Lesson 2: How Copyright Intersects with other Forms of IP

v5HOW DO COPYRIGHT AND CONFIDENTIAL INFORMATION/TRADE SECRETS INTERSECT?

Unlike patent protection, copyright protection is not dependent upon publication  (i.e. disclosing the work publicly). To the extent that a valuable commercial secret is committed to writing rather than to memory and is not publicly disclosed, the written document containing the confidential information/trade secret can be protected by both copyright law and by the law of confidential information/trade secrets. If the document is reproduced without permission, you could consider your options under both forms of IP.

EXAMPLE

A case in point is the Australian court decision in Interfirm Comparison (Australia) Pty. Ltd v. Law Society of New South Wales. The Interfirm Comparison company was in the business of developing confidential surveys and questionnaires for its clients. One prospective client was the Law Society of New South Wales that wanted to survey its membership. In its bid for the contract with the Law Society, Interfirm Comparison provided the prospective client with a sample questionnaire, in circumstances that suggested it was disclosing the sample in confidence. The Law Society gave a photocopy of the questionnaire to a third party competitor. Interfirm Comparison sued for copyright infringement as well as for breach of confidentiality under the law of confidential information/trade secrets. It was successful on both counts.

Copyright Confidential information/trade secrets

Copyright infringement requires that you show that the work was copied either exactly or in a substantially similar way. In addition, in countries that require ‘fixation’ of the work, a physical manifestation of your creative expression must exist.

Confidential information/trade secrets law can capture verbal disclosures of the secret. Depending on the circumstances, copyright may not be broad enough to capture a verbal disclosure of confidential information/trade secrets.

Confidential information/trade secrets requires that you prove that the person who disclosed was under an ‘obligation of confidence’ towards you i.e. that she promised, either expressly or impliedly, not to disclose your secret.

It is sometimes difficult to prove that there was an obligation of confidence on the person who disclosed. It may be easier to prove that your copyright work was copied without your permission since copyright law doesn’t require that the copier be under any pre-existing obligation towards you.

Last modified: Monday, 18 September 2017, 4:37 PM