Technopak Limited v Monzeal Limited
[2021] NZHC 2181
•24 August 2021
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE
CIV 2018-404-2346
[2021] NZHC 2181
UNDER The Copyright Act 1994 BETWEEN
TECHNOPAK LIMITED
Plaintiff
AND
MONZEAL LIMITED
First Defendant
JAMES PETER GARRICK
Second DefendantSCOTT EDWARD LEANING
Third Defendant
Hearing: 16 August 2021 Appearances:
G C Williams for the Plaintiff E St John for the Defendants
Judgment:
24 August 2021
JUDGMENT OF CAMPBELL J
This judgment was delivered by me on 24 August 2021 at 9:00 am pursuant to Rule 11.5 of the High Court Rules
Registrar/Deputy Registrar
TECHNOPAK LIMITED v MONZEAL LIMITED [2021] NZHC 2181 [24 August 2021]
Introduction
[1] The plaintiff, Technopak Ltd, is a manufacturer and distributor of bag filling equipment. Its business activities include the provision of automated machinery for handling and packing powdered products in the dairy processing, infant formula, nutrition and pharmaceutical industries. The first defendant, Monzeal Ltd, is a manufacturer and distributor of hygienic bag filling systems. It specialises in packaging dusty powders and granulated substances. The second and third defendants, Messrs Garrick and Leaning, are the directors of Monzeal. They were formerly employed by Technopak. Mr Garrick was a design engineer from March 2004 to January 2012; Mr Leaning was employed as a project manager from March 2009 to April 2012.
[2] During this time, Technopak says it developed unique automated bag filler systems known as the “200+ and Compak Systems”. It says that, as a consequence of its development of those systems, it is the owner of copyright in various original copyright works.
[3] Technopak alleges the defendants have infringed its copyright in those copyright works. Technopak claims Monzeal infringed Technopak’s copyright by manufacturing automated bag filling machines and producing CAD models and/or drawings that reproduce or incorporate substantial parts of the copyright works. Technopak claims Messrs Garrick and Leaning authorised, procured or induced Monzeal’s infringement. These claims are denied by Monzeal and Messrs Garrick and Leaning.
Current applications
[4] The defendants have applied for further and better discovery from Technopak and for an order requiring Technopak to file an amended statement of claim providing further particulars. Technopak has applied for further and better discovery from the defendants. Each application is opposed in part.
[5] To provide context to these applications it is necessary to outline aspects of Technopak’s statement of claim.
Technopak’s statement of claim
[6] Technopak’s current pleading is in a fourth amended statement of claim, dated 21 June 2021. In paragraph 9, Technopak claims it is the owner of the following “original copyright works”:
(a)Physical three-dimensional models and prototypes of the 200+ and Compak Systems;
(b)CAD models of the 200+ and Compak Systems and their subsequent iterations; and
(c)Drawings of the 200+ and Compak Systems, their subsequent iterations, and of the components of the 200+ and Compak Systems and their subsequent iterations.
[7] Paragraph 9 says these copyright works are “as particularized in Schedule 1”. Schedule 1 lists the copyright works as items 1-9, which appear under three headings:
(a)“Physical 3-dimensional models/prototypes”. Items 1 and 2 appear under this heading. They describe two versions of the Compak System that have been installed at identified locations.
(b)“CAD models”. Items 3 and 4 follow this heading. Each item is a CAD model that corresponds to one of the installed Compak Systems described in Items 1 and 2. Each CAD model is identified by a discovery number.
(c)“Drawings”. Items 5 to 9 appear here.
(i)Item 5 refers to drawings contained in two “Drawing Packs”, “including but not limited to” 44 drawings that are then listed (with drawing numbers and names). Copies of the 44 drawings are attached to the Schedule. Each Drawing Pack is identified by a discovery number, but the individual drawings are not.
(ii)Items 6 to 9 are various drawings. The drawings are not identified by discovery number, but copies of each drawing are attached to the Schedule.
The defendants’ application
[8]The defendants’ application seeks orders that Technopak:
(a)File and serve a verified list of documents that properly lists all the documents represented by Items 1 to 9 of Schedule 1 of its fourth amended statement of claim and any further documents upon which it relies.
(b)File and serve a verified list of documents that shows the author, date and otherwise properly describes all documents discovered by Technopak where this information has not previously been discovered (including by describing them by their drawing and/or part number and original document names).
(c)File and serve an amended statement of claim that particularises its allegations, and specifically that Technopak identify in its pleading each of its discovered documents that represent the “copyright works” and in respect of each such document identifies the date it was created and the author.
[9]Technopak opposes the application in part:
(a)It consents to listing the documents represented by Items 6 to 9. It otherwise opposes the order at [8](a).
(b)It consents to the order at [8](b), conditionally on the same order being made against the defendants.
(c)It opposes the order at [8](c).
[10] I can deal briefly with the order at [8](b). Technopak has sought the same order in its application against the defendants. As I explain below, I will make that order against the defendants. This means that I will also make the order at [8](b).
[11]I now turn to the orders that remain in issue.
Order [8](a): listing of the documents represented by Items 1 to 5
Items 1 and 2
[12] Technopak objects to listing Items 1 and 2 on the ground they are not documents but physical machines. The defendants accept they are machines but say Technopak must disclose the documents and drawings that describe each component of the machines. This is reflected in its application, which seeks listing of the documents “represented by” the items in Schedule 1.
[13] Technopak’s rejoinder is that the CAD models in Items 3 and 4 comprise the documents and drawings that describe the components of the two machines in Items 1 and 2. To the extent it lists the documents and drawings in those CAD models, it says it will therefore be addressing the defendants’ request in respect of Items 1 and 2.
[14] The documents and drawings that describe each component of the two machines in Items 1 and 2 are relevant and should be discovered. I will make an order accordingly. If Technopak’s rejoinder is accurate (and it is not possible for me to determine that on the evidence before me) that order will not require it to do anything more than what I am going to order in respect of Items 3 and 4 (addressed next).
Items 3 and 4
[15] Items 3 and 4 are two CAD models. Each model consists of many computer files (to use a neutral term) – almost 4,000 across the two models.
[16] Technopak has listed each CAD model as a document in its list of documents. The defendants say Technopak should list each of the nearly 4,000 computer files that comprise the two models. Technopak resists that. It says that each model has a unitary
existence, as the computer files within each model combine to form the model. Technopak says it is therefore sufficient to list each model as a document.
[17] I was provided with limited evidence as to the nature of the individual computer files within each CAD model. But my understanding is that when using a model each of the computer files can be opened and viewed independently of other files within the model. Once opened the file appears as a drawing. In my view it is accurate in these circumstances to characterise each file as an individual document. That the files combine to form a CAD model does not detract from each of those files being individual documents.
[18] The discovery regime in the High Court Rules requires each document to be individually listed. This is to enable the party requiring discovery to call for the production of any document individually.1 There are limited exceptions to that requirement. Rule 8.16(2) of the High Court Rules 2016 allows “documents of the same nature” falling within certain classes (such as privileged documents) to be described as a group. That exception does not apply here. This means Technopak must list each computer file.
[19] Accordingly, I will make an order requiring Technopak to list each of the computer files within the two CAD models.
Item 5
[20] Item 5 consists of 44 drawings. The drawings are contained in two Drawing Packs. Technopak has listed each of those Drawing Packs as a document. The defendants say that each individual drawing should be listed.
[21] This raises the same issue as for Items 3 and 4. Technopak is required to list each individual drawing.
1 Hunyady v Attorney-General [1968] NZLR 1172 (CA) at 1173.
Order [8](c): file and serve an amended claim with further particulars
[22] Mr St John, for the defendants, pursued only two points in relation to the request for a more particularised statement of claim.
[23] The first was an objection to the words “including but not limited to” in relation to the drawings identified in Item 5. He said this meant Technopak could take the defendants by surprise at the trial by relying on other drawings. Mr Williams, for Technopak, accepted these words should be removed. He said that would happen in an amended pleading. That will be reflected in my orders below.
[24] Mr St John’s second point was that the defendants were entitled to detailed particulars of the claim made by Technopak. In a copyright claim this required the plaintiff to carefully set out the details of the works in which it alleges it holds copyright. If a statement of claim relies on a schedule of drawings, the relevant drawings should be identified in the body of the pleadings, and the plaintiff must identify each particular drawing the copyright of which it alleges has been infringed. Mr St John acknowledged it was not a rule that a plaintiff identify the copyright works by reference to its discovered documents but said that was a practical and efficient way for Technopak to identify its alleged copyright works in this case.
[25] Mr Williams accepted that a plaintiff had to adequately particularise the alleged copyright works. He said Technopak had done so. There was no requirement (nor any practice) to particularise copyright works by using discovery numbers.
[26] I accept Mr Williams’ submission. Paragraph 9 of the statement of claim pleads that the alleged copyright works are “as particularized in Schedule 1”. Schedule 1 identifies the alleged copyright works with sufficient particularity. There is no obligation to identify the copyright works by discovery number.
Technopak’s application
[27] Technopak’s application seeks two orders. The first is that the defendants file and serve an affidavit listing documents in the following classes that are in their control
(or if they were but are no longer in their control, when they parted with them and what has become of them):
(a)A large number of CAD drawings listed in a schedule to the application. These drawings were either missing or deleted from CAD models disclosed by the defendants to Technopak in April 2021.
(b)CAD models used by the defendants to produce renderings or illustrations that appeared on the defendants’ website in 2012.
[28] The second order sought by Technopak is that the defendants file and serve a verified list of documents that shows the author and date and otherwise properly describes all documents discovered by them where this information has not previously been provided (including by describing them by their drawing and/or part number and original document names).
[29] In their notice of opposition, the defendants did not oppose the order at [27](a) (which I will make by consent), but opposed the orders at [27](b) and [28].
[30] Mr St John did not press the opposition to the order at [28]. The order simply reflects the listing requirements in the High Court Rules. The defendants sought the same order against Technopak. I will make the order.
[31] That leaves the order at [27](b). The defendants accept they have had in their control documents that were used by them to produce renderings or illustrations that appeared on their website in 2012. But Mr Leaning has deposed that the relevant documents have been edited many times since and no longer exist in the form shown in the renderings. He therefore deposes it is not possible to discover these documents.
[32] Technopak is sceptical about Mr Leaning’s explanation. It filed an affidavit from an expert design engineer that cast doubt on his evidence. Mr Williams accepted that I was not in a position to determine whether Mr Leaning’s account was accurate and therefore whether the defendants still had the documents in their control. But he
submitted that even if the documents were no longer in the defendants’ control, the defendants’ discovery obligation required them to:
(a)Disclose when the documents were created and by whom.
(b)Disclose when the documents were edited and what has become of the documents.
(c)Confirm they have searched diligently for the documents, including by searching for any back-ups that were automatically created by the CAD software.
[33] Mr St John accepted that the listing and exchange protocol would require the defendants to explain how they have gone about conducting their search for the documents, including any search for back-ups of the documents.
[34] I do not need to determine whether the documents remain in the defendants’ control. But there is no dispute that the documents were at some point in the defendants’ control. If it is the case that the documents are no longer in their control, r 8.16(1)(d) requires them to state when the documents ceased to be in their control, and the person who now has control of the documents. In those circumstances it is appropriate that I make an order in the terms sought by Technopak. Those terms allow for the possibility that some documents are no longer in the defendants’ control.
Costs
[35] Technopak’s application asked that costs be reserved. The defendants’ application was silent on costs. Neither counsel raised costs at the hearing.
[36]In those circumstances I reserve costs.
Result
[37]I order that Technopak:
(a)File and serve, by 30 September 2021, a verified list of documents that properly lists all the documents represented by Items 1 to 9 of Schedule 1 of its fourth amended statement of claim.
(b)File and serve, by 30 September 2021, a verified list of documents that shows the author and date and otherwise properly describes all documents discovered by Technopak where this information has not previously been discovered (including by describing them by their drawing and/or part number and original document names).
(c)When filing and serving its next amended statement of claim, remove the words “including but not limited to” in relation to the drawings identified in Item 5 of its schedule.
[38] I order that the defendants, by 30 September 2021, file and serve an affidavit listing documents in the following classes that are in their control (or if they were but are no longer in their control, when they parted with them and what has become of them):
(a)The documents listed in Schedule 1 to Technopak’s application dated 21 June 2021 (being CAD drawings that are either missing or deleted from CAD models disclosed by the defendants to Technopak in April 2021).
(b)CAD models used by the defendants to produce the renderings or illustrations that appeared on the defendants’ website in 2012.
[39] I order that the defendants file and serve, by 30 September 2021, a verified list of documents that shows the author and date and otherwise properly describes all documents discovered by them where this information has not previously been provided (including by describing them by their drawing and/or part number and original document names).
[40] Counsel requested that I reserve leave to the parties to make further applications in relation to these orders. I do so.
Further case management
[41] This proceeding had a trial scheduled for September 2021. That trial has recently been vacated. Another trial has yet to be scheduled. Counsel requested that I schedule a further case management conference.
[42]I direct:
(a)The Registrar to allocate a further case management conference on the first available date after 7 October 2021 for the purpose of scheduling a trial and making pre-trial directions.
(b)The parties to file a joint memorandum for that conference seven working days in advance of the conference or (if the parties cannot agree a joint memorandum):
(i)The plaintiff to file and serve a memorandum five working days in advance of the conference.
(ii)The defendants to file and serve a memorandum three working days in advance of the conference.
Campbell J
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