Social media and smart phones at work - protecting your IP

Social media and smart phones at
work
Workplace Relations and Employment
Team of the Year
©2017 Australian Business Lawyers & Advisors. All Rights Reserved
Protecting your IP

©2017 Australian Business Lawyers & Advisors. All Rights Reserved
Presenters
2
Kyle Scott
Senior Associate
Luis Izzo
Director

Agenda
● The modern workplace
● The legal framework
● Practical steps to protect your CI & IP
● Case studies
3©2017 Australian Business Lawyers & Advisors. All Rights Reserved

Part 1: The modern workplace

Massive growth in data

Explosion of devices

The new reality for employers
+
=
Greater risk of information theft!
Massive growth in data
Explosion in mobile devices

The enemy within:
Stats on breaches of confidentiality
• 50% of employees have kept confidential information
• 40% of employees plan to use confidential
information in their future employment
• 60% of employees say a co-worker has offered
documents from a former employer
• Source: Symantec Corp, 2012 (survey of 3,317 individuals)

Part 2: The Legal framework

Confidentiality obligations
1 0©2017 Australian Business Lawyers & Advisors. All Rights Reserved
Implied
Contractual
duty of Fidelity
Express
Contractual
Confidentiality
Obligations
Corporations
Act
Equitable Duty
of Confidence

Implied contractual duty of
fidelity
• The duty of fidelity is implied into every contract of
employment
• The duty applies during the employment
• Prevents employee from disclosing CI while
employed

Equitable duty of confidence
• Protects a more limited range of information, but the
duty extends beyond employment (provided information
remains confidential)
• Generally used to protect disclosure of trade secrets
• Remedies for breach include injunction, compensation
and account of profits

Express contractual obligations
• Employees may be subject to confidentiality
obligations contained in an employment contract.
• The exact scope of the obligation depends on the
specific clause.
• Generally provides broader protection (i.e. protects
more info)

Section 183 Corporations Act
• A person who obtains information because they are, or
have been, a director or other officer or employee of a
corporation must not improperly use the information to:
a) gain an advantage for themselves or someone else;
or
b) cause detriment to the corporation.
• Continues beyond cessation of employment.

What is Intellectual Property?
• “Creations of the mind, such as inventions; literary
and artistic works; designs; and symbols, names and
images used in commerce”
• IP is protected in law by way of:
• Copyright
• Patents
• Designs
• Trademarks

What is Intellectual Property?
• Copyright arises automatically
• The other IP rights require registration with IP
Australia
• IP rights enable people to earn recognition / financial
benefit from what they invent or create

Ownership of IP in an employment
context
• General rule: IP is owned by employer where it is
created in the course of employment
• That presumption can be displaced by agreement to
the contrary (e.g. Universities)
• Rights can be clarified in employment contract

An emerging area: who owns social
media contacts?
 Ownership of social medial accounts on LinkedIn,
Twitter, Instagram will depend on who the account is
established under
 Ownership of contact lists derived fro sites is more
complicated:
o Why was the account set up?
o When was it set up – work time or personal
time?
o Are personal or work emails used as the contact
details?

Part 3: Protecting your CI & IP

Practical steps
There are a range of steps employers can take to
protect their CI & IP:
• Contractual provisions
• Policies
• Training / awareness activities
• Security measures
• Legal action (where necessary)

Employment contracts
Your contracts should have the following clauses:
• Confidentiality clause
• IP clause
• Workplace surveillance clause
• Gardening leave clause
• Return of property clause
• Post-employment restraints

Policies
You should have:
• Social media policy
• Confidentiality policy / procedures / protocols
• workplace surveillance policy / procedures / protocols

Social media policy
Policy content:
• Behavioural expectations
• Ownership of social media accounts/contacts
• What happens to social media accounts when
employees depart

Security measures during employment
● Workplace surveillance practices must comply
with relevant State/Territory surveillance
legislation
● Document security protocols (restricting
access)
● Must take all reasonable steps to take CI
confidential – once in public domain difficult to
enforce confidentiality obligations

Departing employees
• Clear internal protocols when employees leave
• Return of property
• Remind them of obligations prior to departure:
• Confidentiality
• Returning property (including documents and
electronic files)
• Post-employment restraints
• Consider gardening leave for high-risk employees

After departure
• Conduct IT sweep of their activity
• Monitor for breaches
• If evidence of a breach:
• seek urgent return of CI
• consider court action for injunction

Part 4: Case studies

Toll Transport v Fleiter [2017] FCA 376
• Sales manager, responsible for setting rates, BD and
managing customer relationships
• Following resignation, IT audit uncovered:
• external storage devices had been plugged into
laptop during notice period
• email discussions with competitor re job offer ,
including comment that it was “game on”
• Ordered to deliver up storage devices for analysis

Climate Change
Technologies v Glynn [2017] SASC 60
• Employee invented a thermal energy storage device
• The device was patented in 2011
• After resigning in 2016, the employee:
• Retained CI in relation to the device; and
• Sought to exploit the technology through another
company
• Court granted injunction preventing the use or
disclosure of the information

Lifeplan Society v Ancient Order of
Foresters Society [2017] FCAFC 74
• Two managers at Lifeplan leaked CI to a competitor
• The managers also stole client lists and solicited
clients for the benefit of Foresters
• Lifeplan suffered $ loss as a result
• Court ordered:
• Foresters pay $6 million+ as account of profits
• The managers pay $25k each

Conclusion
• Breaches of confidentiality are on the increase
• It’s more important than ever to actively protect your
CI & IP
• Get your systems in order to limit risk of breach
• Legal remedies are available if needed

Contact us
NEWCASTLE
Suite 402, Level 4
Watt St Commercial Centre
Newcastle NSW 2300
Phone : 02 9458 7005
www.ablawyers.com.au
BRISBANE
10 Felix St
Brisbane QLD 4000
Phone : 02 9458 7005
Luis Izzo
Director
Luis.izzo@ablawyers.com.au
Kyle Scott
Senior Associate
Kyle.scott@ablawyers.com.au
SYDNEY
10/140 Arthur St,
North Sydney
NSW 2060
Phone : 02 9458 7005

Thank you!

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