#16183 - Confidentiality - Intellectual Property Law

• Equitable action to prevent the disclosure of confidential information (secrets)

• Not an IP right but important in conjunction w/ such things as patents or just as a way of keeping information permanently confidential [longer than 20 years of patent protection]

• Albert v Strange: first such case, dealing w/ etchings, where confidentiality was entertained

• Human Rights Act: it is wrong to disclose information under the right to privacy misuse of information. See as branch that has grown from root of breach of confidence (not in course)

• Coco v Clark – 3-stage criteria for confidentiality:

• Confidential Information

• Obligation to maintain that confidence

• There has been a breach through the information being used or disclosed without authority

• Douglas v Hello – information has no limitation in form, any type of information can be protected. Wide, extensive open list: can consist of technical devices, plans, photographs, customer lists or personal secrets. This case concerned wedding photographs of Mr. Douglas and Ms. Zeta-Jones – took special care to control all photos that were taken. Special contract with Hello where they paid money to have exclusivity to the photos. Someone else took photos and found their way to the defendant Hello and they were published there. The appearance of the people in that context was found to be the information that was protected (not necessary that the wedding was not secret or the date and venue was not). Shows a broad approach. When a claimant brings a case they must be specific in the information that is to be protected – information that is not in the public domain (i.e. that bride would be wearing wedding dress is not private information). Each picture was treated as a separate piece of information

• Thomas v Guinle: to determine quality of confidence:

• Release of information would be injurious to the owner or of advantage to rivals

• Owner must believe that the information is confidential (not in the public domain)

• Owner’s belief in the above is reasonable

• Information must be judged in light of the usage and practices of the industry concerned

• Fraser v Thomas – can include oral information. Limits on this broad category:

• Information must not be trivial – commercial attractive (Coco v Clark). Heather Mills – very reluctant to find information trivial though. E.g. address important. Economically valuable?

• Must be clearly identifiable/ be sufficiently developed (De Maudsley v Palumbo) – MOS that had a general idea about a night club with very broad characteristics (décor, times etc.). Information was such a general conceptual level and not developed enough to constitute information. Was also not original enough

• A degree of originality? Fraser v Thames – can protect information as long as it is original, adds something to what is already in the public domain. E.g. a new combination of two or three programs will be original as long as it is distinct. “Let’s have a talent show” is not original enough. It is not about labour or skill or creativity….it is about is there something that is different to information already available in the public.

• Court of Equity will not act where it will be unconscionable to act, i.e. contrary to public interest. Gartside v Outram – the secret related to criminal activity. That had no equitable rights. Public interest will need for you to disclose that. Can go beyond criminal activity to cover anti-competitive behaviour etc.

• AG v Guardian Newspaper – concerned publication of Spycatcher that contained memoirs of MI6 Agent. Found it was a total breach of confidence and Secrets Act. Injunction allowed to prevent articles about the book. Government’s injunction was finally discharged because the information was so widely published abroad that it barely constituted a secret anymore. House of Lords held that the government (a public body) had an extra condition to satisfy this breach: had to show there was public interest in keeping this information safe. For individuals this is taken for granted.

When is information confidential?

• Have to determine what is not in the public domain to determine what is confidential.

• A question of fact & degree (look at the circumstances)

• HRH Prince of Wales v Associated Newspapers – In this case, Prince Charles diaries were very indiscreet about the people he meets. He photocopies them at Christmas time and sends them to certain friends. It is photocopied by an employee and found its way to the hands of the press, the Daily Mail and they publish controversial extracts. Succeeded in confidentiality. Found that the 80 associates that he trusted and sent the letter to did not include public domain because it was not at the point of reaching ‘public knowledge’. Also those in the ring of confidence understood that they were meant to be in confidence.

• BBC v Harper Collins – Involved a stig in top gear whose identity was supposed to not be known. Stig argued that there was no relative secrecy in his identity because it was so known on the internet and so he could publish book on it. Accepted - only relative secrecy will be protected.

• Suhner v Transradio – 246 documents saying half was confidential and the rest was partially confidential. Not granted injunction because no precision in what information was confidential.

• Terrapin v Builders Supply – in past cases, a springboard doctrine has been applied. This is where obtained information comes from a private source and it is used as springboard for activities detrimental to the person who made this confidential information – i.e. creating buildings using this protected information. Problem was that these buildings were in the public sphere and people could dismantle it and find out how it was built, thus defendant argued no confidentiality. Equity will not act in vain – imposed injunction. While information could have been found out easily through reverse-engineering, defendant had unfair advantage

• Vestergaard v Bestnet- the information based on springboard doctrine are those that possess relative secrecy – thus confidential even if can be ascertained by reverse engineering or process of compilation from public domain source.

• Potters Ballotini – limited time after to allow for the springboard doctrine. Appropriate period calculated by reference to time it would take a legitimate public source to discover the info

• Schering Chemicals - stop their ex-employee from making a movie about a drug that they developed that was causing fetal damage. Information was already in the public domain, so not a secret but had been mostly forgotten. Company argued it was unnecessary revival of the information, accepted and injunction given.

• There is a connection between confidential and privacy but they are NOT the same thing.

• Campbell v MGN – Naomi Campbell was photographed coming out of Narcotics Anonymous. Difficulty with breach of confidence is that she is photographed on the street and it is not like the situation in Douglas where there was an environment where it was sealed off. Can see that has a privacy interest in it not being disclosed but no confidentiality. Have to look at it in a separate branch (Misuse of Private Information) and use the test of whether claimant has reasonable expectation of privacy? Certain aspects may be protectable if they are captured in the public sphere: relationship history, medical history etc. even if it is already known to a significant number of people. Test is to balance: Article 8 privacy v Article 10 freedom of expression

• Murray v Express Newspaper – concerned J.K. Rowling and her daughter and husband. Photographed in public place. Found misuse of private information.

• PJS v News Group – A lot of people know that the celebrity involved is Elton John’s partner who was with an affair with two other people (was readily available online). SC maintained injunction. Contrast with Stig case – not able to ratify.

• Look at relationship between parties. Classic examples: doctor and patient; contractual parties; lawyer and client – automatic assumption of confidentiality.

• Can also look at the nature of the circumstances and the way information is given and received.

• Direct Relationships have both:

• Express Obligation – “should not be disclosed to anyone”. Exception when it is widely known (goes to previous point whether information is actually confidential)

• Implied Obligation – applies to certain automatic relationships like the ones mentioned above. Coco: “circumstances are such that any reasonable man….would have realised upon reasonable ground that information was being given to him in confidence”

• De Maudsley – social instead of commercial context would indicate less confidentiality

• Employment raises confidence as well because of many staked interests. Current employees have a broad duty of good faith in acting in company’s best interest.

• Ex-employees have restrictive covenants/ restraint of trade.

• Thomas v Guinle – cannot benefit from wrong so claiming resignation was a repudiation of a contract containing a NDA was not accepted

• Faccenda Chicken v Fowler – CA found there is ongoing equitable obligations re “trade secrets” (different in the employment context) regardless if it was expressly stated. Relevant factors include:

• Nature of employment (employed as designer or cleaner)

• Whether information is sufficiently certain (how clearly defined)

• Whether employer has designated the information as secret (protocols,...