News Life Media Pty Ltd v Janeke

[2016] NSWSC 1835

Supreme Court

New South Wales

Medium Neutral Citation:	News Life Media Pty Ltd v Janeke [2016] NSWSC 1835
Hearing dates:	05/12/2016; 06/12/2016 and 8/12/2016
Date of orders:	16 December 2016
Decision date:	16 December 2016
Jurisdiction:	Equity
Before:	McDougall J
Decision:	Summons dismissed with costs.
Catchwords:	CONTRACTS – contracts of employment – restraint of trade – whether restraint is engaged – consideration of the words “in competition with” and “part of the business” - whether restraint is valid – whether injunction should be granted to give effect to the restraint - whether the supposed confidential information remains confidential PRACTICE AND PROCEDURE – application for suppression and non-publication order – where much of the information has been put in the public domain by the party claiming the order – whether order is necessary to prevent prejudice to the proper administration of justice – Court Suppression and Non-Publication Orders Act 2010 (NSW)
Legislation Cited:	Civil Procedure Act 2005 (NSW) Court Suppression and Non-Publication Orders Act 2010 (NSW)
Cases Cited:	David Syme & Co Ltd v General Motors-Holden’s Ltd [1984] 2 NSWLR 294 Emeco International Pty Ltd v O’Shea (No 2) (2012) 225 IR 423 Hogan v Australian Crime Commission (2009) 177 FCR 205 Hogan v Australian Crime Commission (2010) 240 CLR 651 Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 Jones v Dunkel (1959) 101 CLR 298 Rinehart v Welker [2011] NSWCA 403
Texts Cited:	Samuel Johnson, A Dictionary of the English Language (1820)
Category:	Principal judgment
Parties:	News Life Media Pty Ltd (Plaintiff) Evadne Janeke (Defendant)
Representation:	Counsel: I M Neil SC / A C Harding (Plaintiff) DFC Thomas / M E Ellicott   Solicitors: Dentons Australia Pty Ltd (Plaintiff) Addisons Lawyers (Defendant)
File Number(s):	2016/320000

Judgment

1. HIS HONOUR:   This litigation presents the less than edifying spectacle of two giant media organisations fighting over the services of an unfortunate young woman, whose only mistakes were to work for one, and to seek to work for the other.

2. The plaintiff (NLM) seeks injunctive relief intended to enforce a restraint of trade in her contract of employment. NLM is part of the News Corp Australia Group. The company for which Ms Janeke wishes to work, Pacific Magazines, is part of the Seven West Media Group.

3. There are three issues to be decided:

1. is the restraint of trade in Ms Janeke’s contract of employment engaged, on the facts of this case?

2. If that restraint is engaged, is it valid?

3. If the restraint is engaged and is valid, should the Court exercise its discretion in favour of the grant of an injunction?

4. The hearing was expedited and fixed for two days (in fact, it occupied three) shortly before the end of term. The restraint will expire according to its terms on 23 February 2017. Accordingly, it is desirable that I give a decision as quickly as possible. For those reasons, I shall deal with the evidence, and the parties’ detailed and very helpful submissions upon it, in a summary fashion, that I hope nonetheless will be sufficient to show what the arguments were and why, in my view, injunctive relief should be refused.

The relevant facts

5. NLM publishes a number of what it calls “lifestyle brands,” which encompass both print and digital publications. On 25 August 2014, it employed Ms Janeke as a “Commercial Integration Manager” for one of those digital brands, kidspot.com.au (kidspot). The contract specified that she might be employed in “such other position [as is] determined by the Company from time to time commensurate with [her] skills”.

6. By cl 11.1 of that contract, Ms Janeke acknowledged that she would have access to what was described as trade secrets or confidential information, and that the interests of NLM in those matters could only be protected by certain restraints. The relevant restraints were set out in cls 11.2 and 11.3(a):

11.2   You agree that having regard to the circumstances set out in this clause 11.1, you will not, directly or indirectly, either as a principal, employee, agent, director, officer, partner, consultant, contractor, advisors or otherwise, for your own benefit or the benefit of any other Person, directly or indirectly, engage in any of the activities specified in clause 11.3, within the geographical areas specified in clause 11.4, for the periods after the Termination Date specified in clause 11.5, without the prior written consent of the Company.

11.3   The activities are:

(a)   engage in or perform any work in competition with the part of the business of the Company in which you worked during the 12 months preceding the Termination Date;

7. There were many more proscribed activities in cl 11.3, but the parties agreed that it is only para (a) that is relevant.

8. The contract specified that Ms Janeke was to give eight weeks’ notice of resignation.

9. I note that although Ms Janeke’s roles and remuneration changed from time to time, the letters by which those changes were effected made it clear that her contract of employment continued. It is apparent that NLM was exercising its contractual right, in effect, to reassign her to other duties. The parties accepted that there was but one contract: that made on 25 August 2014. The significance of that date is that, as the parties agreed, it fixes the time at which the reasonableness of the restraint must be assessed.

10. In May 2016, Ms Janeke was given a new role, with the title Sales and Strategy Director, Parenting.

11. On 25 July 2016, Ms Janeke’s remuneration was increased.

12. While all this was happening, Mr Julian Delany, who was and is the Chief Digital Officer for something called News DNA, and Managing Director for news.com.au and kidspot, was developing a “special project”. He described that project as the creation of “a new digital ‘women’s network’”. Mr Delany planned “to consolidate and integrate within that network the existing News DNA female brands [and] to add new content where there were gaps in News DNA’s female portfolio of publications and platforms”. That project, he said, would involve “the creation of a new digital platform … which will act as the ‘hub’ of the existing and new brands which, together, will comprise the new digital women’s network”.

13. I interrupt the narrative to make two points. The first is that it is unclear what News DNA actually is, or comprises, or does. Mr Delany’s evidence suggests that “News DNA” may be a collective term for NLM’s “digital platforms … in Australia”.

14. The second point is that NLM’s evidence was subject to far-reaching claims for confidentiality, and accompanying requests for orders under s 7 of the Court Suppression and Non-Publication Orders Act 2010 (NSW) (the Suppression and Non-Publication Act). It became clear that those claims were over-stated, because much of the material that was claimed to be confidential, and to require the protection of an order so as to preserve NLM’s interest in that confidentiality, had in fact been put into the public domain by NLM itself. The details (such as they are) of the special project which I have given at [12] fall into that category. I add that NLM’s claims that much of the material to which Ms Janeke had been exposed in the course of her employment was confidential were, likewise, over-stated.

15. Returning to the narrative: at first, knowledge of the special project was kept close, to a group of two or three people within NLM. Next, Mr Delany created a “working group” of seven people (including himself) to take the project further. In mid August 2016, Mr Delany decided to make a confidential presentation on the special project both to members of the working group and to a “broader group chosen to participate in the implementation of the … project”. Ms Janeke was among the 25 people who were chosen to form part of the “broader group”.

16. Mr Delany and others gave the presentation on 23 August 2016. It took the form of a set of Powerpoint slides, to which various members of the working group spoke as required.

17. It was Mr Delany’s evidence that almost all the slides comprised confidential information of NLM. The exaggeration of that claim was exposed in cross-examination, although in fairness to Mr Delany it should be recorded that his views of what was confidential appeared to be based on the proposition that to someone such as himself, seeing the slides in question would reveal not only what was stated on the face of the slides but also the research and analysis that (he said) underpinned them.

18. There was no challenge to Mr Delany’s credibility. I accept that he gave evidence that he believed to be truthful. However, to the extent that his notion of confidentiality is not that which the law recognises and in some circumstances will protect means, necessarily, that some of his assertions as to confidentiality cannot be taken as proving the fact.

19. Ms Janeke was given work to do on the special project. In particular, she was “involved” in two tasks:

1. the identification of a suitable launch partner or launch partners for the special project (when it went public); and

2. the commissioning of further research to be used in connection with the implementation of the project.

20. Ms Janeke did indeed work on both those aspects of the special project. Presumably, she continued to perform her other duties as well.

21. On 28 September 2016, Ms Janeke met Mr Delany and Ms Ainslee O’Brien (to whom Ms Janeke then reported) and gave them a letter constituting “formal notification of my resignation”. The letter said, among other things, that Ms Janeke was “moving to a 4 day a week role at Pacific Magazines”.

22. Ms Janeke was directed to finish work that very moment, and to remove her possessions from NLM’s premises. She was put on “gardening leave” for the eight weeks’ duration of her notice.

23. The next day, 29 September 2016, Ms Kathleen Butler, who described herself as the “Senior HR Business Partner” for NLM, wrote to Ms Janeke confirming that she was not required to attend for duties during the period of her notice. The letter stated, among other things:

We would like to remind you of your post-employment obligations as outlined under clause 11 of your contract of employment, which continue to apply to you post the termination of your employment with the Company. This includes, but is not limited to, your obligations under clause 11.2. These obligations apply to you until 23 February 2017 and prohibit you from various activities, including but not limited to commencing employment or otherwise participating or being involved, whether directly or indirectly, with any entity that acts in competition with the Company (including any entity within the Seven West Media Group, including the Pacific Magazines division). I remind you are also required to comply with clause 7 of the Standard Terms which relates to obligations regarding confidential information.

24. On any view, that “reminder” was wrong. The “Company” was defined to mean NLM. It was quite incorrect, and misleading, to say that the restraint prevented Ms Janeke from working (etc) for “any entity that acts in competition with” NLM. It is, if I may say so, quite extraordinary that someone describing herself as a “Senior HR Business Partner” should so misstate the effect of a very important clause in a contract of employment.

25. There was further correspondence between Ms Janeke and NLM, and then between lawyers acting for both parties. Mr Bruce McWilliam, a director of the Seven West Media Group, involved himself in that correspondence. It is difficult to avoid the conclusion that his somewhat pugnacious responses to the various demands made of Ms Janeke and Pacific Magazines did little to calm the dispute that was brewing.

26. It will be necessary to return to the correspondence, because Mr Neil of Senior Counsel, who appeared with Mr Harding of Counsel for NLM, submitted that it contained admissions on the question, whether Pacific Magazines was relevantly in competition with that part of NLM’s business for which Ms Janeke had worked.

27. The only other matter of fact that needs to be mentioned at this stage is that, the period of gardening leave having expired on 23 November 2016, the parties sensibly agreed that NLM would continue to pay Ms Janeke her salary up until 9 January 2017, on condition that she would not take up her position with Pacific Magazines. The three month restraint period (which is calculated from the date of termination of employment) expires on 23 February 2017. The parties are, in effect, arguing over a further seven weeks of restraint.

First issue: is cl 11.3(a) engaged?

28. The parties submitted that this issue involves two questions of construction:

1. what is meant by “in competition with”?

2. What is meant by “the part of the business of the Company in which you worked …”?

29. Of course, those questions are related. Indeed, I think, those questions are related to the extent that the real question of construction is what is meant by the words “in competition with the part of the business of the Company in which you worked during the 12 months preceding the Termination Date”. I am not sure that the proper approach to construction requires the isolation and separate consideration of “competition” and “part of the business”.

30. It is clear that cl 11.3(a) must be construed in the context of the contract of employment as a whole. It is clear, also, that the construction to be given to “competition” and “part of the business” (which I shall use as a convenient abbreviation for the words that are the subject of the second question of construction), and to the composite expression, must depend on the function that cl 11.3(a) is intended to perform in the context of the contract overall. That is to say, the clause is to be construed purposively.

31. Mr Neil and Mr Thomas of Counsel (who appeared with Ms Ellicott of Counsel for Ms Janeke) accepted that this was the proper approach to construction.

The parties’ submissions

32. Mr Neil submitted that the word “competition” had its ordinary English meaning (which he derived from Johnson’s Dictionary of the English Language):

The act of endeavouring to gain what another endeavours to gain at the same time; rivalry: contest.

33. It is not immediately clear why the meaning of a word in Australia in the 21st century should be that accorded to it by an authority, even one of Dr Johnson’s eminence, in the 18th.

34. Mr Thomas submitted that the word “competition” should be understood in the sense that it is used in competition law: competition in a market, with specific emphasis on the extent to which one product (or one service) is substitutable for another.

35. As to “part of the business”, Mr Neil submitted that those words directed attention to the functionally distinct division of NLM’s business in which Ms Janeke worked during that period. This, he submitted, was no more than a question of fact.

36. Mr Thomas submitted that what was required was identification of that “element of the business … in which [Ms Janeke] may fairly be said to have worked in the 12 months prior to the Termination Date”.

Decision on the construction point

37. The identifiable purpose of the restraint is to protect NLM’s legitimate interest in having its confidential information remain confidential. In the context of NLM’s business and the market in which it operates, that must mean that the interest is (or at least includes) keeping that confidential information from becoming known to and exploited by NLM’s commercial rivals.

38. To my mind (and for a moment reverting to the parties’ approach of characterising the question of construction by reference to the two concepts that they outlined) that purpose informs both the meaning to be given to “competition” and the meaning to be given to “part of the business”.

39. As to “competition”, the fact that what is sought to be prevented is, or includes, exploitation of confidential information by commercial rivals to NLM suggests that the focus is on competition in a commercial context, or in a commercial sense. Those considerations suggest that Mr Thomas’ market approach is the relevant test. In other words, in assessing the question of competition, it is necessary to look at the extent to which there is competition in some particular market. In that context, concepts of substitutability may well be significant. There was no evidence directed specifically to competition in that sense, as opposed to competition in the sense of commercial rivalry.

40. Further, the commercial purpose and context help to inform the meaning to be given to “part of the business” (again, for the moment, considered as a stand-alone concept). That is because, the interest being on protection of exploitation of confidential information, the immediate question to be considered is the way in which the work to be done by Ms Janeke for her new employer would enhance the new employer’s ability to compete with NLM in respect of those products where, it may for the moment be assumed, Ms Janeke might be in possession of confidential information.

41. Turning from individual analysis to the composite expression, I think that the focus must be on competition, in the sense of rivalry within the same market, of products on which Ms Janeke worked whilst she was employed by NLM and the products on which she will work in her new role.

42. That analysis deals with the question of construction as the parties addressed it. Their submissions appeared to proceed (as did much of NLM’s evidence) on the basis that the question to be decided was whether NLM and Pacific Magazines were in competition, in respect of whatever might be the “part of the business” of NLM in which Ms Janeke had worked for the requisite period. However, that is not the test.

43. Clause 11.3(a) does not prevent Ms Janeke from working with a competitor of NLM. It prevents her from engaging in or performing work that is in competition with the part of the business of NLM for which she had worked during the relevant period. I accept of course that evidence of competition between the relevant publications of NLM and Pacific Magazines will bear upon this question. However, it is not enough. It is necessary to go further, and enquire what it is that Ms Janeke will do, in the course of her employment by Pacific Magazines that will be in competition with the relevant part of NLM’s business.

Decision on the facts

44. I start with the proposition that media organisations such as News Corp Australia and the Seven West Media Group seek to attract readers of their publications, both print and digital. As they acquire readers, so they hope to acquire advertisers in those publications.

45. The evidence makes it clear that both NLM and Pacific Magazines offer “lifestyle” publications (again, both print and digital). Those publications address many “genres” of content, including news, parenting, health, beauty and fitness, food, fashion and no doubt many others. I accept that this evidence could go to the question of competition in the sense Mr Thomas submitted that word should be understood.

46. As I have noted, Ms Janeke’s specific responsibilities at NLM started with kidspot. Ms O’Brien said that after 5 May 2016 (from which date Ms Janeke reported to Ms O’Brien), Ms Janeke’s responsibilities extended to another website, mybodyandsoul.com.au (mybodyandsoul). Ms O’Brien said:

Both of these brands target a demographic of females and mothers.

47. Ms O’Brien said, further, that Ms Janeke was the “brand advocate and specialist” for both those “brands” and that her responsibilities included:

1. “coordinating and leading the response to client briefs where the brief required placement of content on one or more of the websites for which [Ms Janeke] had a responsibility…”;

2. delivering the finalised response to the brief to the sales team who in turn would deliver the response to the agency or client from which the brief had come; and

1. as required, attending client presentations “particularly for larger accounts or where the principal focus of the campaign was brands for which [Ms Janeke] had responsibility”.

48. NLM relied on an affidavit affirmed by Mr Paul Blackburn, who was the General Manager Network Sales and Style, New South Wales for News Corp. In that role, he said, he had “overall responsibility for the advertising revenue of the News Group in New South Wales and the Style Group nationally, principally through the print publications and digital platforms of the News Group”. “News Group” was a reference to a number of companies within the New Corp family. Ms Janeke reported to Mr Blackburn before 5 May 2016.

49. Mr Blackburn suggested that Ms Janeke had responsibility for another “brand”, taste.com.au (taste), as well as for kidspot. However, Ms O’Brien did not support that aspect of Mr Blackburn’s evidence, and I do not think that, in the bald and conclusory way Mr Blackburn gave it, it has probative weight.

50. In my view, it is a fair conclusion from the evidence that the “part of the business” of NLM for which Ms Janeke worked in the 12 months prior to 23 November 2016 was, or included, the digital publications kidspot.com.au and mybodyandsoul. I do not accept Mr Neil’s primary submission, that it was “NLM’s portfolio of print and digital lifestyle publications”. Essentially, that submission conflates “part of the business” with “the business”. The same may be said of his alternative, which was that it means such part of that portfolio as targets women as its audience. Since the evidence was that NLM’s publications (print and digital) were addressed principally to women, that formulation suffers from the same defect.

51. Mr Neil submitted, as his next and more limited alternative, that the relevant part was “family and parenting, food and health and well-being”. I do not think that it is appropriate to generalise from the names of the various publications, or “brands”, to attempt to derive some underlying theme that can be reduced to catchphrases such as “family and parenting” or “health and well-being”. As I have said, I think that the focus of the words in question is on the specific parts of the business in which Ms Janeke worked over the period in question.

52. Thus, as I have said, those words should be taken to mean, on the facts of this case, the kidspot and mybodyandsoul websites. I do not find that they extend, factually, to the taste “brand” or website.

53. Ms Janeke’s contract of employment with Pacific Magazines stipulates that she will be the Head of Strategy Planning. It is, if I may say so, less than illuminating as to her duties:

You will report to the Strategy and Solutions Director or any other person nominated by the Strategy and Solutions Director and will work under the direction of the person in that position or such other position determined by the Company.

The Company may change these requirements from time to time.

54. There is no doubt that, at a level of some generality, NLM and Pacific Magazines are competitors. They produce publications, both print and digital, aimed at the same audiences. They compete through those publications for the same readership and the same advertising revenue. NLM’s evidence, which on this point I accept, is that Pacific Magazines is engaged in commercial rivalry with NLM in many ways, including as to “lifestyle” publications and “women’s publications”.

55. Specifically, I accept that Pacific Magazines has stated its “strategic mission” as being “to own every content genre we operate in … including food, family, home, fashion, health and beauty”. NLM operates in each of those “content genres”. Thus, it may be inferred, Pacific Magazines seeks to overtake NLM in each of those “content genres”. I accept that this evidence too could go to competition in the sense Mr Thomas said was relevant.

56. Nonetheless, as I have said, the relevant prohibition is not on working for a business that is in competition with NLM (or in competition with the particular part of NLM’s business in which Ms Janeke had worked for the 12 months preceding 23 November 2016). It is a restraint on engaging in or performing any work in competition with that part of NLM’s business. The evidence does not show what Ms Janeke will be doing in her role as Head of Strategy Planning, let alone that such work will be in competition (in any sense) with kidspot or mybodyandsoul.

57. Thus, in my view, NLM has failed to show that the restraint has been engaged. I add that I would reach the same conclusion even if competition were to be understood in the broad way that Mr Neil submitted it should be described, and even if the part of the business in which Ms Janeke had worked over the relevant time should be found to be that consistent with his broadest description.

58. Mr Neil relied on other evidence, including the very fact of Ms Janeke’s opposition to the injunctive relief sought. That relief did not seek to restrain her from taking up her position with NML. Relevantly, it sought, consistently with the wording of cl 11.3(a), that she be restrained for the relevant period from “performing any work in competition with the part of the business of the plaintiff in which the defendant worked …”.

59. Mr Neil submitted that if there were no competition, Ms Janeke had nothing to lose by submitting to an order in those terms, nor to gain by opposing it. He relied, also, on Ms Janeke’s failure to undertake that she would not so work, and on her comments that the restraint would significantly jeopardize her “onward employment and the financial stability of [her] family”.

60. Taking the last point first: Ms Janeke’s comments were made in response to Ms Butler’s letter of 29 September 2016, to which I have referred at [23] above. Her comments were an accurate response to Ms Butler’s misstatement of the terms of the restraint.

61. The same point cannot be made about other letters written on Ms Janeke’s behalf. Nor indeed can it be made in relation to her opposition to the grant of the relief that has been sought. If there were evidence directed at the real question (as I have identified it) rather than at the broader question of competition between NLM and Pacific Magazines generally, then I would attribute some weight to these matters. But in the absence of any other evidence going to the real question, inferences that may arise from a refusal to submit to (on the evidence, unjustified) demands do not seem to me to take the matter much further. They might reflect, just as much, a desire to have a final determination on the point so that Ms Janeke could take up her employment untroubled by any thought of further consequences.

62. Mr Neil emphasised Ms Janeke’s unexplained decision not to give evidence (she had sworn an affidavit, but it was not read). He said that the Court could more comfortably draw inferences that were otherwise available on the evidence where she could have, but did not (for unexplained reasons), give evidence relevant to them. The proposition is obvious at a level of some generality. However, before Jones v Dunkel (1959) 101 CLR 298 can be deployed, in that way, there must be evidence to support those inferences that could have been, but were not, explained. In this case, for the reasons I have given, the evidence does not do that. Accordingly, Jones v Dunkel is of no assistance.

63. Finally, in connection with this issue, I should refer to Mr Thomas’ submissions based on material from NLM’s documentation that identified what it regarded as its competitors. Mr Thomas submitted that Pacific Magazines was not identified as a competitor in any of that material.

64. That submission is factually correct. However, I do not think that there is a great deal of probative weight to be attached to five documents extracted from the many hundreds that were in evidence. I add that the point might have had more substance had Mr Delany or Ms O’Brien been cross-examined on the documents on which Mr Thomas relied. They were not.

Second issue: is the restraint valid?

65. This issue does not arise given my conclusion on the first issue. However, I shall deal with it briefly.

66. NLM’s case was that the restraint was no more than is reasonable to protect its legitimate interest in its own confidential information. Mr Neil attempted in his final oral submissions to extend that protectable interest to trade secrets, but I think that was more of an afterthought than a considered position.

67. The evidence shows that NLM has been indiscriminate in its approach to imposing restraints on employees. A summary of contracts prepared by the parties shows that many employees (including some who were exposed to the supposedly highly confidential material relating to the special project, or to supposedly confidential financial information), had no restraints at all. Others, who on any view were senior to Ms Janeke, had equal restraints.

68. The haphazard way in which the restraints were imposed (or not imposed) suggests very strongly that they were imposed as a matter of form rather than as a result of appropriate contemplation on the extent to which the party sought to be restrained might indeed have access to confidential information. That impression is reinforced by the evidence in cross-examination of Mr Delany and Ms O’Brien. Each of them conceded that they did not check to see whether employees who were selected to work on the special project were subject to appropriate restraints before they were so directed.

69. Were it necessary to do so, I would conclude that the restraint went further than was reasonably necessary to protect NLM’s legitimate interest in its confidential information. In reaching that conclusion, I would take into account also some of the matters that I shall discuss in relation to the third issue.

Third issue: discretionary considerations

70. The first point to make is that I am far from satisfied, on the evidence as a whole, that much of the material to which Ms Janeke was exposed in the course of her employment was confidential so as to warrant protection by a covenant in restraint of trade such as cl 11.3(a). As I have said, NLM’s claims for confidentiality were overstated; indeed, greatly so.

71. Ms O’Brien identified some eight categories of confidential information. However, the key feature of many of those matters was that each of them is in substance a “point in time” snapshot. Ms O’Brien agreed that the information was updated on a weekly, and sometimes daily, basis. It is possible that there may still be some information current today to which Ms Janeke had been exposed up until 28 September 2016. However, I do not think that the mere possibility that some such information may exist would afford a reason for granting an injunction aimed at protecting it, as I have said effectively for a further period of only seven weeks after 9 January 2017.

72. Again, the evidence shows that a significant amount of the information in Ms O’Brien’s categories was known to people within NLM who were not subject to any restraint in the event of their leaving their employment. Again, some of those people are more senior than Ms Janeke was. Again, those considerations suggest to me that there has never been any real process of analysis, on a case by case basis, of the reasons why and extent to which a restraint might be justified.

73. Ms O’Brien and Mr Delany conceded in the course of their cross-examinations, that many of the “insights” that were claimed to be confidential were either no more than common sense or were matters that would be known to any competent media practitioner in Australia in the 21st century. Equally, they conceded, many of the matters claimed to be confidential had become public: often through announcements made by NLM itself. In those circumstances, there can be no need for a restraint, because the information either was never confidential to begin with or, if it were, has ceased to be so.

74. Although Mr Delany sought to urge the view that information relating to the special project was confidential, and should be protected (and that its revelation could cause significant harm to NLM), I am not persuaded that this is so. Again, much of the matter to which he referred was either not confidential to start with, or has lost any confidentiality that it may have had by being publicised. Again, at least some of the people who became privy to that information had no restraints in their contracts of employment.

75. The evidence suggests that material relating to client briefs and responses has a limited “shelf life”. Ms O’Brien suggested that it could remain relevant for three to six months, as that would be the time frame that it would take for a response to a brief to mature into an appropriate advertising campaign. It will be noted that the restraint that is in issue is focused on the lower end of that range. It is therefore relevant to observe that, come 9 January 2017, such information as Ms Janeke might then retain in her memory will be over 3 months old. It is implausible that exploitation of such residual memory as she might have could cause commercial harm to NLM.

76. I add that some of the submissions put for NLM veered perilously close to suggesting that Ms Janeke should be restrained from using her own knowhow: knowhow that she had built up before she was employed by NLM, and developed during her employment with NLM. I do not think that this is a case where one could possibly justify the grant of injunctive relief that would have the effect preventing someone from using their knowhow, built up legitimately over many years in a particular industry.

77. Mr Neil relied on Ms Janeke’s actions in downloading material from her work laptop to a USB drive. Although much of that material was personal to her, some of it was not. It was the property of NLM. The material that was the property of NLM included at least a substantial part of Mr Delany’s deck of slides, the subject of his presentation on 23 August 2016. There was other material of NLM’s, to which Ms Janeke could not have had any valid claim.

78. The USB drive has been returned. There is no suggestion that Ms Janeke has retained some illicit copy.

79. As I have noted, Ms Janeke did not give evidence. Accordingly, I do not know her explanation for what she did. Even if it were possible to infer that she had done what she did by mistake, or for some genuinely held but erroneously belief that it was appropriate to do so, I would not draw any such inference in the absence of evidence from her.

80. I accept, as Mr Neil submitted, that the circumstances relating to the downloading of the material and its removal on the USB drive are suspicious. However, that suspicion is not enough to justify the grant of final injunctive relief. In particular, the suspicion is not enough when, on the evidence as a whole, the Court can be satisfied (as I am) that no case for relief has been made out.

Order under the Suppression andNon-Publication Act

81. NLM sought wide ranging suppression orders, including over the whole of Mr Delany’s deck of Powerpoint slides. It sought, in the alternative, orders limited to specific documents, said to be those that have not been identified as having entered into the public domain, and over specific paragraphs of the affidavits. I am not sure whether the alternative form of order also excluded documents that were conceded in cross-examination to reveal information that would have been obvious, or a matter of common sense, to any 21st century media practitioner.

82. Nonetheless, as Mr Thomas pointed out in his submissions on this point, even the alternative form of order still included documents that, one way or another, were in the public domain.

83. Section 6 of the Suppression and Non-Publication Act sets out what in my view is the primary principle, by which requests for suppression or non-publication orders must be evaluated:

6      Safeguarding public interest in open justice

In deciding whether to make a suppression order or non-publication order, a court must take into account that a primary objective of the administration of justice is to safeguard the public interest in open justice.

84. Section 7 authorises the making of orders. It is not necessary to set out that section. Section 8 sets out the grounds for making an order, and the requirement for an order to specify the ground or grounds on which it is made:

8    Grounds for making an order

(1)    A court may make a suppression order or non-publication order on one or more of the following grounds:

(a)    the order is necessary to prevent prejudice to the proper administration of justice,

(b)    the order is necessary to prevent prejudice to the interests of the Commonwealth or a State or Territory in relation to national or international security,

(c)    the order is necessary to protect the safety of any person,

(d)    the order is necessary to avoid causing undue distress or embarrassment to a party to or witness in criminal proceedings involving an offence of a sexual nature (including an act of indecency),

(e)    it is otherwise necessary in the public interest for the order to be made and that public interest significantly outweighs the public interest in open justice.

(2)    A suppression order or non-publication order must specify the ground or grounds on which the order is made.

85. In the present case, the ground relied upon is that set out in para (a).

86. The requirement that the order be “necessary to prevent prejudice to the proper administration of justice” sets a high standard. In Hogan v Australian Crime Commission (2010) 240 CLR 651, the High Court said (of s 50 of the Federal Court of Australia Act 1976 (Cth), which is in similar terms to the relevant provisions of the Suppression andNon-Publication Act) that the word “necessary” is a strong word, indicating that the test is not one concerned with trivialities.

87. At [38], the Court quoted, with approval (see at [39]) what Jessup J, with whom Moore J had generally agreed, had said in the Full Court ((2009) 177 FCR 205 at [42]):

How, then, does the applicant assert that the contentious documents were, and remain, inherently confidential? It is true that, generally speaking, every person has a right to keep from the view of others, or of the world at large, documents and things which he or she regards as his or her private concern. But so to propose is no more, in my view, than to state a conclusion about the absence of a right in any other person to view such documents and things. There are, of course, all manner of situations in which a claim to keep a particular document confidential will be recognised by a court. For example, equity recognises that the information contained in certain documents is, of its nature and by reason of the circumstances of its communication, subject to a duty of confidence. So too will the law protect trade secrets in well‑recognised situations. And it is commonly the case that the court will protect from the public eye personal or commercial information the value of which as an asset would be seriously compromised by disclosure. In this latter category, the source of the jurisdiction (in this court) to provide such protection is s 50 itself. That is to say, the question will always be: is an order necessary to prevent prejudice to the administration of justice? Absent an affirmative answer to this question it is, in my view, almost meaningless to propose that documents themselves are, or that the information in them is, inherently confidential to an extent justifying, or assisting in the justification of, the making of an order permanently protecting them from public view.

88. It is well established (and, if I may say so respectfully, obvious) that a litigant who commences proceedings to protect its confidential information or trade secrets should not be prejudiced by having to reveal that information or those secrets in public (assuming, of course, that the claims are made good). To require it to do so, as the price of obtaining protection, would effectively destroy the protection and significantly (if not entirely) devalue the worth of that information or those secrets. If authority is needed for that proposition, it is provided by cases such as David Syme & Co Ltd v General Motors-Holden’s Ltd [1984] 2 NSWLR 294 at 298-299 (Street CJ), 306 (Hutley JA); see also (in relation to the Suppression and Non-Publication Act) Rinehart v Welker [2011] NSWCA 403 at [31], [37] (Bathurst CJ and McColl JA), [113] (Young JA).

88. In the present case, to the extent that the information is confidential (and I repeat that despite Mr Neil’s riff in closing submissions, there is no evidence that trade secrets are involved), it should be protected to the extent necessary to preserve its commercial value.

89. Mr Harding (who put NLM’s submissions on this issue) pointed out, correctly, that confidentiality may inhere in documents that are compilations of material in the public domain, if it is established that the maker of the document has used his or her brains to produce a result that, in effect, goes beyond what may be derived simply by reading the public information itself. See Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104; Emeco International Pty Ltd v O’Shea (No 2) (2012) 225 IR 423.

90. Accepting, as I do, the validity of that proposition in the way in which it was stated, it cannot be applied without hesitation in the present case. I say that because it is NLM itself, or its associated companies, that has been responsible for the revelation of material that has found its way into the public domain. That was done for the specific purpose of advancing NLM’s commercial interests, by generating (so it was hoped) public interest in the special project. In other words, it was part of a carefully orchestrated publicity campaign intended to lead up to the launch of the special project in late February 2017. To the extent that this activity identifies the underlying thought and work, and their consequences, that is NLM’s doing.

91. Regardless, there is another important consideration. That is (as I have said above) the concessions by NLM’s witnesses that the information said to be confidential that is comprised in many of the documents is changing all the time, and will continue to do so. On any view, much of it has a limited shelf life. The evidence suggested that, to the extent the information relates to client briefs and responses to them, it would either mature into a revenue-earning contract, or fall by the wayside, within a period of three to six months.

92. I do not propose to undertake a line by line and page by page analysis of the information claimed to be confidential, either in the wider version of the orders propounded or in the narrower alternative version. It is for NLM to identify with precision both the material in respect of which the orders are sought and the reasons why, in respect of all (and all the components of) that material, it is confidential. I am satisfied, as Mr Thomas submitted, that even in respect of the alternative version propounded, NLM has not applied the requisite degree of intellectual effort.

93. Section 56 of the Civil Procedure Act2005 (NSW) has something to say in those circumstances. Taking into account the time of year at which the case was heard, and the competing demands on the Court’s time, I do not regard it as the Court’s obligation to do what NLM should have done. In those circumstances, I propose to take a more broad-brush approach.

94. I am satisfied that to the extent that the information was confidential at the time it was created, and remains confidential (including because it has not been put into the public domain by NLM itself), some sort of protection is necessary. The balancing exercise required by s 8 of the Suppression and Non-Publication Act clearly dictates this. As I have said, it would be wrong in principle for the Court to require, as the price of protecting confidential information, that the information itself be put in the public arena through the process of the open administration of justice. However, I am not satisfied that protection is needed up until 30 June 2017. That approach seems to me to be inconsistent with the evidence to which I have referred (and to be another manifestation of NLM’s over-inclusive approach to claims of confidentiality).

95. There is one exception: exhibit PX7. That is the summary of various contracts of employment to which I referred at [67] above. It includes details of the salaries of the named employees. That material does seem to me to be confidential, and does seem to me to be something which should remain confidential even after 30 June 2017. I note that the relevant information is contained in exhibit PX8, in which the salary details have been redacted.

96. Otherwise, in my view, there is no possible basis shown for protection beyond 28 February 2017, when (on current projections) the new project will be launched. And in saying that, I am conscious that even in the form of protection sought in the alternative orders, much of the material may well have lost its commercial utility before that date. As I have indicated, I do not regard the expenditure of court time at the end of the court year as being productive, in an attempt further to narrow the categories of information to which the orders will relate.

97. In summary, being satisfied (as I am) of the necessity for making the orders, I am not satisfied that, with the exception of exhibit PX7, they need be made beyond 28 February 2017. And that will be reflected in what I do.

Conclusion and orders

99. For the reasons I have given, NLM’s case for injunctive relief extending beyond the agreed date of 9 January 2017 fails. The summons should be dismissed with costs.

100. I am prepared to grant limited orders under s 7 of the SuppressionandNon-Publication Act.

101. I make the following orders:

1. Pursuant to section 7 of the Court Suppression and Non-Publication Orders Act 2010 (NSW) (“Act”) or alternatively the inherent jurisdiction of the Court, order that the following evidence in the proceedings not be published or disclosed:

1. the following parts of the confidential affidavit of Paul Barrett Blackburn dated 4 November 2016 [Court Book (CB) Vol 1 Tab 6]: paragraphs 21, 25 first sentence, 34, 35, 42, 43, 44, 45, 46, 47, 54, 55, 59, 60, 61 and 62;

2. the following parts of the confidential affidavit of Julian Warren Delany dated 4 November 2016 [CB Vol 1 Tab 7]:

1. paragraphs 20, 21, 22, 32, 33, 34, 37 second sentence, 52, 53, 57-62, 64, 65, 67-69, 71-81, 93 second sentence, 94, 98 second sentence, 102(b); and

2. Annexures F, I and M, save for the following parts of Annexure I: Vol 1 Tab 7 pp. 180, 183, 184, 185, 192, 197, 205 and 221;

3. the following parts of the expert report of Rodney McKemmish dated 11 November 2016 [CB Vol 2 Tab 8]:

1. paragraphs 1(d), 27, 30, 33, 38 (the tables in (b) and (c)), 39 to 49 and 54 to 87; and

2. attachments C – J and M – BB;

4. confidential exhibit AB1 to the affidavit of Ainslee Margaret O’Brien dated 4 November 2016 [CB Vol 2 Tab 10], other than CB pages 545 – 550, 552 – 553, 555, 557 – 558 and 560 – 565;

5. the following parts of the confidential affidavit of Ainslee Margaret O’Brien dated 4 November 2016 [CB Vol 3 Tab 12]: paragraphs 4, 5, 6, 7, 22, 27, 29 – 30, 31 second sentence and 35;

6. confidential exhibit AB3 to the confidential affidavit of Ainslee Margaret O’Brien 4 November 2016 [CB Vol 3 Tab 13], other than CB pages 98-100;

7. the following parts of the confidential affidavit of Ainslee Margaret O’Brien 16 November 2016 [CB Vol 3 Tab 14]: paragraphs 5, 13 and 13 to 54;

8. confidential exhibit AB4 to the confidential affidavit of Ainslee Margaret O’Brien 16 November 2016 [CB Vol 3 Tab 15], except for CB pages 971 to 1010;

9. exhibit AB5 to the affidavit of Ainslee Margaret O’Brien 1 December 2016 [CB Vol 4 Tab 24];

10. exhibit PX7.

2. The orders in 1 above shall apply:

1. until further order in respect of Exhibit PX7;

2. otherwise, until 28 February 2017; and

3. throughout the Commonwealth;

3. These orders are made on the ground set out in s 8(1)(a) of the Act.

4. Order that the summons be dismissed with costs.

5. Direct that the exhibits be returned.

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Decision last updated: 20 April 2018