Microsoft Corporation v CX Computer Pty Ltd

Microsoft Corporation and Microsoft Australia Pty Ltd have brought a proceeding against CX Computer Pty Ltd and Gaetano Grassia (Grassia), the sole director and secretary of CX Computer, for infringement of copyright and of registered trade marks, and for contravention of certain provisions of the Trade Practices Act 1974 (Cth). The applicants seek discovery of documents and have served a notice to produce on the company and Grassia. CX Computer and Grassia seek to set aside the notice to produce on the basis that complying with the notice would involve Grassia incriminating himself. The applicants’ motion for discovery and the motion of CX Computer and Grassia to set aside the applicants’ notice to produce are before the Court.

The legal issue before the Court was whether CX Computer and Grassia were excused from giving discovery and complying with the notice to produce on the ground that doing so would involve Grassia incriminating himself. The Court held that the privilege against self-incrimination does not extend to a corporation. Therefore, the only issue was whether Grassia could rely on the privilege against self-incrimination. The Court held that Grassia could not rely on the privilege because the documents sought were not in his possession or control, but were in the possession of the corporation. Furthermore, the Court held that the privilege against self-incrimination is not available to a party who has already been charged with an offence, as Grassia had been. For these reasons, the applicants’ motion for discovery succeeds and the motion by CX Computer and Grassia to set aside the applicants’ notice to produce fails.

CX Computer and Grassia will be ordered to pay the applicants’ costs on each motion. CX Computer and Grassia will be ordered to file and serve by 14 February 2002 a verified list of documents within the categories notified in a letter dated 8 August 2001 from Mallesons Stephen Jaques to Gray & Perkins. CX Computer and Grassia have liberty to apply on 24 hours’ notice for relief in relation to the description of any particular document or documents in its or his verified list of documents. The proceeding will be stood over to 25 February 2002 at 9.30 am for further directions.