Strang International Pty Ltd v South32 Limited
[2024] FCA 1526
•11 December 2024
FEDERAL COURT OF AUSTRALIA
Strang International Pty Ltd v South32 Limited [2024] FCA 1526
File number(s): NSD 1792 of 2024 Judgment of: WIGNEY J Date of judgment: 11 December 2024 Date of publication of reasons: 9 January 2025 Catchwords: PRACTICE AND PROCEDURE – where applicants sought short service of originating application, statement of claim and supporting documents pursuant to rule 1.39 Federal Court Rules 2011 (Cth) – where applicants sought substituted service pursuant to r 10.24 Federal Court Rules 2011 (Cth) – where two respondents incorporated in South Africa – whether nature of application sufficiently urgent to warrant short and substituted service and listing of the matter for interlocutory hearing – application for short and substituted service and listing of matter for interlocutory hearing dismissed
PRACTICE AND PROCEDURE – where applicants sought suppression order pursuant to s 37AF Federal Court of Australia Act 1976 (Cth) – interim suppression order pursuant to s 37 AI Federal Court of Australia Act 1976 (Cth) granted
Legislation: Competition and Consumer Act 2010 (Cth) sch 2
Federal Court of Australia Act 1976 (Cth) ss 37AI, 37AF
Federal Court Rules 2011 (Cth) rr 1.39, 10.24, 10.42, 10.43
Division: General Division Registry: New South Wales National Practice Area: Commercial and Corporations Sub-area: Commercial Contracts, Banking, Finance and Insurance Number of paragraphs: 13 Date of hearing: 11 December 2024 Counsel for applicants: R Boadle Solicitor for applicants: Levitt Robinson ORDERS
NSD 1792 of 2024 BETWEEN: STRANG INTERNATIONAL PTY LTD
First Applicant
SIYANDA TERMINAL SERVICES (PTY) LTD
Second Applicant
SIYANDA ENGINEERED LOGISTICS (PTY) LTD
Third Applicant
AND: SOUTH32 LIMITED
First Respondent
HILLSIDE ALUMINIUM PTY LTD
Second Respondent
SOUTH32 ALUMINIUM SA PTY LTD
Third Respondent
ORDER MADE BY:
WIGNEY J
DATE OF ORDER:
11 DECEMBER 2024
THE COURT ORDERS THAT:
1.Until further order of the Court, pursuant to s 37AI of the Federal Court of Australia Act 1976 (Cth), the confidential affidavit sworn by Andrew John Donald Strang on 6 December 2024, including the exhibit marked as ‘Confidential Exhibit AS-2’ be prevented from publication and otherwise disclosure, save for disclosure to:
(a)the Court for the purposes of these proceedings;
(b)the Respondents;
(c)the Respondents' external legal advisors as follows:
(i)partners, employed solicitors, paralegals, and secretaries;
(ii)barristers and their assistants; and
(d)any other person designated by agreement between the Applicants and the Respondents or by order of the Court.
2.The applicants’ interlocutory application for orders pursuant to r 1.39 and 10.24 of the Federal Court Rules 2011 (Cth) be otherwise dismissed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
(Revised from transcript)WIGNEY J:
The applicants in this matter, Strang International Pty Ltd, Siyanda Terminal Services (Pty) Ltd and Siyanda Engineered Logistics (Pty) Ltd (referred to collectively as Strang) have commenced proceedings in this Court against South32 Limited, Hillside Aluminium Pty Ltd and South32 Aluminium SA Pty Ltd (referred to collectively as South32). In short summary, Strang alleges that South32 has misappropriated or misused Strang’s confidential information or intellectual property rights in respect of various devices.
Strang’s principal claims against South32 would appear to be in contract, however Strang alleges that South32 has also engaged in conduct in contravention of s 18 of the Australian Consumer Law (ACL), being schedule 2 to the Competition and Consumer Act 2010 (Cth). It appears to be on that basis that the proceeding has been commenced in this Court, though the precise basis upon which Strang claims that South32 contravened s 18 of the ACL is somewhat unclear from the pleading. The principal relief sought by the Strang is injunctive relief restraining South32 from making, exploiting or utilising its confidential information or intellectual property, though Strang also seeks damages.
The matter has come before me as duty judge because Strang wants to apply, at short notice, for an interlocutory injunction against South32. Strang did not, however, seek that relief before me ex parte. Rather, it sought an order pursuant to r 1.39 Federal Court Rules 2011 (Cth) abridging the time for service of its originating application, interlocutory application, statement of claim and supporting affidavits. It also sought an order, pursuant to r 10.24 of the Rules, permitting it to serve those documents by way of email to three nominated email addresses. Strang proposed that, once service had been effected pursuant to those orders, its application for an interlocutory injunction be listed for hearing before the duty judge in just over a weeks’ time.
It should perhaps be noted in this context that two of the respondent companies (the second and third respondents) are companies that are incorporated and based in South Africa, though Strang alleges that those companies are relevantly controlled by the first respondent, which is an Australian publicly listed company. It would also appear that the conduct that forms the main basis of Strang’s claim was engaged in by those two South African companies in South Africa, and that the interlocutory injunction sought by Strang is directed, or primarily directed, at conduct which the South African companies are engaging in in South Africa.
Whatever may be the merits of Strang’s substantive case against South32, or the merits of Strang’s proposed application for an interlocutory injunction, about which I express no view, there appears to me to be several problems with Strang’s application for short service and substituted service.
The most fundamental difficulty for Strang is that there does not appear to be any basis for granting the urgent procedural relief sought by it, or for having Strang’s application for an interlocutory injunction listed for hearing at such short notice. There is, in short, no apparent urgency. It is tolerably clear from both the pleading and the evidence before the Court that the dispute between Strang and South32 concerning the alleged misuse of confidential information or intellectual property rights has been ongoing for some time. The evidence adduced by Strang in support of its application included email communications between Strang and South32 throughout the year in which Strang raised its claims concerning South32’s alleged misappropriation or misuse of Strang’s confidential information or intellectual property. Those communications occurred over several months. The general tenor of South32’s response to Strang’s claims was to deny Strang’s allegations and assert that Strang had no legal basis to prevent it from engaging in the conduct about which Strang had complained. Importantly, there does not appear to have been any relevant correspondence between the parties in respect of Strang’s allegations since about October. The evidence does not reveal why Strang has not approached the Court for relief at some earlier point in time, or why the matter has somehow become sufficiently urgent for Strang to seek the urgent relief it now seeks.
There is no evidence to suggest that Strang has written to South32 in recent times, or at all, to put it on notice that that, if it does not stop using Strang’s confidential information or intellectual property, Strang would approach the Court for urgent relief without further notice to South32. Nor is there any evidence to suggest that Strang has written to South32 in recent times, or at all, in respect of the service of process. There was, for example, no evidence of any correspondence in which Strang asked whether the first respondent, the Australian registered company, would accept service of process on behalf of the second and third respondents, the two South African companies. Nor is there any correspondence in evidence in which Strang asked the second and third respondents whether they would accept service via email.
When pressed to explain the urgency of the matter, given the evidence which indicated that the dispute between the parties had been ongoing for some time, counsel for Strang indicated that the very subject matter of the dispute demonstrated the urgency of the matter. Counsel submitted that Strang’s allegations concerned the misuse of confidential information and that confidential information, by its very nature, may be destroyed if the misuse or dissemination of the information is not restrained.
The difficulty with that submission, which was put at a very high level of generality, is that there is no evidence of any immediate threat that South32 will disseminate the alleged confidential information in a way that will destroy its confidentiality. Rather, Strang’s complaint appears to be that South32 has already used, and is continuing to use, Strang’s confidential information and intellectual property in the manufacture and use of certain devices. In other words, the horse appears to have already bolted. Strang’s counsel was also unable to offer any reasonable or adequate explanation for why Strang had not commenced proceedings at some earlier point in time, or why the matter has suddenly become urgent.
The urgent orders sought by Strang also raise several other troubling or complicating issues. As already noted, the effect of the orders sought by Strang would be to permit Strang to serve two South African incorporated companies at short notice via email. Strang’s evidence and submissions did not, however, engage or grapple with r 10.42 or r 10.43 of the Rules, which relevantly deal with the circumstances in which an originating application may be served outside Australia. It is not immediately apparent to me that the proceeding falls within any of the categories of proceeding specified in r 10.42, being the types of proceedings in which an originating application may be served outside Australia without leave. That is particularly so given that, as already noted, the injunction sought by Strang does not appear to involve the restraint of any act in Australia: cf r 10.42(d)(i) of the Rules. If leave to serve outside Australia is required because the proceeding does not fall within r 10.42, Strang’s evidence and submissions do not address the matters in r 10.43 of the Rules.
I am, in all the circumstances, not persuaded that Strang has established a proper or sound basis for the urgent procedural orders sought by it. I am not satisfied that the matter is sufficiently urgent to warrant the grant of leave for short service so Strang’s application for an interlocutory injunction can be heard as soon as next week. Nor am I satisfied that Strang has demonstrated a proper or sound basis for substituted service on South32 via email, all the more so given that two of the respondents are foreign based corporations. While I appreciate that Strang would like its application for interlocutory relief heard as soon as possible, the appropriate course would be for its matter to be docketed to a judge in the ordinary way. Strang can then, if it chooses to do so, approach the docket judge for orders which would expedite the hearing of its application, including its application for interlocutory relief. Nothing I have said in this judgment would preclude Strang from again applying for orders for short and substituted service if it is able to demonstrate a proper basis for the making of such orders.
I should finally note that Strang also sought a suppression or non-publication order pursuant to s 37AF of the Federal Court of Australia Act 1976 (FCA Act) in respect of the affidavit of Andrew John Donald Strang sworn on 6 December 2024 and the exhibit to that affidavit marked as ‘Confidential Exhibit AS-2’. I am, however, not persuaded that there is sufficient evidence before me to support making the confidentiality order sought. While some parts of the affidavit and exhibit appear to refer to what is alleged to be confidential information, I am not entirely satisfied that the affidavit and exhibit in their entirety should be the subject of suppression or non-publication orders. I will however make an interim suppression order pursuant to s 37AI of the FCA Act in respect of the affidavit and exhibit. Strang will need to pursue its application for a suppression or non-publication before the docket judge at the earliest opportunity.
I otherwise dismiss Strang’s application for leave for short and substituted service.
I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Wigney. Associate:
Dated: 9 January 2025
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