Written By – Anuj Kulhar (National Law University Odisha)
Introduction
The Springboard Doctrine is a legal principle in intellectual property law that is designed to prevent the unfair exploitation of an intellectual property right by a person who has acquired knowledge of it through a breach of confidence or trust. The Doctrine seeks to prevent a party from gaining an unfair advantage in the marketplace by using confidential information as a “springboard” to develop a competing product or service.
Under the Doctrine, a party who has obtained information in breach of confidence or trust may be prevented from using that information to gain an unfair advantage. This can include a prohibition on developing a competing product or service that is based on the confidential information, or using the confidential information to obtain a patent or other intellectual property right. The Doctrine can apply to a wide range of intellectual property rights, including trade secrets, patents, trademarks, and copyrights[1].
The Springboard Doctrine is an important tool for protecting the valuable intellectual property rights of individuals and companies. By preventing the misuse of confidential information, the Doctrine helps to ensure that innovators and creators can enjoy the benefits of their hard work and innovation, without fear of unfair competition. However, the Doctrine is also subject to limitations and criticisms, and its application can be complex and fact-specific. As such, it is important for parties to seek the advice of experienced legal professionals when dealing with issues related to the Springboard Doctrine.Intellectual property rights are essential in promoting innovation and creativity by providing a legal framework for individuals and companies to protect and make a profit from their creations, which can take various forms such as inventions, artistic works, or other expressions of creativity[2].
The significance of the Springboard Doctrine becomes especially pronounced in cases where an entity acquires confidential information through a breach of trust or confidence, such as a former employee who has access to trade secrets. Without the protection of the Doctrine, entities could utilize such information to gain an unfair advantage in the marketplace, ultimately eroding the value of the intellectual property rights of the rightful owner.The Doctrine further supports fairness and competition within the marketplace. By restraining the misuse of confidential information, the Doctrine ensures that all entities can compete on an equitable footing, based on their own skills and competencies. This promotes innovation and development, as it inspires entities to invest in research and development, with the assurance that their efforts will be safeguarded under the law.
Historical Background
The Springboard Doctrine is a legal principle that has its roots in the common law of England. The doctrine was first established in the case of Lamb v. Evans (1893)[3], where the court held that an individual who had obtained confidential information through a breach of trust or confidence could be restrained from using that information to gain an unfair advantage.The doctrine was later applied in the case of Faccenda Chicken Ltd v. Fowler (1987)[4], where the court extended its scope to include the use of confidential information by former employees of a company. In this case, the court held that a former employee who had obtained confidential information during the course of their employment could be restrained from using that information to compete with their former employer[5].
Since then, the Springboard Doctrine has been applied in a number of cases in both the UK and other jurisdictions around the world, including the US, Canada, and Australia[6]. Its application has been particularly significant in cases involving the misuse of trade secrets, where the Doctrine has been used to prevent parties from exploiting confidential information to gain a competitive advantage in the marketplace[7].
In terms of intellectual property rights
Trade secrets are confidential and valuable information that is not publicly known, such as customer lists, manufacturing processes, pricing information, and designs, that provide businesses with a competitive advantage. In India, trade secrets are protected under the Indian Contract Act, 1872[8], and the Indian Penal Code, 1860[9]. The Contract Act states that agreements restricting trade and commerce are void, except in cases where the restriction is necessary to protect a legitimate interest, and a person who discloses or uses confidential information obtained through a contractual relationship is liable for breach of contract. The Penal Code provides for criminal sanctions for the theft of trade secrets or the breach of trust by a person who is entrusted with confidential information.
Additionally, India enacted the Trade Secrets (Enforcement and Protection) Act, 2016[10], which defines trade secrets as information not generally known or readily accessible to the public, capable of conferring economic benefit on its owner, and provides civil remedies for misappropriation of trade secrets. India signed the TRIPS Agreement in 1995[11] and passed new laws to comply with Article 39 of the agreement, which requires member governments to protect trade secrets. India also developed the National Innovation Bill, 2008[12], which included several clauses relating to trade secrets, but it was never introduced to the Parliament. The National Intellectual Property Policy, 2016[13], briefly mentions the protection of trade secrets in the legislative agenda.
Application in India
The Spring Board Doctrine has been applied in India in various cases involving misappropriation of trade secrets. The doctrine has been recognized and applied by the Indian courts to prevent unfair competition and protect the proprietary information of a company. The doctrine has been used in cases where former employees have left a company and started a competing business or used the confidential information obtained during their employment to gain an unfair advantage in the marketplace. In such cases, the Spring Board Doctrine has been used to prevent the former employee from using the confidential information to the detriment of the former employer.
In the case of Beyond Dreams Entertainment Pvt. Ltd. v. Zee Entertainment Enterprises Ltd.[14], the Bombay High Court applied the Springboard Doctrine to prevent the defendant from using confidential information obtained from the plaintiff to produce a competing television show. Beyond Dreams had developed a concept for a TV show called “Badki Bahu” and had shared various versions and presentations of the concept with Zee Entertainment, who had promised to telecast a serial based on the concept notes. The plaintiff claimed that they had developed a concept for a TV show, which was eventually registered with the Film Writer Association, and that they had shared this concept with the defendant under the understanding that the defendant would produce the show with the plaintiff’s involvement. However, when the plaintiff declined to accept a co-producer recommended by the defendant, the defendant offered to buy the plaintiff’s concept outright or pay them royalties, but the plaintiff refused and requested the concept be withdrawn. Despite this, eventually Zee Entertainment announced a new serial called “Badi Devrani” which Beyond Dreams claimed was based entirely on their concept notes., which the plaintiff claimed was a breach of confidence. The court granted an injunction to prevent further use of the plaintiff’s concept[15].
The Delhi High Court recently applied the Springboard Doctrine in Copenhagen Hospitality & Retails v. A.R. Impex (2022)[16]. Copenhagen Hospitality & Retails and its co-plaintiff operate a chain of pizzerias under the name LA PINO’Z PIZZA through a master franchise model. A.R. Impex was appointed as the master franchisee for Gujarat and operated five LA PINO’Z PIZZA franchise outlets in Ahmedabad, as well as sub-franchise outlets in other cities in Gujarat. However, in March 2021, disputes arose between the parties and they entered into a Termination Agreement in April 2021. Following the termination, A.R. Impex opened LA MILANO PIZZERIA in or near the same premises where it previously operated as a franchisee. The plaintiffs received complaints from their sub-franchisees in Gujarat that A.R. Impex was not cooperating with them, and they subsequently discovered that A.R. Impex was using a similar logo to theirs on its hoardings and display boards. The plaintiffs also found that a former employee of theirs, Defendant No. 2, was assisting A.R. Impex in the transition from LA PINO’Z PIZZA to LA MILANO PIZZERIA and approaching other franchise owners of the plaintiffs in Ahmedabad.
The court ruled that A.R. Impex, a former master franchisee of LA PINO’Z PIZZA in Gujarat, had obtained confidential information from the plaintiff and used it to open a competing restaurant, LA MILANO PIZZERIA. As a result, the court found that A.R. Impex had gained an unfair advantage and awarded damages to the plaintiff[17].
In the case of Narendra Mohan Singh v. Ketan Mehta[18], the Bombay High Court applied the Springboard Doctrine to prevent the defendant from using confidential information acquired from the plaintiff to create a competing movie. The plaintiffs in this case are a writer-director who has received awards for his work and a production and distribution firm owned by the writer-director. The defendants include a well-known figure in the Indian film industry who has directed several films, documentaries, and television serials, a production company owned by the director and his spouse, a script writer and novelist, a producer and distributor, and a government-run enterprise engaged in film production and distribution. The plaintiffs allege that the second plaintiff wrote a script based on the life of Dashrath Manjhi, and approached the first plaintiff to produce the film based on his script, which the first plaintiff agreed to do[19]. The plaintiffs claim that the defendant used their confidential information to gain a head start in the market and that the plaintiff was entitled to an injunction to prevent further use of the information.
The Bombay High Court applied the Springboard Doctrine in the case of Bombay Dyeing and Manufacturing Co. Ltd. v. Mehar Karan Singh (2010)[20] to prevent the defendant from utilizing confidential information obtained from the plaintiff to create a competing product. The defendant was appointed as a full-time Director of the plaintiff-Company and was bound by an agreement not to disclose any confidential information to any person, as it belonged to the Company. The defendant breached the agreement by sending an email containing a manual of a customized software for the plaintiff’s real estate business to a competitor and subsequently working for several companies owned by the competitor. The plaintiff filed a lawsuit seeking an injunction against the divulgence and disclosure of confidential information and for money claims for damages suffered by the plaintiff, as well as for a refund of excess salary paid to the defendant during his tenure as a whole-time Director. The court concluded that the defendant had gained an unjust advantage by using the plaintiff’s information, and thus the plaintiff was entitled to damages for the loss incurred[21].
“A person, who obtained information in confidence, is not allowed to use it as a “springboard” for activities detrimental to the persons who made the confidential communication, it was held that breach of confidential information depended upon the broad principle of equity that he who receives information in confidence shall not take unfair advantage of it[22].”
The judgement given in the mentioned case has great importance when it comes to intellectual property rights and the Springboard Doctrine.The decision rendered by the Bombay High Court in this case has been considered as a benchmark for all subsequent cases involving the application of the Springboard Doctrine.
Drawbacks and Criticisms to the Spring Board Doctrine
The Spring Board Doctrine is not free from criticisms and has some drawbacks, especially in the context of Indian laws. One of the main criticisms of the Spring Board Doctrine is that it is not well-defined, and there is no clear guideline as to what qualifies as a springboard. This lack of clarity can lead to confusion and inconsistencies in its application.
Another criticism of the Spring Board Doctrine is that it is too broad and can be used to stifle competition. The doctrine can be used to prevent an employee or competitor from using any information obtained during their employment, even if it is not strictly confidential. This can create a situation where legitimate competition is suppressed in the name of protecting trade secrets.
Another drawback is that the doctrine can be difficult to apply in practice, as it requires a careful balance between protecting the legitimate interests of the company and the individual rights of the employee. It can be challenging to determine whether information is truly confidential, and whether the employee has used it in an unfair manner. This can lead to lengthy legal disputes and uncertainty for both parties. The application of the Spring Board Doctrine can vary depending on the jurisdiction, which can lead to inconsistency in the law. Some courts may take a strict approach to the doctrine, while others may apply it more leniently. This can create uncertainty for companies and employees alike, and can make it difficult to predict the outcome of a case.
Furthermore, the Spring Board Doctrine may be seen as contradictory to the principle of free competition. While the doctrine aims to prevent unfair competition, it can also be seen as limiting fair competition by allowing companies to monopolize certain areas of business.
Additionally, the application of the Spring Board Doctrine in India has been inconsistent. Some courts have applied the doctrine broadly, while others have limited its scope, making it difficult to predict the outcome of cases involving the doctrine.
Finally, the Spring Board Doctrine is criticized for its limited scope in protecting trade secrets. While it can prevent the use of confidential information, it does not prevent an employee from using their general knowledge, skills, or experience obtained during their employment to compete with their former employer. This can create a situation where employers are forced to rely on non-compete agreements, which are generally not enforceable in India, to protect their interests.
Way Forward
The effective implementation of the Spring Board Doctrine in India would require a balance between protecting the rights of the parties involved and promoting innovation and development. One way forward is to have a clear and precise definition of what constitutes confidential information and what actions would amount to a breach of confidence. This would provide clarity to parties on what actions would be permissible and what actions would constitute a breach of confidence. Another way forward would be to provide for adequate remedies in cases of breach of confidence. This could include damages, injunctions, and account of profits[23].
The availability of these remedies would act as a deterrent to potential infringers and provide sufficient compensation to the aggrieved party.It is also important to ensure that the Spring Board Doctrine is not misused to stifle competition and innovation. This could be achieved by carefully examining each case on its merits and ensuring that the application of the doctrine is justified in each case.
In addition, it is crucial to have a strong and effective legal framework that addresses issues related to intellectual property rights and the protection of confidential information. This would require regular updates to the law to keep pace with technological advancements and changing business practices.
Conclusion
In conclusion, the Spring Board Doctrine is an important legal principle in the protection of intellectual property rights. It allows for the prevention of unfair advantage gained by a party through the misuse of confidential information obtained from another party. While the doctrine has been applied in several cases in India, it also faces criticisms and limitations. These include the potential for misuse and abuse, the need for balancing between protection and innovation, and the lack of clear guidelines for its application. To ensure effective implementation of the Spring Board Doctrine, there is a need for careful consideration of its application on a case-by-case basis, and the establishment of clear guidelines and principles to ensure a fair and just outcome for all parties involved.
[1]Protection of Trade Secrets and Undisclosed Information: Law and Litigation, 53 JILI (2011) 254.
[2]Book Review: “Overlapping Intellectual Property Rights” by Neil Wilkof and Shamnad Basheer (eds.), 9 IJLT (2013) 47.
[3]Lamb v. Evans (1893) 68 LT 131.
[4]Faccenda Chicken Ltd v Fowler & Others [1985] 1 All ER 724 (Ch).
[5]Tana Pistorius, ‘Confidential Information and the Danger of Confusing Classifications’ (1993) 5 S Afr Mercantile LJ 330
[6]Lonrho Logistics (Pty.) Ltd. v. Toll Global Forwarding (SA) (Pty.) Ltd., 2015 SCC OnLine ZAWCHC 80.
[7]Maynard P, ‘Springboard Injunctions’ (Gaby Hardwicke Solicitors, August 2014) <https://www.gabyhardwicke.co.uk/briefing-notes/springboard-injunctions/>accessed 10 March 2023.
[8] The Indian Contract Act 1872, s27.
[9] The Indian Penal Code 1860, s408.
[10]Trade Secrets (Enforcement and Protection) Act 2016, s2(1)(i).
[11]Agreement on Trade-Related Aspects of Intellectual Property Rights, opened for signature 15 April 1994, 1869 UNTS 299 (entered into force 1 January 1995) art 39.
[12]The National Innovation Act 2008, Cl 8(1)(d).
[13]The National Intellectual Property Policy (2016) Government of India, New Delhi, Chp 3, s3.6.
[14]Beyond Dreams Entertainment Pvt. Ltd. v. Zee Entertainment Enterprises Ltd., 2015 SCC OnLine Bom 4223.
[15]Ibid.
[16]Copenhagen Hospitality & Retails v. A.R. Impex, 2022 SCC OnLine Del 4701.
[17]Ibid.
[18]Narendra Mohan Singh v. Ketan Mehta, 2015 SCC OnLine Bom 8761.
[19]Ibid.
[20]Bombay Dyeing and Manufacturing Co. Ltd. v. Mehar Karan Singh, 2010 SCC OnLine Bom 1243.
[21] Ibid.
[22]Ibid.
[23]Need for Separate “Trade Secret” Act with Required Law, (2012) PL June 44