Computer games designer’s failure to disclose his previous ideas meant employing company owned them – Burrows v Smith, High Court

From 1998, Burrows developed and revised an idea for a game called ‘Traktrix’, which involved moving a ball to another side of the screen by laying down a track. When he became employed by Circle as a computer games designer in 2005, he signed up to an employment contract which had wide wording to make clear that the intellectual property rights in anything developed during the time of his employment belonged to Circle. Over a year after his employment started, Burrows proposed the Traktrix game to Circle. Circle liked the idea and developed it further with Burrows and others. The game moved on somewhat and became ‘Traintrax’. Circle went into liquidation and a Circle director set up a new company called Crush, which bought Circle’s intellectual property rights. After initially helping Crush, Burrows then claimed that Crush was infringing his intellectual property rights and breaching his confidential ideas.

The High Court rejected Burrows’ claims. In respect of the action for breach of confidence, the High Court said that it had not been disclosed to Circle in circumstances importing an obligation of confidentiality. Burrows was simply doing his job and he had not made any suggestion – either when first becoming an employee nor when introducing the idea – that the idea was his from time before he had joined Circle. The High Court also rejected his claims that a design document created at Circle infringed Burrows’ copyright in his earlier personal design document as the only person at Circle who had seen Burrows’ earlier document was Burrows himself.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-It.com, comments: ‘This case shows that disputes may arise in respect of who owned the rights to pre-existing ideas and materials before an employee is employed. It is always a good idea to have a strong employment contract which makes clear that anything that the employer wants to own belongs to the employer, and not the employee through a technicality. This is especially important when employing someone in the creative industries. A key issue in this case was that the employee had not disclosed his pre-existing ideas; had he done so, the employer should take steps to ensure that it is not stopped from using them. If the facts of this case had been a bit different, the employee may well have owned the confidential information and been able to stop his employer from using it.’