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.
Slide 3
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.
Slide 4
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
Slide 5
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
Slide 6
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
Slide 7
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
Slide 8
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
Slide 9
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.
Slide 10
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
Slide 11
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
Slide 12
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.
Slide 13
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
Slide 14
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
Slide 15
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
Slide 16
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
Slide 17
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"
Slide 18
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
Slide 19
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.
Slide 20
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.
Slide 21
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
Slide 22
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
Slide 23
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
Slide 24
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.
Slide 25
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.
Slide 26
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
Slide 27
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
Slide 28
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
Slide 29
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
Slide 30
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
Slide 31
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
Slide 32
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.
Slide 33
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
Slide 34
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
Slide 35
SKF v Sec Health Disputants not private parties and one is
Commonwealth officer who acts in discharge of responsibilities
placed on him by regulations
Slide 36
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
Slide 37
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
Slide 38
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
Slide 39
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