Federal Court of Australia

Skildum-Reid v University of Queensland [2024] FCA 733

ORDERS

THE COURT ORDERS THAT:

1.    The amended originating application dated 22 November 2023 be dismissed.

2.    The prospective applicant pay the prospective respondents’ costs of and incidental to the application on the standard basis until 19 October 2023, and thereafter on an indemnity basis.

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

REASONS FOR JUDGMENT

DERRINGTON J:

Introduction

1    By an originating application dated 11 August 2023, the prospective applicant, Ms Kimberli Skildum-Reid, sought orders for preliminary discovery pursuant to rr 7.22 and 7.23 of the Federal Court Rules 2011 (Cth) (the Rules). It is not presently necessary to identify the relief sought in that originating application as, on the commencement of the hearing of this matter, an application was made to amend it. The application was not opposed and leave was granted. Subject to what is said below, it is now only necessary to refer to that amended document.

2    For reasons which will become apparent, it is appropriate to observe that the focus of the application evolved as the hearing progressed, and it often became difficult to ascertain which causes of action the prospective applicant sought to pursue, and as against whom. A consequence of the variation in the nature of the relief sought was that large parts of the written submissions filed prior to the hearing were rendered otiose or were relevant only in minor respects. Additionally, uncertainty arose in relation to the relevance of the material which was prepared well prior to the making of the amendments, with the result being that neither the material nor the content of the correspondence contained in it were directed to the issues as they had evolved. A further difficulty was that the relief sought in the amended originating application was partly dependent upon matters personal to the prospective applicant and the causes of action she hopes to pursue. For instance, under r 7.22, an issue is whether the prospective applicant is unable to know the identity of a prospective respondent. Similarly, pursuant to r 7.23, there are issues concerning what the prospective applicant reasonably believes about their rights to relief, the sufficiency of information they have, and the benefit they might derive from discovery. The result of the major changes to the foundation of the applications under rr 7.22 and 7.23 resulted in the material filed being inapt for the determination of issues such as these. In the result, the prospective applicant left it to the Court to make what use it could of the material filed for the initially drafted application, to determine a vastly different one. Ultimately, the application became somewhat shambolic.

Background

3    By her affidavit filed in support of the application, the prospective applicant identifies herself as being a corporate sponsorship consultant, advisor, speaker and author.

4    She claims that, over many years (and at least since 2006), she has presented at various workshops, at which she produced certain materials which will be referred to as “slides” or “slide decks” (a slide deck being a compilation of different slides, although they might now be properly described as PowerPoints).

5    The prospective applicant deposed that, in July 2023, following an internet search, she identified the use by others of the slides which she had used in the workshop presentations. In particular, she claimed that she found her work appearing in course materials produced by the first prospective respondent, the University of Queensland (the University). She identified 15 slide decks containing 79 instances of plagiarism which were utilised in two University courses, being “Event Sponsorship & Fundraising” and “Event Marketing, Sponsorship & Fundraising”.

6    In her supporting affidavit she annexed a schedule which sets out what she says are copies of her slides and those which appear in the University’s course materials.

7    It was not doubted in these proceedings that there is a similarity between the prospective applicant’s works and the slides appearing in the University’s materials. In some instances, the wording in each of the respective slides is identical. In other cases, the wording is changed in part or different words are used to mean the same thing.

Correspondence between the parties

8    In some respects, the content of correspondence passing between the parties assumes significance and it is necessary to set some of it out in detail.

9    By a letter of 10 July 2023, the solicitors for the prospective applicant, Matthew Sulman & Associates (Sulman), sent a letter to the General Counsel of the University’s Legal Servies team. In it, Sulman:

(a)    outlined the prospective applicant’s claim to copyright in certain materials;

(b)    asserted that substantial portions of the prospective applicant’s copyright works had been published by the University without authorisation for some considerable period;

(c)    asserted that the University had misappropriated the copyright works and was passing off those works as its own original works or those of its academic staff;

(d)    alleged, in particular, that the infringing works were used by a Dr Monica Chien (being the second prospective respondent in these proceedings) in delivering courses since at least 2019;

(e)    further alleged that the University had engaged in 121 separate instances of unauthorised uses of the prospective applicant’s copyright works and concluded that the University had been continuing to engage in a serious infringement of the prospective applicant’s copyright;

(f)    alleged that the University had plagiarised the prospective applicant’s work;

(g)    made the following allegation:

In addition to the egregious and blatant infringement of our client’s Copyright Works, our client considers the unauthorised use of the Copyright Works by the University without any accreditation or reference to her as author (in breach of her moral rights in the Copyright Works) to constitute plagiarism and serious academic misconduct on the part of the UQ staff members who have been responsible for delivering/presenting the UQ Courses.

(h)    alleged that the University’s conduct amounted to passing off, breaches of ss 18 and 29 of the Australian Consumer Law (being Sch 2 to the Competition and Consumer Act 2010 (Cth)), and serious breaches of the University’s trust and fiduciary duties;

(i)    made the following statement:

Our client has no qualms whatsoever in bringing the above matters to the attention of the press and governments who provide financial support to the University of Queensland. The behaviour is simply unacceptable and our client requires that it be redressed.

(j)    demanded that the University provide undertakings relating to the alleged inappropriate use of the alleged copyrighted material;

(k)    made the following statement:

We put you on notice that we shall be seeking full disclosure of the above documents in any subsequent legal proceedings and we caution your officers, staff and agents against destroying any relevant documents or financial records.

(l)    made the further following statement:

We also put you on notice that our client is seeking substantial financial compensation for the flagrant infringement of her intellectual property rights in the Copyright Works including for the period of infringement established by the supporting material and, should disclosure prove that the Copyright Works have been plagiarised and used without her authorisation for any period prior to 2019, for those additional periods. Such financial compensation will necessarily also take into account the passing off by the University of Queensland of her Copyright Works as its own and the misleading and deceptive conduct occasioned by the flagrant misrepresentation that the University of Queensland was somehow authorised to use our client’s Copyright Works or was endorsed by our client to do so.

(m)    asserted that the damages which the prospective applicant was entitled to would run into several hundreds of thousands of dollars and possibly more.

10    That correspondence attached a number of documents which purported to identify in which courses and in what documents the alleged infringements of copyright had occurred. That attachment extends a significant number of pages.

11    By a letter of 24 July 2023, Corrs Chambers Westgarth (Corrs), on behalf of the University, responded to the letter of demand from Sulman. In it, Corrs made the following assertions:

(a)    to the extent to which the same or similar wording to parts of the copyright works were used in the University’s material, there was no substantial part of the copyright works which was reproduced;

(b)    whilst some of the ideas expressed in the two presentations were similar, copyright protection was not afforded to the ideas in issue;

(c)    that many parts of the alleged infringing assertions were commonplace arrangements of ordinary words not giving rise to any literary work;

(d)    that, in any case, the University was permitted to copy and communicate any copyrighted works for educational purposes pursuant to the statutory licencing scheme for educational institutions; and

(e)    otherwise denied the existence of any claim against the University.

12    By a letter of 7 August 2023, Sulman responded to Corrs and refuted the denials of the University’s liability. In it, Sulman:

(a)    asserted that the University would be unable to rely upon a defence that the material which had been used in its courses had been independently prepared. This was based on a comparison undertaken by Sulman to demonstrate the correspondence between its client’s material and that used by the University. Indeed, the letter asserted that any defence based on a claim that the material was independently produced was “embarrassing”;

(b)    further asserted that the defence that the University might rely upon its statutory licence to defeat any claim for infringement could not succeed. Several reasons were given as to why that was believed to be so; and

(c)    made a request for information as follows:

G.     Request for documents

29.    We consider it necessary in order for our client to assess her rights (if any), against UQ that you indicate whether you are willing to provide the following:

(a)    All documents relevant to the preparation and completion of the UQ presentations.

(b)    The identity of the person or persons who prepared the UQ presentations.

(c)    All and any remuneration notices with respect to KSR’s Copyright Works.

30.    In this regard, we request your indication as to your willingness by Friday 11 August 2023 at 12 noon.

(Emphasis in original).

13    On 11 August 2023, the prospective applicant lodged an originating application which sought preliminary discovery of the documents listed in “Attachment A” pursuant to r 7.23, and an order pursuant to r 7.22 that the University identify the person or persons who authored those documents. The documents listed in Attachment A were as follows:

1.     All documents created and/or used by the Prospective Respondents or either of them in the slide presentations for the following courses conducted by the First Prospective respondent commencing from a 6-year period before the date of filing of this application:

a.     Event Sponsorship & Fundraising (EVNT3004).

b.     Event Marketing, Sponsorship & Fundraising (EVNT7052).

c.     Tourism and Event Sponsorship and Fundraising (TRVT3002).

2.     In this regard, the term “document” shall have the meaning attributed to that term in the Acts Interpretation Act 1901 (Cth) s 2B.

(Emphasis in original).

14    By a letter of 26 September 2023, Corrs, on behalf of the University, responded to Sulman in relation to the prospective applicant’s stated intention to make an application for discovery. Reference was made to the relief sought in the originating application and an offer was made to provide certain documents. The offer included the provision of copies of the presentations referred to in the prospective applicant’s affidavit which were alleged to have infringed her copyright — being those which were delivered since the commencement of the 2017 academic year, to the extent to which they were currently available, in the three courses named in Attachment A to the originating application. The University also offered to disclose its remuneration notices addressed to the Copyright Agency Limited and its remuneration agreements with the Copyright Agency Limited. However, the offer to provide those documents was subject to the prospective applicant giving an undertaking consistent with the principles in Hearne v Street (2008) 235 CLR 125 (Hearne v Street), such that the documents would not be used for any purpose not directly concerned with the conduct of the proceeding or the conduct of any subsequent proceeding by the prospective applicant against the University in connection with the subject matter of the proceeding. The letter then went on to assert that the prospective applicant could not satisfy the requirements of rr 7.22 and 7.23 of the Rules in relation to the orders sought in the originating application.

15    The offer in the letter of 26 September 2023 was rejected by the prospective applicant in a letter from Sulman to Corrs of 19 October 2023. First, it was stated that the prospective applicant refused to provide any undertaking consistent with the principles in Hearne v Street. Otherwise, it was asserted, amongst other things:

(a)    that the prospective applicant had a very strong case in relation to infringement of copyright based on the allegation that there had been substantial reproduction of each slide;

(b)    that, as a consequence of receiving the affidavit of Dr Chien, which had been served in response to the filing and serving of the application, the prospective applicant was concerned to ascertain whether the University and Dr Chien were the only contravenors;

(c)    that the prospective respondents’ reliance on the statutory licence defence was misconceived for a number of reasons; and

(d)    that the prospective applicant had an entitlement to rely upon r 7.23 because she satisfied the requirements of that rule.

16    At the commencement of the hearing, the prospective applicant sought to amend the originating application and leave was given for her to do so. By it, the relief sought under rr 7.22 and 7.23 of the Rules has been wholly reformulated. Now, in reliance on r 7.22, the prospective applicant seeks an order that each of the prospective respondents, being the University and Dr Chien, give discovery of documents which might lead to the ascertainment of other prospective respondents, being a former course co-ordinator of certain courses at the University and a person who gave a guest lecture in one of those courses. Pursuant to r 7.23, the prospective applicant seeks an order for discovery of a much wider scope of documents than that which appeared in the initial originating application. Whereas the original claim for discovery sought documents created or used within the six year period prior to the date of the application, the new relief is not so limited. She now seeks all documents used in, or created for, certain University courses, regardless of when they were created or used. In the case of Dr Chien, discovery was sought from 2009, apparently on the basis that she had deposed that this was when she had commenced at the University and had been given course materials to use, and the prospective applicant now claims that it is those materials which infringe her copyright.

17    In the course of submissions, the prospective applicant sought to justify the application for preliminary discovery on the basis that any material obtained from the University or Dr Chien might be passed on to the Australian Federal Police for consideration of use in prosecutions under the Copyright Act 1968 (Cth) (Copyright Act). That was consistent with the prospective applicant’s intention to use the material which she might obtain for purposes other than considering whether a civil action could or should be brought.

Application under r 7.22

18    Rule 7.22 is in the following relevant terms:

7.22    Order for discovery to ascertain description of respondent

(1)    A prospective applicant may apply to the Court for an order under subrule (2) if the prospective applicant satisfies the Court that:

(a)    there may be a right for the prospective applicant to obtain relief against a prospective respondent; and

(b)     the prospective applicant is unable to ascertain the description of the prospective respondent; and

(c)     another person (the other person):

(i)    knows or is likely to know the prospective respondent’s description; or

(ii)    has, or is likely to have, or has had, or is likely to have had, control of a document that would help ascertain the prospective respondent’s description.

(2)    If the Court is satisfied of the matters mentioned in subrule (1), the Court may order the other person:

…

(c)    to give discovery to the prospective applicant of all documents that are or have been in the person’s control relating to the prospective respondent’s description.

…

19    For the purposes of an application under this rule, the prospective applicant must establish that:

(a)    there may be a right for the prospective applicant to obtain relief against a prospective respondent;

(b)    the prospective applicant is unable to ascertain the description of a prospective respondent; and

(c)    another person either knows or is likely to know of the prospective respondent’s description or has, amongst other things, control of a document that would help ascertain the prospective respondent’s description.

20    It is not in doubt that, if the Court is satisfied of the matters in subparagraphs (a) to (c), it has a discretion as to whether to require discovery of the documents sought by the prospective applicant. The progenitor to r 7.22 was considered by the Full Court in Hooper v Kirella Pty Ltd (1999) 96 FCR 1 (Hooper v Kirella), where the following relevant discretionary factors, which remain applicable to r 7.22, were identified at 11 [33] – [34]:

33    Thirdly, the applicant is not required to demonstrate the existence of a prima facie case against the prospective respondent. Nonetheless, the power conferred by O 15A, r 3 is not to be used in favour of a person who intends to commence “merely speculative proceedings”. A material factor in the exercise of the Court’s discretion is the prospect of the applicant succeeding in proceedings against the person he or she wishes to sue.

34     Fourthly, the High Court has emphasised that an applicant under a rule in the form of O 15A, r 3 must show that the order sought is necessary in the interests of justice. That is, the applicant must show that: “the making of the order is necessary to provide him with an effective remedy in respect of the actionable wrong of which he complains.” These observations emphasise the link between identity discovery and the applicant’s complaint that he or she has suffered from an actionable wrong.

(Citations omitted).

Rule 7.22(1)(a)

21    The first requirement is that the Court be satisfied that there may be a right for the prospective applicant to obtain relief against a prospective respondent.

22    At the outset it is apt to identify that during the course of the application, the prospective applicant was required to make a significant change of tact in relation to several issues. The major one in relation to r 7.22 was the identity of the prospective respondents whom the prospective applicant hoped to identify and the causes of action in respect of which she wished to pursue. As originally formulated, the application relying on r 7.22 was fatally flawed. The material did not identify the relief which might be obtained from any prospective respondents other than the University and Dr Chien, whose identities were known.

23    By the amended application, the relief sought in reliance on r 7.22 was directed to the person or persons who had allegedly originally used the prospective applicant’s work in the creation of the course materials and who might have given them to Dr Chien. Those persons were said to be a course co-ordinator and a guest lecturer.

24    This resulted in some confusion and difficulty, not in the least because the material which had been filed by the prospective applicant was not directed to either of those proposed prospective respondents or any actions which might be pursued against them. As it ultimately transpired at the hearing, the claims which were said might arise were infringements of the prospective applicant’s moral rights existing under Pt IX of the Copyright Act, or an authorisation of moral rights infringements by the use of the course materials in later years by the University and Dr Chien. This change of direction necessitated the filing of further submissions on these topics subsequent to the hearing. This is considered later in these reasons.

25    A further issue encountered was that, as the application was originally drawn, the target of the relief under r 7.22 was the person or persons who created and/or used the allegedly infringing slide presentations in the six year period prior to the date of the filing of the application. The reference to the six year period was obviously an acknowledgment of the impossibility of claiming for any infringement which occurred prior to six years before the issuing of a proceeding. Inferentially, the targets were persons who created or used the alleged infringing material in contravention of s 36(1) of the Copyright Act in that six year period.

26    By Dr Chien’s affidavit filed in response to the originating application, it became clear that she had “inherited” the slides for the various courses when she commenced at the University in 2009. She deposed that:

When I commenced at the University in 2009, I received a version of these slide presentations from the previous course co-ordinator and a guest lecturer. Since that time, I have made some modifications to the information contained in the slides, synthesised information from various slides and updated the format of some of the slides. However, in doing so, at no time did I copy any material from Ms Skildum-Reid’s works.

27    It followed that the information in Dr Chien’s affidavit indicated that the only persons who might be found to have “used” the alleged infringing material in the relevant six year period were herself and the University. That was significant because it had the result that, had there been any previous doubt, the prospective applicant then knew the identity of the prospective defendants for the purposes of r 7.22(1)(b).

28    It was, perhaps, due to a realisation on the prospective applicant’s part that the original application for relief under r 7.22 would fail to produce any material, that leave was sought to rely upon the amended originating application. Although leave was given for the prospective applicant to file that amended document, it appears from the Court file that the opportunity to do so was not taken up, and no document meeting the description of an amended originating application appears there. Whilst it is likely that the leave given to file the amended document has lapsed, it is not inappropriate to work on the basis that the prospective applicant ultimately pursued her application on the terms of the amended document.

29    In terms, the relief sought in the amended originating application in reliance on r 7.22 was:

KIMBERLI DAWN SKILDUM-REID, the Prospective Applicant, applies under:

…

1.    Rule 7.22 of the Federal Court Rules 2011 (Cth) (FCR) for an order specifically under FCR 7.22(2)(c), that each of the Prospective Respondents give discovery to the Prospective Applicant of all documents that are or have been in the control of the Prospective Respondents (or either of them), identifying the description of the person or persons referred to in the affidavit of Monica Chien affirmed on 25 September 2023 and filed in the proceeding (the Chien affidavit) at paragraph 11 as the “previous course co-ordinator and a guest lecturer”.

(Underlining and emphasis in original).

30    It is apparent that the new targets of that relief were the previous course co-ordinator and guest lecturer who had provided the course material to Dr Chien. For the purposes of r 7.22 it can be accepted that the prospective applicant was unaware of the identities of the previous course co-ordinator and guest lecturer.

31    In relation to this issue, Mr Crowe KC, counsel for the prospective respondents, indicated that his clients had given instructions to rely upon the six year limitation period in s 134(1) of the Copyright Act in relation to any claim for infringement of copyright against those persons if they could be identified. The evidence before the Court from Dr Chien’s affidavit was that she received the material which is alleged to have breached the prospective applicant’s copyright in 2009. On the assumption that some infringement occurred before or at that time, the limitation period in respect of any claim would have expired sometime in 2015.

32    On that basis, there is no likelihood that the prospective applicant could obtain relief in any contemplated copyright infringement action against the previous course co-ordinator or guest lecturer. It would follow that r 7.22(1)(a) would not be satisfied as it could not be shown that there may be a right to obtain relief against the persons who provided Dr Chien with the material in question.

New claims based on breach of moral rights

33    In the face of that obstacle, Dr Eliades, counsel for the prospective applicant, asserted that the prospective applicant might have claims she could bring against the original creator of the allegedly offending material for infringement of her moral rights as identified in s 189 of the Copyright Act, the remedies for which are found in s 195AZA. The relevant moral rights recognised and protected under the Copyright Act are the right of attribution of authorship, the right not to have authorship falsely attributed, and the right of integrity of authorship. The mentioning of such claims during the hearing was the first occasion on which the possibility of such a claim being made had arisen.

34    In the instanter formulation of this new claim, it was submitted that the prospective applicant might have a claim under Pt IX of the Copyright Act in respect of the alleged breaches of her moral rights, because none of the slides in respect of which complaint is made attributed her authorship. It was also submitted that she may have claims for false attribution of authorship depending upon how the slides were used by the person who originally created the offending material.

35    For the purposes of the application, it can be accepted that the prospective applicant may have claims to pursue in respect of the identified potential breaches of her moral rights in relation to the material which she claims she authored. For convenience, these claims will be referred to as the “Moral Rights Claims”.

36    It was further submitted that reliance on the infringement of the prospective applicant’s moral rights would effectively avoid the six year limitation period in s 134(1) of the Copyright Act on the basis that the section did not apply in relation to an infringement of moral rights under Pt IX of the Copyright Act or to an authorisation of an infringement of moral rights in respect of non-attribution of authorship under s 195AO and/or false attribution of authorship under s 195AD(a). Whilst the protection of moral rights was introduced by the Copyright Amendment (Moral Rights) Act 2000 (Cth), it appears that a lacuna exists in the Copyright Act because the limitation period in s 134(1) of that Act was not extended to such claims.

37    In their post-hearing written submissions, the prospective respondents agreed that s 134(1) did not apply to the Moral Rights Claims. However, it was submitted that, whilst that section did not impose any limitation period, a limitation period was imposed by another statute. Namely, that s 10 of the Limitation of Actions Act 1974 (Qld) (Limitation of Actions Act) applies by virtue of s 79(1) of the Judiciary Act 1903 (Cth) (Judiciary Act).

38    By reason of s 79(1) of the Judiciary Act, unless otherwise provided in the Constitution or the law of the Commonwealth, the law of Queensland applies where the Federal Court is exercising federal jurisdiction within that State. The section provides:

(1)     The laws of each State or Territory, including the laws relating to procedure, evidence, and the competency of witnesses, shall, except as otherwise provided by the Constitution or the laws of the Commonwealth, be binding on all Courts exercising federal jurisdiction in that State or Territory in all cases to which they are applicable.

39    It is undoubted that in any anticipated litigation to be brought by the prospective applicant, the Court would be exercising its original federal jurisdiction under s 39B(1A)(c) of the Judiciary Act, because the claims identified by the prospective applicant arise under the Copyright Act which is a Commonwealth law.

40    The operation of s 79 of the Judiciary Act was considered in Rizeq v Western Australia (2017) 262 CLR 1, 36 [90], where the majority held that its purpose is fulfilled by:

aligning s 79’s description of State laws as “binding” on courts with the gap in the law governing the exercise of federal jurisdiction which exists absent other applicable Commonwealth law by reason of the absence of State legislative power to govern what a court does in the exercise of federal jurisdiction. That is how it should be read.

41    To a similar effect were the observations of Kiefel CJ (at 14 [16]):

Section 79 fills the gap created by any absence of Commonwealth laws which provide a court with powers necessary for the hearing and determination of a matter and the presence of State laws of this kind which cannot operate of their own force in federal jurisdiction. It operates by “picking up” State laws and applying them as Commonwealth law.

(Footnote omitted).

42    Here it was submitted that there exists a “gap” in the Commonwealth law in that no period of limitation is provided in relation to claims to protect infringement of the moral rights referred to in Pt IX of the Copyright Act. It is, probably, more accurate to say that the Commonwealth law makes no provision for any limitation period in respect of those claims with the consequence that there is no ousting of the State limitation of action laws to the extent to which they would otherwise apply.

43    It has, on many occasions, been stated that an infringement of intellectual property rights granted under copyright statutes constitutes tortious conduct. In National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd (2012) 201 FCR 147, 156 [28], the Full Court observed the following:

(i) Infringement of statutory copyright provisions has long been accepted as tortious. As such, infringement attracts the common law principles applied to joint tort feasors: see WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 at 283; Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd (2009) 84 IPR 222 at [620]-[624].

44    In WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274, 283, Gummow J held:

It should be added that infringement of copyright statutes for long has been considered tortious, so as to make applicable the common law principles as to liability of joint tortfeasors.

45    On that basis, it was submitted that s 10 of the Limitation of Actions Act, which provides that actions in tort shall not be brought after the expiration of six years from the date on which the cause of action arose, applied to the Moral Rights Claims.

46    As an aside, it is worth observing that, though a question might arise as to whether the remedies which might be sought in relation the proposed claims are equitable in nature, they are, in fact, statutory remedies specified in s 195AZA of the Copyright Act, even if they may have their origins in equity: see generally A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 66 FCR 199, 201. As such, s 10(6)(b) of the Limitation of Actions Act has no application.

47    There does not appear to be anything in the Copyright Act which provides that claims in respect of infringements of moral rights are not to be subject to any limitation period. Part IX of the Act is silent on the topic, and there is nothing in the Explanatory Memorandum for the Bill which introduced the amendments permitting the pursuit of infringements of moral rights that suggests any policy or other reason not to temporally confine such actions. The mere fact that moral rights exist for as long as copyright exists does not advance the matter.

48    In the prospective applicant’s written submissions on this issue, reference was made to a number of authorities, although none were specifically cited as suggesting that no limitation period existed in relation to actions for infringement of moral rights. The cases referenced appeared to relate to the availability of moral rights claims and the entitlement to pursue claims for damages for infringements of them, though that did not appear to be an issue in the debate between the parties.

49    The first authority referred to was Rutter v Brookland Valley Estate Pty Ltd (2009) 81 IPR 549. It concerned a successful claim for infringement of copyright, but the relief was limited to the period of six years prior to the commencement of the proceedings. The claim in relation to the infringement of the author’s moral rights by non-attribution of authorship had occurred one year prior to the commencement of the proceedings, with the consequence that there was no issue as to whether it was statute barred. The second case was Lamb v Hog’s Breath Company Pty Ltd (No 2) (2007) 71 IPR 379, though it made no reference to any limitation period relating to the commencement of actions in respect of moral rights and it is not relevant to the present consideration. The same can be said of Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 and it must be observed that there, Buchanan J refused to make an award of damages in respect of established infringements of the claimant’s moral rights. Finally, reference was made to the decision in Francis v Allen & Unwin Pty Ltd (2014) 108 IPR 18, though again, its relevance to the present application, other than indicating that actions can be pursued for an infringement of an author’s moral rights, is minimal.

50    The great difficulty in relation to the Moral Rights Claims now relied upon by the prospective applicant is that they were hastily raised in response to the prospective respondents’ assertion that the limitation period had expired in relation to the infringement claims against the person or persons who, on the prospective applicant’s case, must have originally copied her material and used it for courses at the University. Whereas the prospective respondents’ further written submissions articulate why the claims are statute barred, that issue is not addressed at all in the prospective applicant’s further written submissions. The prospective applicant advanced no argument as to why the Limitation of Actions Act did not apply to the Moral Rights Claims. It may be that it was because the prospective applicant delivered her submissions first that the point raised by the prospective respondents was not addressed, though the prospective applicant did not seek the Court’s leave to address it by further submissions. Necessarily, the issues between the parties must be dealt with on the basis on which they were advanced to the Court.

51    The bar imposed by r 7.22(1)(a) — that the prospective applicant establish that they may have a claim — is low and the prospective applicant is not required to establish that they have a prima facie claim. However, here, the prospective applicant submits that she may have a claim for infringement of her moral rights in the material which she claims she authored, against the person or persons who originally copied it some 15 years ago. Any such claim proceeds on the basis that no relevant limitation period applies to the causes of action under Pt IX of the Copyright Act. Whilst it was not doubted that the Copyright Act does not make any provision limiting the period in which actions of that nature can be brought, there is a real and substantial argument to the effect that the gap is filled by the Queensland legislation requiring that actions for damages for tort be commenced in the period of six years from the date on which the action arose. Whilst there may be a question as to whether the principle which treats an infringement of the Copyright Act as a tort for the purposes of joint liability is sufficient to attract a statutory limitation provision, the history of infringements of intellectual property rights being regarded as tortious is well-established and that strongly suggests that such causes of action will be subject to the limitation.

52    This renders success in any potential claim against the originators of the alleged infringing copies of the prospective applicant’s work barely possible. It is not likely to succeed given that it arose, if at all, in 2009. It might also be questioned whether any substantial damages could be established, though as that was not debated it need not be a relevant consideration.

53    Importantly, r 7.22(1)(a) refers to the existence of “a right for the prospective applicant to obtain relief”. Whilst that is often referred to as a “claim”, the subrule looks beyond the mere existence of a cause of action, and poses the question of whether the prospective applicant will actually be entitled to obtain relief. There is logic to such a construction. A prospective applicant may be able to establish the existence of a cause of action, but the prospective respondent may be able to establish a complete defence or answer to it. It would be productive of wasted time and money to require a person to make discovery of documents to a prospective applicant in circumstances where, if the contemplated action were pursued, it would necessarily fail.

54    Here, no answer was provided to the prospective respondents’ submissions that the claims sought to be made would be barred by s 10 of the Limitation of Actions Act. Though there may be arguments that actions for the infringement of statutory intellectual property rights are not tortious in nature so that s 10 of the Act does not apply to them, such arguments would have to overturn long lines of authority to the contrary. The prospect of doing so is unlikely. In those circumstances, the prospective applicant has not established for the purposes of r 7.22(1)(a) that she may have a right to obtain relief against the unidentified previous course co-ordinator or guest lecturer for infringement of her moral rights.

New claims based on alleged authorisation by the alleged original infringer

55    It would appear that counsel for the prospective applicant also realised, during the course of the application, that there was a likelihood that any claim against the originator of the allegedly infringing work would be barred by a limitation period. He, therefore, sought to add a further limb to the prospective applicant’s possible claims, being that she might also have rights against the creator for allegedly infringing material in the period where the cause of action is not barred by the limitation, on the basis that the creator had authorised the use of the infringing materials in the recent past. In this respect, reliance was placed on s 36(1) of the Copyright Act which renders a person liable for a primary infringement if they have authorised it. It was also submitted that a claim may exist under s 195AO of the Copyright Act in relation to the Moral Rights Claims because a person who authorises the doing of an attributable act in respect of a work without the identification of the author, is also liable for the infringement of moral rights.

56    It appears that the argument which the prospective applicant seeks to advance on this point is that the unidentified prospective respondents are liable as authorising infringements by the identified prospective respondents since 2017/2018. On this basis, any six year limitation period will be circumvented.

57    There are substantial difficulties with this prospective claim as well. All that is apparently relied upon as the act of authorisation is the giving of the material to Dr Chien by the former course co-ordinator and or guest lecturer. In order for any claim to exist it must be assumed that the unidentified persons were the authors of the alleged infringing works or knew of the alleged infringement, though there is no evidence to suggest that to be true. The next requirement is that they did some act of authorisation. In that respect, there is nothing to suggest that those persons retained any control over the alleged infringing material since they provided it to Dr Chien in 2009. It would seem to be well established that in order for a person to be liable as an authoriser of an infringement of copyright, they must have the power to prevent the primary infringement: Roadshow Films Pty Ltd v iiNet Ltd (2012) 248 CLR 42, 69 [69]. Here, there is not the slightest suggestion that the unidentified course co-ordinator or guest lecturer had the power to prevent the infringements of which the prospective applicant complains. On the assumption that the claims against the alleged authorisers commence from 2017 or 2018, the allegation would have to be that, some eight or nine years after the persons provided the materials to Dr Chien, they retained both control over them and the power to prevent them from being used. That is very unlikely. Indeed, it amounts to no more than speculation.

58    It follows that the prospective applicant has not satisfied the requirement of r 7.22(1)(a) that she may have a claim or claims in relation to the alleged authorisation of infringement of her moral rights or any other infringements.

Rule 7.22(1)(b)

59    The second requirement of r 7.22(1) is that the prospective applicant is unable to ascertain the description of the prospective respondent.

60    Based on the initial application, the identity of the University and Dr Chien was not in doubt. Indeed, the prospective applicant identified those as the prospective respondents in her application and identified the claims which she intended to bring against them. For that reason, the application as originally formulated could not succeed.

61    On the basis of the amended originating application, however, this second requirement would be satisfied. On the assumption that there may be a right to obtain relief from the person who created or allegedly authorised the use of the allegedly infringing material in the actionable period, that person or those persons are unknown to the applicant and it was not contested otherwise.

Rule 7.22(1)(c)

62    For the purposes of r 7.22(1)(c), it needs to be established that the University or Dr Chien has, or is likely to have, or has had, or is likely to have had, control of a document or documents which would help ascertain the prospective respondents’ description.

63    Dr Chien received the materials of which the prospective applicant complains in 2009, and that is a significant period of time in relation to records kept by an individual. However, it is a matter of notoriety that universities and other similar institutions maintain detailed historical records of their activities, including the personnel who work for them. Therefore, the University is likely to have records of the identity of the course co-ordinators and, possibly, the guest lecturers such that r 7.22(1)(c)(ii) is satisfied, at least in relation to the University.

64    Again, it was not contested that the University or Dr Chien were likely to have had control of the documents in question.

Satisfaction of r 7.22(1)

65    From the foregoing, the requirements of subparagraphs (b) and (c) of r 7.22(1) are satisfied in relation to the claims which the prospective applicant asserts she has in relation to the Moral Rights Claims or authorisation claims against the previous course co-ordinator and guest lecturer who gave materials to Dr Chien. The difficulty is that the material before the Court does not support the conclusion that she may have a right to obtain relief in respect of those claims so as to satisfy r 7.22(1)(a).

The discretion under r 7.22

66    Even where a prospective applicant has satisfied the requirements of r 7.22(1), the Court retains a discretion as to whether an order for discovery should be made. In the exercise of that discretion, a relevant factor will necessarily be the likelihood of the prospective applicant being successful in any action which is commenced: Hooper v Kirella.

67    Here, even if it had been concluded that the prospective applicant may have had a right to obtain relief, the paucity of her prospects of succeeding in any action against the previous course co-ordinator and guest lecturer is a significant matter to take into account in the exercise of the discretion.

68    The undertaking of the investigations to make discovery of the documents sought is likely to be time consuming and require not inconsiderable expense on behalf of the University and, possibly, Dr Chien. In circumstances where it is unlikely that the prospective applicant would succeed in any action against the previous course co-ordinator and guest lecturer if they could be identified, the discretion should be exercised against making any order under r 7.22.

69    On applications such as the present, the Court should also take into account the overarching purpose identified in s 37M of the Federal Court of Australia Act 1976 (Cth). In this respect, the Court must be cognisant that costs and the Court’s time are likely to be wasted where an applicant is required to guess at the identity of a proposed respondent. An order permitting the prospective applicant to have discovery of documents which are likely to reveal the identity of the prospective respondent is likely to, ultimately, reduce the expense of the litigation. However, in this case where the prospective applicant was unable to demonstrate that any claim she might have against the proposed respondents was of any substantial merit, that consideration diminishes. Indeed, the contrary is true. The making of any order for discovery here would be productive of the expenditure of time, energy and resources in circumstances where it is unlikely that any valid claim can be pursued.

70    A further issue relevant to the exercise of the discretion arose from a comment made by counsel for the prospective applicant in the course of submissions. He said, in effect, that one purpose to which any discovered documents might be put is providing them to the Australian Federal Police to have charges brought under the Copyright Act. The use of documents ordered to be produced under rr 7.22 and 7.23 for such a purpose would be problematic. First, that is not a purpose to which those rules are directed. The rules are there to assist in the pursuit of civil litigation. Secondly, and more importantly, the use of discovered documents in the manner suggested would be a breach of the implied undertaking referred to in Hearne v Street in respect of those documents. Thirdly, if such proceedings are “on the cards”, making an order requiring the production of documents may interfere with the prospective respondents’ rights against self-incrimination. That would be a serious matter.

71    In the course of the hearing, the inappropriateness of the prospective applicant giving any documents discovered to the police was raised with counsel. He subsequently sought to disavow the suggestion that the use of the documents for that purpose was a reason for, or factor in support of, the application.

72    Following the hearing, the prospective applicant filed an undertaking to the Court which was in the following terms:

The Prospective Applicant undertakes to the Court that she will not by herself, her servants or agents or otherwise howsoever, make a compliant to the Australian Federal Police or to the office of the Commonwealth Director of Public Prosecutions, in respect of any offences under Part V of the Copyright Act 1968 (Cth), in relation to creation or use of the slides or power point presentations taught in the courses conducted by the First Prospective Respondent identified in her affidavit filed 20 October 2023 annexure KSR-2 including such slides or power point presentations identified in Colum 2 under the heading “Content in breach” in annexure KSR-3 of the said affidavit.

73    Whilst that undertaking makes reference to not making a complaint to the Australian Federal Police, it does not direct itself to the essential point of the prospective applicant’s intended use of any documents discovered, or purpose for making the application. Had it been necessary to exercise the discretion, the displayed lack of understanding on the part of the prospective applicant’s legal representatives of the obligations on parties who receive documents under the compulsory production processes of the Court would have weighed significantly against making an order in this case.

Conclusion on application under r 7.22

74    In the circumstances, the prospective applicant has not satisfied the requirements of r 7.22 and, even if she did, the discretion would be exercised against making any order for discovery. That part of the amended originating application should be dismissed.

Application under r 7.23

The new claim for discovery against the identified prospective respondents

75    By paragraph 2 of the amended originating application, the prospective applicant maintained a claim for discovery against the identified prospective respondents, albeit pursuant to r 7.23. The relief sought was in the following terms:

2.    Rule 7.23 of the FCR for an order specifically under FCR 7.23(2), that the Prospective Respondents (or either of them) give discovery to the Prospective Applicant of the following documents:

(a)    All documents created and/or used by the Prospective Respondents or either of them in presentations for the courses using the slides conducted by the First Prospective Respondent commencing from the date upon which the Prospective Respondents (or either of them) first conducted the courses.

(b)    All documents created or modified by the Second Prospective Respondent since she commenced employment with the First Prospective Respondent in February 2009 which contain the:

i.    modifications to the information contained in the slides;

ii.    synthesisation of the information from various slides, and/or

iii.    updated format of some of the slides.

referred to in the Chien affidavit at paragraph 11.

(c)    All documents containing a summary of the student numbers of the attendees of the courses and the fees received by the First Prospective Respondent from such enrolments in the courses for each of the years the courses were conducted.

3.    In relation to the orders sought above, the term:

(a)    “courses” shall mean jointly and severally:

i.    Event Sponsorship & Fundraising (EVNT3004).

ii.    Event Marketing, Sponsorship & Fundraising (EVNT7052).

iii.    Tourism and Event Sponsorship and Fundraising (TRVT3002).

iv.    Any other course offered and/or conducted by the Respondents or either of them, in which the slides were used.

(b)    “slides” shall mean jointly and severally:

i.    the power point presentation slides used in the teaching of the courses at the First Prospective Respondent’s university including but not limited to the slides identified in Colum 2 of the table appearing in Annexure “KSR-3” to the affidavit of Kimberli Dawn Skildum-Reid sworn 18 October 2023.

ii.    Any handouts provided to the students enrolled in the courses reproducing the slides or any part of them, whether formatted as slides or otherwise.

(c)    “document” shall have the meaning attributed to that term in the Acts Interpretation Act 1901 (Cth) s 2B.

(Underlining and emphasis in original).

76    The documents sought might be broadly described as those created or used by the prospective respondents in the presentation of courses conducted by Dr Chien since she commenced conducting them in 2009, which were derived from the prospective applicant’s copyright material. The prospective applicant claimed that those documents would demonstrate the changes made to the course materials, to the extent to which they altered the wording or format of any infringing copy. It was submitted that the documents would reveal changes made over time and that may impact the question of whether any infringement was innocent or otherwise.

The terms of r 7.23

77    Rule 7.23 provides as follows:

7.23    Discovery from prospective respondent

(1)    A prospective applicant may apply to the Court for an order under subrule (2) if the prospective applicant:

(a)    reasonably believes that the prospective applicant may have the right to obtain relief in the Court from a prospective respondent whose description has been ascertained; and

(b)     after making reasonable inquiries, does not have sufficient information to decide whether to start a proceeding in the Court to obtain that relief; and

(c)     reasonably believes that:

(i)    the prospective respondent has or is likely to have or has had or is likely to have had in the prospective respondent’s control documents directly relevant to the question whether the prospective applicant has a right to obtain the relief; and

(ii)     inspection of the documents by the prospective applicant would assist in making the decision.

(2)    If the Court is satisfied about matters mentioned in subrule (1), the Court may order the prospective respondent to give discovery to the prospective applicant of the documents of the kind mentioned in subparagraph (1)(c)(i).

78    In John Bridgeman Ltd v National Stock Exchange of Australia Ltd (2019) 139 ASCR 244, 253 – 254 [42] (JBL v NSX), it was observed that:

[42]     There are four matters identified in r 7.23(1) of which the Court must be satisfied before the power to make an order is enlivened. In summary, they are as follows:

(a)    First, that the proposed applicant reasonably believes they may have the right to obtain relief from an identified prospective respondent;

(b)     Secondly, the prospective applicant has made reasonable inquiries but does not have sufficient information to decide whether to commence a proceeding;

(c)    Thirdly, the prospective applicant reasonably believes the prospective respondent has relevant documents to discover; and

(d)     Fourthly, the prospective applicant reasonably believes inspection of those documents would assist it in deciding whether to commence a proceeding.

79    If the Court is satisfied of those matters, the residual discretion in r 7.23(2) is enlivened.

80    In JBL v NSX, some principles in relation to the operation of r 7.23(1)(a) and (b) were discussed (at 254 – 255 [44] – [47]) as follows:

[44]    Rule 7.23 was recently considered by the Full Court in Pfizer. In that case, the Court identified that r 7.23 is a beneficial provision and its purpose is to enable a person who believes they may have a right to seek relief to obtain information to make a responsible decision as to whether to commence proceedings: Allsop CJ at [4] and Nicholas J at [172]. The Chief Justice said at [8]:

The foundation of the application in r 7.23(1)(a) is that an applicant (a person or a corporation) reasonably believes that he, she or it may have a right to relief. The belief therefore must be reasonable (expressed in the active voice that someone reasonably believes) and it is about something that may be the case, not is the case. It is unhelpful and likely to mislead to use different words such as “suspicion” or “speculation” to re-express the rule. For instance, it is unhelpful to discuss the theoretical difference between “reasonably believing that one may have a right to relief” and “suspecting that one does have a right to relief” or “suspecting that one may have a right to relief” or “speculating” in these respects. The use of such (different) words and phrases, with subtleties of differences of imprecise meaning, and not found within the rule itself is likely to lead to the proliferation of evidence and of argument, to confusion and to error. One must keep the words of the rule firmly in mind in examining the material that exists in order to come to an evaluation as to whether the relevant person reasonably believes that he or she may have a right to relief. That evaluation may well be one about which reasonable minds may differ. (emphasis in original)

[45]    To similar effect, Perram J explained that the rule was a broad rule which effectively allowed that which is colloquially known as “fishing”:

[108]     As I have noted already, it is not the requirement of this rule that there be a reasonable belief that there is a right to obtain relief. This is an important qualification and it colours necessarily the analysis involved in assessing the reasonableness of the belief. FCR 7.23(1) is not about giving preliminary discovery to those who believe they do have a case. Its wording unequivocally shows that it is about those who do not know that they have a case but believe that they may. In terms, it authorises what traditionally have been referred to as fishing expeditions; that is to say, evidentiary adventures in which the goal is not to find proof of a case already known to exist, but instead to ascertain whether a case exists at all. (emphasis in original)

[46]    There is little doubt that the rule is intended to be a beneficial aid to a prospective applicant who is having real difficulty, and reasonably so, in deciding whether to litigate because of a lack of essential information: Webcot Pty Ltd v Jephcott [2009] FCA 1241 at [33].

[47]    JBL submitted that in the application of r 7.23(1)(b) the question is whether after making reasonable enquiries the prospective applicant does not have sufficient information to decide whether they ought to start a proceeding: Optiver Australia Pty Ltd v Tibra Trading Pty Ltd (2008) 169 FCR 435; 249 ALR 495; [2008] FCAFC 133 at [36]. Importantly, the “sufficient information” includes that which might identify what defences may be available to the prospective respondent and the strength of those defences or to determine the extent of the prospective respondent’s breaches: ED Oates Pty Ltd v Edgar Edmondson Imports [2012] FCA 356 at [26]. As was said by Perry J in ObjectiVision Pty Ltd v Visionsearch Pty Ltd (2014) 108 IPR 244; [2014] FCA 1087 at [30], even where a prospective applicant may have reason to believe they have a right to relief, they may need further information to know whether the cost and risk of litigation is worthwhile and, in that respect, given its beneficial purpose, the rule should be given the fullest scope which its language will reasonably allow.

(Emphasis in original).

81    Those principles were referred to the Court on this application and there was no disagreement with their correctness.

Rule 7.23(1)(a)

82    This first subparagraph of r 7.23(1) requires the prospective applicant to establish that they reasonably believe that they may have a right to obtain relief from a prospective respondent whose description has been ascertained. In relation to this part of the application, the prospective respondents are the University and Dr Chien.

83    It is undoubted that in the course of correspondence between the parties’ respective solicitors, Sulman made claims about the veracity of the prospective applicant’s rights as against the University and Dr Chien. It was asserted in emphatic and unequivocal terms that the prospective applicant had substantial claims against them, for which compensation was payable. The allegations made were not that claims might or may exist, but that claims did exist and that the University and Dr Chien should act accordingly. From this, the prospective respondents submitted that subparagraph (a) is not satisfied because r 7.23 is not to be used for providing preliminary discovery to those who believe they do have a claim. Rather, it is about providing relief for those who do not know whether they have a case, but believe that they may: see the observations of Perram J in Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (2017) 257 FCR 62, 92 [108].

84    That distinction appears to be supported by subparagraph (1)(b), which refers to the prospective applicant not having sufficient information to decide whether to start a proceeding in the Court to obtain the relief. As was identified in JBL v NSX (at 255 [47]), the sufficient information which might assist in the making of the decision could include that which identifies what defences might be available to the prospective respondent, the strength of those defences, or that which might throw light upon the extent of the prospective respondent’s breaches. As was indicated there, even where a prospective applicant may have reason to believe the existence of a right, they may need further information to know whether the cost and risk of litigation is worthwhile.

85    When subparagraphs (a) and (b) are read together, it is evident that the intention of r 7.23 is to provide a prospective applicant with an avenue of ascertaining the appropriateness of commencing proceedings. That means there are a broad range of issues in respect of which the prospective applicant may not have sufficient material. Further, this rule is of a beneficial nature and it ought be construed accordingly; that would eschew a too strict reading of (1)(a).

No evidence about belief

86    Despite the breadth of r 7.23(1)(a), the prospective applicant must establish that they have a belief that they may have a claim, and that their belief is reasonable. That is an evidential issue which the prospective applicant is obliged to satisfy.

87    In her affidavit of 18 October 2023, the prospective applicant identified how she had ascertained that the course materials for several courses at the University included copied or “plagiarised” parts of her works. She specifically alleges that her copyright in her workshop presentations has been infringed by unauthorised use of parts of it in course materials for three courses at the University. In an exhibit to the affidavit, she compared the course materials with her claimed original work to show the extent of infringement. The manner in which the comparison is made, is that the infringements of her work had occurred.

88    One significant difficulty here is that there was no evidence given by the prospective applicant that she had any belief about her right to obtain relief in the Court. Though she swore several affidavits, she neither expressly stated her belief about her prospects in relation to any claim, and nor did she identify the grounds for that belief. It might be inferred from her affidavit material that she believes that she has claims against the prospective respondents. However, there is nothing to suggest that her belief is only that she may have claims against them. No statement of uncertainty about the veracity of her anticipated claims, or why that uncertainty might exist, is provided. Further, she did not identify what information she lacked but needed in order to decide whether to start proceedings.

89    These were fatal omissions. Whilst it might occasionally be possible to attribute to the prospective applicant the assertions of their solicitor or counsel for the purposes of establishing the reasonable belief, the drawing of that inference can be difficult. It is preferable, on any application for there to be direct evidence of the prospective applicant’s belief for the purposes of subparagraph (1)(a) and of the lack of information which prevents a decision being made for the purposes of (1)(b). Here, none of those matters were addressed in the affidavits relied upon.

90    To the extent to which it might be ascertained from the correspondence between the parties that the prospective applicant had any belief about of the veracity of any claim that she might bring, the letter of 10 July 2023, from Sulman to the General Counsel of the University, demonstrated that she vehemently believed that she had a substantial claim for infringement of her copyright and that she was entitled to substantive damages. Moreover, the terms of the correspondence from Sulman are set out above and, to the extent that their contents can be attributed to the prospective applicant, they can only evidence her emphatic belief as to her right to obtain relief against the prospective respondents.

91    In the light of the relevant evidence on this point, it cannot be concluded that the prospective applicant only held a belief that she may have a cause of action against the University and Dr Chien.

92    It is noticed that in the letter of 7 August 2023, Sulman indicated that in order for it to consider the prospective applicant’s rights, if any, against the University, it was necessary for the University to indicate whether it would be willing to provide certain documents. It is unclear how an indication of the University’s preparedness to provide documents had any relevance to its potential liability, and none was explained. It might be assumed for the sake of argument that what was being sought was the documents themselves. Though, even on that assumption, as that correspondence was written as a prelude to the making of the current application, little weight should be given to it. The letter did not identify any information that the prospective applicant lacked which hindered the making of a decision as to whether to commence proceedings.

93    On 11 August 2023, in response to correspondence from Corrs advising that they would be unable to reply to Sulman’s letter of 7 August 2023 until the following week, Sulman wrote the following:

Thank you for your response. Respectfully, our correspondence of 7 August 2023 merely requested an indication as to whether your client would be willing to provide our client with certain documents. Our client has only just become aware of the alleged unauthorised uses of her work and her claim could easily have been the subject of an interlocutory application for injunctive relief. However, despite the evidence in the comparison table provided indicates to us clear infringement, there is little information as to how long and to what extent the uses have been persisting.

…

94    This email again demonstrates that the prospective applicant has always believed that she does have a case against the prospective respondents. Though some uncertainty is expressed about “how long and to what extent the uses have been persisting”, there was no suggestion made on this application that the lack of knowledge in this respect was any impediment to the prospective applicant commencing proceedings or determining whether to commence proceedings.

95    In these circumstances, the prospective applicant is in the position of a party who believes that they do have a case. She is not uncertain about whether she does, and she is not entitled to rely upon a rule which exists for those who are uncertain about their position.

96    By way of postscript to this issue, it should be noted that the scope of the documents sought pursuant to r 7.23 is extremely wide and reflects an intention to bring an action against the University and Dr Chien in respect of alleged infringement of copyright going back to 2009. If that is intended, the prospective applicant cannot have a reasonable belief that she may have that right in respect of conduct occurring more than six years ago, as such claims are likely to be barred.

97    By paragraph 2(c) of the amended originating application, the prospective applicant sought the production of documents which evidence student numbers for the courses in which the allegedly infringing materials were used, and the fees received in relation to the courses over the years. These documents obviously go to the question of the quantum of any claim. However, there is nothing in the correspondence or the affidavit material which suggests that the prospective applicant is uncertain whether to bring an action because she is uncertain about the quantum that she might recover. In the letter of 10 July 2023 to the University, Sulman indicated their belief that the damages sustained by the prospective applicant “would run into several hundreds of thousands of dollars and possibly more.”

Rule 7.23(1)(b)

98    The second requirement of r 7.23(1) has two elements. The first is that the prospective applicant has made reasonable enquiries. The second being that, after that process, the prospective applicant does not have sufficient information to decide whether to start proceedings in the Court to seek the relief to which they reasonably believe they may be entitled.

99    To a degree, the inability of the prospective applicant to satisfy r 7.23(1)(a) impedes her ability to satisfy the second requirement under r 7.23(1)(b). As there is no evidence that she is uncertain as to whether she is entitled to obtain the relief which she seeks, it is unlikely that she does not have sufficient information to decide whether to start a proceeding.

100    The affidavit material on which the prospective applicant relied did not specifically address the adequacy of the inquiries which were undertaken for information about the claims which might be pursued. Though she gave evidence of what she discovered about the University’s course materials and of what she said were infringements of her copyright, she did not say anything about her investigations lacking sufficiency or failing to produce sufficient information for her to decide whether to commence proceedings.

101    The remainder of the evidence about any inquiries appears to be limited to the paragraph in the letter from Sulman of 7 August 2023, wherein the prospective applicant requested that the University indicate, by 11 August 2023, whether it was willing to disclose certain documents which she claimed were necessary for her to assess her rights. On 11 August 2023, the University indicated that it needed more time to respond to the request. That was rejected by Sulman, which filed the current application on that day.

102    Therefore, the only evidence of unfulfilled inquiries pursued by the prospective applicant was the writing of one paragraph in one letter and waiting four days for a response. With respect, that hardly constitutes the making of reasonable inquiries for the purposes of r 7.23(1)(b) and the only inference which can be drawn is that the prospective applicant was intent on making the application in any event. That conclusion is supported by her refusal to allow the University time to consider its position in relation to the request. It is also supported by the prospective applicant’s response to the offer from the University in a letter of 26 September 2023 to disclose a wide range of documents without the need for the hearing of the application. In substance, the documents offered by the University substantially corresponded to those referred to in Sulman’s letter of 7 August 2023. The prospective applicant refused the University’s offer on the basis that it was qualified by requiring an undertaking in terms of the principle in Hearne v Street. It is uncertain why that was seen as an impediment to acceptance of the University’s offer, as it would always be an obligation assumed by the prospective applicant were an order to be made by the Court. The refusal of the offer was therefore unreasonable. Had it been accepted, it would have provided the prospective applicant with a better outcome than she has achieved on the present application and would have saved the parties a substantial amount of money.

103    Whether reasonable inquiries have been made is a question to be answered in the circumstances of the particular case, which includes the nature of the information which the applicant requires to decide whether to start a proceeding. It is plain from the terms of r 7.23(1)(c) that the documents of which the prospective applicant seeks discovery must be those which are “directly relevant” to the prospective applicant’s uncertainty about whether to start a proceeding. Additionally, it is those in respect of which reasonable inquiries must be made.

104    Here, the claimed uncertainty of the prospective applicant is unknown, though it might be possible to derive it from the nature and scope of the documents sought by the application. As indicated above, they relate to the alleged infringement of copyright by use of the course materials and, perhaps, the quantum of the claim. In relation to the alleged infringements, the University offered to provide sufficient documents for the prospective applicant to ascertain when and how the infringements occurred, but that was rejected. In any event, the prospective applicant has not indicated any uncertainty about the existence of the infringements. To the extent to which documents relating to the quantum of any claim are sought, two things can be observed. First, no inquiries, reasonable or otherwise, were made in relation to documents relating to the revenue received by the University in relation to the courses in which the alleged infringing material was used. Secondly, there is no evidence that a lack of information about the quantum of any claim affects the prospective applicant’s ability to decide whether to bring proceedings.

105    As appears from the preceding discussion in relation to r 7.23(1)(a), there is no evidence as to the prospective applicant’s insufficiency of information about whether to start proceedings or to what issue any insufficiency relates. On the contrary, the evidence establishes the prospective applicant’s firm conviction that she has a good cause of action from which she will receive substantial damages. This appears from the correspondence and, in particular, from the following extracts from Sulman’s letter of 10 July 2023, where it was said:

We have reviewed the 121 separate instances of the University of Queensland’s unauthorised uses of the Copyright Works gathered by our client and have concluded that the University has been and is continuing to engage in a serious infringement of our client's copyright in the Copyright Works.

…

In order that you might properly consider the extent of the University’s miscreance in this regard, we attach the following document titled “Presentations found with plagiarised content” which provides a comprehensive (but non-exhaustive) set of examples of the infringing behaviour complained of herein.

106    That letter went on to assert that the prospective applicant’s recoveries may be in the hundreds of thousands of dollars.

107    One can only presume that the statements in that correspondence were made honestly, and no submission was made to suggest that the Court should not accept the accuracy of what was stated. It is undoubted that litigation solicitors may, in the course of correspondence, occasionally posture in relation to the strength of their client’s causes of action. However, if a submission of that kind is to be made on an application such as the present where the prospective applicant’s belief about the veracity of their action is in issue, some evidence from the author of the relevant statement is required to ameliorate the force of what is said on the face of the letters. Here, there was no suggestion that the statements of Sulman in their correspondence were not accurate or did not reflect the position of their client. In circumstances where the prospective applicant has not deposed to her state of mind relevant to the issues on the application and relies on the correspondence which has passed from her solicitors, she is fixed with the statements made on her behalf.

108    As has been said previously, the purpose of r 7.23 is “not to procure documents that would strengthen an applicant’s decision to commence proceedings but rather to furnish it with information which is reasonably necessary to enable that decision to be made”: GDP Group Pty Ltd v Saye [2022] FCA 688 [31], citing Telstra Corporation Ltd v Minister for Broadband, Communications and the Digital Economy (2008) 166 FCR 64, 80 [60]. In the absence of any evidence of any lack of sufficient information, it can be safely assumed that the prospective applicant is simply seeking documents which will bolster her decision to pursue the claim. The language used by Sulman in its correspondence with the University’s solicitors indicates a high degree of assurance that the applicant will succeed and, in light of that, if the prospective applicant was uncertain of any matter, it would have been identified. As has been indicated in relation to r 7.22, the facilitative and beneficial rules relating to preliminary discovery are for parties who show that they are lacking sufficient information in the identified respects. The bar to be overcome in that respect is relatively low, but it must be established.

109    In the result, there is simply no evidence that the prospective applicant did not have sufficient information to decide whether to start proceedings or that reasonable inquiries were made for that information. For that reason, r 7.23(1)(b) has not been satisfied.

Rule 7.23(1)(c)

110    The requirement of r 7.23(1)(c) is that the prospective applicant reasonably believes that the prospective respondent has, or is likely to have had, documents directly relevant to the question whether the prospective applicant has a right to obtain the relief and that inspection of the documents would assist in making the decision.

111    Necessarily, in the context of r 7.23(1), the question as to whether the prospective applicant has a right to obtain the relief is the one in respect of which the prospective applicant does not have sufficient information as is referred to in r 7.23(1)(b). The rule can only operate coherently if the requirement of the absence of sufficient information to decide whether to commence proceedings in r 7.23(1)(b) is aligned or correlative with the information in the documents of which the prospective respondent has control referred to in r 7.23(1)(c)(i). The purpose of an order for preliminary discovery is so that the uncertainties which the prospective applicant has in relation to the intended cause of action can be clarified by discovery.

112    Similarly, the documents in respect of which relief is to be provided by an order under r 7.23(2) must be those which will assist in removing the uncertainties held by the prospective applicant. That is because the prospective applicant must have a reasonable belief that inspection of the documents would assist in making the decision whether to commence an action.

113    The requirements of r 7.23(1)(c) can only be satisfied by evidence of the reasonable belief of the prospective applicant but, again, there is no evidence of that in this case. The materials before the Court are bereft of any information about the prospective applicant’s belief on these topics or even the beliefs of her solicitors on which she might rely.

114    Therefore, though it is likely that the University would have in its possession documents of the nature sought by the prospective applicant, it is not immediately apparent how those documents would assist her in deciding to commence proceedings. That conclusion arises because the reasons for the prospective applicant’s hesitancy to commence proceedings does not appear from the evidence, and nor does her belief that the discovery sought would remove that hesitancy.

115    In these circumstances, the requirement of r 7.23(1)(c) has not been satisfied.

The discretion under r 7.23(2)

116    The factors relevant to the exercise of the discretion under r 7.22 are also relevant to that exercisable under r 7.23. There is no need to repeat them, though they apply with equal force. Had this part of the application turned on the exercise of the discretion, it would have been exercised against the prospective applicant.

117    Also relevant to the discretion is that the scope of the documents sought by the prospective applicant is too wide. Even if the elements of r 7.23(1) were established, the documents sought are simply far too extensive. They include documents going back to, at least, 2009 and, in the face of the obvious limitation defences, there is no sufficient justification for the production of such documents.

118    Further, the discovery is sought in relation to documents used in “courses”, which is defined to include, “[a]ny other course offered and/or conducted by the Respondents or either of them, in which the slides were used”. In order to comply with the terms of any order for discovery, the University would be required to undertake a massive search of the materials used over many years, in all courses where the alleged infringing material might possibly have been used. That would necessarily be expensive and time consuming. No justification was given for such an expansive form of order in this respect.

119    The definition of “slides” in the form of the relief sought makes the scope of the discovery sought even more problematic. As best as can be ascertained, the documents required are those which were created using the “slides” and used in the courses. However, “slides” is defined as slides used in the teaching of the courses. In other words, the relief in the amended originating application seeks the production of documents which are not relevant to any potential claims of infringement, because it encompasses all slides which were used in the courses, even if they were not derived from the prospective applicant’s works. No justification was offered as to why such an order should be made.

120    Overall, to the extent to which it could be accurately identified, the scope of the documents sought would have been oppressive and unnecessary. Many of the documents sought would not have served any purpose given that they related to periods in respect of which the limitation period has lapsed. Whilst it may be accepted that, to an extent, rr 7.22 and 7.23 permit “fishing”, nothing in them justifies “trawling”.

121    It follows that the overreach in relation to the documents sought and the vagaries associated with ascertaining precisely what documents were to be the subject of discovery, are additional reasons why the discretion would be exercised against the prospective applicant in this case.

Conclusion on application under r 7.23

122    The necessary conclusion is that the relief sought pursuant to r 7.23 cannot be granted.

Conclusion on the application

123    Given the foregoing, the application, including the amended originating application, should be dismissed.

Postscript

124    After judgment was handed down, and after an order had been made requiring the prospective applicant to pay the prospective respondents’ costs of the application, Mr Crowe KC made an application for an order that part of those costs be payable on an indemnity basis. In particular, that costs be payable on an indemnity basis from 19 October 2023, being the date upon which Sulman refused the University’s offer (referred to earlier in these reasons) to disclose a wide range of documents without the need for the hearing of the application. For the reasons which were given to the parties following the making of the application, it is appropriate that the orders accompanying these reasons be varied to provide that the prospective applicant pay the prospective respondents’ costs of and incidental to the application on the standard basis until 19 October 2023, and thereafter on an indemnity basis.

Associate:    

Dated:    8 July 2024