Griggs, Lynden; Price, Rohan --- "The University Academic as a Fiduciary - Where to Following University of Western Australia v Gray?" [2008] JlLawInfoSci 3; (2008) 19 Journal of Law, Information and Science 22
∗ Lynden Griggs, senior lecturer, University of Tasmania. Rohan Price, Assistant Professor, City University of Hong Kong.
[1] James Macken, Law of Employment (5th ed, 2002) 141.
[2] University of Western Australia v Gray (No 20) (2008) 246 ALR 603; 76 IPR 222 (Trial Judge) (2009) 179 FCR 346; 259 ALR 224; 82 IPR 116 (Full Federal Court); Victoria University of Technology v Wilson [2004] VSC 33; (2004) 60 IPR 392.
[3] (2009) 179 FCR 346; 259 ALR 224; 82 IPR 116.
[4] [2004] VSC 33; (2004) 60 IPR 392.
[5] B Lane, ‘Court backs inventor’s IP claim’, The Australian, (Sydney) 9 September 2009, Higher Education Supplement 24.
[6] Blackstone, Commentaries on the Laws of England, Book 1 (Part 2), Chapter 14, 422.
[7] Blackstone, ibid, 429.
[8] (1701) 1 Salk 289.
[9] Blackstone, above n 6, 430.
[10] NAB Ltd v Rusu [2001] NSWSC 32, [24].
[11] Black v S Freedman and Co [1910] HCA 58; (1910) 12 CLR 105, 110.
[12] [1931] UKHL 2; [1932] AC 161, 227 (Lord Atkin).
[13] [1931] UKHL 2; [1932] AC 161, 231.
[14] [1931] UKHL 2; [1932] AC 161, 231.
[15] Tesco Stores Ltd v Pook [2003] EWHC 823; [2004] IRLR 618; Attorney General v Blake [2000] UKHL 45; [2001] IRLR 36; Nottingham University v Fishel [2000] IRLR 471
; and Symbon Corp v Rochem [1983] 2 AER 706 (where the Court of Appeal held that an employee had not been under a duty to disclose to his employers his own misconduct but he had been under a duty to disclose a fraudulent misconduct of the subordinate employees with whom he had acted, even though that disclosure would have revealed his own misconduct to his employers).
[16] Fassihi and ors v Item Software (UK) Ltd CA [2004] EWCA Civ 1244; [2004] IRLR 928; Van Gestel v Can – The Times 7 August 1987 (1987) CL 454; Horcal Ltd v Gatland [1983] BCLC 60 (not overruled in [1984] BCLC 549]; Industrial Development Consultants Ltd v Cooley [1972] 1 WLR 443.
[17] Police Service Board v Morris [1985] HCA 9; (1985) 156 CLR 397.
[18] See Baggett v Commonwealth Bank of Australia [2001] NSWSC 108; Spillane v Commonwealth of Australia [2002] QSC 367.
[19] Weldon v Harbison [2000] NSWSC 272; Co-ordinated Industries v Elliot (1998) 43 NSWLR 282; and Concut Pty Ltd v Worrell [2000] HCA 64; (2000) 103 IR 160, 176 (McHugh J): ‘Given his [Wells] senior status in the company's service and the nature and extent of the misconduct disclosed in the evidence and accepted by the primary judge, it was open to him to find that the employee had undermined the confidence essential to the ongoing relationship of employment. Prima facie, this had afforded a legal justification for the employee's summary dismissal.’ but cf later in McHugh’s judgment: ‘The case is revealed for what it is: nothing more than the invocation of an ordinary remedy belonging to an employer who discovers a serious breach by, in this case, a senior employee of a fundamental term implied into an employment contract by force of law’ (at 176) [emphasis added].
[20] Burazin v Blacktown City Guardian [1996] IRCA 371; (1996) 142 ALR 144, 151; Daw v Flinton Pty Ltd (1998) 85 IR 1, 3; and Blaikie v South Australian Superannuation Board (1995) 65 SASR 85, 102–106.
[21] Vanessa Sims, ‘Is Employment a Fiduciary Relationship?” (2001) 30 Industrial Law Journal 101, 103. Consideration of this in another context can be seen in R B E Price, The Employment Laws of Hong Kong and China (2009) 161–175.
[22] [2001] SASC 22 (Unreported, Doyle CJ, Olsson J, Bleby J, 14 February 2001).
[23] [2001] SASC 22, [103].
[24] [2002] FCA 939; (2002) 116 IR 186.
[25] Burazin v Blacktown City Guardian Pty Ltd [1996] IRCA 371; (1996) 142 ALR 144.
[26] [2007] NSWSC 104 (Unreported, Rothman J, 19 February 2007).
[27] Per Lord Denning in Woods v W M Car Services (Peterborough) Ltd [1982] ICR 693; approved by Lee J in Nettlefold v Kym Smoker Pty Ltd (1999) 69 IR 370, 372; subsequently disapproved by the Full Bench of the Federal Court in Cosco Holdings Pty Ltd v Thu [1997] FCA 1353; (1997) 79 FCR 566, 592.
[28] Burazin v Blacktown City Guardian Pty Ltd [1996] IRCA 371; (1996) 142 ALR 144, 154 (termination of employment as salesperson of advertising copy and being escorted from her office by police officers); but cf Hollingsworth v Commissioner of Police (No 2) (1999) 88 IR 282
, 318–319 (termination of employment as trainee police officer after it was discovered that she had worked as a stripper) and Thomson v Orica Australia Pty Ltd [2002] FCA 939; (2002) 116 IR 186
, 225 (demotion from account manager to transactional selling and denial of leave under a family leave policy). A recent example where a term of mutual trust and confidence is recognised as an implied term of Australian employment law can be seen in McDonald v State of South Australia [2008] SASC 134; (2008) 172 IR 256; SASC 134.
[29] [2005] NSWSC 30; (2005) 138 IR 103.
[30] [2002] HCA 35; (2002) 211 CLR 317.
[32] [2005] NSWSC 30; (2005) 138 IR 103, 114–115.
[33] See Godfrey, ‘Contracts of Employment: Renaissance of the Implied Term of Trust and Confidence’ (2003) 77 Australian Law Journal 764; Jonathan Greenacre, ‘The Continuing Rise of the Implied Term of Mutual Trust and Confidence’ (2007) 13(3– 4) Employment Law Bulletin 28.
[34] See the comments by G E Dal Pont and D R C Chalmers, Equity and Trusts in Australia (4th ed, 2007) 98.
[35] Mainland Holdings Ltd v Szady [2002] NSWSC 699.
[36] Blyth Chemicals Ltd v Bushnell [1933] HCA 8; (1933) 49 CLR 66.
[37] Adami v Maison de Luxe Ltd [1924] HCA 45; (1924) 35 CLR 143.
[38] Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VicRp 7; [1967] VR 37.
[39] Farley v Lums [1917] WALawRp 25; (1917) 19 WALR 117.
[40] EFG Australia Ltd v Kennedy (1999) 46 AILR 5–225.
[41] Astley v Austrust Ltd (1999) 197 CLR 1.
[42] Adami v Maison de Luxe Ltd [1924] HCA 45; (1924) 35 CLR 143.
[43] Spencer Industries Pty Ltd v Collins [2003] FCA 542; (2003) 58 IPR 425.
[45] [2000] IRLR 471, [86].
[46] [1977] 1 Ch 106, 230.
[47] See Phipps v Boardman [1966] UKHL 2; [1967] 2 AC 46.
[48] See Clay v Clay (2001) 202 CLR 410.
[49] Tom Reid, ‘Academics and Intellectual Property: Treading the Tightrope’ [2004] Deakin Law Review 32, 38.
[50] G E Dal Pont and D R C Chalmers, above n 34, 130.
[51] Concut Pty Ltd v Worrell [2000] HCA 64; (2000) 176 ALR 693.
[52] Green v Bestobell Industries Pty Ltd [1982] WAR 1.
[53] Sterling Engineering Co Ltd v Patchett [1955] AC 534.
[54] Avtex Airservices Pty Ltd v Bartsch (1992) 107 ALR 539.
[55] [2004] VSC 33; (2004) 60 IPR 392.
[56] Ibid, [69].
[57] Ibid, [72].
[58] Ibid, [144].
[59] Ibid, [145], quoting from Hospital Products Ltd v United States Surgical Corp [1984] HCA 64; (1984) 156 CLR 41, 97 (Mason J).
[60] Ibid, [146].
[61] Ibid.
[62] Ibid, [148].
[63] Ibid.
[64] Ibid, [149].
[65] As noted in University of Western Australia v Gray (No 20) (2008) 248 ALR 603, [155].
[66] By contrast the former student who assisted them was not held liable. He had not willfully closed his eyes to the academics breach of duty.
[67] Joellen Riley, ‘Who Owns Human Capital? A Critical Appraisal of Legal Techniques for Capturing the Value of Work’ (2005) Australian Journal of Labour Law 1, 9.
[68] (2008) 248 ALR 603 (Trial Judge); (2009) 179 FCR 346; 259 ALR 224; 82 IPR 116 (Full Federal Court).
[69] (2008) 248 ALR 603, [5].
[70] University of Western Australia v Gray (No 20) (2008) 248 ALR 603.
[71] In addition to Victoria University of Technology v Wilson [2004] VSC 33; (2004) 60 IPR 392, French J also noted the two other Australian cases on employee inventions, these being Spencer Industries Pty Ltd v Collins [2003] FCA 542; (2003) 58 IPR 425; Eastland Technology Australia Pty Ltd v Whisson [2005] WASCA 144; (2005) 223 ALR 123.
[72] As stated by the Court: (2009) 179 FCR 346, [77], these were:
a) a duty to deal with the property of UWA so as to protect and preserve that property;
b) a duty not to make any secret profit;
c) a duty to account for any secret profit; and
d) the duties of a trustee of such of UWA’s assets or property as were in his possession or control.
[73] (2008) 248 ALR 603, [150]–[156].
[74] Ibid, [154].
[75] Ibid, [157].
[76] Ibid.
[77] Monotti and Ricketson, Universities and Intellectual Property (2003).
[78] (2008) 248 ALR 603, [159], quoting from Monotti and Ricketson, ibid, [6.66].
[79] (2008) 248 ALR 603, [159].
[80] Ibid, [160].
[81] Ibid, [164]. This was reinforced by the different views taken by the Pro Vice Chancellors of Research about the universities role in relation to inventions (2008) 248 ALR 603, [162].
[82] (2009) 179 FCR 346; 259 ALR 224; 82 IPR 116.
[83] (2009) 179 FCR 346, [185].
[84] Ibid, [184].
[85] Ibid, [186].
[86] Ibid, [198].
[87] Ibid, [211].
[88] Ibid, [213]–[216].
[89] Ibid, [210].
[90] Ibid, [151].