New Aim Pty ltd v Leung - [2022] FCA 722 - FCA 2022 case summary — Zoe

CTHFCA

New Aim Pty ltd v Leung

[2022] FCA 722

Federal Court of Australia|2022-06-23|Before: McElwaine J

View original source

At a glance

Source facts

Court

Federal Court of Australia

Decision date

2022-06-23

Before

McElwaine J

Source

Original judgment source is linked above.

Judgment (26 paragraphs)

[1]

Introduction 1 New Aim Pty Ltd (in these reasons New Aim or the applicant) conducts a large-scale e-commerce business in Australia and sources its products from a range of suppliers in China. It is a competitive market and includes such well-known online retailers as eBay, Kogan, Catch, MyDeal, Amazon, Myer and Harvey Norman. The first respondent, Man Hung (Jack) Leung, commenced employment with the applicant as a junior Office Assistant in 2009. Over time, Mr Leung was promoted to more senior positions. In July 2020 he was appointed as the Chief Commercial Officer, which position he held until 18 January 2021, at which time he resigned his employment. 2 Ms Yingxue (Jenny) Li, the second respondent, was employed by the applicant between March 2012 and July 2021, initially as a graphic designer and later as Design Manager. She also resigned her employment. The third respondent, Mr Lei (Ray) Xiao, was employed by the applicant commencing in June 2010, working as a packer. In 2014, Mr Xiao was promoted to Warehouse Manager, a position he remained in until he resigned his employment in March 2021. The fourth respondent is Sun Yee International Pty Ltd (Sun Yee), a company incorporated in Australia and is the operator of an online retailing business. The fifth respondent, Broers Group Pty Ltd (Broers), is also a company incorporated in Australia and it too is the operator of an online retailing business. The applicant, Sun Yee and Broers are competitors. 3 By an amended originating application and statement of claim filed on 6 October 2021, the applicant claimed that Mr Leung, Ms Li and Mr Xiao breached their equitable obligations not to reveal or use confidential information acquired during the course of their employment, breached their statutory obligations under s 183 of the Corporations Act 2001 (Cth) (Corporations Act) not to improperly use information and breached their individual employment contracts by failing to maintain the confidentiality of the information of their employer. As against Sun Yee and Broers, the applicant asserted that each received confidential information from Mr Leung, Ms Li and/or Mr Xiao in circumstances that bound those corporations to a parasitic equitable obligation not to use the applicant's confidential information in order to source products from suppliers of the applicant, and that by promoting various images on their respective websites, each company reproduced, without licence from the applicant, its copyright works contrary to the Copyright Act 1968 (Cth). Finally, the applicant contended that each of Sun Yee and Broers had engaged in misleading and deceptive conduct contrary to the Australian Consumer Law by offering for sale certain electrical products without being registered as responsible suppliers of such products in Australia. 4 In consequence, the applicant claimed relief in the form of declarations, injunctions, damages, delivery up and an account of profits. 5 On 26 October 2021, the applicant obtained urgent interlocutory relief, the effect of which was to restrain each of the respondents from reproducing or disclosing the confidential information of the applicant, defined in the orders as meaning the identity and/or contact details of persons who were suppliers of products to the applicant as at January or March 2021: New Aim Pty Ltd v Leung [2021] FCA 1329, Moshinsky J. The injunction also prevented the respondents from using in any manner the confidential information, including by procuring from suppliers to New Aim products that are the same or substantially the same as products sold by the applicant as at January or March 2021 and from promoting or selling such products. Further, the respondents were required by 4pm on 5 November 2021 to give discovery of all documents in their control which contain the confidential information of the applicant and to make affidavits identifying any person to whom the confidential information of the applicant had been disclosed and, in the case of Broers and Sun Yee, identifying the details of all products sold in consequence of the use of the applicant's confidential information. 6 On 11 February 2022, the applicant abandoned its claims pursuant to the Australian Consumer Law and on that day, I made an order that all questions of liability (including the grant of declaratory and injunctive relief and any entitlement to, but not the quantum of, additional damages under the Copyright Act 1968 (Cth)) be determined prior to, and separately from, questions of quantum. 7 On 19 April 2022, I made various orders by consent to the effect that Mr Leung, Sun Yee and Broers were each permanently restrained from reproducing in material form, or causing to be reproduced in material form, various works the subject of the copyright claim of the applicant and that the corresponding claims for copyright infringement be dismissed. The proceeding against Ms Li was dismissed. 8 Accordingly, when the proceeding was heard before me it was confined to the equitable breach of confidence, Corporations Act and the breach of contract claims. During closing submissions, the applicant abandoned its claims against Mr Xiao and accepted that the proceeding against him should be dismissed. 9 On 29 April 2022, I made orders, pursuant to ss 37AF and 37AI of the Federal Court of Australia Act 1976 (Cth) and on the grounds set out at s 37AG(1)(a) that until 14 days after the publication of reasons for judgment, the publication or other disclosure of information in the documents identified in annexures A and B to the orders be prohibited, other than to the Court and persons who have given specified confidentiality undertakings. The orders operate upon significant portions of the witness evidence and the tendered documents as contained in the court book as comprising commercially sensitive business information. In these reasons where I make findings based on that evidence, I do so at a relatively high level of generality, so as to maintain that commercial confidentiality. 10 Counsel for the applicant correctly submitted in his closing submission that "as the trial unfolded, a critical question for the Court [to determine] is how it should characterise the information which the applicant says has been misused." Counsel for the respondents in his closing submissions redefined that issue as turning on two questions: (a) what specific information has been used by Mr Leung; and (b) is the confidentiality of that information protected by the law? In combination, each of those submissions crisply identified the central issues for my determination. 11 For the detailed reasons that follow, I have concluded that the applicant's claims fail in each respect and the proceeding should be dismissed against the remaining respondents.

[2]

The Issues on the pleadings 12 The applicant frames its claims in accordance with the Further Amended Statement of Claim (FASOC) dated 21 April 2022 for which leave to amend was granted on the first day of the trial. Those amendments were not of such substance so as to justify an amended version of the defence and the respondents were content to rely upon their defence dated 11 November 2021. It is a credit to the legal representatives for each of the parties that the pleadings succinctly identify the real issues in dispute and in consequence, the scope of the factual dispute is relatively narrow. I summarise the material facts from the pleadings and in doing so identify the central matters in issue. 13 Mr Leung commenced employment with the applicant as an Office Assistant in 2009, which position he held until 2010 when he was promoted to the position of Buyer, which he held until 2013 when he became a Category Manager. He occupied that position until 2015 when he was appointed Head of Buying and later in 2020 was promoted to Chief Commercial Officer, which position he held until his resignation in January 2021. 14 Mr Xiao was employed by New Aim between June 2010 and March 2021, when he ultimately resigned, as Warehouse Manager. 15 Sun Yee and Broers are the proprietors of online retailing businesses in Australia, pursuant to which each offers for retail sale to the public various categories of goods produced by other manufacturers and suppliers, predominantly in China. Mr Fei (Eddy) Dai is a director, shareholder and founder of Sun Yee and is responsible for certain marketing activities of Broers. Mr Huailiang (Mac) Chen is a director and co-founder of Broers. 16 During the course of his employment, Mr Leung had access to certain business information maintained by the applicant comprising its copyright works (images of the various products that it offered for sale, as maintained on its website from time to time), the identity and contact details of suppliers to the applicant of various categories of products as at January and March 2021, wholesale product information, including wholesale prices for New Aim products, retail sales data for New Aim products and market research from sources including third-party marketplace data, internal New Aim sales data and sales data from suppliers to New Aim. As the case progressed before me, the applicant confined its claims to that which it described as "confidential and commercially sensitive business information" being the identity and contact details of suppliers to it of products as at January and March 2021. 17 As originally framed, the applicant identified its confidential and commercially sensitive information as the identity and contact details of its suppliers of various products as at January and March 2021, wholesale product information, including wholesale prices for each of its products, retail sales data for each of its products, market research and sales data from its suppliers. 18 The respondents contend that the particularisation of the confidential information by the applicant is insufficient and, in any event, deny that the identified categories comprised confidential or commercially sensitive business information of the applicant. 19 Separately, Mr Xiao denied that he had access to any part of the confidential information of the applicant and in any event denied that he, if he did have such access, did in fact access that information. 20 Sun Yee and Broers admitted that until restrained by the interlocutory orders they procured, promoted and sold a range of products identical, or nearly identical, to the products sold by the applicant as particularised at annexure B to the FASOC. The respondents admitted that Mr Leung worked for Broers, but did not specifically admit the date upon which he commenced work, either as an employee or a consultant, and nor did they admit that he did so in order to assist Broers to procure, promote or sell various products. The respondents admitted that Mr Xiao worked for Broers following his resignation as an employee of the applicant. 21 Importantly in this case, the applicant pleaded that: [19] In the course of their work for Sun Yee and/or Broers, each of Mr Leung, Ms Li and Mr Xiao have used the New Aim confidential information (or part of it) including to assist Sun Yee and/or Broers to procure, promote and sell the copied products. 22 To this allegation the respondents pleaded: They deny each allegation in paragraph 19 and say further that the information described in subparagraph 11(b)(i) and (i) of the amended statement of claim suppliers of products: (a) is publicly available information; and/or (b) was imparted by suppliers to Mr Leung in circumstances where Mr Leung would reasonably expect that the suppliers would not wish him to keep the information confidential; and/or (c) formed part of Mr Leung's stock of knowledge that he was free to use after ceasing his employment with New Aim. 23 The respondents denied that Sun Yee and/or Broers had received and used the New Aim confidential information to procure, promote and sell the copied products. They also did not admit (and no point mistaken about the form of this pleading) that in the course of their work for Sun Yee and/or Broers, Mr Leung and Ms Li have permitted or assisted Sun Yee and/or Broers to use images which include the New Aim copyright works, or a substantial part thereof, to promote and sell the copied products. 24 Each of Mr Leung, Ms Li and Mr Xiao admitted that by reason of their employment, they were subject to their respective obligations pursuant to s 183 of the Corporations Act, though each denied they had improperly used information obtained as employees to gain an advantage for themselves, or someone else, or to cause detriment to the applicant. 25 The written employment agreements of Mr Leung, Ms Li and Mr Xiao were each admitted. What was put in issue on each of the contract claims was whether, upon a proper construction of the agreements, the information claimed by the applicant to be confidential was identified as such and subject to the provisions of each contract. 26 Finally, each respondent denied that the applicant had suffered and will continue to suffer loss and damage by reason of the pleaded conduct.

[4]

Applicant's Witnesses 30 Mr David Huang is presently employed as the Chief Operating Officer of the applicant. He commenced his employment in 2014, first as the IT Manager which position he held until 2020. As the IT Manager he was primarily responsible for the development and maintenance of the IT systems of the applicant, as well as for system security. In July 2020, he was promoted to the position of Chief Information Officer. He continued to be responsible for IT security and system development, though at a higher level of responsibility as a member of the senior management team. He was further promoted in April 2021, to his current position of Chief Operating Officer. As might be expected, the Chief Operating Officer is responsible for the day-to-day management of the business of the applicant. 31 Mr Huang's evidence described the business of the applicant in some detail, the history of its growth, the number of employees engaged at material points in time, the development by it of various brands for the sale of categories of products and the division of responsibilities within the applicant by compartmentalisation into separate teams. There is the Category Team, responsible for identifying trends and products in the marketplace and the analysis of data in order to determine which products should be recommended to the Buyer Team for acquisition. The Buyer Team is responsible for investigating new potential suppliers and products including the sourcing of products from individual suppliers, reviewing and sampling products and the maintenance of relationships with existing suppliers. The Product Compliance Team identifies relevant regulatory or legal standards applicable to each product. The Quality Control (QC) team is responsible for quality, safety and product testing in order to ensure that products offered for sale comply with the quality standards as determined by the applicant and applicable external standards. The Data Team is responsible for analysing data and acts as project manager to assist other stakeholders within the business of the applicant. The IT team, as one might understand, is responsible for the development, maintenance and management of the information technology systems that the applicant requires to conduct its business. The Shipping Team acts as account managers in order to manage relationships with various online marketplaces and is responsible for product promotion. The Customer Service Team deals with questions, concerns and feedback from purchasers of products. Finally, the Warehouse Team is responsible for delivery, storage and general warehouse operations. 32 That the business of the applicant is substantial is revealed by three facts. Currently the applicant occupies approximately 96,700 m² of warehouse space in Melbourne, has 400 employees (of which 110 are employed in China) and its annual turnover exceeds $300 million. 33 The products offered for sale by the applicant are sourced from overseas manufacturers, predominantly in China. The business is vertically integrated into seven main category groups comprising bedding, home office and appliances, fitness, entertainment, building materials, home living and indoor furniture, kids and outdoor furniture, garden, outdoor living and tents, tools and outdoor activities and research and development. 34 The applicant is competitive with a large number of other online retailers. At the time of the proceeding, the applicant offered for sale approximately 6000 individual product lines which it obtained from approximately 400 active suppliers in China. In contrast, when Mr Huang joined the business in 2014 there were approximately 192 active suppliers, of which approximately 47 remained active as at April 2022 35 Mr Huang described in detail the process undertaken by the applicant to determine whether it will procure products from a supplier. In cross-examination, he accepted that he has not been personally involved in the supplier identification and selection process. Rather, these tasks are performed by other employees of the business for whom he is ultimately responsible in his role as Chief Operating Officer. But it does not follow that he is unable to give evidence as to the steps taken within the business of the applicant and as to its usual or standard procedures. In broad outline those steps are: (a) the Buyer Team reviews and analyses market data from a number of sources in order to identify potential new products that may be offered for sale; (b) the Buyer Team will identify potential suppliers by first making contact with existing suppliers. If an existing supplier is not able to supply a particular product, the Buyer Team will take steps to identify a new supplier in China. Normally, that involves contacting suppliers by using an online business-to-business database that has been identified at trade fairs; (c) in China, there are many, perhaps thousands, of potential suppliers for any one product. The quality, sophistication and cost of products varies widely; (d) sometimes individual members of the Buyer Team will attend the Canton Trade Fair in order to personally inspect products and speak to the representatives of suppliers. The Canton Trade Fair is a large biannual manufacturing exhibition which hosts in excess of 20,000 exhibitors and is attended by hundreds of thousands of overseas buyers. (e) the Buyer Team will formulate a short list of possible suppliers and then formulate a proposal for submission to the head of the Buyer Team; (f) the head of the Buyer Team is responsible for making a decision as to whether a particular product will be procured; (g) once a potential supplier has been sufficiently identified, samples of the products will be obtained and examined; (h) New Aim undertakes a form of internal sampling and product testing, but often engages a third party to undertake the sampling and testing procedures; (i) sometimes members of the Buyer Team will visit the factories of potential suppliers in China to inspect the manufacturing facilities and processes; (j) the Buyer Team is responsible for negotiating the purchase order terms; and (k) once a supplier has been identified for a particular product, the supplier details will be added to the internal procurement system maintained by the applicant and which is currently known as the New Aim Purchasing System. 36 The applicant monitors the sales data for its products. Market trends are identified. Popular products are promoted for sale. Less popular products are, over time, withdrawn from sale. Products with identified defects are reviewed and, depending upon the number or type of defects, the supplier may be requested to change the manufacturing or packaging system. 37 The identification of a reliable supplier for a product is important in the business of the applicant. Having identified a reliable supplier, the applicant will often increase the number of purchase orders from that supplier for various products, with some suppliers having been engaged for over five years. 38 When Mr Huang commenced employment, the product and supplier details of prospective products and suppliers were entered into an Excel spreadsheet and then provided to the Head of the Buyer Team for approval. These spreadsheets were saved in the applicant's internal share drive and were only accessible by members of the Category Team. The applicant later used an online buying and procurement software system known as Vtiger which contained all supplier details and wholesale pricing information. 39 Throughout 2017 and 2018, the applicant migrated Vtiger to a new program developed in-house known as the New Aim Purchasing System, the creation and distribution of which Mr Huang was involved in. This system acts as the centralised location that contains the entire list of suppliers and other information including the name, telephone number and bank details of the contact, as well as wholesale product information and purchase history. 40 The steps taken by the applicant to protect supplier information were listed by Mr Huang as follows (which evidence was not challenged or directly contradicted by the respondents): (a) New Aim restricts access to supplier information in the New Aim Purchasing System to only those employees who require access in performing their role; (b) Product packaging, labels and instruction manuals do not include supplier details, save for certain electrical products where disclosure is required by law; (c) The applicant controls and limits the manner in which the Buyer Team communicates with suppliers, by strongly encouraging communications with suppliers to occur via the instant messaging application Enterprise QQ, as employee accounts are controlled by New Aim and deleted once an employee leaves the business. Enterprise QQ is an instant messaging application that is primarily used by members of the buying team in China. If unable to use Enterprise QQ, employees are advised to communicate via work email or DingTalk (an internal messaging service), as each platform is controlled by the applicant. Only if a supplier is not able or willing to use these platforms are New Aim employees allowed to use personal modes of communication such as WeChat; (d) In approximately June 2020, the applicant implemented a Confidentiality/Intellectual Property Policy that is provided to all new employees forming a part of all employment contracts. Whether that Policy was provided to the respondents, in particular Mr Leung, is a disputed fact that I address later in these reasons. 41 Wholesale prices are agreed through extensive negotiation between the Buyer Team and suppliers, and when confirmed, are stored on the New Aim Purchasing System. Wholesale prices are commercially sensitive for the obvious reason that if a competitor were to become aware of a product's wholesale price, it could be utilised as a starting point for negotiations with a supplier, potentially affording competitors with a lower price of procurement and a lower retail price. 42 Mr Kang (Colin) Li is currently employed as the Category Manager within the Buyer Team at New Aim. He commenced employment with the applicant in September 2020, initially as a Category Co-ordinator within the bedding, home office and appliance subgroup of the Buyer Team. In this role, he was responsible for appraising existing product lines and locating new suppliers in China. Mr Li was then promoted to his current role of Category Manager of the Research and Development (R&D) sub-group of New Aim's Buyer Team, during which he managed the R&D team which included the development and sourcing of new products. Mr Li's job title was changed to Category Manager - Business Development in March 2022, though his responsibilities were essentially unchanged. 43 In his witness statement he set out in some detail the applicant's internal processes in order to procure new products and to identify new suppliers. In cross-examination he accepted that he had no direct knowledge of those matters prior to September 2020 and that his knowledge is limited to the product category bedding, office furniture and home appliances within the Buyer Team. However, I infer that the same or similar steps have been taken by the applicant since September 2020 for each product category within the various subgroups of the Buyer Team. On that basis, I accept his evidence which in summary was: (a) The Buyer Team evaluates and analyses industry data to find gaps in the market for products expected to be attractive to Australian consumers. This analysis usually involves the review of competitors' websites, eBay data and New Aim's internal sales data, as well as independent online research and consideration of supplier recommendations; (b) Employees in the Buyer Team are briefed on 'products of interest' and then proceed to identify potential suppliers; (c) The Buyer Team creates a shortlist of at least 10 potential suppliers, narrowed on a range of factors including price, supplier background and factory location; (d) Members of the Buyer Team then submit an initial request to each supplier on the shortlist to obtain a quotation and inquire about other details or information considered useful in deciding between prospective suppliers; (e) The Buyer Team prepares a Value Chain Analysis report outlining financial data for each prospective supplier, including pricing and projected sales data, together with a detailed product proposal report with reasons for choosing the product line, an analysis of which product types would best appeal to the applicant's intended customers and a comparison of products from each supplier; (f) When the sampling is undertaken, the Buyer Team sends the above reports and a proposed first purchase order to the Manager of the subgroup; (g) The Buyer Team then negotiates payment terms with suppliers including a payment timeline. Once terms are agreed, the suppliers are added to the New Aim Purchasing System; (h) Once having committed to an order, New Aim engages quality control from a third party to inspect the supplier's factory; (i) Following the placement of the first order but prior to shipment to Australia, New Aim's QC team in China will review the supplier's factory and products; and (j) Once the products arrive at New Aim's Melbourne warehouse, the products are advertised for sale across various online marketplaces. 44 Mr David Fixler is a partner of the firm Corrs, Chambers Westgarth (Corrs), the lawyers for the applicant. He gave uncontroversial evidence as to the purchase of various products from Broers and/or Sun Yee. It is not in dispute in this proceeding that Broers and/or Sun Yee offered for sale various products that were identical, or very similar, to these offered for sale by the applicant. 45 Ms Fangyun (Lindy) Chen is the Founder and Managing Director of ChinaDirect Sourcing, an Australian firm established by her in 2005 that assists clients in procuring products from suppliers in China. Ms Chen has also authored a book which examines the process of sourcing products from suppliers in China titled: Import from China: How to Make a Million and Not Get Burnt!, which was published in 2011. On account of her relevant industry experience and knowledge, Ms Chen was engaged as an expert witness for the applicant. Her evidence was objected to. I admitted her expert report dated 8 March 2022, after ruling on the objections to it. I have now concluded that I should reject each of the statements of fact and the expression of opinions as contained therein for the following reasons. 46 Her signed witness statement is dated 8 March 2022 and it attaches her report. In it she recites the purpose of her engagement is to act as an independent expert witness engaged by Corrs for the applicant in this proceeding. She stated that: When I was retained, Corrs provided me with a copy of the Federal Court of Australia Expert Evidence Practice Note (GPN-EXPT), which includes the Harmonised Expert Witness Code of Conduct (Code). I confirm that I have read, understood and complied with the Code in providing expert assistance in the proceeding (including in making this witness statement), and agree to be bound by it. A copy of the Code is annexed to the retainer letter I received from Corrs on 21 February 2022, referred to below. 47 She attached a number of documents to her witness statement including a retainer letter from Corrs dated 21 February 2022, an instruction letter from the firm dated 7 March 2022 and her expert report dated 8 March 2022. What is remarkable about that timeline is that the letter of instruction directed Ms Chen to provide an overview of her business, with a focus upon the service that her business provides to clients and then to explain the practices "(if any) in the industry (including in particular, in the e-commerce sector) concerning the use and treatment of information pertaining to the identities and details of suppliers in China", all of which was able to be answered by Ms Chen in the form of her expert report the following day, comprising 16 pages and 60 paragraphs, not including attachments. 48 As might be expected, the apparent ability of Ms Chen to produce an expert opinion report so quickly was the subject of detailed cross-examination by counsel for the respondents. Initially, it was put directly to her that she did not draft "this entire report" herself within a space of 24 hours. Ms Chen answered, "I prepared within 24 hours" [sic]. She then disclosed that she had "a couple of conversations" with unidentified lawyers from Corrs between 21 February and 7 March 2022. She was pressed as to whether she had prepared and submitted earlier drafts of her report. She answered, "I think it was about two or three". She accepted that she sent drafts of her report to Corrs for comment. She accepted that she received comments from Corrs during a video conference. She denied receiving comments in writing, by email or otherwise. She was pressed as to whether the solicitors suggested to her that she should make changes to her draft report. To this simple question, she prevaricated and gave unsatisfactory and at times unresponsive answers. To this point her evidence was inconsistent, at times confusing and I began to doubt her independence. Eventually, she was asked the direct question: "who drafted the version of" her report as attached to her witness statement. She answered, "I started first" [sic]. Her evidence continued: Yes? - And then we had a video conference, and then we went through some of the things, and the videoconference had, like, more information revealed. So, the second version - there are some other actual information in there. Who put together the second version? - I think it's Sarah. Who's Sarah? - Sarah is Corrs - the lawyer from the Corrs. 49 Counsel then pressed the witness with detailed questions in order to elicit information as to who was responsible for the drafting of which portions of the expert report. She specifically denied the proposition that "the drafting has generally been done by New Aim's solicitors rather than by you, hasn't it?" Her attention was drawn to certain paragraphs in her report which bear a remarkable similarity to paragraphs in the witness statement of Mr Huang. Once again it was directly put to her that she was not the author of all of her expert report. She failed to give satisfactory answers to those questions but eventually conceded that "but if you say every words of the sentence is exactly 100 per cent written by me, no" [sic]. Her demeanour was distinctly uncomfortable in giving that answer. 50 Eventually, Ms Chen conceded that she had received emails from Corrs, the effect of which was to suggest that she make changes to her draft report. Prudently, counsel for the respondents called for the production of all documents sent by Corrs to the witness, to the effect that alterations be made to, or commentary upon, her draft report. The evidence of Ms Chen was then adjourned so that she could attend at her office, obtain her computer and locate any other documents within the ambit of the call for production. Documents were produced, without objection as to legal professional privilege, and the cross-examination of Ms Chen resumed. 51 What then emerged from the evidence of Ms Chen is that on 22 February 2022, she sent her personal biography and some general information about her company to various lawyers at Corrs. On 25 February 2022, Sarah Catania, a lawyer in the employ of Corrs, advised Ms Chen by email that "we are progressing your witness statement and would like to arrange a call with you next week to discuss it further." Suitable dates were requested for a conference. On 6 March 2022, Ms Catania sent an email to Ms Chen. She copied it to various individuals within Corrs, including Mr Fixler. In part it reads: We are in the process of finalising your statement and hope to have it to you soon. As discussed, we would appreciate it if you would send us examples of the following completed documents: supplier summary report, quote comparison report and landed cost analysis. We will redact the client and supplier names and any financial figures. If there is anything further you would like redacted, please let us know. As promised, we will not file anything without your clear approval. 52 Further emails were exchanged between Ms Catania and Ms Chen, which contained requests by the firm for further information and inquiry as to conference availability. Information was provided. There were more virtual meetings. On 7 March 2022 at 5:27 pm, Ms Catania emailed Ms Chen, which she copied to other lawyers within Corrs including Mr Fixler, in which she said: Dear Lindy Thank you for your time on the phone today. We attach our letter of instructions to you in this matter. We will send to you your draft statement shortly. 53 The attachment was the letter of instruction on 7 March 2022, signed by Mr Fixler. That letter, after briefly stating the background to the proceeding and under the heading "instructions" reads: For the purposes of your expert evidence in this proceeding, you are instructed to: • provide an overview of your business, ChinaDirect Sourcing and the services that your company provides; and explain, based on your experience and expertise, the process involved to identify reliable suppliers in China suitable for the Australian market, with a particular focus on the e-commerce sector; • explain the practices (if any) in the industry (including, in particular, in the e-commerce sector) concerning the use and treatment of information pertaining to the identities and details of suppliers in China. Please let us know if you require any further information from us to provide this opinion. If you have any queries, please let us know. 54 On 8 March 2022 at 11:40 am, Ms Catania emailed Ms Chen, which she again copied to other lawyers within the firm, including Mr Fixler, and stated that: Dear Lindy Further to our call this morning, we attach the draft witness statement and expert report for your review. The annexures and attachments may be located at this link. Please let us know if you have any queries. Kind regards Sarah 55 The attached witness statement and expert report are not materially different from the versions that were finalised, signed and dated, filed in this proceeding and delivered as the independent expert opinion of Ms Chen, though the date of delivery is unclear. 56 On 11 April 2022, the solicitor for the respondents emailed correspondence to Ms Catania at Corrs, referenced the expert report of Ms Chen and stated: Please provide, by no later than 4 pm on Wednesday, 13 April 2022, copies of the following documents: (a) All documents recording any communications between your firm and Ms Chen; (b) All documents recording any communications between your client, including their employees and Ms Chen; and All drafts of the expert report. 57 Mr Fixler responded to that request by email on 12 April 2022. Inter alia he said: There is no legitimate basis for such a request. Insofar as your clients seek production of correspondence with Ms Chen, our client maintains its privilege over that correspondence, except to the extent that it discloses the instructions given to Ms Chen (and those documents have already been produced at Annexure FC-1 of Ms Chen's witness statement dated 8 March 2022). The filing of Ms Chen's witness statement does not itself lead to a waiver… 58 The solicitor for the respondents did not accept that. A detailed and reasoned request for the production of the documents was sent by email on 13 April 2022, although the attached letter is wrongly dated 11 April 2022. The requested documents were not produced. On 16 April 2022, Mr Fixler sent correspondence by email to the solicitor for the respondents. Amongst other things he said: As we previously communicated, all of the instructions given to Ms Chen have already been provided (as Annexure FC-1 to Ms Chen's witness statement). For completeness, we also advise that there are no communications between New Aim and Ms Chen. To the extent that your client presses for drafts of Ms Chen's report and any other communications between Corrs and Ms Chen record instructions given to Ms Chen, our client maintains that this is neither necessary nor appropriate. In particular, as discussed further below, these communications and documents are privileged, and there has been no waiver of that privilege. 59 The respondent's solicitor did not respond to that email. 60 I return to the cross-examination of Ms Chen about this chronology of events. She was questioned as to which portions of her expert report were drafted by her and which portions were drafted by Corrs. She answered, "I don't know how to define that part". She agreed that her report was "a collaboration" between her and the lawyers from Corrs. She was questioned further about other aspects of the drafting of her report, which I do not find it necessary to address in these reasons, save for her evidence about the drafting of paragraphs [58] - [60]. These paragraphs appear at the end of her report and state various opinions to the effect that, in the experience of Ms Chen, a list of suppliers in China who are reliable and produce a range of high-quality goods suitable for the Australian market "is almost always considered to be and is treated… as confidential and a very valuable asset of the business", that her clients "typically request that the identity and details of the supplier are not disclosed" and that "it would be extremely difficult to identify the supplier of a product manufactured in China if the details were not disclosed on the product." Ms Chen accepted that paragraph [58] was drafted by Corrs but reflected her opinion. However, it is also the fact that the second sentence of that paragraph, as counsel for the respondents correctly observed, bears a "striking similarity" to paragraph [41] of the witness statement of Mr Huang dated 16 March 2022. I infer that those sentences were drafted by the same person, in this case, one or more lawyers from Corrs. She further accepted that the drafting selectively reproduced portions of her book, favourable to the applicant's case. 61 In some circumstances, the fact that an expert witness may agree with a form of words for the expression of the expert's opinion which are put to the expert in an admissible form, may not detract from the independence of the expert and the reliability of the opinion expressed. That observation is consistent with the reasoning of Lindgren J in Harrington-Smith on Behalf of the Wongatha People v Western Australia (No 7) (2003) 13 FCR 424; [2003] FCA 893 at [18]- [19] where he said: Unfortunately, in the case of many of the experts' reports, little or no attempt seems to have been made to address in a systematic way the requirements for the admissibility of evidence of expert opinion. Counsel protested that, in order to ensure that the requirements of admissibility are met, lawyers would have to become involved in the writing of the reports of expert witnesses. In the same vein, counsel said, in supporting the admission of certain parts of a report, that they were written in the way in which those qualified in the particular discipline are accustomed to write. Lawyers should be involved in the writing of reports by experts: not, of course, in relation to the substance of the reports (in particular, in arriving at the opinions to be expressed); but in relation to their form, in order to ensure that the legal tests of admissibility are addressed. In the same vein, it is not the law that admissibility is attracted by nothing more than the writing of a report in accordance with the conventions of an expert's particular field of scholarship. So long as the Court, in hearing and determining applications such as the present one, is bound by the rules of evidence, as the Parliament has stipulated in subs 82(1) of the NT Act, the requirements of s 79 (and of s 56 as to relevance) of the Evidence Act are determinative in relation to the admissibility of expert opinion evidence. (Original emphasis.) 62 That must be read with an understanding that his Honour was dealing with, at case management level, a large number of objections as to the content of various expert reports to be relied upon as opinion evidence upon the trial of the proceeding. It is, necessarily, a general observation. Much depends upon the particular circumstances. And one should not overlook the further reasoning of his Honour at [27]: Unfortunately, however, in the case of many of the present reports, it is difficult to avoid the impression that no attempt at all has been made to address the criteria of admissibility of expert opinion evidence. The difficulty of my task is increased as a result. My impression is that in some cases, beyond the writing of an initial letter of instructions to the expert, lawyers have left the task of writing the reports entirely to the expert, even though he or she cannot reasonably be expected to understand the applicable evidentiary requirements. Such a course may have been followed because of a commendable desire to avoid any possibility of suggestion of improper influence on the author. But I suggest that the distinction between permissible guidance as to form and as to the requirements of s 56 and 79 of the Evidence Act, on the one hand, and impermissible influence as to the content of a report on the other hand, is not too difficult to observe. It does not serve the interests of anyone, including those of the expert witness, to deny him or her the benefit of guidance of the kind mentioned. 63 What occurred in this case went well beyond permissible guidance of that character. Counsel for the respondents invites me to reject the entirety of the expert report of Ms Chen, or alternatively to place no weight upon it, as falling within that category of case identified by Lord Wilberforce in Whitehouse v Jordan [1981] 1 WLR 246 at 256 (Whitehouse) where in his speech he said: One final word. I have to say I feel some concern as to the manner in which part of the expert evidence called for the plaintiff came to be organised. This matter was discussed in the Court of Appeal and commented upon by Lord Denning MR [1980] 1 All ER 650, 655. While some degree of consultation between experts and legal advisers is entirely proper, it is necessary that expert evidence presented to the court should be, and should be seen to be, the independent product of the expert, uninfluenced as to form or content by the exigencies of litigation. To the extent that it is not, the evidence is likely to be not only incorrect but self -defeating. 64 In the Court of Appeal, Lord Denning MR was strident in his criticism of the apparent practice of counsel, when settling the document, to suggest that portions of it be deleted or that additions be inserted [1980] 1 All ER at 655. 65 That approach may not be consistent with authority in Australia. Conversely, it may be that there is no direct inconsistency between the English and the Australian approach once it is understood that "everything depends on the circumstances": Phosphate Co-operative Co of Aust Pty Ltd [1989] VR 665 at 683, Brooking J who continued: The guiding principle must be that care should be taken to avoid any communication which may undermine, or appear to undermine, the independence of the expert. What happened here was quite unsatisfactory. 66 In that case, an ostensibly independent expert report was provided to shareholders for their consideration and approval of a proposed scheme of arrangement which opined that the scheme was fair and reasonable. The accountants retained by the company to express the opinion on that question submitted a number of draft reports which were discussed with representatives of the company and its lawyers. That process led to a substantial rewriting of the opinion. Unsurprisingly, his Honour refused to grant approval for the proposed scheme of arrangement, for the reason that the report was not a genuine and independent expression of opinion. 67 Callinan J in Boland v Yates Property Corporation Pty Ltd (1999) 74 ALJR 209 considered this issue at [276] - [279] and stated that Lord Wilberforce had gone "too far" in Whitehouse. It is useful to reproduce some of his Honour's reasoning at [279]: For the legal advisors to make suggestions is a quite different matter from seeking to have an expert witness give an opinion which is influenced by the exigencies of litigation or is not an honest opinion that he or she holds or is prepared to adopt. I do not doubt that counsel and solicitors have a proper role to perform in advising or suggesting, not only which legal principles apply, but also that a different form of expression might appropriately or more accurately state the propositions that the expert would advance, and which particular method of valuation might be more likely to appeal to a tribunal or court, so long as no attempt is made to invite the expert to distort or misstate facts or give other than honest opinions. However it is the valuer who has to give the evidence and who must make the final decision as to the form that his or her valuation will take. It will be the valuer and not the legal advisors who is under oath in the witness box and bound to state his or her opinions honestly and the facts accurately. The lawyers are not a valuer's or indeed any experts' keepers. 68 The learned author of Cross on Evidence (Electronic Version, LexisNexis, current to March 2022) at [29080] states that: What is the role of the legal practitioner in preparing the expert's report? At least from the point of view of ethics and weight, since an independent expert is expected to be non-partisan, the consultation with the party's legal advisers which may be proffered to ensure that the report is directed to the issues before the court, must not be permitted to distort the substance of the witness's opinion so that it loses its essential character as an independent report unaffected as to form or content by the exigencies of litigation… It is legitimate for legal practitioners to identify the real issues for the expert, to indicate when the report fails to direct itself to the real issues, to point out the obscurities and gaps in the reasoning, to indicate that the report fails to distinguish between the assumed facts and the opinion which is supposed to be based on them, and to indicate that the report does not explain how the opinion is substantially based on the expert's specialised knowledge. 69 To similar effect, see Freckelton and Selby, Expert Evidence Law, Practice and Procedure (6th ed, Thomson Reuters) at [5.0.150]. Mr Hugh Stowe, in an article published in 2018 observes that "the better view is that there is no ethical impropriety under the present rules in the barrister preparing the first draft (in conference or alone), based on instructions received from the expert. However, the considerations of strategic prudence referred to above strongly dictates that the expert should typically prepare the first draft": Preparing expert witnesses - a (continuing) search for ethical boundaries [2018] Bar News 72 at 77-78. For the contrary view see Ipp J, Lawyers Duties To The Court (1998) 114 LQR 63 at 92. Whilst there may not be an ethical difficulty if the lawyer drafts the report based on instructions from the expert, as this case demonstrates proceeding in that way poses the serious risk of compromising the independence of the expert and of undermining the value of the opinion. Further, this is clearly a case which in my opinion substantially departs from the proper role of lawyers who engage independent experts in legal proceedings. 70 There are many difficulties with the expert report of Ms Chen, which individually and cumulatively lead me to the conclusion that I should reject it in its entirety. I am left in a state of uncertainty as to who was responsible for the drafting of which portions of her report. It would appear that most of the report was, at least initially, the product of drafting by the lawyers for the applicant, albeit in reliance upon some material of a non-specific nature that Ms Chen provided to the lawyers. The fact that Ms Chen adopted the drafting of others as her opinion does not address the more fundamental issue that her engagement obliged her to act as an independent expert witness conformably with the requirements of the Expert Evidence Practice Note and the Harmonised Expert Witness Code of Conduct. Clause 3.2 of the Practice Note advises that: A party or legal representative should be cautious not to have inappropriate communications when retaining or instructing an independent expert, or assisting an independent expert in the preparation of his or her evidence. 71 That statement of good practice was not complied with in this case. It may be perfectly appropriate, such as in cases where an expert is unfamiliar with the form and content requirements for an expert opinion report, for that document to be settled in an admissible form by someone else, but then in my opinion, only if that fact is disclosed in the report. In this case, that fact was not only withheld but was only ascertained during the course of cross-examination of Ms Chen, which in my opinion, was grossly unsatisfactory. 72 The Code of Conduct at clause 2 states the obvious proposition that an expert witness "is not an advocate for a party and has a paramount duty, overriding any duty to the party to the proceedings or other person retaining the expert witness, to assist the Court impartially on matters relevant to the area of expertise of the witness." In this case, that requirement of impartiality was substantially undermined by the failure to disclose the methodology of preparation of the expert report. 73 In the last paragraph of the signed witness statement, Ms Chen declared that she had "made all the enquiries which I believe are desirable and appropriate and no matters of significance which I regard as relevant here, to my knowledge, have been withheld from the Court." I cannot accept that Ms Chen failed to appreciate that the fact that her report was drafted, not by her but by the lawyers for the applicant, was not a matter of significance. It plainly was. 74 Regrettably, I also find that the conduct engaged in preparing and delivering the report of Ms Chen was misleading. The letter of instruction of 7 March 2022 conveys the representation that Ms Chen was engaged to prospectively consider each of the two questions the subject of her instruction. Contrary to that representation, a draft of her expert report had been prepared by Corrs no later than 25 February 2022. It was wrong in my opinion to state in the letter of 7 March 2022 that Ms Chen was instructed to prepare a report in response to the two questions posed in that letter, when the author was plainly aware not only of what the answers would be, but also, as to the form of the opinion and the fact that its expression was the product of drafting by Corrs. The letter of 7 March 2022 conveys the false representation that Ms Chen, as the independent expert, would upon receipt of the instruction set about the task of preparing her report. The failure to disclose those facts to the solicitor for the respondents and ultimately to the Court is most concerning, as it strikes at the very heart of the paramount and overriding duty that an independent expert has to assist the court impartially on matters relevant to the area of expertise of the witness, as stated at clause 2 of the Code of Conduct. 75 The solicitor for the respondents made two requests for the provision of "all documents regarding any communications between your firm and Ms Chen". Each request was denied, with the express representation that all documents evidencing or disclosing instructions given by Corrs to Ms Chen "have already been produced" as attachments to her witness statement of 8 March 2022. That was false in that the email correspondence that was exchanged between Corrs and Ms Chen commencing on 22 February 2022 was concerned with instructions as to who would draft the report and what it would be based upon. 76 What occurred in this case went far beyond the permissible scope of involvement of lawyers who retain an independent expert in order to give evidence in a proceeding. I reject the submission of counsel for the applicant that I should accept Ms Chen as an independent expert witness and that "the process by which her evidence was prepared is unremarkable." For the reasons I have given, it most certainly was not. Even if in some circumstances it is proper for lawyers to draft an independent expert witness statement for consideration by the putative expert, that fact must be disclosed in the expert report conformably with the obligations that the expert assumes in accordance with the Expert Evidence Practice Note of this Court and the Harmonised Expert Witness Code of Conduct. And then, all correspondence relating to the manner of preparation of the report should be disclosed and, to the extent that oral advice is conveyed to the expert, the substance should be documented and disclosed. What occurred in this case should not be repeated. 77 In the result, I cannot be satisfied that the opinions expressed in the report by Ms Chen truly represent her honest and independent opinions and that no matters of significance have been withheld. I reject all opinions and other factual material as set out in her report of 8 March 2022. 78 That leads to another matter. I raised with counsel during closing submissions whether, if I were to reject the opinion evidence as set out in the report, I should also reject the entirety of the evidence given by Ms Chen when cross-examined. I am not persuaded by the submission then put to me, that I should not and that it is open to me to make findings of fact based on her oral evidence. I have no confidence in the ability of Ms Chen to give credible, untainted and independent evidence and it would be quite wrong for me, having rejected the entirety of her written opinion evidence, to then proceed on the basis that I may, selectively, make findings of fact in accordance with her oral evidence. I cannot have confidence that her oral evidence was untainted by the factual material and the opinions expressed in her written report and the manner of its preparation I will not make any finding of fact based on any of her evidence.

[5]

Respondent's Witnesses 79 Mr Leung commenced employment with the applicant in April 2009 as an Office Assistant which position he held until 2010 when he commenced work as a Buyer to assist Mr Werner Liu in supplier identification and placement of new orders. From September 2010, Mr Leung visited China at least twice per year to attend the Canton Trade Fair in order to source suppliers. Mr Leung assisted Mr Liu with the formation of Honglang Commodity Information Consulting Co Ltd (Honglang), a China-based company which provided services exclusively to New Aim. I infer that Honglang is a related corporation to the applicant, although this matter did not receive attention in the evidence. He also assisted Mr Liu with the sourcing of products by use of the e-commerce website, Alibaba. When Mr Leung left the employ of the applicant in April 2021, there were approximately 150 China-based employees in the Category Team and 40 in the Buying Team. 80 Between 2013 and 2015, Mr Leung worked as a Home Category Manager, responsible for indoor and outdoor furniture, appliances, pet products and other furniture. This role included responsibility for the buying and selling strategy, the shipment teams and attending the Canton Trade Fair to identify new suppliers for products. When visiting the Canton Trade Fair, he would sometimes attend to inspect the factories of suppliers, or putative suppliers, in order to establish and maintain relationships with those suppliers, negotiate prices and payment terms. 81 As a Category Manager, he was provided with a company laptop which he used for work, as well as a New Aim credit card and office keys. He was not provided with a landline or mobile phone and used his personal mobile phone for calls and DingTalk and WeChat for messaging with the applicant's directors and employees, as well as to communicate with representatives of suppliers to the applicant. While he mostly liaised with suppliers via his work email address, he sometimes used WeChat to communicate with persons with whom he had become acquainted. Messaging through WeChat requires sending a friend invitation using either a WeChat ID or a personal phone number. Mr Leung would usually add a 'remark' when first adding WeChat contacts as a memory aid of how they had met or with which product they were associated. Company details were not saved as reminders and contacts were not updated when the individual representatives changed or the suppliers were no longer engaged by the applicant. Some contacts were tagged as 'supplier,' though these did not necessarily denote that person as a supplier to the applicant. For instance, the tag 'supplier' was also used to designate contacts of freight companies and freight forwarders. 82 In 2015, the duties of Mr Leung altered. He assumed the responsibility of Head of Buying, the duties of which did not materially differ from his role as Category Manager, save that he assumed responsibility for each product category of New Aim. He continued to visit the Canton Trade Fair at least twice in each year for the purpose of sourcing new products and to visit suppliers. 83 In approximately June 2020, Mr Leung was promoted to the office of Chief Commercial Officer. He retained similar responsibilities to those which he had as the Head of Buying but in addition became responsible for overseeing the buying and selling strategies of the applicant and its shipment teams. He resigned from that position with effect from 18 January 2021. 84 Mr Leung did not have a written employment agreement until 13 October 2011. The position description in the document is: importing purchaser (permanent full-time), which is not materially different from Mr Leung's title description, and the stated employee duties and responsibilities is that of a buyer of imported products. That agreement at clause 20 is concerned with confidential information of the employer and clause 21 deals with the intellectual property of the employer. 85 On 16 June 2020, the applicant made an offer in writing to Mr Leung to be employed in the position of Category Manager, which does not accord with acceptance of the fact that Mr Leung was appointed as the Chief Commercial Officer, but no party made any point about the difference. That offer contained a space for acceptance by Mr Leung, evidenced by his signature and dating. The document in evidence before me is unsigned and undated by Mr Leung. However, Mr Leung admits on the pleadings that he was employed by the applicant as the Chief Commercial Officer pursuant to the terms of the offer contained in that document. I infer that the offer was accepted by conduct. That offer also contains terms about intellectual property (clause 32) and confidentiality (clause 33), which I also address in detail in the balance of these reasons. 86 Despite the changing nature of his employee duties and position descriptions, Mr Leung continued to use his personal mobile phone for work purposes. That included using it, primarily through the WeChat application, to communicate with representatives of suppliers, and potential suppliers, to New Aim. However, as Mr Leung explained: For the most part, I communicated with suppliers through my work email. However, I sometimes used WeChat to communicate with people that I had met, including people who I met at the Canton Trade Fair. For example, some suppliers that I met at the Canton Trade Fair or that I was introduced to invited me to exchange WeChat details, or later added me as a friend on WeChat. This involves sending a friend invitation, which can be sent using a WeChat ID or phone number. My usual practice (both during and after my time at New Aim) was to add a "remark" when I first met the person to remind me of how I met the person and the product (or products) they were associated with. I usually did not save the person's company details on my WeChat, and did not usually update the person's information if the person left their employer. I also added a tag "supplier". I used the "supplier" tag to remind me of how I met the person. The tag did not mean that they necessarily supplied products to New Aim. I also used the "supplier" tag to save the details of freight companies (for example Toll) and freight forwarders." 87 That evidence was not challenged in cross-examination and I find according to it. 88 In obedience to the interlocutory orders made on 26 October 2021, Mr Leung made an affidavit on 5 November 2021, and attached to it ML-8 being a print-out of his WeChat contacts marked as "supplier". That document was reproduced as attachment ML-1 to his witness statement of 11 April 2022. The accuracy of this list was not challenged. In summary, it discloses that of 412 contacts, Mr Leung tagged 111 as "supplier". For each a name, or an alias, is given with a generic description of the type of product. Of this list Mr Leung said: The WeChat contacts listed at in this annexure were a small number of the owners and employees of suppliers that I interacted with during my 12 years at New Aim, and after I left the company. Because I generally did not list the name of the company where the person worked, I cannot determine whether these people work for companies who are suppliers of New Aim. Because people added me to WeChat over a number of years, I do not recall all of the people saved in the list… or the circumstances in which I met them. People also often used nicknames on WeChat rather than their full name, so I do not know the full names of a number of contacts on the list. 89 Mr Leung also gave unchallenged evidence that over time he developed personal relationships and friendships with many of the representatives of suppliers of products to New Aim. He stated the following: (a) I have pre-existing relationships with some suppliers. For example, my cousin (Feng Fung) worked at a home appliances store, which supplied range hoods to New Aim; (b) when I visited China, I often went out socially with suppliers. I regularly went to dinners, had drinks and karaoke with contacts and suppliers; (c) I communicated with a number of suppliers on WeChat; and (d) in around 2013, there were concerns about the safety of Chinese milk powder, three suppliers asked me to send milk powder to China. I sent them milk powder at my own cost. 90 When Mr Leung travelled with Mr Liu to the Canton Trade Fair, he used his mobile phone and the WeChat app in the presence of Mr Liu in order to record contact information for suppliers. Mr Liu raised no objection to the recording of information in that way by Mr Leung. When Mr Leung ceased employment with the applicant, he was not required to delete any relevant WeChat contacts from his mobile phone. 91 In contrast to the evidence of Mr Huang, Mr Leung was able to give evidence about the practices of New Aim in identifying new products and new suppliers from the commencement of his employment in 2009. There were some differences in the evidence given by Mr Leung, but they are not material such as to require me to choose between the evidence of Mr Leung and Mr Huang. Indeed, the evidence is largely consistent, acknowledging the longer period of employment of Mr Leung and his exposure to a broader range of the aspects of the business of the applicant. His evidence about the identification of products and suppliers was as follows. Commencing in 2009, the applicant only sold products on eBay. From 2010, it commenced selling products on other online platforms such as "Deal direct", "Only Online" and "Catch of the Day". 92 The applicant did not purchase products from Chinese suppliers by entering into exclusive supply arrangements. In some cases, New Aim created brand names for the purpose of retailing products that it sourced from its various suppliers. The same products were sold by competitors of New Aim. It was relatively common for the applicant to conduct searches of various types of products by using such platforms as eBay in order to make judgments about the types of products that were being offered for sale by competitors. This was a form of market research undertaken by the applicant in order to determine whether it would source a particular product from a supplier in order to offer it for sale. 93 Once a new product had been identified, the buying team would prepare a research report containing information as to why the product was selected, details of the competitor product, details of competitor sales online and potential suppliers of the product. During the period 2009 until January 2021, the majority of new products offered for sale by the applicant were procured in this way. In some cases that involved copying a product offered for sale by a competitor through an online platform. It was also a common practice for competitors of the applicant to copy its products and offer them for sale. 94 The applicant ordinarily would identify potential suppliers of products at the Canton Trade Fair or by using Alibaba. The Canton Trade Fair enables at least 1000 Chinese manufacturers to exhibit their goods in one place. A supplier directory is prepared and is available for purchase through the platform Taobao, which is equivalent to eBay. Alibaba is a Chinese e-commerce website whereby users may search for products and manufacturers by keywords, categories and/or images. The information that is able to be obtained is a picture of the product, its description, the name of the supplier, the length of time that the supplier has been on Alibaba, a description of the supplier, pictures of the factory and in some cases the number of employees, prices and minimum ordering quantities. 95 In the experience of Mr Leung, "most of New Aim suppliers, and all of the suppliers that I met at the Canton Trade Fair, advertise their products on Alibaba." He also gave evidence which was partly challenged (but which I accept), that during his visits to the Canton Trade Fair, he and Mr Liu would usually ask prospective suppliers whether they supplied to competitors of New Aim. He could not recall any case when a supplier declined the request. 96 It was also common for suppliers to volunteer this information, for which he gave one example being a television that was popular on the Kogan website. He was not challenged on that evidence, although he was upon later evidence to the effect that, based on his experience, he understood that suppliers to New Aim would disclose that fact to competitors if asked to. He accepted in cross-examination that he could not give one example of that having occurred and for that reason I do not make that finding of specific fact, though I do find in accordance with his earlier evidence that he or Mr Liu would ask suppliers at the Canton Trade Fair which competitors they supplied to, and the question would be answered. 97 I need to say something about Mr Liu. He is one of the founders of the applicant with Mr Fung Lam in 2005 and was a director of it until approximately December 2020, at which time he resigned in consequence of the purchase of his shareholding by Mr Fung Lam, who then became the sole shareholder. During the entire period of employment of Mr Leung, he had a close working relationship with Mr Liu. It is Mr Liu who first employed Mr Leung, was responsible for each of his promotions within New Aim, and between 2021 and 2015, Mr Leung worked closely with Mr Liu to assist him. Each regularly travelled together to visit the Canton Trade Fair. At the Trade Fair each would jointly inspect the products on display by various suppliers and would engage with the representatives. Mr Liu was certainly aware that Mr Leung used his personal mobile telephone for work related purposes and that such use included recording the WeChat contact details of individual representatives of suppliers. Mr Liu was included as a WeChat contact of Mr Leung. I find that Mr Leung and Mr Liu had a close working relationship. Despite all of this, Mr Liu was not called as witness at the trial. 98 In 2010, when Mr Leung was appointed as a Buyer, the applicant maintained supplier details on an Excel spreadsheet, stored on its internal server and in respect of which there were no access restrictions. By 2013, that system had become slow to operate as the number of suppliers and products increased. A decision was made to move to a new system known as Vtiger, a more sophisticated database that permitted the storage of a greater quantity of data. It is Mr Leung who developed the purchaser model for that system within which was recorded the supplier details, the order amount, the deposit date and the supplier contact details. As developed, that system did not have a field to store the WeChat details for suppliers. The system was accessed within multiple departments of the applicant. To access the system all that was required by an employee was a Vtiger account. 99 The Vtiger system was replaced in 2018 when Mr Xie and Mr Leung requested Mr Huang to develop a new purchasing system. He did. That system stored and generated the following categories of information: (a) the data for supplier details including quotations; (b) the contact details of suppliers, although there was no field to store the WeChat details; (c) approval process for placing orders; (d) a process for new approvals by the quality control department; (e) the notification of payment terms; (f) the generation of shipping notices; and (g) the sending of orders to the warehouse management system. 100 No request was made of Mr Leung and he did not take any step to record his WeChat contact details in any of these internal systems. There was no transfer of any of the data comprising the WeChat contacts of Mr Leung to the database of any of these systems. 101 Following his resignation, Mr Leung returned his laptop, credit card and keys to the applicant, and did not take with him any documents he used throughout his employment, including lists of suppliers, wholesale product information, retail sales data, market research, or images used to market products. It is important to understand that the applicant does not contend that Mr Leung copied or memorised any component of the detailed supplier information stored within the New Aim Purchasing System that was current in January 2021, nor in either of the two earlier databases that I have referred to. 102 Mr Leung was first introduced to Mr Mac Chen in December 2020. Thereafter, socially, Mr Chen informed him of his intention to establish an e-commerce business. He sought his opinion. Between early 2021 and April of that year, Mr Leung gave advice to Mr Chen regarding this endeavour, including how to source products from suppliers in China and advised on the types of products to sell, recommending home office and fitness products due to the impact of the pandemic creating an increased demand for these forms of equipment. Mr Leung introduced Mr Chen to Mr Dai, a director of Sun Yee. On occasion, when asked by Mr Chen if he knew someone who supplied certain products, Mr Leung would provide details of persons who he believed could be of assistance. He did not mention to Mr Chen whether or not they were a supplier to the applicant, nor if those contact details were confidential. In late April 2021, Mr Leung commenced employment with Broers as a part-time category manager. 103 Mr Leung does not dispute that he gave details of the contact persons for some suppliers stored in his WeChat application either to Mr Chen or to Ms Alice Lau who worked for an unrelated business in China. In cross-examination he was taken to paragraph [111] of his witness statement to the effect that on a few, perhaps three or four, occasions Mr Chen would ask him whether he knew of someone who could supply certain types of products. If he did, then he would convey the supplier details. He did not advise that the details were for a contact person of a supplier to New Aim. He then gave the following evidence: If you knew someone who you thought could assist, you gave him their details?… Yes. So you accept that what you're doing there is giving Mr Chen details of suppliers. There is no doubt about that, is there? - I just give him my… contact but it's not - I didn't let him know, like, whether it's a supplier or not. I knew that - yes, what - just want my friend doing this product or supplying this product - my - in China. And then I just transferred the contact to him or the one he told me to transfer it to. So, when Mr Chen asked you about a particular product you responded to that by giving him the details of an individual who you thought could help with that? - Yes. Mr Leung, that's giving someone a contact at a supplier, isn't it? -… Anyone doing, like, discount product. You were assisting Mr Chen to identify a potential supplier? - Yes. Do you recall how you gave those supplier details to Mr Chen? - I used WeChat. And just explain to me at least how you share such a detail through WeChat? - You send WeChat contact. So, it's a function which permits you to share a contact from your contact list with another WeChat user? - Yes. Is that right? - Yes. Now, when you gave Mr Chen those supplier details did he ask you where they came from? - No. 104 I find in accordance with that evidence. It emerged at a later point in the evidence that some of the contact details had been provided not to Mr Chen, but to Ms Alice Lau. Nothing turns on that. Viva voce evidence was led about a telephone conversation between Mr Leung, Mr Huang and Ms Chu and Mr Fung Lam in August 2021, though it emerged that some participants were not present for the entire discussion. The representatives of New Aim raised with Mr Leung concerns which they had about the display of New Aim products for sale on competitor websites. Mr Huang gave evidence to the effect that Mr Leung admitted that he had passed on supplier contact details as stored on his WeChat app, that he was aware that the products were profitable and that he intended to approach the suppliers. Mr Leung gave a more fulsome account of that discussion, including he enquired as to why New Aim had attempted to register trademarks owned by Broers and that Mr Lam threatened to commence a legal proceeding to cause stress to Mr Leung. Mr Leung did not deny that he had given some of his work WeChat contacts to Broers. I do not find it necessary to make any findings of fact to the extent to which that discussion differed as between the witnesses. It is not an issue in this proceeding that Mr Leung did make available some of his WeChat contact details to Broers and as I explain later in these reasons, whether trademark applications were made for an improper purpose, or there were threats of litigation, does not assist me in resolving this proceeding. 105 Broers is a competitor to the applicant for retail sales in Australia of a broad range of consumer goods. It offers for sale approximately 300 types of products. Like the applicant, its sources its products from various suppliers in China. 106 Mr Leung is not employed by, nor has any shares or interest in, Sun Yee. Sun Yee purchases products from Broers. 107 Mr Chen is a director of Broers who, with Mr Fei (Eddy) Dai, established the Broers business in February 2021. Mr Chen is responsible for overall management of the operations of the business. He is not directly engaged in the day-to-day management. Broers sources products and suppliers in the following manner: (a) The initial focus of the business was upon office furniture and fitness equipment, in particular, standing desks and fitness stations; (b) Once those two products were identified, Mr Dai conducted research to determine how well those products sold online, following this process with future product lines; (c) Once Mr Dai approved the product, Mr Chen would ask contacts he had in China to identify suppliers, including his brother and a friend who suggested a buyer for his business, Ms Alice Lau, who would then look for suppliers; (d) Mr Chen usually left the sourcing of suppliers to contacts in China, receiving recommendations from his brother occasionally. When Mr Chen was involved, the process for purchasing involved his brother calling and advising a product's availability at a certain price, which information he passed on with product dimensions to Mr Dai, who then calculated the product's profit margin and advised as to its viability for Australian sale; (e) Once the margin was confirmed, Mr Chen requested his brother place an order for the product. Once orders were placed, Mr Chen's friend in China helped secure quality checks while the product was being produced. 108 Mr Fei (Eddie) Dai is the director of Sun Yee and a shareholder in Broers. The initial market research of Mr Dai involved using research tools and websites including Terapeak, AMZScout, Google and Catch to determine information such as sales and price of sale, vendors selling the product and user demand. Once having considered that information, Mr Dai would make a recommendation as to the viability of selling a product to Mr Chen. If approved, he calculates shipping and marketing costs in assessing the profit margin. If those figures are acceptable then the product will be sold. 109 Mr Dai also explained the process to locate suppliers to Sun Yee. Mr Dai estimated that the process of sourcing a supplier can take between 45 to 60 days to complete. He noted there are numerous companies in China which provide supplier location services and that the e-commerce website Alibaba offers a useful starting point for identifying suppliers by comparing images on it to the products being sold. Once a potential supplier is identified, it is possible to communicate directly with that supplier and arrange for quality checks to be undertaken. 110 Mr Lei (Ray) Xiao was employed by the applicant in June 2010 as a packer until in 2014 when he was promoted to Warehouse Manager, a position he held until his resignation in March 2021. He commenced employment with Broers in March 2021 as a warehouse worker. His duties are limited to the unloading of containers and the driving of a forklift. 111 Mr Xiao stated that he did not take and does not retain any of the New Aim Confidential Information. These simple facts explain why the applicant's counsel ultimately conceded in closing that the case against him cannot be made out.

[6]

Breach of Confidence General Principles 112 The applicant's claim for breach of confidence begins with the contention that Mr Leung, during the course of his employment, "had access to" that which it labels as the New Aim Confidential Information which he then misused, following the termination of his employment on 18 January 2021, by sharing it with Broers and/or Sun Yee in his capacity as an employee, consultant "or otherwise." The cause of action that is pleaded is the exclusive jurisdiction in equity that is capable of co-existing with the statutory and contractual causes of action that the applicant also relies upon: Optus Networks Pty Ltd v Telstra Corporation Ltd (2010) 265 ALR 281; [2020] FCAFC 21 at [38], Finn, Sundberg and Jacobson JJ (Optus Networks). Although the applicant submits that the statutory obligation at s 183 of the Corporations Act can apply to the misuse of information that is not confidential, on the breach of contract claim it is not submitted by either party that the employment contract of Mr Leung operated to confine the scope of the exclusive equitable jurisdiction and it is not therefore unnecessary that I resolve any tension that is otherwise capable of arising: see generally the discussion by Professor Dal Pont, Law of Confidentiality, 2nd LexisNexis, at [2.20] - [2.31] (Dal Pont). 113 In Moorgate Tobacco Co. Ltd v Philip Morris Ltd (1984) 156 CLR 414, Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed) at 437-438 summarised the independent equitable jurisdiction for breach of confidence as follows: It is unnecessary, for the purposes of the present appeal, to attempt to define the precise scope of the equitable jurisdiction to grant relief against an actual or threatened abuse of confidential information not involving any tort or any breach of some express or implied contractual provision, some wider fiduciary duty or some copyright or trademark right. A general equitable jurisdiction to grant such relief has long been asserted and should, in my view, now be accepted (see The Commonwealth v. John Fairfax & Sons Ltd (1980) 147 CLR 39, at pp 51-52). Like most heads of exclusive equitable jurisdiction, its rational basis does not lie in proprietary right. It lies in the notion of an obligation of conscience arising from the circumstances in or through which the information was communicated or obtained. Relief under the jurisdiction is not available, however, unless it appears that the information in question has "the necessary quality of confidence about it" (per Lord Greene M.R., Saltman, at p 215) and that it is significant, not necessarily in the sense of commercially valuable (see Argyle v. Argyle (1967) Ch 302, at p 329) but in the sense that the preservation of its confidentiality or secrecy is of substantial concern to the plaintiff. That being so, the starting point of the alternative argument must be the identification of the relevant confidential information. 114 There are four elements that the applicant must succeed on in order to make out its breach of confidence case and which the Full Court conveniently summarised in Optus Networks at [39], with my minor ellipsis: (a) The information in question must be identified with specificity; (b) It must have the necessary quality of confidence; (c) It must have been received in circumstances importing an obligation of confidence; and (d) There must be an actual or threatened misuse of the information without consent. 115 In this case I am primarily concerned with the conduct of a former employee Mr Leung and by reason of that fact there is a need to distinguish between know-how and information which is obviously confidential to which the label of "trade secret" is sometimes applied. That distinction is a primary focus of the submissions of counsel for the respondents. As put in their closing submission in addressing the case against Mr Leung: …it is not sufficient for New Aim to show that the information was "confidential" … (it) must establish that the specific information used was in the nature of a trade secret, failing which is considered part of Mr Leung's available stock of knowledge, or "know-how". 116 That is not an easy distinction to draw in practice as explained by Dal Pont at [5.34]: Though easy to state, in practice the line dividing trade secrets from know-how is, as foreshadowed above, not always clear. For an employer to establish that a former employee has misused trade secrets in a subsequent engagement, whether or not for a new employer, may often prove challenging. The law requires that a plaintiff identify the (allegedly misused) confidential information with specificity……Lack of specificity as to the precise nature of the information may, moreover, be construed as an attempt to prevent an employee from making legitimate use of know-how gained in the employer's service. 117 If what is meant by the respondents' submission is that the information must fall into a highly secretive category, such as secret chemical formulae, processes or mathematical calculations, in order to distinguish it from the know-how of Mr Leung, then I reject it. The authorities relied on do not support that proposition and the concept of a trade secret has no fixed meaning that readily distinguishes between protected information and accumulated know-how. 118 In Faccenda Chicken Pty Ltd v Fowler [1987] 1 Ch 117 (Faccenda Chicken), the Court of Appeal at 136 distinguished "secret processes of manufacture such as chemical formulae or designs or special methods of construction and other information which is of a sufficiently high degree of confidentiality so as to amount to a trade secret" from other "information which is given to or acquired by the employee while in his employment, and in particular may not cover information which is only "confidential" in the sense that an unauthorised disclosure of such information to third party while the employment subsisted would be a clear breach of the duty of good faith." That reasoning has been criticised, particularly by Campbell JA in Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 (Del Casale) at [108] - [119]. As his Honour points out at [108] the expression trade secret is protean: it "is used in several quite different contexts, which need to be differentiated." 119 In the same case Hodgson JA reasoned, not by the application of the label of trade secret, but rather by distinguishing between two classes of confidential information by reference to the extent to which "the particular information can be readily isolated from the employee's general know-how which the employee is entitled to use after the end of employment": [41]. In illustrating that distinction at [42] his Honour referred to confidential information which "is of the nature of the secret formula or process, involving a number of elements such that independent discovery by enquiry or experiment is unlikely to occur, that confidential information can quite readily be distinguished from an employee's general know-how." Clearly, that illustration was not intended to be exhaustive which is demonstrated by his Honour's reasoning at [43]: However, where the confidential information is something that is ascertainable by enquiry or experiment, albeit perhaps substantial enquiry or experiment, and the know-how which the employee is clearly entitled to use extends to knowledge of the question which the confidential information answers, it becomes artificial to treat the confidential information as severable and distinguishable from that know-how; and in that kind of case, courts have tended not to grant relief. 120 The respondents also rely upon the decision of McDougall J in Manildra Laboratories Pty Ltd v Campbell [2009] NSWSC 987 at [84]: That not all confidential information becoming known to an employee during or by reason of his or her employment will be protected on termination of that employment. Where confidential information acquired by an employee during or in the course of his or her employment becomes part of the general know-how of the employee, or cannot realistically be separated from that know-how, equity will not protect it unless it is of the nature of a secret formula or process, or, more generally, something that is unlikely to be ascertained by independent inquiry or experience. 121 That summary does not confine the scope of post-employment confidential information that will be protected in equity to an especial category of trade secrets. The Full Court of the Supreme Court of South Australia in NP Generations Pty Ltd v Feneley (2001) 80 SASR 151; [2001] SASC 185 did not distinguish between trade secrets and other categories of confidential information in a claim against a real estate rental property manager concerning an address book of landlords and a work diary, which diary contained information that was part of the general knowledge of the employee and was not required by the employer to be maintained on a confidential basis. Debelle J, with whom Williams and Wicks JJ agreed, at [27] said: [a] distinction has to be maintained between information and knowledge acquired in confidence by an employee during his employment which he uses or discloses for his own advantage while he is still an employee, and information and knowledge so acquired which he uses for his own advantage after his employment is finished. A further distinction has to be drawn between information which forms part of the employee's stock of general knowledge, skill and experience, and that which could be fairly regarded as a separate part of the employee's stock of knowledge (whether it be identifiable as "particular" or "detailed" or "special") which a man of ordinary intelligence and honesty would regard as to the property of the former employer. 122 Barrett JA, in Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 295 ALR 760; [2013] NSWCA 2 at [160] stated that: "The confidential quality of information does not depend on its being in the nature of a trade secret." Meagher and Ward JJA each agreed with the judgment of Barrett JA. 123 In my view, the Australian authorities do not support confinement of the post-employment principle to confidential information which is in the nature of a trade secret, if by that label what is intended is reference to a readily identifiable subset of confidential information. I agree with the judgment of Harper J in GlaxoSmithKline Australia Pty Ltd v Ritchie (2008) 77 IPR 306; [2008] VSC 164 (GlaxoSmithKline) at [49] that the expression has no settled meaning and the correct approach to distinguish employee know-how from protected confidential information is as stated by his Honour at [50] where he said (omitting citations): I take a trade secret to be information which "can fairly be regarded as a separate part of an employee's stock of knowledge which a man of ordinary honesty and intelligence would recognise to be the property of his old employer, and not his own to do as he likes with". For the purposes of this case, I therefore take a trade secret to be an item of confidential information, learnt during employment, the confidentiality of which, as an employee of ordinary honesty and intelligence would acknowledge, must be maintained even after that employment has come to an end. In other words, a trade secret has an inherent quality that takes it above and beyond more general knowledge, albeit that the general knowledge may to a lay person be very specialised. Whether information amounts to a trade secret is a question of fact, to be determined in the particular circumstances. A trade secret is to be distinguished from knowledge of no special significance such as that which an employee with familiarity with the relevant art might acquire (without employing any more skill than that of an ordinary practitioner of the art) simply by building upon the information necessarily made available to him in the ordinary course of his employment. 124 That analysis is endorsed by the editors of Dean's Law of Trade Secrets and Privacy, 3rd ed (Dean's Law of Trade Secrets), at [40.4600]. As Harper J acknowledged in a footnote to paragraph [50], it is derived from the decision of Cross J in Printers & Finishers Ltd v Holloway [1965] 1 WLR 1 at 5 which has been followed in a number of subsequent decisions: for example, RLA Polymers Pty Ltd v Nexus Adhesives Pty Ltd (2011) 280 ALR 125; [2011] FCA 423 at [43], Ryan J and the list of case references in Heydon on Contract (Lawbook Co 2019) [19.580] and Heydon, The Restraint of Trade Doctrine (LexisNexis, 4thed) at 102-103. In contrast, the editors of Gurry on Breach of Confidence (Oxford University Press 2nd ed, 2012) (Gurry), at [12.178] support continued application of the Faccenda Chicken distinction as justifiably requiring a former employer "to identify specific pieces of highly valuable and secret information" in order to succeed in a purely equitable claim for breach of confidence. On the analysis that I have undertaken that statement does not reflect the law in Australia. 125 Relatedly, that brings me to another aspect of the respondent's legal submissions: the requirement to identify the confidential information with specificity. Gummow J in Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434 at 443 in stating the first element of the equitable claim for breach of confidence regarded as "well settled" that a plaintiff "must be able to identify with specificity, and not merely in global terms, that which is said to be the information in question" as having the necessary quality of confidentiality. It is of interest that the editors of Dean's Law of Trade Secrets at [30.610] consider that this element "has assumed first ranking only in the past two decades." An earlier example of insistence upon specificity is O'Brien v Komesaroff (1982) 150 CLR 310 which concerned a confidentiality claim by a solicitor in respect of the form of a unit trust deed which was said to produce certain beneficial taxation outcomes, if implemented. The confidential information was identified as advice about various sections of the Income Tax Assessment Act 1936 (Cth), the form of resolutions for the issue of units in the unit trust, the provisions of the trust deed and certain other minutes to give effect to resolutions. Mason J, in rejecting the confidentiality claim at 327, said: The description thus given invites the comment that the material would be more likely to lend itself to a claim for copyright than to a claim for confidential information.… The problem is caused by the generality of the description which the respondent has chosen as a means of identifying the information which he seeks to protect. It is so general that we cannot satisfy ourselves, in the light of the findings of fact made by the primary judge, that the information so described was imparted by the respondent to the appellants, that it was imparted in circumstances which gave rise to an obligation of confidence and that it does not include material which is common knowledge. 126 A further reason for the specificity requirement is the need to separate know-how from material that is properly the subject of a post-employment claim of confidentiality: Dal Pont at [11.13]. The respondents submit that the WeChat contact details "simpliciter" cannot amount to protected confidential information and they criticise the various iterations of the confidential information that had been advanced by the applicant during the course of this proceeding. In the amended statement of claim filed without leave on 6 October 2021, the applicant contended that its confidential and commercially sensitive business information included: i. the identity and contact details of the suppliers of each of the New Aim Products (save for certain products where the manufacturer identity details are required to be disclosed under the electrical equipment safety scheme); ii. wholesale product information including wholesale prices for each of the New Aim Products; iii. retail sales data for each of the New Aim Products; and iv. market research from sources including third-party marketplace data, internal New Aim sales data and sales data from New Aim suppliers. 127 That document defined the New Aim Products by reference to a detailed schedule of various categories of goods offered for sale by the applicant. 128 That pleading was amended in the form of the FASOC by limiting the confidential and commercially sensitive business information of the applicant to categories (i) and (ii). However, in opening submissions counsel for the applicant specified the information as the product of work undertaken by the applicant to identify "suppliers who are reliable and produce high-quality products that are suitable for Australia." In written closing submissions, counsel for the applicant identified the information as: New Aim asserts that there has been misuse of the details of its suppliers and the fact that New Aim has identified them as reliable suppliers of high-quality products that are suitable for the Australian market (New Aim Information). 129 In framing the claim in that way, the applicant did not press its separate claim in relation to the wholesale product information as pleaded as category (ii) of the FASOC, save to the extent that it "relates to the identification of the New Aim suppliers and the use of the supplier details." Just what is meant by that was not explained to me. By way of particularisation, the applicant relies upon two confidential exhibits. One, MC-1 to the affidavit of Mr Chen dated 5 November 2021 and the other annexure ML-8 to the affidavit of Mr Leung of 5 November 2021. 130 Annexure MC-1 is a spreadsheet printout that Mr Chen describes in his affidavit as "a table listing out the products that the fourth respondent has procured from suppliers of New Aim Pty Ltd which New Aim Pty Ltd sell as well as the sales of those products made during the relevant period". It is a table of products sold by the fourth respondent from 1 January 2021 to 5 November 2021. The spreadsheet comprises seven columns and many rows. The columns are arranged in order: supplier, order number, SKU, purchase quantity, total landed cost and type. In the order column there is a description of the particular type of product, for example a bed frame. The corresponding columns state the name of the supplier, the order number, the unique SKU number for the product, the quantity purchased, the quantity cost and that the product is either "stock" or "incoming order". It discloses a total of 17 suppliers of products acquired by Broers in the relevant period. Some suppliers are listed as a supplier of multiple product categories. 131 Annexure ML-8 is described by Mr Leung as a printout of the WeChat contacts from his mobile telephone comprising "WeChat contacts of persons who are employed by the suppliers of New Aim." That attachment is arranged in tabular format. It comprises three columns and has 111 rows. The columns are respectively marked "alias", "remark" and "tags". In the alias column there appears the English or Chinese character names of individuals either by their actual names or the alias of the person used for the purposes of the WeChat system. In the remark column there is a list of the particular products, for example a chainsaw, a chair or a television. In the tags column each row is marked "supplier". The list discloses that there were 412 contacts in the WeChat account of Mr Leung, as at 5 November 2021, of which 111 were tagged as "supplier." Some of the names in the alias column appear more than once to distinguish different products. 132 The applicant also relies upon annexures A and B to the FASOC which respectively are lists of New Aim products identified by product description, a photograph, SKU numbers and a corresponding list of New Aim copied products with product descriptions, a photograph and an SKU. 133 I accept the general submission of counsel for the applicant that the information the subject of the claim to confidentiality has been sufficiently identified and particularised, such that it does not amount to a global claim. However, that leads to difficulty when one compares the contact information contained in the WeChat account of Mr Leung with the identification by the applicant of the confidential information as comprising not only the details of its suppliers but also the fact that the applicant has identified each as a reliable supplier of high-quality products that are suitable for the Australian market. I return to that difficulty, in some detail, later in these reasons. 134 The next issue that must be addressed in this case is what is required to establish that the New Aim Information has the necessary quality of confidence? Acknowledging that each case is fact specific, each counsel referred me to the decision of Kirby P in Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317 at 333-334 as containing a convenient list of rules of thumb as relevant to deciding whether information will be protected in equity from disclosure or use by a former employee. That list was subsequently expanded upon in Dean's Law of Trade Secrets [30.2190] and endorsed by Hodgson JA in Del Casale at [40] as including: 1. The extent to which the information is known outside the business 2. The extent to which the trade secret was known by employees and others involved in the plaintiff's business. 3. The extent of measures taken to guard the secrecy of the information. 4. The value of the information to the plaintiffs and their competitors. 5. The amount of effort or money expended by the plaintiffs in developing the information. 6. The ease or difficulty with which the information could be properly acquired or duplicated by others. 7. Whether it was plainly made known to the employee that the material was [regarded] by the employer as confidential. 8. The fact that the usages and practices of the industry support the assertions of confidentiality. 9. The fact that the employee has been permitted to share the information only by reason of his or her seniority or high responsibility. 10. That the owner believes these things to be true and that belief is reasonable. 11. The greater the extent to which the "confidential" material is habitually handled by an employee, the greater the obligation of the confidentiality imposed. 12. That the information can be readily identified. 135 I have added the word "regarded" to point 7. 136 To this list Hodgson JA added at [41]: In my opinion, the stronger these factors are in any particular case, the more likely it is that the particular information will be treated as a trade secret that the ex-employee is not entitled to use or divulge; but in my opinion, there is another factor or class of factors which is also extremely important to this question, namely the extent to which the particular information can be readily isolated from the employee's general know-how which the employee is entitled to use after the end of employment. 137 Broadly similar factors were listed by Finn J in Australian Medic-Care Co Ltd v Hamilton Pharmaceutical Pty Ltd (2009) 261 ALR 501; [2009] FCA 1220 at [632] - [633]. I will proceed in my analysis guided by these factors, however as I explain there are facts quite peculiar to this case that assume some significance and there is particular difficulty on the separation or ready isolation issue and I do not regard the task as a "tick the boxes" exercise.

[7]

Confidential Information Analysis 138 I turn to a central question: what information was taken and used by Mr Leung? 139 The applicant's claim as finally expressed is limited to the list of WeChat contacts as recorded in the personal mobile telephone of Mr Leung, as evidenced by the print outs at annexure ML-8 his affidavit of 5 November 2021 and annexure ML-1 to his witness statement of 11 April 2022. It is a list of alias contacts, which may or may not be the names of individuals, with a corresponding notation "supplier", "remark," and "tag" which Mr Leung used to identify each alias with a particular product. Although not disclosed on the printout, but as explained in the evidence, WeChat operates rather like a list of contacts in the Apple system known as iMessage, or equivalents such as Facebook Messenger or WhatsApp. Stored contact information includes the unique WeChat identification number of an individual which can be used to communicate by instant messaging, voice and video call and social media. As summarised by counsel for the applicant, WeChat is a mobile telephone App which is the main Chinese online networking and communications facility. Although the WeChat App stores contact information in a cloud computer, it does not store a person's chat or message history in that manner. Mr Leung gave evidence, which I accept, that he lost or damaged his mobile telephone whilst snowboarding in June or July 2021, with the result that he cannot produce the WeChat conversation history with any of his contacts. 140 The contact list discloses that Mr Leung had 412 contacts of which 111 were tagged "supplier." For the reasons that I have given, I accept that this list of contacts in the WeChat account of Mr Leung represents a small number of owners and representatives of suppliers that Mr Leung dealt with during his approximately 12 years of employment with the applicant, together with some (unspecified) contacts that he established after he resigned his employment. I have also accepted his evidence that he is not able to determine whether the list of contacts is of current suppliers of products to the applicant. 141 It is unsurprising that Mr Leung met many individuals at the Canton Trade Fair, and probably elsewhere, with whom he exchanged WeChat details as potential suppliers of product to New Aim. I have set out above his evidence in chief, which I accept, as to when and for what purpose he recorded contact details in his WeChat App. I find according to that evidence. The list contact list was informally composed, over a long period of time, was not updated to reflect current suppliers to New Aim, was not limited to suppliers to New Aim and the recording an initial point of contact does equate to New Aim supplier status. And it is the fact that 303 of the WeChat contacts out of the total of 412, were not suppliers of any products relevant to this proceeding. 142 The list of WeChat contacts was a relatively informal record, as explained by Mr Leung in cross-examination, when asked: When you left New Aim, you retained in your mobile phone, a list of WeChat contacts? - Yes. And that list contained contacts of New Aim suppliers? - I would say this, like, the contact of the sales of those supplier. When… I'm sorry. Please, go on? - Yes. Yes, but I do not know whether they are, like, the factory behind or - yes, I would say, like, it's a personal contact. Well, we will perhaps come back later to whether they're personal or not, but the question I'm asking you is, your WeChat contact list contained contact details for individuals who worked for New Aim suppliers? - Yes. 143 The cross-examiner did not return to the question of whether the WeChat contacts were personal. There was no material challenge to a table that Mr Leung set out in his evidence in chief where he listed the 17 suppliers of products to Broers, identified the individual contacts by name or alias and stated to the best of his recollection when he met the person and where. That list is subject to the confidentiality orders and for that reason, my analysis of it does not identify the name of the supplier or the individual contact. I employ the same identification lettering as Mr Leung. In summary: (a) This company supplies bed frames. Mr Leung has known the contact for several years but cannot recall when they first met. The company was one of 10 suppliers of bed frames to the applicant; (b) This company supplies cat trees. The contact uses an alias and Mr Leung does not know the Chinese name of the individual. Mr Leung does not recall the circumstances in which he met the contact, although it occurred in approximately 2015. The company was one of several that supplied cat trees to the applicant; (c) This company supplies barstools and dining chairs. Mr Leung has known the contact for a number of years, they speak regularly, and each has a common interest in fishing. Mr Leung met the contact at the Canton Trade Fair and when Mr Leung travels to China he socialises with the contact. He has also spent time with the contact in Malaysia; (d) This company supplies duck and goose down quilts. Mr Leung met the contact at the Canton Trade Fair in approximately 2015 and they subsequently became friends. The contact visits Australia each year and has dinner with Mr Leung; (e) This company supplies fitness equipment. The contact added Mr Leung to his WeChat account in 2020. The company is one of approximately 5 suppliers of fitness equipment to the applicant; (f) This company supplies furniture. Mr Leung met the contact at the Canton Trade Fair and they exchanged WeChat contact details. The company is one of approximately 10 furniture suppliers to the applicant; (g) This company supplies massage equipment. Mr Leung does not recall when he first met the contact, but he does recall that the contact added him to his WeChat account. Mr Leung does not recall dealing with the contact at any time during his employment with the applicant; (h) This company supplies memory foam bedding. Mr Leung met the contact at the Canton Trade Fair but does not recall when that was; (i) This company supplies microfiber quilts. Mr Leung met the contact "a long time" before the company became a supplier to the applicant. They met through a mutual friend in Queensland and have remained friends ever since; (j) This company supplies office chairs. The contact and Mr Leung had been friends for many years before the contact became a representative or employee of the supplier. The contact and Mr Leung have remained personal friends; (k) This company supplies outdoor items such as storage boxes. Mr Leung first met the contact in approximately 2018 when he had dinner with him at the factory of the supplier. The contact first informed Mr Leung that his company was a supplier to a competitor of the applicant; (l) This company supplies outdoor dining chairs. Mr Leung met the contact at the Canton Trade Fair in approximately 2017. They occasionally speak using WeChat; (m) This company supplies storage boxes and it is the only one that produces a 490 L storage box. Mr Leung met the contact at the Canton Trade Fair in approximately 2019; (n) This company supplies standing desks. Mr Leung met the contact when he visited her at the supplier factory in China. He does not state when that was. When the contact visits Melbourne she meets with Mr Leung. He describes their relationship as being "good friends". They often have dinner together; (o) This company supplies table legs. Mr Leung at the contact at the Canton Trade Fair, but he does not say when that was. They became friends, and they remain so; (p) This company supplies trampolines. Mr Leung does not recall when he first met the contact. The company is one of approximately 3 suppliers of trampolines to the applicant; and (q) This company supplies treadmills. Mr Leung met the contact at the Canton Trade Fair. They meet regularly whenever Mr Leung attends the Canton Trade Fair. 144 As at January 2021, New Aim sourced products from approximately 400 suppliers and over a range of approximately 6000 individual products. I infer from the evidence that I have summarised that Mr Leung compiled his WeChat list of contacts in a rather ad hoc manner. His list of contacts did not comprise all suppliers to New Aim current as at January or March 2021. The placing of a name or an alias with his or her contact details into the WeChat App is not evidence that the person was an employee of the manufacturer of the product: it must be the case that a range of agents or representatives were included in the list of contacts. Nor is it evidence that the contact person represented a current supplier to New Aim. In accordance with the vetting processes that I have described, making contact and entering the contact details of an individual amounts to no more than the first step that is taken before engagement of a supplier by New Aim, but only if Mr Leung was the point of contact. Further, the evidence does not permit me to make any findings to the following effect: (a) When the details were entered for all of the 111 supplier contacts over the 12-year period of compilation, although to a limited extent the date of first contact for some of the more limited category of 17 suppliers is in accordance with the evidence that I have summarised; (b) Which of the 111 supplier contacts subsequently became suppliers to New Aim, when and of which particular products, save for the 17 contacts identified by Mr Leung; (c) Whether supply relationships, if entered into with the 111 contacts, were subsequently maintained by New Aim; (d) Which of the 111 contacts represented suppliers of reliable high-quality products, save that I infer that the 17 are likely to have been; (e) Which of those contacts represented suppliers of products that were suitable for the Australian market, save that I infer that the 17 are likely to have been; (f) How many of the contacts were persons with whom Mr Leung had pre-existing relationships, were relatives or friends, save for those identified as such out of the 17 suppliers; or (g) Whether any of the suppliers were companies that had supplied defective or sub-standard products to New Aim. 145 Nor am I able to find on the evidence that has been adduced that the contact list of 111 suppliers comprised, or at least contained, that which the applicant characterises as "details of its suppliers and the fact that New Aim has identified them as reliable suppliers" apart from the limited inferences that I have drawn from the list of 17 suppliers. The identification process in accordance with the evidence of the applicant occurs after initial contact is made with a potential supplier and it is only if that process is satisfactorily completed that a supplier of a particular product is engaged. The recording of the contact names and WeChat details by Mr Leung occurred at an anterior point in time, well before a new supplier was selected as suitable and reliable. 146 This leads to another matter. The applicant led differing evidence to establish which of the 111 contacts on the WeChat list of suppliers were suppliers to it as at January and March 2021. Mr Huang in his first witness statement of 16 March 2022, stated, under the heading "list of WeChat contacts taken by Mr Leung", that: I have reviewed confidential annexure ML- 8 to Jack Leung's second affidavit dated 5 November 2021. In the table, Mr Leung lists 112 WeChat contacts which he has identified from New Aim is suppliers. New Aim has confirmed the name of the New Aim suppliers for 53 of those contacts. New Aim was unable to do so for the remaining contacts. All of the 53 identified suppliers were suppliers to New Aim at January 2021. Annexed to my witness statement and marked as confidential annexure DH-16 is a list of the WeChat contacts on Mr Leung's phone and the corresponding New Aim supplier for each contact. 147 Turning to that annexure, it comprises in tabular form the alias, remark and company details as set out in the WeChat list of contacts of Mr Leung with two additional columns. One is marked "purchase system vendor or ID" and the other "New Aim first order date". The reference to 53 corresponds with the total of the entries in the added columns. Mr Huang did not identify the person responsible for compiling that list. 148 Mr Leung in his witness statement of 11 April 2022, pointed to, in his assessment, errors in the compilation of that list. In response Mr Huang authored a second witness statement dated 14 April 2022. In paragraph [7] of that document, he acknowledged that there were certain errors in annexure DH-16. He set out various explanations for the initial errors such as inadvertence, inability to identify a matching New Aim supplier and the erroneous inclusion of former suppliers. He prepared an amended version of the list which he attached as annexure DH-19. According to that document, 48 of the WeChat contacts of Mr Leung were current suppliers to New Aim. 149 When cross-examined on this topic, he stated that each list was prepared by an individual in the Buyer Team, whom he did not identify. When taken to individual entries in the first list he accepted that "somebody" had made several mistakes in compiling the document. His evidence continued: Yes. So they're trying to find the best match with the list. But I think they make a mistake. Because the nickname in WeChat - you can add it from time to time. So sometimes, it's not like your legal name. So it's like Facebook and Instagram. You can add your nickname. So where trying - so this is not a very formal contact list. Yes? - - - So we have to try our best effort to match those stop so at that moment, I think the buyer had tried to match that. And then he find another person which the nickname would be different. But they think that might be the same person. So they put a name in there. ……. So the person who - is it true that the person who created or who added all the additional information on this document is a New Aim employee that doesn't report directly to you? - - Correct. …. So his Honour should understand this list was edited by someone other than you? - - Yes. Every single amendment to that list was inserted by someone other than you? - - Correct. The person doesn't report directly to you? - - No. And did you take any steps to check the correctness of the information before you annexed it to your witness statement? - - I instructed the head buyer in my team to add data. Because I - I don't have the direct contact with the supplier, so I don't have the information to that data. Right. So if - if I were to ask you about any one of the items in this table, you couldn't, from your own knowledge, tell His Honour whether the entries are correct? Is that right? - - Yes. Yes, right. … And then DH 19 is a document that was prepared in an attempt to fix up some of the mistakes that had been identified? - - Yes. … DH 19 was the - the circumstances in which that document was edited, were they the same, so it was done by somebody that wasn't you? - - Correct. Because you don't have the information that set out in the table, somebody else has that information? - - The WeChat, yes, no, we - we - I don't have the - the direct contact with the supplier. And so, you took no personal step - apart from asking other people - to verify the accuracy of that information? - - Correct. 150 There was limited re-examination of Mr Huang as to these matters. He confirmed that the last two columns on each annexure relevantly recorded data taken from the New Aim Purchasing System. 151 I am not satisfied that the applicant has established that 48 entries on the WeChat list of Mr Leung correspond with current suppliers to it as at January or March 2021. The method of compilation of the applicant's list does not permit me to find that it is accurate, save to the extent that it corresponds with the evidence of Mr Chen and Mr Leung. The cross-examination of Mr Huang demonstrated that the list is inherently unreliable and the witness who produced it did not prepare it and did not take any personal step to verify the accuracy of the information contained in it. 152 Put at its highest, the evidence is that 17 out of 111 supplier contacts in Mr Leung's WeChat contacts supplied products to New Aim as at January and March 2021. I accept as accurate the list of those 17 suppliers and corresponding products in annexure MC-1 to the affidavit of Mr Chen of 5 November 2021 for the reason that I accept the evidence of Mr Leung that he prepared that list by cross-referencing his WeChat list of contacts. I also accept the evidence of Mr Leung as to the circumstances when he met each contact and that with some, personal friendships have developed. In consequence, I find that the applicant has established that 17 suppliers on the WeChat list of Mr Leung, were current suppliers to it as at January and March 2021, limited to the list of contacts as identified by Mr Leung. 153 However, that is not a finding, and there is no evidence, that the suppliers had current supply status when Mr Leung first made contact with the individual representatives. At best, the WeChat contact list contains a subset of information comprising the contact details of individuals entered before the suppliers that they represented had been selected by New Aim as suppliers of products to it. That there is an overlap between 17 contacts on that list and current suppliers of New Aim as at January and March 2021, is in my view, no more than a coincidence. In reaching that conclusion what must not be overlooked is that the applicant does not contend and has not established in this proceeding that Mr Leung: (a) compiled his contact list from the more detailed and sophisticated supplier databases that were maintained by New Aim between 2009 and January 2021, in particular the New Aim Purchasing System; (b) updated his contact list from time to time so as to ensure that it contained only the contact details of current reliable suppliers of high-quality products suitable for the Australian market: or (c) copied any other information or removed any documents the property of it in order to identify the current suppliers of reliable quality products suitable for the Australian market. 154 As explained by Mr Huang in cross-examination, the New Aim Purchasing System that was in place from 2018 records considerable supplier details comprising the name of the company, the postal address, the physical address, the main telephone contact number, the main email contact address, a list of the products ordered from that supplier by the applicant, the volume of products so ordered and the prices paid. It did not record any of the WeChat contact details maintained by Mr Leung on his mobile telephone. 155 For these reasons, I reject the applicant's expansion of the definition of the confidential information the subject of this claim as it evolved during the course of the proceeding as comprising the details of the suppliers to New Aim and the fact that those suppliers had been identified by it as reliable suppliers of high-quality products suitable for the Australian market. In my view, the extent to which the claim to information belonging to the applicant has been made out on the evidence is limited to the pleading at paragraph 11(b)(i) of the FASOC, namely the identity and contact details of the suppliers to New Aim of products as at January and March 2021 and then confined to the 17 identified suppliers in annexure MC-1 to the affidavit of Mr Chen of 5 November 2021, when read with annexure ML-8 to the affidavit of Mr Leung of 5 November 2021. 156 In the balance of these reasons and for convenience, I refer to this more limited category of information as "the WeChat information" so as to distinguish it from the identity and contact details of suppliers to New Aim of products as at January and March 2021, as recorded in the New Aim Purchasing System, which also for convenience I refer to simply as "the database information". Where it is unnecessary to distinguish between those categories, I employ the label "the information".

[9]

What is the extent to which the information was/is known outside of the business of New Aim? 158 I accept the submission of counsel for the applicant that the evidence does not support a finding that the information is generally known outside of the business of New Aim. Mr Leung was unable to give any example of disclosure by a supplier of the fact of supply to New Aim and no other witness gave evidence to that effect. 159 However, it does not follow that this fact is not able to be ascertained by inquiry, noting that New Aim has not adduced any evidence of exclusive supply agreements with any supplier nor that it requires suppliers to enter into confidentiality agreements or to provide undertakings which bind a supplier not to divulge the fact of supply to New Aim. Indeed, the evidence goes further; Mr Huang stated in cross-examination that to his knowledge, the applicant has not entered into any confidentiality agreement with any supplier in order to restrict a supplier from disclosing the fact of supply to it. I have found as a fact that, during the course of the employment of Mr Leung, commencing in 2010, it was common practice for him and Mr Liu to ask questions of potential suppliers at the Canton Trade Fair designed to elicit information about the supply of particular products to competitors of New Aim and the questions would be answered. I have also accepted that most of the suppliers of products to New Aim, and all of the suppliers that Mr Leung met with at the Canton Trade Fair, advertise their products for sale on Alibaba, though they do not state through that medium the companies to whom they currently supply. That finding also accords with the evidence of Mr Li who in his witness statement of 16 March 2022 at [21] stated that the applicant undertakes online searches to identify possible new suppliers, including by reference to the Alibaba website. 160 Although thousands of potential suppliers and products may be identified by reference to Alibaba, I accept the evidence of Mr Leung that many of the suppliers identified by this website will sell identical products, often with parts sourced from the same manufacturer and that for some products there is a limited number of suppliers. The Alibaba website will typically list the product available for supply, a description of that product, the name of the supplier and the supplier contact details. 161 There is conflict in the evidence between Mr Huang and Mr Li to the effect that it is difficult and/or time-consuming to sift through the information on the Alibaba website in order to identify the supplier of a particular product and that of Mr Leung who, by reference to attachment ML-7 to his witness statement, described functional aspects of the Alibaba website and how, by the conduct of particular searches one can identify suppliers of particular products to New Aim. 162 Mr Huang gave evidence in chief that: There are usually thousands of potential suppliers in China for any one product, and the supplier's capabilities, product qualities, sophistication and costs vary significantly. As a consequence, locating potential suppliers is typically a very labour and resource intensive exercise. 163 Mr Huang did not explain how or on what basis he formed that view. In my view, it rises no higher than a broad generalisation that does not materially assist me. 164 Mr Li gave evidence in chief to the same effect, but he at least explained what he meant by example. Attachment KL-1 to his witness statement comprises screenshots of searches undertaken by him on the Alibaba website for product categories; treadmill, outdoor storage box and mattress. The results disclosed 2246 suppliers for treadmills, 6500 for outdoor storage boxes and 5139 for mattresses. The result of each search is unsurprising given the breadth of the search term in each case. Mr Li did not refine any of the search results by reference to, for example, any of the options listed on those searches. He could have, for example, in the case of mattresses refined the scope of his search by reference to memory foam mattresses, foam mattresses, mattress protectors, king-size mattresses or spring mattresses. That point is made by Mr Leung at paragraph [68] of his witness statement where he describes some of the steps that were taken by the buying team of New Aim in order to identify new products using Alibaba. He said, and I accept: "generally, New Aim's Buying Team did not simply try to sell a "treadmill" or "mattress". New Aim tried to copy particular models of products that sold well on other eBay stores. To search for suppliers of those products we could (and did) use keywords (for example, "plastic" or "waterproof") to narrow down the search results significantly." 165 Having not undertaken that, or a similar, exercise, I do not find Mr Li's evidence to be of much utility in this case. 166 In contrast, Mr Leung undertook a more sophisticated search process that he described in detail in attachment ML - 7 to his witness statement. This document is a compilation of search data from the Alibaba website, which Mr Leung explained is the product of various searches that he undertook to demonstrate how products could be searched on Alibaba in order to identify suppliers of that product to New Aim. By use of his methodology, he said in cross-examination, that it was "now easy to find their supplier", though there is some force in the proposition put to him by counsel for the applicant that he knew, by reference to annexure MC -1 the particular suppliers of individual products that he was searching for and worked backwards from the information in MC-1. There is also some force in the obvious counter proposition: an experienced buyer in the e-commerce industry is likely to be adept at using the Alibaba website to locate the suppliers of products to competing online retailers. What is clear from all of the evidence in this case is that the applicant operates in a highly competitive environment, there are many suppliers for individual products and the quality of those products, and the price, varies greatly. Indeed, as much is confirmed by the evidence of Mr Li in his primary witness statement at [17] where he describes a step in the process undertaken by the Buyer Team, in identifying new products and suppliers, as including: review of product offerings on competitor websites, review of eBay data, targeted research of online marketplaces using Google. 167 Returning to exhibit ML-7, and by focusing on the first example which is a home gymnasium weight bench, Mr Leung described by the use of nine steps how he was able to take an image of that product as offered for sale by New Aim, in the particular case by downloading the image from eBay, in order to ultimately identify the name and the contact details of the supplier of the product. His steps were: (1) download the product image from eBay; (2) perform a search location by uploading the image and searching for it; (3) make an evaluative assessment of the multiple search results for the same product by focusing upon such features as the load capacity and whether the bench is hinged; (4) in the case of multiple factories that produce the same product, focus only on factories with 3 years or more of quality certification which is a form of verification generated by the Alibaba search engine and then to further narrow the list of potential suppliers only choose a direct selling manufacturer and/or one which specialises in products within the home fitness category; (5) exclude trading companies; (6) browse the product information in order to identify the factory that uses the same image as the image obtained from eBay; (7) view the overview of the refined factories in order to ascertain whether they have experience in exporting to the Australian market; (8) browse the list of factory products in order to locate styles that are popular for sale in Australia; and (9) download the supplier contact details and information. 168 In his witness statement and of this process Mr Leung said: The search results on Alibaba displayed multiple search results on each page, including images of each product. It was very easy to scroll through images. In my experience, it was simple to scroll through these pages and identify the suppliers who sold the products that New Aim was looking for. 169 When cross-examined about that evidence, Mr Leung could not say how many suppliers were sifted by him in that way, though he qualified that answer by stating that if the supplier on its website used the same image as New Aim then the process "is quite easy". 170 Based on this evidence I find that with persistence, some degree of market knowledge of the e-commerce business in Australia and the range of potential suppliers, a person who is employed in a competing e-commerce business to that of New Aim is able to ascertain the identity of particular suppliers of particular products to New Aim. I do not find that this process is likely to be 100 per cent accurate, but there are other methods that are available to identify or to confirm the identity of those suppliers. The most obvious one is to either personally attend the Canton Trade Fair and ask questions and the other is to access the Canton Trade Fair supplier database that may be purchased through the platform Taobao. It must not be overlooked that the applicant does not require confidentiality agreements or undertakings to be entered into or given by its various suppliers. 171 For these reasons I do not accept the submission of the applicant that "the evidence establishes that the New Aim information is not known outside of New Aim." That fact has not been made out on the evidence. I infer that competitors of New Aim prior to January 2021 had various means available in order to determine the identity of all or some of the suppliers of products to New Aim and I further find that it is likely that at least some competitors would have ascertained that information in consequence. In any event, it is not a matter of inference: the applicant has simply failed to persuade me upon the totality of the evidence that I should find the fact that it asserts.

[10]

What is the extent to which the information was known by employees and others involved in the applicant's business? 172 When the New Aim Purchasing System was implemented with effect from 2018, the supplier information database was intended to be restricted to employees within each Buyer Team, such that each sub-group would only have access to supplier details for suppliers in each sub-category. That has not to date occurred, as Mr Huang explained in his evidence in chief: When designing the new software, it was intended that the system would vertically restrict the supply information in accordance with the sub-groups in the Buyer Team. This would mean that each sub-group would only have access to supplier details for those suppliers in their category. However, to date, this has not been implemented in that all members of the Buyer Team presently have access to all supplier details on the New Aim Purchasing System. Nevertheless, access to the New Aim Purchasing System is still restricted so that only those individuals who require the information as part of their role at New Aim are granted permission to access it. 173 No explanation was offered by Mr Huang as to why the applicant has been unable to implement the more restricted access control since 2018. 174 As at January 2021, the applicant employed approximately 400 persons in China and Australia of which approximately 110 were employees of the Chinese entity Honglang. Those employees were divided as to 41 within the Buyer Team, 61 in the Category Team, 10 in the QC team and 3 in the Compliance Team. On that basis and by further reference to the evidence of Mr Huang, as at the date of his witness statement of 16 March 2022, there were 6 employees in the bedding, home office and appliance team, 4 in the fitness, entertainment and building materials team, 5 in the home living, indoor and indoor furniture team, 4 within the kids and outdoor furniture team, 8 within the garden, outdoor living and pet team, 6 within the tools and outdoor activities team, 3 in the research and development team and 4 within higher management. 175 There is an unexplained mathematical error in the employee evidence adduced. Mr Huang's evidence is that prior to 1 January 2022, there were approximately 110 employees of Honglang based in China. According to his evidence, and in consequence of an assignment of intellectual property rights from Honglang to New Aim on 30 September 2021, with effect from 1 January 2022, all of the Honglang employees became employees of New Aim "across various teams in China or Melbourne". Thus, his evidence is that from 1 January 2022, New Aim was the employer of 400 individuals. How it became so, when Honglang was an apparently separate but related legal entity of New Aim, was not explained. In any event, Mr Huang stated in his evidence in chief that "the current employees" are based in China and Australia. By addition of the number of employees in the teams identified by Mr Huang, the total is 115, well short of the total of 400. Even if one adds the 110 who were employees of Honglang, there is still a deficiency of 175 employees. Mr Leung gave evidence in chief, that was not challenged, that when he left the employ of New Aim in 2021 "there were around 150 employees in China in Honglang's category team, and around 40 employees in Honglang's buying team." Even if one adds the 40 China based employees to the Buyer Team totals, there is still a deficiency of 130 employees. Further, what the China based employees do and what information they have access to, as comprised in the New Aim Purchasing System, was not addressed in the evidence. 176 That leads to difficulty in making findings of fact as to the extent to which the information contained in the New Aim Purchasing System was restricted to certain employees of the applicant. I find that the data, as comprised in the New Aim Purchasing System since the time of its implementation in 2018, has been generally available to all members of the Buyer Team, has not been restricted to the subgroups within the Buyer Team and that, at a minimum, 40 and up to approximately 80 individuals have had access to the data contained within the New Aim Purchasing System, which statistically is 10 or 20 per cent of the workforce. Often statistics can mislead. In reality, that data is open to be accessed by 100 per cent of the employees with the knowledge and ability to misuse it, being all members of the Buying Team. 177 However, none of that is of any real assistance. As I have explained, it is not alleged that Mr Leung accessed data contained in the New Aim Purchasing System. The focus of the proceeding is far narrower. The concern is with access by Mr Leung to the information which is limited to the 17 identified suppliers within the list of WeChat contacts on the personal mobile telephone of Mr Leung. The only person who was specifically aware of that information was Mr Leung. It was not known to any other employee within the applicant's business, save for the former director Mr Liu who would attend the Canton Trade Fair with Mr Leung and who I find must have had general knowledge that Mr Leung stored supplier contact details in his list of WeChat contacts. And it is to be recalled that at no point in time has there been capacity within the supplier databases developed and maintained by the applicant for the entry of those WeChat contact details. 178 Accordingly, whilst I accept that the applicant took steps to restrict access to the supplier details in the Excel spreadsheet to members of the category team, in the Vtiger database to members of the Buyer Team (though the effectiveness of that restriction was somewhat limited on the evidence of Mr Leung) and has taken steps to restrict access to the New Aim Purchasing System (albeit not as intended) to members of the Buyer Team, a relatively large number of employees have been able to access the stored supplier information data since 2014, Mr Leung did not access any of these databases and that is not the case sought to be made against him, or any of the other respondents. 179 To the extent that there is overlap between the WeChat information and the database information, Mr Leung is the only person who had access to the WeChat information. No step was taken by the applicant to restrict his access to the WeChat list of contacts on his mobile telephone. In a more general sense, the applicant did take the steps that I have summarised to restrict certain categories of its employees from having access to the contact name of a person who represented a supplier. But those restrictions did not extend to the WeChat contact details for the reason that none of the database systems maintained by the applicant provided for the uploading of the WeChat contact details: as put in the evidence, there was no "field" for the insertion of that data. 180 I also find, in accordance with the evidence of Mr Leung, that a person with knowledge of the e-commerce industry and the fact that China produces a very large range of consumer products that are able to be purchased through online transactions in Australia from the applicant and its competitors, would most likely be able to identify the name of and the contact details for suppliers of various categories of products to the applicant, as advertised from time to time on the various e-commerce platforms that it utilises. That information is capable of being determined in three ways. One, by conducting electronic searches of the type evidenced by Mr Leung. Another, by attending the Canton Trade Fair and liaising with the representatives of the various suppliers. And lastly, by accessing the electronic database of suppliers for the Canton Trade Fair. 181 For these reasons, in my view, the extent to which a component of the database information, limited to the name of and the contact details for a supplier, was known by the employees and other persons involved in the applicant's business, is ultimately of limited utility in assisting me in determining whether the WeChat information or that component of it as contained in the database information was confidential in the circumstances of this case. Conversely, what is clear on the evidence is that the applicant's employees did not generally have access to and therefore did not have knowledge of other details contained in the database information (such as the price for the acquisition of goods and the terms of trade which the applicant categorises as wholesale product information) which was restricted to an extent, though on the evidence, that appears to be somewhere between 40 and 80 employees as at January 2021. Misuse of information of that character is not in issue in this proceeding.

[11]

What is the extent of measures taken to guard the information within the business of the applicant? 182 There is considerable overlap with the evidence and the findings of fact that I have made upon the second consideration. Focussing my attention upon steps taken to safeguard the WeChat information and the database information, I find as follows. 183 Since 2017, employees within the buyer and shipping teams are required to participate in IT training sessions, the purpose of which is to provide instruction upon the use of the New Aim Purchasing System, including instruction about the access restrictions to it. Those instructions extend to the provision of a document, at least since June 2020, which provides operational instructions including how access to the New Aim Purchasing System is determined and allocated. 184 New Aim insists that packaging and operational instructions for products supplied to it are "plain packaged" in the sense that it requires that the supplier information is not to be disclosed, save for certain electrical products where various Australian standards require that the manufacturer be disclosed. Instructions to that effect are provided by various members of the Buyer Team, who are also responsible for ensuring that this requirement is met. 185 Steps are taken to limit the communication devices that members of the Buyer Team may employ. Employees are "strongly encouraged" to communicate via the instant messaging application Enterprise QQ, though the instruction is more relevant to the Chinese based employees. By using this system, the applicant is able to delete an employee account and therefore access to the data if an employee ceases to have that status. Other methods of communication which are "strongly encouraged" are use of individual employee work email addresses or Dingtalk, each of which may be disabled in the event that an employee leaves. 186 Since approximately June 2020, the applicant has formulated and made available the document described as: Confidentiality/Intellectual Property Policy, although the evidence as to the precise dates of formulation and publication is imprecise. Exhibited to the primary witness statement of Mr Huang is a copy of the Policy as at September 2020. Of that document he stated that that it had been available on the applicant's intranet since at least September 2020. In contrast, Mr Li stated in chief that the Policy was added to the applicant's Google drive on 1 June 2020. I find that the policy was placed on the applicant's Google drive on 1 June, but was not generally made available to all of the applicant's employees until September 2020. 187 The introductory paragraph of the Policy states: the purpose of the New Aim global training company Confidentiality/Intellectual Property Policy is to provide a framework and guidelines for New Aim global trading company management and employees when engaging and operating in our information sharing culture, with particular reference to confidentiality and intellectual property. This undertaking is designed to protect the know-how of the company and the results of its research and studies, and includes specific limits to protect your personal freedom of choice. 188 It contains, unsurprisingly, a definition of confidential information as including information about a number of listed matters "that is confidential to the company or any of its customers". There are 9 items in the inclusive list but there is no reference to the identity of all the contact details of suppliers, in contradistinction to the specific reference to "any customer information" and "contracts with suppliers". 189 Clause 1.1 of the Policy sets out the employee obligations of confidence. Very broadly, the employee agrees that during employment, and for so long as the confidential information remains confidential after termination of employment, then the employee will not directly or indirectly disclose the confidential information, access it, or copy it. In a separate section, the Policy deals with the intellectual property of the applicant. 190 Whether this Policy became a term of the employment agreement of Mr Leung, or was otherwise drawn to his attention, is a contestable question of fact. I address specifically the question whether the Policy was incorporated as a term of, or an obligation binding, Mr Leung pursuant to his employment contract in my analysis of the applicant's alternative breach of contract claim. Focusing upon the equitable breach of confidence claim which does not turn upon the terms of the contract of employment, the applicant submits that Mr Leung must be taken to have been aware of the Policy from as early as 1 June 2020, which is the date that it was first published on the applicant's Google drive. The evidence relied upon for that submission begins with that of Mr Li who, in chief, stated that when he commenced employment in September 2020, he received an email from the human resources department which attached a letter of offer and employment contract and which provided a link to a Google drive with the following statement: The following link includes all our company policies, please take some time to read through them before signing the contract. 191 The list of documents available included the Policy as at 1 June 2020. In cross-examination, Mr Huang, in answer to a question that he could not point to any evidence demonstrating that Mr Leung or Mr Xiao received the Policy, responded: This Policy is published in our internal company website, and we also send a message to our chat group to let the people know we have a new Policy there at the moment. 192 When questioned further, Mr Huang stated that the internal message group is Dingtalk. There is also evidence that the applicant relies upon to the effect that since January 2021, all managers within New Aim were instructed to distribute the Policy to each team member. That fact is of no relevance to the claim against Mr Leung as he resigned his employment on 18 January 2021 and there is no evidence that the Policy was distributed to him in this way prior to that date. 193 Mr Leung gave evidence that the existence of the Policy was not drawn to his attention during the entire period of his employment. He said in evidence in chief that not only did he not recall seeing a copy of the Policy, he did not recall any discussion of it and that he did not receive an email similar to that sent to Mr Li when he entered into his contract of employment in July 2020. Mr Leung was cross-examined on this evidence and it was directly put to him that he was being untruthful. He accepted that as Chief Commercial Officer of the applicant it was part of his role to be familiar with the policies of it. He stated that he did not have sufficient time to make himself aware of the Policy and admitted that he did not take any steps to familiarise himself with it. He said he thought it was "possible" to be the Chief Commercial Officer of the applicant without being familiar with its policies. It was then directly put to Mr Leung that he was lying about his lack of knowledge of the Policy, which proposition he denied. In support, he pointed to evidence of conflict between the directors of the applicant which distracted him from his ability to attend to his duties as the Chief Commercial Officer. He said that the conflict first arose in 2019 and continued through 2020. He continued: From that time Fung Lam did a lot of things to try to get the company from the other director. They don't communicate with, and the one to communicate with Fung Lam and then I transferred the message to Werner, and then, like, having that conversation all the, like, like - almost a whole year at that time. Are you suggesting that the reason you did not familiarise yourself with the Policy is because Mr Fung Lam and Mr Werner Lui were involved in a dispute about the company? Is that what you're saying? - - - Yes. 194 It was again put Mr Leung that he was lying, which he denied. In my view, Mr Leung gave truthful evidence on this issue. I assess his credit mindful that there is considerable research and academic commentary which questions the ability of humans to distinguish the truth from lies by observation of demeanour: Pell v The Queen [ 2019] VSCA 186 at [917] - [ 924], Weinberg JA. The objective evidence is that the Policy was promulgated and made available on the internal website, accessible to all employees, from 1 June 2020. There is evidence that other employees were made aware of it as a component of offers of employment. Whilst I accept the general observation that an upper-level manager, such as Mr Leung, when employed as the Chief Commercial Officer, would be expected to be familiar with published policies of the employer, that evidence and that inference do not lead to the conclusion that Mr Leung must have been aware of the Policy and was, therefore, untruthful when he gave evidence before me. Availability does not amount to actual knowledge, especially in the context of the relatively large business of the applicant, which is arranged pursuant to a number of departments including a human resources department. I infer that a purpose of this arrangement within the business of the applicant is to divide up the various tasks that must be undertaken in order to efficiently conduct the business and by adopting this structure, it cannot be inferred that all managers necessarily have knowledge of all policies, practices and procedures within each department. 195 The explanation given by Mr Leung that internal conflict was a significant distraction is supported by other evidence. Mr Leung stated that in approximately December 2020, he was approached by Ms Chui, the wife or Mr Lam, who requested that he resign his employment and sign a letter, to the effect, that he was unhappy with Mr Liu. He did not sign it but produced a copy of it as presented to him. It is signed by six employees, including Mr Huang. It is notice of resignation by each, intended to take effect on 18 January 2021. The document praises the management of the company by Mr Lam and is critical of the conduct of Mr Liu. It records "an endless deadlock between the two directors" over a period of 18 months, and blames Mr Liu, stating that his actions "have triggered immense frustration and confusion". 196 In my assessment, Mr Leung was a straightforward and honest witness. He did not (save for some difficulties which arose by reason of the fact that English is not his first language) prevaricate in his answers to questions put in cross-examination. He was not argumentative. He answered simple questions that required limited answers without elaboration, or an attempt at exculpation. His evidence about having insufficient time to familiarise himself with the Policy by reason of significant internal conflict is corroborated by the joint resignation letter. For these reasons, I find that he was not aware of the Policy during his employment with the applicant. My finding does not gainsay the general proposition that the applicant did take steps in the form of the Policy in an attempt to protect the integrity of its general confidential information. 197 I accept that other steps that were taken by the applicant that were designed to protect the database information extended to the generation and allocation of unique SKU identification numbers for products, limiting access to market research reports to members of the Buyer Teams and by including confidentiality clauses in contracts of employment. Whether the confidentiality clauses relevantly set out in the employment contracts of Mr Leung extended to the WeChat information or the database information is separately considered in my analysis of the breach of contract claim. 198 On this consideration, counsel for the respondents submits that despite the evidence adduced by the applicant as to the steps which it takes to protect the data contained in the New Aim Purchasing System, it failed to take "the most obvious step" in the form of confidentiality agreements or undertakings with its suppliers. In my view, there is much force in that submission. The applicant has adduced considerable evidence, which is not the subject of serious dispute, as to the steps that it takes in order to identify a trend for a new product, to research the market for that product, to investigate whether it is available from existing preferred suppliers and if not, to identify a suitable supplier and thereafter, to evaluate the product by testing and analysis (including where appropriate inspection of the factory of the supplier). Considerable effort is then devoted to the negotiation of product supply terms, the masking of the packaging and quality control. Clearly, the applicant takes these steps in order to efficiently and profitably conduct its business and subjectively regards the identity and contact details of its suppliers as valuable commercial information which affords it a competitive advantage in the marketplace. 199 Despite all of these steps, effort and doubtless expense, it is indeed surprising that the applicant does not require its suppliers to enter into confidentiality agreements or to provide it with confidentiality undertakings to the effect that the fact of supply of a particular product to the applicant is not to be disclosed to the public generally or to third parties. No evidence was adduced by the applicant that Chinese suppliers would not, or would not likely, enter into confidentiality agreements or provide confidentiality undertakings. On the evidence of Mr Leung, which I have accepted, it is common practice to attend the Canton Trade Fair and to ask potential suppliers to whom they supply identified products. I have also accepted the evidence of Mr Leung that this was a practice of the applicant during the period that he was employed by it. This evidence is supported by the fact that, following the resignation of Mr Leung, inquiries were made by New Aim employees of various suppliers in China in order to ascertain whether certain categories of products had been supplied to Broers. This evidence is set out in an affidavit made by Mr Liang on 5 October 2021, for the purposes of the interlocutory injunction application of the applicant, which the respondents tended before me. In that affidavit at paragraphs [11] - [21], Mr Liang gave evidence about a number of telephone calls that he placed on or about 20 August 2021 through to 23 September 2021 with approximately 10 suppliers, the effect of which was that he was informed as to what products had been supplied to Broers, by companies that were suppliers of the same products to New Aim. 200 I am satisfied that, in the usual course of events, it is likely that if asked a supplier of a product to New Aim is likely to disclose that fact to third party inquirer. Accordingly, I am satisfied that the applicant did not attempt to take an obvious step to safeguard the confidentiality of the database information.

[12]

What is the value of the information to the applicant and its competitors? 201 I accept the applicant's broad submission that the database information is of commercial value to it. It was accepted by Mr Dai, when cross-examined, that a number of matters are important to an e-commerce retailer of products sourced from China being product fail rates, product packaging, the reliability of the supply, the quality of the product and its safety and the suitability of the product for the Australian market and I find according to that evidence. It must follow from those facts that information of that character has commercial value. There is no evidence as to what that value is in this case in monetary terms, although I accept that it is not insignificant which is borne out by acceptance of the evidence, which is largely not in dispute, that it takes between six and nine months to identify the market trend for a particular product, search and locate a supplier for it, negotiate with the supplier for the terms of sale, undertake quality testing and analysis and import the product to Australia ready for sale. Somewhat obviously, those steps require expenditure. Once completed, the expenditure produces a result that is of value. 202 What is obvious from the evidence in this case is that a far more valuable component of the database information is the price at which the applicant acquires goods from suppliers and the trading terms. No attempt was made in the evidence to separate the value of that component of the database information from the WeChat information and I am not able to make any finding of fact on that issue. 203 The applicant further submits that I should find that the New Aim Information has "particular commercial value to the respondents". I do not make that finding. The applicant has made out its case to the extent that 17 contacts in the WeChat information became suppliers to Broers. The applicant is unable to rely upon the evidence of Ms Chen on this question by reason of my rejection of all of her evidence. What is left is the applicant's evidence as to the steps that it undertakes in order to identify market trends for products, to investigate the potential sources of supply and to ultimately settle upon a particular supplier for a product. The evidence is to the effect that similar steps were undertaken by Broers, despite the contact information given to it by Mr Leung for the 17 suppliers of New Aim category products. Mr Chen gave evidence, which I have summarised and accepted, as to the process undertaken by Broers to identify product lines and suppliers. Mr Li, when cross-examined, accepted that the applicant would not simply rely upon the fact that a product was sold by a competitor as a sufficient basis to acquire that product from the supplier to the competitor. It may be a starting point, but it is not the end point. 204 Further, in my view, the value of the information to the applicant and to its competitors is very much influenced by two facts that I have found. One, that there are steps that a competitor may undertake in order to ascertain the supplier of a particular product by conducting searches on Alibaba, attending the Canton Trade Fair (or subscribing to the Trade Fair catalogue) or by simply telephoning various suppliers and asking the right questions. The other is that the applicant adduced no evidence to the effect that it requires its suppliers to enter into confidentiality agreements or to give confidentiality undertakings. Each of those facts, in my view, materiality and adversely affect the value of the WeChat information.

[15]

Was it plainly made known to Mr Leung that the information was regarded by the applicant as confidential? 208 There is considerable contest in the evidence on this issue, apart from whether the Policy was drawn to the attention of Mr Leung, which I have determined in accordance with his evidence. 209 As a progressively senior employee, commencing with his appointment as Home Category Manager in 2013 and concluding with his appointment as Chief Commercial Officer in 2020, it is clear that he ought to have been aware that there were certain categories of information which must be treated by him as commercially sensitive and confidential, such as the wholesale price paid by the applicant to acquire particular products from suppliers, the terms of trade with suppliers, the gross and net profit margins of the business and the business strategies. A significant portion of information of that character is contained in the database information. No information of that character is alleged to have been misused by Mr Leung in this proceeding. 210 The issue is whether it was plainly made known to Mr Leung that the applicant considered the WeChat information as confidential. Evidence was given by Mr Huang of a discussion that he had with Mr Leung "in or around 2017" and which concerned the New Aim Purchasing System. This evidence was given viva voce. Mr Huang stated that he had a discussion with Mr Leung in his then capacity as the Head of Buying, which focused upon controlling access to supplier information in the Vtiger database. According to Mr Huang: He (meaning Mr Leung) raised a concern is - because in Vtiger, the previous purchasing system, all the buyer, they have - even though they have access control, they still can access order information. The order information about supplier, product and pricing. So that raised a concern if someone leave the company… Or company, they may have a chance to get the full supplier list, and also the pricing information to create a new business, or send this information to a competitor. So this will be quite - it will create quite significant damage to New Aim's business. So he raised a concern and raise the requirement if they can - if IT can develop a system to segregate that information and only allow development staff - the buying team can access the information for the job purpose. 211 Mr Leung did not give contrary evidence: he simply could not recall that discussion with Mr Huang. 212 I find that there was a discussion as stated by Mr Huang to that effect sometime in 2017 with Mr Leung. Plainly, that discussion concerned the detailed supplier data information which was maintained on the Vtiger database and which was to be transferred to the New Aim Purchasing System. It did not concern the WeChat information. The concern expressed by Mr Leung to Mr Huang was that if an employee could access the entire purchasing system information, that is the full supplier list and the pricing information, then detriment would most likely be caused to the applicant's business. The expression of that concern at that time by Mr Leung is radically different from the extent to which a competitor could damage the business of the applicant if the competitor became aware of the name of a supplier of a particular product and was given the contact details of a representative of the supplier. That more limited subset of information, in accordance with the findings that I have made, could have been ascertained by a competitor without access to the WeChat information, although the time factor in ascertaining that information is a relevant consideration. 213 Turning specifically to the WeChat information, I have found that the applicant did not ever make it known to Mr Leung that it regarded the WeChat information as confidential. The applicant did not attempt to restrict the use of the WeChat information by Mr Leung. The applicant was aware that Mr Leung maintained the WeChat information on his personal mobile telephone. The applicant permitted Mr Leung to use his personal mobile telephone for work related purposes. The applicant did not ever request Mr Leung to transfer his personal WeChat contact details to any of the more formal supplier databases that it developed and maintained over time. 214 For these reasons, I find that the applicant did not plainly make known to Mr Leung that the WeChat information by itself was regarded by New Aim as confidential.

[18]

Did New Aim genuinely believe the information to be confidential? 219 I am satisfied that the applicant genuinely considers that the database information, and more particularly the form in which it is now held in the New Aim Purchasing System, is confidential. In my view, that is established by the manner in which the New Aim Purchasing System database has been assembled, is maintained and is used by the applicant. I am also satisfied that it is only employees with a need to know who have access to the entirety of the data in that system, and this is so despite my finding that the range of employees with access is relatively large: somewhere between 40 and 80 persons. 220 The respondents submit that I should not be so satisfied because the applicant, from time to time, has inquired of various suppliers whether they supply to a competitor of it. I reject that submission as it is evidence only that the applicant operates in a competitive environment and the fact that it is prepared to seek information from suppliers which its competitors may regard as confidential is not evidence that the applicant does not regard its detailed supplier data as contained in the database information as confidential. Further, the fact that the applicant has not adduced evidence that it requires its suppliers to enter into confidentiality agreements, or to provide confidentiality undertakings, is evidence only of a failure to take steps to protect the confidentiality of the database information. 221 The respondents further submit that I should find that this proceeding "is also part of the broader pattern of conduct" by the applicant designed to cause economic harm to the respondents. The respondents point to evidence that Mr Lam caused to be lodged a number of trademark applications by the applicant in respect of trademarks owned by Broers and that he made some form of threat to Mr Leung to the effect that he would launch a legal proceeding to cause stress to Mr Leung. I do not make findings of fact as to either of these matters as I do not consider that, either contention if made out, would be of any real assistance to me as they are not materially relevant to the belief held by the applicant that the database information is confidential. 222 However, I am not so satisfied in relation to the WeChat information. For the detailed reasons that I have given, the manner of compilation of that information by Mr Leung, that the contacts were not transferred to the more detailed databases developed and maintained by the applicant over time, that the WeChat list of identifiable suppliers to New Aim is limited to 17 contacts out of 111 suppliers and 412 contacts overall, that no step was taken by the applicant to control access by Mr Leung to his personal list of contacts either during or upon termination of his employment and that it is the database information which in detail records considerably more sensitive information than the WeChat information to which the applicant restricts access, cause me to find that the applicant did not genuinely regard the WeChat information as confidential.

[19]

To what extent was the information habitually handled by Mr Leung? 223 The respondents accept as applicable to this case the statement in Faccenda Chicken at 137 that: The nature of the employment. Thus employment in a capacity where confidential material is habitually handled may impose a high obligation of confidentiality because the employee can be expected to realise its sensitive nature to a greater extent than if he were employed in a capacity with such material reaches him only occasionally or incidentally. 224 There is no doubt that Mr Leung, commencing in 2010, was an employee in habitual receipt of a large amount of confidential information that was not simply limited to the name of a contact of a supplier or a potential supplier of a product. As I have explained, once a product and potential supplier are identified, a process is then engaged in by the applicant which will only result in a supply relationship if the process is satisfactorily completed and a supply agreement on terms acceptable to the applicant is entered into. At that point the applicant commences the compilation of the database information, which is maintained and updated over time, by adding considerable detail. Thus, I have no hesitation in concluding that for the database information Mr Leung ought to have realised its sensitive nature. 225 But it does not follow in my view that he ought to have appreciated the sensitive nature of the WeChat information. The manner in which he compiled that list over many years and the fact that when he added a person as a contact, or was added by a contact, the supplier was not at that point in time an approved supplier to the applicant stands against an acceptance that Mr Leung habitually handled this information in circumstances where he ought to have realised its sensitive nature. Further, what is clear on the facts that I have found is that making an initial contact and recording the contact details is the first step in a process which may ultimately result in the placement of an order but only if the subsequent assessment of the supplier and its products, and the negotiation of the supplier terms, is satisfactory to the applicant. And the fact that the WeChat information recorded details of individuals with whom Mr Leung had or developed personal friendships and was recorded with other personal information on his personal mobile telephone leads me to find that this information was personal and not highly sensitive to New Aim.

[21]

Other Factors in this Case 227 A matter of considerable significance in this case, which Hodgson JA described as "extremely important" in Del Casale at [41], is the extent to which the WeChat information is able to be identified and "readily isolated from the employee's general know-how which the employee is entitled to use after the end of employment". Counsel for the applicant submits: The fact that Mr Leung needed to access the details from the list he maintained in his WeChat account indicates that the information is not in the nature of know-how. It was not information about his trade that he was able to recall and deploy at will. Rather, it was information that he needed to call up by reference to a record. Had he not retained the record you would not have been able to provide the information to Broers. 228 To the extent that this submission distinguishes between memory recall and the WeChat information as an aid to memory, I accept that it can be a factor but I do not find it useful in this case. The editors of Gurry on the separability question accept that if information is identifiable in a document, then it is more likely to be regarded as separate from the general know-how of an employee: [12.186]-[12.191]. But they also caution that approach observing at [12.189]: But the importance of whether a secret is or is not in documentary form should not be taken too far. On the one hand, the mere fact that an employee remembers information does not mean it cannot be regarded as a trade secret. Even putting situations of deliberate memorisation to one side, it is conceivable that there might be specific and discrete items of information, such as a recipe, which an ex-employee may be able to recall which are of such value and significance to the employer's business that they are nevertheless to be regarded as trade secrets. 229 The authority for that proposition is Printers and Finishers Ltd v Holloway [1965] 1 WLR 1 at 5, Cross J. See also Dal Pont at [5.62] - [5.63]. What is in issue in this case is a list of WeChat contacts, 412 in number, compiled by Mr Leung during his entire period of employment between 2009 and January 2021, of which 111 of the contact entries are marked "supplier" but of which only 17 are identifiable as current suppliers to the applicant as at January and March 2021. Of those 17, 5 are individuals with whom Mr Leung developed and maintained personal friendships over many years, or in one case, knew well before that person's company was selected as a supplier to New Aim. I find that for those contacts, the name or the alias was part of the accumulated knowledge of Mr Leung and which is "qualitatively distinct from confidential information or trade secrets": Dal Pont at [5.30]. As for the balance of 12 contacts, I find the accumulated knowledge that Mr Leung acquired over approximately 12 years of employment inevitably extended to the name or alias of the contacts, each of whom he initially met in person. In my view, the fact that the 17 contacts were representatives of current suppliers of products to the applicant as at January and March 2021 cannot be practicably separated from the accumulated knowledge of Mr Leung as to when, and in what circumstances, he first made contact with representative and added their details to his WeChat account. In this regard, in my view the following statement of the principle by the editors of Gurry at [12.187] is applicable to the facts that I have found: The concept of "separability" here then goes beyond mere "identifiability" (which, as we have seen, is a procedural requirement in all breach of confidence cases). Rather, we are concerned with ensuring that, as a practical matter, this information is distinct and easily distinguishable from the information that the employee is entitled to use. 230 Analysed in this way, I am satisfied by application of the approach of Harper J in GlaxoSmithKline that a person of ordinary honesty and intelligence would not conclude that the WeChat information is the property of the applicant. The WeChat information lacks the inherent quality that is necessary, in my view, to elevate it above the accumulated general knowledge and know-how, of Mr Leung. Nor can it, in my view, be practicably separated from the balance of the 111 suppliers and the 330 contacts that have nothing to do with this case. 231 There are further difficulties which lay in the path of the applicant on the separability question. The WeChat information is ephemeral. Whether a supplier has the status of a current supplier as at January or March 2021 to the applicant is distinctly fluid. On the applicant's evidence of the 192 suppliers who were current as at 2014 only 46 were left in January 2021. The application of the tag "supplier" by Mr Leung to define 111 of the WeChat contacts, establishes that 94 were at some point in time prospective or actual suppliers to New Aim, but had ceased to have that status as at early 2021. And as the respondent's counsel correctly submits, determination of whether a contact is a representative of a current supplier to the applicant requires knowledge of which are the 400 current suppliers, across a range of approximately 6000 individual product lines, in order to carve out from the entire list of WeChat contacts those which Mr Leung is prohibited from using. It is simply not practicable to do so. 232 Mr Leung did not engage in any surreptitious conduct, for example by copying the database information, before he resigned which is often a relevant factor or to consider: Dal Pont, at [8.22]. Nor did he covertly record the WeChat contacts in his mobile telephone from time to time: Weldon & Co Services Pty Ltd v Harbinson [2000] NSWSC 272 at [67] - [72], Bryson J. 233 Counsel for the applicant drew to my attention and placed considerable reliance upon the decision of Hallen J in Plus One International Pty Ltd v Ching (No3) [2020] NSWSC 1598 (Plus One), a breach of confidence case made out against former employees of a vocational training college who, prior to ceasing employment, copied and then used various business information of the plaintiff in order to assist with the establishment of a competing business. In that case, what was copied by the employees was very extensive in the form of electronic business records which recorded, inter alia, the name and contact details of clients, the WeChat identification number of clients, academic transcripts, referrals, visa information, contact details for family members and financial statements. It was held, amongst other things, that the WeChat contacts were confidential information that the former employees were not free to use. The fact that this conclusion was reached in that case does not afford real assistance to me in determining the status of the WeChat information on the facts that I have found in this case. Rather, it illustrates the somewhat self-evident proposition that in this area of the law, each case is fact specific and fact intensive.

[23]

Breach of Contract Claims 235 Logically, the applicant's breach of contract claim against Mr Leung should next be considered as it is relevant to the claim that Mr Leung improperly used his position as an employee to gain advantage for himself, or someone else or to cause detriment to the applicant contrary to s 183 of the Corporations Act. 236 It is not in dispute that Mr Leung entered into two written contracts of employment with the applicant: one is dated 13 October 2011, and the other 16 June 2020. The applicant pleads its breach of contract claim upon the 2020 contract. In closing submissions, counsel for the applicant acknowledged that pleading but contended that reliance is also placed upon the 2011 contract "for context and for the purposes of construing the 2020 contract". I reject that attempt to expand the pleaded claim. The FASOC is not framed in that way and the 2020 contract contains an entire agreement clause at 37.1 which expressly "sets out all the terms of your employment" and "supersedes and replaces all prior representations and agreements (whether oral or in writing) concerning your employment". That clause prevents the applicant from relying upon the earlier contract as an aid to construing the 2020 contract: MacDonald v Shinko Australia Pty Ltd [1999] 2 Qd R 152 at 156, Davies JA. 237 Three breaches of the 2020 contract are pleaded in the FASOC. The first is clause 20.1 which provides: Upon termination of the Agreement, the employee must deliver to New Aim all property of New Aim that is in the possession or control of the employee including, but not limited to, client lists, correspondence, documentation, diaries, papers, records, computer equipment, keys, mobile phone, laptop, uniforms and credit cards. 238 The applicant submits that Mr Leung breached this term by failing to deliver to it upon termination of his employment "the WeChat contacts" that were in his possession. That submission does not reflect the pleading at paragraph [31] of the FASOC, and counsel for the respondent is correct to point out that the applicant should not, as a matter of fairness, be permitted to rely upon a case that was not pleaded. In any event, the submission is of no merit. Information in the form of knowledge per se is not property: Smith Kline & French Laboratories (Aust) Ltd v Sec, Department of Community Services and Health [1990] 22 FCR 73 at 121-122 per Gummow J. And I have found that the WeChat information is not separable from the general knowledge and know-how of Mr Leung that he was entitled to use following the termination of his employment. 239 In closing submissions and for the first time, the applicant contends that Mr Leung also breached clause 20.1 by failing to deliver to it upon termination of his employment, not only the WeChat contacts but also "WeChat correspondence that was in Mr Leung's possession". In support of this contention, the applicant relies upon the list of documents filed by Mr Leung pursuant to the interlocutory orders made on 26 October 2021, to the effect that he retained "correspondence" following the termination of his employment, being the WeChat conversations with various persons, which he had until at least June or July 2021. Those dates reference the loss by Mr Leung of his mobile telephone whilst snowboarding. 240 It is not open to the applicant to assert that breach by Mr Leung for the simple reason that it did not plead a breach of that character in the FASOC and that contention raises a large issue, which was not at all explored in the evidence before me, as to whether the history of those conversations is or was the property of the applicant. To permit the applicant to now raise this matter is distinctly prejudicial: Banque Commerciale SA (in liquidation) v Akhil Holdings Limited (1990) 169 CLR 279. For these reasons the first contract claim fails. 241 The second pleaded claim is for breach of clauses 33.1 and 33.2 which provide: 33.1 During the course of your employment with New Aim, you may become acquainted with or obtain access to confidential information relating to the business and affairs of New Aim, its subsidiaries and their clients. 33.2 Confidential information may or may not be expressly designated as such. You will be obligated during, and also after termination of your employment to maintain the confidentiality of such information and to disclose it only when you receive prior written authorisation from the directors of New Aim. You acknowledge that any such disclosure could cause considerable loss and damage to New Aim. If you have any concerns as to whether disclosure in any circumstance would be authorised, you should ask a director of New Aim beforehand. 242 The contract contains no definition of confidential information. In submissions, counsel for the applicant contended that this obligation must be read with clause 23.1 which provides: You are required to comply with all New Aim policies, procedures and manuals implemented by New Aim. Copies of any policies, procedures and manuals will be made available to you. The policies, procedures and manuals do not vest enforceable rights in you and are for the sole benefit of New Aim only. You acknowledge and accept that it is the prerogative of New Aim to vary, change or terminate existing policies, procedures and manuals as well as devise and introduce new policies, procedures and manuals. 243 The applicant did not distinctly plead in the FASOC that Mr Leung breached clauses 33.1 and 33.2 by failing to comply with the obligation at clause 23.1. But counsel for the respondents did not take that point in his closing submissions. He submits that, as the first step, the applicant must establish that the Policy, which was first formulated in June 2020, was incorporated with the employment contract of Mr Leung which is dated 16 June 2020. As framed, that submission is not correct. The effect of clause 23.1 is to incorporate the policies of the employer into the contract by imposing a contractual obligation of obedience. Difficult issues often arise as to the effectiveness of incorporating aspirational policies so that they become enforceable terms of an agreement, especially in the employment law context: Romero v Farstad Shipping (Indian Pacific) Pty Ltd (2015) 231 FCR 403;'s [2014] FCA 177 at [14] and [34] - [63] (Farstad). There is also a logical difficulty which arises in accepting that an incorporated Policy may only be binding upon the employee: Farstad at [116]; Foggo v O'Sullivan Partners (2011) 206 IR 87; [2011] NSWSC 501 at [116], Schmidt J. I need not traverse that territory to decide these issues as it is plain that the incorporation mechanism at clause 23.1 depends upon copies of policies, procedures and manuals being "made available to you." In my view, the objective meaning of that requirement is that before a Policy is incorporated as a contractual obligation of the employee, it must be drawn to his or her attention and I have found that it was not drawn to the attention of Mr Leung. 244 Even if I am wrong in that conclusion, the definition of confidential information in the Policy, which is inclusive, does not as I have found, expressly extend to the WeChat information which is limited to the name or alias of a representative of a supplier to the applicant together with his/her WeChat contact details. Relatedly, I do not construe the inclusive nature of the definition as extending that far: broadly defined contractual confidentiality restraints are ordinarily construed as not extending beyond the equitable obligations of an employee, unless there is specificity in the information sought to be protected (and the clause is not an impermissible restraint of trade). As explained in Dal Pont at [5.35] The task derives no assistance from a contractual confidentiality covenant that does no more than prohibit a (former) employee from disclosing (confidential information), unless that phrase is defined with sufficient precision is to aid the process of identifying the specific information that may have been misused. 245 Thus, the second contract claim fails. The final contract claim pleads a breach of clause 33.3 which provides: You shall not, during or after your employment with New Aim, use any of the confidential information of New Aim and its subsidiaries for personal gain, in order to disadvantage the company or for any purpose other than for the benefit of New Aim. 246 It follows from my conclusion that the second contract claim fails, in part, because the reference to confidential information does not extend to the WeChat information, that this contract claim also fails.

[24]

Corporations Act, s 183 247 Section 183 of the Corporations Act relevantly provides: A person who obtains information because they are, or have been, a director or other officer or employee of a corporation must not improperly use the information to: (a) gain an advantage for themselves or someone else; or (b) cause detriment to the corporation. 248 Counsel for the applicant submits that this provision is not confined to the employee's equitable obligation of confidentiality. There are diverging views as to whether information within the meaning of this provision corresponds with, or is broader than, the equitable obligation which conveniently may be described as the narrow and broad views. Counsel for the respondents submits that the narrow view is the correct approach primarily by reference to Del Casale at [59]- [60], Vanguard Financial Planners Pty Ltd v Ale (2018) 354 ALR 711; [2018] NSWSC 314 at [217], Black J: and Forkserve Pty Ltd v Pacchiarotta (2000) 50 IPR 74 (Forkserve) at [28]- [29], Young J. To that list one should add the influential decision of Young J in Rosetex Co Pty Ltd v Licata (1994) 12 ACSR 779 (Rosetex) at 784 where his Honour said: The proper interpretation is to take the word "information" … as referring to that type of information which equity would restrict the director from using to his personal profit. 249 Counsel for the applicant, in arguing for the broad view, relies on Plus One at [541] - [557] and the collection of cases there referenced which focus upon the meaning of impropriety particularly by reference to R v Byrnes (1995) 183 CLR 501 at 514-515] being: [A] breach of the standards of conduct that would be expected of a person in the position of the alleged offender by reasonable persons with knowledge of the duties, powers and authority of the position and the circumstances of the case. 250 A Full Court of this Court in Futuretronics.com.au Pty Ltd v Graphix labels Pty Ltd (2009) 81 IPR 1; [2009] FCAFC 2, Tamberlin, Finn and Sundberg JJ, cited the reasoning of Young J in Rosetex and Forkserve at [44]-[45] and then observed at [46]: No error has been shown in the course his Honour took. No breach of fiduciary duty by Mr Atta in relation to the Cygnett email has been established because his duty came to an end on the cessation of his employment save as to confidential information, and as indicated at [43], Futuretronics has not established that the supplier's name was confidential. Further, equity would not regard disclosing the supplier's name as misuse of confidential information. It would be a part of Mr Atta's knowledge, skill and experience which, as a result of his previous employment, had become his own. See Printers & Finishers Ltd v Holloway [1965] 1 WLR 1 and Forkserve [2000] NSWSC 979; 50 IPR 74. 251 I consider myself bound to apply that reasoning and in accordance with my findings on the equitable breach of confidence case, the statutory claim fails. However, even if the broader view is the correct approach there must still be, objectively, an improper use of the information. On the facts that I have found, it was not improper for Mr Leung to have access to and to use the WeChat information as part of his accumulated knowledge.

Parties

Applicant/Plaintiff:

New Aim Pty ltd

Respondent/Defendant:

Leung

Legislation Cited (4)

Corporations Act 2001(Cth)

Federal Court of Australia Act 1976(Cth)

Income Tax Assessment Act 1936(Cth)

Cases Cited (37)

Smith Kline & French Laboratories (Aust) Ltd v Sec, Department of Community Services and Health [1990] 22 FCR 73 Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 295 ALR 760; [2013] NSWCA 2 Vanguard Financial Planners Pty Ltd v Ale (2018) 354 ALR 711; [2018] NSWSC 314 Weldon & Co Services Pty Ltd v Harbinson Whitehouse v Jordan [1981] 1 WLR 246 Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317 Cross on Evidence (Electronic Version, LexisNexis, current to March 2022) Dal Pont, Law of Confidentiality, 2nd LexisNexis (2020) Dean's Law of Trade Secrets and Privacy, 3rd ed, Thomson Reuters (2018) Freckelton and Selby, Expert Evidence Law, Practice and Procedure (6th ed, Thomson Reuters) Gurry On Breach Of Confidence (Oxford University Press 2nd ed (2012) Heydon on Contract Lawbook Co (2019) Heydon, The Restraint of Trade Doctrine (LexisNexis, 4th ed (2018) Ipp J, Lawyers Duties To The Court (1998) 114 LQR 63 at 92 Stowe, Preparing expert witnesses - a (continuing) search for ethical boundaries [2018] Bar News 72 at 77-78

[2008] VSC 164

[2001] SASC 185

(2009) 261 ALR 501

(1990) 169 CLR 279

(1999) 74 ALJR 209

(1987) 14 FCR 434

(2007) 73 IPR 326

(2011) 206 IR 87

(2000) 50 IPR 74

(2009) 81 IPR 1

(2008) 77 IPR 306

(2003) 13 FCR 424