More than one form of intellectual property rights may apply to protect property misuse. For instance, an unauthorised disclosure or use of confidential information may overlap with infringement of copyright. This publication discusses when one form of intellectual property may serve to provide protection against wrongdoing.
Copyright law consists is a bundle of exclusive rights that permit the owner of copyright to prevent others reproducing their copyright work. Among the exclusive rights are the right to:
Infringement of copyright takes place when a person without the licence of the copyright owner exercises one of the exclusive rights listed above.
In the event that the copyright work also contains confidential information, and that confidential information is also disclosed or misused, the law of confidential information may be deployed to restrain the wrongdoer from disseminating the information contained in the copyright work. This is because protection of the information extends beyond the copying the work as copyright does, and will serve to protect the information conveyed by the copyright work. The test for infringement in copyright cases usually involves a literal comparison of the original copyright work and the parts of it which have been copied.
Thus, reproductions of summaries, précis and opinions in respect of a copyright work may constitute an unauthorised disclosure of confidential information simply by communicating the contents to a third party, where the information in the copyright work remains confidential.
This application of the law may be of enormous use where particular types of copyright works are copied. For instance, proprietary software source code is usually considered confidential information as a matter of course by courts. Supposing individual copies the code but then creates another version of it, it is likely that the individual could be restrained from exploiting the new version on the basis of misuse of confidential information alone
In this way copyright and unauthorised disclosures of confidential information are separate causes of action that may give rise to a good claim. These separate areas of intellectual property must be assessed independently of each other.
The interplay between patent and confidential information is useful in the instance of a patentable invention that consists of parts or components which are susceptible to being ascertained by reverse engineering. In such a case, the patent application may, where possible be drafted to exclude disclosure of aspects that may be reverse engineered. In this way one combines the benefit of both patent protection and confidential information, if it is possible for the invention at hand.
The monopoly granted by the patent remains in force and purchasers and competitors are unable to determine the missing link to completely reverse engineer the invention. For instance, suppose a new method of manufacturing an article may be improved by a particular mixture of alloys for strength. The mixture of alloys may remain confidential, provided it is not required to form part of the requirements for patentability, and not disclosed in the application. The focus is on the key parts of the invention. Furthermore the confidential formula for the alloy may be licensed separately to the patent.
Preservation of confidentiality during the creation of patentable inventions is key, particularly in the event that the idea is easily implemented. Equally, because there is no basis at law to protect a mere idea, once the idea exposed to the public, a cause of action would not lie for someone else taking the idea and using it for their own purposes.
In the course of commercial transactions, to remove any doubt from the relationship and to preserve hard-earned know-how, provisions dealing with confidential information and restrictive covenants are usually expressly incorporated into the contract.
These provisions tend to mirror or extend common law protection, but in some instances go too far and amount to unlawful restraints of trade. To the extent that the contract deals with confidential information, it creates an independent ground for protection to that provided by the general law which includes, for instance, one where a fiduciary duty is owed by one party to another.
Non-Disclosure Agreements
Contracts restricting the disclosure of confidential information commonly called Non-Disclosure Agreements. These types of agreement generally have a point of reference, such as a product, service or some other subject which is not itself disclosed in the Non-Disclosure Agreement. It is reasonable to expect the contract to provide how information relating to the product or service will be disclosed and used, along with an entire agreement clause and a jurisdiction clause.
The entire agreement clause is designed to prevent some collateral arrangement being argued in the event of disputes, and the jurisdiction clause sets the forum in which contractual disputes will be heard. Such contracts are central in licensing ‘pure’ confidential information (know-how), and such agreements should certainly impose limitations purpose of the disclosure to the recipient of the information. It may be appropriate to incorporate anti-competition provisions in some cases.
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