FEDERAL COURT OF AUSTRALIA Irrewarra Estate Pty Ltd v Telstra Corporation Limited [2010] FCA 1457 Citation: Irrewarra Estate Pty Ltd v Telstra Corporation Limited [2010] FCA 1457 Parties: IRREWARRA ESTATE PTY LTD (ACN 090 419 355) (TRADING AS IRREWARRA SOURDOUGH) v TELSTRA CORPORATION LIMITED (ACN 051 775 556) File number: VID 1005 of 2010 Judge: KENNY J Date of judgment: 3 December 2010 Date of hearing: 3 December 2010 Place: Melbourne Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 8 Counsel for the Applicant: Mr D Clancy Solicitor for the Applicant: Brand Partners Counsel for the Respondent: The Respondent did not appear IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1005 of 2010 BETWEEN: IRREWARRA ESTATE PTY LTD (ACN 090 419 355) (TRADING AS IRREWARRA SOURDOUGH) Applicant AND: TELSTRA CORPORATION LIMITED (ACN 051 775 556) Respondent JUDGE: KENNY J DATE OF ORDER: 3 DECEMBER 2010 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. Pursuant to Rule 15A.3(2) of the Federal Court Rules 1979 (Cth), the Respondent must by 10 December 2010, provide to the Applicant a copy of all documents (as this term is defined in O 1 r 4 of the Federal Court Rules) which establish, evidence; or assist in establishing or evidencing: a. the account through which the internet was accessed on 21 October 2010 or 22 October 2010 via the IP Address 165.228.224.20; b. the identity of the person that accessed the internet on 21 October 2010 or 22 October 2010 via the IP Address 165.228.224.20; and c. the location of the computer and/or the modem through which the internet was accessed on 21 October 2010 or 22 October 2010 via the IP Address 165.228.224.20. 2. The Applicant have leave to use any document produced by the Respondent pursuant to the above order in the Federal Magistrates' Court Proceeding No. MLG 635 of 2010. 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 VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1005 of 2010 BETWEEN: IRREWARRA ESTATE PTY LTD (ACN 090 419 355) (TRADING AS IRREWARRA SOURDOUGH) Applicant AND: TELSTRA CORPORATION LIMITED (ACN 051 775 556) Respondent JUDGE: KENNY J DATE: 3 DECEMBER 2010 PLACE: MELBOURNE REASONS FOR JUDGMENT (EX TEMPORE) 1 This is an application pursuant to O 15A, r 3, of the Federal Court Rules 1979 (Cth), seeking orders for preliminary discovery. The matter relates to the receipt by customers of the applicant of an email in which it is said that the applicant's product, Irrewarra granola, constitutes a breach of Sanitarium's trademark "Granola". Order 15A, rule 3(1) provides: Where an applicant, having made reasonable inquiries, is unable to ascertain the description of a person sufficiently for the purpose of commencing a proceeding in the Court against that person (in this rule called the person concerned) and it appears that some person has or is likely to have knowledge of facts, or has or is likely to have or has had or is likely to have had possession of any document or thing, tending to assist in such ascertainment, the Court may make an order under subrule (2). Subrule 3(2)(b) of O 15A provides that: The Court may order that the person, and in the case of a corporation, the corporation by an appropriate officer, shall: … (b) make discovery to the applicant of all documents which are or have been in the person's or its possession relation to the description of the person concerned. That is, the orders that the Court may make under O 15A, r 3(2) include an order that a person make discovery to the applicant of all documents which are or have been in the relevant person's possession "relating to the description of the person concerned". 2 The background to this application is set out in an affidavit of Damian James Annesley Clancy, sworn on 23 November 2010. It appears from Mr Clancy's affidavit that the applicant wishes to commence proceedings in respect of an alleged breach of s 52 of the Trade Practices Act 1974 (Cth), but, having made reasonable inquiries within the meaning of O 15A, r 3(1), has been unable to ascertain the identity of the person or persons concerned, i.e., the person or persons concerned who is or are responsible for the sending of the email in question. The applicant submits that the respondent, Telstra Corporation Limited, is likely to have in its possession documents that may assist in resolving the problem; and that an order in accordance with O 15A, r 3(2)(b) – that the respondent make discovery of such documents – is appropriate and in the interests of justice. 3 The requirements of O 15A r 3 are relatively easily stated. The considerations to be taken into account in making an order for preliminary discovery under O 15A, r 3 are helpfully set out in the decision of the Full Court of this Court in Hooper v Kirella Pty Ltd (1999) 96 FCR 1 at [31] to [34]. The Full Court noted that the rule contains requirements as to reasonable inquiries and the likelihood of some person having knowledge of the facts or possession of relevant documents. First, it is noted that an order under the rule may be made against someone who is not implicated in the conduct of which the applicant complains. That is, an order may be made against a person such as Telstra, which is not itself implicated in the conduct. Second, the applicant is not required to demonstrate a prima facie case against the respondent. Third, the power to order preliminary discovery under O 15A, r 3 must not be used where the proposed proceedings would be merely speculative, and the prospect of the applicant succeeding against the person he or she wishes to sue is a material factor. Finally, the order must be, necessarily, in the interests of justice. So far as reasonable inquiries are concerned, it is clear that making them is an essential precondition to the exercise of power under the rule, but what is reasonable depends upon the context. In the present case, the range of reasonable inquiries would appear to be relatively limited. 4 I am satisfied that, in the circumstances of the case, the inquiries set out by Mr Clancy in his affidavit of 23 November 2010 are sufficient to disclose that the applicant has, in fact, made reasonable inquiries for these purposes. As a result, the applicant remains unable to ascertain the description of a person or persons sufficiently for the purpose of commencing a proceeding against him or her or them. 5 As I have said, an order may be made against a person who is merely a witness or bystander; and the applicant must show a prima facie case. In the circumstances of an application under O 15A, r 3, it is, however, unnecessary to articulate every element of the proposed cause of action at this stage. Mr Clancy has appeared before me today and outlined, in brief, the nature of a proposed action under s 52 of the Trade Practices Act, and his reason for believing that a relevant corporation may be responsible for the representations contained in the email. 6 The email contains representations that Mr Clancy maintains are false and, relevantly, misleading and deceptive. They have been sent, as I have already said, to customers of the applicant. In this circumstance, it is sufficient to say that the possible institution of the proposed cause of action is neither frivolous nor speculative; and that there is sufficient to satisfy me that the orders sought are necessary and appropriate in the interests of justice. 7 Under O 15A, r 3(1), where an applicant is unable to ascertain the description of a person sufficiently for the purpose of commencing a proceeding against that person, orders for preliminary discovery may be sought. It seems to me that the orders sought in this application (including the proposed orders concerning the account through which the internet was accessed, the identity of the person that accessed the internet, and the location of the computer or modem through which the internet was accessed) are appropriate to meet that purpose and, therefore, within the contemplation of the provision. 8 Subject to the matters that I have already discussed with Mr Clancy concerning the drafting of the proposed orders, I propose to make the orders sought. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. Associate: Dated: 21 December 2010