TS & B Retail Systems Pty Ltd v 3fold Resources Pty Ltd - [2003] FCA 371

FEDERAL COURT OF AUSTRALIA
TS & B Retail Systems Pty Ltd v 3fold Resources Pty Ltd [2003] FCA 371
CONFIDENTIAL INFORMATION – whether property – assignment – protection of confidentiality by assignee
COPYRIGHT – ownership – whether works authored by employee or contractor – implied licence
INJUNCTION – interlocutory – principles to be applied
Copyright Act 1968 (Cth) s35(6)
American Cyanamid Co. v Ethicon Ltd. [1975] AC 396 applied
Askew v Seventh Granite Pty Ltd (unreported, Federal Court of Australia, 17 August 1995) cited
Boardman v Phipps [1967] 2 AC 46 applied
Castlemaine Tooheys Limited v The State of South Australia (1986) 161 CLR 148 applied
Columbia Pictures Industries Inc. v Robinson [1987] Ch 38 referred to
Cortis Exhaust Systems Pty Ltd v Kitten Software Pty Ltd [2001] FCA 1189 cited
Cretanor Maritime Co Ltd v Irish Marine Management Ltd [1978] 1 WLR 966 cited
Federal Commissioner of Taxation v United Aircraft Corporation (1943) 68 CLR 525 applied
Hubbard v Vosper [1972] 2 QB 84 applied
Humberstone v Northern Timber Mills (1949) 79 CLR 389 cited
Konrad v Victoria (1999) 91 FCR 127 referred to
Lindsay Petroleum Company v Prosper Armstrong Hurd, Abraham Farewell and John Kemp (1874) 5 LR PC 221 referred to
Millwell Holdings Ltd v Johnson (1988) 12 IPR 378 cited
Minister for Immigration and Multicultural Affairs, Re Ex parte Fejzullahu (2000) 74 ALJR 830 applied
Moorgate Tobacco Co. Limited v Philip Morris Limited [No. 2] (1984) 156 CLR 414 applied
Murphy v Lush (1986) 60 ALJR 523 applied
O’Mustad & Son v Dosen [1964] 1 WLR 109 referred to
Short v J. and W. Henderson, Limited (1946) 62 TLR 427 considered
Stevens v Brodribb Sawmilling Company Proprietary Limited (1986) 160 CLR 16 cited
Zuijs v Wirth Brothers Proprietary Limited (1955) 93 CLR 561 cited
Meagher, Gummow and Lehane’s Equity Doctrines and Remedies 4^th ed (2002)
TS & B RETAIL SYSTEMS PTY LTD v 3FOLD RESOURCES PTY LTD, PETER VANDERZAAG, FRANCIS D’MELLO and GARY WILLIAM SMITH
V 147 of 2003
FINKELSTEIN J
10 APRIL 2003
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 147 of 2003

BETWEEN:

TS & B RETAIL SYSTEMS PTY LTD
Applicant

AND:

3FOLD RESOURCES PTY LTD,
PETER VANDERZAAG,
FRANCIS D'MELLO and
GARY WILLIAM SMITH
Respondents

JUDGE:

FINKELSTEIN J

DATE OF ORDER:

11 APRIL 2003

WHERE MADE:

MELBOURNE

1. Interpretation of this Order
In this Order:
(a)'Confidential Information' means the information listed in Schedule A.
(b)'Copyright Materials' means:
(i)each of the drawings listed in Exhibit BBT-17.1 (Confidential) and BBT-17.2 (Confidential) to the Affidavit of Barry Barton Trollope sworn on 7 April 2003 and filed in this proceeding;
(ii)each of the component part numbers identified in Exhibits BBT-18.1 (Confidential), 18.2 (Confidential), 18.3 (Confidential), 18.4 (Confidential) and 18.5 (Confidential) to the Affidavit of Barry Barton Trollope sworn on 7 April 2003 and filed in this proceeding;
(iii)each of the component part numbers and corresponding component descriptions identified in Exhibits BBT-18.1 (Confidential), 18.2 (Confidential), 18.3 (Confidential), 18.4 (Confidential) and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2003] FCA 371
Decision Date: 11 APRIL 2003

CaseChat Overview and Summary

TS & B Retail Systems Pty Ltd, a company established by former executives of Trollope Silverwood and Beck Pty Ltd (TS & B), commenced proceedings against 3fold Resources Pty Ltd, its former employees, and others, seeking an interlocutory injunction to prevent the misuse of copyright and confidential information which it claimed to have acquired. The respondents denied taking any of the information and claimed that any copyright subsisting in the drawings belonged to independent consultants and not to TS & B. They also claimed that none of the information was confidential because it had been freely available to former employees, customers, and manufacturers. The court considered the applicant's claims in copyright and confidential information and whether an interlocutory injunction should be granted. The court found that the applicant's claim in copyright had a degree of substance and that the respondents had infringed copyright by procuring the making of copies of drawings. The court also found that the applicant's claim for the protection of confidential information was not trivial, and that the respondents should be required to deliver up copies of all data stored on their computers. The court made orders restraining the respondents from reproducing or authorising the reproduction of copyright material, disclosing confidential information, altering or parting with any of the copyright or confidential information they had in their possession, and delivering up copies of all data stored on their computers. The court also ordered that costs follow the event of the litigation.

Orders