FEDERAL COURT OF AUSTRALIA

Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd [2014] FCA 595

THE COURT ORDERS THAT:

1.    The applicant’s application for orders pursuant to rule 7.22 of the Federal Court Rules 2011 (order 8 of the interlocutory application filed 8 May 2014) is adjourned for directions before the docket judge on a date to be arranged with the docket judge’s associate.

2.    The interlocutory application filed on 8 May 2014 is otherwise dismissed.

3.    The applicant to pay the respondent’s costs of and incidental to the interlocutory application.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    Sports Data Pty Ltd (Sports Data) carries on a business which includes the collection, analysis and provision of data and statistics relating to sporting events. For a number of years Sports Data was the official supplier of statistics to the National Rugby League Ltd (NRL). That relationship came to an end when the agreement between Sports Data and the NRL terminated in December 2013. NRL then appointed Prozone Sports Australia Pty Ltd (Prozone) as its official supplier of statistics. These proceedings concern a dispute between Sports Data and Prozone arising from the change from Sports Data to Prozone as the official supplier of statistics to the NRL.

2    In order to provide useful statistics relating to sporting events it is necessary for the statistics provider to have a template or set of criteria which identifies the events that will be captured or entered into the statistics database. When Prozone was appointed the NRL’s official statistics provider in lieu of Sports Data in late 2013 and early 2014, it set about developing an input template or set of input criteria so that it could provide useful statistical analysis to the NRL. Sports Data alleges that during this process Prozone used or copied input criteria that it had developed over the many years that it was the official supplier to the NRL. It alleges that in so doing Prozone used Sports Data’s confidential information without its consent or authority and infringed its copyright.

3    By interlocutory application filed on 8 May 2014, Sports Data seeks interlocutory orders restraining Prozone from using, copying or dealing with its confidential information and infringing its copyright. For the reasons that follow, the interlocutory relief sought by Sports Data is refused.

Interlocutory injunctions - relevant principles

4    The relevant principles in relation to the grant of interlocutory injunctions are well settled. They were summarised and explained by the Full Court in Samsung Electronics Co Ltd v Apple Inc. (2011) 217 FCR 238 (Apple v Samsung). They may be summarised as follows:

(a)    In order to secure an interlocutory injunction the plaintiff/applicant must show (1) that there is a serious question to be tried or that the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief; (2) that he will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted; and (3) that the balance of convenience favours the granting of an injunction: Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153 (Mason ACJ); Australian Broadcasting Corporation v Lenah Game Meats (2001) 208 CLR 199 (Lenah Game Meats) at [13] (Gleeson CJ); Apple v Samsung at [53];

(b)    Where interlocutory relief is sought in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial in respect of which final relief is sought: Lenah Game Meats at [8]-[21], [59]-[61], [86]-[92]; [98]-[100], [105]; Apple v Samsung at [52];

(c)    Where the merits and question of convenience are fairly evenly balanced, there will be no injustice in requiring the party seeking relief to demonstrate good prospects of success before imposing almost certain prejudice on the other side: Apple v Samsung at [49]-[51];

(d)    The Court’s task of assessing the balance of convenience and justice requires the Court to determine whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted: Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622-623; Apple v Samsung at [55];

(e)    The question of whether or not the plaintiff must show that he will suffer irreparable harm if no injunction is granted is one of the matters which will ordinarily need to be addressed in the Court’s consideration of the balance of convenience and justice. That question involves an assessment by the Court as to whether the plaintiff would, in all material respects, be in as good a position if he were confined to his damages remedy, as he would be in if an injunction were granted. This matter should not be elevated into a separate and antecedent inquiry, but rather is best left to be considered as part of the Court’s assessment of the balance of convenience and justice: Apple v Samsung at [61]-[63];

(f)    The resolution of the question of where the balance of convenience and justice lies requires the Court to exercise a discretion. In exercising that discretion, the Court is required to assess and compare prejudice and hardship likely to be suffered by the defendant, third persons and the public generally if an injunction is granted, with that which is likely to be suffered by the plaintiff if no injunction is granted. In determining this question, the Court must make an assessment of the likelihood that the final relief (as granted) will adequately compensate the plaintiff for the continuing breaches which will have occurred between the date of the interlocutory hearing and the date when final relief might be expected to be granted: Apple v Samsung at [66];

(g)    The question of whether there is a serious question to be tried or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2009) 81 IPR 339 at [15]; Apple v Samsung at [67];

(h)    It may also be necessary to consider and evaluate the impact that the grant or refusal of an injunction will have or is likely to have on third persons and the public generally. The weight to be given to the interests of third persons and the public will depend on the circumstances of the case, though hardship visited on third persons and the public generally will rarely be decisive: Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (1998) 195 CLR 1 at [65]-[66] (Patrick Stevedores); Apple v Samsung at [69].

5    Where the expressions “prima facie case” and the “balance of convenience” are used in this judgment, they are used as shorthand expressions for the principles just outlined.

Facts and evidence relevant to the causes of action

6    Both Sports Data and Prozone rely on relatively voluminous affidavits and documentary evidence. Given the interlocutory nature of the relief sought there was only limited cross examination of some of the affidavit deponents. Whilst there is little dispute concerning the relevant primary facts, the inferences or conclusions that can or should be drawn from the primary facts are hotly contested.

7    Given the relatively urgent nature of the relief sought and the necessarily short time between the interlocutory hearing and judgment, it is not possible to set out the evidence at length.

8    Sports Data relies primarily on the evidence of its sole director and shareholder Mr Andrew Moufarrige. According to Mr Moufarrige, Sports Data was incorporated and commenced business in 2000. He describes the business as involving the provision of a coaching and performance analysis reporting system. The system involves the delivery of detailed data to professional sporting leagues, teams and the media. Whilst the business focuses primarily on rugby league, services are also provided in relation to rugby union, AFL, soccer and cricket.

9    Sports Data generates income by charging its customers a licence fee. Typically the fee is paid annually in advance. Until the end of 2013 the NRL and various clubs who play in the NRL rugby league competition were by far Sports Data’s main customers and the main source of its revenue.

10    Sports Data’s initial involvement with the NRL was through a company that was incorporated and jointly owned by Sports Data and the NRL. Through that company, NRL Stats Pty Ltd (NRL Stats), NRL and Sports Data jointly developed and managed the business of collecting, marketing and distributing rugby league statistical data from 2002 to 2008.

11    The agreement between NRL, Sports Data and NRL Stats was terminated on 27 February 2008.

12    On the same day as the termination of the NRL Stats agreement, Sports Data and the NRL entered into a licence agreement. Under the licence agreement the NRL agreed to grant Sports Data a licence to operate a business known as NRL Stats (not to be confused with the company NRL Stats Pty Limited) and to be the supplier of official statistics to the NRL in respect of rugby league matches. Importantly, the NRL also granted a licence to Sports Data to use audio visual and visual footage of NRL matches and other specified rugby league matches to enable Sports Data to collect and analyse the statistics.

13    For its part, Sports Data was required to collect certain specified match statistics (Stats) for each NRL match for which it had access to a broadcast feed or video footage. On the termination of the agreement the rights and title to the Stats were, under the terms of the agreement, to be assigned to the NRL. The rights and title to all other statistics, databases and intellectual property (Other Stats) were to remain with Sports Data. NRL agreed not to supply the Other Stats to any third party without the consent of Sports Data, either before or after the agreement.

14    The licence agreement provided that it was to terminate on 31 December 2012. Upon termination, the licences granted by the NRL terminated immediately.

15    According to Mr Moufarrige, each of the clubs in the NRL competition has purchased a licence from Sports Data for the provision of its services and associated access to data. There is no evidence concerning the precise terms of the agreements between Sports Data and the NRL Clubs. It would appear from the terms of the invoices issued by Sports Data to the NRL Clubs that the licences include yearly access to a software licence and data collected by Sports Data. Mr Moufarrige’s evidence is that the NRL Clubs have not paid invoices issued to them in 2013 in relation to the 2014 NRL season.

16    Critical to Sports Data’s case is Mr Moufarrige’s evidence concerning the development and nature of Sports Data’s rugby league databases over the years. In order to maintain and update the databases Sports Data uses a software system called SD Capture. SD Capture allows a rugby league game to be reviewed frame by frame and broken down into discrete events so it can be analysed.

17     There are many hundreds of event types which may occur during a rugby league game. Over the years Sports Data has developed a list of events which, if properly captured, processed and reported, produce valuable statistics and analysis concerning rugby league games. The list of events, which Mr Moufarrige calls “input criteria”, was developed over the years from about 2002. A particularly large amount of time was devoted to the development of the input criteria between 2002 and 2004.

18    In 2002 there were about 200 event types. By 2013 the list extended to over 700 events. Examples of some of the event descriptions (reproduced here in random order so as to preserve confidentiality in the selection, structure and order of the list) include: “Kick – grubber”, “PTB – flop”, “PTB – grapple”, “Scrum – backrowers early”, “Try against – no mans land”, “Try Assist - kick bomb”, “Try Assist - kick banana”, “Tackle break – broken” and “Try bombed”.

19    In November and December 2013, as the licence agreement between the NRL and Sports Data neared its termination date, the NRL called for proposals from a number of companies in relation to becoming the official NRL statistics provider from 2014 onwards. Ultimately, the NRL reached an “in principle” agreement with Prozone in respect of the licence. It would appear that the terms of the agreement have not yet been formalised, at least in writing. It may be inferred from tax invoices issued by Prozone to the NRL that, at least at this stage, the agreement involves a monthly retainer in respect of which Prozone receives a set monthly fee.

20    Prozone is a subsidiary of a French sports analysis company, Sports Universal Process S.A.S. (Amisco). Amisco is one of the World’s largest sports statistics and analysis organisations. Amisco and its related and subsidiary companies have been engaged in the business of providing sports and match data for live and post-play analysis for professional sporting bodies for many years. That business did not extend to Australia, and did not extend to rugby league, at least until late 2013 when Prozone was incorporated.

21    The evidence concerning the development by Prozone of its systems to record and analyse rugby league data and statistics for the purposes of its agreement with the NRL is critical. It comes primarily from Mr Ryan Paterson, Prozone’s Chief Executive Officer.

22    Prozone’s proposal to the NRL in late 2013 included a recommended “coding template”. The template included a number of descriptions of events that could occur during a rugby league game. This template was based on event descriptions in an international rugby union template and a demonstration rugby league event template developed by a New Zealand based subsidiary of Amisco, Verusco Technologies. It is clear that the recommended template was a work in progress. The Prozone proposal to the NRL noted that the recommended template was:

…completely flexible according to the needs of the NRL and affiliated teams. Prozone has the ability to remove and/or add tasks to the detail and specification needed to ensure the coding template is both highly detailed and specific to the structure of game code the NRL wishes to build.

23    Once it reached an agreement in principle with NRL, Prozone undertook a number of steps to develop its event description template.

24    In mid-December 2013 Mr Paterson and other Prozone employees met with a number of NRL employees. The NRL employees provided feedback to Prozone about the event template, including the need to modify some of the event descriptions to make them more specific to rugby league. Prozone was provided with footage of NRL games. Prozone “coders” reviewed the footage so as to refine the template.

25    During January and February 2014, Prozone employees visited each of the NRL clubs and met with coaches, statistics analysts, trainers and administrators. They received feedback from the clubs in relation to the event descriptions and modified the templates accordingly. The template was effectively finalised in late February or early March 2014, shortly before the commencement of the 2014 NRL season.

26    In his evidence, Mr Paterson produces a number of iterations of Prozone’s event template as it underwent development. He also produces the coding template in the form it was in when he swore his affidavit on 22 May 2014.

27    Sports Data alleges that at some time during the development of its event template in the period December 2013 to February 2014, Prozone was provided with information concerning Sports Data’s input criteria. Sports Data does not know who provided this information to Prozone, when it was provided or the form it was provided in. It has no direct evidence of the provision of the information. It claims, however, that the provision and use of its input criteria can be inferred from two matters.

28    First, Sports Data claims that Prozone developed its event template from its initial rudimentary form in the Prozone proposal to its final form in a very short period of time. Sports Data points to the fact that Prozone had no previous experience in rugby league and contends that it could not have developed its template so quickly without “springboard” assistance gained from having access to Sports Data’s input criteria.

29    Second, Sports Data contends that a comparison between Sports Data’s input criteria and various iterations of Prozone’s event template reveals that Prozone must have had access to and copied Sports Data’s input criteria. It points to a number of what it submits are remarkable similarities between the respective event descriptions and the order of the descriptions as they appear in Sports Data’s input criteria and in various iterations of Prozone’s event templates. It is unnecessary (and not possible because of the claimed confidentiality of the information) to detail all of the similarities relied on by Sports Data. Two examples will suffice.

30    First, Sports Data relies on the fact that the scrum infringement descriptions in the Prozone event template as at January 2014 are almost exactly the same as the corresponding descriptions in Sports Data’s input criteria. Most significantly, Sports Data points to the fact that Sports Data’s input criteria describes one of the scrum infringement events as “unused”. That description is also used in Prozone’s event template. Yet Mr Moufarrige’s evidence is that the “unused” description was not in fact an event, but was a “placeholder” in Sports Data’s input criteria in the event that there was a need to add a new description.

31    Second, Sports Data points to some similarities between some of the descriptions in the “try cause” categories of the respective event description lists, including descriptions such as “lazy inside”, “too much rush” and “too much slide”. Prozone subsequently made changes to some of these descriptions in later iterations of its event templates. These changes can only be explained, in Sports Data’s submission, by an intention on the part of Prozone to conceal the fact that it had copied the descriptions from Sports Data’s input criteria.

32    In my opinion, a comparison of Sports Data’s input criteria and the various iterations of Prozone’s event template is capable of supporting a prima facie inference that Prozone was at some stage provided with some information concerning Sports Data’s input criteria. The available inference is that this information was provided to Prozone in some form either by an officer or employee of the NRL, or by one of the NRL clubs during the various meetings with Prozone that occurred in the period December 2013 to February 2014.

33    The more difficult question, however, is whether this factual finding might in turn support Sports Data’s alleged causes of action for misuse of confidential information and infringement of copyright.

Is there a prima facie case of misuse of confidential information?

34    To be entitled to relief relating to Prozone’s alleged use of its confidential information, Sports Data must establish three elements (at this stage to a prima facie standard): first, that the relevant information has the necessary quality of confidence; second, that the information was received in circumstances imparting an obligation of confidence; and third that there has been (or there is threatened to be) an unauthorised use of the information: Coco v AN Clark (Engineers) Ltd [1969] RPC 41 at 47; Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 50; CA Inc v ISI Pty Limited (2012) 201 FCR 23 at [364].

35    Before turning to consider whether each of the elements has been made out, or is capable of being made out to the requisite standard, attention must first be given to the question of exactly what information Sports Data claims is confidential. In actions for breach of confidence it is essential that the information said to be confidential is identified with precision: O’Brien v Komesaroff (1982) 150 CLR 310 at 326 - 328; Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434 at 443; Retractable Technologies Inc v Occupational and Medical Innovations Ltd (2007) 72 IPR 58 (Retractable Technologies) at [90].

36    In both the Originating Application and the Interlocutory Application, Sports Data identifies the alleged confidential information in the following terms:

[T]he confidential compilation of input criteria used by the applicant in identifying and recording events in rugby league games, as described in paragraph 31 of the Confidential Affidavit of Andrew Moufarrige sworn 8 May 2014 and Exhibited behind tab 9 of Confidential Exhibit AM-1 to the said affidavit (the Input Criteria).

37    Paragraph 31 of Mr Moufarrige’s affidavit contains the following description:

SD Capture allows a game to be reviewed frame by frame and broken down into discrete events so that it can be analysed. There are many hundreds of events types which may occur in any given rugby league game which are included in SD Capture as input criteria (the Input Criteria). A table setting out the Input Criteria is at AM-1, Tab 9.

38    The table at AM-1 Tab 9 is simply a list of rugby league event descriptions.

39    At the hearing, Sports Data sought to identify the confidential information in different terms. The information was identified in terms of it being an extract of selected “table fields” in a particular part of the rugby league databases compiled by Sports Data. The precise description of the information (also said to be the copyright work) is set out in a letter from Sports Data’s solicitors to Prozone’s solicitors dated 15 May 2014 as follows:

The copyright work and confidential information upon which our client’s claim for interlocutory relief is founded (defined in the Court documents and affidavits as the Input Criteria) is the compilations of the statistic types utilised by our client in coding any given rugby league game, which exist as records in the database tables entitled “tblStatTypeGroup”, “tblStatType”, “tblStatTypeGroup2StatType” and “tblFreeReason” in various SD Rugby League Databases.

40    Sports Data accepts that many of the individual event descriptions contained within the relevant table field may appear to be commonplace descriptions of events in a rugby league match. For this reason, no doubt, it contends that it is the “compendium” or “compilation” of events as a whole that is confidential. It should be noted that Mr Paterson, on behalf of Prozone, makes a similar claim in relation to Prozone’s event description template. He says that whilst Prozone does not claim confidentiality in the event descriptions in Prozone’s template, “the relational structure in the template is proprietary and commercially confidential to Prozone”.

41    In my opinion, even putting aside the fact that Sports Data has not amended its applications to reflect the change in identification of the relevant information, there are problems with the way the information has been particularised. One difficulty is that if the confidential information is the compendium or compilation, rather than the individual events contained within it, it is difficult to see how there could be said to be unauthorised use unless the entire compendium, or at least a substantial part of it, is used. This difficulty is considered further in the context of the unauthorised use element.

Does the information have the quality of confidence?

42    Sports Data relies on the fact that its database (which is said to include the relevant table field containing the input criteria) contains a notice the effect of which is to assert that information in the database is confidential. A similar notice is contained on Sports Data’s website.

43    The difficulty for Sports Data is, however, that the evidence reveals that the database can be accessed by Sports Data’s customers, including the NRL Clubs, without the customer going to the website which contains the relevant notice. The means of access to the database via particular software is also such that a customer is either unlikely to, or perhaps even unable to, access or read the relevant notice. Only a small number of people are able to access the database in its native format. It is only in that format that the notice is apparent. It follows that when the information in the database (including the relevant table fields containing the input criteria) was disclosed to the clubs, it was not made clear to the clubs that it was confidential and that the confidentiality should be maintained.

44    There is otherwise no evidence that the agreements between Sports Data and the NRL Clubs include a term to the effect that the information on the database (including the table fields and input criteria) is disclosed to the NRL Clubs on a confidential basis.

45    The position is equally unclear as between Sports Data and the NRL. It will be recalled that the development of the input criteria occurred primarily at a time when the business was run by NRL Stats, the company jointly owned by the NRL and Sports Data. The agreement that terminated this arrangement contained no relevant confidentiality clause. Nor did the agreement that established the first joint venture in the first place.

46    There are some provisions in the licence agreement between Sports Data and the NRL that might suggest that any disclosure of the input criteria to the NRL was on a confidential basis. Sports Data relies in particular on clause 7.2(h) of the licence agreement, which provides, amongst other things, that the NRL will not either during or after the agreement supply the “Other Stats” to any third party without the written consent of Sports Data. The definition of “Other Stats” includes intellectual property (which includes copyright and data) acquired or created by Sports Data. The difficulty is that “Other Stats” is also defined in a way which excludes the “Stats”. “Stats” is defined in such a way that it is difficult to see how it could not include some (or perhaps even the majority) of the input criteria now said to be confidential. It will also be recalled that upon termination the Stats were assigned to the NRL.

Was the information imparted in circumstances identifying an obligation of confidence?

47    There is no suggestion, let alone evidence, that Sports Data imparted the alleged confidential information to Prozone in circumstances identifying an obligation of confidence. Sports Data does not say that it provided the information to Prozone. Prozone denies receiving it. Sports Data’s case is that the relevant information was most likely imparted to Prozone by either employees of the NRL or the NRL Clubs. The precise circumstances in which the information was imparted is unclear. Sports Data acknowledges that it is a reasonable inference that Prozone may have received it innocently; that is, without knowing that it was information confidential to Sports Data. The present state of the evidence does not support any inference that Prozone received the information knowing it was Sports Data’s confidential information.

48    Sports Data relies, however, on the fact that it has put Prozone on notice that it has received confidential information.

49    A third party who innocently comes into possession of confidential information may in some circumstances be enjoined, once put on notice, from further dealing with the confidential information: Retractable Technologies at [81]-[87]; Breen v Williams (1996) 186 CLR 71 at 129; Lenah Game Meats Pty Ltd at [137]. There is, however, a real issue here whether the circumstances of this case are such that Sports Data is, or is likely to be, entitled to that remedy against Prozone.

50    First, the “notice” relied on by Sports Data, a letter from Sports Data’s lawyers dated 24 April 2014, merely asserts copyright in respect of works said to include the confidential information. It does not put Prozone on notice that it has received confidential information.

51    Second, considerable time has passed since Prozone is said to have received some or all of the confidential information. There was a delay of at least a month between the time that Sports Data became aware that Prozone may have received confidential information and the time it put Prozone on notice. Over a month has now passed since Prozone was put on notice. The delay is significant given that Sports Data now acknowledges that it would only be entitled to an injunction for a short period based on the “springboard” doctrine.

52    Third, in the month or months between the time the information was allegedly imparted and the notice given, Prozone has acted innocently and altered its position and commercial affairs.

53    Fourth, the extent of information imparted to Prozone and the circumstances in which it was imparted remains unclear.

54    In Retractable Technologies, Greenwood J said the following (at [86]):

Although the foundation of the court’s intervention is to fashion relief in the exclusive jurisdiction to enforce an obligation of confidence and bind the conscience of the third party put on notice that particular conduct involves the use of another’s confidential information (rather than intervention in support of equitable rights in property), the circumstance that the third party has acted innocently in reliance upon a contract, altered its position and conducted its commercial affairs on a particular footing (perhaps with great prejudice and no real ease of adjustment) are factors among, no doubt, a subset of matters arising out of all the relevant circumstances, that a court would closely examine either in framing the scope of the relief fashioned appropriately to particular conduct or from or to a particular time; or, in determining the respective positions of the parties having regard to the equity asserted by the claimant primary disclosor on the one hand and the innocent purchaser for value without notice, on the other, in making a remedial order at all.

55    A number of considerations referred to by Greenwood J are apposite to this case. Most of them would militate against the grant of the relief now sought by Sports Data.

56    In all the circumstances, in my opinion it is at the very least doubtful on the present state of the evidence that Sports Data would be entitled, at a final hearing, to obtain the relief it seeks.

Has there been an unauthorised use?

57    A number of matters relevant to this question have already been addressed. There is an added difficulty. It may be inferred, at least to a prima facie standard, that Prozone at some stage received some information concerning Sports Data’s input criteria. It is, however, by no means clear that Prozone received the relevant database tables or any other complete list of Sports Data’s input criteria. That is important because Sports Data acknowledges that it is only the compilation, not the individual event descriptions, that is confidential.

58    Equally, at this stage it cannot be concluded that the evidence sustains an inference or finding that Prozone has made unauthorised use of the compilation, as opposed to perhaps some items contained within it.

59    Having regard to the difficulties to which reference has been made, it is not possible on the present state of the evidence to conclude that Sports Data has established a prima facie case of breach of confidence that would entitle it to the relief sought. Even if there was a prima facie case, in my opinion it is a weak case. As indicated later, that is a matter which is relevant to the balance of convenience.

Is there a prima facie case of copyright infringement?

60    For Sports Data to obtain relief for infringement of copyright it must establish (at this stage to prima facie standard) that copyright in the work subsists and has been (or is threatened to be) infringed by Prozone.

Does copyright subsist?

61    It is again critical for Sports Data to clearly and precisely identify the relevant work in respect of which it claims copyright. As with the alleged confidential information, Sports Data initially relevantly identified the copyright work to be the “Input Criteria”, being the “confidential compilation of input criteria used by [Sports Data] in identifying and recording events in ruby league games” as described in Mr Moufarrige’s affidavit and Tab 9 of Exhibit AM-1. Following the service of the originating and interlocutory applications, there was an exchange of correspondence concerning the proper identification of the copyright work. It was in the course of that correspondence that Sports Data provided the further particulars of the copyright work (and confidential information) extracted in paragraph 39 above.

62    Regrettably, Sports Data’s response to the request for clarification of the copyright work is ambiguous. It identifies the copyright work as being “compilations of the statistic types utilised by [Sports Data] in coding any given rugby league game” and states that the work exists as records in certain specified “database tables” in “various rugby league databases”. Unfortunately, however, the particulars refer back to the Court documents and the expression “Input Criteria”, which is defined in the documents by reference to Tab 9 of Exhibit AM-1. This led Prozone’s lawyers to write to Sports Data’s lawyers and advise that Prozone was proceeding on the basis that Tab 9 of Exhibit AM-1 was the copyright work. There was no response to that letter.

63    At the hearing Sports Data’s counsel confirmed that Sports Data’s case is that the relevant copyright work is the specified database tables contained within the Sports Data’s rugby league database. A field or fields in these tables comprises a list of Sports Data’s input criteria. Counsel eschewed reliance on Tab 9 of Exhibit AM-1.

64    Sports Data relies on a report from an information technology expert, Mr Kieran Earnshaw. Mr Earnshaw was relevantly provided with a database supplied in Microsoft Access format and identified as NRLHistory.accdb. Amongst other things, he was asked to identify the “fields” in the database and produce a document which “evidences” those fields in the form in which they appear in the database.

65    In his report, Mr Earnshaw explains that the database NRLHistory.accdb is a relational database. It contains “one or more objects called tables”. Each table is uniquely identified by its name and is comprised of columns (or fields) and rows (data records). The data in the database is stored in the tables. The columns or fields in the tables define the data stored within the tables whereas rows represent the data itself.

66    In accordance with his instructions Mr Earnshaw produces four tables in documentary form. The most important table, and the table upon which most argument was focused, is a table identified as “tblStatType” (Appendix E to Mr Earnshaw’s report).

67    Prozone also relies on a report of an information technology expert, Mr Rod McKemmish. Mr McKemmish’s evidence deals with certain qualities of the NRLHistory database and the tblStatType table. The following matters concerning the database and the tables and fields within it would appear to be either common ground between Mr Earnshaw and Mr McKemmish, or at least not in dispute:

(a)    The NRLHistory database is a single file that is 2,013 KB in size.

(b)    The table tblStatType is one of fifty tables in the NRLHistory database. It is 295 KB in size.

(c)    Because the NRLHistory database is a relational database, the tables and relationship between them is an integral part of how the NRLHistory database operates. The tables are given meaning by their content and relationship with other tables.

(d)    Appendix E to Mr Earnshaw’s report produces only 4 of 23 fields or columns in the tblStatType table. The four fields extracted by Mr Earnshaw do not appear sequentially in the tblStatType table. The field upon which most argument centred is the fldDescription field. This is the third column in the Appendix E document. It is in fact the 22nd field in the tblStatType table.

(e)    The fldDescription field is a field that “describes the statistic”. The fldStatType field is a key field that contains a four character code.

(f)    Each row in the tblStatType table constitutes a “record”, being combination data items that describe a single event. Because Appendix E only produces four of 23 fields, the rows in Appendix E are not a complete record.

(g)    The only “key” field in the tblStatType table is the fldStatType field. It is used to link the tblStatType table to other tables in the NRLHistory database.

68    Putting aside, for present purposes, the ambiguity in Sports Data’s particulars arising from the reference to the Input Criteria as defined in the court documents (i.e. Tab 9 of Exhibit AM-1), there still remains a lack of clarity in Sports Data’s identification of the relevant copyright work. There is in some respects a disjunct between the expert evidence and the particulars provided by Sports Data. What exactly are the “compilations of the statistic types” used by Sports Data? Are the compilations the four incomplete tables identified and extracted in part by Mr Earnshaw, or all fifty tables in the database, or the four fields in the four tables extracted by Mr Earnshaw, or only one of those fields?

69    Prozone complains that the ambiguity in Sports Data’s particulars have caused it prejudice. It sought an adjournment. At the hearing I indicated that if the outcome of Sports Data’s interlocutory application hinged on the particulars I would hear further argument on this issue. As events have transpired, the outcome of the application does not hinge on this point.

70    As I understand it, Sports Data alleges, in effect, that the copyright work is the four tables extracted by Mr Earnshaw. I will proceed on that basis.

71    A more fundamental question is whether it is legitimate to identify an alleged copyright work as being an extract or extracts from a much larger work.

72    Sports Data contends that the four tables identified and extracted by Mr Earnshaw were authored by Mr Moufarrige and employees of Sports Data and comprise a “literary work” for the purposes of s 32 of the Copyright Act 1968 (the Act). Section 10 of the Act states, relevantly, that a literary work includes “a table, or compilation, expressed in words, figures or symbols”. Sports Data contends that the four tables are compilations expressed in words and figures.

73    There would appear to be no issue, at least at this stage, that the various event descriptions which found their way into at least one of the fields, in one or more of the relevant database tables, were authored by Mr Moufarrige or Sports Data employees. There does not appear to be any suggestion that the authors copied the descriptions, let alone the order and structure of them. In that sense, at least, the relevant work may be said to be original.

74    For copyright to subsist in a work, however, one or more authors must have expended sufficient mental effort or exertion of a literary nature in relation to the form of expression in the work. The form of expression cannot simply be dictated by the nature of the information: IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 (IceTV) at [42]; Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd (2010) 189 FCR 109 at [30].

75    Here, there is a question whether the form of expression in the various event descriptions involved mental effort or exertion by the relevant authors. Or was the form of expression in the descriptions simply dictated by the nature of the information contained in the descriptions? For example, is the expression “kick chase” simply dictated by the fact that it is a description of an event involving a player chasing a ball that has been kicked?

76    It is no doubt because Sports Data appreciates the difficulties involved in establishing the requisite originality or authorship of individual event descriptions that it claims copyright only in the compilation. Sports Data does not point to the originality of expression in the event descriptions themselves. Rather it claims that the relevant database tables are a compilation or compilations. In that circumstance, copyright protects the particular form of expression that is, the compilation itself. This includes the selection, structure and arrangement of the event descriptions: IceTV at [28]. The question then is whether the selection, structure and arrangement of the event descriptions involved sufficient independent intellectual effort or mental effort.

77    Whilst the question is not easy, in my opinion Sports Data has at least an arguable case that copyright subsists in the compilation of event descriptions that is found within fields in the specified tables extracted from the NRLHistory database. Whilst it might seem somewhat bizarre to describe the compilation in the database table as a literary work, that expression is specifically defined in the Act. In my opinion, there is evidence to a prima facie standard that the compilation of event descriptions and their selection and arrangement involves sufficient originality and involved sufficient effort and exertion on the part of the authors to support the conclusion that copyright subsists.

78    The question whether it is legitimate to claim copyright in a work contained within a much larger work is best considered in the context of whether copyright has been infringed.

Has copyright been infringed?

79    A copyright work is infringed if a person, without the licence of the owner, does or authorises the doing of any act comprised in the copyright: s 36 of the Act. Copyright in relation to a work includes, relevantly, the exclusive right to reproduce the work in a material form: s 31(1)(a)(i) of the Act. Section 14(1) of the Act provides that a reference to reproduction of a work is to be read as including the reproduction of a substantial part of the work.

80    For the purposes of copyright law, the notion of reproduction involves two elements: first, a sufficient degree of objective similarity between the two works; and second, some causal connection between the form of the infringing work and the form of the copyright work: SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472.

81    In Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 469, Lord Reid described the elements in the following terms:

Broadly, reproduction means copying, and does not include cases where an author or complier produces a substantially similar result by independent work without copying. If he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.

82    The question whether a substantial part of a work has been copied is a question of fact and degree: IceTV [32]. It is necessary to consider not only the extent of what has been copied; the quality of what is copied is critical: IceTV at [30]. Moreover, a fact that is critical to the assessment of the quality of what is copied is the originality of the part which is copied: IceTV at [32].

83    Before turning to whether Sports Data has established a prima facie case in relation to each of these elements, it is necessary to describe a difficulty arising from the way Sports Data has identified its copyright work. As explained earlier, Sports Data identifies the copyright work as being essentially four of 50 tables within which data on the entire NRLHistory database is stored. In fact, Sports Data’s case essentially relies almost entirely on one field or column in one (or perhaps two) of the tables which contain event descriptions. This raises the question whether it is legitimate or permissible to describe a copyright work as, essentially, a small extract from a much larger work. That is particularly so given the fact that issues of “substantial” reproduction are involved. Can a person alleging copyright infringement effectively skirt around the “substantiality” element by confining the relevant works to a small part of a much larger whole?

84    This is a difficult question. Ultimately, given the conclusions I have reached in relation to other issues, it is not necessary to answer this definitively. It is an issue that may have to be addressed at the final hearing. It may require further evidence. Suffice it to say at this stage that I have difficulty in seeing how it is legitimate to identify or define a relevant copyright work in this way. In my view, contrary to the submissions advanced on behalf of Sports Data, the facts and circumstances of this matter are distinguishable from those considered in Dynamic Supplies Pty Limited v Tonnex International Pty Limited (2011) 91 IPR 488 (Tonnex). Tonnex accordingly does not assist in resolving this issue.

85    Sports Data contends that its copyright work has been substantially reproduced in Prozone’s “Rugby League Definitions Guide 2014” (Guide). This is a document that Prozone provided to the NRL and the NRL Clubs to explain Prozone’s statistics database and the software that is used to view it. Sports Data asserts that there is objective similarity between its copyright work and the Guide and that the similarity was caused by, or was the result of, copying by Prozone.

86    In my opinion, Sports Data has not at this stage established a prima facie case of substantial reproduction.

87    As already indicated, in my opinion Sports Data has established, at least to a prima facie standard, that at some stage during the period December 2013 to February 2014, Prozone received information from either the NRL, or more likely the NRL Clubs, which included information about some of Sports Data’s input criteria. It is unclear who disclosed the information or the form in which the information was given. It cannot, at this stage, be inferred that Prozone was aware that the information was confidential or came from Sports Data. It cannot be inferred, at least at this stage, that Prozone received Sports Data’s NRLHistory database or any part of it. It cannot therefore be concluded that Prozone received the relevant four database tables, either in electronic or hardcopy format. It does appear, however, that some of the information received by Prozone was used by it to develop its event templates. This in turn flowed into descriptions contained in the Guide. The result is that some of the event descriptions in the Guide are expressed in the same terms as some of Sports Data’s input criteria.

88    It does not follow, however, that there has been a substantial reproduction of Sports Data’s copyright works. There are at least two difficulties for Sports Data in making out this part of its case.

89    First there does not appear to be a substantial objective similarity between Sports Data’s compilation and Prozone’s Guide. It is, in the first place, difficult to compare, on the one hand, a compilation comprising a field within a table within a large database and, on the other hand, a hardcopy guide. To the extent that a comparison is possible, that comparison does not reveal that a substantial part of Sports Data’s work has been reproduced in Prozone’s Guide. That is so whether the matter is approached by quality or quantity.

90    There are parts of the two works that are the same or similar, but in my opinion they are not substantial parts. That is particularly the case when the comparison is approached on the basis that Sports Data’s work is said to be a compilation. It is not to the point that some individual event descriptions are the same. Sports Data would need to demonstrate substantial identity of selection, structure and arrangement. In my opinion it has not done so.

91    Given the confidentiality regime, it is not possible to express my finding in this regard in more precise terms.

92    The second difficulty for Sports Data is that it has failed to make out a prima facie case of causation.

93    The difficulty for Sports Data is that the only available inference is that at some stage during Prozone’s consultations with the NRL and NRL Clubs, Prozone received some information which included event descriptions that had been used by Sports Data. As already indicated, however, there is no evidence, and it cannot necessarily be inferred, that Prozone received all or a substantial part of Sports Data’s copyright work. Moreover, whilst it can be inferred that the information received by Prozone was in some way used by Prozone in its development of its event templates, Prozone’s development of its event template involved a number of Prozone employees and extended over some two months. It unquestionably involved independent work and effort on the part of Prozone. It did not necessarily involve copying, let alone substantial copying, of the selection, structure or arrangement of input criteria in Sports Data’s copyright work. In my opinion, at least at this stage, no such inference is available.

94    It follows in my opinion that at this stage Sports Data has not made out a prima facie case of copyright infringement. If it has, it is at best a very weak case. It is certainly not a strong or overwhelming case as contended by Sports Data.

Does the balance of convenience favour Sports Data?

95    Given that I have found that Sports Data has not made out a prima facie case in respect of either the alleged breach of confidence or the alleged infringement of copyright, it is strictly unnecessary for me to consider the balance of convenience. Nevertheless, it is desirable that I address the substantial arguments that have been advanced by the parties in relation to the balance of convenience. That is so particularly in the event that I am found to have erred in concluding that Sports Data has failed to make out a prima facie case in respect of either of the causes of action.

96    In my opinion, Sports Data has not demonstrated that the balance of convenience favours the grant of the interlocutory relief it seeks. Even if I found that Sports Data had made out a prima facie case in respect of either or both of the causes of action, I would in any event have refused to grant the interlocutory relief sought.

97    Sports Data’s case in respect of the balance of convenience rests essentially on three propositions. They are: first, that if the interlocutory relief is not granted it will suffer irreparable harm because it will inevitably be placed in administration or wound up in insolvency and will not be able to pursue its actions against Prozone; second, that Prozone will therefore not suffer any significant harm if it is restrained in the terms sought; and third, third parties including the NRL will not suffer any significant harm or prejudice if Prozone is restrained.

98    In my opinion none of these propositions have any merit.

99    Before considering Mr Moufarrige’s evidence in relation to the balance of convenience, it is worth emphasising that the fact that Sports Data ceased being the official supplier of statistics to the NRL and was replaced by Prozone did not result from any of the conduct the subject of Sports Data’s action against Prozone. It would appear that the NRL conducted a form of tender process in late 2013 to determine who would be the official statistics supplier for the 2014 season and onwards. Prozone was successful. Sports Data was not. The alleged misuse of information and copyright infringement occurred after Sports Data’s agreement with the NRL was terminated and after Prozone was appointed official NRL statistics provider.

100    Mr Moufarrige’s evidence is that since Sports Data ceased providing statistics and analysis to the NRL its business and financial position has suffered. Its staff has halved. A profit and loss statement produced by Mr Moufarrige shows a dramatic reduction in revenue. In the last few months Sports Data has incurred a loss, whereas at the same time last year it made a profit. Mr Moufarrige says that Sports Data has in recent times had to borrow funds to remain solvent. It has borrowed $700,000 since September 2013 and is currently borrowing $15,000 per week to keep the company trading. He states that “if the current income trend continues, it is my belief that Sports Data will have to cease trading very shortly”.

101    There are at least three difficulties with Sports Data’s contention that it will be wound up or placed in administration if the interlocutory relief is not granted. First, Sports Data has led no evidence concerning its assets and liabilities. Even if, as claimed, it has to cease trading, it does not follow that it will need to appoint an administrator or liquidator. It does not follow that it will be insolvent.

102    Second, even if an administrator or liquidator is appointed, he or she could elect to pursue Sports Data’s case against Prozone. The case does not necessarily come to an end.

103    Third, and even more fundamentally, the difficulty for Sports Data is that even if the injunctions it seeks are granted, its business and financial position may not improve. The NRL has made it clear, and Sports Data accepts, that whatever happens in this proceeding, the NRL will not retain Sports Data to provide it with statistics and analysis. It follows that the large revenue stream that Sports Data lost when it lost the NRL licence will not return. Even worse for Sports Data, the NRL has made it clear that it will not provide Sports Data with a licence to use the NRL’s rugby league audio visual footage Sports Data’s business. That will unquestionably make it more difficult for Sports Data to provide the level of statistical analysis in relation to rugby league games that it was previously able to provide.

104    Sports Data contends that if Prozone is restrained from using Sports Data’s confidential information and infringing its copyright, Sports Data might be able to restore its trading relationship with the NRL Clubs. That will improve its financial position. Sports Data claims that it has licence agreements with a number of the NRL Clubs. The evidence suggests that Sports Data invoices the NRL Clubs each year for statistics and services to be provided the following year. Invoices issued in late 2013 for the 2014 season have not been paid by any of the clubs. That is no doubt explicable on the basis that the arrangements between Prozone and the NRL permit the NRL to grant sublicenses in respect of Prozone’s statistics services to the NRL Clubs. Mr Moufarrige apparently believes that if Prozone is not able, because of the injunctions, to provide its full service to the NRL, the NRL Clubs likewise will not get the full Prozone service. They will then return to Sports Data.

105    In my opinion, this is nothing more than a pipe-dream. There is no evidence that the NRL Clubs will return to Sports Data even if they cannot receive the full Prozone Service via the NRL. Given the attitude shown by the NRL towards Sports Data and the close relationship between the NRL and the NRL Clubs, I consider it highly unlikely that the NRL Clubs will return to Sports Data whatever may occur in these proceedings. An additional difficulty is that because Sports Data is no longer licensed to use the NRL’s audio visual footage, it is doubtful at least that Sports Data can provide the same level of service to the NRL Clubs that it used to.

106    Prozone contends that Sports Data could only do this if it infringed the NRL’s copyright in its match footage. Sports Data denies this and claims it can provide its services based on viewing rugby league footage from the pay television provider Foxtel. It is unnecessary for me to decide if Sports Data’s ongoing rugby league statistics service will involve a breach of the NRL’s copyright. It is however, in my opinion, readily apparent on the evidence that without the NRL audio visual licence Sports Data is unlikely to be able to provide the same level of service that it was able to provide previously. This makes it even less likely that the NRL Clubs will return to it even if Prozone is restrained.

107    It follows that in my opinion Sports Data’s financial difficulties will continue even if the injunctions are granted.

108    It also follows from these findings that damages are likely to be an adequate remedy for Sports Data in all the circumstances. I will return to this matter later.

109    Sports Data’s contention that Prozone will not suffer any significant detriment if it is restrained in the terms sought in my opinion also has no merit.

110    Sports Data submits that the terms of Prozone’s contractual arrangements with the NRL are unclear. It cannot, therefore, be inferred that Prozone will necessarily lose the revenue it otherwise is earning from the NRL if it is restrained.

111    There is merit in the submission that the terms of the contractual arrangements between Prozone and the NRL are unclear on the evidence. There is apparently no written agreement between Prozone and the NRL. Certainly none was produced in answer to a notice to produce and subpoena served by Sports Data. In my opinion, however, it is open to infer that Prozone is currently on some form of monthly retainer or licence with the NRL. It issues invoices and is paid on a monthly basis for statistical services and analysis for each month. The monthly fees it receives are substantial. It is difficult to imagine that the NRL would be contractually obliged to, or otherwise willing to, pay the monthly fee to Prozone if Prozone is restrained and unable to provide its full service.

112    There is also evidence that Prozone will suffer not insubstantial non-pecuniary hardship and prejudice if it is effectively restrained from providing a statistics service to the NRL. Amongst other things, employees will be made redundant. Its reputation will be damaged.

113    It follows that in my opinion Prozone will suffer significant detriment if restrained. This is doubly significant because the evidence of Sports Data’s apparent financial position casts doubt on its ability to meet any significant claim for damages, based on its undertaking as to damages, if it is ultimately unsuccessful in its action against Prozone. It is common ground that Sports Data has offered to provide a bank guarantee as security for its undertaking, but the amount offered would appear to be well less than the amount of damages it might be liable for if ultimately unsuccessful.

114    As for the third proposition, there is evidence from the Head of Football at the NRL, Mr Todd Greenberg, to the effect that if Prozone is not able to continue to deliver statistics to the NRL, this would have a direct adverse impact on the NRL’s operations. Mr Greenberg’s evidence is that the NRL employs three full time analysts and one part time analyst. These analysts use Prozone’s statistical analysis to monitor the rules of the game, monitor the performance of referees and address issues concerning player welfare.

115    Mr Greenberg also states that any inability on the part of Prozone to provide its statistics and analysis will have a direct impact on the NRL clubs and NRL players. Prozone’s statistics are relied on by analysts who work with the coaches of the club sides. If Prozone is unable to continue to deliver statistics, the clubs, coaches and players will be limited in their ability to properly prepare for matches.

116    Mr Greenberg’s evidence is that if Prozone is restrained, there is no viable alternative statistics provider that could be appointed by the NRL for the 2014 seasons. Whilst Mr Greenberg was cross-examined about the statistics services that are currently provided by other sports statistics providers, in my opinion it is tolerably clear the NRL is of the opinion that the level of service able to be offered by the other providers is not adequate for its purposes. There is no reason to doubt the opinion of Mr Greenberg in this respect. Mr Greenberg’s evidence is that in the circumstances the NRL would be required to generate its statistics in house if Prozone is restrained. He gives an estimate of the cost to the NRL if that turns out to be necessary. The cost is substantial.

117    Sports Data’s submission that the NRL could turn to other statistics providers if Prozone is restrained is rejected. In my opinion the NRL and the NRL Clubs would suffer not insubstantial inconvenience and costs if Prozone is restrained. This is a matter of considerable significance in the circumstances of this case.

118    In addressing the balance of convenience, it may be necessary to consider and evaluate the impact that the grant or refusal of an injunction will have or is likely to have on third persons and the public generally: Apple v Samsung at [68]. Whilst hardship visited upon third parties in the public generally will rarely be decisive, the weight to be given to this consideration and whether those interests tend to favour the grant or refusal of the injunction will depend upon the circumstances of the case: Patrick Stevedores at [65]-[66]; Apple v Samsung at [69].

119    The interests of the NRL and the NRL Clubs are not decisive of the balance of convenience here. They are, however, matters that in the particular circumstances of this case should be given considerable weight. Prozone submits that given the central involvement of the NRL in the dispute between Sports Data and Prozone and the fact that the NRL is directly affected by the orders Sports Data seeks, Sports Data is obliged to join the NRL as a party. Prozone relies in this respect on the decision in John Alexander’s Clubs Pty Ltd v White City Tennis Club Ltd (2010) 241 CLR 1 at [140]-[141].

120    It is unnecessary for me to decide if the NRL should be joined. I am, however, satisfied that the adverse impact that the injunctions will have on the NRL and the NRL Clubs weighs against the granting of the injunction. In the particular circumstances of this case it is a matter that should be given considerable weight.

121    I adverted earlier to the fact that damages would appear to be an adequate remedy in this matter. The question whether damages will be an adequate remedy for the alleged infringement of the plaintiff or applicant’s rights will always need to be considered when the Court has an application for interlocutory injunctive relief before it. The question involves an assessment by the Court as to whether the applicant would, in all material respects, be in as good a position if confined to a remedy in damages as it would be if an injunction were granted: Apple v Samsung at [62]. This is an issue that is to be considered as part of the assessment of the balance of convenience: Apple v Samsung at [63].

122    Prozone submits that to the extent that Sports Data has suffered damage, or is likely to suffer further damage, the extent of the damages is readily ascertainable and quantifiable. Prozone is also prepared to keep proper accounts. The evidence clearly establishes what income Prozone has earned and will continue to earn if not restrained. On the other hand, the only irreparable harm that Sports Data points to is its contention that if Prozone is not restrained, Sports Data will most likely go into administration. For the reasons already given that contention is rejected. It is not supported by the evidence. In any event, it cannot be concluded that Sports Data’s financial position will be improved even if Prozone is restrained. If Prozone is not restrained, that will have no direct financial implications for Sports Data. It will simply be left to seek to recover damages in due course. In my opinion this is another significant matter that weighs against the grant of an injunction.

123    There are two final matters that militate against the grant of interlocutory relief.

124    The first is that if, contrary to my earlier conclusions, Sports Data is found to have a prima facie case, in my opinion it is, at least at this stage, a very weak case. That is notwithstanding the fact that it can be inferred that Prozone did indirectly receive some information about Sports Data’s input criteria. It is unnecessary to rehearse the difficulties and weaknesses in Sports Data’s case referred to earlier.

125    The second matter is that even if Sports Data succeeds, there are problems with the terms of the injunctions it seeks – both at the final hearing and at this interlocutory stage. The relief sought presently includes permanent injunctions restraining Prozone from infringing Sports Data’s copyright and using Sports Data’s confidential information. Difficulties arise in relation to the form of this relief given the problems involved in precisely identifying the relevant confidential information and copyright works. Those problems have already been referred to. The difficulties are exacerbated by the fact that the injunction relating to the alleged copyright infringement is no more than an injunction not to infringe.

126    Even putting these problems aside, Sports Data acknowledges that it essentially relies on the “springboard” doctrine. The springboard doctrine seeks to prevent one party’s use of another’s confidential information in order to bring out its own product in a manner or time it would not otherwise have been able to achieve: Terrapin Ltd v Builders’ Supply Co [1967] RPC 375 at 391. It restrains the use of confidential information as a “springboard” to gain a head start, even when that information is capable of being independently ascertained. Ordinarily, the restraint is limited as to time.

127    In argument, counsel for Sports Data acknowledged that in the circumstances Sports Data may not be entitled to permanent injunctions. Counsel did not, however, nominate any particular period of restraint that would be appropriate by application of the springboard doctrine. There has been no amendment to the originating or interlocutory application. The difficulty is that if an injunction is granted pending the final hearing, that may result in injunctions for a period longer than an application of the springboard doctrine would otherwise justify.

128    Relevant too is the question of delay. It appears that Mr Moufarrige was monitoring Prozone’s statistics from at least mid-February 2014. Prozone’s Guide, the alleged infringing work, was published in March 2014. It may be inferred that Mr Moufarrige saw it at about that time. Sports Data had formed a view that its copyright had been infringed by at least 24 April 2014 when letters were sent to Prozone and the NRL. The application for interlocutory relief was not filed until 8 May 2014. In my opinion if there has been any use of information by Prozone as a springboard to get a head start, that period of head start may well have passed by.

129    Having regard to all the circumstances, in my opinion the balance of convenience weighs against the grant of the injunctive relief sought. In summary that is because:

(a)    I am not satisfied that Sports Data will suffer irreparable harm if the injunctions are not granted;

(b)    I am not satisfied that damages are not an adequate remedy;

(c)    the above two considerations flow from the fact that I am not satisfied that Sports Data will go into administration (or will be wound up) if the injunction is not granted and am not satisfied that Sports Data’s financial position will necessarily be improved even if an injunction is granted;

(d)    Prozone will suffer not insubstantial prejudice and harm, both pecuniary and non-pecuniary, if injunctions are granted;

(e)    Sports Data is unlikely to be able to recompense Prozone for any damage it suffers as a result of the interlocutory injunctions if Sports Data is ultimately unsuccessful in this action;

(f)    third parties, in particular the NRL and NRL Clubs, will suffer prejudice and harm if the injunctions are granted;

(g)    if Sports Data has a prima facie case, its case at this stage at least is weak and I am not satisfied that it will necessarily be entitled to the final relief it seeks even if the causes of action are made out – there are at the very least difficulties with the form of the injunctions currently sought; and

(h)    there has been a delay on the part of Sports Data in bringing this action.

Conclusion and disposition

130    I am not satisfied that Sports Data has made out its case for interlocutory relief. It has not established a prima facie case in respect of either breach of confidence or copyright infringement. Even if it had established a prima facie case in either or both of these causes of action, the balance of convenience does not favour the grant of an injunction. The application for interlocutory injunctions is accordingly dismissed.

131    It should be noted that the interlocutory application also seeks an order pursuant to rule 7.22 of the Federal Court Rules 2011 for preliminary discovery. This aspect of the application received virtually no attention in the course of the hearing. At this stage I propose simply to adjourn that aspect of the interlocutory application for further directions. It would appear to me that this is a matter best dealt with by the relevant docket judge. It is a matter that may be raised with the docket judge at the first directions hearing, or alternatively if the matter is considered to be pressing, the parties should have leave to approach the docket judge’s associate to have the matter listed.

Associate:

Dated:    6 June 2014