FEDERAL COURT OF AUSTRALIA

Prodata Solutions Pty Ltd v South Australian Fire and Emergency Services Commission (No 3) [2020] FCA 1210

ORDERS

THE COURT ORDERS THAT:

1.    The applicant’s interlocutory application dated 1 July 2020 is dismissed.

2.    Pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 (Cth) and s 37P(5) and (6)(a) of the Federal Court of Australia Act 1976 (Cth), the applicant's originating application is dismissed from the date specified in order 6.

3.    The applicant is to pay the costs of:

(a)    the applicant’s interlocutory application dated 1 July 2020;

(b)    the first respondent’s interlocutory application dated 16 July 2020;

(c)    the second respondent’s interlocutory application dated 10 July 2020.

4.    The applicant's interlocutory application filed on 14 July 2020 and its interlocutory application emailed to the Court on 31 July 2020 (the suppression applications) and the respondents’ applications for costs of the originating application are set down for hearing at 10.30am on 1 September 2020.

5.    Pursuant to r 1.34 of the Federal Court Rules 2011 (Cth), r 4.01(2) is dispensed with for the purposes of the applications referred to in order 4.

6.    The date of dismissal of the originating application is the date upon which judgment is given on the suppression applications.

7.    Until 4.00pm on 1 September 2020, no non-party is to be granted inspection of any affidavit or evidentiary material filed by the applicant in the proceedings except with the leave of the Court.

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

REASONS FOR JUDGMENT

CHARLESWORTH J:

1    The applicant, Prodata Solutions Pty Ltd, alleges that it is the owner of copyright subsisting in software components of databases forming part of an integrated system of software programs known as ESOTAS. Prodata alleges that the respondents have infringed its copyright in the software components and breached an equitable obligation of confidence in respect of their content. In the ordinary course, a trial on the issue of the respondents’ liability would have commenced in early September 2020 with three weeks set aside. The ordinary course has been disrupted by Prodata’s conduct in these proceedings.

2    The respondents are the South Australian Fire and Emergency Services Commission (SAFECOM) and SMS Consulting Group Ltd.

3    There are now three interlocutory applications before the Court:

(1)    Prodata’s interlocutory application filed on 1 July 2020 for an order under r 1.34 of the Federal Court Rules 2011 (Cth) dispensing with the requirement that a corporation not proceed in the Court other than by a lawyer (imposed under r 4.01(2) of the Rules) so as to permit the company to be represented by its Managing Director Mr David Mifsud.

(2)    SMS Consulting’s interlocutory application filed on 10 July 2020 for orders:

1.    That the proceedings be dismissed pursuant to Rule 5.23(1)(b)(i) of the Federal Court Rules 2011;

2.    In the alternative, an order that a step be taken within a specified time pursuant to Rule 5.23(1)(a) with the consequence that the failure to do so will result in the dismissal of the proceedings pursuant to Rule 5.21(a);

(3)    SAFECOM’s interlocutory application filed on 16 July 2020 for orders that:

1.    Pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 and s 37P of the Federal Court of Australia Act 1976 (Cth), the proceeding be dismissed in its entirety, with costs.

 2.    In the alternative to order 1:

a.    Pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 and s 37P of the Federal Court of Australia Act 1976 (Cth), the proceeding be stayed until further order.

  b.    The First Respondent is to have their costs thrown away in any event.

3.    In the further alternative to order 1, pursuant to r 5.23(1)(a) of the Federal Court Rules 2011 and s 37P of the Federal Court of Australia Act 1976 (Cth), the Applicant is to:

a.    engage a solicitor who must then file and serve a notice of acting in accordance with Part 11 of the Federal Court Rules 2011; and

b.    file and serve any affidavits upon which it intends to rely upon at trial, by 4.00pm on a date to be set by this Honourable Court.

4.    In default of compliance with order 3:

a.    the proceeding be dismissed in its entirety with immediate effect from the expiry of the time for compliance with order 3; and

  b.    the Applicant is to pay the First Respondent’s costs of the proceeding.

5.    In the event of compliance with order 3, the proceeding be listed for a case management hearing at a time convenient to this Honourable Court.

 6.    Such further or other order as this Honourable Court may deem fit.

4    The respondents’ applications follow Prodata’s failure to comply with an order for the filing of its lay affidavits. As a consequence of that failure the trial dates were vacated on 27 July 2020, because it would not have been possible to proceed to trial in a timeframe that would fairly enable the respondents to prepare their respective cases and other steps preparatory to trial to be completed. Those trial dates had been fixed nearly 12 months in advance. They were fixed at a time when the proceedings had been on foot for nearly two years.

5    There is presently no lawyer on the record for Prodata. The requirements of r 4.01(2) of the Rules were dispensed with for the limited purpose of permitting Mr Mifsud to argue the company’s interlocutory application of 1 July 2020. After the respondents’ applications were filed, Mr Mifsud confirmed that he had considered the consequences for Prodata should the orders on either respondents’ application been made. He confirmed that he did not seek the opportunity to engage a lawyer to represent the company for the purpose of defending those applications. I was and remain satisfied that Prodata has been afforded an adequate opportunity to obtain legal representation for the purpose of the hearing of the respondents’ applications and that it has elected not to do so. In the circumstances, r 4.01(2) was dispensed with for the additional purpose of permitting Mr Mifsud to defend the respondents’ applications on Prodata’s behalf.

6    Given the common issues, the respondents’ applications were heard concurrently with the resumed hearing of Prodata’s application.

THE UNDERLYING CONTROVERSY

7    On Prodata’s pleaded case, ESOTAS is comprised of a “front end” system (access to which is not restricted) and a “back end” system (access to which is restricted). Among other things, Prodata alleges that it is the owner of copyright subsisting in the source code for the front end component and in the “sql component code” for certain components of the back end.

8    ESOTAS is a database system that has been developed over time by Prodata in accordance with the terms of a software agreement with SAFECOM which has been renewed from time to time. The agreement contains provisions for SAFECOM to transition to an alternative supplier (transitional provisions) upon its expiry. Upon the expiry of the latest iteration of the software agreement, SAFECOM informed Prodata that it would not renew the agreement. SAFECOM had engaged a new software service provider, SMS Consulting. It has now developed a new software solution by which SAFECOM’s information (also known as State data) is sorted, organised and accessed.

9    Prodata alleges that SAFECOM infringed its copyright and breached obligations of confidence by (among other things) permitting SMS Consulting to access the back end of ESOTAS. More specifically, Prodata alleges that SMS Consulting and SAFECOM copied and adapted relevant software components of ESOTAS in the development and use of the replacement database, without Prodata’s permission. It alleges that the software components have since been used by third parties in the development of other information technology solutions for SAFECOM.

10    The respondents put Prodata to proof on its assertion that it is the owner of copyright subsisting in the relevant software components. They otherwise deny infringement and deny that they have breached any obligation of confidence, whether arising in equity or by reference to the software agreement. They rely on the terms of the software agreement, including the transitional provisions which, they say, permit certain forms of access to components of the ESOTAS system for the purpose of migrating SAFECOM’s data into a replacement database.

11    The resolution of critical factual issues in dispute will turn upon expert evidence. The questions of law include the construction of a commercial contract. The application of the software agreement (properly construed) to the facts is itself a question involving some complexity. Resolution of the dispute also turns to some extent upon the interpretation and application of the Copyright Act 1968 (Cth), particularly those provisions that affect the rights and liabilities of SAFECOM as an agent or instrumentality of the Crown in right of South Australia.

HISTORY OF THE PROCEEDINGS

12    The following history is drawn from the Court record and from that part of the affidavit evidence that is uncontentious.

13    The action was commenced by originating application filed on 7 December 2017. At that time Prodata was represented by Piper Alderman Lawyers (the first lawyers).

14    The originating application included a claim for urgent interlocutory relief in the form of injunctions restraining the respondents from certain uses of ESOTAS. Orders were sought truncating the time for service of initiating documents on the respondents so as to enable the application for injunctions to be heard and determined as a matter of priority.

15    On 12 December 2017 I made orders with interim injunctions expressed to remain in force until 4pm on 20 December 2017. Among other things the orders restrained SMS Consulting from certain dealings with what was then described as “Prodata’s ESOTAS system” for the short period necessary to enable the respondents to prepare evidence in opposition to the interlocutory injunctions sought by Prodata. Argument on Prodata’s application for interlocutory relief then proceeded over two days, during which Prodata’s claim for relief changed in significant respects.

16    The application for urgent interlocutory relief was dismissed on 21 December 2017. Oral reasons were given, in light of the urgency of the application and the time of the year. The parties were provided with a written transcript when it became available.

17    In the months that followed, the parties filed pleadings and amended pleadings. On 27 July 2018 Counsel then appearing for Prodata told the Court that Prodata did not expect to call many lay witnesses and that its key witness would be Mr Mifsud.

18    Rule 4.04(1) provides that if a party terminates a lawyer’s retainer and a new lawyer is appointed to represent the party, the new lawyer must file a notice of acting. On or around 21 August 2018, Prodata filed a notice in accordance with that rule. It stated that Xenophon Lawyers (the second lawyers) had been appointed to represent Prodata. New Counsel were briefed.

19    By orders made on 2 November 2018 Prodata was required to provide the respondents with security for costs in addition to security it had already provided by way of irrevocable bank guarantees: see Prodata Solutions Pty Ltd v South Australian Fire and Emergency Services Commission [2018] FCA 1665. The total value of the security provided is $175,000 in respect of SAFECOM and $155,000 in respect of SMS Consulting.

20    On 29 April 2019, the parties were directed to notify each other of the categories of documents in respect of which discovery was sought on or before 5 August 2019. That deadline was later extended to 20 September 2019.

21    On 2 August 2019 Prodata filed a “Notice of acting – change of lawyer” in accordance with r 4.04(1). It stated that Prodata had appointed Arnotts Technology Lawyers Pty Ltd (the third lawyers) to represent it. New Counsel were briefed.

22    On 20 September 2019, Prodata filed an application for discovery. Only a part of that application was ultimately pressed.

23    By an order made on 26 September 2019, the matter was set down for trial commencing on 31 August 2020 with four weeks set aside. The trial dates were later varied so as to commence one week later than originally scheduled. The trial dates were agreed by Prodata’s Counsel. There was no suggestion that Prodata could not prepare for trial within eleven months, the proceedings then having been on foot for nearly two years. Indeed, Counsel for Prodata enquired whether the Court could accommodate earlier trial dates.

24    Also on 26 September 2019, it was ordered that evidence-in-chief at the trial of the action was to be adduced by affidavit. The Court expressly prompted the parties to “commence the preparation of their affidavits now” notwithstanding that there were some outstanding disputes as to pleadings and discovery. The Court emphasised the importance that the parties attend to the preparation of their cases on the evidence and not wait until the resolution of those disputes before commencing that work. Prodata’s discovery application together with competing applications for orders for the trial of separate issues were set down for hearing.

25    On 4 December 2019 I made orders for discovery reflecting the parties’ agreed position on some issues and the rulings I had made in the resolution of argument on the remainder. I made further orders identifying the separate questions to be tried in accordance with r 30.01 of the Rules: see: Prodata Solutions Pty Ltd v South Australian Fire and Emergency Services Commission (No 2) [2019] FCA 2051. I made a further order that the trial (then set down to commence on 31 August 2020) was limited to a trial on certain issues, which included the respondents’ liability.

26    On 12 December 2019, Counsel then appearing for Prodata told the Court that Prodata would send minutes of order to the respondents with a view to progressing the matter to trial.

27    In February 2020, the COVID-19 pandemic affected the work of the Court so as to necessitate (with some exceptions) proceedings to be conducted by way of web conference. It may reasonably be presumed that the pandemic disrupted the practice of the legal profession, especially in its early weeks. At times, the pandemic affected the ability of Mr Mifsud to have face to face meetings with the third lawyers who were situated interstate.

28    By late February, Prodata had not provided the respondents with proposed minutes of order as it said it would do, nor did Prodata approach the Court for orders progressing the matter to trial. At that time, it did not approach the Court to report any difficulties it was experiencing in preparing its case for trial for reasons related to the COVID-19 pandemic or otherwise.

29    By letter dated 25 February 2020, SAFECOM’s lawyer took the initiative and wrote to Prodata’s lawyer proposing a timetable for the filing of evidence to progress the matter to trial more generally. SAFECOM’s proposal was that Prodata file its lay evidence on or before 5 June 2020, then more than three months away. In a brief response, Prodata’s lawyer said that he was seeking instructions and that he should be in a position to respond within seven days. SAFECOM’s lawyer responded by letter the following day, relevantly in the following terms:

With respect, the applicant is the moving party and has primary responsibility for carriage of this matter. At the last occasion before the Court, on 12 December 2019, senior Counsel for the applicant indicated that scheduling orders would be proposed to the respondents. Over two and a half months later, this has not occurred. In the circumstances, it is not apparent that any reasonable explanation for this default could exist.

The first respondent has proposed orders having regard to the duty imposed on all parties and their lawyers under s 37N of the Federal Court Act 2011 [sic]. In seeking instructions, I request that this obligation, and the consequences of non-compliance, be specifically brought to the applicant’s attention. Noting Mr Arnott’s indication that a response may take up to seven days, the first respondent reserves its right to bring this matter to the attention of the Court in the context of any necessary application, including as to costs.

30    In response, Prodata’s lawyer stated that Prodata was considering the proposed timetable. The response then asserted that the discovery SAFECOM had provided was “woefully inadequate”. No particulars of that allegation were given. The email stated that the lawyer was in the process of preparing a list of documents Prodata had “expected to receive” through the discovery process.

31    Two weeks later, Prodata’s lawyer wrote to SAFECOM’s lawyer, repeating the allegation that SAFECOM’s discovery was “woefully inadequate”. The particulars of that allegation were very brief. They were coupled by an assertion that “it is not our client’s obligation to list all missing documents nor is it possible for our client to do so”. The letter stated that until discovery was complete, Prodata would not be in the position to “determine the scope for any expert witness report and nor will it be in a position to finalise its lay evidence”. The letter demanded provision of the “missing documents” as a matter of urgency. The lawyer effectively refused to “work with” SAFECOM to finalise the proposed scheduling orders until the “missing documents” were provided.

32    There followed an exchange of letters in which the lawyer’s for Prodata and SAFECOM debated the sufficiency of SAFECOM’s discovery.

33    On 1 April 2020, Prodata’s lawyer wrote to the lawyer acting for SMS Consulting. The letter alleged that the discovery given by SMS Consulting was “woefully inadequate”. That was first time that Prodata had complained of the sufficiency of discovery provided by SMS Consulting.

34    At the respondents’ request the matter was set down for a case management hearing on 17 April 2020. Two days before that hearing, Prodata filed an application for discovery directed to both respondents. On the face of that application it was unclear whether Prodata was seeking discovery over and above that which had previously been ordered, or whether it was alleged that the respondents had not complied with the orders the Court had previously made.

35    At the case management hearing, Counsel then appearing for Prodata submitted that the matter should not be programed to a trial until interstate travel restrictions and limitations on the use of physical court facilities occasioned by the COVID-19 pandemic were lifted. It was submitted that the location of the third lawyers in New South Wales meant that they could not meet with Mr Mifsud in person and so experienced difficulties preparing Prodata’s lay affidavits for trial. The lawyer did not bring forward any form of orders by which the matter could proceed. Counsel did not explain how the trial dates could be maintained, nor did Counsel apply to have the dates vacated.

36    The Court gave oral reasons for rejecting Prodata’s proposal (such as it was). The Court expressed its expectation that Prodata progress the matter to trial, in words to the following effect:

(1)    the Court did not accept that Mr Mifsud’s inability to have a face to face meeting with his interstate lawyers was an acceptable explanation for any real delay in the preparation of the applicant’s lay evidence, although it did accept that the pandemic had created some inconvenience and practical difficulties for the work of legal practitioners;

(2)    the trial date had been set some time ago;

(3)    the Court expected that the affidavits of all of the parties would already be under preparation and near completion;

(4)    it was for Prodata to prosecute its case and to propose a form of orders as to how the matter should proceed;

(5)    it was unsatisfactory that Prodata had not approached the Court with a proposed timetable to progress the matter for hearing toward the scheduled trial dates;

(6)    Prodata should expect that when the timetable was set, the Court may require the lay affidavits to be filed within a week of the orders being made;

(7)    it was unsatisfactory that Prodata had not raised any perceived deficiency with SMS Consulting’s discovery until 1 April 2020;

(8)    the discovery application did not specify whether it was alleged that either respondent was in breach of the orders for discovery the Court had made in the previous December;

(9)    Prodata should address that deficiency because the Court would take a different attitude to evidence of non-compliance with an existing discovery order than it might to an application for additional discovery, given the extent of argument the Court had previously heard in advance of the discovery orders;

(10)    Prodata was reminded of its obligations as a litigant and its attention was expressly drawn to s 37M of the Federal Court of Australia Act 1976 (Cth) (FCA Act); and

(11)    the work undertaken by Prodata’s lawyers in the coming fortnight should reflect the matters the Court had emphasised that day.

37    Prodata’s discovery application was set down for hearing on 14 May 2020 and a case management hearing was set down for 1 May 2020. At that case management hearing the Court made orders progressing Prodata’s discovery applications to a hearing and scheduling the matter more generally to the commencement of the trial. They included an order requiring Prodata to file its expert evidence by 22 May 2020 and its lay evidence by 19 June 2020. The parties were ordered to confer about the manner in which evidence about the content and operation of ESOTAS could be displayed to the Court in the course of the trial. Counsel for Prodata did not submit that the timeframe for the filing of lay affidavits was burdensome.

38    On 14 May 2020 Counsel for Prodata advised the Court that it did not press the discovery application against SMS Consulting, that it withdrew that application and that it consented to an order that it pay SMS Consulting’s costs. Counsel sought an adjournment of the hearing of the discovery application against SAFECOM. Counsel confirmed that neither discovery application alleged that the respondents were in breach of the Court’s previous discovery orders, but rather what had been sought was discovery over and above what had previously been ordered. Counsel informed the Court that it would not be pressing the Court for orders in terms of those sought on the application against SAFECOM. It was accepted that none of the orders for additional discovery sought on that application would yield the additional material Prodata hoped to obtain. Counsel said that Prodata was discussing with SAFECOM the voluntary provision of additional documents. I will refer to those documents as the Emerald files.

39    The application for discovery orders against SAFECOM was dismissed because Prodata was no longer pressing for any of the orders originally sought on it. Costs of that application were subsequently ordered against Prodata.

40    Following a case management hearing on 19 May 2020 consent orders were made for SAFECOM to give discovery of the Emerald files. At that time, Prodata accepted that it was appropriate for a script of instructions to be run over the Emerald files, having the effect of making the data in the files readable and preserving data confidential to SAFECOM. However, the parties remained at odds as to the content of that script (and hence the extent of information to be produced in readable form). Given that there was some potential for a dispute on that limited issue, it was ordered that any further application for discovery was to be made on or before 2 June 2020. The Court again emphasised that Prodata’s evidence should be prepared on the basis of the material that had been discovered. Counsel for Prodata did not suggest at that hearing that the deadline for filing lay affidavits (then a month away) could not be achieved.

41    On 2 June 2020, the third lawyers sent an email to my Associate attaching minutes of order for discovery, together with two supporting affidavits that had been filed in support. The email is now marked MFI-1. Excel spreadsheets supporting that discovery application were also lodged for filing. The effect of that application was to seek an order that the Emerald files, voluntarily discovered and produced by SAFECOM, be produced again in a manner that would contain more readable information. The email sent to my Associate on 2 June 2020 did not contain any suggestion that the completion of Prodata’s lay evidence within the ordered timeframe was dependent upon the provision of any further documents by either respondent. Rather, the documents were said to be required for the completion of an expert report. An affidavit of Prodata’s expert (filed on the same day) confirms that the expert intended to prepare a supplementary report and that he was awaiting the outcome of Prodata’s latest discovery application before that could be done. That approach is consistent with earlier reminders to the parties that expert reports should be filed within the ordered timeframe notwithstanding that there might be outstanding discovery disputes, with some provision for the filing of supplementary reports should additional discovery orders be made and additional documents obtained.

42    On 8 June 2020, Prodata lodged for filing a document titled “Notice of termination of lawyer’s retainer” purportedly in accordance with r 4.04(2) of the Rules. It stated that Prodata had “terminated the retainer of Arnott’s Technology Lawyers Pty Ltd in the proceeding and has not appointed another lawyer” to represent it. The notice was signed by Mr Mifsud. It is defective because it was filed by a person other than a lawyer (see r 11.02) without any order having been made to dispense with the requirement in r 4.01(2).

43    On 10 June 2020 my Associate corresponded with the parties, under my direction, in the following terms:

Dear parties,

I refer to the Notice of Termination filed by the applicant in this proceeding.

Justice Charlesworth has asked that I draw the applicant’s attention to r 4.01(2) of the Federal Court Rules.

Justice Charlesworth has directed that I not respond to the applicant’s email correspondence of 2 June 2020 until such time as the rule is either satisfied or dispensed with.

44    That email is now marked MFI-2. It was sent to the email address for Mr Mifsud as provided on the notice of 8 June 2020. Mr Mifsud replied in terms to the effect that he was attending urgently to the matter.

45    Approximately one week later, Prodata filed a “Notice of acting – change of lawyer”. It stated that Wallmans Lawyers (the fourth lawyers) had been engaged to represent Prodata in the proceedings. New Counsel were briefed.

46    At a case management hearing on 24 June 2020, Senior Counsel appeared for Prodata. Counsel explained that he had only been briefed in the past 24 hours. Counsel acknowledged that Prodata was in breach of orders for the filing of lay evidence. Counsel said his instructions were limited to seeking a “pause of the time” in which the lay affidavits should be filed. Counsel said he did not have instructions to seek an extension of time for Prodata to comply because he could not state an alternate timeframe in which compliance could realistically be achieved. Counsel sought a period of three weeks in which to file any application seeking orders varying the timetable. Counsel foreshadowed that Prodata may file further applications relating to discovery and an application relating to alleged breach by a respondent of an undertaking. No explanation was given at that hearing as to why the third lawyers had been terminated at a time so proximate to the deadline for the filing of Prodata’s lay affidavits.

47    Counsel again confirmed that an expert report filed on behalf of Prodata was for trial purposes. Counsel said that the expert had referred to the possibility of another expert report, and that this should be understood as foreshadowing another report on the basis of additional material Prodata had sought by way of a further application for discovery. Given the absence of evidence or explanation for Prodata’s default of the order that it file its lay affidavits by 19 June 2020, and given the limited instructions of Counsel, I made no orders extending the time for Prodata to comply with the order, with the result that Prodata remained in default.

48    On 30 June 2020, Prodata filed a notice purportedly in accordance with r 4.04(2) of the Rules. It stated that Prodata had terminated the retainer of Wallmans Lawyers and had not appointed another lawyer to represent it. It provided an address for service, being the company’s address. The email address provided is that of Mr Mifsud. Mr Mifsud subsequently filed the interlocutory application dated 1 July 2020 by which Prodata asks the Court to dispense with the requirement that it proceed by way of a lawyer.

49    After argument commenced on that application, and with the consent of the parties, the respondents’ interlocutory applications were set down for hearing and argument and the three interlocutory applications were heard together. At the conclusion of the hearing, the Court vacated the trial dates, all parties acknowledging that even if Prodata were now to file its lay affidavit evidence, a fair alternative schedule progressing the matter to trial on those dates would not be possible.

50    Prodata did not make any application before the expiry of the ordered deadline to have the deadline or the trial dates revoked or varied. To date, it has not suggested a date by which its lay affidavits can or should be filed, whether or not it is permitted to be represented by a non-lawyer in the proceedings. Prior to the vacation of the trial dates, it did not propose any alternate schedule of orders so as to ensure that the trial dates could be maintained or to otherwise minimise any delay in the commencement of the trial.

AFFIDAVIT EVIDENCE

51    Prodata relies on two affidavits sworn by Mr Mifsud. The first affidavit is to the following effect:

(1)    Mr Mifsud has a background in mechanical engineering and computer science.

(2)    He terminated the services of the third lawyers “due to significant differences I held in relation to the conduct of the matter”.

(3)    Mr Mifsud “formed the considered view that it would not be in the best interests” of Prodata for the third lawyers to continue to represent it, and that it would be in the company’s best interests for him to represent the company “personally” in light of his “own close personal knowledge” of its case.

(4)    Mr Mifsud engaged the fourth lawyers on 17 June 2020 having become aware of the requirement in r 4.01(2) of the Rules.

(5)    It was necessary to terminate the fourth lawyers’ retainer on 30 June 2020 because “there was insufficient time for [the fourth lawyers] to both obtain a sufficient understanding of the matter and review the significant discovery that had been made, allow me to meet the Court timetable, and progress the applications I believed necessary for the proper prosecution of the Applicant’s case” and because the fourth lawyers were “unable to secure the services of suitable Counsel” to represent Prodata at the trial.

52    Mr Mifsud’s second affidavit is to the effect that:

(1)    On 24 January 2020 Mr Mifsud travelled to meet with the third lawyers about the conduct of Prodata’s case. The preparation of Prodata’s lay evidence was included (as item 8) on an agenda for the meeting.

(2)    Prodata’s delay in filing its lay evidence should not delay the trial “given the expert witness submissions and replies have been lodged with the court”.

(3)    Prodata’s past delays in the conduct of the proceedings had been modest, the respondents had been granted extensions and the parties had been courteous in their correspondence about Court deadlines.

(4)    Prodata was unable to file its lay evidence on time because of:

(a)    SAFECOM’s resistance to produce material requested by Prodata’s expert;

(b)    SAFECOM’s resistance to the proposal Prodata had advanced for displaying ESOTAS in the courtroom during the trial;

(c)    the termination of the third lawyers’ retainer, “due to significant differences I held in relation to the conduct of the matter” and because of matters contained in a letter Mr Mifsud had emailed both respondents on 10 June 2020 at a time when Prodata was not represented by a lawyer (explained below).

(5)    SAFECOM’s interlocutory application was “conduct unbecoming of a model litigant”.

(6)    Prodata did not change legal representation to gain a strategic benefit, its change in legal representation had not delayed the trial or provided any benefit to Prodata, and it was not Prodata’s intention to delay the trial.

(7)    Prodata has proposed a reasonable solution for displaying ESOTAS in the courtroom that should not cause an unreasonable burden on SAFECOM.

(8)    He had “dedicated my time entirely to this case” and Prodata’s staff had also invested very considerable time to extract and prepare material for the trial, including the development of a document handling system, and he could not have done any more “to prepare or present material including reviewing thousands of emails and documents to meet deadlines and respond to the respondents’ requests over the past two and a half years”.

(9)    SAFECOM had “withheld evidence” requested by Prodata’s expert.

(10)    He believed Prodata had a strong case and had asserted that case in correspondence to the respondents.

(11)    He believed that SMS Consulting had breached the terms of an undertaking given to the Court in December 2017 in the context of Prodata’s application for urgent interlocutory relief.

(12)    He referred to communications between Prodata and the Crown Solicitor’s Office apparently in the course of negotiating the terms of the software agreement in 2014 which Prodata says is sufficient proof that it is the owner of copyright in the relevant software components of ESOTAS.

(13)    The respondents had refused to communicate with him directly until Prodata was granted leave to be represented by a non-lawyer in the substantive action.

53    Mr Mifsud referred to an email sent to my Associate on 15 July 2020, attached to which was an incomplete and unsworn affidavit. That email is now marked MFI-3. The email was relied upon by Mr Mifsud to show that he had commenced the task of preparing Prodata’s lay affidavits. It has been read for that limited purpose.

54    The affidavit evidence of SAFECOM and SMS Consulting provide some details of the history of the proceedings and the correspondence passing between them and Prodata as narrated above.

SUBMISSIONS

55    In submissions, Mr Mifsud said that the email of 10 June 2020 and certain attachments show that Prodata is entitled to summary judgment against both respondents. He submitted that correspondence from the Crown Solicitor’s Office dated 11 September 2014 confirmed that Prodata is the owner of copyright subsisting in the software.

56    Mr Mifsud acknowledges that the retainers of the first, second, third and fourth lawyers were each terminated by Prodata and not by the lawyers themselves. He submitted that with his qualifications and experience he was the person who was best placed to cross-examine the respondents’ expert witnesses and to explain the technical aspects of Prodata’s case to the Court. He was critical of the manner in which he perceived Counsel had performed on Prodata’s application for urgent interlocutory relief at the commencement of the proceedings.

57    Mr Mifsud made a number of additional factual assertions in the course of submissions that were not supported by evidence.

58    He asserted that his former lawyers had not followed his instructions and that they “would not allow me to present the facts”. He asserted that he could not find a set of lawyers who would take on the case “given the volume of work and the time that’s needed”. He asserted that the only way to “present the facts” was for Prodata to be represented by him. He said that he had had “fallings out” with the first, second and third lawyers because of “differences of opinion” about how Prodata’s lay evidence should be “presented”. He said that none of the lawyers was prepared to put before the Court a letter of 2014, which he says is proof of Prodata’s ownership of the copyright in the relevant software components. He said “no one lawyer, other than the fourth lawyers, were prepared to do that and, instead, pushed down different paths”. He asserted that Prodata had a strong case in respect of both copyright ownership and infringement. He asserted that he was “not like my opponents who have got endless pockets and all the time in the world”. He asserted that dismissal of Prodata’s originating application would have financial ramifications not only for the company but for its other clients, because Prodata would no longer be able to support the other clients’ information systems. I understand this aspect of Mr Mifsud’s submissions to include a contention that dismissal of the proceedings would cause Prodata to become insolvent such that it could not continue to service the needs of its existing client base.

59    Mr Mifsud submitted that the parties’ rights and obligations under the software agreement was “a very simple thing, not a legal thing”.

60    Mr Mifsud submitted that even if he were required to engage a lawyer, there would remain a “whole number of other matters that we would deal with first” including “the adjournment” and foreshadowed proceedings for contempt arising from the respondents’ alleged breach of the 2017 interim injunction.

CONCLUSIONS OF FACT

61    There is no evidence concerning Prodata’s financial position. The company has not asserted financial impecuniosity as a basis for seeking to be represented by a non-lawyer in the proceedings, nor is impecuniosity advanced as an explanation for the failure to file the lay evidence on time. Mr Mifsud’s intimation that dismissal of Prodata’s claim would affect third parties has no support in the evidence before me and I reject it.

62    There is no evidence to support Prodata’s assertion that its delay in filing its lay affidavits is explained by any insufficiency in either respondents’ discovery. Having previously asserted that each respondents’ discovery was “woefully inadequate”, Prodata filed an application for further discovery which it did not ultimately press. Moreover, it expressly acknowledged that it did not allege that either respondent was in breach of the orders for discovery made in December 2019. The discovery application was dismissed against SAFECOM and withdrawn against SMS Consulting, in each case with costs. SAFECOM has since consented to give discovery of the Emerald files. Whilst Prodata has made an application for the Emerald files to be produced in a different way, the Court has previously made it plain that the parties’ lay affidavits should be prepared and filed irrespective of whether there are outstanding disputes on matters such as discovery. Correspondence and argument concerning discovery in these proceedings has been extensive and costly. Throughout 2019, the parties exchanged and proposed categories of documents, many of which were disputed. Those categories that were unable to be agreed formed the subject matter of detailed argument in December 2019. Nothing in the email correspondence of 2 June 2020 provides a satisfactory explanation for Prodata’s failure to complete and file its lay affidavits within the ordered timeframe.

63    Had the course to trial not been disrupted by the termination of the third and fourth lawyers’ retainers and the failure to file lay affidavits, the application for orders sought by the email of 2 June 2020 would have been set down and determined on its merits whilst other steps preparatory to trial were undertaken. If the latest discovery application succeeded and additional documents obtained, that might have formed the basis for an application to file supplementary affidavit material. It has not otherwise been shown that Prodata has a legal entitlement to the production of the Emerald files in the manner it presses for. The associated assertion that the respondents have “withheld evidence” is rejected.

64    Nor am I able to accept the assertion that the respondents’ “resistance” to Prodata’s proposal for displaying or demonstrating the ESOTAS system at trial is in any way causally connected with Prodata’s decision to terminate the retainers of the third and fourth lawyers or with its failure to file its lay evidence on time. The parties may reasonably differ in their views as to the best way to demonstrate the software components in the course of the trial, however Prodata has not explained how those differences bear on the content of its lay affidavits or the timing of their completion. To the extent that the parties were at an impasse about the best procedure for demonstrating ESOTAS at trial, Prodata has made no application for orders to resolve it.

65    It has not been suggested that Prodata was unaware of the Court’s express reminders about the importance of attending to the task of preparing its case for trial, including the express reminder that Prodata commence work on its affidavits in late 2019. In circumstances where it ought to have been unnecessary, the Court drew Prodata’s attention to s 37M of the FCA Act in April 2020. SAFECOM had earlier drawn the third lawyers’ attention to Prodata’s duty under s 37N of the FCA Act in February 2020. It requested that the lawyers remind Prodata of its duty and the consequences of its breach. Mr Mifsud has not alleged that Prodata’s defaults are explained by ignorance of the company’s duties as a litigant in the proceedings. Nor has he submitted that the company was unaware of the Court’s powers under s 37P of the FCA Act such that it would be unfair or unjust for the powers to be exercised. In the absence of evidence, there is no basis to find that any one of the multiple legal practitioners engaged by Prodata failed to inform the company of its obligations in these proceedings.

66    Against that background, it is necessary to ask why Prodata terminated the third and fourth lawyers’ retainers at such a critical time in the proceedings given the disruptive consequences of those decisions for the orderly conduct of proceedings.

67    I am prepared to accept that at the time that the third lawyers’ retainer was terminated, Mr Mifsud assumed that he would be entitled to represent Prodata in the proceedings as a non-lawyer and that he subjectively perceived that arrangement to be in the company’s best interests. I infer that Mr Mifsud was ignorant of the requirement in r 4.01(2) at that time. However, that ignorance could not have persisted following Mr Mifsud’s receipt of the email from my Associate of 10 June 2020 expressly drawing his attention to the Rule.

68    The agenda for a meeting between Prodata and the third lawyers in late January 2020 evidences an awareness of the need to attend to the task of preparing the lay affidavits. However, it is otherwise uninformative as to what work, if any, had been undertaken as at that date. There is no other evidence before me as to what progress (if any) the third lawyers had made toward the completion of Prodata’s lay affidavits at the time that their retainer was terminated. It is significant that Mr Mifsud has not suggested that the third lawyers had failed to attend diligently to the task. Rather, the asserted reason for terminating the third lawyers’ retainer was a difference of opinion as to how Prodata should present its case. There is insufficient evidence to make any finding as to the nature or extent of that difference, nor as to why (if at all) it was perceived to be irreconcilable, nor as to when the difference first became apparent to Mr Mifsud. It appears that Mr Mifsud was at least frustrated that the third lawyers did not share his views about the correspondence dated 2014 that he asserts should provide a complete answer to the question of copyright ownership. But even if that be the case, it has not been explained why the lay affidavits could not have included that document, together with any depositions explaining its significance.

69    I find that at the time the third lawyers’ retainer was terminated, it was Mr Mifsud’s intention to commence and complete the task of preparing Prodata’s lay affidavits and to make a series of interlocutory applications on Prodata’s behalf. I find that he made that decision to maximise Prodata’s prospects of succeeding at the trial, as he perceived them to be. I find that he was dissatisfied with the course his successive lawyers had taken in the proceedings and in the preparation of Prodata’s case and perceived it desirable to change course three months before the trial was due to commence.

70    Prodata’s reasons for terminating the services of the fourth lawyers requires separate consideration. The suggestion that the retainer was terminated because the lawyers could not familiarise themselves with Prodata’s case in time to comply with the Court’s deadline is curious: the deadline was impending when the third lawyers’ retainer was terminated and it had passed when Counsel retained by the fourth lawyers attended the case management hearing on 24 June 2020. Consistent with its obligations under s 37N of the FCA Act, it was for Prodata to equip the fourth lawyers as a matter of urgency with all of the documents and instructions it required so as to enable the lawyers to make an informed application for orders revising the timetable progressing the matter to trial. As at 24 June 2020, it was possible that the trial dates might have been maintained under a revised schedule, notwithstanding Prodata’s earlier default and notwithstanding that the fourth lawyers had been retained less than three months before the trial was scheduled to commence.

71    That possibility was lost when Prodata terminated the fourth lawyers’ retainer without having made any application to vary the time by which its lay affidavits should be filed. No such application has ever been made by Prodata.

72    The termination of the fourth lawyers occurred in circumstances where Mr Mifsud knew that Prodata had no automatic entitlement to proceed other than by a lawyer and when he knew that Prodata’s lay affidavits were not complete.

73    It is significant that Mr Mifsud does not allege that he had any difference of opinion with the fourth lawyers of the kind that he alleges affected his relations with Prodata’s three previous lawyers.

74    The assertion that the fourth lawyers could not find suitable counsel is unaccompanied by any detail. Even if there were such difficulties, that of itself that could not provide any justification for the termination of the fourth lawyers’ retainer. Prodata’s chances of finding available counsel could only have diminished further with the termination of the fourth lawyers’ retainer. No application to vary the trial dates was made on the basis that suitable counsel could not be found.

75    There is no evidence to support a finding that any one of the four successive lawyers or any one of the multiple counsel briefed by them have failed to discharge the duties they owed to Prodata. Nor is there evidence to support a finding that the legal advice they have provided to Prodata about the conduct of its case has been discovered by Prodata to be incorrect or otherwise deficient. Mr Mifsud’s broad assertions that the lawyers did not follow instructions or did not “allow him to present the facts” are devoid of detail.

76    Whilst Prodata is entitled to maintain a claim of legal professional privilege in relation to confidential communications between it and its successive lawyers, the practical reality is that there is insufficient evidence to support the broad assertion that Prodata’s lawyers “did not follow instructions” of a kind they were obliged under their respective retainers to follow. The lawyers’ paramount duty was to the Court. As such, they were not obliged to follow any and all instructions. Accordingly, even if Mr Mifsud’s assertion that the lawyers did not follow instructions was to be accepted at face value, absent additional evidence that circumstance could not assist Prodata to show that it has a satisfactory explanation for its failure comply with the critical order for filing lay affidavits.

77    In the course of argument on these applications, Mr Mifsud gave no firm indication as to when Prodata’s lay affidavit evidence would be ready to be filed. However, in an email to my Associate of 15 July 2020 (marked MFI-3), Mr Mifsud provided a copy of a partially completed trial affidavit. As I have said, that document was provided to demonstrate the progress Mr Mifsud had made in preparing his own affidavit as at that date (being more than a month following the termination of the third lawyers and two weeks following the termination of the fourth lawyers). The draft largely extracts content of documents that would ordinarily speak for themselves. There is no evidence as to the additional material to be included, no evidence as to what further work must be done for its inclusion or how long the additional material might take to prepare. In submissions on 27 July 2020, Mr Mifsud acknowledged that the task was considerable. However, he did not claim that he terminated the third lawyers’ retainer because he was mistaken at that time about how long it would take for him to prepare the lay affidavits without the assistance of a lawyer.

78    As to the submission that Prodata has a strong case against the respondents, it is neither necessary nor possible to make any findings as to the relative strength of the parties’ cases, whether as to questions of copyright ownership or any other issue. Even if it were appropriate to conduct that exercise, there is no lay affidavit evidence filed by Prodata that would permit a proper assessment of the prima facie merits of its claim to be made. I accept that Mr Mifsud genuinely perceives that he has a strong case against both respondents, that he believes himself to be the best person to advance the company’s interests in the litigation and that he proposes to make a series of interlocutory applications to achieve that objective.

79    Having regard to all of the material before me, I conclude that the principal reason for Prodata terminating the fourth lawyers’ retainer is Mr Mifsud’s firmly held and continuing conviction that Prodata’s prospects of succeeding at trial would be improved if it were not represented by any lawyer at all. I find that the decision was made in the knowledge that the deadline for filing the lay affidavits had passed and that the lay evidence was not at all near completion. I find that Mr Mifsud considered it to be in Prodata’s best interests to make a series of interlocutory applications, although the nature and proposed timing of those applications is not entirely clear. Aside from foreshadowed proceedings in contempt and an application for summary judgment (apparently to be based on the 2014 correspondence), the contention that there was a “whole number of other matters that we would deal with first” has not been furnished with detail.

80    Mr Mifsud has not shown that there is a pressing issue requiring determination prior to the trial that could justify the delay in filing its lay affidavits or the vacation of the trial dates. His stated intention to cause Prodata to file a number of interlocutory applications, and his failure to state when the lay affidavits will be filed, cannot be easily reconciled with his assertion that the disruption to the trial timetable and the vacation of the trial dates was not intended. I conclude that the vacation of the trial dates followed as a natural consequence of Prodata’s choice to adopt a different strategy toward trial to that which had been previously adopted on its behalf by its former lawyers.

POWERS AND PRINCIPLES

81    In civil proceedings before this Court, directions may be given about the practice and procedure to be followed, including directions setting time limits for the doing of any thing: FCA Act, s 37P(2), s 37P(3)(a) and (b). If a party fails to comply with a direction, the Court may make such order or direction as it thinks appropriate including an order dismissing the proceeding in whole or in part: FCA Act, s 37P(5) and (6)(a). The powers of dismissal in s 37P(5) and (6) of the FCA Act do not affect any power the Court has apart from those subsections to deal with a party’s failure to comply with a direction.

82    A like power is contained in r 5.23 of the Rules. It provides that if an applicant is in default, a respondent may apply to the Court for an order that a step in the proceeding be taken within a specified time (r 5.23(1)(a)), or that the proceeding be (relevantly) dismissed for the whole or any part of the relief claimed by the applicant, either immediately or on conditions specified in the order (r 5.23(1)(b)). For the purposes of that rule, a party is in default if the party fails to (relevantly) comply with an order of the Court or prosecute the proceedings with due diligence:  r 5.22(b) and (d).

83    Rule 4.01(2) provides that a corporation must not proceed in the Court other than by a lawyer, and, as a corollary, r 11.02 provides that a notice for address for service for a corporation must be filed by a lawyer. Rule 1.34 confers a discretionary power to dispense with those requirements:  the discretion is to be exercised judicially. It is not necessary to demonstrate that exceptional or special circumstance exist before the requirement in r 4.01(2) can be dispensed with: Pharm-a-Care Laboratories Pty Ltd v Commonwealth of Australia (No 12) [2012] FCA 289. However, a sufficient reason should nonetheless be shown for departing from the usual position stated in the rule.

84    Section 37P, r 1.34, and r 5.23 each form a part of the Court’s practice and procedure provisions. They must be interpreted and exercised in a way that best promotes the overarching purpose, namely to “facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible”: s 37M(1). The overarching purpose includes the objectives in s 37M(2). They are:

(a)    the just determination of all proceedings before the Court;

(b)    the efficient use of the judicial and administrative resources available for the purposes of the Court;

(c)    the efficient disposal of the Court’s overall caseload;

(d)    the disposal of all proceedings in a timely manner;

(e)    the resolution of disputes at a cost that is proportionate to the importance and complexity of the matters in dispute.

85    The parties and their lawyers have a duty to conduct the proceeding in a way that is consistent with that overarching purpose: FCA Act, s 37N.

86    In Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720; 369 ALR 299 Beach J said (at [82]), of the power to dispense with the requirement that a company proceed through a lawyer:

Generally speaking the Court should be cautious before permitting a non-lawyer to appear and represent a corporation, but the guiding principle is the attainment of justice. The discretion conferred by r1.34 is to be exercised by reference to all relevant considerations. In the present context there are a range of matters which bear upon the exercise of the discretion (Basetec Services Pty Ltd v CPB Contractors Pty Ltd (formerly Leighton Contractors Pty Ltd) [2017] FCA 510 at [8] per White J), including:

(a)    the financial capacity of the company and those standing behind it; in this respect, the identity of the shareholders and the spread of the shareholding is relevant;

(b)    the capacity of the proposed representative to conduct the case effectively having regard to the skills, qualifications and experience of that representative;

(c)    in assessing the capacity of the proposed representative, whether they have any real understanding of Court processes and whether they have any language difficulties which may impede their effective conduct of the case;

(d)    the complexities of the case; for example, if the proceeding involves difficult questions of law, leave may not be granted;

(e)    whether the overarching purpose prescribed by s37M of the Federal Court of Australia Act 1976 (Cth) would be promoted by the grant of dispensation;

(f)    whether a lack of disciplinary measures available against the proposed representative may affect the administration of justice;

(g)    the manner in which the case has progressed to date and the manner in which it may progress without the company having legal representation; and

(h)    whether the proposed representative is also a witness and, if so, whether they will properly be able to conduct the case of the company whilst also being a witness.

87    See also Flightdeck Geelong Pty Ltd v All Options Pty Ltd [2020] FCAFC 138.

88    Putting aside subpara (e), I agree that the considerations listed by Beach J in Southcorp Brands are relevant to the exercise of the power to dispense with the requirements in r 4.01(2) and r 11.02 of the Rules.

89    The powers to be exercised on the present application are each discretionary in their nature. The respondents’ alternate applications give rise to a discretion in the different sense that there is a choice between alternative sources of power. As Gleeson CJ, Gaudron and Hayne JJ observed in Coal and Allied Operations Pty Ltd v Australian Industrial Relations Commission (2000) 203 CLR 194 at [19]:

‘Discretion’ is a notion that ‘signifies a number of different legal concepts’. In general terms, it refers to a decision-making process in which ‘no one [consideration] and no combination of [considerations] is necessarily determinative of the result’. Rather, the decision-maker is allowed some latitude as to the choice of the decision to be made.  …

(footnotes omitted)

90    Both textually and logically, the question of whether the exercise of a power in a particular way would “best promote” the overarching purpose is a test that assumes the existence of that latitude as its starting point. In order for the command in s 37M to have any utility, the “overarching purpose” must be understood as conveying a singular objective that is capable of being best promoted by a decided outcome, relative to other outcomes that might otherwise be open to the Court were it not for the enactment of s 37M(1). As such, I do not consider it appropriate to characterise the requirement in s 37M(1) as a consideration capable of being outweighed by other countervailing considerations. Nor is it to be understood as merely listing a variety of countervailing factors to be weighed in the balance in the exercise of the power in question. Rather, s 37M(1) conditions the manner in which all powers conferred by the Court’s practice and procedure provisions are to be interpreted and exercised. It confines the latitude that might otherwise be available to the Court in the exercise of those powers:  given a choice between outcomes, the Court must choose the outcome that best promotes the overarching purpose. The task of identifying the manner of exercising a power that “best promotes” the overarching purpose involves evaluative elements, but the task itself is mandatory. And the Court must exercise its powers according to the outcome of it.

91    The phrases “just resolution of disputes according to law” and “the just determination of all proceedings before the Court” are to be interpreted in that context and in a way that is harmonious with other elements of the overarching purpose. They must also be interpreted in a way that can be reconciled with s 37P of the FCA Act, conferring as it does a power to dismiss a proceeding in the event of a party’s failure to comply with a procedural order of the Court if the judge thinks appropriate. The very existence of that power contemplates a circumstance where it may be appropriate (and therefore just) to dismiss an originating application other than on its substantive merits and without first conducting a trial. As the High Court emphasised in AON Risk Services Australia Limited v Australian National University (2019) 239 CLR 175, the question of what is “just” is not to be answered solely by reference to the interests of the applicant party in a civil proceeding, nor is the question to be answered solely by reference to whether prejudice caused to another party by the Court’s orders or indulgences can be compensated with an award of costs. The word “just” in s 37M and s 37N of the FCA Act should be interpreted accordingly.

92    AON Risk Services concerned the exercise of a discretion to allow an amendment of a statement of claim on the third day of a four week trial, so occasioning the vacation of the trial dates. For the amending party it was argued that to disallow the amendment would be to shut it out from raising an arguable case. The amending party relied on what Dawson, Gaudron and McHugh JJ said in Queensland v JL Holdings Pty Ltd (1997) 189 CLR 146 at 154 and 155:

Case management is not an end in itself. It is an important and useful aid for ensuring the prompt and efficient disposal of litigation. But it ought always to be borne in mind, even in changing times, that the ultimate aim of a court is the attainment of justice and no principle of case management can be allowed to supplant that aim.

…

Justice is the paramount consideration in determining an application such as the one in question. Save in so far as costs may be awarded against the party seeking the amendment, such an application is not the occasion for the punishment of a party for its mistake or for its delay in making the application. Case management, involving as it does the efficiency of the procedures of the court, was in this case a relevant consideration. But it should not have been allowed to prevail over the injustice of shutting the applicants out from raising an arguable defence, thus precluding the determination of an issue between the parties.

93    Their Honours said that there was nothing in an earlier case of Sali v SPC Ltd [1993] HCA 47; 116 ALR 625 to suggest that principles of efficient case management “might be employed, except perhaps in extreme circumstances, to shut a party out from litigating an issue which is fairly arguable”: at 154.

94    All members of the Court in AON Risk Services held that the discretion of the primary judge to allow the amendment and adjourn the trial had miscarried. In their joint judgment, Gummow, Hayne, Crennan, Kiefel and Bell JJ disapproved of the reliance the primary judge (and the intermediate Court of Appeal) placed on the statements of Dawson, Gaudron and McHugh JJ in JL Holdings. Their Honours said:

94    It will be recalled that in JL Holdings the plurality said that nothing in Sali v SPC suggested that principles of case management might be employed ‘except perhaps in extreme circumstances, to shut a party out from litigating an issue which is fairly arguable’. Their Honours said that case management was not to be seen as an end to itself and that the ultimate aim of the court remained the attainment of justice, even in changing times. In Gale v Superdrug Stores Plc Millett LJ expressed a similar concern, regarding the need to ensure that justice is not sacrificed. Waller LJ, delivering the judgment of the Court of Appeal in Worldwide Corporation Ltd v GPT Ltd, said that such a concern did not pay sufficient regard to the fact that the courts are concerned to do justice to all litigants. Where a party had had a sufficient opportunity to plead his or her case, it may be necessary for the court to make a decision which may produce a sense of injustice in that party, for the sake of doing justice to the opponent and to other litigants.

95    The statement of Waller LJ identifies a fundamental premise of case management. What may be just, when amendment is sought, requires account to be taken of other litigants, not just the parties to the proceedings in question. The statement is consistent with what was said in Sali v SPC, which reflected a proper understanding of case management. The statements in JL Holdings do not reflect such an understanding and are not consistent with what was said in Sali v SPC. To say that case management principles should only be applied ‘in extreme circumstances’ to refuse an amendment implies that considerations such as delay and costs can never be as important as the raising of an arguable case; and it denies the wider effects of delay upon others.

95    French CJ said (at [5]):

whatever costs are ordered, there is an irreparable element of unfair prejudice in unnecessarily delaying proceedings. Moreover, the time of the court is a publicly funded resource. Inefficiencies in the use of that resource, arising from the vacation or adjournment of trials, are to be taken into account. So too is the need to maintain public confidence in the judicial system.

96    Section 37M of the FCA Act is cast in terms that are similar (but not the same as) s 7 and s 9 of the Civil Procedure Act 2010 (Vic). In Rozenblit v Vainer (2018) 262 CLR 478 the High Court considered the application of those provisions to the exercise of a power under r 63.03(3) of the Supreme Court (General Civil Procedure) Rules 2015 (Vic) to stay proceedings, on the condition that the stay would be lifted if an order for costs was satisfied. On the facts of that case, the practical effect of the stay was to bring the proceedings to an end because the affected appellant was impecunious and could not satisfy the requirement that he pay the costs. Allowing an appeal from the affected litigant, Kiefel CJ and Bell J summarised the principles to be applied on an application for a stay of proceedings (as to which see Cox v Journeaux (No 2) (1935) 52 CLR 713 at 720). Their Honours continued:

10    The fundamental principle to which Dixon J referred in Cox v Journeaux is that, generally speaking, a person is entitled to submit a bona fide claim for determination by the courts. A litigant is entitled to a determination unless to allow the claim to proceed would amount to an abuse of process or would clearly inflict unnecessary injustice on the party seeking the stay, in which case the proceeding should be halted.

11    It does not follow from the continuing acceptance of this fundamental principle that the right or entitlement of a person to initiate an action is to be understood to be at large. In Batistatos v Roads and Traffıc Authority (NSW) it was pointed out that any such entitlement is subject to the operation of the applicable procedural and substantive law administered by the courts. In Aon Risk Services Australia Ltd v Australian National University it was observed that it is more accurate to say that parties have the right to invoke the jurisdiction and the powers of the courts in order to seek a resolution of their dispute.

23    It is necessary when considering whether to make any order, including an order for a stay, to give consideration to the overarching purpose of the CPA and the means by which it might be achieved. But the stated purpose of the CPA, ‘to facilitate the just, efficient, timely and cost-effective resolution of the real issues in dispute’, is more readily identified with the manner in which a dispute is to progress to its ultimate resolution by the court. It does not speak directly to the possibility that a dispute might not be determined at all.

(footnotes omitted)

97    In separate reasons, Keane J said:

41    It has long been accepted that an order for costs in favour of a party adversely affected by the manner in which litigation is conducted may be a necessary means of preventing injustice resulting from the consequences of incompetence or inefficiency falling short of deliberate harassment or the pursuit of a collateral purpose on the part of an opposing litigant. The decision of this Court in Aon Risk Services Australia Ltd v Australian National University was a reminder that inefficiency or incompetence in the conduct of litigation may unjustly burden the other parties to the litigation, and the administration of justice itself. That decision made it clear, to the extent that clarity was necessary, that orders for costs will not always be sufficient to prevent injustice occasioned by inefficiency or incompetence in the conduct of litigation. The broader point for which Aon Risk is presently relevant is that injustice in the conduct of litigation cannot be justified by invoking the interests of justice.

42    Litigation is sufficiently stressful and expensive for all concerned without the unnecessary aggravations of additional cost, stress, distraction and delay occasioned by inefficiency, incompetence or sheer disregard of the rules. To the extent that the contention advanced on behalf of Mr Rozenblit reflects an assumption that inefficiently or incompetently conducted litigation, and the waste in terms of time and money inflicted upon the other party or parties, is nevertheless consistent with the promotion of access to justice because the end may ultimately justify the means, that assumption must be rejected. Inefficient or incompetent conduct of litigation may cause injustice even if it is not intended to do so. Litigation that is conducted inefficiently, incompetently or in disregard of the rules by one party is no less oppressive to the other party because it is not intended to be oppressive. And it is no less oppressive because the litigant who engages in such conduct is impecunious.

(footnotes omitted)

98    His Honour went on to say that where it was accepted that the failure to pay costs was due simply to recalcitrance on the part of the litigant, it may be expected that a stay of the proceedings commenced by the litigant may readily be granted (at [43]). His Honour’s conclusion recognises that a proceeding may be dismissed other than on its merits if that outcome is a consequence of choices made by the litigant in the conduct of the proceedings.

99    Gordon and Edelman JJ said:

72    Batistatos, like Gao, recognises that in the exercise of the power to stay a proceeding – regardless of whether that power appears in a specific rule or is to be found in the inherent power of the court – it is necessary to have regard to the consequences of such an order. The consequence of a stay, whether a permanent stay or even a seemingly temporary stay, is serious; it ‘shuts a party out of court’. That consequence demonstrates the gravity of an exercise of the power, and the need for the existence of proper grounds for its exercise. Proper grounds include, but are not limited to, the institution of proceedings for an improper purpose, as well as proceedings that are frivolous, vexatious or oppressive. It is unnecessary and undesirable to lay down a hard and fast definition as to what constitutes proper grounds.

…

108    The court’s task in considering what is necessary to ensure that there is ‘justice between the parties’ is both retrospective and prospective. The court must assess the likely conduct of the parties, and any injustice that may arise if the matter were to proceed, rather than solely the past conduct that could be said to fall for condemnation. …

100    The High Court did not consider the extent to which this Court’s powers were defined or confined by s 37M of the FCA Act, nor did the High Court posit any rule that would be dispositive of the outcome of any one of the three interlocutory applications now to be decided. Just as there is no hard and fast definition as to what constitutes proper grounds for the stay of a proceeding, there is no hard and fast definition of what constitutes proper grounds for proceedings to be dismissed under s 37P of the FCA Act or r 5.23 of the Rules.

RESOLUTION

Prodata’s application

101    In the ordinary course I would not permit Prodata to be represented in the proceedings by Mr Mifsud. In my view, the factors to which Beach J referred in Southcorp weigh against dispensation with the usual rule, especially the circumstance that Prodata is the applicant party in commercial litigation that has been on foot since December 2017. I am not satisfied that the matter could progress in an orderly way if the burden of preparing and conducting Prodata’s case at trial were placed on a single individual, having regard the nature and volume of the evidence expected to be adduced.

102    I give considerable weight to Mr Mifsud’s status as a critical witness, his lack of legal training, the timing of the application, the volume of evidentiary materials (exceeding that with which a single person may efficiently deal whilst acting at the same time as counsel and witness) and the circumstance that there is no apparent financial impediment to Prodata engaging competent legal representation.

103    Whilst I accept that Mr Mifsud subjectively and genuinely believes the interests of the company to be best served by dispensation of the rule, that of itself would not justify the further delay, expense and inconvenience caused by Prodata continuing in the conduct of its case other than by a lawyer.

104    Consideration of the respondents’ applications will proceed from the footing that if the proceedings were to remain on foot, Prodata must be represented in the proceedings by a lawyer. However, it does not follow that the matter will progress in an orderly way toward a new trial date. The new lawyers could not proceed without the instructions of Prodata by its managing director Mr Mifsud, and the Court could not prevent the lawyers from terminating their retainer if the relationship between them and Prodata proved to be unworkable. I consider there to be a high likelihood that if the matter were to remain on foot, Prodata would instruct the lawyers to file the interlocutory applications it has foreshadowed (albeit vaguely) at the hearing of these applications. I also consider it likely that Prodata would again perceive itself to have irreconcilable differences with its lawyers as to the preparation and presentation of its case, as has occurred in respect of three of its four previous lawyers.

The respondents’ applications

105    The past conduct of Prodata is not to be examined merely as an indicator as to what might happen in the future should the proceedings remain on foot. Rather, the past conduct assumes significance because, as will be explained, it shows that Prodata has made deliberate choices not to avail itself of a fair opportunity to progress its substantive claims to trial and that its conduct has created an unjust circumstance in the proceedings that is irremediable by an award of costs.

106    Before proceeding further, it is necessary to identify the particular facts or circumstances that enliven the powers of dismissal upon which the respondents rely. On that question, I do not consider the alternative powers in s 37P(5) of the FCA Act and r 5.23(1)(b) of the Rules to be materially different. It is convenient to proceed under r 5.23(1)(b).

107    It may be said that Prodata is “in default” for the purposes of that rule because it did not comply with the order for the filing of its lay affidavits. More broadly, I am satisfied that Prodata has not prosecuted its case diligently, given its:

(1)    failure to promptly apply to the Court to vary the deadline upon it becoming apparent that the deadline could not be met;

(2)    failure to file the lay affidavits within the ordered time;

(3)    failure to advance an alternative timetable to schedule the matter toward the trial dates or to propose alternative trial dates.

108    There is a connection between the default and Prodata’s decisions to terminate the retainers of the third and fourth lawyers within three months of the trial. Termination of the third lawyers’ retainer had the consequence that the lay affidavits would not be filed on time and so gave rise to a significant risk that the trial dates would not be achieved. Termination of the fourth lawyers’ retainer occurred in circumstances where Mr Mifsud knew that Prodata did not have an automatic entitlement to conduct the litigation other than through a lawyer, and had the consequence that any remaining chance of achieving a revised timetable to trial was lost. The disruption in the proceeding is the result of Prodata’s choices.

109    The history of the litigation summarised earlier in these reasons is relevant to the exercise of the discretion, as it necessarily informs the search for any satisfactory explanation for the default as I have described it.

110    The Court is accustomed to exercising its powers in a way that accommodates difficulties, disadvantages or unexpected events of an infinite variety, affording an affected party’s circumstances appropriate weight having regard to all of the circumstances of the case. However, in this case, the default is not explained by circumstances beyond the defaulting party’s control. It is not explained by impecuniosity or other financial disadvantage. It is not explained by any mistaken estimates of the work to be done, nor by the late discovery of critical evidentiary material. It is not explained by deficiency in language, nor by any mental or physical incapacity of key personnel. It is not explained by the default of the four sets of lawyers of a kind that might work an injustice if the default were to be attributed to Prodata. It is not explained by any practical difficulties or inconvenience caused by the COVID-19 pandemic. The pandemic may be have been raised as justification for some delay in April and May 2020, but it is not now relied upon by Prodata as the reason for its default. The default is not explained by ignorance of s 37M or s 37N of the FCA Act, nor by any prior representation to Prodata that non-compliance with the Court’s orders would be ignored or tolerated. No satisfactory explanation has been provided.

111    Counsel for SMS Consulting invited the Court to infer that the delay and disruption in the proceedings had the same consequence as that described by the plurality in AON Risk Services at [101]:

In Ketteman Lord Griffiths recognised, as did the plurality in JL Holdings, that personal litigants are likely to feel the strain more than business corporations or commercial persons. So much may be accepted. But it should not be thought that corporations are not subject to pressures imposed by litigation. A corporation in the position of a defendant may be required to carry a contingent liability in its books of account for some years, with consequent effects upon its ability to plan financially, depending upon the magnitude of the claim. Its resources may be diverted to deal with the litigation. And, whilst corporations have no feelings, their employees and officers who may be crucial witnesses, have to bear the strain of impending litigation and the disappointment when it is not brought to an end. The stated object in the Court Procedures Rules, of minimising delay, may be taken to recognise the ill-effects of delay upon the parties to proceedings and that such effects will extend to other litigants who are also seeking a resolution in their proceedings.

(footnotes omitted)

112    Whilst all of that may be accepted as a matter of principle, I do not consider the strain of the proceedings on the officers of either respondent to be a factor that would justify the dismissal of the proceedings in and of itself. This is a commercial dispute between a corporation on one side and a government entity and another corporation on the other. Adversarial litigation of this kind is inherently stressful. The ill effects of the disruption caused by Prodata’s default must be distinguished from the ill effects of the litigation per se. As French CJ said in AON Risk Services, there is an irreparable element of unfair prejudice in unnecessarily delaying proceedings. The prejudice is all the more heightened when the delay under consideration has in fact occurred as the consequence of a party’s default (as in this case) as opposed to delay being the prospective and avoidable consequence of the exercise of the Court’s discretion in a particular way (as in AON Risk Services itself).

113    I give some weight to the circumstance that SMS Consulting is a public company and that an entity in its position may bear a contingent liability on its books. At the time of the scheduled trial, that state of affairs would have persisted for some 33 months and there is now no reliable indication of how much longer that will go on.

114    The respondents have the benefit of security for their costs in amounts that are greater than that usually ordered. However, in my view, to ask whether the respondents might have the benefit of the satisfaction of an order for costs thrown away forms only one part of a larger question. Whether money can address the problem created by Prodata’s conduct in the proceedings is not the test posed by s 37M of the FCA Act. The problem created by Prodata’s default is of a somewhat different nature.

115    I have also had regard to SAFECOM’s status as an agent or instrumentality of the Crown in right of South Australia with the consequence that the irrecoverable costs incurred by it in the proceedings are an expense to be borne by the public and not by any particular individual. However, there is no suggestion that SAFECOM has taken advantage of any disparity in financial resources between the parties. The case is essentially a commercial one, turning on the terms of an agreement for the provision of IT services to the South Australian government. There is no reason in principle to extend Prodata any greater tolerance for its defaults in this commercial litigation merely because one of its opponents (being a former client) is a government entity.

116    I give no weight to Prodata’s submission that correspondence from the Crown Solicitor’s Office sent to it in 2014 is determinative of the question of copyright ownership and infringement, such that it is entitled to summary judgment. It may reasonably be inferred that the legal effect of that correspondence was a subject over which Prodata’s opinions diverged from those of its first three lawyers. The full letter is not before the Court, however I consider Prodata’s prospects of succeeding on an application for summary judgment by reference to it to be very slim indeed. There was no reliance on a single letter when Prodata first commenced the proceedings by way of its application for urgent interlocutory relief. Prodata has been in the position to apply for summary judgment from the outset of the proceedings, but has not done so. On the pleaded cases, the rights and obligations of the parties are defined by the terms of the software agreement, not upon correspondence sent in the course of negotiations for its latest iteration. The letter may well be admissible at trial, but it has not been shown that it answers the question of whether the respondents were authorised by the software agreement to do acts that would otherwise infringe Prodata’s copyright.

117    As to Prodata’s interests, the dismissal of the originating application other than on its substantive merits would have serious consequences for the company in at least three respects.

118    First, the substantive rights asserted in the originating application will not be determined and so may not be enforced against the respondents. In this case the asserted rights in question include rights comprised in the copyright subsisting in a literary work said to be of considerable commercial value.

119    Second, expenses incurred by Prodata in the conduct of the proceedings to obtain an adjudicated outcome will have been wasted. It is a reasonable assumption in this case that Prodata’s own costs in conducting the proceedings to date, via four sets of lawyers, have been very considerable.

120    Third, in the ordinary course the dismissal will provide a factual and legal foundation for an order that Prodata pay the respondents’ costs. In the event of an adverse order for costs, the respondents may access the money paid into the Court by Prodata or otherwise enforce securities given by Prodata in other forms. Whilst questions of costs are yet to be decided, I take into account the usual rule that costs follow the event. For the purposes of the present applications I will assume (without deciding) that an adverse costs order against Prodata is likely.

121    It is necessary to ask whether it would be unfair or unjust for the serious consequences of a dismissal to follow from Prodata’s failure to diligently prosecute the proceedings, having regard to all of the circumstances of the case.

122    In my view, when s 37M speaks of the just resolution of disputes, it speaks not merely of the resolution of the underlying controversy defined by (in this case) the pleadings, but also, more broadly, of the just progression of the matter to trial. The Court’s function of resolving a dispute is to be viewed as a single process, commencing with the initiation of the proceedings and concluding with the delivery of judgment. Provisions such as s 37P and r 5.23 recognise that a litigant’s entitlement to participate in a trial and ultimately to obtain judgment is not absolute and that the single dispute resolution process to which I have referred may be brought to an end before the commencement of a trial.

123    The Court’s practice and procedure provisions form the legal and practical mechanism by which the underlying controversy is to proceed fairly to trial. By exercising the powers conferred by these provisions, the Court discharges its obligation to afford procedural fairness to all of the parties at the pre-trial stage and (to the extent that they apply) at the trial stage. Prodata submitted to those provisions when it invoked the jurisdiction of the Court.

124    A litigant in Prodata’s position is not entitled to have the matter proceed to trial and to obtain an adjudicated outcome by whatever procedural means and in whatever timeframe the litigant desires. Rather, the litigant and the opposing parties are entitled to be afforded a fair opportunity to invoke the Court’s practice and procedure provisions and to be heard in relation to their exercise. Viewed in that way, an order that a prosecuting party take a step in the proceedings by a fixed date is to be understood as both permissive and coercive. It provides the party with an opportunity to progress the underlying dispute to trial. The opportunity presented by the order is conditioned by a requirement that the step be done within a timeframe, fixed fairly after hearing from the litigant.

125    Should a trial commence, the litigant is entitled to have the trial conducted in accordance with the law. The litigant must be afforded a fair opportunity to adduce evidence-in-chief, subject to such conditions affecting the mode of the trial that the Court may have lawfully imposed at the pre-trial stage, including a condition that evidence-in-chief be adduced by way of affidavit filed and served in advance of the trial.

126    The Court’s case management orders are not immovable. At all times, Prodata has been entitled to apply to have the orders varied. On any such variation application, it would be entitled to be afforded an opportunity to be heard, to adduce relevant evidence and to have the application determined on its merits and in accordance with the law. That was the legitimate means by which Prodata could secure more time to file its affidavits and perhaps a delay of the trial.

127    However, Prodata made no application to vary the case management orders, whether before or after the time for filing its lay evidence had passed. It made no application to vary the trial dates or the critical deadline for the filing of its non-expert evidence. It did not avail itself of that opportunity, notwithstanding that it has been represented by lawyers for the most part of the time since the proceedings were commenced in December 2017.

128    That factual context is critical when assessing the practical and legal effects of Prodata’s default: it is informative to ask what would have occurred had Prodata adopted the legitimate course and sought a variation of the Court’s orders so as to avoid non-compliance with the order that it file its lay affidavits on time before the date for compliance had passed.

129    Had that occurred, there could have been no reason in fact or principle to extend the time for the filing of Prodata’s lay affidavits or to vacate the trial dates in the absence of a satisfactory explanation for the delay and in the absence of any reasonable estimation of time required for the completion of the task. On any reasonable view, it would not be unjust to refuse any such application (if it were made), given the history of the litigation I have described earlier in these reasons.

130    It is relevant to consider the nature and purpose of the order for filing lay affidavits. The order was the procedural mechanism by which Prodata was to put the respondents on notice of the evidence-in-chief it proposed to adduce at trial. It is to be considered against the Court’s earlier order (common in this Court) conditioning the manner in which Prodata’s evidence–in-chief was to be adduced and so affected the mode of the trial. Prodata would not be entitled to adduce evidence-in-chief other than by affidavit, except with the leave of the Court. In the absence of a satisfactory explanation for failing to file affidavits in accordance with the Court’s order, it would not be an unjust outcome for leave to be refused. Provided that Prodata had been given a fair opportunity to prepare and present its case that would not be an unjust outcome, no matter how serious the forensic consequences for the presentation of Prodata’s case.

131    As an inevitable result of Prodata’s default, the trial dates in this matter were vacated, not on Prodata’s application but on the Court’s initiative. That was done not to afford procedural fairness to Prodata but to ensure that the judicial and administrative resources of the Court could be utilised by litigants who were waiting for their cases to be heard. For the seven months in which those trial dates were set down, the trials of other causes in the docket of the trial judge could not be set down for hearing before the trial judge over the four week trial period, later reduced to three. Over that time, calendars of the respondents, their witnesses, their legal representatives were all affected by the trial dates. It is reasonable to infer that the resources of all of them were diverted to its preparation in accordance with the ordered timeframes.

132    The practical consequence of the proceedings being permitted to remain on foot would be that Prodata would secure for itself by default, in both senses of the word, an extension of time to file its affidavits and a variation of the trial dates, in circumstances where it could not have obtained any such relief on the substantive merits, had it applied. It would be rewarded for a gross departure from the Court’s case management principles. The public’s confidence in the administration of justice in this Court would be seriously undermined.

133    Having regard to all of the circumstances, it is preferable to view Prodata’s conduct in the proceedings as constituting a choice not to avail itself of the opportunity it has been given to progress its own claims fairly to trial, perhaps because it assumed (wrongly) that it would be granted a further opportunity. If that be Prodata’s assumption, it is not one that has been induced by the Court or either of the respondents.

134    The Court’s power to dismiss the proceedings is not to be exercised for a punitive purpose. However, in an appropriate case, the power may be exercised in a way that visits upon a litigant the consequences of its own choices. I consider this to be such a case.

135    Consideration has been given to orders that may be made other than dismissal. One available course is to provide Prodata with a final opportunity to file its lay affidavits within a short period of time with a self-executing consequence of a dismissal should there be non-compliance. However, as I have said, Prodata has chosen not to avail itself of its earlier opportunity. The rules of procedural fairness do not require that it be afforded another. Apart from the rules of procedural fairness, the Court has the discretion to grant Prodata an indulgence. However, in the circumstances I have described above (and especially in the absence of a satisfactory explanation for the default), the overarching purpose would not be “best promoted” by adopting that course.

136    Presented with a choice between outcomes, the dismissal of the proceeding is a consequence that should follow if s 37M of the FCA Act is to be faithfully applied. I am satisfied that the overarching purpose would best be served by making the orders sought in paragraph 1 of each of the respondents’ interlocutory applications, so bringing an end to the proceedings against each of them.

137    Before the proceedings are finalised, Prodata should be afforded an opportunity to argue an application it has made for suppression and confidentiality orders. Mr Mifsud will be permitted to represent the company for that limited purpose. The dismissal of the originating application will take effect from the date that judgment is given on those applications.

138    I will hear the parties as to costs.

Associate:

Dated:    21 August 2020