JUDGMENT No. 4.12.3 57 9 94 Sopasenccenesscen: eneenerenone ne CATCHWORDS PRACTICE AND PROCEDURE - Affidavits filed pursuant to Court order - application to make use of information in affidavits against third parties - release from undertaking to Court Copyright Act 1968 (Cth) s 116 Springfield Nominees Pty Limited v Bridgelands Securities Limited (1992) 38 FCR 217 Sony Corporation and Another v Anand and Others (1981) Fleet Street Reports page 398 AUTODESK AUSTRALIA PTY LTD v MARTIN PATRICK DYASON & OTHERS No VG 68 of 1989 NORTHROP J MELBOURNE 12 DECEMBER 1994 RECEIVED 29DEC 1994 PEDERAL COURT OF AUSTRALIA PRINCIPAL REGISTRY IN -THE- FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY No VG 68 of 1989 GENERAL DIVISTON BETWEEN: AUTODESK AUSTRALIA PTY LTD Applicant MARTIN PATRICK DYASON_ & OTHERS Respondents NORTHROP J MELBOURNE 12 DECEMBER 1994 REASONS FOR JUDGMENT This is a return of a motion on notice dated 8 November 1994 brought by the applicants in this matter against the respondents seeking the following orders: "dT, The Applicants have leave to use the information contained in the affidavit of the Respondents, sworn lst July 1994, for the purpose of: (a) contacting the persons named in the said affidavit to request delivery up to the Applicants' solicitors, Stephens Solicitors of 236 Coventry Street, South Melbourne, of any Autokeys in the possession of such person for destruction or disposal by the Applicants; (b) bringing proceedings against such persons, if the Applicants so determine. Julian Stephens and Katarina Klaric, principals of the firm, Stephens Solicitors, be released from the undertakings given to the Court on the 6th June i994." The history of this matter is set out in the affidavit of - --+ 2 Julian Ronald Stephens sworn 1 December 1994 and the exhibits thereto, and the affidavit of Peter Vincent Kelly sworn 12 December 1994, that is today, and filed today, together with the exhibits thereto. On the hearing of the motion, Mr Kelly appeared in person. Mr and Mrs Dyason did not appear, although the Court was informed that they had been served with the notice of motion. Although there is no affidavit of service presently on file, counsel for the applicants has indicated that affidavits will be filed showing service of the notice on those persons. I do not propose to deal in any detail with the history of the matter, but for present purposes it is sufficient to say that following the judgment of the Full Court of the Federal Court of Australia allowing the appeal from the trial judge, the present applicants sought an order restraining the respondents from disposing of any of the autokeys pending the hearing and determination of their proposed application for special leave to appeal, and, if granted, the hearing of that appeal. The Court refused to grant that order, but did require the respondents to keep a record of any sales that took place pending the hearing and determination of the appeal in the High Court. Eventually, the appeal was heard and determined by the High Court and the matter came back before the Court on the motion of the applicants seeking orders for costs, and also directions for the preliminary steps to establish their claim against the respondents as far as damages or other relief was concerned. On 25 October 1993 the Court as presently constituted made the following order: - ek 3 "2. The respondents file and serve an Affidavit or Affidavits within twenty-eight days setting out a full and accurate account of the sale of every Autokey sold by them or by any of them including: (a) The date of each sale; (b) The name and address of the purchaser; and (c) The price paid for each Autokey sold." The respondents by motion sought leave to appeal from that order. On 6 June 1994 the Full Court refused leave to appeal and made certain other orders upon undertakings being given, I read out the relevant parts of that order: "1. Upon the undertaking given to the Court on behalf of Julian Stephens and Katarina Klaric, the principals of the firm, Stephens Solicitors, not to reveal to the Applicants Autodesk Inc or Autodesk Australia Pty Ltd or any other person, the names or addresses of the persons set out in the affidavit to be filed herein by the Respondents without further order of the Court or agreement in writing of the Respondents; 2. The said undertaking does not prohibit the said solicitors from utilising the material to be set out in the said Affidavit including, if necessary, contacting the said persons therein, for the sole purposes of this proceeding. THE COURT ORDERS THAT: 3. The Application for leave to appeal is dismissed." The basis of the notice by the applicants is very simple. They claim they are entitled to copyright existing in the autokey devices. At the time that the undertaking was given, it was in relation to an affidavit disclosing the names of persons to whom the respondents had sold the autokey devices. It is argued that in the circumstances the applicants are eee 4 entitled to pursue their copyright rights including the powers conferred by Section 116 of the Copyright Act, against any person who has infringed thear copyright, and that although it might be said that initially the affidavits were designed to enable them to recover damages against Mr Kelly and Mr and Mrs Dyason, this is a case where they should be able to make claims against third parties without the Court at this stage determining the nature or extent of those claims. There is a well-known principle of law that where documents or things are produced pursuant to Court process, there is, at the very least, an implied obligation that those documents or things shall not be made use of in any other proceedings apart from those in which they were produced. I do not need to refer to the authorities which make that position clear. It is sufficient to refer to the case of Springfield Nominees Pty Limited v Bridgelands Securities Limited (1992) 38 FCR 217, where the matter is discussed by Wilcox J. At page 225 His Honcur sets out what are described as special circumstances which would enable the Court to justify the making of an order giving leave to a party to be relieved from the restrictions of making use of documents produced to the Court pursuant to court processes. Of possibly greater importance to the present case is the decision of the High Court of Justice in England in Sony Corporation and Another v Anand and Others (1981) Fleet Street Reports page 398, where the Judge, then Browne-Wilkinson LJ, in dealing with the problem of documents obtained pursuant to an Anton Piller order, indicated that one of the purposes of - on 5 obtaining those goods or documents was to enable the plaintiff to get information from the defendants for the very purpose of using such information not only against those defendants, but against third parties. I refer to what his Lordship says at pages 401 and 402: "The difficulty which has arisen is this - there is a general rule that where a party to litigation has been ordered to give discovery, the other party may not use the information so obtained for an improper purpose, which 1s normally defined as being for any purpose other than the further pursuing of the action in which discovery is given. If that rule applies in the present case, discovery will have been given by the defendants in these actions and the plaintiffs will be precluded from using such information otherwise than for the purpose of pursuing these actions against these defendants. That was neither the purpose of applying for the Anton Piller order nor the reason for which it was made. As I have said, the purpose was to obtain information as to suppliers who could then be pursued by the plaintiffs whose rights were being infringed." "It is therefore, in my judgment, established that one of the main purposes of the Anton Piller order is to enable the plaintiff to get information from the defendants for the very purpose of using such information not against those defendants but against third parties. It therefore seems to me that information obtained under an Anton Piller order (on the basis that the defendants being implicated in a tortious wrongdoing are bound to give information as to other persons involved in that wrongdoing) can be used for the purposes of pursuing claims against third parties implicated in the same wrongful handling of the same infringing goods." It is interesting to note - and I am speaking from recollection only now - that in the present case Anton Piller orders initially were made in this action on behalf of the applicants against Mr and Mrs Dyason. Part of the order then made was to require Mr and Mrs Dyason to notify the Court of the name of the person from whom they obtained the autokey devices. This is a very interesting 1llustration of the - -- 6 principle discussed by Browne-Wilkinson LJ, because it was pursuant to that order that Mr Kelly was identified and added as a party to these proceedings. The applicants were allowed to make use of information obtained by court processes in order to bring claims against Mr Kelly. In those circumstances, the question arises whether there are, what have been described as special circumstances, sufficient to warrant the present applicants being released from the undertakings given to the Full Court of this Court. In my opinion, the provisions of Order 35 Rule 7 of the Federal Court Rules allow the Court to make such an order, even by the Court constituted by a single Judge, where the undertaking was given to a Full Court.In my opinion, it is quite appropriate for the applicants to pursue their rights against persons who are or may be acting in infringement of the copyright of the applicants in their computer program by use of the autokey device. It is not to the point that this all occurred a long time ago or that those persons may have a defence based upon appropriate Statute of Limitations provisions. It is not to the point that other persons may be acting in breach of the copyright of the applicants by using devices obtained from other sources or at cheaper rates. The applicants, in my opinion, are entitled to pursue their rights against infringers, and the affidavits giving the names of persons who had acquired the autokey devices from the respondents can be used for wider purposes than merely assessing damages to be determined as against the respondents. - - 7 In my opinion, one of the very real purposes of the initial undertaking given by the respondents that pending the appeal by the applicants to the High Court would be to ensure that proper records were kept of persons who acquired autokey devices, so that in due course, if successful, the applicants could pursue any rights they might have against those persons. It is argued that if this had been fully understood at the time the undertakings were given by the respondents, there should have been some caveat or warning given to those purchasers that the acquisition or purchase of the autokey devices could result, if the purchasers used those autokeys, in infringement of the copyright of the applicants. This was not done. Therefore, it was argued, the applicants should not be allowed to use the affidavits to pursue their rights against those persons. In my opinion, that cuts right across the statutory requirements of the Copyright Act which sets out the remedies the owner of copyright can pursue against persons who infringe the copyright. JI can see no reason why, for the purposes expressed in the affidavit filed in support of the motion, the orders sought should not be granted, relieving the applicants from the undertakings they have given, and granting them leave to make use of the information in the way suggested against persons who are named in the affidavits given pursuant to the order of the Court in these proceedings. Accordingly, the Court proposes to make the following orders: 1. The applicants have leave to use the information --- 8 contained in the affidavit of the respondents sworn 1 July 1994 for the purpose of: (a) contacting the persons named in the said affidavit to request delivery up to the applicants' solicitors, Stephens Solicitors, of 236 Coventry Street, South Melbourne, of any autokeys in the possession of such person for destruction or disposal by the applicants; (b) bringing proceedings against such persons if the applicants so determine. 2. Julian Stephens and Katarina Klaric, principals of the firm, Stephens Solicitors, be released from the undertakings given to the Court on 6 June 1994. Upon the applicants by their counsel undertaking to file the affidavits of service of the notice of motion which is dated 8 November 1994 within seven days the Court makes orders 1 and 2 as indicated. There is also an application that the respondent, Peter Vincent Kelly, pay the applicants' costs of the motion. There is no reason why that order should not be made. The third order is that the respondent, Peter Vincent Kelly, pay the applicants' costs of the motion. I will stay the operation of the order for 28 days. - oo 9 Orders accordingly I certify that this and the preceding eight (8) pages are a true copy of the Reasons for Judgment of The Honourable Mr Justice R.M. Northrop. Associate: Date: DA - ATTACHMENT Counsel for the Applacant: Mr A.K. Panna Solicitor for the Applicant: Stephens Solicitors ist and 2nd Respondents: No appearance 3rd Respondent: In person JUDGES' CHAMBERS FEDERAL COURT OF AUSTRALIA 450 LITTLE BOURKE STREET "ae MELBOURNE, 3000 22 December 1994 Ms Sonia Cornale Records Clerk Library and Information Services Principal Registry Federal Court of Australia Level 16 Law Courts Building Queens Square SYDNEY NSW 2000 Dear Sonia Re: Computerized Legal Information Retrieval System I enclose the following judgments for inclusion in the data base of Federal Court Judgments: 1. 3D Geoshapes Australia Pty Ltd v Registrar of Designs & Anor No VG 362 of 1994 2. Lionel Nation v Repatriation Commission No TG 18 of 1994 3. Autodesk Australia Pty Ltd v Martin Patrick Dyason_ & Others No VG 68 of 1989 The word processing disks containing the above judgments are enclosed. Please return the disks to the me when appropriate. Thank you HAWORTH Secretary to The Hon Mr Justice Northrop Enc