FEDERAL COURT OF AUSTRALIA Ringtail Asia Pacific Pty Limited v FTI Technology, LLC [2010] FCA 314 Citation: Ringtail Asia Pacific Pty Limited v FTI Technology, LLC [2010] FCA 314 Parties: RINGTAIL ASIA PACIFIC PTY LTD ACN 097 593 630 and E.LAW ASIA PACIFIC PTY LIMITED ACN 086 223 823 v FTI TECHNOLOGY, LLC ARBN 113 069 506 (formerly FTI REPOSITORY SERVICES, LLC) and FTI CONSULTING, INC File number(s): NSD 121 of 2010 Judge: JAGOT J Date of judgment: 30 March 2010 Catchwords: EQUITY – mandatory interlocutory injunction – respondents conceded serious question to be tried –balance of convenience Held – application dismissed Legislation: Trade Practices Act 1974 (Cth) s 46 Cases cited: Australian Rugby Union Ltd v Hospitality Group Pty Ltd [1999] FCA 1136 Businessworld Computers Pty Ltd v Australian Telecommunications Commission (1988) 82 ALR 499 Sanderson Motors (Sales) Pty Ltd v Yorkstar Motors Pty Ltd [1983] 1 NSWLR 513 Date of hearing: 29 March 2010 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 29 Counsel for the Applicants: Mr P R Whitford SC and Ms P M Sibtain Solicitor for the Applicants: Clarke Kann Lawyers Counsel for the Respondents: Dr J Griffiths SC and Mr S Rebikoff Solicitor for the Respondents: Mallesons Stephen Jaques IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 121 of 2010 BETWEEN: RINGTAIL ASIA PACIFIC PTY LTD ACN 097 593 630 First Applicant E.LAW ASIA PACIFIC PTY LIMITED ACN 086 223 823 Second Applicant AND: FTI TECHNOLOGY, LLC ARBN 113 069 506 (formerly FTI REPOSITORY SERVICES, LLC) First Respondent FTI CONSULTING, INC Second Respondent JUDGE: JAGOT J DATE OF ORDER: 30 MARCH 2010 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Dismiss the applicants' claims for interlocutory relief as set out in the amended application filed in Court on 29 March 2010. 2. The applicants pay the respondents' costs of the application for interlocutory relief, including costs thrown away by reason of those claims not pressed during the hearing on 29 March 2010, as agreed or taxed. Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 121 of 2010 BETWEEN: RINGTAIL ASIA PACIFIC PTY LTD ACN 097 593 630 First Applicant E.LAW ASIA PACIFIC PTY LIMITED ACN 086 223 823 Second Applicant AND: FTI TECHNOLOGY, LLC ARBN 113 069 506 (formerly FTI REPOSITORY SERVICES, LLC) First Respondent FTI CONSULTING, INC Second Respondent JUDGE: JAGOT J DATE: 30 MARCH 2010 PLACE: SYDNEY REASONS FOR JUDGMENT 1 The applicants, by an amended application filed in Court on 29 March 2010, seek an interlocutory order restraining the respondents from "depriving the First Applicant of any rights and benefits extended to it as expressed in the RRD". 2 The RRD is the Ringtail Relationship Deed. This is a deed dated 15 June 2005 between the first applicant, Ringtail Asia Pacific Pty Ltd (RAP), and the first respondent, now known as FTI Technology (FTI). By the deed FTI granted RAP a licence to use, reproduce, market and sell software products known as the Ringtail Product Suite in the Asia Pacific region. 3 FTI and the applicants are in dispute. 4 According to FTI, RAP has not been a party to the deed since December 2006 and, instead, an entity known as CCH Workflow Solutions Pty Ltd (WFS) has been the licensee under the deed since that time. Further, FTI contends that WFS repudiated the deed in November 2009 by selling its assets to a company related to the second applicant, e.law Asia Pacific Pty Ltd (e.law) without FTI's consent as required by the deed and thereafter refusing to accept WFS's obligations under the deed. On 23 December 2009 FTI accepted that alleged repudiation and terminated the deed with, on its case, WFS. 5 According to the applicants, RAP is the licensee under the deed. The applicants submit that the evidence, at its highest, shows that the parties agreed or conducted themselves on the basis that WFS could perform some of RAP's obligations under the deed. RAP, however, remained the licensee. The applicants say that nothing in the commercial arrangements that occurred in November 2009 (by which the shares in RAP and the assets in WFS were sold to e.law companies) required FTI's consent under the deed. RAP, the applicants assert, has not repudiated the deed but is able to perform all obligations under its terms. Accordingly, FTI's purported termination of the deed was not valid and FTI remains bound by its obligations to RAP. FTI, however, refuses to perform its obligations under the deed. FTI is thus in breach of contract on the applicants case. Further, according to the applicants, FTI's conduct in refusing to deal with it in respect of the software is in breach of s 46 of the Trade Practices Act 1974 (Cth) (the competition rule). 6 FTI concedes that there is a serious question to be tried as to whether WFS or RAP was the licensee under the deed. It follows that there is a serious question to be tried as to whether FTI's termination of the deed on the basis that WFS was the licensee on 23 December 2009 had any effect on the deed which RAP asserts existed and continues to exist as between RAP and FTI. FTI does not concede a serious question to be tried with respect to s 46; given its concession on the contractual issue that is immaterial. The issue, accordingly, is the balance of convenience. 7 To understand my conclusions about the balance of convenience, some further information about the software is required. The software is available to end users in two forms. The end user can have the software directly installed for which the end user pays a one-off fee as well as annual support and maintenance fees. In the case of direct installation the data is stored on the end user's system. Alternatively the end user can lease the software on a monthly basis for which the end user pays a monthly access fee. In this case the data is stored on the host's system and the end user has access to that data. Under the deed, this is known as an ASP service. 8 The licence granted by the deed was originally exclusive but became non-exclusive after 31 December 2006 on the payment of $500,000 by FTI to RAP in 2008. 9 The essence of the applicants' case is that FTI is fully protected by the proposed undertaking as to damages. In contrast, they say, the injustice to RAP if FTI is free not to fulfil its obligations under the deed pending final resolution of the dispute is not able to be adequately compensated by an order for damages. The applicants submit that RAP will not be able to provide the required services to its existing customers or obtain new customers while FTI is free to deny its obligations under the deed. FTI's contention that RAP was not the licensee is inconsistent with the evidence showing RAP's continued involvement and FTI's acknowledgment thereof. According to the applicants, the grant of the relief, while positive in effect in that it will require FTI to deal with RAP on the basis that the deed subsists despite FTI's purported termination, is necessary to preserve the status quo. The risk of potentially irreparable harm to RAP if interlocutory relief is not granted is, they submit, manifest. The grant of the relief sought will not have the effect of determining the proceeding in RAP's favour. It also will not require any ongoing supervision by the Court as the contract is not one for personal services. The applicants submit further that they have not delayed their claim for relief unreasonably and FTI's contention that this application constitutes an abuse of process because of an earlier application for the same or similar relief in the Supreme Court of NSW is unfounded. It follows the applicants submit that the balance of convenience thus favours RAP. 10 I accept the principles applicable to mandatory interlocutory injunctions which the applicants have identified as relevant from the decisions in Businessworld Computers Pty Ltd v Australian Telecommunications Commission (1988) 82 ALR 499 and Australian Rugby Union Ltd v Hospitality Group Pty Ltd [1999] FCA 1136. Those decisions show that while the test is the same (an applicant must show a serious question to be tried and that the balance of convenience favours the grant of relief) applications for mandatory interlocutory injunctions require "particular caution" (Australian Rugby Union v Hospitality Group at [30]). This is because common sense suggests that, until all rights and duties are finally known, requiring a party to do something is likely to carry a greater risk of injustice than requiring a party not to do something as a potentially interim measure. 11 I accept the applicants' submission that the present application is not an abuse of process. The applicants did seek the same or similar interlocutory relief in the Supreme Court on 24 December 2009 immediately following the notice from FTI that it considered that WFS had repudiated the deed, which FTI accepted and thereby entitling FTI (at least on FTI's case) to terminate the deed. Making the same or substantially the same application may be an abuse of process and is to be discouraged in the interests of justice. However, in this case it is apparent that the applicants' claim for interlocutory relief was not the subject of full consideration on its merits by the Supreme Court. Gzell J, the vacation duty judge in the Supreme Court, expressly contemplated in his reasons that another application for the same interlocutory relief might be made in a more orderly fashion outside the vacation period. In these circumstances the principles that I accept otherwise would apply to this second application for substantially the same relief, making it an abuse of process which should fail at the outset, are not engaged. 12 I consider that there has been delay on the part of the applicants in making this application. The evidence shows that the dispute was brewing since 4 December 2009 at the latest. On that day FTI, by its solicitors, notified e.law that its position was that e.law was not entitled to offer the software and FTI was considering terminating the deed by reason of its repudiation by WFS. FTI took that step on 23 December 2009 prompting the application to the Supreme Court on the following day. Thereafter, the parties to the Supreme Court proceedings agreed to a timetable for urgent resolution of the dispute. The applicants did not comply with that timetable. Apparently, they were contemplating transferring the proceeding to this Court because of the claim under s 46 of the Trade Practices Act – a claim which the applicants in fact had considered before making the application to the Supreme Court. The applicants, having breached the timetable in the Supreme Court proceedings, notified the respondents of the proposed transfer of the proceeding to this Court on 2 February 2010. Ultimately, the applicants discontinued the Supreme Court proceedings on 10 February 2010 and commenced this proceeding on the same date – more than eight weeks after FTI foreshadowed termination of the deed. 13 While the applicants' evidence explains the work that was being carried out to support the interlocutory application in the interim, it does not adequately explain the course of conduct which the applicants took from 4 December 2009 onwards. Accordingly, there has been delay by the applicants. The delay is not egregious – but it exists and has not been adequately explained by the evidence. 14 The deed is not one for personal services. Nevertheless, there is evidence which indicates that the fulfilment of the deed involves an ongoing commercial relationship dependent on mutual trust and confidence. While the applicants pointed out that many of the employees of WFS with whom FTI were used to dealing were now employed by e.law, that is not the point. The deed requires FTI to approve a business plan for exploitation of the licence. It requires FTI to offer a licence for any new product subject to a further business plan being prepared and approved by FTI. It requires the parties to exchange confidential information to the extent necessary to give effect to the deed. FTI and WFS executed a side letter by which the deed was said to be amended so as to require WFS to meet certain additional obligations. These included specified revenue targets and an arrangement by which FTI provided all support services to end users and retained 100% of the fees for so doing, as well as requirements for marketing projections to be prepared and submitted to FTI. In these circumstances it is apparent that the deed requires a relatively high level of co-operation and trust between FTI and the licensee. FTI's position is that it has no obligations to the applicants under the deed and it does not wish to engage in commercial dealings with them. The effect of the interlocutory order sought would be to require FTI to undertake a commercial activity requiring co-operation and trust against its will. This too is a factor to be weighed in the balance. 15 The applicants contend that the effect of the order will be to preserve the status quo pending the resolution of the dispute. The evidence does not support that characterisation. It is true that there is evidence capable of supporting an inference that RAP had continued involvement with FTI pursuant to the deed. FTI issued invoices to RAP under the deed after the date in late 2006 by which FTI asserts that RAP had "stepped out" and WFS "stepped in". Some of FTI's communications can be read as acknowledging RAP's continued role. WFS's documents with end users also refer to RAP's involvement. It is also possible that WFS's role was to act as RAP's agent. Similarly, it is possible that FTI agreed (or is estopped from denying) that WFS could perform certain obligations under the deed on RAP's behalf without RAP breaching or waiving any of its rights under the deed. These matters cannot be resolved in this application for interlocutory relief. Irrespective of the competing merits of the parties' positions, one thing emerges from the evidence. From late 2006 onwards FTI was dealing with WFS on a day-to-day basis about the deed, not RAP. 16 It follows that the interlocutory order sought, requiring FTI to deal with RAP under the deed, would not preserve the status quo at least insofar as the status quo involves day-to-day activities. To the contrary, the order sought would require FTI to deal with RAP about all aspects of the deed when, on the applicants' own case, before this dispute FTI was dealing with WFS at least about certain aspects of the deed. The facts of the present case are not analogous to those in Sanderson Motors (Sales) Pty Ltd v Yorkstar Motors Pty Ltd [1983] 1 NSWLR 513 on which the applicants relied. The role of WFS under the deed since late 2006 is a distinguishing factor in the present case. That role, whatever its true legal characterisation, was not minor or trivial. The side letter is said to be a variation of the deed. RAP is not a party to the side letter. The side letter does not mention RAP other than as part of a description of the deed. The side letter indicates that all principal activities under the deed (such as the submission of business plans) were being performed by WFS. The fact that, in a practical sense, the effect of the interlocutory order would be to require FTI to do something it has not done since at least late 2006 (namely, deal with RAP as the licensee under the deed) is also relevant to the balance of convenience. 17 The risk of injustice to RAP if the order is not made is of fundamental importance to the balance of convenience. Although the application was supported by numerous affidavits an assessment of this risk requires consideration of the evidence relevant to the making of the single interlocutory order sought (and not the other interlocutory orders which were contained in both the original and amended application and referred to in the applicants' submissions, but which the applicants did not seek on the hearing of their application). The assessment is also to be carried out on the basis that it is for the applicants, as the parties seeking relief, to show the existence and nature of the risk of injustice to them if the order sought is not made. 18 First, the terms of the deed itself are relevant. The deed entitles the licensee to exploit the Ringtail Product Suite. This licence extends to all new releases, upgrades and updates of those products. The deed also requires FTI to grant the licensee a new licence for new products. The deed requires FTI to lodge the source codes for the software with a third party so the licensee can access those codes so as to be able to exploit the software (including all new releases, upgrades and updates) in certain circumstances including a breach by FTI of its obligations to provide support and maintenance in connection with the products. 19 Second, there is evidence that the dispute as a whole has adversely affected the applicants' business. FTI issued a circular contending that RAP was not authorised to provide the Ringtail software. A law firm which became aware of FTI's position decided to contract with FTI for the software rather than RAP. Another government entity advised RAP that it would not give RAP ongoing work until the dispute was resolved. The fact that, after 24 December 2009, RAP was capable of offering the software to a new client and providing an existing client with ongoing support, however, indicates that it must control a version of the software (presumably the version current before 24 December 2009). In other words, this evidence is inconsistent with an inference that RAP has no capacity to deal with the software at all pending resolution of this dispute. Instead, it supports the inference that the dispute as a whole is impacting the applicants' business. 20 Common sense indicates that this aspect of the risk of injustice to RAP (if RAP's contentions about the deed are proven correct) will be somewhat ameliorated by the making of the interlocutory order. But the extent of this amelioration is difficult to gauge. For example, the government entity's position was that it did not wish to deal with RAP until the dispute was resolved. The interlocutory order sought will not resolve the dispute as a whole. It will not enable RAP to advise potential or existing customers that there is no dispute about its rights in respect of the software. It will not prevent FTI from informing end users of the existence of the dispute. 21 Third, there is evidence that RAP will not be able to access upgrades of the software and FTI support to remove "bugs" from the upgraded software unless the interlocutory order is made. According to Allison Stanfield, a director of each applicant, FTI has terminated RAP's access to FTI's support service with the practical consequence that RAP "can only offer an outdated product without any technical support". Ms Stanfield considers that the inability to provide the upgrades and technical support will mean that the applicants will lose customers to FTI including the associated income from what is known as the ASP service (that is, where the data is stored on the host's system and the end user has access to that data for payment of a monthly fee). Ms Stanfield describes this risk as one whereby customers "migrate away" from the applicants to FTI. This evidence thus discloses a risk of harm to RAP if the order sought is not made. 22 However, the nature and timing of this risk is also relevant. In addition to exposing the risk, the evidence supports my inference that RAP presently has access to, and can deal in, the Ringtail software at least in the form in which it existed before FTI terminated (or purported to terminate on the applicants' case) the deed on 23 December 2009. Other evidence also indicates that the risk to the applicants' business may not be as immediate or as dire as Ms Stanfield fears. Bree Galvin, e.law's general manager of business development and project services, says that on 20 January 2010 (after the termination of the deed) she told the law firm which decided to contract with FTI that the applicants "could provide consultancy and training for the Ringtail installation". According to Ms Galvin because FTI could not provide the consultancy and training in the time required by the law firm, RAP did so and is continuing to provide the law firm with "ongoing consultancy support". In other words, despite lack of access to upgrades and FTI technical support, as at the date of Ms Galvin's affidavit (10 March 2010) RAP was able to provide services relating to the Ringtail products. 23 Ms Galvin describes a situation relating to another law firm which had a direct installation of Ringtail software. In February 2010 that law firm wished to obtain two new licences and contacted RAP to do so. However, FTI refused to deal through RAP and the law firm decided not to bother dealing with either RAP or FTI. In other words, the dispute led to both parties missing out on additional business. In weighing up this evidence it is relevant that end users with Ringtail directly installed have a direct contractual relationship with FTI. 24 Ms Galvin also describes the range of services previously offered by FTI. She concludes that FTI's refusal to deal with RAP "has limited RAP/e.law's ability to provide adequate support and consultation services to our customers". This limited ability, however, has not yet caused any apparent diminution in the applicants' income from dealings with the Ringtail Product Suite. There is evidence that the monthly income for January 2010 remains the same as for earlier months. The figures, accordingly, do not show that the feared migration of customers has yet occurred. 25 Fourth, there is the issue of the adequacy of damages as a remedy. The applicants assert that damages could not be an adequate remedy, referring to the well-known difficulty of assessing damages for goodwill. The respondents note that the claim does not include a claim for damages by reference to lost goodwill. Gzell J questioned whether damages were an inadequate remedy. It is difficult to understand the applicants' claim that damages will not be able to be assessed or, if ordered, to compensate them adequately for the alleged contractual and statutory breaches should the applicants be vindicated. This case is by no means a clear one in which damages would be an inadequate remedy. 26 Weighing up all of the evidence leads to the following conclusions. The evidence of the risk of injustice to the applicants if the interlocutory order is not made is vague, internally inconsistent in certain respects and weak overall. The principal risk appears to relate to upgrades and technical support. There is no evidence that any upgrades have taken place or that the applicants or their customers were denied access to them. There is no evidence that the lack of technical support by FTI has caused any actual problem for the applicants' customers. There is no evidence that the feared migration of the applicants' customers to FTI is underway or about to start. There is no evidence of any proposed new products. 27 Insofar as there is evidence of actual problems, it suggests the applicants are continuing to provide to and support their own customers. Specifically, the problem with the law firm that wanted additional licences related to a direct installation where, according to the evidence, the law firm in fact had a direct contractual relationship with FTI, not RAP. The problem with the other law firm and the government entity appears to have arisen by reason of the mere existence of the dispute itself. As to the latter, despite the applicants' fears of customers migrating from them to FTI, the law firm in question decided that the applicants were able to provide it with an apparently more timely and effective service than FTI. According to Ms Galvin, the applicants continue to provide this service. 28 The applicants have not satisfied me that granting the injunction carries a lower risk of injustice than withholding it (Business World Computers at 502). While there is some risk of injustice to the applicants if they are proven correct about their case, it is apparent that the making of the order sought will not merely preserve the status quo. It will force FTI into day-to-day commercial dealings with parties with which FTI does not wish to deal in circumstances where it has not done so at least since December 2006. It will force FTI to deal with those parties in respect of matters requiring a relatively high degree of co-operation such as the consideration and approval of a business plan. It will do so in circumstances where it is not a clear case of damages being an inadequate remedy. It will do so in circumstances where the applicants' conduct of its claims does not support an inference that the risk of harm to their business should be characterised as immediate and profound. The undertaking the applicants offer as the price of the order does not ameliorate the impact of these matters. 29 For these reasons I am not satisfied that the balance of convenience favours the making of the interlocutory order sought and I dismiss the applicants' claim for that order. As the other interlocutory orders were not pressed, I dismiss the applicants' claim for interlocutory relief as set out in the amended application filed in Court on 29 March 2010. I certify that the preceding twenty-nine (29) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. Associate: Dated: 1 April 2010