ERA Polymers Pty Limited v Pacific Urethanes Pty Limited

ERA Polymers Pty Limited v Pacific Urethanes Pty Limited - [2015] NSWCA 283 - NSWCA 2015 case summary — Zoe

[4]

The background to the proceedings

ERA purchased the business and assets of a company, Ariel Industries Pty Limited (Ariel), pursuant to a Business Sale Agreement dated 1 May 2013. The business assets included "Vendor IP", defined as "all Intellectual Property Rights owed by, used by or licensed to the vendor in the conduct of the Business", including "any right to have information (including confidential information) kept confidential". "Intellectual Property Rights" were also included in the sale, defined to include "trade secrets, formulae, know-how, and … any right to have information kept confidential".
Some years prior to the sale to ERA, Ariel brought proceedings in the Federal Court of Australia against Pacific, alleging that Pacific had exploited Ariel's confidential information and trade secrets acquired whilst two of Pacific's principals were employed by Ariel. Those proceedings were settled in 2010 by means of a deed of settlement and release. Pursuant to the deed of settlement and release, Pacific agreed to pay Ariel a settlement sum of $250,000. In addition, pursuant to cl 2.2 of the deed of settlement and release, the parties agreed to execute contemporaneously a Toll manufacturing deed. The Toll manufacturing deed was an attachment to the deed of settlement and release and, pursuant to cl 1.2(b)(iii)(D) was included as part of the deed of settlement and release. Other relevant terms of those deeds are referred to below.
ERA accepts that, as the purchaser of Ariel's business, to the extent that Ariel released rights in equity in respect of trade secrets and confidential information, ERA has lost any continuing right to preserve the confidentiality of those trade secrets or confidential information. In short, ERA accepted that it could be in no better position than was Ariel in relation to its rights in respect of trade secrets and confidential information following entry into the deed of settlement and release and the Toll manufacturing deed.
The relevant clauses in issue between the parties were cl 5 of the deed of settlement and release and cl 8 (especially subcl (d)) of the Toll manufacturing deed which provided as follows: "Deed of settlement and release … 5 Release of the Respondents Save for the rights arising from this deed, upon payment of the Settlement Sum and execution of the Toll manufacturing deed, the Applicant releases and forever discharges the Respondents and each of them (including their officers, directors, employees and agents) from all liability whatsoever and from all suits, causes of action, claims (including claims for interest and costs), costs orders made in the Proceedings, claims for penalties, or the like which the Applicant now has or at any time from the date of this deed may have or, but for the execution of this deed, might have had against the Respondents or any of them, which in any way arises out of, or is connected with or is incidental to the matters the subject of the Proceeding or the facts giving rise to the Proceeding. … Toll manufacturing deed … 8 Confidentiality (a) All parties to this deed will keep the terms of this deed and the negotiations leading to the deed, the subject of this deed, confidential during the Term and for five years following the Term. (b) Ariel must keep confidential: (i) the Specifications, other than where the Specification is known to Ariel before it is provided to Ariel by Pacific or it has been lawfully provided to Ariel by a third party; (ii) the orders made by Pacific. This provision survives termination of this deed and ending of the Term for any reason. (c) Any party may make disclosure of the terms of this deed: (i) to any of their professional advisors, auditors, bankers, financial advisers, financiers, insurers and potential purchasers or investors for reasonable due diligence purposes, but only on the basis that those persons keep the information confidential; (ii) in order to comply with any law or requirement or any regulatory body; or (iii) to enforce the terms of this deed … (d) Ariel agrees it has no right, title or interest in the Specifications, other than where the Specification is known to Ariel before it is provided to Ariel by Pacific or it has been lawfully provided to Ariel by a third party …"
Other provisions of the Toll manufacturing deed, including the recitals, and certain of the definitions are relevant to understanding its effect and operation, as follows: "Recitals A Pacific sells Products which it requires to be manufactured according to the Specifications. B Ariel is capable of manufacturing the Products in accordance with the Specifications at its Plant. C Pacific has agreed to provide the Specifications to Ariel and Ariel has agreed to manufacture the Products in accordance with the Specifications for Pacific on the terms and conditions of this deed. D Ariel has no right, title or interest in the Specifications, other than where the Specification is known to Ariel before it is provided to Ariel by Pacific or it has been lawfully provided to Ariel by a third party. … Definitions and interpretation … Product means any polyol blend product nominated from time to time by Pacific which has no more than 5 material components and is to be packaged in 205L drums or 1000L IBCs. Specifications means the formula, manufacturing instructions, allowable manufacturing losses, quality control parameters, test requirements and packaging and palletising requirements for each Product to be provided to Ariel by Pacific with each nominated Product. Term means a period of three years commencing on the Commencement Date or such other period as agreed by Ariel and Pacific. … 11 Continuing rights and obligations The rights and obligations under clause 8 continue in full force after the termination or expiry of this deed."
Clause 4 of the Toll manufacturing deed provided for minimum orders, including the payment by Pacific of a minimum amount, regardless of whether Ariel had been requested to manufacture any product or products of equivalent value to the minimum payment.
White J, after referring at [24]-[25] to the principles governing summary dismissal, proceeded to construe cl 5 of the deed of settlement and release and cl 8 of the Toll manufacturing deed. His Honour observed, at [26], that cl 1.2(b)(iii)(D) provided that a reference to the deed of settlement and release included a reference to the Toll manufacturing deed. It followed, on his Honour's reasoning, that the opening words of cl 5 extended to rights arising under the Toll manufacturing deed. His Honour held, at [27], that cl 8(d) of the Toll manufacturing deed did not confer any rights on Ariel. Rather, cl 8(d) qualified the extent of Ariel's acknowledgement of Pacific's title.
ERA contended that his Honour erred in so construing cl 8(d). According to ERA, the opening words of cl 5 referred to rights taking effect by reason of the deed of release and settlement. Thus, none of the rights that arose under the Toll manufacturing deed, which were alleged to include the rights presently claimed by ERA, were affected by the release contained in cl 5.
ERA then contended that pursuant to cl 8(d) of the Toll manufacturing deed, Pacific was entitled, in effect, to "a licence … to call for and have [ERA's] products, manufactured for its use and exploitation". Upon the expiration of the three year term, ERA's rights, as Ariel's assignee to the confidential information acknowledged within cl 8(d), arose free of any such licence. ERA submitted that, as provided by cl 11 of the Toll manufacturing deed, its rights to the confidential information continued in force at the expiration of the three year period specified in cl 8(d).
In the Court's opinion, the primary judge was correct in his construction of cl 5 of the deed of settlement and release and cl 8 of the Toll manufacturing deed. The Toll manufacturing deed constituted an agreement between Pacific and Ariel whereby Ariel would manufacture product for Pacific for a three year or longer period as agreed by the parties. As his Honour found, pursuant to cl 1.2(b)(iii)(D) the rights and obligations arising under the Toll manufacturing deed fell within the opening words of cl 5 of the deed of settlement and release. However, those did not include the ownership rights relied on by Pacific as these arose, if at all, prior to and independently of the Toll manufacturing deed. They were thus pre-existing rights, not ones created by that deed. Not being within the proviso contained in the opening words of the release, they were caught by the release. We note in this respect that Pacific did not argue before this Court that the operative words of the release were not wide enough to have this effect.
Clause 8 did not, either expressly or by implication, create a licence of Ariel's intellectual property in favour of Pacific. Nor did it confer any right upon Pacific to use Ariel's confidential property for a three year period. As Pacific pointed out, ERA's construction of cl 8 was premised upon its ownership of the confidential information. However, that was the subject of the dispute in the Federal Court which resulted in the settlement on the terms of the two deeds. Importantly, in this regard, the Toll manufacturing deed did not acknowledge or otherwise accept Ariel's ownership of the confidential information. Rather, as his Honour held at [31], pursuant to cl 8(d), Ariel was entitled to manufacture product where it already knew the Specification, or the Specification was provided to it by a third party, without it being in breach of cl 8(d). The practical effect of cl 8(d) therefore was that, if challenged by Pacific as to its manufacture of any particular product other than for Pacific, Ariel (and ERA as its assignee) was entitled to prove that it already knew the Specification or that it was provided to it by a third party.
There are various other aspects of the Toll manufacturing deed that demonstrate that ERA's construction of cl 8(d) was untenable. For example, there was no provision for the delivery up of confidential information after the three year or longer period of the deed as might be expected if cl 8(d) was a licence provision. But more particularly, the clause, by its terms, provided that Ariel "has no right, title or interest in the Specifications". Nothing in the deeds "saved" to Ariel any right, title or interest in confidential information.
Finally, cl 11 does not assist Ariel. Clause 8(d) neither creates a right nor imposes an obligation. It is a declaration or a statement of such interest as it may have in the Specifications. By contrast, cls 8(a) and (b) do create obligations to keep the matters specified in each of those clauses confidential. Clause 8(c) confers a right to disclose the terms of the deed for the purposes therein specified.
In effect, what ERA sought to vindicate in its proposed proceedings were rights that were anterior to the deed.
The primary judge was correct, therefore, in accordance with principle, to summarily dismiss ERA's proceedings. As the proposed amended statement of claim was simply directed to reducing the ambit of the claim, there was no error in his Honour's consequential refusal to allow its amendment.
The Court confirms the order made 2 September 2015: Summons seeking leave to appeal dismissed with costs.

At a glance

Court

Decision date

Before

Source

Judgment (5 paragraphs)

Parties

Cases Cited (2)