F45 Training Pty Ltd v Body Fit Training Company Pty Ltd

1. The applicant pay the respondents' costs of the interlocutory application filed 20 October 2020. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

NICHOLAS J: 1 A dispute arose between the parties earlier in the year concerning the confidentiality of various materials used by the respondents in connection with their Body Fit training studios. The respondents declined to produce materials the subject of a Notice to Produce issued by the applicant dated 19 May 2020 except in a highly redacted form. There were negotiations between the parties in relation to the appropriate form of confidentiality orders that should be made to enable the applicant to prepare its affidavit evidence on infringement. On 6 July 2020 an order was made which included as Annexure A a document entitled "Confidentiality Undertaking" (the "Confidentiality Undertaking"). 2 After the order of 6 July 2020 was made confidentiality undertakings in the agreed form were signed by senior and junior counsel for the applicant, the applicant's solicitors, the applicant's expert witness, and at least one executive employed by the applicant. 3 On 20 October 2020 the applicant filed an interlocutory application seeking declaratory and related relief in relation to the Confidentiality Undertaking. The interlocutory application was listed for hearing on 28 October 2020 on an urgent basis in the belief that the dispute in relation to confidentiality may be impacting the applicant's preparation of its infringement evidence. Such a dispute would ordinarily be resolved, if not by agreement, then by an order of the Court varying the confidentiality regime in some appropriate manner. 4 The applicant approached the matter in a different way. It sought declaratory relief to the effect that the applicant, and, presumably, all who had signed the Confidentiality Undertaking up until that point, were no longer bound by it. 5 The relief sought by the applicant by its interlocutory application filed 20 October 2020 was as follows: 1. A declaration that the BFT Application and the BFT Exercise Videos identified in the Applicant's Notice to Produce dated 19 May 2020 and referred to in order 1(a)(i) and 1(a)(ii) of the orders made by the Court on 6 July 2020 (the "Documents") are not confidential. 2. A declaration that the representatives of the Applicant who gave confidentiality undertakings in respect of the Documents, in the form of Annexure A to the orders made by the Court on 6 July 2020, are no longer bound by those undertakings. 3. An order that the confidentiality undertakings given by representatives of the Applicant in respect of the Documents, in the form of Annexure A to the orders made by the Court on 6 July 2020, are void from the date of these orders. 4. An order directing the Respondents to produce complete and unredacted copies of the BFT Operations Manual and Studio Fit Out Guide, referred to in order 1(c) of the orders made by the Court on 6 July 2020, to the Applicant. 6 The applicant relied upon my judgment in Commonwealth v Sanofi (formerly Sanofi-Aventis) [2017] FCA 382 and the Full Court's decision in Crown Resorts Limited v Zantran Pty Ltd [2020] FCAFC 1 in support of a submission that the Confidentiality Undertaking had a tendency to interfere adversely with the administration of justice and was therefore void or unenforceable. However, in the present case the Confidentiality Undertaking that was provided was given to the Court pursuant to the confidentiality regime imposed pursuant to the order made on 6 July 2020. The authorities relied upon by the applicant, and the principles discussed in them, do not bear on the validity or enforceability of an undertaking given by a party to the Court. 7 The hearing of the interlocutory application commenced but was adjourned after some discussion to enable the applicant to file an amended interlocutory application and to seek to reach some agreement with the respondents in relation to a proposed variation of the confidentiality undertakings. 8 The applicant says that, as a matter of substance, it was ultimately successful in obtaining the interlocutory relief it sought. I do not accept that submission. Ultimately, some variations to the confidentiality regime were agreed, though these fell well short of what the applicant was endeavouring to achieve by its interlocutory application. 9 The applicant's claim for the sweeping relief set out in the interlocutory application was effectively abandoned. In all the circumstances I think costs should follow the event. 10 Orders accordingly. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Nicholas.