Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd (No 3)
[2025] FedCFamC2G 565
•17 April 2025
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd (No 3) [2025] FedCFamC2G 565
File number(s): MLG 938 of 2024 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 17 April 2025 Catchwords: INTELLECTUAL PROPERTY – Practice and procedure – application for access to unredacted versions of redacted documents that had been inadvertently included in a list of documents filed pursuant to discovery order – whether documents relevant to issues arising on the pleadings – not relevant because the unredacted portion of the documents is sought to investigate matters that are not currently in issue between the parties.
INTELLECTUAL PROPERTY – Practice and procedure - discovery - pursuant to discovery order respondents disclosed documents some of which were in native format (Native Format Documents) by converting them into PDF format and producing to the applicant the PDF format of the Native Format Documents – whether the respondent ought to produce the Native Format Documents to the applicants in native format – respondents ordered to do so.
INTELLECTUAL PROPERTY – Practice and procedure – application for leave to file an amended statement of claim – whether proposed amendments plead material facts -application dismissed.
Legislation: Acts Interpretation Act 1901 (Cth) s 2B
Federal Circuit and Family Court of Australia (Division 2) (General Federal Rules) 2021 (Cth) rr 14.02, 14.04
Federal Court Rules 2011 (Cth) r 20.14
Cases cited: Bureau Proberts Pty Ltd v Cottee Parker Architects Pty Ltd [2023] FedCFamC2G 409
DHR International, Inc. v Challis (No. 2) [2015] NSWSC 1964
Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd (No 2) [2024] FedCFamC2G 1024
Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd [2024] FedCFamC2G 931
Hartnett Legal Services Pty Ltd v Ballantyne [2016] FCA 1116
Jarra Creek Central Packing Shed Pty Ltd v Amcor Limited [2006] FCA 1802
Division: General Number of paragraphs: 71 Date of hearing: 12 March 2025 Place: Sydney Counsel for the Applicant: Mr M Fleming Solicitor for the Applicant: K & L Gates Counsel for the Respondents: Mr S Hallahan Solicitor for the Respondents: Hazan Hollander Solicitors ORDERS
MLG 938 of 2024 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: HAMLAN HOMES PTY LTD TRADING AS HAMLAN HOMES AND GEELONG HOMES
Applicant
AND: LEVONIX HOMES PTY LTD ACN 168777384
First Respondent
ZACHARY RAMSEY
Second Respondent
JENNIFER RAMSEY
Third Respondent
ORDER MADE BY:
JUDGE MANOUSARIDIS
DATE OF ORDER:
11 APRIL 2025
THE COURT ORDERS THAT:
1.The applicant’s:
(a)application for an order that the respondents provide to the applicant unredacted and complete copies of documents LEV.007.001.0109, LEV.007.001.0111, LEV.007.001.0112, LEV.007.001.0120, LEV.007.001.0160, LEV.007.001.0118, LEV.007.001.0092, LEV.007.001.0100 and LEV.007.001.0116; and
(b)application for leave to file an amended statement of claim in the form of the draft amended statement of claim annexed to the affidavit of Anthony Brooke Watson made on 18 February 2025,
are dismissed.
2.Pursuant to r 14.04 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Rules) 2021 (Cth), by 8 May 2025 the first respondent produce to the applicant such of the documents listed in Part 1A and Part 1B of the first respondent’s list of documents as the respondents gave to their lawyers in native format, and which the respondents’ lawyers gave to iCourts for uploading to iCourts’s Nuix eDiscovery platform, such production to be effected in a manner agreed between the parties.
3.The costs of the applications in response to which orders 1 and 2 are made are reserved.
4.The matter be listed for a directions hearing at 9.30 am on 15 May 2025.
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
In these reasons for judgement I consider a number of interlocutory disputes that have arisen between the parties.
DISCOVERY ORDER
The first set of disputes arises from the order for discovery I made on 11 October 2024 (Discovery Order).[1] And there are two disputes.
[1] Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd (No 2) [2024] FedCFamC2G 1024
Provision of unredacted copies
The first relates to whether I should order the respondents to provide in unredacted form eight documents (Documents) the respondents discovered but had produced to the applicant (Hamlan) in redacted form.
The respondents do not contend they are entitled to produce documents they are liable to disclose under the Discovery Order in a redacted form; they submit they disclosed the Documents in error because the Documents should have been marked as “not relevant”. The respondents support this contention with an affidavit made by their lawyer, Mr Whitehead.[2] Hamlan, for its part, does not dispute Mr Whitehead’s evidence that the respondents disclosed the Documents in error. Hamlan instead submits the Documents are relevant.
[2] P Whitehead 18.02.2025, [16]
The question, then, is whether Hamlan was obliged to disclose the Documents pursuant to the Discovery Order; and to be in a position to determine that question, it is necessary to describe the Documents, and set out the submissions the parties have made about their relevance.
The Documents
LEV.007.001.0112, LEV.007.001.0111, LEV.007.001.0109 and LEV.007.001.0120
Mr Watson, a partner of the law firm acting for Hamlan, deposes as follows:
(a)Document LEV.007.001.0112 is an email sent to the second respondent, Mr Ramsey, requesting a quote from the first respondent (LHPL).[3] The sender’s name and address, and the names of the relevant client and property are redacted. The subject of the email is “Ninedots – First Quote Request”.[4]
(b)Document LEV.007.001.0112 attaches a hand drawn sketch, identified as LEV.007.001.0108, and a “quote request” (LEV.007.001.0109). [5] Mr Watson believes the email that is document LEV.007.001.0112 was sent by a director or employee of “Nine Dots”, being an adviser to homeowners in negotiating contracts to buy land and to build a home on the land. Mr Watson further says that, based on the documents the respondents have discovered, Nine Dots has acted in such a role in relation to several homes that are the subject of the claims in this proceeding.
(c)Document LEV.007.001.0120 is an email Mr Ramsey sent on 23 October 2019 to a person whose name is redacted about a subject that is redacted. [6] It attaches “Contract Drawing Sketch 1st version.pdf”. The email states that the “sketch is pretty basic”, and that “[f]rom here we go to a full contract drawing which will include full dimensions/elevations”, but before “we proceed to that we just like to make sure the owners are happy with the layout”. The email further states that “[w]e are happy to go direct to the owner as well”.
(d)The email that is document LEV.007.001.0120 attached document LEV.007.001.0111.[7] It is a plan of a home. At the bottom right hand corner of the document there is printed the word “CLIENT”, under which nothing is printed or written, and under that there is printed “ADDRESS/ESTATE”, under which there is a redaction, implying there is information that identifies the address of the land, or the estate, to which the plan pertains. Hamlan submits that the plan that is document LEV.007.001.0111 appears to be similar to a hand drawn sketch which the respondents have discovered,[8] and also to the plans annexed to the respondents’ defence which Hamlan submits has similarities with the plan that is document LEV.007.001.0111. Hamlan submits “there is a strong inferential basis to say that” the documents the respondents have discovered, including the redacted document, “are relevant to the genesis of or the creation of the sea change plan, which is one of the . . . alleged infringing works”.[9]
[3] Affidavit H H Ottaway 10.12.2024, page 35
[4] Affidavit A B Watson, 30.01.2025, [7]
[5] Affidavit H H Ottaway 10.12.2024, page 32
[6] Affidavit H H Ottaway 10.12.2024, page 41
[7] Affidavit H H Ottaway 10.12.2024, page 34
[8] That document being LEV.007.001.0108, which is at page 23 of the affidavit of A B Watson 30.01.2025
[9] T11.15
Mr Watson deposes that he believes the following (emphasis added):[10]
[10] Affidavit A B Watson, 30.01.2025, [9]
(a)Nine Dots provided Levonix a drawing of Hamlan’s Cumberland plan to obtain a quote to build a house in accordance with that plan;
(b)Levonix created a CAD drawing by reference to that drawing of Hamlan’s Cumberland Plan to create a plan of what ultimately came to be its Seachange house design and from which Levonix’s Seachange plan was created;
(c)the actions referred to in paragraphs 7 and 8 above were the genesis of the creation of the Levonix’s Seachange plan; and
(d)the redacted information in LEV.007.001.0112, LEV.007.001.0111, LEV.007.001.0109 and LEV.007.001.0120:
(i) will reveal who else authorised or procured the creation of the first drafts of Levonix’s Seachange plan by reference to Hamlan’s Cumberland plan and for which homeowners and on which parcel of land;
(ii) will enable Hamlan to ascertain whether those homeowners had previously made enquiries with Hamlan in relation to building a house based on Hamlan’s Cumberland plan on their land; and
(iii) will enable Hamlan to ascertain whether the home owners did ultimately build a house on the land based on [the] plan in the hand drawn sketch and CAD drawing referred to in paragraphs 7 and 8 above.
Mr Whitehead, the lawyer for the respondents, deposes, on information and belief, as follows:
(a)Document LEV.007.001.0109 is a quote request in relation to the floor plan that is Document LEV.007.001.0111; but LEV.007.001.0111 is not one of the respondents’ plans referred to in the particulars to paragraph 19 of the amended statement of claim and, for that reason, LEV.007.001.0109 “does not relate to any house which could allegedly constitute a reproduction of any alleged copyright work”.[11] Further, the respondents did not build a house according to Document LEV.007.001.0111; and, moreover, that document is not Levonix’s Seachange plan, or the genesis of Levonix’s Seachange Plan.[12]
(b)Document LEV.007.001.0112 is an email that relates to Document LEV.007.001.0111.[13]
(c)Document LEV.007.001.0120 is an email that attaches a sketch drawing. Hamlan does not allege that the sketch drawing is a reproduction of any of its works; and, in any event, LHPL did not build a house according to the plans.[14]
[11] Affidavit of P Whitehead 07.03.2025, [14(a)]
[12] Affidavit of P Whitehead 07.03.2025, [14(b)]
[13] Affidavit of P Whitehead 07.03.2025, [14(c)]
[14] Affidavit of P Whitehead 07.03.2025, [14(d)]
LEV.007.001.0160
Document LEV.007.001.0160 is a printed plan of a house on which there is handwriting. A redaction appears at the middle of the top of the document; and it may be inferred that the information redacted consists of the address of the land to which the plan relates. There is also redacted a space at the bottom of the document under “FLOOR PLAN” and next to “SITE ADDRESS”. [15] Mr Watson deposes that the document is a “Lenovix house floor plan apparently created on 19 April 2021”, and that it appears to him that it is “a draft house floor plan drawing for a house to be built according to a Seachange Plan on which handwritten notes have been made requesting changes to be made to the plan”.[16]
[15] Affidavit H H Ottaway 10.12.2024, page 71
[16] Affidavit A B Watson, 30.01.2025, [10]
Mr Whitehead, on information and belief, deposes that the plan that is document LEV.007.001.0160, was for a job that did not proceed; and LHPL did not build a house at the address to which the plan relates.[17]
[17] Affidavit of P Whitehead 07.03.2025, [14(e)]
LEV.007.001.0118
Mr Watson deposes that Document LEV.007.001.0118 is a copy of emails to and from Mr Ramsey exchanged in May 2020 with a draftsperson providing instructions in relation to the drafting of plans. The sender’s name and details have been redacted. The email refers to attachments that have not been discovered.[18]
[18] Affidavit A B Watson, 30.01.2025, [11]. A copy of LEV.007.001.0118 is at page 39 of Affidavit H H Ottaway 10.12.2024.
Mr Whitehead, on information and belief, says LHPL did not build a house according to the plans to which the email that is Document LEV.007.001.0118 relates; and, for that reason, the document does not relate to any house which could allegedly constitute a reproduction of any alleged copyright work.[19]
[19] Affidavit of P Whitehead 07.03.2025, [14(f)]
LEV.007.001.0092
Mr Watson deposes that he believes Document LEV.007.001.0092 is a set of drawings of elevations for a house apparently created in around 2018 based on a client brief dated 12 March 2018 which is a “Grove Tribeca” façade.[20]
[20] Affidavit A B Watson, 30.01.2025, [15]. A copy of LEV.007.001.0092 is at page 28 of Affidavit H H Ottaway 10.12.2024.
Mr Whitehead deposes on information and belief that Document LEV.007.001.0092 is for a house that was custom designed and built by LHPL, the façade of which is not the Grove Tribeca” façade.[21]
[21] Affidavit of P Whitehead 07.03.2025, [14(g)]
LEV.007.001.0116
Mr Watson deposes that Document LEV.007.001.0116 is an email to Mr Ramsey requesting a quote to build a house. The senders name and site address has been redacted. The email attaches a document titled "Octavia Custom" which has not been discovered. Mr Watson deposes that he believes the sender of the email was a representative of Nine Dots.[22]
[22] Affidavit A B Watson, 30.01.2025, [19]
Mr Whitehead deposes, on information and belief, that the email that is Document LEV.007.001.0116 was for a job that did not proceed, and LHPL did not build a house at the address to which the email relates. Further, “Octavia Custom” is not a plan which Hamlan has alleged infringes any of its copyright works; and, moreover, given the email was received by Mr Ramsey, the email could not relate to any allegation of reproduction or communication by Mr Ramsey or the first respondent.[23]
[23] Affidavit of P Whitehead 07.03.2025, [14(i)]
Determination
Whether Hamlan is entitled to the redacted information depends on whether the Discovery Order required the respondents to disclose the Documents. It is therefore necessary to begin with the Discovery Order, which is as follows:
Pursuant to r 14.02(2)(c) of the GFL Rules [being the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)] the respondents make disclosure in accordance with r 14.03 of the GFL Rules in relation to the issues that arise from the respondents’ defence to paragraphs 19, 20, 22, 23, and 25 of the statement of claim, such disclosure to be made by 8 November 2024 or by such later time as the parties may agree or the Court may order.
In the reasons for judgment I published on 20 September 2024,[24] I referred to the judgment of Rangiah J in Hartnett Legal Services Pty Ltd v Ballantyne, where his Honour held that the expression “order for disclosure generally”, as used in the predecessor of r 14.02(a) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules), means the discovery of documents that are “directly relevant” to the issues raised on the pleadings or affidavits.[25] Rangiah J so held because his Honour was of the view it was “appropriate to apply” r 20.14(1) of the Federal Court Rules 2011 (Cth) (FC Rules) to the application for an order for disclosure generally under the predecessor of r 14.02(a) of the GFL Rules. Subrule 20.14(1) of the FC Rules provides:
If the Court orders a party to give standard discovery, the party must give discovery of documents:
(a)that are directly relevant to the issues raised by the pleadings or in the affidavits; and
(b)of which, after a reasonable search, the party is aware; and
(c)that are, or have been, in the party's control
[24] Hamlan Homes Pty Ltd trading as Hamlan Homes and Geelong Homes v Levonix Homes Pty Ltd [2024] FedCFamC2G 931, at [31]
[25] Hartnett Legal Services Pty Ltd v Ballantyne [2016] FCA 1116, at [34]
Subrule 20.14(1) must be read with r 20.14(2) of the FC Rules, which provides:
For paragraph (1)(a), the documents must meet at least one of the following criteria:
(a) the documents are those on which the party intends to rely;
(b) the documents adversely affect the party’s own case;
(c) the documents support another party’s case;
(d) the documents adversely affect another party’s case.
Although applied to the predecessor of r 14.02(a) of the GFL Rules, Rangiah J’s holding in Hartnett also applies to orders for disclosure “in relation to particular issues” under r 14.02(c) of the GFL Rules, at least where the issues are those that arise on the pleadings.
Thus, for the respondents to have been liable under the Discovery Order to disclose the Documents, it is necessary for Hamlan to show either that the respondents intend to rely on them, or the Documents adversely affect the respondents’ case, or the Documents adversely affect Hamlan’s case, or the Document support Hamlan’s case. Although Hamlan submits that the relevance of each of the Documents “is addressed in detail in” Mr Watson’s affidavit, Mr Watson does not, in his affidavit, articulate the sense in which each of the Documents is said to be directly relevant, or identify the issues that arise from the respondents’ defence to paragraphs 19, 20, 22, 23, and 25 of the statement of claim (Issues) to which he says the Documents are relevant. Further, Mr Watson does not say whether the respondents intend to rely on any of the Documents, or whether any of the Documents adversely affect the respondents’ case or support Hamlan’s case, and if so, how.
That Hamlan has not attempted to articulate the sense in which it submits any of the Documents are directly relevant to the Issues may be a basis for inferring that Hamlan’s purpose in seeking access to the redacted information is not to use the Documents for the purpose of supporting its case or for the purpose of undermining the respondents’ case. That availability of such inference is strengthened by the passage from Mr Watson’s affidavit I have reproduced in paragraph 7 of these reasons. The emphasised portion of the passage indicates that the purpose for which Hamlan seeks the production of the unredacted versions of the Documents, and therefore seeks the disclosure of the Documents, is to investigate the existence or non-existence of matters that are not Issues. The purpose is to investigate “who else authorised or procured the creation of the Seachange Plan by reference to the Hamlan Cumberland Plan”; for which homeowners; whether such homeowners had previously made enquiries of Hamlan in relation to building a home based on Hamlan’s Cumberland plan; and whether such homeowners ultimately built a home on the basis of an alleged infringing plan. This constitutes fishing, which is outside the permissible purpose of discovery.
I therefore am not satisfied that any of the Documents are directly relevant to any of the Issues such as to have rendered the respondents liable to have disclosed them pursuant to the Discovery Order.
Provision of discovered documents in “native format”
The second dispute in relation to discovery relates to Hamlan’s application for an order that the respondents provide Hamlan:
native format copies of all documents listed in Part 1A and 1B of the First Respondent’s list of documents in the form the respondents gave to Hazan Hollander and which Hazan Hollander gave to iCourts for uploading to Nuix
To be in a position to identify, and determine, the issues that arise on Hamlan’s seeking such an order, it will be necessary to refer to the process by which the respondents disclosed documents pursuant to the Discovery Order, and the correspondence between the parties’ lawyers that has given rise to the dispute.
Evidence
According to an affidavit Mr Whitehead made on 18 February 2025, the respondents provided to their lawyers (HH) “copies of documents” for HH’s review. The respondents provided the document “in various formats, including in their native formats where the respondents had them in that format”.[26]
[26] Affidavit P Whitehead 18.02.2025, [22(a)]
HH provided the documents to iCourts (which I infer is a provider of electronic discovery services) in the format in which HH received them from the respondents;[27] and HH did so for iCourts “to upload them to the Nuix platform to improve efficiency, reduce paper usage and reduce manual processes and multiple handling of the documents”. Mr Whitehead further says:[28]
This streamlined several manual tasks, including separating documents that were discoverable from those that were not, numbering each document, and having a staff member draft a list of documents Using this process also facilitated providing the applicant's solicitors with a PDF copy of each document, without requiring them to attend an office to inspect them and then request copies of those documents they wanted.
[27] Affidavit P Whitehead 18.02.2025, [22(b)]
[28] Affidavit P Whitehead 18.02.2025, [7]
Where possible, the documents were converted into PDF format, and stamped with a unique “Document ID”.[29] An employee of iCourts informed Mr Whitehead that Document IDs cannot be stamped on documents in their native format.[30]
[29] Affidavit P Whitehead 18.02.2025, [22(c)]
[30] Affidavit P Whitehead 18.02.2025, [22(c)]
Mr Whitehead further says that:[31]
(a)documents the respondents did not provide in their native format are not held by the respondents in their native format;
(b)where a plan was drafted internally by LHPL, the native format of that plan (with the file extension “.dwg”) was provided to Hamlan; and
(c)where a plan was not drafted internally by LHPL, it held such plans in PDF format.
[31] Affidavit P Whitehead 18.02.2025, [24]
In his affidavit of 7 March 2025 Mr Whitehead provided further evidence about what HH and iCourts did with documents the respondents provided to HH:[32]
(a)The respondents provided the documents to HH in a number of electronic folders, each folder containing subfolders which in turn contained sub-sub folders, each of which contained numerous documents.
(b)All of the documents HH received from the respondents were uploaded to the Nuix eDiscovery platform by iCourts and given a Document ID.
(c)Once all of the documents were uploaded to Nuix, they were marked as either relevant or not relevant, and the documents the respondents claim are confidential were marked “confidential”. Only those documents that were marked “relevant” were included in LHPL’s list of documents.
(d)HH does not have a separate bundle of the relevant documents in the format the respondents provided the documents to HH.
[32] Affidavit P Whitehead 07.03.2025, [17]
On 29 November 2024 each of the respondents made disclosure of documents by filing a list of documents, and by HH sending the lists of documents to Hamlan’s layers (KLG) by email at 3:46 pm on 29 November 2024. The documents each of the respondents disclosed (Discovered Documents) are identified in LHPL’s list of documents (List of Documents) in two tables headed respectively “Part 1A” and “Part 1B”. Each document is identified by a “Document ID” number, a title, and “Document Type”. In addition, there is a column headed “Attachments” which records a “Document ID” number. The List of Documents does not assign a date to the documents, or the author of the documents or, where the document is an email or any other form of communication, the identity of the sender or receiver of the document. In the email by which HH served the List of Documents, HH stated that the Discovered Documents “can be accessed at this Dropbox link”. The email also noted that a link to the documents listed in Part 1B would be provided once confidentiality undertakings were signed. Mr Whitehead says that the Discovered Documents were made available to KLG in PDF format “as that is the format on which the documents had a Document ID”.[33]
[33] Affidavit P Whitehead 18.02.2025, [22(d)]
At 4:22 pm on 29 November 2024 Mr Ottaway of KLG sent an email to Mr Whitehead requesting, among other things, the spreadsheets annexed as Part 1A and Part 1B of the List of Documents “in native excel format”, and a “load file for the documents in Part 1A and Part 1B” of LHPL’s List of Documents “to facilitate uploading to our e-discovery platform”.[34] Mr Whitehead provided a substantive response by email he sent to Mr Ottaway at 4:12 pm on 2 December 2024. Mr Whitehead said that inquiries were made of iCourts to prepare load files in the form Mr Ottaway had requested; and Mr Whitehead provided “the excel spreadsheets requested”, and the links by which the load files could be accessed.
[34] Affidavit H H Ottaway 10.12.2024, annexure HHO-26
On 4 December 2024 KLG’s Electronic Discovery Analysis and Technology (e-DAT) Team commenced uploading the Discovered Documents to KLG’s e-Discovery platform, Nuix. The e-DAT Team completed that process by 6 December 2024.
On 9 December 2024 Mr Ottaway, with Mr Watson, and another solicitor “who is experienced[d] in using Nuix”, commenced reviewing the Discovered Documents using Nuix “and applying filters and search terms”. After having reviewed the Discovered Documents, Mr Ottaway identified a number of difficulties. These included some documents being redacted; some documents being incomplete (for example the Discovered Documents include documents that appear to be part of a set of plans but without the entire set forming one document); some documents were missing attachments; and the Discovered Documents are not text searchable. Further, the majority of the Discovered Documents do not include metadata recording attachments to documents. Mr Ottaway, as an example, refers to Document LEV.007.001.0163 which is a chain of emails between the third respondent, Ms Ramsey, and other unidentified recipients; but the metadata for that document does not include any sender or recipient information.
On 10 December 2024 Mr Ottaway sent an email to my Associate’s Inbox attaching Mr Ottaway’s affidavit made on 10 December 2024, together with proposed orders in relation to the disclosure the respondents had already given. I arranged to list the matter for a directions hearing on 20 December 2024.
On 17 December 2024 KLG sent a letter to HH in which it articulated the grounds on which Hamlan relies for requesting that “all documents . . . be discovered in native form and the provision of a load file or spreadsheet containing meta data for each document”.[35] These are that, “in the case of copyright infringement, the metadata stored in relation to the documents (particularly plans) is vital evidence”, and “this information” is required to enable Hamlan’s legal team to “effectively and efficiently review the Discovered Documents”. KLG also relied on “Federal Court Practice Note CM6 – Default Document Management Protocol”.
[35] Affidavit H H Ottaway 17.12.2024, page 22
On 19 December 2024 Mr Whitehead responded to KLG’s letter in which he made a number of contentions, including the following:
(a)Mr Ottaway’s email to my Associate was the first time the respondents were notified Hamlan complained about the respondents’ disclosure.
(b)The matters Mr Ottaway raised on his affidavit of 10 December 2024 about the documents the respondents disclosed should have been addressed and resolved by the parties in correspondence, not by the making of an interlocutory application.
(c)By its proposed orders Hamlan “is seeking for the first time, an order for electronic discovery”, to which the Federal Court of Australia’s “Technology and the Court Practice Note” (TC Practice Note) would apply; yet Hamlan has not sought an order for electronic discovery. Moreover, and in any event, Hamlan had not complied with the TC Practice Note.
(d)Imposing an electronic discovery order on the respondents now would constitute an unreasonable and administrative burden on them, noting that the respondents have already paid legal fees in the order of $35,000 “in complying with the disclosure order in the form it was provided”.
On 23 January 2025 Mr Watson sent a letter to HH stating, among other things, the following:
Please note that due to the fact that:
1. The documents have not been discovered in native format, the document properties cannot be ascertained (ie the date created, created by, date modified, modified by etc);
2. The documents by the download they were provided in are not text searchable;
3. There is no apparent order to the discovery as made. For example, the numbers allocated to documents are not grouped by particular property, type of document etc;
4. The date of the documents has not been provided in the PDF versions of the List of Documents that were filed and served.
5. The title of each document was included in the List of Documents; however, this is not always a helpful description that accurately describes what the document is,
not only is the inspection of documents slow and inefficient and therefore costly, it also means we cannot be certain that we have missed that some of the documents . . . . have in fact been discovered.
Sometime before 7 March 2025, Mr Whitehead made inquiries of iCourts to determine whether iCourts could separately collate the documents marked as relevant in the form HH provided the documents to iCourts. In response to that inquiry, iCourts created an excel spreadsheet of each of the documents that had been marked “relevant”. Mr Whitehead says that the spreadsheet has a column headed “DateCreated”, which Mr Whitehead understands is the date recorded “as the “Dated [sic] Created” date in the metadata for the documents in the form in which they were provided by” HH to iCourts.[36] HH provided the spreadsheet to KLG.
[36] Affidavit P Whitehead 07.03.2025, [19]
Shortly after 7 March 2025, Mr Ottaway made enquiries of two members of KLG’s e-DAT team about matters arising from the affidavit Mr Whitehead made on 7 March 2025. Mr Ottaway says that he was informed by those team members as follows:
(a)when documents are processed in Nuix, Nuix retains, for each document:
(i)a ‘native version’ of the document, being the original form of the document as uploaded to Nuix; and
(ii)meta data for each document, including document creation and modification dates and author information.
(b)the fact that [HH] provided [KLG] with a spreadsheet recording document creation and modification dates for the respondents’ discovered documents . . . makes clear that this meta data information, and the native versions of the documents are accessible in the Nuix platform administered by iCourts; and
(c)iCourts should be able to easily and quickly export native versions of each of the respondents’ discovered documents from Nuix and provide them to [KLG], together with a spreadsheet or load file.
Parties’ submissions
Hamlan submits as follows:
(a)Hamlan seeks an order for the production of the Discovered Documents in their native format because the respondents discovered a large number of plans and other documents without any information regarding who authored them, when they were created, or whether they were attached to any of the emails the respondents discovered.[37]
(b)Although the respondents have provided some documents in their native format, the respondents’ contention they otherwise do not have documents in their native format “cannot be correct”. That is because:
(i)There are 1,631 documents with a date between 4 November and 28 November 2024 which have been discovered, but for which a native format version has not been provided. It appears the dates record the dates the documents were uploaded to iCourt.[38]
(ii)The Discovered Documents include documents with extensions “.png”, “.jpeg”, or “.jpg” which have been discovered in PDF format. That suggest that the respondents held at least some of these documents in another format when they were converted to PDF when uploaded to the respondents’ e-discovery platform.[39]
(iii)The respondents have produced to Hamlan, separately, other files in PDF format which do not appear to have been processed by their e-Discovery platform, and have intact and apparently accurate metadata.[40]
(c)Compliance with the order Hamlan seeks, namely, that the respondents produce the documents in the form HH received the documents from the respondents and then provided to iCourts, before the Discovered Documents were converted to PDF format, would not be burdensome for the respondents.[41]
[37] Applicant’s Outline of Submissions (Discovery issues and joinder), [19]
[38] Applicant’s Outline of Submissions (Discovery issues and joinder), [21(a)]
[39] Applicant’s Outline of Submissions (Discovery issues and joinder), [21(b)]
[40] Applicant’s Outline of Submissions (Discovery issues and joinder), [21(c)]
[41] Applicant’s Outline of Submissions (Discovery issues and joinder), [23]
The respondents, on the other hand, submit as follows:
(a)On 19 December 2024 the respondents provided Hamlan with the original “.dwg” and “.msg” files of all Discovered Documents, which means that HH provided to KLG all documents HH held in native format. Hamlan, however, now seeks production of the documents HH received in native format.[42]
[42] Respondents’ Outline of Submissions (Applicant’s amended interlocutory application), [36]
(b)There is no basis for Hamlan’s request because:[43]
[43] Respondents’ Outline of Submissions (Applicant’s amended interlocutory application), [40], [41]
(i)The respondents have complied with the Discovery Order.
(ii)Hamlan’s assumption that it would not be burdensome for the respondents to comply with Hamlan’s request is incorrect because:
(A)HH provided to iCourts all of the documents, relevant and irrelevant, the respondents provided to HH.
(B)iCourts uploaded all of the documents in (A) to the Nuix eDiscovery platform. After the documents were processed, the documents were marked relevant and irrelevant, as appropriate.
(C)“Identifying all of the relevant Discovered Documents within the folders and subfolders provided to [HH] and separating them out from the irrelevant files in the same folders and subfolders would be a time consuming and costly exercise”.
(iii)Although Hamlan seeks to have the documents provided in their native format for the purpose of accessing metadata, it has not sought to identify any specific documents and explain the apparent importance of the metadata in respect of those documents. Instead, Hamlan’s “assertions regarding the importance of metadata in this proceeding are general and unsubstantiated”. Further, if, as Hamlan contends, any metadata is “vital”, Hamlan ought to have proposed an electronic discovery process which specifically preserved such information.[44]
[44] Respondents’ Outline of Submissions (Applicant’s amended interlocutory application), [42]-[44]
Determination
The parties’ dispute relates to the production of what Hamlan describes as the “native format copies of all documents listed in Part 1A and 1B of the First Respondent’s List of Documents in the form the respondents gave to Hazan Hollander and which Hazan Hollander gave to iCourts for uploading to Nuix” (Native Format Documents). Rule 14.04 of the GFL Rules provides that the “Court may order a party to a proceeding to produce to it a document in the possession, custody or control of the party”. Two questions, therefore, arise. The first is whether the “Native Format Documents” constitute “documents” for the purpose of r 14.04 of the GFL Rules. Assuming that question is answered in the affirmative, the second question is whether an order should be made that the respondents produce the Native Format Documents.
Are the Native Form Documents “documents”?
The word “document” is not defined in the GFL Rules; but it is defined in s 2B of the Acts Interpretation Act 1901 (Cth) (Acts Interpretation Act) as follows:
“document” means any record of information, and includes:
(a) anything on which there is writing; and
(b)anything on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and
(c)anything from which sounds, images or writings can be reproduced with or without the aid of anything else; and
(d)a map, plan, drawing or photograph.
This definition is broad enough to capture information created and stored electronically on computer systems and devices. Such information is commonly referred to as “electronically stored information” (ESI). But that term is generic; it denotes distinct classes of information that are differentiated according to the type of computer or computational device and accompanying software (usually referred to as “application”) by which the information is created and stored. Many classes of information that are so differentiated, and the media on which the information is stored, are denoted by particular terms. Thus there are “documents” created by use of word processing programs; emails; information stored on electronic backup tapes, CD-ROMs, discs, computer hard drives, databases, and USBs; data stored on mobile phones, such as SMS (short message service), internet protocol addresses; software; the cloud; social media; source codes; and “metadata” (a term I will discuss shortly). Each of these classes of information have been treated as “documents” for the purpose of discovery.[45]
[45] See Bailey, D L See Discovery & Interrogatories Australia, Lexis Nexis, online edition, at [18,105] (accessed on 11 April 2025).
It is a commonplace to observe, yet necessary to repeat, that the methods or steps by which electronic information is created and stored are very different from the methods by which information is recorded on physical objects, such as paper, and by which the physical objects on which information is recorded are stored. Moreover, there is great variety between the different forms of ESI, the software by which ESI may be created, and the devices and media on which ESI is created and stored. These differences between paper (and other physical media on which information is recorded) and ESI, and between different forms of ESI, are relevant to identifying the information that comprises the electronic documents a party may be required to disclose and produce, either pursuant to a disclosure order or in response to a subpoena or other like process; and relevant to identifying the methods by which a party must or may produce such electronic documents, either to another party, or to a court. And here it is relevant to refer to two particular differences between ESI or electronic documents (I will use ESI and “electronic document” interchangeably) and physical objects on which information is stored that bear on identifying electronic documents, and the means by which they may be produced.
The first difference is that any given electronic document usually includes not only visible information (that is, information which, when accessed by the appropriate application software, becomes perceivable by a person), but also hidden text (that is, information that remains imperceivable after other information of the electronic document, when accessed by the appropriate application software, becomes perceivable). The hidden text is known as “metadata”, a notion which has been explained as follows:[46]
An electronic document or file usually includes not only the visible information but also hidden text, formatting codes, formulae, and other information associated with the file. These many types of ancillary information are often lumped together as “metadata,” although there are some important distinctions between different types of metadata. Two of the most common distinctions are between “application” metadata and “system” metadata. Application metadata is created as a function of the application software used to create the document or file. Common application metadata instructs the computer how to display the document (e.g., the proper fonts, spacing, size, and color). Other application metadata may reflect modifications to the document, such as prior edits or editorial comments. This metadata is embedded in the file it describes and moves with the file when it is moved or copied. System metadata reflects information the user or the organization’s information management system creates, sometimes automatically. Such information may, for example, track the title of the document, the identification of the computer that created it, the assigned data owner, and other document “profile” information, such as file creation and modification dates. System metadata generally is not embedded within the file it describes, but is stored externally on the organization’s information management system.
[46] The Sedona Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic Document Production, 19 Sedona Conf. J. 1 (2018), at pages 169 170, (accessible at (italics in original, bold added).
The notion of “metadata” is familiar to courts and legal practitioners in Australia. Thus, Jarra Creek Central Packing Shed Pty Ltd v Amcor Limited, Tamberlin J explained the notion of “metadata” as follows:[47]
The expression “meta-data,” . . . is a reference to electronic information created by and embedded in electronic documents in the form of electronic data. The term describes data contained within an electronic file relating to the identification, origin or history of the file itself. It is, in effect, electronic information about other electronic data. Meta-data can be used to ascertain the author and origin of a document, the existence of any attachments, and whether the document was sent or received by any particular individual. The information which is contained in the meta-data is not visible on a print-out of the relevant document, which shows only the face content and does not disclose the layers of electronic data beneath the visually readable information.
[47] Jarra Creek Central Packing Shed Pty Ltd v Amcor Limited [2006] FCA 1802 at [11]
“Metadata” has been recognised in Australia as information that is capable of comprising, or which may comprise part of, a document, that is liable to be discovered or produced to the court in answer to a subpoena or like process.[48]
[48] See, for example, Jarra Creek Central Packing Shed Pty Ltd v Amcor Limited [2006] FCA 1802 (recognised, but not ordered to be produced); DHR International, Inc. v Challis (No. 2) [2015] NSWSC 1964.
A second difference between electronic documents and physical objects on which information is stored is that the information recorded on an electronic document that was created and is stored by the use of a particular software application is capable of being transformed or converted into information that is recorded in a separate electronic document that can be read by use of a different software application. The form in which the information is first created and stored by use of a particular software application is often referred to as the document’s “native format”. That expression has been defined as an electronic document “stored in the original form in which it was created by a computer software program”;[49] and more elaborately as follows:[50]
Electronic documents have an associated file structure defined by the original creating application. This file structure is referred to as the native format of the document. Because viewing or searching documents in the native format may require the original application (for example, viewing a Microsoft Word document may require the Microsoft Word application), documents may be converted to a neutral format as part of the record acquisition or archive process.
[49] Technology Glossary, being part of the Federal Court of Australia “Technology Resources: GPN-Tech”
[50] The Sedona Conference Glossary: eDiscovery & Digital Information Management, Fifth Edition 21 Sedona Conf. J. 263 (2020),
The fact that information contained in an electronic document in its native format (native format electronic document) may be transformed or converted into information that is recorded in a separate electronic document (derivative electronic document) that may be read by an application different from that by which the native format electronic document was created means that, sometimes, and perhaps often, some of the information embedded in the native format electronic document does not find its way to the derivative electronic document. That means that, although, when accessed by the two different software applications, the visible information contained in the native format electronic document and the derivative electronic documents is the same, the hidden information embedded in the native format electronic document is not replicated in the derivative electronic document.
A native format electronic document is clearly a “document” as defined by s 2B of the Acts Interpretation Act; and to the extent metadata is embedded in the native format electronic document, the information that constitutes the metadata forms part of the electronic document. That means that, subject to any limitation in the order for disclosure, the form of the electronic documents a party must disclose is the form in which the party holds those documents. Thus, if the party holds the electronic documents in their native format, subject to any contrary order of the court or agreement of the parties, the party will be liable to disclose and produce the documents in their native format, including the metadata that is embedded in the electronic documents. In other words, the party will be liable to produce the document in a way that would enable the party to whom the electronic document is produced to read the same information, hidden as well as visible, as the party producing the document could read by use of the software (or equivalent software) the party producing the electronic document used to create and hold the electronic document.
Should the respondents produce the Native Format Documents?
In their submissions and correspondence, as I have already noted, the respondents raise a number of objections to producing the Native Format Documents. The first is that the respondents have complied with the Discovery Order. The respondents, however, do not explain the sense in which they say they have complied with the Discovery Order. That order required the respondents to disclose “documents”; and, for the reasons I have given, the “documents” they were required to disclose would include electronic documents in their native format, to the extent the respondents hold electronic documents in that format; and the respondents were required to produce to Hamlan such documents as they held in native format, unless the court were to order, or the parties were to agree, otherwise.
Second, in his letter dated 19 December 2024 Mr Whitehead submitted that by its proposed orders Hamlan is seeking for the first time an order for electronic discovery, but it should have applied for such order before the respondents commenced the process of disclosure. It is the case that the TC Practice Note proceeds on the basis that before parties will be required to give electronic discovery the court will make an order to that effect; and it is also the case that the TC Practice Note expects the parties will seek to agree to give discovery either by means of the “Default Document Management Protocol”, or by means of a variation of that protocol. But the fact that a court has made a disclosure order which by its terms would require the disclosure of electronic documents is not denied effect only because the parties have not applied to the Court for an order for electronic discovery in accordance with the “Default Document Management Protocol”, or a variation of that protocol.
In any event, given HH engaged the services of iCourts, an electronic discovery services provider, it may reasonably be inferred that the respondents considered the discovery they were giving was a form of electronic discovery. In those circumstances, it was open to HH to discuss with KLG what they proposed to do by way of electronic discovery before they embarked on the process which led to the filing and serving of the List of Documents and producing documents that included native format documents that had been converted into PDF format; and, to the extent there would be disagreement, for the parties to approach the Court to deal with the disagreement.
Third, the respondents submit that Hamlan has “not sought to identify any specific documents and explain the apparent importance of the metadata in respect of those documents”. That submission implies the contention that Hamlan is obliged to specifically justify an entitlement to the metadata that is embedded in such of the electronic documents the respondents hold in native format. I would not accept that contention. As I have noted, metadata, to the extent it is embedded in an electronic document in native format, forms a part of such electronic document; and to the extent the respondents are liable to disclose and produce electronic documents in their native format, they are necessarily liable to disclose the entire contents of such file, including the metadata embedded in them.
Fourth, the respondents submit that producing the Native Format Documents would be burdensome. The burden is said would arise from the respondents being required to identify all of the relevant documents within the folders and subfolders the respondents provided to HH; and separating them out from the irrelevant files in the same folders and subfolders would be a time consuming and costly exercise. I do not accept that submission.
As I have already noted, HH obtained from iCourts an excel spreadsheet which identifies each of the documents the respondents had marked as relevant, together with information about the date on which each document was created, information it is open to infer iCourts was able to obtain because of metadata to which it has access. The fact that iCourts was able to produce the spreadsheet with information which appears to have been prepared from metadata is a basis for inferring that iCourts can readily identify the documents that have been marked relevant and, moreover, readily identify the relevant documents that were in their native format at the time HH provided documents to iCourts. In any event, if, as the respondents submit, it would be burdensome for them to produce the Native Format Documents, it is reasonable to expect they would have adduced evidence from an officer or employee of iCourts to explain the tasks iCourts would be required to undertake to identify and produce those documents that are in native format, and any difficulties iCourts would likely encounter in undertaking those tasks.
I therefore propose to order the respondents produce the Native Format Documents.
APPLICATION FOR JOINDER AND AMENDMENT OF THE STATEMENT OF CLAIM
The proposed amendments
Hamlan applies for leave to file an amended application and statement of claim which seeks to add as a fourth respondent Ms Clarissa Ramsey. The proposed amended statement of claim (PASC) alleges that Ms Clarissa Ramsey is and was employed by LHPL as its head of sales and marketing from at least July 2020 to August 2023; and in paragraph 20A of the PASC the following is alleged:[51]
On dates not presently known to the applicant, Clarissa:
(a) without the licence or authority of Hamlan reproduced in a material form the whole or a substantial part of each of the Riverside Plan and the Cumberland Plan;
(b)alternatively, without the licence or authority of Hamlan authorised Levonix and/or third parties to reproduce in material form the whole or a substantial part of each of the Riverside Plan and the Cumberland Plan;
(c) without the licence or authority of Hamlan communicated a reproduction or substantial reproduction of each of the Riverside and the Cumberland Plan to the public; and
(d)alternatively, without the licence or authority of Hamlan authorised Levonix to communicate a reproduction or substantial reproduction of each of the Riverside Plan and the Cumberland Plan to the public.
[51] PASC, [20A]
Particulars
(i) The applicant refers to and relies upon the particulars to (ii) and (viii) to paragraph 19 above, by reason of which Clarissa knew that the Southside and Seachange Plans had been created by Levonix by reference to the Riverside and Cumberland Plans respectively.
(ii)Clarissa was involved and copied to the communications with the property owners in relation to the creation of the plans for and/or the entering into of the contracts for Levonix to build the houses built by Levonix on the properties referred to in particulars (ii), (viii), (ix), (x) and (xxx) to paragraph 19 above.
(iii) It can be inferred by reason of the fact that Clarissa was the Head of Sales and Marketing at Levonix in the period from at least July 2020 to August 2023 and the matters the particulars to paragraph 19, that at all material times in that period Clarissa was the person directly involved in and/or aware of the negotiations with homeowners to sign contracts to build houses that were offered for sale to be built by Levonix in the period July 2020 to August 2023, including houses to [be] built in accordance with or based on or derived from the Levonix Plans.
(iv)Clarissa had the power to cause Levonix to cease the conduct of offering for sale of houses to be built in accordance with or based on or derived from the Southside and Seachange Plans and failed to cause Levonix to
Paragraphs (ii) and (viii) of the particulars to paragraph 19 of the PASC to which paragraph (i) of the particulars to 20A refers are as follows:
(ii)By email sent to Ms Ramsey on 14 July 2020 (LEV.002.001.3311) Georgia Jelbart provided Levonix a ‘layout’ for their desired home to be built on the property at Lot 1516 Inshore Drive, Torquay, Victoria (Jelbart Property) (LEV.002.001.2712 and LEV.002.001.2713). The floorplan Ms Jelbart provided was of Hamlan’s Riverside plan and was created by Hamlan’s sales team using GeoSite software positioning a Hamlan Riverside house on the Jelbart Property and which was provided by Hamlan to Ms Jelbart and Mr Mitchell Mee on 11 July 2020. Ms Ramsey sent an email to Mr Mee on 17 July 2020 (copied to Clarissa) (LEV.002.001.3284) stating ‘thanks for the opportunity to quote your new plan – we think the layout is great’. Ms Ramsey in an email sent to Ms Jelbart on 20 July 2020 (LEV.002.001.3284) (copied to Clarissa) stated “I think it’s a good idea if we make some slight changes to the plan also, as we don’t want to copy someone else’s plan exactly'. In the period after 20 July 2020, each of Mr Ramsey, Ms Ramsey and Clarissa were involved and copied to the communications with Ms Jelbart and Mr Mee in relation to the creation of the plans for and/or the entering into of the contract for Levonix to build the house built by Levonix on the Jelbart Property. The plans for and the house built by Levonix on the Jelbart Property reproduce the whole or a substantial part of the Riverside Plan.
. . . .
(viii)On 10 December 2020 Sheila Tiven attached to an email she sent to Clarissa (LEV.002.001.0512) a floorplan of Hamlan's Cumberland 232 (LEV.002.001.0516) and informed Clarissa that she was interested in building a house to that floorplan. The above floorplan appears to be an image of Hamlan Homes' Cumberland 232 which was copied from Hamlan’s website. The plans for and the house built by Levonix for Ms Tiven and her husband on the property at Lot 504 Karkalla St, Torquay, Victoria reproduce the whole or a substantial part of the Cumberland Plan. Clarissa sent and received communications with owners of this property in relation to the creation of the plans for and the entering into of the contract for Levonix to build the house built by Levonix on the property at Lot 504 Karkalla St, Torquay, Victoria.
Paragraphs (ix), (x) and (xx) of the particulars to paragraph 19 of the PASC to which paragraph (ii) of the particulars to 20A refers are as follows:
(ix)On 16 December 2020 Josh King sent an email to Clarissa (LEV.002.001.1919) in which he stated that he was looking to buy house and land package. He stated “I have been sent some more sample floor plans from Jack at Belle Real Estate. Ideally we would want to design similar to attached with the alfresco in the centre”. He sent 4 designs which included a Hamlan Cumberland Plan (LEV.002.001.1924). On 18 January 2021 Mr King sent an email to Clarissa (LEV.002.001.1914) in which he stated “We went through a Hamlan Home display on the weekend in Armstrong, which was the same floorplan you provided to me originally[”]. He attached to the email 3 documents which were a Levonix Seachange floor plan (LEV.002.001.1916) and Hamlan’s Cumberland 232 Plan (LEV.002.001.1917) and a picture taken by Mr King in the Hamlan display home in Armstrong (LEV.002.001.1918). On 1 February 2021 a copy of floorplans for a Cumberland 266 with handwritten amendments written on them was created by Mr King or Levonix, the title of the documents being “Josh 4 bed 25sq” (LEV.002.001.1357) and “Custom U shape for Josh” (LEV.002.001.1361). On 17 March 2021 Mr King sent an email to Clarissa in which he stated “When we had our initial consult with Levonix we were showed this floorplan for the first time. It was stated to me that this was a floorplan that another client was going with that was 23 sq metres inside..... I figured out it was a floor plan from Hamlan when I was researching into design options.” Clarissa responded to Mr King “Please understand we have created a fully custom home for you. The plan we are working off was put forward to us by another client.... that didn’t go ahead with the plan.” The plans for and the house built by Levonix for Mr King and his wife on the property at Lot 511 Karkalla St, Torquay, Victoria reproduce the whole or a substantial part of the Cumberland Plan. Clarissa communicated with owners of this property in relation to the creation of the plans for and the entering into of the contract for Levonix to build the house built by Levonix on the property at Lot 511 Karkalla St, Torquay, Victoria.
(x)In the period January 2021 to August 2021 Clarissa engaged in communications with Natasha Glass in relation to the design and construction of a house built by Levonix for her and her husband on their property at Lot 513 Karkalla St, Torquay, Victoria. The plans for and the house built by Levonix for Ms Glass and her husband on the property at Lot 513 Karkalla St, Torquay, Victoria reproduce the whole or a substantial part of the Cumberland Plan. Each of Ms Ramsey and Clarissa were involved and/or copied to the communications with the owners of this property in relation to the creation of the plans for and the entering into of the contract for Levonix to build the house built by Levonix on the property.
. . .
(xx)The plans for and the façade built by Levonix on the house at the property Lot 528 Karkalla St, Torquay, Victoria reproduce the whole or a substantial part of the Coastal Plan. Each of Mr Ramsey, Ms Ramsey and Clarissa were involved and copied to the communications with the owners of this property in relation to the creation of the plans for and/or the entering into of the contract for Levonix to build the house built by Levonix on the property.
The PASC alleges additional acts of infringement.
Determination
The respondents submit the PASC discloses no reasonable cause of action against Ms Clarissa Ramsey because the PASC does not allege facts or particulars that are reasonably capable of supporting the allegations that Ms Clarissa Ramsey herself infringed or otherwise authorised others to infringe Hamlan’s copyright.
Whether the respondents’ contention is correct turns on identifying in the particulars to paragraph 20A the facts the PASC alleges against Ms Clarissa Ramsey, and whether those alleged facts are reasonably capable of supporting the allegations of infringement or authorisation of infringements made in paragraph 20A of the PASC. The relevant particulars are alleged to be in paragraphs (ii), (viii), (ix), (x), and (xxx) of the particulars to paragraph 19 of the PASC.
(a)The acts paragraph (ii) alleges against Ms Clarissa Ramsey is that she was copied to two emails Ms Ramsey sent to Mr Mee and Ms Jelbart, and that in the period after July 2020 each of Ms Ramsey and Ms Clarrisa Ramsey “were involved and copied to communications with Ms Jelbart and Mr Mee in relation to the creation of the plans for and/or the entering into of the contract for Levonix to build the house built by Levonix on the Jelbart Property”.
(b)The acts paragraph (viii) alleges against Ms Clarissa Ramsey is her receiving an email on 10 December 2020 from Ms Tiven to which there was attached Hamlan’s Cumberland 232 plan; and that Ms Clarissa Ramsey “sent and received communications with owners of this property in relation to the creation of the plans for and the entering into of the contract for Levonix to build the house built by Levonix on the property at Lot 504 Karkalla St, Torquay, Victoria”.
(c)The acts paragraph (ix) alleges against Ms Clarissa Ramsey is her receiving three emails, and her sending an email stating that “we have created a fully custom home for you. The plan we are working off was put forward to us by another client.... that didn’t go ahead with the plan”, and that Ms Clarissa Ramsey “communicated with owners of this property in relation to the creation of the plans for and the entering into of the contract for Levonix to build the house built by Levonix on the property at Lot 511 Karkalla St, Torquay, Victoria”.
(d)The acts paragraph (x) alleges against Ms Clarissa Ramsey is that she, Mr Ramsay, and Ms Ramsey were each “involved and copied to the communications with the owners of this property in relation to the creation of the plans for and/or the entering into of the contract for Levonix to build the house built by Levonix on the property”.
(e)The acts paragraph (xx) alleges against Ms Clarissa Ramsey is that she and each of Mr Ramsey Ms Ramsey “were involved and copied to the communications with the owners of this property in relation to the creation of the plans for and/or the entering into of the contract for Levonix to build the house built by Levonix on the property”.
Thus, it will be seen that the particulars allege Ms Clarissa Ramsey received five emails, and she sent one email, but otherwise make conclusory and unparticularised allegations that Ms Clarissa Ramsey was either “involved” in the creation of infringing plans, or that she sent and received communications in relation to infringing plans and the building of homes on the basis of infringing plans. Ms Clarissa Ramsey’s having received the five emails and sending the one email is incapable of supporting the allegations made in paragraph 20A of the PASC that she infringed or authorised others to infringed; and the conclusory and unparticularised allegations that Ms Clarissa Ramsey was involved in infringing conduct or was involved in communicating infringing works do not constitute material facts or particulars.[52]
[52] I discussed what must be pleaded in an action for infringement of copyright in architectural plans in Bureau Proberts Pty Ltd v Cottee Parker Architects Pty Ltd [2023] FedCFamC2G 409, at [41]-[50].
I therefore accept the respondents’ submission that the PASC discloses no reasonable cause of action against Ms Clarissa Ramsey because the PASC does not allege material facts or to the extent the PASC alleges facts, they are not reasonably capable of supporting the allegation that Ms Clarissa Ramsey herself infringed, or authorised others to infringe, any of Hamlan’s alleged copyright works.
ADDITIONAL DISCOVERY
Hamlan also seeks an order that Hamlan provide discovery “in accordance with the” Discovery Orders “in respect of the houses built at the following addresses”, these being the addresses of the properties specified in proposed paragraphs (c)(xiii), (xxi), and (xxii) of the particulars to paragraph 19 of the PASC. Those paragraphs as are as follows:
(xiii)Levonix built a house for Mr Peter Dungan and Ms Pauline Dungan on 3 Poa Street, Torquay, Victoria. The plans for and the house built by Levonix for Mr and Mrs Dungan on the property at 3 Poa Street, Torquay, Victoria reproduce the whole or a substantial part of the Cumberland Plan.
. . .
(xxi)Levonix built a house for Ms Margaret Hamilton on Lot 763 Lillium Lane, Torquay, Victoria. The plans for and the house built by Levonix for Ms Hamilton on the property at Lot 763 Lillium Lane, Torquay, Victoria reproduce the whole or a substantial part of the Bickford Plan.
(xxii) Levonix built a house for Mr Damian Harrington and Ms Fiona Harrington on Lot 531 Karkalla Street, Torquay, Victoria. The plans for and the house built by Levonix for Mr and Mrs Harrington on the property at Lot 531 Karkalla Street, Torquay, Victoria reproduce the whole or a substantial part of the Bickford Plan.
These paragraphs do not plead the material facts it would be necessary for Hamlan to plead to support a cause of action for copyright infringement. In particular, these paragraphs do not:[53]
(a)identify the part of the alleged copyright works (Hamlan plans) it is alleged LHPL reproduced in the plans (LHPL plans) on the basis of which it is alleged the houses specified in paragraphs (c)(xiii), (xxi), and (xxii) were built;
(b)identify the part or parts of the LHPL plans which it is alleged constitutes or constitute a substantial reproduction of the Hamlan plans; or
(c)identify the acts by which it is alleged a person on behalf of LHPL reproduced the part or parts of the Hamlan plans.
[53] See Bureau Proberts Pty Ltd v Cottee Parker Architects Pty Ltd [2023] FedCFamC2G 409, at [50].
I therefore would not grant Hamlan leave to file an amended statement of claim which would include paragraphs (c)(xiii), (xxi), and (xxii) of the particulars to paragraph 19 of the PASC. It follows that it would not be appropriate to make any disclosure orders in relation to the properties specified in those paragraphs.
DISPOSITION
I propose to:
(a)order that the respondents produce the Native Format Documents, in a manner to be agreed between the parties, within 14 days of the date on which I publish orders;
(b)dismiss Hamlan’s application for an order that it be provided with the redacted documents in unredacted form;
(c)dismiss Hamlan’s application for leave to file the PASC;
(d)reserve the costs of the applications; and
(e)list the matter for a further directions hearing at 9.30 am on 15 May 2025.
I certify that the preceding seventy-one (71) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 17 April 2025
0
6
3