FEDERAL COURT OF AUSTRALIA

Sony Music Entertainment (Australia) Limited v University of Tasmania [2003] FCA 532

PRACTICE AND PROCEDURE – applicants seek discovery and inspection of records stored on CD ROMs and backup tapes – sound recordings – MP3 files – applicants identified presence of MP3 files on websites hosted on university computers – respondents agreed to preserve data from university computers – applicants have cause to believe that they have the right to obtain relief for copyright infringement – applicants seek further information to ascertain description of person concerned – whether Court has power to order discovery of CD ROMs and backup tapes – document – whether CD ROMs and backup tapes are documents – judicial discretion – competing search methods – third parties – full and proper disclosure – irrelevant information – whether CD ROMs and backup tapes should be discovered by respondents

WORDS AND PHRASES – “document”, “electronic”, “preliminary discovery”, “MP3”, “database”

Federal Court Rules O 15A rr 3, 6

Derby & Co Ltd v Weldon (No 9) [1991] 2 All ER 901 referred to

Victor Chandler International v Customs and Excise Commissioners [2000] 2 All ER 315 cited

London Economics (Aust) Pty Ltd v Frontier Economics Pty Ltd [1999] FCA 932 cited

Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd [1998] FCA 299 cited

Paxus Services Ltd v People Bank Pty Ltd (1990) 20 IPR 79 discussed

Aitken v Neville Jeffress Pidler Pty Ltd (1991) 22 IPR 605 referred to

C7 Pty Ltd v Foxtel Management Pty Ltd [2001] FCA 1864 cited

Global Intertrade Pty Ltd v Adelaide Festival Centre Trust [1998] FCA 1649 cited

CCA Beverages (Adelaide) Ltd v Hansford S J & Anor [1991] FCA 925 referred to

Home Office v Harman [1983] 1 AC 280 cited

Esso Australia Resources Ltd v Plowman (1995) 183 CLR 10 cited

Patrick v Capital Finance Pty Ltd (No 4) [2003] FCA 436 cited

Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1040 cited

SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED, UNIVERSAL MUSIC AUSTRALIA PTY LIMITED AND EMI MUSIC AUSTRALIA PTY LIMITED v UNIVERSITY OF TASMANIA, THE UNIVERSITY OF SYDNEY, THE UNIVERSITY OF MELBOURNE

N128 OF 2003

TAMBERLIN J

SYDNEY

30 MAY 2003

THE COURT ORDERS THAT:

The proceeding be listed for directions at 9.30 am on 13 June 2003.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

INTRODUCTION

1                     The applicants seek discovery and inspection before suit from the three respondents pursuant to O 15A rr 3, 6 and 12 of the Federal Court Rules (“FCR” or “Rules”).

2                     The respondents (“the Universities”) oppose the application on the basis that the Court’s power to order discovery under the FCR does not extend to empower discovery in relation to documents which go beyond the language of the rules.  In this case, because the discovery sought will result in the production of a large number of documents not within the terms of the Rules, the discovery in the terms sought should not be granted.  In addition, the respondents contend that even if it is held there is power the Court, as a matter of discretion, should refuse to make an order in the circumstances of this case. 

3                     The relevant provisions of O 15A provide:

“Discovery to identify a respondent

3. (1)   Where an applicant, having made reasonable inquiries, is unable to ascertain the description of a person sufficiently for the purpose of commencing a proceeding in the court against that person (in this rule called ‘the person concerned’) and it appears that some person has or is likely to have knowledge of facts, or has or is likely to have or has had or is likely to have had possession of any document or thing, tending to assist in such ascertainment, the court may make an order under subrule (2).

(2)       The Court may order that the person, and in the case of a corporation, the corporation by an appropriate officer, shall:

(a)       attend before the Court to be examined in relation to the description of the person concerned;

(b)       make discovery to the applicant of all documents which are or have been in the person’s or its possession relating to the description of the person concerned.  (Emphasis added)

…

Discovery from prospective respondent

6.         Where:

(a)       there is reasonable cause to believe that the applicant has or may have the right to obtain relief in the Court from a person whose description has been ascertained;

(b)       after making all reasonable inquiries, the applicant has not sufficient information to enable a decision to be made whether to commence a proceeding in the Court to obtain that relief; and

(c)        there is reasonable cause to believe that that person has or is likely to have or has had or is likely to have had possession of any document relating to the question whether the applicant has the right to obtain the relief and that inspection of the document by the applicant would assist in making the decision:

the Court may order that that person shall make discovery to the applicant of any document of the kind described in paragraph (c). 

Power to order inspection, preservation etc of property

12.       On an application under this Order the Court may also make an order providing for any one or more of the following matters:

(a)       the inspection, measurement, photocopying, preservation, custody and detention of property:

(i)         which relates to the subject matter of the proceedings; or

(ii)        as to which any question arises in the proceedings;

(b)       (i)         taking of samples;

            (ii)        observation;

            (iii)       carrying out of any experiment;

(iv)      making, playing or screening of tape recordings and films and other means of recording sight or sound;

(v)       making and reproducing or displaying other instrumental recordings and

            tracings;

with respect to any such property mentioned in paragraph (a).” (Emphasis added)

4                     The expression “document” as used in the Rules is defined in O 1 r 4 to include “any record of information which is a document within the definition contained in the Dictionary in the Evidence Act 1995 and any other material, data stored or recorded by mechanical or electronic means”.

5                     The dictionary in the Evidence Act 1995 (Cth) (“Evidence Act”) provides that “document” means any record of information and includes anything on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them or anything from which sounds, images or writings can be reproduced with or without the aid of anything else.

6                     These definitions are to be read in the light of the provision in O 1 r 4 that they apply “unless the contrary intention appears”.

THE DISPUTE

7                     Central to the dispute between the parties is the level of particularity at which the expression “document” should be applied to the records in this case which are stored on electronic backup tapes, CD ROMs and computer hard drives.  These records came into existence as a consequence of agreement, after considerable dispute between the parties, pursuant to which it was resolved that the Universities would capture a record of information held by them at specific points in time earlier this year.  This was done as a preservation measure to ensure that records were not destroyed either routinely, by accident or otherwise, pending the hearing of this preliminary discovery application which was initiated prior to the agreement.

8                     At the outset it should be noted that there is no substantial dispute between the parties that reasonable inquiries have been made or that the applicants are unable to ascertain the description of some persons or entities sufficiently for the purpose of commencing a proceeding in the Court.  Nor is it in dispute that there are documents in existence which indicate that some person has or is likely to have knowledge of facts or have had possession of documents which could reasonably be expected to tend to assist in such ascertainment. 

9                     Essentially the dispute relates to the application of r 3, in particular, whether the applicants are entitled to discovery of material which includes documents that fall outside the scope of documents relating to the description of the person concerned.  The contention is that the information sought by the applicants is not limited to documents which relate to ascertaining the description of entities or persons who may be the subject of proceedings.

10                  In relation to the discovery sought under r 6 of the FCR the opposition is grounded in the contention that it is dependent on discovery under r 3 and the latter should not be granted.  Further, it is said that the applicants have sufficient information to decide whether they have the right to the relief sought.  It is said that the documents sought by the applicants extend beyond records which relate to the question whether the applicant has the right to obtain the relief.  The Universities argue that it has not been shown that inspection of the documents sought would assist in making a decision whether to commence a proceeding in the Court. 

11                  As a matter of construction of O 15A, the respondents submit that the applicants must establish that the documents sought to be produced come within the language of rr 3 and 6, and they point to the limitations imposed in the terms of those rules.  The respondents submit that in the circumstances of this case, where the records extend far beyond documents which could be considered to be discoverable under the Rules, the appropriate definition of “document” that is to be adopted by the Court in deciding whether documents relate to the questions posed should be strictly limited to the items of information which bear on those questions and not others.

context

12                  The three applicants are leading record companies or exclusive licensees of a large number of sound recordings which, it is said, attract the protection of sound recording copyright under s 85 of the Copyright Act 1968 (Cth) (“the Act”).

13                  An entity known as Music Industry Piracy Investigations (“MIPI”), which has had a major involvement in this proceeding, is a non-profit corporation engaged in providing investigative and advisory services to members of the Australian record industry in relation to copyright piracy.  Each of the respondents are universities which provide significant computer facilities in the course of their administration to academic staff and students.

14                  The applicants are concerned that compact discs containing sound recordings are being digitally copied using a technology known as Motion Picture Expert Group 1, Audio Layer 3 (“MP3”).  Through the use of MP3 technology, sound recordings on compact discs can be compressed and this permits rapid copying, transmission and downloading of digital audio files over the Internet. Once copied and saved to a computer hard drive by downloading, the sound recording embodied in the MP3 file can be played from the computer.

15                  The applicants contend that the computers belonging to the respondents permit the hosting of webpages or websites established on university host computers or servers.  The websites are accessible on the World Wide Web by the use of browser software such as Internet Explorer or Netscape on a browser computer which can connect to sites or files.  Every site or file on the Internet has a unique address or Uniform Resource Allocator (“URL”).   Website files on the host computer or server include files which constitute the layout and images visible to a visitor to the site, including the functions which the website can perform.  They include content files, such as sound files, and video and still image files, such as images of CD album covers in particular formats, such as “jpeg”.  The website files also include “html” files which are visible text and graphic files that are seen by a visitor to the site.  The website files also include hyperlink files which provide links between various webpages and the website and between pages of the website and other locations on the Internet.  Where there is a hyperlink on a website to another computer from which MP3 files are accessible, the underlying files of the website will record the pathway to the computer containing the MP3 files and usages of that pathway.

16                  Website files include activity logs, which can include user logs that record details as to activities undertaken in relation to the website, such as log in details and time and type of activity undertaken.  Such logs can indicate by whom and when the MP3 file was included on a website or by whom and when a hyperlink to the MP3 file was included on a website.  The activity logs can also indicate by whom and when MP3 files are downloaded from or to a website.  The information on these logs includes the frequency of access to a particular website by particular persons.  It is said that this would likely provide information as to those responsible for the content of the website.

17                  Activity logs will identify access to the site by other computers using Internet Protocol (“IP”) addresses.  These addresses can include addresses from within the university or from locations external to the university.  In the latter case the visitor may be using a dedicated line in which case the address will lead to a particular computer.  In other cases the address may be allocated randomly but it will still lead to a particular Internet service provider whose records will assist in identifying a particular user. 

18                  E-mail files record the contents of the attachments of e-mails to and from the e-mail account.

19                  Although the proceeding is against three universities, it is not necessary to set out all the background facts for the purposes of this application in relation to each university.  It is convenient to examine the material in relation to the first respondent, the University of Tasmania and to consider the legal arguments against the background facts relating to that University.  Consideration will enable determination of the substance of the dispute between all the parties.

20                  According to the material before the Court, one of the University of Tasmania’s computers is the School of Mathematics and Physics server.  The evidence shows that on 20 December 2002, there was identified the presence of a number of MP3 files at websites traceable to “dlewis”, the names of which matched well-known sound recordings.  Correspondence ensued between the International Federation of Phonographic Industry (“IFPI”) and the University, identifying the MP3 files and requesting the University to take steps to prevent the distribution of copied sound files from the websites.

21                  The evidence is that neither the first applicant (“Sony”) or the second applicant (“Universal”) have authorised the reproduction of supply or distribution of any digital files including MP3 files for any of the sound recordings identified at the “dlewis” sites.

22                  Evidence indicates that by 7 January 2003 the “dlewis” website was unavailable or had been removed.

23                  There was then further correspondence between the solicitors for the parties.

24                  The applicants sought to ensure that a backup copy was made by the University of data on certain parts of the University’s Physics server and to have this stored.  It appears that on 22 January 2003, the University commenced to make a backup copy of the data on certain partitions of the University’s Physics server.  On 24 January 2003, a copy was made of all data on the hard drive of the University’s desk top computer used by Mr Lewis, who at that stage had been identified as the person concerned with the website in question.  On 12 February 2003, Mr Speck of MIPI searched copies of digital music files located on the “dlewis” website and identified the existence of 400 copies, including files with names that matched those of sound recordings of James Brown and Pearl Jam which are among the files of concern to the applicants.

25                  On 10 March 2003, the applicants’ solicitors forwarded to the solicitors for the University a draft of orders to be sought at the hearing, referring to copies of files described in correspondence.

26                  As a consequence of the agreement between the parties, the University has a series of electronic records which include information relating the contemplated causes of action.

contemplated causes of action

27                  The applicants contend that there is reasonable cause to believe that there were located on the “dlewis” website MP3 copies of at least two sound recordings in respect of which no licence was given and which it is said were made without the licence of the owners or exclusive licensees of the copyright.  They say that such copies could have been transmitted to the operator of the website by attachment to an e-mail received from another computer or by downloading the MP3 files from another computer or by loading the MP3 file onto the University Physics server from a floppy disc or computer compact disc.  In each case the allegation is that the process of downloading or saving of the e-mail attachment amounts to the making of a copy of the MP3 file on the computer hosting the Lewis website and in such instances the MP3 file is pre-existing and is downloaded by someone before being copied onto the Physics server.  In each instance, it is said, there is reasonable cause to believe there has been an infringement of sound recording copyright by the unauthorised reproduction in MP3 format onto the University’s Physics server of relevant sound recording, in breach of the Act.

28                  Based on the evidence filed on this application, the applicants also contend that there are matters which give reasonable cause to believe that the MP3 files have been made available online or may have been electronically transmitted to the public and that this would constitute an infringement of their right to communicate to the public a sound recording, in breach of the Act.  It is said that there is reasonable cause to believe there may have been a distribution for the purposes of trade in the form of file swapping.  In addition, it is said that the owners of the copyright may have an action in conversion or detinue in respect of any infringing copy of the sound recording.  Furthermore, the applicants contend that there is evidence which may assist in determining whether a person has authorised a primary act of infringement, in breach of s 101(1) of the Act.  It is submitted that authorisation requires an act or acts of authorisation together with a primary act of infringement which is causally connected to the act or acts of authorisation.  It is said that a determination of authorisation must take into account the extent of the alleged authoriser’s powers to prevent the act, the nature of any relationship between the authoriser and the primary infringer and any steps taken to prevent the act of infringement.  The applicants allege that there may be parties involved in acts of infringement by aiding, abetting, procuring or inducing the infringement which may in turn be a basis for relief.  In particular, it is contended that there is reasonable cause to believe that the University of Tasmania may have authorised, aided and abetted the making of MP3 copies of the sound recordings or communicated those copies to the public, or aided or abetted distribution in contravention of the Act.  The applicants contend that in view of these possible claims they are entitled to access the records sought because they would assist in determining who made, or assisted in the making of copies, and in deciding whether the infringements have been authorised by any person or entity.  In these circumstances it is submitted that the applicants are entitled to discovery of the preserved material by way of preliminary discovery, pursuant to both rr 3 and 6.

ORDERS SOUGHT

29                  The differences between the competing orders sought are reflected in the draft orders which the parties have provided to the Court.  To avoid repetition, I set out below the draft orders which the applicants seek in relation to the University of Tasmania.  There are similar orders sought in relation to the other respondents.

30                  In relation to the University of Tasmania the applicant seeks orders in these terms:

“1        Order that within 7 days of the date of this order the First Respondent make discovery of such of the following documents as are in its possession:

(a)       the DLT IV tape referred to in paragraph 5 of the affidavit of Clifford of 4 April 2003 and described as the Physics Server Copy;

(b)       the Exabyte 160 tape referred to in paragraph 7 of the affidavit of Clifford of 4 April 2003 and described as the Physics Server Backup Copy;

(c)        the DLT IV tape referred to in paragraph 10 of the affidavit of Clifford of 4 April 2003 and described as the Lewis Computer Copy;

(d)       any backup copy of data of the type contained on the Exabyte 160 tape referred to in paragraph 7 of the affidavit of Clifford of 4 April 2003 and described as the Physics Server Backup Copy but made prior to 22 January 2003 and which is still in existence;

(e)        any DLT IV tapes containing back up copies of the spool files referred to in paragraph 13 of the affidavit of Clifford of 4 April 2003 which cover the period prior to 21 January 2003 and still in existence.”

31                  The applicants seek further orders that the respondents permit inspection of the documents discovered, by the applicants, by MIPI and their employees, by legal representatives and by Mr Thackray (a forensic investigator) within three days of discovery.  This inspection is to include subjecting the documents to searches by computers and software tools which do not affect or damage the material or records.  In addition, there is provision that the above persons keep confidential such documents and their contents subject to any further agreement and an order that the respondents pay the applicants’ costs.

32                  The University of Tasmania’s primary proposal was that it should deliver on a confidential and privileged basis one duplicate of the information preserved described as follows:

“(a)     each file located at the URIs commencing http://www-ra.phys.utas.edu.au/~dlewis/, including subdirectories and files within those subdirectories, which falls within any one or more of the following categories (not being case sensitive):

(i)        with “.mp3”, “.wma”, “.rm”, “.ogg”, or “.zip” as a file extension;

(ii)       with “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf” as a file extension; or

(iii)       containing one or more of the following words or strings:

(A)       “ripping”, “rip”, “rips”, or “ripper”;

(B)       “music”, “recording”, “record”, “song”, or “sound file”;

(C)       “download”, “downloading”, “upload”, “uploading”, “uploaded”, “post” or “posting”;

(D)       “.mp3”, “.wma”, “.rm”, “.ogg”, or “.zip”;

(E)       “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf””; or

(F)       “CD”, “CDs”, “CD-/R”, “CD-/W”, “CD-/RW”, “tape”, “mini-disc”;

(b)       each email and each email attachment contained in Mr Lewis’s [sic] central mail spool file and Mr Lewis’s [sic] School of Mathematics & Physics mail spool file which falls within any one or more of the following categories (not being case sensitive):

(i)        emails attaching files with “.mp3”, “.wma”, “.rm”, “.ogg” or “.zip” as a file extension, including such attachments;

(ii)       emails attaching files with “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf” as a file extension, including such attachments; or

(iii)      emails containing one or more of the following words or strings:

(A)       “ripping”, “rip”, “rips”, or “ripper”,

(B)       “music”, “recording”, “record”, “song” or “sound file”;

(C)       “download”, “downloading”, “upload”, “uploading”, “uploaded”, “post” or “posting”;

(D)       “.mp3”, “.wma”, “.rm”, “.ogg” or “.zip”;

(E)       “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf”; or

(F)       “CD”, “CDs”, “CD-/R”, “CD-/W”, “CD-/RW”, “tape”, “mini-disc”;

(c)        each logged web server transaction for the URIs commencing http://www-ra.phys.utas.edu.au/~dlewis/ which includes “.mp3”, “.wma”, “.rm”, “.ogg”, or “.zip” as a file extension; and

(d)       each file on the hard drive of the first respondent’s computer used by Mr Lewis which falls within any one or more of the following categories (not being case sensitive):

(i)        with “.mp3”, “.wma”, “.rm”, “.ogg” or “.zip” as a file extension;

(ii)       with “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf”, as a file extension; or

(iii)      containing one or more of the following words or strings:

(A)       “ripping”, “rip”, “rips”, or “ripper”;

(B)       “music”, “recording”, “record”, “song” or “sound file”;

(C)       “download:, “downloading”, “upload”, “:uploading”, “uploaded”, “post” or “posting”;

(D)       “.mp3”, “.wma”, “.rm”, “.ogg” or “.zip”;

(E)       “.jpeg”, “.bmp”, “.tiff”, “.gif”, “.psd”, or “.emf”; or

(F)       “CD”, “CDs”, “CD-/R”, “CD-/W”, “CD-/RW”, “tape”, “mini-disc”;”

33                  After such delivery the University proposed that it should make verified discovery to the applicants from the information delivered by these searches.  The information was to be kept confidential.  It proposed inspection by the applicants after seven days from discovery.  The University also sought orders as to costs of discovery and of the application to the Court.

34                  Comparison of the positions taken by the parties indicates, in substance, that the applicants seek to be provided with all the preserved records for searching as they see fit.  The searches they propose are indicated in the evidence of Mr Thackray.  The University on the other hand seeks to narrow the discovered material by reference to the files, e-mails and transactions as outlined in the above quotation.

evidence of respondents

35                  Each of the witnesses called by the Universities gave evidence relating to the methods they would use to search for particular files within the data preserved.

36                  Gregory Ryan, a Computer Systems Officer in the School of Information Technologies at the University of Sydney, deposed that he is part of the team responsible for the operation and administration of the School’s network and computer systems.  Mr Ryan gave evidence regarding the steps he would take to search the preserved copies of data taken from the hard drive of university computers.  In particular, he explained that he would seek to identify files with “.MP3” or “.jpeg” as a file extension by running certain commands at the ‘top level of the mounted file system’ which would identify all files on the mounted file system where the file names have “.MP3” or “.jpeg” as a file extension.  Mr Ryan also deposed that he would run other commands which would facilitate for the search of the mounted file system for files containing particular words or strings, including “music”, “download” and “song”.  Mr Ryan’s evidence was that these searches could also be carried out in relation to web server transaction logs as well as e-mail accounts allocated to particular students at the School of Information Technologies.  He states that the files identified by the search would be duplicated in a digital format.

37                  Paul Edwards, who was called by the University of Melbourne, also gave evidence as to the search methods he would employ should he be required to undertake a search of a CD ROM containing the duplicate of e-mail files and attachments copied from the e-mail accounts belonging to students at the University.  Mr Edwards, who holds the position of Research Support Officer and Programmer with the Information Division at the University of Melbourne, deposes that it is possible to search the duplicate e-mail files and attachments to locate files with “.MP3” or “.jpeg” as a file extension, and to also identify e-mails containing such words as “music” and “download”.  He states that he would use certain functions in the Microsoft software programme “Outlook” to search for and locate these files. Mr Edwards gave further evidence as to how he would search for files containing particular file extensions or strings in data found in the files of logged web server transactions for particular websites.  Much similar to the evidence of Mr Ryan, Mr Edwards explained that he would run certain commands which would allow for the identification of particular files.

38                  Similar evidence was given in relation to search methods by Brett Clifford, a Senior Systems Administrator in the Information Technology Resources Department at the University of Tasmania.  According to his evidence, the search techniques he would employ would allow for the identification of files located in directories relating to the websites of particular students, with “.MP3” or “.jpeg” as a file extension.  Mr Clifford also states that his search methods would help identify not only files with similar extensions contained in the e-mail server account of a particular student, but also files which contain words or strings similar to those identified by Mr Ryan and Mr Edwards.

evidence of Mr thackray

39                  Mr Thackray is an experienced computer forensic investigator retained by the applicants.  In his affidavit sworn on 9 April 2003, he refers to the search tools and methods proposed to be used by the Universities to disclose documents for the purposes of O 15A.  He says that whilst some of the search methods proposed by the Universities differ, the techniques appear to be generally very similar and involve searching material for files with either an “.MP3” or ”.jpeg” extension or files containing one or more of the following words or strings: “music”, “download”, “MP3”, “jpeg” or “song”.  In his view the search methods proposed by the Universities are inadequate to properly investigate the suspected infringements and he would not use such techniques because they would not be a means of forensic analysis of the data that has been copied.  He says that none of the respondents has described any method that would involve the use of forensic techniques.  Specific deficiencies in the methods proposed by the respondents were identified as follows:

·        The search is unlikely to identify some of the most relevant files in the investigation;

·        There are other digital file extensions to those proposed by the respondents that would need to be searched to identify digital music files and he specifies these;

·        The proposed process does not compare the file extensions with the file header so that a file with an otherwise apparently general file extension, such as “.doc”, will not be identified as a digital music file even though the file header contains information that would readily identify the file as a music file.  He refers to the practice of embedding a file in another file, known as steganography;

·        A text search for words such as “song” and “music” fails to take into account the terminology or slang used;

·        Words such as “music”, “download” and “song” are insufficient to locate all relevant material;

·        The process will not identify any base 64 encoded information, that is, information associated with an e-mail attachment that frequently provides, in his experience, important information about a user activity even if other information has been lost;

·        There is difficulty with the techniques proposed by the respondents in identifying compressed music files;

·        Preparatory processes suggested in some cases by the respondents may interfere with analysis. Examples are given.

40                  Mr Thackray then goes on to describe what he would do if given access to the information and the procedures he would adopt using a forensic tool known as EnCase with which he has had considerable experience.

41                  In his second affidavit of 9 April 2003, Mr Thackray states that he had previously indicated that he was prepared to loan his copy of EnCase to the Universities to undertake recovery of deleted files on the hard drives of the relevant computers on which the files relating to e-mails reside.  He also said that he was prepared to make himself available to the Universities to answer questions.  If he had been permitted to operate the software on the university computer network he estimates that it would have taken him no more than five to six hours to complete the operation of the software provided that the parameters of his access to the university systems were agreed in advance of operating the program.  This time span is disputed by the Universities.  He referred to some of the difficulties raised by witnesses for the Universities and asserted that these could have been overcome relatively easily.  He considered that any deleted e-mail files will remain and can be traced.

Submissions FOR respondents

42                  I now turn to the submissions of the respondents which in substance relate to all three Universities but which can conveniently be considered in the light of the material relating to the University of Tasmania.

43                  With respect to rr 3 and 6 of O 15A, the respondents do not dispute that reasonable inquiries have been made and that as a consequence the applicants have been unable to ascertain the description of some persons sufficiently for the purpose of commencing proceedings.  The respondents rely on the limitation on power or discretion in r 3(2) which provides for an order that discovery be made to an applicant of documents which relate to the description of the person concerned.  It is said that this is a limitation both on power and on discretion so that an order cannot be made to discover a document unless it can be shown to relate to the description of the person concerned.  The person concerned is a person against whom proceedings might be commenced.  In the present case it is said that the electronic records sought to be discovered and inspected travel beyond that boundary.  On the evidence, I am satisfied that if discovery is made in the manner required by the draft orders submitted by the applicants then there will be discovery of large amounts of information, including relevant information, which does not relate to the description of a person against whom proceedings might be brought.  Examples were raised in argument of personal information relating to students and their activities which could have no relationship to any proceedings which might be commenced by the applicants.  The limitation of the Court’s power is that the Court may only discover a closed category of documents where the judgment is for the respondents and their solicitors, and not for the applicants or even for the Court, as to whether the documents relate to the description of the person concerned.  There are, in the present case, several named students and it is pointed that there appears to be sufficient information to bring proceedings against those persons.  However, in relation to other persons who may have been in electronic correspondence with them it could also be necessary to know the identity of such persons for the purpose of description.  Nevertheless, the contention is that the information on the discs and other storage devices sought by the applicants in [30] above includes a very large amount of what must be irrelevant material.

44                  It emerged in cross-examination that the search methods proposed by the applicants would lead to the retrieval of large amounts of material which could not be said to relate to the description of the person concerned or to any prospective proceedings and as such, would not be discoverable.  In the alternative, it is said that the principle that only a closed category of documents should be retrievable apply in respect of the Court’s discretion to make an order in the event that it is determined that there is power under the Rules to do so.

45                  It is submitted that the Court cannot dispense the respondents from their obligation to make discovery or decide for them in advance which documents would relate to the description of the person named.

46                  The second principal submission relates to r 6 which, in particular par (b), concerns the question whether the applicant has sufficient information to enable a decision to be made whether to commence a proceeding in the Court.  This is said to exemplify the difference between the Court’s power under O 15 and the power under O 15A.

47                  However, it is on sub-rule 6(c) that the respondents principally rely.  That requires a reasonable cause to believe that a person whose description has been ascertained for the purpose of bringing proceedings is likely to have possession of any document relating to the question whether the applicant has the right to obtain the relief and in addition, it must be shown that the inspection of the document by the applicant would assist in making the decision.   The power to order discovery is in terms conditioned on these requirements being met.  It does not amount to reasonable “cause” to believe that there is a mere possibility that such documents are in the possession of the person.  It is only the documents which would assist in making the decision whether the applicant has the right to relief that are discoverable.  It is only such documents which may be the subject of a discovery order.  They must come within the description.

POWER - are the cd roms and tapes “documents”

48                  Having regard to the definitions of “document” in O 1 r 4 of the FCR as amplified by the dictionary to the Evidence Act, I consider that the CD ROMs which have been used by the respondents to store data recovered and other electronic records sought by the applicants in this case are records of information from which writings can be reproduced notwithstanding that it is likely that only part of them may relate to relevant issues and are “documents” within the Rules.  The extent of the nexus is a sperate question.  There is authority that electronic records and computer databases are documents; see Derby & Co Ltd v Weldon (No 9) [1991] 2 All ER 901; Victor Chandler International v Customs and Excise Commissioners [2000] 2 All ER 315 at 321 and 326.  Electronic records, such as computer files and CD ROMs have been the subject of discovery orders in this Court: see London Economics (Aust) Pty Ltd v Frontier Economics Pty Ltd [1999] FCA 932 at [31] and Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd [1998] FCA 299.

do the cd roms and tapes come within rr 3 and 6

49                  In order to obtain discovery of “documents” it is necessary to demonstrate the nexus required by rr 3 and 6 by relating the document to matters sought to be ascertained in those rules.

50                  The applicants contend that the CD ROMs and backup tapes on which the information is preserved are “documents” within the meaning of rr 3 and 6 and therefore they are entitled to discovery of all the information included because by storing some relevant information they can be said “to relate” to the matters referred to in rr 3 and 6.  The evidence, they say, shows that there is material on those records which relates to the identity of persons concerned and which also relates to the question whether the applicants have the right to obtain the relief.  The records do not cease to “relate” because they may also contain a great amount of irrelevant material. The problem is to extract with some precision the relevant material by the use of appropriate search criteria and tools.  Therefore, access would be likely to assist in ascertaining identity and in making a decision whether to commence proceedings and therefore the respondents should give discovery of the whole of the material contained in those electronic formats in which the preserved information is contained.  All the material should be given to the applicants to search as they see fit.

51                  The respondents submit that the critical question is what is meant by “document” for the purpose of O 15A.  The respondents point out that the definition may be approached at several levels of generality in circumstances where the electronic documents are known to contain both relevant and irrelevant information.  The first level is that of discovering all the material stored on the CD ROMs and tapes sought by the applicants.  Alternatively, at a more specific level, which is the level contended for by the respondents, each item of information which is recorded, constitutes in itself a part of an electronic record which in turn is a discrete document and it is only in respect of these discrete “documents” that the applicants can have discovery and access.

52                  In the present case the respondents say that the appropriate level at which to define “document” is determined by reference to the purpose for which the document is sought and the function which the description performs.  Simply to rely on a broad definition of document to include a CD ROM and to assert that because it contains a record which may relate to the question raised in the rules is not sufficient.  It is submitted that the Court cannot, as a matter of power or jurisdiction, (and should not as a matter of discretion in any event) order discovery of all electronic records on a CD ROM or tape as being a “document” for the purpose of the rules simply because some discrete records on it form part of a much larger record. 

53                  The applicants point out that the definition of “document” is extremely wide and on a literal reading can include, in the present case, each of the CD ROMs, tapes and other electronic storage media.  They also point out that the expression “relates” is a word of wide and general import and is sufficiently broad to include a relationship constituted by the fact that the record, in the case of a CD ROM for example, relates to the questions raised in the FCR because it contains some information which so relates.

54                  In this case I am satisfied that as a question of jurisdiction the Court has power to order discovery of a CD ROM, tapes or the other electronic storage devices which come within the definition of a document notwithstanding that they include a wide range of other information.  The real issue raised goes to the exercise of the Court’s discretion is whether in the circumstances of this particular case it is appropriate to order discovery as sought by the applicants in the form set out earlier in these reasons.

DISCRETION

55                  The authorities cited proceed on the basis that O 15A is beneficial in character.  In Paxus Services Ltd v People Bank Pty Ltd (1990) 20 IPR 79, at 85, Burchett J said:

“It would be unfortunate if a rule designed to amplify the court’s power to penetrate the obscurities and uncertainties in the interests of justice were to be weakened by restrictive and unnecessary glosses.  I think the rule is of a beneficial kind within the meaning of the well known principle of interpretation, and should be given the fullest scope its language will reasonably allow.  The proper brake on any excesses in its use is the discretion of the court, which is required to be exercised in the particular circumstances of each case.  One guide for that discretion is provided by the reference in r 6(b) to ‘all reasonable inquiries’ …..”

56                  These remarks were applied by Gummow J in Aitken v Neville Jeffress Pidler Pty Ltd (1991) 22 IPR 605 at 609 ff and they have been followed in later cases up to the present:  See for example C7 Pty Ltd v Foxtel Management Pty Ltd [2001] FCA 1864 and Global Intertrade Pty Ltd v Adelaide Festival Centre Trust [1998] FCA 1649.

57                  In applying rr 3 and 6, the Court must have regard to the fact that at the preliminary discovery stage no issues have been formulated against which relevance of documents can be measured.  The guidelines for discovery found in the Rules are in wide terms in that the documents sought must “relate” to identity or “relate” to the existence of the cause of action alleged.  Therefore some degree of “fishing” may be appropriate: cf the remarks of Burchett J in Paxus at 85.

58                  In the case of electronic records in the present case where the objective is to resolve the questions raised in rr 3 and 6, neither party is aware of precisely what is contained or what is relevant in the records and different search techniques have been suggested.

59                  In Derby, at 902 Vinelott J, when considering discovery of an electronic database, concluded that the applicants for discovery:

“ … were not entitled to unrestricted access to CML’s computer database (so far as the information recorded on it is relevant to the issues in the action and does not fall within the scope of any privilege from production). The court has a discretion as to the extent to which inspection and copying of documents disclosed on discovery is to be permitted, and in the context of a computer database this discretion can only be exercised in the light of expert evidence as to the extent of the information available on-line or from back-up systems, archival or history files, the extent to which materials stored in history files can be recovered with or without reprogramming, the extent to which reprogramming and transferring data onto the on-line system might damage the history files of the computer, and the extent to which  recovery of information and any necessary reprogramming might disrupt the conduct of the plaintiffs’ business.”

60                  At 906 his Lordship pointed to a difficulty which courts faced with respect to discovery and inspection of electronic records:

“A.      Even when the relevant material is on-line and capable of being shown on screen or printed out, some means will have to be found of screening out irrelevant or privileged material.  The party seeking discovery cannot be allowed simply to seat himself at his opponent’s computer console and be provided with all necessary access keys.

B.         There may be material on the computer which is not accessible by current programs but which can be retrieved by reprogramming.  Prima facie the powers of the court would extend to requiring that the computer be reprogrammed so as to enable the relevant information to be retrieved.  Otherwise an unscrupulous litigant would be able to escape discovery by maintaining his records in computerised form and altering current programs when litigation was in prospect so that information previously retrievable could not be retrieved without reprogramming.  Of course questions may then arise as to who bears the cost of any necessary reprogramming and whether it can be done without affecting current programs.”

61                  Derby, was concerned with discovery after proceedings had been commenced when issues had been defined by pleadings and when parties and causes of action had been identified and presumably assessed as to the existence of a viable cause of action.  In the present case the identity of prospective parties has not been sufficiently ascertained nor has the existence of a right to relief been determined and the problem of segregating relevant material from a mass of data is considerably greater.  The types of records here under consideration namely CD ROMs and backup tapes are capable of storing vast amounts of information.

62                  The evidence of the witnesses and in particular Mr Thackray, persuades me that if his techniques, including the application of EnCase, are used, some relevant material is likely to be recovered but such recovery will include a great deal of extraneous and irrelevant material, some of which may be privileged or subject to confidentiality obligations and cannot be readily segregated.

63                  On the other hand, I am satisfied that if the narrow search tools and methods proposed by the Universities in their evidence are used, then it is likely that there will be insufficient discovery.  On this aspect I prefer and accept the evidence of Mr Thackray in relation to the shortcomings in the search methods proposed by the Universities, as to the appropriate reach of the discovery.

64                  In weighing the competing interests it is necessary to give consideration to the important public interest in protecting the privacy of those using university facilities, particularly where the discovery process may disclose totally irrelevant personal information concerning a wide range of individuals and entities: see the remarks of O’Loughlin J in CCA Beverages (Adelaide) Ltd v Hansford, S J & Anor [1991] FCA 925 at [24].  To a large extent this concern is alleviated by the express undertakings as to privacy which can be imposed and by reason of the firmly established and enforced principles of discovery which prevent the misuse or abuse of information given on discovery and its use for purposes other than in the proceeding in which discovery was ordered: see Home Office v Harman [1983] 1 AC 280; Esso Australia Resources Ltd v Plowman (1995) 183 CLR 10 at 32; Patrick v Capital Finance Pty Ltd (No 4) [2003] FCA 436 at [15]-[18].

65                  Another matter to be weighed in balancing the factors in the exercise of discretion is the public interest in having full and proper disclosure by way of preliminary discovery in order to ensure that an informed decision can be made as to whether to commence proceedings and against whom they should be brought.

66                  There is no suggestion in this case that the applicants would have any interest in private information concerning any person which does not touch or concern the contemplated causes of action in relation to copyright.  The applicants, it can reasonably be assumed, are only concerned to obtain relevant information which bears on identification and or the strength or weakness of their allegations in order to protect their intellectual property and not to “rummage” or “trawl” through a miscellany of irrelevant material.

67                  Another relevant and important consideration is the interests of third parties, that is to say, parties other than those persons or entities who may be the subject of proceedings, concerning non-disclosure of what may be privileged or sensitive matters some of which in no way concern the contemplated litigation between the parties but about whom information is stored in the electronic records of the Universities preserved in the material sought by the applicants.  In the case of electronic records such as hard drives, CD ROMs or backup tapes the evidence does not indicate that there is any possibility of segregation or “masking out” of information for protection, confidentiality, privacy or non-disclosure as in the case of hard copy material: cf Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1040 at [14].  In the usual discovery process the first stage is that respondents make what they contend is appropriate discovery on oath and claim privilege or confidentiality in so doing where this is appropriate.  This is usually done with legal advice and often after consulting other persons as to whether they seek to claim of privilege or confidentiality.  Where an applicant then claims that full discovery has not been made or that particular or further discovery is necessary an application can be made to the Court.  An order for preliminary discovery is not final.  If the procedure envisaged by the applicants is adopted without any modification, whereby all documents extracted by Mr Thackray are discovered and made available for inspection, this important process with its protections will be by-passed because there will be no opportunity to make such claims.  It must be remembered that none of the parties in this application, it seems, are aware as to the full content of the material contained in the very extensive records which have been preserved as a consequence of the snapshots having been taken of all those records at a particular point in time.

68                  Having regard to the material before me I consider that the appropriate discovery process in this case should be along the following lines.  First, if an undertaking is given as to strict non-disclosure and confidentiality by Mr Thackray, or some other person performing the exercise referred to in his evidence, then access could be given to all the preserved records to search using the EnCase program directed to obtaining all material which can be extracted using that method.  Second, Mr Thackray or the person carrying out this exercise, which can be done under the supervision of the University, should make a copy of the information so extracted and this should be given to the respondents and their legal representatives.  Third, having regard to that information the respondents should have the opportunity to seek legal advice and consult with third parties to see if they have any claims for privilege or confidentiality, and then make an affidavit of discovery setting all information produced on that search which the respondents say is discoverable in the light of rr 3 and 6 of O 15A.  This discovery could claim privilege or confidentiality where appropriate.  Fourth, after such discovery is given the applicants should be afforded an opportunity to inspect the documents so discovered.

69                  I will not make any substantive order at this point but I will stand the matter over for fourteen days to enable the parties to consider these reasons and a time can be appointed to hear any further submissions as to appropriate orders, costs and the expenses of the discovery process.

Associate:

Dated:              30 May 2003