Checklist – Confidentiality
No legislation: Based on common law (ie. case law helps to establish whether confidentiality exists)
Use this checklist for general confidentiality issues (ie. NOT involving an employee).
1. Is the information Three-point test per Coco v Clark:
confidential? a. Did the information have the necessary quality of confidence about it?
In De Maudsley v Palumbo and Others, it was held that a considerable degree of
preliminary development of definite product needs to be shown. Vague ideas not
covered.
- Design drawings/customer information more likely to be protected.
The owner must believe that the information is confidential, i.e. not in the public
domain; - state that publicly available information will no generally be regarded as
confidential.
Draw on the points from Thomas Marshall v Guinle:
- Owner believes release of information would be injurious to the owner or
advantageous to rivals;
- Owner believes information is a secret (not in the public domain);
- Owner’s belief is reasonable;
- Information is judged in light of its usage in the industry/trade concerned.
b) Was the information imparted in circumstances importing an obligation of confidence?
Whether an obligation to keep information confidential has arisen is judged objectively
(De Maudsley). Such an obligation can arise in a number of circumstances:
Imposed by contract – where the parties have expressly (or impliedly) agreed to keep
certain information confidential;
Imposed by a special relationship between the parties – eg. employer/employee.
Implied by the circumstances of the disclosure – if the party receiving the information is
aware that the information is confidential, they will generally be bound by an obligation
of confidence.
- AG v Guardian Newspapers (No 2) – held that an obligation of confidence will be
found where the recipient had notice (or is deemed to have had notice that the
information was confidential and it’s just in all the circumstances t impose the
obligation.
- Also, includes implied circumstances, such as picking up a private diary.
Consider the way in which the information was handled.
Has the owner made it clear that documents were confidential?
How did the person access the documents?
c) Was there any unauthorized use of the information?
Always state that having an express duty of confidentiality makes this ground easier to
establish.
De Maudsley v Palumbo and Others – ideas did not overlap to constitute sufficient
degree to be unauthorised.
2. Benefit of the IPR This protects information against unauthorised disclosure, indefinitely.
Arises automatically and does not require registration.
, Use this checklist for discussing the position of former employees:
1. Does the information have the Facenda Chicken; Goulding J separated info gained by an employee into
necessary quality of 3 classes:
confidence? a. Mundane, easily obtainable information that is already available in the
public domain or easily accessible to the public. (Class 1).
- Will NOT be confidential.
b. Confidential information that the employee knows or ought to have
known is confidential, but which enters the employee’s mind as part
of his own ‘stock in trade’ of skill and experience.
- This usually remains confidential during the term of employment
but will not usually be protected after termination in the absence
of express restrictive covenants.
- Usually includes customer lists, sales information (Facenda).
c. Highly confidential information like trade secrets or customer
information.
- On the facts, consider whether the information would be valuable
to rival companies.
- Facenda stated that trade secrets include details of the process of
manufacture, eg. chemical formulae design etc. (i.e. anything with
a high degree of confidentiality).
- This class of information will have an obligation of confidentiality
and will be implied under a term of good faith between the
parties, in the absence of a restrictive covenant.
2. Is there an obligation of Is there an express obligation on the ex-employee in his employment
confidence? contract to maintain secrecy?
On the basis that there isn’t, then discuss whether the confidential
information can still be protected
Are there trade secrets?
- If yes, then state that these can be protected by way of an implied
obligation of confidence after employment has ended. Therefore,
if a trade secret like confidential information, then there would be
an obligation on the ex-employee not to disclose or use this
information.
Is there confidential information?
State that information which is ‘in the head’ of the ex-employee
(which he remembers) is not subject to an implied obligation of
confidence.
- Has the employee taken anything physical (printed lists, customer
index card etc), then state that the courts tend to decide that this
is the subject of an implied obligation. (Draw on the case of Roger
Bullivant v Ellis & Others – where taking the customer index list
was seen to overstep the mark).
- Make the point that if there’s a mixture of information – ie. some
the employee remembers and some on a printed material then
the courts generally will impose an implied obligation over all of it.
3. Has there been an unauthorised Do the facts make it clear what the information will be used for?
use of the information? Is the person setting up a competing business?
4. Does the discloser have a valid Publication
defence? Prior to publication by the C may cause the information to lose its
confidential status.
Public interest (AG v v Guardian).
Disclosure is permitted if it is in the public interest.
, Eg. to reveal a crime or fraud.
Whistleblowing
Public knowledge
5. Consider remedies Injunction (incl. interim injunction).
This is important as it prevents disclosure.
If information has been published usually too late.
Vestergaard:
- D not liable as they had no knowledge that the information was
confidential.
- C will generally be entitled to final injunction where there’s a
sufficient risk of repetition.
- Springboard doctrines – aimed at preventing ex-employees
making a head start using confidential information.
- Duration should be limited.
Compensatory damages:
Compensate for losses suffered as a result of the disclosure.
Account for profits
Account for losses suffered as a result of the disclosure.
Order for delivery up
Destruction under oath
6. Consider other IPRS? If there’s been copying of technical information discuss how this may be
unauthorised copying of technical information.
If customer lists have been copied, then unlikely to be copyright, but
instead discuss the protection under a database right.
Consider whether there has been substantial investment in obtaining
date etc.
Has the person infringed the database right by extracting/and/or re-
utilising the date (Eg. copying?).
No legislation: Based on common law (ie. case law helps to establish whether confidentiality exists)
Use this checklist for general confidentiality issues (ie. NOT involving an employee).
1. Is the information Three-point test per Coco v Clark:
confidential? a. Did the information have the necessary quality of confidence about it?
In De Maudsley v Palumbo and Others, it was held that a considerable degree of
preliminary development of definite product needs to be shown. Vague ideas not
covered.
- Design drawings/customer information more likely to be protected.
The owner must believe that the information is confidential, i.e. not in the public
domain; - state that publicly available information will no generally be regarded as
confidential.
Draw on the points from Thomas Marshall v Guinle:
- Owner believes release of information would be injurious to the owner or
advantageous to rivals;
- Owner believes information is a secret (not in the public domain);
- Owner’s belief is reasonable;
- Information is judged in light of its usage in the industry/trade concerned.
b) Was the information imparted in circumstances importing an obligation of confidence?
Whether an obligation to keep information confidential has arisen is judged objectively
(De Maudsley). Such an obligation can arise in a number of circumstances:
Imposed by contract – where the parties have expressly (or impliedly) agreed to keep
certain information confidential;
Imposed by a special relationship between the parties – eg. employer/employee.
Implied by the circumstances of the disclosure – if the party receiving the information is
aware that the information is confidential, they will generally be bound by an obligation
of confidence.
- AG v Guardian Newspapers (No 2) – held that an obligation of confidence will be
found where the recipient had notice (or is deemed to have had notice that the
information was confidential and it’s just in all the circumstances t impose the
obligation.
- Also, includes implied circumstances, such as picking up a private diary.
Consider the way in which the information was handled.
Has the owner made it clear that documents were confidential?
How did the person access the documents?
c) Was there any unauthorized use of the information?
Always state that having an express duty of confidentiality makes this ground easier to
establish.
De Maudsley v Palumbo and Others – ideas did not overlap to constitute sufficient
degree to be unauthorised.
2. Benefit of the IPR This protects information against unauthorised disclosure, indefinitely.
Arises automatically and does not require registration.
, Use this checklist for discussing the position of former employees:
1. Does the information have the Facenda Chicken; Goulding J separated info gained by an employee into
necessary quality of 3 classes:
confidence? a. Mundane, easily obtainable information that is already available in the
public domain or easily accessible to the public. (Class 1).
- Will NOT be confidential.
b. Confidential information that the employee knows or ought to have
known is confidential, but which enters the employee’s mind as part
of his own ‘stock in trade’ of skill and experience.
- This usually remains confidential during the term of employment
but will not usually be protected after termination in the absence
of express restrictive covenants.
- Usually includes customer lists, sales information (Facenda).
c. Highly confidential information like trade secrets or customer
information.
- On the facts, consider whether the information would be valuable
to rival companies.
- Facenda stated that trade secrets include details of the process of
manufacture, eg. chemical formulae design etc. (i.e. anything with
a high degree of confidentiality).
- This class of information will have an obligation of confidentiality
and will be implied under a term of good faith between the
parties, in the absence of a restrictive covenant.
2. Is there an obligation of Is there an express obligation on the ex-employee in his employment
confidence? contract to maintain secrecy?
On the basis that there isn’t, then discuss whether the confidential
information can still be protected
Are there trade secrets?
- If yes, then state that these can be protected by way of an implied
obligation of confidence after employment has ended. Therefore,
if a trade secret like confidential information, then there would be
an obligation on the ex-employee not to disclose or use this
information.
Is there confidential information?
State that information which is ‘in the head’ of the ex-employee
(which he remembers) is not subject to an implied obligation of
confidence.
- Has the employee taken anything physical (printed lists, customer
index card etc), then state that the courts tend to decide that this
is the subject of an implied obligation. (Draw on the case of Roger
Bullivant v Ellis & Others – where taking the customer index list
was seen to overstep the mark).
- Make the point that if there’s a mixture of information – ie. some
the employee remembers and some on a printed material then
the courts generally will impose an implied obligation over all of it.
3. Has there been an unauthorised Do the facts make it clear what the information will be used for?
use of the information? Is the person setting up a competing business?
4. Does the discloser have a valid Publication
defence? Prior to publication by the C may cause the information to lose its
confidential status.
Public interest (AG v v Guardian).
Disclosure is permitted if it is in the public interest.
, Eg. to reveal a crime or fraud.
Whistleblowing
Public knowledge
5. Consider remedies Injunction (incl. interim injunction).
This is important as it prevents disclosure.
If information has been published usually too late.
Vestergaard:
- D not liable as they had no knowledge that the information was
confidential.
- C will generally be entitled to final injunction where there’s a
sufficient risk of repetition.
- Springboard doctrines – aimed at preventing ex-employees
making a head start using confidential information.
- Duration should be limited.
Compensatory damages:
Compensate for losses suffered as a result of the disclosure.
Account for profits
Account for losses suffered as a result of the disclosure.
Order for delivery up
Destruction under oath
6. Consider other IPRS? If there’s been copying of technical information discuss how this may be
unauthorised copying of technical information.
If customer lists have been copied, then unlikely to be copyright, but
instead discuss the protection under a database right.
Consider whether there has been substantial investment in obtaining
date etc.
Has the person infringed the database right by extracting/and/or re-
utilising the date (Eg. copying?).
