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LPAB Winter Session Therese Catanzariti.  Copyright – expression of ideas  Patent – ideas in a particular technical context  confidential information.

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Presentation on theme: "LPAB Winter Session Therese Catanzariti.  Copyright – expression of ideas  Patent – ideas in a particular technical context  confidential information."— Presentation transcript:

1 LPAB Winter Session Therese Catanzariti

2  Copyright – expression of ideas  Patent – ideas in a particular technical context  confidential information – ideas  Commercial - know-how, trade secrets, concepts, systems, processes, techniques, plans  Personal – Argyll v Argyll  Govt – Commonwealth v John Fairfax Therese Catanzariti

3  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” Therese Catanzariti

4 Farah Constructions v Say Dee (2007) 230 CLR 89 Information that Council’s 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. Therese Catanzariti

5  Contract ◦ define Confidential Information may protect information that equity not protect ◦ only use for Authorised Purpose May be narrower than what equity allow  Equity ◦ restrain use of confidential information ◦ unconscionable to use for other purposes ◦ equitable remedies – injunction, account of profits may be better than damages Therese Catanzariti

6 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  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

7  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 Therese Catanzariti

8 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  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. Therese Catanzariti

9 Corrs Pavey Whiting & Byrne v Collector of Customs (Vic)  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

10  Corrs Pavey Whiting & Byrne v Collector of Customs (Vic)  Solicitors acting for patentee of Naproxen requested Customs provide documents relating to Alphapharm importing infringing drug  Documents not disclosed bc confidential  Gummow dissent reviews law of confidence Therese Catanzariti

11  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 Therese Catanzariti

12 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. 12. That the information can be readily identified. Therese Catanzariti

13  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 Therese Catanzariti

14  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

15  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

16  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

17  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

18  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 Therese Catanzariti

19  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 Therese Catanzariti

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

21  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

22  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

23  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.  Therese Catanzariti

24  Co-exist with equitable duty – Optus v Telstra  express  Implied ◦ necessary and reasonable for effective operation of agreement – Byrne v Australian Airlines, Codelfa v State Rail ◦ class of contract (eg employment) Therese Catanzariti

25  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

26  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

27  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

28  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

29  Printers and Finishers Ltd v Holloway  numerous practical details of a technical process called flock printing.  Del Casale v Artedomus  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 Therese Catanzariti


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