Secrets Case Law Notes

Coco [1969] FSR 415 VERSUS AN Clark (Engineers) Phillips Phillips [2012] UKSC 28 VERSUS VERSUS Mulcaire News of the World Saltman Engineering (1948) 65 RPC 203 VERSUS Campbell Engineering Secrets KEY RULE: Classic 3 part test for breach of confidence. FACTS OF THE CASE: Coco designed a new 'Coco' moped with new engine parts. Showed prototype, drawings and other technical info to Clark with the view that Clark would manufacture engine parts After a few months negotiation Clark broke off discussions. Clark brought out their own moped which used some of Coco's moped features No contracts were signed Judge, Megarry, held that parts 1 and 3 of the Coco v Clark test failed and so there was no breach of confidence. This is not the critical part of the case (unless you are Coco)! NOTES: Three part test - the Coco v Clark test established i) info must have quality of confidential information about it ii) information imparted on assumption of confidence, iii) must be unauthorised use of information to the detriment of party communication it STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Commercially sensitive information is IP, whereas personal information isn't as far as the Senior Courts Act 1981 is concerned FACTS OF THE CASE: Mulcaire tapped phones of various people including Nicola Phillps (a former publicist for Max Clifford) Phillps demanded to know who authorised Mulcaire and who he gave the info to Mulcaire used right not to self-incriminate as a defence. Success of his defence depended on whether private / personal information is intellectual property - if it is Section 72 of the Senior Courts Act 1981 removes the privilege against self-incrimination Mulcaire was forced to disclose his sources (and self-incriminate) as a lot of Ms Philips' phone messages contained commercial information and so was IP. NOTES: UKSC held that technical and commercial secrets are IP but that personal and private secrets are not Breach of Confidence has much wider scope than the definition of IP in the SCA1981 STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Breach of contract occurs outside of any contracts FACTS OF THE CASE: Drawings for tools which were given to the defendant to enable the tools to be made. Punches for leather pouches The plaintiff owned the copyright in the drawings, and the defendant was a subcontractor. When the defendant, having made the tools it was contracted to produce, used the drawings for its own purposes there was no privity of contract between the plaintiff and defendant Provided that others would have to spend time and effort in deriving the information for themselves, it makes no difference that there is nothing special about the information. Nor is it necessary for the parties to be in a contractual relationship: the courts will restrain the use of confidential information where it is unfair and lies outside the use contemplated by the person entrusting the other party with that information. NOTES: Birth of modern Breach of Confidence Action from this case Judge affirmed that the information must not be in the public domain. Materials in the public domain can be used to create something new and original STATUTES AND AREAS OF LAW: Breach of Contract O. Mustad & Sons [1963] 3 All ER 416 VERSUS Dosen and Allcock Schering Chemicals Ltd [1982] QB 1 VERSUS Falkman Ltd Fraser [1983] 2 All ER 101 VERSUS Thames TV Secrets KEY RULE: Just because a patent is filed does not mean there is also confidential information that is not disclosed in the specification. Information disclosed in a patent application is no longer confidential FACTS OF THE CASE: Mustad, appellant, bought a company (Thoring) with trade secrets including a machine to make fish hooks Dosen was employed by Thoring and was under an obligation of confidence Dosen then employed by competitor company Allcock & Co Ltd Mustad sought injunction to prevent Dosen revealing trade secrets to Allcock Mustad had applied for a patent for the machine in Germany and it was published in 1926 Dosen & Allcock argued that as published in patent application it was no longer confidential information Mustad said that Dosen had more information than was in the published patent application Mustad won the case and gained the injunction but Dosen / Allcock could use the information in the patent. NOTES: Vestergaard v Bestnet Spring board changes modified ratio here STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Unlike patent law, secrecy specification is not an absolute one in Breach of Confidence cases even information in the press is not 'in the public domain' and can attract protection if it is compiled FACTS OF THE CASE: Schering sold the drug Primodos which was subsequently believed to cause adnormalities in unborn children. It hit the press! Schering employed Falkman Ltd to train their executives in how to handle the bad publicity One of Falkman's employees who was at the train the trainer sessions, Mr Elstein, wanted to make a documentary on Primodos. Schering refused and Mr Elstein made it anyway claiming he only used information that was already in the public domain (in the press) Majority of judges held that even though the information was publicly available Schering put it together for Mr Elstein and he was under a duty of confidence to Schering NOTES: Unlike patent law, secrecy specification is not an absolute one in Breach of Confidence cases Lord Denning MR dissented in this case but was in the minority STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Outlined nature of confidential information - must be original and developed. Fact it is orally communicated does not matter (even though that may make proving communication harder) FACTS OF THE CASE: Fraser had idea for TV show about a rock band. Idea orally communicated to a script writer, who communicated to a producer and to the television company. Script writer, producer and Thames TV all sued for breach of confidence Fraser won the case NOTES: Fact that material was orally communicated does not affect the quality of the idea or its level of protection Idea must be sufficiently developed and have a significant degree of originality Not every stray mention of an idea from one person to another is protected. Must meet Coco v Clark test. Compare with De Maudesly where the information was not of sufficient detail STATUTES AND AREAS OF LAW: Breach of Confidence Monika Telling (lesbian lover of Stephens) Stephens [1988] 2 WLR 1280 Attorney General (No 2) [1988] 3 All ER 545 De Maudsley [1996] FSR 447 VERSUS VERSUS VERSUS Avery Guardian Palumbo Secrets KEY RULE: Homosexuality is not immoral FACTS OF THE CASE: The parties had been friends and had discussed their sex lives. Stephens had a lesbian affair The defendant took the information to a newspaper and its editor, the second and subsequent defendants who published it. The plaintiff sought damages saying the conversations and disclosures had been confidential. The defendants appealed against a refusal to strike out the claim.saying the actions were immoral and so excluded from protection Avery relied on old case law that said that lesbian relationships were immoral and other case law which says that immoral information is not protected by breach of confidence. Judge said society has changed, we must live in the present and nowadays lesbian relationships are not considered immoral. NOTES: Information will not be 'confidential' if it is immoral. However this will be found very rarely. On facts, fact that Stephens was in a homosexual relationship was not immoral. STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Information in the public domain outside the UK is not confidential FACTS OF THE CASE: Former UK spy who published his memoirs. Publication was outside the UK. Guardian (and Observer) started serialising the book This is the case in House of Lords where the government tried to get an injunction preventing UK newspapers from publishing. Before this successful injunctions obtained preventing UK newspapers reporting on this book despite being widely published worldwide and available on internet Held (finally) that the information was not confidential elsewhere (outside the UK) and so the data didn't have the 'necessary degree of confidence about it' NOTES: Judges also affirmed that when 3rd parties (newspapers in this case) come upon information which they know to be confidential they must keep it confidential. Obiter in this case as information was not confidential. Lord Keith said "Even if information has been already published abroad, may still be secret if publishing it in UK would bring it to attention of more people in UK" STATUTES AND AREAS OF LAW: Breach of Confidence Secrets KEY RULE: Vague, general and undetailed information will not be regarded as confidential FACTS OF THE CASE: Claimant revealed idea for a new nightclub to the defendant at a dinner party. Information included i) club would open all night long, ii) top DJs would play there iii) would be large and decorated accordingly iv) that there would be separate areas for dancing and drinking Defendant used that information to open the Ministry of Sound Judge held that the information communicated was too vague, general and lacking in originality NOTES: An example where confidential information requirements were not satisfied Fact that it was communicated verbally was not important Fact that communicated at dinner party was important - 2nd Coco v Clark test. Information not communicated with assumption of confidence. If De Maudsley had said that the information was confidential it would have helped his case. Apart from opening all night none of the ideas were new Compare with Fraser v Thames TV where the information was of sufficient quality. STATUTES AND AREAS OF LAW: Breach of Confidence Prince Albert (1849) 64 Eng. Rep. 293 VERSUS Strange Hivac [1946] 1 All ER 350 VERSUS Park Royal Scientific Cranleigh Precision Engineering [1965] 1 WLR 1293 VERSUS Bryant 

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