ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577

FEDERAL COURT OF AUSTRALIA

ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577

PRACTICE AND PROCEDURE – Party's failure to comply with interlocutory orders – Whether sufficiently serious to justify shutting party out from defending proceeding – Whether judgment should be entered against party. PRACTICE AND PROCEDURE – Party's failure to fulfil undertaking given to court – Whether the undertaking should be converted into an order – Whether the court retains a discretion not to do so. Federal Court Rules O 35A r 3(2)(c), O 35 r 11 Lenijamar Pty Ltd v AGC (Advances) Limited (1990) 27 FCR 388 Louthean Publishing Pty Ltd v Central West Media Limited (Nicholson J, unreported, 15 April 1996)

ACOHS PTY LTD (ACN 009 572 187) v UCORP PTY LTD (ACN 062 768 094) AND BERNARD BIALKOWER

VID 873 of 2004

JESSUP J

3 JUNE 2009

MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 873 of 2004

BETWEEN: ACOHS PTY LTD (ACN 009 572 187)

AND: Applicant

UCORP PTY LTD (ACN 062 768 094)

First Respondent

BERNARD BIALKOWER

Second Respondent

JUDGE: JESSUP J

DATE OF ORDER: 3 JUNE 2009

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1. By 3 July 2009, the respondents provide to the applicant – (a) a bit stream dump, created on 26 June 2009, of "The Collection" as stored on each of - (i) the respondents' "Oberon" server in Melbourne; and (ii) the repository server in India referred to in par 15 of the affidavit of Sourav Banerjee sworn on 5 March 2009; and (b) a disc or discs containing a true copy of every material safety data sheet which contains the words "Infosafe No" in "The Collection" as stored on each of – (i) the server referred to in (a)(i) above; (ii) the server referred to in (a)(ii) above; and (iii) every other server, electronic storage device, database and system on which material safety data sheets are stored. 2. The respondents be taken to have complied with order 1(a)(ii) above if, by 3 July 2009, they – (a) comply with order 1(a)(i); and (b) file and serve an affidavit, made by a person having direct knowledge of the contents thereof, stating that the bit stream dump provided pursuant to order 1(a)(i) is identical in every particular to the bit stream dump which would have been provided pursuant to order 1(a)(ii), had one been so provided. 3. In relation to material safety data sheets constituted by indirectly created PDF files, the respondents be taken to have complied with order 1(b) above if they provide to the applicant, by 3 July 2009, a disc or discs which contain the material safety data sheets located by them on the servers, devices, databases and systems there referred to as a result of good faith searches – (a) using the software known as Forensic Toolkit; and (b) using the vendor field of every database or similar arrangement by reference to the companies referred to in pars (viii)(C) and (D) of the applicant's Particulars of Copyright Ownership. 4. In relation to each of the servers, devices, databases and systems referred to in order 1(b)(ii) and (iii) above, the respondents be taken to have complied with order 1(b) above if, by 3 July 2009, they – (a) comply with order 1(b)(i); and (b) file and serve an affidavit, made by a person having direct knowledge of the contents thereof, stating that the contents of that server, device, database or system are identical in every particular, as at the date upon which order 1(b)(i) is complied with, to the contents of the server referred to in order 1(a)(i). 5. By 10 July 2009 the respondents cause an affidavit, or affidavits, to be sworn setting out the steps taken in compliance with order 1 above, including the steps, if any, taken in reliance on any or all of orders 2, 3 and 4 above. 6. Subject to the applicant's solicitors Murray Round and Robert Lees and, to the extent relevant, independent experts appointed by the applicant having first made confidentiality undertakings to the respondents in the terms previously used in this proceeding, by 24 June 2009 the respondents provide the said Round and Lees and, to the extent required by the applicant, those experts with the means (including such passwords and/or manuals as may be necessary) to have live, real time and continuing access via the World Wide Web, from computers in the homes of the said Round and Lees, to "The Collection" to the same extent as is enjoyed by customers of the first respondent and in such a way as will enable the said Round and Lees, and the said experts, to the extent required by the applicant, to download, inspect and print pages of "The Collection" and to check the respondents' compliance with their undertakings given to the court on 16 October 2006 and with order 11 below. 7. By 3 July 2009 the respondents make discovery, to the extent not previously made, of: (a) agreements or contracts for the supply of any product which provides access directly or indirectly to "The Collection" and the fee schedules in relation thereto; (b) documents which evidence or record the respondents providing customers with access to "The Collection" directly or indirectly without fee or on approval, whether such access is provided with or without some other service or product; (c) documents, including invoices, proposals, agreements and licences evidencing, concerning or relating to the respondents' supply of compact discs or other portable electronic storage devices containing suppliers' material safety data sheets not authored by the respondents. 8. Subject to any further order of the court, upon compliance with orders 1 and 7 above, the respondents be excused from compliance with any obligation they would otherwise have to make ongoing discovery of – (a) material safety data sheets; and (b) documents of the kind referred to in order 1 made by the court on 1 December 2006. 9. Any application by the applicant further to amend its Fifth Further Amended Statement of Claim – (a) be limited to such amendments as are rendered necessary or desirable as a result of documents or information being provided by the respondents in compliance with order 1(b) above; (b) be supported by an affidavit to which is exhibited a copy of the amendments proposed to be made, or of the Statement of Claim as amended as proposed; (c) be made on or before the 28th day after the respondents have wholly complied with order 1(b); and (d) be returnable for mention at 9.00 am on the 7th day after it is made. 10. The respondents be released from their undertaking given to the court on 16 October 2006. Upon the applicant by its counsel undertaking: (a) to submit to such order (if any) as the court may consider to be just for the payment of compensation, to be assessed by the court or as it may direct, to any person, whether or not a party, adversely affected by the operation of order 11 below or any continuation (with or without variation) thereof; and (b) to pay the compensation referred to in (a) to the person there referred to – 11. Save to the extent necessary to permit – (i) copying, substantially reproducing or adapting a material safety data sheet that contains the words "Infosafe No." and/or "Chemsafe" (referred to in this order as "Infosafe MSDS") that is made available to the respondents in a format other than HTML (including by locating and viewing the data sheet), including the data sheet in an electronic storage means or database, and making the data sheet available to any person; or (ii) locating and viewing an Infosafe MSDS in HTML format, printing the data sheet, photocopying or electronically scanning such print and thereafter including such scanned print in an electronic storage means or database, and making it available to any person; the respondents and each of them be restrained, whether by themselves, their servants or agents or howsoever otherwise, from including in any electronic storage means or database, created by either or both of them or on their behalf, or otherwise making available to any person, a copy or substantial reproduction or adaptation of any HTML source code relating to any Infosafe MSDS. 12. The parties have liberty to apply on 48 hours' written notice to the other party or parties. 13. Otherwise, the applicant's Notice of Motion dated 16 December 2008 be dismissed. 14. Costs be reserved.