378 Property Law

invaded is a right of property at all there are, I think, strong reasons for preferring the latter view . . . [for] cases of misrepresentation by the use of a mark, name or get-up do not exhaust all possible cases of misrepresentation.

The point is accepted less equivocally by Danckwerts J in J. Bollinger v. Costa Brava Wines Co. Ltd [1960] Ch 262, where he simply states that, in passing-off actions, the law ‘is interfering to protect rights of property’. In recent years, the law of passing off has arguably gone even further to, in effect, substantively create new rights of property, as witnessed in British Telecom v. One in a Million Communications Ltd [1999] 1 WLR 903, where a number of large companies including BT, Virgin and Marks and Spencer successfully obtained an injunction against a company which had registered Internet domain names for these and other well-known companies in circumstances where it is extremely doubtful whether there was any real likelihood of passing off actually occurring.

This seems a questionable development. Yet the difficulty is not caused by the quasi-property label we have attached to the right but rather the Court of Appeal’s reluctance to confront the real issues in the case. Aldous LJ, who gave the only judgment in the case, proceeds on the basis that British Telecom owned the name (rather than the trade mark) ‘British Telecom’ and had a right to exploit that name in any medium. Yet, while in the context of an act of passing off the law adopts a proprietary approach in recognising the company’s right not to suffer damage to their good name, that does not provide a premise from which to assert a property right to their name even where there is no likelihood of such damage.

The quasi-property category thus provides a means by which the subtleties of the property label can be appreciated and kept within acceptable bounds as can be seen in the context of confidential information where, for example, the property label provides, from some perspectives, a useful means of analysis while in other respects it would be deeply misleading. As Gummow J stated, when considering the proprietary quality of confidential information in Breen v. Williams (1995–6) 186 CLR 71 at 129, ‘it [is not] acceptable to argue that, because in some circumstances, the restraint of an apprehended or continued breach of confidence may involve enjoining third parties . . . it follows that the plaintiff who asserts an obligation of confidence therefore has proprietary rights in the information in question which, in turn found a new species of legal right’.

Notes and Questions 9.6

Consider the following notes and questions both before and after reading British Telecom v. One in a Million [1999] 1 WLR 903 and the materials highlighted below (either in full or as extracted at www.cambridge.org/propertylaw/)

Recognition of new property interests 379

1Is the decision consistent with Lord Diplock’s judgment in Erven Warnink Besolten Vennootschap v. Townend & Sons (Hull) Ltd [1979] AC 731 at 742?

2Should you be able to own your name in the same way in which you own your identity or a trade mark?

3Does a high-tech company such as BT that was intimately involved in the emerging Internet sector have anyone but itself to blame for not registering a domain name before someone else did? What would Locke make of the defendant’s actions in the case?

4Why is it both correct and incorrect to describe confidential information as property, and why does such an approach aid, rather than obscure, understanding (see Kohler and Palmer’, Information as Property’)?