FEDERAL MAGISTRATES COURT OF AUSTRALIA
| EBET LTD & ORS v FOLINO | [2012] FMCA 675 |
| COPYRIGHT – Urgent ex parte application supported by affidavits for orders to restrain the Respondent from reproducing the whole or part of, and making or authorising an adaption of the Applicants’ software – The Applicants’ software was in the possession and custody of the Respondent. PRACTICE & PROCEDURE – Amended Application in a Case seeking to have previous interlocutory and interim orders made in the proceedings vacated – Amended Application dismissed. |
| Copyright Act 1968 (Cth), s.31 Federal Court Rules 1979 (Cth) |
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- AGLC
- eBet Ltd v Folino [2012] FMCA 675
- Case
- [2012] FMCA 675
- Decision Date
CaseChat Overview and Summary
The legal issues before the court involved determining whether Folino had indeed infringed the copyright of the applicants by reproducing or adapting the Cashier Module and the Membership Module, and whether Folino had breached his duty of confidentiality by using or disclosing confidential information. Additionally, the court needed to decide on the appropriate relief and interim measures that should be granted to the applicants pending the final resolution of the case.
The court analysed the evidence presented by the applicants, including affidavits and expert testimony, to determine the likelihood of success on the merits of the case. It was established that Folino had access to the copyrighted modules and the confidential information while employed by eBet and continued to use and disclose this information post-employment. Given the strong prima facie case presented, the court granted the applicants the procedural and interim orders they sought, including restraining Folino from using or disclosing the confidential information and from reproducing or adapting the modules. The court also ordered Folino to provide access to relevant electronic material and to deliver up copies of the modules and confidential information. The detailed and compelling evidence presented by the applicants led the court to conclude that the applicants were likely to succeed on the merits of the case.
The court granted the applicants the procedural and interim orders they sought, including restraining the respondent from using or disclosing the confidential information and from reproducing or adapting the modules. The court also ordered the respondent to provide access to relevant electronic material and to deliver up copies of the modules and confidential information. The matter was stood over for further hearing to determine the final orders and relief to be granted to the applicants.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
On 24 March 2011, the applicants, eBet Ltd, eBet Systems Pty Ltd and eBet Gaming Systems Pty Ltd, (collectively, “eBet”) filed an application with this court seeking relief under the Copyright Act 1968 (Cth) (the “Copyright Act”) against the respondent, Sam Folino. eBet sought the following final orders and declarations:Declarations1. A declaration that the respondent has infringed the second applicant’s copyright in:a. the Cashier Module; and/orb. the Membership Modulebyc. reproducing the whole or a substantial part of;d. making one or more adaptations of;e. authorising the reproduction of a whole or substantial part of; and/orf. authorising an adaptation of,the Cashier Module and/or the Membership Module.2. A declaration that the respondent has breached his duty of confidentiality to each of the applicants by:a. using; and/orb. disclosing,some or all of the Confidential Information without the consent of the applicants or any of them.Final Injunctions3. The respondent, whether by himself, its servant, agents or otherwise, be permanently restrained from:a. reproducing the whole or a substantial part;b. making any adaptation;c. authorising the reproduction of the whole or a substantial part of; andd. authorising an adaptation,of the Cashier Module and Membership Module, without the prior written license of the applicants.4. The respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from:a. using; andb. disclosing,the Confidential Information without the consent of the applicants.Compensation, damages or account profits5. An order for equitable compensation or alternatively, at the election of the applicants, an account of profits, for breach of confidence.6. An order for damages for breach of contract.7. An order for damages pursuant to s 115(2) of the Act or alternatively, at the election of the second applicant, an account of profits.8. An order for damages pursuant to s 115(4) of the Act.9. An order for damages pursuant to s 116(1) of the Act.Other ordersInterest pursuant to s 76 of the Federal Magistrates Court Act 1999 (Cth).11. Costs.Such further or other orders or relief as the Court sees fit. EBet also sought a number of procedural and interim orders on their application as follows:Procedural orders1. Leave be granted to the applicants to file in Court the:a. application dated 24 March 2011 (Application);b. affidavit of Tommy Wayne Powers sworn 18 March 2011;c. affidavit of Alexander Francis Parle affirmed 22 March 2011;d. affidavit of Ian Frederick Madden affirmed 22 March 2011;e. affidavit of Anthony Peter Toohey sworn 23 March 2011;f. affidavit of David James Greenslade sworn 23 March 2011; andg. affidavit of Rodney David McKemmish sworn 23 March 2011.(the affidavits in b. to g. above collectively referred to as the Affidavits)2. The time for service of the Application be abridged to … am/pm on … March 2011.3. Service of the Application and Affidavits be effected on the respondent by:a. (other than confidential exhibit “IFM-1”) hand delivery to ‘Etienne Lawyers, Level 56, MLC Centre 19 – 26 Martin Place, Sydney, New South Wales’; orb. (other than exhibits to the Affidavits) email to ‘sbrown@etiennelaw.com’; orc. (other than exhibits to the Affidavits) email to ‘samfl@bigpond.com’.4. The proceeding be stood over until … 2011 for hearing of the Applicant’s application for interlocutory relief.Interim orderUpon the applicants giving the usual undertaking as to damages, order that:5. Until further order, the respondent, whether by himself, his servants, agents or otherwise, be restrained from:a. removing any computer or electronic device storage device from his possession, custody or control whether located at [Kiama Downs, New South Wales] or elsewhere;b. deleting or causing to be deleted any data on any computer or electronic storage device in his possession, custody or control; andc. taking any step or causing any step to be taken which is likely to impede the recovery of any such data.Other Interim and interlocutory ordersUpon the applicants giving the usual undertaking as to damages, order that:6. Until determination of this proceeding or further order, the respondent, whether by himself, his servants, agents or otherwise, be restrained from:a. reproducing the whole or a substantial part;b. making any adaptation;c. authorising the reproduction of the whole or a substantial part; andd. authorising an adaptation,of the Cashier Module and the Membership Module, without the express licence of the applicants given after this order is made.7. Until determination of this proceeding or further order, the respondent, whether by himself, his servants, agents or otherwise, be restrained from:a. using; andb. disclosing,the Confidential Information without the express consent of the applicants given after this order is made.8. The respondent provide an officer of the applicants, the applicant’s solicitor and the applicant’s computer expert, Rodney McKemmish, with access within 2 days of the making of this Order, between the hours of 9am and 6pm, access to:a. any computer in the respondent’s possession, custody or control which has been used by the respondent in the period 2000 to date; andb. any data storage device in the respondent’s possession, custody or control which has been accessed or used by him since 2000 (a. and b. collectively referred to as the Electronic Material),such access being sufficient to enable those representatives of the applicants to inspect and observe the Electronic Material and to allow Rodney McKemmish to copy any Electronic Material, including by taking or having a forensic image of the Electronic Material, in so far as it is relevant to the Cashier Module, the Membership Module or the Confidential Information (with all such copies to be held by Rodney McKemmish for the purposes of enabling him to prepare the evidence he is to give on behalf of the applicants).9. By 6pm on Thursday 31 March 2011, the respondent deliver up to Samaha & Associates (attention: Denes Blazer) or such other party as is nominated by the applicants, all copies in his possession, custody or control of:a. the Membership Module;b. the Cashier Module; andc. the Confidential Information.10. The respondent make, file and serve on the applicants by 4pm on __ March 2011, an affidavit duly sworn or affirmed by him stating, to the best of his knowledge and belief and upon reasonable enquiry:a. that:i. all information and items the subject of order 8 have been delivered up in accordance with that order; andii. to the extent they have not been so delivered up, what has become of them.b. providing a list and comprehensive description of all versions and copies of the Membership Module, the Cashier Module and the Confidential Information in his possession, custody or control as at the date of this order; andc. in respect of all such versions and copies:i. its location;ii. the circumstances (including the date and manner) in which it came into his possession or control;iii. the circumstances in which and purpose for which the respondent has had access to it at any time since June 2003;iv. the use to which it has been put;v. the identity and address of each person who, or entity that, has had access to it or received a copy of it or to whom it has been disclosed; andvi. the circumstances in which and purpose for which each such access disclosure or receipt occurred.11. Costs.12. Such further or other orders as the Court sees fit.