Industry Number Management Services Ltd. v. Objectif Telecommunications Ltd. [2001] NSWSC 97

New South Wales Supreme Court

CITATION : Industry Number Management Services Ltd. v. Objectif Telecommunications Ltd. [2001] NSWSC 97 CURRENT JURISDICTION: Equity Division FILE NUMBER(S) : SC 5179/00 HEARING DATE(S) : 15 and 16 February 2001 JUDGMENT DATE : 16 February 2001

PARTIES : Industry Number Management Services Ltd. - plaintiff Objectif Telecommunictions Ltd. - defendant JUDGMENT OF : Hodgson CJinEq at 1

COUNSEL : Mr. S. Archer for plaintiff Mr. P. Jacobson QC with Mr. M. Henry for defendant SOLICITORS : Corrs Chambers Westgarth, Sydney for plaintiff Watson Mangioni, Sydney for defendant CATCHWORDS : CONTRACT - Head contract for supply and maintenance of computing system - Sub-contract for services for that system - Contract between customer and sub-contractor dealing with intellectual property - Head contractor goes into administration - Sub-contract terminated - Customer enters into new head contract - Questions as to obligations of sub-contractor and rights to intellectual property, in new circumstances. DECISION : See end of judgment

IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION

CORAM: HODGSON, CJ in Eq.

Friday 16th February 2001

NO. 5179 OF 2000 INDUSTRY NUMBER MANAGEMENT SERVICES LIMITED V. OBJECTIF TELECOMMUNICATIONS LIMITED

JUDGMENT 1 The plaintiff INMS is a special purpose non profit company limited by guarantee, jointly owned by Telstra Corporation, Optus Networks, AAPT and Primus Telecommunications. Its special purpose is to administer and manage free phone and local rate number portability services, so that customers can change telecommunications providers without changing their existing telephone numbers. 2 On 21 December 1999, INMS entered into an agreement with I-Tel Pty Ltd, whereby I-Tel agreed to develop and support a computerised system for this purpose. I will call this agreement the DSA. 3 By an agreement made on 31 January 2000, I-Tel subcontracted part of its obligations under the DSA to the defendant Objectif. I will refer to this agreement as the subcontract. 4 On 25 August 2000, INMS, I-Tel and Objectif entered into a deed dealing with intellectual property associated with the project. I will call this the IPA Deed. 5 On 5 December 2000, I-Tel was placed into voluntary administration, and on 11 December 2000 Objectif gave notice to I-Tel terminating the subcontract. 6 In these proceedings commenced on 27 December 2000, INMS seeks a declaration that under the IPA Deed it is entitled to delivery up to it by Objectif of an electronic copy of certain software associated with the project, specifically certain source codes and run time codes and INMS also seeks consequential relief. OUTLINE OF FACTS 7 I will begin by giving an outline of relevant terms of the agreements and of some additional facts. 8 The DSA of 21 December 1999 contained a number of definitions, the following being the most relevant to these proceedings: Application Software means: (a) the application software and database developed by I-Tel (or by Objectif or any other person for I-Tel) for the purposes of this Agreement that will perform the function of number allocation, porting and number management as described in the Services Specifications; (b) web browser interface and XML interface that meet the requirements in the Services Specifications; (c) all updates and new versions of that software, including changes undertaken in accordance with clause 19.