Corrs Pavey Whiting & Byrne v Collector of Customs (Vic)

No judgment structure available for this case.

Re: CORRS PAVEY WHITING and BYRNE
And: COLLECTOR OF CUSTOMS FOR THE STATE OF VICTORIA and ALPHAPHARM PTY. LTD.
No. VG6 of 1987
Administrative Law

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Sweeney(1), Jenkinson(2) and Gummow(3) JJ.

CATCHWORDS

Administrative Law - whether documents sought under the Freedom of Information Act 1982, to obtain evidence of an alleged infringement of patent, were exempt documents within the meaning of s.45(1).

Administrative Appeals Tribunal Act 1975 s.44

Freedom of Information Act 1982 ss. 15, 43, 45.

HEARING

MELBOURNE

#DATE 13:8:1987

Counsel for the appellant: Ms. R.A. Lewitan

Solicitors for the appellant: Corrs Pavey Whiting & Byrne

Counsel for the firstnamed respondent: Mr R.R.S. Tracey

Solicitors for the firstnamed respondent: Australian Government Solicitor

Counsel for the secondnamed respondent: Mr B.A. Keon Cohen

Solicitors for the secondnamed respondent: Blake & Riggall

ORDER

The appeal be dismissed with costs.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

In this case I have had the advantage of reading the reasons for judgment of Gummow, J. and of Jenkinson, J., in that order. The history of the matter, and the questions which arise in it, are fully set out in the former.

Section 45(1) of the Freedom of Information Act 1982 provides:

"(1) A document is an exempt document if its disclosure under this Act would constitute a breach of confidence",

In Gummow, J's opinion the term "a breach of confidence" is used in its technical sense, so that a document is exempt from disclosure if, and only if, its disclosure would be actionable under the general law.
Jenkinson, J. on the other hand, has construed the sub-section as being wide enough to confer exempt status on a document which contains confidential information received under circumstances imposing an obligation of confidence, without regard to those considerations of public policy to which courts have allowed an influence in determining whether to grant or withold remedies for breach of confidence in its technical sense.
I have not found the choice between these two constructions an easy one to make. The difficulty would not have arisen if the legislature had expressed the exemption as relating to documents, the disclosure of which "would divulge any information or matter communicated in confidence" (see s.33(1)(b). As Gummow, J. has pointed out, the use of that different expression favours his construction of s.45(1).
The sub-section lays down a test to be applied by officers who, however expert they may be in customs matters, can hardly have been expected by the legislature to have the necessary legal learning to determine the complex and difficult matters, which Gummow, J. has set out, which are involved in forming a judgment as to whether the disclosure of a particular document would be actionable under the general law.
It is this consideration which has led me, in the end, to prefer the construction adopted by Jenkinson, J., which would be relatively simple to apply, and to agree with his opinion that the appeal should be dismissed, with costs, and with his reasons.

JUDGE2

Appeal against a decision of the Administrative Appeals Tribunal.

The circumstances relevant to the determination of the appeal, and the questions raised by the parties submissions, are set out in the reasons for judgment of Gummow J., which I have had the advantage of reading.
I would avoid a construction of s.45 of the Freedom of Information Act 1982 which would include among the criteria of exempt status those considerations which are subsumed under the rubrics "just cause", "clean hands", "iniquity" and "public interest".
In the first place, all those considerations, except perhaps those for which "clean hands" affords a convenient label, are directed to the definition of circumstances in which a court will abstain from preventing, and abstain from affording any compensatory remedy for, disclosure of information to those particular persons or classes of persons to whom the disclosure is considered justified, notwithstanding that a breach of confidence is committed by the disclosure. Sometimes the class of persons is the whole community, or at least those who choose to read newspapers or watch television. But whether the class be numerous or exiguous, its definition will, as it seems to me, be part of the process of determining in a curial proceeding whether a particular disclosure is to be sanctioned by reason of one or more of those considerations. In that respect I respectfully adopt the observations of Lord Denning M.R. in Initial Services Ltd. v. Putterill (1968) 1 QB 396 at 405-406:

"The disclosure must, I should think, be to one who has a proper interest to receive the information. Thus it would be proper to disclose a crime to the police; or a breach of the Restrictive Trade Practices Act to the registrar. There may be cases where the misdeed is of such a character that the public interest may demand, or at least excuse, publication on a broader field, even to the press."

Further, when a disclosure is made of confidential information concerning a "misdeed" to one who has a proper interest to receive the information, the circumstances in which the disclosure is made will commonly result in the imposition on the recipient of an obligation to maintain the confidentiality of the information, except in seeking appropriate redress or punishment of the misdeed.
Disclosure under the Freedom of Information Act 1982 is, however, required to be made to any person who should choose to request that it be made : ss. 3(1), 11(a), 18. And, although s.91(2)(a) of that Act provides that the giving of access to a document (including an exempt document) in consequence of a request shall not be taken to constitute an authorization or approval, for the purposes of the law relating to breach of confidence, of the publication of the document or its contents by the person to whom access is given, I doubt whether the communication of information inherently confidential in pursuance of the Act could, without more, result in the imposition, on the person receiving the information in response to his request, of an obligation of confidence. The imposition of such an obligation would seem to constitute a fetter, not expressed in the Act, on "the right of the Australian community to information" which is declared in s.3(2) to be the object of the Act. An obligation impeding the dissemination through that community of information obtained under the Act ought not, in my opinion, to be derived from the circumstance that the information has "the necessary quality of confidence". Disclosure by the grant of access to a document under that Act is not in my opinion disclosure in circumstances importing an obligation of confidence. If, as Mr Gurry submits (Breach of Confidence, pp. 113-114; Essays in Equity (ed. Flynn) p.118), it is limitation of the purpose of disclosure which imports the obligation of confidence, there is little in s.3 of the Freedom of Information Act 1982 on which to rest any such an obligation, in my opinion.
Whether or not the recipient of confidential information received under the Act in response to his request may be subjected to any obligation of confidence arising out of that communication, he does not in my opinion have to have any "proper interest" of the kind which would afford, in curial proceedings for breach of confidence, "just cause" for disclosure of the information to him. (I do not doubt that the interest of a citizen, if not of others who might be regarded as members of the Australian community, in the enforcement of a right to access to information in the possession of the Government of the Commonwealth is sufficient to satisfy any constitutional requirement of the kind which Gummow J. mentions in his introductory explanation of what gave rise to this appeal.) The Freedom of Information Act 1982 confers no power to exact any undertaking, or to impose any condition, concerning the use to which a person granted access to a document under that Act will put the document or information contained in it. Nor does the Act make any provision for giving the person who provided confidential information to an "agency" of the executive government the opportunity to make submissions in support of a contention that disclosure of a document containing that information would constitute a breach of confidence. (Such a provision is made in respect of documents containing information concerning a person in respect of his business or professional affairs or concerning the business, commercial or financial affairs of an organization or undertaking: see ss. 27 and 43.) The circumstances prescribed or contemplated by the Act as those under which administrative decisions are to be made concerning the grant of access to documents under the Act are so ill suited to the finding of the facts, and to the framing of orders, upon which depends the vindication of those policy considerations which are subsumed under the rubrics "just cause", "public interest" and "clean hands", that I am moved to adopt a construction of s.45 which would displace those considerations from the purview of section 45.
As will be apparent from the precisely expressed conclusions concerning s.45 which are stated in the judgment of Gummow J., the circumstance that information is "as to the commission or the real likelihood of commission . . . . of a civil wrong of public importance" is regarded by his Honour as having the legal consequence that the information "does not have the necessary quality of confidence". In the memorable words of Wood V.-C. which Gummow J. cites (3 Jur. (N.S.) at 40):

"There are confidences, which are rather to be called 'non-confidences'. There can be no confidence which can be relied on to restrain the disclosure of iniquity: such a confidence never did exist, and never can."

If such a confidence never did exist, then nothing could be done which might be described as a breach of that confidence. I am unable to agree that information "as to the . . . . real likelihood of commission . . . . of a civil wrong of public importance" lacks "the necessary quality of confidence", so that such information could not be the subject of a breach of confidence. Rather should it be said, in my opinion, that the disclosure of such information to those who have a proper interest to receive it will not be restrained, nor redressed, by curial order, notwithstanding breach of confidence by the disclosure. That was, as I think, the view which Lord Denning M.R. expressed in Fraser v. Evans (1969) 1 QB 349 at 362:

"They quote the words of Woods V.-C. that 'there is no confidence as to the disclosure of iniquity.' I do not look upon the word 'iniquity' as expressing a principle. It is merely an instance of just cause or excuse for breaking confidence."

If that view be correct, the language of sub-section 45(1) is not inapt to confer exempt status on a document which contains confidential information received under circumstances importing an obligation of confidence, without regard to those considerations of public policy to which courts have allowed an influence in determining whether to grant or withhold remedies for "breach of confidence" in exercise of equitable or common law jurisdiction. That is the construction I would adopt.

Section 14 of the Freedom of Information Act 1982 provides:

"Nothing in this Act is intended to prevent or discourage Ministers and agencies from publishing or giving access to documents (including exempt documents), otherwise than as required by this Act, where they can properly do so or are required by law to do so."

The construction of sub-section 45(1) which I suggest does not hinder, if it does not promote, the discovery of iniquity. The agents of the executive government are left free to make such disclosures of information received in confidence as they think to be lawful, albiet without the protection of sub-section 91(1) of the Freedom of Information Act 1982 in a case where the discovery of wrong doing is conceived to make the disclosure lawful. Those agents remain amenable, also, to the curial processes by which information is disclosed which is required to be disclosed in the interests of justice. (See, for example, Norwich Pharmacal Co. v. Customs and Excise Commissioners (1974) AC 133.)

In my opinion the material before the Administrative Appeals Tribunal justified the Tribunal's conclusion that disclosure under the Freedom of Information Act 1982 of the information merely as to the fact of importation, by the respondent Alphapharm Pty. Ltd. on a date before 12 January 1984, of the substance Naproxen would constitute a breach of confidence. That information had the required quality of confidentiality at the time it was communicated. The appellant's submission was that the evidence before the Tribunal admitted of only one conclusion concerning the confidentiality of that information at the time of the hearing, namely that the only reason for then maintaining secrecy was that disclosure would reveal infringement of the patent which had been granted to Syntex Corporation. I think the evidence capable of sustaining the Tribunal's conclusion that, even at the time of the hearing, the information could be commercially useful to a competitor of Alphapharm Pty. Ltd.. It was not suggested that the circumstances in which Alphapharm Pty. Ltd. communicated the information, that is to say in the knowledge that the Australian Customs Service publicly professed its intention of refraining from disclosure of information furnished in, or in support of, entries of goods to be imported, were not circumstances importing an obligation of confidence. It was submitted on the appellant's behalf that the Tribunal had erred in law in regarding the existence of obligations in respect of confidentiality undertaken by members, as incident to membership, of an association of customs agents as supporting its conclusion that an obligation of confidence was imposed on members of the Australian Customs Service in respect of the information under consideration in the Tribunal's review. Similar submissions were made in respect of certain other circumstances, apparently regarded by the Tribunal as supporting that conclusion. I have not understood what relevance to any issue before the Tribunal there was in the existence of a code of conduct concerning confidentiality adopted by a voluntary association of customs agents. But any error of the kind asserted could not in my opinion have produced an erroneous order determining the review : there was ample and uncontradicted other evidence that the circumstances attending the communication of the information to the Australian Customs Service were such as to import an obligation of confidence.
In my opinion the appeal should be dismissed with costs.

JUDGE3

This is an appeal from the decision of the General Division of the Administrative Appeals Tribunal ("the Tribunal") constituted by Messrs Thompson (Deputy President), Cohn and Trinick (Members) given on 23 December 1986. The appeal is only upon questions of law: Administrative Appeals Tribunal Act 1975 ("the AAT Act"), s.44. The Tribunal decided to affirm the decision of the firstnamed respondent ("The Collector") dated 12 May 1986 that the documents the subject of the proceedings before the Tribunal were exempt documents pursuant to the Freedom of Information Act 1982 ("the FOI Act").

In November 1985, the appellant had made a request to the Collector, pursuant to s.15 of the FOI Act, for access to documents which it described as being in the following categories -

(a) all documents in the possession of the

Collector concerning the importation of the substance Naproxen by the secondnamed respondent ("Alphapharm"); and

(b) all documents in the possession of the

Collector concerning the classification of Naproxen under the Customs Tariff Act 1982.

The Collector, pursuant to s.27 of the FOI Act, notified Alphapharm of the request and Alphapharm opposed the giving of access to the appellant. In January 1986 the Collector advised the applicant that access requested in respect of the documents I have described above in category (a) was refused on the ground that those documents answering that description were exempt under s.43(1)(c)(i) of the FOI Act. There were eight groups of documents pertaining to the importation of Naproxen, approximately fifty three documents in all. The Collector held no documents answering the description in category (b).
On an internal review of the decision the original decision was affirmed, but on the further ground that all the documents in category (a) were exempt under s.45 of the FOI Act, that is to say that disclosure under the FOI Act would constitute a breach of confidence. An application for review was then made to the Administrative Appeals Tribunal, which after receiving oral and written evidence and submissions for the applicant, the Collector and Alphapharm, affirmed the decision on 22 December 1986.
The Tribunal reached its decision without exercising its powers of inspection of the documents in question under s.64 of the FOI Act. I deal later in these reasons with the significance of that provision in a case such as the present one. Before the Tribunal reliance had been placed upon s.40(1)(d), s.43(1)(c)(i) and s.45 of the FOI Act. The Tribunal reached its decision solely upon s.45 and, whilst it made some observations upon them, the Tribunal made no finding upon either of the other grounds. However, in the course of the hearing before it the Tribunal had ruled that the expression "lawful business . . . affairs" in s.43(i)(c) did not include past events because they were "a matter of history". Before this Court there was a debate not only as to the correct construction of s.45, but also as to the correctness of this ruling as to the construction of s.43.
The relevant sections of the FOI Act provide as follows -

"40. (1) Subject to sub-section (2), a document is an exempt document if its disclosure under this Act would, or could reasonably be expected to -

. . . .

(d) have a substantial adverse effect on the proper and efficient conduct of the operations of an agency; or

(2) This section does not apply to a document in respect of matters in the document the disclosure of which under this Act would, on balance, be in the public interest.

. . . .

43. (1) A document is an exempt document if its disclosure under this Act would disclose -

. . . .

(c) information (other than trade secrets or information to which paragraph (b) applies) concerning a person in respect of his business or professional affairs or concerning the business, commercial or financial affairs of an organization or undertaking, being information -

(i) the disclosure of which would, or could reasonably be expected to, unreasonably affect that person adversely in respect of his lawful business or professional affairs or that organization or undertaking in respect of its lawful business, commercial or financial affairs; or

. . . .

45. (1) A document is an exempt document if its disclosure under this Act would constitute a breach of confidence.

(2) Sub-section (1) does not apply to any document to the disclosure of which paragraph 36(1)(a) applies or would apply, but for the operation of sub-section 36(2),

(5) or (6), being a document prepared by a Minister, a member of the staff of a Minister, or an officer or employee of an agency, in the course of his duties, or by a prescribed authority in the performance of its functions, for purposes relating to the affairs of an agency or a Department of State".

Section 11 of the FOI Act confers in general terms a legally enforceable right to obtain access to documents under that Act. Accordingly, a party such as the appellant had no need to substantiate to the Collector or the Tribunal any ground for interest or concern in the documents to which the appellant sought access. On the other hand, proceedings can only come before this Court as a "matter" in the special sense of that term in Chapter III of the Constitution, and this is nonetheless so even though the proceedings are described in s.44 of the AAT Act as an "appeal" from an administrative body: Farbenfabriken Bayer AG v. Bayer Pharma Pty Ltd (1959) 101 CLR 652, at 657; Drake v. Minister for Immigration and Ethnic Affairs (1979) 46 FLR 409 at 413-414; Minister for Immigration and Ethnic Affairs v. Gungor (1982) 63 FLR 441 at 443-445. The constitutional concept of "matter" may not be satisfied by a dispute in which the moving party has no real or substantial concern: Australian Conservation Foundation Inc v The Commonwealth (1980) 146 CLR 493 at 550-551. Further, adequate consideration of the exemption upon which reliance has been placed in the present proceedings requires an understanding of the background to the disputes and differences between the appellant and its client on the one side and the respondents on the other. To that background I now turn.

The Background to the Dispute
The appellant is a firm of solicitors which acts on behalf of a foreign corporation, the Syntex Corporation ("Syntex"). For some years Syntex has marketed in Australia, under the trade name Naprosyn, a drug the generic name of which is Naproxen. There is a British pharmacopoeia description and formulation for Naproxen. Naproxen has anti-inflammatory properties and analgesic and antiparetic actions and it is used for the treatment of rheumatoid arthritis and osteo-arthritis. Syntex held Australian patent number 423,923, which was granted on 12 January 1968 for a term which expired on 12 January 1984. This patent ("the product patent") related to a class of chemical substances known, as I have said, by the generic name Naproxen. It thus may be described as a patent containing product rather than process claims. On 12 July 1983 Syntex commenced proceedings in the Supreme Court of New South Wales for an extension of term of the product patent (Patents Act 1952, s.90). Alphapharm lodged a caveat in respect of those proceedings but withdrew the caveat on 6 October 1983. The application for extension of term has been heard by the Supreme Court and judgment was reserved when this Court heard the present appeal. In addition Syntex Corporation also holds a current Australian patent relating to the processes for the production of Naproxen ("the process patent"). There was no evidence before us as to when the term of the process patent will expire.
Mr Duchen, a director of Alphapharm swore an affidavit which was read before the Tribunal and upon which he was cross-examined. Alphapharm is presently engaged, among other activities, in the importation into Australia, processing and sale within Australia and the re-export from Australia, of the drug Naproxen. The product is marketed by Alphapharm in Australia under the trade name Naxen. Mr Duchen gave evidence that his company's product follows the description or formulation of Naproxen in the British pharmacopoeia. As I have mentioned, the product patent expired some years ago and there is as yet no decision as to any terms upon which any order for extension might be made by the Supreme Court of New South Wales. In particular, there is no decision as to whether any special provision would be made to protect parties making or dealing with Naproxen in Australia in the period between expiry and the making of any order for extension. This might be done by extending the term on the condition that no proceedings be taken in respect of any infringement after 12 January 1984 and before the date of the order for extension: Ex parte Celotex Corporation, In re Shaw's Patent (1937) 57 CLR 19 at 25. Mr Duchen gave evidence that his company's product, Naxen, did not infringe the process patent and that he disputed assertions to the contrary by the present applicant on behalf of Syntex.
Syntex wished to have the access it sought from the Collector and from the Tribunal to assist it to ascertain whether or not Alphapharm had infringed the product patent before it expired on 12 January 1984 and also to monitor the dealings by Alphapharm with Naproxen since 12 January 1984. If the product patent were to be extended by the Supreme Court with effect from 12 January 1984, Syntex wished to have material to use in persuading the Supreme Court to except Alphapharm from the operation of a "Celotex order" that no proceedings be taken in respect of any infringement after the date of expiration of the original term and before the date of the Court order for extension. This could leave Alphapharm exposed to infringement proceedings in respect of this period, in addition to any liability it might have in respect of the period before 12 January 1984.

The Equitable Duty of Confidence

In respect of the documents, access to which the appellant sought, the Tribunal stated:-

"All the documents in issue in these proceedings are entries of goods marketed by Alphapharm and documents lodged with the entries in support of them. Although some were created by the respondent's computer, their content was the result of information fed into the computer by Alphapharm's customs agent. They are not internal working documents; so sub-section (2) of section 45 does not render sub-section (1) inapplicable to them. We have no doubt that when they were lodged Alphapharm and its customs agent expected them to be received in confidence by the Australian Customs Service ("the Service") and that (the Service) received them in confidence. The fact that some information in those documents might have to be disclosed by (the Service) to other government agencies for specific purposes does not detract from the generality of the obligation, resulting from the common intention of both the importer and (the Service), that they be retained in confidence and the information on them be treated as confidential".

I read this passage not as a finding of disclosure of information on the footing of a contract between the Service and Alphapharm, but as a finding of disclosure in confidence as understood in the authorities dealing with equitable relationships of confidence. The Tribunal also said:

"We are satisfied that the information is given to (the Service) only because legislation obliges the importer to give it."

If the documents for which exemption is claimed under s.45 in these proceedings had been supplied by Alphapharm only pursuant to direct requirement of the Service under its statutory powers (eg Customs Act 1901, s.38B) I would have some difficulty in seeing how from these circumstances any obligation of confidence could arise under the general law. The question in such a case would rather be one of finding a statutory restriction (if there be one) upon use by the Service of the information in the documents, and then of measuring the terms of that statutory restriction against the terms of the exemption in s.38 of the FOI Act: News Corporation Ltd v. N.C.S.C. (1984) 52 ALR 277; Kavvadias v. Commonwealth Ombudsman (1984) 52 ALR 728.

However, as I read the evidence, particularly that given for the first respondent, the Service finds it of administrative convenience to rely upon the voluntary supply of information to it upon a confidential footing as described by the Tribunal in the passage I have set out, rather than upon its statutory powers to require provision of information. It is on that basis that I accept the finding that the material in issue here was provided consensually and in confidence (cf Castrol Australia Pty Ltd v. Emtech Associates Pty Ltd (1980) 33 ALR 31, G v. Day (1982) 1 NSWLR 24).
As I have indicated the case is to be approached in terms of the general law, not as a case of confidence protected by contract, but as one, if anything, of confidence protected in equity. It is now settled that in order to make out a case for protection in equity of allegedly confidential information, a plaintiff must satisfy certain criteria. The plaintiff (i) must be able to identify with specificity, and not merely in global terms, that which is said to be the information in question, and must also be able to show that (ii) the information has the necessary quality of confidentiality (and is not, for example, common or public knowledge) (iii) the information was received by the defendant in such circumstances as to import an obligation of confidence and (iv) there is actual or threatened misuse of that information: Saltman Engineering Co Ltd v. Campbell Engineering Co (1948) 65 RPC 203 at 215, The Commonwealth v. John Fairfax and Sons Ltd (1980) 147 CLR 39 at 50-51, O'Brien v. Komesaroff (1982) 150 CLR 310 at 326-8. It may also be necessary, as Megarry J thought probably was the case (Coco v. A.N. Clark (Engineers) Ltd (1969) RPC 41 at 48), and as Mason J (as he then was) accepted in the Fairfax decision was the case (at least for confidences reposed within government), that unauthorised use would be to the detriment of the plaintiff. This last aspect may be put to one side in the present case, because the use to which Syntex would put the information would plainly be detrimental to Alphapharm. Of the other requirements I have mentioned, the passage I have quoted from the Tribunal's reasons is consistent with a finding that requirement (iii), confidential disclosure, was satisfied. What does not appear to have been directly addressed by the Tribunal was the requirements (i) and (ii), namely that the information be identified with specificity and also be confidential in quality. These matters are of significance in this appeal, as I will explain later in these reasons. I should observe at this stage that it would appear to have been difficult for the Tribunal to have embarked upon these inquiries, had it been minded to do so, without inspecting the documents in question, pursuant to s.64 of the FOI Act.

The Contentions of the Parties

Counsel for the appellant had submitted to the Tribunal that (i) the Tribunal should call for the documents and examine them to ascertain whether any importations occurred before 12 January 1984 (ii) as any such importation would be an infringement of the product patent, disclosure of the information relating to it would not be a breach of confidence and (iii) in any event, the public interest required disclosure of information showing infringement of the product patent. In rejecting these submissions the Tribunal said:

We are satisfied that the public interest, of which one aspect is the interest (sic) of justice, cannot be taken into account in construing section 45. The mere fact that the information in a document may relate to importation of goods which constitutes an infringement of patent does not prevent an obligation to observe confidentiality arising in respect of that information or destroy any such obligation which has arisen. We have decided, therefore, not to examine the documents to see whether they disclose any such importation.

Before this Court the appellant narrowed the ambit of the request in two important respects. First, it now seeks only documents coming into existence before 12 January 1984, that is to say before the expiry date of the product patent. Secondly, in respect of the contents of the documents what is now sought is limited to the following:-

The entry number

The date of entry for home consumption

Description of the product

Tariff classification

Name of vessel

Port of discharge

Country of origin

Identity of foreign supplier

Date of importation

Certificate of analysis

Quantities marketed.

The appellant would be content to have the other material treated as exempt and accept the ruling of the Collector in respect of it.

Armed with the material its solicitors now seek, Syntex would expect to be able to satisfy itself whether Alphapharm imported Naproxen into Australia prior to 12 January 1984. Importation into Australia without the license of the patentee ordinarily would constitute a use of the invention and thus an infringement of the product patent: Patents Act 1952 s.69.
Without this material, the appellant submitted to us, Syntex would not be in a position to commence proceedings for infringement in respect of the alleged activities of Alphapharm before 12 January 1984. This would be because Syntex would be unable to give adequate particulars of infringement with its initiating process, as required by the Patents Act, s.117.

Patent Infringement

It may be noted that the description in s.69 of the Patents Act of the patent monopoly is in terms of making, using, exercising or selling the invention claimed in the patent. It follows that where there is a series of commercial dealings in respect of the same item there may be multiple infringements by, for example, an importer, distributors and retailers: Pfizer Corporation v. Ministry of Health (1965) AC 512, Ricketson "The Law of Intellectual Property", paras 50.19-50.24. Where the remedy sought is damages or an account of profits, and not only an injunction, s.124 of the Patents Act provides a defence where the defendant satisfies the court that at the date of the infringement, "he was not aware, and had no reason to believe that a patent for the invention existed." Between a seller and buyer of goods which are held and dealt with by both of them in infringement of the patent rights of a third party, there may be an action for breach of warranties as to title and quiet possession: Microbeads AG v. Vinhurst Road Markings Ltd (1976) RPC 19. Thus, the importation into Australia of goods which infringe an Australian patent is a matter of concern beyond the rights that arise immediately under the Patents Act between the patentee and the importer. I will refer to this consideration further when I deal with the operation of the "unclean hands" defence to a suit to protect confidential information, being information concerning alleged patent infringement.

Discovery before Suit

Before us there was some debate as to the availability to a party in the position of Syntex of the equity jurisdiction in discovery in aid of contemplated proceedings as an alternative to the procedures of the FOI Act. Reference was made in argument to the decision of the House of Lords in Norwich Pharmacal Co v. Customs and Excise Commissioners (1974) AC 133. The effect of that decision was summarised by Sir Robert Megarry V-C in British Steel Corporation v. Granada Television Ltd (1981) AC 1096 at 1104-5 in the following terms:

"Put shortly, the decision is to the effect that a person who becomes involved in the tortious acts of others, even if innocently, is under a duty to assist a person who is injured by those acts by giving him full information by way of discovery and disclosure of the identity of the tortfeasor. Such an action may be brought even though the plaintiff has no other cause of action, and seeks no other relief, though it cannot be brought against someone who is not involved in the wrongdoing beyond being a mere witness or having some relevant document in his possession. The action is a descendant of the old bill of discovery in Chancery. Under the auxiliary jurisdiction, equity used to aid litigants in the courts of law, as well as litigants in equity, by compelling discovery; the courts of law had no means of doing this. But in addition to this process, which has now long been part of the ordinary process of litigation, there was a procedure whereby a would-be plaintiff could bring a bill of discovery in equity in order to find out who was the proper person to bring his action against; and it is this process which led to the Norwich Pharmacal case.

In that case, the owners of a patent for a chemical compound found that their patent was being infringed by illicit importations of the compound which had been manufactured abroad. The owners sued the Customs and Excise Commissioners for discovery of the documents which would show who were the importers, and the commissioners not only disputed the plaintiffs' rights to bring such an action, but also contended that public policy precluded the making of the order. The House of Lords rejected these defences, and held that the action should succeed."

The Vice-Chancellor's decision in the British Steel Corporation Case was upheld by the Court of Appeal and House of Lords ((1981) AC at 1122 ff., 1165 ff., respectively). In the present case the applicants seek not names and addresses but rather other essential facts (eg dates and quantities of importation) to found an action for patent infringement. thus, on a strict reading of the Norwich Pharmacal Case (supra) they seek to go beyond what was there decided. On the other hand, there is modern United States authority that the jurisdiction extends beyond discovery of names and addresses of prospective defendants, particularly where the documents sought have been brought into existence for governmental purposes by a governmental agency: Coca-Cola Co. v. City of Atlanta (1922) 110 SE 730 at 731,733,736-7; Lefebvre v. Somersworth Shoe Co.(1945) 41 A 2d 924 at 927; Wolfe v. Massachusetts Port Authority (1974) 319 NE 2d 423 at 425-6. In a comment upon the Norwich Pharmacal Case, "Finding out who to Sue" (1973) 89 LQR 482, Mr Prescott of the English Bar expressed the jurisdiction as one to obtain "information essential" for commencement of a suit.

In each case in which the old equity jurisdiction is invoked, there will be the threshold issue of whether the rules of procedure relating to discovery in the particular court in question operate as a code on the subject and exclude the further operation of that traditional jurisdiction. Section 45 of the Equity Act 1901 (NSW) expressly preserved that jurisdiction (see Heimann v. The Commonwealth (1935) 54 CLR 126 at 132-133, per Evatt J., and see, generally, Skinner v. Commissioner for Railways (1937) 37 SR (NSW)261 at 263-4 per Jordan CJ). On the other hand, it appears not to have been finally settled whether the discovery provisions of the United States Federal Rules of Civil Procedure, introduced in 1938, are an exhaustive treatment of the subject: Moore's "Federal Practice", Vol 4, 26.53. Finally, it must be remembered that, like other equitable remedies in aid of legal rights, discovery of this special kind will not be ordered if legal (including statutory) remedies appear adequate: Pressed Steel Car Co v. Union Pacific Railroad Co (1917)240F 135 at 136, per Learned Hand J. The availability of procedures under the FOI Act would thus appear to be a material factor in any attempt to utilise the old equity procedures by the present applicants or its client.

The Construction of s.45 of the FOI Act

I turn now to the principal question of law argued before us. It concerned the proper construction of s.45 of the FOI Act. The appellant submitted that the Tribunal had erred in its construction, whilst the respondents supported the approach taken by the Tribunal. The respondents submitted that (a) whilst the expression "breach of confidence" in s.45 certainly included the general law principles controlling breaches of confidence, it was of wider meaning and brought within the exemption cases in which disclosure would not be actionable at general law, and (b) there is no room in the application of s.45 for any consideration of "public interest" as a ground for removing or qualifying what would otherwise be an exemption under that section.

For the appellant it was submitted that (a) the only exemption given by s.45 is in respect of what would otherwise be a disclosure actionable at general law, and (b) "public interest" is raised by s.45, not from any general consideration of the nature of the FOI Act, but because of the "public interest defence" to actions at general law; if such a defence would be sustained at general law, then the exemption under s.45 is not made out.
I turn first to proposition (b) of the respondents' submissions (viz., that s.45 has no "public interest" qualification). Section 3 of the FOI Act states the object of Act in terms of creating a general right of access to information in documentary form in the possession of Ministers, departments and public authorities limited only by exceptions and exemptions necessary for the protection of essential private interests and the private and business affairs of persons in respect of whom information is collected and held by departments and public authorities. It follows from decisions of the Full Court of this Court that whilst the provisions of s.3 of the FOI Act must be borne in mind, the exemptions in the FOI Act are to be read with regard to the "public interest" for or against disclosure only if that concept is imported by the terms of the particular section in issue: News Corporation Ltd v.N.C.S.C. (1984) 52 ALR 277, Department of Health v. Jephcott (1985) 62 ALR 421. See also the decision of the Tribunal in Re Maher and the Attorney-General's Department (No. 2) (1986) 4 AAR 266 at 289. Accordingly, any consideration of "public interest" in applying s.45 must be based upon a construction of the term "breach of confidence" in the provision in sub-section (1) that "a document is an exempt document if its disclosure under this Act would constitute a breach of confidence".
This brings me to the proposition (a) of the respondents' submissions. The respondents contended that even if there be a "public interest defence" (as the appellant submits) to actions at the general law for breach of confidence, that could not take the present case outside the exemption in s.45. This was said by the respondents to be because the exemption in s.45 embraces not only breaches of confidence as known at the general law but a further class of "non-technical" breaches of confidence, and that the present case falls within that class and so within the exemption.
The conclusions I have reached upon these submissions are that (i) the term "breach of confidence" in s.45 is used in its technical sense so that a document is an exempt document only if its disclosure would be actionable at the general law, (ii) there is not in Australian law any "public interest defence" to actions to restrain breaches of confidence, in the wide sense urged by the appellant, and (iii) nevertheless, in the circumstances of the present case, a suit in equity, to restrain disclosure to the appellant or its client Syntex of information concerning alleged patent infringement by Alphapharm, could fail.

Previous Authorities

I turn first to my reasons for reaching the first of these conclusions. All counsel, on this aspect of the case, took us to the legislative history of s.45 and to the decisions thereon. In its original form s.45 of the FOI Act provided:

A document is an exempt document if its disclosure under this Act would constitute a breach of confidence.

The provision has since been amended so that it now is in the terms set out earlier in these reasons. It is now well recognised that equitable obligations of confidence may arise not only in respect of dealings between citizen and citizen and between citizen and government, but also within government itself: The Commonwealth of Australia v. John Fairfax and Sons Ltd (1980) 147 CLR 39. There is also Australian authority that an equitable obligation of confidence may arise without any consensual dealings between the parties and that, for example, a thief may not escape the imposition of such a duty: Franklin v. Giddins (1978) Qd R 72.

In Re Witherford and Department of Foreign Affairs (1983) 5 ALD 534, a decision of the Administrative Appeals Tribunal, the applicant, a public servant, sought access to documents which related to him and had been brought into existence by and were kept by his Department. Reliance was placed by the Department upon s. 45. As appears from p.542 of the report, the argument proceeded on the footing that no equitable duty would arise where one public servant gave information to another upon the footing that the recipient of the information was under a duty to keep the information confidential. The assumption seems to have been that confidences within government were beyond the scope of the equitable doctrine. The Tribunal met the Department's submission by holding that there was nothing which should lead it to read down the words of s. 45 to exclude communications between public servants (5 ALD at 542). In my view the Tribunal might also have dealt with the Department's submission by denying its premise as to the limited scope of the equitable doctrine. If the Tribunal had done so, there would not have been the occasion to consider whether the breach of confidence identified in s.45 went beyond what was known at general law.
A-G v. Cockroft (1986) 64 ALR 97, was a case concerning disclosure to government by a corporation, on an express assurance of confidentiality. In the Full Court, on appeal from the Tribunal, Bowen CJ and Beaumont J. noted (64 ALR at 107) that in the instant case the Tribunal had relied upon Witherford's Case. The Tribunal had held in Cockroft's Case that limited publication of certain documents had destroyed confidentiality for the purposes of s.45. In the Full Court Bowen CJ and Beaumont J. held that limited publication does not necessarily destroy confidentiality for the purposes of the general law, and treated s.45 in the same way. The appeal was allowed. The question of the proper construction of s.45 has since been adverted to twice by Beaumont J (Boots v. Dept. of Immigration and Ethnic Affairs, 16/9/86, unrep., and Baueris v. The Commonwealth 9/6/87, unrep.) but not in circumstances where the wide view of s.45 was necessary for the decisions reached by his Honour, or where the reasoning in Witherford's Case had been called into question in submissions to his Honour.
Witherford's Case had proceeded on the footing that (i) the general law did not protect what one might describe as intra-governmental confidences, (ii) s.45 went beyond the general law, and (iii) in this extended reach, s.45 did exempt from disclosure such governmental confidences. Subsequent legislation has made it clear that the exemption under s.45 is not the appropriate head for the exemption of intra-governmental confidences. But it has not thrown further light on the question of whether s.45 exempts more than what would be protected in an action for breach of confidence at the general law.
In 1983, s.45 was amended by adding sub-section (2) to make it clear that s.45 does not apply to certain intra-government documents, the scheme of the legislation being that claims for exemption in respect of "internal working documents" be dealt with under s.36 of the FOI Act. The further amendment of s.45(2) by the Freedom of Information Laws Amendment Act 1986, indicates that obligations of confidence owed by government to the citizen, or between citizens, fall within s.45. (Examples at general law of confidences reposed by citizens in government and protected in equity at the suit of the citizen are Castrol Australia Pty Ltd v. Emtech Associates Pty Ltd (1980) 33 ALR 31 and G. v. Day (1982) 1 NSWLR 24). The result of these amendments is at least consistent with my view of the initial reach of s.45 to intra-government duties of confidence, and is thus consistent with the view I have expressed as to the false assumption on which the Department's submissions in Witherford's Case were based.
Counsel for the respondents pointed to the failure further to amend s.45 to negative expressly the interpretation of s.45 by the Tribunal in Witherford's Case (and later Tribunal decisions) that the term "breach of confidence" was not confined to its technical meaning. That failure to amend was said to indicate Parliament's approval of that interpretation. As Mason ACJ, Wilson, Dawson JJ have recently observed, such principles of statutory construction are of no great use and are not permitted to prevail over an interpretation otherwise appearing to be correct (Flaherty v. Girgis (1987) 61 ALJR 255 at 262; see also Babaniaris v. Lutony Fashions Pty Ltd (1987) 61 ALJR 304 at 307 (Mason J), 313 (Wilson, Dawson JJ), 317 (Brennan, Deane JJ))

Correct Construction of s.45

In my view the term "breach of confidence" is used in s.45 in the sense well known to the law as the description of a particular class of legal proceeding. (See, for example, Gurry "Breach of Confidence", 1984, p.25; The English Law Reform Commission's Report on Breach of Confidence, (Law Com. No.110), 1981, Part III.)
First, when the legislature wished to exempt a document from disclosure on the ground that disclosure would divulge any information or matter "communicated in confidence", it had no difficulty in saying so (see s.33(1)(b) and s.33A(1)(b) the FOI Act). Similarly it had no difficulty in providing for the exemption of a document if its disclosure would, or could reasonably be expected to disclose, or enable a person to ascertain, the existence or identity of "a confidential source of information" (see s.37(1)(b) of the FOI Act). The construction of s.45 for which the respondents contended would have had more force had that section provided that a document is an exempt document if its disclosure would divulge any information or matter communicated in confidence by a party of a particular class, or disclose, or enable a person to ascertain the existence or identity of, a confidential source of information of a particular kind. The use of these terms elsewhere in the FOI Act tends to suggest that, when "breach of confidence" is used in s.45, it is to import more than the mere divulging of any information or matter communicated in confidence or the disclosure, or enabling a person to ascertain the existence or identity of a confidential source of information. The meaning so imported is, I believe that well known to the law. If it be otherwise, it is by no means clear, as I observe below, what its meaning is to be.
Secondly, other exemption provisions use, in defining the area of particular exemptions, what prima facie are other technical legal expressions (eg. "legal professional privilege" in s.42, "trade secrets" in s.43(1)(a), and "contempt of court" in s.46). Counsel referred to the absence from s.45 of the words "actionable" to qualify "a breach of confidence", and contrasted the language in s.91(1) "no action for defamation, breach of confidence, or infringement of copyright lies against the Commonwealth. . . ". However, in my view, although the full expression was plainly apt for sub-s.91(1), that does not militate against the view that in s.45 "breach of confidence" has its technical meaning. At most, sub-s.91(1) is of neutral value.
Thirdly, if "breach of confidence" in s.45 has some wider meaning than that given it at general law, it is by no means clear what that meaning is to be. The view expressed in Witherford's Case (supra) that it includes intra-government confidences proceeded, as I have indicated, on too narrow a view of the general law. The same could be said of any view that surreptitious acquisitions of confidential material would otherwise be outside the general law (Franklin v. Giddins, supra). Further, confidential material in a general sense of that expression is protected by other grounds of exemption (eg ss.33, 33A, 34, 35, 37, 41, 43) but this is in terms closely drafted. It would be curious if concurrently with those carefully drawn provisions there was a ground for exemption loosely drawn by use in s.45 of "breach of confidence" in an unspecific fashion. One result would be the existence of a ground of exemption of wide but indeterminate meaning. No doubt the law as to breach of confidence has its complexities, but they are at least well recognised in the case law and learned writings. It may be thought improbable that the legislature sought to resort instead to the uncertainties of some other and unspecified reading of "breach of confidence," or to a partial incorporation into s.45 of the integers of an action for breach of confidence in the legal sense.
Fourthly, the legislature has in sub-s.91(2) of the FOI Act directed its attention to the use to which a document (including the exempt document) is put by the person to whom access is given under the Act. It did so by providing that, inter alia, the giving of such access shall not be taken to constitute an authorization or approval, "for the purposes of the law relating to . . . breach of confidence", of the publication by the person in question of the document or its contents. One consequence is that if a document is exempt under s.45, the giving of access to it does not imperil rights under the law relating to breach of confidence. The giving of access does not constitute an authorization or approval to further publication by the disclosee, with consequent loss or impairment of the secret character of the information in question.
Although no one of these considerations is conclusive, in my view, taken as a whole, they point to the construction of s.45 I have accepted.
I have taken into account the circumstance that the FOI Act does not require the giving of an opportunity to a third party who would be aggrieved by a breach of confidence, to make submissions to the agency or Minister from whom access to the document in question has been sought. Such provision is made, by s.27, where exemption under s.43 ("business affairs") appears to be in question. However, there is lacking such provision not only in respect of s.45 but also in respect of various other provisions containing grounds of exemption which may involve the interests of third parties. Examples are provided by s.37(1)(b) ("the existence or identity of a confidential source of information"), s.37(2)(a) ("prejudice the fair trial of a person or impartial adjudication of a particular case"), s.42(1)(privilege from production "in legal proceedings on the ground of legal professional privilege"), and s.46(a) (disclosure would be "in contempt of court"). In my view, s.27 meets a particular class of case and its limited scope does not assist significantly in construing s.45. The same is true of the provisions for review in s.59.
In dealing with the question of the proper construction of s.45 I have been mindful of the burden that may be placed upon the administration of the FOI Act by the necessity to determine claims to exemption by reference to what may appear complex and technical legal concepts. However, as I have indicated, the legislature has framed various exemptions by reference to concepts apparently drawn from the general law, and it is not for the Court to gainsay the proper construction of the legislation, particularly when, as it appears to me, the contrary conclusion brings with it difficulties and uncertainties of application.

The "Public Interest" Defence to Breach of Confidence

I turn now to consider whether there is, as the appellant submitted, a "public interest" defence at general law and, if so, its significance for the present case. In Lion Laboratories Ltd v. Evans (1985) QB 526 at 550, Griffiths LJ (as he then was) stated that in England "the defence of public interest is now well established in actions for breach of confidence", and cited English Court of Appeal decisions in Fraser v. Evans (1969) 1 QB 349, Hubbard v. Vosper (1972) 2 QB 84 and Woodward v. Hutchins (1977) 1 WLR 760. His Lordship also cited British Steel Corporation v. Granada Television Ltd (1981) AC 1096. However, on my reading of the opinions in that case, Lord Wilberforce (at 1169) spoke not in terms of a "public interest" defence but of "misconduct" such that disclosure in breach of confidence might legitimately be made. His Lordship held the case before the House did not involve such misconduct. Although Lord Fraser of Tullybelton perhaps used wider language, he also said that the scope of the "iniquity rule" was not in issue before the House (at 1201-1202).
The "public interest" defence as developed in the English Court of Appeal is picturesque but somewhat imprecise. For example, in Woodward v. Hutchins (1977) 1 WLR 760, the Court of Appeal held that the "public interest" in giving publicity To the truth as to discreditable conduct of the plaintiffs (who were well-known pop singers) outweighed the public interest in protecting confidential information about them acquired by their public relations officer during his engagement with them. The issue was held to be one "of balancing the public interest in maintaining the confidence against the public interest in knowing the truth."
In Australia, a narrower view has also been taken; (see Finn "Confidentiality and the 'Public Interest'" (1984) 58 ALJ 497 at 505-508 and Gurry Breach of Confidence in Finn (ed) "Essays in Equity" (1985) pp. 124-130). In particular, in Castrol Australia Pty Ltd v. Emtech Associates Pty Ltd (1980) 33 ALR 31, Rath J. held that a just cause for the breaking of confidence must be more weighty and precise than a "public interest" in the truth being told. In Allied Mills Industries Pty Ltd v. Trade Practices Commission (1981) 34 ALR 105, Sheppard J., in this Court, held that breach of the provisions of Part IV or Part V of the Trade Practices Act 1974 was an "iniquity" which justified breach of confidence. Many of the English decisions were interlocutory, whether on strike out applications, disputes as to interrogatories or applications for interlocutory injunctions. That was also true of the decision of Rath J. in the Castrol Case.

Gartside v. Outram: For What Principle Is It Authority?

In this state of uncertainty one thing at least is clear. It is that whether there be a "public interest" defence or some narrower "iniquity" rule, the starting point of any inquiry into the case law is the interlocutory decision of Wood V-C (as Lord Hatherley then was) in Gartside v. Outram (1856) 26 LJ Ch (NS) 113, 5 WR 35, 3 Jur (NS) 39, 28 LT (OS) 120. This is the primary authority cited in all the modern cases upon the subject and upon which they purport to be based. The judgment of the Vice-Chancellor was delivered extempore and is reported in terms containing some differences of expression. The modern authorities appear to quote only from the Law Journal Report. For what does the case truly stand?
In order to evaluate what Gartside v. Outram has been said to establish, it is best to begin by ascertaining what was in issue and what was decided in that case. The plaintiffs carried on business as wool brokers. They had filed a bill in Chancery to restrain the defendant, who had formerly been their sales clerk, from copying certain documents and from communicating certain information. The documents were business records of the plaintiffs (apparently previously unpublished) and the information concerned the business dealings and affairs of the plaintiffs. The bill alleged that the business records were "for the most part of a private confidential character" (5 WR at 36). The bill also alleged that the defendant had circulated "various false and unfounded reports respecting the plaintiffs calculated materially to injure their business and credit." The plaintiffs' case thus had as its basis elements not only of breach of confidence, but also of copyright and of what would now be described as the tort of "trade libel" or injurious falsehood (see generally Heydon, "Economic Torts" 2nd ed. 81-86, Trindade and Cane "The Law of Torts in Australia", 150-157). The measure of shared history in the evolution of equitable protection of confidence and of copyright in unpublished literary works was discussed by Bowen CJ in Eq (as he then was) in Interfirm Comparison (Australia) Pty.Ltd v. Law Society of New South Wales (1975) 2 NSWLR 104 at 118-119.

Despite the presence of these other elements in the bill, when he came to describe the nature of the plaintiff's case Wood V-C emphasised the confidential nature of the relationship between the defendant and the plaintiffs, his former employers. The pleading of abuse of confidence was consistent with an allegation of breach of what would now be considered an implied term of fidelity in the defendant's contract of employment: Faccenda Chicken Ltd v. Fowler (1986)1 All ER 617 at 625-6. Another example of an implied term as to confidentiality is that in the contract between banker and customer which obliges the banker not to disclose confidential information received from the customer, without the customer's consent (Tournier v. National Provincial and Union Bank of England (1924) 1 KB 461) except as required by law (Smorgon v. Australia and New Zealand Banking Group Ltd (1976) 134 CLR 475 at 486-490).
This means the plaintiffs in Gartside v. Outram sought equitable relief in aid of contractual, that is to say, legal, rights. It must be remembered that only comparatively recently has it been settled that, exclusive of contract, obligations of confidence may be protected in the exclusive jurisdiction of equity (see Moorgate Tobacco Co Ltd v. Philip Morris Ltd (No.2) (1985) 156 CLR 414 at 437-438, and cf. Federal Commissioner of Taxation v. United Aircraft Corporation (1944) 68 CLR 525 at 534-536). In the circumstances pleaded in Gartside v. Outram a court might find that no term as to fidelity was to be implied or that the implied term of fidelity did not extend to the iniquitous conduct of the employers of the plaintiff. In either case it would follow that no injuction should be granted because the defendant threatened no legal wrong. Further, if the court held that the plaintiffs had made out the term alleged, it might still, in its discretion, deny the plaintiffs equitable relief, by reason, for example, of the plaintiffs' unclean hands.
The defendant in Gartside v. Outram pleaded that the plaintiffs carried on business in such a manner as to defraud their customers, by, inter alia, creating and relying on false business records, that he had made no disclosures except as to these fraudulent transactions, and that he had already assisted one defrauded customer to recover fifteen hundred pounds from the plaintiffs. The defendant filed interrogatories containing questions as to those alleged business transactions and the plaintiffs declined to answer them on the ground that they were irrelevant to the suit. Wood V-C held that the plaintiffs were bound to answer and in the course of his judgment said that if the defendant made out the case pleaded by him he would have "a very good case for resisting this injunction" (26 LJ (NS) Ch at 116). The reports do not reveal whether the suit went to a final hearing.
In this setting, the Vice Chancellor is reported as saying (26 LJ Ch (NS) at 114):

The equity upon which the bill is founded is a perfectly plain and simple one, recognized by a number of authorities and most salutary to be enforced, by which any person standing in the confidential relation of a clerk or servant is prohibited, subject to certain exceptions, from disclosing any part of the transactions of which he thus acquires knowledge. But there are exceptions to this confidence, or perhaps, rather only nominally, and not really exceptions. The true doctrine is, that there is no confidence as to the disclosure of iniquity. You cannot make me the confidant of a crime or a fraud, and be entitled to close up my lips upon any secret which you have the audacity to disclose to me relating to any fraudulent intention on your part: such a confidence cannot exist.

In the Weekly Reporter (5 WR at 36) the ViceChancellor is reported as saying:

The rule however, as to confidence was subject to certain exceptions, under one of which the present case fell, or rather it was not within the rule at all; for where there was fraud no confidence ever had or ever could exist.

In the Jurist report (3 Jur.(NS) at 40) the Vice-Chancellor is reported as saying:

There are confidences, which are rather to be called "non-confidences". There can be no confidence which can be relied on to restrain the disclosure of iniquity: such a confidence never did exist, and never can.

Insofar as the obligation referred to was contractual (as appears to have been the case) then his Honour's decision perhaps may be read as foreshadowing that of the High Court in A v. Hayden (1984) 156 CLR 532. The High Court (Mason, Wilson, Deane, Dawson JJ) there held that a court would not aid the enforcement of an express contractual obligation of confidentiality the effect of which would be to obstruct the administration of justice, because to do so would be contrary to public policy. The proceedings came before the Full Court on a stated case and in view of the limited factual basis this presented to the Full Court, some caution may be necessary in deriving any particular propositions of law from the judgments (see the comments in Greig and Davis "The Law of Contract" (1987) pp. 1141-1145). Gartside v. Outram was referred to by three members of the High Court. Wilson and Dawson JJ (156 CLR at 571-2) treated Gartside v. Outram as concerned with "actual crime or fraud". Gibbs CJ, who took a somewhat different approach, indicated he was prepared to accept Gartside v. Outram as a case in which the court declined to grant equitable relief because the plaintiff did not come with unclean hands (156 CLR at 545). The reported decision in Gartside v. Outram was not concerned with the fate of the plaintiffs at any final hearing but with the defendant's interlocutory motion for discovery by administration of interrogatories. Of course, the reason assigned for refusal to answer them was that they were irrelevant to the suit and this brought into question at the interlocutory stage the sufficiency of the defendant's case.
At the conclusion of his judgment in Gartside v. Outram (26 LJ Ch (NS) at 116) the Vice-Chancellor said that "the real ground of the jurisdiction, as it was properly put is founded first upon property, because the Court attempts not to interfere with morals, except in administering civil rights connected with rights of property", and that there was no "property" in respect of the fraudulent transactions of the plaintiffs. This passage is consistent with the classification of the plaintiffs' case as one in contract, despite the references to property. It reflects the nineteenth century view that equity did not assist in enforcement of contractual and other legal rights in general but did so primarily where the legal rights affected property. (See, for example, Rigby v. Connol (1880) 14 Ch D 482 at 487, per Sir George Jessel MR). In denying that the plaintiffs had any property rights susceptible of protection, Wood V-C was giving an additional reason why the defendant would have a good case at a final hearing. The plaintiffs had no contractual rights of the necessary kind to attract equitable relief. Indeed, if Gartside v. Outram had been brought outside contract and purely for breach of an equitable duty of confidence, there would have been no occasion to consider whether the plaintiffs sued to protect proprietary rights. In the exclusive jurisdiction of equity, injunctions are awarded where the plaintiff has a sufficient "equity", even if it might not be classified as proprietary (eg Duchess of Argyll v. Duke of Argyll (1967) Ch 302 at 322, Deta Nominees Pty Ltd v. Viscount Plastic Products Pty Ltd (1979) VR 167 at 192, Moorgate Tobacco Co Ltd v. Philip Morris Ltd (No.2) (1985) 156 CLR 414 at 437-438).

The Authority of Gartside v. Outram
From this consideration of Gartside v. Outram I conclude that that case provides insufficient basis for any "public interest defence" of the kind that, in its name, has been developed in the recent English authorities. The truth as to what Gartside v. Outram decided is less striking and more readily understood in terms of basic principle. It is that any court of law or equity would have been extremely unlikely to imply in a contract between master and servant an obligation that the servant's good faith to his master required him to keep secret details of his master's gross bad faith to his customers. Likewise, before any express contractual obligation of confidence is enforced at law or in equity the term relied on must be valid at law. A v. Hayden (supra) provides one example. Cases where express terms, allegedly designed to protect trade secrets, have been struck down as being in restraint of trade provide further examples: Drake Personnel Ltd v. Beddison (1979) VR 13 at 19-21, Pioneer Concrete Services Ltd v. Galli (1985) VR 675. The case presented to us is not one of an express or implied contractual term as to confidence; it follows from what I have said as to Gartside v. Outram that that case does not assist the appellant in the way the appellant submitted.
I do not mean to suggest that questions of public interest do not impinge at all upon the law respecting breaches of confidence. First, as to suits by government to restrain disclosure of secrets emanating from within government, The Commonwealth v. John Fairfax and Sons Ltd (1980) 147 CLR 39 establishes that whereas a private litigant may demonstrate the detriment he apprehends by reference to his personal position, a government does so by showing that the public interest it represents favours restraint rather than disclosure. Secondly, where in a suit by any litigant to protect his civil rights, material is sought from another party by discovery or from a third party on subpoena, and privilege is claimed, the modern authorities have tended to draw various traditional heads of privilege within the general description of "public interest": Grant v. Downs (1976) 135 CLR 674 at 685; Sankey v. Whitlam (1978) 142 CLR 1 at 38-46, 56-66 95-99; Baker v. Campbell (1983) 153 CLR 52 at 89-90, 93-94, 114, 128-129. Claims on the grounds of confidence have been entertained under this umbrella of "public interest" privilege: D v. National Society for the Prevention of Cruelty to Children (1978) AC 171, Science Research Council v. Nasse (1980) AC 1028; see also Alfred Crompton Amusement Machines Ltd v. Customs and Excise Commissioners (No.2) (1974) AC 405 at 433-434. However, confidentiality as a basis for a privilege against disclosure sought in proceedings brought to vindicate some other right is to be distinguished from confidential information as a source of the plaintiff's rights which are the subject of a suit. The distinction is drawn and explained by Lockhart J. in Crowley v. Murphy (1981) 52 FLR 123 at 145-146, in the context of the solicitor-client relationship.
In the alternative to the interpretation I have given it, Gartside v. Outram may be understood as a case in which even if the plaintiffs had valid legal rights they would have been denied equitable relief, in accordance with general principles, by reason of unclean hands. This construction, although one would perhaps have thought little in what Wood V-C said supports it, appealed to Warrington LJ and Scrutton LJ in Weld-Blundell v. Stephens (1919) 1 KB 520 at 533-534, 547-8 respectively, in passages which appealed to Gibbs CJ in A v. Hayden (supra). See also Hubbard v. Vosper (1972) 2 QB 84 at 99-101 per Megaw LJ, Church of Scientology of California v. Kaufman (1973) RPC 635 at 638-9 (argument), 658 per Goff J.
Finally, if there be some other principle of general application inspired by Gartside v. Outram, it is in my view of narrower application than the "public interest defence" expressed in the English cases. Such a narrow principle would not be concerned with contractual protection of confidence. Where the plaintiff asserts a contractual right, the law of contract, supplemented by equitable defences where equitable relief is sought, sufficiently deals with the situation. Any principle of the kind I am now considering will be applied in equity where there is no reliance on contractual confidence. That principle, in my view, is no wider than one that information will lack the necessary attribute of confidence if the subject matter is the existence or real likelihood of the existence of an iniquity in the sense of a crime, civil wrong or serious misdeed of public importance, and the confidence is relied upon to prevent disclosure to a third party with a real and direct interest in redressing such crime, wrong or misdeed.
I have earlier in these reasons described the various requirements for equitable protection of confidential information. The second of these requirements was that the information have the necessary quality of confidentiality. Authority already establishes that not all confidences will be suitable subject matter for equitable protection. First, the information must be secret, or substantially secret (G v. Day (1982) 1 NSWLR 24, Department of Health v. Jephcott (1985) 62 ALR 421, Speed Seal Products Ltd v. Paddington (1986) 1 A11 ER 91) and, further, it must not be merely trivial in character (Coco v. A.N. Clark (Engineers) Ltd (1969) RPC 41 at 48). It is no great step to say that information as to crimes, wrongs and misdeeds, in the sense I have described, lacks what Lord Greene MR called "the necessary quality of confidence": Saltman Engineering Co.Ltd v. Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215.
This means, as I have indicated, that I reject the appellant's submissions that in the present case there would be any "public interest" defence in the sense put to us which would be an answer to a claim for breach of confidence by disclosure to the appellant of information as to Alphapharm's importation of Naproxen before 12 January 1984. However, that is not the end of the matter. It remains to consider whether some more narrowly drawn defence would be available in the light of my conclusions as to the significance of Gartside v. Outram. Accordingly I turn to consider whether the disclosure sought by the appellant would not be a breach of confidence because (a) an attempt to restrain it by the present respondents could be met by a defence of unclean hands, and (b) further, or alternatively, the subject of the alleged confidence being the existence or the real likelihood of existence of a civil wrong of public importance, in the redressing of which Syntex has a real and direct interest, there is lacking the necessary quality or character protection of the confidential information in equity.

Unclean Hands

In most cases the conduct of the plaintiff upon which a defendant relies for a defence of unclean hands will be conduct adversely affecting the interests of the defendant personally, not another party or the public at large or a section of the public. Let it be assumed that an importer of goods sues in equity to restrain disclosure by customs authorities to a competitor of information as to goods imported by the plaintiff. The circumstance that the information disclosed infringement or a real likelihood of infringement by the plaintiff of the competitor's patent, if otherwise disqualifying conduct, would not, in the ordinary case, adversely affect the customs authorities in administering the customs laws. Would this provide an answer to an "unclean hands" defence?
There is authority which indicates that this defence is not so confined and it extends to cases where the plaintiff's misconduct has operated to the prejudice of third parties, especially where some general public interest is involved. Thus a trader who builds up his business by misrepresentations to the public (eg as to the country or district of manufacture, the history of his business, the existence of patents for his products) may, according to the particular circumstances of the case, be denied equitable relief to protect him against passing-off by his business competitors: The Leather Cloth Company Ltd. v. The American Leather Cloth Company Ltd. (1865) 11 HLC 523, 11 ER 1435; Manhattan Medicine Co v. Wood (1883) 108 US 218; Angelides v. James Stedman Henderson's Sweets Ltd (1927) 40 CLR 43 at 63, 76-78, 82-85; J.H. Coles Pty Ltd v. Need (1933) 49 CLR 499 at 504-506; Kettles and Gas Appliances Ltd v. Anthony Hordern and Sons Ltd (1934) 35 SR (NSW) 108 at 128-129. The court acts in this way, in the language of Field J. in the United States case (108 US at 227), to encourage fair dealing with the public.
In the United States the great public interest attached to observance of the anti-trust laws has encouraged the denial of equitable relief to patentees who have "misused" their patent rights to facilitate abuse of those laws. Thus, in Morton Salt Co v. G.S. Suppiger Co (1942) 314 US 488, the plaintiff's patents for a salt machine were found valid and infringed but it was denied relief by reason of its unclean hands. The unclean hands were caused by the plaintiff's practice of licensing patented machines only on condition that licensees buy their salt tablets from a subsidiary of the plaintiff, in restraint of competition in the unpatented salt tablet market (Cf Patents Act 1952 (Cth) s.112). The doctrine has been applied, with less stringency, to "misuse" of copyrights and registered trade marks. See Interstate Parcel Express Co Pty Ltd v. Time-Life International (Nederlands) BV (1977) 138 CLR 534 at 560-561; Carl Zeiss Stiftung v. VEB Carl Zeiss Jena (1969) 298 F Supp 1309 at 1314-1315, affd. (1970) 433 F 2d 686 at 706; Arar "Redefining Copyright Misuse" (1981) 81 Col L Rev 1291.
I have already referred to the width of the patent monopoly conferred by s.69 of the Australian Patents Act. That monopoly is conferred not only to reward the inventor but also to satisfy the reasonable requirements of the public with respect to the patented invention (Patents Act, ss.108, 109, 110). The importation into Australia and the placing on the Australian market of a product which infringes or may infringe an Australian patent raises issues beyond the immediate interests of the patentee and the importer. I have described earlier in these reasons the legal framework within which the rights of others dealing in the product in Australia are adjusted. In this setting, if it be the case that an importer has or may well have brought into this country an infringing product, there is a public interest involved which would make it unconscionable for the importer to have equitable remedies to enforce non-disclosure to the patentee of the information showing or tending to show that importation had occurred. The want of "clean hands" would have a sufficiently immediate and necessary relation to the equity sued on: Dewhirst v. Edwards (1983) 1 NSWLR 34 at 51.
When Mr Duchen gave his oral evidence to the Tribunal the issues were wider than they were before us on this appeal, but in cross-examination he agreed that he objected to release of the date of entry as shown in documents to which access was sought because that date would demonstrate any infringement of the product patent. This was the principal reason he relied on. The other was that this information might assist competitors to assess the levels of Alphapharm's inventory. This complaint was not directed to inventory levels of three or more years ago, as would be the case if disclosure were limited to the period before expiry of the product patent. The witness, understandably, appears to have been directing himself to the then current situation of his company. He also appears to have proceeded on the footing that disclosure of entry dates would bring with it evidence of quantities imported. Mr Hooper, Alphapharm's customs agent since 1982 gave oral evidence to the same effect as Mr Duchen.

Conclusions as to s.45

My conclusion is that the Tribunal erred in the approach it took to the construction of s.45 of the FOI Act. In particular, it ought to have evaluated the evidence before it on the footing that -

(a) contrary to what was decided in Witherford's Case (1983) 5 ALD 534, the term "breach of confidence" is used in s.45 in its technical sense,

(b) in a case such as the present where the confidence was not contractual, the question was whether disclosure sought by the appellant would be a breach of confidence liable to be enjoined in equity,

(c) in reaching a decision upon (b), it was necessary to consider, not whether there would be any "public interest defence" in the sense used in the modern English cases, but rather, whether

(i) there would be a defence of unclean hands where the subject matter of the suit was non-disclosure to Syntex of information showing or tending to show a real likelihood of importation by Alphapharm in infringement of Syntex's patent, and further, or alternatively

(ii) whether the information in question would not be protected in equity, because it did not have the necessary quality of confidence, being information as to commission or the real likelihood of commission by Alphapharm of a civil wrong of public importance, in the redressing of which Syntex had a real and direct interest.

In my view, there are defences known to law as described above in paragraph (c); it would be for the Tribunal to decide on the materials before it how, if at all, these defences would apply to the proceedings before it so as to render the disclosure sought by Alphapharm not a breach of confidence.
I have already pointed to the necessity, in evaluating claims to confidentiality of information, of identifying specifically that which is said to be the information in question. The ambit of the appellant's request has now been narrowed to pre-January 12, 1984 documents, but the point I make remains. That point, in a case such as the present, would most appropriately be met by the Tribunal exercising its powers of inspection under s. 64 of the FOI Act. Further, the Tribunal has power to give directions prohibiting or restricting disclosure to some of the parties before it of evidence given before it and of the contents of the documents lodged with it or received in evidence by it: AAT Act, s.35.
The Tribunal, on the evidence then before it, did reach the conclusion that the information in the documents in question had been disclosed in confidence, thus satisfying the third of the requirements for protection in equity enumerated earlier in these reasons under the heading The Equitable Duty of Confidence. The Tribunal assumed rather than decided the threshold question of identification of the information sought to be protected from disclosure. It also left open the matters I have discussed above in sub-para (c).
The appeal before us is upon questions of law and I have endeavoured to deal with them so far as concerns s.45 of the FOI Act. The matter should go back to the Tribunal for reconsideration in the light of these reasons. It would then be for the President of the Tribunal to determine the composition of the Tribunal, and the Tribunal would decide what procedures were to be followed, including procedures as to the reception of further evidence if this appeared the desirable course.
Some difficulty could perhaps arise as to whether any importation by Alphapharm of Naproxen before 12 January 1984 did in truth infringe the product patent. As to this I would point out that the Tribunal does not apply the strict rules of evidence (AAT Act, s.33(1)), and that in any event, it would be enough to justify disclosure that the Tribunal was satisfied that there was a real likelihood that there had been infringement. Invalidity may be asserted in defence of a claim of infringement: Patents Act, s.115. Validity may also be called into question, in limited circumstances, in proceedings for extension of term (E.I. Du Pont De Nemours & Company v. Cadbury Schweppes Pty Ltd, Full Court of the Federal Court, 20 July 1987, unrep.). If the Tribunal were satisfied on the material before it that the proceedings in the Supreme Court for extension of the product patent had been vigorously contested, but validity had not been challenged, the Tribunal might reasonably have regard to this in forming its own conclusion upon any allegation that, whilst Naproxen may have been imported by Alphapharm, Alphapharm could set up a good claim of invalidity in defence to any infringement proceedings.
On this part of the appeal, I should also point out that the information the applicant now seeks may still go beyond what would be necessary to indicate importation by Alphapharm of Naproxen before 12 January 1984. This may also be a matter for further submission to and consideration by the Tribunal.

Section 43(1)(c)(i)

The Tribunal did not reach any conclusion upon the question of exemption under s.40(1)(d), in view of its holding as to s.45, although it indicated a preliminary view on the subject. Nor did it rule upon exemption claimed under s.43 (1)(c)(i). The Tribunal did, at the hearing, express views as to the meaning of the phrase "in respect of business affairs" as it occurs therein. As I have mentioned, this was that events of pre-1984 were of historical interest. The matter was debated before us and I should express my conclusion. This is that the mere circumstance that an event is a past event does not mean that it cannot be in respect of present business affairs. The expression "in respect of" is of wide and general import like the expressions "in relation to" and "with respect to" (Victoria v. The Commonwealth (1971) 122 CLR 353 at 399-400, Fountain v. Alexander (1982) 150 CLR 615 at 629, Foord v. Whiddett (1985) 60 ALR 269 at 282). It would be open to find that a disclosure of past events could have the effect described in s.43(1)(c)(i). Whether this was so in the present case would depend upon the view the Tribunal took of the evidence.
A question would then arise as to the meaning of "lawful" in the expression "lawful business . . . affairs" in s.43(1)(c). This was not argued before us and I say nothing about it. Nor do I deal with s.40(1)(d). This also can be left to the Tribunal.
The appeal should be allowed with costs against both respondents. The decision of the Tribunal dated 12 May 1986 should be set aside. The case should be remitted to the Tribunal to be dealt with in accordance with these reasons for judgment.

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13 AUGUST 1987