FEDERAL COURT OF AUSTRALIA

Domino’s Pizza Enterprises Limited v Precision Tracking Pty Ltd [2016] FCA 853

ORDERS

THE COURT ORDERS THAT:

On the amended interlocutory application by Domino’s Pizza Enterprises Limited:

1.    Subject to a signed confidentiality undertaking in the form annexed to the interlocutory application filed 11 July 2016 being provided to the first respondent/cross-claimant’s solicitors by each of the following persons, each such person shall be permitted to receive schedules 1, 2 and 3 to the statement of cross-claim and the mp4 video file attached to the email from Odette Gourley of Corrs Chambers Westgarth, solicitors for the first respondent/cross-claimant, to Liam Prescott of DLA Piper, solicitors for the applicant/first cross-respondent, dated 18 July 2016:

1.1    Mr Craig Ryan, General Counsel, Company Secretary of the applicant/first-cross respondent;

1.2    Mr Wayne McMahon, Group Chief Information Officer of the applicant/first cross-respondent;

1.3    Mr Phillip Harrys, Group Director Digital Development of the applicant/first cross-respondent;

1.4    Mr Nicholas Knight, Chief Executive Officer for Australia and New Zealand of the applicant/first cross-respondent;

1.5    Ms Renee Rametta, Business Analyst of the applicant/first cross-respondent; and

1.6    such other persons as are reasonably required by the applicant/first cross-respondent, following a request by the solicitors for the applicant/first cross-respondent to the solicitors for the first respondent/cross-claimant for consent, which shall not be unreasonably withheld, for that person to be permitted access.

2.    Precision Tracking Pty Ltd pay 90% of Domino’s Pizza Enterprises Ltd’s costs of the interlocutory application.

3.    Liberty to apply on three days’ notice, including in respect of order 1.6 above.

On the amended interlocutory application by Navman Wireless Australia Pty Ltd:

4.    Subject to:

(a)    a signed confidentiality undertaking in the form annexed to the interlocutory application filed 11 July 2016 being provided to the first respondent/cross-claimant’s solicitors by each of the following persons; and

(b)    General Counsel of the second cross-respondent personally explaining to each of those persons the serious ramifications of any breach of the undertaking and explaining to each of them the implied undertaking given to the Court that any document provided to the Court may only be used by the receiving party for the purposes of the proceeding and no other purpose;

each such person shall be permitted to receive schedules 1, 2 and 3 to the statement of cross-claim and the mp4 video file attached to the email from Odette Gourley of Corrs Chambers Westgarth, solicitors for the first respondent/cross-claimant, to Chelsea Parker of DibbsBarker, solicitors for the second cross-respondent, dated 20 July 2016:

4.1    Mr Mark Schwarz, General Counsel of the second cross-respondent;

4.2    Mr Daron Brinsdon, National Integration Solutions Manager of the second cross-respondent;

4.3    Mr Andrew Franchuk, independent consultant of the second cross-respondent;

4.4    Mr Chris Parkhurst, Software Development Manager of the second cross-respondent;

4.5    Mr Zane Thompson, Global Account Director (Domino’s) of the second cross-respondent; and

4.6    such other persons as are reasonably required by the second cross-respondent, following a request by the solicitors for the second cross-respondent to the solicitors for the first respondent/cross-claimant for consent, which shall not be unreasonably withheld, for that person to be permitted access.

5.    Precision Tracking Pty Ltd pay 90% of Navman Wireless Australia Pty Ltd’s costs of the interlocutory application.

6.    Liberty to apply on three days’ notice, including in respect of order 4.6 above.

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

REASONS FOR JUDGMENT

ROBERTSON J:

Introduction

1    These proceedings concern pizza tracking systems performing various functions, including showing customers the progress of their pizza delivery.

2    It is common ground that Precision Tracking Pty Ltd (Precision Tracking) supplied a system to Domino’s Pizza Enterprises Ltd (Domino’s) subsequent to an initial trial in November 2012. Then, in September 2014, Domino’s entered an agreement with Navman Wireless Australia Pty Ltd (Navman Wireless) to provide a system. This had the functionality of a customer being able to see where their pizza was during delivery.

3    By cross-claim, in broad terms, Precision Tracking claims that in developing its pizza tracker system with Navman Wireless (the second cross-respondent), Domino’s (the first cross-respondent) acted wrongfully. Part of the case brought by Precision Tracking is that Domino’s and Navman Wireless have installed and maintained a system which substantially replicates the Precision Tracking system or systems. Precision Tracking also claims that this involved Domino’s and Navman Wireless in unauthorised use and disclosure of confidential information of Precision Tracking, where duties of confidentiality were owed by them to Precision Tracking, and infringement of innovation patents and copyright in certain works owned by Precision Tracking.

Background

4    The background to the present interlocutory applications is as follows.

5    On 8 April 2016, Domino’s commenced the proceeding by claim and statement of claim against the respondents: Precision Tracking and each of its three directors, Mr Vladimir Lasky, Mr Nathan Parrott and Dr Alexander Green. The originating application included claims that Precision Tracking had made “unjustified” threats contrary to s 128 of the Patents Act 1990 (Cth) and claims of misleading and deceptive conduct by making representations.

6    A confidentiality regime was put in place with respect to some of the documents referred to in the statement of claim. Under that arrangement the documents the subject of the undertaking were not provided to the respondents but were provided to the respondents’ solicitors and counsel who provided confidentiality undertakings.

7    On 17 June 2016, the respondents filed a defence in response to Domino’s claim and statement of claim, and a cross-claim and statement of cross-claim was filed by Precision Tracking alone against Domino’s and Navman Wireless.

8    Precision Tracking’s statement of cross-claim attached three schedules, schedules 1, 2 and 3, which Domino’s contends, and I find, are referred to throughout the statement of cross-claim and form part of those pleadings. Precision Tracking claims that schedules 1, 2 and 3 are confidential.

9    A number of confidentiality undertakings have been given by Domino’s representatives to Precision Tracking, which have been accepted by it. Those confidentiality undertakings have been given by Kathryn Clarke, Hadley Hickson, Liam Prescott and Ellen Corrigan, each of DLA Piper, solicitors for Domino’s in the proceeding, by Regan Gourley of Cullens Pty Ltd (patent and trademark attorneys), and by Mr AP Coleman SC and Mr Tom Cordiner of counsel. However Domino’s has requested that certain of its representatives be given access to schedules 1, 2 and 3, those representatives having provided or being prepared to provide confidentiality undertakings. Navman Wireless’ representatives have also given confidentiality undertakings to Precision Tracking, which have been accepted by it. These confidentiality undertakings have been given by Melissa Anne McGrath, Chelsea Parker and Lisa Hopkins (each of DibbsBarker). Navman Wireless has also requested that certain of its representatives should be given access to schedules 1, 2 and 3 on the giving of confidentiality undertakings.

Domino’s interlocutory application

10    By an interlocutory application filed on 11 July 2016, Domino’s seeks orders that certain representatives of Domino’s have access to schedules 1, 2 and 3 to the statement of cross-claim filed by Precision Tracking on 17 June 2016 and referred to in the respondents’ defence, also filed on 17 June 2016. Domino’s accepts that schedules 1, 2 and 3 should be the subject of a confidentiality regime. The regime contended for by Domino’s is that five named persons and “such other persons as are reasonably required by the Applicant/First Cross-Respondent … ” be given access. The interlocutory application also seeks that the persons listed provide a signed confidentiality undertaking in the form annexed to the application.

11    The interlocutory application is supported by an affidavit by Craig Anthony Ryan, General Counsel and Company Secretary for Domino’s, sworn 11 July 2016. Mr Ryan deposes that, based on his review of the defence and cross-claim, he believes that to the extent those pleadings refer to or incorporate schedules 1, 2 and 3, Domino’s is currently not able to understand the entirety of the defence of the respondents or the claims made in the cross-claim by Precision Tracking; give instructions to its solicitors or counsel in any informed or meaningful way; or plead in response to the defence of the respondents or in defence to the cross-claim of Precision Tracking. Exhibited to Mr Ryan’s affidavit are confidentiality undertakings given by him, Phillip Russell Harrys, Wayne McMahon, Renee Rametta and Nicholas Knight, each of Domino’s.

12    Also in support of Domino’s interlocutory application is an affidavit sworn by Liam Thomas Prescott on 11 July 2016. Mr Prescott is a partner at DLA Piper. Mr Prescott also refers to a second affidavit in support of the application in respect of which Precision Tracking alleges that its contents and its attachments are confidential and subject to the confidentiality undertaking which Mr Prescott has given. That affidavit also sworn 11 July 2016 annexes, as a confidential annexure, schedules 1, 2 and 3 to the statement of cross-claim.

13    Mr Prescott has also sworn a third affidavit dated 19 July 2016 which annexes correspondence about a video file that had been uploaded by the third respondent, Mr Parrott, to the YouTube website in December 2012. This is relevant to Domino’s proposed amended interlocutory application dated 19 July 2016 which seeks, in addition to the claims concerning schedules 1, 2 and 3, an order that the mp4 video file attached to the email dated 18 July 2016 from Odette Gourley of Corrs Chambers Westgarth, solicitors for Precision Tracking to Liam Prescott of DLA Piper, be produced and made available to the parties but not subject to any confidentiality regime in the proceedings. There being no objection, in the course of the hearing I granted leave to Domino’s to rely on the amended interlocutory application.

14    It was asserted in correspondence that the video showed a detailed demonstration of a GPS tracking system as installed and used at a Domino’s store at or prior to December 2012. It was said that until at least September 2015 the video was publicly accessible via a particular link. It was also contended that the video disclosed information that was contained in schedules 1, 2 and 3 and which Precision Tracking alleged to be confidential. It appears that Precision Tracking has also provided to Domino’s external solicitors, subject to the same confidentiality regime, a copy of that video. Precision Tracking claims that the video is confidential.

15    There also two affidavits sworn by Kathryn Elizabeth Clarke. The first is dated 2 June 2016 and does not concern the present interlocutory dispute. In the second of those affidavits, sworn 20 July 2016, Ms Clarke deposes to the circumstances in which she found the video on the Internet. She deposes that she found the video while carrying out her own independent Internet searches concerning the respondents in connection with a dispute between Domino’s and Precision Tracking before the Patent Office, those proceedings being currently stayed.

Navman Wireless’ interlocutory application

16    By an interlocutory application also filed on 11 July 2016, Navman Wireless seeks orders that certain of its representatives have access to documents including, but not limited to, schedules 1, 2 and 3 referred to in the statement of cross-claim. The interlocutory application lists five representatives and such other persons as are reasonably required by Navman Wireless to be permitted access. The interlocutory application seeks that the persons listed sign a confidentiality undertaking in the form annexed to the application. Navman Wireless also seeks to rely on an amended interlocutory application dated 21 July 2016 which, in relation to the mp4 video file, seeks the same order for production as does Domino’s, albeit by reference to that video being attached to an email of a different date, 20 July 2016, from Ms Gourley to Ms Parker of DibbsBarker, solicitors for Navman Wireless. There being no objection, in the course of the hearing I granted leave to Navman Wireless to rely on the amended interlocutory application.

17    Navman Wireless’s interlocutory application is supported first by an affidavit sworn by Melissa Anne McGrath on 11 July 2016, Ms McGrath being a partner of DibbsBarker, the firm which has the conduct of the proceedings on behalf of Navman Wireless. Certain confidentiality undertakings have been given, specifically by Ms Parker, Ms Lisa Hopkins and Ms McGrath. There was a dispute between Navman Wireless and Precision Tracking as to whether Mr Mark Schwarz, the General Counsel for Navman Wireless, may have access to confidential information although he has signed an undertaking in the form requested by Precision Tracking. Precision Tracking opposes the provision of confidential material (including the schedules and information contained on a USB as referred to in the statement of cross-claim) to representatives of Navman Wireless.

18    Ms McGrath in her affidavit identifies five representatives of Navman Wireless who, she says, require access to confidential information, including that contained in schedules 1, 2 and 3, for the purposes of giving instructions in the case.

19    Navman Wireless also relies on a further affidavit of Ms McGrath sworn 22 July 2016. Ms McGrath gives evidence regarding the decision-making roles of Navman Wireless’ representatives seeking access to the confidential information and regarding Mr Schwarz’s lack of technical skills and his need to seek further instructions from these representatives.

Precision Tracking’s evidence

20    The affidavits on behalf of Precision Tracking are those of Odette Margaret Gourley sworn 18 July 2016 and a further affidavit by her sworn 21 July 2016. In her first affidavit, Ms Gourley referred to schedules 1, 2 and 3 to the statement of cross-claim and set out the concerns of Precision Tracking and its directors. Emphasis was placed on the assembling of the detail in the schedules over several weeks by the directors of Precision Tracking to result in single, ordered “blueprints” of the confidential information developed by Precision Tracking and on which it relies in these proceedings. This first affidavit stated that confidential schedules 1 and 2 contained references to computer code, scripts and files from Precision Tracking’s systems that were available for inspection. Schedule 3 identified the works, copyright in which was alleged to subsist and to be owned by Precision Tracking and provided particulars of infringement by reference to the requirements document alleged by Precision Tracking to have been prepared by reference to its system and supplied by Domino’s to Navman Wireless. In her second affidavit, Ms Gourley provided more information about confidential schedules 1, 2 and 3. It appears from [10] of that affidavit that the information in the schedules was developed by Precision Tracking and provided to Domino’s pursuant to the pleaded arrangements with Domino’s, including under the terms of a March 2013 mutual non-disclosure agreement between the parties.

21    There are other affidavits but they are relevant to an application by Navman Wireless that Precision Tracking provide security for costs. That application has been stood over by consent.

The parties’ submissions

22    Each of the contesting parties filed short written submissions. From those submissions it appeared that the relevant principles were not in dispute.

23    Domino’s submitted that the applicable considerations were summarised in AstraZeneca AB v Medis Pharma Pty Ltd [2014] FCA 549 at [10] per Besanko J. Domino’s referred also to Gram Engineering Pty Ltd v Bluescope Steel Pty Ltd (No 2) [2016] FCA 452 at [21] per Jagot J. In the former case, Besanko J said, at [10]:

The relevant legal principles are as follows:

(1)    The onus of establishing a claim for confidentiality is on the party making the claim.

(2)    The question of whether a claim for confidentiality should be upheld or refused involves a balancing exercise in which the competing considerations are the risk of inadvertent or accidental disclosure on the one hand, and the benefits of a party having access to relevant information so that appropriate advice can be given to the client and informed instructions received from the client, on the other.

(3)    In determining where the balance lies in a particular case, a number of matters are relevant, including the following:

(i)    the nature and content of the confidential information;

(ii)    the extent to which, if the confidential information is disclosed to a particular person, that person will have occasion to use the information to further a party’s commercial interests. In this context, involvement or lack of involvement in competitive decision‑making will be relevant. It will also be relevant to consider whether the person to whom it is proposed to disclose the information owes or may owe contractual, statutory or fiduciary duties to their principal in relation to competitive decisions;

(iii)    the professional attributes of the persons to whom it is proposed to disclose the information and the extent to which they have participated in confidentiality clubs in the past;

(iv)    the extent to which the Court can be satisfied that, if confidential information is released to a person, that person, or the organisation for which the person works, has in place a security system that will protect the confidentiality of the information;

(v)    undertakings given by the proposed recipient of the confidential information or the party seeking disclosure to meet any loss caused by inadvertent or accidental disclosure;

(vi)    although the above five matters are directed, primarily at least, to the risk of inadvertent or accidental disclosure of the confidential information and the likely loss if that occurs, on the other side of the equation, it is relevant to consider the extent to which a party’s ability to seek advice and provide instructions may be hampered if a claim for confidentiality is upheld. In this context, it is worth noting that a claim for confidentiality in relation to certain persons is not necessarily to be upheld because there is already one person able to seek advice and provide instructions. It may be appropriate for a number of people from within an organisation to have access to confidential information in order to seek appropriate advice and provide informed instructions, particularly in the case of a large organisation and complex litigation. Whether that is so or not depends on the outcome of weighing the relevant factors.

(Citations omitted.)

24    Domino’s submitted that the nature of the information in schedules 1, 2 and 3 was not confidential. Precision Tracking bore the onus of establishing the confidentiality of the documents in issue. Domino’s submitted evidence filed on behalf of Precision Tracking did not establish the confidential nature of the information contained in schedules 1, 2 and 3.

25    Domino’s relied on the observation in Australian Competition and Consumer Commission v Visy Industries [2006] FCA 136 at [33] - [34] per Heerey J:

In contrast to discovery under O 15 rr 1, 5 or 8, production under O 15 r 10 does not depend on any leave being given by the Court. The reason is obvious enough. When a document is directly relied on by an opposing party, basic procedural fairness would require that a party be able to inspect the document, if only to see whether it is what it is alleged to be. It may be that the only options available to the party served with an O 15 r 10 notice are those set out in subr (2), viz, production, claiming privilege, or stating that the document is not in his possession and where he believes it is. On this basis confidentiality, either of the party receiving the notice or an outsider, would not be relevant since confidentiality is not one of the recognized grounds of privilege: Ex parte Fielder Gillespie Ltd [1984] 2 Qd R 339 at 341.

It is not necessary to decide this question because, assuming the confidentiality claimed by Amcor to be relevant, it is nevertheless outweighed by the centrality of the documents in question to the case against the respondents and the case they seek to make. In this regard I note that the leading Australian case on confidentiality in relation to the production of documents in litigation, the decision of the Victorian Court of Appeal in Mobil Oil Australia Ltd v Guina Developments Pty Ltd [1996] 2 VR 34, dealt with ordinary discovery and not any equivalent of O 15 r 10. Hayne JA pointed out (at 39) that the information in the documents in question, which related to calculations of the proposed financial return to the plaintiff’s rival bidders for a construction contract, was not directly in issue. The material did not bear on the case which the plaintiff sought to make (at 41).

26    Domino’s submitted that the information in the schedules was not information tangentially relied on in the pleading but was information of central relevance to Precision Tracking’s pleaded case and, in turn, to Domino’s ability to provide meaningful instructions for the provision of a reply to the defence and defence to the cross-claim. Further, on its own case, Precision Tracking alleged that Domino’s had the information contained in schedules 2 and 3.

27    Domino’s also submitted that assuming Precision Tracking’s allegations were correct (which was denied) Domino’s and Navman Tracking must have already exploited Precision Tracking’s information and none of the Domino’s representatives, or Domino’s itself, would have a further commercial benefit in using the information in the schedules.

28    Domino’s submitted that each of the representatives named required access to the documents in order for Domino’s to provide adequate instructions and those instructions were unquestionably needed for the conduct of the litigation and for Domino’s ability to adequately plead to the allegations made by Precision Tracking.

29    Domino’s also submitted that the YouTube video was published and available to be viewed without any restriction in the period December 2012 to at least September 2015. Even if the video was only supplied to Domino’s, as asserted by Precision Tracking, it plainly should be made available to the nominated Domino’s representatives and not restricted to Domino’s external legal representatives.

30    Navman Wireless submitted that the documents claimed to be confidential by Precision Tracking included three schedules to the statement of cross-claim, which contained the majority of the particulars of that pleading. In addition, confidentiality was claimed in relation to the contract assigning intellectual property rights, referred to in [72] of the statement of cross-claim, and in relation to the video file.

31    Navman Wireless submitted that the particulars in the schedules identified the information alleged to be confidential, as well as the alleged copyright works and infringements. The pleading itself did not do this. Navman Wireless submitted that schedules 1, 2 and 3 concerned the articulation of the claim brought by Precision Tracking against it and against Domino’s.

32    Navman Wireless submitted that only its General Counsel needed access to the contracts referred to in [72] of the statement of cross-claim. But in relation to the schedules, access was sought for the General Counsel and three employees and one independent consultant, each of whom was involved in the events the subject of the dispute.

33    Navman Wireless also submitted that there was no reasonable basis for a claim of confidentiality in relation to the video file.

34    After referring to AstraZeneca AB v Medis Pharma Pty Ltd at [10], Navman Wireless submitted that in considering the balancing exercise referred to by Besanko J, in the present case the fact that the information sought to be kept confidential included the particulars to the claim weighed strongly against refusing access to the limited group of people identified by the evidence as necessary to give instructions in relation to the statement of cross-claim. It submitted that to take the extraordinary step of requiring Navman Wireless to file a defence without access to all of its particulars, including particulars as detailed and fundamental as those in issue here, the Court would need to be persuaded that at the very least the information in the particulars was of a highly confidential nature and that there would be a real risk of harm to Precision Tracking if that information was disclosed to the limited group of representatives of Navman Wireless who had signed confidentiality undertakings. A breach of those undertakings could be punished as contempt of the Court. Additional protection was provided by the obligations discussed in Hearne v Street [2008] HCA 36; 235 CLR 125.

35    The submissions also referred to the allegation in the statement of cross-claim that Navman Wireless had already had access to and use of the information in question. The submission also referred to the confidential affidavit of 11 July 2016 of Mr Prescott.

36    Precision Tracking submitted that the details of an appropriate confidentiality regime were, in the end, a balancing exercise. Precision Tracking proposed that, in addition to external solicitors and counsel, patent attorneys and independent experts, Domino’s and Navman Wireless’ senior in-house legal counsel would be allowed access on confidential terms and conditions including that the confidential materials were accessed only in the form of a single hardcopy or single electronic copy on a stand-alone storage medium; and one senior employee of Domino’s and one of Navman Wireless with technical qualifications, and in a technical role, would be allowed access on the same terms, subject to an additional qualification that these persons could only access the materials in the presence of either external legal counsel or in-house counsel if they had been admitted to the confidentiality regime. The matters particularly relied on by Precision Tracking as relevant to achieving an appropriate balance were first the genesis of the particulars: that Domino’s was the party which had brought this litigation into existence and Precision Tracking brought the particulars into existence to comply with the requirement that the confidential information be specified with specificity and not merely in global terms; and that confidentiality regimes could not assume the correctness of any party’s position. Secondly, given Domino’s claimed position of independent creation of the Navman Wireless system there was no reason, Precision Tracking submitted, why the potential witnesses could not provide instructions as to their own account of the circumstances in which that system was created without being led by reference to the confidential schedules. Thirdly, there was the risk of inadvertent disclosure. Fourthly, there was the risk of commercial harm to Precision Tracking and/or its directors through inadvertent disclosure or an inability to put that information to one side when dealing with commercial opportunities. Fifthly, it was submitted there was nothing to prevent the Domino’s/Navman Wireless version of events being elicited as instructions, and subsequently evidence, from the relevant witnesses without reference to the confidential schedules. That would not cause prejudice at the present stage of the proceedings and Precision Tracking accepted that the balancing exercise may need to be reconsidered at an appropriate stage, for example after lay evidence was served. Sixthly, it was submitted that the Precision Tracking confidentiality regime already in place also provided for mutual inspection, on appropriate confidentiality terms, of the parties’ respective computer systems, given the claims of confidentiality of functionality.

37    Precision Tracking gave great emphasis in its submissions to Markus v Provincial Insurance Co Ltd (1983) 25 NSWCCR 1 and to decisions which have applied or considered that case, including: Broadwater Taxation & Investment Services Pty Ltd v Hendriks (unreported, Supreme Court of New South Wales, Santow J, 9 September 1993), Halpin v Lumley General Insurance Ltd [2009] NSWCA 372; 78 NSWLR 265 and Morton v Colonial Mutual Life Assurance Society Ltd [2013] FCA 681.

38    Precision Tracking submitted that the video was confidential information and that the information in question being obtained by lawyers making targeted searches on the Internet did not prove lack of confidentiality or relative confidentiality.

Consideration

39    Section 37P(2) of the Federal Court of Australia Act 1976 (Cth) provides that in a civil proceeding before the Court, the Court or a judge may give directions about the practice and procedure to be followed in relation to the proceeding, or any part of the proceeding. It was common ground that the Court had the discretionary power to make the orders sought by Domino’s and Navman Wireless on the one hand and by Precision Tracking on the other.

40    I accept for present purposes that schedules 1, 2 and 3 contain confidential information. I do not find it necessary or appropriate for present purposes to make a final determination of that issue. As I understand it Domino’s and Navman Wireless were content to proceed on the assumption that there might be something confidential in the schedules. As I have said, all parties accepted that a balancing exercise is involved in deciding the appropriate order. As stated by Besanko J in AstraZeneca AB v Medis Pharma Pty Ltd, the competing considerations are the risk of inadvertent or accidental disclosure on the one hand, and the benefits of a party having access to relevant information so that appropriate advice can be given to the client and informed instructions may be received from the client on the other hand.

41    I understand from the evidence the concerns of Precision Tracking and its directors and I raised for the parties’ consideration whether or not it would be appropriate for the relevant parties to give an undertaking in the form ordered by Besanko J in AstraZeneca AB v Medis Pharma Pty Ltd, that is, that the cross-respondents give an undertaking to be liable for any direct or indirect loss, damages, costs or expenses to or suffered by Precision Tracking in the event of disclosure of the confidential information by any of the persons referred to in the confidentiality orders other than a person the subject of those confidentiality orders. No party took up the suggestion and I put it to one side.

42    In my opinion, the balancing exercise in this case must take into account two significant elements. First, I accept the evidence on behalf of Domino’s and Navman Wireless that, in order to plead to the statement of cross-claim, it is necessary to obtain instructions from the persons identified. The procedure envisaged by Precision Tracking is in effect that a defence to the cross-claim be put on without the benefit of those instructions, then in due course the cross-respondents’ would file and serve their affidavit evidence, and then the cross-respondents would amend their defences to the statement of cross-claim with the benefit of instructions. However, I do not regard this as a course which is consistent with economy or efficiency or one necessary to do justice between the parties. The potential detriment to Precision Tracking was, in my opinion, shadowy. This is in large part by reason of the second element to which I refer, that is on Precision Tracking’s case the employees have already seen the claimed confidential material. I also take into account that on the present applications Domino’s and Navman Wireless do not seek access to the material referred to in schedules 1, 2 and 3 but to the schedules themselves.

43    For these reasons I regard Markus and the decisions to which I was taken and which have applied or considered it as distinguishable. I refer here to Broadwater Taxation & Investment Services Pty Ltd v Hendriks, Halpin v Lumley General Insurance Ltd and Morton v Colonial Mutual Life Assurance Society Ltd. Those cases were not concerned with pleadings or with circumstances where the prospective witness had already seen the material.

44    In the present case I find that if the proffered undertakings are given, the risk of inadvertent or accidental disclosure is low whereas the cross-respondents have established the need for informed instructions to be received from the client and that need is high. To adapt what Heerey J said in Australian Competition and Consumer Commission v Visy Industries, assuming the confidentiality claimed by Precision Tracking, it is nevertheless outweighed by the centrality of the documents in question to the case against the cross-respondents and the case they seek to make.

45    I was also concerned to explore whether or not each of the persons identified was required to give instructions on the part of Domino’s and on the part of Navman Wireless were necessary or appropriate for that task. As to the identity of the persons, Precision Tracking accepted that Domino’s senior in-house legal counsel (Craig Ryan) and Navman Wireless’ senior in-house legal counsel, (Mark Schwarz) were appropriate persons, although contending that they only be given access in the form of a single hardcopy or single electronic copy on a stand-alone storage medium. I see no need for a qualification additional to the undertaking to Precision Tracking and to the Court, and to the ordinary Hearne v Street implied undertaking. In relation to Mr Ryan he has given evidence to the Court, and I accept, that he understands his duties as a solicitor and the serious ramifications of any breach of the undertaking and he says in his evidence he will adhere to the terms of the undertaking.

46    I turn first to the other representatives of Domino’s. Mr McMahon is employed within Domino’s IT Department as the Group Chief Information Officer and was directly involved in the factual events in dispute. I accept that he needs access to the information in the schedules in order for Domino’s to review that information and to assist in the provision of instructions to Domino’s solicitors. Mr Harrys is also employed within Domino’s IT Department as Group Digital Director. For present purposes, in relation to access to the schedules, he is in the same position as Mr McMahon. I accept he is the person within Domino’s IT department best placed to conduct searches for any historical electronic documents or emails. Mr Knight is the Chief Executive Officer for Australia and New Zealand of Domino’s. Allegations are made against him personally in the cross-claim. He was directly involved in matters that are alleged to involve confidential information. He was also involved in the development of the Domino’s GPS Driver Tracker. I accept that he needs to have access to the schedules to understand the allegations made against Domino’s and against him personally. Ms Rametta is a Business System Analyst of Domino’s. I find that she was the author of the “GPS Driver Tracking Requirements” document which Precision Tracking alleges was created by using the confidential information. I find that she requires access to the schedules to assist in providing instructions in that respect. I take into account that Mr Ryan has given evidence, which I accept, that he has personally explained to each of these representatives the serious ramifications of any breach of the undertaking and he has also explained to each of them the implied undertaking given to the Court that any document provided to the Court under compulsion may only be used by the receiving party for the purposes of the proceeding and no other purpose.

47    I turn secondly to the other representatives of Navman Wireless. Mr Brinsdon is Navman Wireless’ National Integration Solutions Manager and his role includes providing solution architecture design for custom solution, including in relation to the Domino’s GPS Driver Tracker. He was directly involved in the factual events in dispute. I accept that for the purposes of giving instructions in this proceeding Mr Brinsdon requires access to the confidential information. Mr Franchuk is an independent consultant to Navman Wireless and his role included the development of software for the Domino’s account. He was directly involved in the factual events in dispute. I accept that for the purposes of giving instructions in this proceeding Mr Franchuk requires access to the confidential information. Mr Parkhurst is Navman Wireless’ Software Development Manager and his role includes developing software for custom technology solutions, including in relation to the Domino’s GPS Driver Tracker. He also was directly involved in the factual events in dispute. I accept that he requires access to the confidential information for the purposes of giving instructions in the proceeding. Mr Thompson is Navman Wireless’ Global Account Director (Domino’s). He was the exclusive account director of the Domino’s account, managing all aspects of the account. He was directly involved in the factual events in dispute. I accept that he also requires access to the confidential information for the purposes of giving instructions in the proceeding. In relation to each of these representatives I find that in order for Mr Schwarz to provide instructions on Precision Tracking’s claims, he must rely on their technical skills and knowledge of the facts. It does not appear that Mr Schwarz has personally explained to each of these persons the ramifications of breach of either the express or implied undertaking.

48    I have also considered the contention that those persons, or some of them, would not be able to put out of their mind the substance of the claimed confidential information if access was given and that this would be to the advantage of Domino’s and Navman Wireless on the one hand, and to the detriment of Precision Tracking on the other hand. I have taken into account the material particularly relied on by Precision Tracking, being Ms Gourley’s first affidavit at [23]-[36]. However, I find this evidence unpersuasive in relation to the present question. Indeed, I accept that the short answer to this proposition from the perspective of Domino’s is that Domino’s has completed the development of and released its pizza tracker system in July 2015 and the information is of no ongoing commercial utility to it. As to the position of Navman Wireless in this respect, I accept the evidence of Ms McGrath to the effect that those persons are not involved in competitive decision making for Navman Wireless so that the risk of unconscious use is slight.

49    In relation to the video file, there is the evidence of Ms Clarke in her affidavit sworn 20 July 2016. I do not accept the submissions on behalf of Domino’s and Navman Wireless that I should form a concluded view on whether that material is confidential. Although it is sufficiently clear that the video file was available on the Internet for nearly three years, time did not permit full evidence or submissions as to what the video discloses. However I note that counsel for Domino’s submitted that the video disclosed elements of the confidential schedule. I also bear in mind the distinction in Aquaculture Corporation v New Zealand Green Mussel Co Limited (1985) 5 IPR 353 at 378-379 between the concept of patent law whereby novelty is lost as against the question whether the information, originally confidential, has become freely available to the public. It should therefore be the subject of the confidentiality regime.

Conclusion and orders

50    For these reasons, and subject to the matter I next deal with, I make orders in terms of the short minutes propounded by the cross-respondents. In respect of the amended interlocutory application by Navman Wireless that the documents not be limited to schedules 1, 2 and 3 and the mp4 video file and include documents provided in the confidentiality undertaking, I do not make that broader order as there is presently no evidence as to what those other documents might be. If there is any difficulty on the part of any of the parties in that respect or generally in respect of the provision of documents under the confidentiality regime, each party has liberty to apply on three days’ notice. Precision Tracking should pay 90% of the costs of each interlocutory application. In fixing that percentage I take into account that Domino’s and Navman Wireless failed on their application that the mp4 video file not be subject to any confidentiality regime. But I decline to order that those costs be paid forthwith. An order of that kind should generally be reserved for interlocutory applications which stand outside the ordinary course of preparing a matter for trial.

Associate:

Dated:    29 July 2016

SCHEDULE OF PARTIES