Spatialinfo Pty Ltd v Telstra Corporation Ltd

Federal Court of Australia|2008-01-25|Before: Sundberg J

BACKGROUND 1 The nature of this proceeding is explained in some detail in my reasons in Spatialinfo Pty Ltd v Telstra Corporation [2006] FCA 950. 2 On 22 November 2007 the second respondent (Autodesk) filed a third list of categories of documents for discovery by the applicant (Spatialinfo). Categories 1 to 4 are as follows: 1. All documents recording, evidencing or referring to the terms and conditions (including the price or applicable fee or other financial benefit) of any proposed or actual use by any third party, or licensing or supply by Spatialinfo or its Related Corporations to any third party (whether in Australia or elsewhere) of any of the CPR Data Cleansing & Export Tools between 1999 and 2004. 2. All documents recording, evidencing or referring to the prices or fees charged by Spatialinfo (or its Related Corporations) to run or otherwise deal with the CPR Data Cleansing & Export Tools between 1999 and 2004. 3. All documents recording, evidencing or referring to the negotiation, calculation or determination of any price or applicable fee, including any licence fee, offered by Spatialinfo or its Related Corporations (whether in Australia or elsewhere) pursuant to the proposed or actual supply under 1 and 2 above. 4. All documents constituting, recording or referring to any business plans or reports, research and development, commercialization and/or marketing strategies prepared by Spatialinfo (or its Related Corporations) in relation to the proposed or actual supply of the CPR Data Cleansing & Export Tools under 1 and 2 above. 3 Spatialinfo resists discovery of the above categories of documents. It does not resist discovery of the next three categories (5, 6 and 7). It is however necessary to describe them because, amongst other things, Spatialinfo claims that the provision of the documents within these categories bears on whether it is "necessary" that it provide those that are in dispute. Cf Order 15 rule 15 of the Rules. Categories 5, 6 and 7 are as follows: 5. All documents recording, evidencing or referring to pricing models considered and/or applied by Spatialinfo or its Related Corporations (whether in Australia or elsewhere) concerning or relating to CPR Data Cleansing & Export Tools in any proposal in response to Telstra PlanIT Tender or the CPR 2 RFP. 6. All documents recording, evidencing or referring to any consideration, assessment, analysis or opinion concerning the possibility of Spatialinfo making any threats, demands or claims (whether by filing proceedings or not) against any person in relation to the alleged infringement of copyright or breach of confidential information in the CPR Data Cleansing & Export Tools (whether in Australia or elsewhere), and any decision not to pursue or notify, or to delay pursuing or notifying, any such threat, demand or claim. 7. All documents recording, evidencing or referring to any grant by Spatialinfo to any of the Related Corporations of any intellectual property rights in the CPR Data Cleansing & Export Tools (whether in Australia or elsewhere), including without limitation any licence to any of the Related Corporations to on‑supply the CPR Data Cleansing & Export Tools to third parties and the negotiation, calculation or determination of any proposed or actual price or applicable fee, including any licence fee, due to Spatialinfo. 4 The final category of documents is in dispute: 8. All documents recording, evidencing or referring to the financial position of Spatialinfo Inc and Spatial Systems Nominees Pty Ltd, including without limitation: (a) balance sheets, profit and loss statements, management reports and tax returns; (b) revenue projections, forecasts and analyses of actual and anticipated financial performance; (c) weekly, monthly and annual sales reports; (d) minutes of board meetings, reports and other documents tabled at board meetings insofar as they concern or refer to the financial position of Spatialinfo Inc and/or Spatial Systems Nominees Pty Ltd, for the financial years ending 2000, 2001, 2002, 2003 and 2004. 5 Some of the technical expressions appearing in the list are defined therein, in the Statement of Claim or elsewhere in the pleadings.

ISSUES CURRENTLY IN DISPUTE 6 The proceeding is now before me for further directions and for the hearing of a motion notice of which was filed by Autodesk on 22 November 2007. There are five issues currently in dispute. The first relates to Spatialinfo's refusal to discover documents within categories 1 to 4 and 8 of Autodesk's third list of documents. Ancillary to this first issue Autodesk seeks an order that Spatialinfo take all reasonable steps available to it to obtain from its Related Corporations and produce to Autodesk the documents falling within those categories. 7 The precise matters in dispute in relation to both the principal and ancillary features of the first issue are (a) whether discovery need be made by Spatialinfo of documents in categories 1 to 4 and 8; (b) whether it need take all reasonable steps to obtain those documents from the Related Corporations; and (c) the time with which it must do those things. Spatialinfo does not dispute its obligation to make discovery and take all reasonable steps in relation to categories 5, 6 and 7. As to the timing (whether in relation to categories 5, 6 and 7 or all categories), it contends for 31 January 2008. On the other hand Autodesk contends for 14 December 2007. The intervention of the legal vacation has rendered academic a choice between those dates. 8 The second issue concerns Autodesk's application for leave to issue subpoenas to four of Spatialinfo's related corporations seeking production of the eight categories of documents sought of Spatialinfo itself. If the first issue is decided in Autodesk's favour, the second issue will not need to be pursued. 9 The third issue relates to Autodesk's claim that Spatialinfo file a verified statement of contention summarising its case against Autodesk on the issues of (a) delivery by Autodesk of the CPR Data Cleansing & Export Tools alleged in par 36 of the Statement of Claim; (b) disclosure by Autodesk of some or all of those tools alleged in par 50 of the Statement of Claim, and (c) the loss and damage it alleges in pars 42 and 51 of the Statement of Claim. 10 In par 36 of the Statement of Claim it is alleged that on or about 17 April 2000 Autodesk delivered or made available to the first respondent (Telstra) copies of the tools. Paragraph 37 purports to state the consequences of this delivery, though it does so in a garbled fashion. What it appears to allege is that the delivery constituted a reproduction by Autodesk, without Spatialinfo's licence or authority, of the tools or substantial parts thereof, and an authorisation by Autodesk of Telstra's reproduction of the tools. No particulars are provided of the delivery. 11 In par 50 of the Statement of Claim it is alleged that at some time after 12 December 1999 Autodesk wrongfully disclosed some or all of the tools to Telstra. This is said to constitute a breach by Autodesk of its obligation of confidence owed to Spatialinfo. In the particulars the pleader refers to the allegations in pars 36 and 39. Neither of those paragraphs in fact provides particulars of the allegation of wrongful disclosure. 12 In par 42 of the Statement of Claim loss and damage is alleged to have been suffered by reason of Autodesk's infringement of copyright in the tools. Paragraph (a) of the Particulars claims damages of $81,685,400 "based on the damages calculations and methodology set out in Confidential Schedule 3" to the Statement of Claim. The particulars go on to say that Spatialinfo cannot accurately assess its loss and damage until after discovery. Paragraph 51 of the Statement of Claim alleges loss and damage suffered by reason of Autodesk's breach of its obligation of confidence. Paragraph (a) of the Particulars claims $72,791,835 "based upon the damages calculations and methodology set out in Confidential Schedule 3". In par (b) it is again said that Spatialinfo cannot accurately assess its loss and damage until after discovery. 13 In the course of argument Spatialinfo agreed to provide a statement of contention. The ambit of disagreement was narrowed to a question of timing. Autodesk contended for 14 December 2007 or the end of January 2008 and that the document be verified at whatever time Spatialinfo be ordered to file its evidence in chief. Spatialinfo submitted that it should have until 21 March 2008 to provide its notice of contention, that being its preferred date for filing its evidence in chief. 14 The fourth issue concerns Autodesk's application for leave to issue a subpoena to IMF Australia Ltd (IMF). IMF is Spatialinfo's litigation funder. The documents sought by the subpoena are

All documents containing, recording or evidencing any explanation or information given to your company about the applicant's causes of action against Autodesk as referred to in your company's website … a copy of which appears at Annexure A to this subpoena.
All documents containing, recording or evidencing any explanation or information given to your company about the applicant's damages claim in this proceeding amounting to a maximum sum of $50,000,000 as referred to in your company's website ….
All documents containing, recording or evidencing any explanation or information given to your company about the completion date for this proceeding being December 2007, as referred to on your company's website …. 15 The fifth issue relates to the date by which Spatialinfo is to file its evidence in chief. As indicated at [13], it contends for 21 March 2008. Autodesk ultimately contended for 29 January 2008.

Issue 1 16 Central to the resolution of the categories aspect of this issue is the order made by Registrar Allaway on 28 November 2007 that Spatialinfo make discovery to and allow inspection by Telstra of the categories of documents in schedule 5 to his orders. The parties submissions focussed on a table handed up by Mr Finch SC for Autodesk, a copy of which is attached to these reasons. The table has three columns. The first lists the disputed categories in Autodesk's third list of categories. These are categories 1 to 4 and 8 set out at [2] and [4]. The second column contains somewhat comparable categories that Registrar Allaway ordered Spatialinfo to discover to Telstra. The third column lists the differences between the categories in the first two columns that are relied on by Autodesk to justify orders in accordance with the categories in the first column. Spatialinfo did not dispute the contents of the document. The area of disagreement related to the significance of the differences in the third column. 17 Dr Hanak for Spatialinfo took exception to the fact that all Autodesk's categories specify documents "recording, evidencing or referring to" various things. He submitted that the words "referring to" are unnecessarily wide. Then he submitted that notwithstanding that the Registrar's categories 1 and 3 are restricted to the top 5 contracts and top 5 unsuccessful proposals, there is a "substantial overlap between the Registrar's categories and Autodesk's, so that it was not necessary to make the order again". It appears that at the hearing before the Registrar Telstra and Spatialinfo agreed that categories numbered 1 and 3 in the second column of the table were to be limited to the top 5. Autodesk was not a party to that agreement. There is no doubt that categories 1, 2 and 3 are relevant to the proceeding. In view of the paucity of particularity in the pleading, especially that relating to loss and damage, it is in my view necessary within the meaning of Order 15 rule 15 that these documents be provided. However, I accept Dr Hanak's submission that the words "referring to" are unnecessarily wide. 18 Dr Hanak in substance accepted Autodesk's category 4. I say "in substance" because, although he did not in terms concede the point, he agreed that the Telstra category 24 could be amended by deleting the words in the first two lines "in the possession, custody or power of Spatialinfo" and the words "ARC's or Spatialinfo's", so that "in substance if not entirely, [category 24] duplicates what is being sought by Autodesk". The proposed amendments to category 24 do not seem to me to bring about substantial duplication. But putting that aside, and assuming that appropriate redrafting could produce duplication or substantial duplication, I prefer to deal with the matter not by amending the order agreed between Telstra and Spatialinfo and adopted by the Registrar, but directly by approving Autodesk's category 4. 19 I accept Dr Hanak's submission that the fourth "difference" in the table relating to category 8 is in fact covered by sub‑par (b) of Telstra's category 39. The other differences are sustained. I accept Mr Finch's general submission that the fact that what Autodesk seeks may result in the discovery of some documents already covered by Spatialinfo's discovery to Telstra is not an answer to Autodesk's request for more extensive discovery. Autodesk "relies on the difference". As with Autodesk's other categories, the expression "referring to" is unnecessarily wide. 20 Accordingly I will make orders in terms of pars 1 and 2 of Autodesk's notice of motion, save for the deletion of the words "referring to" in the categories of documents. The date by which those orders are to be complied with is 7 March 2008.

Issue 2 21 In view of the orders to be made in relation to issue 1, issue 2 does not need to be dealt with.

Issues 3 and 5 22 The only issue 3 matter requiring decision relates to the timing of the notice of contention. The passage of time since the matter was argued makes even Autodesk's end of January 2008 date unrealistic. I will order that the notice be filed by 21 March 2008, the verification of its contents being provided by the evidence to be filed by 4 April 2008 (issue 5).

Issue 4 23 IMF's website referred to in each paragraph of the schedule to the proposed subpoena contains the following information about Spatialinfo's cause of action: The claim alleges that (a) Telstra disclosed certain intellectual property of Spatialinfo in circumstances which amounted to a breach of confidence. Further, it is alleged Telstra represented that it was authorised or entitled to use the intellectual property, which was misleading or deceptive; (b) Telstra infringed the copyright in Spatialinfo's data cleansing and export tools, disclosed those tools in breach of confidence and represented it was authorised to disclose the tools; (c) Telstra infringed the copyright in Spatialinfo's data repair tools, breached confidence and induced breaches of confidence; and (d) Telstra breached the terms of a GDS licence granted to it by Spatialinfo. The claim against Autodesk is that it authorised breaches of copyright by Telstra and breached confidence in relation to Spatialinfo's data cleansing and export tools. Under the heading "Estimated Claim (Max)" appears $50,000,000". Under the heading "Estimated Completion" appears "December 2007". 24 The alleged authorisation of breach of copyright and breach of confidence are respectively the claims in pars 36/37 and 50. See [10]‑[11]. 25 In his affidavit in support of Autodesk's motion, its solicitor, Michael Williams, deposes that since discovery has occurred no additional particulars have been provided by Spatialinfo in respect of its claims under par 36 (alleged delivery), par 50 (alleged disclosure) or pars 42(b) and 51 (loss and damage). On that basis he says that Autodesk now seeks an order that Spatialinfo provide a statement of contention which will explain its case based on the alleged delivery, alleged disclosure and loss and damage. Later in the affidavit Mr Williams refers to correspondence from Spatialinfo's solicitors which he says suggests that IMF is likely to have in its possession documents which explain Spatialinfo's case on liability and the quantum of damages claimed against Autodesk. Mr Williams then refers to the IMF website (as to which see [23]) and says: Given that the applicant has claimed privilege over all documents that relate to the calculation of damages in Confidential Schedule 3 … and has otherwise not provided any further particulars of its claim for damages, I believe that IMF is likely to have information which would enable Autodesk to better understand the applicant's claim for damages …. Mr Williams relies on the same arguments to found Autodesk's case for the grant of leave to issue a subpoena to IMF. 26 In his submissions explaining why Autodesk seeks the issue of the subpoena, Mr Finch said: Because we are, as I have said, somewhat at sea about what the applicant means when it says what it does about its case, we have been driven to ask … other people what they have been told by the applicant. 27 Whether leave under Order 27A of the Rules should be given to issue a subpoena involves an exercise of discretion. In McIlwain v Ramsay Food Packaging Pty Ltd (McIlwain) (2005) 221 ALR 785 at [35] Greenwood J collected the principles governing the grant of leave. 28 As indicated at [13], during the course of argument Spatialinfo consented to an order that it file a statement of contention explaining how it puts its case against Autodesk on delivery, disclosure and loss and damage. As appears from [25], Mr Williams gives as Autodesk's reason for seeking a statement of contention and the issue a subpoena to IMF a concern to ascertain how Spatialinfo puts its case as to delivery, disclosure and loss and damage. Because compliance with the orders I propose to make for discovery and for a statement of contention may well fill the lacunae of which Autodesk complains, in the exercise of my discretion I will not at this stage give leave to issue the subpoena to IMF. 29 Whether Spatialinfo's statement of contention satisfies Mr Lee's expectation that it will, "with some specificity" outline its case, remains to be seen. If it does not, Autodesk can renew its application for the issue of the subpoena. I will adjourn further consideration of par 7 of the notice of motion to a date to be fixed. 30 At a late stage in the argument Mr Wyles, for Telstra, sought an order for particulars of the calculations in Confidential Schedule 3. Because it is said to be a confidential document, I will not describe it. In response to Telstra's application Dr Hanak submitted that it would be more appropriate to order that Spatialinfo provide Telstra with a statement of contention as to loss and damage against Telstra. I think that is the more appropriate course. As with Autodesk's subpoena application, Telstra's application for particulars can be renewed if Spatialinfo's notice of contention does not live up to Mr Lee's expectation.

CONCLUSION 31 The times within which Autodesk and Spatialinfo respectively contend that various steps should be taken were measured from 30 November 2007, the date on which the motion was heard. It was not possible to make orders on that day. Autodesk sought discovery by Spatialinfo within two weeks, and Autodesk within eight weeks, of 30 November 2007. I have allowed six weeks from today's date. The other dates are 21 March for Spatialinfo's statements of contention (eight weeks) and its evidence in chief (ten weeks). Autodesk has been largely successful in securing the relief sought against Spatialinfo, and should have its costs of the motion. Otherwise the costs of the day are reserved. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg.

Counsel for the Applicant: A Hanak and L Nichols

Solicitors for the Applicant: Slater & Gordon

Counsel for the Second Respondent: SG Finch SC and JM Hennessy

Solicitors for the Second Respondent: Gilbert & Tobin

Solicitors for IMF (Australia) Limited: Tress Cox Lawyers

Date of Hearing: 30 November 2007

Date of Judgment: 25 January 2007

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