Loading...
Queensland Judgments

beta

Authorised Reports & Unreported Judgments
Exit Distraction Free Reading Mode
  • Unreported Judgment

Integrated Medical Technology Pty Ltd v Gilbert (No 2)

 

[2015] QSC 124

 

SUPREME COURT OF QUEENSLAND 

 

CITATION:

Integrated Medical Technology Pty Ltd and Anor v Gilbert and Ors (No 2) [2015] QSC 124

PARTIES:

INTEGRATED MEDICAL TECHNOLOGY PTY LTD
(First Plaintiff)
INTEGRATED MEDICAL SYSTEMS PTY LTD
(Second Plaintiff)
v
SHANE ROSS GILBERT
(First Defendant)
JJS TECHNOLOGIES PTY LTD
(Second Defendant)
BUNDABERG RADIOLOGY PTY LTD
(Third Defendant)
JOHN MITCHELL
(Fourth Defendant)
JASON WILDEN
(Fifth Defendant)
BAYSIDE RADIOLOGY PTY LTD
(Sixth Defendant)
BOLSOVER RADIOLOGY PTY LTD
(Seventh Defendant)
BEACHSIDE RADIOLOGY PTY LTD
(Eighth Defendant)

FILE NO/S:

BS161 of 2013

DIVISION:

Trial Division

PROCEEDING:

Application

DELIVERED ON:

24 June 2015

DELIVERED AT:

Brisbane

HEARING DATE:

16 December 2014

JUDGE:

Jackson J

ORDER:

The order of the court is that:

  1. The defendants disclose the documents identified in exhibit VVC-44 to the affidavit of Visnja Veronica Cavanagh filed on 10 December 2014 (“the affidavit”).
  2. The defendants disclose the documents in categories 2, 3 and 14 of exhibit VVC-43 to the affidavit.
  3. The orders made by Jackson J on 19 November 2013 and 10 September 2014 are varied so that Ms Irene Low is permitted access to some of the restricted disclosure documents in accordance with these reasons.
  4. Direct that the parties are at liberty to apply for any further orders necessary to give effect to these reasons.
  5. Direct that the parties may make any application for and submissions for an order for costs in writing not longer than 5 pages within 10 days.

CATCHWORDS:

PROCEDURE – DISCOVERY AND INTERROGATORIES – DISCOVERY AND INSPECTION OF DOCUMENTS – DISCOVERY OF DOCUMENTS – GENERALLY – where the plaintiffs claim for breach of copyright, breach of confidence, breach of contract, breach of fiduciary duty or breach of statutory obligation – where the plaintiffs allege that the defendants, who were former employees of the plaintiff, copied the plaintiffs’ computer software source code – where the plaintiffs apply for orders that the defendants disclose a class of documents or serve an affidavit stating that such documents do not exist – whether the defendants should disclose the classes of documents to the plaintiff

Uniform Civil Procedure Rules 1999 (Qld), rr 155, 211, 223, 224

Judicature Act 1876 (Qld)

Rules of the Supreme Court 1900 (Qld), o 35, r 18

Alcoa of Australia Ltd v Apache Energy [2014] WASCA 148, cited

Civic Video Pty Ltd v Paterson [2013] WASCA 107, considered

Dr Martens Australia Pty Ltd v BATA Shoe company of Australia Pty Ltd (1997) 75 FCR 230, cited

ex parte; Fielder Gillespie Ltd [1984] 2 Qd R 339, cited

Island Records Ltd v Tring International Plc [1996] 1 WLR 1256, applied

LED Builders Pty Ltd v Eagle Homes Pty Ltd (No 3) (1996) 70 FCR 436, cited

Magellan Petroleum Australia Ltd v Sagasco Amadeus Pty Ltd [1994] 2 Qd R 37, cited

Menkens v Wintour (2010) 88 IPR 333, cited

Mercantile Mutual Custodians Pty Ltd v Village/Nine Network Restaurants & Bars Pty Ltd [2001] 1 Qd R 276; [1999] QCA 276, followed

Mobil Oil Australia Ltd & Anor v Guina Developments Pty Ltd & Anor [1996] 2 VR 34, considered

Mulley v Manifold (1959) 103 CLR 341; [1959] HCA 23, considered

Statuscard Australia Pty Ltd v Rotondo [2009] 1 Qd R 559; [2008] QSC 181, cited

Optus Networks Pty Ltd v Telstra Corporation Ltd (No 4) [2011] FCA 485, cited

Polyaire Pty Ltd v K-Aire Pty Ltd (No 4) [2007] SASC 386, cited

COUNSEL:

D Logan QC and P O Higgins for the plaintiffs

A Harding for the defendants

SOLICITORS:

McCullough Robertson Lawyers for the plaintiffs

M + K Lawyers for the defendants

  1. Jackson J: The plaintiffs apply for orders that the defendants disclose documents or classes of documents or file and serve an affidavit stating that a specified document or class of document does not exist, or has never existed, or the circumstances in which they ceased to exist or passed out of the possession or control of the defendant.  The application is made under Uniform Civil Procedure Rules 1999 (Qld) (“UCPR”), r 223(1) and (2).
  1. The context is that the defendants have made disclosure of documents under the duty of disclosure (r 211 UCPR) and prior orders made by the Court providing for and regulating disclosure. In other words, the application is for an order for further disclosure. Relevantly, r 223 UCPR provides, in part:

“(1)The court may order a party to a proceeding to disclose to

another party a document or class of documents by—

(a)delivering to the other party in accordance with this part

a copy of the document, or of each document in the

class; or

(b)producing for the inspection of the other party in

accordance with this part the document, or each

document in the class.

(2)The court may order a party to a proceeding (the first party) to

file and serve on another party an affidavit stating—

(a)that a specified document or class of documents does

not exist or has never existed; or

(b)the circumstances in which a specified document or

class of documents ceased to exist or passed out of the

possession or control of the first party.

(3) The court may order that delivery, production or inspection of

a document or class of documents for disclosure—

(a)be provided; or

(b)not be provided; or

(c)be deferred.”

  1. Rule 223 UCPR is modelled on the provisions of Order 35 of the Rules of the Supreme Court 1900 (Qld) which it replaced.  Order 35 in that form was introduced in 1996. It replaced earlier rules of Court as to discovery of documents. The earlier rules stemmed from the rules of court first introduced in this State as a schedule to the  Judicature Act 1876 (Qld), following similar legislation introduced in the United Kingdom in the Judicature Acts of 1873 and 1874.  The new Queensland rules, introduced in 1996, differed distinctly from the pre-1996 regime and were accordingly given the new name of “disclosure”.
  1. Under the pre-1996 regime, applications for further discovery were rarely successful for the reasons explained by Menzies J in Mulley v Manifold.[1]  His Honour said:

“… It cannot be shown by a contentious affidavit that the discovery made is insufficient.  Before 1912 it was thought that the insufficiency had to appear from the pleadings, the affidavit of documents itself or the documents therein referred to.  However, in British Association of Glass Bottle Manufacturers Ltd v Nettlefold, it was established that the insufficiency might appear not only from the documents but also from any other source that constituted an admission of the existence of a discoverable document.  Furthermore, it is not necessary to infer the existence of a particular document; it is sufficient if it appears that a party has excluded documents under a misconception of the case.  Beyond this, the affidavit of discovery is conclusive.” (footnotes omitted)

  1. There was an exception to that barrier in the form of a rule[2] that permitted an application for further discovery by an order requiring a party to state on affidavit whether any specific undiscovered document is in the possession or power of the party or what has become of it.  But that rule did not authorise an order for further general discovery.  It is now reflected in r 223(2) of the UCPR.
  1. The effect of the new rules for disclosure was described by Pincus JA in Mercantile Mutual Custodians Pty Ltd v Village/Nine Network Restaurants & Bars Pty Ltd,[3] as follows:

“The former inflexible approach to applications for further discovery (see Permanent Finance Corporation Limited v Euro Pacific (Plant Hire) Pty Ltd (No 2) ((1971) Qd R 302 at 315) is no longer appropriate, under the current disclosure system, and because of the notions expressed in Rule 5 of the Uniform Civil Procedure Rules.  If it appeared, for example, that an order for further disclosure would be likely to ‘facilitate the just and expeditious resolution of the real issues’ that would enable and perhaps require the making of such an order.  But there must, at least in the ordinary case, be something more than mere suspicion, to justify granting relief to a party complaining of incomplete disclosure.”[4]

  1. Accepting that there is some greater flexibility under the rules for disclosure, in a practical sense it is difficult for a court to resolve a contest as to an order sought for further disclosure based on contentious affidavits. Deponents are not usually cross-examined, although that can and sometimes does occur. Ordinarily, the contest does not proceed to a final resolution of disputed questions of fact.
  1. The present case presents some of those difficulties. The claim in the proceeding is for breach of copyright, breach of confidence, breach of contract or breach of fiduciary duty or breach of statutory obligation. At the risk of over simplification, the plaintiffs allege that some of the defendants, who were former employees of the plaintiffs, copied or misused the plaintiffs’ computer software source code in writing the defendants’ software programs.
  1. A director of the plaintiffs swears that his experience in developing the plaintiffs’ software involved the production of classes of documents that have not been disclosed by the defendants. The defendants’ answer, on affidavit, is that they have no further directly relevant documents in their possession or power in respect of the development of their products.
  1. In this context, the significance of r 223(4) UCPR must not be overlooked. It provides that:

“(4)An order mentioned in subrule (1) or (2) may be made only if—

(a)there are special circumstances and the interests of justice require it; or

(b) it appears there is an objective likelihood—

(i)the duty to disclose has not been complied with; or

(ii)a specified document or class of documents exists or existed and has passed out of the possession or control of a party.”

  1. Although more flexibility is permitted, satisfaction of r 223(4) UCPR operates as a precondition to an order for further disclosure being made.
  1. There are no “special circumstances” relied upon here. Nor is this a case, for the most part, where a document or relevant class of documents has “passed out of the possession or control” of the defendants. Therefore, in respect of most of the relevant classes of documents, the plaintiffs must show that that the “duty to disclose has not been complied with” by the defendants or some of them.
  1. The plaintiffs are not precluded from doing so by a contentious affidavit. However, it is not enough for the plaintiffs’ director to say that he believes there has been non-compliance or that he has a suspicion of non-compliance. Where the court is in doubt, it may be appropriate in some circumstances to order a party to file and serve an affidavit stating whether a specified document or class of documents does not exist or has never existed provided there are special circumstances and the interests of justice require it. But that power should not be seen as a general panacea in favour of a party who cannot discharge the onus of showing that it appears there is an objective likelihood that the duty to disclose has not been complied with by the other party.
  1. In paragraph 1 of the application, the plaintiffs apply for orders for disclosure of documents or classes of documents by production. By paragraph 2 of the application the plaintiffs apply “further or alternatively” and “if the defendants are unable to produce the requested disclosure to the plaintiffs” for an order that the defendants file and serve an affidavit within seven days stating whether the specified document or class of documents does not exist or has never existed or the circumstances in which it ceased to exist or passed out of the possession or control of the defendants. In my view, it is a flawed approach to generally assume that if it is not appropriate to order disclosure by production, it will be appropriate to order an affidavit swearing to the existence or non-existence of a relevant document or class.
  1. In all, the plaintiffs apply for such orders in respect of 21 separate classes or categories of documents. The hearing of the argument on the application took some time, even with the benefit of written outlines of submission and schedules of the parties’ counter positions. Some of the categories or classes will be grouped for the purposes of analysis.

Source code files

  1. Exhibit VVC-44 to the affidavit of Ms Cavanagh filed on 10 December 2014 lists hundreds of computer files or directories which the plaintiffs submit ought to be disclosed by production. One of the documents disclosed by the defendants is entitled “source modification”. It lists files and directories which are not contained in the earliest version of the source code for relevant programs disclosed by the defendants. The plaintiffs’ expert, Mr Weiner, says that to prepare a comprehensive report he would be assisted by disclosure of the missing components referred to in the source modification document that are not contained in the earliest version of the source code disclosed by the defendants.
  1. The defendants make a number of specific and detailed submissions in opposition to any order for disclosure of those directories and files. For example, they say that directories are not source code and contain no information other than files that are “stored” in each directory and therefore cannot assist in performing a source code comparison. So much may be accepted, but it does not take the matter very far for the defendants. To contrary effect, it reveals the defendants’ approach, namely that they need only disclose documents that would enable Mr Weiner to compare the plaintiffs and defendants’ source code. That is not the ambit of the disclosure required. Disclosure is required of documents directly relevant to the question of whether there was copying or misuse, as a factual allegation in support of the claims of breach. The comparison of the two sets of codes is only one potential evidentiary method of proof of the fact of copying or misuse.
  1. Next, the defendants say that disclosure of bitmaps and icons will not assist Mr Weiner in performing a source code comparison. Further, they submit that 132 of the bitmap files relate to their PACS software which was not a product developed by the plaintiff. “PACS” is an acronym for a Picture Archiving and Communication System.
  1. Nevertheless, the second defendant can disclose the November 2008 versions of these bitmap files, if ordered to do so.
  1. In my view, it is not appropriate to attempt to resolve any question of the ultimate utility of the bitmaps or icons on this application. Mr Weiner swears that the documents will assist in providing a comprehensive report. In two respects, I am concerned as to Mr Weiner’s approach. First, in response to objections made to the production of some documents he seeks, Mr Weiner responds that the scope of his inquiry goes beyond a comparison of the source code. There are some respects in which that might be or will be appropriate, but I am conscious that the statement of claim (“SOC”) is firmly founded upon allegations of copying or misuse of the source code. The proceeding is not a general roving inquiry, nor should Mr Weiner’s report be directed to some other un-pleaded case. If it is, it is not likely to be admissible. Second, at one point Mr Weiner referred to wanting to see how the defendants’ programs run to assess the look and feel of the defendants’ documents. I note that is not presently recognised as the subject of copyright protection.[5]  However, as I understand Mr Weiner’s request on this point, it is founded on the proposition that it will assist his report if he is able to compare the look and feel of parts of the programs, as a method of directing himself as to which parts of the source codes for the plaintiffs and defendants products he should compare.
  1. In any event, as I have mentioned, it appears that the defendants have misunderstood, in a way that is too narrow, the possible evidentiary significance of files which are not themselves the source code. Accordingly, it appears sufficiently that there is an objective likelihood that the defendants’ duty to disclose has not been complied with. In my view, the defendants should disclose the bitmaps and icons.
  1. For the same reasons, in my view, the defendants should disclose the INI files, object files, temporary files, third party files integrated into the Delphi IDE, third party DLL files, express/scribe/dictate, text files with random names, WP tools installation files, the test bug report, the test log file, the dot RAR file, the help file, the built DDLS or EXE files, the decrypted DB user files, the spreadsheets, the registry files, the Report Definition Files, the data configuration files and the bitmap files referred to in Mr Weiner’s affidavit.

Cavanagh categories 1, 7, 8, 10, 11 and 12 – Software and software documents

  1. The plaintiffs seek disclosure by production of a number of categories of documents listed in exhibit VVC-43 to the affidavit of Ms Cavanagh. Categories 1, 7, 8, 10, 11 and 12 were pressed at the hearing as a group.
  1. The plaintiffs submit that each category in the group is directly relevant to the issues in the proceeding.
  1. For each category in the group, the plaintiffs rely on a paragraph of Dr Low’s affidavits swearing to his belief that the defendants have not disclosed all relevant documents because in his experience, as a director of the plaintiffs, development of software applications involves the generation of a significant number of documents. Category 10 has an additional aspect, where he further expresses the opinion that it is unusual for such documents to be disposed of.
  1. Based on that evidence, the plaintiffs submit that there is reason to believe that the documents exist and are in the possession of the defendants. They also rely upon an opinion expressed by Mr Weiner. On the hearing of this application, it is not appropriate for me to express any view about Mr Weiner’s opinion on these points. The defendants’ submissions foreshadowed a potential challenge to any report prepared by Mr Weiner on the basis that his instructions are not confined to the subject matter of relevant computer expertise. Again, it is not appropriate at this point for me to say anything more about that.
  1. The plaintiffs accept that the defendants say that they do not have these documents, supported by the affidavits of the first, fourth and fifth defendants. The plaintiffs’ position is that the defendants’ response “is not adequate”. They refer to a version of the system on a particular server that was at the third defendant’s premises in November 2008. They submit that there is no explanation given as to why documents from that version have not been disclosed. That was a matter raised for the first time in argument at the hearing of the application. During the hearing, I requested that the defendants make specific enquiries as to whether any of the relevant documents might exist on the particular server referred to. I was informed that they did not.
  1. In these circumstances, it seems to me that the plaintiffs have not discharged the relevant onus of showing that documents in categories 1, 7, 8, 10, 11 and 12 have not been disclosed because the duty to disclose has not been complied with.
  1. I decline to make an order that the plaintiffs file and serve an affidavit stating whether the documents existed or the circumstance in which any of them ceased to exist or passed out the possession or control of the defendants.

Cavanagh categories 4 and 9 – Presentation of RIS/PACS systems

  1. Category 4 comprises any documents, including receipts or tax records, relating to promotions of any RIS or PACS software or approaches made by the first and fifth defendants after February 2007 to March 2009 to either current or former clients of the plaintiffs. “RIS” is an acronym for Radiology Information System.
  1. Category 9 comprises proposals for RIS and PACS systems provided to prospective customers of the second defendant from early 2007 to early 2009.
  1. The plaintiffs submit they are directly relevant to two groups of allegations in the SOC. In their written outline they rely on paras 40, 41 and 45. In the schedule to the written outline they rely on paras 18, 21, 45, 77 to 82 of the SOC and par 22(c)(viii) of the defence.
  1. There may be a question whether such documents are truly directly relevant. It is not necessary to resolve it. The defendants do not take that point. They submit that they have disclosed all directly relevant documents in the category, supported by the affidavits of the first, fourth and fifth defendants.
  1. Mr Low swears to a belief that the defendants have taken a narrow approach to the relevant promotions or proposals. In my view, his belief does not discharge the onus of showing that the defendants have breached their duties of disclosure.

Cavanagh categories 6, 13 and 19 – Software and documents supplied to Bundaberg Radiology

  1. Category 6 comprises any IMIS web services and IMIS software applications, including the IMT Unlicensed Source Code to run with IRIS allegedly provided by the first defendant to the third defendant prior to July 2007. The acronyms must be deciphered. “IMIS” is defined in the SOC as the plaintiffs’ Integrated Medical Information System. “IRIS” is defined in the SOC as the plaintiffs’ Integrated Radiology System. “IMT Unlicensed Source Code” is defined in the SOC as a copy of the plaintiffs’ source code allegedly made by the first defendant prior to July 2007.
  1. The plaintiffs submit they are directly relevant to par 30 of the SOC.
  1. The defendants submit that there are no documents in this category to disclose. The first defendant swears that he did not keep any of these documents when he ceased employment with the plaintiffs.
  1. Category 13 was not pressed by the plaintiffs.
  1. Category 19 comprises the third, sixth, seventh and eighth defendants’ software support correspondence from mid-2006 to end 2010.
  1. The plaintiffs submit that it is directly relevant to pars 63 of the SOC, 31 of the defence and 18 of the reply.
  1. The defendants submit that the support correspondence is not directly relevant. That is probably right, at least to an extent, because there will be software support that is not directly relevant to an issue in the proceeding. The category is too wide, as such.
  1. However, the plaintiffs’ thrust is that there is an absence of any significant correspondence in relation to matters that are or might be directly relevant.
  1. The defendants submit that most of the relevant communications were conducted via a “messenger” computer program. The defendants did not keep copies of the messages. Therefore, they are not disclosed. This is supported by affidavits from the first, fourth and fifth defendants.
  1. The plaintiffs have not discharged the onus of showing that the defendants have breached their duties of disclosure.

Cavanagh categories 14 and 15 – Oracle/Red Rock

  1. Category 14 comprises the Oracle database extraction documents, in native format, made before 31 October 2009.
  1. Paragraph 63(c) of the SOC alleges that the third defendant failed to return or dispose of some of the plaintiffs’ programs. Paragraph 31(b)(iii) of the defence gives as a ground of the denial that Red Rock Consulting Pty Ltd made an extraction of the third defendant’s historical data in 2009.
  1. The plaintiffs deny that Red Rock made the alleged extraction. They submit that the extraction documents are directly relevant to the issue joined on that allegation. The plaintiffs say further that neither the third defendant nor Red Rock Consulting were licensed or had authority to access their software via Oracle.
  1. The defendants submit that the extracted “documents”, presumably a storage file or files of some kind possibly kept in a data warehouse, are not directly relevant. However, the basis of direct relevance seems to be that there is an issue whether the extraction was made. The defendants do not come to grips with the plaintiffs’ denial of the fact of the extraction.
  1. In my view, the defendants’ submission thereby mistakes the issue. It is possible that the parties are sparring over access to the contents of the extracted documents for a purpose other than proof of the fact of the extraction. But that is not the present question. No application was made by the defendants to limit the extent of the disclosure required under r 224 UCPR. Nor was any submission made by the defendants that disclosure should not be provided under r 223(3)(b) UCPR or should be deferred under r 223(3)(c) UCPR as a matter of discretion.
  1. In my view, the plaintiffs have shown that the defendants have not complied with their duty of disclosure on the issue whether the documents were extracted by Red Rock Consulting. The extracted documents should be produced.
  1. Category 15 comprises documents, in native or original format, pertaining to the instructions and work performed by Red Rock Consulting for the defendants, including but not limited to executed agreements, emails or other correspondence evidencing the scope of the work to be completed.
  1. The defendants submit that a copy of the agreement between the third defendant and Red Rock Consulting was disclosed on 13 September 2013. The plaintiffs appear to deny that it was but did not prove that fact. In any event, it is not apparent why all the documents that passed between the third defendant and Red Rock Consulting as to the scope of the latter’s work are directly relevant. I decline to make an order for disclosure of this category of documents.

Cavanagh category 5 – IMS Eagle PC

  1. This category comprises a range of documents relating to the hard drive of a computer identified in the SOC as the “IMS Eagle PC”. That computer was the first defendant’s work computer before his employment with the plaintiffs terminated. By arrangement, he kept it for a period after termination, so that he could assist the employee or employees who replaced him at the plaintiffs. The first defendant alleges that he swapped the hard drive on or about 8 January 2007, shortly before his employment terminated.
  1. There is no dispute that the documents sought in relation to the old hard drive and its replacement are or might be directly relevant.
  1. The defendants submit that the old hard drive was disposed of and that they do not have any of the other documents sought. That is supported principally by an affidavit from the first defendant. The fourth defendant and the fifth defendant also support that position in their affidavits, based on information and belief from the first defendant.
  1. The plaintiffs nevertheless press for the disclosure sought, on the basis that there are many questions that might be asked of Mr Gilbert about the circumstances at the time when the old hard drive was removed. But they did not seek to cross-examine Mr Gilbert for the purposes of the application. And it is not appropriate to reject the first defendant’s sworn answer to the order sought for category 5 documents.
  1. In my view the plaintiffs have not shown that the defendants have failed to comply with their duties of disclosure for this category. I also decline to make an order under r 223(2) UCPR, having regard to the existing affidavits.

Cavanagh categories 2, 3, 17, 18 and 20 – Financial documents and records

  1. These categories were grouped together as and referred to collectively as financial documents. It is necessary to identify them in a little more detail, although not fully.
  1. Category 2 comprises documents which show the terms of the second or third defendant’s engagement of the first and fifth defendants. However, it does not stop there. It extends to all documents showing payments by the second or third defendants to the first or fifth defendants for salary or work, including the documents and tax returns and business activity statements of non-parties. The relevant period ends at 30 June 2009.
  1. As to category 2, the defendants submit that there are no formal employment agreements, supported by the affidavits of the first, fourth and fifth defendants. They oppose the order seeking the documents of Wildcell Pty Ltd, a non-party. They submit that they have disclosed their tax returns and business activity statements, but it appears they were mistaken in thinking that their previous solicitors had made disclosure of all of those documents. Otherwise, they submit that the documents sought are not directly relevant.
  1. Category 3 comprises similar documents for payments by the second or third defendants for programming services acquired by them. The period ends at 30 June 2014.
  1. As to category 3, the defendants submit that the second defendant has disclosed the contracts between it and employees and contractors. The affidavit of Suzanne Emery supports that. Otherwise, the defendants submit that the documents sought are not directly relevant.
  1. Category 17 comprises documents evidencing the number of customer sites for the second defendant and details of the dates and software and licences supplied.
  1. As to category 17, the defendants submit that they have disclosed the directly relevant documents as to licences and seats, including quotes, deposit invoices, “go live” invoices and sales ledgers. This is supported by affidavits of the fourth and fifth defendants.
  1. Category 18 comprises the same information for the third defendant’s acquisition of software and licences from the other defendants.
  1. As to category 18, the defendants submit that the similar documents to category 17, for the third defendant and its associated entities, are included in the disclosure that has been made.
  1. Category 20 comprises the defendants’ tax returns from 30 June 2005 up to 30 June 2012.
  1. As to category 20, the defendants submit that their taxation returns up to 30 June 2012 have been disclosed (although that was done late) and that is supported by the affidavits of the first defendant, fourth defendant and fifth defendant.
  1. The plaintiffs submit that the documents are directly relevant to their claim for damages. They specifically rely on pars 40, 41, 48, 55(h) and 55(i) of the SOC.
  1. The plaintiffs submit that their claim for damages for loss is measured by the loss of software licence and service fees to customers who have transferred to or have purchased software from the second defendant and loss of recurring revenue through software licence and maintenance update fees for customers who transferred to or have purchased software from the second defendant.
  1. According to the particulars, to date the only customer who has transferred their business to the second defendant is the third defendant. The sixth, seventh and eighth defendants (all companies associated with the fourth defendant) have also acquired software and licences from the second defendant.
  1. There are other allegations of loss in pars 64, 67, 71 and 87 of the SOC, relating to the different causes of action alleged against the defendants for breach of contract, copyright infringement, loss or damage suffered by misleading or deceptive conduct and breach of employee’s duties, breach of confidence (contractual or equitable) or breach of director’s duties.
  1. The SOC does not state the amount of the damages claimed. It does not comply with r 155(1) UCPR.
  1. Alternatively, the plaintiffs claim an order for an account of profits.
  1. The plaintiffs submit that the documents sought are directly relevant on two bases. One is that they are necessary for the calculation of the loss or damaged suffered as summarised above by an expert they have retained for that purpose. The other is so that they can make an informed election as to whether to seek a judgment for damages or an account of profits instead.
  1. The defendants challenge the direct relevance of some of the classes of documents.
  1. It is convenient to deal with categories 17, 18 and 20 first. That can be done on the assumption that the documents are or may be directly relevant as the defendants do not sensibly challenge disclosure of those categories on that ground. Nevertheless, although the plaintiffs press for the orders for disclosure of those documents, there does not seem to be a basis for finding that the defendants are in breach of their duty of disclosure. They have supported the submission that what they have has been disclosed on affidavit. In the absence of falsifying evidence, the plaintiffs have not discharged the onus of proof that the defendants are in breach of the duty of disclosure for these categories.
  1. As to categories 2 and 3, the principal point at issue seems to be the defendants’ refusal to disclose documents as to payments as not directly relevant.
  1. In my view, documents that show the expenses of the second defendant in obtaining its sales are not, per se, directly relevant to the plaintiffs’ claim for loss or damage. The plaintiffs’ alleged losses do not depend on the defendants’ expenses. To the extent that Mr Benjamin’s affidavit makes a contrary suggestion, in my view, he may have adopted a wrong principle. The plaintiffs’ loss is the loss of software licence and service fees from customers who have transferred to the defendants or have purchased software from the second defendant when they would have or might have purchased it from the plaintiffs and the recurring revenue through software licence and maintenance fees for such hypothetical customers. The defendants’ expenses are not part of that loss. The relevant expenses are those that the plaintiffs would have incurred in making the hypothetical sales. At best, the defendants’ expenses can only serve as an evidentiary proxy for those hypothetical expenses.
  1. However, the remaining basis for the disclosure sought is that the plaintiffs should be able to make an informed election for an account of profits. Of course, if the plaintiff elects for an account of profits the defendants’ actual expenses will be relevant in ascertaining the profits. Case law supports a plaintiff’s right to discovery in aid of the right to an election,[6] although it might not always be in the form of full disclosure.[7]  As Lightman J explained it in Island Records Ltd v Tring International Plc:[8]

“In proceedings in which the plaintiff claims in the alternative damages or an account of profits, the plaintiff may seek and obtain a trial at which will be determined all issues of liability, of the assessment of damages and of calculation of profits. In such a case full discovery will include all documents relevant to the assessment and calculation, and the plaintiffcan make an informed election between damages and profits in the course of the trial in the light of the information revealed on discovery and in the evidence at the trial. With a view to the saving of costs, the practice has developed, in particular in intellectual property cases, when this is practicable, to have ‘split trial.’ The action is divided into two stages. The first stage is the trial at which the issue is limited to that of liability, i.e. whether the plaintiff’s rights have been infringed. The second stage, which is contingent upon liability being established at the first stage, is concerned with the question of assessment of damages and calculation of profits. In this way, the costs of exploring the issue of damages and profits are put off until it is clear that the defendant is liable and the issue really arises and requires determination. As a concomitant with this practice, there has likewise developed the practice of limiting discovery at the first stage to documents relevant to the issue of liability and excluding documents relevant only to the second stage. In this way the burden of discovery at the first stage is reduced, and the invasion of confidence necessarily involved in discovery is postponed and (if liability is not established) entirely obviated.”[9]

  1. In the present case, the plaintiffs have not yet made an election. No order has been made for a split trial. The second defendant does not seek an order under r 224(3)(c) UCPR to relieve it from the duty of disclosure on the basis that disclosure of the second defendant’s expenses should be deferred.
  1. It may be unlikely that the plaintiff would elect for an account of profits against some of the defendants. For example, some of them carry on radiology practices. They derive no income from sales of software licences or maintenance fees. The income or receipts by others will have been limited to the amounts received by them as remuneration or dividends from the second defendant or third defendant. But these arguments were not developed by the defendants.
  1. At this stage, it remains true that the plaintiffs are prima facie entitled to disclosure of at least some of the documents showing the defendants expenses in aid of the election between the remedies of damages and an account of profits. The documents in categories 2 or 3 are not excessive for that purpose, in my view, and should be disclosed.

Variation of restricted disclosure orders

  1. Paragraphs 3 and 4 of the plaintiffs’ application seek variation of orders I made on 19 November 2013 and 10 September 2014 for restricted disclosure of documents by the defendants. The order of 19 November 2013 was made by consent. It provided that disclosure of some documents was to be restricted to the plaintiffs’ solicitors and support staff, counsel and any independent experts. The documents were identified by reference to sections of the defendants’ list or lists of documents. As to another section, there was a similar set of restrictions, except that Dr Ian Low, a director of the plaintiffs, was included in the list of persons to whom disclosure would be made. The order of 10 September 2014 made similar provision for later disclosed lists or bundles of documents. Collectively, I will refer to those classes of documents subject to the restrictions as the “restricted disclosure documents”.
  1. The variation originally proposed by the plaintiffs was that three officers of the plaintiffs, including Dr Low, be permitted to inspect all of the restricted disclosure documents with some limited exceptions. The first exception comprises documents containing software and source code, user manuals or help and training files, and financial statements. The second exception are documents which contain pricing information of the defendants – it is proposed that they be redacted to obscure the dollar amounts.
  1. There is an alternative order sought. It is that the documents identified in ex VVC-45 to the affidavit of Ms Cavanagh be disclosed to the three identified officers of the plaintiffs. That exhibit is in the form of a schedule or list of documents comprising some of the restricted disclosure documents.
  1. At the hearing of the application, the plaintiffs reduced the scope of their application in two respects. First, they only pressed for Ms Irene Low to be permitted to inspect the relevant restricted disclosure documents. An explanation was given for the deletion of Mr Foxe from the list of proposed permitted persons. It was that he has computer software expertise. There is no evidence about Ms Low’s expertise. No explanation was given for the deletion of Dr Low from the proposed list. Second, the schedule in ex VVC-45 was updated and I was provided with both the updated schedule and copies of the relevant restricted disclosure documents. As the plaintiffs thereby applied for specific orders about each of the documents provided, I have approached this part of the application on that basis.
  1. The plaintiffs rely upon three factual matters to support the varied orders they seek. First, they contend that the existing restricted disclosure orders were made by some form of mistake. I use that language because Dr Low swears in his fourth affidavit filed on 10 December 2014 that it has always been the intention and understanding of the plaintiffs that the confidentiality regime of the defendants should be limited to only the categories of software, including source code, user manuals and help and training files and financial statements. The difficulty is that is not what the restricted disclosure orders provide. The plaintiffs have tendered no evidence to show that there was in fact any mistake made as to the terms of the orders or how the mistake was made, in particular when the plaintiffs consented to the order of 19 November 2013.
  1. Second, the plaintiffs challenge whether some of the documents disclosed are of a nature that is confidential or information not readily available to persons working in the industry, or is of a nature which if seen by the plaintiffs or their employees would be likely to provide them with some advantage over the defendants or do harm to the defendant’s business, or is of a nature which requires special protection.
  1. Mr Weiner was retained to form an opinion on some of these questions. His opinions on the subject matter are contained in his affidavit filed on 10 December 2014. He lists 45 documents in a table and makes comments as to the confidentiality of those documents. The table is not stated to be exhaustive. It is not related to the updated ex VVC-45 or the copies of the physical documents which were provided to me. Mr Weiner does not suggest that the balance of the documents which are the subject of restricted disclosure are not confidential in a way that might justify the restrictions of the existing orders.
  1. The updated ex VVC-45 runs to no fewer than 117 documents. In the case of invoices to a customer of the second defendant, the schedule is organised so that there are multiple invoices forming one “document”. It will be necessary to return to the individual documents.
  1. As well, Mr Weiner swears that there are documents in his “brief” where he would assisted by the plaintiffs’ instructions and input. He says that is particularly so in relation to documents which show “the look and feel of the defendant’s solutions, such as screen shots or icons.” He says that because he does not have day to day use of the plaintiffs systems he may not recognise something in the defendants’ documents that is similar to the plaintiffs’ products or solutions. Specifically, he says that if the plaintiffs identified a particular screen in the defendants’ product which they considered similar to a particular screen in the plaintiffs’ product he would be able to go to the specific source code relating to those screens and conduct a comparison to determine if copying has occurred. For the purposes of considering the individual documents later in these reasons, I will describe this as the “look and feel” reason.
  1. A difficulty emerged when I examined the documents. Some contain, in attached files not separately disclosed, or included in the documents provided for me to examine, source or other code. So they are not about look and feel. As well, the additional access sought by the plaintiffs is confined to Ms Low. It is not clear why access by her to documents that do not relate to computer screen shots or the like would further the look and feel reason.
  1. Dr Low swears that the plaintiffs’ solicitors counsel and experts are unable to openly discuss the contents of the restricted documents with the plaintiffs. He believes the plaintiffs are incurring significant expense and experiencing financial delays due to the restrictions.
  1. He swears to a general opinion that a significant portion of the documents are not confidential based on the descriptions of the documents. That is an unsatisfactory matter for opinion evidence. It is not a matter of expert opinion. The plaintiffs’ solicitors, counsel and experts have had access to the documents. If any opinion as to their confidentiality is admissible, it should be the opinion of someone who has seen the documents. It should not be an opinion based on no more than the description of documents in the lists of documents. Dr Low’s general opinion is of little assistance.
  1. Dr Low swears that the need to have Mr Weiner review non-financial confidential documents is causing unnecessary delay to Mr Weiner in preparing his report and increased expense to the plaintiffs. The basis for this opinion is not clear to me beyond what Mr Weiner swears to as summarised above. Accordingly, the further belief that Dr Low swears to that the plaintiffs’ ability to provide Mr Weiner with instructions would save Mr Weiner considerable time if the plaintiffs were above to provide him with appropriate instructions does not have a clear factual basis, apart from the proposition that Mr Weiner is not familiar with the plaintiffs’ systems and documents and therefore may not or will not be able to identify similarities in the look and feel “reflecting” underlying source code similarities. That is, it forms part of the look and fell reason for further access to the restricted documents.
  1. Dr Low further swears that it is necessary for the plaintiffs to be provided with copies of the defendants’ quotes and invoices so that the plaintiffs can provide instructions to the plaintiffs’ solicitors and accounting experts in relation to the plaintiffs’ damages. For the purposes of considering the individual documents later in these reasons, I will describe this as the “damages” reason.
  1. Again, the factual basis for this proposition is not stated. Dr Low does not give any basis for the suggested direct comparison between the defendants’ quotes and invoices and what would have been the plaintiffs’ sales if the defendants had not made the breaches alleged in the SOC. Stuart Benjamin, an accountant, swears that he requires information as to the defendants’ customer sites, seat licences and remote licences in order to be able to make his calculations of the plaintiff’s loss. There is no dispute that Mr Benjamin is entitled to have the relevant access. But it is not explained why the plaintiffs must be provided with copies of the quotes and invoices in order to give instructions to Mr Benjamin. Mr Benjamin does not say that he needs the plaintiffs’ instructions.
  1. Dr Low goes on to swear that the amount that the plaintiffs charge in relation to their products depends on factors including the number of licences required, what type of licences are being purchased, the specification for the products to be supplied and the number of applications to be supplied. All that may be accepted. But he does not give any reason for why he cannot provide pricing information based on assumptions as to those things which might be given to him by Mr Benjamin. That would not require the plaintiffs to review all of the defendants’ quotes and invoices.
  1. Lastly, Dr Low swears that in his opinion the confidentiality regime has some imbalance and gives the defendants an unfair advantage. That seems to be based on the facts that some of the defendants were employed by the plaintiffs before February 2007 and that another of the defendants was a customer of the plaintiffs until October 2009. Perhaps I am missing something, but it does not appear to me why those facts make the confidentiality regime imbalanced. None of the defendants has access to the plaintiffs’ quotes or invoices or any directly relevant restricted documents. Dr Low’s complaint is disturbing. In a case like the present, the whole point of restricted disclosure is to protect confidential information against misuse by a trade rival. Once a confidence has been disclosed, unlike the genie from “The Fisherman and the Jinni” story from “The Arabian Nights”, it cannot be put back into the bottle. Dr Low’s point seems to be that because some of the defendants were once employees or customers of the plaintiffs, they have a trade or litigation advantage which he seeks to balance by having access to the defendant’s confidential trade documents. But win or lose this case, the plaintiffs will quite possibly remain competitors of the defendants.
  1. I note that Dr Low swears that they are not competitors because their target markets differ whereas the first defendant swears that they are competitors. Without forming any concluded opinion on the question, in my view I should proceed on this application on the footing that they are or may become competitors. It would be odd for the second plaintiff to be able to recover damages for lost sales that it alleges it would have made to customers, actual (the third defendant) and hypothetical (otherwise) who have dealt with the second defendant, if it was not or would not have been a competitor of the second defendant.
  1. Additionally, the defendants submit that they are exposed to the risk of misuse of their documents by the plaintiffs because the plaintiffs at present do not have a product that is their own development of a PACS system or a product that includes an integrated (Medicare) billing system. The defendants submit that it would be a considerable advantage to the plaintiffs to know how the defendants went about designing and developing those products.
  1. As previously mentioned, the 19 November 2013 order was made by consent. The defendants do not seek to uphold it on the basis that the plaintiffs agreed to the restricted disclosure. They expressly do not submit that the court cannot or should not vary the order in any circumstances. On the other hand, the defendants do rely on the fact that the 19 November 2013 order was made by consent for their submission that the onus lies on the plaintiffs to justify the variation that they seek. Ordinarily, the onus relies on a party seeking a special order as to restricted disclosure based on withholding confidential information from a trade rival.
  1. I accept that the onus is on the plaintiffs in the present case because they seek to vary an order made by consent. Nevertheless, such orders are made in an interlocutory way in the exercise of a discretionary power to balance conflicting aims. On the one hand, disclosure aids the just resolution of litigation. On the other hand, disclosure of confidential documents can damage a party, even if they are successful in the litigation, where trade secrets or commercially confidential information are concerned. To balance these competing aims the court may make an order for restricted disclosure.
  1. In Queensland, the principles for restricted disclosure were established in ex parte; Fielder Gillespie Ltd[10] and Magellan Petroleum Australia Ltd v Sagasco Amadeus Pty Ltd.[11]  There are many subsequent cases. Among them, reference is often made to Mobil Oil Australia Ltd & Anor v Guina Developments Pty Ltd & Anor.[12]  The defendant in that case applied for restricted disclosure of confidential trade sensitive documents, so that the plaintiff’s director and chief executive officer would not see them.  The documents related to a competitive expressions of interest process where the parties had competed for the award of a contract by a roads corporation.  Hayne JA said:

“In the present matter, where the plaintiff did not challenge the evidence given below and the information supplied by [the defendant] to the corporation … was confidential and commercially sensitive, there would appear to be powerful reasons for limiting access to that information (at least in the first instance) to counsel, solicitors and nominated experts.  It is by no means self-evident to me that disclosure to the principals of the plaintiff is necessary for the attainment of justice.  In particular it is not self-evident that the plaintiff can properly consider the course which it will follow in relation to the litigation only if its principal has access to the material that is confidential.”[13]

  1. The plaintiffs also relied on Civic Video Pty Ltd v Paterson.[14]  In that case, a franchisor started a proceeding against a trade rival alleging wrongful interference with the franchisor’s contractual relationships with its franchisees.  The franchisor’s expert prepared a report as to loss.  The report was based on the estimated franchise and advertising fees that would have been payable to the franchisor if the alleged wrongs had not occurred.  The franchisor sought restricted disclosure of documents showing its advertising fees, profit and loss statements and summaries of total revenue figures during the relevant periods.  At first instance, the court held that the degree of commercial sensitivity relating to those documents would not involve sufficient prejudice to warrant any restriction.  On appeal, the Court of Appeal of Western Australia accepted that the primary judge had failed to weigh the degree of prejudice to the franchisor against the defendant’s interest in seeing the material.[15]
  1. The court stated a number of principles. The most relevant for present purposes is that:

“Where the relevant parties are trade rivals, and the documents in question contain confidential and commercially sensitive information, the court must strike a fair balance between the legitimate concerns of the party discovering the documents and the needs of the other party of the litigation …”[16]

  1. A later decision of the Court of Appeal of Western Australia, Alcoa of Australia Ltd v Apache Energy,[17] confirms the discretionary nature of the court’s power to make an order for restricted disclosure under rules such as rr 223 and 224 UCPR.[18]
  1. Having regard to the number of documents, it is not practicable to give detailed reasons as to each of the documents presently subject to the restricted disclosure orders that were in contest between the parties. However, where I decide to vary the restricted disclosure orders, I have had regard to the balancing exercise that is the informing principle for the discretionary power to restrict disclosure.
  1. In dealing with each of the documents, I will state a conclusion in the table below as to whether access is to be granted, additional to that already permitted under the restricted disclosure orders. Where applicable, I will state the reason for access advanced by the plaintiffs in the “Possible reason for access” column. “Access” in the Decision column signifies that the restricted disclosure order should be varied to permit Ms Low to inspect the document. “No change” signifies that the existing restricted disclosure orders should continue in relation to the document.  As a further alternative, if I form the view that access should be granted because the document is not confidential, I will state “Access – not confidential”.

Disclosure No

Description

Possible reason for access

Decision

JJST.200.003.0302

 

Medicare Manual

Unknown or look and feel

This is an instruction manual for the use of functions in the second defendant’s software for patient billing and payments for Medicare.  It appears to have been made in 2010.  Although the defendants submit that the plaintiffs do not have a billing module in their programs, there could be a relevant aspect of look and feel. Access

JJST.200.002.1158

Email

Unknown

This is an email as to how to update the second defendant’s billing codes table for updates in Medicare Schedule fees. Not related to look and feel.   No access.

JJST.200.003.0205

Email

Unknown

This is an email sent in October 2008 attaching a workflow or program for the second defendant’s RIS.  The defendants submit that the attachment contains source code. Access to the email.

JJST.200.002.0666

Email

Unknown

This is an email attaching an SQL (Structured Query Language) file for an appointments table for the second defendant’s software.  The defendants submit that the attachment is confidential.  Access to the email.

JJST.200.002.0727

Email

Unknown

This is an email attaching a workflow document for the second defendant’s RIS. The defendants submit that the attachment contains source code.  Access to the email.

JJST200.002.0545

Email

Unknown

This is an email chain in May 2007 relating to the fourth defendant obtaining a dicomvcl software licence and forwarding it to the first defendant.  The defendants submit that it shows components and code libraries. No evidence suggests that disclosure would affect competitive advantage. Access.

JJST.200.002.0660

Email

Unknown or Look and feel

This is an email from the fifth defendant to the first defendant in October 2007 relating to use of the JPEG2000 image compression standard. The defendants submit that it shows code libraries the second defendant is using.  But no evidence suggests that is significant to competitive advantage.  Access.

JJST.200.002.1151

Email

Unknown

This is an email from the fifth defendant to employees or consultants (“employees”) of the second defendant as to the acquisition of the Addict SpellChecker program to support other applications. The defendants submit that that it refers to components and code libraries it is using and confidential.  No evidence suggests that disclosure would affect competitive advantage.   Access.

JJST.200.002.1253

Email

Unknown

This is an email between employees of the second defendant as to checking in changes to the second defendant’s software.  The defendants submit that the unit names and component names are confidential. But nothing suggests that they are confidential in a way that affects any trade advantage.  Access.

JJST.201.001.1670

Email

Unknown

This is an email from the third defendant to the first defendant (in July 2009) reporting an error in the third defendant’s system (“error email”).  The defendants submit that all “support emails” are confidential because they discuss design facets. There is no evidence to support that submission for this document.  Or facts to that the document is confidential in a way that affects any trade advantage.  Access.

JJST.201.001.0636

Email

Unknown

Error email.  The defendants submit that there is nothing in the email which could require Mr Weiner to get instructions from the plaintiffs.   That does not justify claiming restricted access in the first place.  Access.

JJST.201.001.0612

Email

Unknown  or Look and feel

Error email.  Access.

JJST.201.001.0742

Email

Look and feel

Error email.  Access.

JJST.201.001.1171

Email

Unknown  or Look and feel

This email chain relates to errors in the operation of the defendants software relating to patients with multiple examinations.  The defendants submit it contains source code.  There is no evidence to suggest that the document is confidential in a way that affects any trade advantage.  Access.

JJST.201.001.1008

Email

Damages

This email relates to the cash flow implications for the second defendant of the retirement of an employee.  No change.

JJST.200.010.0031

Email

Unknown

This email relates to the second defendant arranging to promote its products at a trade conference.  The defendants submit that there is a confidential password.  The obvious answer is that the password can be covered up or changed.  Access.

JJST.201.001.0277

Email

Damages

This email relates to pricing as between the second defendant and the third defendant being increased by CPI.  Access.

JJST.201.001.0809

Email

Damages

This email relates to pricing as between the second defendant and the third defendant being increased by CPI.  Access.

JJST.201.001.0246

Email

Damages

This email relates to pricing as between the second defendant and other defendants.  In my view, it contains general pricing levels that could be of use to a competitor.  However, the information is some years old now.  Access.

JJST.201.001.0256

Email

Damages

This email relates to a quote for hardware and software supply by the second defendant to the third defendant.  Access.

JJST.201.001.0265

Email

Damages

This email hardly seems relevant.  Access.

JJST.201.001.0807

Email

Damages

This email attaches an invoice from the second defendant to the third defendant for a NAS (network access storage device).  Access.

JJST.201.001.1251

Email

Damages

This email attaches a quote for the installation of a new server at Bundaberg and NAS for Hervey Bay. Access.

JJST.201.001.1173

Email

Damages

This email attaches a quote for a new NAS for Bundaberg.   Access.

JJST.210.001.0270

Email

Damages

This email chain requests a quote for the Beachside Radiology workstations.  Access.

JJST.201.001.0271

Email

Damages

This email chain contains pricing and specs for the quote for the Beachside Radiology workstations.  Access.

JJST.201.001.0804

Email

Damages

This email chain relates to an invoice for a trip to Beachside Radiology (Coffs Harbour) to resolve a network issue.  Access.

JJST.201.001.0235

Email

Damages

This email relates to a February 2013 recommendation for the specifications for a new server, NAS and financing for Gladstone.  In my view, it contains general pricing levels that could be of use to a competitor.  The information is only two years old now and could be sensitive.  No change.

JJST.201.001.0262

Email

Damages

This email relates to a February 2013 recommendation for the specifications for a new server, NAS and financing for Gladstone.  Access.  It includes pricing for the second defendant’s web referrer module.  In my view, it contains general pricing levels that could be of use to a competitor.  The information is only two years old now and could be sensitive.  No change.

JJST.201.001.0806

Invoice

Damages

This is the invoice for the trip to Beachside Radiology to resolve the network issue.  Access.

JJST.200.010.0002

Email

Unknown

This 2007 email from the fifth defendant to the first defendant relates to a GE Healthcare ASP PACS product and the pricing that applied to it. The defendants submit that it relates to commercial decisions by the second defendant that should be confidential.  Nothing suggests that it would in a way affect any trade advantage.  Access.

JST.200.010.0001

Email

Unknown

This appears to be the response to JJST.200.002.0660 dealt with above.  Access.

JST.200.010.0018

Email

Unknown

This email chain relates to the state of preparation for the trade conference.  The defendants submit that it relates to tasks to be completed and therefore remains confidential.  Given that the tasks were for a conference in 2009 I do not understand how that remains confidential in the sense of some trade advantage.  Access.

JJST.200.010.0024

Email

Unknown

This is another email in the series relating to the state of readiness for the 2009 conference.  Access.

JJST.201.001.1671

Screenshot

Look and feel

The defendants conceded that screen shots were not confidential at the hearing. Access.

JJST.201.001.0652

Screenshot

Look and feel

The defendants conceded that screen shots were not confidential at the hearing. Access.

JJST.201.001.0631

Screenshot

Look and feel

The defendants conceded that screen shots were not confidential at the hearing.  Access.

JJST.201.001.0765

Screenshot

Look and feel

The defendants conceded that screen shots were not confidential at the hearing.  Access.

JJST.200.010.0022

Screenshot

Look and feel

The defendants conceded that screen shots were not confidential at the hearing.  Access.

JJST.201.001.0069

Invoice

Damages

This invoice is for services supplied to a client of the second defendant.  The plaintiff offers to redact the dollar figures.  However, the identity of the second defendant’s customers is commercially sensitive information.  The only customer that the plaintiffs identify that they have lost is the third defendant.  In my view, the identity of the second defendants’ customers should also be redacted from any copy to which Ms Low has access.  Access on that basis.

JJST.201.001.0249

Quote

Damages

This quote is for the 2009 annual maintenance agreement between the second defendant and the third defendant. In my view, the financial information is not current.  Access.

JJST.201.001.0248

Quote

Damages

This quote is to a client of the second defendant. The plaintiff offers to redact the dollar figures.  However, the identity of the second defendant’s customers is commercially sensitive information.  The only customer that the plaintiffs identify that they have lost is the third defendant.  In my view, the identity of the second defendants’ customers should also be redacted from any copy to which Ms Low has access.  Access on that basis. Access on that basis.

JJST.101.004.0008

Quote

Damages

This is another form of quote to a client of the second defendant.  It should be dealt with in the same way as JJST.201.001.0248

JJST.201.001.0240

Letter

Unknown

This document is an offer of finance by a third party financier. It is irrelevant.  Access.

JJST.201.001.0241

Brochure

Unknown

This document is a brochure of a third party financier. It is probably irrelevant.  Access.

JJST.201.001.0243

Letter

Unknown

This document is like JJST.201.001.0240.

JJST.201.001.0637

Log

Unknown

This document is a 2009 computer generated log of information for the JJRIS.exe application.  The defendants submit that it contains code and is therefore confidential.  It appears to be an error log not confidential programming code.  Access.

JJST.201.001.0613

Log

Unknown

This document is another 2009 computer generated log of information for the JJRIS.exe application.  Access.

JJST.201.001.0743

Log

Unknown

This document is another 2009 computer generated log of information for the JJRIS.exe application.  Access.

JJST.004.002.0004

Email

Unknown  or Look and feel

This email from the first defendant to the fourth defendant simply states that the first defendant is starting to put thoughts down on paper.  It does not contain any arguably confidential information.  Access – not confidential.

JJST.004.002.0005

Email

Unknown  or Look and feel

This email from the first defendant to the fourth and fifth defendants is in the same class as the last email. Access – not confidential.

JJST.004.002.0015

Email

Unknown or Look and feel

This email chain from the first defendant to the fourth and fifth defendants is in the same class as the last email. Access – not confidential.

JJST.004.002.0017

Email

Unknown  or Look and feel

This email from the first defendant to the fourth and fifth defendants reports early progress by the first defendant in design of the defendants’ software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0019

Email

Unknown  or Look and feel

This email from the first defendant to the fourth and fifth defendants requests feedback to the first defendant in design of the defendants’ software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low. Access.

JJST.004.002.0021_001

Email

Unknown  or Look and feel

This email from the first defendant to a consultant  requests design feedback for a PACS.  It refers to the IPACS software.  It does not contain any confidential information.  Access – not confidential.

JJST.004.002.0031_001

Email

Unknown

This email from the first defendant to the fourth and fifth defendants updates progress on the design and build of the second defendants’ software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0035

Email

Unknown

This email chain from the first defendant to the fourth and fifth defendants deals with the PACS viewer attachment being developed for the second defendant’s software.  It does not contain any confidential information.  Access – not confidential.

JJST.004.002.0037

Email

Unknown

This email chain from the first defendant to the fourth and fifth defendants deals with major PACS systems produced by FujiFilm and AGFA.  It does not contain any confidential information.  Access – not confidential.

JJST.004.002.0040

Email

Unknown

This email deals with the state of progress on the development of the second defendant’s software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0043

Email

Unknown

This email deals with the design of the second defendant’s software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0052

Email

Unknown

This chain of emails deals with the design of the second defendant’s viewer software.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0063

Email

Unknown

This chain of emails responds to JJST.200.010.0002 dealt with above.  It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low.  Access.

JJST.004.002.0072

Email

Unknown

This email chain deals with the organisational structure of the second defendant and some proposed business names.  It is not confidential.  Access – not confidential.

JJST.

 

Email

Unknown

This is an email from the first defendant to the fifth defendant which deals with the fixing of issues and uploading of a new code. Access – not confidential

JJST.004.002.0087

Email

Unknown

This email from the first defendant to the fourth and fifth defendants deals with progress of the development of the second defendant’s software.  It is not confidential.  Access – not confidential.

JJST.

Email

Unknown

This email is from the third defendant’s employee (Ms McLeod) to the plaintiffs (Ms Low) about payment of an invoice sent on 12 November 2008.  Access – not confidential.

JJST.

Quote

Damages

This quote is from the second defendant to the third defendant.  Access.

 

JJST.

Draft letter

Damages

This draft letter from the second defendant to Mr Tabone dated 1 August 2010 relates to the development of the Medicare Online module of the defendants software packages.  It is not confidential.  Access – not confidential.

JJST.

Email

Damages

This email chain from the fifth defendant to the third defendant sent on 15 April 2011 relates to the billing cycle and pricing for the services to be supplied by the second defendant for maintenance and support.  However, the information is now some years old.  Access.

JJST.

Email

Unknown

This email from the first defendant to the third defendant sent on 22 January 2014 is for release notes for the functionality to put a patient into credit in the second defendant’s software.  It hardly seems relevant.  Access.

JJST.

Agreement

Damages

This set of standard conditions for the second defendant’s service agreement is not confidential. Access – not confidential.

JJST.004.002.0006

High Level Design Document

Unknown

This document was apparently the attachment to JJST.004.002.005 for the architecture and general design of the software that became the second defendant’s software. It arguably contains confidential information of value to a competitor, but it is at such a high level that in my view the balance falls in favour of access to Ms Low. Access.

  1. For simplicity, in dealing with the documents listed above, I have omitted from the plaintiffs’ schedule a number of client invoices and client quotes in near identical form to the specific documents JJST.201.001.0069, JJST.201.001.0249, JJST.101.004.0008 and JJST.201.001.0258 for various clients of the second defendant. The omitted documents in the same classes should be dealt with in the same way as those documents.

Conclusions

  1. I will make orders for further disclosure in accordance with these reasons. The parties are at liberty to apply for any further order necessary or appropriate to give effect to these reasons. Any applications and submissions as to costs should be made in writing within 10 days.

Footnotes

[1] (1959) 103 CLR 341, 343.

[2] Rules of the Supreme Court 1900 (Qld), O 35 r 18.

[3] (2001) 1 Qd R 276.

[4] [2001] 1 Qd R 276, 283.

[5] Statuscard Australia Pty Ltd v Rotondo [2009] 1 Qd R 559, [89]-[92], see also Attachment 1 of Chesterman J’s reasons; J. Lahore, Copyright and Designs, Lexis Nexis, [50,165].

[6] Menkens v Wintour (2010) 88 IPR 333, [4], [5]; LED Builders Pty Ltd v Eagle Homes Pty Ltd (No 3) (1996) 70 FCR 436, 451; Dr Martens Australia Pty Ltd v BATA Shoe Company of Australia Pty Ltd (1997) 75 FCR 230, 235-236; Polyaire Pty Ltd v K-Aire Pty Ltd (No 4) [2007] SASC 386, [17]-[20].

[7] Optus Networks Pty Ltd v Telstra Corporation Ltd (No 4) [2011] FCA 485, [38]-[39].

[8] [1996] 1 WLR 1256.

[9] [1996] 1 WLR 1256, 1258.

[10] [1984] 2 Qd R 339.

[11] [1994] 2 Qd R 37.

[12] [1996] 2 VR 34.

[13] [1996] 2 VR 34, 40. 

[14] [2013] WASCA 107.

[15] [2013] WASCA 107, [67].

[16] [2013] WASCA 107, [28].

[17] [2014] WASCA 148.

[18] [2014] WASCA 148, [57]-[59].

Close

Editorial Notes

  • Published Case Name:

    Integrated Medical Technology Pty Ltd and Anor v Gilbert and Ors (No 2)

  • Shortened Case Name:

    Integrated Medical Technology Pty Ltd v Gilbert (No 2)

  • MNC:

    [2015] QSC 124

  • Court:

    QSC

  • Judge(s):

    Jackson J

  • Date:

    24 Jun 2015

Litigation History

No Litigation History

Appeal Status

No Status