The High Court recently considered the requirements needed to bring a successful claim for breach of confidence, providing a useful reminder of the importance of taking adequate steps to protect commercially valuable or sensitive information.

The law of confidential information is often the only form of protection available to businesses or individuals for sensitive or commercially valuable information.  Unfortunately, there is often a misconception about this law. Individuals often do not take the correct steps to protect confidential information, or have a mistaken belief that the information they have disclosed should be kept confidential.

What constitutes confidential information?

Generally speaking, if a person receives information in confidence, they cannot take unfair advantage of that information without first obtaining the consent of the person who has disclosed that information.  

In order for information to be protected, it must firstly possess the necessary quality of confidence. This means the information must be capable of clear definition (i.e. identifiable information) and may not be public property or public knowledge. In some cases, such as a new invention or a secret formula, it will be easy to state with certainty that the information has the required quality of confidence. In other circumstances, such as a secret recipe that could potentially be reverse engineered, this will not be so clear cut. The information may possess some elements that are clearly of public knowledge, such as the main ingredients of a recipe, but also has some added originality, novelty or ingenuity that gives it the necessary quality of confidence.   

The information must also be disclosed in circumstances where an obligation of confidence has been imposed.  Ideally, this would be expressly agreed in a confidentiality or non-disclosure agreement. But, there may be other circumstances where an obligation to keep the information confidential may be implied.

The case

The case (Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd, Friday TV AB and NBC Universal Global Networks UK Ltd) involved a Danish national, who had developed a concept for a new game show called ‘Minute Winner’. The basic idea of the show centred on members of the public being chosen to complete a task within one minute, in return for prizes.

In 2005, the claimant met with Friday TV, a Swedish TV production company, to discuss a new TV format he had devised called ‘Celebrity Birthday’.  It was alleged by Mr Banner, that ‘Minute Winner’ was also discussed during that meeting under the express understanding that any discussions during that meeting would be kept confidential. 

Friday TV denied that the concept of ‘Minute Winner’ was discussed during the meeting and was able to produce minutes of that meeting that were consistent with this account. Friday TV also pointed out that Mr Banner had asked them to enter into a non-disclosure agreement relating to the ‘Celebrity Birthday’ concept, but they refused.

Ten days after that meeting, Mr Banner sent an unsolicited email to Friday TV enclosing ‘10 more of his new TV formats’, one of which was a synopsis of the ‘Minute Winner format’.

In 2009, Friday TV licensed a format for a new TV game show called ‘Minute to Win It’ which was first broadcast in the US, and subsequently produced in many different language versions around the world. Mr Banner became aware of the Danish version of the show and in 2011, he sued Friday TV in Sweden for the infringement of the Swedish Trade Secrets Act. The claim was dismissed on the basis that the disclosed information could not have reasonably caused competitive harm to Mr Banner.

In 2015, Mr Banner initiated proceedings in England (through a newly English incorporated company) claiming that the creation and broadcast of ‘Minute to Win It’ constituted copyright infringement, breach of confidence and passing off. The High Court found in favour of Friday TV and dismissed all three claims.  

The High Court’s decision

The judge held that as the claim for breach of confidence had already been considered by the Swedish court, it could not be pursued again by the same parties in the English courts (the judge did not accept the newly incorporated English company to be a legitimate new party).   

Despite this, the judge considered whether the claim would have succeeded under English law. In his judgement, he commented that the information that was disclosed fell far short of what was required to found a claim for breach of confidence. The court believed the evidence produced by Friday TV - that the concept of Minute Winner was not discussed during the initial meeting between Mr Banner and Friday TV. Moreover, Mr Banner could not presume that by sending an unsolicited email to Friday TV, even if that email was marked as ‘confidential’, it would automatically mean it must be kept confidential. Mr Banner knew that Friday TV had previously refused to sign a confidentiality agreement and so any oral obligation of confidence that might have been agreed during that initial meeting would not extend to subsequent communications between the parties.

Protecting your information

If you have sensitive or valuable information that you want to be kept confidential, it is strongly recommended that you seek a written confidentiality agreement before disclosing the information.  A contractual obligation to keep information confidential will always be easier to enforce than a claim under general law. It is also advisable to take practical steps to protect the unauthorised disclosure of your information by having appropriate security measures and access restrictions in place and to implement adequate privacy policies and procedures within your organisation.

For further advice on how to protect your confidential information please contact Maeve O’Hare.