Zuce Tech Pty Ltd v Ebert [2024] QSC 297

EQUITY - EQUITABLE REMEDIES - INJUNCTIONS - INTERLOCUTORY INJUNCTIONS - where the applicant, a business that provides vehicle tuning services, seeks the return of property from the respondent - where the respondent was a shareholder and general manager of the applicant - where the respondent expressed discontent with the operation of the business - where to establish a new business, the respondent is alleged to have removed equipment, stock and confidential information from the applicant's premises, and have procured the resignation of the applicant's employees - whether the criteria for an interlocutory injunction for the return of the property has been satisfied

EVIDENCE - ADMISSIBILITY - EXCLUSIONS: PRIVILEGES - SELF-INCRIMINATION PRIVILEGE - where a criminal investigation was initiated against the respondent - where a search warrant was executed on the respondent's residence - where the respondent exercised his right against self-incrimination - whether the court ordering an interlocutory injunction for the return of the applicant's property infringes the respondent's right against self-incrimination

Accident Insurance Mutual Holdings Ltd v McFadden (1993) 31 NSWLR 412, cited

AECI Australia Pty Ltd v Convey [2020] QSC 207, cited

Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57; [2006] HCA 46, cited

C Plc v P [2007] EWCA Civ 493, applied

Charara v Commissioner of Police (2008) 182 A Crim R 64; [2008] NSWCA 22, applied

Environment Protection Authority v Caltex Refining Co Pty Ltd (1993) 178 CLR 477; [1993] HCA 74, applied

Hammond v Commonwealth (1982) 152 CLR 188; [1982] HCA 42, cited

Istel Ltd v Tully [1993] AC 45, cited

Lamb v Munster [1882] UKLawRpKQB 159; (1882) 10 QBD 110, cited

Lee v New South Wales Crime Commission (2013) 251 CLR 196; [2013] HCA 39, cited

Pyneboard Pty Ltd v Trade Practices Commission (1983) 152 CLR 328; [1983] HCA 9, explained

Rank Film Distributors Ltd v Video Information Centre [1982] AC 380, explained

Reid v Howard (1995) 184 CLR 1; [1995] HCA 40, explained

Saunders v United Kingdom (1996) 23 EHRR 313; [1996] ECHR 19187/91, cited

Sorby v Commonwealth (1983) 152 CLR 281; [1983] HCA 10, explained

Zuce Tech Pty Ltd v Ebert [2024] QCA 219, cited

P K O'Higgins KC, with L E Gamble, for the defendant

• [1] Since about 2018 the applicant, Zuce Tech Pty Ltd has successfully operated a business that involved supplying vehicle tuning services. Those services are provided using electronic hardware and software called Alientech which is produced by an Italian company also called Alientech. Zuce also distributed Alientech hardware and software and supplied training services for the use of Alientech.[1]
• [2] Mr Glen Ebert, the respondent, was Zuce's General Manager and held 20 per cent of the shares in Zuce. In about June 2022 Mr Ebert changed his status from an employee to a contractor, but his role as Zuce's General Manager continued.
• [3] Mr Glen Hadden was and is the other shareholder and the sole director of Zuce. Mr Hadden held 80 per cent of the shares in Zuce.
• [4] In February 2024, Mr Hadden was seriously injured in a major accident. He was in a coma for two weeks and remained in hospital for a further 12 weeks. During that period, Mr Ebert continued to operate the Zuce business.[2]
• [5] From about May 2024, Mr Ebert expressed discontent about the operation of the business and its structure. He sought greater control and also complained that Mr Hadden had been taking money out of the business. Mr Ebert circulated proposals for Mr Ebert to either take control of Zuce, or that he be allocated additional shares in Zuce. None of the proposals were acceptable to Mr Hadden.[3]
• [6] On 6 August 2024 Mr Hadden received a telephone call from his son, Ryan Hadden, who worked at Zuce as an apprentice mechanic. Ryan Hadden said words to the effect of: "You need to get down here, shit is going down with Eric [Mr Ebert]" and "Eric and all the staff are packing up all the equipment and their stuff and leaving".[4] That prompted Mr Hadden (senior) to send a text message to Mr Ebert demanding the return of Zuce's equipment and stock. In reply, Mr Ebert said:

Nope, you owe me close to 280k, all the stock Alientech has credited ZUCE, it's already in the system and has been invoiced to myself as the legal distributor of Alientech in Australia by Alientech.

As for equipment all equipment that was taken has been invoiced to myself and is open in the system and can be offset against the owed amounts from yourself to me. Also nothing has been stolen...[5] [emphasis added]

• [7] The emphasised comment "invoiced to myself" appears to refer to a MYOB recipient created invoice dated 5 August 2024 on a Zuce letterhead addressed to Ebert Trust for $282,089.85. The description in the invoice starts with these words:

MONIES OWED FOR OVERDRAWINGS BY GLEN HADDEN AND UNACCOUNTED OVER THE LAST 6 YEARS FOR PERSONAL GLEN HADDEN EXPENSES RUN THROUGH THE BUSINESS.

• [8] The items commencing with 'Dave Prado Rego' seem to list either an asset or an expense. The list above includes only the first five items. The list contains numerous items and continues for 7 pages and then there is a list of equipment and a list of stock. It is difficult to know what to make of these documents but, given the contents of the text the stock and/or equipment is presumably taken by Mr Ebert (or his trust) in return for Mr Hadden's alleged 'overdrawings'. There is an element of self-help in these communications.
• [9] In any event, Zuce alleges that Mr Ebert:

(a) removed all of Zuce's equipment and stock from its premises, including mobile phones and computers;

(b) copied and subsequently deleted its confidential information from the mobile phones and computers and then returned them to Zuce's premises;

(c) procured the resignation of Zuce's employees;[6] and

(d) commenced operating a new business trading under the name Alientech Tools;

(e) arranged for Alientech's website to be updated to replace reference to Zuce with reference to Alientech Tools;

(f) took steps to secure Zuce's clients for Mr Ebert's new business, Alientech Tools.[7]

• [10] Zuce alleges that, when Mr Hadden attended Zuce's premises on 6 August 2024, he discovered the removal of Zuce's confidential information, mobile phones, computers, equipment and other property. The following day Mr Ebert's wife returned the mobile phones and computers to Zuce, and they were subsequently found to have had their data wiped and to have been returned to factory settings. Several days thereafter, Mr Hadden's wife made a complaint to the Queensland Police Service. Shortly after that complaint was made, Zuce's solicitors wrote to Mr Ebert demanding the return of the property and threatening proceedings if that demand was not met.
• [11] There is a limited factual contest about those facts. Mostly that is because Mr Ebert claims privilege against self-incrimination - an issue discussed below. That means that Mr Ebert has not filed material that descends into any detailed response to Zuce's allegations. But there is, at least, some contest about what electronic material remained accessible to the management and staff of Zuce.

• [12] On 6 September 2024 Zuce commenced these proceedings by originating application. Zuce sought an interlocutory injunction requiring the return of the equipment and stock as well as the delivery up, or deletion of certain confidential information.
• [13] On 11 September 2024 Queensland Police obtained a warrant to search Mr Ebert's home. The search warrant alleged an offence that, between 4 August 2024 and 7 August 2024, Mr Ebert, being the servant of Zuce, stole tools, equipment and stock that was the property of Zuce. The search was undertaken on 11 September 2024. Photographs were taken.
• [14] On 23 September 2024 Wilson J granted a stay of the civil proceedings for six months because of the likely parallel criminal proceedings and the risks that the civil proceedings posed to the principle that a person charged with a crime cannot be compelled to assist the prosecution, as well as to Mr Ebert's privilege against self-incrimination.
• [15] On 8 November 2024 the Court of Appeal allowed Zuce's appeal against the stay of the civil proceedings.[8] The application for the stay was dismissed.
• [16] During the course of their decision the Court of Appeal noted an argument by Mr Ebert that no interlocutory injunction could be granted because such an order would infringe Mr Ebert's privilege against self-incrimination. After noting that the argument had not been argued before the primary judge, and had not been addressed in any rigorous way in argument before the Court of Appeal, the Court said:

We do not consider the argument is a sufficient justification for a stay of the interlocutory application in the present case. Indeed, we think that the better course is for any argument about the possible operation of the privilege against self-incrimination to be dealt with by the judge of the trial division who considers the merits of the appellant's interlocutory injunction application and the nature of any orders which might properly be made in response.[9]

• [17] The Court of Appeal gave this court something of a headstart by stating:

Whether the privilege against self-incrimination operates in the way suggested by the respondent, will require careful consideration, including by addressing:

(a) Whether, as suggested in Cross on Evidence, approved in Charara v Commissioner of Police, the rule prevents oral and documentary disclosures only and does not operate to prevent disclosure of real evidence by the person asserting the privilege.

(b) Whether, having regard to the legal elements of the presently posited basis for self-incrimination, namely the offence of stealing, interim production of equipment and stock pursuant to a court order would tend to incriminate in the sense protected by the privilege, namely that such production may create a "real and appreciable risk" of prosecution; or may create a "reasonable ground to apprehend danger of prosecution": see the discussion of the applicable test in Cross on Evidence.[10]

• [18] Before giving that issue careful consideration, it is necessary to put the argument in its context.

• [19] In Australian Broadcasting Corporation v O'Neill, the High Court confirmed that on an application for an interlocutory injunction it is necessary to make two enquiries:

(a) whether the applicant has shown that it has a prima facie case, in the sense that there is a serious question to be tried; and

(b) whether the balance of convenience favours the granting of the interlocutory relief sought.[11]

• [20] Counsel for Zuce explained the application of those principles:

[49] The threshold of showing a prima facie case is not a particularly demanding one. As Gummow and Hayne JJ explained in O'Neill (at [65]), a prima facie case involves the need for an applicant to show no more than "a sufficient likelihood of success to justify...the preservation of the status quo". It is not necessary to show that the applicant will, more probably than not, succeed at trial.

[50] The consideration of the balance of convenience involves the need to weigh the competing prejudice to the parties and, ultimately, to adopt the course which "...appears to carry the lowest risk of injustice if it should turn out to have been 'wrong'".[12]

[51] The two enquiries do not operate separately or in isolation from each other. As Bond J (as he then was) observed in AECI Australia Pty Ltd v Convey[13] (at [16])

The two inquiries are related and not independent of each other, so that the weight of considerations in regard to one may well affect the other.

[52] So, it may be appropriate to grant an injunction where there is an apparently strong prima facie case but the balance of convenience is fairly even and vice versa.[14]

• [21] Whether the relief is prohibitory or mandatory, the court should take whatever course appears to carry the lowest risk of injustice if it should turn out be wrong.[15]

• [22] The requirement of a prima facie case is satisfied. On any view there is a prospect, even a likelihood that Zuce will establish that it has a right to possession of the stock and equipment.[16] Similarly, Zuce has a prima facie case for return of its confidential information.[17]
• [23] Zuce argued that it has a strong prima facie case. I accept that submission also. The circumstances raise the likelihood that the court that ultimately hears the case will decide that Mr Ebert embarked on a plan to acquire Zuce's whole business in one fell swoop. The evidence thus far establishes acquisition, or attempted acquisition, of Zuce's stock and equipment, its computers, its confidential information, its employees, its website presence, and its customers. All of those elements appear to have been diverted to Mr Ebert's new business.
• [24] Of course, from this distance it is not easy to assess whether a case is strong, or contested, or weak, or at any other point on a scale of strength. But, the fact is that the factual allegations made by Zuce are largely not contested. There are reasons for that lack of contest, but the assessment on the facts remains.
• [25] The assertion of the privilege does not stand as a defence to a civil claim, and cannot be relied on to justify a failure to defend an application for summary judgment, and cannot be used to prevent an opponent from taking proceedings to enforce its rights.[18] Logically, then, here Zuce's case can be assessed as strong, not least because of the absence of contrary evidence by reason of the claim of privilege.

• [26] Mr Ebert's counsel raised three arguments:

(a) first, any order for delivery up of 'equipment' or 'stock' (as defined) (paragraph 3(a)(i)) would impermissibly override the respondent's privilege against self-incrimination because it could run the risk of compelling self-incriminatory disclosures by the respondent;

(b) secondly, the Court ought to not be satisfied that the information said to be confidential in paragraph 4(b) has been identified with specificity, that the information identified by the applicant as the 'confidential information' is in fact confidential or, that the information is the subject of any actual or threatened misuse by the respondent;

(c) thirdly, the balance of convenience does not favour the granting of an injunction because:

(i) the respondent would suffer prejudice if orders were made for delivery up in circumstances where the respondent has not put on responsive evidence related to the equipment and stock (because he maintains his privilege against self-incrimination);

(ii) there is no utility to making the orders sought - the applicant is no longer the authorised distributor for Alientech and Alientech do not wish to continue any reseller relationship with the applicant. Restraining the respondent from using the ALIEN_ID data would prevent two businesses from operating;

(iii) it is not the case that the applicant cannot continue its motor vehicle tuning services. The applicant has a KESS3 Master device and has an ALIEN_ID, which is associated with a KESS3 Master device;

(iv) any loss using the alleged Confidential Information to compete against it with the applicant's customers is capable of being readily quantified and an account of profits made from them. The respondent has assets to meet an award of damages.

• [27] As can be seen, the first argument, and one of the four parts of the third argument, raise the issue of self-incrimination. Essentially, Mr Ebert says that any order the court might make for delivery up of the stock and equipment would offend his privilege against self-incrimination. The issue is important because, when considered as part of the balance of convenience, the prospect that Mr Ebert's privilege from self-incrimination might be destroyed would be a weighty factor, if not a decisive factor, in assessing the balance of convenience.

• [28] The presumption of innocence, the privilege against self-incrimination, and the right to silence are important elements of the "accusatorial system of justice" which generally prevails in the common law world.[19] The privilege against self- incrimination reflects the long-standing antipathy of the common law to compulsory interrogations about criminal conduct.[20] That antipathy is partly the result of "a persistent memory in the common law of hatred of the Star Chamber and its works".[21] However, relying on modern research, McHugh J has described that theory as the basis for the privilege as "dead wrong".[22] Whatever the origins, Blackstone said: "For the common law, nemo tenebatur prodere seipsum [no man should be obliged to give himself away]; and his fault was not to be wrung out of himself, but rather to be discovered by other means, and other men".[23]
• [29] Counsel for Mr Ebert emphasises the fundamental nature of the privilege:

[17] In Lee v New South Wales Crime Commission, Kiefel J (as her Honour then was) observed that the privilege against self-incrimination shares the same historical source as the 'fundamental principle' of the criminal law that requires the prosecution to discharge the onus and the companion rule that an accused cannot be required to testify to the commission of the offence, and is a 'further expression of the maxim upon which the fundamental principle is based'. That is, the privilege against self-incrimination supports the 'fundamental principle' and the system of criminal justice. It has several features which set it apart from the fundamental principle including that it applies in all proceedings, criminal or civil and, although supporting the fundamental principle, it is, itself, a basic and substantive common law right deeply ingrained in the common law. It also affords protection against the risk of incrimination by both direct evidence and indirect or derivative evidence.[24] [footnotes omitted]

• [30] The fundamental nature of the privilege must be accepted.[25] The real question is how far the fundamental principle reaches. Determining the boundaries of the privilege necessarily involves three exercises. One is to look at authoritative statements of the principle to see if they provide a guide to the demarcation of the privilege. The second is to look at the purposes or the rationales of the privilege. And the third exercise involves an examination of any analogous cases.

• [31] The principle has been considered in a number of decisions of the High Court. In Sorby v Commonwealth[26] Gibbs CJ said:

It has been a firmly established rule of the common law, since the seventeenth century, that no person can be compelled to incriminate himself. A person may refuse to answer any question, or to produce any document or thing, if to do so "may tend to bring him into the peril and possibility of being convicted as a criminal"[27] [emphasis added]

• [32] That first statement of the self-incrimination privilege focuses on two things. The first is the act of compulsion - that is the conduct of the state in requiring the citizen to answer a question or to produce a document or thing. The second focus is a risk to the citizen posed by the answer to the question or the production of the document, in that those answers, or the content of the document or thing, would have a tendency to expose the citizen to conviction for a crime, or a civil penalty.
• [33] Here, counsel for Mr Ebert emphasizes the words "or to produce any document or thing", and the last word in particular.
• [34] But that was not the only statement made by Gibbs CJ on the nature of the privilege in Sorby. A second, more detailed statement appears later in the Chief Justice's reasons:

In the absence of binding authority the matter must be approached from the standpoint of principle. If a witness is compelled to answer questions which may show that he has committed a crime with which he may be charged, his answers may place him in real and appreciable danger of conviction, notwithstanding that the answers themselves may not be given in evidence. The traditional objection that exists to allowing the executive to compel a man to convict himself out of his own mouth applies even when the words of the witness may not be used as an admission. It is a cardinal principle of our system of justice that the Crown must prove the guilt of an accused person, and the protection which that principle affords to the liberty of the individual will be weakened if power exists to compel a suspected person to confess his guilt. Moreover the existence of such a power tends to lead to abuse and to 'the concomitant moral deterioration in methods of obtaining evidence and in the general administration of justice'... It is true that in some cases the legislature may consider that it can only achieve the intended purpose of the statute by limiting or abrogating the privilege against self-incrimination, but, as I have said, if the legislature intends to render the privilege unavailable it must manifest clearly its intention to do so.[28] [emphasis added]

• [35] In Sorby Mason, Wilson and Dawson JJ agreed with Gibbs CJ on the privilege. Murphy J took a broad, human rights approach which linked the privilege to the supply of information:

The privilege against self-incrimination is part of the common law of human rights. Unless excluded, it attaches to every statutory power (judicial or otherwise) to require persons to supply information (Pyneboard Pty. Ltd. v. Trade Practices Commission). Subject to any constitutional constraint, the privilege may be excluded or qualified by statute. Because the privilege is such an important human right, an intent to exclude or qualify the privilege will not be imputed to a legislature unless the intent is conveyed in unmistakable language.[29] [emphasis added and footnotes omitted]

• [36] Brennan J considered the privilege to have a narrow operation: "In principle, the privilege can have no operation except as a qualification upon a testimonial obligation". His Honour carefully considered the historical background to the privilege, the constitutional recognition of the privilege in the United States, and noted the rationale for the privilege in the extract from Blackstone's Commentaries noted above. Brennan J recorded the reach of the privilege:

The judges extended the privilege to protect not only the accused at a criminal trial but also persons bound to give discovery and persons bound to testify as witnesses in curial proceedings. The privilege against self-incrimination was extended to witnesses at an early stage by the courts of common law. Wigmore (par. 2250, at p. 290) traces back to Reading's Trial in 1679 the recognition that the privilege against self-incrimination protects a witness who is not a party. And Isaacs J., in R. v. Associated Northern Collieries, showed that the privilege has long qualified the equitable obligation of a party to give discovery whether in proceedings to recover a penalty or in other civil proceedings.[30] [emphasis added, footnotes omitted]

• [37] In this case counsel for Mr Ebert relies on what I have described as the first statement of the self-incrimination privilege in the judgment of Gibbs CJ in Sorby. But, as can be seen, there is a second, differently phrased statement of the privilege by Gibbs CJ. That second statement is more detailed and does not mention the concept of 'document or thing'. Mason, Wilson and Dawson JJ agreed with Gibbs CJ and so must be taken to have been comfortable with both expressions of the principle. Murphy and Brennan JJ took a more confined view of the privilege. In any event, Sorby involved a Royal Commissioner's right to require answers to questions. The case did not involve 'documents or things'.
• [38] Of course, the fact that Sorby involved a Royal Commissioner's right to require answers to questions means that the ratio decidendi in Sorby was confined to that issue. It can hardly be said that this court is bound by the decision in Sorby.[31]
• [39] On the same day that Sorby was decided, a slightly differently constituted High Court delivered judgment in Pyneboard Pty Ltd v Trade Practices Commission.[32] Pyneboard turned on whether the privilege against exposure to civil penalties was available to the recipient of a notice to answer questions under s 155 of the Trade Practices Act 1974 (Cth).[33] In Pyneboard none of the members of the court defined the privilege by reference to 'a document or thing'. Mason ACJ, Wilson and Dawson JJ referred to the privilege in this way:

It is well settled that "a party cannot be compelled to discover that which, if answered, would tend to subject him to any punishment, penalty, forfeiture, or ecclesiastical censure" to use the words of Bowen L.J. in Redfern v. Redfern. See also... Indeed, in a civil action brought merely to establish a forfeiture or enforce a penalty the rule is that neither discovery nor interrogatories will be allowed...[34] [emphasis added and footnotes deleted]

• [40] Murphy J explained the privilege in this way:

The privilege against compulsory self-incrimination is part of the common law of human rights. It is based on the desire to protect personal freedom and human dignity. These social values justify the impediment the privilege presents to judicial or other investigation. It protects the innocent as well as the guilty from the indignity and invasion of privacy which occurs in compulsory self-incrimination; it is society's acceptance of the inviolability of the human personality. In the widest sense it prohibits compulsory admission of criminality, that is, infamy, even where there is no prospect of punishment, because, for example, of a pardon, of the expiration of the time limited for prosecution. In a narrow sense, it is privilege against exposure to jeopardy of criminal prosecution, and is available only where there is a real danger of prosecution and conviction.[35] [emphasis added]

• [41] Brennan J spoke in terms of the privilege applying to "the obligations of a party or of a witness to answer questions and to produce documents in judicial proceedings".
• [42] That odd contrast between Sorby and Pyneboard demonstrates that the first statement of the privilege in the judgment of Gibbs CJ in Sorby cannot be regarded as defining the borders of the privilege. In fact, Gibbs CJ's use of the language "any document or thing" seems unconnected to the ratio of the case and is perhaps derived from the fact that the case involved a Royal Commissioner who had power to take into his possession things, including documents, seized under a search warrant.[36]
• [43] In Hammond v Commonwealth[37] Brennan J observed that the privilege is deep-rooted in our law and history so that the Crown may not subject an accused person to compulsory process to obtain his answers upon the issue of his guilt of an offence with which he has been charged.
• [44] Twelve years later the High Court considered the privilege against self-incrimination in Reid v Howard.[38] In that case Deane J quoted, with approval, a passage from the judgment of Lord Wilberforce pointed out in Rank Film Distributors Ltd v Video Information Centre.[39] That passage, in turn, quoted and approved the second statement of the privilege in the judgment of Gibbs CJ quoted above.[40]
• [45] In Reid v Howard, Toohey, Gaudron, McHugh and Gummow JJ adopted the first statement of the privilege from the judgment of Gibbs CJ in Sorby:

It [the privilege] operates so that a person cannot be compelled 'to answer any question, or to produce any document or thing, if to do so 'may tend to bring him into the peril and possibility of being convicted as a criminal'.[41]

• [46] Certainly, their Honours have picked up and approved the first statement of Gibbs CJ in Sorby but the reach of the privilege was not an issue, and the court did not consider the meaning or scope of the words, 'any document or thing'. Instead, the plurality decided that the privilege was not subject to an exception for fiduciary relationships and that there was no power to modify or abrogate the privilege in favour of some different protection by judicial decision.[42]
• [47] In Lee v New South Wales Crime Commission[43] French CJ chose this quote from the judgment of Gibbs CJ in Sorby:

It is a cardinal principle of our system of justice that the Crown must prove the guilt of an accused person, and the protection which that principle affords to the liberty of the individual will be weakened if power exists to compel a suspected person to confess his guilt.[44] [emphasis added]

• [48] In the United Kingdom the privilege has been framed in similar terms to the first statement of Gibbs CJ. In Rank Film Distributors Ltd v Video Information Centre, for example, the House of Lords used similar language:

...in any legal proceedings a person, whether a party to the proceedings or not, cannot be compelled to answer any question or produce any document or thing if to do so would tend to expose him to proceedings for an offence.[45] [emphasis added]

• [49] And so, both the first and second statements of the privilege in the judgment of Gibbs CJ in Sorby have been accepted in a number of subsequent authoritative judgments. However, the judgments in Sorby, and in the subsequent decisions of the High Court, have not directly considered what is comprehended by the phrase "any document or thing".
• [50] Certainly, legislation uses the phrase. Section 10(1) of the Evidence Act 1977 (Qld) provides that nothing in the Act will render any person compellable to answer any question tending to incriminate the person. However, where a person charged chooses to give evidence, that requirement to answer questions is governed by s 15 of the Evidence Act 1977 (Qld). Section 15(1) provides for the lifting of the privilege in these terms:

Where in a criminal proceeding a person charged gives evidence, the person shall not be entitled to refuse to answer a question or produce a document or thing on the ground that to do so would tend to prove the commission by the person of the offence with which the person is there charged. [emphasis added]

• [51] The oddity here is that the statutory preservation of the common law privilege is directed to "any question" but the exclusion of the privilege when the accused chooses to give evidence means that the accused a wider right to refuse to answer a question, or to refuse to produce a document or thing, on the grounds that doing so might tend to incriminate.
• [52] It is worth looking at some other authoritative statements of the privilege. Cross on Evidence defines the privilege in this way:

No one is bound to answer any question or produce any document if the answer or the document would have a tendency to expose that person to the imposition of a civil penalty or to conviction for a crime.[46]

• [53] Cross cites a number of authorities for that statement of the rule.[47] The case authority for that proposition is a decision of the NSW Court of Appeal in Accident Insurance Mutual Holdings Ltd v McFadden.[48] There Kirby P, relying on Sorby, said that the principle is rooted deep in the resistance of our system of law to obliging a person to convict himself or herself by that person's own testimony.
• [54] In the text Zuckerman on Australian Civil Procedure the authors describe the privilege in this way:

... It provides immunity from being compelled to provide evidence or information of a self-incriminating potential. A person is not bound to answer any question or produce any document if to do so would tend to expose that person to proceedings for a criminal offence or exposure to a civil penalty.[49] [emphasis added]

• [55] Here, again, the focus is on evidence or information. There is no reliance on the concept of a 'document or thing'.
• [56] That survey of the privilege shows that there are authoritative statements based on the first quote from Gibbs CJ in Sorby that enable a person entitled to the benefit of the privilege to refuse to answer questions and to refuse to produce any 'document or thing'. But there are also other authoritative statements that do not refer to the concept of a 'document or thing' but instead define the privilege as excluding evidence or information or documents. Importantly, in none of the cases discussed thus far, did the courts directly define or consider the boundaries of the privilege.
• [57] And no case to this point considers the breadth of what is contemplated by the expression 'document or thing'. The word 'thing', of course, has an almost unlimited scope. In so far as Gibbs CJ stated that a person may refuse to answer any question or refuse to produce any 'document or thing', it is not clear what was contemplated. Possibly His Honour had in mind tape recordings or testimony or other records that have the effect of convicting the person out of their own mouth. Possibly wider 'things' were contemplated. In any event, the breadth of the expression was not relevant because in Sorby the issue concerned compelling answers to questions put by a Royal Commission.
• [58] In my view, the authoritative statements of the privilege provide limited guidance on where the boundaries of the privilege should be drawn.

• [59] In Australia the traditional objection that exists is in allowing the executive to compel a person to convict themselves out of that person's own mouth.[50] In both Sorby and Reid reliance was placed on Lamb v Munster.[51] There, Stephen J said:

The extent of the privilege is I think this: the man may say, "If you are going to bring a criminal charge, or if I have reason to think a criminal charge is going to be brought against me, I will hold my tongue. Prove what you can, but I am protected from furnishing evidence against myself out of my own mouth."[52]

• [60] In the United States, Murphy J listed seven rationales:

The privilege against self-incrimination 'registers an important advance in the development of our liberty -- one of the great landmarks in man's struggle to make himself civilized. It reflects many of our fundamental values and most noble aspirations: our unwillingness to subject those suspected of crime to the cruel trilemma of self-accusation, perjury or contempt; our preference for an accusatorial, rather than an inquisitorial, system of criminal justice; our fear that self-incriminating statements will be elicited by inhumane treatment and abuses; our sense of fair play which dictates "a fair state-individual balance by requiring the government to leave the individual alone until good cause is shown for disturbing him and requiring the government in its contest with the individual to shoulder the entire load'; our respect for the inviolability of the human personality and of the right of each individual "to a private enclave where he may lead a private life'; our distrust of self-deprecatory statements; and our realization that the privilege, while sometimes "a shelter to the guilty', is often 'a protection to the innocent'.[53]

• [61] In the United Kingdom text writers have said that the uncertainty as to the rationale of the privilege bedevils its coherent application.[54] However, two rationales have been proposed:

(a) the risk of false confessions in the absence of the privilege; and

(b) the privilege is a shield against the indignity and invasion of privacy which occurs in compulsory self-incrimination.[55]

• [62] In Istel Ltd v Tully Lord Templeman considered that the privilege could only be justified on two grounds: "first that it discourages the ill-treatment of a suspect and secondly that it discourages the production of dubious confessions."[56]
• [63] Professor Redmayne, despite describing the privilege as one of the more puzzling rules of criminal procedure, concluded that the privilege preserves personal integrity and allows a person to distance themselves from the state when the state is at its most powerful.[57]
• [64] All of those rationales are designed to ensure that citizens are not required to answer questions or to provide information.[58] Thus, in Rank Film Distributors Ltd v Video Information Centre[59] the claimants sought:

(a) a search order authorising them to remove illicit copies of films from the defendants' premises;

(b) an order directing the defendants to supply information concerning the infringements of the claimants' rights; and

(c) an order that the defendants to disclose and produce documents.

• [65] The House of Lords held that the privilege provided no impediment to the recovery of the illicit films - that is, order (a) above. However, the House of Lords also held that the defendants were entitled to immunity from providing incriminating information and from handing over documents concerning their illicit trade - that is, orders (b) and (c) above.[60]
• [66] Importantly for present purposes, if the objective of the privilege is to ensure that citizens are not compelled to convict themselves out of their own mouth, that objective is achieved by permitting the citizen to refuse to answer questions and to refuse to provide information.

• [67] In Charara v Commissioner of Police[61] the facts were that, without Mr Charara's consent, a police officer removed two hairs from Mr Charara's head. The officer relied on s 62 of the Crimes (Forensic Procedures) Act 2000 (NSW). The court held that the taking of the hair was authorised by the Act. Mr Charara also claimed that the officer's actions were contrary to his privilege against self-incrimination. Campbell JA (with whom Giles and McColl JJA agreed) rejected that argument: "I do not accept that this is a field where the privilege against self-incrimination has any role to play. The scope of that privilege is stated in Cross on Evidence."
• [68] The passage relied on from Cross on Evidence is as follows:

The rule [against self-incrimination] prevents oral and documentary disclosures only. One may, therefore, be required to provide a finger-print or show one's face for identification or furnish a sample of breath or hair for analysis notwithstanding that compliance with the requirement may mean exposure to civil penalty or conviction. This is subject to the judge's power to exclude the evidence at trial where such requirement is unlawful or unfair. Similarly, the privilege cannot be invoked where there is power under an enactment to inspect premises.[62]

• [69] Campbell JA said that: "Taking of the hair sample is precisely analogous to taking a finger print, or taking a sample of breath for analysis."[63]
• [70] Plainly, the executive's power to take samples, such as samples of hair or breath are governed by legislation. But the point being made by Campbell JA, relying on Cross on Evidence, was that even apart from that legislation, the privilege against self-incrimination does not extend to what might be described as real evidence. That is because, as I have explained, neither the authoritative statements on the principle, nor the rationales for the privilege, require that it extend that far.
• [71] The view taken by Campbell JA in Charara v Commissioner of Police, and the view expressed in Cross on Evidence, has support from the High Court. In Environment Protection Authority v Caltex Refining Co Pty Ltd Mason CJ and Toohey J explained that it is one thing to protect a person from testifying to guilt; it is quite another thing to protect a person from the production of documents already in existence which constitute evidence of guilt, especially documents which are in the nature of real evidence.[64] Similarly, in the same case McHugh J[65] referred to, with evident approval, the following extract from Lord Templeman's judgment in AT & T Istel Ltd v Tully:

It is difficult to see any reason why in civil proceedings the privilege against self-incrimination should be exercisable so as to enable a litigant to refuse relevant and even vital documents which are in his possession or power and which speak for themselves.[66]

• [72] Deane, Dawson and Gaudron JJ took the view that the privilege has a limited application for documents that are more in the nature of real evidence, and speak for themselves, in contrast to evidence of a testimonial kind.[67]
• [73] The opinion of Campbell JA in Charara v Commissioner of Police is also consistent with the European Court of Human Rights as explained by the majority in Saunders v United Kingdom:

The right not to incriminate oneself is primarily concerned, however, with respecting the will of an accused person to remain silent. As commonly understood in the legal systems of the Contracting Parties to the Convention and elsewhere, it does not extend to the use in criminal proceedings of material which may be obtained from the accused through the use of compulsory powers but which has an existence independent of the will of the suspect such as, inter alia, documents acquired pursuant to a warrant, breath, blood and urine samples and bodily tissue for the purpose of DNA testing.[68]

• [74] These issues were further considered by the English Court of Appeal in C Plc v P.[69] In that case a search order was made against the defendant to obtain materials concerned with breaches of copyright. During the execution of the order a computer was seized and handed over to an expert for examination. The expert found child pornography material on the computer. He applied to court for directions whether he was free to notify the police of the discovery since possession of such material could amount to serious criminal offence. The defendant objected on grounds of self-incrimination.[70]
• [75] The matter came before Evans-Lombe J who made two rulings.[71] First, his Honour held that the defendant had not lost his right to assert the privilege by reason only of allowing the computer to be taken into the custody of the supervising solicitor in the execution of a search order. The defendant was therefore still able to object to handing over the material to the police. Second, his Honour held that although there was House of Lords authority that the privilege applied to documentary disclosure, the privilege was overridden in this particular case since it was outweighed by the need to protect the human rights of potential child victims.
• [76] The defendant appealed. However, by the time of the appeal, the police had executed a search warrant at the premises of the expert who was keeping the computer. As a result, the appeal became academic. The court nevertheless agreed to hear the appeal as a matter of principle.[72]
• [77] In the Court of Appeal Longmore LJ explained that:

(a) at common law all relevant evidence is admissible, no matter how it was obtained, subject to the court's discretion to exclude such evidence if it thought that its admission would render the process unfair;[73]

(b) in short, there is a distinction between, on the one hand, admissions obtained in breach of a defendant's right to remain silent and, on the other hand, material which is obtained by the use of compulsory powers, but which has an existence independent of the will of the defendant;[74]

(c) the privilege does not to extend to documents which are independent evidence and the same must apply to "things" which are independent evidence;[75]

(d) even if that were not so, the words "or thing" does not apply to a "thing" discovered in execution of a court order as distinct from a "thing" that is compelled to be produced;[76]

(e) His Honour stated that even if the privilege can be invoked to refuse to answer interrogatories or to refuse to disclose matters which are ordinarily discoverable, those matters may be documents or other "things", but independent matters coming to light in the course of executing a proper order of the court are in an altogether different category.[77]

• [78] Lawrence Collins LJ found that there was no privilege because the defendant was not ordered to produce incriminating material.[78] He did not think that it is now necessary to rule on the wider question whether it is open to this court to find as a general rule that there is no privilege in respect of what has been described as pre-existing or independent material.[79] Nevertheless, he accepted that there is a powerful case in policy terms for there being no privilege with respect to disclosure of free-standing documents or other material not brought into existence under compulsion.[80]
• [79] The third member of the Court of Appeal, Sir Martin Nourse, agreed with the judgment of Longmore LJ.
• [80] The result is a majority decision that the privilege against self-incrimination cannot be asserted to refuse disclosure of documents that exist independently of any disclosure order or any other compulsory process. That is a logical endpoint because, as Zuckerman points out, allowing a party to refuse to hand over pre-existing documents on grounds of self-incrimination would be pointless.[81] This is because the privilege does not operate to protect such documents in criminal proceedings. Where the police have reason to believe that a person is in possession of evidence, including documents, proving the commission of a criminal offence, they may execute a search order and seize such evidence, even by force if necessary.[82]

Conclusions on the Availability of the Privilege

• [81] Here, Mr Ebert relies on the privilege against self-incrimination as a reason as to why the court should not make an order for delivery up of the stock and equipment. Mr Ebert relies on Gibbs CJ's first statement of the privilege and the right to refuse to produce 'any document or thing'. However:

(a) that involves reading Gibbs CJ's first statement of the privilege in Sorby as if it were a statute; courts should take care not to elevate such statements (even those of Gibbs CJ so that they have the status of legislation);

(b) that approach involves giving a wide interpretation to the concept of a 'thing' when that concept, and the borders of the privilege, were not considered by the court;

(c) the statements of the principle in Sorby itself, and in the other authorities, are rather mixed, with differing expressions that might be used to plot the borders of the privilege;

(d) the rationales for the privilege, such as discouraging ill-treatment of a suspect and dubious confessions, do not apply where a party is merely required to produce documents or things that exist prior to and independently of the court's order;[83]

(e) no rationale for the privilege justifies regarding the privilege as extending to and order for delivery up of stock and equipment;

(f) modern authorities, such as Cross on Evidence (as approved in Charara v Commissioner of Police), Environment Protection Authority v Caltex Refining Co Pty Ltd and C Plc v P support the view that the privilege does not to extend to documents which are independent evidence, or to "things" which are independent evidence;

(g) that is consistent with logic because the exercise of the privilege would be pointless - the executive could the police are likely to be able to execute a search order and seize pre-existing evidence.

• [82] In summary, Mr Ebert's first argument has little to commend it beyond the fact that the stock and equipment are 'things' and are therefore in a literal sense at least, captured by one of the general statements about the nature of the privilege.
• [83] For those reasons, I reject Mr Ebert's claim of privilege.

Mr Ebert's Second Argument: Lack of Specificity

• [84] Mr Ebert's second argument is that the Court ought to not be satisfied that the information said to be confidential in paragraph 4(b) of the proposed order has been identified with specificity, that the information identified by the applicant as the 'confidential information' is in fact confidential or, that the information is the subject of any actual or threatened misuse by the respondent.
• [85] By paragraph 4 of Schedule A to the Originating Application, Zuce sought an interlocutory order that Mr Ebert be restrained from using, copying or disclosing to any person:

(a) any of the Confidential Information [a defined term]; and

(b) any information obtained by [Mr Ebert] by reason of his former position as an employee of [Zuce], not already in the public domain, other than by reason of a disclosure/s by [Mr Ebert].

• [86] Counsel for Mr Ebert is right that the scope of paragraph 4(b) is too wide and too imprecise. In any event, counsel for Zuce handed up a draft order which is in different terms. The restraint sought in that order is that, until trial or further order, Mr Ebert be restrained from using, copying or disclosing to any person any of the Confidential Information which is in his possession or control (that is order 4(a) in the original version).
• [87] The expression 'Confidential Information' is defined as meaning 10 categories of documents, namely:

1. The customer information of [Zuce] including names and contact details (customer data).

2. The excel spreadsheet previously maintained by [Zuce] containing Zuce's customer data and details of all customers which are:

(a) the holders of Alientech master tools;

(b) the holders of Alientech slave tools; and

(c) subscribers to Zuce's 'Tech Talk' service.

3. The login credentials to the database 'Alien_ID' for [Zuce].

4. The information and data stored within the database 'Alien_ID', including:

(a) the customer data;

(b) the original motor vehicle chip files for customers of [Zuce]; and

(c) the tuned motor vehicle chip files for customers of [Zuce].

5. The original and tuned motor vehicle chip files for customers of [Zuce] which are not stored within Alien_ID.

6. The supplier information of [Zuce], including their contact details, their products and their pricing margins, including Alientech SRL (supplier data).

7. Pricing lists and/or pricing information for the purchase of products from Alientech.

8. Pricing lists and/or information for the sale of Alientech products to third parties and the supply of Alientech training services.

9. Information and documentation provided by Alientech to facilitate the provision of training for the use of Alientech products, including a booklet with diagrams and written information, a USB with diagrams, an online Alientech presentation, training brochures provided to clients.

• [88] Mr Ebert contends that the court ought to not be satisfied that the information identified by the applicant as the 'confidential information' is in fact confidential. Precisely what is, and what is not, genuinely confidential is a difficult issue to determine on an interlocutory basis. The position is similar for the exercise of determining what is a reasonable restraint in the circumstances.
• [89] The principal considerations are these. First, Zuce has a strong case that Mr Ebert was a fiduciary, despite his change to being retained as a contractor.[84] He was employed as Zuce's General Manager.
• [90] Second, Mr Ebert was a party to a Shareholders Agreement by which he agreed to use the Confidential Information[85] only for the purposes of any business carried on by Zuce and to keep that Confidential Information confidential and not disclose it or allow it to be disclosed to any third party.
• [91] Third, Zuce's case - which is not presently disputed - is that in August, Mr Ebert took, for all intents and purposes, the whole of Zuce's business from its premises.[86] The components of the business taken are explained in paragraph 9 above. That had two relevant consequences. It enabled Mr Ebert to establish his new business. And it largely disabled Zuce from continuing its business.[87] In those circumstances, it is a little jarring for Mr Ebert to complain that, having taken the whole of the undertaking, some of the information he took with him to his new business was not confidential.
• [92] An illustration of the problem is paragraph 17 of Mr Ebert's first affidavit. There he says this:

I do have contact details for some trade customers of Zuce Tech on my mobile phone as I used my personal phone for work purposes. However, I make the following comments in relation to this information:

(a) Contact information on my mobile device comprises a mix of both personal and professional contacts;

(b) I believe that most (if not all) of the customers' names could be recalled from memory either by myself or from a staff member;

(c) I believe that most (if not all) contact details could be readily acquired by undertaking basic online searches;

(d) Former staff of Zuce Tech (that now work for me) are likely to have customer contact details on their mobile devices; and

(e) Many of the customers, and their information, were already known to me, and some of which were saved as contacts, prior to my employment with Zuce Tech;

(f) I have social relationships with a number of those customers; and

(g) I believe that most (if not all) of the customers' names and contact details are held by and available from Alientech SrI (Alientech Italy).

• [93] Having gathered up all (or at least most[88]) of the assets of Zuce's business, Mr Ebert has chosen to take with him 'mixed' assets such as the mobile phone which contains both confidential Zuce customer information as well as his own private information. Apparently, no attempt has been made to 'split' the information. In those circumstances the balance of convenience does not favour permitting Mr Ebert to hold Zuce's business assets and 'mixed' assets merely because those assets include either private or non-confidential information. At a final hearing the likelihood is that Zuce will be held to be entitled to its own business assets.
• [94] Fourth, that raises a further problem. It is plain that some of the information, data and documents taken by Mr Ebert will include non-confidential information. However, it is difficult to see what legal right justifies Mr Ebert taking even non-confidential information. At paragraph 13 of his first affidavit, he says this: "I have a backup copies of [Zuce] Tech's MYOB system. I am a shareholder of [Zuce] Tech and believe I am entitled to its financial records...". Mr Ebert's rights as a shareholder do not entitle him to possession of Zuce's property - whether it comprises confidential information or not. Possibly there will be arguments about this at trial, but the balance of convenience ought to favour the party who appears on the material to have a legal right to the property of the business.
• [95] For those reasons, I am not persuaded that the likelihood that there is non-confidential information, or even private information, in the material taken by Mr Ebert sways the balance of convenience his way. And, in my view, the draft order identifies the material required with sufficient specificity.

• [96] It is necessary to deal with each of the 10 categories of confidential information sought by Zuce.

• [97] Mr Ebert says that no specific customer list existed. But, of course, that is not what is specified in this category. What is required is Zuce's customer information of including names and contact details.
• [98] Mr Ebert says that he does not have the software or capabilities to access MYOB backups which contain customer information. He says that he will provide a copy of all Zuce's MYOB system backups to his solicitors and will delete any other copies in his possession. But, there is no basis for Mr Ebert holding onto what is, on the evidence, Zuce's property.
• [99] And, the fact that some of the material is mixed with Mr Ebert's own private material, is not a reason for Zuce being denied its own business assets.
• [100] Mr Ebert points out that the customer information can be mostly recalled by memory, or obtained from other sources (including Alientech SrI), or was information known to Mr Ebert prior to working for Zuce. That is not, in my view, as sufficient reason for denying Zuce possession of its own property. That information, even if not confidential may well have some value to Zuce's business and may be difficult for Zuce to replace in a timely and cost effective way.[89]

• [101] Mr Ebert says that he does not have the spreadsheet, however, he is aware of the existence of such a spreadsheet. Of course, the order proposed seeks material in his possession, custody or control. If the spreadsheet is not within his possession, custody or control then there will be nothing for him to produce.

• [102] Mr Ebert says that the login details for the ALIEN_ID at the time of Mr Ebert's employment with the applicant are no longer of any use. Even accepting that, Mr Ebert should give back to Zuce what is its business information.

• [103] Mr Ebert maintains that all data contained in the ALIEN_ID database is the property of and owned by Alientech SrI. Even accepting that the property in the information is owned by the Italian company, there is no reason why the Alien_lD dashboard and web page to access Alientech should not be in the possession of Zuce. That access was part of Zuce's business assets.

Category 5: Motor vehicle chip files for customers

(a) he did not remove or copy any original or tuned motor vehicle chip files for customers of Zuce Tech;

(b) he believes these files are contained on an external hard drive or drives that were at Zuce's premises when he left;

(c) he does not have a copy of this information in his possession, custody or control;

(d) these tuned motor vehicle chip files are not unique; when Zuce or another reseller sells them to customers, they are often copied and on sold.

• [105] The last point has been dealt with. Even non-confidential information should be returned. And, again, if Mr Ebert does not have the information then there will be nothing to produce.

... no specific supplier list exists. [Mr Ebert] does not have the software capabilities to access the MYOB backups which may contain supplier information. Otherwise, supplier information can be mostly recalled by memory and are well-known in the industry. It does not have the necessary quality of confidence[90]

• [107] These issues have already been dealt with.

Categories 7 and 8: 7. Pricing lists and/or Pricing information

• [108] Again, Mr Ebert says that he does not have this information. In any event, he says that the pricing lists are publicly available or can be obtained upon request from Alientech and can be recalled mostly by memory. He also argues that this information does not have the necessary quality of confidence.
• [109] These issues are all addressed above.

• [110] Mr Ebert argues that he does not have this information, other than a PowerPoint presentation prepared by Alientech. He says that, in any event, the training materials (which were created by Alientech) were given to Mr Ebert after he became accredited, which occurred prior to Mr Ebert's employment with Zuce.
• [111] There are two new issues here. The first is that Mr Ebert says that he was and remains accredited with Alientech and that Mr Hadden is not accredited. However, that hardly matters. Many employees will hold an accreditation which is both personal to them and used for the benefit of their employer. The second is that Mr Ebert suggests that the PowerPoint is his own personal property because he acquired it prior to the incorporation of Zuce. That may be true, but the evidence of Mr Hadden suggests that the training occurred in the context where the business was being formed and the relationship with Alientech was being developed.
• [112] There is likely to be a contest about the ownership or right to possession of the PowerPoint. On balance I am not persuaded that the PowerPoint should be delivered up to Zuce. The preferable course is for the document to be kept by Mr Ebert's solicitors pending the trial.

• [113] No new issues are raised here. Any personnel information that Mr Ebert possesses should be provided to Zuce.
• [114] It is worth observing that Mr Ebert says that he intends to provide the backup copies of the MYOB backups to his solicitors pending this and any other litigation and to delete remaining copies. Suffice it to say that no copies should be deleted, and the information should be returned to Zuce. These are Zuce's business records.

Mr Ebert's Third Argument: Balance of Convenience

• [115] Mr Ebert's third argument is that the balance of convenience does not favour the granting of an injunction because:

(a) the respondent would suffer prejudice if orders were made for delivery up in circumstances where the respondent has not put on responsive evidence related to the equipment and stock (because he maintains his privilege against self-incrimination);

(b) there is no utility to making the orders sought - the applicant is no longer the authorised distributor for Alientech and Alientech do not wish to continue any reseller relationship with the applicant. Restraining the respondent from using the ALIEN_ID data would prevent two businesses from operating;

(c) it is not the case that the applicant cannot continue its motor vehicle tuning services. The applicant has a KESS3 Master device and has an ALIEN_ID, which is associated with a KESS3 Master device;

(d) any loss using the alleged Confidential Information to compete against it with the applicant's customers is capable of being readily quantified and an account of profits made from them. The respondent has assets to meet an award of damages.

• [116] I have already discussed the issue of the privilege against self-incrimination. In my view, Mr Ebert does not have the benefit of that privilege in relation to the equipment and stock. Indeed, for the reasons stated, the privilege does not enable him to refuse to deliver up pre-existing documents. As to the alleged prejudice, even if Mr Ebert had the benefit of a legitimate claim to privilege, the court is required to act on the basis of the evidence before it.[91]
• [117] In his first affidavit, Mr Contini, the Sales, Marketing and Customer Care Manager of Alientech SrI (the Italian company) stated that Zuce has been, for the last few years, one of the authorised resellers of Alientech's products. He says that Mr Ebert is the central person to that business relationship and that his involvement is critical to Alientech SrI. In his second affidavit Mr Contini goes further: "I and Alientech do not wish to have any reseller relationship with Mr Hadden or Zuce Tech in circumstances where Eric is no longer involved with Mr Hadden or Zuce Tech personally".
• [118] That has led to Mr Ebert's submission that there is no utility to making the orders sought because Zuce's relationship with Alientech SrI has ended and restraining Mr Ebert from using Alientech system would mean that neither business could operate.
• [119] First, the orders sought do not, explicitly at least, seek to restrain Mr Ebert from starting, or continuing to operate, his own business, Alientech Tools. Similarly, the orders do not and should not restrain Mr Ebert from continuing his relationship with Alientech. But he should not be permitted to do that with Zuce's stock, equipment, hardware and software.
• [120] The orders as they are framed (or perhaps as they can be clarified) should merely prevent Mr Ebert from utilising, as part of his own business, the assets of Zuce's business, including its business records and its confidential information.
• [121] Second, the reality may be that Alientech are now unwilling to deal with Zuce - in the absence of Mr Ebert. That situation may or may not continue. But none of that justifies any orders that permit Mr Ebert to continue to use Zuce's stock, equipment, business records and any confidential information in his possession.

• [125] Zuce offers valuable undertakings as to damages by Zuce, Mr Hadden and his wife. Zuce also undertakes to not deal with or dispose of the equipment, stock, records and information other than in the ordinary course of business.
• [126] In all the circumstances the balance of convenience favours an order that restores the equipment, stock, records and information to Zuce.

[1] The facts are taken principally from the Affidavit of Mr Hadden filed on 6 September 2024. Mostly the facts are not contested, but that may be because Mr Ebert claims privilege - see the discussion below.

[2] These facts are taken from the judgment in Zuce Tech Pty Ltd v Ebert [2024] QCA 219.

[3] Some of the proposals are recorded in some emails (in June and July 2024) at: Affidavit of Mr Hadden filed on 6 September 2024, exhibits, 97-100.

[4] Affidavit of Mr Hadden filed on 6 September 2024, [100].

[5] Affidavit of Mr Hadden filed on 6 September 2024, exhibits, 101. There was also a telephone conversation between Mr Hadden and Mr Ebert: see [103].

[6] One employee, Mr Alurkoff, swore an affidavit which explains that he resigned and went with the new business because he was told the existing business "was done". He reversed that decision after speaking with Mr Hadden on 7 August 2024. He gives some evidence of clients of the existing business being approached by the new business.

[7] See Affidavit of Mr Alurkoff filed on 10 September 2024.

[8] Zuce Tech Pty Ltd v Ebert [2024] QCA 219.

[11] [2006] HCA 46; (2006) 227 CLR 57, [65].

[12] The footnote here is to Tymbook Pty Ltd v State of Victoria; Bradto Pty Ltd v State of Victoria [2006] VSCA 89; (2006) 15 VR 65, [35].

[13] [2020] QSC 207.

[14] Re Geelong Quaries Pty Ltd [2022] VSC 528, [38] (Button J). And affirmed in Hoare v Hoare [2023] VSCA 73.

[15] Tymbook Pty Ltd v State of Victoria; Bradto Pty Ltd v State of Victoria [2006] VSCA 89; (2006) 15 VR 65, [35]. See also Samsung C&T Corp v Lang O'Rourke Australia Construction Pty Ltd [2015] WASC 83, [67].

[16] The likelihood is that Zuce will be entitled to enforce its rights in detinue or conversion, or for breach of fiduciary or statutory duties.

[17] This is subject to Mr Ebert's argument that the confidential information has not been properly identified - discussed below.

[18] Zuckerman et al, Zuckerman on Australian Civil Procedure (LexisNexis, 2nd ed, 2024) [18.21] ('Zuckerman on Australian Civil Procedure'), relying on V v C [2001] EWCA Civ 1509.

[19] Lee v New South Wales Crime Commission [2012] HCA 46; (2013) 251 CLR 1 (French CJ).

[21] Ibid. The quote is from Rees v Kratzmann (1965) 114 CLR 63, 80 ('Rees'). Modern academic writers, and some judges, have criticised the continued existence of the privilege. The criticisms are helpfully collected by Sorabji, 'Calling Time on the Privilege Against Self-incrimination?' (2012) 31(3) Civil Justice Quarterly 261, 262 ('Calling Time on the Privilege Against Self-Incrimination'). See also the views of the Queensland Law Reform Commission in: Queensland Law Reform Commission, Abrogation of the Privilege against Self-Incrimination (Report No 59, December 2004).

[22] Azzopardi v The Queen [2001] HCA 25; (2001) 205 CLR 50, [119]-[163].

[23] Blackstone, Commentaries on the Laws of England (Clarendon Press, 1769) vol IV, 293. Quoted in McNicol, The Law of Privilege (Law Book Co, 1992), 138; Rees (supra), 80. See also Brennan J in Sorby v Commonwealth [1983] HCA 10; (1983) 152 CLR 281, 318.

[24] All bar the last sentence of this submission can be accepted. As will be explained, the present problem is the extent of or the reach of the privilege.

[25] See, for example, Reid v Howard (1995) 184 CLR 1, 5 (Deane J): "deeply ingrained in the common law", "a 'cardinal principle' which lies at the heart of the administration of the criminal law in this country", and "unqualified" and unable to be "disregarded or overridden by the courts" and at 11-12 (Toohey, Gaudron, McHugh and Gummow JJ) - "a 'fundamental bulwark of liberty'", "a basic and substantive common law right", and "no rule more established in equity" (references deleted).

[26] [1983] HCA 10; (1983) 152 CLR 281, 288 (Mason, Wilson and Dawson JJ agreed) ('Sorby').

[27] Ibid. The quote is from Lamb v Munster [1882] UKLawRpKQB 159; (1882) 10 QBD 110, 111. As to "document or thing", see the discussions below.

[28] [1983] HCA 10; (1983) 152 CLR 281, 294-295.

[31] See the three traditional criteria for establishing ratio decidendi in D'Orta-Ekenaike v Victoria Legal Aid [2005] HCA 12; (2005) 223 CLR 1, 79-80 (Kirby J).

[32] (1983) 152 CLR 328 ('Pyneboard'). (Gibbs CJ was a member of the court in Sorby but not in Pyneboard).

[33] Trade Practices Act 1974 (Cth) s 155(7) expressly provided that the recipient was not excused from furnishing information or producing or permitting the inspection of a document on the ground that the information or document may tend to incriminate the recipient. The appellant argued that, despite that provision, it was still entitled to the privilege against exposure to a penalty.

[37] [1982] HCA 42; (1982) 152 CLR 188, 202-3.

[38] (1995) 184 CLR 1 ('Reid').

[39] [1982] AC 380, 443.

[43] [2013] HCA 39; (2013) 251 CLR 196.

[44] Ibid [24]. This passage was also quoted by Deane, Dawson and Gaudron JJ in Environment Protection Authority v Caltex Refining Co Pty Ltd [1993] HCA 74; (1993) 178 CLR 477, 527 ('Environment Protection Authority').

[45] [1982] AC 380, 419.

[46] Heydon, Cross on Evidence (LexisNexis, 13th ed, 2021), [25065].

[47] Those authorities include: Accident Insurance Mutual Holdings Ltd v McFadden (1993) 31 NSWLR 412 ('Accident Insurance Mutual Holdings'); The Law of Privilege (supra), ch 3; Zuckerman et al, Zuckerman on Civil Procedure (Sweet & Maxwell, 3rd ed, 2013) ch 17; Thanki et al (ed), The Law of Privilege (Oxford University Press, 3rd ed, 2018) ch 8.

[48] (1993) 31 NSWLR 412.

[49] Zuckerman on Australian Civil Procedure (supra), [18.1]. The authority for the first sentence is Accident Insurance Mutual Holdings (supra).

[50] Sorby (supra), 294-295. See also Reid (supra), 6.

[51] [1882] UKLawRpKQB 159; (1882) 10 QBD 110, 113.

[53] Murphy v Waterfront Commission [1964] USSC 136; 378 US 52, (Sup Ct, 1964). See also the discussion of the rationales by Calling Time on the Privilege Against Self-Incrimination (supra) 261-266. Note that the privilege is constitutionally recognised in the United States.

[54] Thanki et al (eds) The Law of Privilege (Oxford University Press, 2nd ed, 2006), [8.20].

[55] Ibid [8.20]-[8.23]. The second rationale is based on Pyneboard (supra), 346.

[56] [1993] AC 45, 53.

[57] Redmayne, 'Rethinking the Privilege Against Self-Incrimination' (2007) 27(2) Oxford Journal of Legal Studies 209, 209-32. See also Zuckerman on Australian Civil Procedure (supra), [18.5].

[58] Subject, of course, to statutory exceptions to the privilege.

[59] [1982] AC 380.

[60] See the discussion of this case in Zuckerman on Australian Civil Procedure (supra), [18.25].

[61] (2008) 182 A Crim R 64; [2008] NSWCA 22, [74]-[75].

[62] The passage relied on was from the 7th edition at [25095]. The 13th edition, which I have quoted, is similar.

[64] [1993] HCA 74; (1993) 178 CLR 477, 502.

[66] [1993] AC 45, 53. These statements in Environment Protection Authority (supra) are discussed in: Justice Margaret Wilson, 'Aspects of Privilege: Self Incrimination' (Speech, Bar Association of Queensland Conference, 4 March 2006) 20-1.

[67] [1993] HCA 74; (1993) 178 CLR 477, 527.

[68] (1996) 23 EHRR 313; [1996] ECHR 19187/91, [69].

[69] [2007] EWCA Civ 493. Note the position in the UK is a little more complex than in Queensland because the privilege is affected by legislation and the jurisprudence of the European Courts of Human Rights.

[70] These facts are taken from the article: Zuckerman, 'The Privilege Against Self-incrimination may not Confer a Right to Refuse Disclosure of Incriminating Documents that Came into Existence Independently of the Disclosure Order' (2007) 26(Oct) Civil Justice Quarterly 395, 395 ('The Privilege Against Self-incrimination').

[71] C Plc v P [2006] EWHC 1226.

[72] See Zuckerman on Australian Civil Procedure (supra), 396.

[73] [2006] EWHC 1226, [26].

[81] The word that Zuckerman uses is "absurd": The Privilege Against Self-incrimination (supra), 397.

[82] See, for example, Police Powers and Responsibilities Act 2000 (Qld) s 157.

[83] On this point see Zuckerman on Australian Civil Procedure (supra), 397.

[84] Zuce also relies on the Corporations Act 2001 (Cth) ss 180-183.

[85] The definition of 'Confidential Information' in the Shareholders Agreement is not the same as the definition in the proposed order.

[86] One exception is that Mr Ebert says that an external USB hard drive was left at Zuce's when he left.

[87] Mr Hadden says that Zuce's business has continued but in a limited way.

[88] As explained, Mr Ebert says that an external USB hard drive was left at Zuce Tech's when he left.

[89] See DBL Space Pty Ltd v Clynder Pty Ltd [2022] QSC 193, 4.

[90] Mr Ebert's submissions, [45(f)]. Footnotes deleted.

[91] See the discussion above at [25].