It is fair to say that the right of the legal personal representatives to bring the action was assumed, rather than decided, but even so it was an assumption necessary for the decision. On the other hand, as an interlocutory decision it might not have the same standing as a decision on a final hearing. I say "might not" because, these days, a decision to grant an interlocutory injunction requires the Court to be satisfied that there is a serious question to be tried and that the balance of convenience favours the grant of the injunction. Hence, these days, unless the judge has decided to determine a question of law for the purpose of the interlocutory decision, a decision to grant an interlocutory injunction does not involve the deciding of any question of law. It is not apparent from the report whether this approach was adopted in Duke of Queensberry v Shebbeare .
198 Morison v Moat (1851) 9 Hare 241; 68 ER 492 concerned an unpatented medicine made according to a secret formula. The formula was one invented by James Morison. James Morison entered a partnership with Thomas Moat, which was found to be a partnership for the marketing and sale of goods produced in accordance with the formula, but which did not have the formula itself as partnership property. James Morison disclosed the formula to Thomas Moat, subject to a bond which required Thomas Moat not to divulge or communicate the secret to anyone. James Morison introduced two of his sons into the partnership, died, and by his will left those sons the recipe and prescription for preparing the medicine. Those sons were the plaintiffs in the action. It appears that the sons were not his executors, as the will required those sons to enter into a bond with his executors to keep the secret (247 of Hare, 495 of ER). Meanwhile, Thomas Moat had, in what was found to be a breach of his obligations under the bond, disclosed the secret to his son, the defendant. The defendant began manufacturing and marketing medicine in accordance with the formula. The Vice-Chancellor, Sir George Turner, restrained the defendant (at 267 of Hare, 503 ER)
" … from making or compounding any medicines according to the secret in, &c, and from in any manner using the secret of compounding the said medicines or any part thereof."
199 His Lordship described the action of the defendant as "availing himself of the breach of faith and contract" (267 of Hare, 503 of ER) because it was Thomas Moat, not the defendant, who had entered into a contract not to disclose the secret. The important thing for present purposes is that the decision to grant the injunction at the suit of the plaintiffs would not have been possible if the right to bring an action to enforce an obligation of confidentiality was not something which could be devised by will. Again, however, it seems from 267 of Hare, 503 of ER that this decision was given after an interlocutory hearing. It is not apparent from the report whether the Vice-Chancellor was deciding any matters finally, for the purpose of that interlocutory decision.
200 O Mustad & Son v Dosen (decided in the House of Lords in 1928, but reported in [1963] RPC 41, [1964] 1 WLR 109 and [1963] 3 All ER 416) involved a skilled workman who acquired from his employer confidential information concerning a process for the manufacture of fish hooks. He entered a written agreement not to disclose "to anybody information of which he might get an insight in consequence of his work". The employer went into liquidation. The plaintiff purchased, from the company in liquidation, "the business including the benefit of the trade secrets and the pledges of secrecy." (110 of WLR, 417 of All ER). While the case turned on whether the plaintiff could obtain an injunction against use of that information after the information had been published in a patent specification, the House of Lords (Lord Buckmaster, Viscount Dunedin, Lord Phillimore, Lord Blanesburgh, and Lord Warrington of Clyffe) assumed, without expressly saying so, the standing of the plaintiffs to sue. The injunction involved in this appeal was a final injunction, not an interlocutory one.
201 Mense and Ampere Electrical Manufacturing Company Pty Ltd v Milenkovic [1973] VR 784 involved a disclosure to a die manufacturer of confidential information by an inventor, who was the first plaintiff. The die manufacturer was a partnership of two men. Later, the first plaintiff sold his business "together with all the plant equipment, stock, goodwill, confidential information and trade secrets of the business" (785) to the second plaintiff. Later again, the die manufacturer used the information to make a product which competed with a product manufactured by the second plaintiff. By that time, the two die manufacturers had taken their wives into the partnership, and all of the members of the partnership were defendants in the suit. McInerney J at 801-2 held that the die manufacturer had been bound by both an implied contractual term restricting the use of the information, and an equitable obligation to similar effect. At 801-802 McInerney J said:
" … I have … referred to the obligation of confidence [as] resting on "the defendants" and [as] as enuring for the benefit of "the plaintiffs".
I have done so having regard to the fact that the trial was conducted on the basis that if there was an obligation of confidence imposed, in the first instance, on the first two defendants it also bound the other two defendants, and that if the obligation enured originally only for the benefit of the plaintiff, Mense, it was now enforceable by the plaintiff company also. Of course, insofar as the obligation of confidence arises in contract, the obligation arose between the plaintiff, Mense, and the first two defendants only, but is, in my view, now enforceable also against the third and fourth defendants also." (italics added; obvious typographic errors in first paragraph quoted altered in square brackets to likely intended reading.)
202 While his Honour did not come to a final view about relief, his tentative view, at 804, was that the plaintiffs would be entitled to damages in respect of the continuing breach of confidence, an injunction against all defendants from future breaches, and an account of profits made by the defendants by reason of the breaches.
203 In Foster and Others v Mountford and Rigby Ltd (1976) 14 ALR 71 Muirhead J, in the Supreme Court of the Northern Territory, granted an ex parte injunction to restrain publication of a book which included secret information which Aboriginal people had disclosed to the defendant Mountford, an anthropologist, some 35 years previously. His Honour found that that information was given "by people, and on occasions which perhaps cannot now be identified, save in terms of general community, and in terms of period." (at 74). The plaintiffs were members of an unincorporated body known as the Pitjantjara Council. While some of them remembered the anthropologist's visit 35 years previously, they did not claim to have personally been the ones who had disclosed the secrets to him. The concern of the plaintiffs was (at 73):
"… that the revelation of the secrets to their women, children and uninitiated men may undermine the social and religious stability of their hard-pressed community … there is still urgent desire in these people to preserve those things, their lands and their identity…"
204 His Honour quoted, at 75, the words of Denning LJ in Fraser v Evans [1969] 1 All ER 8 at 11, that in an action for breach of confidence:
" … the party complaining must be the person who is entitled to the confidence and to have it respected. He must be a person to whom the duty of good faith is owed."
205 His Honour went on to say, at 75:
"I have considered whether the plaintiffs are entitled to proceed in this action, suing or claiming as members of the council, rather than in a relator action, but they sue on their own behalf, not merely as members or representatives of the Pitjantjara people, if they can be so identified. They allege that they, as individuals are threatened with damage - it is not a case where they seek only to prevent a public nuisance, or to restrain interference with a public right. It is not, in my view, a claim that can only be pursued by a relator action brought in the name of the Attorney-General (see Boyce v Paddington Borough Council [1903] 1 Ch 109; R v Commissioner of Police; Ex parte Blackburn [1968] 2 QB 118 ; [1968] 1 All ER 763; and Attorney-General v Independent Broadcasting Authority [1973] 2 WLR 344 ; [1973] 1 All ER 689, so without at this stage having heard argument on this, I consider the plaintiffs are entitled to bring this action in its present form."
206 The process of reasoning in Foster is, with all respect to his Honour, not fully articulated. It is evident from his Honour's decision that, in accordance with the relevant practices of the Pitjantjara people, the plaintiffs had come to be people who were entitled to know the relevant secrets. There are two possible ways in which the conclusion that the plaintiffs had standing might have been arrived at. One is that that entitlement to know the secrets brought with it an entitlement to sue to protect them. The second is that it is enough, for a plaintiff to have standing to sue, that the plaintiff will suffer significant damage as a consequence of a breach of an obligation of confidence, no matter to whom that obligation of confidence might be owed. Given that his Honour quoted the principle I have set out at para [204] above, it does not seem that he was relying on the second way of reaching the conclusion. The second way of reaching the conclusion would, in any event, have involved a significant change in the law as previously understood.
207 In Foster any obligation of confidence arising between Dr Mountford and the people who originally disclosed the secrets to him would have been an equitable one - there was no suggestion that there was any contract at all between them. Nor was there any hint that there had been an assignment of the benefit of any obligation of confidence by any formal conveyancing means. In that way, Foster accepts a wider basis, for the standing of a plaintiff seeking to enforce an obligation of confidence, than the plaintiff in the present case needs to have title to sue.
208 While the decision was an ex parte one, it has been referred to several times by judges without any hint of disapproval, both first instance judges (Milpurrurru, Marika, Payunka & Public Trustee for the Northern Territory v Indofurn Pty Ltd, Bethune, King & Rylands (1994) 54 FCR 240 at 247; (1994) 130 ALR 659 at 664; Chapman v Luminis Pty Ltd (No 4) (2001) 123 FCR 62, at 136) and in the Full Court of the South Australian Supreme Court (Coulthard v State of South Australia (1995) 63 SASR 531 at 546 per Debelle J). More significantly, it has also been referred to in the High Court: Johns v Australian Securities Commission (1993) 178 CLR 408 at 460 per Gaudron J; Western Australia v Ward (2002) 213 CLR 1 at [61], 85. The latter reference, in the joint judgment of Gleeson CJ, Gaudron, Gummow and Hayne JJ, is of particular significance. Their Honours, having decided that a particular claim made by Aboriginal plaintiffs to a right to maintain, protect and prevent the misuse of cultural knowledge, going beyond a right to deny or control access to land or waters, was beyond the claims permitted by the Native Title Act 1993 (Cth), continued:
"That is not to say that in other respects the general law and statute do not afford protection in various respects to matters of cultural knowledge of Aboriginal people or Torres Strait Islanders. Decided cases apply in this field the law respecting confidential information, copyright and fiduciary duties."
209 Foster was cited as authority for the second sentence just quoted. I do not believe that their Honours would have proceeded in that way had they thought that Foster contained a fatal flaw because on a proper analysis the plaintiff in Foster had lacked standing. While that use of Foster in the High Court's decision in Western Australia v Ward was not part of the ratio decidendi, it is of considerable persuasive force.
210 Millwell Holdings Ltd v Johnson (1988) 12 IPR 378 was a decision of Gault J in the High Court of New Zealand. It was an application by the purchaser of the assets and goodwill of a company which had gone into receivership, seeking to restrain an alleged breach, by former promoters, directors and employees of and consultants to the company, of an equitable obligation of confidence they had owed to the company (391). His Honour granted an interlocutory injunction, saying, at 384: "Such rights as may be found to exist seem to be assignable: O Mustad & Son v Dosen [1963] RPC 41".
211 Askew v Seventh Granite Pty Ltd (unreported, Federal Court of Australia, Olney J, 1 September 1995) was an action brought seeking to enforce a term in a product distribution agreement requiring the distributors to keep certain information confidential. Olney J struck it out, on the ground that the applicants had become bankrupt, and
" …any property rights which they may have had in respect of the trade secrets at the respective dates of their bankruptcies had vested in their respective trustees in bankruptcy and that any trade secret which came into existence after they became bankrupt thereupon vested in their trustees."
212 His Honour relied upon the decision in In Re Keene [1922] 2 Ch 475, which had held that a debtor who had become bankrupt was bound to disclose to his trustee in bankruptcy certain secret formulas, used in a business in which the debtor was a partner, because the formulas were part of the goodwill and assets of the business. In Re Keene dealt with entitlement to the secret information itself - it did not deal with whether any choses in action entitling the bankrupt to enforce an obligation of confidence had vested in the trustee in bankruptcy. Even so, Olney J treated those rights as flowing to the trustee in bankruptcy as well as the right to be informed of the confidential information itself. He did that on the basis that section 116(1) Bankruptcy Act 1966 (Cth) makes divisible amongst the creditors