Diethelm Singapore Pty Ltd v Gerard Industries Pty Ltd [1998] FCA 325

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 1049 of 1997

BETWEEN: DIETHELM SINGAPORE PTe LTD

Applicant

AND: GERARD INDUSTRIES PTY LTD

Respondent

JUDGE: BURCHETT J

DATE: 30 MARCH 1998

PLACE: SYDNEY

EXTEMPORE REASONS FOR JUDGMENT An application is made by notice of motion on behalf of a respondent to proceedings in which the respondent is alleged to have made unjustified threats falling within the terms of s 202 of the Copyright Act. The respondent seeks by its motion an order for the production for independent examination and inspection of certain documentation and items. The purpose is to enable an electronic design engineer independent of the parties to form an opinion and, presumably, ultimately to give evidence on the issue of whether the applicant's product does indeed infringe either copyright rights or circuit layout rights of the respondent. The proceedings commenced following the sending of a letter by the respondent to the applicant, a letter copies of which the respondent also apparently sent to some customers or potential customers of the applicant. The letter sought an unqualified undertaking that the product was indeed the applicant's and stated that some information had come to the respondent's hands suggesting otherwise. The applicant's response was to ignore the request for an undertaking, but to seek particulars of the respondent's claimed rights and ultimately to bring the proceeding. Evidence has been put before me which it is unnecessary to detail. It is contained in affidavits, and has been cross-examined upon without being weakened in any way. It is evidence which does raise the suggestion that there has indeed been use made by the applicant of a system and electronics developed by the respondent from an original system upon which work had been done by three persons who subsequently, apparently, found themselves in employment with the applicant. It seems to me that, upon the law as it stood before Order 15A was inserted into the rules of the Court, this would have been precisely the type of case where the Court would unhesitatingly have ordered that discovery take place before the respondent should be compelled to plead. Since Order 15A has been inserted, it is perhaps even more clear that the respondent is entitled to relief of the kind that it seeks by its notice of motion. Rule 6 provides for a case where: "(a) there is reasonable cause to believe that the applicant has or may have the right to obtain relief in the Court from a person whose description has been ascertained"- that I find precisely applies here - "(b) after making all reasonable inquiries the applicant has not sufficient information to enable a decision to be made whether to commence a proceeding in the Court to obtain that relief" - that also, it seems to me, applies here; indeed, to the extent that any criticism may be made of the inquiries made by the respondent, the institution by the applicant of the very proceeding in which the motion has now been filed would seem to me to be highly relevant to the question whether further inquiry before the bringing of this motion could possibly be regarded as requisite at this stage. I conclude that, in all the circumstances of this case, all reasonable inquiries have been made, and that the applicant has not sufficient information at this stage to enable it to make the requisite decision - "(c) there is reasonable cause to believe that that person has or is likely to have or has had or is likely to have had possession of any document relating to the question whether the applicant has the right to obtain the relief and that inspection of the document by the applicant would assist in making the decision" - that I do not understand to be in dispute. Then the rule goes on to say: "the Court may order that that person shall make discovery to the applicant of any document of the kind described in paragraph (c)." I think, therefore, that the whole of this rule applies. Rule 12 then provides that: "On an application under this Order the Court may also make an order providing for ..." - and it deals (with respect to property) with inspection, measurement, taking of samples, observation and carrying out of any experiment, and making, playing or screening of tape recordings. I think rule 12 also applies to the present situation. Accordingly, I am prepared to grant the relief sought in the motion, subject only to the fact that there does appear to have been information furnished about the independent expert at a fairly late stage. I do not think I shall allow very long, but I should allow some further opportunity for appropriate inquiries to be made to ensure that there is not some significant objection to this particular person who has been nominated. Therefore I shall delay making the order. The orders will include an order that the applicant in the motion have its costs of the motion. I certify that this and the preceding two (2) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Burchett