AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
circles that normally deal with the kind of information in question; • having commercial value because it is secret; and • having been subject to reasonable steps under the circumstances, by the person law - fully in control of the information, to keep it secret. International treaties apply only to the extent that they are incorporated into domestic law. 1.2 What Is Protectable as a Trade Secret Information will be a trade secret if it has the necessary quality of confidence and is not within the public domain. Such information can include technical information such as software algo - rithms, data, formulae, manufacturing processes and commercial information such as client and customer lists, information relating to pricing, sales forecasts and advertising strategies. 1.3 Examples of Trade Secrets Information in Australia that has been found to have the necessary quality of confidence to be a trade secret has included, for example: • client, customer and supplier lists; • designs such as building plans; • marketing materials;
matter of common knowledge or in the public domain. Secondly, the information must have been imparted in circumstances identifying an obligation of confidence. Additionally, the infor - mation in which confidentiality is claimed must be capable of being identified with a degree of specificity. 1.5 Reasonable Measures In Australia, a trade secret owner is required to take reasonable measures to keep the informa - tion secret in order for the information to qualify as a trade secret. A court will consider what measures the owner of the information took to guard the secrecy of the information, eg, by way of non-disclosure agreements, IT security measures, control - ling access to facilities. Courts have held, for example, that disclosure of information without imposing an obligation of confidence will mean that the information does not have the necessary quality of confidence and is therefore not a trade secret. Similarly, if the information is disclosed in a document, eg, a manual, that is not restricted, then the information does not have the neces - sary quality of confidence. In making an assessment as to whether a com - pany took reasonable measures to protect its trade secrets, Australian courts will consider all the facts and circumstances of the case includ - ing, for example, the nature and scale of the
• mathematical spreadsheets; • information relating to pricing;
• sales forecasts; and • business information.
company and type of information. 1.6 Disclosure to Employees
1.4 Elements of Trade Secret Protection An obligation of confidence will arise if it includes the following elements (Dart Industries Inc v David Bryar & Associates Pty Ltd [1997] FCA 481). Firstly, the information must have the necessary quality of confidence and not be a
In Australia, it is implied into all employment con - tracts that the employee will act with good faith towards their employer and that the employee has duties of confidence to their employer.
14
CHAMBERS.COM
Powered by FlippingBook