[1] These concerns were canvassed by the majority in Maggbury Pty Ltd v Hafele Australia Ltd (2001) 185 ALR 152 at 157.
[2] Id.
[3] A Christie, 'Protect your IP Please' (2001) 15(2) NZ Business 44.
[4] P Lavery, Commercial Secrets: The Action for Breach of Confidence in Ireland (Round Hall Sweet & Maxwell, Dublin, 1996), p 49.
[5] Id.
[6] Id.
[7] Ibid, p 71. See further, O Mustad & Son v S Allcock & Co Ltd and Dosen [1963] 3 All ER 416, Franchi v Franchi [1967] RPC 149 House of Spring Gardens v Point Blank Ltd [1984] IR 611 and Lavery P 'Secrecy Springboards and the Public Domain' [1998] EIPR 93 at 95. 7 See Lavery (1996) p53.
[8] (2001) 185 ALR 152.
[9] Id.
[10] Clause 5.1
[11] Clause 5.2
[12] Clause 5.6.
[13] Clause 8.2 and 10.1.
[14] It was accepted in the Court of Appeal that Maggbury did not accept the payment on that basis.
[15] This demand was made pursuant to clause 11 of the confidentiality agreement.
[16] In the High Court, the majority did not accept that such a term could be implied. Rather it was the result arising from the proper construction of the agreements. See (2001) 185 ALR 152 at 159.
[17] (2001) 185 ALR 152 at 160.
[18] The trial judge found that there had been no misuse of information pertaining to the drawer mounted ironing boards. The injunctive relief was granted in relation to the wall mounted version.
[19] Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [35].
[20] Ibid at [36].
[21] Ibid at [12] citing Amoco Australia Pty Ltd v Rocca Bros Motor Engineering Co Pty Ltd (1973) 133 CLR 288 at 306.
[22] Ibid at [12].
[23] Ibid at [18].
[24] Id.
[25] Id citing Lord Buckmaster in O Mustad & Son v S Allcock & Co Ltd and Dosen [1963] 3 All ER 416 at 418.
[26] Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [14].
[27] This concept is supported in Biodynamic Technologies Inc v Chattanooga Corp 644 F Supp 607 (1986) at 611.
[28] [1963] 3 All ER 416. This case was decided on June 19, 19
[28] and was only later reported in 1963 on account of the references to it in the report of Peter Pan Manufacturing Corporation v Corsets Silhouette Ltd [1963] 3 All ER 407.
[29] Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [17].
[30] In NSW, severance is permitted by the Restraints of Trade Act 1976, s 4. That statute is taken to have 'confirmed and enlarged the capacity of the Court to enforce just and reasonable covenants which may on their face be too widely expressed'. See Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [19] citing Sheller JA in Kone Elevators Pty Ltd v McNay (1997) 19 ATPR ¶41-564 at ¶43,833.
[31] Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [19] citing Dean R The Law of Trade Secrets (LBC, Sydney 1990), p 394.
[32] (1995) 66 SASR 301. In that case Matheson J (at 326) read down the covenant by focusing on what the covenant was 'aimed at' while Doyle CJ (at 304) accepted that restraints should not be unenforceable merely because unlikely circumstances and those beyond the contemplation of the parties fell within them.
[33] Maggbury Pty Ltd v Hafele Australia Pty Ltd (unreported, Supreme Court of Queensland, Court of Appeal, 12 May 2000) at [20].
[34] Ibid at [26] - [29].
[35] See discussion below of a restraint with a 'limited temporal operation'.
[36] Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 185 ALR 152 at 163-164.
[37] 128 F 2d 632 (1942) per Judge Learned Hand at 637. A similar point had been made in Conmar Products Corp v Universal Slide Fastener Co 172 F 2d 150 (1949) at 156 per Judge Learned Hand.
[38] [1963] 3 All ER 416. This case was decided on June 19, 1928 and was only later reported in 1963 on account of the references to it in the report of Peter Pan Manufacturing Corporation v Corsets Silhouette Ltd [1963] 3 All ER 407.
[39] [1963] 3 All ER 416 at 418.
[40] See extract from the judgement of Atkin LJ at [1965] 1 WLR 1293 at 1315. The judgments of the Court of Appeal in O Mustad & Son v S Allcock & Co Ltd and Dosen have not been separately reported but extracts for the judgments can be found in the judgment of Roskill J in Cranleigh Precision Engineering Ltd v Bryant [1965] 1 WLR 1293.
[41] Id.
[42] [1963] 3 All ER 416 at 418.
[43] (2001) 185 ALR 152 at 165 citing Cranleigh Precision Engineering Ltd v Bryant [1965] 1 WLR 1293 and Concut Pty Ltd v Worrell (2000) 176 ALR 693 at 700-1.
[44] (2001) 185 ALR 152 at 165 citing Attorney-General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 at 285.
[45] (2001) 185 ALR 152 at 166.
[46] Clauses 5.1, 11.1 and 5.6.
[47] Picard v United Aircraft Corp 128 F 2d 632 (1942) at 637.
[48] Conmar Products Corp v Universal Slide Fastener Co 172 F 2d 150 (1949) at 156.
[49] (2001) 185 ALR 152 at 167.
[50] (2001) 181 ALR 337.
[51] (2001) 185 ALR 152 at 167.
[52] (2001) 185 ALR 1
[52] at 168; Esso Petroleum Co Ltd v Harper's Garage (Stourport) Ltd [1968] AC 269 at 298, 306-9, 316-7 and 328-9. Some commentators have considered this to be one of the most significant pronouncements of the case. See P Butt, 'Contractual Restraints of Trade' (2002) 76 ALJ 228. As to concerns over the courts interference generally in contracts freely bargained for, see A Legge, 'Confidentiality Agreements - the vanishing Cheshire cat?' (2001) 12 JBFLP 321 at 322.
[53] (2001) 185 ALR 152 at 168.
[54] Id.
[55] (2001) 185 ALR 152 at 166.
[56] Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 R.P.C. 203 at 315 per Lord Greene M.R.
[57] Lavery (1996), p 56.
[58] Id.
[59] The doctrine was recently applied in Dart Industries Inc Pty Ltd v David Bryar & Associates (1997) 38 IPR 384.
[60] [1967] RPC 375.
[61] [1967] 2 All ER 415.
[62] Terrapin Limited v Builders Supply Co. (Hayes) Ltd [1967] RPC 375 at 391.
[63] [1997] RPC 289
[64] Ibid at 396-7.
[65] Lavery (1996) p 49.
[66] See Mars UK Ltd v Teknowledge Ltd (1999) 46 IPR 248; K Davey, 'Reverse Engineering of Computer Programs' (1993) 4 AIPJ 59 at 65; G Hughes 'Reverse Engineering of Software' (1993) Law Institute Journal 1032 at 1032; and I Albrey 'Reverse Engineering - Current Issues' (1992) 5 (3) Australian Intellectual Property Bulletin 21.
[67] See however ss 74-77 of the Copyright Act 1968 (Cth), which raise particular concerns in the reverse engineering of spare parts; See also G Provan, 'Reverse Engineering and the Manufacture of Spare Parts' (1994) Building and Construction Law Journal 87.
[68] See A Mitchell, 'The Jurisdictional Basis of Trade Secret Actions' (1997) 8 Australian Intellectual Property Journal 134 at 147; See also Lavery (1996), p 49.
[69] (2001) 185 ALR 152 at 175
[70] Callinan J expressed his agreement with the rest of the Court at 174.
[71] (2001) 185 ALR 152 at 171. This is consistent with the findings of Byrne J, the trial judge.
[72] (2001) 185 ALR 152 at 170.
[73] Ibid at 171-172.
[74] Ibid at 172 citing Callinan J at 179 citing Biodynamic Technologies Inc v Chattanooga Corp 644 F Supp 607 (1986) at 611.
[75] (2001) 185 ALR 162 at 171 citing Howard F Hudson Pty Ltd v Ronayne (1972) 126 CLR 449 at 453 citing Esso Petroleum Co Ltd v Harper's Garage (Stourport) Ltd [1968] AC 269 at 331
[76] See (2001) 185 ALR 152 at 172.
[77] See (2001) 185 ALR 152 at 172-174.
[78] Id, citing by way of example, BHP Co Ltd v Hapag-Lloyd AG [1980] 2 NSWLR 572 at 581 and Queensland Co-operative Milling Association v Pamag Pty Ltd (1973) 133 CLR 260.
[79] (2001) 185 ALR 152 at 173.
[80] Id, citing British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 at 451.
[81] (2001) 185 ALR 152 at 174
[82] Id.
[83] Id.
[84] Id.
[85] Herbert Morris Ltd v Saxelby [1916] 1 AC 688 at 701.
[86] (2001) 185 ALR 152 at 177
[87] Id.
[88] Ibid at 178. The evidence before the trial judge was that both parties had received legal advice prior to entry into the confidentiality agreements.
[89] (2001) 185 ALR 152 at 178-179 citing Lord Pearce in Esso Petroleum Co Ltd v Harper's Garage (Stourport) Ltd [1968] AC 269 at 324.
[90] Rhone-Poulenc Agro, S.A. v Dekalb Genetics Corporation and Monsanto Company 271 F.3d 1081 (2001)
[91] (2001) 185 ALR 152 at 179, citing Biodynamic Technologies Inc v Chattanooga Corp 644 F Supp 607 (1986) at 611.
[92] (2001) 185 ALR 152 at 179.
[93] Id.
[94] K Mohr, 'At the Interface of Patent and Trademark Law: Should a product configuration disclosed in a utility patent ever qualify for trade dress protection? (1999) Intellectual Property Journal 201 at 206.
[95] Id. See also K Davey, 'Reverse Engineering of Computer Programs' (1993) 4 AIPJ 59 at 60 citing S Ricketson, The Law of Intellectual Property, (Law Book Co, Sydney, 1984), p 7.
[96] 644 F Supp 607 (1986)
[97] Ibid at 609.
[98] United States District Court of Florida, Miami Division
[99] 209 F.2d 493 (2nd cir.1953)
[100] Id.
[101] 203 F.2d 369 (7th Cir 1953).
[102] Ibid at 371.
[103] See Navajo Nation and Frye v Peabody Coal Company 2001 U.S. App. LEXIS 6052; 7 Fed. Appx. 951.
[104] 203 F.2d 369 (7th Cir 1953).
[105]
644 F Supp 607 (1986) at 611
[106] (unreported 3 May 2002, Supreme Court of New South Wales).