#19692 - 3. Confidential Information – Introduction - Intellectual Property Law

Outline

1. Common law breach of confidence

   1. Roots in contract, tort, property or equity

2. Developing law under the court’s discretion – third party relations

   1. As business changes, law has to change with it

3. Trade Secret Regulations

   1. Codify trade secret law regulation

Why trade secret law?

It enables organizations to carry out R&D, without fear of appropriation

It is a cheap and effective way to protecting results of intellectual activity

Protects trade secrets and operates to restrict disclosure

Protects confidential information

Information is not intended for the public domain

Elements of the action (Coco v Clark [1969])

1. The information must have the necessary quality of confidence

2. That information must have been imparted in the circumstances where the confident knew or ought reasonable to have known the information had been imparted in confidence

3. There is an unauthorized use of that information

What is confidential information?

• No definition

• Must have the necessary quality of confidentiality

1. Identifiable information (Suhner v Transradio [1967]) the person knows the specific information is confidential

2. Requirement for labour and skill?

Ocular Sciences v Aspect Vision

3. A requirement for novelty? (Coulthard v Disco Mix [1999])

The High Court held that information relating to techniques that D used for creating mega-mixes was not confidential – the technique involved D listing the recordings, identifying the beat and key of each song, and then mixing the songs together in an order that enabled them to blend smoothly

• Judge Sher QC – doubted the information about techniques used by C would be protected. The techniques were ‘pretty obvious once one is setting out to create a beat-mix’

De Maudsley v Palumbo – ideas, except clubs being legally open all night, were not novel.

Wade v British Sky Broadcasting – ideas for a TV programme are too vague and unoriginal; hence they do not contain anything of the necessary quality of confidence to be protected.

4. Form of information (Fraser v Thames TV Ltd [1983])

FOUR LIMITATIONS PLACED ON THE TYPE OF INFORMATION THAT MAY BE PROTECTED: WHERE THE INFORMATION IS:

Trivial, immoral, vague information (exclusions; exceptions) must be sufficiently developed to be commercially attractive

Trivial information

• The courts will not protect trivial information – Coco v Clark, Megarry J said equity will intervene only if the circumstances are of sufficient gravity. ‘Equity ought not to be invoked to protect trivial tittle-tattle, however confidential’

• This has had little impact on the information protected by breach of confidence – courts have been reluctant to label information as trivial

• Mills v MGN [2001] – not seen as trivial, able to get injunction

  • Court held that the address of Heather Mills (model, wife of Paul McCartney) was protectable despite the relatively trivial character of information.

• Douglas v Hello! – photographs revealed about the Douglas/Zeta-Jones Wedding should be protected as there is ‘no principled reason’ why they should not be protected.

Immoral information

• Courts will not enforce obligations of confidentiality related to matters which are “grossly immoral”

• In the absence of a generally accepted code of morality, the courts have been extremely careful about castigating certain types of behavior on the basis that it’s immoral.

• Little impact upon information protected by the action

• Stephens v Avery [1988] – affair (immoral in nature)

Vague information

• The information that is protected by a breach of confidence is usually detailed and specific

• However, a breach of confidence can be more general as ideas and concepts – proposals for TV series, eg.

• The courts said the law will not protect information that is too vague or general, if not any claimant might impose unjustifiable burdens on anyone who received information in confidence

• “wouldn’t it be great if…” statements will not be protected – part of public domain information and can be used freely

• De Maudsley v Palumbo [1996]

  • C argued D, who ran the dance club in the Ministry of Sound had appropriated his ideas for a new type of dance club which C had told D about at a dinner party.

  • The new dance club had 5 features 1) legally open all night; 2) large and fitted out in a hi-tech industrial warehouse style; 3) would incorporated separate areas for drinking, dancing and socializing; 4) have an enclosed dance area in which sound quality would be high; and 5) the DJs would be top quality

  • Knox J held these ideas were individually too vague and thus not protectable information. Further, the ideas were not novel, except for the club being open all night.

• Secton v Delawood – C’s company , involved in separating oil and water brought an action to prevent D (former employees) from working in the same field.

  • The court refused to grant an relief, holding that a bare goal, purpose, or possibility – a mere speculative idea – was not capable of being protected as a trade secret.

*a concept / idea must be sufficiently developed to be capable of being realized. (Fraser v Thames)

• Concerned an idea of a TV series about a female rock group and subsequent experiences of the members

• The concept must have some attractiveness to be capable of being realized in actuality (such as in Talbot v General Television)

  • The idea must be capable of being transformed into a ‘finished product in the relevant medium’ (Talbot)

No protection over common knowledge or information in the public domain

(CMI v Phytopharm [1999]; AG v Guardian [1990])

When is information in the public domain?

There can be no breach of confidence in revealing to others something which is already common knowledge

The degree of publication required before secrecy is lost depends on the circumstances of the case:

1. What Is the type of information?

2. What is the section of the public that has an interest in knowing about the information?

3. What is the domain in which the information is published?

4. What is the location and extent of publication in that domain?

5. What is the form in which the information is published?

6. What is the length of time for which publication is accessible?

7. What is the vigor with which the information is likely to be pursued within that domain?

The status of information is a question of fact, not of intention.

• Consequently, information is still capable of being protected even though the confider intended the information is published but failed to do this.

• Conversely, if the material is in the public domain, it doesn’t matter what the confider intended, but failed, to keep the information secret.

• A mere intention to publish in due course should not deprive information of its confidential status (Douglas v Hello! [2008]; cf. Times v Mirror Group [1993])

Ryan v Capital Leasing [1993] – information in the public domain means the information is well known and the public has a well-founded interest to know it.

• Information is in the public domain when it can be accessed by those with an interest in knowing

Franchi v Franchi [1967]– information that is in the public domain in another country might be relevant when considering whether information was confidential in the UK.

• Because patent agents were in the habit of inspecting foreign specifications, the information was in the public domain.

• Patent lawyers will (vigorously) look at patent databases!!!! To see if this information is part of the public domain.

If the confider publishes the information, the obligation obviously comes to an end (Mustad v Allcock and Dosen [1928])

The internet’s challenge

• Where information is known in one place after publication, in an open access website or social media platform, it is known everywhere (Attorney General v Guardian Newspapers [1987])

• There are many pages on websites, well-known sites, where publication for a limited time might not be enough to affect its confidentiality (Barclays Bank Plc v Guardian News Media Ltd [2009])

• PJS v News Group

  • UKSC considered whether an injunction should remain in place re information about the sexual exploits of a spouse of a well-known celebrity, where that person’s identity was widely available on the internet and social media.

  • Held – an injunction had value because the alternative would be a media storm and much greater exposure to that information

• The fact that the Internet is vast and continues to rapidly expand should not be ignored

Extent of harm on the claimant

• Spycatcher decision – Peter Wright was under an obligation of confidentiality as a member of the security services; he wrote a book called Spycatcher and it was published in Australia, Ireland, and the US.

• The Sunday Times began to serialize the book in England and The Guardian/Observer sought to repeat the story.

• AG sought an injunction to prevent publication.

• Lord Keith held

  • Continued serialization of the book would not be a breach of confidence. This would not have caused any further damage to the government

Springboard doctrine – breach of confidence may provide protection over information that is in the public doctrine where one party uses information obtained in confidence to steal a march on competitors. Promotes fair relations between potential competitors. It promotes the integrity of confidential relations by minimizing any benefits that can be gained by a confidant utilizing information gained in confidence.

• Aims to ensure that a person who breaches a duty of confidence can’t benefit from the breach

Seager v Copydex – a person who obtained the information from a private...