Federal Court of Australia

Byrnecut Australia Pty Ltd v Develop Global Ltd [2026] FCA 738

ORDERS

THE COURT ORDERS THAT:

1.    The words in particular (iii) to paragraph 5 of the ASOC “or, in the alternative, contains confidential information” be struck out.

2.    Leave be granted to the applicant to file and serve a further amended statement of claim, amending particular (iii) in to paragraph 5 of the ASOC in the form set out in the applicant’s solicitor’s letter of 4 June 2026, and, if the applicant so wishes, amending in addition paragraph 14(c)(iii) of the ASOC.

3.    The interlocutory application dated 21 May 2026 otherwise be dismissed.

4.    The costs of the interlocutory application be costs in the cause.

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

REASONS FOR JUDGMENT

Delivered ex tempore, revised from transcript

JACKMAN J:

1    This is an interlocutory application filed by the respondent (Develop Global), dated 21 May 2026, seeking that, pursuant to r 16.21 of the Federal Court Rules 2011 (Cth), the following paragraphs of the Amended Statement of Claim (ASOC) filed by the applicant (Byrnecut) be struck out: paras 5, 7, 14(c)(iii), 16 and 17 (insofar as para 17 relates to the breach of confidentiality claim). Paragraph 5 of the ASOC alleges that at all material times, each of the Applicant’s Works (being a list of 23 documents) has been kept confidential to the applicant and had the necessary quality of confidence. Particular (iii) to that paragraph reads as follows:

For each of the Applicant’s Works, the applicant’s position is that the whole document constitutes confidential information or, in the alternative, contains confidential information.

2    Paragraph 7 alleges that the respondent was under an equitable obligation to treat each of the Applicant’s Works and the information therein confidentially. Paragraph 14(c)(iii) alleges, relevantly, that Develop Global engaged in certain conduct in circumstances where it knew or otherwise ought to have known each of various matters, including that:

Each of the Applicant’s Works constituted, or otherwise contained, confidential information belonging to the applicant.

3    Paragraph 16 alleges that the respondent breached its obligations of confidence in respect of each of the Applicant’s Works. Paragraph 17 alleges that unless restrained, the respondent will continue to infringe copyright and breach its obligations of confidence in respect of each of the Applicant’s Works in the manner previously alleged.

4    Develop Global relies on the well-established principle that a claimant seeking to protect allegedly confidential information must identify, with specificity, the information said to be confidential, a proposition most recently affirmed by the Full Federal Court in Lift Shop Pty Ltd v Next Level Elevators Pty Ltd [2025] FCAFC 108; (2025) 312 FCR 127 at [62]–[64] (Feutrill, Neskovcin and Moore JJ).

5    Develop Global submits that the documents are directed to work, health and safety matters (which seems to be correct from the description given to them in the ASOC Sch 1) and are provided to employees and subcontractors at mine sites (which seems to me to be expressly admitted in particular (i) to para 5 of the ASOC). Develop Global submits that the documents include matters of common sense advice for safe work practices. Develop Global also relies on evidence that some portions of the documents appear to reproduce or substantially reproduce some publicly available documents obtained from the internet. Develop Global points to the difficulty in framing an injunction in the event that Byrnecut fails in its primary case that the entirety of the documents comprise confidential information.

6    Byrnecut relies on a substantial body of authority to the effect that it is possible for confidential information to comprise material that is generally known, provided that skill and ingenuity have been applied in its compilation, and that has been treated as a fairly undemanding test. In support of that proposition, the cases often cite the statement of principle of Campbell JA in Del Casale v Artedomus (Australia) Pty Ltd [2007] NSWCA 172; (2007) 73 IPR 326 at [103]. The Full Federal Court in Comino v Watson Webb Pty Ltd [2026] FCAFC 66 at [92] (Moshinsky, Downes and Owens JJ) appears to have affirmed that principle in general terms. Mr Murray has drawn my attention to the decision of the High Court in O’Brien v Komesaroff [1982] HCA 33; (1982) 150 CLR 310 at 323, in which Mason J cited the reasoning of the primary judge with apparent approval to the effect that skill and ingenuity in compiling a document claimed to be confidential is not sufficient to establish that it contains confidential information capable of founding an action for a breach of confidence. The reasoning of Mason J was agreed with by Murphy, Aickin, Wilson and Brennan JJ. There may be some tension between the reasoning in that case and the line of authority on which Byrnecut relies, but I do not regard it as appropriate on a strikeout motion to resolve that issue. I regard it as a matter to be resolved at the final hearing.

7    In light of the authorities on which Byrnecut relies, as a matter of pleading, in my view, it is open to Byrnecut to allege confidential information in the whole of the 23 documents in question, even though some of that material may be shown to be generally known or in the public domain, provided that Byrnecut can establish, at the trial, that a sufficient degree of skill and ingenuity has been applied in the compilation of those documents. Accordingly, I do not regard it as appropriate to strike out the allegation to the effect that there is confidential information in the whole of the 23 documents set out in schedule 1 to the ASOC.

8    Byrnecut also seeks to rely on an alternative case to the effect that if the whole of the 23 documents does not constitute confidential information, then each of those documents “contains confidential information” (particular (iii) to para 5 of the ASOC). As currently framed, that does not satisfy the requirement that the confidential information be pleaded with specificity. However, Byrnecut seeks leave to amend particular (iii) to para 5 of the ASOC in the manner set out in its solicitor’s letter of earlier today, 4 June 2026. That letter expresses the alternative case in terms that the confidential information constitutes the whole of the 23 documents, except for specifically identified parts of certain of those documents. Counsel for Byrnecut confirms that the words “otherwise contained” in para 14(c)(iii) of the ASOC are to be understood as confined to the material identified in the letter of 4 June 2026 as constituting the alternative case.

9    In my view, that amended formulation is sufficiently specific to be an acceptable pleading of the alternative case. While Mr Murray, on behalf of Develop Global, has made submissions as to why I would not ultimately accept that the alternative case would be established, I regard that as a matter for the final hearing.

10    As to the question of costs, each party has been partly successful, and the interlocutory application ultimately prompted Byrnecut to amend its pleading of the alternative case in the manner now set out in the letter of 4 June 2026. In addition, much of the work involved in the interlocutory application is likely to be redeployed at the trial, and thus, there would be a saving of costs in preparing for the trial because that work has already been done, to some extent. In those circumstances, the costs of the interlocutory application should be costs in the cause.

Associate:

Dated:    4 June 2026