Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd

[1989] FCA 310

IN THE FEDERAL COURT OF AUSTRALIA	)
QUEENSLAND DISTRICT REGISTRY	1 QLD G334 of 1988

GENERAL DIVISION )

BETWEEN:  GREENFIELD PRODUCTS PTY LTD

Applicant

AND :  ROVER-SCOTT BONNAR LIMITED

First Respondent

AND :  GARRY THORNTON

Second Respondent

AND :  GEOFFREY JAMES MCGRATH

Thlrd Respondent

AND :  KENNETH CORDON SCHRODER

Fourth Respondent

AND:  ROSS WATKINS

Fifth Respondent

AND :  DAVID ROSSBROOK

Sixth Respondent

AND :  JOHN KILLER

Seventh Respondent

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MINUTES OF ORDER

required;

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JUDGE HAKING ORDER:	PINCUS J.	- A	19 d a ~ \	, , . d .	-!
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\ FccI-, ,. r r -2- OF

DATE OF ORDER:  8 JUNE 1989

WHERE M D E : BRISBANE

THE COURT DIRECTS THAT:

1.     M.F.I. 1 be remarked to become exhibit 1;

2.    exhibit 1 be returned to Mr Bayliss on the undertaking that he will restore it to the Court if

3, the documents contained in exhibit 1 may be inspected on the usual basis.

THE COURT ORDERS THAT:

4.    the costs of the affidavit of Mr Zandegiocomo, document 29, and Mr Chaseling, documents 39 and 41, plus the costs of the hearing on 1 June 1989 be taxed and paid by the respondents to the applicant; those costs not to be taxed until further order.

NOTE :  Settlement and entry of orders is dealt with in
Ordec 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA	)
QUEENSLAND DISTRICT REGISTRY	1 QLD G334 of 1988
GENERAL DIVISION	)

BETWEEN:  GREENFIELD PRODUCTS PTY LTD

Applicant

AND:  ROVER-SCOTT BONNAR LIMITED

First Respondent

AND:  BARRY THORNTON

Second Respondent

AND :  GEOFFREY JAMES McGRATH

Third Respondent

AND:  KENNETH GORDON SCHRODER

Fourth Respondent

AND :  ROSS WATKINS

Fifth Respondent

AND :  DAVID ROSSBROOK

Sixth Respondent

AND:  JOHN KILLER

Seventh Respondent

PINCUS J. 8 JUNE 1989

EX TEMPORE REASONS FOR JUDGMENT

This is a matter in which, on 1 June 1989, counsel for
the parties argued a question of discovery. More specifically, it

was contended on behalf of the respondents, represented by Hr Morris, that, in accordance with a claim made in an affidavit of Mr Zandegiocomo, the right of the applicant to inspect certain documents should be limited. Mr Morris also suggested that since there was a dispute about the extent to which the documents were, in truth, confidential, I should appoint an independent person to examine that question. I declined to do so and said that I would endeavour to form an opinion myself by inspecting the documents. They were produced and became MFI 1.

The affidavit of Mr Zandegiocomo deals with all the documents which were produced. The answering affidavit of Mr Chaseling does not do so. I am not quite certain why that is, and before stating my conclusions, I thought I should raise that with the parties' representatives today.

[Discussion not transcribed]

Having resolved that point - that is, having reconfirmed
my impression that the status of all of the documents in MFI 1 was

in question, I will proceed. Firstly, I direct that MFI 1 be

remarked, so that it becomes exhibit 1.

The foundation of the ob~ection, which was raised by Nr

Morris on behalf of the respondents is, to put it generally, that the information contained in the dotuments is of value and that its disclosure would unfairly enable the applicant to obtain unwarranted benefit from discovery - for example, to secure commercial or engineering information which the applicant could

otherwise obtain only by expenditure of substantial effort, i f
indeed i t could obtain such information at all.

MC Zandegiocomo's affidavit explains that he is the first respondent's manufacturing manager and he sets out the basis of the claims of confidentiality, which are not accepted by the applicant. Mr Chaseling's affidavit is a little unsatisfactory, since it appears to have been made at a time when he did not have the documents before him.

".L _ T C ~ ~ V I I S which I am giving will not deal with the

documents comprehensively - it does not seem practical to do so - but it is necessary to condescend to some detail in explanation of my conclusion.

An example of the problem is provided by document no. 46, for which confidentiality is claimed on a basis I shall mention. That is a copy of an order for 10 tins of "Never-seez anti-seize" at a price of $15.80 The order is from the first respondent and is addressed to Consolidated Bearing Co., Links Avenue, Eagle Farm. Confidentality is claimed in respect of "the

name of the Supplier, the price at which the article was	purchased, and the quantity in which it was purchased".
It is not suggested that the availability of the substance or its suitability as a lubricant is a secret. I am, however, asked to accept that the fact that Consolidated Bearing Co. sells this lubricant is confidential, the fact that it would

once sell it for $15.80 is confidential, and the iact that 10 tins
of it were ordered in 1985 is confidential.

In my opinion, these claims bear, on the face of them, the appearance of frivolity. I am not prepared to believe that it could do damage to the respondents to have the applicant know, for example, that 10 tins rather than 100 tins or one tin were bought.

No doubt the claims to keep discovered material confidential depend on questions of degree. In any litiqatizn between business competitors over matters of common interest, each might be best suited by disclosing nothing about its business, except what is publicly known or already disclosed. Not all such matters, however, are confidential and entitled to speclal protection from the Court. These documents are prlma facie relevant to the case. They have been discovered as such. There must therefore be some particular reason for preventing the party to whom discovery is made from having inspection in the ordinary way. There must be something more than the preference of the discovering party - see e.g. Adsteam Building Industries P t y Limited v. Queensland Cement and Lime Company Limited (No. 2)

it appears that a valuable secret process may be disclosed	(1984) 2 Qd.R. 366. Sometimes special protection is given where
(British Thomson-Houston Company Ld v. Duram Ld (No. 2) 37 R.P.C. 121). In my opinion, nothing of that sort is involved here. ~t seems to me that the claims to keep documents confidential qo beyond the bounds of what is permitted by law.
I think I should mention another specific example. The affidavit relied on by the respondent says:

"Documents numbered 15, 16 and 17 are further documents being a bill of quantities, steering gear and pinion calculations and handvritten notes of things to do in respect of that particular product .

Put together, these documents contain both design and detail information for the production of an as yet unproduced ride on mover."

1t is significant that Mr Zandegiocomo, who does not claim to have engineering quaiifications, does not say in the affidavit that all or any of the information lust mentioned is secret in the sense of being of particular commercial value. If one looks at the documents, it seems unlikely, on the face of it, that they are in essence secret. In document number 15, one is told, for example, that to produce the mower in question it is necessary to have a clutch housing assembly, two clutch housing sub-assemblies, and three clutch housings: part numbers are given. If someone wanted to make a mower exactly the same as the one contemplated by documents 15, 16 and 17, access to those documents might save him making his own lists, but it is not really suggested that the list

heading of "Things to Do" has 12 items, of which number 4 1s	is sensitive information. Document 17, for example, under the	"mudguard labels," and number 8 is "footrest rubbers"; again, the claim to confidentiality seems to me to lack sufficient substance.
I can see that a list even of information of an apparently mundane nature may in special circumstances give information of a secret kind and significant commercial value,
read as a whole, but relying in part on the lmpresslon I have gained that the respondents' claims have been made by Mr Zandeglocomo without taking meticulous care to confine them to truly sensitive information, I have come to the positlon where I am not satisfied that any of the clalms are made out.

I have derived some, although not great, assistance from

the fact that as to certain documents Mr Chaseling has given his opinion that calculations and other information in them are not of a confidential kind from an engineering point of view. It should be added that, as a matter of law, there is an implicit undertaking on discovery that the documents inspected and the information contained in them can be used only for the purposes of these proceedings and not for any other purpose. I am sure that those representing the applicant will have and will again draw their client's attention to that point. For example, it would be a breach of the obligation of confidentiality arising by virtue of this suit for the applicant to use documents obtalned on inspection to assist in any manufacturing business of its own, for example, by producing for sale parts shown in documents ~nspected

in the course of the proceedings.

I should perhaps add that the questlon of the relevance of the documents is not in issue before me. I am a little puzzled as to the relevance of some of them, but that point was not debated and was indeed conceded by their inclusion in the list of discovered documents. I have been concerned only with the question of confidentiality and I have decided against the respondents and in favour of the applicant.

I direct that the documents contained in exhlbit 1 may be inspected on the usual basis. I will order that the costs of the affidavits of Mr Zandegiocomo, document 29, and Nr Chaseling, documents 39 and 41, plus half the costs of the hearing of 1 June 1989 be taxed and paid by the respondents to the applicant. I will add that these costs are not to be taxed until further order, so that it would be contemplated they would not be taxed until the case is over or it settles.

I c a r t i f y that t h i l a n d t h e s i r pr.c.dinq p.q.9 a r .

t r u e copy of th. reamens f o r j u d g m e n t h e r e i n ~ f

HI. Honour Hr Justlc. Plncus /*/ il