LPAB Summer Session
Therese Catanzariti
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Copyright – expression of ideas
Patent – ideas in a particular technical context
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confidential information – ideas
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Commercial - know-how, trade secrets,
concepts, systems, processes, techniques,
plans
Personal – Argyll v Argyll
Govt – Commonwealth v John Fairfax
Therese Catanzariti
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Moorgate Tobacco Co Ltd v Philip Morris Ltd
(No 2) (1984) 156 CLR 414 at 438 (Deane J)
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”
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Farah Constructions v Say Dee (2007) 230 CLR 89
Information that Council’s would likely approve DA if
property amalgamated with adjoining properties
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[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.
Therese Catanzariti
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Contract
◦ define Confidential Information
may protect information that equity not protect
◦ only use for Authorised Purpose
May be narrower than what equity allow
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Equity
◦ restrain use of confidential information
◦ unconscionable to use for other purposes
◦ equitable remedies – injunction, account of profits
may be better than damages
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Optus v Telstra [2010] FCAFC 21
network interconnection permits carriage of
telecommunications traffic generated by customers of one
party on the other party’s network
=>Telstra 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
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equitable and contractual obligations co-exist exhaustive definition of Confidential Information in Access
Agreement does not show that intend exclude equitable
obligation
Optus entitled to equitable remedies
Therese Catanzariti
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Prince Albert v Strange (1849) 47 ER 1302
Restrain publication of private etchings of
Royal Family
Douglas v Hello Ltd [2007] UKHL 21
restrain publication of photos of Michael
Douglas and Katherine Zeta Jones wedding
Naomi Campbell v Mirror Group Newspapers
Ltd [2004] UKHL 22
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Coco v A.N. Clark (Engineers) Ltd [1969] RPC 41 at
47 per Megarry J
Coco disclose information about moped – AN Clark
abandon discussions with Coco and develop own
moped
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information itself must ‘have the necessary
quality of confidence about it.’
information must have been imparted in
circumstances importing an obligation of
confidence
unauthorised use of that information to the
detriment of the party communicating it.
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Corrs Pavey Whiting & Byrne v Collector of
Customs (Vic)
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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
Therese Catanzariti
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Corrs Pavey Whiting & Byrne v Collector of
Customs (Vic)
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Solicitors acting for patentee of Naproxen
requested Customs provide documents
relating to Alphapharm importing infringing
drug
Documents not disclosed bc confidential
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Gummow dissent reviews law of confidence
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Smith Kline & French Laboratories
(Australia) Ltd v Secretary, Department of
Community Services & Health
SKF submitted information with govt to get
marketing approval for drug
govt disclosed information to maker of
generic drug
plaintiff must be able to identify with
specificity, and not merely in global terms
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Del Casale v Artedomus (Aust) Pty Ltd - “Isernia” is modica stone sourced from
Ragusa in Sicily
Wright v Gasweld – only 4 of 3000 Taiwanese suppliers are reliable
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 plaintiff’s 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.
Therese Catanzariti
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Moorgate Tobacco Co Ltd v Philip Morris Ltd
marketing results, advertising, position paper
and knowledge that Loew’s wanted to introduce
the brand “Golden Light” into Australia
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
ABC v Lenah Game Meats
Possum slaughtering process not confidential
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Terrapin Ltd v Builders' Supply Co (Hayes) Ltd [1967]
RPC 375 at 391-2, Roxburgh J stated 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.
Therese Catanzariti
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APT Technology Pty Ltd v Aladesaye, In the
matter of ATP Technology Pty Ltd [2014] FCA
966
Client database engineering test results
Therese Catanzariti
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Coco v AN Clark – reasonable person
A reasonable person standing in the shoes of
recipient of information would have realised
information disclosed for a limited purpose
Therese Catanzariti
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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 Sec discharge of functions under
Regulations
Therese Catanzariti
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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.
Therese Catanzariti
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Ashburton v Pape [1913] 2 Ch 469
Ashburton’s 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
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Wheatley v Bell
Coummunications idea to find new customers
through indexing system
W disclose to B in Perth, B set up business in
Sydney
B breached obligation to W and disclose 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
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Cronulla-Sutherland District Rugby League Football
Club Limited v Nationwide Pty Ltd [2013] NSWSC 494
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
Therese Catanzariti
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SKF v Sec Health
Disputants not private parties and one is
Commonwealth officer who acts in discharge
of responsibilities placed on him by
regulations
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Gartside v Outram (1856) 26 LJ Ch 113
Ex-employee disclose wool brokers business
records that disclosed that brokers defrauded
their customers
No confidence in an iniquity, can’t make me the
confidant of a crime or a fraud
contrast Corrs Pavey v Collector Customs
No public interest defence
Information no necessary quality of confidence
because Alphapharm committing civil wrong
Therese Catanzariti
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Commonwealth v John Fairfax
Govt defence papers incl East Timor, Iran Shah, Soviet navy in Indian sea, ANZUS treaty
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. This is not to say that equity will not protect information in the hands of the
government, but it is to say that when equity protects government information it will look at
the matter through different spectacles.
It may be a sufficient detriment to the citizen that disclosure of information relating to his
affairs will expose his actions to public discussion and criticism. But it can scarcely be a
relevant detriment to the government that publication of material concerning its actions will
merely expose it to public discussion and criticism. 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.
Therese Catanzariti
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Lion Laboratories Ltd v Evans
Intoximeter measure driver’s level of intoxication
used in criminal prosecutions
Ex-employees disclosed Lion confidential documents
that device unreliable
Exceptional circumstances to disclose risk that
people convicted for crime didn’t commit
Hubbard v Vosper [1972] 2 QB 84
Book critical of Scientology
these courses contain such dangerous material that it
is in the public interest that it should be made
known.
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LOCOG approached Atopia (NY design studio)
“We devised a structure of petals on tall
stems, which would travel from all of the
participating countries, then be brought into
the stadium by children.
The petals would be assembled during the
opening ceremony to form a flower-like
canopy, and distributed back to the different
nations after the Games."
Atopia's structure was designed to collect
rainwater and generate power from solar cells
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Locog has been disbanded, but its former design principle,
Kevin Owens, described the situation as "unfortunate".
"Atopia really are forward thinkers," he said. "Strands of
their work became part of what was taken forward, and I
wish there was a way we could acknowledge that."
Owens said he had never seen images of their proposals,
but that their strong narrative must have "stayed in the
psyche" of his colleagues, who commissioned the opening
ceremony.
“How Olympic cauldron fanned flames of fury at American
design studio”
Guardian Australia online, 20 June 2013
http://www.guardian.co.uk/artanddesign/2013/jun/19/th
omas-heatherwick-accused-plagiarism-olympiccauldron?CMP=ema_632
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Co-exist with equitable duty – Optus v Telstra
express
Implied
◦ necessary and reasonable for effective operation of
agreement – Byrne & Frew v Australian Airlines,
Codelfa v State Rail
◦ class of contract (eg employment)
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Maggbury v Hafele
parallel-opening foldaway ironing board
M and H sign confidentiality deed, and M
disclose idea to H
Information become public through patent
doctrine of restraint of trade applied to
contractual restraints once information public
Therese Catanzariti
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Del Casale v Artedomus – source of isernia and fact
modica
contract of employment generally includes an implied
term imposing a duty of good faith on the employee,
and that this turn carries with it an obligation on the
employee not to divulge confidential information or
to use it in a way that could be detrimental to the
employer
content of duty will vary according to the position of
the employee: generally, more senior employees,
having access to more confidential information, will
be subject to greater restraint than more junior
employees.
Therese Catanzariti
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Faccenda Chicken v Fowler – delivery routes
Two types of information
◦ secret processes of manufacture such as chemical
formulae or designs or special methods of construction
and other information which is of a sufficiently high
degree of confidentiality as to amount to a trade secret
◦ Confidential information given to or acquired by the
employee while in his employment
becomes part of the employee’s know-how which the
employee should be able to use after employment
ceases
can’t prevent competition by preventing ex-employees
using their know-how
Therese Catanzariti
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There is a category of information that an
employee must treat as confidential but which,
once learned, necessarily remains in the head of
the employee and becomes part of his own skill
and knowledge. While that information may have
been acquired in the course of the employer’s
business, the employee will be allowed to use his
full skill and knowledge for his own benefit, even
in competition with his former employer after he
leaves that employment. Such information is
often referred to as "know how", being the skill
and knowledge that an employee gains during
the course of his employment, which is not
capable of protection in favour of the employer.
Therese Catanzariti
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Printers and Finishers Ltd v Holloway
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numerous practical details of a technical process
called flock printing.
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Del Casale v Artedomus
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Source of isernia and fact it is modica stone
Information can’t realistically be separated out
from the general know-how in relation to the
stone
contrast
Bluescope Steel v Kelly
R&D project – strip casting technology for steel
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