CATCHWORDS
INTELLECTUAL PROPERTY - confidential information - alleged misuse of confidential information - application for interlocutory relief - whether serious question to be tried - "springboard" argument - relevance of change in information when used - form of injunction - whether injunction should be restricted to part of respondents' product only.
INTELLECTUAL PROPERTY - copyright - application for interlocutory relief - alleged copying of applicants' mould or product drawings - whether serious question to be tried as to breach of copyright
PRACTICE AND PROCEDURE - application for interlocutory injunction - balance of convenience - effect on respondents' business - effect on applicants' business - relevance of fact that subject matter of proceeding will be dissipated if injunction not granted - delay - whether delay by applicants
PRACTICE AND PROCEDURE - Anton Piller order - application for leave to use documents obtained on execution of Anton Piller order for purposes of other proceedings - relevant considerations - whether documents may be used in related civil proceedings - proposed criminal proceedings
PRACTICE AND PROCEDURE - Anton Piller order - application by respondents to discharge Anton Piller order - whether material non‑disclosure by applicants when order granted
PRACTICE AND PROCEDURE - intellectual property - alleged misuse of confidential information - application that respondents file and serve an affidavit as to the provenance of certain documents - relevant considerations - whether applicants will suffer irreparable harm if order not made
Terrapin Limited v Builders' Supply Co (Hayes) Ltd
[1967] RPC 375
Saltman Engineering Co v Campbell Engineering Co (1948)
65 RPC 203
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Peter Pan Manufacturing Corporation v Corsets Silhouette Ltd
[1964] 1 WLR 96
Conveyor Co of Australia Pty Ltd v Cameron Bros Engineering Co
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SW Hart & Co Pty Ltd v Edwards Hot Water Systems
(1985) 159 CLR 466
Crest Homes Plc v Marks [1987] AC 829
Holpitt Pty Ltd v Varimu Pty Ltd (1991) 29 FCR 576
Springfield Nominees Pty Ltd v Bridgelands Securities Limited
(1992) 110 ALR 685
Levi Strauss & Co v Coulton (1992) 25 IPR 312
Rank Film Distributors Ltd v Video Information Centre
[1982] AC 380
Norwich Pharmacal Co v Commissioners of Customs and Excise
[1974] AC 133
Golf Lynx v Golf Scene Pty Ltd & Crafter (1984) 3 IPR 243
Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd
(1985) 6 IPR 423
BPA Industries Ltd v Black (1987) 11 NSWLR 609
AB Consolidated Ltd v Europe Strength Food Co Pty Ltd
[1978] 2 NZLR 515
Mense & Ampere Electrical Manufacturing Co Pty Ltd v
Milenkovic [1973] VR 784
Coco v A N Clark (Engineers) Ltd [1969] RPC 41
The Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39
Corrs Pavey Whiting & Byrne v Collector of Customs (Vic)
(1987) 14 FCR 434
O'Brien v Komesaroff (1982) 150 CLR 310
Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd
[1979] VR 167
Fraser v Evans [1969] 1 QB 349
Printers & Finishers Ltd v Holloway [1965] 1 WLR 1
Butler v Board of Trade [1971] Ch 680
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Wheatley v Bell [1982] 2 NSWLR 544
English & American Insurance Co Ltd v Smith
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Ladbroke (Football) Ltd v William Hill (Football) Ltd
[1964] 1 WLR 273
Sega Enterprises Ltd v Alca Electronics [1982] FSR 516
Tate Access Floors Inc v Boswell [1991] Ch 512
Brink's Mat Ltd v Elcombe [1988] 1 WLR 1350
Dormeuil Frères SA v Nicolian Ltd [1988] 1 WLR 1362
(1993) 109 LQR 432
Ali and Fahd Stobokski Group Ltd v Moneim [1989] 1 WLR 710
Bank Mellot v Nikopour (1985) FSR 87
Lloyds Bowmaker Ltd v Britannia Arrow Holdings Plc
[1988] 1 WLR 1337
Helliwell v Pigot-Sims [1980] FSR 356
WEA Records Ltd v Visions Channel 4 Ltd [1983] 1 WLR 721
Guess? Inc v Lee Seek Mon (1986) 7 IPR 321
Naf Naf SA v Dickens (London) Ltd (1993) FSR 434
DART INDUSTRIES INC & ANOR v DAVID BRYAR & ASSOCIATES PTY LTD & ORS
No VG 70 of 1997
GOLDBERG J
MELBOURNE
10 APRIL 1997
FEDERAL COURT OF AUSTRALIA )
VICTORIA DISTRICT REGISTRY )
GENERAL DIVISION ) No VG 70 of 1997
B E T W E E N:
DART INDUSTRIES INC
First Applicant
and
TUPPERWARE AUSTRALIA PTY LTD
(ACN 004 534 749) Second Applicant
- and -
DAVID BRYAR & ASSOCIATES PTY LTD
(ACN 007 396 643) First Respondent
and
DAVID CHARLES BRYAR
Second Respondent
and
AUSTEC DESIGN PTY LTD
(ACN 065 147 417) Third Respondent
and
RONALD GRAEME WANLISS
Fourth Respondent
and
JAR ENGINEERING (VIC) PTY LTD
Fifth Respondent
and
ROY MILAN
Sixth Respondent
CORAM: GOLDBERG J
PLACE: MELBOURNE
DATE: 10 APRIL 1997
JUDGMENT
Introduction
The applicants seek interlocutory injunctions against the respondents restraining them from:
(a) using or disclosing what they claim to be confidential information relating to designs for the production of plastic injection moulds for certain plastic containers sold under the Tupperware name;
(b) infringing the applicants' copyright in documents and drawings relating to designs for the production of such moulds and relating to the moulds themselves.
The applicants also seek orders permitting them to use documents obtained on the execution of an Anton Piller order in this proceeding for purposes other than related to this proceeding as presently constituted and requiring the second and fourth respondents to swear an affidavit setting out information as to the provenance of certain documents obtained on the execution of the Anton Piller order.
The respondents seek the discharge of certain orders made ex parte on 24 February 1997 and further on 28 February 1997 in relation to the grant of an Anton Piller order in this proceeding.
As the proceeding before me is interlocutory in nature it is premature to make any definitive findings of facts and in any event no findings by me would bind the trial judge. No witnesses have been cross‑examined and there is much evidence which is controversial and in dispute. Nevertheless some facts are not in issue and controversial facts relevant to the applications before me need to be identified and I therefore commence by setting out the background giving rise to the issues brought before the Court.
Parties
The Tupperware group, of which the Tupperware Corporation (a listed public company in the United States of America) is the ultimate holding company, manufactures and sells Tupperware plastic food and beverage containers (including a range known as "Modular Mates") throughout the world and, in particular for present purposes, in Australia and Malaysia. Tupperware products are not sold in retail stores but are rather sold by the "party plan" process which involves meetings with potential customers in groups in private homes. The first applicant ("Dart Industries") is the main owner of the copyright and confidential information in drawings of Tupperware products, drawings for moulds from which Tupperware products are manufactured and computer aided design files ("CAD") and computer aided manufacturing files ("CAM") relating to the manufacture of moulds. Dart Industries is a wholly owned subsidiary of Tupperware Corporation. The second applicant ("Tupperware Australia") is a wholly owned subsidiary of Tupperware Corporation and carries on business in Australia manufacturing and selling Tupperware products. Tupperware Australia is licensed by Dart Industries to use such of its copyright and confidential information in drawings of products and drawings of moulds for the manufacture of those products and in CAD and CAM files as it requires to carry on its business. The design, manufacture and testing of product moulds for the Tupperware group in Australia is carried on by Diecraft Australia, a division of Tupperware Australia. Approximately 90 percent of Diecraft Australia's business is carried on on behalf of the Tupperware group worldwide and Diecraft Australia is the group's sole internal mould designer and manufacturer.
Diecraft Australia designs and manufactures product moulds in one of two ways: either it receives a product concept from a member of the Tupperware group, designs the product and submits product design drawings to that member for approval before commencing design and manufacture of the product mould; or it receives full product design drawings from a member of the group or a local external customer and designs and manufactures an appropriate product mould in accordance with the product design drawings. Diecraft Australia receives product drawings in hard copy as well as on CAD files which contain CAD product drawings. When a design is accepted Diecraft Australia devises a CAM program which programs milling machines to cut the steel from which the moulds are made.
If Diecraft Australia does not have the capacity to create the necessary CAM files it sub‑contracts that work to an engineering sub‑contractor who is supplied with CAD files containing product and mould drawings and sometimes product and mould drawings in hard copy.
The Tupperware group has used CAD and CAM software products for a considerable number of years. The applicants claim that all Diecraft Australia's drawings, whether contained in CAD files or hard copy drawings, and all hand drawn Diecraft Australia's engineering drawings have been stamped with a statement of confidentiality for a considerable number of years. However the respondents have produced some drawings apparently made by the applicants which are not so stamped. The applicants say that their product and mould drawings contain a synthesis of years of experience of developing and manufacturing the Tupperware products and that substantial effort and activities lie behind the preparation of the product drawings and mould drawings which involve much work which is the subject of confidentiality and not otherwise in the public domain.
The intellectual property in the product design and mould drawings made and used by Diecraft Australia is owned by either Dart Industries or Tupperware Australia. Diecraft Australia's business is very substantial and generates significant revenue. The applicants say its reputation is based on the high quality of its moulds and that the preservation of its copyright and confidential information is fundamental to its success. The applicants say that if they cannot protect their intellectual property and confidential information they will suffer substantial financial loss. There is considerable affidavit evidence relied on by the applicants in relation to the extent of Diecraft Australia's business and the extent to which it will be affected by unauthorised use of its confidential information. It is not necessary to set that evidence out in any detail other than to note it.
The second respondent ("Mr Bryar") was employed by Diecraft Australia between 1966 and 1990 during which time he held various positions culminating in engineering manager. The applicants claim that it was an express or implied term of his employment that he would maintain confidentiality in relation to Diecraft Australia's confidential information and commercial activities. Shortly after Mr Bryar left the employ of Diecraft Australia he caused the first respondent to be incorporated and established as a design and consulting company in relation to plastic injection moulding, injection mould design and project management. Thereafter Mr Bryar performed consulting work for the Tupperware group in Australia. His experience and expertise related particularly to the process of the manufacture of moulds.
The fourth respondent ("Mr Wanliss") was employed by Diecraft Australia between 1969 and the end of 1990. His experience and expertise particularly related to mould design and by the time of the termination of his employment with Diecraft Australia he had achieved the position of senior mould designer. After he left Diecraft Australia's employ Mr Wanliss incorporated a company to carry on the business of designing moulds and from early 1991 he joined together with Mr Bryar through their respective companies to carry on a consultancy manufacturing business in relation to the production of plastic injection moulds.
In 1994 as a result of a request from Diecraft Australia to produce CAM software Mr Bryar and Mr Wanliss procured the incorporation of the third respondent to carry out work specifically for Diecraft Australia and Diecraft Australia provided computer equipment and software to the third respondent to enable it to carry out this work. The applicants say that when work was sub‑contracted by Diecraft Australia to the first respondent and the third respondent (which occurred between January 1994 and August 1996) they were supplied with Tupperware and Diecraft Australia product drawings, mould drawings and product and mould CAD data. The applicants say that this material was supplied under the umbrella of confidentiality.
The fifth respondent is a company which has carried on the business of manufacturing injection moulding tools for over 30 years and the sixth respondent is a director of it. It has carried out work for Diecraft Australia for many years. Since 1992 it has also carried out sub-contract manufacturing work for the first and second respondents.
Background to grant of "Anton Piller" order on 24 February
1997
For some years a Malaysian company Mah Sing Sdn Bhd ("Mah Sing") was manufacturing moulds for Tupperware products for the Tupperware group in Malaysia. It ceased doing that work as a result of a fire in or about August 1996. In or about July 1996 Diecraft Australia's financial controller Paul Kocsis was told that Mah Sing was manufacturing moulds for plastic homeware products similar to Tupperware products and that his informant thought the second respondent was involved in the production of the moulds in some way. He telephoned Mr Bryar on or about 15 July 1996 and Mr Bryar told him that he was aware of moulds being made for a Malaysian company but he denied any involvement in their manufacture. Mr Bryar says that at this time he was bound by an obligation of confidentiality not to disclose the work in which he was then involved for the Malaysian company. On 22 August 1996 at a meeting with Tupperware representatives Mr Bryar said he was involved in the production of moulds for a Malaysian company and said he was entitled to do this work on the basis of his experience as a mould designer and the information he had in his head. Tupperware representatives said this created a conflict of interest in relation to sub‑contract work being carried out for Diecraft Australia and Mr Bryar was told that the applicants could no longer give business to Mr Bryar and the first respondent. On the following day Mr Kocsis handed Mr Bryar a letter from Diecraft Australia addressed to the third respondent stating that Tupperware was ceasing all work relations with the third respondent and associated companies due to the mould building activities with the first respondent and a Malaysian company whose business activities were in direct conflict of interest with Tupperware. That letter was apparently given as a form of notice required under the agreement between the third respondent and Diecraft Australia. The letter was signed as accepted by Mr Bryar and Mr Wanliss. Thereafter Mr Kocsis took back from the first and third respondents what he understood to be all materials provided by Diecraft Australia for the performance of sub‑contract work by the first and third respondents.
On 24 February 1997 Ryan J granted an Anton Piller order which enabled the applicants to have access to the premises of the respondents for the purpose of searching for and obtaining documents and computer records relating to designs for the production of plastic containers or the moulds from which plastic containers might be manufactured. In the same order injunctions were granted restraining the respondents from making use of, or disclosing information derived from, the applicants' documents or drawings of or relating to designs for the production of plastic injection moulds and the applicants' plastic injection moulds for Tupperware "Modular Mates" containers. A similar injunction was granted in relation to infringing Tupperware Australia's copyright in its documents relating to the designs for the production of plastic injection moulds and in its plastic injection moulds for Tupperware Modular Mates containers.
It is important to identify the substantive matters placed before Ryan J to support the application for the Anton Piller order. The first matter related to certain drawings which Mr Bryar handed over to Mr McAllister, Diecraft Australia's manager of engineering and design, in early 1996. At that time Diecraft Australia was developing a concept called "modularization" whereby parts of moulds are replaced and existing components are reused. At a routine meeting between Mr Bryar and Mr McAllister between January and March 1996 Mr Bryar showed Mr McAllister some drawings of Tupperware Modular Mates products which were about ten years old. He told him that Diecraft Australia had been considering modularization when he was employed by it (prior to mid 1989). Mr Bryar left those drawings with Mr McAllister. As a result of a discussion with Mr Kocsis and Mr Carboni, a sales team leader with Diecraft Australia, on 14 February 1997 Mr McAllister said he appreciated that Mr Bryar should not have been in possession of the drawings which he had shown Mr McAllister in early 1996 and that Mr Bryar's possession of those documents was a breach of his contract of employment because he had been in possession of Diecraft Australia's confidential information.
The second aspect of substantive evidence before Ryan J relates to a drawing of a large round seal, or lid, which a Tupperware company in Malaysia had obtained as a result of an investigation into the dealings of a Malaysian company Superior Focus Sdn Bhd ("Superior Focus"), said to be associated with Mah Sing. The document bears facsimile imprints which show that it was received from the first respondent's facsimile number. It also bears the imprint of the name of the first respondent. Mr McAllister says that the drawing is a "Diecraft/Tupperware type of drawing" and he draws this conclusion from a number of features in the document such as the layout of the notes above the title block, the use of the abbreviation "wli" which means "where lines intercept" which he says he has only seen on Diecraft Australia engineering drawings, the layout of the title block and the dimension of the wall tolerance of the seal and other features.
The final aspect of substantive evidence before Ryan J related to visits which Mr Carboni made to the premises of the fifth respondent in January and February 1997. On his first visit on 22 January 1997 he saw a steel plate apparently in the course of manufacture which contained a number of features very similar to the type of steel plate Diecraft Australia produced for Tupperware. The similarity of the features related to the configuration, the style and quality of the machining, the size of the plate and the treatment of the edges of the plate by bevelling. On the same visit Mr Carboni saw in the sixth respondent's office a mould drawing which he says he recognised as a Diecraft Australia/Tupperware drawing of a product bearing a shape common to, and distinctive of, Tupperware's Modular Mates products. He reached his conclusion by reference to a number of features of the drawing, namely the fact that it was computer generated, the shape of the product, the lip of the product, the hot runner system and the method of injection the sprue bushing and the waterway cooling system. Mr Carboni concluded that the shape of the product was the same, or in substantial parts the same, as two Tupperware Modular Mates products. He also noted that the information ordinarily contained in the title block of the drawing was shown on the drawing which he says was unusual. He also recognised handwriting on the drawing as that of Mr Wanliss with which he was familiar. (Subsequent evidence was led by the respondents to establish that a number of the features to which Mr Carboni referred were not in fact unique to Diecraft Australia/Tupperware drawings or moulds.)
On 11 February 1997 Mr Carboni made a further visit to the premises of the fifth respondent during which he observed a complete mould with an insulator plate on top of it of a type commonly used on Diecraft Australia/Tupperware complete moulds. He says that Diecraft Australia/Tupperware moulds use such insulator plates which are not particularly common in Diecraft Australia's competitors' moulds. On that occasion Mr Carboni told the sixth respondent that his company was in breach of the confidentiality arrangements which applied to the work carried out for Diecraft Australia and referred to what he had seen on his earlier visit. The sixth respondent told him that the drawing he had seen on the earlier visit had been supplied by Mr Bryar.
Mr Carboni's final visit to the fifth respondent's premises was on 13 February 1997 when, together other Tupperware representatives he met the sixth respondent and another director of the fifth respondent. At that meeting the sixth respondent said that he had received the drawing which Mr Carboni had seen on his first visit from Mr Bryar, that the drawing was not a Diecraft Australia drawing and that the mould he had seen on his second visit was not Diecraft Australia/Tupperware's mould. A request by Mr Carboni to inspect the drawing which he had seen on his first visit was denied.
There was also before Ryan J evidence of the conversations between the Tupperware representatives and Mr Bryar on 22 August 1996 in relation to Mah Sing and the termination of the agreement with the third respondent.
Events and evidence subsequent to execution of Anton Piller
order
As a result of the execution of the Anton Piller order on 24 February 1997 the applicants obtained a substantial number of drawings and documents from various premises of the respondents. The most significant documents obtained, and those upon which the present application for interlocutory relief is substantially based, are the documents described as the "MS" documents which comprise a set of product drawings (not mould drawings) representing ten separate projects involving 35 different products. These drawings were obtained from the premises of the third respondent. In subsequent evidence it emerged that these documents were provided to the respondents by either Mah Sing or Superior Focus in which Mah Sing has a substantial interest.
The applicants have in confidential exhibits identified features in the MS drawings which they contend are direct copies of Diecraft Australia/Tupperware Modular Mates drawings. I will consider this evidence in more detail hereafter.
The respondents have filed affidavits in which they identify their commercial relationship with the Malaysian companies. The respondents say that the MS drawings have been provided to the respondents by the Malaysian companies and that the fifth respondent is currently making moulds which will be used for the purpose of manufacturing the products identified and specified in the MS drawings. The respondents say that the MS drawings were supplied to them by Superior Focus, that the MS drawings are not copies of any Diecraft Australia or Tupperware drawings and that they are entitled to manufacture moulds for the purpose of producing the products shown in the MS drawings.
The respondents rely upon an affidavit of John Dalstra the director of operations at Superior Focus. He was employed by Tupperware Australia between 1979 and 1995 and in July 1996, in conjunction with others, he incorporated Superior Focus for the purpose of marketing homeware and other moulded plastic goods. In October/November 1996 Mah Sing purchased the majority of the shares in Superior Focus. As I noted earlier Mah Sing manufactures plastic moulded products and until sometime around August 1996 manufactured plastic products for Tupperware in Malaysia. Mr Dalstra says that in or about April or May 1996 he approached Mr Bryar to determine whether the first respondent would produce moulds for Superior Focus. He was aware of the reputation and experience of the first and second respondents.
He initially asked Mr Wanliss and Mr Bryar to redesign a CAD design of products which, according to his affidavit, "were produced elsewhere". He does not identify where those products were produced. Mr Wanliss and Mr Bryar told Mr Dalstra that they could not do the work and he said that he "had the CAD designs produced elsewhere". This aspect of Mr Dalstra's evidence leaves me in a state of considerable unease because I do not know the source of the CAD design of the products identified by Mr Dalstra and I do not know whether Mr Wanliss or Mr Bryar had any belief as to the provenance of that CAD design. Mr Bryar says that when Mr Dalstra visited him in or about May 1996 he did not produce any drawings at that time. Mr Bryar says that Mr Dalstra told him that he had sought advice from patent attorneys, Watermark, regarding any possible infringements of patent and registered designs and that when the designs were cleared by Watermark, Mr Bryar could expect to receive some product drawings. Subsequently Mr Dalstra showed Mr Bryar some product drawings and asked him to supply a quote to design and manufacture moulds to produce these products. Mr Bryar was unable to do so and in a letter to Mr Dalstra dated 8 June 1996 but addressed to Mah Sing Plastics Industries Sdn Bhd he said that the size of the project was too great for his company to undertake totally but that Mr Wanliss might be able to do the mould design. More significantly he said in the letter:
"CAD design of the product information you currently have is not possible as I previously mentioned, this is an area requiring specific expertise. As we design and manufacture tooling for other customers to produce homeware products, we wish to avoid any type of confidentiality infringements."
Thereafter Mah Sing placed orders for moulds to be constructed by the first respondent and these were followed up by drawings containing product information which were given to Mr Wanliss who engaged Mr Kevin Daly of Redding Engineering to assist in the design of the moulds as he was able to produce drawings using the CAD system.
The respondents deny that they are using any confidential information of the applicants or that they have infringed any copyright owned by the applicants. They say that the moulds they are making and the mould drawings they have made are based upon the product drawings received from Superior Focus in a CAD software file form. Mr Wanliss says further that when he saw the MS drawings it was not apparent to him that they had any connection with any Tupperware product drawing in the Modular Mates range.
Mr Dalstra has explained what he says occurred before he supplied the designs recorded in the MS drawings to the respondents as follows - He gave the patent attorneys, Watermark, several samples of Tupperware, Decor and some American household products to find out what patent or design registration was attached to them. He received a number of reports from Watermark which enabled him to "advise my designers of what was contained in the various Patents and Registered Designs to ensure that Superior Focus did not in any way infringe any known Patent or Registered Design". Mr Dalstra then says that the moulds presently in production "are clearly distinguishable from Tupperware products" and that they will be clearly identified by a registered trademark of Superior Focus, "Keepers". I will return to this aspect of the evidence but I pause to observe that Mr Dalstra does not affirmatively state that no Tupperware or Diecraft Australia product drawings were used or resorted to for the purpose of creating or preparing the MS drawings.
Although it is no part of my task at this early stage to determine finally how the MS drawings came into existence, I do have to determine whether there is a serious question to be tried on the issues of misuse of confidential information and breach of copyright and the provenance of the MS drawings is relevant to that question. In that respect it is relevant, in my view, to look at the competing submissions against the factual background to the extent to which it is known and explained at this early stage. The applicants propound evidence from which they say it can be deduced that there been an actual copying of various dimensions and features, albeit scaled up by a factor identified in the confidential exhibits which I will call for the purposes of these reasons "the X factor". They lead evidence to the effect that come of these features and measurements could not have been derived by reverse engineering. It is not necessary to set out this evidence in detail but I note for example, that it is said that some of the features and measurements could not be obtained by reverse engineering and that the consistent relationship of the dimensional differences could not have been obtained by reverse engineering. It is accepted by the applicants that some of the features and measurements might be capable of being obtained by reverse engineering but evidence is led to support the submission that such a conclusion is unlikely.
The respondents answer these contentions by demonstrating that a number of these features and dimensions are common or known in the trade and should not be given the appellation of "confidential". Further Mr Wanliss says that no Tupperware confidential information is embodied in the MS drawings and he remains of the view that the MS drawings do not have their origin in the relevant Tupperware drawings.
As a result of the execution of the Anton Piller order and affidavits filed on behalf of the respondents the state of the evidence which was relied upon to justify the grant of the Anton Piller order and the ex parte interlocutory injunctions has changed quite significantly. There is no doubt that Mah Sing and Superior Focus intend to manufacture and sell in Malaysia plastic container products similar to Tupperware products. Mr Dalstra says that those products which are to be produced by the moulds currently in production by the respondents are clearly distinguishable from Tupperware products and will be identified by a registered trade mark "Keepers". However, this assertion does not address the issue whether the moulds have been prepared from drawings and other information which is confidential to the applicants and which has occurred as a result of breach of copyright.
Some of the evidence which was before Ryan J has now been explained, qualified and expanded and I do not consider that the evidence before Ryan J, as now explained, qualified and expanded, would justify the continuation of the ex parte interlocutory injunctions granted or the grant of further injunctions. The drawing sent by the first respondent to Superior Focus in September 1996 has been identified by Mr Wanliss as a Superior Focus product drawing and although this evidence is still to be tested I do not consider that that evidence of itself and Mr McAllister's commentary on it would justify the grant of the interlocutory relief sought. Mr Bryar has explained how the mould modularization drawings which he gave to Mr McAllister in January or February 1996 came into his possession. Again, that evidence remains to be tested but having regard to his explanation that he was given the drawings by Mr Ron Morley, then vice president of Tupperware manufacturing for the Asia Pacific region, I would not regard the evidence in relation to that subject matter as sufficient to justify the grant of any further interlocutory relief.
I make similar observations in relation to what Mr Carboni saw on his various visits to the sixth respondent's premises in January and February 1997. In brief, there is evidence, yet to be tested, that the matters which Mr Carboni saw such as the steel plate base with four guide pins were not unique to Diecraft Australia and were standard items. There was also evidence that the style of machining and quality and finish he saw were standard in the industry as was the machining of the bevelled edge on the steel sheet.
Mr Wanliss has produced what he says is the mould design drawing which Mr Carboni saw on 22 January 1997 and he explains in some detail why the drawing is not a Diecraft Australia/Tupperware drawing and he says that the sealing lip hot runner manifolds, sprue bushings and waterway system which were referred to by Mr Carboni are not unique but rather are standard items. Mr Wanliss also says that the insulator plate which Mr Carboni saw on top of the mould on his visit on 11 February 1997 is a standard item which can be bought "off the shelf". On the present state of that evidence I would not regard the evidence of Mr Carboni as justifying the grant of any further interlocutory injunctions.
However, that does not end the matter. Mr Bryar says that the moulds which have been designed and manufactured for Superior Focus are not moulds from which products in Tupperware's Modular Mates range of plastic storage devices are or could be made. He says that the plastic products which can be made from the Superior Focus moulds are substantially different products. I take it that by this he means that the Superior Focus products will look different from Tupperware products. However, this assertion does not answer the applicants' claim that the design of the moulds has been derived from a misuse of the applicants' confidential information and drawings in which they own the copyright. Mr Dalstra does not give an explanation as to the source of the production of the CAD designs which "were produced elsewhere". Mr Bryar says that moulds have been designed "based upon product drawings provided by Superior Focus". He asserts that they are not based upon any product or on any other drawings which have originated from or which have any connection with the applicants but there is no doubt that the mould drawings which he says have been drawn in hand by Mr Wanliss or in hand or using a CAD system by Kevin Daly of Redding Engineering are based upon product drawings provided by Superior Focus.
The applicants submit that not only is there a serious question to be tried but that the evidence is overwhelming on the issue that the Superior Focus drawings from which the respondents have designed the mould drawings are copies of drawings of the applicants which are the subject of copyright and which are also the repository of confidential information. This submission is based upon the MS drawings which were obtained on the execution of the Anton Piller order from the premises of the thirdnamed respondent. Mr McAllister has sworn that there are a number of features in the MS drawings which can only have come from the applicants' drawings. Mr McAllister has compared the MS drawings with drawings he has obtained from the first applicant and he concludes that the MS drawings "adopt particular information contained in the Dart drawings".
There are in fact 35 MS product drawings, 15 of which are said to be the Mah Sing equivalent of Tupperware Modular Mates product drawings and the remaining 20 drawings are miscellaneous products, the containers of which, it is said, adopt the same seal as the Modular Mates seals. Mr McAllister has identified the information contained in the Dart Industries' drawings which he says has been used to prepare the MS drawings by reference to three categories.
(1) The first category is information based on decisions made in relation to the product in the Tupperware drawing either to overcome particular technical problems or to obtain technical benefits or both. He says that none of this information which relates to particular dimensions and features has been published by Tupperware. He says that these details could not be obtained by inspection or reverse engineering and are the expression of the solution of particular technical problems or the expression of a particular technical benefit or both which has been obtained by research.
(2) The second category is information based on decisions made to overcome technical problems or to obtain technical benefits which might in certain circumstances be capable of being obtained by reverse engineering.
(3) The third category is information as to which Mr McAllister cannot conclude that it falls into either of the two categories but it might fall into one or other of them.
He then analyses each of the 35 MS product drawings and identifies by reference to Dart Industries' drawings which categories of information are found in each MS product drawing. Mr McAllister's conclusion is that each of the three categories or levels of information is found in varying degrees in all but one of the 35 product drawings. One of those drawings is still under investigation. Mr McAllister's conclusion is supported by the evidence of two independent experts, William Hunter a chartered professional engineer and Edward Kosior a chartered chemist and director of the Royal Melbourne Institute of Technology, Polymer Technology Centre and also by Robert Daenen, Tupperware's vice president development for Europe, Africa and the Middle East, who has been involved in the research and the development of the various products.
This evidence of Mr McAllister supported by Messrs Hunter, Kosior and Daenen amplifies substantially, and in effect supplants, Mr McAllister's earlier evidence filed shortly after the execution of the Anton Piller order. However it is necessary to refer to his earlier evidence then supported by Mr Hunter and Mr Shah, a polymer expert from the Royal Melbourne Institute of Technology because it has been the subject of a detailed response and answer by Mr Wanliss.
Three days after the Anton Piller order was executed Mr McAllister swore an affidavit in which he compared certain Tupperware product drawings with some of the MS drawings which had been obtained from the premises of the third respondent. He concluded that information and dimensions in the MS drawings had been obtained directly from Tupperware product drawings. At that stage he had only had time to analyse ten of the 35 MS product drawings and been able to consider two of the projects identified in the MS drawings. He said that mould design is inextricably related to product design because the design of the mould is based exactly on dimensions obtained from a complete product drawing, allowing for an appropriate shrinkage factor in designing the mould. He also said that in order to finalise the design of a mould the product drawing upon which the mould design is based had to be complete. At the time of swearing that affidavit Mr McAllister concluded that the similarity between the MS drawings and the Tupperware product drawings in the Modular Mates range was too great to be coincidental or merely the product of the application of technical expertise. His conclusion was that the MS drawings had been made by copying Tupperware drawings and misusing Tupperware confidential information.
Mr McAllister's evidence was supported by independent evidence. Mr Hunter examined a Tupperware drawing and an MS drawing described as "Co-ordinate Square #1" and concluded in the light of the identical features and numerous similarities between the drawings to which he referred that particular parts of the MS drawing had been copied from Tupperware drawings. Mr Shah examined the same drawings and concluded that the author of the MS drawing had a "flying start" having the Tupperware drawing and that the MS drawing had been developed with assistance from the Tupperware drawing.
The respondents, in affidavits, have challenged a number of the matters upon which the applicants rely to establish that there must have been a misuse of Tupperware confidential information and the copying of the Tupperware drawings. At this early stage of the proceedings it is not possible, nor is it necessary, to form any conclusions on these contested issues but it is still necessary to analyse the evidence of the respondents to determine whether a conclusion can be reached that there is a serious question to be tried as to the applicants' claims of the existence of confidential information, its misuse and breach of copyright.
Mr Wanliss in his affidavit sworn 17 March 1997 examines the Tupperware and MS drawings which Mr Shah examined and concludes that the drawings are of "very different products being different shaped containers". He sets out in some detail differences between details and features of Tupperware drawing 1619 and MS drawing 1004A and challenges and responds to Mr Shah's contention that MS drawing 1004A appears to copy the layouts, dimensioning and notational conventions of the Tupperware drawing. Mr Wanliss' answer to Mr Shah's proposition that it would be impossible to arrive at the totality of the measurement shown on a Tupperware drawing by reverse engineering is to refer to an optical comparator which, by projecting parts of a product on to a graduated screen up to at least 50 times its actual size, enables accurate measurement up to an accuracy of .001". Mr Wanliss explains a number of similarities between the two plans upon which Mr Shah relies by reference to matters in the public domain other than copying and asserts that on an objective view the two drawings are more conspicuous for their dissimilarity rather than their similarity. Certainly there are disputed facts in relation to the features and measurements said to have been copied which in due course will have to be resolved. Nevertheless there still remains an issue as to the source or provenance of the similarities between the drawings and the claim that they have come about through copying.
Mr Wanliss also responds to Mr Hunter's analysis of the characteristics of MS drawing 1004A which leads him to the conclusion that parts of that drawing are derived or copied from Tupperware drawing 1619, and, again, he sets out in considerable detail why he disagrees strongly with Mr Hunter's conclusion. It is not appropriate at this stage to analyse each aspect which leads Mr Wanliss to his conclusion that Mr Hunter's statement that there are numerous similarities between the drawings cannot be sustained on an objective analysis of the two drawings. In a confidential exhibit (RGW-23) Mr Wanliss responds to Mr McAllister's comparison of the Tupperware and MS drawings in his affidavit of 27 February 1997 setting out explanations for some of the matters identified by Mr McAllister and challenging his conclusions. Mr Wanliss also explains how a considerable body of technical information upon which various of the applicants' witnesses rely when comparing Tupperware drawing 1619 and a mould drawing (RGW-2) has been in the public domain since about 1989. Mr Wanliss also gives examples of times at which detailed mould drawings had been on display at Diecraft Australia premises and in its brochures. Mr Wanliss sets out in considerable detail the process of construction of a mould which involves many stages and many points at which design and construction decisions have to be made and he also responds to, explains and answers, a number of matters raised by Mr McAllister and Mr Carboni in their affidavits of 11 March 1997. I need not canvass all these matters at this stage other than to note that they raise disputed issues which must be taken into account in determining whether there is a serious question to be tried and which will have to be resolved at trial.
I return to Mr McAllister's evidence in which he analyses the MS drawings and compares them with Tupperware drawings. This detailed analysis is set out in his affidavits of 12 and 17 March 1997 in which he identifies a number of measurements and radii in various Tupperware drawings which are scaled up by exactly the X factor in the MS drawings and also identifies other features found in both Tupperware and MS product drawings. Mr McAllister says that these measurements, radii and features were derived and arrived at either to overcome particular technical problems or to obtain technical benefits or both and were achieved after research, development and enquiry and are the expression of the solution of a particular problem or the expression of a particular benefit or both. Mr McAllister is supported by Robert Daenen, an industrial designer who has been actively involved in Tupperware's product development for 30 years. He says he is named as the inventor or author of over 200 patents and design registrations which have been granted to Dart Industries throughout the world. He explains the process of product design and engineering which is the process of translating a concept for a product into exact dimensions that will enable a physical product to be manufactured. The thrust of a substantial part of Mr Daenen's affidavit is to identify the effort, time and expense which goes into the design and development of Tupperware products and the extent to which Tupperware maintains confidentiality in relation to its know‑how, product design and development and product drawings. Mr Daenen has been intimately involved in the development of the Modular Mates Tupperware range and in his affidavit he sets out the history of its development. Mr Daenen supports Mr McAllister's conclusion that the MS drawings to which Mr McAllister refers adopt particular information contained in the Dart Industries' drawings to which he refers and contain Tupperware confidential information and the categories identified. He reaches this conclusion in relation to the Modular Mates product drawings and also the product drawings for the other products. Mr Daenen says that in his 31 years as an industrial designer for Tupperware he has never seen two sets of drawings which claim to come from different sources appear so similar. He says he cannot find any explanation for the details in the MS drawings other than that the respondents made unauthorised use of Tupperware's confidential know how. Mr McAllister's evidence is also supported by the independent experts Messrs Kosior and Hunter.
Is there a serious question to be tried?
Thus, on the present state of the applicants' evidence I am confronted with detailed evidence from Mr McAllister, supported by Messrs Daenen, Hunter and Kosior which states, in substance, that there can be only one explanation for some similarities in the identified features and dimensions of the Tupperware drawings and the MS drawings, albeit scaled up by the X factor, which is that there has been a direct copying. In relation to other similarities they say that the possibility of reverse engineering is unlikely. The respondents have not yet had the opportunity to respond to this detailed evidence although they have responded to a considerable part of the evidence sworn prior to 12 March 1997 in a manner which is in the respects to which I have referred quite cogent and compelling. However I hasten to remind myself that it is no part of my task at this early stage to make any definitive findings of fact; I must only determine whether there is a serious question to be tried on relevant issues before proceeding to a consideration of the balance of convenience.
It is convenient to summarise the manner in which Mr Clarke submitted that on the material before me the confidential information in the nature of feature and measurements claimed by the applicants was not in fact confidential. This is contained in a confidential schedule to these reasons.
As against this evidence summarised in the confidential schedule there is the evidence of the applicants as to the development which led to the features and dimensions upon which they rely for confidentiality and the reasons why they had achieved this result. On the present state of the evidence I therefore cannot say there is not a serious question to be tried as to the confidentiality of the information upon which the applicants rely.
The evidence of the applicants found in Mr McAllister's affidavits of 12 and 17 March 1997 and the affidavits of Messrs Daenen, Hunter and Kosior in my view clearly raises a serious question to be tried as to whether the information claimed by the applicants to be confidential is confidential, as to how the MS drawings came to be prepared and whether the respondents have used the applicants' confidential information recorded in the applicants' product drawings. Mr McAllister demonstrates in his affidavit of 17 March 1997 the relationship between the mould drawings prepared by the respondents and the product drawings depicting the products to be produced by the moulds in the mould drawings. The question then arises whether the evidence led by the respondents is such as to negate or dispel that serious question.
The evidence before me requires a consideration of how the MS product drawings came into existence. The evidence does not support the proposition that the respondents have copied or used any mould drawings of the applicants. Rather, the respondents say that the mould drawings they have made are derived from the MS product drawings received from Mr Dalstra of Superior Focus. They assert that those documents do not contain any confidential information of the applicants and they challenge the contention that the information relied on by the applicants is entitled to the appellation "confidential". However, when faced with the evidence of the applicants it is necessary to ask, as I asked Mr Clarke, who appeared for the respondents, what other explanation is there for the coincidences and similarities to which Mr McAllister has referred?
Mr Clarke acknowledged that there were two possible explanations for the coincidence of the features and dimensions identified by the applicants. Firstly that Mr Dalstra had access to Diecraft Australia's drawings and there had been a direct copying of them, which is the applicants' case. Secondly he said the other possible explanation was that Mah Sing had taken products and by reverse engineering measured them, applied the X factor and made the MS product drawings. In such circumstances the respondents say that they have not infringed any right of the applicants or used their confidential information or infringed any copyright in any drawings. Mr Clarke acknowledged that on the present state of the evidence he could not say that reverse engineering to derive the measurements was a more likely explanation than that the Diecraft Australia plans had been copied and he said that the highest he could put the proposition was that they were alternatives which were equally open on the evidence.
He then submitted that even if there had been a direct copying there had not been any misuse of information which was entitled to the protection or cloak of confidentiality and there had been no relevant breach of copyright. He submitted that the confidential information claimed by the applicants did not have the intrinsic quality of being a trade secret or being confidential in nature and he pointed out that some of the information was either in the public domain, well known in the trade or disclosed by the applicants by the physical products themselves or the publication of material. He submitted that even if Mah Sing had obtained access to Diecraft Australia's drawings the copying which had occurred did not involve the reproduction of a substantial part of any drawing. He submitted that the products were different visually and that the proportion of the measurements of particular products which were claimed to be copies was relatively small. He submitted that there was a significance in the scaling up of the measurements and features by the X factor because if the information as to the precise measurements was confidential then the variation of those measurements and features by the X factor showed no relevant misuse.
It was a significant part of Mr Clarke's submissions that the extent of the confidential information said to be copied was small in relation to all the dimensions and measurements required for a complete product. He pointed out in relation to a number of the Mah Sing products said to be the repository of the applicants' confidential information that there were a number of significant differences. For example, in relation to the large flange radii and lip radii which he said were so designed as to resolve a seal problem according to Mr Daenen's evidence, the applicants had left out the significance of the angles of the walls of the containers and the underneath of the seals because it was the co‑operation of the angles in conjunction with the radii that brought about an effective seal.
The difficulty with this submission is that it requires an evidentiary basis to support it which at the present stage of the proceedings is not complete or tested. Mr Clarke submitted that the design of the seal of the containers was at the heart of the applicants' case and that the evidence does not explain how the co-operation between the angles and the radii achieved what was said to be the special situation. Mr Clarke submitted that I should discount the applicants' evidence in relation to the significance of the radii of the large flange and the lip because I could not assume from the evidence that the radii were critical without having evidence as to the significance of the angles.
Mr Clarke sought to demonstrate by reference to a number of exhibits that the dimensions and features which the applicants claimed constituted confidential information were in fact either in the public domain or well known in the trade. As confidentiality orders have been made in respect of a number of the exhibits I will identify the issues in general terms. The submission was based on Mr Wanliss' response to Mr McAllister's initial analysis of Tupperware drawing number 1619. In respect of a number of the dimensions Mr Clarke submitted that Diecraft Australia had not selected a non‑standard size in respect of which he said there might be confidentiality but rather selected a standard size and he identified the standard sizes in various public trade documents which Mr Wanliss produced. However, this submission fails to take account of the evidence from Messrs Daenen and McAllister to the effect that substantial time and effort, research and development had gone into identifying and selecting the appropriate dimensional features to choose. The dimensions and features referred to could have been of different measurements and of different magnitudes and the fact that the measurements and figures chosen can be identified as being measurements for which tools to make such measurement are available in the market does not, in my opinion, necessarily remove the cloak of confidentiality from the measurement or feature ultimately chosen.
Mr Clarke submitted that the evidence showed that it was possible to measure the dimensions of Tupperware products up to .001" by the use of an optical comparator. He relied upon the evidence of Mr Wanliss. Mr Clarke may ultimately turn out to be quite correct in this submission but that submission does not mean that on the present state of the evidence there is no serious question to be tried as to whether Mr Dalstra or someone else had access to, or used, Tupperware or Diecraft Australia drawings. The evidence of the applicants relies not only upon the coincidence or the various measurements and features, albeit scaled up by the X factor but also upon what were referred to in argument as sign posts found in the drawings. These sign posts included the position of the word "NOTES" on the drawings, the reference to "PART" in the drawings. These and other references in the drawings upon which the applicants rely are said by the respondents not to be unique to Tupperware.
Mr Clarke analysed the Statement of Claim in an attempt to demonstrate that none of the applicants' causes of action could be made out. He submitted that the applicants could not rely upon the former duty imposed upon Messrs Bryar and Wanliss by virtue of their employment with Tupperware because that employment was too long ago. However, the case advanced at this stage by the respondents is not that they used their own accumulated knowledge and wisdom derived from their employment in the industry for many years to achieve the designs used from which the mould drawings were derived but rather that they used the MS drawings supplied by Mr Dalstra and that there was nothing in those drawings which put them on notice. Mr Clarke submitted that there was no case made out on the evidence to support the pleading that at the time Mr Bryar received the MS drawings he knew or ought to have reasonably have known that they were the repository of Tupperware's confidential information.
Mr Young submitted that at this early stage I should draw the inference from Mr Dalstra's affidavit that the Tupperware drawings had been modified by Superior Focus by being scaled up by the X factor so as to avoid any patent and registered design infringements. He also submitted that I should conclude from Mr Bryar's letter to Mah Sing on 8 June 1996 in which he said that he wished "to avoid any type of confidentiality infringements" that Mr Bryar was on notice and enquiry that the use of the MS product drawings might involve him in a breach of confidence. On the present state of the evidence before me it is premature and inappropriate to draw such an inference and having regard to the alternative basis upon which the applicants put their case I do not need to determine the extent to which there may be a serious question as whether Mr Bryar was on notice about the contents or provenance of the MS product drawings which were received by the respondents some time after Mr Bryar sent this letter.
On the present state of the evidence I doubt that it can be said that there was anything on the face of the MS drawings from which I could draw the inference that Mr Bryar knew or ought to have known that the drawings contained confidential information of Tupperware.
However, the applicants put their case in the
alternative on the basis that the respondents, without the licence of the
applicants, have used Tupperware confidential information which is reproduced
in the MS drawings. This gives rise to a
consideration of the consequence of a person claiming that he is an innocent
third party and a line of cases relied upon by the applicants that a court will
restrain a third party from using the confidential information of a person
which has come
into the hands of the third party innocently and without any wrongdoing on its
part.
Relevant legal principles
The principles upon which the protection of confidential information is based are well established. Information to be confidential must be capable of being given the attribution or quality of confidence, that is it must be something which is not within the public knowledge: Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203, 215; AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515, 521. A useful analysis of relevant indicia of confidential information is found in Mense & Ampere Electrical Manufacturing Co Pty Ltd v Milenkovic [1973] VR 784 at 796-798 and I adopt that analysis. A proceeding for breach of confidence requires the establishment of three elements - the information must have the necessary quality of confidence, the information must have been imparted in circumstances identifying an obligation of confidence and there must be an unauthorised use of that information to the detriment of the person who claims the confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41, 47; The Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39, 50. The information in respect of which confidentiality is claimed must be capable of being identified with a degree of specificity; it is insufficient to claim confidentiality in general or global terms: O'Brien v Komesaroff (1982) 150 CLR 310, 326-328; Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434, 443. Apart from cases of contract or where property rights are involved, a court will intervene where the circumstances are such that it is unconscionable for a party to use confidential information: Fraser v Evans [1969] 1 QB 349, 361; Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167, 191.
The present state of the evidence suggests that if there has been a copying or misuse of the applicants' plans and confidential information, such copying or misuse occurred initially at the hands of some party other than the respondents but that the respondents have become the recipients of that misused confidential information and those copied plans. In such circumstances a court will, in an appropriate case, grant an injunction against a person who has acquired information to which he is not entitled without any knowledge or notice of any breach of duty on the part of the person from whom he obtained the information: Printers & Finishers Ltd v Holloway [1965] 1 WLR 1, 7; Butler v Board of Trade (1971) Ch 680, 690; Talbot v General Television Corporation Pty Ltd [1980] VR 224; Wheatley v Bell [1982] 2 NSWLR 544; English & American Insurance Co Ltd v Smith [1988] FSR 232.
Mr Clarke accepted, as the cases establish, that the court has jurisdiction to enjoin a third party recipient of confidential information obtained by it innocently but submitted that that principle depends upon it being established that the initial wrongdoing which brought about the misuse of confidential information would be carried into effect by the third party's conduct. In my opinion such a situation will arise in the present case if the claims by the applicants are ultimately established. If either Superior Focus or Mah Sing has copied or used the applicants' confidential information or product drawings in having the MS drawings prepared the end result of the respondents' conduct, if not restrained, will be to deliver to Superior Focus and Mah Sing moulds from which they can manufacture and sell plastic containers which will be produced by reference to, and by means of, the use of the applicants' confidential information and product drawings.
Is there a serious question to be tried?
There is sufficient evidence before me at the present time to satisfy me, notwithstanding the submissions by the respondents, that there is a serious question to be tried as to whether the dimensions and features which Mr McAllister says are found in the MS drawings, albeit scaled up by the X factor, have been copied or derived from the Dart Industries and Tupperware drawings and whether they are to be given the attribution and protection of the cloak of confidentiality. There is sufficient evidence from Mr McAllister, Mr Kocsis and Mr Daenen to satisfy me that there is a serious question to be tried as to whether the applicants have always sought to keep confidential and have kept confidential, all the aspects of their product design and development and resolution of design problems and design issues.
On the evidence before me I am satisfied that there is a serious question to be tried as to whether substantial parts of the MS drawings supplied by Mr Dalstra to Mr Bryar and his company have been copied from Dart Industries' or Tupperware drawings. The provenance of the MS drawings remains unexplained. The respondents' evidence and submissions do not address or identify the provenance of the MS drawings. Mr Dalstra, before having the MS drawings prepared, sought advice from patent attorneys in relation to patent and design registration issues but Mr Dalstra does not address the issue of copyright, use of confidential information or the identity of the "CAD design of products which were produced elsewhere". Mr Clarke submitted that what Mr McAllister called the level one information was in the public domain but on the material before me that proposition is controversial and a serious question arises in relation to it. Mr Clarke submitted that there was no evidence of the significance or effect between a particular dimension of a Tupperware product and a product having the same dimension scaled up by the X factor. He submitted that the applicants' submission that the respondents had used the Tupperware dimensions and applied the X factor to those dimensions destroyed the argument that there was confidential information proposed in the dimensions because he said that if one could still get the benefit of the relevant dimension multiplied by the X factor then there was no magic in the confidential dimensions. As part of his submissions Mr Clarke asked why, if it was intrinsically special to use a measurement to .001", did the MS drawings choose to vary that dimension? However this submission does not take into account or give sufficient acknowledgment to the fact that confidential information may have been used as a basis or springboard for the determination of or the resolve to use the dimensions.
I consider that on the evidence led by the applicants and the respondents there is a serious question to be tried on the issue whether the features, dimensions and measurements in respect of which the applicants claim the cloak of confidentiality and the benefit of copyright protection are properly to be described as confidential information and the subject of copyright protection; and whether the respondents, by using the MS drawings for the purposes of making mould drawings and moulds, are breaching that confidentiality and copyright. The seriousness of that question is heightened by the assertion by Mr Dalstra that he sought to ensure that he was not infringing patent or design registration rights in Tupperware and other products whilst at the same time he remains silent on the question whether Tupperware or Diecraft Australia drawings were used or resorted to in preparing the MS drawings. Although it is too early, especially in the absence of cross‑examination, to draw any inference as to the provenance of the MS drawings, the absence of any affirmative statement as to how the design of the products was "produced elsewhere", especially when attention was paid to patent and design registration but not (on the present state of the evidence) issues of confidentiality in documents or copyright only heightens the seriousness of the question as to misuse of confidential information and use of Tupperware or Diecraft Australia drawings.
Mr Clarke submitted that I should not be satisfied that the respondents were put on enquiry in relation to the possibility or issue that the MS drawings might be the repository of the applicants' confidential information or produced as a result of the breach of the applicants' copyright in drawings. He said that I should not make assumptions against Mr Dalstra or Superior Focus and that the letter of 8 June 1996 written by Mr Bryar was consistent with a form of notice that the first respondent was not a product designer. He submitted that the Watermark letter had been given to the first respondent in the context that it was not a product designer. He also submitted that I could not form a view on confidentiality until I was informed of the source from which Mr Dalstra had obtained the drawings. However, I am entitled to form a view, in my opinion, as to whether the evidence discloses a serious question to be tried on the issue of confidentiality and I am satisfied that there is such a serious question. The fact that the respondents contest the issue of confidentiality does not mean that there cannot be a serious question as to whether they are acting unconscionably, especially having regard to the fact that they are now well aware of the claims made by the applicants and the extent of the evidence led against them.
As I noted earlier, Mr Clarke submitted that if the relevant information was in fact confidential then the change or scaling up of various measurements by the X factor meant that there was no misuse of the confidential information. He said therefore that it was incumbent upon the applicants to lead evidence to establish whether the change or scaling up by the X factor was a material change or a colourable change. However, as Mr Young pointed out the gravamen of an allegation of a breach of confidence is that there has been an actual misuse of the confidential information. Indeed he submitted that any attempt to use, vary or modify confidential information was, ex hypothesi, an unlawful use of it. In such circumstances the party using the confidential information uses it as a springboard to achieve a particular result without having to go through the expense, time and rigours of determining the point which is arrived at by use of the confidential information. As was stated in Terrapin Limited v Builders' Supply Co (Hayes) Ltd [1967] RPC 375 at 390:
"Information is nonetheless used if it serves as a starting point for a new design, because in the end a design wholly or partially discards the information from which it was originally built up."
In short, if a person wishes to design a product without it being alleged that the person has used confidential information he must proceed through an independent design sequence and not use confidential information as a springboard to jump through that sequence. The relevant proposition was stated by Lord Greene MR in Saltman Engineering Co v Campbell Engineering Co (1948) 65 RPC 203 at 213:
"If a defendant is proved to have used confidential information, directly or indirectly obtained from the plaintiff, without the consent, express or implied of the plaintiff, he will be guilty of an infringement of the plaintiff's rights."
The fact that some of the information may be public and some may be confidential does not give a person a licence to use all the material. It is the use of the confidential information, albeit in conjunction with public information, which will be restrained: Seager v Copydex Ltd [1967] 1 WLR 923. If in fact confidential information has been used but an article or product is evolved or created from that information so that the use of the information is varied the jurisdiction to restrain the breach remains because of the use made of the confidential information as a springboard: Peter Pan Manufacturing Corporation v Corsets Silhouette Ltd [1964] 1 WLR 96; Conveyor Co of Australia Pty Ltd v Cameron Bros Engineering Co Ltd [1973] NZLR 38, 42.
Mr Clarke compared the Diecraft Australia drawings and the Mah Sing drawings in relation to each of the 15 items which were comprised in the Modular Mates range. He was able to identify a number of differences or dissimilarities between the drawings and he also demonstrated that there was no uniform scaling up in the Mah Sing drawings of all dimensions by the X factor.
However, the issue is not so much whether there are dissimilarities between the drawings but rather whether one can discern in the drawings similarities from which one can draw an inference that there has been a copying or misuse of confidential information. In my opinion the authorities to which I have referred establish that if there has been a use of confidential information then that use will be restrained and it matters not that attempts have been made to make the ultimate product dissimilar in a number of respects from the product which is the repository of the confidential information. If there has been a copying or use of confidential information an identification of dissimilarities in the product does not neutralise the fact of the copying or misuse: SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, 472-3. In SW Hart, an infringement of copyright case, the Court looked at the qualitative nature of copying or reproduction rather than its quantitative nature. In my opinion, a similar conclusion should be reached in relation to the misuse of confidential information.
Mr Clarke drew a distinction between MS 1 to 15 on the one hand and MS 16 to 35 on the other hand of the MS drawings in respect of which the applicants claim that there can be found a copying or use of their confidential information. As Mr Clarke correctly pointed out items 1 to 15 were product drawings relating to Modular Mates products in respect of which the applicants had produced what were said to be equivalent product drawings. In relation to each of those drawings the applicants had identified in confidential exhibits features in respect of which the applicants had submitted there was a coincidence of measurement or features albeit with the MS measurement or feature scaled up by the X factor. However, in relation to items 16 to 35 no such Diecraft Australia/Tupperware drawings were produced. Accordingly, said Mr Clarke, I should not draw any inference as to whether the MS product drawings which related to items 16 to 35 contained any aspects of the applicants' confidential information because there was no corresponding document with which to compare them. However, a number of the MS drawings for items 16 to 35 include features and measurements which are similar to, or the same as, the MS drawings for products numbered 1 to 15 which have a corresponding or comparable Diecraft Australia/Tupperware drawing. These features and measurements are referred to in confidential exhibits. I therefore consider that at this early stage there is a serious question to be tried as to the provenance of a number of the features and measurements in the product drawings numbered MS 16 to 35.
Mr Clarke submitted that no breach of copyright was established because of the scaling up changes that had been made in the MS drawings. He submitted that the MS product drawings are not a reproduction of a substantial part of the Tupperware product drawings, that almost all the dimensions on the MS product drawings were substantially different and that the shape and dimensions of the MS products as depicted in the MS drawings did not constitute a substantial part of the mould drawings or the moulds. The applicants rely on only some parts of the various MS drawings as being reproductions of the copyrighted drawings. Are these parts reproductions of a substantial part of the Tupperware product drawings? Put more correctly, is there a serious question to be tried as to whether these parts are reproductions of a substantial part of the Tupperware product drawings? The fact that there are dissimilarities does not determine the issue because the similarities may still be a reproduction of a substantial part of the Tupperware product drawings. Whether they are is question of fact and degree and is to be determined by qualitative rather than quantitative considerations: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, 276, 293; SW Hart & Co Pty Ltd v Edwards Hot Water Systems (supra) 472, 474. I consider there is sufficient material before me to raise a serious question as to whether there has been a reproduction or copying of a substantial part of the Tupperware plans by the MS drawings. As members of the High Court observed in SW Hart (supra) one looks at the qualitative nature of copying or reproduction rather than its quantitative nature and the particular features the subject of consideration in this case are such that a serious question does arise. There may not be, as Mr Clarke submits, a uniform scaling up by the X factor of all dimensions of all products but this fact does not negate the submission that important features and dimensions (identified and sworn to by the applicants) have been the subject of scaling up. The position may ultimately turn out if there has been copying , that the features or parts copied are not, in an overall consideration of the totality of the features depicted in the Tupperware drawings, a reproduction of a substantial part of the plans. However, on the material before me and at this stage of the proceeding I can do no more than determine that there is a serious question to be tried on the issue.
Balance of Convenience
The issue of the balance of convenience is not an easy issue to resolve in this case as each party will suffer a substantial harm if its submissions are not accepted. The applicants say that if no injunctions are granted the misuse of their confidential information and the breach of their copyright in the product drawings will be carried through into the finished moulds and thereby into finished plastic products which will be sold overseas. The applicants say that the consequence is that the subject matter of the proceedings, namely the protection of the confidential information and the copyright, will be lost. They also submit that there will be a significant impact on Tupperware's Malaysian market as a result of Superior Focus selling its products. It was submitted that Superior Focus had launched products which were said to be "look‑alikes" to Tupperware products but the evidence goes no further than that Superior Focus has launched two products which have what is said to be an "equivalent" Tupperware product. The two Tupperware products are "serving dish" and "goody box" and the equivalent Superior Focus products are respectively "Keepers Brand - Primo Server" and "Fortune Goodies". It is said that the Superior Focus products are significantly cheaper than the equivalent Tupperware products but it is not suggested that the Superior Focus products are in any way being passed off as or for the Tupperware products. The evidence goes no further than identifying the fact that they are competitive with the Tupperware products.
Mr Clarke demonstrated by reference to a number of physical exhibits and plans that notwithstanding the fact that it is said that products produced by moulds made from mould drawings based on the MS product drawings may be the repository of the applicants' confidential information, the products actually produced from the moulds do not look the same as Tupperware products.
The applicants say that Superior Focus is presenting its products as "at par or better" than Tupperware Malaysia products and the sales of the Superior Focus products will compete directly with Tupperware products and intrude into Tupperware's turnover. However, it does not appear that these matters are a direct consequence of, or caused by, the misuse of the confidential information. It is not suggested, for example, that Superior Focus is claiming that its products have the same sealing qualities as Tupperware products.
The applicants also submit that they will lose the benefit of their investment in research and development as Mah Sing will obtain enormous cost advantages by avoiding the research and development process ordinarily undertaken before the production of the relevant plastic products can be achieved. If no injunction is granted the consequence in this respect is that Superior Focus will be able to make profits to the disadvantage of the applicants and will be able to derive profits in respect of which there will not be an accounting to the applicants.
The permanent damage to the marketing infrastructure in Malaysia which is said to occur from Superior Focus' activities, is not a matter which I consider relevant on the balance of convenience as it does not flow so much from the claim of misuse of the confidential information as from Superior Focus' desire to compete in the same market. Further, I am not satisfied on the evidence before me that there would be any imminent threat of Diecraft Australia closing down if the respondents are allowed to complete the moulds and pass them over to Superior Focus or Mah Sing in Malaysia.
Mr Clarke contested the applicants' submissions that they were liable to suffer a substantial detriment if injunctive relief was not granted and he also contested the applicants' submissions that the respondents would not suffer detriment or harm if injunctions were granted. He submitted that no detriment had been made out by the applicants as there was no evidence of any sales of Modular Mates products in Malaysia. Indeed, he submitted that any impact in Malaysia would be felt by third parties and not by the applicants.
On the other hand he submitted that there would be a substantial detriment to the respondent if injunctive relief was granted as their cashflow would be stifled, their reputation damaged having regard to the publicity already given to the action and their substantial change in position since August 1996. He submitted there had been delay on the part of the applicants as when Mr McAllister had seen the September 1996 product drawing a letter of demand should have been sent to the respondents and put them on notice of the issues. He also challenged the grounds on which the Anton Piller order had been made by Ryan J as he submitted there was no evidence before Ryan J that the respondents would have destroyed their documents and drawings.
Mr Clarke also criticised the applicants' evidence through Mr Kocsis that there had been a disclosure to a Malaysian company of Mah Sing's product range and submitted that this should be taken into account in determining whether the applicants were entitled to allege that the respondents were guilty of unconscionable conduct.
He submitted that there was no unconscionability on the part of the respondents as they were simply fulfilling an order for moulds and that they were not a party to any wrongdoing. He submitted that because they were not consummating the wrongdoing there was no need to act on their conscience. This submission does not take into account, even if I am in favour of the respondents as to whether or not they were put on notice, that the evidence is now demonstrable so far as a serious question to be tried is concerned that they are on notice of the claims that the moulds that they are making are the repository of the applicants' confidential information. In such circumstances the authorities establish a jurisdiction to grant the injunctive relief albeit against innocent third parties but of course it is a matter of discretion as to whether I should do so.
Mr Clarke submitted that in determining whether or not injunctive relief should be granted I should take into account firstly, the submission that the Anton Piller order should not have been made and secondly, the submission that there has been material non-disclosure by the applicants. He submitted in substance, that he who seeks equity must do equity and come with clean hands. He submitted that there was material non-disclosure by Mr Carboni and Mr McAllister. Mr Carboni he submitted, had told the Court that he had seen a mould drawing at the fifth respondent's premises which related to a product which copied a Tupperware style product which was product No 113 or 114. It was said that it was misleading not to put drawings of those products before the Court because if that had occurred and a comparison had then been made of them, it would have been apparent that the drawing was not of a Tupperware product. This was because the drawing did not show flats which identified windows unlike the Tupperware products the drawings of which would show flats identifying windows. However on the evidence presently before me, I do not consider there was any material non‑disclosure by Mr Carboni. He said he could not locate a mould drawing of the relevant product and at the present time I do not know what was the extent of his access to the relevant product drawings. At the most he was in error and on the present state of the evidence, without further investigation of what Mr Carboni did, I cannot be satisfied that there was any material non-disclosure by him.
Mr Clarke said that Mr McAllister's material non-disclosure was in relation to his evidence of the September 1996 product drawing which showed a round seal. Mr Clarke demonstrated that that drawing showed a round seal with a lift tab and a stacking recess and he said that if Mr McAllister had put before the Court the relevant or comparable Tupperware drawing No 1607 which did not have a lift tab or a stacking recess shown on it, the differences would have been apparent. However, I do not consider at this stage on the evidence presently before me that there was material non‑disclosure simply because of what a comparison of the drawings disclosed. Mr McAllister said the September drawing was a Diecraft Australia/Tupperware type of drawing but on the evidence before me I do not know the extent to which Tupperware drawing No 1607 was available to him at the time he swore his affidavit on 20 February 1997. Both of these issues of material non‑disclosure should be investigated further but not at this early stage of the proceeding for reasons which I address later.
In my opinion the most substantial issue in favour of the applicants on the balance of convenience is the proposition that if no injunctions are granted the subject matter of the proceedings will in effect be dissipated as the applicants would no longer be able to capture the confidential material and copyrighted material at final trial. Damages against the respondents would not be an adequate remedy as the value of and investment in the confidential information and copyright material would be forever lost and it would not be possible to assess in any action against the respondents what had been the commercial or financial consequences of Superior Focus being able to sell in Malaysia products made from the relevant moulds.
Mr Bryar says that if interlocutory injunctions are granted which have the effect that the first respondent will not be able to supply the moulds to Superior Focus, the result will be that the first respondent's business will be substantially if not wholly destroyed. None of the moulds have yet been supplied. The first respondent first received purchase orders from Mah Sing in July 1996 and Superior Focus is presently its major customer. Apart from two other jobs in its factory it does not have orders on its books other than from Superior Focus which it could bring forward to fulfil excess production capacity and it has no means of obtaining fresh orders in the very short to short term which would enable its staff and sub‑contractors to continue to be engaged by it. Mah Sing has placed orders with the first respondent to the value of $2,911,000.00 of which $1,720,875.00 has been invoiced and of that sum $758,600.00 is unpaid. Further orders from Mah Sing to the value of $757,000 have been quoted for and are on hold.
It is apparent that the first respondent has accepted orders for the manufacture of moulds, the process of manufacture has commenced, the first respondent has received part payment but unless the respondents can complete the moulds and deliver them to Superior Focus or Mah Sing they will be out of pocket to the extent of over $1,200,000 which will have a substantial effect on their businesses and financial viability. It is also said that they will lose Superior Focus as their major customer and suffer a substantial loss of reputation. I indicated in argument that I thought that the position of the fifth respondent was somewhat different from the other respondents and I will turn to this shortly.
Although Mr Bryar says that the first respondent has no ready means of obtaining fresh orders "in the very short to short term" the evidence discloses that the first respondent has a customer base broader than that of only Superior Focus or Diecraft Australia. According to Mr Bryar the firstnamed respondent's business has been expanding at the rate of 100 percent per year since it commenced in 1991 and it was only around the middle of 1996 that it commenced carrying out work for Superior Focus. Mr Bryar says that the first respondent has quoted for further work worth over $2,000,000 for customers other than Mah Sing. Although Mr Bryar says these orders are at substantial risk as the first to fourth respondents' reputation has been severely affected as a result of this proceeding there is no reason why that work cannot be carried out if the quotations are accepted as such work would not be touched or inhibited by any injunctions granted. Having regard to all these matters I am not satisfied on the evidence before me that it will necessarily follow if the injunctions are granted, that the first respondent's business will be substantially if not wholly destroyed.
It was submitted by the applicants that when considering the balance of convenience I should take the view that the firstnamed respondents are the authors of their own misfortune because they were on notice of the potential problems which have now occurred. However, the evidence is insufficient in this respect at the present time to be a significant factor, in my opinion, on the issue of balance of convenience and I do not accept that submission.
Has there been delay by the applicants
The respondents submitted that the applicants had been guilty of delay in bringing the proceedings and that the respondents had acted to their detriment subsequent to that point of time at which it was said the applicants should have either commenced the proceedings or put the respondents on notice about the possibility of proceedings.
I do not consider that the relevant chronology discloses any delay on the part of the applicants in bringing the proceeding such as to disentitle them to equitable or injunctive relief. The first point of time at which they were put on notice that there might be a misuse of confidential information was in mid‑September 1996 when Mr Wong in Malaysia sent a copy of the round seal drawing obtained from Superior Focus to Tupperware. I am not satisfied on the evidence before me that the applicants would have been justified in taking the view that at that time they had sufficient evidence to justify the commencement of proceedings. The further evidence upon which the applicants now rely only emerged in January 1997 when Mr Carboni visited the fifthnamed respondent's premises. In those circumstances I am not prepared to find in relation to the balance of convenience that the respondents acted to their detriment after a point of time at which they should have been put on notice about the proposed proceedings.
If injunctions are granted against the respondents such injunctions would be conditioned upon the usual undertaking as to damages and the evidence presently before me is that any undertakings as to damages proferred by the applicants would be proferred by companies of substantial worth in Australia. In my opinion any loss caused to the respondents by the grant of interlocutory injunctions, on the material presently before me, would be compensable by an award of damages. The primary loss which would be suffered would be the amounts the respondents should have been paid by Superior Focus and Mah Sing for the moulds if they had been completed in the ordinary course together with interest calculated from the date upon which such payments would have been made in the ordinary course if injunctions had not been granted. If it is to be contended that there is any consequential loss of orders as a result of the grant of any interlocutory injunctions it is not unreasonable to assume that evidence would be available to demonstrate such loss.
At the end of the day I am of the opinion, having regard to all the matters to which I have referred that the balance of convenience runs in favour of the applicants being granted injunctions to preserve the status quo, namely to preserve the confidentiality claimed in the relevant information, to prevent the misuse of that information and the copyright claimed in the Tupperware/Diecraft Australia drawings and to restrain the moulds being manufactured and delivered to Superior Focus or Mah Sing in Malaysia. The undertaking as to damages will protect the respondents. If injunctions are not granted and the moulds are delivered damages will not be an adequate remedy for the applicants whether considered on the basis of an award of damages or an account of profits.
However, I am of the opinion that the fifthnamed respondent is in a different position from the other respondents. It is one stage removed from the association or connection with Mah Sing and Superior Focus. The fifthnamed respondent is manufacturing the moulds and there is no suggestion or claim made by the applicants that the fifthnamed respondent or the sixthnamed respondent were, or should have been, put on notice of any claims by the applicants or any suggestion that the manufacture of the moulds might involve the misuse of confidential information or breach of copyright. Although the fifth and sixth respondents now have knowledge of the applicants' claims and although relevant principles establish a basis for restraining the fifth and sixthnamed respondents from continuing the manufacture of the moulds in accordance with mould drawings derived from the MS drawings, I consider that the balance of convenience is against the grant of injunctive relief against them. Mr Milan says there has been a 90 percent reduction in the work available to the fifth respondent as a direct consequence of the court order and if the court order is not lifted the immediate result will be the virtual closure of the fifth respondent's business. If the fifth respondent is permitted to complete the moulds and deliver them to the first respondent who will be restrained from parting with the moulds then the applicants will be sufficiently protected, the fifth respondent will be entitled to be paid and the remaining respondents will be protected by the undertaking as to damages. I note that on 7 March 1997 the parties consented to a variation of the order of Ryan J on 28 February 1997 permitting the delivery of the moulds it had manufactured to the first respondent and I consider that this situation should be allowed to continue.
Mr Clarke submitted that if any injunctions were to be granted in relation to the moulds presently being manufactured by the respondents they should be limited to the core, stripper ring and cavity portions of the moulds. He submitted that other parts of the moulds may have commercial value and that as the confidential information relied upon was a small part of the overall dimensions of the various products any injunction should be restricted to information relating to those parts of the core, stripper ring and cavity portions which incorporated the confidential information. Mr Young pointed out that Mr Clarke had not referred to components of the moulds such as cavity inserts, sprue bushes or poppets and emphasised that each mould was being purpose built. He also referred to Mr Bryar's evidence that "moulds are necessarily custom built and the value of the work done to date on the moulds could not be retrieved by alternative uses". He submitted that the evidence does not allow any differentiation between parts of moulds which are the repository of confidential information and parts which are not. On the evidence presently before me it is difficult to determine with any degree of confidence or certainty whether it is appropriate to distinguish between parts of the moulds. As I am satisfied there is a serious question to be tried as to whether the moulds are the repository of confidential information and dimensions and features obtained through a breach of the applicants' copyright in relevant drawings, and as the evidence before me establishes that the moulds are being purpose built, I consider it appropriate and desirable that any injunctions granted not be couched in terms which distinguish between parts of moulds.
Application for leave to use documents obtained on execution of Anton Piller order.
The applicants also seek leave to use, in conjunction with a related entity Dart Far East Sdn Bhd the documents obtained as a result of the execution of the Anton Piller order and also to use affidavits and exhibits including confidential exhibits for the purpose of seeking advice in relation to civil and/or criminal proceedings against any third party in Australia and/or Malaysia in connection with the applicants' copyright and confidential information which is the subject of this proceeding including the joinder of any third parties as respondents in this proceeding. The reason why leave is required is that the applicants cannot use documents obtained as a result of the execution of the Anton Piller order other than for the purposes of this proceeding as commenced because of the implied undertaking given by the applicants to the Court not to use any material obtained in the course of discovery in a proceeding for any purpose other than the proper conduct of the proceeding. In Crest Homes Plc v Marks [1987] AC 829 Lord Oliver, speaking for the House of Lords, said at page 853:
"The purpose of an Anton Piller order is, primarily, the preservation of evidence which might otherwise be removed, destroyed or concealed but it operates, of course, also as an order for discovery in advance of pleadings. It is clearly established and has recently been affirmed in this House that a solicitor who, in the course of discovery in an action, obtained possession of copies of documents belonging to his client's adversary gives an implied undertaking to the Court not to use that material nor to allow it to be used for any purpose other than the proper conduct of that action on behalf of his client: see Home Office v Harman [1983] 1 AC 280. It must not be used for any 'collateral or ulterior' purpose ... Thus, for instance, to use a document obtained on discovery in one action as the foundation for a claim in a different and wholly unrelated proceeding would be a clear breach of the implied undertaking: see Riddick v Thames Board Mills Ltd [1977] QB 881."
Lord Oliver concluded that the implied undertaking would be applied to the documents obtained on the execution of the Anton Piller order but could be released if the party seeking the release demonstrated special circumstances and the Court was satisfied that the release would not occasion injustice to the party from whom the documents had been obtained. These principles have been applied in a number of cases in this Court. In Holpitt Pty Ltd v Varimu Pty Ltd (1991) 29 FCR 576 Burchett J identified the Court's duty in an application for leave to release or modify the implied undertaking as being to consider whether the applicant "has shown some circumstance which takes the matter out of the ordinary course". The Court is then to determine whether the exercise of its discretion in favour of the application would be in the interests of justice. In Springfield Nominees Pty Ltd v Bridgelands Securities Limited (1992) 110 ALR 685 Wilcox J adopted the same approach and said at page 693:
"For 'special circumstances' to exist it is enough that there is a special feature of the case which affords the reason for modifying or releasing the undertaking and is not usually present. The matter then becomes one of the proper exercise of the Court's discretion, many factors being relevant. It is neither possible nor desirable to propound an exhaustive list of those factors. Plainly they include the nature of the document, the circumstances under which it came into existence, the attitude of the author of the documents and any prejudice the author may sustain, whether the document pre-existed litigation or was created for that purpose and therefore expected to enter the public domain, the nature of the information in the document (in particular whether it contains personal data or commercially sensitive information), the circumstances in which the document came into the hands of the applicant for leave and, perhaps most important of all, the likely contribution of the document to achieving justice in the second proceeding."
(See also Levi Strauss & Co v Coulton (1992) 25 IPR 312).
I consider special circumstances exist in this case which justify an appropriate modification of the implied undertaking given by the applicants in relation to the documents obtained on the execution of the Anton Piller order. These circumstances are found in the fact that the genesis of the alleged misuse of confidential information and breach of copyright has occurred prior to the participation or involvement of the respondents in the sequence of events upon which the applicants rely. Further, Mr Dalstra has been prepared to swear an affidavit in this proceeding in which he explains the circumstances leading up to the coming into existence of the MS drawings. I do not consider that any of the respondents will suffer any prejudice if the documents obtained on the execution of Anton Piller order are used for the purposes of any civil proceedings to be brought against Mah Sing, Superior Focus or any persons associated with either the respondents or those companies. Any such use of the documents would not be "collateral" in the sense that the documents were being used for a purpose unrelated to the subject matter of the current proceeding. Rather the documents are being used to extend the scope of the proceeding, while still maintaining the same subject matter, either in this Court or in another court. I cannot see that any injustice will be occasioned to any of the respondents; indeed, on one view, it may be an advantage or benefit to them to have before the Court, or another court, the party or parties claimed to be the initiator of the issues which give rise to the applicants' claims. Mr Young nominated Mah Sing, Superior Focus, Mr John Dalstra and Mr Kevin Daly of Redding Engineering as the parties in respect of whom this order was sought although he said that the order was drafted more broadly as there may be others involved. I am prepared to modify the implied undertaking to allow the use of the documents in relation to the nominated persons or persons or companies associated with them and I will reserve liberty to apply in respect of any further use sought.
However, I am reluctant on the present state of the material before me to allow use of the documents for any purpose relating to criminal proceedings. Issues may arise in relation to the operation of the privilege against self incrimination (see Rank Film Distributors Ltd v Video Information Centre [1982] AC 380) and I would need to have more information before me before I would consider modifying the undertaking in relation to the opportunity to bring criminal proceedings. The purpose of the applicants coming before this Court is to obtain civil relief in relation to injunctive orders and damages to compensate them for what they claim to be wrongs committed against them. Criminal proceedings are of a quite different nature and, as presently advised, I am of the view that the bringing of criminal proceedings is collateral to the civil proceedings in the sense that it is not appropriate that any documents obtained on execution of the Anton Piller order be used for such purposes. It is always open to the applicants, on proper material, to renew the application if different circumstances exist.
However, there may be some documents obtained on the execution of the Anton Piller order which are particularly confidential to the respondents which ought not to be subject of the leave granted. I will therefore give the parties leave to make submissions as to the appropriate order to make in this respect.
Application that respondents file an affidavit as to the
provenance of documents
The applicants also seek an order that Messrs Bryar and Wanliss file and serve an affidavit in which they set out the provenance of certain Mah Sing product drawings and also other information in relation to those drawings. There is no doubt that there is jurisdiction in the Court to make such an order: Norwich Pharmacal Co v Commissioners of Customs and Excise [1974] AC 133; Golf Lynx v Golf Scene Pty Ltd & Crafter (1984) 3 IPR 243; Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd (1985) 6 IPR 423; BPA Industries Ltd v Black (1987) 11 NSWLR 609. The rationale for the jurisdiction to order the making of the affidavit appears to be that an applicant may suffer irreparable harm if it cannot find out immediately who is infringing its rights and it needs to find out immediately the source of infringing material which might otherwise be destroyed or otherwise dissipated. In Sega Enterprises Ltd v Alca Electronics [1982] FSR 516 at 525 Templeman LJ said that the power to make orders for discovery in this form:
"should not be exercised in interlocutory proceedings, and certainly not ex parte, unless the Court is reasonably satisfied that the plaintiff will, or probably will, suffer irreparable damage if there is any delay in ordering discovery. ... but such orders should never be made as a matter of course - never merely as part and parcel of an Anton Piller order - without investigation of the circumstances of each case and without the Court coming to the conclusion that it is necessary for the long‑term protection of the plaintiff that such a Draconian course should be taken."
I am not satisfied that in the present circumstances the applicants will suffer irreparable harm if the affidavits which they seek to have Messrs Bryar and Wanliss make and file are not made. The evidence before me identifies for the applicants what the respondents say is the source of the claimed infringing MS drawings. In the words of Lawton LJ in Sega Enterprises Ltd v Alca Electronics (supra) at page 523:
"The plaintiffs know who the defendants are; they have got to establish their case against them."
If the respondents had not filed affidavits (and in particular the affidavits of Mr Bryar and Mr Dalstra) which set out how the claimed infringing mould drawings came to be made, I would have considered an order in the terms sought. However, the applicants have been told by Mr Bryar and Mr Dalstra on oath how they say the documents came into existence. The applicants may not be satisfied with the explanations given but they now know what the respondents say is the source from which the MS drawings were derived. Whenever an affidavit of the type sought is sought as an adjunct to the execution of an Anton Piller order or as a consequence of such execution the Court should not make an order for the filing of such an affidavit unless some immediate reason for it is demonstrated in the nature of the possibility of the occurrence of substantial harm (not necessarily irreparable) being occasioned to the applicant if the order is not granted. I do not consider that such a reason is presently demonstrated.
The applicants also seek a continuation of the order restraining the respondents until the final determination of the proceeding from informing any other person (with exceptions) or causing any other person to be informed that the applicants will or may take legal proceedings against them with respect to the subject matter of the proceedings. I am of the opinion that there is no further utility in such order. Such an order was originally made by Ryan J as an adjunct to the Anton Piller order. At that time it had utility as the purpose of the Anton Piller order was to ensure that access to the documents the subject of the Anton Piller order would be effective. That situation has been achieved.
Application by respondents to discharge the Anton Piller order
The respondents, by notice of motion, have sought:
(a) the discharge of paragraphs 7, 12, 13 and 15 of the order of Ryan J on 24 February 1997 and paragraphs 1, 2 and 3 of the order of Ryan J on 28 February 1997;
(b) compensation pursuant to the applicants' undertakings as to damages for the loss and damage they have suffered as a result of those orders;
(c) delivery up of all original documents and other matters seized under those orders.
It is apparent from my reasons that the orders I have proposed will supplant the orders made in paragraphs 7 and 15 of the order of 24 February 1997 and paragraphs 1, 2 and 3 of the order of 28 February 1997. I will hear submissions from the parties in relation to paragraphs 12 and 13 and paragraph 3 of the motion.
The application to discharge the Anton Piller order and to seek compensation pursuant to the applicants' undertaking as to damages is predicated upon the proposition that there was material non‑disclosure by the applicants before Ryan J. The relevant principle is clear:
"No rule is better established, and a few more important,
than the rule, 'the golden rule', that a plaintiff applying for ex parte relief
must disclose to the court all matters relevant to the exercise of the court's
discretion whether or not to grant relief before giving the defendant an
opportunity to be heard. If that duty is
not observed by the plaintiffs, the court will discharge the ex parte order and
may, to mark its displeasure, refuse the plaintiff further inter partes relief
even though
the circumstances would otherwise justify the grant of such relief: see Brink's
Mat Ltd v Elcombe [1988] 1 WLR 1350 and Behbehani
v Salem (Note) [1989] 1 WLR 723."
(Tate Access Floors Inc v Boswell [1991] Ch 512, 532-533).
The relevant principles to take into account in determining whether there has been relevant non-disclosure and, if so, whether any consequences should follow were set out in some detail by Ralph Gibson LJ in Brink's Mat Ltd v Elcombe [1988] 1 WLR 1350, 1356-1357. It is clear that material non‑disclosure does not mean that discharge of the order follows as a matter of course. On the facts before me, it is denied that there was material non-disclosure and this issue needs to be investigated further. However I consider it premature for this issue to be finally determined at this early stage. There is a balance to be achieved between giving parties the opportunity for urgent interlocutory hearings and leaving for later determination issues which do not have any urgency in relation to their determination. I would accept the tentative view expressed by Sir Nicolas Browne-Wilkinson VC in Tate Access Floors Inc v Boswell (supra) at 534 that investigations of the circumstances in which an ex parte Anton Piller order was granted should be restricted to those cases where there has been a serious failure to make a material disclosure (cf: (1993) 109 LQR 432, 438). In Dormeuil Frères SA v Nicolian Ltd [1988] 1 WLR 1362 the Vice‑Chancellor said at page 1369:
"In my judgment, save in exceptional cases it is not the correct procedure to apply to discharge an ex parte injunction on the grounds of lack of full disclosure at the interlocutory stage of the proceedings. The purpose of interlocutory proceedings is to regulate the future of the case until trial. Where an Anton Piller order has been made ex parte, in the vast majority of cases the order has been executed before the inter partes hearing. Setting aside the Anton Piller order cannot undo what has already been done. As to the injunction contained in the ordinary Anton Piller order, that is directed to last only until the inter partes hearing of the motion. The correct course, as the Court of Appeal decisions show, is to regulate the matter for the future on the basis of the evidence before the judge on the inter partes hearing. The sole relevance of the question 'Should the ex parte order be set aside?' is, so far as I can see, to determine the question whether the plaintiff is liable on the cross-undertaking in damages given on the ex parte hearing. That is not an urgent matter. It is normally much better dealt with at the trial by the trial judge who knows all the circumstances of the case and is able, after cross‑examination, to test the veracity of the witnesses."
In my opinion those observations apply with equal force to te matters presently before me.
A contrary view was taken in Ali and Fahd Stobokski Group Ltd v Moneim [1989] 1 WLR 710, 722 but in that case the judge took the view that exceptional facts were involved. (See also Bank Mellot v Nikopour (1985) FSR 87; Lloyds Bowmaker Ltd v Britannia Arrow Holdings Plc [1988] 1 WLR 1337).
Having regard to the nature of the allegations of material non‑disclosure I consider it more appropriate that the application based on those allegations be put over to the trial of the proceeding. Even if the application was to succeed, it would not result in the interlocutory relief now sought by the applicants not being granted having regard to the basis upon which I have determined that there is a serious question to be tried, namely the issues arising from the MS drawings. The MS drawings can be used in evidence even if the Anton Piller order should not have been made and is discharged although the Court has a residual discretion to restrain the use of information obtained in circumstances where it is inequitable that the information should be used: Helliwell v Pigot-Sims [1980] FSR 356; WEA Records Ltd v Visions Channel 4 Ltd [1983] 1 WLR 721; Guess? Inc v Lee Seek Mon (1986) 7 IPR 321; Naf Naf SA v Dickens (London) Ltd (1993) FSR 434, 427. Further it is not suggested that any injustice is occasioned by the application being adjourned to the trial of the proceeding.
Subject to the applicants formally proffering the usual undertaking as to damages and subject to any further submissions which the parties wish to make in relation to the terms of the orders to be made I propose to order as follows:
1. The respondents and each of them, whether by themselves, their servants or agents or otherwise howsoever be restrained until the hearing and final determination of this proceeding or further order from in any manner making use of, publishing, communicating or in any way disclosing or causing, procuring, permitting or suffering the publication, communication or disclosure to any person other than for the purposes of this proceeding and in accordance with the order of Justice Goldberg made 14 March 1997 with respect to confidential material:
(a) any drawing including information contained in any drawing comprising the Mah Sing product drawings specified in Schedule 1 hereto;
(b) any drawing including information contained in any drawing comprising the Mah Sing mould drawings specified in Schedule 2 hereto;
(c) any computer record, document or file relating to any CAD program or CAM program relating to designs and/or specifications for the production of any of the products or moulds to which the drawings referred to in either of Schedule 1 or Schedule 2 hereto, relate;
(d) any mould for the manufacture of any of the products described in the drawings in Schedule 1 hereto, or manufactured in accordance with any of the drawings in Schedule 2,
save that the fifth and sixth respondents are permitted to complete the manufacture of the moulds referred to in paragraph 2(c) of this order and deliver the moulds to the first respondent.
2. The respondents and each of them, whether by themselves, their servants or agents or otherwise howsoever be restrained until the hearing and final determination of this proceeding or further order from in any way copying, altering, destroying, defacing, erasing, hiding or parting with possession, power or control of or otherwise transmitting to any third party:
(a) any of the drawings specified in Schedule 1 or Schedule 2 hereto;
(b) the documents returned to the respondents pursuant to the order of Justice Ryan made 28 February 1997 or any of them;
(c) any moulds ordered by Superior Focus referred to in paragraphs 39 and 40 of the affidavit of David Charles Bryar sworn 27 February 1997 and any documents or computer records, documents or files produced in the course of work done as permitted under paragraph 2 of the order of Justice Ryan made 28 February 1997 save that the fifth and sixth respondents shall be permitted to deliver to the first respondent any such moulds or part or parts thereof;
(d) documents or computer records, documents or files disclosing or otherwise relating to the source or sources and person or persons from whom the respondents or any of them obtained any of the drawings referred to in Schedules 1 and 2 hereto.
3. Each of the applicants and their related entity, Dart Far East Sdn Bhd shall be at liberty to use all documents or copies of all documents, and all information, obtained pursuant to or as a result of the execution of the order of Justice Ryan made 24 February 1997 or in affidavits and exhibits including those marked "Confidential" or "Special Confidential" for the purposes of seeking advice with respect to and/or preparing and/or instituting and/or prosecuting civil proceedings against Mah Sing Sdn Bhd, Superior Focus Sdn Bhd, John Dalstra, Kevin Daly, Redding Engineering or any persons or companies associated with any of them in Australia and/or Malaysia in connection with the applicants' copyright and confidential information which are the subject of this proceeding, including the joining of any of such persons as respondents in this proceeding and the conduct of this proceeding as amended thereafter.
4. The hearing of the respondents' motions filed on 12 and 13 March 1997 be adjourned to the trial of this proceeding.
5. The costs of all parties of and incidental to this application be reserved.
6. Liberty be reserved to any party to this proceeding or to any person affected by this order to apply as they may be advised.
Counsel for the applicants: Mr N Young QC and Mr B Caine
Solicitors for the applicants: Arthur Robinson Hedderwicks
Counsel for the respondents: Mr G Clarke
Solicitors for the respondents: Phillips Fox
Dates of Hearing: 19, 20, 21, 24 and 25 March
1997
Date of Judgment: 10 April 1997
I certify that this and the preceding seventy-five (75) pages are a true copy of the Reasons for Judgment of the Honourable Justice Goldberg
Associate:
Date: 10 April 1997
