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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Imutran Ltd v. Uncaged Campaigns Ltd & Anor [2001] EWHC Ch 31 (11th January, 2001)
Cite as: [2001] CP Rep 28, [2001] EWHC Ch 31, [2001] 2 All ER 385, [2001] ECDR 16, [2001] HRLR 31, [2001] EMLR 21, [2002] FSR 2

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Imutran Ltd v. Uncaged Campaigns Ltd & Anor [2001] EWHC Ch 31 (11th January, 2001)

Case No. HC 0004406




Mr. Mark Warby (instructed by Messrs Eversheds) appeared on behalf of the claimant.
Mr. David Bean Q.C. (instructed by Messrs Simons Muirhead & Burton) appeared on behalf of the defendants.
Mr. Michael Tugendhat Q.C. (instructed by Messrs. Olswangs) appeared for the RSPCA as interveners..

This is an approved judgment of the Court and I direct that no further note or transcript be made.

The Vice Chancellor Dated: 11th January 2001

1. This is an application by the claimant, Imutran Ltd ("Imutran"), for injunctions until trial or further order restraining the defendants, Uncaged Campaigns Ltd ("UCL") and Mr Lyons, from misusing confidential information of Imutran or from infringing the copyright of Imutran. An interim injunction was granted by Hart J on 26th September 2000. That injunction was continued, but in modified terms, by Ferris J on 10th October 2000. Also before me is an application by RSPCA for an order that its costs of obtaining such modification should be paid by Imutran.

2. Imutran is the wholly owned subsidiary of Novartis Pharma AG, a Swiss owned international pharmaceutical company. It was engaged in research into xenotransplantation, that is to say the replacement of human organs with those of animals, usually pigs. Most of such research was carried out at Huntingdon Life Sciences. On 26th September 2000 Novartis Pharma AG announced that such research would, with effect from 1st January 2001, be carried on by a joint venture company in Boston, Massachusetts, USA to which the intellectual property rights and know-how of Imutran would be transferred.

3. Research into xenotransplantation necessarily involves experimental work on animals. As such it is regulated by Animals (Scientific Procedures) Act 1986. That Act provides for the licensing of personnel (s.4), projects (s. 5) and scientific establishments (s.6) without which the carrying out of prescribed procedures is unlawful (s.3). The Act also provides for the appointment by the Home Secretary of Inspectors with medical or veterinary qualifications (s.18) and an advisory committee called the Animal Procedures Committee (s.19). The duties of the inspectors include advising the Home Secretary on the grant of the various licences, checking on licensed projects and scientific establishments and reporting to him on any cases where the conditions imposed on the grant of a licence have not been performed or observed (s.18(2)). The functions of the Animal Procedures Committee include advising the Home Secretary on such matters concerned with the Act as they may determine (s.20(1)). The duties imposed on the Home Secretary by the Act include the duty, when considering an application for a project licence, to weigh the likely adverse effects on the animals concerned against the benefit likely to accrue as a result of the proposed project (s.5(4)).

4. In addition to the regime prescribed by the Animals (Scientific Procedures) Act 1986 there is the United Kingdom Xenotransplantation Interim Regulatory Authority ("UKXIRA") and the Good Laboratory Practice Monitoring Authority ("GLPMA"). The former was set up following the report "Animal Tissue into Humans" of the Advisory Group under the Chairmanship of Professor Ian Kennedy on The Ethics of Xenotransplantation. Its terms of reference include advising the Secretary of State for Health generally and on the safety and efficacy of xenotransplantation and considerations of animal welfare involved in it in particular. GLPMA is a constituent body of the Department of Health which administers the Good Laboratory Practice Regulations. They are designed to ensure that experimental data provided by scientific establishments to regulatory bodies are reliable.

5. In 1993 Mr Lyons obtained from Sheffield University an honours degree in Politics and Philosophy. He is currently a part time student for a PhD in the subject area of the ethical and political theory implications of xenotransplantation. He is a director of UCL which is a company limited by guarantee the aim of which is to campaign democratically and peacefully for a cessation of animal experimentation and for an end to violence towards animals generally. In 1996 UCL launched a campaign against xenotransplantation in pursuit of which Mr Lyons has submitted papers to the Secretary of State for Health and others, has attended meetings with ministers and the various regulatory bodies I have mentioned and has organised petitions to be submitted to the Secretary of State. The honesty of Mr Lyons' belief and purpose has not been challenged in these proceedings. The evidence shows that many others share his views. Whether as a result of the defendants' activities or otherwise on 17th July 2000 the House of Lords set up an ad hoc Select Committee to enquire into the use of animals in scientific experiments.

6. In the spring 2000 UCL received a package and a CD-ROM containing copies of a large number of documents belonging to Imutran Mr. Lyons does not know who sent them. But, on examination, Mr Lyons quickly realised that the documents emanated from Imutran and mainly concerned its programme of primate xenotransplantation being conducted at Huntingdon Life Sciences. Over the following months Mr Lyons studied these documents and sought to reconcile them with other documents or information already available to the public. He considered that the documents raised extremely serious questions concerning animal welfare, the regulation of research by the Home Office, the Standards of Good Laboratory Practice achieved during the research, its lack of success and the accuracy of the information on xenotransplantation conveyed by Imutran. He also appreciated that the documents UCL had received from the unknown source were confidential.

7. Basing himself on all these documents Mr Lyons wrote "Diaries of Despair: The Secret History of Pig-to-Primate Organ Transplants". It consists of 157 pages using the information contained in or quoting from Imutran's documents obtained from the unknown source. Those documents are described as "a staggering haul of secret documents", "confidential documents" and "leaked internal company documents".

8. The documents fall into five categories. They are:

(1) 39 laboratory reports, covering 3,400 pages, of scientific tests conducted by Huntingdon Life Sciences on behalf of Imutran;

(2) Minutes of meetings between representatives of Imutran and Novartis at which developments were reviewed and in which are set out the names of certain employees of Imutran;

(3) Correspondence with Imutran's research partners;

(4) Correspondence with Imutran's suppliers;

(5) Correspondence with the Home Office and MAFF.

The five classes of document have been analysed by Imutran as containing confidential information falling into seven specified categories. I did not understand UCL or Mr Lyons to challenge either the classes of document or the analysis of the confidential information.

9. On 19th September 2000 a journalist with the Daily Express faxed to Imutran three specific questions concerning its programme of xenotransplantation to which Imutran replied. On 21st and 22nd September articles appeared in the Daily Express commenting adversely on Imutran's programme. They were based on the Diaries of Despair. On 21st September Imutran learned that the Diaries of Despair and most of its documents in the possession of UCL had been published by UCL on its website. That and other websites were closed down by the relevant service providers on 22nd September and subsequent days.

10. As I have already indicated Hart J made an interim order on 26th September. He had heard counsel for Imutran and the solicitor for UCL and Mr Lyons. The injunctions over 10th October restrained UCL and Mr Lyons from infringing Imutran's copyright in its documents and from using or disclosing information contained in or derived from specified confidential documents. But the provisos attached to the injunctions excepted from the prohibitions (1) the supply of documents or information to UKXIRA, ministers at the Home Office or personnel at the Home Office having responsibility for regulating or supervising animal experimentation or (2) the further use or disclosure of information contained in either of the articles appearing in the Daily Express published on 21st or 22nd September 2000.

11. When the order was continued by Ferris J on 10th October 2000 the first proviso was extended to members of the Animals Procedures Committee and GLPMA and a further proviso was added permitting reproduction, use or disclosure by RSPCA in accordance with the terms of Schedule 5 to the order. With regard to the costs of RSPCA both RSPCA and Imutran were given liberty to apply.

12. The application first came before me on 18th October 2000. The night before the solicitors for UCL and Mr Lyons had indicated that their clients would be prepared to limit their future publications to Diaries of Despair and 56 other specified pages. On the application of Imutran I adjourned the hearing of the application and ordered the return of all the other documents by UCL to Imutran. In addition I ordered Imutran to provide to UCL and Mr Lyons details of its objections to the publication of the remainder; UCL and Mr Lyons were to respond in writing to those objections. The defendants returned the requisite documents and Imutran provided details of its objections. But the defendants considered that the objections were so extensive as to make further discussion futile. Accordingly with the exception of the names and addresses of employees the defendants seek to publish and Imutran seeks to prevent the publication of all the documents provided to the defendants from the unknown source. They include all those previously published on the internet and others.

13. In consequence of the provisos to the various orders all the relevant documents have been provided to all interested regulatory authorities. The RSPCA has called for a report on the situation revealed by the documents of Imutran from Dr Jennings, the head of its animal research department. GLPMA received and considered a copy of Diaries of Despair. The Home Secretary has asked the Chief Inspector to examine the compliance by Imutran with the conditions imposed on the grant of the various licences needed under the Animals (Scientific Procedures) Act 1986. He expects to receive the Chief Inspector's findings and advice in the New Year. All such reports and findings will be available to the House of Lords Select Committee to which I referred earlier.

14. As I have indicated the causes of action on which Imutran relies are (1) breach of confidence and (2) infringement of copyright. Relevant to both those issues is the question (3) what is the proper approach of the court to an application for interim injunctions such as this in which the right to freedom of expression guaranteed by Article 10 European Convention on Human Rights is material. This depends on the proper construction and application of s.12 Human Rights Act 1998. It is convenient to deal with this issue first.

15. Until the decision of the House of Lords in American Cyanimid Co. v Ethicon Ltd [1975] AC 396 it was generally considered that an applicant for interlocutory relief had to show a strong prima facie case. Cf Hubbard v Vosper [1972] 2 QB 84, 96. In American Cyanimid Co. v Ethicon Ltd the House of Lords substituted for the strong prima facie case the concept of "a serious question to be tried" or "a real prospect of succeeding in his claim to a permanent injunction at the trial". That threshhold test is amplified in cases in which the grant or refusal of an interim injunction would have the practical effect of putting an end to the action. In such a case the strength or otherwise of the claimant's case (in excess of the threshhold of a serious question to be tried) must be brought into the balance in weighing the risk of injustice to either party by the grant or refusal of the injunction sought. NWL Ltd v Woods [1979] ICR 867. It is against that background that s.12 Human Rights Act 1998 must be considered.

16. So far as material s.12 Human Rights Act 1998 provides:

(1) This section applies if a court is considering whether to grant any relief which, if granted, might affect the exercise of the Convention right to freedom of expression.


(3) No such relief is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed.

(4) The court must have particular regard to the importance of the Convention right to freedom of expression...

Two issues were raised before me. The first is whether the requirement in subsection (3) that the applicant "is likely to establish" at the trial that publication should not be allowed alters the threshhold test established by American Cyanamid in relation to cases to which s.12 applies. The second is whether the provisions of subsection (4) require the court to place special and extra weight on the Convention right to freedom of expression. I will deal with them in turn.

17. Counsel for the defendants submitted that the requirement of likelihood imposed a higher standard than that formulated in American Cyanamid. I did not understand this to be disputed by counsel for Imutran. He submitted that whatever the standard was his case satisfied it. Theoretically and as a matter of language likelihood is slightly higher in the scale of probability than a real prospect of success. But the difference between the two is so small that I cannot believe that there will be many (if any) cases which would have succeeded under the American Cyanamid test but will now fail because of the terms of s.12(3). Accordingly I propose to apply the test of likelihood without any further consideration of how much more probable that now has to be. See Douglas v Hello! Ltd [Court of Appeal: 21st December 2000 paras 153, 54 and 136]

18. In the case of subsection (4) it must be borne in mind that the courts emphasised the importance of freedom of expression or speech long before the enactment of Human Rights Act 1998. See Halsbury's Laws of England 4th Ed.reprint vol 8(2) para 107 and cases there cited. But neither those cases nor the provisions of s.12(4) require the court to treat freedom of speech as paramount. There are many reported cases in which the court has had to balance freedom of expression or speech with other aspects of the public interest. See also Snell's Equity 30th Edition para.45-75.

19. In those circumstances I do not consider that the subsection is intended to direct the court to place even greater weight on the importance of freedom of expression than it already does. As I said in paragraph 34 of my judgment in Ashdown v Telegraph Group Ltd the requirement "to pay particular regard" contemplates specific and separate consideration being given to this factor.

20. I turn then to the claim for breach of confidence. I have been referred to the well known line of cases consisting of Initial Services v Putterill [1968] 1 QB 396; Hubbard v Vosper [1972] 2 QB 84; Francome v Mirror Group Newspapers Ltd [1984] 1 WLR 892; Lion Laboratories Ltd v Evans [1985] QB 526; Re A Company's Application [1989] Ch 477 and A-G v Observer Ltd [1990] 1 AC 109. Each of them demonstrates that the public interest in disclosure may outweigh the right of the plaintiff to protect his confidences. They demonstrate that the court will also consider how much disclosure the public interest requires; the fact that some disclosure may be required does not mean that disclosure to the whole world should be permitted.

21. In addition Human Rights Act 1998 requires the court, as a public authority, to take into account the right of freedom of expression conferred by Article 10 European Convention on Human Rights. That provides

Freedom of expression

1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. This Article shall not prevent States from requiring the licensing of broadcasting, television or cinema enterprises.

2. The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society, in the interests of national security, territorial integrity or public safety, for the prevention of disorder or crime, for the protection of health or morals, for the protection of the reputation or rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.

The effect of that article for present purposes is that any injunction, which by definition is a restriction on the exercise of the right to freedom of expression, must be justified as being no more than is necessary in a democratic society.

22. For the defendants, counsel emphasised that the activities of Imutran which they abhor have now ceased. He suggested that Imutran was concerned to protect its reputation not its confidential information. He argued that, in the light of the defendants' concerns summarised in paragraph 6 above, disclosure limited to any "proper authority", as exemplified in Employment Rights Act 1996 ss.43A to 43L, would be insufficient. He suggested at the conclusion of his submissions that the defendants should at least be free to publish Diaries of Despair and the 56 other documents to which they had referred on 17th October 2000.

23. I do not accept these submissions. First, the information contained in the documents received by the defendants from the anonymous sender are in their nature confidential. Second, there can be no doubt that the defendants knew that the information contained in those documents was confidential. Not only were many of them so marked but the defendants recognised and described them as confidential or secret in Diaries of Despair. Third, in the absence of any claim, or evidence to support a claim, that Imutran knew and consented to the documents being provided to the defendants I infer that the defendants well knew that Imutran had not known or consented to its documents being removed from its possession and sent to the defendants. Certainly they took no steps to check with Imutran whether or not that was the case.

24. Fourthly, the circumstances as they existed in September 2000 and now do not justify the width of disclosure the defendants seek. On 17th July 2000 the House of Lords set up its ad hoc Select Committee to enquire into the very matters which concerned the defendants. Since the defendants put Imutran's documents on the internet the Home Secretary and the Council of RSPCA have called for reports from the Chief Inspector and Dr Jennings respectively. In so far as GLPMA and UKXIRA are concerned the documents obtained by the defendants have been available to them too. There is no impediment sought or in place such as to inhibit any regulatory authority from investigating all the matters of which the defendants expressed concern in Diaries of Despair.

25. Fifthly, when considering what is necessary in a democratic society and when paying particular regard to the importance of the right to freedom of expression it is relevant to consider which is the democratically selected responsible body or bodies and who would be the informed audience. In this case Parliament has considered the issue of animal experimentation as recently as 1986. It has laid down a licensing and inspection system and a forum for and source of continuing consideration and advice in the Animal Procedures Committee. The members of that committee are themselves bound to consider the protection of animals against avoidable suffering and unnecessary use in scientific procedures (s.20(2)). Two thirds of them must be medically qualified (s.19(3)(a)) and their annual report to the Home Secretary must be laid before Parliament (s.20(5)). In addition there is the RSPCA, GLPMA and UKXIRA all of whom have an interest in investigating one or more of the matters which concern the defendants.

26. Of course, the defendants' right to freedom of expression is an element in their democratic right to campaign for the abolition of all animal xenotransplantation or other experimentation. But they may continue to do that whether the injunction sought by Imutran is granted or not. The issue is whether they should be free to do so with Imutran's confidential and secret documents. Many of those documents are of a specialist and technical nature suitable for consideration by specialists in the field but not by the public generally. Given the provisos to the injunction sought there would be no restriction on the ability of the defendants to communicate the information to those specialists connected with the regulatory bodies denoted by Parliament as having responsibility in the field. I do not accept in these circumstances the defendants' assertion that the relationship between Imutran and the Inspectors appointed by the Home Secretary is too close for the latter to do their job properly. If that was ever so, and there is no evidence to that effect, it is unlikely to continue given the current interest of the House of Lords Select Committee and the Home Secretary's instruction of the Chief Inspector.

27. For all these reasons I conclude that Imutran is likely to establish at the trial of the action that publication of its confidential documents should not be allowed. I also conclude that the injunction sought does not go further than is necessary in a democratic society. Paying particular regard to the importance of the right to freedom of expression I conclude nevertheless that the balance of convenience favours the grant of the injunction sought. If no injunction is granted now victory at the trial would be no consolation; the confidence would be destroyed and the consequential damages entirely unquantifiable even if the defendants were able to pay them. By contrast if the defendants were successful at the trial they would then be able to publish anything they liked with the added benefit of knowing the views of the regulatory bodies and their experts. There is no suggestion that the delay in establishing their right, which I have to assume for the purposes of this point, will cause them any damage at all. Accordingly I will grant the injunction sought to restrain breach of confidence.

28. I pass then to the application for an interim injunction based on infringement of copyright. This claim relates only to those of the documents relating to Imutran which the defendants received from the unknown source which were written by employees of Imutran. There are 79 of them of which 77 were published on one or more of the websites the defendants used. They have been specifically identified in the analysis Imutran prepared. Though on the pleadings there is a formal issue in relation to copyright there is no evidence to refute the obvious conclusion to be derived from the documents themselves that each of them is a copyright work of which the owner of the copyright is Imutran as the employer of the various authors. Nor, given the wholesale reproduction of them, can it be doubted that Imutran's copyright in the 77 has been infringed or that there is a sufficient threat to infringe copyright in the remaining two.

29. In their defence the defendants rely on the defence of fair dealing for which s.30 Copyright, Designs and Patents Act 1988 ("CDPA") provides. But, as their counsel made plain in his written argument, they are content that this application should be determined on the assumption that such a defence will not succeed. Accordingly the only defence to the claim for copyright infringement is that contained in paragraph 13 of the defence served on 13th November 2000, namely that the acts complained of did not constitute infringement because they amounted to "the disclosure of matters in the public interest". The defendants rely in this as well as the other contexts on Article 10 of ECHR and s.12(4) Human Rights Act 1998.

30. The existence of a public interest defence to a claim for infringement of copyright is recognised by s.171(3). That subsection provides

"Nothing in this part affects any rule of law preventing or restricting the enforcement of copyright, on grounds of public interest or otherwise."

It was considered by the Court of Appeal in Hyde Park Residence Ltd v Yelland [2000] 3 WLR 215. In paragraph 66, Aldous LJ, with whom Stuart-Smith LJ agreed said:

"The circumstances where it is against the policy of the law to use the court's procedure to enforce copyright are, I suspect, not capable of definition. However it must be remembered that copyright is assignable and therefore the circumstances must derive from the work in question, not ownership of the copyright. In my view a court would be entitled to refuse to enforce copyright if the work is: (i) immoral, scandalous or contrary to family life; (ii) injurious to public life, public health and safety or the administration of justice; (iii) incites or encourages others to act in a way referred to in (ii)."

31. I did not understand the defendants to claim that this case fell within any of those descriptions even though one of the contentions relied on is the assertion that xenotransplantation involves the danger of lethal viruses spreading to humans (defence para 13(2)(b)). Rather it was submitted that I am not bound by the decision of the Court of Appeal because the Human Rights Act 1998 came into force after Hyde Park Residence Ltd v Yelland was decided. It was submitted in this case as in Ashdown v Telegraph Group Ltd, which I heard immediately before this application, that one effect of Article 10 ECHR is to introduce into the law of copyright a public interest defence to a claim for infringement going much wider than the Court of Appeal held in Hyde Park Residence Ltd v Yelland.

32. I dealt with that submission at some length in paragraphs 10 to 20 and 32 in my judgment in Ashdown v Telegraph Group Ltd, which I handed down immediately before I handed down this judgment. I will not repeat them. For present purposes it is only necessary to repeat the conclusion in paragraph 32 that the decision of the Court of Appeal in Hyde Park Residence Ltd v Yelland is binding on me. That decision establishes that there is no public interest defence to the copyright claim pursuant to the rule of law preserved by s.171(3) CDPA.

33. It follows from the foregoing conclusions that the cause of action for infringement of copyright is made out to such an extent that I can say with confidence that on the evidence before me it is likely that Imutran will establish that publication by reproduction should not be allowed. Cf s.12(3) Human Rights Act 1998. Equally, given the interaction between the law of copyright and Article 10 ECHR as I consider it to be, the importance of the Convention right to freedom of expression to which s.12(4) Human Rights Act 1998 requires me to pay particular regard does not lead to the conclusion that injunctive or other relief in respect of the copyright claim should be refused.

34. I should refer finally to an objection taken by the defendants to the form of relief sought. The order of Ferris J made on 10th October 2000, which Imutran seeks to have continued, contains a proviso that the injunctions should not prohibit

"the use or disclosure of information derived from the Claimant's Materials which has entered the public domain by virtue of being contained in articles in the Daily Express on 21 and 22 September 2000"

It is contended that the proviso does not make sufficiently clear what the defendants may not do. The use of such a proviso is common. It is designed to preserve the ability to repeat what has already been sufficiently publicised. It is right that some such proviso should be included, but it does appear to me that this one is unduly convoluted. It would, in my view, be preferable to use the simpler form contained in the order made by Hooper J on 4th September 1997 in A-G v Shayler so that the proviso would read

"PROVIDED THAT these injunctions shall not prohibit


(3) the repetition of information (otherwise than by copying any document described in schedule 1 to this order) disclosed in the Daily Express on 21st and 22nd September 2000."

35. For all these reasons and subject to any further points on the form of order I will make orders in the forms sought by the application to restrain breach of confidence and infringement of copyright.

36. I turn then to the application of RSPCA. This is made under the liberty to apply given by the order of Ferris J made on 10th October 2000. The order sought is that Imutran should be ordered to pay RSPCA's costs of obtaining a variation of the order of Hart J so as to permit it to use Imutran's documents as provided for in the order of Ferris J.

37. The order of Hart J, made on 26th September, contained injunctions restraining the defendants from infringing copyright and from "using or disclosing" any information contained in Imutran's documents specified in the order but subject to the provisos I have already mentioned. Those provisos did not include RSPCA amongst the authorised recipients. Hart J also required Mr Lyons to make and serve a witness statement disclosing the names and addresses of all those who to his knowledge had possession of any copies of documents emanating from Imutran. In his witness statement made on 27th September 2000 Mr Lyons disclosed that he had sent copies of all the relevant documents to, amongst many others, RSPCA.

38. On Friday 29th September Imutran wrote to RSPCA notifying them of the order of Hart J, of which a copy was enclosed, and continuing

"We have taken this step to protect commercially sensitive scientific data and other commercially confidential information. We are advised to inform you that we will continue to take whatever steps are necessary to prevent further dissemination of our confidential information.

We wish to make clear however that we do not seek to stifle public debate about xenotransplantation, or to obstruct in any way proper investigation by the appropriate authorities of allegations which have been made about this company's activities. As you will see the Order contains exceptions, permitting the republication of information already made public through articles in the Daily Express, and the communication of documents and information to the proper authorities. We confirm that we will be pleased to continue our on-going discussion and are willing to co-operate and assist any investigation you are required or consider it appropriate to make. In that regard we ask you to note that the documents that were misappropriated are unlikely to provide a full and complete version of the events referred to within the said "Diaries of Despair".

On the following Monday 2nd October Imutran sent e-mails to over 360 persons or organisations disclosed by the witness statement of Mr Lyons to have been recipients of Imutran's documents. RSPCA was one of those to whom the e-mail was sent. It stated

"On Tuesday 26 September 2000 our lawyers obtained a Court Order preventing the publication of our confidential information and infringement of our copyright. The purpose of this letter is to notify you of that Order and to inform you that we will take whatever steps are necessary to prevent further illegitimate dissemination of our confidential information and infringement of our copyrights.

You are hereby put on notice of that Court Order and further dissemination by you could be treated as contempt of Court."

The letter of 29th September must have been received on Monday 2nd October contemporaneously with the e-mail sent at 10.48 on that day.

39. Between Wednesday 4th October and Monday 9th October correspondence ensued between Imutran and RSPCA or their respective solicitors. On 4th October RSPCA set out at length its concerns for animal welfare. The letter described how it had downloaded from the UCL website copies of Imutran's documents and had asked Dr Jennings for a report in time for the Council meeting to be held on 11th October. The letter suggested the topics Dr Jennings would be likely to cover in her report and continued

"Following receipt of Dr. Jennings' report, it would be for the Council to consider whether they needed further information and whether they should seek to make representations to Home Office officials or the Government that amendments are needed to the relevant legislation or to the procedures under the legislation. They might also consider whether to seek publicity and public support for any such proposals. The full report prepared by Dr. Jennings would be likely to be used in discussions with the Home Office or the Government and to be sent to key opinion formers such as Members of Parliament and a summary prepared for wider use.

We believe that the court will be sympathetic to our desire to fulfil our charitable objects in this way, however, naturally we would prefer to be able to do so without the delay and expense of having recourse to the court. Accordingly, we would be grateful if you could confirm, by close of business today, that you have no objection to our proposed use of your material.

For the avoidance of doubt, we are not proposing to infringe copyright in any of "the Claimant's Copyright Documents" or to name or reveal any other identifying information in relation to your employees, ex-employers and associates."

The letter concluded with an offer to consider any further material Imutran might like to submit.

40. On the following day the solicitors for RSPCA wrote again confirming a telephone call concerning the request of RSPCA for copies of the evidence relied on by Imutran before Hart J. The letter stated that

"The request was made on the basis that it is clearly your intention that our client is bound by the order. As you know, our client wishes to challenge the order either by agreement with your client or in court and they are legally entitled to know the basis on which the injunction was made. Our client clearly needs to see your client's witness statement and exhibits."

On 6th October the solicitors for RSPCA wrote objecting in the "strongest possible terms" to the failure of Imutran to supply them with the evidence sought. This letter crossed with one from the solicitors for Imutran enclosing a copy of the witness statement of Mr Talbot made in support of the application before Hart J and asking for undertakings as to confidentiality in respect of the exhibits. They added

"We have noted what you say about the RSPCA's wish to commission a report from Dr. Jennings. Whilst our clients remain willing to co-operate with any investigation which the RSPCA considers it appropriate to make, our clients need the RSPCA's assurances that it will fully consult with our clients in relation to its investigation and that if our clients agree to the RSPCA using the documents in question the RSPCA will undertake not to publish or otherwise disseminate the documents."

By a letter dated Monday 9th October an acceptable undertaking was given by RSPCA in exchange for which the exhibits were provided.

41. Between the receipt by RSPCA of the exhibits and the sitting of the court the next morning counsel for Imutran and RSPCA had agreed a form of amendment to the order of Hart J made on 26th September. The form the amendment took was not a simple addition of RSPCA to the list of authorised recipients, but involved the addition of a further proviso entitling RSPCA to reproduce, use or disclose Imutran's material, as defined, in accordance with a new Schedule 5. That schedule contained detailed provisions in relation to the preparation of Dr Jennings' report and what might then be done with it, including a requirement that a draft thereof be sent to Imutran. An order containing this agreed form was made by Ferris J on 10th October.

42. For RSPCA it was submitted that Imutran should pay their costs of obtaining an order in the amended form. It was submitted that the order of Hart J was defective in that it did not except use of the Imutran material by RSPCA notwithstanding that Imutran did not object to such use. It is suggested that, as with the normal practice in connection with freezing orders, an innocent third party should recover its costs from the person who obtained the order if it is necessary to make an application to the court. Counsel suggested that the normal form of breach of confidence order should contain a standard proviso modelled on that contained in the form of freezing order set out on page 462 of Civil Procedure Autumn 2000 Vol 1 whereby the applicant should undertake to the court

"to pay the reasonable costs of anyone other than the respondent which have been incurred as a result of this order and if the court later finds that this order has caused such person loss and decides that such person should be compensated for that loss, the applicant will comply with any order the court may make"

43. I do not accept either submission. With regard to this case RSPCA was in no different position to anyone else who had come into possession of the Imutran documents. It did not have any right to use them otherwise than with the consent of Imutran. The fact that Imutran was prepared to give its consent on terms does not alter the fact that its consent was required. Therefore the premise to the argument for RSPCA that it had the right to use the documents which had been improperly interfered with by the injunction granted by Hart J on 26th September is false.

44. But it remains the case that RSPCA did appear in court on 10th October and the costs of that appearance are in the discretion of the court. But I see no reason for making any order in its favour. The attitude of Imutran regarding RSPCA was entirely proper throughout. The letters from RSPCA or its solicitors dated 4th and 5th October both suggested, wrongly, that RSPCA had the right to publicise the contents of the Imutran documents. It was reasonable for Imutran to insist that disclosure was only on the agreed terms. And had the solicitors for RSPCA adopted a less hustling approach I have no doubt that the matter would have been dealt with by agreement between counsel without any need for RSPCA to appear in court at all. Given my conclusion that I should make no order for the costs of RSPCA I need say no more about whether Imutran should be permitted to add the costs paid to RSPCA to its claim for damages or costs against the defendants, save to draw attention to Morton-Norwich Products Inc v Intercen (No 2) [1981] FSR 337 where it was successfully done. I dismiss the application of RSPCA.

45. With regard to the suggestion as to the normal form of injunction in breach of confidence claims I agree with it. Counsel referred to Para. 5.1 of the Practice Direction to CPR Part 25. This requires the cross-undertaking in damages to be given in respect of "any other party served with or notified of the order". The Practice Direction applies to breach of confidence injunctions as well as any other. But the forms prescribed by Practice Direction (Interlocutory Injunction: Forms) [1996] 1 WLR 1551 limited the cross-undertaking in damages to the defendant and have continued to be recommended for use by the editors of Civil Procedure. See Note 25/1/12 in both the Spring and Autumn 2000 editions. No doubt it was for this reason that the cross-undertaking in the orders made by Hart and Ferris JJ did not extend to the RSPCA. In my view pending the production of amended forms the simple amendment contemplated by paragraph 5.1 of the Practice Direction to CPR Part 25 should be made to the pre-existing forms in the manner suggested by counsel for the RSPCA. But for the reasons I have already given even if the amended form of undertaking had been included in the order of Hart J I do not consider that the RSPCA should have been entitled to recover under it. Further the omission appears to me to be of no importance in this case as the jurisdiction of the court under s.51 Supreme Court Act 1981 and CPR 48.2 would have been more than adequate to do justice between the claimant and RSPCA had I considered that an order in favour of RSPCA should have been made.

46. For all these reasons I will make the orders sought against the defendants but I will make no order for costs in favour of RSPCA.

© 2001 Crown Copyright

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