Sony Music Entertainment (Australia) Limited v University of Tasmania
[2003] FCA 724
•18 JULY 2003
FEDERAL COURT OF AUSTRALIA
Sony Music Entertainment (Australia) Limited v University of Tasmania
[2003] FCA 724COPYRIGHT – Final orders – competing draft orders submitted by parties – process of discovery – supervision and security – confidentiality undertakings – whether Court should adopt orders submitted by parties
COSTS – Application for preliminary discovery – application of principles to new technology – whether applicants or respondents should pay costs of the proceedings – costs incurred on discovery process – whether parties should pay costs for discovery
WORDS AND PHRASES – “copyright”, “preliminary discovery”, “mp3”
Thomson Australian Holdings Pty Ltd v Trade Practices Commission (1981) 148 CLR 150 referred to
Kanthal Australia Pty Ltd v Minister for Industry, Technology and Commerce (1987) 71 ALR 109 distinguished
Hilton v Wells (1985) 59 ALR 281 citedSONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED, UNIVERSAL MUSIC AUSTRALIA PTY LIMITED AND EMI MUSIC AUSTRALIA PTY LIMITED v UNIVERSITY OF TASMANIA, THE UNIVERSITY OF SYDNEY, THE UNIVERSITY OF MELBOURNE
N128 OF 2003TAMBERLIN J
SYDNEY
18 JULY 2003
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N128 OF 2003
BETWEEN:
SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED (ACN 000 033 581)
FIRST APPLICANTUNIVERSAL MUSIC AUSTRALIA PTY LIMITED
(ACN 000 158 592)
SECOND APPLICANTEMI MUSIC AUSTRALIA PTY LIMITED
(ACN 000 070 235)
THIRD APPLICANTAND:
UNIVERSITY OF TASMANIA
FIRST RESPONDENTTHE UNIVERSITY OF SYDNEY
SECOND RESPONDENTTHE UNIVERSITY OF MELBOURNE
THIRD RESPONDENTJUDGE:
TAMBERLIN J
DATE OF ORDER:
18 JULY 2003
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.Within seven days of the date of this order, subject to Mr Thackray signing and delivering to the respondents’ solicitors and the Court an undertaking in the form set out in the Schedule, the first respondent permit the applicants’ expert Mr John Thackray to have access at the offices of the respondents’ solicitors to the following items for the purpose of conducting the process described in Order 2:
a) the DLT IV tape referred to in paragraph 5 of Mr Clifford’s affidavit of 4 April 2003 (Clifford’s Affidavit) and described as the “Physics Server Copy”;
b) the Exabyte 160 tape referred to in paragraph 7 of Clifford’s Affidavit and described as the “Physics Server Backup Copy”;
c) the DLT IV tape referred to in paragraph 10 of Clifford’s Affidavit and described as the “Lewis Computer Copy”;
d) any backup copy of data of the type contained on the Exabyte 160 tape referred to in paragraph 7 of Clifford’s Affidavit but made prior to 22 January 2003; and
e) any DLT IV tapes containing back up copies of the spool files referred to in paragraph 13 of Clifford’s Affidavit which cover the period prior to 21 January 2003.
2. Within 14 days of being given access to the items listed in Order 1, Mr Thackray:
a) examine, search, and/or test the items listed in Order 1 at the offices of the respondents’ solicitors using forensic methods (including by first making a forensic copy of each of the items onto a sanitised hard drive) and appropriate software (including EnCase) in order to recover deleted information, to extract information and, if necessary, to convert information into a readable form;
b) make two copies of the information recovered, extracted and/or converted by him as a result of the process undertaken in this order, provide one copy to the first respondent and its legal representatives (First Respondent’s Copy) and provide the other copy to the Court in a sealed envelope for safekeeping pending further or other order of the Court; and
c) seal any hard drive used to conduct the process set out in this order and provide such drives to the Court in a sealed envelope for safekeeping pending further or other order of the Court.
3. Within 14 days of receipt of the First Respondent’s Copy from Mr Thackray, the first respondent make verified discovery of such parts of documents contained within the First Respondent’s Copy:
a) relating to the description of a person or persons for the purpose of any applicant commencing a proceeding in the Court against that person or persons in respect of infringement of copyright in any sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to Dion Lewis or his website; or
b) relating to the question whether any applicant has the right to obtain relief in the Court from the first respondent in respect of any infringement of any copyright in sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to Dion Lewis or his website, being documents of a kind that inspection would assist the applicant in making a decision whether to commence a proceeding in the Court to obtain that relief.
4. The first respondent produce for inspection by the applicants an electronic copy of the parts of documents referred to in Order 3 within 7 days of the date of discovery.
5. Within seven days of the date of this order, subject to Mr Thackray signing and delivering to the respondents’ solicitors and the Court an undertaking in the form set out in the Schedule, the second respondent permit the applicants’ expert Mr John Thackray to have access at the offices of the respondents’ solicitors to the following items for the purpose of conducting the process described in Order 6:
a) the backup copy of files contained on the University of Sydney School of Information Technologies servers referred to in paragraph 4 of Mr Ryan’s affidavit of 7 April 2003 (Ryan’s Affidavit);
b) backup copies of files contained on the University of Sydney School of Information Technologies servers of the type referred to in paragraph 4 of Ryan’s affidavit but created prior to 9 January 2003;
c) the CD ROM referred to in paragraph 7 of Ryan’s Affidavit;
d) the CD ROM referred to in paragraph 12 of Ryan’s Affidavit;
e) the CD ROM referred to in paragraph 13 of Ryan’s Affidavit;
f) the CD ROM referred to in paragraph 16 of Ryan’s Affidavit;
g) the DLT backup tape referred to in paragraph 19 of Ryan’s Affidavit; and
h) the drive referred to in paragraph 21 of Ryan’s Affidavit as the “copy Li drive”.
6. Within 14 days of being given access to the items listed in Order 5, Mr Thackray:
a) examine, search, and/or test the items listed in Order 5 at the offices of the respondents’ solicitors using forensic methods (including by first making a forensic copy of each of the items onto a sanitised hard drive) and appropriate software (including EnCase) in order to recover deleted information, to extract information and, if necessary, to convert information into a readable form;
b) make two copies of the information recovered, extracted and/or converted by him as a result of the process undertaken in this order, provide one copy to the second respondent and its legal representatives (Second Respondent’s Copy) and provide the other copy to the Court in a sealed envelope for safekeeping pending further or other order of the Court; and
c) seal any hard drive used to conduct the process set out in this order and provide such drives to the Court in a sealed envelope for safekeeping pending further or other order of the Court.
7. Within 14 days of receipt of the Second Respondent’s Copy from Mr Thackray, the second respondent make verified discovery of such parts of documents contained within the Second Respondent’s Copy:
a)relating to the description of a person or persons for the purpose of any applicant commencing a proceeding in the Court against that person or persons in respect of infringement of copyright in any sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to Ming Li or his website; or
b)relating to the question whether any applicant has the right to obtain relief in the Court from the first respondent in respect of any infringement of any copyright in sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to Ming Li or his website, being documents of a kind that inspection would assist the applicant in making a decision whether to commence a proceeding in the Court to obtain that relief.
8. The second respondent produce for inspection by the applicants an electronic copy of the parts of documents referred to in Order 7 within 7 days of the date of discovery.
9. Within seven days of the date of this order, subject to Mr Thackray signing and delivering to the respondents’ solicitors and the court an undertaking in the form set out in the Schedule, the third respondent permit the applicants’ expert Mr John Thackray to have access at the offices of the respondents’ solicitors to the following items for the purpose of conducting the process described in Order 10:
a) the CD ROM referred to in paragraph 5 of the affidavit of Edwards of 9 April 2003 (Edwards’ Affidavit);
b) the CD ROM referred to in paragraph 17 of Edwards’ Affidavit;
c) the CD ROM referred to in paragraph 7 of Edwards’ Affidavit;
d) the Central Email Archive and the Central Email Backup Archive referred to in paragraph 24 of Edwards’ Affidavit.
10. Within 14 days of being given access to the items listed in Order 9, Mr Thackray:
a) examine, search, and/or test the items listed in Order 9 at the offices of the respondents’ solicitors using forensic methods (including by first making a forensic copy of each of the items onto a sanitised hard drive) and appropriate software (including EnCase) in order to recover deleted information, to extract information and, if necessary, to convert information into a readable form;
b) make two copies of the information recovered, extracted and/or converted by him as a result of the process undertaken in this order, provide one copy to the third respondent and its legal representatives (Third Respondent’s Copy) and provide the other copy to the Court in a sealed envelope for safekeeping pending further or other order of the Court; and
c) seal any hard drive used to conduct the process set out in this order and provide such drives to the Court in a sealed envelope for safekeeping pending further or other order of the Court.
11. Within 14 days of receipt of the third respondent’s copy from Mr Tthackray, the third respondent make verified discovery of such parts of documents contained within the Third Respondent’s Copy:
a) relating to the description of a person or persons for the purpose of any applicant commencing a proceeding in the Court against that person or persons in respect of infringement of copyright in any sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to John Huynh or his website, or to Dwi Vonny Agustina or her website; or
b) relating to the question whether any applicant has the right to obtain relief in the Court from the third respondent in respect of any infringement of any copyright in sound recordings owned by that applicant (as identified in the applicants’ affidavits or notified to the respondents within 14 days hereof) related in any way to John Huynh or his website, or to Dwi Vonny Agustina or her website, being documents of a kind that inspection would assist the applicants in making a decision whether to commence a proceeding in the Court to obtain that relief.
12. The third respondent produce for inspection by the applicants an electronic copy of the parts of documents referred to in Order 11 within 7 days of the date of discovery.
13. The costs of complying with these orders will be determined after the discovery process has been carried out.
14. The parties have liberty to apply to the court on three days’ notice.
- 6 -
SCHEDULE
CONFIDENTIALITY UNDERTAKING
I, John Thackray, of 85A Woodglen Road, Glen Eden, Auckland, New Zealand, director, undertake to the Court in relation to data or information supplied to me by or on behalf of each respondent for the purposes of carrying out the forensic process described in the attached orders, or to which I have access in the course of carrying out that forensic process (the Confidential Material) that:
1.I will keep the confidential material confidential at all times.
2. Except as required for me to carry out the forensic and other processes described in
the attached orders, I will not use the Confidential Material or any part of it for any
purpose.3. Subject to 4 below, the Confidential Material and any part of it will not be
disclosed by me either directly or indirectly to any person including the parties to
the proceedings, their servants and agents, without the prior written consent of the
relevant respondent or unless:a) such disclosure is expressly authorised by the Court; or
b) such part of the data or information has already been disclosed otherwise
than in contravention of this confidentiality undertaking.
4. The data and the information may be disclosed by me to partners and solicitors of
Baker & McKenzie or barristers briefed in these proceedings on behalf of
the respondents.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N128 OF 2003
BETWEEN:
SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED (ACN 000 033 581)
FIRST APPLICANTUNIVERSAL MUSIC AUSTRALIA PTY LIMITED
(ACN 000 158 592)
SECOND APPLICANTEMI MUSIC AUSTRALIA PTY LIMITED
(ACN 000 070 235)
THIRD APPLICANTAND:
UNIVERSITY OF TASMANIA
FIRST RESPONDENTTHE UNIVERSITY OF SYDNEY
SECOND RESPONDENTTHE UNIVERSITY OF MELBOURNE
THIRD RESPONDENT
JUDGE:
TAMBERLIN J
DATE:
18 JULY 2003
PLACE:
SYDNEY
REASONS FOR JUDGMENT
These reasons concern the settlement of appropriate orders in relation to preliminary discovery as a consequence of my reasons for decision, on the application for discovery made by the applicants, delivered on 30 May 2003. The parties have furnished competing draft Short Minutes of Order and the contest turns on a number of central points of difference.
In substance the respondents (“the Universities”) press for a more prescriptive and narrowly defined set of orders than those proposed by the applicants. I will briefly deal with the significant matters raised in the submissions made by the parties in relation to the implementation of the reasons for judgment.
DELINEATION OF INFORMATION TO BE DISCOVERED
As Mr Walker SC for the Universities has explained, the objective of the approach adopted in relation to the orders sought by the Universities is to provide a high level of specificity in order to avoid further disputes coming before the Court in relation to the implementation of preliminary discovery. There is merit in that objective.
In consequence, a number of limiting provisions are suggested by the Universities restricting the discovery to discrete “units of information” as distinct from the broader reference to documents. The reason for this is that, it is said, the description of “document” is inadequate in that it can capture extraneous material. An example is given of a student’s e-mail relating to a personal matter which does not relate in any way to the questions posed in O 15A of the Federal Court Rules (“FCR”). Alternatively, there may be e-mails that contain information that relate both to a personal matter and also to copyright infringement. In the former case the document would not be required to be produced. In the latter, production is warranted because the personal material may be inseverable from the relevant material.
In my view the orders as sought by the Universities adopt too narrow a construction of the provisions of O 15A and of my reasons. I prefer the draft orders of the applicants with amendments suggested by Mr Bannon SC in this respect. These specified amendments proposed by Mr Bannon SC have the effect of limiting the discovery to the description of a person or persons for the purpose of an applicant commencing a proceeding in the Court against that person or persons in respect of infringement of copyright in any sound recordings owned by the applicants, as identified in the applicants’ affidavits or notified to the respondents within fourteen days of the making of the order and which are related to the particular student named in the applicants’ evidence or his/her website.
Another issue concerns the description of the subject matter in respect of which discovery is to be given and on this aspect I agree with Mr Bannon SC that an appropriate way of describing the prospective causes of action is by reference to them being “related to copyright infringement” rather than simply referring to “copyright” infringement and to the other claims in the respondents’ draft orders. As pointed out by the applicants the restriction to copyright infringement itself or conversion or detention is too narrow because it fails to extend to other possible causes of action such as accessorial liability or authorisation. The applicants’ proposal encompasses related claims that have a nexus with the acts which are said to constitute copyright infringement.
Similar amendments are appropriate in relation to the orders sought with respect to O 15A r 6 concerning the question whether the applicant has the right to obtain relief and whether to commence a proceeding.
SUPERVISION AND SECURITY
The Universities’ draft orders provide that the records which embody the material as discovered should be retained at the office of their solicitors or at some other secure place for the purposes of inspection. I do not think this is appropriate because, by definition, this information should be given to the applicants because it has been discovered. Of course, the discovery will be subject to any claims for confidentiality and privilege but once the documents not subject to privilege or confidentiality claims have been discovered the applicants should not be prevented from taking the discovered material away in order to prepare their case as they see fit.
The Universities also seek an order that the searching of the material by Mr Thackray must take place at the office of their solicitors in a specific location which is to be kept secure. Although the applicants say this is unnecessary they do not strongly dispute this requirement. However, they dispute the necessity to have a solicitor present while the discovery process is being carried out by Mr Thackray and they also dispute the respondents’ proposal that the process be explained to a representative of the University as it is being carried out. Having regard to the confidentiality undertakings to be exacted and to the fact that discovery is made pursuant to a court order, I think it is unnecessary to insist on those requirements. If a representative of the University wishes to be present while the operation is being carried out I can see no difficulty with that but I do not think it is necessary to have the process explained beyond what is in the affidavit material or to have a solicitor present in the office during the process. The stringent protections which attach to the discovery process are sufficient. If a person is required by the Universities to be present then I do not consider it appropriate to require Mr Thackray answer questions to explain the process. The costs of having another person present will be part of the costs of providing discovery and may be to the account of the Universities if it is subsequently considered that the presence of such a person is unnecessary.
OMITTED DOCUMENTS
In the draft orders proposed by the Universities some of the records which have been preserved are not referred to. No satisfactory explanation has been given for this omission and I am not persuaded that these should not be subject to the discovery process.
PROPOSED RESTRAINTS ON MR THACKRAY
An undertaking is sought to be exacted that Mr Thackray would not at any time or in the future, act for, or be engaged or employed by, any person or entity, including the applicants, in respect of investigations or demands or litigation relating to any infringement of copyright that is alleged to have taken place on any computer systems or within any of the Universities.
It is said that there is no power in the Court to require such an undertaking and reference was made to the High Court decision in Thomson Australian Holdings Pty Ltd v Trade Practices Commission (1981) 148 CLR 150 at 165. However, the statement of the Court referred to in that case confirms that the Federal Court can accept an undertaking at an interlocutory stage provided the undertaking is reasonably related to the orderly procedure of the Court or to the subject matter of the litigation.
It is common ground that the O 15A preliminary discovery procedure is interlocutory in nature.
Notwithstanding that there is power to accept such an undertaking I can see no reasonable grounds for imposing such a restrictive order on the future engagements or employment of Mr Thackray. The restraints on his freedom to exercise his profession are unduly onerous and are not necessary. He is a forensic expert, not an employee or agent of a trade competitor. There is no present suggestion that he will be engaged in any further proceedings involving the respondents or that he will be acting in any capacity other than a forensic investigator using techniques to extract information. In respect of the information he obtains he is under the strictest implied undertakings and this is further backed up by express undertakings.
It is true that in some circumstances some unease has been felt by members of the Court in relation to the possible danger of unwitting disclosure of confidential information by experts engaged to deal with confidential information. Views to this effect were expressed by Wilcox J in Kanthal Australia Pty Ltd v Minister for Industry, Technology and Commerce (1987) 71 ALR 109 at 114-115. In that case his Honour also referred to his earlier decision in Hilton v Wells (1985) 59 ALR 281 at 293. His Honour did not impose such a requirement. He considered that he did not have sufficient information. However, these remarks were made in a different factual context and in Kanthal the question concerned the danger of a possible unwitting disclosure to a trade competitor. This is not to suggest that such an order can only be appropriate in circumstances where there are trade competitors. These elements are not operative in the present case.
In my view, although there is power in some circumstances to require an order of the type sought, I can see no warrant for it at this point and as Wilcox J points out in Kanthal, it would be appropriate before making such an order to obtain considerably more information about future anticipated commitments and engagements on the part of an individual before restricting liberty of employment to such a far reaching extent.
COSTS ON THE APPLICATION FOR DISCOVERY
Although the Universities contended that there was no power in the Court to make a discovery order of the type sought by the applicants in these proceedings, their argument was rejected in the earlier judgment. I also decided that their delineation of the documents which ought be subject to discovery in their proposed orders was too narrow. On the other hand, although the applicants succeeded on the question of power, I decided that the discovery sought by the applicants was too broad. The search criteria initially suggested by the applicants were too wide in the sense that documents would be covered which would have no relevance to the proceeding and the discovery of which could raise significant questions of privilege, confidentially and discretionary privacy considerations in addition to those of relevance. The problems arising in this case, are to a large extent, a consequence of the difficulty in applying accepted legal principles to the new technology and the lack of any clearly defined precedent. In those circumstances, I consider that the appropriate order in relation to both the initial application for discovery and in relation to the costs of settlement of the appropriate orders should be borne by each party. Therefore I make no order as to costs of these matters.
COSTS ON PROVISION OF THE DOCUMENTS AND INSPECTION
As a consequence of the discovery process there will necessarily be costs incurred by the parties in relation to the arrangements made as a result of these orders. These will include the costs of carrying out the forensic exercises in the discovery process and of the Universities having a representative present during the process. In addition, there may be costs in relation to arranging a location and other suitable matters such as the provision of sanitised hard drives, the sealing of documents, and the preservation of records. At this point I will not make any order in relation to the costs of these procedures as they are yet to be carried out and there is no detailed indication as to the nature and extent of the material which will be provided nor as to the amount of time which will be consumed in the discovery process. When the discovery process has been completed I will hear submissions in relation to the costs involved in the carrying out of the discovery and the production of the documents.
The appropriate orders, which I now make, are those set out in the applicants’ proposed Short Minutes of Order dated 3 July 2003. Applicants’ draft orders 13 and 14 are deleted and there will be no order as to the costs of the proceedings. In relation to applicants’ draft order 15, this should be varied to read: “the costs of complying with these orders will be determined after the discovery process has been carried out”.
I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate:
Dated: 18 July 2003
Counsel for the Applicants: A Bannon SC
J M HennessySolicitor for the Applicants: Gilbert & Tobin Counsel for the Respondents: B Walker SC
M R SpeakmanSolicitor for the Respondents: Baker & McKenzie Dates of Hearing: 27 June and 2 July 2003 Date of Judgment: 18 July 2003
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