EPI Environmental Technologies Inc & Anor v Symphony Plastic Technologies Plc & Anor

Information is not confidential merely because it is supplied in confidence. A breach of confidence claim requires private or confidential information and receipt in circumstances importing an obligation of confidence. Where information is partly public and partly private, the recipient may use the public information, but must not obtain an unfair advantage from the private material. Analysis of a product may therefore reveal information which remains usable if it is genuinely in the public domain, subject to any contractual restriction on analysis or use. Whether a product, its constituents or its manufacturing process contains a protectable secret is fact-sensitive. The court must identify the secret and determine what use was made of it.

EPI supplied Symphony with prodegradant additives for use in manufacturing degradable plastic products. EPI alleged that Symphony’s additive BD92384 substantially copied EPI’s DCP 509 formulation and that Symphony had breached contractual confidentiality obligations, the equitable law of confidence and passing-off rights.

The judgment addressed the non-confidential legal principles and recorded conclusions from a separate confidential part concerning the evidence and the relevant formulations. The central issue was whether information relating to EPI’s products remained confidential when the products, their general composition or constituent information were available from public sources, including through analysis.

1. Claim dismissed in substance. Except for the claim concerning clause 14.8 and an entitlement to nominal damages for breach of clause 14.4, EPI’s claims were dismissed.
2. The law of confidence requires information which is private or confidential and communication to a person who knows, or ought fairly and reasonably to know, that it is confidential. The fact that information is supplied confidentially does not itself give it the necessary quality of confidence.
3. Information may be a confidential product of skill and ingenuity even though its constituent materials are publicly available. The court must examine the product and its constituent parts and decide whether the product has a secret or confidential nature.
4. Where information is mixed public and private, the recipient may use the public information. It should obtain that information from public sources, or at least should not be placed in a better position than if it had done so. The private element cannot be used without the legal consequences identified in Seager v Copydex Ltd (No 1) [1967] RPC 349.
5. The reasoning in O Mustad & Son v Dosen [1964] 1 WLR 109 showed that publication may destroy secrecy, while leaving open protection for ancillary information not disclosed by the publication. It was therefore open to Symphony to contend that any information obtained by analysing EPI’s products was public-domain information, provided it had not used additional confidential information.
6. The court left open the separate question whether the contractual terms prohibited analysis or use of the results, subject to restraint-of-trade principles. The factual findings on confidentiality, analysis and use were set out in the confidential part of the judgment.