Streetscape Projects (Australia) Pty Ltd v City of Sydney (No 2) [2013] NSWCA 240

Court of Appeal Supreme Court New South Wales Medium Neutral Citation: Streetscape Projects (Australia) Pty Ltd v City of Sydney (No 2) [2013] NSWCA 240 Hearing dates: 12 July 2013 Decision date: 26 July 2013 Before: Meagher JA; Barrett JA; Ward JA Decision: 1. The Notice of Motion filed by the City of Sydney on 14 February 2013 is dismissed with costs. 2. The Cross-Appeal is dismissed. 3. The Appeal is allowed in part. 4. Orders 2,4, 6 and 8 made by Einstein J on 2 February 2012, as varied by Einstein J on 6 February 2012, be varied to read as follows: "2. Subject to order 9 below, pending the hearing of the re-trial ordered by the Court of Appeal on 26 July 2013, the Second Defendant be restrained from causing or permitting the First Defendant to manufacture, distribute, offer for sale or sell any of the poles and accessories referred to in order 1 above. 4. Subject to order 9 below, pending the hearing of the re-trial ordered by the Court of Appeal on 26 July 2013, the Second Defendant be restrained from causing or permitting the First Defendant to disclose or permit the disclosure of or use or permit the use of any of the information referred to in order 3 above. 6. Subject to order 9 below, pending the hearing of the re-trial ordered by the Court of Appeal on 26 July 2013, the Second Defendant be restrained from causing or permitting the First Defendant to use or permit the use of any of the moulds referred to in order 5 above. 8. Subject to order 9 below, pending the hearing of the re-trial ordered by the Court of Appeal on 26 July 2013, the Second Defendant be restrained from causing or permitting the First Defendant to use or permit the use of any of the Registered Design or causing or permitting the First Defendant to use or permit the use of the moulds referred to in order 5 above." 5. Order 21 made on 2 February 2012 be set aside. 6. Order 1 made on 18 May 2012 be varied insofar as the Second Appellant is to pay the Respondent's costs other than the Respondent's costs of the Cross Claim so that the order reads as follows: "1. Order that the First Defendant pay the Plaintiff's costs in the proceedings including the Cross-Claim and reserved costs on a party/party basis until 5 August 2011 and thereafter on an indemnity basis". "2. Order that the Second Defendant pay the Plaintiffs costs in the Cross-Claim and reserved costs on a party/party basis until 5 August 2011 and thereafter on an indemnity basis". 7. The Appellants have leave to amend their Commercial List Response so as to include paragraph 17AB(b), saying, "None of the information referred to in subparagraphs (a) - (d) of 30B was at any material time confidential". 8. The proceedings be remitted to the Equity Division for re-trial on the existing pleadings (as amended pursuant to order 7 above) to determine the following issues: (a) Whether the Information referred to in paragraph 30B CLS (or any part of it) was "confidential" in the sense that an equitable duty of confidence subsisted in respect of the Information at the time that it is alleged there was unauthorised use or disclosure of that Information by the First and/or Second Appellants. (b) If and to the extent that the Information (or any part of it) was "confidential" at the relevant time: (i) whether the Information was used or disclosed by the First and/or Second Appellants in breach of an equitable duty of confidence owed to the Respondent; (ii) whether the Second Appellant was knowingly involved in or a party to such a breach by the First Appellant. (c) If so, what relief (including by way of equitable compensation) should be granted against the Second Appellant by reason of breaches of, or knowing involvement in breaches of, an equitable duty of confidence owed by the First and/or Second Appellants, such re-trial to be on the basis of the existing evidence and such further evidence as may be adduced in accordance with the reasons of the Court of Appeal of 26 July 2013 and otherwise as directed by the trial judge. 9. The Appeal is otherwise dismissed. 10. The Cross Appellant pay the Cross Respondent's costs of the Cross Appeal. 11. The First Appellant pay the Respondent's costs of the First Appellant's appeal. 12. The Respondent pay the Second Appellant's costs of the Second Appellant's appeal. 13. As between the Respondent and the Second Appellant, the costs of the original proceedings in the Equity Division (other than the Cross Claim referred to in order 6 above) be reserved for determination by the court below. [Note: The Uniform Civil Procedure Rules 2005 provide (Rule 36.11) that unless the Court otherwise orders, a judgment or order is taken to be entered when it is recorded in the Court's computerised court record system. Setting aside and variation of judgments or orders is dealt with by Rules 36.15, 36.16, 36.17 and 36.18. Parties should in particular note the time limit of fourteen days in Rule 36.16.] Catchwords: PROCEDURE - application to vary or set aside orders of the court - whether misapprehension of law and/or fact - scope of remitter Legislation Cited: Uniform Civil Procedure Rules 2005 Cases Cited: Athval Management Pty Ltd v Doherty [2000] NSWCA 277; (2000) 20 NSWCCR 687 Attorney-General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63; (2001) 208 CLR 199 Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 Bostik Australia Pty Ltd v Liddiard (No 2) [2009] NSWCA 304 Brittain v The Commonwealth (No. 2) [2004] NSWCA 427 Burrell v The Queen [2008] HCA 34; (2008) 238 CLR 218 Ceva Logistics v Redbro Investments [2013] NSWCA 46 City of Sydney v Streetscape Projects (Aust) Pty Ltd [2011] NSWSC 847 City of Sydney v Streetscape Projects (Australia) Pty Ltd [2011] NSWSC 1214 City of Sydney v Streetscape Projects (Australia) Pty Ltd [2011] NSWSC 831 Coco v A N Clark (Engineers) Ltd [1969] RPC 41 Elite Protective Personnel Pty Ltd and Anor v Salmon (No 2) [2007] NSWCA 373 New South Wales v Hathaway [2010] NSWCA 184 Smith Kline & French Laboratories (Australia) Ltd v Department of Community Services and Health (1990) 22 FCR 73 Streetscape Projects Australia Pty Ltd v City of Sydney [2013] NSWCA 2 The City of Sydney v Streetscape Projects (Australia) Pty Ltd [2012] NSWSC 10 Tobin v Ezekiel (No 2) [2012] NSWCA 409 Category: Consequential orders Parties: Streetscape Projects (Australia) Pty Ltd (First Appellant/Respondent on motion) Moses Edward Obeid (Second Appellant/Respondent on motion) City of Sydney (Respondent/Applicant on motion) Representation: Counsel: G K J Rich with Ms F Ashworth (Appellants/Respondents on motion) T M Jucovic QC with C N Bova (Respondent/ Applicant on motion) Solicitors: Colin Biggers & Paisley (Appellants/Respondents on motion) Holding Redlich (Respondent/ Applicant on motion) File Number(s): CA 2012/52247 Decision under appeal Jurisdiction: 9111 Citation: City of Sydney v Streetscape Projects (Australia) Pty Ltd [2011] NSWSC 1214 Date of Decision: 2011-10-11 00:00:00 Before: Einstein J File Number(s): SC 2009/298673 and 2010/85353