Know-how versus confidential information

In an article entitled “is your confidential information really confidential” we discussed what is and isn’t confidential information and how this term is nearly always misused.  This article discusses a category of confidential information known as “know-how” and what rights employers have over it. [Read more…]

Copyright, code libraries and ownership

In Australia, copyright automatically vests in certain types of literary works, including computer programs and artistic works, upon their creation.  The general rule is that the owner of copyright in a literary or artistic work is the author of that work.[1]  An exception to this rule arises if the work is made by an employee pursuant to the terms of their employment.  In this case, the employer owns the copyright subsisting in the employee-generated work.  However, the distinction of whether an employee has created the work pursuant to the terms of employment, is not always clear.  This issue was considered in the case of Redrock Holdings Pty Ltd and Hotline Communications Ltd v Hinkley [2001] VSC 91 (Redrock). [Read more…]

Tort of conspiracy & confidential information

The tort of conspiracy has been well established in Australia by the High Court, however it is a fairly uncommon cause of action.  The High Court has endorsed some early UK decisions with respect to damage, including the cases of Mogul Steamship Co v McGregor Gow & Co [1892] and Sorrel v Smith [1925] AC 700.  [Read more…]

Injunctions for breach of confidence

The recent Federal Court case of Howden Australia Pty Ltd v Minetek Pty Ltd [2019] FCA 981 highlights some of the challenges faced by applicants when attempting to establish that a breach of confidential information has taken place, and the steps required to obtain an interim injunction prior to the ultimate determination of a matter. [Read more…]

Computer-implemented inventions and patentability

The question of patentability of so called “computer-implemented” inventions has been the subject of legal debate in Australia for a number of years.  The September 2018 of the Full Court of the Federal Court in  Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161 was long anticipated by intellectual property lawyers and patent attorneys alike, who were eager to see a more substantial analysis about the patentability of computer-implemented inventions.  However, the expanded five-judge bench of the Full Federal Court expressly declined to provide this guidance because they did not believe the case raised any significant question of principle in this regard, and focussed  on ‘manner of manufacture’ as a ground for revocation. [Read more…]

IP contracts now subject to restrictive trade practice provisions

Agreements providing for the conditional licensing or assignment of intellectual property (IP) rights are now subject to the restrictive trade practice provisions of the Competition and Consumer Act 2010 (Cth) (CCA).  On 13 September 2019 section 51(3) of the CCA was been repealed removing the exception which applied to the licensing and assignment of IP.   This means commercial transactions involving the assignment of IP rights will be subject to the anti-competitive prohibitions, as are other transactions involving property. [Read more…]

Not so swole – removal of trade marks for non-use

In the recent case of Swole Gym Wear Group Pty Ltd v Swole O’Clock Ltd [2019] FCA 685, Swole Gym Wear Group (Applicant) applied for an extension of time to file a notice of appeal for the removal of their trade mark 1702160, which was registered for the word “SWOLE” in class 14, from the Register of Trade Marks pursuant to s92(4)(a) of the Trade Marks Act 1995 (Cth)(Act). [Read more…]

Confusing marks – Sensis v Senses

In the recent case of Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719 (24 May 2019) (Sensis v Senses) the moral of the story might be that if your brand name is so similar to another company that your customers could confuse or are confusing their name with yours… you might be in trouble.  This was the case in Sensis v Senses where Senses Direct Mail and Fulfillment Pty Ltd (Respondent) was held to have infringed the registered marks of Sensis Pty Ltd (Applicant) owner of well-known directory brands, including the Yellow Pages and White Pages. [Read more…]

Security for legal costs in cross-claims for patent invalidity

The usual position in relation to security for costs in disputes before the Federal Court of Australia is that a respondent (including a cross-respondent) may make an application for security for its legal costs to insulate itself if it is successful in defending the allegations made by an applicant against it.  What is the situation regarding security for costs where a respondent ‘cross-claims’ for revocation of a patent because it alleges that it is invalid and should never have been granted in the first place? [Read more…]

Use of a competitor’s confidential information

Many businesses try to increase market share by employing a competitor’s member of staff who may bring with them relationships and information acquired over the years.  Employees owe fiduciary duties to their employers meaning, among other things, that an employee cannot make a personal gain by using confidential information acquired in the course of their employment.  If an employee makes a personal gain by using their employer’s confidential information, the employer may be entitled to an account of profits, meaning the employee must pay the employer the amount of profit made as a result of the breach. [Read more…]

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