Nearly three years ago, we reported on a decision of the Australian Designs Office that suggested that the automatically generated ‘Confidentiality Notice’ in the footer to your email may not always be effective.
The decision was appealed and last month the Federal Court handed down its reasons for judgment allowing the appeal and setting aside the decision of the Delegate of the Registrar of Designs.
To recap, in the original proceeding before the Australian Designs Office, Sun-Wizard made a third‑party request for examination of Key Logic’s registered and certified design for a “Solar bollard”. Sun-Wizard relied on two emails with attached images as invalidating prior publications of the design. Key Logic conceded that the images attached to the emails were of the design. Therefore, the decision turned on whether the emails were publications, that is, made available to member(s) of the public without any restriction as to secrecy or confidentiality.
Key Logic submitted that the contents of the emails and the attachments “were confidential and received in circumstances importing an equitable obligation of confidence”. Each of the emails was sent to “All EXlites Associates”. In the proceeding before the Australian Designs Office, it was unclear exactly how many recipients this constituted, but it was apparent that most of the recipients were sellers of Key Logic’s products. Each of the emails included after the signature block, in a smaller font size, a confidentiality notice in the following terms:
Confidentiality: This E-Mail is from EXlites. The contents are confidential and are intended only for the named recipient. The recipient is hereby notified that any use, copying, disclosure or distribution of the information contained in the E-Mail is strictly prohibited. If you have received this E-Mail in error, please reply to us immediately at . Please delete the document from your E-Mail system.
In relation to Key Logic’s attempt to rely on the confidentiality notice at the end of each email, in the original proceeding the Delegate of Registrar of Designs found as follows (at [46]):
I am not persuaded that the confidentiality notice at the bottom of the email has the effect submitted by the Owner. Case law on the effectiveness of such notices is scant to say the least. Nevertheless, it is apparent that notices of that type are added almost universally by businesses as a matter of course beneath the signature blocks of their emails regardless of the content of the email to which they are appended. It is unlikely that any recipient of an email in a business setting reads beyond the signature block every time they receive an email. It is far more likely that they never read beyond the signature block. While a recipient is likely aware that there is probably such a notice lurking there—should they happen to turn their mind to the question—the ubiquitous presence of such notices means that they are unlikely to have the effect asserted by the Owner, regardless of the nature of the material either in the email or attached to it. It seems to me that in cases where what is contained in emails is truly confidential, and a sender wishes to make that known, a confidentiality notice at the beginning of an email is far more likely to be effective in importing an obligation of confidence to the recipient.
The appeal of this decision to the Federal Court was in the nature of a rehearing. It is apparent from the lengthy reasons for judgment, some 285 paragraphs long, that a considerable volume of fresh evidence was adduced as to the circumstances surrounding the emails in dispute. In the end the appeal was successful as Justice Greenwood found that in all the circumstances the relevant disclosures in the emails were made under an obligation of confidence.
Despite the somewhat dramatic foreshadowing of Justice Greenwood in stating (at [282]) that a matter that “loomed large in the proceeding was the significance of the text of a footer at the end of each email”, there is unfortunately almost no discussion of this issue in the decision. The only relevant finding by Justice Greenwood on this point was (at [284](16)) that the confidentiality notice in the footer to the relevant email “operated as a cognitive cue of some importance […] but by itself it was not determinative of the character of the information communicated by the emails.”
The due date to seek leave to appeal to the Full Court of the Federal Court has now passed so it seems as though this is where the story ends.
Accordingly, even though the appeal was successful the usefulness of a confidentiality notice in your email footer still appears to be limited. In any event, there does not appear to be any need to go and delete the confidentiality notice in your email footer.
If you have any questions or require expert advice, please don’t hesitate to contact us.
