Redowood Pty Limited v Goldstein Technology Pty Limited [2004] NSWSC 317 | Case summary

6287/03 REDOWOOD PTY LIMITED v GOLDSTEIN TECHNOLOGY PTY LIMITED JUDGMENT - Ex Tempore 1 HIS HONOUR: Today is the adjourned hearing of an interlocutory process and an originating process relating to Goldstein Technology Pty Limited ("the Company"). The originating process is one filed on 15 December 2003 which sought the winding up of the Company on the ground of insolvency. The interlocutory process is one filed on 10 February 2004 which sought the appointment of a provisional liquidator, and also sought to review a decision which had been made by an administrator of the Company concerning the admission of votes at a meeting of creditors. Activities and Relationship of Companies in the Group 2 The Company is one which, as its substantial operation, acts as the holding company for certain intellectual property. The intellectual property is patents and trademarks for ergonomically designed components of computers, namely the keyboard, the mouse and certain security features. The Company does not actively trade, other than to receive royalties and licence fees from a wholly owned US subsidiary, which are derived by licensing intellectual property assets. 3 The Company has three subsidiaries in all - two Australian subsidiaries, Goldtouch Technologies (Australia) Pty Limited and Midas Mouse International Pty Limited, and the American subsidiary Goldtouch Technologies Inc. 4 On 1 July 1997 the Company entered into a trademark licence agreement with Goldtouch Technologies Inc, giving it exclusive rights in the United States, Canada and Mexico and non-exclusive rights to the rest of the world, to use the trademarks. The licence fee was only agreed for the first year and a half and was to be agreed thereafter. 5 A further trademark licence agreement, which was made on 8 January 2003, retrospectively confirmed some amendments to the agreement, fixed fees until 31 December 2003 and gave exclusive rights as from 1 January 2002 for the entire world. A patent licence agreement was also entered into on 20 January 2003 between the Company and its American subsidiary, said to be a statement of terms previously agreed to be effective from January 1999 and conferring rights to use the patents throughout the entire world. The licence fee was agreed by reference to a percentage of gross sales. 6 I mention now that the administrator of the Company has identified as a question for further investigation whether that licence agreement was an uncommercial transaction. Course of the Proceedings to 24 December 2003 7 The proceedings began, as I said earlier, on 15 December 2003, and they were made returnable before the court on 18 December 2003. On that day there was an application for adjournment because Mr Goldstein, one of the two principal directors of the Company, was not available, as he lived in North America. There was a direction for the defendant to file affidavits and the matter was stood over to Tuesday 23 December 2003. On that date it was stood over until the next day. The Heads of Agreement 8 On 24 December 2003 a heads of agreement document was executed between the parties interested in the Company. That heads of agreement document made clear that the only legally binding obligation it contained was that the proceedings would be adjourned until 30 January 2004, or whatever other date was convenient to the court, and that an application which had been made for appointment of a provisional liquidator would be withdrawn on the basis that each party was to pay its own costs of the application. The heads of agreement set out the outline of a basis on which a settlement could be reached of the dispute which had arisen between the Goldstein interests and those connected with the plaintiff in the present proceedings. Relationship of Linegar Interests to the Company 9 The plaintiff in the present proceedings, Redowood Pty Limited, is a company associated with Mr and Mrs Linegar. From 1997 to 2003 Mr Linegar, sometimes in person and sometimes through Redowood, had provided capital, loans and other financial accommodation to the Company. The financial accommodation took the form of providing a guarantee to the ANZ Bank of borrowings by that company, with that guarantee supported by securities provided by Mr Linegar and his wife. The security has changed from time to time, but now it takes the form of a mortgage over the home of Mr and Mrs Linegar. 10 There have been capital investments of in excess of $2m by Mr Linegar and Redowood Pty Limited and, as well, there are loan funds which have been advanced. The loan funds are such that, by 17 March 2004, the amount owing was a little over $4.3m. Those loans were made by Redowood Pty Limited and other interests that fall into what I might call "the Linegar camp". Mr Linegar was a director of the Company until he resigned in September 2003. 11 The settlement which was contemplated by the heads of agreement document executed on 24 December 2003, was one which involved the amounts owing to the Linegar interests being capitalised and additional shares being issued in the Company to the Linegar interests. Security Given, then Released, over Intellectual Property 12 The Company has given a fixed and floating charge to the ANZ Bank. The ANZ Bank has also received a fixed and floating charge from the two Australian subsidiaries of the Company. 13 On 5 June 2002 the Company requested the ANZ Bank to consent to the transfer of the intellectual property of the Company to the American subsidiary, and release all the intellectual property from the charge. At the time that that request was made to the bank it was represented that the bank would retain the benefit of its current security over the shares which the Company held in its American subsidiary, and that it would thus have effective security over the intellectual property. That led to ANZ releasing the property from the charge on 5 July 2002. 14 It appears, however, that no transfer of the intellectual property ever actually took place. Course of the Proceedings After 24 December 2003 15 On 24 December 2003 the court stood the matter over to 9 February 2004. On that day the court stood it over again to 16 February 2004. 16 By that time it seems as though the settlement which had been arrived at in December was unravelling. Thus it was on 10 February 2004 that a fresh interlocutory process was filed which is the interlocutory process I am now hearing, seeking the appointment of a provisional liquidator. 17 On 16 February 2004 the matter was before the court again. On that day, the application for the appointment of a provisional liquidator was stood over to 2pm on 23 February 2004 before the Corporations List Judge. When 2pm on 23 February 2004 arrived, the court was informed that the Company had, one and a half hours previously, been placed in administration. Mr Javorsky was appointed as administrator. 18 The matter was before the court again on 8 March 2004 when the application to appoint a provisional liquidator was adjourned to the Corporations List for 15 March 2004. On 15 March 2004 the application for appointment of a provisional liquidator and, in the alternative, the application for appointment of a liquidator were partly heard before me. That hearing was stood over to 17 March 2004 because there was not enough time in a Monday Corporations List to complete it. On 17 March 2004 the matter was further adjourned to today. 19 A creditors' meeting which had been called for Friday 19 March 2004 was the subject of an order made on 17 March 2004 under s 447A Corporations Act 2001 (Cth), that Pt 5.3A Corporations Act should henceforth apply to the Company as if the meeting of creditors called for Friday 19 March had been adjourned to 11.30 a.m. on Friday 23 April 2004 at the office of the administrator. Insolvency of the Company 20 While, in the period prior to 23 February 2004, the Company had been contending that it was solvent, at the hearing before me the position was quite clear, and indeed was common ground, that the Company is insolvent, and insolvent to a very large extent. 21 On 11 March 2004 the administrator had prepared a report for the purpose of the second meeting of creditors, which reported that the Company had made a loss of around $5,000 in the year ended 30 June 2002, a loss of around $500,000 in the year ended 30 June 2003 and a loss of around $167,000 in the seven months ending 31 January 2004. Its current assets as at 31 January 2004 were some $3,300, while its current liabilities were of the order of $4.25m. 22 The Company had on its balance sheet net assets at that time of some $14.7m but that included intangible assets of $4.196m, which appears to be the book value of the intellectual property I have earlier referred to, investments in subsidiary companies said to be worth $6.3m and unsecured loans, almost entirely from those companies, of $11.36m. The investments in subsidiary companies, and loans owing by subsidiaries, are worth nothing like their face value. The administrator prepared a restated balance sheet which showed an estimated deficiency of over $7m. 23 The administrator in his report said the Company may have been insolvent since last year. He suggested that a question of whether directors had any liability for insolvent trading was a matter which would require further investigation. When he said "directors" he made clear that included present and past directors, so that Mr Linegar was a potential candidate for that investigation, as well as the Goldsteins. Value and Ownership of the Intellectual Property 24 The administrator has not, at this stage, been able to form a view about the value of the intellectual property of the Company. There is widely diverging evidence about its possible value. It was valued in 1996 by KPMG at $3.8m. In a report as to affairs Mr Goldstein has put a value of $500,000 on it - it is not clear on what basis that figure was arrived at. 25 There was also some consideration of the value of the intellectual property in July and August 2002 when the accounting firm of Greenwood and Freehills prepared three memoranda of advice for the Goldsteins. Those memoranda of advice concerned the implications of transferring the intellectual property to a company located in a tax haven such as Bermuda or the Cayman Islands. Greenwood and Freehills recorded instructions that they had been given that the intellectual property relating to the keyboard had been transferred from an entity who they referred to as "GS" to an entity they referred to "GT Inc" with effect from 1 June 2001 and that that transfer was in the process, in July 2002, of being documented. 26 The memoranda also recorded that the mouse intellectual property was transferred from an entity referred to as "MIN" to "GT Inc" with effect from 1 June 2001, but that the transfer remained undocumented due to some litigation. That litigation was, it appears, a patent infringement action brought against Microsoft and LogiTech. 27 Greenwood and Freehills' memoranda expressed a difficulty in attributing a value to the intellectual property in a transfer document for two reasons. On the one hand, that document would be discoverable in the American litigation and if a low value was placed on the intellectual property, that could result in low damages being recovered from any patent breach which was established. On the other hand, if a high value was placed on the intellectual property, that could create an unattractively high liability to Australian tax. The low value which was being considered in that documentation was in the range of $750,000 to $1m. The memorandum seemed to take as a serious proposition that the group of companies was worth some US$25m. 28 There was an instruction from Mr Goldstein that there had been some discussions in respect of a sale at US$25m in May 2001, being approximately AUD$37.5m. The memorandum also contemplated the possibility of what it referred to as a "history rewrite", which appears to be contemplating the possibility that the transfer which was said to have occurred to United States entities, might be rewritten to become a transfer to a tax haven entity. 29 Those memoranda also advised that, as the transfer had taken place with effect from 1 June 2001, no royalties should be charged for sales since that date, either for the keyboard or for the mouse. 30 Investigations, both by the administrator and by Mr Linegar suggest that the intellectual property is, at least in large measure, still vested in the Company. The exception to this is for a patent which is variously referred to as the "barrier technology" or the "bypass patent", which is held by an American firm, Zagorin O'Brien and Graham, apparently, on the evidence before me, in trust for either the Company or its American subsidiary - it is not clear which. Section 440A 31 Section 440A Corporations Act provides, in subsections (2) and (3): "(2) [ Court may adjourn winding up application ] The Court is to adjourn the hearing of an application for an order to wind up a company if the company is under administration and the Court is satisfied that it is in the interests of the company's creditors for the company to continue under administration rather than be wound up. (3) [ Provisional liquidator ] The Court is not to appoint a provisional liquidator of a company if the company is under administration and the Court is satisfied that it is in the interests of the company's creditors for the company to continue under administration rather than have a provisional liquidator appointed." 32 The compulsion of the court to adjourn the hearing arises if the court is positively satisfied that it is in the interests of the creditors for the Company to continue under administration rather than be wound up. In the present case, when the Company is so clearly insolvent, it cannot continue to trade and no one suggests it should. Some re-arrangement of its affairs is needed, either through continuing the administration or winding up. The Proposed Deed of Company Arrangement 33 A proposal has been received from Mr Goldstein for a Deed of Company Arrangement. That proposal was received by the administrator on 17 March 2004. It provides as follows: "Dear Mr Javorsky Goldstein Technology Pty Limited (Administrator Appointed) I, Mark Goldstein, propose that the company enter a Deed of Company Arrangement ( Deed ), the terms of which include the following: · All assets of the company are to be sold to my nominee (the identity of the nominee will be confirmed within seven days of execution of the Deed by the administrator and is most likely to be a US company) for a total sum of $1,000,000.00 (deed fund) being $500,000 for all the IP assets and $500,000 for the remaining assets of the company including all shares of all the company's subsidiaries, goodwill and any rights of action that the company has at the date the administrator was appointed; · The deed fund is to be the only asset of the company available to pay creditors' claims; · All claims against the company are to be barred and upon payment of any creditor's entitlement under the Deed, all such claims are to be released; · My nominee is to have a period of 30 days after execution of the Deed by the administrator to pay the $1,000,000.00 to the administrator, failing which the administrator to call a meeting of creditors to vote on whether to extend the Deed for a further period of 30 days or terminate the Deed; · The deed fund is to be distributed amongst creditors by the administrator in accordance with the priorities set out in the Corporations Act, save that the claims of Mark Goldstein, Elizabeth Goldstein, Matthew Hennessy and Beramex Pty Limited are to be deferred in priority until all other creditors are paid; · Claims must have arisen on or before the day of the administration if they are to be admissible under the Deed; · After distribution of deed fund, the Deed is to terminate and control of the company will revert to the directors. Mark Goldstein" 34 On 5 April 2004 the office of Morgan Stanley in Pennsylvania sent to the administrator a letter in the following terms: "This letter is to confirm a balance of liquid funds as of the date hereof in excess of the amount of the USD equivalent of AUD$1m in the account of our client, who is an anonymous investor. Our client has represented to us that, subject to the preparation of binding contracts on acceptable terms, he will deposit the stated sum in your trust account as Administrator of Goldstein Technology Pty Limited. Our client has represented to us that he is aware that such payment would be made as part of a proposal for Deed of Company Arrangement signed by Mark Goldstein on 17 March 2004 submitted to the bankruptcy court in Australia, and that he is further aware that such payment would be made by a US entity for the purpose of purchasing assets of Goldstein Technology Pty Limited, including certain intellectual property. Our client has represented to us that, in exchange for such a payment, he would take a substantial shareholding in such a US entity and that as a condition of making such a payment, he would require that Mark Goldstein be a director of US entity to assist such entity in developing its business." Identity of the Creditors 35 The situation concerning who are the creditors of the Company is a long way from clear. The administrator admitted to vote at the first meeting of creditors Mrs Goldstein and Matthew Hennessy as creditors. Matthew Hennessy is Mrs Goldstein's son. They each made claims arising under written contracts of employment, copies of which they produced to the administrator, being contracts entered with the American subsidiary. 36 On the face of them, those contracts of employment have been guaranteed by the Company. Mr Linegar, as a director of the Company, knew nothing of the giving of such a guarantee; it appears not to have been referred to in any of the board minutes of the Company, and Ms Chew, who has had responsibility for the accounting records of the Company knew nothing about it until earlier this year. In those circumstances, the question of whether Mrs Goldstein and Mr Hennessy are creditors of the Company by virtue of that guarantee document must be regarded as open to debate. 37 As well, there were various people claiming to be creditors of the Company who were admitted to vote at the meeting. The first report to creditors of the administrator stated that those creditors were shown in the Company's books and records to be creditors. It appears, however, that the version of the books and records from which the administrator was working included a listing of accounts which had been part of some records produced by the American accountant. 38 The American accountant acted, it seems, for the American subsidiary. The accounts which he produced had some notes on them which showed that the ordinary practice of the Company was to keep the accounts of the group in the American subsidiary and that he had allocated expenditure to the Australian Company, for the purpose of preparing the accounts on which the administrator had relied. There are questions, at present unresolved, about whether those persons who voted as creditors are properly creditors of the Company or not. 39 At the first meeting of creditors, the voting was such that a resolution whereby the Company did not go into liquidation at that meeting, was one where creditors totalling of the order of $9.3m voted against the administration continuing, and people admitted to vote as creditors totalling a little less than $500,000 voted in favour of its continuance. However, Mrs Goldstein had been admitted as a creditor for $170,000, Mr Hennessy had been admitted as a creditor for some $55,000, and there were other creditors whose claim to be a creditor is at present not clear who made up that total. I should say that the whole of Mr Hennessy's claim is not one which is subject to doubt, but only part of it. 40 The outcome of this, however, is that even though the result is that a majority in number of those who had been admitted as creditors for the purpose of voting at the meeting were in favour of the administration continuing, the standing of at least some of those "creditors" is questionable. Further, they are, very much, a minority in value of the creditors who voted. When there is this question mark over the entitlement of some of the creditors to vote, the vote of the meeting of creditors receives, in my mind, less weight than it would otherwise be entitled to. Obtaining a Valuation of the Intellectual Property 41 There is still not a valuation of the intellectual property of the Company. Arrangements have now been put in hand for PKF Corporate Advisory to conduct a valuation. That valuation is one which Mr Goldstein has agreed to fund. He has paid part of the price, and will be required to keep up payments, as required, as the valuation process proceeds, as PKF have expressly reserved the right to stop work if there is any default in payment. They anticipate that the valuation will not be available for a period of some three to five weeks. Thus, even if the valuation were to be available, it would be after the date to which the second creditors' meeting has currently been deemed to be adjourned. 42 The proposal for a Deed of Company Arrangement has various features which make it one which is a fairly uncertain one, in my view. The power of Mr Goldstein to say who will be the recipient of the Company's assets only after the deed has been executed, means that it would be open to him, under this arrangement, to nominate a company which he effectively controlled as the purchaser, or to have some other company who he had introduced as the purchaser, on terms whereby he pocketed the difference between whatever that company was prepared to pay and $1m. There is no evidence that that is actually what is happening; this is just one of the intrinsic possibilities which lies within the deed which is proposed. 43 The funding for the proposed deed, it is, it seems to me, quite uncertain. The proposal was put forward on 17 March 2004. The letter of 5 April 2004 from Morgan Stanley commits to absolutely nothing so far as making available the funds is concerned. Submissions in Favour of Administration Continuing 44 Mr Dubler, for the defendant, submits that there are five factors from which the court could infer that Mr Goldstein's proposal is likely to lead to a better outcome for creditors. The first is that Mr Goldstein's proposal makes provision for a deferral of debts of the Goldstein interests, and that such a deferral would not occur in a liquidation. That can be accepted, but the weight of it is subject to the fact that some of those debts are disputed, either in whole or in part. 45 As well, Mr Dubler says that a purchaser from the administrator would be able to take the American subsidiary as a going concern. However, there is no inherent impossibility in a liquidator selling a subsidiary of a company in liquidation as a going concern and there is no evidence before me which suggests that it would not be possible for a liquidator to sell the subsidiary as a going concern in the present case. 46 Mr Dubler submits that any investor interested in acquiring the intellectual property would be likely to pay more if he had the co-operation of Mr Goldstein, and that the co-operation of Mr Goldstein may well not be present in a sale by a liquidator. It seems to me that that consideration is too speculative to be given much weight. 47 Mr Dubler also submits that Mr Goldstein is likely to offer more for the asset in return for certainty. This is a reference to the way in which the effect of implementation of the Deed of Company Arrangement is that there would be no liquidation, and having the proposal proceed would mean that he was obtaining protection from any prospect of a liquidator bringing action against him. Again this is a matter which has a fair measure of speculation in it. Also, the very idea that a court ought accord significant weight to someone buying protection from the consequences of their own possible breaches of the law, is not one which I would be prepared to accept. 48 Finally, Mr Dubler submits that there could be advantages in a purchaser being able to acquire a company from an administrator because the purchaser would be able to utilise tax losses. I am not prepared to assume that that is so without evidence on the topic. There has been no evidence whatever about the availability of tax losses to potential purchasers. Submissions in Favour of Liquidation 49 Mr Johnson, for the plaintiff, submits that there is a need for a liquidator to be appointed in the present case, so that there can be investigation of the matters that the administrator has referred to as being possible candidates for investigation. He points to the decision of Hodgson CJ in Eq in Unifor Office Systems (Australia) Pty Limited v Brewer Partnership Pty Limited (1999) 17 ACLC 642, where his Honour said that the selection by directors of the person who is to have the responsibility to investigate possible breaches of the law is against the policy of the court. Hodgson CJ in Eq recognised that that policy was not itself given weight in s 440A, but said that one basis of it was that it was considered, in the interests of creditors, that someone completely independent had this role. 50 Mr Johnson also submitted that the history of the case showed that the administration in the present case was a tactical move, which amounted to an abuse of the provisions of Pt 4.3A Corporations Act: Blacktown City Council v Macarthur Telecommunications Pty Limited [2003] NSWSC 883; (2003) 47 ACSR 391. I would not accept that the history of the proceedings set out in this judgment shows that that is the case as, at the time the administration was effected, there may have been a possibility of a Deed of Company Arrangement being put forward which would advantage creditors. 51 The administration has now been on foot since 23 February 2004. In that time the administrator has not been able to come to a firm view about what is in the interests of the creditors because, in part, he has not been able to form a view about the value of the intellectual property. As has previously been observed - Deputy Commission of Taxation v Bradley Keeling Management [2003] NSWSC 47; (2003) 44 ACSR 377 - the amount of evidence which is needed to satisfy the court that it is in the interests of the Company's creditors for the Company to continue under administration rather than be wound up, can change significantly as an administration progresses. 52 In the present case, the administration has been on foot for over five weeks, which is a long time as administrations go, and what has been achieved so far does not satisfy me that it is in the interests of the Company's creditors that it continue under administration rather than be wound up. 53 The availability to a liquidator of possible recovery rights against directors is only a theoretical advantage in winding a company up, if there is no money to pursue those claims, or indeed to pursue any investigations about whether there are such claims. There has been no enforceable promise or undertaking put forward that a liquidator would be funded by anyone in bringing such actions. However, Mr Linegar has stated that he would not be prepared to fund Mr Javorsky, if Mr Javorsky were appointed as liquidator. 54 Mr Linegar has stated that in appropriate circumstances, he would be prepared to fund an independent liquidator, but when there is no specification of what circumstances would be "appropriate", I cannot give much weight to that. I am not persuaded that any positive advantage, so far as likely returns to creditors goes, has been demonstrated to be likely to flow from a liquidation. 55 Thus, the question of whether the administration ought continue, or the Company ought be wound up, is one which I decide on the basis that I am not satisfied that it is in the interests of the Company's creditors for it to continue under administration rather than be wound up. 56 If the Company is to be wound up, the question arises of whether the present administrator should be appointed as liquidator, or whether someone else should be appointed. The plaintiff presses for the appointment of Mr Rogers, who has consented to act as liquidator. Mr Rogers provided a report on solvency, instructed by the plaintiff, at an earlier stage in these proceedings. In circumstances where it has now come to be common ground that the Company is insolvent, his having expressed the view that the Company was insolvent at an earlier stage is not something which I regard as showing that he has any sort of partiality which makes it inappropriate for him to be appointed. As Hodgson CJ in Eq said in Unifor Office Systems (Australia) Pty Limited v Brewer Partnership Pty Limited, the Court in winding up proceedings has acted on a general principle that liquidators should not be chosen by the directors or other principals of the Company. 57 Against that is the fact that Mr Javorsky has some weeks of familiarity with the affairs of the Company now, and has incurred some fees, which might be of the order of $80,000, or, I am told from the Bar table, might possibly be higher. 58 It is often undesirable to waste the sort of knowledge and experience which has been thus gained. However, in the present case, it seems to me preferable that Mr Javorsky not be appointed as liquidator. The fact that Mr Linegar will not fund him in any investigations is a matter which I take into account. It may be that Mr Linegar's opposition to Mr Javorsky's continuation in the role is not well founded and indeed whether or not it is well founded is not a matter which is before me. The fact is, though, that he has this opposition to Mr Javorsky, and will not fund him if he is liquidator. When that is combined with the policy of the Court referred to by Justice Hodgson, it is, I think, preferable that someone else be appointed as liquidator. As well, it is not as though the benefit of Mr Javorsky's work would be all lost if the Company were placed in liquidation with someone else as liquidator. 59 The winding up application has not been advertised. Under section 467(3)(b) Corporations Act 2001 the Court has power to dispense with any notices being given or other steps being taken that are required by the Act, or by the Rules. In the present case, as a result of the activities of the administrator, all the creditors are aware that the present application is being brought. Under those circumstances, it is appropriate to dispense with the giving of any notice of the winding up application. 60 I order that the Company be wound up. 61 I appoint Peter David Rogers as liquidator of the Company. These orders may be entered forthwith. **********

Redowood Pty Limited v Goldstein Technology Pty Limited

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