FEDERAL COURT OF AUSTRALIA Autodata Limited v Boyce's Automotive Data Pty Limited [2007] FCA 1517 PRACTICE AND PROCEDURE – confidential information – objective and subjective factors for confidentiality – applicant's belief of confidentiality – information does not disclose requisite objective degree of confidentiality. Federal Court of Australia Act 1976 (Cth) s 50 Moorgate Tobacco Co. Ltd v Phillip Morris Ltd (No. 2) (1984) 156 CLR 414 Saltman Engineering Co. Ltd v Campbell Engineering Co. Ltd (1947) 65 RPC 203 Thomas Marshall (Exports) Ltd v Guinle [1978] 3 All ER 193 AUTODATA LIMITED AND AUTODATA AUSTRALIA PTY LTD (ACN 109 278 766) v BOYCE'S AUTOMOTIVE DATA PTY LIMITED (ACN 106 060 388) AND MARK JOHN BOYCE NSD 1880 OF 2006 TAMBERLIN J 4 OCTOBER 2007 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 1880 OF 2006 BETWEEN: AUTODATA LIMITED First Applicant AUTODATA AUSTRALIA PTY LTD (ACN 109 278 766) Second Applicant AND: BOYCE'S AUTOMOTIVE DATA PTY LIMITED (ACN 106 060 388) First Respondent MARK JOHN BOYCE Second Respondent JUDGE: TAMBERLIN J DATE OF ORDER: 4 OCTOBER 2007 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Subject to my findings and observations in paragraph [18] of these reasons, the respondents' confidentiality application is dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 1880 OF 2006 BETWEEN: AUTODATA LIMITED First Applicant AUTODATA AUSTRALIA PTY LTD (ACN 109 278 766) Second Applicant AND: BOYCE'S AUTOMOTIVE DATA PTY LIMITED (ACN 106 060 388) First Respondent MARK JOHN BOYCE Second Respondent JUDGE: TAMBERLIN J DATE: 4 OCTOBER 2007 PLACE: SYDNEY REASONS FOR JUDGMENT 1 This is an application by the respondents ("Boyce") for an order that the applicants ("Autodata"), and its employees, agents and legal representatives, be restrained from disclosing to other people, unless with the consent of the respondents, the contents of a report ("the Report") drafted by the respondents and provided to the applicants pursuant to the terms of a Deed of Settlement and Release ("the Deed") on the basis that it is confidential. THE BACKGROUND 2 The claim in the principal proceedings relates to alleged breaches by Boyce of Autodata's copyright in manuals and CD-ROMs which outline technical information relating to motor vehicles. After several directions hearings before me, the parties attended mediation on 5 June 2007 at which they signed the Deed, which was not expressed to be confidential, and executed confidentiality undertakings regarding the mediation. 3 Clause 3(a) of the Deed provides that, as a condition of settlement, Boyce must investigate and implement appropriate measures to address any copying of specified Autodata publications, and prepare and provide to Autodata a written report outlining these investigations and measures. The Deed did not provide that the Report would be treated as confidential. 4 Boyce prepared the Report and forwarded it to the legal representatives of Autodata on 13 September 2007. The Report was marked "Confidential", and was described as such in correspondence between the parties. 5 On 25 September 2007, solicitors for Boyce searched Autodata's website, where they found an article entitled "Autodata wins copyright case against Boyce", which set out from Autodata's perspective their claimed success in settlement negotiations with Boyce. Boyce objected to the content of that article, and counsel for Boyce described it as possessing "more than just a touch of hyperbole". 6 In this context, Boyce says that it fears Autodata will not treat the Report – which is said to contain sensitive information about Boyce's internal business actions, procedures and decisions – as confidential. Accordingly, the present application by Boyce seeks to restrain Autodata from disclosing the content of the Report in any way. REASONING 7 When the matter came on for hearing, I was taken in detail to each paragraph of the Report by counsel for both Boyce and Autodata. 8 Although the claim for confidentiality was not pressed in relation to some parts of the Report, counsel for Boyce submitted that the bulk of the Report either explicitly set out, or was in some way predicated upon, information concerning Boyce's internal business decisions, and was therefore confidential. In addition, some small amount of material was said to be confidential because it pertained to information of a personal nature about a Boyce employee. The information in the Report was said to fall within the ambit of confidentiality as described by Deane J in Moorgate Tobacco Co. Ltd v Phillip Morris Ltd (No. 2) (1984) 156 CLR 414 at 438 and by Megarry V-C in Thomas Marshall (Exports) Ltd v Guinle [1978] 3 All ER 193 at 209-210. It is worth noting that neither the affidavit of Mr Petrucco filed in support of the application nor counsel for Boyce adduced any specific evidence as to the significant disadvantage or damage which Boyce believes it would suffer if the information in the Report was disclosed to the public. 9 Counsel for Autodata submitted that, with the exception of some few words or phrases, the Report was entirely non-confidential. The reason for this, it was said, is that the information disclosed was either already in the public domain or was so anodyne that its disclosure could not reasonably be considered to disadvantage Boyce or advantage Autodata. 10 Objective and subjective factors are relevant when considering an application for confidentiality. The objective factor is that the information in relation to which the claim is made must possess "the necessary quality of confidence about it": Saltman Engineering Co. Ltd v Campbell Engineering Co. Ltd (1947) 65 RPC 203 at 215 (per Lord Greene MR). The subjective factor is that the information must be important or significant "not necessarily in the sense of commercially valuable ... but in the sense that the preservation of its confidentiality or secrecy is of substantial concern to the plaintiff": Moorgate Tobacco 156 CLR at 438 (per Deane J) (emphasis added); see also Thomas Marshall [1978] 3 All ER at 209-210 (per Megarry V-C). Crucial to any determination of confidentiality, therefore, is a consideration of the evidence before the Court, which in this case was extremely limited, and of the nature of the information in dispute. 11 On the basis that Boyce marked the Report as "Confidential" and that correspondence between the parties demonstrates Boyce's concern over the possibility that the information in the Report would be disclosed to the public, I am persuaded that Boyce believes that the information is important to its business and confidential in nature. The issue therefore, is whether the information, considered objectively, can be said to have the requisite degree of confidentiality. 12 Having considered the submissions of counsel and examined the Report in detail, I find that some limited material in the Report is confidential, and is appropriately the subject of an order under s 50 of the Federal Court of Australia Act 1976 (Cth). Below I set out which paragraphs meet the threshold of confidentiality, and those which do not. 13 The parties agreed that some sections of the Report were evidently not confidential and, on close inspection of the Report, in my view they were correct. Accordingly, paragraphs [1]-[6] of the Report, concerning circumstances surrounding the execution of the Deed and Boyce's performance of obligations under clause 3(a) of the Deed, and paragraphs [16]-[17], concerning the destruction or removal by Boyce of material said to be in breach of Autodata's copyright, are appropriately not the subject of an order for confidentiality. 14 Paragraphs [7]-[13] of the Report describe investigations undertaken by Boyce pursuant to clause 3(a) of the Deed. In detailing these investigations, the Report contains some personal information about the health of a particular employee of Boyce. In my view, such information is properly treated as confidential and should not be disclosed by Autodata. The excision of this material will require some editing of the remainder of paragraph [7], perhaps by redefining the 2003-2006 period simply as "the Period". 15 Other than this, paragraphs [7]-[13] of the Report are not, in my view, confidential. Once references to the personal information of Boyce's employee are deleted, the information in those paragraphs cannot reasonably be considered to disclose Boyce's internal business practices, procedures or decisions. Rather, the information does no more than detail the circumstances in which Boyce conducted the investigations and reached the conclusions which clause 3(a) of the Deed required of it. Counsel for Autodata made the point, which I accept, that where information is published in one publication but then removed from a subsequent version of the publication, then neither the information removed nor the fact of its removal can be confidential because such information is already in the public domain by virtue of the existence of the previous publication. The simple task of comparing the two versions will identify the change and remove the quality of confidence. This applies particularly to paragraph [11] in the Report, and to several other paragraphs I discuss below. 16 Paragraph [14] of the Report outlines the internal business procedures which Boyce has implemented to prevent its future publications infringing Autodata's copyright. Such information detailing procedures adopted by a business will not automatically attract an order for confidentiality, and in this case I am satisfied that paragraph [14] does not detail Boyce's internal business procedures in a way which makes it necessary or desirable to treat the information as confidential. The information is expressed very broadly and in the abstract. Paragraph [14] does not disclose information specifically in relation to any of Boyce's projects or pieces of work. It is information of an ordinary nature, which counsel for Autodata characterised as "anodyne", and counsel for Boyce as "innocuous". Having regard to the principles discussed above, I am not satisfied that this information can objectively be considered to possess the necessary degree of confidence to warrant an order restraining its disclosure. 17 Paragraphs [15] and [18]-[23] of the Report concern steps taken, or steps to be taken, by Boyce to remove from its current and future publications information, data and diagrams which were included in previous versions of its publications which infringed Autodata's copyright, and to cease supplying versions of its publications which include that infringing information. The application for confidentiality of these paragraphs, in my view, fails because the removal of information disclosed in earlier versions of a publication from a later version cannot be confidential. This is because any member of the public is able to compare the two relevant versions and ascertain what has been removed, thereby stripping the information of the objective quality of confidence which grounds the granting of a confidentiality order. Equally, the information itself which has been removed cannot be deemed confidential. It has already been disclosed in the public domain by virtue of its inclusion in the previous, openly available publication. Although paragraphs [15] and [18]-[23] reflect in a limited way some internal decisions of Boyce, some of which were said to included in the Report on a "non-admissions basis", the information revealed is not of such a nature as to have the necessary objective quality of confidence identified by Deane J in Moorgate Tobacco 156 CLR at 438. 18 For the above reasons I find that, subject to my findings on paragraph [7] of the Report and other agreed changes between the parties, the Report is not confidential. Accordingly, the respondents' confidentiality application is dismissed with costs. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin . Associate: Dated: 4 October 2007 Counsel for the Applicant: Mr R Cobden SC Solicitor for the Applicant: Gilbert + Tobin Counsel for the Respondent: Mr S Burley and Mr J Cooke Solicitor for the Respondent: The Argyle Partnership Date of Hearing: 25 September 2007 Date of Judgment: 4 October 2007