Blackmagic Design Pty Ltd v Overliese [2010] FCA 13

FEDERAL COURT OF AUSTRALIA

Blackmagic Design Pty Ltd v Overliese [2010] FCA 13 Citation: Blackmagic Design Pty Ltd v Overliese [2010] FCA 13

Parties: BLACKMAGIC DESIGN PTY LTD (ACN 098 098 287) v IAN OVERLIESE, JEROMY YOUNG, ATOMOS AUDIO PTY LTD (ACN 127 008 431) and CLARE YOUNG

File number: VID 328 of 2008

Judge: JESSUP J

Date of judgment: 22 January 2010

Catchwords: EQUITY − Confidential information − Senior employee having access to confidential information of employer − Use of information by employee in contemplation of establishing own business − Sharing of information with proposed partner − Proposed business potentially in competition with employer − Whether employee and partner should be restrained from using information. INJUNCTION − Use by senior employee of employer's confidential information for employee's own purposes − Information recovered under search order and employee restrained by interlocutoryinjunction − No loss or damage suffered by employer − Whether permanent injunction should go. CORPORATIONS − Use by senior employee of information obtained as such to gain an advantage for himself and his proposed business venture − No advantage in fact gained − Whether employee should be restrained by injunction. EQUITY − Fiduciary obligation of senior employee − Employee allegedly coming upon an idea that had the potential to benefit employer − Whether employee obliged in equity to inform employer of idea − Whether fiduciary obligations prescriptive − Whether employer entitled to equitable damages for loss of benefit of idea. TRADE PRACTICES − Misleading conduct − Employee advising employer as to possibility of particular product development − Whether advice misleading − Whether advice given in employee's capacity as such or in capacity as director of employee's own company recently established − Whether advice given in trade or commerce. INTELLECTUAL PROPERTY − Copyright − Senior employee with employer's copyright works on private computer to facilitate work at home − Resignation of employee from employment − As former employee, undertaking task of removing works from private computer − Back-ups made in pursuance of this task − Whether implicitly licensed to make copies for that purpose − Whether infringement of copyright. CONTRACT − Restraint clause in contract of senior employee − Whether the term "business, activity or operation" apt to include preparatory activities in establishment of new business.