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Regulation 12(5)(c) – intellectual property rights

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About this detailed guidance

This guidance discusses regulation 12(5)(c) in detail and is written for use by public authorities. Read it if you have questions not answered in the Guide to the EIR, or if you need a deeper understanding to help you apply this exception in practice.

What does this guidance cover?

What do the EIR say?

Regulation 12(5)(c) of the EIR states:

12.—(5) For the purposes of paragraph (1)(a), a public authority may refuse to disclose information to the extent that its disclosure would adversely affect—
(c) intellectual property rights

Like most EIR exceptions, this is a qualified exception. That means, even if the exception is engaged, you must still go on to apply the public interest test set out in regulation 12(1)(b) before you can withhold the information.

Regulation 12(2) requires you to apply a presumption in favour of disclosure.

You can only withhold the information if the public interest in maintaining the exception outweighs the public interest in disclosing the information.

What are intellectual property rights?

Intellectual property rights (often referred to as “IP rights”) arise when someone is granted exclusive rights to certain intangible assets (ie an asset that you can’t physically touch). This means that others are prevented from reproducing or reusing that asset without the permission of the person who owns the IP rights.

There are many forms of IP rights. Our guidance on Intellectual property rights and disclosures under the Freedom of Information Act may be useful in helping you understand them and how they work. The main IP rights relevant to EIR requests will usually be:

  • copyright
  • database rights
  • copyright in databases.

Copyright

Copyright covers a wide range of recorded information, including original books, poetry or plays and original musical or artistic works. It also covers films, television programmes and computer software. Applying copyright prevents anyone but the owner of the copyright reproducing or reusing the work for profit.

Databases

Databases contain existing information that has been collated and presented in a way that makes it more useful. As well as the actual contents of the database attracting copyright, databases themselves may attract two additional forms of IP rights: database rights and copyright in databases.

Database rights protect the significant work that goes into gathering the material to be included in a database, verifying it and presenting it in the database, and then maintaining the database.

Copyright in databases protects the creative process of designing the database: selecting the best material to include in a database and deciding how to organise it to make the best use of it.

How are IP rights governed?

Two important pieces of legislation concern IP rights.

The Copyright Design and Patents Act 1988 (CDPA) deals with copyright (including copyright in databases) and defines what a database is.

The Copyright and Rights in Databases Regulations 1997 (CRDR) establish what database rights are.

Normally, IP rights belong to the author or creator of the asset, but they may belong to the author or creator’s employer if the asset is created in the course of their employment. Therefore, you are likely to own the IP rights to any information your staff create.

You will not, however, own the copyright for information you receive from third parties.

For example, a local authority’s planning department is likely to hold guidance on planning legislation produced by the Department for Levelling Up, Housing and Communities; planning files containing plans produced by private practice architects; and letters from neighbours objecting to the plans. The copyright to all these types of material belongs to the third parties that supplied them.

However, if you have commissioned a report from an external contractor, the terms of the contract will determine who owns any IP rights over the report.

IP rights and disclosure under the EIR

Usually, the owner of the IP rights has exclusive control over how the asset is used. However, neither CDPA nor CRDR prevents re-use of the material if that re-use is permitted by another piece of legislation.

Regulation 5(6) of the EIR expressly states that:

“Any enactment or rule of law that would prevent the disclosure of information in accordance with these Regulations shall not apply.”

Therefore, you will not infringe IP rights when you disclose information in response to an EIR request – because it is an activity expressly permitted in law. Regulation 12(5)(c) applies if there is a risk of infringement of IP rights by any person who may receive the information.

Although IP rights do not prevent you disclosing information, they continue to exist after you have disclosed it. Therefore, the requester will be limited in what they can do with such information because it is still protected.

However, you should also remember that, once this information is disclosed under EIR, you lose control over how it is re-used – because the disclosure is to the world at large. Not only will you lose control, but the IP rights holder (if they are a third party) may also lose the ability to enforce their rights once the information enters the public domain. Therefore, if you are applying this exception, you are entitled to consider the “worst case scenario” of what a person who wished to infringe the IP rights might do, if given unrestricted access – not just what the requester says they will do with the information.

How else can material subject to IP rights be used?

There are other permitted uses that the requester can take advantage of. These ‘fair dealing provisions’ allow information to be used for limited purposes so long as the holder of the IP right is credited. For example, copyright material can be used for non-commercial research or private study. The uses permitted will depend on the type of IP rights that apply. For example, a database can only be used for non-commercial research if the database has already been made public.

None of the three IP rights will be infringed if the information is used for criticism, review or news reporting. Therefore, once disclosed, such material can still be used to inform public debate, satisfy the public interest in transparency and hold public authorities to account.

Note that trade secrets do not automatically attract IP rights. A trade secret is a form of confidential commercial or industrial information given additional protection under the common law. A trade secret may be protected by IP rights (such as copyright), but you cannot rely on this exception just because information is regarded as a trade secret. You must demonstrate that a particular IP right applies to the information.

However, trade secrets are likely to engage regulation 12(5)(e) (which covers the confidentiality of commercial or industrial information), so you may want to consider that exception instead. See our guidance on regulation 12(5)(e) for more information.

When can we use the IP rights exception?

There is a four-step test you must follow to establish that there would be an adverse effect on a party’s IP rights and hence engage this exception. For you to rely on regulation 12(5)(c), you must demonstrate that:

  1. the information you are holding is protected by IP rights;
  2. the person(s) holding the IP rights would suffer harm (infringement alone will not necessarily result in harm);
  3. the identified harm is a consequence of the infringement or the loss of control over use of the information; and
  4. the IP rights holder could not prevent the harm or loss by enforcing their IP rights.

Each element of the test is discussed in more detail below.

Is the material protected by IP rights?

If you wish to rely on regulation 12(5)(c) to withhold information, you will need to identify the specific IP right(s) that would be adversely affected and the owner of those rights.

(1) Copyright

Establishing whether material is protected by copyright should be straightforward. Much of the information you hold will be protected by copyright, owned by the Crown, Parliament, a third party or you yourself.

If you have created the information yourself, you should know whether you own the copyright or whether the information attracts Crown copyright or Parliamentary copyright.

With universities, the copyright owner may be less clear cut if the material has been produced as part of a research project or if a member of academic staff has produced an academic paper or materials for commercial publication, or peer-reviewed another’s work.

However, establishing the exact owner may not be needed for this exception to apply – provided you can still satisfy the four tests above.

(2) Database rights

Establishing database rights can be more complicated. You will first have to consider whether the request relates to material held in a database.

Section 3A of the CDPA 1988 defines what a database is. Broadly, a “database” is a collection of independent works that are arranged in a systematic way and are individually accessible.

You will then need to consider whether database rights exist in that database. Database rights only exist when the creator of a database has invested substantial effort in obtaining, verifying, presenting and maintaining the information included in it. This is judged both on the amount of work and how difficult the work is, so it can be evaluated quantitatively and qualitatively.

When investigating a complaint concerning database rights, we will take account of the size of the organisation that created the database when we consider whether the database represents a substantial effort. A large government department will probably need to demonstrate a larger allocation of resources than a small parish council.

The substantial effort must be involved in obtaining and verifying the contents at the time the database is constructed. This is different from the effort involved in creating the information (the “independent works”) in the first place.

Example

Assume you hold a database of wildflower records for the country, comprising records submitted by local authorities that have carried out surveys in their area. The time taken by the local authorities to conduct those surveys is not relevant. What is protected by database rights is the effort that you exerted in obtaining the individual records from the different local authorities and compiling them into a useful format.

Database rights are only infringed when a substantial part of the database is used without the permission of the right holder. A “substantial part” can refer to the volume of information used or to the importance or significance of the part extracted, in relation to the database as a whole.

(3) Copyright in databases

Copyright in databases exists to protect the intellectual and creative process of deciding what goes into a database and how it is arranged. For example, in the wildflower database example, copyright in the database would recognise a decision to organise the records not just by county, but by (say) rarity or habitat. This acknowledges the judgement required when making these decisions. Where no judgement is required, because the arrangement is predetermined by the logic or the purpose of the database, there will be no copyright in the database.

Example

Decision notice FER0354510 considered a request to a local authority for ‘property search information’, which is the information that potential house-buyers use to check whether a property has any restrictions that might affect its value (such as a right of way through the land, listed building status or contaminated land). A lot of the information was held in an electronic database and the local authority claimed that it owned the copyright in the database.

The local authority did not claim database rights. The contents of the database were material it already held as part of its statutory functions, so it could not claim it had invested any effort in obtaining or verifying them. For example, as a highways authority it already held information on any road-widening schemes that affected a property.

However, the local authority argued that it owned the copyright in the database.

The local authority had used a commercially available software package to produce the database. The database comprised free-text boxes that left council officers free to determine what comments and explanations would be helpful to a database user. The software also enabled the local authority to create some of its own fields and search criteria. However, the bulk of the content was determined by a combination of the software used to create the database and the statutory requirement to hold particular information. The Commissioner therefore found that the database’s composition lacked the necessary quality of originality to be protected by copyright in databases.

Copyright in a database is infringed when a substantial part of the database is reused without the right-holder’s permission. As with database rights, a “substantial part” can relate to the proportion of the database being reused or the significance or the reused portion to the database as a whole. As a result, even a small amount of information can constitute a substantial part of the database, if it is significant enough.

In the example of the wildflower database, the same database can attract both database rights and copyright in a database. Furthermore, the individual local authorities that submitted their records could claim copyright in the individual records. In these situations, it is important that you are clear as to what IP right is being claimed and who is the owner of that right.

The different forms of IP right have different durations. Generally, database rights exist for 15 years after completion, whereas copyright in a play lasts for 70 years from the author’s death. You need to make sure that any IP right still exists and that you can demonstrate this if we investigate a complaint.

Would the IP right holder suffer harm?

There are two issues to consider here. Firstly, an infringement of IP rights alone is not sufficient to satisfy the “would adversely affect” test in the exception. There must be some real loss suffered by the owner of the IP right, such as a monetary loss.

Example

ICO decision notice FER0282488 concerned a request to the University of East Anglia for particular climate data . The Commissioner accepted that a number of parties would hold intellectual property rights over the information, including the university itself.

The Commissioner accepted that the university’s copyright and database rights might be infringed following disclosure. However, only a small amount of the data was not already available in the same or a comparable form. The Commissioner considered there was insufficient evidence of any potential to exploit the information commercially, so he did not accept the university would suffer any real loss. Regulation 12(5)(c) was thus not engaged.

Secondly, the harm in question must be suffered, by the holder of the IP right, because the right holder can no longer rely on their IP rights to control the use of the information. So, if a third party holds the IP right, it will be the harm to them that is relevant, not any harm to you.

However, any harm you might suffer in these circumstances may have a bearing on the public interest test. This is discussed in more detail below in the section on the public interest test.

Example

In Ofcom v Information Commissioner & T-Mobile (UK) Limited (EA/2006/0078, 4 September 2007) (“the Ofcom case”) Ofcom argued that the exception would be engaged if IP rights were merely infringed. But the Tribunal took a harder line, stating at para 47 that:

“… we believe that, interpreting the exception restrictively requires us to conclude that it was intended that the exception would only apply if infringement was more than just a technical infringement, (which in other circumstances might have led to a court awarding nominal damages, or even exercising its discretion to refuse to grant the injunction that would normally follow a finding of infringement). It must be one that would result in some degree of loss or harm to the right holder.”

“The Ofcom case” is therefore referred to several times in this guidance as the Tribunal’s approach to establishing harm was subsequently endorsed by the Court of Appeal in Ofcom v Information Commissioner [2009] EWCA Civ 90.

The case was appealed as far as the Supreme Court, but the Supreme Court ruled only on the correct approach to the public interest test. The Court of Appeal’s ruling on the correct tests to engage the exception remains binding case law and underpins our approach.

In both the Ofcom case and the climate data case, the public authorities claimed the material had a commercial value. However, protecting the commercial value of the information will not always be the issue. There may be situations where an asset is protected for research purposes and the right holder wishes to retain control over its use so that they can exploit the research value of that material, or ensure any findings are properly credited to the originator of the research.

Your motivation for enforcing copyright could also be to protect the integrity of the information you produce. For example, a regulatory body may have spent time and resources on publishing guidance on the legislation it regulates. Although the body wants the guidance to reach as wide an audience as possible, it wishes to police its IP rights to ensure that no potentially misleading alterations are made to the guidance.

However, we do not expect such circumstances to arise frequently. In the previous example it would be unsustainable to try to apply the exception, as it is unlikely that disclosing information in response to an EIR request would increase the risk of the regulator’s copyright being infringed, if the same information was already widely disseminated.

Does the harm result because of the infringement of IP rights?

IP rights exist to reward the creativity or the significant work that goes into producing the material. They give the right holder control over how the information is used, and by whom. It follows that, for an adverse effect to occur, any harm must result from the right holder losing that control.

Simply communicating potentially sensitive information to someone does not in itself engage the exemption.

Example

In decision notice FER0735567, Ofgem was asked for annual sustainability audit reports from Drax Power Ltd. Both Ofgem and Drax argued that the written description of the methodology used by Drax was Drax’s intellectual property.

The Commissioner accepted that Drax did hold intellectual property rights over the written description, but found that any harm caused by disclosure would arise as a result of the methodology itself being available to Drax’s competitors – not the description of the methodology.

As the harm did not arise from the infringement of Drax’s IP rights, the Commissioner did not accept that the exception was engaged.

This does not mean that commercially sensitive information is not protected under the EIR. Nor does it mean you will be forced to disclose this kind of information. Even if regulation 12(5)(c) is not engaged, you may still be able to rely on another exception – see “Other Considerations” below.

However, to engage regulation 12(5)(c), you must be able to demonstrate that the harm flows from an infringement of the IP right.

Example

In the Ofcom case, Ofcom received a request for a database showing the location and characteristics of all base stations used by each mobile phone operator in the UK.

The mobile network operators had database rights in the information they had supplied to Ofcom, which was then used to compile the complete Site Finder database.

T-Mobile established that mobile network operators could license information on the location of their sites. Companies with access to this data could develop navigational systems based on the ability to locate a mobile phone by its proximity to a base station. T-Mobile argued that if it lost control over who could use the information to develop such systems, it would lose the licensing revenue.

The Information Tribunal found at para 50 that:

“This category of harm involves a direct loss of the ability to exploit the relevant intellectual property through licensing and therefore goes to the heart of the right as an element of property.”

Ofcom was able to demonstrate that the information the mobile network operators had provided was a commercial asset. If you wish to argue that disclosing information will result in the owner of IP rights losing the opportunity to exploit the information commercially, we will expect you to provide evidence that there is a market for that information.

Where a third party holds the IP rights, you should not speculate on harms that might occur. We will normally expect you to have consulted the third party concerned. This principle was established by the Information Tribunal in Derry City Council v Information Commissioner (EA/2006/0014, 11 December 2006).

The harm could not be prevented by enforcing IP rights

Disclosing information under the EIR does not remove any IP rights over the material. If the rights holder became aware of further uses of the information that infringed those rights – either by the original requester or by anyone else who had received the information – the rights holder could take action to prevent harm arising from that infringement.

You should take account of the right holder’s ability to enforce their IP rights when considering whether any harm would actually arise in practice. If the right holder could take legal action to prevent any harm, their rights will not be adversely affected and the exception will not apply.

Example

In decision notice FER0809101, the then Ministry of Housing, Communities & Local Government (MHCLG) was asked for data on Energy Performance Certificates.

MHCLG refused to provide the information as it noted that the data it held included address-level data that was the intellectual property of Royal Mail. MHCLG relied on regulation 12(5)(c) as it believed disclosure would harm Royal Mail’s ability to exploit the information.

The Commissioner noted that the requested information was only a more up-to-date version of data MHCLG already made available, so it was difficult to see what harm disclosure would cause.

The decision notice also found that:

“... for another person to derive value from the information they would have to provide it as a service and that such a service would therefore have to be advertised via the Internet. This would clearly need to be easily searchable and therefore, as a result, visible. As such the Commissioner considers that it would remain possible for the Royal Mail effectively police its intellectual property rights following disclosure under the EIR.”

The Commissioner therefore found that the exception was not engaged.

In many cases, to exploit the material it will be necessary to market whatever product or service has been developed using that information. Therefore, the infringement will often be easy to detect.

The fewer people who are likely to breach IP rights, the easier it should be to detect the infringement. The number of potential infringements may be limited by the expertise needed to exploit the information or it may be determined by a limited market for the end product or service, which limits the number of potential suppliers.

However, if you can demonstrate that the right holder would no longer be able to enforce their IP rights effectively if the information is disclosed to the world at large, then the exception will apply.

Example

In the Ofcom case, the information on the base stations was requested electronically in an electronic format that could be easily manipulated.

The Information Tribunal stated at para 51 that:

“… once material protected by an intellectual property right has been released to a third party it becomes more difficult to discover instances of infringement (either by that third party any person to whom it passes the material), to trace those responsible for it and to enforce the right against them. This is particularly the case with respect to the material in this case, which is stored in a form in which it may be instantaneously transmitted to many third parties with limited scope to trace either the source or the destination and in a format that may be very easily reconfigured.”

The test for engaging regulation 12(5)(c) is that the disclosure would adversely affect the identified IP rights. This means it has to be more probable than not that:

  • someone would wish to exploit the protected material;
  • they could successfully do so; and
  • these infringements would go undetected or could not be prevented.

If we receive a complaint about your reliance on this exception, you should be prepared to explain to us why each step of the test is met and be able to demonstrate this with appropriate evidence.

What should we consider in our public interest test?

Even if the exception applies, you must still carry out a public interest test and apply a presumption in favour of disclosure before you can withhold the information.

The Commissioner has produced general guidance on how exceptions and the public interest test work in the Environmental Information Regulations. This section deals only with the factors specific to this exception.

Public interest in maintaining the exception

The public interest in maintaining regulation 12(5)(c) is determined by the severity of the harm suffered when the holder of the IP rights loses control over the use of their asset: the information.

If the information has a commercial value, it may be possible to estimate a monetary loss. If you own the IP rights yourself, the loss of a revenue stream will affect your finances or the level of services you can deliver. This is not in the public interest.

IP rights reward the intellectual endeavour and hard work that goes into creating the asset, whether it is an official report, a database, the design of a housing development, or a play. You may not be able to stop creating material that is produced as part of your functions, even if you cannot control its future re-use. However, removing the protection afforded by IP rights could be a disincentive to continuing to produce information in other scenarios: for example, if a commercial company lost control over the use of material it intended to exploit. It is clearly against the public interest to undermine innovation and progress in this way.

Similarly, if an academic institute lost control over a database it had developed for research purposes, it could lose the potential to earn the credit for the research. This in turn would reduce its ability to attract both funding and leading academics to the institute.

If a third party’s IP rights have been adversely affected by a disclosure, this may also affect their relationship with you. For example, third parties may no longer be prepared to give you their intellectual property voluntarily.

Example

In the Ofcom case, the mobile network operators (MNOs) gave Ofcom the details of their base stations under a voluntary agreement that allowed Ofcom to publish some of the information on its Site Finder internet site. Ofcom feared that if it disclosed those details from its database, the MNOs would no longer provide the information. The MNOs had already suspended their cooperation pending the outcome of the appeal.

The Information Tribunal made it clear (at para 59) that:

“… we do think we should consider the potential public interest detriment arising from the MNOs’ refusing to continue licensing Ofcom to publish the information. … it seems to us that it arises naturally from the exercise of an intellectual property owner’s right to control the use of protected material either by prohibition or licence”.

It is hard to assess the weight that should be attached to the threat to discontinue the supply of base-station information. Mobile network operators may not continue to withhold information in the long term: public pressure could force them to start supplying the information again or risk the threat of being compelled to do so by government.

In similar cases we will consider the extent to which the supply of information is truly voluntary. But if we are satisfied the flow of information may cease, we will take account of the harm to the public interest this may cause.

Although the focus is on the harm to the right holder when assessing the public interest in maintaining the exception, we can consider some of the wider consequences of the disclosure. But this will be limited to those effects that result from the harm to the IP rights and that stem from the loss of control over that intellectual property.

Example

In this hypothetical example, a request is made to a university for a database of results from a survey of badgers. The university is able to establish that it owns database rights in the material and that its disclosure would frustrate the university’s ability to exploit the database’s research value.

Under the public interest test, we would consider the validity of arguments about the public authority losing both its ability to take credit for the research and its opportunities for funding.

However, we wouldn’t consider the possibility that disclosing the location of badger setts would make them vulnerable to badger digging as this does not arise as a result of the infringement of IP rights.

Depending on the particular facts, the university may be able to rely on regulation 12(5)(g) – the protection of the environment – in these circumstances and this would take account of any increased risk to the badgers that would result if the information were disclosed.

Public interest in disclosure

As with any exception, the public interest factors in favour of disclosure will include both general and specific arguments relating to:

  • transparency;
  • accountability;
  • understanding of and participation in decision making on environmental issues;
  • participation in the democratic process.

The weight of this interest will vary from case to case, depending on the profile and importance of the issue and the extent to which the content of the information will actually inform public debate.

There may of course be other specific factors in favour of disclosure, depending on the particular circumstances of the case. These could include:

  • accountability for spending public money;
  • the number of people affected by a proposal;
  • any reasonable suspicion of wrongdoing.

Public interest resulting from a use that infringes IP rights

Sometimes, infringing an IP right could bring some benefit to society. The greater and more widespread the benefits, the stronger the public interest in overriding the IP rights will be.

Example

In the Ofcom case, all parties were satisfied that the requested information would assist research into whether there were any health risks associated with the radio frequency radiation emitted from base stations. Clearly, there is a public interest in such research being conducted.

However, Ofcom and T-Mobile argued before the Information Tribunal that no account should be taken of this benefit when assessing the public interest in disclosure, as the research would infringe IP rights and that the Tribunal should not take account of a benefit arising from an unlawful act. However, the Tribunal did take account of this public interest and this formed part of Ofcom’s appeal against the ruling.

In the Court of Appeal, Lord Justice Richards found that the potential use of the data for epidemiological research was the very basis for deciding that the disclosure would adversely affect the intellectual property rights of the mobile network operators. He went on to state (at para 55) that:

“But if such use also has beneficial consequences… in my view it is implicit in the EIR that such consequences can be taken into account on the other side of the balance as an aspect of public interest in disclosure…

“… Where use of information in breach of intellectual property rights has beneficial as well as adverse consequences, the proposition that only the adverse consequences can be taken into account seems to me to run wholly counter to that scheme.”

This part of the Court of Appeal’s decision continues to be the binding precedent on this point.

Other considerations & further reading

Regulation 12(5)(c) will only apply in relatively limited circumstances. However, there are other similar exceptions you can consider:

If the information is not environmental information, you will instead need to consider exemptions under the Freedom of Information Act (FOIA). The most relevant FOIA exemption is likely to be section 43 (commercial interests). See also our separate guidance on Intellectual property rights and disclosures under the Freedom of Information Act.

Additional guidance is available on our guidance pages if you need further information on the public interest test, other EIR exceptions or FOIA exemptions.