Federal Court of Australia

University of New England v Boerner [2024] FCA 191

ORDERS

THE COURT ORDERS THAT:

1.    The prospective applicant have leave to amend its originating application in the form of the amended originating application by prospective applicant for order for discovery annexed to the prospective applicant’s interlocutory application dated 29 January 2024.

2.    Pursuant to r 10.44 of the Federal Court Rules 2011 (Cth), the prospective applicant have leave to serve the following documents (the Ancillary Documents) outside Australia:

(a)    the affidavit of Dr Stephen Paul Miller sworn 25 July 2023;

(b)    the affidavit of Dr Vinzent Boerner sworn 27 September 2023;

(c)    the affidavit of Dr Stephen Paul Miller sworn 11 October 2023;

(d)    a copy of these orders; and

(e)    a notice in accordance with r 10.43B.

3.    Personal service and service in accordance with the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters of the amended originating application and the Ancillary Documents on the second prospective respondent be dispensed with.

4.    Pursuant to r 10.24, the prospective applicant have leave to effect service of the amended originating application and the Ancillary Documents on the second prospective respondent by:

(a)    sending a scanned copy of the amended originating application and the Ancillary Documents by email to Professor Eskild Holm Nielson, Dean of the Faculty of Technical Sciences, Aarhus University, at the email address dean.tech@au.dk; and

(b)    sending a scanned copy of the amended originating application and the Ancillary Documents by email to K&L Gates (at the email address Jonathan.Feder@klgates.com) with a request that they forward the amended originating application and the Ancillary Documents to the second prospective respondent.

5.    By 5.00 pm on 8 March 2024, the prospective applicant serve the amended originating application and the Ancillary Documents on the second prospective respondent in accordance with order 4 above.

6.    Pursuant to r 10.24, upon the prospective applicant satisfying the terms of order 4 above, the amended originating application and the Ancillary Documents are to be taken to have been personally served upon the second prospective respondent.

7.    The second prospective respondent file a notice of address for service within 14 days after service in accordance with order 4 above.

8.    The case management hearing in respect of the originating application for preliminary discovery be fixed for hearing on a date in the week commencing 25 March 2024 that is convenient to the Registrar.

9.    Costs of the interlocutory application be reserved.

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

REASONS FOR JUDGMENT

Ex tempore, revised

WHEELAHAN J:

1    The prospective applicant, which is the University of New England (UNE), has commenced this proceeding against a former employee, Dr Boerner, seeking preliminary discovery of documents, including source code for software. UNE wishes to ascertain whether it has a right to obtain relief against Dr Boerner for breach of copyright, misuse of confidential information, breach of contractual terms, or breach of statutory obligations. One of the questions that UNE wishes to consider is whether software known as Linear mixed Models Toolbox, or “LMT”, that Dr Boerner claims to have developed using his own resources and those of Aarhus University in Denmark, reproduced source code for software known as “raceMule” that Dr Boerner developed for the Animal Genetics and Breeding Unit of UNE. UNE claims copyright and obligations of confidence over the code for the raceMule software. Dr Boerner denies that he used UNE’s resources, or its source code, to develop LMT.

2    The prospective respondent was at some stage employed by Aarhus University. There have been communications between the solicitors for the parties to this proceeding, and also direct communications between senior academic staff of UNE and Aarhus University. In addition, Dr Boerner has filed written submissions for the purposes of the hearing of the application for preliminary discovery. There are four features of those communications and Dr Boerner’s submissions that are relevant for present purposes. First, Aarhus University claims ownership of the LMT software, thereby contesting the capacity of Dr Boerner to give discovery of the source code to UNE. Second, in his written submissions, Dr Boerner claims that he would be in breach of obligations to Aarhus University if he produced documents on discovery without the permission of Aarhus University. Third, in direct correspondence to UNE, Aarhus University stated that “[s]hould there be a court decision from the Federal Courts [sic] of Australia that Aarhus University must hand over material related to the LMT software, the university will naturally participate willingly therein”. Fourth, Dr Boerner made an open offer to UNE to give preliminary discovery if Aarhus University was joined to the proceeding. As a result of these circumstances, the hearing of the application against Dr Boerner has been adjourned on two occasions to allow UNE to follow this course.

3    Between November 2023 and January 2024 correspondence took place between the solicitors for UNE and Aarhus University. A partner from the Melbourne office of K&L Gates acted on behalf of Aarhus University. It is unnecessary to refer to the detail of that correspondence. The upshot is that no agreement was reached between UNE and Aarhus University in relation to the subject matter of this application, and on 24 January 2024 K&L Gates advised that it did not have instructions to accept service of court documents on behalf of Aarhus University.

4    UNE now seeks three main orders. First, it seeks an order adding Aarhus University as a second prospective respondent to the proceeding. I consider that Aarhus University is a necessary party to the proceeding. That order is not opposed by Dr Boerner, and will be made. Second, UNE seeks leave under r 10.44 of the Federal Court Rules 2011 (Cth) to serve documents other than the originating application outside Australia. In the above circumstances, there is no reason why that leave should not be given, and I will make orders accordingly. The third order sought by UNE is an order for substituted service on Aarhus University by sending scanned copies of the documents including the originating application by email to the senior academic at Aarhus University with whom UNE has corresponded in relation to this proceeding, and to the partner at K&L Gates who has acted for Aarhus University. I will now turn to that application.

5    Division 10.6 of the Rules authorises service of initiating process in a country that is a party to the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, done at The Hague, Netherlands, on 15 November 1965 (Hague Convention). Denmark is a party to the Hague Convention. A solicitor for UNE deposes to the procedures for service in Denmark under the Hague Convention, and to a belief that service on Aarhus University is likely to take between three and six months. The evidence before the Court is that Denmark follows formal service as a method for serving legal documents in accordance with article 5 of the Hague Convention, which must occur via the Danish Ministry of Justice and a competent court of justice. Information about these procedures was set out in an extract from a website maintained by the Hague Conference on Private International Law. As for article 10(a) of the Hague Convention, which refers to service by postal channels, the information on the website is that while Denmark has not declared that it objects to this method of transmission, this does not imply that such method is valid service in Denmark, and the Danish courts have not yet had an opportunity to rule on the matter. I accept that in the face of this information, the prudent course for a practitioner acting for UNE, absent an order for substituted service, would be to pursue formal service, which would likely take three to six months.

6    UNE seeks an order for substituted service under r 10.24 on the ground that it is not practicable to serve the initiating process on Aarhus University in a way required by the Rules. The Court has power to make such an order in respect of service that would otherwise have to take place out of Australia under the Hague Convention pursuant to Div 10.6: see The Noco Company v Hong Kong Haowei Technology Co Ltd [2023] FCA 533 at [17] (Moshinsky J).

7    In Commissioner of Taxation v Caratti (No 2) [2018] FCA 1500, Colvin J at [10] addressed the condition necessary to engage r 10.24, namely that it is not practicable to serve a document on a person in a way required by the Rules –

The preponderance of authority is to the effect that the current rule requires the applicant for orders for substituted service to demonstrate that it is not sensible or realistic to effect personal service even though it may be possible or feasible to do so. This will usually be done by taking steps to effect personal service and providing evidence as to any difficulties that have arisen in doing so. It is not necessary to go so far as to demonstrate that there is an inability to effect personal service or that it would be extraordinarily difficult to do so. Further, there must be a proper evidential basis upon which to conclude that in all probability the mode of substituted service that is proposed will bring the relevant documents to the attention of the party to be served.

8    This is the context in which “not practicable” is to be evaluated. The term “not practicable” is also to be interpreted and applied in a way that best promotes the overarching purpose, which is to facilitate the just resolution of disputes according to law, as quickly, inexpensively, and efficiently as possible: Federal Court of Australia Act 1976 (Cth) s 37M. See, in the context of the corresponding New South Wales civil procedure legislation: Capral Limited v DNV AS [2024] NSWSC 96 at [59]-[62] (Nixon J).

9    In the particular circumstances of this case, which is a precursor to a potential claim for an ongoing breach of copyright where UNE proposes to seek injunctive relief, I am satisfied that it is not practicable to serve Aarhus University under the Hague Convention when regard is had to the delay that is likely to occur. Service under the Hague Convention would significantly increase the delay between the commencement of this proceeding seeking interlocutory orders for preliminary discovery and its determination, in a way that would not be consistent with the overarching purpose to which I have referred.

10    This brings me to the question whether the Court should exercise its discretion to authorise substituted service. The Court must exercise any power under the Rules in a way that best promotes the overarching purpose. I have considered the importance of the fact that div 10.6 of the Rules implements Australia’s obligations under the Hague Convention, and that it should not lightly be dispensed with. However, it is also relevant that the purpose underlying the Hague Convention is to give proper notice of legal proceedings: see Independent Liquor & Gaming Authority v Melco Resorts & Entertainment Limited [2022] NSWSC 294 at [53] (Ball J). In this case, the evidence is that UNE and its solicitors have corresponded with Aarhus University and its Australian solicitors in relation to this proceeding. There is no doubt on the evidence that Aarhus University has notice of the fact of the proceeding and the underlying issue that it raises. I do not consider that the purpose of the Hague Convention is likely to be undermined by making an order for substituted service which will further the overarching purpose under s 37M of the Act.

11    Finally, the solicitors acting for Dr Boerner sent an email to the Court advising that the application was neither consented to nor opposed, and drawing attention to three authorities: Lin v Google LLC [2021] FCA 1113 at [38] (Wigney J); Yemini v Twitter International Company [2022] FCA 318 at [5] (Mortimer J), and Hamilton v Meta Platforms, Inc (Service out of Jurisdiction) [2022] FCA 681 at [46]-[49] (Cheeseman J). In each of these cases an order for substituted service was refused on the basis that there was insufficient evidence that service in accordance with the Hague Convention was not practicable. I have come to a different conclusion on the evidence in this case.

12    I will hear counsel on the form of orders.

Associate:

Dated:    5 March 2024