Manderson M & F Consulting (a firm) v Incitec Pivot Limited [2011] VSCA 444

1 This is an application by summons dated 7 October 2011 for leave to appeal from the judgment given by a judge in the Commercial Court on 16 May 2011 dismissing the applicant's proceeding and ordering the applicant to pay the respondent's costs, including all reserved costs, on a party and party basis. The trial judge also made a special order for costs in relation to draft versions of the statement of claim and permitted the respondent to have recourse to a bank guarantee provided as security for costs. The trial judge concluded,[1]

For these reasons, I find that the claim of MMFC in these proceedings fails in that it "does not disclose a cause of action" within the meaning of rule 23.01 of the Rules and, further, that the whole of its claim has "no real prospect of success" within the meaning of s 63 of the Act. The appropriate course is that I should now dismiss the proceeding with summary judgment for the defendant or permanently stay the proceeding.

2 The proceeding was commenced in July 2008. The applicant sought an account of profits, alternatively damages from the respondent, consequent upon the respondent's alleged misuse of the applicant's confidential information. The confidential information was said to comprise a model for restructuring and financing long-term asset leases described as the MMFC LTAL Model.

3 The proceeding, brought by the applicant in the Commercial Court, had a chequered history. An amended statement of claim was delivered on 24 October 2008, following a successful application to strike out the statement of claim. There was a further amended statement of claim dated 12 December 2008; a proposed new further amended statement of claim dated 6 March 2009; a second further amended statement of claim dated 12 October 2009; a proposed third further amended statement of claim dated 16 February 2010 (leave to file refused by the trial judge); a further version of the proposed third further amended statement of claim dated 28 June 2010, followed by iterations on 2 September 2010 and 12 October 2010; a fifth proposed version of the third amended statement of claim dated 17 October 2010; and on 4 March 2011 a proposed fourth further amended statement of claim, propounded by the applicant at a hearing before the trial judge on 18 March 2011.

4 The statement of claim was unusual because there are numerous paragraphs which were in truth statements of evidence. Further, from paragraph 4 to paragraph 33, the plaintiff alleged circumstances designed to explain the background to the development of the Model by Messrs Manderson & Karis between January and December 2005, and some the attributes of the Model.

5 At the hearing on 18 March 2011, the applicant sought leave to file and serve the proposed fourth further amended statement of claim. In the absence of leave, the extant pleading seemed to be an amended statement of claim dated 12 December 2008. There was some confusion about the nature of the various applications that were made after an initial strike out application in 2008. For example, it would appear that on at least one occasion an Associate Judge purported to strike out a proposed amended statement of claim when the application was for leave to amend. Suffice to say, the applicant has made numerous attempts to amend its statement of claim, although the precise reason for each proposed amendment was not altogether clear. Finally, with the introduction of new counsel, the proposed fourth amended statement of claim was propounded as a complete revision, designed to meet earlier criticisms.

6 While the applicant sought leave to file and serve the fourth amended statement of claim, the respondent sought an order that the proceeding be dismissed or that it be permanently stayed. The respondent's applications were made under order 23.01 of the Supreme Court (General Civil Procedure) Rules 2005; s 63 of the Civil Procedure Act 2010; and the Court's inherent jurisdiction.

7 The principal issues in contention between the parties at the hearing before the trial judge were the respondent's contentions that the proposed statement of claim:

(1) failed to properly identify confidential information capable of protection;

(2) failed to identify how the applicant disclosed that confidential information in circumstances imposing an obligation of confidence on the respondent;

(3) failed to identify any alleged unauthorised use or alleged unauthorised disclosure of the confidential information by the respondents; and

(4) failed to establish the applicant's right to the confidential information.

8 The trial judge rejected contention (4) above, but found in relation to contention (1), that the proposed statement of claim failed to identify or define the confidential information which was said to be capable of protection. In that regard, his Honour said,

1. As became clear in the course of the hearing of these applications, the parties did not disagree that an industrial method or process may constitute confidential information capable of protection under the doctrine of breach of confidence. Neither were they at odds with the propositions advanced by MMFC, on the basis of the authorities discussed, that the same applied to a business method and also with respect to lack of complexity, obviousness, the lack of any requirement of novelty or inventiveness in the sense going to patentability or the extent to which parts of the information may be in the public domain. Rather, IPL's complaint, was that all that was contained in the proposed pleading was a reference to inputs and outcomes. Nowhere was there identified anything which explained the "machinery" by which the critical inputs and their values determined to produce a range of desired outcomes. In spite of reference to the "grey box" in the PowerPoint presentation claiming copyright in the Model and confidentiality, no piece of paper setting out the Model, or any software - such as an Excel spreadsheet which would respond to varying inputs, showing outputs - was identified.
2. In my view, IPL in its submissions, to which reference has been made, correctly identified the deficiencies in the proposed Statement of Claim. In summary, in addition to the type of difficulties identified by the High Court in O'Brien v Komesaroff,[2] the fatal flaw in the proposed Statement of Claim is that it refers to the Model, discusses the problems it seeks to overcome, but never actually states what the Model is. The approach is rather like, by way of simple example, identifying the problem that people become thirsty and need a satisfying, sustaining drink. The problem is solved, the purported provider of confidential information says, by a brown-coloured, sugar-flavoured, carbonated drink, which is described as the model. This model is said to have various "input parameters" and attributes - which include water, sugar, colouring, carbon dioxide and others. There are various options with respect to these inputs and parameters and various results are specified for the ultimate product by reference to examples of a number of variations. But how do you make the drink, what is the formula, hence what is the model? As in the present case, the model is sought to be defined in terms of a description of inputs and outcomes - but the heart of it, the model itself, is not identified or defined.

9 In relation to contention (2) above, the trial judge was persuaded that if the confidential information had been properly defined, the applicant's allegation of an obligation of confidence was adequately pleaded. His Honour found,

1. The proposed pleadings in relation to this issue, and the submissions of the parties, demonstrate how crucially its determination depends upon MMFC pleading and establishing sufficient identification or definition of the confidential information for which protection is claimed, in accordance with the authorities to which reference has already been made. The force of the submissions by both parties and, of course, the contents of the proposed Statement of Claim relating to this issue, are difficult to assess in the absence of clear identification or definition of the relevant confidential information. If the position were adopted that the present proposed pleadings with respect to the identification or definition of the relevant confidential information, the Model, was sufficient, I would accept MMFC's submission that it would be more appropriate to test its proposed pleadings on this issue at trial, having regard to the deficiencies with respect to these pleadings asserted by IPL, as raised in its submissions.

10 In relation to contention (3) above (the allegations of unauthorised use and disclosure) the trial judge found that even if the applicant was able to identify or define the confidential information which it sought to protect, the cause of action would fail because of its failure to plead that the respondent either used or disclosed the Model in breach of its obligation of confidence. His Honour said,

1. IPL, on the other hand, submitted that the proposed pleading by MMFC as to breach is deficient in the following respects:

(a) it fails to disclose a cause of action, in that it pleads that Incitec Pivot's obligation was not to use or disclose the MMFC LTAL Model, but does not then plead that Incitec Pivot either used or disclosed the MMFC LTAL Model in breach of that obligation;

(b) it is embarrassing, in that it is unclear what conduct by Incitec Pivot is alleged to constitute a breach of its obligations to MMFC; and

(c) it includes irrelevant and un-particularised allegations of knowledge.

1. More particularly, IPL submitted that paragraphs 84 and 85 of the proposed pleading contain allegations that it was under a contractual and/or an equitable duty not to disclose or use the Model without the authority, licence or permission of MMFC for any purpose other than the Big N Transaction. The conduct relied upon by MMFC is set out in paragraphs 86 to 103 of the proposed Statement of Claim. However, as submitted by IPL, nowhere in these paragraphs is it alleged that IPL either used or disclosed the Model. The highest point the proposed pleading reaches appears in paragraph 86 with the allegation that "[b]etween September 2006 and 10 May 2007, in the manner ascribed in paragraphs 87 to 101 below, ... IPL engaged in negotiations with the CBA for the extension of the existing lease arrangements for [the SCF] equipment ... utilising the MMFC LTAL Model". Further, it was submitted that nowhere in paragraphs 87 to 101 of the proposed Statement of Claim, or elsewhere in the proposed pleading, is it alleged that IPL itself prepared the Initial SCF Extension Transaction documentation, that it disclosed the Model to CBA or that it asked CBA to use the Model in the Initial SCF Extension Transactions. In conclusion on this aspect of this issue, IPL submitted:[3]

"20. Notably, in paragraph 102 of the 4FASC MMFC does not, because it simply cannot, plead that Incitec Pivot used or disclosed the MMFC LTAL Model. MMFC attempts to avoid making this plain by pleading in the passive voice that, '[t]he Initial SCF Extension Transactions had been prepared by use of the MMFC LTAL Model as shown in Annexure K.' MMFC then pleads in paragraph 103 that 'Incitec Pivot knew or ought to have known' a number of things, including that the Initial SCF Extension Transaction documents had been prepared using the MMFC LTAL Model, but none of which amount to allegations of actionable conduct by Incitec Pivot.

1. Given that the contractual and equitable obligation alleged against Incitec Pivot is that it must not use or disclose the MMFC LTAL Model without authorisation, the failure to plead that Incitec Pivot used or disclosed the MMFC LTAL Model means that the pleading clearly fails to disclose a cause of action."
2. Additionally, IPL submitted that the proposed pleading as to breach is embarrassing because it does not make clear which of the pleaded acts is alleged to be a breach. Paragraphs 104 and 105 of the proposed Statement of Claim assert breach "[b]y reason of the matters referred to in paragraphs 84 to 103". IPL submitted that it is unclear whether each acts of IPL alleged in those paragraphs is claimed to be a separate breach, or whether there was a single breach comprised of one or more or all of those acts. It is also said to be unclear whether MMFC alleges that IPL breached the duty it owed MMFC by engaging in negotiations with CBA as alleged in paragraph 86 of the proposed pleading or whether the sole allegation of breach is the entering into of the Initial SCF Extension Transactions with the knowledge as pleaded in paragraph 103 of the proposed pleading.
3. Finally, it was submitted that the allegations contained paragraph 103 of the proposed Statement of Claim in relation to IPL's alleged knowledge are both irrelevant and unparticularised. As to irrelevance, it is said that the knowledge that a third party had used the Model does not fall within the scope of the IPL obligations not to use or disclose the Model as pleaded in paragraphs 84 and 85 of the proposed pleading. Additionally, it submitted that even if such knowledge could be a material fact and relevant to the claimed breach of confidence, the failure to particularise the allegations as to IPL's knowledge is contrary to the requirements of rule 13.10(3)(b) of the Rules that a pleading must contain particulars of any allegations as to knowledge of a party.
4. In my opinion, for the reasons submitted by IPL, MMFC's pleading in relation to this issue does fail to disclose a cause of action, is embarrassing and includes irrelevant and unparticularised allegations of knowledge. It follows that, even if MMFC were able to identify or define the confidential information which it seeks to protect as required by the authorities to which reference has been made, the cause of action would fail on the basis of the pleadings with respect to breach as now contained in the proposed Statement of Claim.

11 An order for summary dismissal of a proceeding on the ground that no reasonable cause of action is disclosed or that the party had no reasonable prospect of successfully prosecuting the proceeding[4] is interlocutory[5] Leave to appeal will usually be granted if there is any doubt about the correctness of the order.[6] If leave is granted we are authorised under s 11 of the Supreme Court Act 1986 to hear and determine the appeal.

Identification of confidential information- Contention (1)

12 Subject to contention (3) above and the respondent's Notice of Contention, the principal issue before the trial judge was whether the statement of claim sufficiently defined the confidential information which the applicant sought to protect. That is the way in which the parties formulated the primary issue before the trial judge and on the application. The draft grounds of appeal in this regard distil to a contention that the trial judge wrongly concluded that the draft statement of claim never actually stated what the MMFC LTAL Model is.[7] The issue was whether the applicant should be permitted to go to trial on its current formulation of the information it sought to protect.

13 There was no dispute as to the applicable principles. There was no doubt that a plaintiff must adequately define the subject of confidentiality obligations. That must be so if the plaintiff alleges misuse and seeks damages or injunctive relief. The degree of specificity required for a pleading may, however, differ from that required for a successful claim and relief.

14 This was a case in which the applicant sought to define the confidential information by means of attributes, inputs, outputs, a formula and informed computations. The informed computations include the application of 'a reducing balance amortization formula'[8] and adjustments and recalculations.[9] The trial judge found that the 'fatal flaw in the proposed statement of claim is that it refers to the Model, discusses the problems it seeks to overcome, but never actually states what the Model is... the model is sought to be defined in terms of a description of inputs and outcomes - but the heart of it, the Model itself, is not identified or defined.'

15 It is curious that the applicant did not rely on the information contained in its patent application, although we have been provided with some explanation in the course of oral submissions.

16 We must say at once that we have some difficulty with the conclusions of the trial judge in relation to contentions (1) and (3). In our opinion, the trial judge applied an overly narrow approach to what might be characterised as confidential information. His Honour was looking for something in the nature of a formula, algorithm or mathematical or computer model as the repository of the information said to be confidential. While the applicant may not have identified a conventional model by reference to a formula or algorithm, it had identified the components of what it contended it was entitled to protect, which included a formula and computations. The applicant explained the model in terms of a conceptual framework for the analysis of proposed financial transactions.

17 The trial judge said that the pleading 'never actually states what the Model is'. We disagree. This is not a case which resembles the facts in O'Brien v Komesaroff, even though both cases depend on the formulation of intended outcomes as part of the definition of the confidential information. There is no requirement for a 'piece of paper setting out the Model ... such as an Excel spreadsheet'. In our opinion, the 'heart of it, the model itself', was identified, although not in terms of a formula, algorithm or mathematical or computer model.

18 At the hearing, with the dispute defined as a challenge to the adequacy of the pleading, the trial judge exercised the power of summary dismissal, thus denying the applicant an opportunity to have its case heard in a court of law. The trial judge did not conclude that the applicant was incapable of identifying any confidential information. Rather, the judge rejected the applicants formulation of what it contended was confidential information capable of protection. In our opinion that was an issue for trial.

19 A court should be slow to dismiss a proceeding, depriving a plaintiff of its opportunity to present its case at trial. As Ormiston JA said in State Electricity Commission of Victoria v Rabel[10]

... in order to dismiss summarily an action at a preliminary stage, it must be 'very clear indeed' that the action is 'absolutely hopeless' or 'so clearly untenable that it cannot possibly succeed'

20 In Day v Victorian Railways Commissioners[11] Dixon J said that the inherent jurisdiction of the court to dismiss an action was a jurisdiction which ought to be very sparingly exercised and only in very exceptional cases.

21 In our opinion, notwithstanding very apparent inadequacies in the form of the pleading, it was not appropriate to finally dismiss the plaintiffs claim on this basis. The plaintiff may at trial, with the assistance of evidence, persuade a court that its conceptual framework constitutes confidential information capable of protection. It cannot be said that the plaintiff's case in that regard was absolutely hopeless or so clearly untenable that it could not possibly succeed. While we have decided that the applicant should not be denied the opportunity to have its formulation of confidential information determined at trial, we should not be taken as endorsing the form of the present pleading. We have identified a number of obvious defects, but the absence of sufficient detail in relation to what the applicant would contend is confidential information is not one of them.

Unauthorised use and disclosure - Contention (3)

22 We have already mentioned some of the problems with the form of the applicant's pleading. In paragraphs 86 to 105, the applicant has pleaded evidence, in the nature of correspondence and other communications, rather than material facts. Notwithstanding that deficiency, it is possible to discern the nature and scope of the applicant's case. As we understand it's case, the applicant contends that its Model was disclosed to the respondent and its banker for a limited purpose, and that in breach of the respondent's obligation of confidentiality it was knowingly involved in the unauthorised employment by its banker of the Model for the respondent's benefit.

23 The applicant has not joined the bank as a defendant in the proceeding, but has confined its case to an account from the respondent, who is the alleged beneficiary of the unauthorised use of the Model. Just because a party is not itself actively misusing confidential information does not, in our view, prevent a claim being made against that party for breach of a duty of confidence, if it be established that an agent has misused the information on its behalf. Notwithstanding our reservations about the manner in which this part of the applicant's claim is pleaded, we are persuaded that the trial judge was in error when deciding that the pleading failed to disclose a cause of action, because it failed to make a sufficient allegation of breach by the respondent of a duty of confidence.

24 By a draft Notice of Contention the respondent proposed to contend that the trial judge should have found the pleading was deficient because it failed to adequately plead disclosure of the confidential information to the respondent in circumstances that would impose an obligation of confidence.

25 The applicant's pleading, at paragraphs 46 to 85, substitutes evidence for allegations of material fact. In that respect it is defective. The applicant relied upon the pleaded evidence to contend that there arose obligations of confidentiality requiring that the confidential information not be employed beyond the Big N Transaction without the permission of the owners. In paragraph 84 the applicant alleged that by reason of the matters 'set out in paragraphs 46 to 86 (sic) above, IPL whether by itself, its agents and consultants, including each of KPMG and PwC knew and/or ought to have known that' the information was confidential and should not be used for any purpose other than 'the Big N Transaction and to investigate the possibility of IPL and MMFC identifying other assets used by IPL in relation to which MMFC might authorise, licence or permit IPL to use the MMFC LTAL Model to enter into leasing transactions on terms acceptable to MMFC.'

26 Much of what was pleaded in paragraphs 46 to 83 might form the basis of particulars to the allegation made in paragraph 84. Putting to one side form and pleading practice, we are of the opinion that the pleading sufficiently disclosed to the respondent the basis upon which the applicant would advance its case for the confidentiality obligation. We reject the respondent's contention as formulated in its proposed Notice of Contention.

Civil Procedure Act 2010

27 The trial judge also found that the whole of the plaintiff's claim had no real prospect of success within the meaning of s 63 of the Act. It is difficult to understand how this provision was invoked by the trial judge in a contest over the adequacy of the pleading to properly define confidential information. The principle issue in dispute was whether the applicant had sufficiently detailed its formulation of the information it wished to protect. The fact that the pleaded component did not fit a conventional formula did not mean that its case at trial had no real prospect of success. No consideration was given to s 64 of the Act.

28 From our review of the reasons for judgment, we do not understand the respondent's application for dismissal to have been advanced on the basis that the applicant was unable to formulate a case, or that by reason of the application of modern case management principles, the proceeding ought to be brought to an end. His Honour made no such findings. Counsel for the respondent, in the course of oral submissions, contended that the reasons of the trial judge should be read as if to disclose a conclusion that the applicant was incapable of identifying the confidential information or identifying how it had been misused. We are of the opinion that, even approaching the matter on this basis, such a conclusion was not justified. Considerations of that kind invite a broader factual analysis than a review of the adequacy of the pleading to define the confidential information.

29 Sections 63 and 64 of the Civil Procedure Act 2010 provide:

1. Summary judgment if no real prospect of success

(1) Subject to section 64, a court may give summary judgment in any civil proceeding if satisfied that a claim, a defence or a counterclaim or part of the claim, defence or counterclaim, as the case requires, has no real prospect of success.

(2) A court may give summary judgment in any civil proceeding under subsection (1) -

(a) on the application of a plaintiff in a civil proceeding;

(b) on the application of a defendant in a civil proceeding; Part 4.4 - Summary Judgment Civil Procedure Act 2010 No. 47 of 2010 41

(c) on the court's own motion, if satisfied that it is desirable to summarily dispose of the civil proceeding.

1. Court may allow a matter to proceed to trial

Despite anything to the contrary in this Part or any rules of court, a court may order that a civil proceeding proceed to trial if the court is satisfied that, despite there being no real prospect of success the civil proceeding should not be disposed of summarily because -

(a) it is not in the interests of justice to do so; or

(b) the dispute is of such a nature that only a full hearing on the merits is appropriate.

30 The application of those provisions have not yet, as far as we are aware, received sufficient judicial attention to clearly differentiate between the remedies available under r 23.01 and summary judgment under s 63. What is clear, however, is that the issue before the trial judge was decided in the context of cross-applications argued on the basis of the sufficiency of a pleading to disclose a cause of action. This much is evident from the reasons for judgment and the respondent's submissions recited in the reasons. The trial judge said,

Further, it was common ground that for the purposes of this application, it should be assumed that the facts alleged in the proposed Statement of Claim would be proved.[12] No evidence was led by either party - though it might be said that some attempt was made, though not pressed over objection. Consequently, the application proceeded on the basis of this common ground.

That being so, there is a real question as to what, if any, application s 63 had in the resolution of such a narrowly defined issue.

31 In JBS Southern Aust Pty Ltd v Westcity Group Holdings Pty Ltd [13] Croft J had occasion to consider, on appeal from an Associate Judge, a contention that a decision granting summary judgment in relation to some claims under s 63 was erroneous. His Honour undertook a helpful review of the background to the legislation and one recently decided case in this court.

32 The authorities reviewed by Croft J in JBS Southern Aust v Westcity Group Holdings, which disclosed the underlying rationale for s 63 of the Act, make it clear that an inquiry as to whether a case has 'no real prospects of success' involves considerations extending beyond an analysis of the sufficiency of the statement of claim to plead a cause of action. The new power under s 63 is not one to be exercised by reference only to the sufficiency of the pleading. For as Croft J said in JBS Southern Aust v Westcity Group Holdings, 'even if the Court had doubts as to the prospect of success of a defendant's claims...in terms of the s 63 test, the proper course would be to exercise the discretion under s 64 and to require a full trial of the claims'. The same may be said of a plaintiff' claim in this case.

33 The complexity of the issue between the parties made this proceeding inappropriate for summary dismissal where the only basis for dismissal relied upon was an analysis of whether the applicants statement of claim properly defined the confidential information. The real contest was whether what the applicant had advanced as confidential information was of such a character. There will be cases in which cost and complexity may converge as a relevant factor justifying summary dismissal, but this is not such a case.

34 Finally, in the present case the discretion under s 64 was not invoked, or even considered. That is perhaps explained by the narrow scope of the inquiry undertaken. The introduction of s 63 as a basis for relief, and the claim for summary dismissal, led to an unfortunate conflation of the contest over the adequacy of the pleading to define confidential information and the prospects of success at trial. An analysis of the latter issue may well involve a consideration of the evidentiary foundation, whereas the former does not.

35 It follows from the foregoing that the applicant should be granted leave to appeal. The appeal should be allowed and the decision of the trial judge dismissing the proceeding set aside.

[1] [2011] VSC 205 [56], Croft J.

[2] [1982] HCA 33; [1982] 150 CLR 310.

[3] IPL's Outline of Submissions, [20] and [21].

[4] Kowalski v MMAL Staff Superannuation Fund Pty Ltd (2009) 178 FCR 401; 259 ALR 319; [2009] FCAFC 117.

[5] Re Page; Hill v Fladgate [1910] 1 Ch 489; Wickstead v Browne (1992) 30 NSWLR 1; Edwards v Santos Ltd (2010) 185 FCR 280; 268 ALR 605; [2010] FCAFC 64.

[6] Little v Victoria [1998] 4 VR 596, 601; Johnson Tiles Pty Ltd v Esso Aust Ltd (2000) 104 FCR 564; (2001) ATPR 41-794; [2000] FCA 1572.

[9] Statement of claim para 38(b) and (c)

[10] [1998] 1 VR 108, 109.

[11] [1949] HCA 1; (1949) 78 CLR 62, 91-92.

[12] MMFC submitted that, assuming the facts pleaded [see, for example, Opat Decorating Services (Vic) Pty Ltd v Jennings Group Ltd (Unreported, Supreme Court of Victoria, Byrne J, 16 September 1994) are established at trial, MMFC has a real rather than "fanciful" or "merely arguable" prospect of success [White Industries Aust Ltd and anor v FCT and anor (2007) 160 FCR 298 at [59] and the cases there cited].

[13] [2011] VSC 476.