(Week 6) Beth Oliak Intellectual Property Winter Session 2015

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 438 (Deane J) Like most heads of exclusive equitable jurisdiction, its rational basis does not lie in proprietary right. It lies in the notion of an obligation of conscience arising from the circumstances in or through which the information was communicated or obtained.

Farah Constructions v Say Dee (2007) 230 CLR 89 Information received that Council would likely approve DA if property amalgamated with adjoining properties [118] Even if the information were confidential, that would not make it property for the purposes of the first limb of Barnes v Addy. The protection given by equitable doctrines and remedies causes confidential information sometimes to be described as having a proprietary character, "not because property is the basis upon which that protection is given, but because of the effect of that protection. Certain types of confidential information share characteristics with standard instances of property. Thus trade secrets may be transferred, held in trust and charged. However, the information involved in this case is not a trade secret.

Contract define Confidential Information may protect information that equity not protect only use for Authorised Purpose may be narrower than what equity allows Equity restrain use of confidential information unconscionable to use for other purposes equitable remedies injunction, account of profits may be better than damages

Optus v Telstra [2010] FCAFC 21 Network interconnection permits carriage of telecommunications traffic generated by ones customers on the others network Telstra has access to Optus traffic information - quantity, source, destination, duration, time of occurrence and kind of the telecommunications traffic, as well as the value of the telecommunications traffic whether in terms of its aggregate billing value or individual customer billing details and value Equitable and contractual obligations co-exist - exhaustive definition of Confidential Information in Access Agreement does not show that intended to exclude equitable obligation Optus entitled to equitable remedies

Argyll v Argyll [1967] Ch 302 Sunday newspaper to which the Duke of Argyll had revealed confidential information about the Duchess of Argyll was restrained from publishing intimate marital confidences Prince Albert v Strange (1849) 47 ER 1302 Prince Albert receives an injunction restraining publication of his private etchings of the Royal Family Commonwealth v John Fairfax (1981) 147 CLR 39 Unless disclosure is likely to injure the public interest, government information will not be protected

Douglas v Hello Ltd Restraint of publication of photos of Michael Douglas and Catherine Zeta-Jones wedding Naomi Campbell v Mirror Group Newspapers Ltd MGN liable for publishing photos of NC leaving rehab clinic Duty of confidence arises wherever the defendant knows, or ought to know, that the claimant can reasonably expect their privacy to be protected

Coco v A.N. Clark (Engineers) Ltd Coco discloses information about moped AN Clark abandons discussions with Coco and develops own moped Coco did not show that the similarities between AN Clarks moped and his moped were because of the use of information provided by him to AN Clark

Information itself must have the necessary quality of confidence about it; Information must have been imparted in circumstances importing an obligation of confidence; and Unauthorised use of that information to the detriment of the party communicating it.

Corrs Pavey Whiting & Byrne v Collector of Customs Solicitors acting for patentee of Naproxen requested Customs provide documents relating to Alphapharm importing infringing drug; documents not disclosed because confidential Gummow dissent becomes law of confidence: the information in question must be identified with specificity; it must have the necessary quality of confidence; it must have been received in circumstances importing an obligation of confidence, and must be an actual or threatened misuse of the information without consent

Saltman Engineering Co v Campbell Engineering Co The defendants knew that those drawings had been placed in their possession for a limited purpose, namely, the purpose only of making certain tools... required for the purpose of manufacturing leather punches What the defendants did in this case was to dispense in certain material respects with the necessity of going through the process which had been gone through in compiling these drawings, and thereby to save themselves a great deal of labour and calculation and careful draftsmanship... That, in my opinion, was a breach of confidence

Saltman Engineering Co v Campbell Engineering Co If a defendant is proved to have used confidential information, directly or indirectly obtained from a plaintiff, without the consent, express or implied, of the plaintiff, he will be guilty of an infringement of the plaintiffs rights.

High Court rejects big pharmas claim that confidential information furnished to obtain governmental approval of the use of a pharmaceutical substance may not be resorted to in considering an application by another applicant, for approval of a version of the same substance Proof of detriment not required: equity intervenes to uphold an obligation of conscience and not necessarily to prevent or to recover loss the obligation of conscience is to respect the confidence, not merely to refrain from causing detriment to the plaintiff

Reasons: Otherwise difficult for court to: enforce an injunction satisfy itself that the information was imparted in circumstances giving rise to an obligation of confidence Misuse of confidential information is a very serious allegation requires particularisation Allows other parties to know precisely the circumstances in which they may be found to be wrongfully disclosing or using confidential information

Smith Kline & French Laboratories (Australia) Ltd v Secretary, Department of Community Services & Health SKF submits information to government to obtain marketing approval for drug Government discloses information to maker of generic drug SKF must be able to identify with specificity, and not merely in global terms

Manderson M&F Consulting v Incitec Pivot Ltd Confidential information defined by means of attributes, inputs, outputs, a formula and informed computations Trial judge finds the fatal flaw in the proposed statement of claim is that it refers to the Model, discusses the problems it seeks to overcome, but never actually states what the Model is the model is sought to be defined in terms of a description of inputs and outcomes but the heart of it, the Model itself, is not identified or defined On appeal: there is no requirement for a piece of paper setting out the Model such as an Excel spreadsheet. In our opinion, the heart of it, the model itself, was identified, although not in terms of a formula, algorithm or mathematical or computer model

Del Casale v Artedomus (Aust) Pty Ltd Alleged confidential information that Isernia is modica stone sourced from Ragusa in Sicily used by former employees ".... subject to any contract that may have existed, the [employees] were entitled to compete with Artedomus in the stone business after their employment had come to an end, and they were entitled to obtain stone for that purpose from any source. They were entitled to go to a trade fair, and to look for suppliers of stone at that fair, including suppliers of stone similar to Isernia. What restraint of use of this particular piece of confidential information would require is that in doing so, they somehow blot out their knowledge that Isernia was modica stone"

Wright v Gasweld Mr Wright was former employee of Gasweld, an importer of hardware from Taiwan Mr Wright leaves after eight years and competes with Gasweld despite express term of agreement that he would not use confidential information obtained through his employment with Gasweld Alleged confidential information is the identity of four reliable Taiwanese suppliers of metal hardware tools of 3000 Although not a trade secret or highly confidential information constitutes other confidential information able to be protected by agreement Doctrine against restraint of trade prevents protection of trivial information

1.The extent to which the information is known outside the business. 2. The extent to which the trade secret was known by employees and others involved in the plaintiffs business. 3. The extent of measures taken to guard the secrecy of the information. 4. The value of the information to the plaintiffs and their competitors. 5. The amount of effort or money expended by the plaintiffs in developing the information. 6. The ease or difficulty with which the information could be properly acquired or duplicated by others.

7. Whether it was plainly made known to the employee that the material was by the employer as confidential. 8. The fact that the usages and practices of the industry support the assertions of confidentiality. 9. The fact that the employee has been permitted to share the information only by reason of his or her seniority or high responsibility. 10. That the owner believes these things to be true and that belief is reasonable. 11. The greater the extent to which the confidential material is habitually handled by an employee, the greater the obligation of the confidentiality imposed. 12. That the information can be readily identified.

Moorgate Tobacco Co Ltd v Philip Morris Ltd Marketing results, advertising, position paper and knowledge that Loews wanted to introduce the brand Golden Light into Australia (had been selling the product for two years overseas) Evidence did not establish that any of the material was in fact regarded as confidential by Loew's or that Loew's at any time requested Philip Morris to treat or regard it as confidential Action for confidential information should relate to the nature of the commodity which is the substance of the transaction

Lenah Game Meats operated a possum meat processing plant in Tasmania Unknown person(s) trespassed on LGMs property and installed video cameras which taped the slaughter and processing of possums Video was provided to an animal rights group who gave it to the ABC LGM sought an interlocutory injunction to restrain the broadcast of the video by ABC ABC was aware that the video had been obtained unlawfully

High court overturned injunction Although there is an obligation of confidentiality when information that is surreptitiously obtained is received, it did not apply here because LGMs processes were not necessarily private (although hidden from public view) Callinan J disagreed stating that ABC was a trustee of such information which was owned by LGM

Terrapin Ltd v Builders' Supply Co (Hayes) Ltd [1967] RPC 375 at 391-2, Roxburgh J As I understand it, the essence of this branch of the law, whatever the origin of it may be, is that a person who has obtained information in confidence is not allowed to use it as a spring-board for activities detrimental to the person who made the confidential communication, and spring-board it remains even when all the features have been published or can be ascertained by actual inspection by any member of the public.... It is, in my view inherent in the principle upon which the Saltman case rests that the possession of such information must be placed under a special disability in the field of competition in order to ensure that he does not get an unfair start.

Can arise: By agreement (express or implied) implied by the relationship between the parties (eg, solicitor-client, doctor-patient, employer-employee) Implied based on the circumstances

Reasonable person test: Coco v AN Clark (moped case) A reasonable person standing in the shoes of recipient of information would have realised the information was disclosed for a limited purpose

Limited Purpose Test (if given for a particular purpose, use limited to that purpose): Smith Kline & French v Sec Health SKF submitted chemistry, quality control and clinical trial information relating to cimetidine compound for treatment of peptic ulcers marketed as tagamet Sec Health plan to use SKF to assess Alphapharm application for generic drug Sec Health neither know nor ought to have known of SKF limited purpose SKF did not direct attention to what else might be done subsequently with the information when it furnished the data Court not impute placing or acceptance of obligations which restrict Secs discharge of functions under Regulations

TF Industrial Pty Ltd v Career Tech Pty Ltd [2011] NSWSC 1303 recruitment database of client and candidate files parties merged the two databases without discussing who owned over time, both parties used for own purposes and incrementally added to database; no attempt to keep data separate both parties had master password information could be freely used by defendants not imparted to them in circumstances importing an obligation of confidence

Former employee steals nectarine budwoods from plaintiffs orchard Genetic makeup of the budwoods was a trade secret Stolen information used to compete with the plaintiff the thief is unconscionable because he plans to use and does use his own wrong conduct to better his position in competition with the owner, and also place himself in a better position than that of a person who deals consensually with the owner

Journalist plan to publish extracts from Sharks legal advice relating to Sharks breaches of NRL anti-doping policy Rein J satisfied journalist report derived from Sharks legal advice although not clear how they received it Rein J said duty of confidence because journalist was aware that what they were utilising was part of legal advice given by a lawyer retained by the Club

Inadvertent disclosure of privileged documents during discovery Error ascertained immediately and return of documents requested; request refused Dispute goes all the way to the High Court The High Court held there was no waiver of privilege in the documents Proceedings of this kind and length concerning a tangential issue should have been averted. There was no need to resort to an action in the equitable jurisdiction of the Supreme Court to obtain relief.

Ashburton v Pape [1913] 2 Ch 469 Ashburtons solicitor received information from Ashburton in confidence Solicitor breached obligation to Ashburton by giving information to Pape Pape owed obligation to Ashburton even though no direct relationship between Pape and Ashburton Restrain the publication of confidential information improperly or surreptitiously obtained

Wheatley v Bell Communications idea to find new customers through indexing system W discloses to B in Perth; B set up business in Sydney B breached obligation to W and disclosed to 2D and 3D who paid for information 2D and 3D knew or ought to have been aware of confidence, so also bound by obligation of confidence, even though paid money

SKF v Sec Health Disputants not private parties and one is Commonwealth officer who acts in discharge of responsibilities placed on him by regulations

Gartside v Outram (1856) 26 LJ Ch 113 Ex-employee disclosed wool brokers business records that disclosed that brokers defrauded their customers No confidence in an iniquity, cant make me the confidant of a crime or a fraud Castrol Australia v Emtech Associates (1980) 51 FLR 184 Castrol gave TPC a report that contained test results and sought advice re potential advertising. TPC agrees to keep information confidential but then tries to use it in TPA proceedings against Castrol Limited purpose test applied and also TPC could not show prima facie case contrast Corrs Pavey v Collector Customs No public interest defence Information no necessary quality of confidence because Alphapharm committing civil wrong

Commonwealth v John Fairfax Govt defence papers incl East Timor, Iran Shah, Soviet navy in Indian sea, etc Equitable principle has been fashioned to protect the personal, private and proprietary interests of the citizen, not to protect the very different interests of the executive government. It acts, or is supposed to act, not according to standards of private interest, but in the public interest. It is unacceptable in our democratic society that there should be a restraint on the publication of information relating to government when the only vice of that information is that it enables the public to discuss, review and criticize government action Court will determine the government's claim to confidentiality by reference to the public interest. Unless disclosure is likely to injure the public interest, it will not be protected

A-G (UK) v Heinemann Publishers Australia Publication of book Spycatcher by a former spy, Peter Wright; British government alleged unauthorised use of secret information; Wright prevails; now Official Secrets Act 1989 would prevent disclosure Minister for Mineral Resources v Newcastle Newspapers No injunction in relation to publication of information as to advice re claims against miners because govt could not show prejudice to public interest National Roads and Motorists Association v Geeson Injunction sought against publication of information disclosed at an NRMA Board meeting; relief not granted as director was not in violation of her statutory duties in doing so; members have a right to know information

Lion Laboratories Ltd v Evans Intoximeter measures drivers level of intoxication used in criminal prosecutions; ex-employees disclosed Lion confidential documents that device was unreliable Exceptional circumstances to disclose risk that people convicted for crime didnt commit Fraser v Evans No injunction even if publication may be defamatory (public interest in truth being out there and in fair comment) Hubbard v Vosper Book critical of Scientology Courses contain such dangerous material that it is in the public interest that it should be made known

Documents

(Week 6) Beth Oliak Intellectual Property Winter Session 2015