Federal Court of Australia

Intalo Group Pty Ltd v James Cook University [2025] FCA 778

ORDERS

THE COURT ORDERS THAT:

The Application

1.    In relation to the interlocutory application lodged 29 May 2025 (the Application):

(a)    by 4:00 pm AEST on 10 July 2025, the Respondent provide verified discovery in accordance with rr 20.16 – 20.17 of the Federal Court Rules 2011 (Cth) of all documents within the agreed categories set out in Annexure A;

(b)    the Application be dismissed with respect to the application for discovery in item 4 of Annexure A to the Application;

(c)    each party’s costs of the Application be reserved; and

(d)    the Application be adjourned to the next case management hearing.

The Further Discovery Categories

2.    By 4:00 pm AEST on 27 June 2025, the Applicant is to:

(a)    file and serve on the Respondent a Further Amended Statement of Claim which contains any amendments to paragraph 75 of the Amended Statement of Claim dated 4 March 2025 and the particulars thereto regarding the claim for additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth); and

(b)    serve on the Respondent any proposed further category of discovery sought on the Application (Further Discovery Category).

3.    By 4:00 pm AEST on 11 July 2025, the Respondent is to inform the Applicant whether it is prepared to provide discovery in respect of the Further Discovery Category (subject to an agreed confidentiality regime), and if not, the reasons why it is not prepared to do so.

4.    By 4:00 pm AEST on 14 July 2025, the parties are to write to Associate.DerringtonJ@fedcourt.gov.au and EA.Derringtonj@fedcourt.gov.au (the Relevant Emails) and provide an update as to the status of the matter.

5.    In the event agreement is reached between the parties regarding the Further Discovery Category and the costs of the Application, the parties are to provide proposed consent orders to the Relevant Emails by 4:00 pm AEST on 16 July 2025, including a timetable for the Respondent to file an amended defence, production in relation to the Further Discovery Category (and any agreed confidentiality regime), the costs of the Application, and a further case management hearing.

6.    In the event the parties are not agreed in relation to the matters identified in paragraph 3 by 11 July 2025:

(a)    by 4:00 pm AEST on 16 July 2025 each party is to file and serve any written submission (limited to 2 pages) which sets out its position regarding each matter which remains in dispute and any proposed orders; and

(b)    the matter be listed for a case management hearing at 10:00 am AEST on 25 July 2025 for determination of each matter which remains in dispute and orders in relation to next steps in the proceedings.

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

REASONS FOR JUDGMENT

DERRINGTON J:

Background

1    By an interlocutory process filed 29 May 2025 (the Application), the applicant, Intalo Group Pty Ltd (Intalo), seeks the discovery of certain categories of documents from the respondent, James Cook University (JCU), pursuant to rules 20.16 – 20.17 of the Federal Court Rules 2011 (Cth). It is to be noted that, since the filing of the Application, the parties have, amongst other things, (a) whittled down those categories of documents in dispute; and (b) agreed a regime by which orders for discovery of those categories not in dispute might be made, including one that accommodates confidentiality concerns. In so doing, the parties have acted with great propriety and should be complimented for engaging in such a rational approach to the litigation thus far.

The outstanding issue

2    It should be kept steadily in mind that this matter has, in the ordinary course, been bifurcated. Orders by consent were made on 15 April 2025 that provided, amongst other things, that:

1.    Pursuant to rule 30.01 of the Federal Court Rules 2011 (Cth), the quantum of any pecuniary relief (including the quantum of any additional damages) be heard and determined separately from, and after, the determination of the questions of liability for copyright infringement and breach of contract.

The allegation as to “additional damages” and an intention to accrue a commercial benefit

3    On 23 December 2024, Intalo filed an Originating Application and Statement of Claim (which was subsequently amended on 4 March 2025 (the ASOC)). At a rather high level of generality, the ASOC identifies several (alleged) infringements of Intalo’s (alleged) copyright entitlements and rights. In short, it is said that JCU (a) entered into a “Collaboration Agreement” with Intalo to redevelop and deliver a postgraduate course; (b) developed material with Intalo pursuant to that agreement; and (c) has since infringed the copyright of Intalo that subsists in that material (by, inter alia, offering the Graduate Certificate of Career Development course to students (the so-called “JCU Course”)). The latter allegation is denied in a Defence filed on 4 April 2025.

4    An outstanding issue between the parties concerns the discovery of certain documents relating to allegations that were raised in paragraph [75] of the ASOC. That paragraph provides:

75.    The conduct of the Respondent in infringing the copyright is such as to warrant an award of additional damages pursuant to section 115(4) of the Copyright Act.

Particulars

(a)    The conduct was flagrant, including in that:

(i)    the Respondent knew or ought to have known that Intalo PL owned the joint copyright in the Joint Course (including in its constituent components);

(ii)    the ownership of the joint copyright in the Joint Course is in both the Collaboration Agreement and the Termination Deed, so the Respondent knew or ought to have known that Intalo PL owned the joint copyright;

(iii)    Clause 9.3(b)(i) of the Termination Deed expressly forbids the use of the Joint Course without consent;

(iv)     by acting contrary to the Termination Deed, the Respondent alienated Intalo PL from obtaining any benefit from the Joint Course which Intalo PL would have been entitled to under the Collaboration Agreement;

(v)     the Respondent avoided having to dedicate resources to create a new Graduate Certificate of Career Development, which Intalo PL did not avoid;

(vi)     the Respondent denied any breach of the Termination Deed or infringement of copyright when questioned by Intalo PL;

(vii)     the Respondent’s conduct was premediated and intentional;

(viii)     there is a large power imbalance between the Respondent and Intalo PL;

(ix)     the Respondent knew its conduct was wrong due to the terms of the Collaboration Agreement and Termination Deed, as well as its own policies on plagiarism;

(x)     the Respondent is large public organisation who received public funding, some of which has been applied to the JCU Course; and

(xi)     the Respondent has obtained an unjust advantage over Intalo PL.

(b)    The conduct was intended to secure a commercial benefit for the Respondent in that:

(i)    the Respondent has offered, and continues to offer, the JCU Course to existing students for the course that was created under the Collaboration Agreement and to new students of the JCU Course;

(ii)    the Respondent will receive revenue for the students that are enrolled and for students that enrol in the future in the JCU Course; and

(iii)    the Respondent has, or intends to, use the JCU Course to tender for contracts to teach the JCU Course.

(c)    Further particulars may be provided following interlocutory steps such as discovery.

5    For context, and as a brief aside, s 115(4) of the Copyright Act 1968 (Cth) (the Act) provides:

115 Actions for infringement

…

(4)    Where, in an action under this section:

(a)     an infringement of copyright is established; and

(b)    the court is satisfied that it is proper to do so, having regard to:

(i)    the flagrancy of the infringement; and

(ia)    the need to deter similar infringements of copyright; and

(ib)     the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and

(ii)     whether the infringement involved the conversion of a work or other subject‑matter from hardcopy or analog form into a digital or other electronic machine‑readable form; and

(iii)     any benefit shown to have accrued to the defendant by reason of the infringement; and

(iv)     all other relevant matters;

the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.

6    It is important to be precise about what is alleged by paragraph [75(b)] of the ASOC. In short, it is said that (a) JCU committed the relevant infringement(s) with the “intention” of securing a “commercial benefit” (see the chapeau to paragraph [75(b)]); and (b) the relevant commercial “benefit” secured by JCU is that which is defined by subparagraphs [75(b)(i)] to [75(b)(iii)].

7    Paragraph [75] is formally denied in the Defence. However, in correspondence sent on 27 May 2025, JCU has since “admit[ted] the matters in paragraph 75(b)”. As Mr Gardiner KC for the respondent helpfully articulated, the thrust of such admission is “essentially that [JCU] has and continues to offer the competing course, receives revenue from it, and intends to use the course to tender for contracts”. When read in the context of paragraph [75] in toto, that admission is a little difficult to follow. At best, it must be taken as an admission that if the allegations of infringement are substantiated, then the conduct of JCU was intended to secure a commercial benefit. Albeit slightly clumsy, that framing is a product of how the litigation has progressed.

The documents sought by Category 4 of the Application

8    The Application seeks the discovery of:

1.    Documents:

(a)    recording any approved extensions to the Joint Course (relating to the period after 30 April 2023);

(b)    recording the enrolment status of students admitted in the Joint Course after 30 April 2023;

(c)    otherwise directly relevant to the date at which the Teach Out Period concluded pursuant to the Termination Deed.

2.    Save for the Documents produced in response to categories 3, 4 and 5 of Annexure A to the Orders of Justice Derrington of 16 May 2025, with respect to the JCU Course and/or each of the JCU Subjects, all Documents comprising any approvals or certifications by JCU, including but not limited to any approvals from any oversight, academic approval, governance or any other committees

3.    An example of each type or category of Document created for the purpose of advertising or marketing the JCU Course.

4.    All:

(a)    tenders and/or tender submissions made by JCU;

(b)    offers or applications made by JCU to third parties;

(c)    contracts or written agreements between JCU and any third parties,

in relation to the supply of, or proposed supply of, the JCU Course.

9    “Category 4” remains in dispute. It appears, prima facie and with reference to communications that have been exchanged between the parties (as set out in the affidavit of Mr Benjamin Green of 29 May 2025 (the Green Affidavit)), that that category is directed to the facts relied upon as particulars in paragraph [75(b)] of the ASOC. More specifically, the Green Affidavit suggests:

(c)    The documents sought by [Category 4] are clearly relevant to the issue of whether Intalo [] is entitled to additional damages pursuant to section 115(4) of the Copyright Act, including whether JCU obtained a “springboard benefit” in respect of the alleged infringing works.

10    In a similar vein, it has been said by the solicitors for Intalo, on other occasions, that:

… [Category 4] is relevant to our client’s entitlement to additional damages, and directly arises from our client’s particulars to that contention. Our client specifically particularises at paragraph 75[(b)] of the ASOC your client has or intends to use the JCU Course to tender for contracts to teach the JCU Course (including for contracts that your client has tendered for or intends to tender for). The documents captured by this category go directly to that issue. …

and:

… for the avoidance of doubt, [Category 4] is directed to the extent of the springboard benefit enjoyed by your client as a result of the copyright infringement; …

and:

4.    … Your client’s ability to obtain and then continue to service successful tenders using the Joint Course, and your client’s ability to apply for and successfully obtain new tenders using the New Course, is relevant to the extent of the springboard benefit enjoyed by your client.

11    Whilst the meaning of the phrase “springboard benefit” was left somewhat nebulous, it appears to be a reference to the springboard doctrine that was developed in the context of the duty of: Terrapin Ltd v Builders’ Supply Company (Hayes) Ltd [1967] RPC 375; Saltman Engineering Co Ltd v Campbell Engineering Co (1948) 65 RPC 208. So understood, Category 4 is directed to subparagraphs [75(b)(i)] – [75(b)(iii)] of the ASOC and, at least on one view, relevant to the question of whether any “benefit” had accrued to JCU by reason of the alleged infringement.

12    To that, it was added by Mr Fox SC, in the course of his oral submissions, that the documents sought by Category 4 were also necessary in order for the applicant to establish the “flagrancy” of the alleged infringement (see s 115(4)(a) of the Act) and, in that sense, were given further relevance by paragraph [75(a)] of the ASOC. More specifically, it was said that (a) “we [Intalo] have to establish at the liability stage … that there is an entitlement to additional damages”; and (b) the documents sought by Category 4 of the Application were relevant to the flagrancy “calculus” as evidence of both the nature and extent of JCU’s use (or intended use) of the material in question and its intention to derive revenue from it: “if I can show what the number of particular tenders were, the timing of them, the circumstances of them, that this was a deliberate course of action, knowing that from the very first course, there was an infringement and every subsequent provision was a further infringement, that’s the trigger [for an additional damages claim]”. In other words, the submission of Intalo appears to be that the documents sought by Category 4 are relevant to the issues raised by subparagraphs [75(b)(i)] to [75(b)(iii)] and paragraph [75(a)] of the ASOC (being both the benefit and flagrancy of JCU’s conduct).

13    There is, undoubtedly, some prima facie force in such a view. However, it does not overcome two difficulties: (a) the factual matters relied on to support the relevance of Category 4 vis-à-vis the matters in paragraph [75(b)] of the ASOC have been expressly admitted (such that there is no factual dispute that supports Category 4 in that context); and (b) the documents sought by Category 4 are not, objectively, directly relevant to those factual matters pleaded in paragraph [75(a)] of the ASOC. Indeed, by the admission of JCU, the applicant is now obliged to accept the intention of JCU behind the use of the material and its intent to obtain a commercial benefit. It is an admission made seriously and, plainly, with intent. In that circumstance, the documents which were said to support the allegations are no longer relevant to live issues on the pleadings.

14    I am, however, troubled in this respect by the difficulty that is invariably suffered by a party in the position of the applicant. Whilst such a party is able to make, and, in this case very properly made, allegations about the use of allegedly infringing material and, indeed, the intention for which it is used, it is unaware of the nature and extent of that use. In other words, it is in the position of not knowing what it does not know about those issues. Here, it is readily apparent that the pleaders carefully considered the issue and, in accordance with the proper practice as to pleadings, did not extend the allegations beyond that which they were able to properly allege.

15    That said, the adoption of fail-safe language such as “including” (see the chapeau to paragraph [75(a)]), as well as the open-ended drafting of paragraph [75(c)] (“Further particulars may be provided following interlocutory steps …”), are included as a matter of appropriate caution. Whilst I accept that those paragraphs may give rise to a claim in the future for further discovery, for present purposes, it is the issues raised in paragraph [75(b)] which are admitted, that are the touchstone of relevance for the purposes of the Application. On that basis, and without any criticism of the pleading, I am of the view the documents sought by Category 4, to the extent to they are relevant, are rendered irrelevant by the admissions that have been made by JCU.

16    As an aside, a submission was made by Mr Gardiner KC that the documents sought in Category 4 go beyond the scope of what might even be made relevant by a dispute about paragraph [75(b)]. Again, there is force in that submission. In the description of such documents, a very open-ended reference was made to all “contracts or written agreements between JCU and any third parties … in relation to supply of, or proposed supply of, the JCU Course”. That broad category would encompass documents which go well beyond the particular use of the alleged infringing material. Indeed, it would extend to agreements with parties in connection with the supply of the course (being something that is clearly irrelevant to the issues in question).

17    While I accept that the applicant suffers from the difficulty of not knowing the nature and scope of alleged infringements and has pleaded it as best as it can, that does not, on an application of this nature, permit the Court to extend the scope of discovery to areas which, in the fullness of time, might be made relevant by amendments to the pleadings.

18    In a very real sense on the hearing of the infringement issue, the Court will be in a sufficient position to determine the issue raised without any of the additional documents now sought; being those referable to paragraph [75(b)], which is admitted in any event.

19    For those reasons, I dismiss the application for discovery in relation to Category 4.

Note

20    These are the amended and revised reasons for judgment given on 12 June 2025. Whilst the reasons given above refine and develop those that were delivered ex tempore, the substance of what was said on 12 June has not been changed nor has any other material change been made.

Associate:    

Dated:    15 July 2025