JR Consulting & Drafting Pty Ltd & Anor v Cummings & Ors

• PW Young, Declaratory Orders, (2nd ed 1984, Butterworths) - PW Young, C Croft and ML Smith, On Equity, (2009, Lawbook Co) Category: Consequential orders Parties: JR Consulting & Drafting Pty Ltd (First Plaintiff/First Cross-Defendant) Hayes Steel Framing Systems Pty Ltd (Second Plaintiff/Second Cross-Defendant) Robert Cummings (First Defendant) Tanmari Pty Ltd (Second Defendant/Second Cross-Claimant) FrameCAD IP Ltd (Third Defendant/First Cross-Claimant) Steel Framing Systems International Pty Ltd (Third Cross-Defendant) Gianni Pacione (otherwise known as John Pacione) (Fourth Cross-Defendant) FrameCAD Ltd (Fifth Cross-Defendant) Representation: Counsel: T Catanzariti (Plaintiffs/First to Fourth Cross-Defendants) S J Goddard SC/S L Ross (Defendants/Cross-Claimants) Solicitors: Simone Legal (Plaintiffs/First to Fourth Cross-Defendants) Sparke Helmore (Defendants/Cross-Claimants) File Number(s): 2012/282948

Judgment 1In June 2014, I heard proceedings brought by JR Consulting & Drafting Pty Ltd ("JRC") and Hayes Steel Framing Systems Pty Ltd ("HSFS") against Mr Robert Cummings and others. The proceedings related to the ownership and control of software known as Quik Series Software ("QSS") which is used in the design and manufacture of items used in the construction of residential and commercial buildings. The Plaintiffs and a third entity, Steel Framing Systems International Pty Ltd ("SFSI"), are companies associated with Mr John Pacione. A Cross-Claim was in turn brought by Tanmari Pty Ltd ("Tanmari") (a company associated with Mr Cummings) and FrameCAD IP Ltd ("FIPL") (which took an assignment of Tanmari's and Mr Cummings' rights in QSS in November 2011) against JRC, HSFS, SFSI and Mr Pacione. I will use the abbreviation "Plaintiffs" in this Judgment to refer to the Plaintiffs and the Cross-Defendants and the abbreviation "Defendants" to refer to the Defendants and Cross-Claimants. I recognise that there was not a complete identity of the parties in that regard, but nothing turns on the difference for present purposes. 2I delivered my principal judgment on 12 September 2014 ([2014] NSWSC 1252) and summarised my findings in paragraphs 401 - 402 of that judgment as follows: "In summary, I have held that the 2002 Agreement resulted in the grant of a non-exclusive licence to JRC to use QSS in a particular form, as at July 2002, and as updated by updates provided by Mr Cummings, which was not restricted to licensing QSS to Stratco. The 2002 Agreement was, however, abandoned no later than the date of entry into the 2004 Agreement. I have held that the 2004 Agreement did not limit HSFS to licensing QSS and updates to customers who were purchasing a "complete turnkey solution", and was not limited to a period of seven years or to existing customers at the end of that period. I have held that HSFS did not breach the 2004 Agreement by reason of non-payment of licence fees for licences granted by SFSI in the relevant period and the termination of the 2004 Agreement was not effective. I have held that the Defendants were only obliged to provide new releases of QSS compatible with IntelliCad version 4, otherwise unless agreed in writing, under the 2004 Agreement; that both parties had breached the obligations under the 2004 Agreement to enter into an escrow agreement; and that an order for specific performance of that obligation should not now be made. The Plaintiffs' claims in respect of breach of contractual obligations regarding development services, confidential information and good faith, the tort of conspiracy, misleading or deceptive conduct, unconscionability, the tort of inducing breach of contract and for groundless threats of infringement have not been established. The Cross-Claimants have succeeded, in significant respects, in respect of the Cross-Claim. I have held that three identified versions of QSS are subject to a proper claim for copyright. I have held SFSI liable for copyright infringement and that HSFS and Mr Pacione had authorised the relevant infringement by SFSI and that the Cross-Claimants are entitled to additional damages under the Copyright Act in respect of the infringement. The Cross-Claimants' claims for misleading or deceptive conduct against SFSI regarding representations on its website and for breach of a duty of confidentiality against the Cross-Defendants have also been established. The Cross-Claimants' claim for trade mark infringement has not been established." I indicated that I would hear the parties as to whether orders were properly made at this point to give effect to the findings in my principal judgment and as to any further directions which should be made in respect of a further hearing as to quantum. 3The parties have now submitted draft orders and there is only limited agreement between them as to the form of orders that should be made. The parties each made detailed written submissions as to that matter and that question was the subject of an oral hearing on 22 October 2014. In preparation for that oral hearing, I directed the parties to prepare a schedule of their proposed orders and a summary of their respective positions as to those orders, which has been of considerable assistance in identifying the relevant issues. I will address the relevant orders in the order in which they appear in that schedule. Plaintiffs' proposed order 1 - declaratory relief as to termination of 2004 Agreement 4The Plaintiffs seek a declaration that: "... the purported termination of the Licence Agreement between [HSFS] and [Tanmari] dated 4 August 2004 ("[2004] Agreement") was invalid and the [2004] Agreement remains extant." The suggested declaration relates to notices of breaches given by Tanmari and FIPL in December 2011 under the 2004 Agreement, by reference to licences granted by HSFS and/or SFSI on which licence fees had not been paid, and Tanmari's purported termination of the 2004 Agreement by letter dated 24 January 2012 from its solicitors to HSFS's solicitors. 5The Plaintiffs submit that this declaration is supported by paragraphs 193 and 333 of my principal judgment. In paragraph 193 of my principal judgment, I held that the 2004 Agreement had not been validly terminated by the notice of termination given by Tanmari in January 2012 and I also noted that finding in paragraph 333 of that judgment. I addressed several arguments raised by the parties in respect of the status of that termination in paragraphs 178ff of my principal judgment and held that the Plaintiffs had not established that Tanmari had abandoned its right to terminate the 2004 Agreement for breach; that service of the relevant notice of termination upon the Plaintiffs' solicitor was effective; that the intervening issue of a notice of dispute by HSFS did not deprive Tanmari of its ability to terminate the 2004 Agreement for breach; but that Tanmari was not entitled to terminate the 2004 Agreement, after it had assigned the benefit of that Agreement to FIPL under the FIPL Purchase Agreement, since FIPL then had the right to terminate the 2004 Agreement and it had not done so, and, for that reason, the 2004 Agreement had not been validly terminated. 6Ms Catanzariti, who appeared for the Plaintiffs in respect of the hearing as to the scope of the orders, submitted that the Court may make a declaration of right under s 75 of the Supreme Court Act 1970 (NSW) although no other relief is sought by the Plaintiffs in the liability stage of the proceedings, and that the Court had a wide jurisdiction to make a declaration, provided that there was a real and not a theoretical question in issue, the person raising that issue had a real interest to raise it and there is a true opponent to the declaration. Ms Catanzariti submitted that a declaration may be made where it is important to a party in a "real commercial sense" to know whether the other party is bound by an enforceable contract, and that the making of a declaration has practical utility where it may confirm the existence of a valuable right, such as a copyright licence or trademark licence: Integrated Lighting and Ceilings Pty Ltd v Philips Electrical Pty Ltd (1969) 90 WN (Pt 1) (NSW) 693; Bondi Beach Astra Retirement Village Pty Ltd v Hohman [2010] NSWSC 260 at [61]ff; Painaway Australia Pty Ltd v JAKL Group Pty Ltd [2011] NSWSC 205; (2011) 249 FLR 1 at [386]ff. 7Ms Catanzariti pointed out that the status of the 2004 Agreement was raised by paragraphs 7 and 8 of the relief sought in the Amended Statement of Claim (T17). Those paragraphs respectively sought declarations as follows: "7. A declaration that [HSFS] has the right to use and sub-license the use of the QSS Application in [HSFS's] steel framing manufacturing system pursuant to the [2004 Agreement]. 8. A declaration that the purported termination of the [2004 Agreement] on 24 January 2012 was invalid and that the [2004 Agreement] remains on foot." Ms Catanzariti also submitted, and I accept, that those paragraphs of the Amended Statement of Claim indicate that the position in respect of the 2004 Agreement was squarely raised in the proceedings, and Ms Catanzariti also rightly pointed out that the Defendants had in turn sought orders as to the expiry of the 2004 Agreement, and had therefore also proceeded on the basis that its status was in issue in the proceedings. Those issues were in turn addressed at some length in paragraphs 145-193 of my principal judgment, although their practical significance had been reduced by evidence that emerged in the course of the proceedings that HSFS, which was the party to the 2004 Agreement and had the benefit of any rights under it, had substantially ceased its business and had ceased granting new licences well before the commencement of the proceedings, and that SFSI, which was then granting new licences, did not rely on the 2004 Agreement or any rights held by HSFS in order to do so. 8The Plaintiffs submit that such a declaration would clarify and help govern the relationship of the parties, confirm the position to third parties who derive their rights from the 2004 Agreement and reduce confusion in the marketplace. Ms Catanzariti also submits, with considerable force, that there is utility in a declaration as to the status of the 2004 Agreement, by parity of reasoning with the Defendants' submission (to which I will refer below) that there is utility in a declaration as to termination of the 2002 Agreement to the extent that it will allow the market to be properly informed. There is some evidence now led in this application that HSFS now claims to be entitled to grant new licences under the 2004 Agreement. The Plaintiffs also point to representations made on FIPL's website and to customers of the Plaintiffs which are said to be to the effect that HSFS has no rights and no licence. However, as I noted in my principal judgment, those representations should be understood as representations that SFSI, which was then conducting the relevant business, had no rights and no licence, and those representations were correct. The evidence to which Ms Catanzariti points does not indicate that, since my judgment, the Defendants have made any representation inconsistent with it. 9On the other hand, the Defendants submit that such a declaration would have no practical utility and would go beyond the Court's findings, that the phrase "remains extant" in the proposed declaration is potentially misleading and the declaration does not declare any present right. The Defendants submit, correctly, that there is no explicit finding of the Court that the 2004 Agreement was extant; however, that proposition might, within one meaning of the term "extant", follow from my finding that it has not been validly terminated. The Defendants also point to my finding that, in April 2009, HSFS ceased to license new customers and substantially ceased its business operations. 10The Defendants in turn submit that the Court will not grant a declaration, even if it has jurisdiction to do so, unless it is satisfied both that the declaration sought is appropriate and that it has sufficient practical utility: Neeta (Epping) Pty Ltd v Phillips [1974] HCA 18; (1974) 131 CLR 286. The Defendants also rely on the observation of Barwick CJ and Jacobs J in Neeta (Epping) Pty Ltd v Phillips above (at 307) that a declaration should not be made where the consequences that flow from it may leave other issues between the parties undetermined and no other relief is sought. The Defendants also refer to Trans Realties Pty Ltd v Grbac [1975] 1 NSWLR 170 at 173 per Hutley JA, at 176 per Glass JA; however, it seems to me that that decision turned on the Court's finding that the declaration in that case was directed to a false issue, where the plaintiffs in that case had not sought an order for specific performance. This is not a case, by contrast with Neeta (Epping) Pty Ltd v Phillips above and Trans Realties above, where there is any suggestion that a declaration would be made leaving other issues undetermined, and orders for damages, compensation or an account of profits will determine those remaining issues. It seems to me that in this case, like Cypjayne Pty Ltd v Rodskog [2009] NSWSC 301 and Bondi Beach Astra Retirement Village Pty Ltd v Hohman above, the suggested declaration is not merely an anterior step to inevitable future litigation and, while the possibility of further disputes cannot be excluded, they may well involve different issues. A declaration is also not hypothetical and has utility to the extent that there are real controversies as to the status of the 2004 Agreement. 11The Defendants also refer to the decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (No 2) [2009] FCAFC 47, where the Full Court of the Federal Court had found that there was an infringement of a trade mark owned by E & J Gallo and the appellants sought a declaration as to that infringement. The Full Court held there was no utility in that declaration where it would merely reflect a corresponding finding in the judgment. Ms Goddard, who appears with Ms Ross for the Defendants submits, and I accept, that that case recognises that the fact that the Court has found a particular matter does not require that a declaration be made as to that finding, and that any declaration which is to be made, to reflect matters determined in the judgment, would also need to be expressed with precision. 12It seems to me that a declaration that properly reflected the basis of my principal judgment would be justifiable, but the present form of declaration sought by the Plaintiffs is not. First, any declaration would need to be limited to the finding that I had made, namely, the purported termination of the 2004 Agreement by Tanmari by its solicitors' letter dated 24 January 2012 was not effective. The declaration that was sought in the Amended Statement of Claim was focussed on that issue in a manner that the present declaration is not. Second, the proposition that the 2004 Agreement remains "extant" seems to me to be capable of creating a misleading impression that the 2004 Agreement had practical continuing operation during the period of the proceedings before me. That impression would not be correct, since the evidence made clear that, for a large part of the period in issue in the proceedings, and at the date of delivery of my judgment, HSFS had in fact ceased to license new customers and had substantially ceased its business operations. I consider that I should afford the Plaintiffs a further opportunity to draft a narrower declaration that properly reflects the terms of my principal judgment, in the manner noted above, if they seek such a declaration. That matter can be addressed when the matter is listed before me for argument as to costs on 10 December 2014. Plaintiffs' proposed order 2 - declaratory relief as to obligations of FIPL under the 2004 Agreement 13The Plaintiffs also seek a declaration that: "... [FIPL] is bound by the terms of the [2004] Agreement pursuant to the assignment of the [2004] Agreement on 31 October 2011." The Plaintiffs submit that this declaration is supported by paragraphs 193, 285, 299 and 333 of my principal judgment and by s 196(2)(b) of the Copyright Act 1968 (Cth). I have referred to paragraph 193 of that judgment above, where I held that the 2004 Agreement had not been validly terminated for the reasons noted above, and that paragraph does not address the effect of the assignment of the 2004 Agreement to FIPL. In paragraph 285 of my principal judgment, I noted the effect of s 196 of the Copyright Act, in dealing with the Plaintiffs' submissions as to their conspiracy claim. My observations in that regard were put in a conditional manner, using the language "so far as FIPL was bound by any obligations which attached to Tanmari as the successor to the copyright owner". In paragraph 299 of my principal judgment, I noted the possibility that Tanmari (or FIPL on its behalf) would comply with the 2004 Agreement if the Court held that its termination was invalid, in dealing with the question of repudiation and anticipatory breach. That passage did not involve any finding of law as to the effect of the assignment of the 2004 Agreement to FIPL. In paragraph 333 of my principal judgment, to which I referred above, I noted my finding that the 2004 Agreement had not been validly terminated, but that does not add anything to the question of assignment. 14I also addressed the operation of s 196(4) of the Copyright Act in paragraph 101 of my principal judgment, in dealing with an issue as to the assignment of the 2002 Agreement, and in paragraph 283 of my judgment in noting, but not accepting, a submission that HSFS was under a "special disadvantage" for the purposes of its unconscionability claim because it became FIPL's licensee without a direct contractual relationship with FIPL, by reason of the assignment of the copyright to FIPL and the effect of s 196 of the Copyright Act. I observed that I did not accept that submission since: "HSFS was not undertaking any substantive business at that time; its rights were sufficiently protected by s 196 of the Copyright Act, and, to the extent that customers sub-licensed by HSFS prior to April 2009 had rights to continue using QSS, those rights were not prejudiced by the FIPL Purchase Agreement." 15The Plaintiffs advanced similar submissions to those advanced in support of the first declaration in support of this declaration. They submit that this declaration would clarify and help govern the relationship of the parties; would confirm that HSFS has a "valuable asset" in the 2004 Agreement; and would confirm the position to innocent third parties who derive their rights from the 2004 Agreement and would reduce confusion in the marketplace. Ms Catanzariti also submitted that there is utility in this declaration even if (which the Plaintiffs denied) there was room for dispute as to the content of the relevant obligations and there may be further dispute as to the enforceability of the obligation. I accept, as I noted above, that a declaration could be made, in an appropriate case, although the issue of enforceability of the obligation could be subject to further dispute and although it would not determine all possible disputes: Bondi Beach Astra Retirement Village Pty Ltd v Hohman above at [72]; Cypjane Pty Ltd v Rodskog above at [59]. 16The Defendants submit that no corresponding declaration was sought in the prayers for relief in the Amended Statement of Claim, which instead sought specific performance of specified obligations by FIPL. I held in my principal judgment that the basis for the orders for specific performance sought was not established. The Defendants in turn question the utility of such a declaration, where HSFS has been left to a claim for damages for any breach of cl 5 of the 2004 Agreement, dealing with escrow, and the Plaintiffs did not establish any breach of obligations of Tanmari (or FIPL as the assignee of the 2004 Agreement) in respect of updates or new releases under the 2004 Agreement. 17I asked Ms Catanzariti, in the course of oral submissions, whether there was a substantive issue in the proceedings as to whether FIPL was bound by the 2004 Agreement if it remained on foot, and the closest that Ms Catanzariti was able to come to identifying such an issue was that there was a question, arising in respect of the issue as to the validity of termination of the 2004 Agreement, whether that agreement had been assigned to FIPL (T22). That issue seems to me to be somewhat distant from the declaration that is now sought. Ms Catanzariti also pointed to a pleading by the Plaintiffs relying on s 196(4) of the Copyright Act, to give rise to a licence binding upon FIPL, and I have addressed that matter above. It seems to me that the issue whether FIPL was bound by the terms of the 2004 Agreement was ultimately not a matter that was of substantive significance in the hearing before me, not least because, during the course of the hearing, it had emerged that HSFS had substantially ceased its business and was not granting further licences to third parties, so its position under the 2004 Agreement was of marginal practical significance. On the other hand, SFSI, which was then granting further licences to third parties, was purporting to do so under a sub-license granted to it by JRC under an earlier agreement between Mr Cummings and JRC in 2002, not under the 2004 Agreement. 18I have addressed several of the matters on which the Plaintiffs rely to support the practical utility of the declaration above. I do not consider that I should make such a declaration, where it was originally not sought in the Plaintiffs' pleaded case; the issue whether FIPL was bound by the 2004 Agreement was one which was of marginal relevance in the proceedings, for the reasons noted above; and the issue was not one which was the subject of any substantive findings in my principal judgment. To the extent that the Plaintiffs rely on s 196 of the Copyright Act to establish FIPL's obligations in respect of the 2004 Agreement, and there is any dispute as to that issue, then that dispute is not a matter that has been determined in these proceedings. 19The Defendants alternatively seek a limitation to any such declaration, indicating the particular versions of QSS that HSFS is authorised to use, copy, market, resell or promote and recording the Court's findings as to the position in respect of the provision of updates of QSS to HSFS. The limitation which the Defendants sought, in that declaration, so as to limit HSFS's rights to particular versions of QSS, has the difficulty that it does not reflect any right of HSFS to receive updates or new releases, if they were issued, under the 2004 Agreement. However, it is ultimately not necessary to determine whether such a limitation is required since I do not propose to make this declaration in the form sought by the Plaintiffs. 20I should add, for completeness, that the Defendants also oppose the grant of the declaration, if its effect would be to enable HSFS to recommence licensing activities with respect to QSS, on the basis that the forensic landscape of the proceedings would have been different if the Plaintiffs had been "candid" with that intention, and submit that HSFS had "misled" the Court as to its true intentions. I do not consider that the Court was misled in the manner for which the Defendants contend. First, there is no reason to assume that HSFS then had any such non-disclosed intention to recommence business, as distinct from forming that intention after it emerged in the principal judgment that JRC did not have the rights on which it relied and that SFSI was not entitled to grant the licences which it had been granting for a considerable period of time. Second, it does not seem to me that HSFS had any obligation to advise the Court whether it might recommence its business operations in the future, although I would add that it would hardly have been difficult to anticipate that it might have done so had it been found (as it has been found) that it had continuing rights under the 2004 Agreement. Third, it does not seem to me that the possibility that HSFS might recommence business has any relevance to the Court's findings, inter alia, that the termination of the 2004 Agreement was invalid because the relevant notice was not given by FIPL as assignee of the relevant rights. Fourth, I do not accept that any declaration would "enable" HSFS to recommence licensing activities, where its ability to do so arises from its rights under the 2004 Agreement, not from the making of any declaration about them, or that any such consequence would be a reason not to make that declaration. 21It seems to me that this issue should be approached, as I have above, not on the basis that the Court was misled as to any intention of HSFS to recommence business, but simply on the basis that the position as to any future business which HSFS has decided to conduct after the delivery of my principal judgment was not in issue in the proceedings before me. Plaintiffs' proposed order 3 - declaratory relief as to breach by Tanmari in terminating the 2004 Agreement 22Third, the Plaintiffs seek a declaration that Tanmari's purported termination of the 2004 Agreement was a breach of that agreement. On the one hand, Ms Catanzariti points to observations by commentators that the Court can declare that a breach of contract has occurred: RP Meagher, JD Heydon & MJ Leeming, Meagher Gummow & Lehane's Equity Doctrines and Remedies, (4th ed 2002, Butterworths Lexis-Nexis) at [19.075]; PW Young, Declaratory Orders, (2nd ed 1984, Butterworths) at [1810]. Ms Catanzariti also relies on the observations of Slattery J in McCausland v Surfing Hardware International Holdings Pty Ltd (No 2) [2014] NSWSC 163, where his Honour noted (at [16]) that there were recognised categories of cases where declaratory relief was not appropriate, including where no good purpose would be served by the granting of declaratory relief, and where a suit for a declaration would in substance be the determination of a question anterior to a further suit for substantive relief, and the Court should generally insist that a substantive remedy be sought in addition to a declaration, so as to resolve all disputes between the parties. His Honour went on to observe (at [17]) that, in that case: 'It cannot be said that no good purpose would be served by granting declaratory relief: here, the declaration does have identifiable consequences- an award of damages for breach of contract. And a declaration in this case does not invite a further suit for substantive relief. Rather the defendants say that declaratory relief is superfluous, because damages will be awarded anyway. That is not a reason why a declaration should not be made. On the contrary, the proposed award of damages places this case well outside the categories of case where a declaration is commonly declined." 23It appears to be implicit in his Honour's reasoning that he considered that a good reason or "good purpose" for the grant of a declaration existed although it was, in a sense, simply a step on the way to the award of damages in the same case. On the other hand, there is authority that a declaration should not be made where, as here, it would merely be prefatory to any order for damages: Attorney-General (NSW); Ex rel Corporate Affairs v Australian Softwood Forests Pty Ltd [1979] 2 NSWLR 73 at 76 per Hutley JA (with whom Reynolds and Samuels JJA agreed); PW Young, C Croft and ML Smith, On Equity, (2009, Lawbook Co) at p 1084. For reasons that will emerge below, it is not necessary to resolve any difference of approach in respect of this declaration. 24Ms Catanzariti submits that the proposed declaration would establish HSFS's right to an indemnity under cl 7.3 of the 2004 Agreement and its right to damages (although, as I noted in my principal judgment, that right may be limited in value by the limited extent to which HSFS was then conducting any business). Ms Catanzariti also submitted that Tanmari could not be heard to claim that HSFS was not trading because it did not grant licences after January 2012, when Tanmari had purported to terminate the 2004 Agreement in January 2012. I can see no reason why Tanmari cannot contend that HSFS was not trading where, as Mr Pacione accepted in cross-examination to which I referred in the principal judgment, he had caused HSFS to cease to trade and cease it to grant new licences, and SFSI had, in effect, assumed its business, and that had occurred well before Tanmari purported to terminate the 2004 Agreement. Ms Catanzariti also submitted, oddly, that Mr Pacione's concession that HSFS did not grant new licences was in response to his cross-examination by the Defendants' Counsel. The fact that that evidence emerged in cross-examination does not seem to me to undermine its weight and, in any event, there is no basis now to revisit the findings that I made in that regard in my principal judgment. 25Ms Catanzariti also submits that HSFS will use the rights under the 2004 Agreement to "revivify and rejuvenate its business". While there was no evidence to support that proposition, it would hardly be surprising if HSFS were now to recommence business, to the extent that the 2004 Agreement has not been terminated and it has some continuing rights under it, in circumstances that the other entities associated with Mr Pacione do not have such rights. As Ms Catanzariti pointed out in reply, the fact that the 2004 Agreement has some value to HSFS is supported by the fact that is assignable with consent, which may not be unreasonably withheld (2004 Agreement cl 13.2). Ms Catanzariti also submitted that HSFS has not abandoned its claim for damages, in respect of Tanmari's breach of obligation to deposit source code in escrow (Judgment [216], [253]); a suggested breach of obligation to obtain HSFS's consent before Tanmari assigned the 2004 Agreement and its rights to FIPL (Judgment [241], [253]); Tanmari's purported termination of the 2004 Agreement (Judgment [190], [253], [299]); and Tanmari's breach of an obligation arising under a dispute resolution clause in the 2004 Agreement (Judgment [188], [242]). 26The Defendants submit that the Plaintiffs did not seek declaratory relief in respect of this matter, although claims for damages were made against Tanmari (ASOC claims for relief [11]) and against FIPL for inducing breach of contract (ASOC claims for relief [17]). They also submit that I did not reach the findings necessary to support such a declaration. 27I am not satisfied that this declaration should be made, on the narrower basis that it is not supported by the findings in my principal judgment, where it was not necessary to reach a final determination as to this matter where such a declaration was not then sought by the Plaintiffs. The Plaintiffs rely on paragraph 299 of my principal judgment to support that declaration, which addressed the termination of the 2004 Agreement in dealing with the Plaintiffs claim against FIPL for the tort of inducing breach of contract, which I held was not established on other grounds. I did not there reach a finding that a repudiation or anticipatory breach of that agreement was in fact established. Indeed, I identified a reason why it might not have been, in observing that: "I accept that the purported termination of that agreement was arguably an anticipatory breach of it and may have amounted to a repudiation of it, subject to the qualification that it is by no means clear that Tanmari (or FIPL on its behalf) would not comply with that agreement if the Court held that termination was invalid." (emphasis added) It was not necessary to reach, and I did not reach, a final determination of that question given the manner in which the case was put at the hearing. The fact that I was not asked to and did not reach a finding as to the matter recorded by the declaration seems to me to be sufficient reason not to make it. Plaintiffs' proposed order 4 - declaratory relief as to breach by Tanmari in failure to enter into escrow agreement and deposit source code in escrow 28Next, the Plaintiffs seek a declaration that Tanmari breached its obligation to enter into an escrow agreement and deposit source code in escrow. The Plaintiffs submit that declaration is supported by paragraph 206 of my judgment; this is likely to be a reference to paragraph 216 of my judgment, where I held that Tanmari had breached the 2004 Agreement, so far as it was obliged to enter into an escrow agreement and did not do so. The Plaintiffs submit that such a declaration supports an award of damages and a claim under cl 7.3 of the 2004 Agreement. I had observed, in paragraph 217 of my principal judgment that: "It seems to me that damages are an appropriate remedy for the breach of Tanmari's obligation to enter into that escrow agreement, and the quantification of those damages may well reflect the extent to which HSFS's conduct contributed to any resulting loss and the fact that HSFS substantially ceased to grant new licences in April 2009." 29The Defendants submit that no such relief was sought in the Amended Statement of Claim and that the Court had rejected the claim for specific performance in respect of the lodgement of source code and contend that such a declaration has no utility, even if damages are now sought. 30On balance, I consider that I should follow the approach in Attorney-General (NSW); Ex rel Corporate Affairs v Australian Softwood Forests Pty Ltd above, where any declaration would simply be a step towards a claim for damages and where, in the particular circumstances, it is difficult to see how HSFS could establish substantial damages arising from this matter, given the substantial cessation of its business (to which I referred in my principal judgment) and the fact that the events which would allow it to exercise any rights to software in escrow have not occurred. To the extent that HSFS seeks to establish a claim for damages, and subject to the question whether it is entitled to do so given its pleaded case, the declaration is not necessary for it to pursue that claim. Accordingly, I do not propose to make that declaration. Plaintiffs' proposed orders 5 and 6 - inquiry as to damages and reservation of costs 31The Plaintiffs initially sought an order that there be an inquiry into damages payable arising from breaches by Tanmari of the 2004 Agreement. Ms Catanzariti did not press that order in oral submissions (T24). No such order is necessary, where the Court has already ordered that questions of quantification be heard after the determination of the question of liability. The Plaintiffs also initially sought an order that costs of the proceedings be reserved until the final determination of the proceedings. That order is not necessary where a hearing in respect of the costs of the proceedings is already to occur on 10 December 2014. Defendants' proposed orders 1 - 2 - declarations as to 2002 Agreement 32It was common ground between the parties (with the qualification noted in paragraph 33 below) that a declaration should be made, reflecting paragraph 1 of the Cross-Claim and my finding at paragraph 99 of my principal judgment, in the following terms: "By 11 August 2004 the Deed of Agreement dated 28 July 2002 between JR Consulting & Drafting Pty Ltd (First Plaintiff/First Cross-Defendant) and Robert Cummings (First Defendant) had been abandoned." I found in paragraph 99 of my principal judgment that the non-exclusive licence to JRC to use QSS arising under the 2002 Agreement had come to an end by abandonment, at least by the entry into the 2004 Agreement. The Defendants submit that the declaration has practical utility so far as, from April 2009 until after the delivery of my judgment, SFSI purported to grant rights to sub-license QSS to third parties, relying on rights which it claimed to have obtained from JRC under the 2002 Agreement. The Defendants also rely on evidence that SFSI continued to represent that it had the right to exploit QSS on its website after the delivery of the judgment, although an undertaking by SFSI not to grant further licences was offered when the matter was next listed before me. 33Ms Catanzariti submitted that, if the Plaintiffs' proposed orders 1 and 2 have no utility, then this proposed order also has no utility and should not be made. In oral submissions, Ms Goddard accepted that the first declaration sought by the Plaintiffs in respect of the 2002 Agreement might well not be made, if the Court did not make the declarations sought by the Plaintiffs in respect of the 2004 Agreement, by parity of reasoning (T37). I have not declined to make the first declaration sought by the Plaintiffs on the basis of lack of utility and I consider that there is utility in making this declaration where SFSI had, for a considerable period, exercised rights in respect of QSS which it claimed to have derived from a sub-licence by JRC to it arising under the 2002 Agreement. 34The Defendants also sought a second declaration that the non-exclusive licence to JRC to use QSS had "come to an end" by the same date. The Defendants support that declaration on the same basis as they support the first declaration, and the Plaintiffs respond that the second declaration is not necessary if the first declaration is made. Ms Catanzariti submitted, in reply, that a declaration that the 2002 Agreement came to an end was not supported by the principal judgment, where my finding was in terms that that agreement had been abandoned (Judgment [95], [99]). That second declaration seems to me to be duplicative of, but to be less precise than, the first declaration, so far as the relevant rights were derived from the 2002 Agreement and, to the extent they came to an end, it occurred by way of abandonment. I accept the Plaintiffs' submission that the second declaration is unnecessary where the Court makes the first declaration. Defendants' proposed orders 3 and 5 - injunctive relief against SFSI 35The Defendants rely on s 66 of the Supreme Court Act to support the grant of injunctive relief in their proposed orders 3-9. The Defendants' proposed order 3 sought an order permanently restraining SFSI, without express written licence from FIPL, from taking specified steps in respect of the whole or a substantial part of specified versions of QSS. They support their proposed order 3 by the finding at paragraph 341 of my judgment that SFSI's infringement of the copyright in QSS had been established by matters that were admitted by JRC (which was said to have sub-licensed the relevant rights to SFSI) and HSFS and the findings that I had reached in my judgment, including that Mr Cummings had copyright in at least the three specified versions of QSS. The Plaintiffs initially sought to delete the words "without the express written licence of" FIPL from that order, but ultimately did not press that deletion (T6-7) and confirmed in oral submissions that this order may be made without opposition. 36The Defendants also sought wider injunctive relief against SFSI in their proposed order 5, which is wider than their proposed order 3 so far as it extends to QSS generally and not only to specified versions of it. Although that appears to be the primary or only difference between the two orders, the Plaintiffs advanced other objections to this order which they had not taken in respect of proposed order 3. 37Ms Catanzariti submitted that the Defendants had only proved that copyright subsisted in versions 11.176, 11.406 and 11.604 of QSS (Judgment [317]) and FIPL had not proved that it owed copyright in any version of QSS after November 2011 (Judgment [321]) and that any injunction should be limited to the whole or a substantial part of those versions. Ms Catanzariti also pointed out, in the course of submissions, that there was no acknowledgement by the Plaintiffs of FIPL's claim to copyright at any time after the assignment to them as at 1 November 2011, and that I had found that FIPL had not proved copyright after that date. It seems to me that, as the Plaintiffs submit, a permanent injunction cannot go further than the three versions of QSS as to which the Defendants established copyright. The Defendants' proposed order 3 already addresses that conduct, and proposed order 5, so far as it is wider in scope, should not be made for that reason. 38For completeness, I should note that the Plaintiffs also criticise the form of this order on the basis that it merely compels SFSI to comply with the law, and I will address that question further in respect of the Defendants' proposed order 4 below. The words "infringing the copyright of" FIPL in this proposed order would have had to be deleted, so as to address the difficulty that the injunction was framed as directed to a breach of the law, and instead to restrain specific and identified conduct. Ms Catanzariti also submits that an injunction is unnecessary unless there is a proper basis for fearing that a person will not comply, and suggests that the evidence does not establish that SFSI is continuing to exercise copyright, as distinct from that HSFS is licensing software. I would not have declined the order on that basis, since it seems to me that the findings of breach of copyright which I have made against SFSI, over a significant period, are such as to create sufficient risk that it might in future infringe such copyright. Defendants' proposed order 4 - injunctive relief against HSFS and Mr Pacione 39The Defendants sought an order permanently restraining HSFS and Mr Pacione from infringing the copyright of FIPL by authorising, without the express written licence of FIPL, the reproduction in a material form or communication to the public of the whole or a substantial part of each of the computer programs comprising any version of QSS. The Defendants submitted that such an order reflected my findings that HSFS and Mr Pacione had authorised SFSI's infringement of copyright (Judgment [345], [350]). They also refer to evidence that, at least for a period of time, HSFS had continued to authorise infringing conduct of SFSI following the delivery of my judgment. They note that injunctions in respect of the copyright are available under s 115(2) of the Copyright Act and Ms Goddard referred, in submissions, to examples of the grant of permanent injunctive relief in other claims for breach of copyright: Nokia Corporation v Truong [2005] FCA 1141; (2005) 66 IPR 511 at [46]; QS Holdings Sarl v Paul's Retail Pty Ltd (No 2) [2011] FCA 1038 at [6]. 40Ms Catanzariti submits that injunctions should refer to conduct rather than law, so that the person knows what they can and cannot do, rather than being restrained from, for example, "infringing copyright": Redland Bricks Ltd v Morris [1970] AC 652 at 666. As I understand Ms Goddard to have accepted, the words "infringing the copyright of" FIPL in proposed order 4 should be deleted, so as to address the difficulty that the injunction is framed as directed to a breach of the law, and instead to restrain specific and identified conduct. 41Ms Catanzariti also submits that, this order, like proposed order 5 in respect of SFSI which I addressed above, goes beyond the particular versions of QSS as to which the Defendants have established copyright. As I noted in respect of proposed order 5, such an order would have had to be limited to conduct in respect of the whole or a substantial part of the specified versions of QSS in which Tanmari and FIPL, by assignment, had established copyright. I also accept the Plaintiffs' submission that this order must be limited, so far as I have held that HSFS has certain continuing rights under the 2004 Agreement. 42The Plaintiffs also submit that Mr Pacione should be permitted to exercise rights as an officer of HSFS and JRC, to the extent that subsisting rights may exist after the abandonment of the 2002 Agreement. Ms Catanzariti also submitted, in submissions in reply, that the Defendants proposed order 4 should also be qualified to recognise that Mr Pacione is an officer of HSFS and is "entitled to exercise [HSFS's] rights pursuant to the [2004] Agreement in his capacity as an officer of the Company". I do not accept that submission, in those terms. Mr Pacione does not derive, in a personal capacity, any entitlement to rights held by HSFS, although HSFS may well exercise such rights as it has through its officers. It seems to me that the injunction should be qualified so as to permit HSFS's exercise of such rights as it has, by its officer, Mr Pacione. A similar qualification may be required in respect of rights of JRC, if it is shown that those rights have any continuing operation in respect of particular customers. 43It seems to me that these matters are addressed by the amendment which the Plaintiffs seek to the proposed orders, which permit the exercise of rights arising with the express written licence of the predecessors in title to FIPL, and limit the relief to reproduction in a material form or communication to the public of the whole or a substantial part of the specified versions of QSS, as follows: "Each of Hayes Steel Framing Systems Pty Ltd (Second Plaintiff/Second Cross-Defendant) and John Pacione (Fourth Cross-Defendant) be permanently restrained, whether by themselves, their agents, their officers, their employees or otherwise, from authorising, without the express written licence of the First Cross-Claimant or its predecessors in title, the: (a) reproduction in a material form; or (b) communicating to the public, of the whole or a substantial part of versions 11.176, 11.406 and 11.604 of QSS." Defendants' proposed orders 6 and 7 - injunctive relief in respect of representations and damages 44The Defendants' proposed order 6, with an amendment to as accepted by the Defendants, was not opposed by the Plaintiffs and reflects the relief sought in paragraphs 20 and 21 of the Cross-Claim and my findings in paragraphs 369 and 370 of the principal judgment. I am satisfied that that order should be made as follows: "Steel Framing Systems International Pty Ltd (Third Cross-Defendant) be restrained, whether by itself, its agents, its officers, its employees or otherwise, from representing in trade and commerce that it represented to licence QSS to third parties." 45The Defendants' proposed order 7, namely, an order that SFSI pay FIPL damages under s 236 of the Australian Consumer Law, was also not opposed by the Plaintiffs. However, I do not consider that order is necessary at this stage, so far as it goes to the question of quantification which is to be heard separately after issues of liability have been determined, and I therefore do not propose to make that order. Defendants' proposed orders 8 - 9 - Licence key generator 46The Defendants' proposed order 8 is to the effect that JRC, SFSI and Mr Pacione be permanently restrained from using or authorising others to use the licence key generator as defined in paragraph 77 of the Cross-Claim. The Defendants submit that that order reflects the findings in paragraphs 385 and 387 of my principal judgment, where I had found that a duty of confidentiality had been breached in respect of the licence key generator to the extent that the licence key generator had been used to make QSS work for persons purportedly sub-licensed by SFSI to use QSS. It is clear that such an order may be made as against SFSI, to the extent that it has no right to use QSS and no right to use the licence key generator incidental to any right to use QSS. 47The Plaintiffs seek to have that order qualified, in respect of JRC and Mr Pacione, so as to permit the use or authorisation of use of the licence key generator to the extent that JRC is performing licences granted by it to its customers pursuant to the 2002 Agreement before it was abandoned, or under other licences granted by Mr Cummings or Tanmari before 11 August 2004, or to the extent that Mr Pacione is exercising rights and performing obligations pursuant to licences granted to customers under those agreements or under the 2004 Agreement. It seems to me that no qualification to the restraint is required to permit JRC or Mr Pacione to authorise others to use the licence key generator, being the program which generates licence keys, since there is no occasion for others to do so. As the Defendants point out in submissions, any persons properly authorised by JRC or Mr Pacione to use QSS, under the earlier arrangements, need to be provided with licence keys, not the licence key generator program. 48It seems to me that the present exceptions sought by the Plaintiffs in respect of JRC's own use of the licence key generator are complex and likely to be productive of further disputes, and that is undesirable where an order is in the nature of a permanent restraint which is enforceable by contempt. In the course of oral submissions, I raised with Ms Catanzariti the possibility that, so far as any earlier licences granted by JRC or others existed, that is a matter that ought to be addressed by way of evidence, so that any impact on third party rights could be specifically addressed (T54). I will allow JRC an opportunity to identify the particular entities to which they contend they will need to use the licence key generator provide licence keys, and the relevant obligations arising from the earlier agreements, and to lead evidence in support, so that a precise limitation to the order may be formulated identifying the use which JRC may make of the licence key generator to provide licence keys to third parties. That evidence should preferably be led prior to the next listing of the matter on 10 December 2014, so that the issue can be addressed on that occasion. 49No exclusion is required in respect of the provision of licence keys by HSFS pursuant to the 2004 Agreement, since the order does not extend to HSFS. I do not accept that any specific exception is required for Mr Pacione, since he has no personal entitlement to use the licence key generator or to authorise others to use it, and is only permitted to do so to the extent that he is acting as an officer of a corporate entity, relevantly, JRC in respect of existing customers or HSFS under the 2004 Agreement, which has an entitlement to use the licence key generator. 50The Defendants' proposed order 9 is to the effect that HSFS be permanently restrained from disclosing or providing the licence key generator to any third party. The Defendants point out that that order reflects the relief sought in paragraph 23 of the Cross-Claim and the findings at paragraphs 385-386 of my principal judgment. There is no difficulty with that order, so far as HSFS's rights under the 2004 Agreement are concerned, because the provision of licence keys to persons who are properly authorised under the 2004 Agreement does not require that they be provided with access to the licence key generator. I do not understand this order to have been opposed by the Plaintiffs and I will make that order in the proposed form Defendants' proposed orders 10 - 13 - Disclosure of information 51The Defendants also seek orders for disclosure to facilitate the process of their election between the alternative remedies sought in paragraphs 11 and 13 of the Cross-Claim, namely, an account of profits or compensation. The Defendants identify the claims in respect of which an election is necessary as involving an election, under s 115(2) of the Copyright Act between damages (including additional damages) or an account of profits with respect to the infringement of copyright by SFSI and authorisation of infringement by HSFS and Mr Pacione (Judgment [345], [352]) and between equitable compensation or an account of profits for breaches of confidence. They point to the general principle that a plaintiff can insist on being fully informed before making such an election: Forty Two International Pty Ltd v Barnes (No 2) [2011] FCA 210 at [31]. There was no contest between the parties as to the general structure of those orders, although there were a number of differences between them as to the detail of those orders. 52The Defendants' proposed order 10 provides for disclosure of specified matters by SFSI in respect of licensing of QSS. The Defendants' proposed order 11 provides for corresponding disclosure in respect of licence keys to QSS provided by JRC. The Defendants proposed orders 12 and 13 provide for HSFS and Mr Pacione to provide the same information as is sought from JRC. These orders raised substantially similar issues. 53The Plaintiffs seek to narrow these orders, first, by imposing a specific requirement that the information be provided for the sole purpose of the Defendants electing their remedy and calculating their loss. I am not prepared to impose such a limitation. The information is plainly provided under compulsion and for the purposes of these proceedings and may only be used for the purposes of the proceedings. The Plaintiffs did not take me to any authority supporting such a limitation and it does not seem to me that the Plaintiffs are entitled to any further restraint on the use of the information beyond that usual restraint. 54The Plaintiffs seek to have the information disclosed by SFSI in respect of order 10 limited to dealings with third parties to which SFSI has "licensed or authorised to use the whole or a substantial part of versions 11.176, 11.406 and 11.604 of QSS". I have addressed the question of those versions in respect of the scope of injunctive relief in paragraph 37 above and I accept that the limitation proposed by the Plaintiffs is justified, so far as copyright has only been established in those three versions of QSS. However, SFSI should not be left to be the judge in its own cause as to whether the particular versions of QSS which it licensed or authorised third parties to use involved the whole or a substantial part of those specified versions, possibly reaching the happy conclusion that (in its view) none of the versions which it had licensed or authorised third parties to use amounted to the whole or a substantial part of those particular versions, without allowing the Defendants any opportunity to test the correctness of that conclusion. SFSI should be allowed a short opportunity to identify any versions of QSS/ProCAD that it contends do not involve the whole or a substantial portion of the specified versions of QSS and to lead evidence in support of that exclusion, so that a precise limitation to those orders may be formulated. That evidence should preferably be led prior to the next listing of the matter on 10 December 2014, so that the issue can be addressed on that occasion. 55The Plaintiffs submit that disclosure should not be ordered as to the price or other consideration for turn-key systems sold or otherwise supplied by SFSI to third parties that have QSS as a component, whether under the name ProCAD or otherwise, because the price of whole turn-key solutions is commercially sensitive and not relevant to electing the Defendants' remedy for calculating damages or an account of profits. Ms Catanzariti submits that there is no reason for disclosure of the price of turn-key solutions, where the requirement for disclosure as to profit would include profit from such transactions. I do not accept that submission. So far as any claim for compensation is concerned, I accept that it is likely that any loss suffered by Tanmari was limited to licence fees, since it was not in the business of selling turn-key systems; however, any loss suffered by FIPL, by events since it acquired the copyright in QSS, may include the loss of profit on turn-key systems which it would have sold, incorporating QSS, had SFSI not been able to sell turn-key systems incorporating QSS, or at least the loss of opportunity to make such a profit. Moreover, in order to assess whether to bring a claim formulated in that manner, FIPL needs to be provided access with information as to the price or consideration for which such systems were sold. Disclosure of the price of particular transactions is also likely to be necessary to allow the Defendants, or at least any independent expert retained by them, to perform an alternative calculation of that profit if they do not accept the Plaintiffs' calculation of that profit, so as to determine whether to seek an account of profits. 56The Plaintiffs submit that such an affidavit and attachments to it should be confidential and only disclosed to the Defendants' legal representatives and independent experts. There are potential difficulties with such an order, including the particular difficulty that any election as between a claim for compensation and an account of profits will need to be made by the Defendants and cannot be made by their legal representatives and independent experts, and may require that they be provided with sufficient information to make an informed election. However, as a practical matter, it seems to me that the sensitivity of the relevant information, as between trade competitors, is such that the affidavit and attachments to it should be limited to the Defendants' legal representatives and independent experts in the first instance, subject to any further order of the Court. It will be open to the Defendants to seek such further order, to the extent that their legal representatives will need to disclose particular information in order to obtain instructions, including as to the question of any election made by the Defendants between compensation and an account of profits. 57The Plaintiffs seek a further limitation in proposed orders 11-13 providing for disclosure as to the provision of licence key authorisations that such documents should only be disclosed to the extent that a third party was a customer of SFSI. They submit that JRC, HSFS and Mr Pacione should only be required to disclose information to the extent that licence keys were given to SFSI's customers, because the only proven breach of confidence was use of the licence key generator to provide licence keys to SFSI's customers (Judgment [385]-[386]). Ms Catanzariti submits that JRC's use of the licence key generator for its existing customers should not be included, where it had been permitted to use the licence key generator for its customers under the 2002 Agreement and one-off agreements, and HSFS's use of the licence key generator should not be included because it had a continuing right to use the licence key generator in respect of licences to customers under the 2004 Agreement. 58With respect, it seems to me that this submission exposes the risk of recharacterisation of customers of SFSI as being customers of JRC or HSFS, were such a limitation imposed where, so far as the evidence goes, only one customer has been identified as taking rights from HSFS in the period since 2010. The Plaintiffs should again be permitted an opportunity to identify (subject to express confidentiality orders as necessary) particular customers who should be excluded from that disclosure on the basis that they were provided with the licence key in a manner authorised by another of the arrangements between the parties, and to lead evidence in support of that position, so that a precise limitation of the order may be formulated. That evidence should preferably be led prior to the next listing of the matter on 10 December 2014, so that the issue can be addressed on that occasion. 59Proposed orders 10-13 also require the Plaintiffs to make an affidavit setting out the full legal and trading name of the third parties to which the QSS software or a licence key was provided and who are using that software. Those orders broadly reflect the relief sought in paragraph 32 of the Cross-Claim, namely: "An order that [Mr Pacione] provide to [FIPL] on affidavit a list of all the customers to whom [JRC], [HSFS], [SFSI] and/or [Mr Pacione] have licensed QSS and/or the User Documentation [as defined]." It seems to me that the relevant information and licence agreements would at least be discoverable so as to place the Defendants in a position to make an election between damages or equitable compensation on the one hand and an account of profits on the other. 60However, a further issue arose, in the course of oral submissions, as to the scope of access to that information and whether that information could be used, for example, to bring claims against third parties that had purportedly been granted rights to use the software by SFSI, in circumstances that I have held that SFSI had itself no rights to QSS which would have supported a grant of such rights to third parties. The limitation sought by the Plaintiffs, to which I referred above, was seeking to constrain the use of the information to the sole purpose of the Defendants electing their remedy and calculating their loss was directed to avoiding a use of the information to commence proceedings against third parties. 61The Defendants make clear that they seek to reserve the ability to use that information to identify third party users of QSS, including users outside Australia, under licence from SFSI, who they contend are infringing FIPL's copyright, and potentially bring proceedings against them. The Defendants seek to justify that use by reference to the principle in Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133. The Defendants submit that the Norwich Pharmacal principle depends on the proposition that a person, whether or not an infringer, who has become involved in the tortious acts of others is under a duty to assist those injured by those acts to give full information by way of discovery and disclosure of the identity of the wrongdoers. They submit that an applicant may obtain disclosure of the identity and location of persons who have participated in wrongdoing: Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626; [2000] 1 VR 626 at [15]. 62Ms Catanzariti in turn sought to distinguish the decision in Norwich Pharmacal on the basis that discovery was sought against the Customs and Excise Commissioners, in that case, in order to pursue a claim against the infringers. She also submits that there would be no basis for obtaining the information, where infringers are situated outside Australia, and the Copyright Act does not apply outside Australia. I interpolate that the evidence suggests that many or most licensees of SFSI would fall in that category. 63The Defendants respond that a number of those licencees are located in countries that are members of the Berne Convention for the Protection of Literary and Artistic Works 1886, which in turn requires member states to treat copyright works of other member states in like manner to the works of their nationals and to have minimum laws protecting copyright in place, and submit that FIPL would be able to bring an action for infringement of QSS against a licensee of SFSI situated in a country that has adopted the Berne Convention, and that several of those countries have adopted the WIPO Copyright Treaty 1996, which recognises the treatment of computer programs as literary works under Article 2 of the Berne Convention. The Defendants also point out that, to the extent that any licensee is located in New Zealand, proceedings would be available under the Copyright Act 1994 (NZ) and the Trans-Tasman Proceedings Act 2010 (Cth). 64It appears that the possibility that an order for discovery could be made, in aid of overseas proceedings, was accepted by Gummow J in Breen v Williams [1996] HCA 57; (1996) 186 CLR 71 at 120, although that observation was not necessary to his Honour's decision since an order for discovery was not sought in that case. However, the Plaintiffs submit that any order permitting discovery in these proceedings to be used to identify persons against whom other proceedings could be brought should only be made if those other proceedings are either intended or pending: Hooper v Kirella Pty Ltd [1999] FCA 1584; (1999) 96 FCR 1 at [25]. The Plaintiffs also submit, with considerable force, that the Defendants should be required to identify a wrong committed by the relevant third parties, so as to support any action analogous to preliminary discovery in respect of claims against them: Smith Kline & French Laboratories Ltd v Global Pharmaceutics Ltd [1986] RPC 394 at 398, 400. The lack of information about potential proceedings was, in my view, correctly treated as a matter tending strongly against such an order in Irawan v AWB Ltd [2001] VSC 374 at [64]. 65It seems to me that access to this information should be permitted on the basis that it is discoverable for the reasons noted in paragraph 59 above. I would not make an order for access to that information on the basis of the Norwich Pharmacal principle, in the absence of the information referred to in paragraph 64 above. It also seems to me that a use of information produced under compulsory process in these proceedings, so as to commence proceedings against third parties, would not be a permitted use of that information for the purposes of the proceedings, which could occur without leave of the Court. I am not satisfied that any basis to grant such leave has been established at this point. As the Plaintiffs pointed out, many of the users of the software are located overseas and any proceedings against them would have substantial complexities, including that they would not be bound by the findings made in this judgment where they have not been party to it. There is presently no evidence that the Defendants in fact plan to commence such proceedings and any application for leave to use information produced under compulsory process to do so may be addressed if and when an application for leave to do so is made. 66In oral submissions, Ms Goddard also sought to avoid any limitation on access to information as to the identity of customers produced by orders supported by the Norwich Pharmacal principle, distinguishing that information from that produced under other orders for discovery which were directed to making the election and which focused on financial issues (T45). In particular, the Defendants objected to the limitation sought by the Plaintiffs constraining disclosure to the Plaintiffs' legal representatives and independent experts, so far as disclosure was sought on that basis. Ms Catanzariti responded that the Plaintiffs and the Defendants are competitors in a relatively small industry, competing for the same customers. Ms Catanzariti submitted that Mr Taylor, a director of FIPL, had previously approached potential customers in respect of the matters in dispute in the proceedings (Ex P2, 371; T361, 365-367). It does not seem to me that the proposition that Mr Taylor was prepared to approach a customer to seek to persuade it to contract with FIPL, and to challenge SFSI's entitlement to grant licences to the relevant software, creates any basis for an inference that he would misuse information disclosed only on compulsory process. 67I consider that such a limitation on access should be imposed in the first instance both to financial information and to information as to the identity of customers, as part of the wider discovery process, noting that the Defendants may apply to be released from it if there is a need for disclosure of that information to their clients. No basis for a different approach as to customer information is established where I am not satisfied that disclosure of that information should be made on the basis of the Norwich Pharmacal principle. Defendants' proposed order 14 - Election 68Next, a direction is sought that the Defendants notify the Plaintiffs and the Court on or before 25 February 2015 (other than as extended by agreement of the parties or further order of the Court) of its election between damages (including equitable compensation) and an account of profits in respect of the claims for copyright infringement and breach of confidence. An order should be made to that effect. Defendants' proposed order 15 - inquiry as to damages 69The parties agree that there should be a further order dealing with an inquiry as to damages (including equitable damages or equitable compensation) or in the alternative an account of profits arising out of specified matters which reflected the findings in my principal judgment. I do not consider that such an order is necessary at this stage, for the same reason I have not made corresponding orders in respect of an order for inquiry as to damages sought by the Plaintiffs. The Court has already ordered that the question of damages be determined after the determination of the question of liability, and any further order in that regard should be made after the Defendants have made the necessary election, and in the context of a decision whether further issues as to quantification should be referred to a referee. 70I should, however, note a further submission made by Ms Catanzariti that the inquiry into copyright damages or an account of profits should be limited to versions 11.176, 11.406 and 11.604 of QSS, on the basis that the Defendants have only proved their copyright in those versions (Judgment [317]) and FIPL has not proved that it owns copyright in any version of QSS after November 2011 (Judgment [321]). That proposition needs to be qualified at least to the extent that the copyright in those versions could be infringed by the reproduction, communication to the public or authorising the use of other versions of QSS or ProCAD comprising the whole or a substantial part of those versions. This matter is otherwise a matter for the quantification stage of the proceedings. Defendants' proposed orders 16 - 18 - Delivery up 71The Defendants' proposed order 16 provides for each of JRC, SFSI and Mr Pacione to be ordered to deliver up each embodiment of QSS, including any source code, in their possession, custody or control. The Defendants submit that this proposed order reflects the relief sought in paragraph 14 of the Cross-Claim and that relief in the nature of delivery up is conventionally given in cases where the infringer would otherwise remain in possession of the infringing items. The Defendants' proposed order 17 provides for delivery up by HSFS of each embodiment of the QSS source code in its possession. The Defendants submit that this order reflects the relief sought in paragraph 14 of the Cross-Claim and the finding at paragraph 219 of the judgment, where I indicated that I was not satisfied that any condition in the 2004 Agreement had been satisfied so as to trigger any obligation on the part of Tanmari to provide source code to HSFS. 72Ms Catanzariti submitted that the order for delivery up against JRC should be deleted, because the Court did not find that JRC infringed copyright or authorised the infringement of copyright (Judgment [346]). I accept that submission. The Plaintiffs also seek, in the alternative, to have exclusions made for QSS and software given to JRC under the 2002 Agreement, in respect of which JRC paid Mr Cummings or Tanmari by way of modifications and developments to QSS; in respect of the performance of obligations under licences to customers under the 2002 Agreement or other licences granted by Mr Cummings or Tanmari before 11 August 2004; or where Mr Pacione is exercising HSFS's rights and performing obligations under the 2004 Agreement. As I understand it, Ms Goddard recognised the difficulty arising from the fact that JRC and entities other than SFSI had properly been provided with and received source code in the course of their dealings with Mr Cummings and Tanmari and ultimately pressed the order for delivery up only in respect of SFSI (T50-51) and I will proceed on that basis. 73I therefore turn to the remaining question of delivery up of source code by SFSI. Ms Catanzariti submits that any order for delivery up should be limited to versions 11.176, 11.406 and 11.604 of QSS because, as I noted above, the Defendants only proved that copyright subsisted in those versions and FIPL has not proved that it owned copyright in any version of QSS after November 2011. I have addressed a similar submission above. An order in that form again seems to me to have the difficulty that it would leave SFSI to make an assessment, the adequacy of which would not be visible to the Defendants or to the Court, as to whether particular versions of QSS and source code in their possession included the whole or a substantial part of those versions. It seems to me that the preferable course is to offer the Plaintiffs an opportunity, within a short period, to identify any versions of QSS or source code that SFSI holds, which they contend do not include the whole or a substantial part of versions 11.176, 11.406 and 11.604, and to lead evidence of that matter, so that any such versions can be excluded from the order for delivery up in specific terms rather than by general description. That evidence should preferably be led prior to the next listing of the matter on 10 December 2014, so that the issue can be addressed on that occasion. 74The Defendants' proposed order 18 provides for each of JRC, SFSI and Mr Pacione to deliver up to the Court for destruction each embodiment of the licence key generator that is in their possession. The Plaintiffs submitted, and the Defendants accepted, that the licence key generator should be delivered up to the Court for destruction rather than delivered up to the Defendants. That order is not extended to HSFS, presumably on the basis that it has a continued entitlement to use the licence key generator under the 2004 Agreement. 75The Plaintiffs again seek generalised exclusions to the extent that JRC is performing its obligations under licences granted under the 2002 Agreement or other licences granted by Mr Cummings or Tanmari before 11 August 2004; Mr Pacione is exercising rights and performing obligations under the 2004 Agreement or is exercising rights or performing obligations pursuant to licences granted to customers before 11 August 2004. Ms Catanzariti submitted that JRC used rights under the 2002 Agreement to grant perpetual licences to customers, including Suneo, Stratco and BNBN Homes, and that JRC needs to continue to retain a copy of the licence key generator so as to provide a new licence key to those customers on an annual basis. Again, it does not seem to be desirable that an exception in that form should be included in an order, a breach of which would give rise to liability in contempt, and the preferable course is that JRC be allowed an opportunity to identify any specific version of the licence key generator which it contends it is entitled to retain on that basis, and the customers to which it owes existing obligations which are said to support that entitlement, so that a specific exclusion may be formulated. That evidence should preferably be led prior to the next listing of the matter on 10 December 2014, so that the issue can be addressed on that occasion. 76It does not seem to me that any exception is required for Mr Pacione, who is not entitled to deal with or retain a copy of the licence key generator in his personal capacity. The order in the form sought by the Defendants does not require any conduct on the part of HSFS or Mr Pacione in his capacity as an officer of HSFS. The Defendants' proposed orders 19 -20 - Mediation 77The Defendants' proposed orders 19-20 provide for the parties to participate in a mediation to seek to resolve all remaining issues in the proceedings. That course is plainly desirable, from the perspective of the parties so far as the resolution of remaining issues as to damages or an account of profits may involve significant costs, and for the community to the extent that it might result in savings of court time in respect of the remaining dispute, to the extent the remaining issues were not referred to a referee. The parties agreed that such an order should be made, subject to specification of its date. I will hear the parties as to the date for that mediation when the matter is next listed before me in respect of costs on 10 December 2014. Orders 78The parties should now be in a position to prepare agreed or substantially agreed orders, since I have determined the issues of substance that remained between them. I direct the parties to provide such agreed orders to my Associate by 4pm on 8 December 2014 and, if there is any disagreement between them, their respective draft orders and short submissions as to the differences between them. I recognise that the question of particular limitations to the orders (see, for example, paragraphs 50, 56, 60, 75 and 77 in respect of particular versions of QSS and particular customers above) may remain to be resolved and that should preferably be addressed when the matter is next listed before me on 10 December 2014 in respect of costs.

DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 03 December 2014