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Law Notes Intellectual Property Law Notes

Secrets Case Law Notes

Updated Secrets Case Law Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 446 pages

My notes cover all the main cases in intellectual property law. They are arranged so that each case occupies 1/3rd of a piece of A4 paper with the name of the case on one side and the details (key rule, facts of case, notes and key parts of the relevant statute) on the other side.

I found that using 'flash cards' really helped with learning the material and allowed my friends and family to test me. All I had to do was to print out the notes double sided on quite thick paper / thin card and...

Available here

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Coco VERSUS AN Clark (Engineers)

[1969] FSR 415

Phillips VERSUS Mulcaire

Phillips VERSUS News of the World

[2012] UKSC 28

Saltman Engineering VERSUS Campbell Engineering

(1948) 65 RPC 203

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 VERSUS Dosen and Allcock

[1963] 3 All ER 416

Schering Chemicals Ltd VERSUS Falkman Ltd

[1982] QB 1

Fraser VERSUS Thames TV

[1983] 2 All ER 101

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...

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