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This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 3: Confidential Information and Trade Secrets

High Court of Ireland [2010]: Koger Inc. and Anor v O’Donnell and Ors, [2010] IEHC 350

Date of judgment: October 8, 2010

Issuing authority: High Court of Ireland

Level of the issuing authority: First Instance

Type of procedure: Judicial (Civin( �/span>

Subject matter: Undisclosed Information (Trade Secrets)

Plaintiffs: Koger Inc. and Koger (Dublin) Limited

Defendants: James O’Donnell; Roger Woolman; David Gross; HWM Financial Solutions Limited

Keywords: Breach of confidence, Confidential information, Software program, Source code, Unauthorized copying, Former employee

Basic facts: The two plaintiff companies brought proceedings against the defendants, consisting of three individuals and one company (established by the three individual defendants), claiming, inter alia, copyright infringement and breach of confidence and/or abuse of confidential information and/or trade secrets.  The three individual defendants are former employees of the plaintiff companies.  The proceedings relate to a proprietary computer software program developed by the plaintiffs, known as NTAS.

The plaintiffs allege that the defendants used unlawful means, including breach of confidence, breach of contract, and breach of their duties to the plaintiffs, to enable the development and establishment of a competing product (ManTra): “It is the plaintiffs’ case, in short, that the defendants [developed and released the rival ManTra product] as a result of breach of confidence and infringement of the copyright held by the plaintiffs in the NTAS program, in particular, in its source code and design materials” (para. 16 of judgment).

Held: The High Court held that the plaintiffs failed to identify the use or misuse of any identifiable trade secrets, resulting in the Court being satisfied that there had been no breach of confidential information or misuse of protected information.  Thus, the Court dismissed the plaintiffs’ claims.

Relevant holdings in relation to confidential information and trade secrets: The Court noted that the critical question in the breach of trade secrets analysis was whether the employer (the plaintiffs) had trade secrets that could be fairly regarded as their property, “as distinct from the skill, experience, know-how and general knowledge” that could be fairly regarded as the property of the employees (the defendants), to use without restraint for their own benefit or in service of a competitor (para. 108 of judgment).

Due to lack of precision in pleading by the plaintiffs, as well as the absence of solid evidence to prove any trade secrets, the Court found there to be no breach of confidential information or misuse of information protected by a contract of employment.  The plaintiffs expressly relied on a claim that their NTAS product was copied, accessed, and used by the defendants in the development of ManTra.  Accordingly, the plaintiffs’ breach of confidence claim could not succeed in light of their failure to establish such alleged access or use.

Relevant legislation: Copyright and Related Rights Act, 2000