converted into the JuniorContacts.xls spreadsheet, comprised the totality of the individuals and organisations with which he had sufficiently regular contact during the course of his employment with PennWell for it to be worthwhile keeping a record of their contact details. Such a list might in another age be maintained by his secretary and would undoubtedly have been the property of PennWell.

If the evidence had suggested that Mr Isles had selectively copied those that he regarded as proper journalistic sources or long term contacts, on to a spreadsheet, then I would have reached the conclusion that he was entitled to retain those as journalistic contacts for the reasons set out earlier in this Judgment. However, I do not accept that the entire list or even a majority of it, fell into that category. In my judgment, this was a list of all the contacts that one would expect an editor and conference chairman holding his position in PennWell, to require for the purposes of PennWell’s business. Although some of them would be relevant to him in his future career, there was no such process of selection. This is an inevitable finding given that he exported his entire Outlook address book.

For it to have been otherwise, Mr Isles would have had to maintain on his Outlook system not those contacts which were useful for the purposes of PennWell’s business but only those which were of long term value to him. It is in my judgment clear that no responsible person in Mr Isles’ employment would have acted in such a way because to do so would have hampered his ability to carry out his work properly.

I am satisfied that Mr Isles removed the entire contents of his address book not for the purpose of maintaining key journalistic contacts and sources in the way supported by the many individuals of distinction who have written in to support his case, but in order to have the widest possible list of contacts of PennWell who would be useful for the purposes of the Fourth Defendant.

My conclusion is reinforced by the contents of an e-mail sent by Mr Isles on 21 September 2006 to a large number of those on his contact list in which he drew attention to his new role as editorial director of the Energy Business Group and, in essence, sought to maintain contact with them. In that e-mail he wrote as follows:-

“There were a number of changes at PennWell, many of which have been ongoing, which didn’t always align with my vision. This prompted a decision I would have made at some point anyway. However, after leaving I met up with a couple of colleagues who had recently left PennWell and decided to set up a company called the Energy Business Group. I will be producing a monthly subscription only newspaper focusing on power and energy, and smaller conference led events focused on specific markets. In fact the first one will be held in Belgrade April 17-19 called Energy Business South East Europe.”