Global Consulting Group Pty Ltd v Kalabric

JUDGMENT No. LCZL.",l Lf zic

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY )

No. NG 696 of 1995

GENERAL DIVISION

Between:

GLOBAL CONSULTING GROUP P/L

Applicant

And :

JOHN m R I C

Respondent

2 8 J A N 2003

REASONS FOR JUDGMENT

EINPELD J

SYDNEY

8 SEPTEMBER 1993

I propose to make an order, though not at the moment, which will

give the applicant either precisely what it seeks or the opportunity to have the things that it seeks whilst allowing the respondent also to have access to them. I have not decided which approach is appropriate because I do not understand, and there is no evidence, whether that is even possible, and I do not want to impose it as an order without hearing the parties.

The matter will stand down until 2.30 p.m. at which time I will want to hear the parties on the undertakings each is prepared to give. They should be in writing. On a prima facie basis and at an interlocutory urgent stage, and on that basis alone, I make the finding that the applicant is entitled to the items which it seeks.

I shall give some further reasons for this later on if necessary

but it will suffice to say for the moment that I accept the

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argument of the respondent that if he is also using these items of intellectual property for his own business, he should be given the opportunity to seek to secure continuing access to them so that the applicant does not have exclusive access. That is not something as yet that the respondent has applied for in any formal sense but it certainly is implied in the affidavit. In the shortness of time involved I would not hold the respondent at fault because the affidavit is fairly brief and there has been no opportunity to consider alternative approaches to the matter.

At the same time, for the purposes of argument at least, I also accept the applicant's position that if the respondent continues to have access to these items of property, there should be a limit on the use that he can make of them pending the hearing, so that there should be undertakings, similar to those offered by the applicant, that whatever use is made of them is accountable and can be brought to account at the hearing.

I also agree that this hearing should be brought on at the

earliest possible time. The parties should therefore give consideration to a timetable for the preparation of the matter that will be discussed when the matter resumes this afternoon with a view to my fixing the matter for hearing at the earliest possible date. The only other observation I make for now is that, at the end of the day, this is a commercial matter and not a personal bun fight. It will cost the parties considerable moneys to conduct a full-fledged piece of litigation. They should give consideration to putting those moneys to the early

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final resolution of this dispute. It is quite obvious to me that the Court could not make a final decision without expert evidence, and if the parties do not offer expert evidence, the Court will have to bring in its own experts because it is not something which a judge in the ordinary course of events would entirely understand. Because this will be expensive, I think that in the time between now and the resumption of the case, it is desirable that at least the lawyers should commence a discussion designed to direct the funds of the parties away from the legal process and towards a commercial settlement.

The majority of cases that come before the Court are settled. That does not indicate that people make concessions or give up or are overborne by the other side, but because they make the commercial judgment that it is better to spend their moneys on themselves and their own futures, perhaps their family's futures, than it is to spend it on the families or futures of lawyers. I therefore recommend that before the matter gets too enmeshed in the hands of the legal process, the parties take a step back from the heat of the battle and see if it is not possible, with the assistance of the lawyers, to find a resolution of the matter. The matter will resume at 2.30 pm.

Global Consulting Group Pty Ltd sought to obtain certain items of intellectual property from John Kalabric, who had previously been an employee of the company. The Federal Court of Australia was tasked with resolving the dispute over ownership and access to these intellectual property items. The primary legal issues before the Court were whether Global Consulting Group was entitled to the intellectual property items and, if so, whether Kalabric should also be granted access to these items for his own business purposes.

The Court found that Global Consulting Group was prima facie entitled to the items it sought. However, the Court recognised that Kalabric, if also using these items for his own business, should have the opportunity to secure continuing access to them. The Court did not want to impose an order without hearing the parties and understanding the possibility of concurrent access. The Court also agreed that there should be limits on Kalabric's use of the intellectual property items pending the hearing, with both parties providing undertakings regarding the accountability of the items' use. The Court emphasised the commercial nature of the dispute and encouraged the parties to consider a commercial settlement rather than proceeding with litigation.

The Court scheduled a continuation of the case for later in the day to hear the parties' written undertakings and to discuss a timetable for the preparation of the matter. The Court stressed the importance of resolving the dispute early to avoid excessive legal costs. The Court's final orders were to be determined based on the outcome of the afternoon hearing and the parties' written undertakings.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established