AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
There are, however, discrete instances where a claim can be brought in Australia. This includes, for example, if a claim: • is against a company that is carrying on busi - ness in Australia; or • is against an individual whose employ - ment contract has a choice of jurisdiction or against a company whose contractual arrangements include a choice of jurisdiction that includes Australia.
In addition to the implied obligations in an employment contract, including express terms for the ownership and treatment of IP in employ - ment contracts provides further protection for employers. 2.3 Joint Ventures Obligations between joint venturers in relation to trade secrets will usually be covered in the contractual arrangements between the parties. It is common in Australia for joint-venture agree - ments to: • distinguish between background IP and pro - ject IP; • include obligations not to disclose the other parties’ confidential information; • identify who owns project-specific IP; and • how project-specific IP can be used. 2.4 Industrial Espionage Claims of industrial espionage in Australia will proceed in the same manner as any other pro - ceedings relating to trade secrets. The types of claims available will depend upon the specific facts of the case, including whether the trade secrets were taken by a former employee or business partner. In considering the appropriate remedy to award a successful plaintiff, the court will have regard to the conduct of the defendant, including whether there was an intentional breach of confidential information, which can lead to exemplary dam - ages (in the case of a breach of contract) and a broader form of injunction.
2. Misappropriation of Trade Secrets
2.1 The Definition of Misappropriation In order to make out a claim of trade secret mis - appropriation, the owner of the trade secret must show that there has been, or is threatened to be, an authorised use or disclosure of the informa - tion which causes detriment to it (Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health [1989] FCA 556). It is not necessary for the owner of the trade secret to show that the defendant gained access through unlawful means in order to commence proceedings. 2.2 Employee Relationships The implied obligations in an employment con - tract are an important legal duty that protects employers from misconduct of employees. An employee will be in breach of their fiduci - ary duties if they engage in activities which are incompatible with the fulfilment of their duty or involve an opposition or conflict between their interest and their duty to their employer.
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