AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
The absence of any relevant statutory or regula - tory regime means that there is no prescribed duration for trade secret protection (in contrast to other forms of IP) and there is no registration process (such as exists for, eg, patents, designs and trade marks). 1.12 Overlapping IP Rights It is not uncommon in Australia to assert trade secret rights in conjunction with a claim of cop - yright ownership. For example, internal docu - ments relating to the design of an electronic gaming machine can attract both protection as “work” under the Copyright Act 1968 (Cth) and as a trade secret. If the information is taken by an employee, claims for breach of contract, breach of fiduciary duty and (if the employer was a corporation) breach of the Corporations Act will also apply. 1.13 Other Legal Theories Claims in relation to trade secrets can be com - menced in Australia where there is use or threat - ened use of the trade secret without consent. A number of trade secret cases commenced each year in Australia relate to employee mis - appropriation of trade secrets whereby the employer commences proceedings to recover its trade secrets and stop any potential use by the former employee. In addition to claims against a former employee, including for breach of employment contract, a third party may be liable in relation to a breach if they are deemed to have knowledge of it. Aus - tralian courts have held that the following will satisfy the knowledge limb: • actual knowledge; • wilful blindness;
• wilfully and recklessly failing to make such inquiries as an honest and reasonable person would make; and • knowledge of circumstances which would indicate the facts to an honest and reason - able person. Additionally, a third party may be liable for inducement for breach of contract. In Australia, this involves a defendant inducing another per - son to break a contract with the plaintiff. In order to make out a case for inducement for breach of contract, the plaintiff must show that the defend - ant procured or induced the breach of contract and that there is proof of the damage caused by the inducement (Daebo Shipping Company Ltd v The Ship Go Star (2012) 207 FCR 220). 1.14 Criminal Liability Misappropriation of trade secrets are pursued as civil claims in either the Federal Court or the Supreme Court of the relevant state or territory. An exception is where the misappropriation of the trade secrets is by a director or other officer or employee of a corporation who has used their position to obtain the information, and the use of the trade secrets has a dishonesty element, such that there has been a likely breach of Sec - tion 184 of the Corporations Act, or where the misappropriation of trade secrets involves a foreign government principal under the Crimi - nal Code Act 1995 (the Code). If found guilty of either offence, the court can impose a maximum penalty of up to 15 years imprisonment. 1.15 Extraterritoriality Generally, any misappropriation must be within Australia in order for a trade secret owner to bring a claim under Australian law.
16
CHAMBERS.COM
Powered by FlippingBook