BCI Technology Pty Ltd v Myers

[2017] FCA 1600

FEDERAL COURT OF AUSTRALIA

BCI Technology Pty Ltd v Myers [2017] FCA 1600

File number:	QUD 286 of 2016
Judge:	REEVES J
Date of judgment:	21 December 2017
Catchwords:	PRACTICE AND PROCEDURE – applications for discovery and production by applicant and respondent under rr 20.16 and 20.32 of the Federal Court Rules 2011 (Cth) – where proceeding concerns copyright infringement and confidentiality breach – whether confidentiality orders should apply to discovered documents – where respondent is self-represented – whether discovered documents should be produced to respondent’s address for service – where respondent’s address for service was his private residence – whether production at office of applicant’s solicitors was unfair to respondent – whether production reasonably accommodated for respondent’s expert witness to inspect discovered documents
Legislation:	Federal Court Rules 2011 (Cth)
Cases cited:	Oshlack v Richmond River Council (1998) 193 CLR 72; [1998] HCA 11
Date of hearing:	Determined on the papers
Date of last submissions:	17 December 2017
Registry:	Queensland
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Category:	Catchwords
Number of paragraphs:	18
Counsel for the Applicant:	Mr P Hackett
Solicitor for the Applicant:	HopgoodGanim Lawyers
Counsel for the Respondent:	The Respondent appeared in person

ORDERS

QUD 286 of 2016

BETWEEN:

BCI TECHNOLOGY PTY LTD ACN 072 077 519

Applicant

AND:

TOBY JASON MYERS

Respondent

JUDGE:	REEVES J
DATE OF ORDER:	21 DECEMBER 2017

THE COURT ORDERS THAT:

1.The discovered documents are to be produced by the parties electronically and persons entitled to inspect the discovered documents do so at the office of the solicitors for the Applicant within 14 days following discovery.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

REEVES J:

1. On 4 August 2017, BCI Technology Pty Ltd (BCI), the applicant, filed an interlocutory application which, among other things, sought orders that Mr Toby Myers, the respondent, give discovery of documents falling into a number of categories in accordance with r 20.16 of the Federal Court Rules 2011 (Cth) (the Rules). That application also sought an order that the documents so discovered be produced, and Mr Myer be entitled to inspect them at the offices of BCI’s then lawyers, with the exception of those documents for which a claim of privilege or confidentiality was made within 14 days following the giving of discovery.

2. On the same day, Mr Myers filed his own application under r 20.16 of the Rules seeking an order that BCI be required to give discovery of certain categories of documents. His application also sought an order about the production and inspection of the discovered documents. It was that they “be produced in an electronic format and are to be delivered to the Respondent’s Address for Service”.

3. There are three matters affecting these two applications and the orders sought in them that it is convenient to highlight at the outset.  First, with the exception of an aspect I will come to later in these reasons, Mr Myers has been, and remains, self-represented in this proceeding.  As a result, the address for service he has provided is his private residential address at Worongary, a suburb of the Gold Coast.  Secondly, this proceeding concerns claims BCI has made that Mr Myers infringed its copyright in, and breached his equitable and contractual obligations of confidentiality as an employee with respect to, a computer program described as the Behaviour Engineering Editor (BEE), together with a module forming part of that computer program described as the Behaviour Run-time Environment (BRE).  Confidentiality is therefore at the forefront of the proceeding.  Thirdly, and relatedly, because each party to this proceeding was claiming confidentiality in relation to certain documents connected with the BEE computer program described above, on 23 March 2017, I made mutual confidentiality orders with respect to those documents (the Confidentiality Orders).  However, since some of those documents were likely to be discoverable in this proceeding, those orders were expressed to be subject to the exceptions that the documents in question may be provided or disclosed to:

   (a)any solicitors and counsel (including their relevant office staff) engaged by the parties for the purpose of the conduct of the proceeding;

   (b)any independent expert engaged by the respondent/applicant, upon his or her executing a confidentiality undertaking in a form set out in Annexure A to these orders.

   Because he was, and remains, self-represented, the exception in (a) above does not apply to Mr Myers.  Mr Myers’ situation with respect to the exception in (b) above is addressed below.

4. Returning to the two discovery applications referred to above, because there is a large number of documents to be discovered by both parties, there is no dispute that the documents in question should be discovered and produced in electronic form under r 20.32(2). However, initially there was a dispute about the categories of documents each side should be required to discover. Accordingly, on 26 October 2017, I heard submissions from both parties directed to that dispute, during which I made a number of rulings which, among other things, identified the categories of documents that each party was required to discover. I then ordered BCI’s lawyers to submit a set of draft orders to reflect those rulings.

5. Soon after BCI’s lawyers submitted those draft orders to my Associate, Mr Myers sent an email to her objecting to draft order 2 being included in the final orders.  That draft order stated:

   The discovered documents are to be produced and the parties entitled to inspect the discovered documents do so at the office of the solicitors for the Applicant other than those documents for which a claim of privilege or confidentiality is made, within 14 days following discovery.

   Mr Myers claimed that, with respect to the documentation BCI was required to discover to him, this order should be expressed in the terms sought by him in his application for discovery as set out above at [2]. As noted above, the address in question is also Mr Myers’ private residential address.

6. Because of the intervention of this dispute about production, I made the remainder of the discovery orders in the form of the draft orders submitted by BCI’s lawyers and required the parties to make written submissions on the appropriate order for production, having regard to the provisions of r 20.32 of the Rules.

7. In its submissions, BCI contended that the Confidentiality Orders should continue to apply to the discovery process and, that being so, it should not be required to produce its confidential documents to Mr Myers at his address for service.  Instead, it contended that production and inspection of all the discovered documents should take place at its lawyers offices which are located in the Brisbane CBD.  It submitted that that course would not be unfair to Mr Myers because the address of his proposed expert witness, the Queensland University of Technology, Science and Engineering Faculty, 2 George Street, Brisbane, was also in the Brisbane CBD.  Making allowance for Mr Myer’s expert witness to inspect the discovered documents and deleting the provision allowing for privilege claims, which was no longer relevant, it submitted the following revised form of the order for production it proposed:

   The discovered documents are to be produced by the parties electronically and persons entitled to inspect the discovered documents [are to] do so at the office of the solicitors for the Applicant within 14 days following discovery.

8. For his part, Mr Myers submitted that production should take place “by each of the parties to the address for service of the other party”.  However, he then appeared to contradict this proposal by submitting the following alternative processes for production:

   (a)to the respondent’s expert witness at the address contained in the notice filed 13 November 2017; or

   (b)to the respondent’s solicitors at the address contained in the notice filed 6 November 2017.

9. Mr Myers also submitted that none of the documents produced for inspection as a part of the discovery process should be subject to the terms of the Confidentiality Orders.

10. The two notices referred to in Mr Myers’ alternative processes above were given in response to Order 4 of the orders I made on 26 October 2017 as follows:

    4.The Respondent is to file a Notice stating the names and addresses of the solicitors, counsel or independent expert he has engaged for the purposes of the proceeding and signed by them stating that they have each agreed to be bound by paragraphs 1(a) or (b) of the Orders made on 27 March 2017.

11. The notice filed on 6 November 2017 stated:

    1.The Respondent hereby notifies the names of the solicitors he has engaged for the purposes of the proceeding:

    a.Benjamin Twomey, Ramsden Lawyers

    b.Derek Finch, Ramsden Lawyers

    2. The Respondent hereby notifies the address of the solicitors he has engaged for the purposes of the proceeding:

    Ramsden Lawyers
    Levels 5 & 9, Corporate Centre One
    2 Corporate Court

    Bundall QLD 4217

    3.In signing this notice, Benjamin Twomey and Derek Finch agree to be bound by paragraph 1(a) of the Orders made on 27 March 2017:

12. The subsequent notice filed on 13 November 2017 stated:

    1.The Respondent hereby notifies the names (sic) of the independent expert he has engaged for the purposes of the proceeding:

    a.        Dr Wayne Kelly

    2.The Respondent hereby notifies the address of the independent expert he has engaged for the purposes of the proceeding:

    Queensland University of Technology
    2 George Street

    Brisbane Qld 4000

    3.In signing this notice, Wayne Kelly agrees to be bound by paragraph 1(b) of the Orders made on 23 March 2017:

13. These notices caused some confusion because, when BCI’s lawyers sought, on 15 November 2017, to clarify with Ramsden Lawyers the terms of their engagement, Mr Finch of that firm responded:

    Our firm’s position remains the same as outlined in our email dated 30 October 2017.

    If that position changes (which we do not anticipate), we will immediately advise you and file a form 4 accordingly.

    We have no objection to you communicating directly with Mr Myers.

    We otherwise do not agree with your apparent interpretation of the notice. The notice filed by Mr Myers applies for the limited purposes of the proceeding referred to at paragraph 4 of Justice Reeves Order dated 26 October 2017 which, in turn, refers to paragraphs 1(a) and 1(b) of the order made on 27 (albeit we interpolate 23) March 2017. Paragraphs 1(a) and 1(b) of the 23 March 2017 order are limited to the issue of the confidentiality of certain documents provided or disclosed in the course of the proceeding. Depending on any instructions we may receive from Mr Myers, the confidential documents subject to those paragraphs may be disclosed to our firm for the purposes of the proceeding and so it was prudent for Mr Myers to request that our firm sign the notice on that basis.”

14. More significantly, the position stated in the email dated 30 October 2017, mentioned in the above email, was as follows:

    We do not have instructions in that regard [facilitating discovery] and do not anticipate receiving them.

    We also do not have instructions to otherwise generally act for the respondent in this proceeding and do not anticipate receiving those instructions.

    That being the case, we propose that our law firm be omitted from further communications regarding the proceeding.

    (Emphasis added)

15. The two paragraphs of the email of 30 October 2017 emphasised above appear to directly contradict Mr Myer’s first notice filed on 6 November (see at [11] above). The position became even more confused when my associate sought clarification from Mr Myers with respect to the statements made in the emails emanating from Ramsden Lawyers. He responded:

    1.I confirm that I have engaged Ramsden Lawyers on a limited basis and they do not have instructions to act for me generally in this proceeding or to facilitate discovery.

    2.Ramsden Lawyers have been engaged to assist with briefing my proposed expert witness and preparing a report but this work is currently on hold whilst we await a means for the expert witness to be able to inspect the relevant material in the possession of the Applicant.

16. Rule 20.32 of the Rules provides for an unfettered discretion to make an order for the production and inspection of discovered documents.  However, as with any such discretion, it must be “exercised judicially in accordance with established principle and factors directly connected with the litigation” (see Oshlack v Richmond River Council (1998) 193 CLR 72; [1998] HCA 11 at [65] per McHugh J (in dissent, but not on this issue)).

17. In the circumstances of this litigation as outlined above, I consider the fairest and most appropriate order for production is that proposed by BCI at [7] above. That is so because, first, I do not consider Mr Myers has provided any reason why the Confidentiality Orders should not continue to apply to the discovery process. Secondly, and relatedly, in those circumstances, I do not consider it is appropriate that BCI’s discovered documents should be produced by delivery to Mr Myers’ address for service when that address is one and the same as his private residential address. Thirdly, Mr Myers has failed to avail himself of the exception provided for in the Confidentiality Orders by appointing lawyers to act for him with respect to the discovery process. Indeed, having regard to the matters set out at [13]–[15] above, I consider the notice he filed on 6 November 2017 to be quite misleading. Fourthly and finally, I consider BCI’s proposed order makes due allowance for Mr Myers’ expert witness to inspect the discovered documents at a place that is reasonably close to his stated address.

18. For these reasons, I will order that:

    1.The discovered documents are to be produced by the parties electronically and persons entitled to inspect the discovered documents are to do so at the office of the solicitors for the Applicant within 14 days following discovery.

I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Reeves.

Associate:        

Dated:        21 December 2017