Feature Australia Pty Ltd v International Stage Lines
[2003] WASC 135
FEATURE AUSTRALIA PTY LTD -v- INTERNATIONAL STAGE LINES [2003] WASC 135
| SUPREME COURT OF WESTERN AUSTRALIA | Citation No: | [2003] WASC 135 | |
| Case No: | CIV:1376/2003 | 15 JULY 2003 | |
| Coram: | MASTER NEWNES | 22/07/03 | |
| 6 | Judgment Part: | 1 of 1 | |
| Result: | Application dismissed | ||
| B | |||
| PDF Version |
| Parties: | FEATURE AUSTRALIA PTY LTD (ACN 009 449 003) INTERNATIONAL STAGE LINES (ABN 15 425 560 808) |
Catchwords: | Practice and procedure Application for pre-action discovery Evidence required Turns on own facts |
Legislation: | Copyright Act 1968 (Cth), s 35(2) Rules of the Supreme Court, O 26A r 4 |
Case References: | Central Exchange Ltd v Anaconda Nickel Ltd [2002] 26 WAR 33 McCarthy v Dolpag Pty Ltd [2000] WASCA 106 Nil |
JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
- IN CHAMBERS
- Applicant
AND
INTERNATIONAL STAGE LINES (ABN 15 425 560 808)
Respondent
Catchwords:
Practice and procedure - Application for pre-action discovery - Evidence required - Turns on own facts
Legislation:
Copyright Act 1968 (Cth), s 35(2)
Rules of the Supreme Court, O 26A r 4
Result:
Application dismissed
(Page 2)
Category: B
Representation:
Counsel:
Applicant : Mr J Eastoe
Respondent : Mr T T S Chin
Solicitors:
Applicant : Jonathan Eastoe
Respondent : Taylor Smart
Case(s) referred to in judgment(s):
Central Exchange Ltd v Anaconda Nickel Ltd [2002] 26 WAR 33
McCarthy v Dolpag Pty Ltd [2000] WASCA 106
Case(s) also cited:
Nil
(Page 3)
1 MASTER NEWNES: This is an application for pre-action discovery against the respondent under O 26A r 4 of the Rules of the Supreme Court. It is supported by an affidavit of the chief executive officer of the applicant, Emmanuel Michael Papadoulis, sworn on 1 April 2003.
2 The applicant and the respondent are business competitors. Both carry on business as coach charter tour operators. They comprise two of the four major coach charter tour operators in Western Australia.
3 In his affidavit, Mr Papadoulis says that approximately 11 years ago the applicant engaged a computer programmer, one Brett Riddle, to develop a software programme for a computerised booking system for the applicant's business. The programme that was developed is known as "COBS". Mr Papadoulis says that approximately two years ago the COBS programme was "completely rewritten and updated" by another computer programmer, Carl Williams ("Mr Williams"), for the applicant.
4 Although the precise period of his employment is in dispute, it is common ground that one Charles Marks was for several years the operations manager of the applicant. Following his resignation in late 2001 or early 2002 (the precise date is disputed), Mr Marks was appointed the general manager of the respondent.
5 According to Mr Papadoulis, on 26 February 2003 he had occasion to visit the respondent's offices. In the course of his visit, he spoke to Mr Marks and noticed, prominently displayed on the wall of Mr Marks' office, a roster of coach movements for the day which appeared to be identical to the rosters generated by the COBS programmed. Mr Papadoulis says he was hurried out of the office by Mr Marks and he did not ask Mr Marks about the origin of the roster or whether the respondent was using the COBS programme. Mr Papadoulis says he did not do so because he first wanted to get legal advice on the matter and also because he was concerned that if he raised the issue, any relevant records might be destroyed.
6 Mr Papadoulis says he has been advised by his solicitor that, under O 26A, an applicant is required to make reasonable inquiries before seeking an order for discovery. He goes on to say that the only means of ascertaining whether or not the respondent is, or has been, using the COBS programme would be to ask officers of the respondent. He is concerned that, if he were to do that, relevant documents might be destroyed by the respondent. Accordingly, no such inquiries were made before this application was instituted.
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7 The application is opposed by the respondent and an affidavit of Mr Marks, sworn on 28 May 2003, has been filed on its behalf.
8 Mr Marks disputes a number of the statements made by Mr Papadoulis, but it is unnecessary to canvass those issues. Relevantly for present purposes, Mr Marks says that after he joined the respondent he wrote to Mr Williams to explore the possibility of Mr Williams creating a computer programme for the respondent for allocating rosters for drivers, making bookings and associated purposes. A copy of Mr Marks' letter to Mr Williams is annexed to his affidavit.
9 Mr Williams subsequently created for the respondent a programme that Mr Williams described to Mr Marks as being similar to the COBS programme. Mr Williams told Mr Marks that he (Mr Williams) had not granted the applicant exclusive rights to the COBS programme when he created it. Mr Williams charged the respondent $4400 for creating the new programme.
10 Mr Marks denies that he hurried Mr Papadoulis out of his office on the occasion of the visit of 26 February 2003 and says that if Mr Papadoulis had asked him about the programme he would have explained that Mr Williams had created it for the respondent.
11 This application has been brought by the applicant on the basis that it may have a cause of action against the respondent for infringement of the applicant's copyright in the COBS programme, but that a decision cannot be made on whether to bring such a claim until the applicant has been able to compare the respondent's programme with the COBS programme.
12 It is clear that, on an application of this sort, an order for discovery is not there simply for the asking. In McCarthy v Dolpag Pty Ltd [2000] WASCA 106 at [13] Anderson and Scott JJ said:
"There is no doubt that caution must be exercised before making an order and that such orders should not be made as a matter of course. They should only be made when reasonably necessary to achieve the proper administration of justice: Tipperary Developments Pty Ltd v Western Australia [1999] WASC 62; (1999) 21 WAR 250, per Parker J at 24; O'Sullivan v Herdmans Ltd [1987] 3 All ER 129 at 135 - 6. It must be remembered that discovery 'constitutes a very serious invasion of privacy and confidentiality [and] the process should not be allowed to place upon a litigant any harsher or more oppressive burden than is strictly required': Harman v Secretary of State
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- for the Home Department [1983] 1 AC 280 at 308 per Lord Keith of Kinkel; and this is a fortiori the position where the discovery is sought before action and is for the purpose of determining whether or not there is an issue to litigate."
- See also Central Exchange Ltd v Anaconda Nickel Ltd [2002] 26 WAR 33 at 56 - 57.
13 An applicant must then adduce evidence that points sufficiently to the existence of a cause of action that would make it appropriate in the interests of the proper administration of justice that the respondent be put to the trouble, and have to undergo the intrusion into its affairs, which an order of this sort involves.
14 As I have said, the cause of action that the applicant says it may have is an action for infringement of copyright in the COBS programme. There is, however, nothing in the evidence before me that suggests the applicant has copyright in the COBS programme.
15 Under the Copyright Act 1968 (Cth), computer programmes are protected as literary works. Pursuant to s 35(2) of the Act, subject to certain exceptions the copyright in a literary work vests in the author. The exceptions include where the literary work was made by the author pursuant to the terms of their contract of employment by another person under a contract of service or apprenticeship, in which case copyright vests in the employer, and subject to any agreement made between the author and another person.
16 The applicant does not say that either the author of the original COBS programme, Mr Riddle, or the author of the "rewritten" programme, Mr Williams, was an employee of the applicant. On such evidence as there is, it is, I think, to be inferred that they were independent contractors. There is no suggestion of any agreement between either of them and the applicant which vested the copyright in the COBS programme in the applicant. Mr Papadoulis does not assert any claim by the respondent to copyright in the COBS programme. The evidence before me, so far it goes, is to the contrary.
17 The question of whether or not the applicant has copyright in the COBS programme is obviously not something in respect of which the applicant seeks the benefit of discovery on this application. The starting point, at least, for that enquiry is, or should be, the applicant's own records. In fact, counsel for the applicant frankly conceded that the
(Page 6)
- applicant had not yet turned its attention to the question of whether or not it owned the copyright in the COBS programme.
18 The explanation for that rather startling admission is, as explained by the applicant's counsel, that this application was instituted in the belief that the respondent was using the COBS programme itself, having obtained it from Mr Marks, and that the applicant may therefore have a cause of action based upon breach of confidence or breach of fiduciary duty. Having subsequently seen Mr Marks' affidavit, the applicant was satisfied that no such claim could be made out and the infringement of copyright ground was then raised.
19 In the circumstances, I am not satisfied that the applicant has established the necessary foundation for the order sought. The first step in doing so would be to establish some basis upon which the applicant might be entitled to copyright in the COBS programme. The evidence on this application not only fails to do that, but, on the contrary, tends to demonstrate that the applicant does not have that copyright. I am not, therefore, satisfied that the applicant "may" have a cause of action within the meaning of O 26A r 4 and on that basis would dismiss the application.
20 In light of that it is unnecessary for me to consider the respondent's contention that the application must fail because the applicant has failed to satisfy a precondition of such an application, namely, to make "reasonable inquiries" before making the application.
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