Kerry Equipment (Aust) Pty Ltd v Gill
[2004] FCA 1323
•5 OCTOBER 2004
FEDERAL COURT OF AUSTRALIA
Kerry Equipment (Aust) Pty Ltd v Gill [2004] FCA 1323
KERRY EQUIPMENT (AUST) PTY LTD and K.D.B. ENGINEERING PTY LTD v GREGORY DAVID GILL and ABLE INNOVATORS PTY LTD
W229 of 2004RD NICHOLSON J
5 OCTOBER 2004
PERTH
IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
W229 OF 2004
BETWEEN:
KERRY EQUIPMENT (AUST) PTY LTD
ACN 082 784 147
FIRST APPLICANTK.D.B. ENGINEERING PTY LTD
ACN 008 884 482
SECOND APPLICANTAND:
GREGORY DAVID GILL
FIRST RESPONDENTABLE INNOVATORS PTY LTD
ACN 108 981 933
SECOND RESPONDENTJUDGE:
RD NICHOLSON J
DATE OF ORDER:
5 OCTOBER 2004
WHERE MADE:
PERTH
THE COURT ORDERS THAT:
UPON application made this day by motion filed 5 October 2004 by the applicants AND UPON hearing Patricia Cahill of Counsel for the Applicants AND UPON reading the said motion and affidavits of:
1.Affidavit of Don Turner sworn 1 October 2004.
2.Affidavit of Fiona Chubb sworn 1 October 2004
3.Affidavit of Mitchell Bezzina sworn 1 October 2004.
4.Affidavit of Paul Sheiner sworn 1 October 2004.
5.Affidavit of Jennifer Ivimey sworn 30 September 2004.
6.Affidavit of Alan Plant sworn 29 September 2004.
7.Affidavit of Paul Sheiner sworn 5 October 2004.
in support thereof AND UPON the undertakings dated 1 October 2004 of the applicants filed in these proceedings AND UPON the undertaking dated 1 October 2004 of Stephen Lemonis, a certificated legal practitioner (“the Supervising Solicitor”) filed in these proceedings IT IS ORDERED THAT:
1.The second respondent is restrained from carrying on business in the manufacture and distribution of hospital and nursing home equipment including manufacture, sale or distribution of the products listed in its price list dated July 2004 until 4 pm on 12 October 2004.
2.The respondents permit the Supervising Solicitor and such persons, not exceeding three members, employees or agents of the applicants' solicitors, Christensen Vaughan, a computer expert and Paul Rowe, to enter at any time between 9 am and 5 pm on 6 and/or 7 October 2004:
(a)the business premises of the second respondent at 39 Juna Drive, Malaga in the State of Western Australia;
(b)the residence of the first respondent at 18 Inthanoona Road, Gidgegannup, 6083;
(c)such premises as may be disclosed to the Supervising Solicitor pursuant to paragraph 4 of this order;
(d)together with any outhouses forming part of the premises referred to in paragraphs (a)-(c) above, and any motor vehicles owned or used by the respondents,
for the purposes of looking for, inspecting, photographing, photocopying, copying or downloading onto disks or other electronic data storage devices and removing into the custody of the Supervising Solicitor and making notes of, documents, electronic data or articles being:
(1)design drawings and component design drawings for Kerry Equipment and K*Care products;
(2)turret punch computer programs for Kerry Equipment and K*Care products;
(3) Kerry Equipment pricelist;
(4) bills of material for Kerry Equipment and K*Care products;
(5) standard production cards for Kerry Equipment and K*Care products;
(6)any documents or articles relating to or which wholly or partly reproduce or were derived from the information referred to in (1) and (2) above;
3.For the purpose of giving effect to paragraph 2 of this order the respondents where necessary will cause to be displayed or printed out by computer or computers all documents and materials referred to in paragraph 2 or any portion or part of such materials as are in computer readable form.
4.The respondents, having made all due and proper inquiries, within 24 hours of service upon them of this order:
(a)disclose to the Supervising Solicitor the whereabouts of any documents, electronic data or other material falling within the categories of documents or other data or material referred to in paragraphs 2(1)-(6) herein whether on the premises mentioned in paragraphs 2(a) and (b) herein or on other premises insofar as such documents, data or material have not already been taken into the custody of the Supervising Solicitor;
(b)deliver up to the Supervising Solicitor all documents, electronic data or other material in their possession, custody or control falling within the categories of documents or other data or material referred to in paragraphs 2(1)-(6) herein insofar as such documents, data or material have not already been taken into the custody of the Supervising Solicitor;
5.The respondents within 48 hours of service upon them of this order make and provide to the Supervising Solicitor a sworn affidavit deposing to:
(a)the whereabouts of any documents, electronic data or other material falling within the categories of documents or other data or material referred to in paragraphs 2(1)-(6) herein whether on the premises mentioned in paragraphs 2(a) and (b) herein or on other premises;
(b)all documents, electronic data or other material in their possession, custody or control falling within the categories of documents or other data or material referred to in paragraphs 2(1)-(6) herein insofar as such documents, data or material have not already been taken into the custody of the Supervising Solicitor;
6.Until 8 October 2004 the respondents and their servants and agents be restrained from directly or indirectly informing any person company, or firm of these orders of this proceeding save for the purpose of obtaining legal advice.
7.Annexures ‘DGT7’ and ‘DGT28’ to the affidavit of Don Turner be placed in a sealed enveloped with the following description on its face ‘This document is commercially sensitive. Access to this document is restricted by the judicial officers of the Court until further notice’.
8.The applicants and/or the Supervising Solicitor are not required to serve annexures ‘DT7’ or ‘DGT28’ on the respondents.
9.The respondents are at liberty to apply to discharge or vary this order upon giving to the solicitors for the applicants 24 hours’ notice.
10.This motion be adjourned to 12 October 2004 for hearing inter partes.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
W229 OF 2004
BETWEEN:
KERRY EQUIPMENT (AUST) PTY LTD
ACN 082 784 147
FIRST APPLICANTK.D.B. ENGINEERING PTY LTD
ACN 008 884 482
SECOND APPLICANTAND:
GREGORY DAVID GILL
FIRST RESPONDENTABLE INNOVATORS PTY LTD
ACN 108 981 933
SECOND RESPONDENT
JUDGE:
RD NICHOLSON J
DATE:
5 OCTOBER 2004
PLACE:
PERTH
REASONS FOR JUDGMENT
A motion is brought seeking orders ex parte in terms of a revised minute. The orders are said to be directed to preservation of evidence; that is, seeking an Anton Piller order and injunctive relief. The motion is supported by seven affidavits. I have read and examined these.
On an application for an order in the form of an Anton Piller order, there are three essential preconditions. First, there must be an extremely strong prima facie case. Second, the damage, actual or potential, which the applicant has suffered or will suffer must be very serious. Third, there must be clear evidence the respondents have in their possession incriminating or damaging documents or other material and that there is a real possibility that those documents or material might be destroyed before any application inter partes could be brought.
It is essential on such an application that there is full disclosure to the Court of all relevant matters and that various undertakings are given as to damages and as to the manner in which the search is to be executed. In this case that manner of the search is addressed in the form of the orders which expressly address who would be permitted to enter, the hours of their entry, the address of the premises involved, and the purposes of such entry.
The minute and motion are supported by an outline of submissions brought by the applicants. This outline is extremely clear and I adopt it as my statement of reasons on this occasion. It addresses the need for the strong prima facie case; the actual or potential damage and its seriousness; the evidence which disclose that the respondents possess vital documentary evidence; and the possibility that such evidence may be destroyed. In relation to the interim injunction, it addresses the serious question to be tried namely, infringement of the applicant's copyright in artistic and literary works and the issues of balance of convenience. In my view the outline correctly addresses the evidence disclosed by the affidavits and discharges the obligation to be frank with the Court in the application. I therefore reason in terms of that outline.
For the reasons thus given, I propose to make the orders in the revised minute, amending only order 1 to specify the date discussed with counsel. This would limit the restraint on the conduct of business by the second respondent to the stream of business relating to the manufacture and distribution of hospital and nursing home equipment, including manufacture, sale or distribution of products listed in its price list dated July 2004. That stream is but one of two or three streams of business of the second respondent, so the restraint would not be in the nature of a total restraint on the second respondent carrying on business. That restraint will expire at 4 pm on 12 October 2004. In any event, it is subject to the right recognised in the proposed orders of the respondents being at liberty to apply to discharge or vary the order upon giving to the solicitors for the applicants 24 hours' notice. A further protection for the respondents exists in the fact that the motion itself is adjourned to 12 October 2004 at 9 am for hearing inter partes on the remaining aspects and the continuation of the injunctive relief.
I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice RD Nicholson. Associate:
Dated: 18 October 2004
Counsel for the First and Second Applicants: PE Cahill Solicitor for the First and Second Applicants: Christensen Vaughan There was no appearance for the First and Second Respondents Date of Hearing: 5 October 2004 Date of Judgment: 5 October 2004
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