C21 Pty Ltd (Trustee) v Hou (No 7)

Case •

[2025] FedCFamC2G 1299

•

14 August 2025

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA

(DIVISION 2)

C21 Pty Ltd (Trustee) v Hou (No 7) [2025] FedCFamC2G 1299

File number(s): SYG 2055 of 2021
Judgment of: JUDGE MANOUSARIDIS
Date of judgment: 14 August 2025
Catchwords: INTELLECTUAL PROPERTY – Final relief – scope of delivery up orders - whether applicant’s proposed form of order, if made, might call for the identification and destruction of files or data beyond the files and data that are the subject of findings made in the reasons for judgment in relation to which the delivery up orders are intended to be made – delivery up orders to be made in the form proposed by respondents.
Cases cited: C21 Pty Ltd (Trustee) v Hou (No 6) [2025] FedCFamC2G 927
Division: General
Number of paragraphs: 8
Date of last submission/s: 10 July 2025
Date of hearing: Decided on the papers
Solicitor for the Applicant: Gilbert + Tobin
Solicitor for the Respondents: MGA Lawyers

ORDERS

SYG 2055 of 2021

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:

C21 PTY LTD ATF THE RAMADAN FAMILY TRUST

Applicant
AND:

KATE HOU

First Respondent

HIBI DESIGN PTY LTD

Second Respondent

ORDER MADE BY:

JUDGE MANOUSARIDIS

DATE OF ORDER:

14 AUGUST 2025

THE COURT ORDERS THAT:

1.In these orders:

(a)Downloaded Files means all or any of the files or part of the files that were the subject of the downloads specified in the log of the NAS server for 20 August 2021; the 43 downloads identified in the email Google sent to the first respondent at 11.36 pm on 22 August 2021; and the 2 downloads identified in the email Google sent to the first respondent at 6.22 pm on 15 September 2021 referred to in declaration 4(a) to (c) of the orders of the Court dated 13 June 2025 (Orders);

(b)Hibi Files means the files or part of the Hibi Keycap Design template files identified in columns 2 of Infringement Table 2 and Infringement Table 3 of the Orders.

2.Within 14 days of the date of these orders, but subject to any claim for privilege by the first respondent, the first respondent file and serve an affidavit in which the first respondent:

(a)identifies every device or devices the first and second respondents control, or to which they have access:

(i)to which the Downloaded Files were downloaded, uploaded, transferred, or copied;

(ii)which contain any of the Hibi Files;

(b)to the best of the first respondent’s belief and information, identifies every device or devices the first and second respondents once controlled or had access to, but no longer control or have access to:

(i)to which the Downloaded Files were downloaded, uploaded, transferred, or copied to;

(ii)which contained any of the Hibi Files.

3.Within 14 days of filing the above affidavit, each of the parties are to comply with the Delivery Up Protocol at Attachment 1 to these orders.

4.Prior to the commencement of the Delivery Up Protocol, Rod McKemmish of Cyter and anyone assisting him in performing the tasks in the Delivery Up Protocol will give undertakings to the Court substantially in the form attached as Attachment 2 to these orders.

5.

Attachment 1 - Delivery Up Protocol

1.This protocol concerns the removal and storage of the Downloaded Files and the Hibi Files from the devices which were identified in the affidavit of the first respondent filed pursuant to order 2 of the orders dated 14 August 2025 (the Devices).

2.The removal will be conducted by Rod McKemmish of Cyter (Expert). A copy of the orders dated 14 August 2025 and this Delivery Up Protocol are to be provided to the Expert by joint communication from the Applicant and the Respondents.

3.Within 14 days of 14 August 2025, or at another time agreed by the Applicant and the Expert, the lawyers for the Respondents will arrange for the Devices to be delivered to offices nominated by the Expert in Melbourne, together with such usernames and passwords that are necessary to operate those Devices and any relevant cloud storage service accessible from the Devices. The Expert and anyone assisting him will treat those usernames and passwords as confidential to the Respondents.

4.The Applicant and the Respondents are to send a joint communication to the Expert attaching the affidavit of the first respondent filed pursuant to order 2 of the orders dated 14 August 2025.

5.The Expert will locate each of the Downloaded Files and the Hibi Files on each of the Devices identified in the affidavit referred to in paragraph 4 of this Protocol. The Expert will permanently remove those documents from the Devices and store them in a secure location as detailed in paragraph 6 below. The Expert will return the Devices to the lawyers for the Respondents as soon as practicable after the completion of the removal of the documents. If there is a telephone provided to the Expert, this device will be reviewed first and the telephone will be returned to the lawyers for the Respondents within twenty-four (24) hours of being delivered to the Expert.

6.Having completed the removal of the Downloaded Files and the Hibi Files from each of the Devices, the Expert will store the documents:

7.In a folder marked “CONFIDENTIAL SYG2055/2021 - C21 PTY LTD ATF THE RAMADAN FAMILY TRUST v KATE HOU & ANOR” on a separate external hard drive (which is not to be provided to any of the parties, or otherwise copied;

8.Until the final determination of any appeal in the proceedings.

9.Within 14 days of the final determination of any appeal in the proceedings, the parties will prepare a joint correspondence to the Expert detailing what is to be done with the documents stored pursuant to paragraphs 5 and 6 above.

10.The Expert’s reasonable fees are payable by the Respondents. The Expert must provide a quote of his anticipated fees before the commencement of any work pursuant to this Protocol.

11.Any further instructions provided to Mr McKemmish in relation to the conduct of the Protocol must be in a form agreed between the parties in writing. 

12.The Expert must and will keep the usernames and passwords provided to him under paragraph 3 of this Protocol confidential, and must not either wilfully or recklessly allow the usernames and passwords to be disseminated to any other party, including but not limited to the Applicant and/or the Applicant’s lawyers.

13.Either party may re-list the proceeding on 48 hours’ notice in writing to seek orders as to the implementation of, or variation of, this protocol.

Attachment 2 – Expert Undertaking

I, [the Expert or anyone assisting the Expert] will not, without the leave of the Court or the written agreement of the parties:-

A.search any devices identified in the Delivery Up Protocol for files of file types other than the Downloaded Files or HIBI Files;

B.disclose any of the username and password information received or obtained under the Protocol to the Applicant, its lawyers or any third party;

C.disclose any information, documents or files obtained under the Delivery Up Protocol other than as permitted under the Delivery Up Protocol;

D.use any information, document or thing obtained as a result of the examination conducted under the Delivery Up Protocol for any purpose and/or proceeding other than this proceeding.

Note: The form of the order is subject to the entry in the Court’s records.

Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).

REASONS FOR JUDGMENT

INTRODUCTION

  1. On 13 June 2025 I published reasons for judgment on the basis of which I made a number of final orders to give effect to my reasons for judgment I published on 4 April 2025.[1] As I noted in my reasons for judgment of 13 June 2025, the parties had not exhausted their discussions about the appropriate form of delivery up orders. I therefore decided to it leave it up to the parties, either to agree to the form of the delivery up orders I should make, in which case I would be willing to make the orders in chambers; or for the parties to apply pursuant to a liberty to apply I proposed to grant for me to determine any dispute about the form of the delivery up orders, either on the papers or after an oral hearing.

    [1] C21 Pty Ltd (Trustee) v Hou (No 6) [2025] FedCFamC2G 927.

  2. The parties achieved a large measure of agreement as to the form of delivery up orders I should make; but they have asked me to determine on the papers the differences that remain. The parties have identified their differences by reference to a portion of the text of the proposed draft orders the applicant (RAMA) has submitted which the respondents submits should be removed. The parties have briefly set out in their proposed forms of order the reasons for which, in the case of RAMA, the portions the respondents seek to have removed from RAMA’s proposed form of orders should remain, and the reasons for which the respondents submit the portions should be removed.

    COMPETING PROPOSALS

  3. The most convenient way to proceed is to set out the forms of orders proposed by the applicant (RAMA), and identify the portions of RAMA proposed orders with which the respondents disagree:

    1.        In these orders:

    Downloaded Files means all or any of the files or part of the files that were the subject of the downloads specified in the log of the NAS server for 20 August 2021; the 43 downloads identified in the email Google sent to the first respondent at 11.36 pm on 22 August 2021; and the 2 downloads identified in the email Google sent to the first respondent at 6.22 pm on 15 September 2021 referred to in declaration 4(a) to (c) of the orders of the Court dated 123 June 2025 (Orders);

    Hibi Files means all or any of the Hibi Keycap Design template files or the data that constitutes part of the Hibi Keycap Design template files identified in columns 2 of Infringement Table 2 and Infringement Table 3 (including files that contain the Hibi Keycap Design template files or the data that constitutes those files, such as the Hibi Keycap Collaboration template files referred to in Column 3 of Infringement Table 3) of the Orders.

    2.Within 14 days of the date of the orders, but subject to any claim for privilege by the first respondent, the first respondent file and serve an affidavit in which the first respondent:

    a.identifies every device or devices the first and second respondents’ respondents control, or have access to:

    i.which the Downloaded Files were downloaded, uploaded, transferred, or copied to;

    ii.which contain any of the Hibi Files;

    b.identifies every device or devices the first and second respondents once controlled or had access to, but no longer control or have access to, to which (to the best of the first respondent’s belief and information):

    i.the Downloaded Files were downloaded, uploaded, transferred, or copied to;

    ii.contained any of the Hibi Files.;

    c.in relation to each of the devices identified pursuant to order 2(a) and (b), identifies each and every one or any part of one of the Downloaded Files that were downloaded, uploaded, transferred, or copied to and from the device and each and every one of the Hibi Files which the device contains or contained.

    3.Within 14 days of filing the above affidavit, each of the parties are to comply with the Delivery Up Protocol at Attachment 1 to these Orders.

    4.Prior to the commencement of the Delivery delivery Up Protocol, Rod McKemmish of Cyter and anyone assisting him in performing the tasks in the Delivery Up Protocol will give undertakings to the Court substantially in the form attached as Attachment 2 to these orders.

    Attachment 1 - Delivery Up Protocol

    1.This protocol concerns the removal and storage of the Downloaded Files and the Hibi Files from the devices which were identified in the affidavit of the first respondent filed pursuant to order [2] of the orders dated [insert date] (the Devices).

    2.The removal will be conducted by Rod McKemmish of Cyter (Expert). A copy of the orders dated [insert date] and this Delivery Up Protocol are to be provided to the Expert by joint communication from the Applicant and the Respondents.

    3.Within 14 days of the orders dated [insert date] or other time agreed by the Applicant and the Expert, the lawyers for the Respondents will arrange for the Devices to be delivered to offices nominated by the Expert in Melbourne, together with such usernames and passwords that are necessary to operate those Devices and any relevant cloud storage service accessible from the Devices. The Expert and anyone assisting him will treat those usernames and passwords as confidential to the Respondents.

    4.The Applicant and the Respondents are to send a joint communication to the Expert attaching the affidavit of the first respondent filed pursuant to order [2] of the orders dated [insert date].

    5.The Expert will locate each of the Downloaded Files and the Hibi Files on each of the Devices as identified in the affidavit referred to in paragraph 4 of this Protocol. The Expert will permanently remove those documents from the Devices and store them in a secure location as detailed in paragraph [6] below. The Expert will return the Devices to the lawyers for the Respondents as soon as practicable after the completion of the removal of the documents. If there is a telephone provided to the Expert, this device will be reviewed first and the telephone will be returned to the lawyers for the Respondents within twenty-four (24) hours of being delivered to the Expert.

    6.Having completed the removal of the Downloaded Files and the Hibi Files from each of the Devices, the Expert will store the documents:

    a.In a folder marked “CONFIDENTIAL SYG2055/2021 - C21 PTY LTD ATF THE RAMADAN FAMILY TRUST v KATE HOU & ANOR” on a separate external harddrive hard drive (which is not to be provided to any of the parties, or otherwise copied).;

    b.Until the final determination of any appeal in the proceedings.

    7.Within 14 days of the final determination of any appeal in the proceedings, the parties will prepare a joint correspondence to the Expert detailing what is to be done with the documents stored pursuant to paragraphs 5 and 6 above.

    8.The Expert’s reasonable fees are payable by the Respondents. The Expert must provide a quote of his anticipated fees before the commencement of any work pursuant to this Protocol.

    9.Any further instructions provided to Mr McKemmish in relation to the conduct of the Protocol must be in a form agreed between the parties in writing.

    10.The Expert must and will keep the usernames and passwords provided to him under paragraph 3 of this Protocol confidential, and must not either wilfully or recklessly allow the usernames and passwords to be disseminated to any other party, including but not limited to the Applicant and/or the Applicant’s lawyers.

    11.Either party may re-list the proceeding on 48 hours’ notice in writing to seek orders as to the implementation of, or variation of, this protocol.

    Attachment 2 – Expert Undertaking

    I, [the Expert or anyone assisting the Expert] will not, without the leave of the Court or the written agreement of the parties:-

    A.search any devices identified in the Delivery Up Protocol for files of file types other than the Downloaded Files or HIBI Files;

    B.disclose any of the username and password information received or obtained under the Protocol to the Applicant, its lawyers or any third party;

    C.disclose any information, documents or files obtained under the Delivery Up Protocol other than as permitted under the Delivery Up Protocol;

    D.use any information, document or thing obtained as a result of the examination conducted under the Delivery Up Protocol for any purpose and/or proceeding other than this proceeding.

  4. It will be seen that the difference of substance relates to the definition of “Hibi Files”. More particularly, the difference appears to arise from the inclusion in the RAMA version of the proposed orders the words “or the data that constitutes those files”. The respondents submit that RAMA’s definition:

    would potentially capture every single file and byte of information used in the Template filed [sic]. Practically speaking, this could include the font and size of the font used in the Template Files as well as other system-type files that are common to every electronic device and operating system in use. The infringed files are clearly specified in the Orders and the Reasons and it is not necessary, nor does it appear to be sensible to include any metric broader than what is already specified

  5. RAMA, on the other hand, submits that its proposed definition:

    is appropriate as it ensures that any file which contains information copied from or contains the Hibi Keycap Design template files is captured. As the trial finished in September 2023, it is possible that further template files have been created other than those specified in Infringement Table 2 and 3

    DETERMINATION

  6. It appears that the concern RAMA’s proposed definition of “Hibi files” is intended to address is the use of data that is contained in the files identified in Infringement Tables 2 and 3 of the orders I made on 13 June 2025 to create new template files. That concern, however, seeks to capture the potential creation of files and data that are not the subject of the findings I made in the reasons for judgment I published on 4 April 2025 and 13 June 2025, and may otherwise be outside the scope of the issues the parties litigated. For that reason, I consider that RAMA’s proposed definition is too wide.

  7. In my reasons for judgment published on 13 June 2025, I referred to my having drafted a form of delivery up order which, if complied with, Ms Hou would identify the files which contain the data that constitute each of the HIBI Keycap Design and Collaboration templates, and deliver up those files for destruction. I remain of the opinion that this should be the object of any final delivery up orders I should make; and I am satisfied that the respondents’ proposed draft of the delivery up order, if made and complied with, would give effect to that object.

  8. I propose, therefore, to make orders substantially in terms of the orders proposed by the respondents.

I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis.

Associate:

Dated:       14 August 2025


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C21 Pty Ltd (Trustee) v Hou (No 6) [2025] FedCFamC2G 927