Tangent Nominees Pty Ltd v Home Group Wwa Pty Ltd - [2016] WADC 139

JURISDICTION : DISTRICT COURT OF WESTERN AUSTRALIA
IN CIVIL

LOCATION: PERTH

CITATION: TANGENT NOMINEES PTY LTD -v- HOME GROUP WWA PTY LTD [2016] WADC 139

CORAM: REGISTRAR KINGSLEY

HEARD: 20 MAY 2016

DELIVERED : 16 SEPTEMBER 2016

FILE NO/S: CIV 2915 of 2013

BETWEEN: TANGENT NOMINEES PTY LTD
Plaintiff
AND
HOME GROUP WWA PTY LTD
Defendant

Catchwords:

Application pursuant to Rules of the Supreme Court O 28 - Real issue is inspection of documents - Rules of the Supreme Court O 28 inappropriate application

Legislation:

Rules of the Supreme Court 1971 (WA)

Result:

Application dismissed

Representation:

Counsel:

Plaintiff: Mr N Dillon
Defendant: Mr M Bennett

Solicitors:

Plaintiff: Morgan Alteruthemeyer
Defendant: Bennett & Co

Case(s) referred to in judgment(s):

Huddleston v Control Risks Information Services Ltd (1987) 1 WLR 701
Process Minerals International Pty Ltd v Consolidated Minerals Pty Ltd [2012] WASC 254

REGISTRAR KINGSLEY: The plaintiff (Tangent) designs and builds homes in Western Australia. The defendant (Home) also designs and builds of homes in Western Australia.
Tangent alleges that house plans for a house described as 'Luxxe' were created and first published in Australia in or about May 2008. Tangent alleges that Home has reproduced or authorised, procured, or caused the reproduction of the Luxxe plans by drawing plans entitled the 'Grand Cambridge' and the 'Grand Bellevue' (the infringing plans) and constructing a number of homes in accordance with the alleged infringing plans.
Home in its defence, in essence, puts Tangent to proof of its claim.
By a chamber summons dated 1 February 2016 Tangent seeks orders for inspection, by a forensic expert, of all devices and other computer hard drives, backup tapes, storage devices and mobile phones that stored, or may have stored, the documents identified in par 1 of pt 2A of Home's List of Documents. The summons also seeks an order that any documents accessed by Tangent's forensic expert be subject to an order for confidentiality first made on 7 April 2014.
Connor Breheny in an affidavit sworn 1 February 2016 in support of the application deposes that in pt 2A of its List of Documents Home has included documents being:
Data including meta data, data on computer hard drives, backup tapes and storage devices, mobile phones, data that has been lost by being routinely deleted, overwritten or deleted from time to time on dates that cannot in all cases now be identified.
Mr Breheny goes onto depose that Adam Stafford, a forensic computer expert, has advised that somebody skilled in accessing information stored on electronic devices are usually able to access that information notwithstanding the information is understood by the owner or operator to be lost by being overwritten or deleted from time to time.
In an affidavit sworn by Adam Stafford on 4 April 2016 Mr Stafford describes himself as a Manager of Forensic Services for BDO Corporate Finance (WA) Pty Ltd. Mr Stafford goes onto qualify himself as a specialist in the extraction, identification and analysis of data from electronic storage devices such as computers, mobile phones and hard drives. Mr Stafford deposes that when a file is deleted no changes are made to the file itself. Rather an entry is made in the computer or mobile phones index table to advise the computer that that particular section of the hard drive is now available for new files to be stored.
Mr Stafford goes on to depose the length of time, in his experience, that it would take to acquire a copy of data from a mobile phone, from a computer/laptop hard drive and from a commercial server. Mr Stafford further deposes that, in his experience in performing forensic examinations, he has developed a number of strategies to minimise disruption to business operations.
Tangent brings its application pursuant to Rules of the Supreme Court 1971 (WA) (RSC) O 28 r 2. RSC O 28 r 2 provides that where one party alleges another party to any cause or matter has in their possession or control some physical object not in the nature of a document, the inspection of which is material for the proper presentation of his case the first mentioned party may, by notice in writing, require the other to permit an inspection.
RSC O 28 r 2 was considered in Process Minerals International Pty Ltd v Consolidated Minerals Pty Ltd [2012] WASC 254 (Process). Process concerned a contractual dispute over the size of apertures used in screens at an ore processing plant. The plaintiff brought an application pursuant to RSC O 28, and in the alternative RSC O 52 r 2, seeking inspection and sampling of ore so that the plaintiff could advance its case. Kenneth Martin J agreed with the defendant's submissions that 'RSC O 28 is concerned with moveable physical objects and will not found a proper basis for (the plaintiff's) application'. Tangent's submissions is to the effect that they seek inspection of the physical device be it a mobile phone or computer to investigate whether the relevant documents can be extracted from those devices.
Tangent's application is to enable inspection of the electronic devices in order to access the documents purportedly on those devices and retrieve those documents for the purposes of inspection. In my opinion RSC O 28 r 2 does not permit that retrieval as O 28 r 2 is concerned with the inspection of the object itself.
The distinction is well stated by Hoffman J in Huddleston v Control Risks Information Services Ltd (1987) 1 WLR 701. Huddleston'scase concerned the sources of power for pre-action inspection or discovery. Pre-action inspection of property was not limited by the nature of the proceedings (s 33(1), Supreme Court Act 1981 (Eng), whereas pre-action inspection of a document was limited to personal injury actions (s 33(2)). Hoffman J (703(g)) comments that a written instrument, or any other object carrying information, can be both property and a document. Hoffman J goes onto state:
In my judgment Parliament intended, whatever Marshall McLuhan might have said, to distinguish between the medium and the message. If the question will be concerned with the medium, the actual physical object which carries the information, the application is to inspect property within s 33(1). If the question will be concerned with the message, the information which the object conveys, the application is for discovery and can be granted before writ only in the limited class of cases of proceedings to which s 33(2) applies.
Tangent's action is about the purported infringement of its copyright by the infringing plans. Tangent's focus is on the plans, documents, drawings that go to proof of Tangent's claim. To paraphrase Hoffman J in Huddleston Tangent's action is concerned with the message, and therefore the application concerns inspection of documents.
Both the oral submissions and written submissions of counsel for Tangent and Home commented on the application of RSC O 26. The submissions in relation to RSC O 26 can be shortly dealt with. Firstly, Tangent's application is pursuant to RSC O 28 r 2. This is not a matter of form over substance because secondly, the evidential basis for an application under RSC O 26 has not been made out. Any application pursuant to RSC O 26 would be an application for specific discovery.
Home's director, Mr Marchese, has deposed that they do not have the document to produce. Mr Marchese deposes that the effect of pt 2A in the affidavit of discovery is that Home does not have the originals of letters and does not have data that has been deleted or overwritten. For a proper application pursuant to RSC O 26 there must be specification of the documents sought to be inspected. That specification has not been made. It would be inappropriate to allow a forensic data technician to trawl through, in this case, the electronic devices of Home to ascertain whether there were any documents that fit a general description.
Finally, a point was made that Tangent's application ought be refused on the discretionary basis that there has been delay. Counsel for Home submits the matter has been entered for trial since 2014 and in 2016 there is an issue about discovery. As I have dismissed the application by Tangent on its merits, I do not propose to deal further with the exercise of discretion.

Conclusion

Tangent's application pursuant to RSC O 28 is dismissed. In the ordinary course costs should follow the event and I so order. If counsel for Tangent considers an alternative order for costs should be made, then I invite submissions to that end.