Quanta Software International Pty Limited v Computer Management Services Pty Ltd [2000] FCA 969

FEDERAL COURT OF AUSTRALIA

Quanta Software International Pty Ltd v Computer Management Services Pty Ltd [2000] FCA 969 PRACTICE AND PROCEDURE – preliminary discovery – applicant distributor of software – respondent licensee of applicant – whether reasonable cause to believe applicant may have right to obtain relief in the Court for infringement of copyright – whether applicant made all reasonable inquiries by making requests of the respondent. Evidence Act 1995 (Cth), Dictionary. Copyright Act 1968 (Cth), ss 115, 119, 131C.

Federal Court Rules, O 15A r 6; O 1 r 4.

Hooper v Kirella Pty Ltd (1999) 96 FCR 1, cited. W R Pateman Pty Ltd v Walker Corp Pty Ltd [1990] ATPR 41-106, cited. London Economics (Aust) Pty Ltd v Frontier Economics Pty Ltd [1999] FCA 932, cited. Alphapharm Pty Ltd v Eli Lilly Australia Pty Ltd (unreported, 24 May 1996, Lindgren J), cited. Paxus Services Ltd v People Bank Pty Ltd (1990) 99 ALR 728, cited.

QUANTA SOFTWARE INTERNATIONAL PTY LTD v COMPUTER MANAGEMENT SERVICES PTY LTD N 516 of 2000 SACKVILLE J 21 JULY 2000 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 516 OF 2000

BETWEEN: QUANTA SOFTWARE INTERNATIONAL PTY LIMITED

APPLICANT

AND: COMPUTER MANAGEMENT SERVICES PTY LIMITED

RESPONDENT

JUDGE: SACKVILLE J

DATE OF ORDER: 21 JULY 2000

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The respondent give verified discovery by 2 August 2000 of such of the following documents as are within its custody, possession or power: (a) all contracts relating to (i) UNISON software; or (ii) any other software distributed by the respondent which incorporates EUNICE modules or portions of EUNICE modules, entered into during the period of three years preceding the date of these orders; and (b) all source codes in the possession of the respondent relating to (i) UNISON software; or (ii) any other software distributed by the respondent which incorporates EUNICE modules or portions of EUNICE modules. "Document" has the meaning it bears in FCR O 15A r 6. 2. Subject to par 3, inspection of the documents referred to in par 1 shall take place within fourteen days of the date verified discovery is given by the respondent. 3. Inspection by the applicant of the documents referred to in par 1 shall be given subject to the following conditions: (a) no more than two (2) copies of such documents or things shall be made without further order of the Court; (b) access to the originals or copies of such documents will be confined to the following persons: Simon Allison and Andrew Clements of the applicant; the applicant's legal representative, Terence Lee; and the applicant's appointed expert, Graeme Harrison; (c) access will be granted to each person named in sub-par (b) only upon each such person giving an undertaking in writing addressed to the respondent's solicitors, or giving an undertaking to the Court, in the following terms: (i) No further copies shall be taken of the copy documents or things provided, except with the written agreement of the respondent's solicitors or further order of the Court. (ii) The contents of the documents and things shall be kept confidential and not disclosed to any other person other than a person named in sub-par (b) without leave of the Court. (iii) The information provided shall be used solely for the purposes of (A) forming an opinion as to whether the respondent infringed the applicant's asserted copyright in EUNICE software; and/or (B) instituting and conducting proceedings against the respondent in respect of infringement of the applicant's asserted copyright in EUNICE software. (iv) Subject to any further order of the Court, all copies of documents and/or copies taken of the contents of such documents shall be delivered to the respondent's solicitors at the conclusion of any proceedings initiated by the applicant against the Respondent following this discovery, or within thirty (30) days of inspection should there be no such proceedings initiated by the Applicant within that time. 4. Liberty to apply on 72 hours notice. 5. The respondent pay fifty per cent of the applicant's costs of the application, as agreed or taxed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.