Training Services Australia Pty Ltd v Saferight Pty Ltd - [2025] WASC 7

JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
IN CHAMBERS

CITATION:   TRAINING SERVICES AUSTRALIA PTY LTD -v- SAFERIGHT PTY LTD [2025] WASC 7
CORAM:   LUNDBERG J
HEARD:   ON THE PAPERS
DELIVERED          :   16 JANUARY 2025
FILE NO/S:   CIV 1937 of 2023
BETWEEN:   TRAINING SERVICES AUSTRALIA PTY LTD
Plaintiff
AND
SAFERIGHT PTY LTD
First Defendant
GORDON NOEL JAMES MCCORMACK
Second Defendant
JASON LEITH ATKINSON
Other Party

Catchwords:

Practice and procedure - Appropriate final orders to be made following settlement of proceedings - Parties agreed as to terms of permanent injunction and orders for delivery up to be made - Residual issues remaining for determination by the Court - Whether judgment should be entered in favour of the plaintiff in the sum of $100,000 - Turns on own facts

Practice and procedure - Costs - Appropriate costs orders to be made in relation to ex parte search orders application - Turns on own facts

Practice and procedure - Costs - Appropriate costs orders to be made in the action following acceptance of compromise offer - Whether indemnity costs order should be made - Whether special costs should be ordered - Turns on own facts

Legislation:

Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2022 (WA)
Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2024 (WA)
Legal Profession Uniform Law Application Act 2022 (WA), s 141(3)
Rules of the Supreme Court 1971 (WA), O 24A
Supreme Court Act 1935 (WA), s 27
Uniform Civil Procedure Rules 2005 (NSW), rule 20.27(3)

Result:

Judgment to be entered for the plaintiff in the sum of $100,000.
Special costs orders made in relation to the search order application.
Special costs orders made in relation to the action generally.

Category: B

Representation:

Counsel:

Plaintiff	:	No appearance
First Defendant	:	No appearance
Second Defendant	:	No appearance
Other Party	:	No Appearance

Solicitors:

Plaintiff	:	Bennett
First Defendant	:	Fletcher Law
Second Defendant	:	Fletcher Law
Other Party	:	In Person

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

BCBC Singapore Pte Ltd v Pt Bayan Resources Tbk [No 5] [2023] WASC 116
Berowra Holdings Pty Ltd v Gordon [2006] HCA 32; (2006) 225 CLR 264
Calderbank v Calderbank [1975] 3 All ER 333; [1976] Fam 93
Chesterton International (WA) Pty Ltd v Interchange Holdings Pty Ltd (WASC, Heenan J, Lib No. 950056, 21 February 1995, unreported)
Dawson v ACP Publishing Pty Ltd [2007] NSWSC 542
Della Frana v Lorenzato; Burwood Council v Lorenzato (No 2) [2022] NSWCA 53
Electricity Generation and Retail Corporation trading as Synergy v Woodside Energy Ltd [2014] WASC 469 (S)
Electricity Generation Corporation v Woodside Energy Ltd [2011] WASC 268 (S)
Hodder v Australian Executor Trustees Ltd [No 3] [2022] WASC 361
Hogan v Hinch [2011] HCA 4; (2011) 243 CLR 506
INPEX Operations Australia Pty Ltd v AIG Australia Ltd [No 3] [2023] WASC 332 (S)
John Fairfax Publications Pty Ltd v District Court of NSW [2004] NSWCA 324; (2004) 61 NSWLR 344
Maitland Hospital v Fisher (No 2) (1992) 27 NSWLR 721
McIntosh v Peterson [2024] WASC 446
Nesci v Nesci [2005] WASC 65
Newcrest Mining Ltd v Santos WA Northwest Pty Ltd (No 2) [2022] WASC 410
Rinehart v Welker [2011] NSWCA 403; (2011) 93 NSWLR 311
Russell v Russell (1976) 134 CLR 495
Sandy v Yindjibarndi Aboriginal Corporation RNTBC (No 3) [2020] WASC 88
Sino Iron Pty Ltd v Mineralogy [No 2] [2017] WASCA 76 (S)
Smith v New South Wales Bar Association [1992] HCA 36; (1992) 176 CLR 256
Way v Swan Television and Radio Broadcasters Limited (1991) 5 WAR 323
Woolworths Ltd v Olson [2004] NSWSC 896

Table of Contents

A. Introduction

B. The nature of the action

C. Issues for resolution by the Court

D. Materials relied upon by the parties

E. Factual background

F. First issue - whether judgment should be entered

The plaintiff's submissions

The defendants' submissions

Disposition

G. Second issue - the costs of the search order application

Whether indemnity costs should be awarded

Whether special costs should be awarded (item 10)

H. Third issue - the costs of the action

Whether indemnity costs should be awarded

Whether special costs should be awarded

Item 1 - Writ

Item 7 - Discovery

Item 19 - Preparation of case

Counsel's hourly rate

I. Conclusion and orders

ATTACHMENT A Judgment and orders proposed by the Court

ATTACHMENT B Actual costs billed by the plaintiff

LUNDBERG J:

A. Introduction

This action, involving claims for copyright infringement and breach of confidence, was listed for a 7 day trial to commence on 5 December 2024. For the plaintiff, twelve outlines of evidence had been filed from five witnesses. For the defendants, ten outlines of evidence had been filed from seven witnesses. No expert evidence had yet been filed by any of the parties, although orders had earlier been made for that purpose.
As matters transpired, the trial of the action was averted following a settlement of the action by the parties in November 2024. In particular, on 1 November 2024, the plaintiff accepted an offer of compromise which had been made by the defendants pursuant to O 24A of the Rules of the Supreme Court 1971 (WA) (RSC).[1]
[1] First Haddad Affidavit, Attachments JAH-3 and JAH-4.
The settlement of the action has, however, left some important residual issues for resolution by the Court.[2] It has been agreed that those issues will be determined by the Court on the papers.[3]
[2] Third party proceedings were also commenced by the defendants against the named third party, which were resolved by consent in November 2024. I refer to the orders made by the Court on 21 November 2024, by consent, by which the third party proceedings were discontinued with the parties bearing their own costs in relation to that aspect of the proceedings.
[3] Orders made by consent on 25 November 2024. The orders contemplated that 'applications' would be filed by the parties, which has not been done; rather, minutes of orders have been filed with the supporting documents. The residual issues will be addressed on the basis of the orders proposed by the parties and their respective submissions.

B. The nature of the action

This action was brought by the plaintiff (Training Services) against one of its alleged competitors (the first defendant, Saferight), and against the sole director and controller of that company (the second defendant, Mr McCormack). It was alleged that they had, in various allegedly unauthorised and unlawful ways, obtained and/or used the plaintiff's information and work product for the benefit of Saferight's business.[4]
[4] Amended Statement of Claim dated 2 September 2024 (ASOC) [18] - [31].
The information and work product is found in the contents of an online examination preparation course, said to have been developed by representatives of the plaintiff.[5] That course assists persons to prepare for, and ideally to pass, the theoretical examination administered by the Department of Mines Industry Regulation and Safety on the subject of the mining safety legislation in Western Australia.[6]
[5] ASOC [5] - [7] and [9] - [14C].
[6] ASOC [6].
The plaintiff asserted claims for copyright infringement and breach of the equitable duty of confidence. The plaintiff sought permanent injunctive relief, orders for delivery up, damages for breach of confidence (including exemplary damages), damages for copyright infringement (including additional damages for flagrant infringement), and an account of profits in the alternative.[7]
[7] ASOC prayers for relief A to F.

C. Issues for resolution by the Court

The plaintiff and defendants are agreed as to the form of the permanent injunction and orders for delivery up that should be made by the Court upon the accepted offer of compromise.
The parties have not been able to agree on the following issues:
(a) whether judgment should now be entered against the defendants for the amount of $100,000;
(b) the orders which should be made as to the plaintiff's costs of obtaining and executing the search orders; and
(c)the orders which should be made as to the costs of the action, and whether they ought be on an indemnity basis or whether special costs should be awarded.

D. Materials relied upon by the parties

Pursuant to orders made by the Court, the parties filed submissions and supporting affidavits addressing the residual issues. The following documents were received from the parties:
(a)the plaintiff's submissions dated 3 December 2024;
(b)the affidavit of Jessica Aida Haddad sworn 29 November 2024 (First Haddad Affidavit), which attaches the communications exchanged by the solicitors, including the offer of compromise and the acceptance, and sets out the costs incurred by the plaintiff in the action;
(c)the defendants' written submissions dated 11 December 2024;
(d)the affidavit of Paul Francis Fletcher affirmed on 11 December 2024 (Fletcher Affidavit), which attaches a communication between the solicitors, the remittance advice dated 12 November 2024, and the transcript of proceedings before Tottle J on 23 August 2023;
(e)the plaintiff's reply submissions dated 16 December 2024; and
(f)the second affidavit of Jessica Aida Haddad sworn
16 December 2024 (Second Haddad Affidavit), which attaches:
(i)a concerns notice dated 16 April 2024 served by the defendants' solicitor on the plaintiff's solicitor, referring to statements attributed to a representative of the plaintiff which were published in the media and said to be defamatory of the second defendant (Mr McCormack);
(ii)the media article in question; and
(iii)the writ of summons in an action commenced in this Court on 6 December 2024 by the second defendant against Mr Trott and the plaintiff, indorsed with a claim for damages for publication of defamatory material in the above media article.
Ms Haddad is a legal practitioner with the law firm representing the plaintiff. Mr Fletcher is a senior principal of the law firm representing the defendants.
I have also had regard to those documents filed in the action to date to which the parties have made reference in their submissions, including the pleadings filed by the parties.[8]
[8] ASOC, Re-Amended Defence dated 15 October 2024 (RAD), and the Amended Third Party Statement of Claim dated 20 February 2024.

E. Factual background

I will now briefly summarise the factual background and the manner in which the action was settled. The summary is drawn from the affidavits and pleadings which have been filed, noting that the action did not proceed to a final trial.
On 21 August 2023, the plaintiff filed the writ of summons in the action, with a general indorsement. The plaintiff also filed an urgent ex parte motion for injunctive relief and for search orders, supported by an affidavit from a former employee of the second defendant. The former employee is Mr Atkinson, who is the third party to the action.
In that affidavit, the former employee deposed that he was directed by the second defendant to enrol in a competitor's course to gather information that could be used by Saferight to develop its own course.[9] The former employee deposed that he enrolled in the plaintiff's course, falsely indicating that he was an employee of a mining company, and gathered information from the course including hundreds of screenshots.[10] The information was saved to a laptop which was passed to the first defendant.
[9] Affidavit of Jason Atkinson sworn 21 August 2023 [22] and [40].
[10] Affidavit of Jason Atkinson sworn 21 August 2023 [31] - [37].
The former employee appears to have then had a moral realignment, at which point he resigned from his employment with the first defendant, and soon thereafter contacted a representative of the plaintiff to inform him of the foregoing conduct.[11] This appears to have been the catalyst for the commencement of the action by the plaintiff.
[11] Affidavit of Jason Atkinson sworn 21 August 2023 [60].
On 23 August 2023, Tottle J made extensive search orders permitting the plaintiff's solicitors, independent solicitors, and independent computer experts, to enter and search the first defendant's premises in Belmont and Welshpool.[12] These orders were executed on 24 and 25 August 2024.
[12] Fletcher Affidavit, Attachment PFF-3 (transcript of proceedings).
On 12 October 2023, the first defendant issued a third party notice to the former employee. The first defendant asserted in that notice that the former employee was liable to indemnify the first defendant against the plaintiff's claim and the costs of the action, on the ground that he breached the employment agreement with the first defendant. As explained in the statement of claim subsequently filed in the third party proceedings,[13] the first defendant's allegation was that the former employee breached the term in his employment contract to comply with the laws of the Commonwealth and the State.
[13] Third party statement of claim dated 20 February 2024.
Further, Saferight and Mr McCormack pleaded that they did not direct or authorise the former employee to engage in the conduct in question (namely, enrolling in the plaintiff's course and making screenshots of the course information, which he saved on to a computer provided by the first defendant).
A review of the defence reveals a number of admissions were made by the defendants, but the core allegations, that is whether the conduct could be attributed to the defendants or render them liable, and whether the claims had substance, were denied by the defendants.
On 29 November 2023, and so still relatively early in the life of the proceedings, the plaintiff's solicitors corresponded with the defendants' then solicitors on a without prejudice save as to costs basis, offering to settle the proceedings.[14] In that letter, which I must say is relatively comprehensive, the plaintiff's solicitors emphasised the strength of their client's claims and proposed a settlement of the action.
[14] First Haddad Affidavit, Attachment JAH-1.
In essence, by that letter, the plaintiff offered to settle the proceedings on the basis:
(a)the defendants would undertake to permanently delete and destroy the information;
(b)the defendants would warrant they would not make any use of the information;
(c)the defendants would provide to the plaintiff any course material they developed in the future to allow the plaintiff an opportunity to review it and take steps to protect its position, should it need to do so (being an aspect of the offer which the defendants' criticise as an over-reach);
(d)the defendants would pay the plaintiff the sum of $5,000 as a compromise on its claim to additional damages;
(e)the defendants would pay the plaintiff's legal costs on an indemnity basis;
(f)the parties would agree to confidentiality and non-disparagement clauses; and
(g)the deed of settlement would include the former employee as a party and the defendants would release the former employee from any claims.
The plaintiff's solicitors provided a breakdown of the plaintiff's legal costs and disbursements in the above letter.
The above offer expired on 27 December 2023, but was renewed by the plaintiff by letter dated 25 January 2024, and extended to 7 February 2024. The plaintiff also provided a further breakdown of its costs in its subsequent letter sent on 25 January 2024.[15]
[15] PS [16].
The offer was obviously not accepted. The action proceeded forward from that point, through several interlocutory stages, reaching the point in June 2024 where the defendants pressed for the action to be listed for trial promptly.
On 20 June 2024, trial directions were made by Tottle J.
Thereafter, it is apparent both from the Court record, and from the hearing which was held before me on 18 September 2024, that the parties were then accelerating their trial preparation. In particular, as noted, the parties had filed numerous witness outlines for the purposes of the listed trial, including amended outlines and further outlines for some witnesses.
On Wednesday, 30 October 2024, the defendants' solicitors served an offer of compromise on the plaintiff's solicitors. The operative terms of the offer were as follows:
Pursuant to Order 24A of the Rules of the Supreme Court 1971, the first and second defendants hereby offer to compromise the plaintiff's claim in the proceedings on the following basis:
Within 28 days of acceptance of the offer, the first and second defendants will:
(a)consent to a permanent injunction to restrain the defendants and any related body corporate, related entity, related party, and any director or officer from using the Screenshots or any derivative of the Screenshots for any purpose;
(b)consent to an order for delivery up of all copies of the Screenshots or any derivative of the Screenshots in the defendants' possession, custody or control, alternatively the destruction upon oath of all copies of the Screenshots or any derivative of the Screenshots;
(c) pay to the plaintiff $100,000, inclusive of interest (but exclusive of costs).
This offer of compromise remains open for acceptance for a period of 28 days from the date of this offer.
I will take the reference to 'Screenshot' in the offer to be the defined term used in the ASOC at [27], which refers to the Screenshots taken by Mr Atkinson of the slides used in the plaintiff's course. Mr Atkinson took those Screenshots between 11 and 18 July 2023. Images of approximately 400 slides were taken.[16] It is alleged the Screenshots were saved to a work laptop provided by the first defendant, which was returned to the first defendant by Mr Atkinson, whereupon the Screenshots were uploaded to a drive on the first defendant's server. All of these allegations are admitted by the defendants.
[16] The pleading refers to '400 hundred', which I take to be an error.
The allegations set out in the previous paragraph are pleaded at [27], [28] and [29] of the ASOC, and are admitted by the defendants at [27], [28] and [29] of the RAD. The defendants say further, at [27] and [28] of the RAD, that Mr Atkinson acted without the knowledge, authority or consent of the defendants and was acting outside the scope of his employment in taking and saving the Screenshots.
On Friday, 1 November 2024, and so very shortly after being served with the defendants' offer, the plaintiff's solicitors served a notice of acceptance of the offer on the defendants' solicitors. The notice stated:
Pursuant to Order 24A Rule 3(5) of the Rules of the Supreme Court 1971 (WA), the plaintiff hereby accepts the defendants' offer of compromise made on 30 October 2024.
On 12 November 2024, the sum of $100,000 was paid into the trust account of the plaintiff's solicitors. The payment was made following an email from the plaintiff's solicitors to the defendants' solicitors setting out the consequences of the acceptance of the offer of compromise. The email indicated the plaintiff was now entitled to tax its costs, and the defendants were required to pay the sum offered within 28 days, being by 29 November 2024. The email also included a statement that the plaintiff 'may apply for such judgment as it may be entitled to upon the accepted offer of compromise', and asked whether the defendants consented to 'orders being made and judgment being given in these terms and if not, what orders you propose in the alternative'.[17]
[17] First Haddad Affidavit, Attachment JAH-5.
On 13 November 2024, the defendants' solicitor proposed orders to reflect settlement on the basis of no admission of liability.
The plaintiff's solicitor responded on 14 November 2024 that 'the grant of a perpetual injunction and the payment of an amount unrelated to costs is inconsistent with a settlement on the basis of no admission of liability'.[18] The plaintiff's solicitor also addressed the payment of the $100,000 into its trust account, as follows:[19]
We note you paid $100,000 into our trust account before we gave instructions or our trust account details to do so. We will hold those funds on escrow pending final orders being made by the Court, which we consider should record the full terms of compromise.
[18] First Haddad Affidavit, Attachment JAH-6.
[19] First Haddad Affidavit, Attachment JAH-6.

F. First issue - whether judgment should be entered

The plaintiff contends that judgment should be entered by the Court in favour of the plaintiff in the amount of $100,000, without any additional orders to the effect that the action otherwise be dismissed. The defendant maintains it never agreed to judgment being entered for that sum and moves for an order that the action otherwise be dismissed.

The plaintiff's submissions

The plaintiff emphasises the following matters.
First, the plaintiff says it was largely successful in that the offer of compromise made by the defendants agreed to give the plaintiff most of the relief sought in the proceedings. In particular, it had sought a permanent injunction restraining the defendants from using the screenshots or any derivative of them and the offer included this. The plaintiff had sought delivery up of the screenshots or any derivative of them, and again the offer included this. Further, in circumstances in which the plaintiff had claimed loss and damage of $60,000 plus what the plaintiff describes as unquantified additional damages (although I note the schedule filed by the plaintiff particularised these damages in the amount of $200,000), it is said to be significant that the offer provided by the defendants included payment to the plaintiff of $100,000.
Second, the plaintiff submits that the orders made upon an accepted offer of compromise should record the terms upon which the parties agreed to settle their dispute, and doing so accords with the principles of open justice.
Third, the plaintiff notes that it was a term of the offer of compromise that the defendants pay the plaintiff $100,000.
Fourth, the plaintiff submits that the defendants' payment was premature and was not accepted by the plaintiff - rather, the amount was held in escrow.
Fifth, in further support of its position, the plaintiff submits that an order that the proceedings 'otherwise be dismissed' would be antithetical to judgment in favour of the plaintiff and redundant if judgment is made in favour of the plaintiff because the plaintiff's cause of action will merge in the judgment.
Sixth, the plaintiff submits that, given the Court will be making injunctive orders by consent and will be making dispositive orders, the Court record 'should reflect the parties' compromise without being skewed by the absence of the settlement amount or the inclusion of any dismissal'.[20]
[20] PS Reply [8].
Seventh, a further point is advanced by the plaintiff in its submissions. The plaintiff notes that part of its claim was that the defendants' conduct was flagrant within the meaning of s 115 of the Copyright Act 1968 (Cth).[21] It is said that a defendant's prior conduct would be a relevant consideration as to flagrant infringement and associated remedies in any future copyright dispute. The plaintiff says that recording the entry of judgment and an order to pay the settlement sum would act as a deterrent against any future infringement of copyright by the defendants.[22]
[21] ASOC [38] and [39].
[22] PS Reply [9].
I am not persuaded that the present issue should be approached on the basis that the orders should be moulded to deter future breaches. As will be seen, the focus ought be on the terms of the compromise which has been reached, in the context of the Court's rules. The position might be otherwise if, at the conclusion of a trial there was some debate as to the form of the relief which should be granted to the plaintiff, where the plaintiff had succeeded in its claim and the findings made by the Court were consistent with the point now being made by the plaintiff as to the risk of future infringement.

The defendants' submissions

The defendants resist the entry of judgment. It is submitted that they did not agree to judgment being entered against them in the sum of $100,000.[23] That is, this was not the basis upon which the defendants offered to compromise the proceedings.[24] The offer did not address liability, according to the defendants, and there is no proper basis for it to be construed as an admission of flagrant infringement or for the record of the Court to reflect that.[25]
[23] DS [2].
[24] DS [3].
[25] DS [7].
The defendants maintain they complied with the requirements of O 24A r 4 RSC by making the necessary payment, which discharged their obligations. The defendants say the principles of open justice have no role to play on this issue.
Further or alternatively, the defendants submit that, as the relevant payment has already been made, the plaintiffs are no longer entitled to judgment in the sum of $100,000, having regard to the terms and effect of O 24A r 3(9) RSC and s 24(7) of the Supreme Court Act 1935 (WA). In any event, it is submitted by the defendants the Court ought not make orders which serve no useful purpose.[26]

Disposition

[26] DS [6].

The procedure in this Court by which an offer of compromise may be made which has presumptive costs consequences is contained within O 24A RSC. Offers of compromise may also be made outside this regime, in accordance with the principles in Calderbank v Calderbank.[27]
[27] Calderbank v Calderbank [1975] 3 All ER 333; [1976] Fam 93.
These procedures promote the compromise of litigation by requiring an offeree to give proper consideration to an offer at the risk of adverse costs consequences of rejecting it.[28] The objects of procedures within the rules of the Court, such as are found in O 24A RSC, were examined by the NSW Court of Appeal in Maitland Hospital v Fisher (No 2), which was followed in this Court by Curthoys J in Hodder v Australian Executor Trustees Ltd [No 3].[29]
[28] Della Frana v Lorenzato; Burwood Council v Lorenzato (No 2) [2022] NSWCA 53 [33] - [35] (Brereton JA); and Maitland Hospital v Fisher (No 2) (1992) 27 NSWLR 721, 724 (Kirby P, Mahoney JA and Samuels A-JA).
[29] Hodder v Australian Executor Trustees Ltd [No 3] [2022] WASC 361 [44] (Curthoys J).
In Maitland Hospital v Fisher (No 2), the Court held:
The objects of the rule include
1. To encourage the saving of private costs and the avoidance of the inherent risks, delays and uncertainties of litigation by promoting early offers of compromise by defendants which amount to a realistic assessment of the plaintiff's real claim which can be placed before its opponent without risk that its “bottom line” will be revealed to the court;
2. To save the public costs which are necessarily incurred in litigation which events demonstrate to have been unnecessary, having regard to an earlier (and, as found, reasonable) offer of compromise made by a plaintiff to a defendant; and
3. To indemnify the plaintiff who has made the offer of compromise, later found to have been reasonable, against the costs thereafter incurred. This is deemed appropriate because, from the time of the rejection or deemed rejection of the compromise offer, notionally the real cause and occasion of the litigation is the attitude adopted by the defendant which has rejected the compromise. In such circumstances, that party should ordinarily bear the costs of litigation.
Pursuant to O 24A r 3(9) RSC, the Court has a discretion to 'give such judgment or make such order as it thinks fit' upon an accepted offer of compromise. The sub-rule states as follows:
(9) Where an offer is accepted under this rule, any party to the compromise may apply to the Court for such judgment or order as he may be entitled to and on the hearing of the application the Court shall give such judgment or make such order as it thinks fit.
There is precious little commentary on the scope of this sub-rule. The Red Book offers the following observation, which is correct in my view, as far as it goes:[30]
A party may apply to the court for a judgment to be entered consistent with an accepted offer.
[30] Gething M, Joseph R and Tomasi B, Civil Procedure : Western Australia (vol 1), [24A.3.5].
Undoubtedly, the sub-rule vests the Court with a discretion to enter judgment upon an offer under O 24A RSC being accepted, limited by the phrase 'such judgment or order as he may be entitled'. As a matter of general principle, the discretion must, of course, also be exercised judicially, not arbitrarily or capriciously, nor on grounds unconnected with the litigation. It will not be in every case that entering judgment is appropriate.
Further, it would be proper to exercise the discretion having regard to the purpose of the procedure in O 24A RSC, and mindful of the broader context of the regime. As to that context, certain principles and considerations should be emphasised.
One aspect of the regime which ought be stressed is that offers made thereunder (such as the offer made by the defendants in this case) are subject to the rules of the Court, and ought not be assessed by reference only to contractual principles. This is an unsurprising contention, I would think. The point was made by Master Newnes, as his Honour then was, in Nesci v Nesci,[31] in the context of the withdrawal of an offer, as follows:
It is, I think, clear that the question of the withdrawal of an offer made under O 24A is not to be determined on ordinary contractual principles. The offer is made under the rules of Court and acceptance of an offer made under O 24A is an agreement made subject to the procedures of the Court, including the procedure by which the offeror may be permitted to withdraw the offer: see Cumper v Pothecary [1941] 2 KB 58 at 67; Garner v Cleggs (a firm) [1983] 1 WLR 862 at 871; Lewis v Combell Constructions Pty Ltd (1989) 18 NSWLR 528; Scanruby Pty Ltd v Caltex Petroleum Pty Ltd [2001] NSWSC 411. The overriding principle with which the Court is concerned is the interests of justice and the rules are to be applied so as to promote the attainment of justice between the parties, not to frustrate it: see Lewis v Combell Constructions Pty Ltd (supra) at 538; Scanruby Pty Ltd v Caltex Petroleum Pty Ltd (supra) at [18]; Mohamed v Farah [2004] NSWSC 482 at [67].
[31] Nesci v Nesci [2005] WASC 65 [18] (Newnes M).
The same point was made in the reasons of the plurality in the High Court in Berowra Holdings Pty Ltd v Gordon.[32] The High Court was concerned in that case with an offer of compromise made under the District Court Rules 1973 (NSW). The plurality observed that it was 'incorrect to analyse an offer of compromise made and accepted pursuant to the Rules in purely contractual terms'.[33]
[32] Berowra Holdings Pty Ltd v Gordon [2006] HCA 32; (2006) 225 CLR 264 [44] and [55] (Gleeson CJ, Gummow, Hayne, Heydon and Crennan JJ).
[33] Berowra Holdings Pty Ltd v Gordon [55] (Gleeson CJ, Gummow, Hayne, Heydon and Crennan JJ).
One evident difference between a purely contractual offer of settlement, and an offer made pursuant to the Rules of the Supreme Court 1971 (WA), is the existence of O 24A r 3(9) RSC. This provision permits the parties to a proceeding in this Court to bring an end to their litigation through the mechanism of having judgment entered by the Court, where an offer of compromise has been accepted, and whether or not the offer has expressly contemplated the entry of judgment. The power in sub-rule (9) permits the parties to obtain finality in respect of the dispute. A judgment given by the Court upon acceptance of an offer of compromise is a final judgment (although it is not a judgment on the merits as such). A consequence of this is that once it is shown by the actual record of the Court that an action has been brought and judgment has been entered, no other proceedings can thereafter be maintained on the same cause of action.[34]
[34] Jackson v Goldsmith (1950) 81 CLR 446, 466; and Gething M, Joseph R and Tomasi B, Civil Procedure : Western Australia (vol 1), [43.0.1].
The finality of proceedings is an important aspect of public policy to which this Court should give due weight when construing O 24A RSC, and when exercising the discretion within sub-rule (9).[35] This policy consideration should not be defeated or circumvented lightly. To say, as the defendants do, that judgment should not be entered merely because the defendants have already made payment of the amount required by the terms of the compromise (and it is that amount which is intended to be the subject of the judgment sought by the plaintiff) is too narrow a proposition, and has little to commend it. The broader, more substantive analysis required by sub-rule (9) is to assess whether the plaintiff was entitled to judgment based upon the fact of acceptance of the offer by the plaintiff, not by reference to issues or considerations arising from the unilateral timing of payment.
[35] Smith v New South Wales Bar Association [1992] HCA 36; (1992) 176 CLR 256, 265 (Brennan, Dawson, Toohey and Gaudron JJ).
Similarly, there is no warrant to hold that sub-rule (9), and the Court's discretion to enter judgment, is reserved for cases in which a party has defaulted on the terms of the compromise, and that the entry of judgment is required for some enforcement purposes. The rationale for the existence of a discretion to enter judgment in O 24A r 3(9) RSC is not confined to enforcement purposes, which are in any event the subject of O 24A r 8 RSC.
In support of the submission that the purpose of O 24A r 3(9) RSC is to facilitate enforcement of agreements, reference was made by the defendants to s 24(7) of the Supreme Court Act 1935 (WA). It was observed that there is a degree of similarity between the language employed in O 24A r 3(9) RSC and s 24(7), and that the latter provision permits the Court to enforce an agreement compromising an action, within the action itself.[36] That similarity in language does not translate into a conclusion that a potential use of the power in s 24(7) to enforce an agreement compromising an action thereby confines the scope and purposes of sub-rule (9). It is proper to approach the construction of sub-rule (9) by reference to its text, context and purpose, and not to assume that the purpose of another provision is equally applicable.
[36] As explained by Heenan J in Chesterton International (WA) Pty Ltd v Interchange Holdings Pty Ltd (WASC, Heenan J, Lib No. 950056, 21 February 1995, unreported) at 4 - 5 and 7.
The process by which judgment may be entered has wider significance and importance than is allowed for by the defendants' submissions, including to operate as a final determination of the proceedings and to operate such that the underlying causes of action will merge into the judgment. These broader considerations explain why the defendants' contention that entry of judgment would serve no useful purposes in the present case is not one I can accept.
A further aspect of the wider significance which should be borne in mind when exercising the discretion in sub-rule (9) is the need to remain faithful to the principle of open justice. The plaintiff emphasised the relevance of this principle in its submissions.[37]
[37] PS [6].
The principle of open justice is one of the most fundamental aspects of the system of justice in Australia.[38] Open justice ensures public confidence in the administration of justice.[39] The fact that courts of law are held openly and not in secret is an essential aspect of their character.[40] It distinguishes the activities of courts from those of administrative officials, for publicity is the authentic hallmark of judicial as opposed to administrative procedure.[41]
[38] John Fairfax Publications Pty Ltd v District Court of NSW [2004] NSWCA 324; (2004) 61 NSWLR 344 [18] (Spigelman CJ, Handley JA and Campbell AJA agreeing).
[39] Hogan v Hinch [2011] HCA 4; (2011) 243 CLR 506 [20] (French CJ); Rinehart v Welker [2011] NSWCA 403; (2011) 93 NSWLR 311 [32] (Bathurst CJ and McColl JA).
[40] Russell v Russell (1976) 134 CLR 495, 520 (Gibbs J, as his Honor then was); Newcrest Mining Ltd v Santos WA Northwest Pty Ltd (No 2) [2022] WASC 410 [17].
[41] Russell v Russell (520).
The principle is engaged within the framework of sub-rule (9) in that the exercise of the discretion by the Court to enter judgment has the effect that the terms of that judgment form part of the record of the Court, and will be available to the public: O 67B r 6(4) RSC.
In the present case, the resolution of the action by these parties insofar as the permanent injunctive relief and orders for delivery up are concerned, would form part of the record of the Court, and be publicly accessible. The parties are not in dispute as to that. The defendants' contention is that the record ought not include the entry of judgment in respect of the sum of $100,000. In my view, the principle of open justice, at least in the present circumstances, tends strongly in favour of an approach whereby the Court's record of the resolution of the action accurately reflects the terms of that resolution, not merely part of it.
Against the above framework, the terms of the relevant offer may be addressed. Although the analysis required is not purely contractual, the terms of the offer itself remain important. As contemplated by O 24A r 1 RSC, an offer of compromise may be made in respect of any claim in proceedings 'on the terms specified in the notice of offer'. An assessment of the terms of the offer as stated, and a consideration of any matters which might reasonably have been included in the offer, but which were not, will reveal the substance of the agreement reached by the parties.
The written offer served by the defendants in the present case was expressly made pursuant to the procedure in O 24A RSC, and proposed that the defendants would pay the plaintiff the sum of $100,000 inclusive of interest, but exclusive of costs. The offer employed language in pars (a) and (b) which indicated that the defendants would 'consent' to an injunction and to orders for delivery up. Neither party raised any issue as to whether the offer was ambiguous or uncertain, either at the time or in the course of this application.
The terms of the written offer reflected a willingness on the part of the defendants to resolve the proceedings on a basis whereby the defendants would agree to a substantial proportion of the relief sought by the plaintiff in the action.
That said, it may be accepted that the defendants' written offer was silent as to certain matters. Most relevantly:
(a)The offer did not expressly state whether the defendants intended to reserve their position on liability, such as by stating that the offer was made on a no admission of liability basis.
(b) The offer served by the defendants did not refer to the making of an order that the action be otherwise dismissed, or any words to that effect.
(c)Insofar as the payment of the monetary sum was concerned, the offer did not delineate in any respect between the claims pleaded by the plaintiff in the ASOC or the heads of damage. The offer was made on the basis that it was proposed to compromise the whole of the proceedings.
(d)The offer did not expressly confirm in par (c) that the defendants would consent to judgment in respect of the payment of the monetary sum, in contrast to the language employed in pars (a) and (b) as referred to above. The defendants place significance on the absence of any words to this effect.
As to the last point, the absence of any reference in the offer to the entry of judgment is of less significance than is contended by the defendants, in my respectful view. I say this because the procedure in O 24A RSC, which the defendants invoked by initiating the offer, expressly provides a mechanism for permitting judgment to be entered where the offer is accepted, through sub-rule (9). The effect of the agreement must be seen in the context of the procedure in the Rules of which both parties must be taken to have been cognisant.
The existence of sub-rule (9) means, in my view, it is not necessary that an offer of compromise expressly address whether the offer is made on the basis that judgment will be entered, although it may well be desirable to do so.

The foregoing analysis can be seen as consistent with the reasoning and approach adopted by Nicholas J in Dawson v ACP Publishing Pty Ltd,[42] a decision which concerned the scope of rule 20.27(3) of the Uniform Civil Procedure Rules 2005 (NSW). That rule is in different terms to O 24A r 3(9) RSC, but the purpose and operation of the provision is relevantly similar. The NSW provision states that:
If an offer is accepted in accordance with this rule, any party to the compromise may apply for judgment to be entered accordingly.
[42] Dawson v ACP Publishing Pty Ltd [2007] NSWSC 542.
The exercise of the discretion in sub-rule (9) should thus be approached on the basis outlined above. When approached in this manner, it can be seen that the relevant considerations weigh heavily in favour of the outcome advocated for by the plaintiff, and provide no support for the defendants' contention that the Court should exercise its discretion to order only that the 'proceedings otherwise be dismissed' (being an order not identified in the offer of compromise).
The terms of the defendants' offer, which involved an agreement by the defendants to permanent injunctive relief and delivery up of the contested material, together with payment of a large monetary amount, represent a substantial proportion of the forms of relief which the plaintiff intended to seek at trial. There are two material points of difference with the pleaded relief. First, I accept that a form of permanent injunction pleaded by the plaintiff, namely to restrain the defendants from developing their own examination preparation course,[43] was not the subject of the defendants' offer. Second, the account of profits claim (in prayer for relief F) was not the subject of the offer. The first point of difference is not overly significant given the defendants' offer nonetheless included a permanent injunction, albeit in different terms. As to the second point of difference, I think that is insubstantial. The account of profits claim was plainly an alternative claim to the damages claim.
[43] See ASOC prayer for relief A.
In general terms, though, the defendants' offer was comprehensive and confronted the plaintiff with something close to a capitulation.
As to the monetary sum offered, the amount of $100,000 in the context of the action was significant and cannot in any way be described as a nominal or even a modest sum. The plaintiff filed a schedule of damages on 24 September 2024 which quantified its claim for damages under s 115(2) of the Copyright Act 1968 (Cth) and for breach of confidence in the sum of $60,000. The amount was based on the time period asserted to have been required to develop the course, and the salary of the person involved. Further, the plaintiff's schedule quantified the additional damages sought under s 115(4) of the Copyright Act 1968 (Cth) in the amount of $200,000.
In the context of the particularised amounts claimed by the plaintiff, as set out in the schedule served on 24 September 2024, the amount offered by the defendants in the offer of compromise served on 30 October 2024, reflects a substantial acceptance of the plaintiff's claim for damages.
These aspects of the offer, having regard to the claims pleaded by the plaintiff, point strongly against orders being made which are confined to stating that the 'proceedings otherwise be dismissed', especially where the offer made no mention of such an order.
The proper conclusion to be drawn from the defendants' offer to pay a significant sum as part of the compromise of the claims in the litigation, when seen in the context of the injunctive and other relief to which agreement was given, is that the sum represents a payment of damages claimed by the plaintiff. It is difficult to reasonably draw any other conclusion. Further, it matters not that the offer did not expressly concede that judgment should be entered or did not expressly confirm that liability was admitted, for the simple reason that there is a mechanism within O 24A RSC to address whether judgment should be entered. Properly analysed, the parties (and in particular, the defendants) must be taken to have understood the Court had power to enter judgment thereafter.
The appropriate order to be made, in my opinion, consistent with the principles of finality and open justice, and to ensure the record of the Court reflects the gravamen of the terms on which this action was compromised, is that judgment be entered in favour of the plaintiff in the sum of $100,000, consistently with the plaintiff's minute of proposed orders. In my view, the plaintiff is entitled to have that judgment recorded.
In the circumstances, it is unnecessary to also order that the proceedings otherwise be dismissed. That said, at the conclusion of a trial on the merits, I accept there will be circumstances in which such an order should be made where not all of the plaintiff's claims have been accepted by the Court. Such an order is not required here.
There is a further reason to refrain from making such an additional order. Given the existence of separate proceedings between these parties which remain on foot, as set out in the Second Haddad Affidavit, the full circumstances of which are not presently known to the Court, I consider a cautious approach should be adopted to ensure the orders made in this case do not inadvertently prejudice those other proceedings.
The form of the judgment should also properly reflect that judgment is to be entered pursuant to sub-rule (9), rather than a trial on the merits.
I will now move to address the costs issues raised by the parties' submissions.

G. Second issue - the costs of the search order application

The second issue concerns the costs of the application for search orders which was heard and determined by Tottle J.

Whether indemnity costs should be awarded

The plaintiff seeks an order that the costs be assessed on an indemnity basis or alternatively that pursuant to s 141(3) of the Legal Profession Uniform Law Application Act 2022 (WA) (Uniform Law), the costs be assessed without regard to the maximum limits set out in the relevant cost determination.
As explained in the defendants' submissions, there is some apparent overlap in the scope of the plaintiff's proposed orders (being order 2.2 and order 4). I will proceed on the basis that the special costs orders sought in relation to item 10 are concerned only with the application for the search orders.
The plaintiff submits the Court has power to grant a special costs order (whether indemnity costs or orders pursuant to s 141(3) of the Uniform Law), notwithstanding the compromise of an action pursuant to the procedure in O 24A RSC, relying on Way v Swan Television and Radio Broadcasters Limited.[44] The defendants do not contest the existence of the power.
[44] Way v Swan Television and Radio Broadcasters Limited (1991) 5 WAR 323 (Anderson J).
The contest between the parties is whether it is appropriate for the Court to award indemnity costs in respect of the search orders application and, if not, whether the plaintiff has demonstrated a proper basis for the maximum limits to be disregarded for the purposes of the costs assessment.
As to whether indemnity costs should be awarded, I have reviewed the parties' respective submissions on this contention. I accept there was evidence of surreptitious conduct, and that Tottle J was persuaded to make the ex parte orders which were sought. This was a step which his Honour can safely be presumed to have taken only after a careful review of the evidence and a consideration of the seriousness of those orders, given they authorised an invasive entry and search of the first defendant's premises. Several other aspects of the case, as explained by the plaintiff in its outline, lend support to the contention that indemnity costs might be awarded here.[45] The difficulty with this submission is that there remain various aspects of the plaintiff's case which are untested. One of the core allegations, that the second defendant directly instructed Mr Atkinson to engage in the allegedly improper conduct has not been the subject of a finding by the Court, and there is at least some basis to consider that the plaintiff's case in this regard has shifted to a degree.[46]
[45] PS [12].
[46] DS [12].
It is well accepted that the Court should be cautious before making an order for indemnity costs on the basis that the conduct of the party in question, which is the basis advanced by the plaintiff.[47] Special and extraordinary circumstances must exist, as both parties accepted, relying on the observations of Einstein J in Woolworths Ltd v Olson.[48] The Court can simply not be satisfied this high bar has been demonstrated in this case, on the materials available.
[47] PS [12].
[48] Woolworths Ltd v Olson [2004] NSWSC 896 [8] - [12].
I therefore decline to order that the plaintiff's costs of the search orders application be assessed on an indemnity basis.

Whether special costs should be awarded (item 10)

The plaintiff seeks, in the alternative, that its costs in this regard be assessed without regard to the limits imposed by the relevant scale items, within the relevant costs determinations. The plaintiff asserts the application in question was unusually difficult, or otherwise satisfies the importance criterion in s 141(3) of the Uniform Law.
The relevant costs determination applicable to these proceedings, until 1 July 2024, was the Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2022 (2022 Costs Determination), which came into operation on 1 July 2022. On and from 1 July 2024, the costs determination was the Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2024 (2024 Costs Determination).
As to the quantum of its costs, the plaintiff incurred legal costs of approximately $117,000 and disbursements of approximately $53,000 in obtaining and then executing the search orders.[49] This amount, although rather generally expressed, exceeds the maximum amount allowable under the applicable costs determination.
[49] PS [14].
The plaintiff submits that obtaining and executing the search orders was unusually difficult because: (a) the orders were sought on an urgent basis; (b) search orders are an uncommon procedure requiring more procedural steps than the usual interlocutory application; and (c) the execution of the orders required the plaintiff to engage two independent solicitors and computer experts to search two sites simultaneously.[50] Further, the plaintiff submits the importance criterion can be demonstrated by reason that the plaintiff had an interest in protecting its intellectual property and, more broadly, there is a public importance in generally deterring copyright infringement and upholding property rights.[51]
[50] PS [14].
[51] PS [15].
The defendants have, in response to the above submissions, undertaken a close review of the proceedings before Tottle J, the documents filed, and the work undertaken in executing the orders, and submit that it is not fairly arguable the taxing officer may properly tax an amount which is greater than the limit which would be imposed by the scale item, nor that the inadequacy arises because of the unusual difficulty or importance.[52]
[52] DS [22] and [23].
The starting point for the analysis is to examine the costs scale in question and the particular item under consideration. The scale which applies to the work carried out by the practitioners engaged by the plaintiff in relation to the application for search orders is in item 10 of Table B of the 2022 Costs Determination, The relevant item of that scale is extracted below:
Table A of the 2022 Costs Determination identifies the maximum allowable hourly and daily rates for practitioners of varying seniority. For example, the hourly rate for a senior practitioner (being a practitioner admitted to practice on his or her own account for 5 years or more) is $506 per hour. For a junior practitioner, the rate is $374 per hour. The daily rate for senior counsel is $6,930 per day and for junior counsel it is $4,730 per day.
The specific principles applicable to the determination of the special costs issue are those expressed by the Court of Appeal in Sino Iron Pty Ltd v Mineralogy [No 2],[53] among other authorities. Although the court was dealing with the predecessor legislation in that case, the current provision is in the same terms as the repealed provision. Accordingly, the principles expressed as applicable to the predecessor provision continue to apply. The principles are set out below, drawing from the previous summary in my reasons in INPEX Operations Australia Pty Ltd v AIG Australia Ltd [No 3].[54]
[53] Sino Iron Pty Ltd v Mineralogy [No 2] [2017] WASCA 76 (S).
[54] INPEX Operations Australia Pty Ltd v AIG Australia Ltd [No 3] [2023] WASC 332 (S) [41].
As explained by the Court of Appeal, the provision operates, in effect, to give the party the opportunity to recover those costs which have been reasonably and properly incurred where, in the court's opinion, the scale is inadequate because of the unusual difficulty, complexity or importance of the matter. These elements are to be addressed as matters of impression, rather than as matters of detailed evaluation, precision or science.[55]
[55] Sino Iron Pty Ltd v Mineralogy [No 2] [11].
In general terms, the provision is protective of the party who benefits from the costs order, and serves the administration of justice, by facilitating, within the limits imposed by the statutory criteria, the operation of the general principle that a successful party is entitled to its costs of the litigation.[56]
[56] Sino Iron Pty Ltd v Mineralogy [No 2] [11].
Of course, an order under s 141(3) of the Uniform Law does not, of itself, mean that the party will recover all of the costs it has incurred, or seeks from the other parties. It is the task of a taxing registrar to consider the reasonableness and necessity for the work undertaken and to make a judgment about the remuneration reasonably required.[57]
[57] Sino Iron Pty Ltd v Mineralogy [No 2] [11].
As to the statutory criteria, the court may make an order under s 141(3) of the Uniform Law if satisfied of two things. First, that the amounts allowed under the relevant scale item are inadequate in the sense that there is a fairly arguable case that the bill of costs may tax out at an amount which is greater than the amount allowable under the scale (because of the limits expressed within the scale). Second, that the inadequacy of the costs allowable arises because of the unusual difficulty, complexity or importance of the matter.
For the purposes of assessing whether to exercise the powers conferred by s 141(3) of the Uniform Law, it will not ordinarily be necessary for the court to determine what amount should be allowed on taxation, but only whether there is a fairly arguable case that a greater amount should be allowed than that which is allowable under the relevant determination.[58] Further, a special costs order will not be warranted simply by reference to the effort of the successful party, which may have been disproportionate in all of the circumstances.
[58] Sino Iron Pty Ltd v Mineralogy [No 2] [11]; and Electricity Generation and Retail Corporation trading as Synergy v Woodside Energy Ltd [2014] WASC 469 (S) [7] (Le Miere J).
As to the second criterion referred to above, the following passage from the Court of Appeal's decision in Sino Iron Pty Ltd v Mineralogy [No 2] is apposite:
[15]The word 'unusual' in s 280(2) of the Act qualifies only the 'difficulty' of the matter, and not its 'complexity' or 'importance'. The word 'unusual' in this context means unusual having regard to what one might describe as the usual run of civil cases determined in the court. That essentially involves the making of a value judgment by the court, having regard to the court's experience of the particular case when compared with the usual run of cases: Wainwright v Barrick Gold of Australia Limited. Also, the reference to 'importance' in this context allows the court to have regard to the significance of the issues that arose in the litigation. Significance can arise either because of the significance of the issues to the parties, or because of the significance of the issues to other prospective parties, or to the public or community generally: Heartlink Ltd v Jones as liquidator of HL Diagnostics Pty Ltd (in liq).
Archer J discussed the meaning of the word 'importance' in this statutory context in BCBC Singapore Pte Ltd v Pt Bayan Resources Tbk [No 5].[59] Her Honour noted that cases in which importance had been demonstrated included cases involving the risk of significant professional damage, test cases, or cases which involved enormous sums of money. This approach must be tailored where special costs orders are sought in relation to a particular interlocutory application. In those circumstances, the relevant assessment is focused on the particular application before the court, and its significance, rather than the entirety of the proceedings.
[59] BCBC Singapore Pte Ltd v Pt Bayan Resources Tbk [No 5] [2023] WASC 116 [75] - [79].
As to the first criterion in s 141(3) of the Uniform Law, it is necessary for the court to form an assessment as to whether it is fairly arguable that a taxing registrar may find that the costs incurred by the plaintiff in doing work that was necessary and reasonable to prepare for and appear at the hearing of the ex parte application may be allowed in an amount greater than those amounts allowed in item 10 of the 2022 Costs Determination
Approaching the issue as a matter of impression, I consider it is fairly arguable that the amount of costs allowable under the 2022 Costs Determination (having regard to the time and other limits in item 10(a)) would be inadequate having regard to the bills of costs I anticipate the plaintiff would prepare if the scale limits were not applied. I refer to the following matters in this regard:
(a)I recognise and accept that an application for ex parte search orders is an unusual application requiring a level of attention from the practitioners not ordinarily expected in other applications, given the nature of the orders sought. The rules, the CPDs, and the professional obligations upon the practitioners, require a high level of detail and preparation for such orders, including the engagement of independent solicitors and experts. These are not garden variety interlocutory applications.
(b)As a matter of practicalities, it can reasonably be inferred by the Court that the plaintiff's solicitors were required to liaise with and brief the independent solicitors and experts prior to the search orders being executed, as well as during and following the execution process.
(c)I note the amount billed to the plaintiff by its solicitors is well above the scale, and on the face of the evidence before me, it cannot be said that the amount is unreasonable in the circumstances.
(d)The application related to search orders at two sites and so an additional degree of coordination would have been required by the practitioners, leading to additional work on their part.
(e)I also accept it was necessary for the plaintiff to act swiftly to obtain the orders in this case, given the information provided to it by Mr Atkinson.
(f)The fact the ex parte hearing before Tottle J was not overly lengthy does not supply an answer to this issue, and does not point against the plaintiff's contention that the quantum of costs will tax above the scale. The bulk of the work that is relevantly required on an application of this nature will be undertaken in preparing the materials for the application and in executing the search orders once obtained.
As to the second criterion, it is necessary to consider whether the inadequacy of the costs allowable in respect of item 10 of Table B of the 2022 Costs Determination arises because of the unusual difficulty or importance of the matter. In my view, the contentions of the plaintiff as to both 'unusual difficulty' and 'importance' should be accepted. The relevant difficulty in this sense arises through a combination of:
(a)the urgent basis on which the application was required to be brought;
(b)the intensive nature of interlocutory applications for search orders relative to standard applications to this Court, as I have observed above; and
(c)the reality that the circumstances of the case required the engagement of two independent solicitors and experts given the existence of two sites, which were required to be searched simultaneously.

The application was also important, in the relevant sense, and this may fairly be said to be the cause of the additional costs, beyond the scale. I am satisfied the plaintiff had valid concerns when bringing the application that a valuable asset of its business, being the intellectual property rights associated with the course it had acquired, or developed, was under threat. The potential diminution of, or intrusion into, those rights, by a party perceived to be a competitor, can reasonably be inferred to have seen by the plaintiff as a matter of great seriousness, and reasonably so in all the circumstances.
I thus consider that the application for search orders, which was initiated on an urgent and ex parte basis, to obtain evidence in support of the fears the plaintiff held, driven by the revelations from Mr Atkinson, was a matter of considerable importance to the plaintiff and its representatives, and justified the additional work which appears to have been required which means it is fairly arguable that the costs to be taxed are above the scale limits.
I would therefore allow the special costs order sought by the plaintiff in relation to the search orders application.

H. Third issue - the costs of the action

Whether indemnity costs should be awarded

The plaintiff contends the defendants should pay its costs of the action on an indemnity basis from 27 December 2023, alternatively from 7 February 2024, because of the defendants' rejection of the Calderbank offers which I have referred to at [20] and [23] of these reasons. The plaintiff contends the rejection was unreasonable.
The plaintiff submits it was unreasonable for the defendants to reject those offers because the plaintiff offered to settle the proceedings on the basis that the defendants pay $5,000 in damages and pay the plaintiff's costs on an indemnity basis up to the time the offer was accepted. The plaintiff stated its costs and disbursements as at 29 November 2023 were approximately $235,724.51 and as at 25 January 2024, approximately $257,240.82, of which approximately $53,000 were for the fees of the independent lawyers and computer experts.
The plaintiff says it had a strong prima facie case such that the defendants ought to have known or anticipated they would not achieve a better result at or before trial.
The defendant's primary response is that the plaintiff cannot be permitted to rely upon the principles in Calderbank v Calderbank to sustain a claim for indemnity costs following the resolution of proceedings, where that resolution has occurred because of the acceptance of a subsequent compromise which is not more favourable than a prior offer of compromise.[60] I agree.
[60] DS [26].
The issue can therefore be resolved, in my view, on the basis contended by the defendants. In this regard, it should be observed that an offer made in accordance with Calderbank v Calderbank is an offer to settle proceedings made on the basis that, if it is not accepted and the offeree does not receive at trial a judgment which is more favourable than the offer, the offer will be relied on by the offeror on the question of costs.[61]
[61] Gething M, Joseph R and Tomasi B, Civil Procedure : Western Australia (vol 1), [24A.11.1].
Given the differences between the offer made in November 2023 and the final compromise reached by the parties, it cannot be said that the latter was more favourable than the former. The amount of the monetary settlement is undoubtedly greater, but the former offer included components not found in the settlement which the parties reached in November 2024. I refer to the matters recorded at pars (b), (c) and (e) at [21] of these reasons, which were contained in the November 2023 offer.
In these circumstances, the plaintiff's contention that indemnity costs should be awarded based on the rejection of the Calderbank offer made by the plaintiff in November 2023 should be rejected. In rejecting that contention, the Court should observe that the approach adopted by the plaintiff in issuing such an offer, relatively early in the proceedings, seeking to in effect explore a resolution of the action, should be commended. But it does not permit costs to be assessed on an indemnity basis, in my respectful view.
I am therefore not prepared to make order 3 as proposed by the plaintiff in its minute of proposed orders. I will now turn to the alternative claim for costs which is pressed by the plaintiff.

Whether special costs should be awarded

The plaintiff seeks orders pursuant to s 141(3) of the Uniform Law as set out in order 4 of the plaintiff's minute of proposed orders. These special costs order relate to the whole of the proceedings, alternatively to certain items, and to the hourly rate for counsel, Mr Martin Bennett.
The order sought by the plaintiff is as follows:
4.Pursuant to s 141(3) of the Legal Profession Uniform Law Application Act 2022 (WA):
4.1 the plaintiff's costs of the proceedings up to 1 November 2024 be assessed without regard to the maximum limits set out in Table B of the Determinations, alternatively without regard to any of the limits imposed by items 1 (writ), 7 (discovery), 10 (chambers), 19 (preparation of case); and
4.2 the hourly rate for counsel provided for in item 10 (Chambers) and item 27 (mediation) of Table B of the Determinations be increased in the case of Martin Lawrence Bennett to $781 (GST incl).

I have reviewed the parties' respective submissions on these matters, which comprehensively address the detail of the proceedings and the issues relevant to the assessment as to whether special costs ought be awarded.[62] I need not set those submissions out in any detail.
[62] PS [13] - [22], DS [13] - [25], and PS Reply [17] - [23].
It is sufficient for me to observe that this is not a case in which I consider special costs orders should be made in respect of the entirety of the action, which seems to me to be the import of the first part of order 4.1 proposed by the plaintiff. There are cases in this Court where such an approach has been warranted,[63] but this case is sufficiently confined in scale and complexity that the proper approach is to examine particular items of the relevant costs scale and the relevant work streams to assess them against the criteria established by s 141(3) of the Uniform Law. In this regard, the plaintiff has identified the following particular items:
(a)item 1 - writ;
(b)item 7 - discovery;
(c)item 10 - chambers (which I have already addressed above in these reasons);
(d)item 19 - preparation of case; and
(e)the hourly rate of Mr Bennett for the purposes of items 10 (chambers) and 27 (mediation).
[63] For example, Electricity Generation Corporation v Woodside Energy Ltd [2011] WASC 268 (S), [13] (Le Miere J).
The principles applicable to the making of special costs orders pursuant to s 141(3) of the Uniform Law have been addressed above in these reasons. They need not be repeated here. As to the evidence in support of the orders, I have the benefit of the matters deposed to in Ms Haddad's first affidavit,[64] and of course I can have regard to the course of the proceedings themselves, the nature of the claims made, and the various documents which can be found on the Court's record.

Item 1 - Writ

[64] First Haddad Affidavit [12].

I understand the plaintiff seeks an order that the limits across item 1 be removed, which extends to work undertaken in relation to the writ and the statement of claim. The amount allowed under the 2022 Costs Determination for the writ is $759 and for the statement of claim is $6,072. I have reviewed the writ of summons dated 21 August 2023, which is naturally concise, and the statement of claim dated 29 September 2023.
The evidence presented by the plaintiff does not expressly address the work undertaken on the writ and the statement of claim. The material is presented in a rather broad brush manner. Nonetheless, I can draw impressions from the material and the pleadings based on experience, and given the nature of the claims advanced in the matter, and from the affidavit evidence which was presented in the ex parte application before Tottle J, which would have been employed by the practitioners in drafting the pleading.
Having regard to these matters, I am satisfied it is fairly arguable that the bill of costs to be presented in respect of this item would exceed the scale limits in the relevant costs determinations. Largely for the reasons identified in relation to item 10 above,[65] as to the criteria of 'unusual difficulty' and 'importance', I am also satisfied the scale would be exceeded by reason of these matters.

Item 7 - Discovery

[65] See above paras [85]-[112] and in particular paras [109]-[111].

The 2022 Costs Determination provides that, for the giving of discovery, an amount may be allowed that is reasonable in the circumstances, as is noted by the defendants in their submissions.[66] I do not therefore apprehend there is any limit which requires removal. Accordingly, no order is required.

Item 19 - Preparation of case

[66] DS [21].

Item 19 of the 2022 Costs Determination covers work required for the preparation of a case for trial, which 'includes work reasonably and necessarily undertaken prior to commencement of proceedings'. The limit in the scale is $65,780, being 130 hours of work by a senior practitioner. Under item 19 of Table B of the 2024 Costs Determination, the limit was increased to $74,360, also representing 130 hours of work by a senior practitioner, with the senior practitioner rate increased to $572 from $506.
Again, the evidence presented by the plaintiff is rather broad brush as to the quantum and the particular work streams involved. The table which is presented in Ms Haddad's affidavit identifies numerous work streams across the course of the litigation (some of which are covered by the items addressed above). I have extracted in Attachment B to these reasons the table of actual costs billed to the plaintiff which appears in the First Haddad Affidavit.[67]
[67] First Haddad Affidavit [12].
It would have been preferable for Ms Haddad to present the fees which were billed to the client in a more granular fashion. Nonetheless, the available material, including the material on the Court's record, discloses a significant volume of work on the part of the plaintiff's solicitors, which would reasonably have been required to properly prepare the plaintiff's case for a contested trial in December 2024. That is not to accept that the amount billed on a solicitor/client basis, in the region of $390,000, should ultimately be reflected in the party/party assessed amount. That is not the question for present purposes. The question for the Court is whether it is fairly arguable the bill will tax above the scale limit. I consider it is open to conclude it will.
Further, consistent with my earlier observations as to the unusual difficulty of this matter and the importance of the relief to the plaintiff, I accept the second criterion is made out by the plaintiff in respect of the claim to disregard the maximum limits within item 19.

Counsel's hourly rate

The final point to address is the plaintiff's contention that the hourly rate for counsel (namely, Mr Bennett) should be increased, insofar as item 10 is concerned (which is confined in effect to the application for search orders) and item 27 (which is confined to the mediation which was held in the matter). The plaintiff seeks an order that the hourly rate be increased to $781 (inclusive of GST), which is the rate allowed for senior counsel in the 2022 Costs Determination.
The rate hourly rate charged by Mr Bennett is $1,250 per hour, exclusive of GST.[68] The plaintiff notes this rate exceeds the rate for a senior practitioner under the 2022 Costs Determination, which was $506 per hour. The 2024 Costs Determination is not relevant to this aspect of the dispute.
[68] First Haddad Affidavit [10].
The plaintiff observes that the defendants briefed an experienced counsel on their side of the dispute, who is now senior counsel, namely Mr Konrad De Kerloy SC. The case was thus one in which the parties all considered the engagement of experienced counsel was required.
The defendants' raise a criticism that the plaintiff also briefed senior counsel from the bar for the purposes of the matter, in respect of whom no uplift is sought, which tends to suggest that his rate is much lower than that of Mr Bennett. The defendants assert that this particular senior counsel could presumably have acted in the ex parte application as he also settled the statement of claim filed in late September 2023. The plaintiff submits, albeit without evidence, that this senior counsel was not briefed at the time of the initial application, which neutralises much of the defendants' criticism. In the end, it seems to me the important point is that the plaintiff seeks an order to permit the assessment of costs in relation to Mr Bennett's counsel work to be undertaken as though Mr Bennett was senior counsel and the senior counsel rate applied. Once it is accepted that this was a case in which it was appropriate for senior counsel to be engaged to undertake the lead counsel work in the action, including the ex parte application and the mediation, it follows that there are good grounds for the order sought by the plaintiff to be made.
The plaintiff buttresses its position on this issue by also pointing to other instances in which this Court has permitted the maximum rate to be modified for Mr Bennett, referring to McIntosh v Peterson[69] (in which the maximum amount was increased) and Sandy v Yindjibarndi Aboriginal Corporation RNTBC (No 3)[70] (in which the maximum limits were removed).
[69] McIntosh v Peterson [2024] WASC 446 [105] (Quinlan CJ).
[70] Sandy v Yindjibarndi Aboriginal Corporation RNTBC (No 3) [2020] WASC 88 [24] (Le Miere J).
I have reviewed both decisions.
Substantially for the reasons set out by Quinlan CJ in McIntosh v Peterson, I consider there is a proper basis in the present action to increase the maximum limit in respect of Mr Bennett (but not remove the limits), with the limit to be increased to the amount sought by the plaintiff, being $781 inclusive of GST. This increase to the maximum limit should apply in relation to the work undertaken by Mr Bennett in relation to the search orders application and also to the mediation itself.

Conclusion and orders

For the foregoing reasons, I consider the orders set out in Attachment A to these reasons should be made, noting that the parties have agreed the formulation of orders 2 to 5 of those orders.

ATTACHMENT A
Judgment and orders proposed by the Court

Judgment

Pursuant to O 24A r 3(9) of the Rules of the Supreme Court 1971 (WA), judgment is entered for the plaintiff in the amount of $100,000.

Permanent injunction and delivery up

The first defendant by its officers, servants, agents, related bodies corporate, related parties or otherwise howsoever be and is hereby perpetually restrained from using, for any purpose whatsoever, all screenshots the subject of these proceedings (Screenshots), or any copies or derivatives of the Screenshots.
The second defendant by himself, his servants, his agents or otherwise howsoever be and is hereby perpetually restrained from using for any purpose the Screenshots, or any copies or derivatives of the Screenshots.
By 16 January 2025, the solicitors for the first and second defendants are to collect, and the Court is to release, the 4 sealed evidence bags numbered 275232, 274823, 274822 and 274819, containing (collectively) a HP laptop computer and 3 Western Digital hard disk drives. The evidence bags are described in the affidavit of Mr Peter van der Zanden, at paragraph 32(a), and were delivered to the Court on or about 1 September 2023, pursuant to orders 2 and 20(f) of the orders made on 23 August 2023, as amended by the orders made on 28 August 2023.
By 24 January 2025, the first and second defendants file and serve an affidavit verifying that they have either delivered up to the solicitors for the plaintiff, or confidentially destroyed, the Screenshots and all copies or derivatives of the Screenshots in the defendants' possession, custody or control.

Costs of the action

The plaintiff's costs of the action are to be paid by the defendants on a party/party basis, to be assessed in accordance with order 7 below, if not agreed.
Pursuant to s 141(3) of the Legal Profession Uniform Law Application Act 2022 (WA):
7.1the plaintiff's costs of the proceedings up to 1 November 2024 be assessed without regard to any of the limits imposed by item 1 (writ), item 10 (chambers), and item 19 (preparation of case) as set out in Table B of the Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2022 and the Legal Profession (Supreme and District Courts) (Contentious Business) Determination 2024 (the Determinations); and
7.2the hourly rate for counsel provided for in item 10 (Chambers) and item 27 (mediation) of Table B of the Determinations be increased in the case of Martin Lawrence Bennett to $781 (GST inclusive).

ATTACHMENT B
Actual costs billed by the plaintiff

I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.
LM
Associate to the Honourable Justice Lundberg
16 JANUARY 2025