Norm Engineering Pty Ltd v Digga Australia Pty Ltd (No. 2) - [2006] FCA 732

FEDERAL COURT OF AUSTRALIA
Norm Engineering Pty Ltd v Digga Australia Pty Ltd (No. 2) [2006] FCA 732
PRACTICE AND PROCEDURE – consideration of scope of discovery concerning documents going to access and use of the applicant’s article by a respondent for the purposes of copyright proceedings.
Clarendon v Henley Arch (2000) 46 IPR 309
Blackie & Sons Ltd v Lothian Book Publishing Co. Pty Ltd (1921) 29 CLR 396
S W Hart & Co. Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466; 5 IPR 13 Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278
NORM ENGINEERING PTY LTD (ACN 010 799 943) v DIGGA AUSTRALIA PTY LTD (ACN 010 443 875)
QUD285 OF 2005
GREENWOOD J
9 JUNE 2006
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QUD285 OF 2005

BETWEEN:
NORM ENGINEERING PTY LTD (ACN 010 799 943)

APPLICANT

AND:
DIGGA AUSTRALIA PTY LTD (ACN 010 443 875)

RESPONDENT

JUDGE:

GREENWOOD J

DATE OF ORDER:

9 JUNE 2006

WHERE MADE:

BRISBANE

THE COURT ORDERS:
1.That the Respondent make further and better discovery of all email correspondence containing:

(a)any comparison between the Applicant’s 4-in-1 bucket and any other 4-in-1 bucket; and
(b)any comment on the Applicant’s 4-in-1 bucket,
by 4.00pm, 16 June 2006.

2.Costs of the Notice of Motion issued 7 June 2006 are reserved.

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

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QUD285 OF 2005

BETWEEN:

NORM ENGINEERING PTY LTD (ACN 010 799 943)
APPLICANT

AND:

DIGGA AUSTRALIA PTY LTD (ACN 010 443 875)
RESPONDENT

JUDGE:

GREENWOOD J

DATE:

9 JUNE 2006

PLACE:

BRISBANE

REASONS FOR JUDGMENT DELIVERED EX TEMPORE AT 10.45AM

I have before me a Notice of Motion filed by the Applicant on 7 June. By paragraph 3 of the Notice of Motion the Applicant seeks an order that the Respondent make further and better discovery of all email correspondence containing:
(a)any comparison between the Applicant’s 4-in-1 bucket and any other 4‑in‑1 bucket;
(b) any comment on the Applicant’s 4-in-1 bucket,
by 4.00pm, 16 June 2006.
In support of the application for that order, the Applicant relies upon the affidavit of Justin James Twigg sworn 7 June which annexes an email dated 1 December 2003 from Mr Alan Wade who was at that date an employee of the Respondent to Mr Alan Wade at an email address alan@digga.com. In that email Mr Wade, under the head “New Product – 4-in-1 says:
“New product (4-in-1)
Is there a call in England or Europe for a 4-in-1 Skid Steer Bucket. We have produced our first prototype here and are putting it to the field for testing.
The call in Australia came to us from dealers searching for another supplier other than the current (Norm, Hughes etc). I will send you some photos for you to look at. I viewed the first couple on Friday and in…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2006] FCA 732
Decision Date: 9 JUNE 2006

CaseChat Overview and Summary

Norm Engineering Pty Ltd, the Applicant, sought an order against Digga Australia Pty Ltd, the Respondent, to make further and better discovery of documents. This was in the context of a copyright dispute regarding the design of a 4-in-1 bucket. The Federal Court of Australia was asked to consider the scope of the discovery in relation to emails that the Respondent had used in formulating its own design. The Applicant argued that the emails were relevant because they demonstrated the Respondent's deliberate copying of the Applicant's design. The Respondent argued that its IT system was inadequate to locate such emails. The court had to decide whether the Applicant was entitled to the discovery of the emails and, if so, whether the Respondent could reasonably comply with the order given the stated difficulties.

The court determined that the emails were indeed relevant to the central allegation of conscious copying, as they might provide insight into whether the Respondent had appropriated material elements of the Applicant's plans. The court held that even though it might be difficult for the Respondent to locate the emails, it was necessary for the Respondent to make comprehensive inquiries to determine whether such communications existed and to give discovery of them if found. The court found that the documents in question likely fell within the scope of documents contemplated by the Federal Court Rules. Therefore, the court made an order in terms of the Notice of Motion and reserved the costs of the motion.

The court's reasoning was grounded in the principles of copyright law, where the court must ensure that the copying was not unmeritorious and that the substantial part of the Applicant's work was not reproduced. The decision emphasised the importance of the Respondent's conscious appropriation of design elements despite the presence of objective dissimilarities. The court's order mandated the Respondent to undertake a thorough search and provide the requested documents by a specified deadline, reflecting the necessity of such evidence in the copyright infringement proceedings.

Orders