Smartways Logistics Holdings Pty Ltd v O'Sullivan

[2020] NSWSC 189

Supreme Court

New South Wales

• Amendment notes

Medium Neutral Citation:

Smartways Logistics Holdings Pty Ltd v O’Sullivan [2020] NSWSC 189

Hearing dates:

27 June 2019

Decision date:

06 March 2020

Jurisdiction:

Equity

Before:

Henry J

Decision:

See paragraph [231]

Catchwords:

EQUITY – breach of confidence – necessary quality of confidence – employment – lists of client and contractor driver contact details found to be confidential – business method information, including shipping rates charged to clients and driver management tools, found to be confidential

 

EQUITY– conduct constituting breach of confidence – access and use of confidential information to set up and conduct rival business during employment – contact with clients and contractor drivers using confidential contact details after employment – use of confidential shipping rates after employment – diversion of a business opportunity to a third party that would have been open to employer

 

EQUITY – equitable remedies – declaratory relief appropriate – injunctive relief granted in limited terms – delivery up and deletion orders granted

  COSTS – gross sum costs order – where defendants have stopped contesting the proceedings – where defendants are in default of orders - where defendants have failed to take active steps in the proceedings – further discount for duplication of work

Legislation Cited:

Civil Procedure Act 2005 (NSW), ss 98(4)(c), 101(4)
Uniform Civil Procedure Rules 2005 (NSW), rr 36.7, 36.4(3)

Cases Cited:

AIIB Pty Ltd v Beard [2009] NSWSC 1001
Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2012] FCA 748
Bass v Permanent Trustee Co Ltd (1999) 198 CLR 334; [1999] HCA 9
Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 119
Bobb v Wombat Securities Pty Ltd (No 2) [2013] NSWSC 863
Church of the Foursquare Gospel (Australia) Limited v New Hope Church Swansea Inc [2019] NSWSC 519
Corrs Pavey Whiting & Byrne v Collector of Customs (1987) 14 FCR 434; [1987] FCA 266
CSL Limited v Glaxosmithkline Australia Pty Ltd (2006) 70 IPR 128; [2006] FCA 1301
Del Casale v Artedomus (Aust) Pty Ltd (2007) 165 IR 148; [2007] NSWCA 172
Digital Pulse Pty Ltd v Harris and Others (2002) 166 FLR 421; [2002] NSWSC 33
Doppstadt Australia Pty Ltd v Lovick & Son Developments Pty Ltd [2014] NSWCA 158
Drummond and Rosen Pty Ltd v Easey & Ors (No 2) [2009] NSWCA 331
E Co v Q (No 5) [2019] NSWSC 844
E Worsley & Co Ltd v Cooper [1939] 1 All ER 290
EB 9 & 10 Pty Ltd v Owners – Strata Plan 934 (2018) 98 NSWLR 889; [2018] NSWCA 288
Fewin Pty Ltd v Burke (No 3) [2017] FCA 693
Forster v Jododex Australia Pty Ltd (1972) 127 CLR 421; [1972] HCA 61
Hadid v Lenfest Communications Inc [2000] FCA 628
Hamod v State of New South Wales [2011] NSWCA 375
Harrison v Schipp (2002) 54 NSWLR 738; [2002] NSWCA 213
Idoport Pty Ltd v National Australia Bank Ltd [2007] NSWSC 23
IMF (Australia) Ltd v Sons of Gwalia Ltd (administrator appointed) (2004) 211 ALR 231; [2004] FCA 1390
Isaac v Dargan Financial Pty Ltd (2018) 98 NSWLR 343; [2018] NSWCA 163
James v Australian and New Zealand Banking Group Limited [2016] NSWSC 833
Magic Menu Systems Pty Ltd v AFA Facilitation Pty Ltd (1997) 72 FCR 261
Microsoft Corp v Jiang [2003] FCA 101
Mid-City Skin Cancer and Laser Centre Pty Ltd v Zahedi-Anarak (2006) 67 NSWLR 569; [2006] NSWSC 844
National Roads and Motorists’ Assn Ltd v Geeson (2001) 40 ACSR 1; [2001] NSWCA 343
NP Generations Pty Ltd v Feneley (2001) 80 SASR 151; [2001] SASC 185
Prestige Lifting Services Pty Ltd v Williams [2015] FCA 1063
Ramsey v Annesley College (No 2) [2013] SASC 145
Robb v Green [1895] 2 QB 1
Sony Computer Entertainment Australia Pty Ltd v Carey [2003] FCA 605
Sony Entertainment (Australia) Ltd v Smith (2005) 215 ALR 788; [2005] FCA 228
Telstra Corporation Ltd v First Netcom Pty Ltd (1997) 78 FCR 132
Wright v Gasweld (1991) 22 NSWLR 317
Zetting v Muller [2017] NSWSC 659

Texts Cited:

R Dean, The Law of Trade Secrets, (3rd ed, 2018, Lawbook Co)

Category:

Principal judgment

Parties:

Smartways Logistics Holdings Pty Ltd (plaintiff)
Terence O’Sullivan (first defendant)
Kaitlyn Leahey (second defendant)

Representation:

Counsel:
P Flynn (plaintiff)

  Solicitors:
McCabe Curwood (plaintiff)

File Number(s):

2018/272369

Publication restriction:

Nil

Judgment

1. These proceedings involve claims of breach of contract and breach of equitable obligations of confidence made by the plaintiff, Smartways Logistics Holdings Pty Ltd (Smartways), against the defendants, Terence O’Sullivan and Kaitlyn Leahey, who are two of Smartways’ senior ex-employees.

2. Smartways operates a medical and healthcare transport and logistics services business. Shortly after leaving Smartways, Mr O’Sullivan started a rival medical transport logistics business, Just-Medical Logistics. Ms Leahey soon followed and started working for Just-Medical Logistics.

3. Smartways claims that Mr O’Sullivan and Ms Leahey accessed and used its confidential information for the purposes of setting up and conducting Just-Medical Logistics. The confidential information alleged to have been misused comprises contact information about Smartways’ clients, suppliers and independent contractor drivers, and business method information which comprises shipping rates, driver fleet management tools and other information contained in other internal documents developed by Smartways.

4. Smartways also claims that, while he was employed by Smartways, Mr O’Sullivan breached his obligation of good faith and associated obligations by pursuing a business opportunity for the benefit of one of Smartways’ competitors.

5. The proceedings were commenced by Smartways on an urgent basis on 5 September 2018. It subsequently obtained interim orders restraining Mr O’Sullivan and Ms Leahey from using or disclosing Smartways’ confidential information.

6. On 2 October 2018, Mr O’Sullivan and Ms Leahey gave undertakings to the Court and Smartways, on a no admissions basis, that they would not use or disclose certain information which Smartways claims to be confidential until further order of the Court.

7. The proceedings were listed before me for final hearing on 27 June 2019. Mr O’Sullivan and Ms Leahey did not appear. While initially defending the claims, since 20 January 2019, they had not taken any steps in the proceedings. As there was evidence before the Court that Mr O’Sullivan and Ms Leahey had been given notice of the hearing date and served with all relevant documents, including the court book and a notice of motion seeking a gross sum cost order, the final hearing proceeded without any appearances or arguments from them.

8. By way of final relief, Smartways seeks declarations, permanent injunctions and delivery up and deletion orders in respect of specific types of information described collectively as the “Confidential Contact Information” and “Confidential Business Method Information”.

9. Smartways also seeks a gross sum costs order in relation to its costs of the proceedings.

10. Smartways’ summons refers to other information in respect of which claims were made and relief sought, such as the “Road Haul Supplier Rate Card”, “Smartways Barcodes” documents and “Smartways Hold for Collection” labels. The other information was not referred to in the written and oral submissions or the draft orders sought at the final hearing. I have, therefore, proceeded on the basis that Smartways does not press any claims in respect of that information.

11. By their defence filed on 22 October 2018, Mr O’Sullivan and Ms Leahey deny the confidentiality of some of the information the subject of Smartways’ claims. They also deny breaching their contractual obligations and equitable obligations of confidence during or post their employment with Smartways. Mr O’Sullivan also denies the claim about the business opportunity.

12. The issues for determination are:

1. Is the Contact and Business Method Information alleged by Smartways to have been used by Mr O’Sullivan and Ms Leahey confidential and protectable under their employment contracts and/or in equity?

2. Did Mr O’Sullivan and Ms Leahey use or disclose Smartways’ Confidential Contact and Business Method Information in breach of their employment contracts and/or equitable obligations of confidence during and post their employment with Smartways?

3. Did Mr O’Sullivan divert a business opportunity away from Smartways to a third party in breach of his contractual employment obligations?

4. What relief, if any, is necessary to protect Smartways’ interests?

5. Should the Court make a gross sum costs order in favour of Smartways and, if so, in what amount?

13. I have been greatly assisted by the written and oral submissions from counsel for Smartways. Some of what follows, especially as to background matters, is drawn with thanks from the written submissions.

Smartways’ evidence

14. Smartways relies on a substantial amount of lay and expert evidence in support of the final relief claimed.

15. Smartways’ counsel submitted at the hearing that it was necessary for Smartways to prepare extensive evidence proving matters in circumstances where Mr O’Sullivan and Ms Leahey had put on a defence which effectively denies the confidentiality of much of Smartways information and that they used that information.

16. The lay evidence includes three affidavits from the Director and Group CEO of Smartways, Marcus Wyborn, and one affidavit from Allan Bonifacio, the Commercial Manager of Smartways.

17. Mr Wyborn’s evidence details the nature of Smartways business, the nature of the information which is alleged by Smartways to be confidential and the reasons why Smartways asserts that information has the necessary qualities of confidence. Mr Wyborn also gives evidence about Mr O’Sullivan and Ms Leahey’s employment arrangements, their access to the documents claimed to be confidential and evidence regarding their alleged misuse of confidential information and impacts on the Smartways’ business.

18. Mr Bonifacio’s affidavit addresses the nature of some of the client and driver contact information which is alleged by Smartways to be confidential, including whether the information is publicly available and how the information is treated by Smartways. He also gives evidence about some of the information which is alleged to have been accessed by Ms Leahey immediately prior to her departure from Smartways. Mr Bonifacio also adduces summary evidence of Smartways’ clients and drivers contacted by Mr O’Sullivan and Ms Leahey based on analyses of Telstra mobile phone records produced in the proceedings and forensic analyses undertaken on Mr O’Sullivan and Ms Leahey’s mobile phones.

19. The lay evidence also includes four affidavits from the principal and three employees of McCabe Curwood, the solicitors for Smartways. Those affidavits deal with analyses of the Telstra records produced relating to Mr O’Sullivan and Ms Leahey. The deponents give evidence of the number of Smartways’ clients and drivers contact numbers contacted by Mr O’Sullivan’s and Ms Leahey’s numbers since they left Smartways’ employment until 18 September 2018 by reference to contact details contained in the Updated Contact Information. They also give evidence of searches undertaken to ascertain whether the contact details of some Smartways’ clients and drivers are publicly available.

20. Smartways also relies on an expert report of Leanne Balit, digital forensic examiner at Klein & Co, Computer Forensics Pty Ltd. Ms Balit was assisted by two other staff from Klein & Co.

21. Ms Balit was given access to two laptop computers which, she was instructed, had been used by Mr O’Sullivan and Ms Leahey while working at Smartways. Ms Balit took images of the contents of those computers and performed various analyses on the forensic images of the internal hard drives. The steps undertaken to analyse the data included locating and extracting files from the computers known as link files and reviewing the internet explorer file histories, the jump lists and O-Alerts event logs. The results of this analysis was appended to her report.

22. In addition, several mailbox archives were located and extracted from the computers under Mr O’Sullivan and Ms Leahey’s user profiles. The contents of those mailboxes were processed and searched to identify emails that had been sent to or from Mr O’Sullivan and Ms Leahey’s personal email accounts. Copies of those email messages and attachments were also appended to her report.

23. Ms Balit was also given access to three mobile phones which, she had been instructed, had been used by Mr O’Sullivan and Ms Leahey from 1 April 2018 to 2 October 2018 and which had been made available for forensic inspection by Klein & Co pursuant to court orders made on 2 October 2018. Two of those phones were Mr O’Sullivan and Ms Leahey’s personal mobile phones which they used while employed by Smartways.

24. Ms Balit made forensic copies of the mobile phones and used forensic tools to extract data including call logs, chat messages, contacts, multimedia messaging services (MMS), short messaging services (SMS), voicemail and cloud-based application accounts. The data was searched to identify, amongst other things, messages exchanged between Mr O’Sullivan and Ms Leahey.

25. In addition, six further affidavits were before the Court relating to the proof of service of documents during the course of the proceedings.

26. The extent of the evidence prepared by Smartways is relevant to the quantum of the gross sum costs order, a topic to which I return later in these reasons.

Background facts

The nature of Smartways’ business

27. Smartways is an Australian and New Zealand-based business-to-business medical and healthcare transport and logistics service provider.

28. Smartways’ transport business involves the delivery of medical devices, instrumentation, medicines, capital equipment and medical consumables between hospitals and businesses in the medical and health industries throughout Australia, New Zealand and also internationally. Smartways also provides associated logistics and outsourced services and solutions to its clients.

29. The transport services that Smartways provides includes time sensitive, express freight services, such as the urgent delivery of medical equipment to hospitals for use during time critical medical procedures. The transport services Smartways provides includes:

1. “Patient on Table” (POT) services, which require urgent delivery because a particular piece of medical equipment is needed for an operation that is in progress;

2. “Same Day Drive” networks to regional Australia and New Zealand. Same Day Drive services include standard, VIP emergency and after hours transport services;

3. “in reverse” transport services, which involves the return of freight (such as medical implants and instruments) from a hospital to enable them to be promptly reprocessed and sent to another hospital for another procedure; and

4. proactive “call-in-services”, whereby a Smartways driver identifies freight available for return at hospitals and clinics and “call in” the identified freight so the client can decide whether they would like the freight back.

30. Smartways’ logistics services involve integrated third party logistics, including warehousing, stock management, stock processing and distribution/transport management services. Smartways also offers stock and cycle counts, stock replenishment, stock recalls and specialised medical device operational labour hire services.

Smartways’ drivers

31. In addition to thirteen employed staff in Australia, Smartways has approximately 100 owner drivers who are independent contractors that carry out deliveries, road haul work and other logistics services for Smartways. Smartways engages its contractor drivers through advertisements and by word of mouth. Smartways’ drivers sign a contract with Smartways which details the rates paid and the hours to be worked, as well as other terms and conditions.

32. Before contracting to Smartways, drivers are put through an onboarding and induction process. The onboarding process includes a basic psychometric test, police background and reference checks and an initial three month contract. Drivers are also provided with training to ensure a good working knowledge of Smartways’ clients and the hospital environments, including the various departments from which they pick up and deliver items on an urgent basis.

33. Drivers are provided with a mobile phone by Smartways which has access to a driver app developed by Smartways. The Smartways app allows a driver to accept a job and tracks the status of the job. As part of their induction process, drivers are also given information about a Driver Portal developed by Smartways.

34. Mr Wyborn’s evidence is that the experience and familiarity of Smartways’ drivers with hospital campuses and hospital staff is vital to Smartways’ business as it ensures that Smartways is able to deliver high quality, timely and reliable services to its clients. His evidence is that a failure by a driver to deliver services on time or correctly results in a warning being given to a driver and that three warnings may result in termination of a driver’s contract.

35. Smartways communicates with its drivers primarily via the Smartways mobile phone number rather than via a drivers’ personal mobile phone number. The phone number of the mobile phones issued to Smartways’ drivers are not publicly available. That number and the personal contact details of Smartways’ drivers, including their personal mobile phone numbers, are stored and maintained by Smartways in lists and other documents which are accessible to Smartways employees on a “need to know” basis.

36. Mr Wyborn’s evidence is that Smartways’ drivers and their contact details are a valuable asset to Smartways because of the personal relationships they develop with Smartways’ clients and hospital staff, their training, knowledge and experience in a specialised medical device and healthcare industry, and their ability to negotiate complex hospital campuses.

Smartways’ clients

37. Smartways’ clients are medical device suppliers and healthcare companies. They operate in what Mr Wyborn describes as an insular industry and have demanding and complex service needs. A number of clients are subsidiaries of foreign companies.

38. His evidence is that it is not easy to get access to decision makers of the medical device and healthcare companies who have an influence over which logistics operator(s) they use; nor is the information concerning the identity and contact details of the decision makers readily available.

39. Information about Smartways’ clients is updated and maintained in its databases and considered to be confidential.

Smartways suppliers

40. While Smartways does most of its transport through its network of contractor drivers, it also outsources some of this work to third parties, such as Toll Priority.

41. Smartways also contracts with a key road haul supplier, the identity of which is claimed by Smartways to be confidential and subject to a suppression order.

42. The prices that the road haul supplier charges Smartways are set out in a rate card that has been negotiated over time and are used to calculate the prices Smartways charges to clients.

Smartways’ systems

43. Smartways has developed proprietary web-based and cloud hosted systems, referred to as the Transport Management System (TMS) and the Warehouse Management System (WMS).

44. Smartways’ TMS stores information about Smartways’ clients, including their names, company email and mobile phone numbers. It also stores information about the services provided to Smartways’ clients, including booking details and rates charged. TMS also stores information about Smartways’ drivers, including personal and work mobile phone numbers, insurances and vehicle details.

45. Access by Smartways employees to the TMS and WMS is via a unique username and password. The level of access to the information contained within them is dependent on the employee’s role and level of seniority within the business.

43. As part of its business, Smartways also uses a cloud-based corporate filing system known as the Smartways dropbox account. It is made up of a number of folders which hosts Smartways’ business documents. Smartways’ staff can only access the dropbox account by a login and password unique to each employee. Access to folders within the dropbox account is based on seniority and what information they require to carry out their role and duties.

44. In addition to restricting access to information based on an employee’s need, Smartways takes other steps to protect the confidentiality of its business information. Those steps include marking certain information, such as rate cards, proposals and other business documents, with the words “STRICTLY CONFIDENTIAL AND PRIVATE”; providing education and advice to staff about the information that is confidential to Smartways and how to protect that information, such as instructing staff to not disclose to drivers the rates charged to clients, and on privacy and other security regulations; identifying confidentiality obligations about fees and rates charged to clients as part of Smartways terms and conditions for the supply of services; and including an internal comments box in the TMS to record commercially sensitive information, such as specific clients rates.

Mr O’Sullivan’s employment with Smartways

48. Mr O’Sullivan was employed by Smartways from 9 September 2015 to 4 April 2018, first as a Fleet Manager and then as Fleet and Operations Manager.

49. Mr O’Sullivan’s employment contract with Smartways is dated 9 September 2015 and includes terms that he:

1. would, during the course of his employment, perform his duties and responsibilities in a proper, ethical, diligent, professional and efficient manner, including always acting in good faith and in the best interests of Smartways: clause 11.2(b);

2. would, during the course of his employment, give the whole of his time, ability and attention in normal working hours, or when reasonably required outside those hours, to the business of Smartways: clause 11.2(c);

3. would, during the course of his employment, use his best endeavours to protect, enhance and promote the interests, welfare, profitability, growth and reputation of Smartways’ business: clause 11.2(e);

4. would not engage in any business or activities which may conflict with or be harmful to the business interests of Smartways: clause 11.2(g);

5. must, on termination of his employment, return to Smartways all property belonging to Smartways in his possession, custody or control, including (inter alia) the confidential information and intellectual property of Smartways and that he may be required to declare that he has complied with this condition of his employment contract: clause 17;

6. agreed to respect the confidentiality of information and documents to which he had access in the course of or arising from his employment with Smartways: clause 18.1;

7. must not, during his employment or after the termination of his employment, directly or indirectly use or disclose (or attempt to use or disclose) any confidential information for any unauthorised purpose, including any benefit to him or any other (inter alia) natural person, company, business or other organisation or entity of any description: clauses 18.2 and 20.2;

8. must ensure secure custody of confidential information in his control or possession and use his best endeavours to prevent the use or disclosure of confidential information by any other (inter alia) natural person, company, business or other organisation or entity of any description: clauses 18.3 and 20.2;

9. acknowledged and agreed that damages may be inadequate compensation for breach of clause 18 of his employment contract and that Smartways may seek (inter alia) an injunction or similar remedy to restrain any conduct or threatened conduct in addition to any other remedy Smartways may wish to pursue: clause 18.7(a).

50. Mr O’Sullivan’s employment contract identifies his duties and responsibilities as including:

1. management of the owner-driver contractor fleet and hiring and terminating those independent contractors, being the Smartways drivers;

2. overseeing training and quality control procedures and policies;

3. identification of risk and implementation of solutions to manage business risk;

4. liaising with the Coordinator and Customer Service teams to improve fleet utilisation;

5. assisting with the customer service and management of important client relationships;

6. identification and implementation of processes and procedures, including information technology system and other technology improvements; and

7. building business relationships with prospective clients.

51. Mr O’Sullivan was also responsible for dealing with a variety of Smartways suppliers, including its main road haul supplier and Virgin and Qantas for air haul.

52. During the course of his employment, Mr O’Sullivan reported directly to Mr Wyborn. Mr O’Sullivan had full access to 21 folders within the Smartways dropbox account and Staff 1 level access to Smartways’ TMS and WMS.

53. Mr O’Sullivan was provided with a laptop by Smartways. He used his personal mobile phone for Smartways’ business purposes. On or about 9 November 2015, Mr Wyborn entered details of over 60 Smartways’ drivers, clients and suppliers into Mr O’Sullivan’s phone.

54. On 9 March 2018, Mr O’Sullivan’s employment was given an oral warning due to concerns about his performance and behaviour.

55. On 21 March 2018, Mr O’Sullivan was given a final written warning about his performance.

56. On 4 April 2018, Mr O’Sullivan’s employment was terminated by Smartways. On the same day, Mr O’Sullivan and Smartways entered into a deed of release and settlement (Deed), pursuant to which Mr O’Sullivan warranted that he had returned all of Smartways’ property, including Smartways’ confidential information, and had deleted his Smartways email account from his personal mobile phone (cl 4). He also agreed that he would comply with his post-employment obligations under his employment contract, including those relating to Confidential Information (cl 5).

Ms Leahey’s employment with Smartways

57. Ms Leahey was employed with Smartways from 10 April 2015 as a Customer Service Executive. She later took the position of Customer Service Team Leader.

58. As a Customer Service Executive, Ms Leahey’s duties and responsibilities included dealing with Smartways’ clients. Her employment contract identified that, amongst her duties, that she may be involved in direct dealings with Smartways’ customers and suppliers and would be required to attend to customer queries, book and amend client orders, and assist with invoices.

59. Ms Leahey’s employment contract is dated 22 April 2015 and includes terms that she:

1. would, during the course of her employment, perform her duties and responsibilities in a proper, ethical, diligent, professional and efficient manner, including always acting in good faith and in the best interests of Smartways: clause 11.2(b);

2. would, during the course of her employment, use her best endeavours to protect, enhance and promote the interests, welfare, profitability, growth and reputation of Smartways’ business: clause 11.2(c);

3. would not engage in any business or activities which may conflict with or be harmful to the business interests of Smartways: clause 11.2(e);

4. must on termination of her employment, return to Smartways all property belonging to Smartways in her possession, custody or control, including (inter alia) the confidential information and intellectual property of Smartways and that she may be required to declare that she has complied with this condition of her employment contract: clause 17;

5. agreed to respect the confidentiality of information and documents to which she had access in the course of or arising from her employment with Smartways: clause 18.1;

6. must not, during her employment or after the termination of her employment, directly or indirectly use or disclose (or attempt to use or disclose) any confidential information for any unauthorised purpose, including any benefit to her or any other (inter alia) natural person, company, business or other organisation or entity of any description: clauses 18.2 and 20.2;

7. must ensure secure custody of confidential information in her control or possession and use her best endeavours to prevent the use or disclosure of confidential information by any other (inter alia) natural person, company, business or other organisation or entity of any description: clauses 18.3 and 20.2; and

8. acknowledged and agreed that damages may be inadequate compensation for breach of clause 18 of her employment contract and that Smartways may seek (inter alia) an injunction or similar remedy to restrain any conduct or threatened conduct in addition to any other remedy Smartways may wish to pursue: clause 18.7.

60. During the course of her employment, Ms Leahey used a laptop provided by Smartways. She maintained her own personal mobile phone and also had access to a Smartways mobile phone shared by the customer service team.

61. Reflecting her senior position within Smartways, Ms Leahey had full access to 18 dropbox folders in the Smartways dropbox account, including all files in the customer service folder, the record management folder, the supplier management folder, the driver files, the manuals and training folder, the fleet management folder and the team billing folder. Ms Leahey also had Staff 1 level access to TMS and WMS which enabled her to view, edit and download information regarding Smartways drivers, including their contact details and rates, and information relating to clients, including rates charged, contact details and invoices.

62. On 15 May 2018, Ms Leahey resigned from Smartways with effect from 1 June 2018. Her last day of service was 18 May 2018. She took annual leave between 18 May and 1 June 2018.

Establishment of Just-Medical Logistics

63. On 30 April 2018, Mr O’Sullivan registered the business name “Just-Medical Logistics”.

64. The Just-Medical Logistics website identifies the services it offers as Australia-wide express and road services. Those services include the same types of services offered by Smartways, such as Same Day Drive, after hours and POT.

65. From about the week commencing 4 June 2018, Mr Wyborn started receiving feedback from Smartways’ drivers and staff that Mr O’Sullivan and Ms Leahey had begun approaching various Smartways’ clients to pitch for work for the business Just-Medical Logistics.

66. On 16 June 2018, Mr Wyborn became aware of a Facebook post indicating that Ms Leahey was employed as a customer service manager at Just-Medical Logistics.

67. On or about 19 June 2018, Mr Wyborn instructed Klein & Co to start a forensic examination of the laptop computers used by Mr O’Sullivan and Ms Leahey while they were employed by Smartways.

68. On 29 June and 12 July 2018, Smartways’ solicitors sent letters to Mr O’Sullivan and Ms Leahey in which they reminded them of the post-employment confidentiality obligations owed to Smartways. The letters also requested Mr O’Sullivan and Ms Leahey to sign declarations that they had complied with clause 17.1 of their employment contracts and returned to Smartways (or in the case of electronic information, permanently erased or destroyed) all property belonging to Smartways in their possession, custody or control, including (inter alia) confidential information. No responses were received to those letters.

Is the information alleged by Smartways to have been used by Mr O’Sullivan and Ms Leahey confidential and protectable under contract and/or in equity?

69. Mr O’Sullivan and Ms Leahey’s employment contracts and Mr O’Sullivan’s Deed contain terms which require them to maintain and protect the confidentiality of “Confidential Information” to which they had access to in the course of or arising from their employment with Smartways. The contractual confidentiality obligations are expressed to apply to Mr O’Sullivan and Ms Leahey post their employment with Smartways.

70. Despite being capitalised, “Confidential Information” in Mr O’Sullivan and Ms Leahey’s employment contracts and the Deed is not a defined term. Nor do they include or refer to any list of information which assists in determining what is included in the meaning of “Confidential Information”.

71. In the absence of a defined term or list, the question of whether the information claimed by Smartways is protectable under contract is to be determined by reference to whether the information was confidential in character: Isaac v Dargan Financial Pty Ltd (2018) 98 NSWLR 343; [2018] NSWCA 163, at [137]. It also has to be information which was accessed during the course of Mr O’Sullivan and Ms Leahey’s employment with Smartways rather than, say, information they had personally developed or obtained at some other time outside of their roles with Smartways.

72. For an equitable obligation of confidence to arise, the information claimed to be confidential must be able to be identified with specificity, must have the necessary quality of confidence about it (and is not, for example, common or public knowledge), and must have been imparted to the person alleged to have misused it in circumstances importing an obligation of confidence: Corrs Pavey Whiting & Byrne v Collector of Customs (1987) 14 FCR 434; [1987] FCA 266 at 443. To that must be added the element of evidence of actual or threatened unauthorised use to support a claim for misuse of confidential information in contract or in equity.

73. In this case, there is no issue as to the specificity of the information which is claimed by Smartways to be confidential and protectable under contract and in equity.

74. The confidential information comprises two categories of information which are identified by reference to specific types of information and documents in evidence.

75. The first category of information is referred to as “Confidential Contact Information” and comprises the information contained in two lists containing the names and contact details of Smartways’ clients, drivers and suppliers. The second category is described as the “Confidential Business Method Information” and comprises eight types of information and documents which Smartways has developed and uses as part of its business.

76. The Court can consider a range of factors to determine the question of whether the Confidential Contact and Business Method Information is of a confidential character and was imparted to Mr O’Sullivan and Ms Leahey in circumstances importing obligations of confidence on them.

77. The factors relevant to this case include the extent to which the information is known within and outside the Smartways’ business, the extent of measures taken by Smartways to protect the information, the value of the information to Smartways and its competitors, the efforts taken to develop the information, the ease or difficulty with which the information may be duplicated or acquired, the fact that Mr O’Sullivan and Ms Leahey had been permitted to access or share the information by virtue of their seniority and the nature of the information and Smartways’ sensitivity to the information: Wright v Gasweld (1991) 22 NSWLR 317 at 334; R Dean, The Law of Trade Secrets, (3rd ed, 2018, Lawbook Co) at 131-2; Del Casale v Artedomus (Aust) Pty Ltd (2007) 165 IR 148; [2007] NSWCA 172 at [40].

Confidential Contact Information

78. I am satisfied that the Confidential Contact Information identified in this case has the necessary quality of confidence and was imparted to Mr O’Sullivan and Ms Leahey in circumstances importing obligations of confidence on them, such as to be protectable under their employment contracts, Mr O’Sullivan’s Deed and in equity.

79. The Confidential Contact Information comprises the names and telephone numbers (mostly mobile phone numbers) of Smartways’ clients and suppliers (and individuals within those organisations) and Smartways’ contractor drivers. It is contained in two lists included in confidential exhibits to the affidavits of Andrew Lacey dated 10 September 2018 and Marcus Wyborn dated 29 September 2018.

80. The first list is an excel document titled “Updated Client Contact List”. It includes the names and over 370 telephone numbers of current clients, suppliers and drivers of Smartways.

81. The other list was referred to at the hearing as the “Further Contact List”. It contains the names and telephone numbers of 22 Smartways’ clients and drivers who Smartways dealt with during the course of Mr O’Sullivan and Ms Leahey’s employment but whose details are not included in the Updated Client Contact List.

82. Both lists identify individuals within Smartways’ clients who make decisions about logistics and how to contact them. As noted above, Mr Wyborn’s evidence is that it is not easy to identify and obtain access to the decision makers of the medical device and healthcare companies who have an influence over which logistics operator they use.

83. Mr Wyborn’s evidence that Smartways does not make public the names or contact details of its clients and drivers and that it treats those details as information which is confidential to Smartways. For example, the terms contained in Smartways’ driver contracts provides that “client contacts” is confidential information of Smartways.

84. The Updated Client Contact List has been compiled by Smartways over a number of years, including from information Smartways obtained in 2014 when the business was purchased from Richard Afman. The Updated Client Contact List is regularly updated and maintained through software called Manager, is stored on the Smartways dropbox account and can be accessed via the Smartways phone system. It can only be accessed via the local phone system in Sydney and cannot be accessed remotely. Only certain staff can download the Updated Client Contact List, one of whom was Ms Leahey.

85. The evidence establishes that information concerning the identity and contact details of Smartways’ clients and suppliers is not readily accessible or publicly available. This is supported by evidence of searches done on public sources, such as via websites, LinkedIn and Facebook, that confirms that all the contact details of clients on the lists are not in the public domain, contrary to the assertion in the defence filed by Mr O’Sullivan and Ms Leahey. This is not surprising given many of the contact numbers are for particular individual clients and suppliers and are mobile phone numbers.

86. A list of clients which is not publicly available is inherently valuable to Smartways and of value to a competitor. It is one of the most obvious examples of confidential information which a Court will protect: Telstra Corporation Ltd v First Netcom Pty Ltd (1997) 78 FCR 132, at 138.

87. As to drivers, many of the contact details in the lists are the mobile numbers for the phones issued to drivers by Smartways. They are numbers provided to the driver (and accessible by Smartways employees) for use when working with Smartways and are not accessible through searching public sites. To the extent that the driver contact details included in the list are private personal mobile phone numbers, the evidence also indicates that most of those numbers are also not in the public domain, contrary to the assertion in the defence filed by Mr O’Sullivan and Ms Leahey. Based on the evidence, I am satisfied that all the names and telephone numbers of Smartways’ clients, drivers and suppliers contained in the lists have not entered the public domain so as to be stripped of their quality of confidence.

88. I am also persuaded by Mr Wyborn’s evidence (the relevant parts of which I have summarised at [34] to [36]) that the names and contact details of Smartways’ drivers are of commercial value to Smartways which, if disclosed to a competitor, would be to Smartways’ detriment. Given that value, a list that includes Smartways’ drivers and their mobile phone contact details is, in my view, akin to a customer list and also protectable as confidential information of Smartways.

78. The compilation of contact details of clients in a list is something which is recognised as capable of carrying with it the necessary quality of confidence: AIIB Pty Ltd v Beard [2009] NSWSC 1001, at [157]; Robb v Green [1895] 2 QB 1. In my view, this principle applies, in this case, to a list of the contact details of Smartways’ drivers.

79. In any event, the Confidential Contact Information would not, in my view, lose its quality of confidence because certain of the drivers or clients referred to have a contact number listed on a public site, such as on a website, or on Facebook or LinkedIn. It is the combination of the information about the status as a Smartways’ client, supplier or driver combined with the contact number that gives the information its confidential status.

80. The evidence discloses that some client and driver contact details were contained in the mobile phones used by Mr O’Sullivan and Ms Leahey while they were employed by Smartways. The fact that they kept such details on their phones or in other mediums (such as on laptops) is not, in my view, inconsistent with the details contained within the Confidential Client Contact List being imparted and received in circumstances which give rise to confidentiality obligations. The details were obtained by them in the course of, and for use as part of, their employment with Smartways: Isaac v Dargan Financial Pty Ltd (2018) 98 NSWLR 343; [2018] NSWCA 163, at [153].

81. In my view, it is implicit from the above matters that the identity and contact numbers of Smartways’ clients and suppliers (and individuals within those organisations) and contractor drivers were accessible to Mr O’Sullivan and Ms Leahey as a result of their employment with Smartways, for their use in relation to the Smartways business only and were to be kept confidential to Smartways.

Confidential Business Method Information

93. I am also satisfied that the Confidential Business Method Information identified in this case has the necessary quality of confidence so as to attract protection in contract and equity.

94. The Confidential Business Method Information comprises eight categories of information and documents, each of which contains information which is not widely known outside the Smartways’ business (other than to some clients and drivers), has been developed by Smartways, would be difficult to replicate and would be valuable to a competing business. The information is also identified, maintained or accessed in ways which seeks to limit use and protect the confidentiality of the information to the Smartways’ business and those employees with a need to know, which included Mr O’Sullivan and Ms Leahey.

95. Two of the categories of information relate to Smartways’ shipping rates, being rates charged by Smartways to clients for services (but only to the extent they are not publicly available) and those charged to Smartways by one of its suppliers, Toll Priority. Mr Wyborn’s evidence is that Smartways’ client and Toll Priority shipping rates are commercially sensitive and confidential to Smartways.

96. Smartways’ standard shipping rates to clients are stored on the TMS. Smartways’ practice is to mark client proposals and rate cards, which contain the rates charged for services, with the words “Strictly Private and Confidential”. It was not part of Mr O’Sullivan or Ms Leahy’s role to send out rate cards or proposals to clients.

97. The Toll Priority shipping rates are contained in the “Toll Priority Rate Card” (and include documents by the file name “TOLL PRIORITY RATE CARD 20141024 SMARTWAYS LOGISTICS client copy.xls”). This rate card is stored in the Supplier Management folder on the Smartways dropbox account.

98. There is also a document described as the “After Hours & Smart Rates Calculator” (referred to by the file name “AFTER HOURS & SMART rates.xls”). This is a tool that was developed by Mr Bonifacio for use by Smartways to calculate and set the rates charged to clients for non-standard services. Access to the tool enables the identification of Smartways’ non-standard rates charged for particular services to clients. Those non-standard rates are not stored on the TMS. The tool is accessible via the Smartways dropbox account. Customer Service Staff do not use the After Hours & Smart Rates Calculator in their day-to-day activities.

99. The other five categories of documents relate to Smartways’ drivers.

100. The “Driver Contracts” are the terms and conditions contained in the Smartways driver contracts (including documents by the file name “Driver Contract.docx”). The driver contracts contain terms which are negotiated with drivers, including the rates they are paid. They also include a confidentiality provision which identifies sub-contractor rates, client contacts and documentation including business processes and manuals and presentations as information which is confidential to Smartways. The example driver contract in evidence is marked “strictly private and confidential”.

101. There are three documents which comprise internal Smartways’ driver management tools; referred to as the “Drivers List” (including documents by the file name “Drivers List.xlsx”); the “Updated Drivers List” (including documents by the file name “updated drivers list 30062017.xlsx”); and the “EOY Roster 2017 Drivers Roster” (by the file name “EOY ROSTER 2017 Drivers Roster.xlsx”). These documents have been developed by Smartways as tools for the management of their contractor driver fleet. These tools identify Smartways’ drivers by name and where they are located in Australia. They also include information relating to the periodic payment and availability of drivers. These documents are accessible in folders in the Smartways dropbox account.

102. Finally, there are the “Driver Induction Files”, which include documents with the file names “Driver Portal Guide v2 080817.pdf”, “driver APP Workflow v1.pdf” and “Device and Insurance Form.pdf”. These documents were developed by Smartways for use during the induction and onboarding process of new Smartways drivers. They contain information relating to a portal developed by Smartways for use by their drivers and other internal management documents. They are stored in the customer service team file of the Smartways dropbox account (and copies were found in Mr O’Sullivan’s private folder on dropbox) and are marked “STRICTLY PRIVATE AND CONFIDENTIAL”.

Did Mr O’Sullivan and Ms Leahey use Smartways’ confidential information in breach of their employment contracts or equitable obligations of confidence?

103. Smartways claims that, during and after their employment with Smartways, Mr O’Sullivan and Ms Leahey accessed and used its confidential information for the purposes of setting up and conducting Just-Medical Logistics in breach of the express terms of their Smartways’ employment contracts and their equitable obligations of confidence.

104. It also claims that the use by Mr Sullivan was in breach of a deed he entered into with Smartways when he left its employ on 4 April 2018.

Use of confidential information during employment for non-Smartways purposes

Mr O’Sullivan

105. The evidence establishes that, during the period immediately after he had received a written warning on 21 March 2018 to his termination date on 4 April 2018, Mr O’Sullivan accessed a number of folders and documents on his laptop which contained Confidential Business Method Information of Smartways.

106. On 23 March 2018, Mr O’Sullivan accessed a folder containing information relating to a Smartways’ driver. The information in that folder contained the driver’s contract, rates and contact details, and his termination letter. Mr Wyborn’s evidence is that there would have been very little or no need for Mr O’Sullivan to have accessed that folder as the driver had been terminated over a month earlier.

107. On 28 March 2018, Mr O’Sullivan accessed the document titled "Drivers List.xlsx" from the Smartways dropbox account. As noted earlier, that document is a fleet management tool which concerns the periodic payment of Smartways drivers. Mr Wyborn’s evidence is that the timing of Mr O’Sullivan’s access is suspicious because the document was not used or referred to in Smartways’ fortnightly invoice cycle.

108. On 3 April 2018, Mr O’Sullivan accessed the files “Driver Portal Guide v2 080817.pdf”, “driver APP workflow vl.pdf” and “Device and Insurance Form.pdf’ from the Smartways dropbox account. Mr Wyborn’s evidence is that access to these documents on 3 April 2018 might have been required if Mr O’Sullivan used them as part of a new Smartways’ driver’s onboarding process or if he needed to provide them to Smartways’ coordinators who had misplaced them. Mr Wyborn’s investigations revealed that the driver engaged by Smartways on 3 or 4 April 2018 did not receive those documents from Mr O’Sullivan or anyone else when he commenced on that date. A search of Mr O’Sullivan’s email account also did not establish any other business purpose for Mr O’Sullivan’s access on that day.

109. On 4 April 2018, Mr O’Sullivan accessed the Smartways’ Christmas driver roster contained in a document entitled “EOY ROSTER 2017 Drivers Roster.xlsx” from the Smartways dropbox account. Mr Wyborn’s evidence is that there was no business reason for Mr O’Sullivan to access that roster in April.

Ms Leahey

110. The evidence establishes that, during the period from 7 May 2018 to 18 May 2018 (being the day on which Ms Leahey went on leave before her final resignation date of 1 June 2018), Ms Leahey accessed a number of files on her laptop that contained Confidential Contact and Business Method Information and also disclosed Confidential Contact and Business Method Information to Mr O’Sullivan by text message.

111. On 7 May 2018, Ms Leahey accessed the “Updated Driver’s List", being the file named “updated drivers list30062017.xlsx” saved to her desktop folder. Mr Wyborn is not aware of any reason why Ms Leahey needed access to this document at this time or to save it to her desktop.

112. On 13 May 2018, Ms Leahey and Mr O’Sullivan exchanged text messages detailing rates for particular services. The reference in one of the text messages to “Smartways can’t compete” suggests that the discussion of the rates was for the purposes of Mr O’Sullivan setting rates for Just-Medical Logistics.

113. On 14 May 2018, Ms Leahey sent two text messages to Mr O’Sullivan that identified the rates which had been negotiated and charged by Smartways to two different clients for services between Newcastle and Sydney. Those rates are stored in the TMS. Ms Leahey also sent another text providing Mr O’Sullivan with the contact details of a Smartways’ client.

114. On multiple occasions during the week of 14 May 2018, Ms Leahey accessed the Updated Client Contact List via the Smartways dropbox account. Doing so enabled Ms Leahey to contact Smartways’ drivers and clients via their private contact details, and share those details with Mr O’Sullivan.

115. On 15 May 2018, Ms Leahey sent a text to Mr O’Sullivan which included the confidential rate that Smartways had been offering to clients for services between Melbourne and Albury, which are stored on the TMS.

116. On 16 May 2018, Ms Leahey accessed a range of files relating to a Smartways driver in Queensland, including the driver contract which set out the drivers’ negotiated rates and other terms. Mr Wyborn is not aware of any reason why Ms Leahey would have accessed those documents to perform her job. His investigations also suggest that Ms Leahey did not contact that driver during her last week of employment with Smartways.

117. On 17 and 18 May 2018, Ms Leahey accessed the "Toll Priority Rate Card" which was saved to her desktop folder and the "After Hours & Smart Rates Calculator" via the Smartways dropbox account. Mr Wyborn is not aware of any reason for Ms Leahey to have accessed those files to perform her duties.

118. On the evening of 18 May 2018 and on 21 May 2018, after Ms Leahey had left Smartways to take annual leave before her termination date, attempts were made to access the Smartways dropbox account using Ms Leahey’s login and password details.

119. The forensic analysis undertaken by Klein & Co of Ms Leahey and Mr O’Sullivan’s mobile phones also indicates that, over the period from 4 April 2018 to 19 May 2018, Mr O’Sullivan and Ms Leahey exchanged 968 text messages and had voice communications totalling about three hours, of which 190 text messages and 90 minutes of voice calls took place during Ms Leahey’s last week of employment with Smartways.

Findings of breach during their employment

120. Smartways submits that the nature and timing of their access to Smartways’ confidential information during the period immediately before they resigned leads to the inescapable conclusion that such access was for the purposes of use in the setting up of Just-Medical Logistics. I accept that submission.

121. The evidence outlined above establishes that a range of Smartways’ Confidential Contact and Business Method Information was accessed by Mr O’Sullivan and Ms Leahey while they were employed by Smartways in the period just before they both left. Mr Wyborn’s evidence suggests that there were no good reasons for them to have accessed the types of information at the times they did to fulfil their duties at Smartways.

122. In the absence of any explanation by Mr O’Sullivan and Ms Leahey as to any legitimate business need, I consider it open on the evidence to find that the information they accessed was used by them for purposes that were not related to their employment at Smartways. The intensity of the contact during the period after Mr O’Sullivan resigned and the terms of the text messages between Ms Leahey and Mr O’Sullivan supports that finding, as does the evidence of Mr O’Sullivan’s activities in setting up the rival business (referred to in [63]-[66] above).

123. It is incompatible with the fulfilment of their express contractual duties, the details of which are set out at [49] in relation to Mr O’Sullivan and at [59] in relation to Ms Leahey, to access and use Smartways’ Confidential Contact and Business Method Information to assist in the setting up of a new enterprise unrelated to the Smartways’ business.

124. It follows that I am satisfied that the evidence is sufficient to find that Mr O’Sullivan and Ms Leahey breached those parts of clause 11 of their employment contacts by accessing and using Smartways’ confidential information during the period they were employed at Smartways.

125. In relation to Mr O’Sullivan, the breaches relates to his access and use of Confidential Business Method Information.

126. For Ms Leahey, the breaches arise from her access and use of Confidential Contact and Business Method Information. The content of the text messages exchanged between Ms Leahey and Mr O’Sullivan also indicates that Ms Leahey was, during the course of her employment, engaging in activities relating to Just-Medical Logistics which conflicted with her duties to Smartways. That conduct was also in breach of her obligations contained in clause 11 of her employment contract.

127. In addition to breaching contractual duties, accessing and using Smartways’ Confidential Contact and Business Method Information to assist in the setting up of a new enterprise unrelated to the Smartways’ business also constitutes breaches of Mr O’Sullivan and Ms Leahey’s equitable obligations of confidence owed to Smartways. It is impermissible in equity, during the course of employment, to equip oneself with confidential information of an employer for intended use in a rival business: AIIB Pty Ltd v Beard [2009] NSWSC 1001, at [157], [188], [198], [199]; Prestige Lifting Services Pty Ltd v Williams [2015] FCA 1063, at [199].

Use of confidential information after their employment

128. The evidence establishes that, during the period from when he left Smartways’ employ on 4 April to 18 September 2018, Mr O’Sullivan initiated contact by mobile phone with 34 Smartways’ drivers, 18 clients and two suppliers whose contact details were contained in the Confidential Contact Information. Of those, the names and contact details of 23 Smartways’ drivers and 12 clients were included in the Updated Client Contact List.

129. A large proportion of the contacts initiated by Mr O’Sullivan were made in the period immediately after he left Smartways through to early May 2018, although the contact continued until the period just after the proceedings commenced on 5 September 2018.

130. The matters referred to [112], [113] and [115] also establish that, after Mr O’Sullivan left Smartways and was in the process of establishing Just-Medial Logistics, he sought out and received information about Smartways’ confidential shipping rates and client contact information from Ms Leahey by text message.

131. As to Ms Leahy, the evidence discloses that from 19 May to 18 September 2018, she initiated contact by mobile phone with 29 Smartways’ clients and eight drivers, all of whose details were included in the Confidential Contact Information lists. Of those, 26 Smartways’ clients and five drivers were included in the Updated Client Contact List.

132. Mr Wyborn has been in contact with three of the clients with whom Mr O’Sullivan and Ms Leahey had contact and several of the drivers with whom Mr O’Sullivan had contact. Mr Wyborn’s evidence indicates that Mr O’Sullivan and Ms Leahey’s contacts were made for the purposes of soliciting the clients and drivers away from Smartways to Just-Medical Logistics.

133. Based on Mr Wyborn’s unchallenged evidence, I accept that it is open to infer that the contacts made by Mr O’Sullivan and Ms Leahey with the remaining Smartways’ drivers, clients and suppliers was of a similar nature and purpose, being an attempt to solicit them away from Smartways to work for, or to engage, Just-Medical Logistics.

Findings of breach post their employment

134. The basis of Smartways’ claims against Mr O’Sullivan and Ms Leahey in respect of their post-employment conduct is that when they made contact with Smartways’ drivers and clients to solicit them away from Smartways, Mr O’Sullivan and Ms Leahey did so making use of Smartways’ Confidential Contact Information in breach of their continuing contractual and equitable obligations of confidence.

135. The authorities recognise that certain information which an employer may consider to be confidential and which an employee obtains during the course of their employment may be used post-employment, including as part of an approach to former clients of an employer.

136. Information which becomes part of an employee’s know-how that is difficult to isolate from their general know-how and which is something ascertainable by enquiry or experiment may not be protectable post-employment absent some express contractual restriction, even if it is information of a type that an employer would prefer not to have generally known: Del Casale v Artedomus (Aust) Pty Ltd (2007) 165 IR 148; [2007] NSWCA 172, at [37] – [38], [43]. See also Wright v Gasweld (1991) 22 NSWLR 317; E Worsley & Co Ltd v Cooper [1939] 1 All ER 290.

137. An employee is entitled, once their employment is over and in the absence of an express and valid contractual restriction on his doing so, to canvass former customers of his employer to the extent that they have the names and addresses of those customers in their memory as a result of the ordinary carrying out of their duties as an employee: Mid-City Skin Cancer and Laser Centre Pty Ltd v Zahedi-Anarak (2006) 67 NSWLR 569; [2006] NSWSC 844, at [148].

138. If the relevant contact details of the clients and drivers contacted by Mr O’Sullivan and Ms Leahey had been in their memory, it may have been open for them to use that information after leaving Smartways: AIIB Pty Ltd v Beard [2009] NSWSC 1001, at [193].

139. The names of some drivers and some clients may have been something that Mr O’Sullivan and Ms Leahy had “at the top of their head” and in their memory. But, as Smartways submits (and I accept), it is implausible that Mr O’Sullivan and Ms Leahy could have been able to remember the names and contact details, particularly the private mobile telephone numbers of clients and the Smartways’ work mobile phone numbers and personal mobile phone numbers of drivers which are not publicly available, on the scale that the evidence discloses.

134. There is also evidence that Mr O’Sullivan sought out the contact details of at least one client in a text message to Ms Leahey. This suggests that such information was not readily available to him.

135. There are references in the affidavits relied on by Smartways to matters raised by Mr O’Sullivan and Ms Leahy in affidavits filed by them when they were actively defending the proceedings: see for example, Wyborn affidavit, 29 September 2018 at [5]-[42]. The references suggest that Mr O’Sullivan asserted that his contact with Smartways’ drivers were via their private mobile phones and, in relation to one particular driver (referred to as Driver 6), only after they had ceased working for Smartways. The evidence establishes otherwise.

136. Of the contacts made to drivers by Mr O’Sullivan, at least 14 were made using the Smartways’ mobile phone numbers (not private mobile numbers), all of which were referred to in the Updated Client Contact List. As to Driver 6, Mr O’Sullivan contacted them within five days of leaving Smartways via the driver’s Smartways’ mobile phone number, more than three months prior to the driver ceasing to work for Smartways.

137. The claim of misuse of Smartways’ confidential information by Mr O’Sullivan and Ms Leahey post-employment is, in large part, reliant on inferences being drawn rather than direct evidence of misuse of particular documents or information which, for example, they downloaded and took with them.

138. That said, the evidence identifies a preponderance of contacts made to Smartways’ clients and drivers by Mr O’Sullivan and Ms Leahey after they left Smartways’ employ. It also identifies that many of those contacted were via mobile phone numbers that were not publicly available and were accessible from the Smartways’ Confidential Contact Information. There is evidence that Ms Leahey accessed the Updated Client Contact List on various occasions in the week prior to her departure and that she and Mr Sullivan were in constant contact.

139. The evidence also undermines assertions made by Mr O’Sullivan in earlier affidavits. Mr O’Sullivan and Ms Leahey have also failed to comply with discovery orders requiring them to produce documents which may have been harmful to their defences.

140. As they failed to appear at the hearing, there is no satisfactory explanation from Mr O’Sullivan and Ms Leahey as to how they identified the contact details of the clients and drivers they solicited. I accept Smartways’ submission that it is open to infer there was a deliberate taking away and use of its Confidential Contact Information.

141. Overall, these matters leads me conclude that Mr O’Sullivan and Ms Leahey made contact with Smartways’ drivers and clients after they left Smartways using Confidential Contact Information they had available to them from their employment at Smartways and to which they must have had unauthorised access following their departure for the purposes of contacting and soliciting Smartways’ clients and drivers. That use was in breach of their continuing obligations of confidence under their employment contracts and equitable obligations of confidence.

142. The evidence, in so far as it relates to Mr O’Sullivan, also supports a finding that Mr O’Sullivan used Confidential Business Method Information, in the form of Smartways’ shipping rates which he received from Ms Leahey, in breach of his continuing obligations of confidence under their employment contracts and equitable obligations of confidence post his employment with Smartways.

143. I am also satisfied that Mr O’Sullivan’s conduct was in breach of his obligations under the Deed to return all of Smartways’ confidential information and to comply with his employment contract confidentiality obligations.

Did Mr O’Sullivan divert a business opportunity away from Smartways to a third party in breach of his contractual employment obligations?

150. In addition to the breach of confidence case, Smartways claims that Mr O’Sullivan breached his contractual obligations by reason of an attempt to divert a business opportunity away from Smartways, to a competitor, Buffalo Freight Management Pty Ltd (Buffalo).

Facts

151. Buffalo is a transport and logistics company with operations in Victoria, ACT, NSW and Queensland.

152. In or around June 2016, having previously dealt with its principals, Mr O’Sullivan introduced Buffalo to Smartways as a potential subcontractor. Over time, Buffalo has provided to Smartways some subcontractor drivers. More recently, it has also provided some pallet storage services to Smartways.

153. At some time, most likely in the second half of 2016, Mr Wyborn found out that Buffalo was not an owner/driver contractor but a large transport company. He expressed concern to Mr O’Sullivan about the potential for conflict with continuing to use Buffalo Freight as a subcontractor. His evidence is that he made it clear that he did not want Mr O’Sullivan engaging another non-owner driver subcontractor without clearing it with Mr Wyborn first.

154. The business opportunity related to Astris Lifecare Pty Ltd, a privately-owned Australian company focused on the aged care, hospital, community and home healthcare markets. Mr Wyborn’s evidence is that Astris Lifecare’s profile made it a strategic target client given Smartways’ presence in the hospital market and the home healthcare market as a strategic opportunity. Mr O’Sullivan was aware of this strategy.

155. During the period 6 March 2017 to 23 June 2017, Mr O’Sullivan exchanged a number of emails with Astris Lifecare using his Smartways email address. The emails disclose that Mr O’Sullivan and a representative of Astris Lifecare attended a meeting on 9 June 2017 to discuss a business opportunity.

156. The emails also disclose that further discussions and email correspondence were exchanged between Mr O’Sullivan and Astris Lifecare in relation to the business opportunity.

157. On 19 June 2017, Astris Lifecare sent an email to Mr O’Sullivan which said “We would like to move as quickly as possible on this please”.

158. On 22 June 2017, Astris Lifecare sent an email attaching a “driver spreadsheet” to Mr O’Sullivan and copied it to a Buffalo sales email address.

159. On 23 June 2017, Astris Lifecare sent an email to Mr O’Sullivan, copied to Buffalo, requesting to have a Service Agreement written up. The email from Astris Lifecare asked Mr O’Sullivan whether “Smartways or Buffalo Freight Management” would be the service provider.

160. Smartways did not enter into any service agreement with Astris Lifecare.

Consideration

161. Smartways submits that it is open for the Court to infer that Mr O’Sullivan was dealing with Astris Lifecare for the purpose of conferring a benefit on Buffalo in breach of his employment contract to act in good faith and in the business interests of Smartways.

162. Based on the terms of the 23 June email, it submits that an inference should be drawn that Buffalo and Astris Lifecare entered into a service agreement.

163. The emails stop at 23 June 2017 so it is not clear whether any service agreement was ultimately entered into between Buffalo and Astris Lifecare. Nevertheless, based on the emails and Mr Wyborn’s evidence, in my view, it is open to infer that Mr O’Sullivan, acting in his capacity as an employee of Smartways, assisted Buffalo with the Astris Lifecare business opportunity, which was a business opportunity that was open to Smartways to pursue.

164. Up until 22 June 2017, the emails in evidence were between Mr O’Sullivan and Astris Lifecare only. There is no mention of Buffalo until the email sent on 22 June from Astris Lifecare to Mr O’Sullivan which was copied to Buffalo. The evidence also indicates that Mr O’Sullivan and one of the principals of Buffalo were acquaintances and had been in contact weeks prior to the emails sent from Astris on 22 and 23 June. These matters suggest that Mr O’Sullivan introduced Buffalo to the Astris Lifecare opportunity.

165. The obligations in Mr O’Sullivan’s employment contract required him not to place himself in a position where any interest he had in relation to Buffalo conflicted with his duty to act solely in Smartways interests: Digital Pulse Pty Ltd v Harris and Others (2002) 166 FLR 421; [2002] NSWSC 33 at [19] to [24].

166. Mr O’Sullivan had been advised about the possibility of conflict from dealings with Buffalo. He was also aware of Smartways’ strategy, which included the pursuit of clients in the hospital and home healthcare markets.

167. It was Mr Wyborn’s role to undertake business development and sales, not Mr O’Sullivan’s. As a new client prospect, Mr O’Sullivan was expected by Mr Wyborn to refer the Astris Lifecare opportunity to him. He did not do so. Mr Wyborn’s evidence is that he had no knowledge of Mr O’Sullivan’s activities or dealings with Astris Lifecare at the time and only became aware of it from the forensic analysis undertaken on Mr O’Sullivan’s emails as part of these proceedings.

168. If Mr O’Sullivan had been properly pursuing the Astris Lifecare opportunity on behalf of and in the best interests of Smartways, it would be expected that he would have told Mr Wyborn about it. It is also to be expected that Astris Lifecare would not have asked whether the Service Agreement should be entered into by Buffalo.

169. In that context, and in the absence of any evidence from Mr O’Sullivan as to why he was dealing with a new business opportunity with Buffalo, it seems to me open to conclude that Mr O’Sullivan was seeking to facilitate an arrangement in relation to Astris Lifecare for Buffalo’s benefit, to the detriment of Smartways. An employee may breach an obligation to act in good faith and in the interests of their employer by causing or assisting a third party to take on a contract which it might have been open to the employer to secure: Prestige Lifting Services Pty Ltd v Williams [2015] FCA 1063, at [223].

170. It follows that I am persuaded by Smartways’ submission and find that Mr O’Sullivan breached cls 11.2(b), (c), (e) and (g) of his employment contract by pursuing the Astris Lifecare business opportunity, during Smartways work hours, that was not for the benefit of Smartways but for the benefit of a third party, namely Buffalo, which was in conflict and/or harmful to the business interests of Smartways. By failing to direct the Astris Lifecare business opportunity to Smartways exclusively, Mr O’Sullivan also failed to promote the interests and growth of the Smartways business and failed to comply with his obligations of good faith.

What relief, if any, is necessary to protect Smartways’ interests?

171. Unlike many misuse of confidential information cases, Smartways does not pursue a claim for damages or account of profits. It says that Mr O’Sullivan and Ms Leahey’s failure to comply with discovery orders meant that an expert report on an account of profits could not be prepared.

172. While there may be no requirement to establish proof of detriment, potential detriment may be considered when considering whether an injunction should be granted: National Roads and Motorists’ Assn Ltd v Geeson (2001) 40 ACSR 1; [2001] NSWCA 343 at [58]; NP Generations Pty Ltd v Feneley (2001) 80 SASR 151; [2001] SASC 185 at [21].

173. Smartways submits that, to the extent it is necessary to show it has, the Court should be satisfied that it has suffered detriment by reason of Mr O’Sullivan and Ms Leahey’s conduct. I agree.

174. Analysis undertaken by Mr Bonifacio indicates that during the period after which Just-Medical Logistics was established Smartways experienced less business than expected from two of the clients contacted by Mr O’Sullivan whose details were contained in the Updated Client Contact List.

175. Mr Wyborn also gives evidence that the retention and misuse of Smartways’ confidential information by Mr O’Sullivan and Ms Leahey has led to Smartways putting on hold the pursuit of certain growth initiatives and other business partnerships to its short term detriment.

176. Accordingly, the question is whether it is appropriate to grant Smartways the declaratory and permanent injunctive ancillary relief it seeks in order, as Smartways submits, to vindicate its rights.

Declaratory relief appropriate

177. In my view, this is a case where it is appropriate for the Court to grant declaratory relief as sought by Smartways.

178. The Court has an inherent power to grant declaratory relief. It is a discretionary power that is directed to determining legal controversies: Forster v Jododex Australia Pty Ltd (1972) 127 CLR 421; [1972] HCA 61 at 437-8.

179. The making of declarations will constitute a binding determination of the rights and obligations existing between Smartways, Mr O’Sullivan and Ms Leahey in respect of Smartways’ claims. The declarations will disclose and confirm the rights and obligations of the parties, thereby making it clear what conduct was in breach, and what may in the future amount to a breach, of Smartways’ rights. They will also operate as a formal vindication that obligations owed to Smartways by Mr O’Sullivan and Ms Leahey have been breached: EB 9 & 10 Pty Ltd v Owners – Strata Plan 934 (2018) 98 NSWLR 889; [2018] NSWCA 288 at [35] and [36]; Ramsey v Annesley College(No 2) [2013] SASC 145 at [9].

180. Although failing to participate at the final hearing, Mr O’Sullivan and Ms Leahey were proper contradictors. They had taken steps to defend themselves, at least until January 2019. The requirement for a proper contradictor is capable of being satisfied in cases where an opposing party had an interest in resisting the relief sought but subsequently ceased its opposition or where they choose not to contest the relief sought: Zetting v Muller [2017] NSWSC 659 at [12] - [16]; IMF (Australia) Ltd v Sons of Gwalia Ltd(administrator appointed) (2004) 211 ALR 231; [2004] FCA 1390 at [47].

181. The declaratory relief sought to be granted in this case is not hypothetical, but will be based on a live controversy between the parties and facts which have been found to exist from the evidence before the Court: Bass v Permanent Trustee Co Ltd (1999) 198 CLR 334; [1999] HCA 9.

182. The evidence filed by Smartways was a substantive response to Mr O’Sullivan and Ms Leahey’s defences, with the result that the issues raised have not been determined in an evidentiary vacuum. In those circumstances, the Court can have a degree of confidence in making the declarations sought, having satisfied itself as to the existence of a proper basis to do so: Church of the Foursquare Gospel (Australia) Limited v New Hope Church Swansea Inc [2019] NSWSC 519, at [17].

183. As to the terms of the declarations, they will reflect my findings about the nature of the information which was accessed and used by each of Mr O’Sullivan and Ms Leahey at particular times, rather than in the broader terms sought as set out in the draft orders proposed to Smartways as sent to chambers on 2 July 2019.

184. The declaration in relation to Mr O’Sullivan’s breaches of his employment contract and equitable obligations of confidence during his employment with Smartways will extend to use of Confidential Business Method Information, whereas the declaration in respect of breaches after his employment ceased will also include his use of the Confidential Contact Information. A similar approach will apply to the declarations to be made in respect of Ms Leahey.

185. Given my findings that Mr O’Sullivan has breached his contractual employment obligations by failing to act in good faith in respect of the Astris Lifecare business opportunity, I will also to grant declaratory relief in the form sought by Smartways.

Injunctive relief granted but in more limited terms

186. Smartways argues that, unless permanently restrained, there is a risk that Mr O’Sullivan and Ms Leahey will continue to use Smartways’ Confidential Contact and Business Method Information in breach of their contractual and equitable obligations to Smartways.

187. It submits that the Court should be satisfied of the existence of a continuing threat of ongoing misuse and disclosure because of:

1. the flagrant, deliberate and knowing use of Smartways’ confidential information for the purposes of the Just-Medical business, as disclosed in the text messages between Mr O’Sullivan and Ms Leahey;

2. the attitude of Mr O’Sullivan and Ms Leahey to these proceedings. Smartways argues that their failure to participate since January 2019 and non-compliance with discovery order made by the Court illustrates a disregard for the legal rights of Smartways;

3. while Mr O’Sullivan and Ms Leahey were, when legally advised, willing to give interim undertakings, such undertakings were only ever given on a “without admissions” basis; and

4. while Mr O’Sullivan and Ms Leahey initially filed defences, in which they denied Smartways entitlement to any relief, they have not seen fit to appear at the final hearing to support that defence with any evidence.

188. I am persuaded by those submissions and consider it appropriate to grant injunctive relief in this case.

189. While the injunctions sought are based on findings that arise, in part, on inference rather than direct evidence of misuse, I have concluded that there have been breaches of Mr O’Sullivan and Ms Leahey’s contractual and equitable obligations of confidence and that those breaches continued for some period after they departed Smartways. Proof of past breach may give rise to an apprehension that similar breaches will subsequently follow: Apotex Pty Ltd v Les Laboratoires Servier(No 2) [2012] FCA 748; Magic Menu Systems Pty Ltd v AFA Facilitation Pty Ltd (1997) 72 FCR 261; CSL Limited v Glaxosmithkline Australia Pty Ltd (2006) 70 IPR 128; [2006] FCA 1301.

190. I am also satisfied that Smartways has established some likelihood that breach and injury might take place in the future based on the number of contacts made to drivers and clients by Mr O’Sullivan and Ms Leahey. I accept that the likelihood of future breach and injury may have diminished over time but the evidence before the Court identified that the conduct continued at least until the proceedings were commenced. The failure of Mr O’Sullivan and Ms Leahey to appear to defend the claims and their lack of compliance with existing courts orders is also, in my view, indicative of a risk of future breach.

191. There should also be little hardship or inconvenience to Mr O’Sullivan and Ms Leahey if injunctions are granted restraining their use of Confidential Business Method Information in circumstances where, as at 2 October 2018, they denied retaining that type of as defined by those orders. By contrast, if Smartways’ confidential information was to be misused by Mr O’Sullivan and Ms Leahey, it would be expected to result in damage to Smartways’ business and be unlikely to be recoverable by any monetary award.

192. Any injunction can only impose a restriction on Mr O’Sullivan and Ms Leahey from using information derived from the Confidential Contact Information that they otherwise would have not obtained legitimately through other sources.

193. A small proportion of the contact details contained in the Confidential Contact Information is, on the evidence, likely to be identifiable by enquiry from public sources. It may be that, having heard about Just-Medical Logistics, some clients and drivers may approach Mr O’Sullivan and Ms Leahey directly and provide them with their private details.

194. To my mind, these matters warrant the inclusion of a carve out in the terms of the injunction relating to the Confidential Contact information which excludes the use and disclosure of contact details where they have been provided directly by any clients, drivers or suppliers or is information which is in the public domain, otherwise than by reason of Mr O’Sullivan and Ms Leahey having disclosed it in breach of their contractual or equitable obligations of confidence. I note that a similar carve out was included in the 2 October 2018 undertakings.

195. Finally, I note that the Confidential Contact and Business Method Information the subject of the proposed injunctions have not been tendered in open court with the result that they have not entered the public domain.

Delivery up orders

196. Smartways also seeks delivery up and deletion orders in relation to the Confidential Contact and Business Method Information which is in the possession of, or able to be accessed by, Mr O’Sullivan and Ms Leahey.

197. An order for delivery up is, as with injunctive relief, at the discretion of the Court.

198. The likelihood of Mr O’Sullivan and Ms Leahey taking steps to comply with any delivery up and ancillary orders made in this case is presumably low. They have not taken any active role in defending the proceedings since 20 January 2019 and are in default of Court orders to provide discovery.

199. The prospect that delivery up orders may not be fully complied with is not, in my view, sufficient reason not to make them. Orders for delivery up and affidavits which specify the steps undertaken by a party to comply are usual ancillary orders made in addition to injunctions to fully complete the protection of a party whose confidential information has shown to be misused. Where a party is restrained by injunction from using confidential information, ancillary delivery up orders are made to ensure the removal of all physical forms of that information from the possession of the party: AG Australia Holdings Limited v Burton [2002] NSWSC 454, at [17] quoting RL Dean, The Law of Trade Secrets and Personal Secrets (2nd ed, 2002, Lawbook Co) at 333-4.

200. In my opinion, the appropriate approach in this case is to order Mr O’Sullivan and Ms Leahey to permanently delete all Confidential Contact Information and Business Method Information held in an electronic form and deliver up to Smartways’ solicitors all hard copies to the extent that they exist, with confirmation, by way of an affidavit, that verifies the steps undertaken by them to comply. They will also be required, by the affidavit, to identify and describe each of the documents which have been destroyed and where they had been located or stored.

201. The orders made by consent on 2 October 2018 required Mr O’Sullivan and Ms Leahey to deliver up to Smartways’ solicitors a full list of all electronic devices in their possession, custody or power on which any of the alleged Confidential Contact and Business Method Information was stored, as well as to produce their mobile phones. In light of that order, I do not consider it necessary to include in my delivery up orders a requirement for the affidavit to reproduce information of that nature.

202. I will, therefore, make delivery up and deletion orders in respect of the Confidential Contact and Business Method Information. It will be a matter for Smartways to decide what, if any, steps to take to enforce such orders, in the event that Mr O’Sullivan and Ms Leahey fail to comply.

Gross sum costs order

203. By notice of motion filed on 2 May 2019, Smartways seeks a gross sum costs order of $431,696.57 (excluding GST) against the defendants, pursuant to s 98(4)(c) of the Civil Procedure Act 2005 (NSW).

204. The discretion to order gross sum costs is not confined and may be exercised whenever the circumstances warrant its exercise, having regard to the scope and purpose of the provision: Hamod v State of New South Wales [2011] NSWCA 375 at [813].

205. The factors that merit particular consideration by the Court when exercising the discretion to make a gross sum costs order include where making an order would avoid the expense, delay and aggravation associated with an assessment of costs, where it appears that the party obliged to pay the costs would not be able to meet a liability of the order likely to result from the assessment, the relative responsibility of the parties for the costs incurred and where a gross sum costs order would assist in bringing finality to the litigation: Idoport Pty Ltd v National Australia Bank Ltd [2007] NSWSC 23, at [9]; Harrison v Schipp (2002) 54 NSWLR 738; [2002] NSWCA 213 at [21] – [22]; Beach Petroleum NL v Johnson(No 2) (1995) 57 FCR 119; Hadid v Lenfest Communications Inc [2000] FCA 628; Fewin Pty Ltd v Burke (No 3) [2017] FCA 693 at [49].

206. The Courts have also considered as relevant where personal service has been difficult to effect, where a party has not appeared or where a party has consistently failed to comply with orders of the Court: Microsoft Corp v Jiang [2003] FCA 101; Sony Computer Entertainment Australia Pty Ltd v Carey [2003] FCA 605; Sony Entertainment (Australia) Ltd v Smith (2005) 215 ALR 788; [2005] FCA 228.

207. In my opinion, this is an appropriate case in which to exercise my discretion and make a gross sum costs order in favour of Smartways.

208. These proceedings have been ongoing since 5 September 2018. Smartways has been put to the time and expense of adducing significant evidence in circumstances where Mr O’Sullivan and Ms Leahey filed a defence and then took no steps to actively support the assertions made. As noted earlier, some of that evidence went to rebut assertions made by Mr O’Sullivan by way of defence. Mr O’Sullivan and Ms Leahey have also failed to comply with Court orders and provide a proper address for service.

209. I accept Smartways’ submission that these matters have led to increased costs which may not be recoverable by Smartways. Those costs include, but are not limited to, the costs of proving that certain information was not publicly available; ensuring that Court orders and documents had been brought to the attention Mr O’Sullivan and Ms Leahey by the use of process servers; seeking orders for substituted service; and the preliminary work (including with an expert) to prepare an account of profits case which were wasted.

210. There is also evidence which casts doubt about Mr O’Sullivan and Ms Leahey’s ability to satisfy any costs that would be incurred as part of a formal costs assessment process. Searches disclose that they have no real property in New South Wales registered to their names.

211. Given their failure to take any active steps in these proceedings since January 2019, it is to be expected that neither Mr O’Sullivan nor Ms Leahey would agree upon the amount of any costs to be paid to Smartways. Nor could it be expected that they would participate in any costs assessment process in any meaningful way. Requiring Smartways to go through a costs assessment process would simply add to the already significant costs it has incurred in taking these proceedings.

212. The additional costs that Smartways would incur as part of an assessment process would also aggravate any loss it has suffered from Mr O’Sullivan and Ms Leahey’s conduct. As noted earlier, due to Mr O’Sullivan and Ms Leahey’s breach of discovery orders, those losses have not been quantified by way of an account of profits or sought to be recovered by Smartways in the usual way.

213. As it is being sought as part of the final hearing, making a gross sum costs order in favour of Smartways will also assist in bringing finality to the proceedings.

214. Mr O’Sullivan and Ms Leahy were on notice of the application. They were served with details of the costs that Smartways claims and were provided with an opportunity to respond. They chose not to do. It seems to me to be inconsistent with case management principles to require Smartways to be subject to the inconvenience, delay, expense and financial risk associated with a cost assessment process in respect of the costs it has incurred in successfully prosecuting its claims against Mr O’Sullivan and Ms Leahey.

215. As to the sum of the gross sum order, Smartways relies on the affidavit of its solicitor, Andrew Lacey, sworn 2 May 2019.

216. Mr Lacey’s affidavit identifies that Smartways has incurred costs of $614,382.97 (excluding GST) up to and including the final hearing. These costs comprise McCabe Curwood’s professional fees (of $456,716), counsel fees (of $69,700), expert fees (of $66,407.04) and other disbursements such as filing fees and search fees (of $21,559.93). Invoices detailing the work done by the solicitors at McCabe Curwood, invoices from counsel and invoices supporting the disbursements claimed are in evidence. A schedule estimating the costs of the hearing and preparing the gross sum order is also in evidence.

217. Mr Lacey’s evidence is that, based on his experience (having been personally involved in over 30 costs assessments in Australia), a costs assessment on an ordinary basis usually results in recovery of 60% - 80% of the actual costs incurred, and 100% recovery of disbursements (including counsel and expert fees). He believes that the entirety of counsel’s fees should be recovered in this matter, because the case was run by a then-junior counsel, even though the complexity of the matter warranted briefing both a senior and junior counsel.

218. Mr Lacey explains the calculation of the amount for the gross sum costs order of $431,696.57 as based on a 40% discount for McCabe Curwood’s fees but no discount for counsel or other disbursements. That represents a figure overall of approximately 70% of the entire costs incurred by Smartways.

219. The Court may take into account evidence from the solicitor for the successful party and does not necessarily require evidence from a costs consultant. It may also take into account its observations of the proceedings and the judge's own experience: Bobb v Wombat Securities Pty Ltd (No 2) [2013] NSWSC 863 at [10].

220. Having reviewed Mr Lacey’s affidavit and the material in evidence to which he refers, I am satisfied that I can rely on it to arrive at a sum for a gross sum cost order which is logical, fair and reasonable as between the parties: Harrison v Schipp (2002) 54 NSWLR 738; [2002] NSWCA 213 at [22]; Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 119 at 123.

221. In assessing the quantum of a gross sum costs order, the Court is not required to undertake a line by line analysis of the costs claimed but is entitled to take a broad-brush approach: Harrison v Schipp (2002) 54 NSWLR 738; [2002] NSWCA 213. It not for the Court to go through each item of cost to determine whether work was duplicated. Rather, the question is one of impression: James v Australian and New Zealand Banking Group Limited [2016] NSWSC 833, at [21].

222. From the invoices in evidence, it is apparent that the solicitors at McCabe Curwood charged hourly rates for their work. The work done by each solicitor is also identified, broken down by task. The approach taken by Mr Lacey to apply a 40% discount to the total amount charged to arrive at an estimate of solicitor’s costs is, in my view, a reasonable one in this case.

223. The summary breakdown of rates and hours for billed costs indicates that nineteen lawyers and one graduate from McCabe Curwood worked on the proceedings. While that is a large number, the breakdown identifies that the bulk of the work was done by a Senior Associate, the Managing Principal and a lawyer. The others contributed less than 23% of the total hours worked.

224. Having senior lawyers doing much of the work does not seem to me to be unreasonable when one takes into account the urgency with which the case was first commenced, the various issues raised, the volume of information that had to be analysed (which included 5500 pages of Telstra records) and the extent of the evidence filed, including to refute matters raised by Mr O’Sullivan and Ms Leahey’s evidence which was not ultimately relied on. That said, the large number of lawyers working on the matter might suggest some duplication of work and, in my view, supports some further discount to the solicitor’s costs claimed. Therefore, I discount the solicitor’s costs claimed of $274,029.60 by a further 10%, to get to a figure of $246,626.64.

225. I see no basis to discount the expert’s fees, counsel’s fees or the disbursements.

226. Taking into account all of the above, and noting that it is not the result of precise calculation but a fair broad-brush assessment, I consider a reasonable and fair gross sum figure for Smartways’ costs to be $405,000.00.

227. Smartways also seeks an order that Mr O’Sullivan and Ms Leahey pay interest on the gross sum costs ordered, in accordance with s 101(4) of the Civil Procedure Act 2005 (NSW), with such interest to accrue from the date of the costs order, cease to accrue upon full payment of the gross sum costs order, and be calculated at the rate prescribed by r 36.7 of the Uniform Civil Procedure Rules 2005 (NSW).

228. I am satisfied that it is appropriate to make an order for interest on costs in this case.

229. Mr Lacey’s evidence is that, as at 2 May 2019, Smartways had paid all invoices other than the one sent on 1 May 2019. The payment of interest on costs is intended to compensate a party who is out of pocket in respect of relevant costs that have been actually paid: E Co [a pseudonym] v Q [a pseudonym] (No 5) [2019] NSWSC 844 at [108]; Doppstadt Australia Pty Ltd v Lovick & Son Developments Pty Ltd [2014] NSWCA 158.

230. The Court need not be satisfied that the circumstances of the case are out of the ordinary before making an order for the payment of interest: DoppstadtAustralia Pty Ltd v Lovick & Son Developments Pty Ltd [2014] NSWCA 158 at [403], citing Drummond and Rosen Pty Ltd v Easey & Ors (No 2) [2009] NSWCA 331 at [4].

Orders

231. For these reasons, I make the following orders:

1. The first and second defendants be permanently restrained from, either by the first and second defendants themselves, or by their servants or agents:

1. using or disclosing any of the:

1. contact details of the plaintiff’s clients and drivers comprised in an excel document titled ‘Updated Client Contact List’ which is at pages 75 to 87 of the Confidential Exhibit and pages 1 to 13 of Confidential Exhibit AJJL-1 to the affidavit of Andrew Joseph James Lacey dated 10 September 2018;

2. contact details set out at page 1 of Confidential Exhibit MCW-5 to the affidavit of Marcus Christopher Wyborn dated 29 September 2018;

(collectively the Confidential Contact Information) unless:

3. the defendants are provided with those contact details directly by any of the clients, drivers or another third party; or

4. the defendants have already obtained the contact details directly due to the clients or drivers (or any of them) contacting the defendants directly; or

5. the information is in the public domain otherwise than by reason of the defendants having disclosed it,

2. using or disclosing the information or any information contained in any of the following documents they have obtained as employees of the plaintiff, including:

1. the shipping rates which are not publicly available that the plaintiff offers and provides to its customers for the provision of its services;

2. the entirety of the terms, or separately the contract rate or period, set out in the ‘Drivers Contract’ being the plaintiff’s contracts with independent drivers, (including without limitation documents by the file name ‘Driver contract.docx’);

3. the ‘Drivers List’ (including documents by the file name ‘Drivers List.xlsx’);

4. the ‘Driver Induction Files’ (including documents by the file names “Driver Portal Guide v2 080817.pdf”, “driver APP workflow v1.pdf” and “Device and Insurance Form.pdf”);

5. the ‘EOY Roster 2017 Drivers Roster’ (including documents by the file name ‘EOY ROSTER 2017 Drivers Roster.xlsx’);

6. the plaintiff’s ‘Updated Drivers List’ (including without limitation documents by the file name “updated drivers list30062017.xlsx”);

7. the ‘Toll Priority Rate Card’ (including without limitation documents by the file name “TOLL PRIORITY RATE CARD 20141024 SMARTWAYS LOGISTICS client copy.xls”);

8. the ‘After Hours & Smart Rates Calculator’ (including without limitation documents by the file name “AFTER HOURS & SMART rates.xls”);

(collectively, the Confidential Business Method Information).

2. Declare that the first defendant has:

1. breached clauses in his employment contract dated 9 September 2015, being:

1. clause 11.2(b) which required him to perform his duties and responsibilities in a proper, ethical, diligent, professional and efficient manner; including always acting in good faith and in the best interests of Smartways;

2. clause 11.2(c) which required him to give the whole of his time, ability and attention in normal working hours, or when reasonably required outside those hours, to the business of Smartways;

3. clause 11.2(e) which required him to use his best endeavours to protect, enhance and protect the interests, welfare, profitability, growth and reputation of Smartways' business;

4. clause 11.2(g) which required him not to engage in any business or activities which may conflict with or be harmful to the business interests of Smartways, or any of its officers, employees, agents, contractors or consultants,

5. and breached his obligations of confidence in equity, by using or disclosing the Confidential Business Method Information during his employment, otherwise than for the purposes of his employment, without the consent of the plaintiff;

2. breached clauses of his employment contract, being;

1. clause 17 which required, on request by Smartways or on termination of his employment, him to return to Smartways, the Confidential Contact Information and the Confidential Business Method Information;

2. clause 18.1 which required him to agree to respect the confidentiality of information and documents to which he has access in the course of or arising from his employment with Smartways;

3. clause 18.2 which required him to not, during or after his employment, directly or indirectly use or disclose (or attempt to use or disclose) any Confidential Contact Information and the Confidential Business Method Information for any unauthorised purpose, including any benefit to you or any other person;

4. clause 18.3 which required him to ensure secure custody of Confidential Contact Information and the Confidential Business Method Information in his control or possession, and use his best endeavours to prevent the use or disclosure of Confidential Contact Information and the Confidential Business Method Information by any person,

5. and breached his obligations of confidence in equity, by using or disclosing the Confidential Contact Information and the Confidential Business Method Information after his employment, without the consent of the plaintiff; and

3. breached clause 5 of the Deed of Release with the plaintiff dated 4 April 2018 by failing to comply with the post-employment obligations in his employment contract by reason of 2(b)(iii) above, and clause 4 of that Deed by failing to return all electronic copies of the Confidential Contact Information and Confidential Business Method Information.

3. Declare that the second defendant has:

1. breached clauses in her employment contract dated 22 April 2015, being:

1. clause 11.2(b) which required her to perform his duties and responsibilities in a proper, ethical, diligent, professional and efficient manner; including always acting in good faith and in the best interests of Smartways;

2. clause 11.2(c) which required her to use her best endeavours to protect, enhance and protect the interests, welfare, profitability, growth and reputation of Smartways' business;

3. clause 11.2(e) which required her not to engage in any business or activities which may conflict with or be harmful to the business interests of Smartways, or any of its officers, employees, agents, contractors or consultants,

4. and breached her obligations of confidence in equity, by using or disclosing the Confidential Contact Information and the Confidential Business Method Information during her employment, otherwise than for the purposes of her employment, without the consent of the plaintiff;

2. breached clauses in her employment contract dated 22 April 2015, being:

1. clause 17 which required, on request by Smartways or on termination of her employment, to return to Smartways, the Confidential Contact Information and the Confidential Business Method Information;

2. clause 18.1 which required her to agree to respect the confidentiality of information and documents to which she had access in the course of or arising from her employment with Smartways;

1. clause 18.2 which required her to not, during or after her employment, directly or indirectly use or disclose (or attempt to use or disclose) any Confidential Contact Information and the Confidential Business Method Information for any unauthorised purpose, including any benefit to her or any other person;

2. clause 18.3 which required her to ensure secure custody of Confidential Contact Information and the Confidential Business Method Information in her control or possession, and use her best endeavours to prevent the use or disclosure of Confidential Contact Information and the Confidential Business Method Information by any person,

3. and breached her obligations of confidence in equity, by using or disclosing the Confidential Contact Information after her employment, without the consent of the plaintiff.

4. Declare that the first defendant has breached his contractual obligations in clauses 11.2(b), (c), (e) and (g) of the first defendant’s employment contract referred to above by failing to act in good faith in:

1. pursuing a business opportunity for the benefit of a third party, namely Buffalo Freight Management Pty Ltd, during Smartways work hours over the period from 6 March 2017 to 23 June 2017, that was not for the benefit of Smartways; and

2. pursuing a business opportunity for the benefit of a third party, namely Buffalo Freight Management Pty Ltd, over the period from 6 March 2017 to 23 June 2017 which was in conflict and/or harmful to the business interests of Smartways.

5. Within 28 days of the making of these orders, the first and second defendants:

1. deliver up to the plaintiff’s solicitors, McCabe Curwood, all hard copies of the Confidential Contact Information and the Confidential Business Method Information;

2. permanently delete all Confidential Contact information and Confidential Business Method Information from all electronic storage locations to which they have access or control (including any backup locations and any internet locations), including the following:

1. the email accounts of t…@bigpond.com, [email protected] and [email protected];

2. each mobile phone device on which the first defendant used the mobile number 0XXX XXX XX1;

3. each computer to which any mobile phone devices have been backed up, including a computer of the name Computer:TERRY\User:Terence;

4. each mobile phone device on which the second defendant used the mobile number 0XXX XXX XX7;

5. the mobile phone device on which the second defendant used the mobile number 0XXX XXX XX6;

6. the email accounts of [email protected], [email protected], any Gmail account and l…[email protected]; and

7. each computer to which any mobile phone devices have been backed up to; and

3. destroy or deliver up to the plaintiff’s solicitors, McCabe Curwood, all copies of the Confidential Exhibits served on the defendants in these proceedings to the plaintiff’s affidavits, being:

1. Confidential Exhibit MCW-2;

2. Confidential Exhibit MCW-3;

3. Confidential Exhibit MCW-4;

4. Confidential Exhibit MCW-5;

5. Confidential Exhibit AJJL-1;

6. Confidential Exhibit AJJL-3;

7. Confidential Exhibit BKM-1;

8. Confidential Exhibit GK-1;

9. Confidential Exhibit AGB-1;

10. Confidential Exhibit AGB-2;

11. Confidential Exhibit LMB-2;

12. Confidential Exhibit FML-1; and

13. those parts of the Confidential Exhibits included in the Court Book as identified in the index to the Court Book as confidential.

6. Within 35 days of the making of these orders, the first and second defendants to serve on the plaintiff’s solicitors, McCabe Curwood, an affidavit specifying the steps undertaken by them in compliance with the delivery up and destruction orders in [5] above.

7. Pursuant to s 98(4)(c) of the Civil Procedure Act 2005 (NSW), the first and second defendants to pay the plaintiff’s costs of the proceedings in the form of a gross sum costs order in the sum of $405,000.00, instead of assessed costs.

8. Pursuant to s 101(4) of the Civil Procedure Act 2005 (NSW), the first and second defendants to pay the plaintiff interest on the costs ordered to be paid in [7] above, such interest to:

1. commence to accrue from the date that this order is made;

2. cease to accrue upon the date that the costs ordered to be paid in [7] above are paid in full by the first and second defendants to the plaintiff; and

3. be calculated at the rate prescribed by rule 36.7 of the Uniform Civil Procedure Rules 2005 (NSW).

9. Pursuant to rule 36.4(3) of the Uniform Civil Procedure Rules 2005 (NSW), orders [7] and [8] are to take effect from the entry of those orders.

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Amendments

09 March 2020 - A number of minor typographical errors.

Decision last updated: 09 March 2020