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 Judgment 1THE COURT: On 1 February 2013, this Court published reasons for judgment (Streetscape Projects Australia Pty Ltd v City of Sydney [2013] NSWCA 2), allowing in part an appeal brought by Streetscape and Mr Moses Obeid from a decision by Einstein J in favour of the City (City of Sydney v Streetscape Projects (Australia) Pty Ltd [2011] NSWSC 1214) and dismissing the City's cross-appeal. 2The appeal was allowed to the extent that it challenged the findings of existence and breach of: a fiduciary duty on the part of Streetscape; an equitable duty of confidence on the part of Streetscape; and an equitable duty of confidence on the part of Mr Obeid; and, as a consequence, the findings of knowing complicity of Mr Obeid in breach by Streetscape of fiduciary duty and an equitable duty of confidence. 3This Court concluded that the issues of existence and breach of an equitable duty of confidence by Streetscape and Mr Obeid (and knowing complicity of Mr Obeid in any such breach by Streetscape), and related issues should be remitted to the Equity Division for re-trial on the existing pleadings but with the inclusion of paragraph 17AB(b) in the appellants' Commercial List Response, which had been disallowed by the primary judge. 4The parties were directed to submit short minutes of orders to give effect to this Court's decision on the appeal, either by agreement or, if agreement was not possible, separately with brief written submissions in support of the making of the orders for which each party contended. The parties were also directed to exchange, and file, brief written submissions on costs. The parties complied with the directions for the filing of those submissions. 5In the meantime, however, on 14 February 2013, the City filed the Notice of Motion presently before this Court, seeking the setting aside or variation of the judgment of 1 February 2013 or, in the alternative, an order that certain paragraphs of the judgment be set aside or varied (those being paragraphs [1], [60]-[71], [132]-[180] and [237]-[239]). In essence, the particular paragraphs so identified in the alternate claim for relief are those paragraphs of the judgment of Barrett JA (referred to herein as the principal reasons) dealing with the City's claim against Streetscape and Mr Obeid based on an alleged equitable duty of confidence and the concurring reasons of Meagher and Ward JJA, respectively. 6The City's application is brought pursuant to Part 36 Rule 36.16(1) and/or Part 36 Rule 36.16(3A) of the Uniform Civil Procedure Rules 2005 (NSW). The City contends that this Court's judgment proceeded on misapprehensions of fact and/or law, the nature of which will be identified shortly. Background to the present application 7The facts giving rise to the dispute between the City, on the one hand, and Streetscape and Mr Obeid, on the other, are set out in the principal reasons and need not here be repeated. 8Relevantly, for the purposes of the present application, in paragraph 30 of the Second Further Amended Notice of Appeal, under the heading "Claims based on confidential information", Streetscape and Mr Obeid contended that the primary judge had erred in awarding damages or equitable compensation against Streetscape in respect of the disclosure or use of confidential information in circumstances where: (d) Having identified that the first criterion to make out a case in equity for the protection of confidential information was that the plaintiff must be able to identify with specificity and not merely in global terms that which is said to be the information in question, the Trial Judge made no finding of facts about what specifically was confidential information which could attract a duty in equity [there, expressly referring to his Honour's judgment at [466]]. 9The City, by way of an Amended Notice of Contention, directly addressed the possibility that the above error were to be established. Ground 1 of that Amended Notice of Contention was as follows: 1. The appellants allege at ground 30(d) of their Notice of Appeal that the trial Judge made no finding of facts about what specifically was confidential information which could attract a duty in equity. In the event (which is denied) that the trial Judge made the error alleged, the respondent contends that the trial Judge ought to have found that the Product Manual and Specification and any of the drawings referred to in Order 3(c) - (h) made on 1 February 2012 (being the documents referred to in the particulars referred to in Exhibit P65) could and did attract a duty of confidence in equity. Relevant legal principles on current application 10There was no dispute between the parties as to the relevant legal principles applicable on an application, such as this, to set aside or vary part or all of a judgment under Part 36.16 of the Uniform Civil Procedure Rules. The applicable principles are those discussed by Mason CJ in Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 302-303). 11In summary, the power sought to be invoked by the City in its present application is to be exercised with great caution, having regard to the importance of the public interest in the finality of litigation. It is enlivened where a court has "apparently proceeded according to some misapprehension of the facts or the relevant law" and where that misapprehension cannot be attributed solely to the neglect or default of the party seeking to set aside or vary the judgment. The jurisdiction is not to be exercised for the purpose of re-agitating arguments already considered by the court or "to provide a backdoor method by which unsuccessful litigants can seek to reargue their cases". (To similar effect are the statements in Tobin v Ezekiel (No 2) [2012] NSWCA 409 at [7] and Burrell v The Queen [2008] HCA 34; (2008) 238 CLR 218 at 223 [15].) Basis of application to set aside/vary judgment 12The City points to three matters in respect of which it contends that there has been a misapprehension by this Court as to fact or law sufficient to enliven the jurisdiction under Rule 36.16. First, it submits that there was a misapprehension of what occurred during the course of evidence given at the hearing by Mr Newman (a witness called for the City who had been involved in the development of the Smartpole). Second, it contends that there was a misapprehension as to the "role played" by the rejected paragraph 17AB(b) of the appellants' Commercial List Response in the proceedings before the primary judge, particularly in the context of the operation of Rule 14.14 of the Uniform Civil Procedure Rules 2005 (NSW). Third, it contends that there was either a misapprehension as to the operation of Rule 51.53 of the said Rules or as to the test required to be applied when considering whether to remit a matter to the Court below. Each of those matters will be addressed in due course. Basis on which appeal in relation to equitable duty of confidence claims was upheld 13At the outset, it is important to recognise that the finding of this Court was that the primary judge had failed to identify with the necessary specificity the information that was the subject of the alleged equitable duty of confidence. At [177] of the principal reasons it is said: [177] The judge decided that the whole of "the Information", as he defined it (being the Intellectual Property, the Confidential Information, the Product Manual and the Specification, all as defined by the licence agreement), was of a confidential quality in the sense relevant to an equitable duty of confidence. There was, in that connection, an apparent absence of engagement with the factual issues relevant to the formation of the necessary opinion - particularly issues of lack or loss of confidentiality because of the ability of anyone wishing to do so to examine poles erected in public places and because of the availability of various kinds of widely disseminated materials. ... (emphasis added) 14The conclusion that his Honour had failed to make the findings necessary to ground a claim for relief for breach of an equitable duty of confidence was not dependent on the conclusion drawn either as to the rejection of paragraph 17AB(b) in the appellants' Commercial List Response or as to the rejection of evidence that the appellants had sought to adduce as going to the existence or maintenance of confidentiality in the information provided to them by the City. 15The primary judge had recorded (at [263] of his judgment) the submission on the part of Streetscape and Mr Obeid that the City "did not particularise what material was confidential and [that] even if it did, the material did not have the necessary character of confidence" but proceeded to conclude (at [469]-[471]) that "the quality of confidence" in the whole of the information itemised at paragraph 30B of the City's Commercial List Statement was confidential on the basis that this was "readily apparent". 16In relation to those latter paragraphs, it was noted at [164] of the principal reasons that there was very little reference by his Honour to factual matters going to the confidential quality of the whole of the material identified in paragraph 30B. The complaint by Streetscape and Mr Obeid as to the deficiency in fact-finding was only partially reliant on the grounds of appeal going to rejection of evidence that they said was material to that issue. 17In Coco v A N Clark (Engineers) Ltd [1969] RPC 41, cited by Gleeson CJ in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63; (2001) 208 CLR 199, it was made clear that an essential element of a claim for an equitable remedy in this context is that the information is confidential. It is necessary that the particular information be specifically identified, not merely in global terms (Smith Kline & French Laboratories (Australia) Ltd v Department of Community Services and Health (1990) 22 FCR 73 at 87). If information that was confidential has later entered the public domain, then there may no longer be an enforceable duty not to disclose or use that information. 18The appellants sought to resist the City's equitable duty of confidence claims by challenging not simply the confidentiality of the information when it was provided to them but also the subsistence of any such confidentiality once part or all of the information had passed into the public domain, i.e., whether it had become "so generally accessible that, in all the circumstances, it cannot be regarded as confidential" (Attorney-General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109, per Goff LJ at 282). 19None of the arguments advanced on the present application has identified any misapprehension of fact or law relating to the conclusion that his Honour did not make the findings necessary to ground a claim for relief for breach of an equitable duty of confidence and did not grapple sufficiently with the matters raised or sought to be raised on the issue of confidentiality of the relevant information. 20It follows that the application by the City for an order dismissing the appeal in its entirety amounts to an invitation for this Court to reconsider matters already determined; a course recognised in Autodesk as not appropriate on an application such as the present. 21The particular matters raised as indicating an apparent misapprehension of fact or law are, properly understood, matters that go to whether this Court should have determined to remit to the Equity Division the issues relating to the alleged equitable duty of confidence or should, instead, have determined those matters on the basis of the material that was available to the primary judge, together with any material found to have been wrongly rejected by his Honour. What the City contends in that regard is that this Court failed to address ground 1 of its Amended Notice of Contention. 22It is not correct to say, as the City has in effect contended, that the reason that this Court held that the appeal in relation to the equitable duty of confidence claims should be allowed was that the primary judge had erred in excluding paragraph 17AB(b) from the appellants' Commercial List Response. The reason that the appeal in relation to the equitable duty of confidence claims succeeded was the failure of the primary judge to identify with specificity the information that was found to be confidential and to have been used by Streetscape otherwise than in accordance with the Licence Agreement. The application for an order dismissing the appeal in relation to breaches of equitable duties of confidence and knowing complicity therefore fails. Alleged misapprehensions of fact and/or law 23Turning then to the three matters that the City contends warrant, collectively or alone, the setting aside or variation of the judgment, they are said to arise as follows. (i) Alleged misapprehension as to the evidence of Mr Newman 24The first matter to which the City points is the reference at [172]-[173] of the principal reasons to the rejection by his Honour of the question put to Mr Newman in cross-examination that is set out at [166] of the reasons. At [172]-[173], in the context of considering the evidentiary grounds of appeal that had been raised by the appellants, it was noted that: [172] The parts of the evidence of Mr Newman, Dr Green and Mr McLeod that the judge did not allow to be adduced went to two related questions: first, whether substantial parts of the relevant information were in truth confidential when imparted by the City to Streetscape (and thereby to Mr Obeid); and, second, whether initial confidentiality was lost at some future time. The evidence was directed to what was observable by simple inspection of poles already erected and what could be learned by inspecting generally available materials, including patent specifications and promotional and other literature accessible on the internet and elsewhere. [173] The judge declined to allow the trial to take a course that tested the proposition (advanced by the City) that relevant information was confidential when imparted and remained confidential at all relevant times thereafter. His Honour referred in his 4 August 2011 reasons to the indication by Streetscape and Mr Obeid that they would seek to elicit evidence in cross-examination of the City's witnesses to make good the argument that various disclosures had destroyed any confidentiality (see [143] above). The judge expressly disallowed that course in relation to Mr Newman and Dr Green. He cut off at their very inception lines of questioning of those witnesses which went directly to a central issue; and he refused to allow Streetscape and Mr Obeid to adduce evidence on the subject through Mr McLeod's affidavit. 25There is no dispute that the primary judge disallowed a question put to Dr Green (an expert called for the City) as to what could be observed by a person reading a patent relating to an earlier version of a multi-function pole like the Smartpole; nor that his Honour rejected parts of an affidavit relied upon by the appellants (Mr McLeod's affidavit) in which Mr McLeod referred to publicly available information about various multi-function poles and components that he had seen in Australia and elsewhere, including photographs Mr McLeod had exhibited to his affidavit and extracts from websites of several pole manufacturers or suppliers. 26Rather, it is pointed out by the City that although his Honour initially disallowed the following question put to Mr Newman in cross-examination: Would you agree that you can see by looking at the pole all of the essential features of the Smartpole? as recorded at [166] of the principal reasons, that question was subsequently allowed and answered. The circumstances in which this occurred were that his Honour heard argument on the objection made to the question, reserved his decision on that issue, gave his ruling when the Court next resumed (disallowing the question) and then, following further debate with Mr Couper QC, who then appeared for the appellants, allowed the same question to be asked and answered. 27His Honour's reasons for first rejecting the question were set out in an interlocutory judgment published on 8 August 2011 (City of Sydney v Streetscape Projects (Aust) Pty Ltd [2011] NSWSC 847), from which it is clear that his Honour considered that the question went to the possibility that Smartpoles manufactured elsewhere had been "reverse engineered" from Smartpoles already in existence pursuant to the Licence Agreement between the respective parties (see [7] of those reasons). 28His Honour noted that Mr Couper had asserted an entitlement to put the question on the basis that the pleading gave rise to a question whether, once the pole was in the public domain, its design was no longer confidential and that, since the pleading indicated that confidentiality of the pole was an issue, he should be allowed to cross-examine on it. However, his Honour rejected that proposition. His Honour considered that a careful reading of paragraphs 4(4A) and 17(e)(viii) of the Commercial List Response did not indicate that reverse engineering was going to be an issue (though accepting that the pleading did indicate that there would be an issue as to whether placing a pole in the public domain removed confidentiality); considered that there had been a failure by the appellants to comply with Rule 14.14; and therefore held that the appellants were not entitled to pursue that line of cross-examination. 29When his Honour's interlocutory reasons were published, there was an exchange between Counsel and his Honour (at Black 3/1178-1180) as to the parameters of permissible cross-examination in light of that ruling. Mr Couper sought to maintain questioning going to the issue of confidentiality; Mr Jucovic QC, appearing for the City, maintained objection to any question directed to "a process of engaging in reverse engineering". 30The question was ultimately allowed on the basis that Mr Jucovic had indicated that there was no objection to questions in that area as long as they did not venture into territory "beyond the pleadings". His Honour appears implicitly to have endorsed, and Mr Couper accepted, that limitation. 31The evidence then given by Mr Newman was as follows (from Black 1/86M-X): Q. Can I ask you this question. Would you agree with me that you can see, by looking at the Smartpoles which have been erected in the streets of the CBS of the city of Sydney, all the essential features of the Smartpole? A. You see as much as you can see from the street yes. Q. Would you agree that what you can see from the street is all the essential features of the Smartpole? A. No, because you cannot see properly inside the track which is quite important to the Smartpole. 32As Mr Jucovic points out, the above exchange was drawn to this Court's attention on the appeal (on 27/11/12 at T 21.17). The reference at [166] to the disallowance of this question did not refer to the later allowance of the question. This was an oversight. It was therefore incorrect to include (at [172]-[173]) reference to the disallowance of that course of cross-examination of Mr Newman, at least without acknowledging that the question was later allowed subject to an apparent limitation that it could not be used to support an unpleaded issue as to the possibility of reverse engineering of the Smartpole. 33It is submitted by Mr Jucovic that paragraph [174] of the principal reasons was therefore erroneous, at least insofar as it relied on the questioning of Mr Newman. That paragraph was as follows: [174] In those ways [i.e., in the ways referred to in [172]-[173]], his Honour showed that the positive decision to exclude paragraph 17AB(b) from the case was not somehow offset or blunted by the existence of either the introductory words of paragraph 17AB of the revised commercial list response or paragraph 4(4A). The confidential quality of the information was a central pillar of the City's case based on an equitable duty of confidence introduced in August 2011 through the fifth further amended commercial list statement. 34However, the conclusion reached in [174], as Mr Jucovic's submission implicitly accepts, did not rest solely on the disallowance of the question put to Mr Newman. The primary judge did cut off, at its inception, the similar line of questioning of Dr Green and did reject evidence from Mr McLeod that went to his observation of other multi-function poles (although only one of the photographs sought to be tendered was taken of poles existing prior to the Licence Agreement). To the extent that the rejection of that evidence demonstrated the same or similar reasoning that had led to the initial disallowance of the question put to Mr Newman, it shows that the general denial of paragraph 30B and the response to the breach of contract case in paragraph 4(4A) were not perceived as sufficient to allow questions going to the confidential quality of the information, that would arguably have been permitted had paragraph 17AB(b) been allowed. 35His Honour's reasons for initially disallowing the question put to Mr Newman make it clear that his Honour regarded the question whether the features of the Smartpole could be discerned by observation from the street and, similarly, as to what could be discerned from the earlier patent, as going in substance to the "reverse engineering" issue. The conflation of the reverse engineering issue and the "no confidentiality" issue revealed an approach by his Honour that was inconsistent with him engaging fully in the identification of what was or was not confidential information that was used in relation to the poles. 36While it is accepted that [166] was incomplete in not referring to the subsequent allowance of the Newman question, this does not alter the fact that other evidence was excluded by his Honour that went to the quality (or maintenance) of confidentiality in the poles. Nor was the reference to the disallowance of the question put to Mr Newman on 5 August 2011 relevant to or determinative of the ultimate conclusion on the equitable duty of confidence issue on the appeal, which was that his Honour had failed to identify with specificity the relevant confidential information. 37The only variation necessary to the principal reasons to address this first matter is that which would make clear that the question at [166] was later asked and answered by Mr Newman, namely to amend [172] and [173] to read as follows: [172] The parts of the evidence of Mr Newman, Dr Green and Mr McLeod that the judge did not allow (or, in the case of Mr Newman, did not at first allow) to be adduced went to two related questions: first, whether substantial parts of the relevant information were in truth confidential when imparted by the City to Streetscape (and thereby to Mr Obeid); and, second, whether initial confidentiality was lost at some future time. The evidence was directed to what was observable by simple inspection of poles already erected and what could be learned by inspecting generally available materials, including patent specifications and promotional and other literature accessible on the internet and elsewhere. [173] The judge declined to allow the trial to take a course that tested the proposition (advanced by the City) that relevant information was confidential when imparted and remained confidential at all relevant times thereafter. His Honour referred in his 4 August 2011 reasons to the indication by Streetscape and Mr Obeid that they would seek to elicit evidence in cross-examination of the City's witnesses to make good the argument that various disclosures had destroyed any confidentiality (see [143] above). The judge expressly disallowed that course in relation to Dr Green. He cut off at their very inception lines of questioning of Dr Green which went directly to a central issue; and he refused to allow Streetscape and Mr Obeid to adduce evidence on the subject through Mr McLeod's affidavit. (amendments italicised) (ii) Alleged misapprehension as to exclusion of paragraph 17AB(b) from the Commercial List Response 38The second matter that it is submitted was misapprehended by this Court was the "role" played by paragraph 17AB(b) in the proceeding below (or, perhaps more precisely, the role that it would have played had it been allowed by his Honour). In particular, it is submitted that the principal reasons (in accepting the appellants' submission that the primary judge did not allow the appellants to raise the issue of the confidential quality of the "Information", as defined) proceeded on an erroneous understanding of the context in which s 17AB(b) was rejected. 39The context in which the primary judge disallowed the inclusion of paragraph 17AB(b) was broadly addressed in the principal reasons. 40The equitable duty of confidence claims did not form part of the City's pleaded case until introduced by paragraph 30B of the Sixth Further Amended Commercial List Statement that was filed pursuant to leave granted by the primary judge after the hearing had commenced. 41Paragraph 30B alleged as follows: 30B Further or in the alternative to paragraphs 29, 30 and 30A above, Streetscape Projects and/or Moses Edward Obeid owed the City of Sydney an equitable duty not to disclose or make use of the: (a) Intellectual Property (as defined in the Licence Agreement) used in the manufacture and supply of Smartpoles; (b) Confidential Information (as defined in the Licence Agreement); (c) Product Manual (as defined in the Licence Agreement) and/or (d) Specification (as defined in the Licence Agreement). other than in accordance with the terms of the Licence Agreement. 42Each of the items in (a)-(d) thus incorporated definitions used in the Licence Agreement. The term "Confidential Information" was defined in the Licence Agreement in very broad terms as meaning "all ideas, concepts and information concerning the Intellectual Property disclosed by the Licensor to the Licensee, including all information contained in the Specification and the Product Manual". 43The proposed paragraph 17AB(b) was part of the appellants' response to paragraph 30B. It followed the assertion, in paragraph 17AB(a), that the City had not identified with any specificity any of the alleged confidential information. Paragraph 17AB(b) then stated that none of the information was "at any material time confidential". Mr Couper (at Black 3/1137S-1138J) indicated that it had been thought appropriate to include an express contention that the information was not confidential (so as to avoid any suggestion of surprise) and stated that if paragraph 30B of the City's Commercial List Statement sufficiently raised, by implication, the allegation that all the information was confidential, then the denial of the contentions in that paragraph in the preamble to paragraph 17AB would serve the same purpose as paragraph 17AB(b). 44The primary judge published interlocutory reasons on 4 August 2011 for his decision to refuse leave in respect of various paragraphs of the appellants' proposed Commercial List Response (City of Sydney v Streetscape Projects (Australia) Pty Ltd [2011] NSWSC 831). However, his Honour's reasons did not specifically advert to the basis on which paragraph 17AB(b) was disallowed. 45Paragraph 17AB, described by his Honour (at [23]) as the "no confidentiality" pleading, was considered together with other amendments grouped under the rubric of the "loss of confidentiality" pleading (namely, paragraphs 17(e)(ix)-(xiv) and 17(h)). His Honour noted (at [48]) that the amendments under this category were to claim that the drawings and specifications in relation to Smartpoles were not confidential or alternatively that confidentiality in the designs was lost; and to raise a new argument that the drawings were in all material respects the same as those provided to a third party (and hence were drawings in respect of which confidentiality had been lost). 46His Honour noted that the City had objected to certain of the amendments on the basis that particulars had not been provided of the facts, matters and circumstances concerning the disclosures said to have been destructive of confidentiality. The City had referred in its submissions to a statement by the appellants that they intended to seek to elicit the relevant evidence in cross-examination of witnesses called by the City. It had been submitted by the City, in relation to a statement for the appellants that there were (unidentified) documents that might be tendered, that once particulars were provided this might open up "a new area of factual inquiry that may need to be responded to". 47In addressing the "loss of confidentiality" and "no confidentiality" paragraphs as a group, his Honour seems to have focussed on the "proposed re-agitation" of a controversy in relation to certain drawings (the 6400 Issue A Drawings) and other drawings, which he said was not an area of factual controversy that was live on the evidence of the parties and was not pleaded. His Honour considered that the appellants were seeking "to raise new defences in relation to pre-existing claims which are not the breach of equitable duty claims" and rejected the amendments on that basis (at [55]). 48Paragraph 17AB(b), however, was not in its terms directed to the "drawings" controversy to which his Honour had referred. Mr Jucovic concedes that the only basis on which there was objection to its inclusion in the Commercial List Response was the lack of particularisation of that allegation (which it was said amounted to non-compliance with the "no surprise" rule in Rule 14.14). 49On appeal, Streetscape and Mr Obeid maintained that the primary judge had erred in not allowing them to maintain the denial that none of the information was at any time confidential and hence that his Honour had erred in not permitting them to raise the issue of the confidential quality of relevant information. 50The City, on the other hand, maintained that the relevant question was before the primary judge, despite the exclusion of paragraph 17AB(b), having regard to the general denial in paragraph 17AB of the contentions in paragraph 30B and to paragraph 4(4A) of the appellants' Commercial List Response, which stated (in response to the breach of contract claim) that: 4. In answer to paragraph 4, Streetscape Projects admits that it entered into a Licence Agreement with the City on 26 August 2002 (the Licence Agreement) but does not admit the remainder of paragraph 4 and further says: ... (4A) Further, any information which may be confidential (which is not admitted) to the extent to which it is disclosed by or in multi-function streetpoles which the City refers to as 'Smartpoles' ceased to be confidential upon supply and creation of the poles in public and/or in any event has been disclosed in public in hard copy and electronic advertising and promotional material of many of the competitors of Streetscape Projects (clause 9.3(d)). 51This Court did not (and does not now) consider that the non-specific denial of paragraph 30B and the non-admission in paragraph 4(4A) sufficiently raised before the primary judge the issue as to the confidential quality of the relevant information as part of the case concerning claims based on the alleged equitable duty of confidence (see [147], [148] of the principal reasons). That conclusion is not affected by the circumstance that the basis for the City's objection to that paragraph was a complaint as to lack of particularisation of the assertion. The correctness of that conclusion is one that cannot properly be re-agitated on an application such as the present. 52The submissions for the City on this aspect of the present application relate in substance to the manner in which the appellants had put submissions at the hearing in relation to the proposed amendment and the consequences (or lack thereof) of disallowance of that paragraph for their pleaded case. In essence it was submitted that the appellants' submissions did not properly characterise the way the case was put at trial and that the disallowance of the paragraph had had no effect on the way the case was run at the trial. 53Mr Jucovic pointed to submissions put for the appellants to the effect that the general denial of paragraph 30B (and/or other parts of their Commercial List Response) permitted them to raise the issue of the confidential quality of the relevant information and to exchanges that had taken place in the course of disputes in relation to the admissibility of the question put to Dr Green and the McLeod evidence that went to the complaint as to lack of particularisation of the claim (see Black 3/1186N-1187Q and Black 3/1192M-3/1194B). 54It is submitted that [175] of the principal reasons is therefore in error and that the decision of Einstein J to exclude paragraph 17AB(b) had no effect on the course of the trial, which would have been the same even had paragraph 17AB(b) been allowed. At [175], it was said: [175] The inescapable conclusion is that the primary judge erred in refusing to allow paragraph 17AB(b) to be included in the defence to the fifth further amended commercial list statement and, in particular, by excluding the particular items of evidence and precluding relevant lines of questioning. While an appeal court should be slow to interfere with a decision on a matter of procedure, the error here was highly prejudicial to the process of seeking a just outcome. (emphasis added) 55The error identified in his Honour's rejection of paragraph 17AB(b) of the Commercial List Response was not to be seen in isolation. It can be seen as having had the effect of leading his Honour to exclude the evidence sought to be adduced from Dr Green as to what could have been observed from the earlier patent (in that His Honour clearly did not accept that such a question was permissible in the context of the general denial of paragraph 30B in the preamble to paragraph 17AB or the denial of confidentiality in the breach of contract case). That Mr Couper (unsuccessfully) sought to support the rejected question directed to Dr Green on that basis, and the objection made thereto by the City that this went to an issue not in the pleadings and was thus of no relevance (see Black 1182J; Black 1182P; Black 1185M and Black 1192K-1193C), demonstrates the way in which the rejection of paragraph 17AB(b) had an undeniable impact on the course of the trial. In this regard, the submission made on the present application for the City to the effect that any adverse consequences of the rejection of paragraph 17AB(b) flowed from the refusal by the appellants to provide particulars (or, perhaps more accurately, their assertion that they were not obliged to provide particulars of the evidence they sought to adduce in cross-examination) is not to the point. It might equally be said that the City chose to object to the insertion of paragraph 17AB(b), and subsequent steps in the trial, on the pleading point and cannot now complain if this Court considers that the paragraph in question, and lines of questioning or evidence that was sought to be adduced in support of the contention in the rejected paragraph, should not have been rejected. 56The question as to the rejection of paragraph 17AB(b) and the consequences of that rejection were considered in the principal reasons. The City has not demonstrated that there was a relevant misapprehension of the facts requiring this Court's conclusion on those matters to be re-opened. The conclusions stated in [176] of the principal reasons record the view of this Court, albeit that the reference to the evidence of Mr Newman in that paragraph should be deleted. (iii) Alleged misapprehension as to criteria for ordering a new trial 57The third misapprehension perceived to have infected the principal reasons concerns the basis on which the matter was remitted to the Equity Division for re-trial on the issues relating to the equitable duty of confidence claims. 58Mr Jucovic points to Rule 51.53 and submits, first, that this Court may have failed to consider whether "some substantial wrong or miscarriage has been occasioned" by the primary judge's refusal to allow paragraph 17AB(b) to be included in the Commercial List Response and, second, that if this Court did consider that question then it may not have fully appreciated the evidence of Mr Newman, the evidence of Mr Matchett (at Black 1/377J-T) and the availability in the appeal books of the photographs of competitors proposed to be tendered through Mr McLeod (at Blue 15/5241-5245, 5285, 5366, 5402 and 5416) and the patent on which Mr Couper sought to cross-examine Dr Green (at Blue 1/111-116). 59Further, it is submitted by Mr Jucovic that in referring, at [177] to Athval Management Pty Ltd v Doherty [2000] NSWCA 277; (2000) 20 NSWCCR 687, this Court misstated or misapprehended the relevant test when considering whether to remit the matter to the Equity Division. At [177], following the conclusion that the primary judge had failed to engage with the factual issues relevant to the formation of the necessary opinion on the equitable duty of confidence issue, the following observation was made: [177] ...The position is, in my opinion, as described by Heydon JA (as he then was) in Athval Management Pty Ltd v Doherty [2000] NSWCA 277; (2000) 20 NSWCCR 687 at [31]: "The primary judge's error rested on misdirection and non-direction leading to a failure to determine the particular relevant facts one way or the other. Prima facie that calls for a new trial unless it is open for this Court to decide the factual questions for itself. That could only be done if the answer were inevitable. The answer is not inevitable and accordingly, regrettably, the matter must be remitted to the Compensation Court for further hearing." 60This Court did not lightly reach the conclusion that part of the case should be remitted for re-trial. Nor did it do so without regard to Rule 51.53. It is not the case that there was a need specifically to refer in the principal reasons to that rule when making the decision to remit. It should be clear from the principal reasons read as a whole on this issue that the view reached by this Court was that there had been a substantial wrong in the determination of the equitable duty of confidence claim without proper engagement in the factual issues in the case. 61Mr Jucovic maintains that this Court should have made its own decision on whether the excluded evidence would have made any difference to the outcome of the case and should have determined (in considering the Amended Notice of Contention) that the material in the Product Manual, Specification and drawings there referred to were confidential. 62With respect, that appears to invite this Court to fall into the same error as that of the primary judge. 63In its Amended Notice of Contention, the City did not seek to support the primary judge's findings in respect of the equitable duty of confidence by reference to the Confidential Information (or Intellectual Property) as defined in the Licence Agreement. Rather, it placed reliance only on the Product Manual and Specification and drawings referred to in orders made on 1 February 2012. 64The terms Product Manual and Specification were defined in the Licence Agreement as follows: "Product Manual" means the manual for the assembly, configuration and installation of the Smartpole poles and their accessories annexed to this Agreement and marked "B", as that manual may be developed, refined or improved during the Licence Period. "Specification" means the specification annexed to this Agreement and marked "A" as that specification may be developed, refined or improved during the Licence Period. 65Mr Jucovic also submits that this Court can readily compare the information in the identified drawings with that in the relevant patent in order to conclude whether there had been public disclosure of the information in the drawings (placing emphasis on the lack of dimensions in the patent). 66The patent in question (at Blue 1/111-136) contained various drawings. Mr Jucovic pointed not only to the lack of any dimension or scale in the drawings but also to differences in the drawings and particular features of the Smartpoles. So, for example, it was submitted that a comparison of the patent and what was contained in the issue C drawings in Blue 5/1674 (showing a cross-section of the upper extrusion) and Blue 5/1585 illustrated that the drawings did not correspond to anything in the earlier patent. Reference was also made to other of the drawings (at Blue 1590, 1601, 1603, 1609 and 1617). 67While the primary judge suggested that it was "readily apparent" that all of the information in the itemised information was confidential, this Court concluded (at [178] of the principal reasons) that it is not in a position to carry out that task because relevant evidence (such as that of Dr Green in relation to the earlier patent) has been excluded. This is particularly so in circumstances where what is required is more than simply a lay observation of the product specifications, comparison of drawings and the like. 68The fact that this Court had before it Mr Newman's rejected evidence and the excluded photographs of Mr McLeod did not require a different conclusion. Similarly, the evidence given by Mr Matchett under cross-examination (at Black 1/377J-T) does not meet the difficulty perceived by this Court in attempting such an exercise. 69Implicit in the conclusion at [178], and the recognition at [180] that the issue as to the confidentiality of the information was not an all or nothing issue and that a possible outcome upon re-trial might be that only some part of the totality of information identified by the primary judge as confidential was truly of that quality, is a rejection of the contention pressed by the City in ground 1 of its Amended Notice of Contention that the primary judge's conclusion could be affirmed simply by reference by this Court to the more limited range of information there identified (even assuming that certain of the rejected evidence were available to this Court). 70As to the reference made to Athval Management, this was not intended as more than as an authority in support of the recognition that if there has been improperly excluded evidence and the appellate Court (as here) does not consider itself to be in a position to decide the factual questions for itself, then the matter must inevitably be remitted if otherwise there would be a substantial wrong or miscarriage of justice. The relevant principles and the earlier decisions of this Court discussing them are referred to in New South Wales v Hathaway [2010] NSWCA 184 at [140], [141]. The fact that the Court in Athval Management did not have the jurisdiction to determine disputed factual issues is not a relevant point of distinction. Athval Management was recently cited with apparent approval by this Court in Ceva Logistics v Redbro Investments [2013] NSWCA 46. Scope of remitter 71Reference was made by Mr Jucovic to the findings made by his Honour as to the means by which the City became aware in mid-2008 of the marketing of Smartpoles by Streetscape International in the Middle East; the contentions by the City of breach of contract and breach of the equitable duty of confidence involving disclosure to Streetscape International; the denial by Streetscape and Mr Obeid of any involvement in any business in the United Arab Emirates or of making use of the information for the manufacture of Smartpole poles; their denial of any association with Streetscape International and their claimed lack of awareness of what poles were being manufactured by Streetscape International. 72Mr Jucovic notes that Einstein J rejected the evidence of Mr Obeid as to Streetscape's involvement with Streetscape International in the United Arab Emirates and made adverse credit findings in respect of him (see [133], [141]), his Honour concluding at [142] that he formed the view that Mr Obeid had falsified evidence in order to assist his case. (Reference is also made to the findings by his Honour as to what had happened in the United Arab Emirates (at [357]); and the findings at [433-435] in relation to Streetscape's conduct and at [476]-[479] as to Mr Obeid's knowledge and involvement in that conduct.) Mr Jucovic further notes that there were findings by his Honour in relation to the distribution of the poles in the United Arab Emirates and the use of information to manufacture those Smartpole poles (relevant to both the contract case and the equitable duty of confidence case); that the appeal grounds relating to the contract case were abandoned; and that the ground of appeal relating to the duty of confidence case was limited to the issue of specificity and whether the information had a quality of confidence. 73It is submitted by Mr Jucovic that in those circumstances a retrial of all matters relating to whether there was an equitable duty of confidence in relation to the defined "Information" and whether any such duty was breached would effectively require a rehearing in relation to detailed findings that have already been made in the contract case (to which there is now no challenge). Mr Jucovic submits that this goes not only to the question whether the Court could be satisfied that there has been a substantial wrong or miscarriage by reason of any the interlocutory errors and whether there ought to be a retrial but also to the scope of any remitter. In response, the appellants point to the fact that the findings made in the contract case do not include findings as to what particular aspect of the information was "used", when such use was made and whether that particular aspect was in the public domain by that time. 74Mr Jucovic submits that any remitter should be limited to obtaining evidence that would otherwise have been received in order to permit the determination of a particular issue, referring to Rule 51.2(3) of the Uniform Civil Procedure Rules that permits the Court, on terms, to make any order to ensure that there is a determination on the merits of the real question in controversy. In particular it is submitted that since the findings in [479] of his Honour's reasons were not challenged in the appellants' grounds of appeal, the remitter should not re-open the findings at [477]-[479] below. 75Those findings were: [477] The further finding is that Mr Moses Obeid was actively involved with Streetscape in establishing a business in the UAE under the name "Streetscape International" for the purpose of manufacturing and selling Smartpoles in the UAE and elsewhere in the Middle East. [478] The finding is that Mr Moses Obeid was actively involved in Streetscape vesting its knowledge, skills and intellectual property relating to the Smartpole in Streetscape International and in Streetscape International's use of that knowledge, skill and intellectual property to manufacture and sell Smartpoles in the UAE and elsewhere in the Middle East commencing in and continuing after 2003. [479] Each of the above matters involved the unauthorised use or disclosure of the Information to the detriment of the City which had provided the Information to Streetscape and Mr Moses Obeid in confidence. 76The City submits that if there is to be a retrial on the issues relating to the equitable duty of confidence claim, the ambit of the retrial should be confined to particular issues relating to the disallowed cross-examination of Dr Green and the rejected evidence of Mr McLeod. 77It is submitted by the appellants that this Court should not make additional orders restricting the evidence that may be relied upon at the new trial to the existing evidence, plus a limited amount of additional material, having regard to the findings made in the principal reasons at [148] and [171]-[177]. 78When the appeal was heard, there was an exchange (at T 19 on 26 November 2012) as to the scope of the remitter. The appellants' Further Amended Notice of Appeal filed on 20 September 2012 had sought, by way of alternative relief to the dismissal of the claims against Mr Obeid, remitter of the proceedings for further hearing on the following issue: Whether the information referred to in [458], [459], [478] and [479] of the Judgment was "confidential", in the sense that an equitable duty of confidence subsisted in respect of the Information, as at 2003, when the Second Appellant's involvement in the "unauthorised use or disclosure" of the Information was found to have commenced (at [478]-[479])? 79Meagher JA raised with Mr Walker SC, then appearing for the appellants, the question of what then would follow from a finding on such an issue; such as whether the information was disclosed and, if so, what use was made of it and what followed therefrom. The Second Further Amended Notice of Appeal was later handed up, addressing the position if there were to be a remitter on the question of confidentiality. It was not then the position of the appellants that they would be seeking to "spend time re-ploughing other ground", referring to matters not then the subject of separate appeal by them. 80In that context, it was not suggested for the City that any remitter should be restricted in terms of process. Rather, there was objection on 27 November 2012 by Mr Jucovic to the expansion of any remitter beyond the limit of the issue whether the information was confidential. 81Insofar as there are findings by his Honour on aspects of the breach of contract case that were not challenged on appeal, and those findings are relevant to the equitable breach of confidence claim, and there are unchallenged findings at [477]-[478] in relation to the equitable duty of confidence claim, then the appellants should be bound by those findings. The difficulty with [479], however, is the fundamental difficulty with the findings on this claim - namely, that it does not identify with specificity the information there alleged to have been used or disclosed. The difficulty with a limitation of the processes to be involved in the retrial to the two issues referred to above (of the kind proposed in the draft order 8 put forward by the City) is that it is not clear what forensic decisions may have been made during the hearing by the appellants following the ruling in relation to paragraph 17AB(b) and it is not appropriate to fetter the judge hearing the matter on the retrial. The more appropriate course is for the extent of further evidence at the retrial to be the subject of rulings made at the retrial. Orders to give effect to the judgment of 1 February 2013 82For the reasons set out above, the City's motion to set aside or vary the judgment is dismissed. It follows then that orders should be made to give effect to those reasons. Both parties have filed submissions as to the appropriate orders, including costs orders, to be made in the event that the City's present application were to be unsuccessful. 83As noted above, the parties differ as to the scope of the issues to be remitted for retrial and as to whether any orders should be made relating to the process by which the retrial is to take place. There are also differences in relation to whether amendment should be made to various of the orders made at first instance against Mr Obeid, as well as differences as to costs. 84The question as to the scope of the re-trial has been considered above. As to the orders made against Mr Obeid at first instance, the City submits that orders 2, 4, 6 and 8 made on 2 February 2012 should be varied by deleting words from those orders which restrain Mr Obeid directly from manufacturing specified poles, from disclosing the relevant information or from using moulds (on the basis of the decision to remit for retrial issues concerning the quality of confidence and having regard to the outcome of the appeal on the fiduciary duty claim). However, the City submits that it remains necessary to restrain Mr Obeid in certain respects in order to ensure the effectiveness of orders 1,3,5 and 7 made by his Honour against Streetscape. 85Reliance is placed by the City of Sydney in that regard on the reasons that Einstein J gave in relation to orders 14 and 16 of the orders his Honour made on 2 February 2012 (The City of Sydney v Streetscape Projects (Australia) Pty Ltd [2012] NSWSC 10 at [49]), namely that the incidental orders were necessary and appropriate to ensure Streetscape's compliance with its obligations under the Licence Agreement, having regard to Streetscape's claim that it had complied with its obligations under that agreement (a claim rejected by his Honour). 86The appellants maintain that there is no longer a juridical basis for the permanent injunctions made in Orders 2, 4, 6 and 8 that restrained Mr Obeid from engaging in specified conduct, in circumstances where the causes of action pleaded against him personally have either been dismissed or remitted for retrial. It is submitted that the reference in Orders 1, 3, 5 and 7 to Streetscape "by itself, its officers, agents and employees" is sufficient to ensure that Streetscape will continue to be restrained by Orders 1, 3, 5 and 7 made on 2 February 2012. 87The conduct in question relates to: the manufacture, distribution, offering for sale or selling of the various items in order 1; the disclosure or use (or permitting the disclosure or use) of the information in the various things itemised in order 3; the use or permitting the use of particular moulds referred to in order 5; and the use or permitting the use of the Registered Design, as defined, or the moulds referred to in order 7. 88Having regard to the findings made by Einstein J in relation to Mr Obeid's conduct, it is appropriate that the restraints proposed by the City's proposed orders continue pending the retrial. Costs 89In relation to cost orders of the first instance proceedings, the appellants seek an order that the order for costs made on 18 May 2012 be set aside insofar as it applied to Mr Obeid. The City accepts that the order against Mr Obeid for the costs of the proceedings brought by it ought be varied but submits that there should be no variation to the order insofar as it relates to the costs of the cross-claim unsuccessfully brought by Mr Obeid (and Streetscape) against the City. The appellants do not dispute that there should be such an order in respect of the cross-claim but dispute whether any portion of those costs should be on an indemnity basis. 90It is noted by the City that the costs order of 18 May 2012 was a consent order and that it provided for the payment of the City's costs on a party/party basis until 5 August 2011 and thereafter on an indemnity basis. There was no appeal from the dismissal of the cross-claim. It is submitted for the City that, having regard to the dismissal of the cross-claim and the adverse findings against Mr Obeid in relation to the conduct of the cross-claim, there is no basis to vary the order insofar as the costs in the cross-claim are concerned. That proposition has merit in the opinion of this Court. 91Further, the City has indicated that it intends to make an application for an order under s 98 of the Civil Procedure Act that Mr Obeid be personally liable for the City's costs in the original proceedings, having regard to the unchallenged findings concerning his conduct in relation to those proceedings. 92The City therefore submits that the costs of the original proceedings (other than the costs of the cross-claim) should be reserved for determination by the Court below. The appellants submit that, as between the City and Mr Obeid, the costs of the original Equity Division proceedings should follow the event of the new trial. The City's proposal is that the more appropriate order in this regard is that the costs of the original proceedings in the Equity Division (other than in relation to the cross-claim) should be reserved for determination by the Court below. 93It is submitted by the appellants that the order they propose in this regard accords with the general rule that, other than in special circumstances, where there is a new trial, the costs of the first trial abide the event of the second trial (referring to Brittain v The Commonwealth (No. 2) [2004] NSWCA 427 at [4], [21]-[30], where it was noted that the parties' rights have not been finally been determined until the new trial is concluded). That said, the order proposed by the City permits the judge hearing the matter to make orders that take into account conduct of the original proceedings as well as the ultimate outcome of the new trial. In those circumstances, the order proposed by the City on this issue is the more appropriate. 94In relation to the costs of the cross-appeal, there is no dispute between the parties that the City should pay the appellants' costs of the cross-appeal. 95As to the balance of the costs of the appeal, the City submits that Streetscape should pay the City's costs of the Streetscape appeal, in light of the fact that the City has been successful against Streetscape in relation to the real issues between them in the appeal (the Adepole issues and the delivery up issues) and that it should pay Mr Obeid's costs of his appeal (in which it is accepted that he has been substantially successful against the City in relation to the real issues between them in the appeal, namely, the fiduciary duty and the equitable duty of confidence issues). 96The appellants have instead submitted that the City should pay 90% of their costs of the appeal assessed on the ordinary basis. 97The appellants submit that this is appropriate because both appellants succeeded on the major issues raised by the appeal (fiduciary duty and breach of confidence). It is submitted that those were the issues that occupied the most time and which had the most significance in a commercial or practical sense. (It is further submitted, though there is no evidence to support this, that it is doubtful whether there would have been an appeal at all, absent those issues.) 98In making that submission, reliance is placed on the authorities that indicate that the Court does not generally attempt to differentiate between the issues on which an appellant was successful and those on which it failed, unless a particular issue or group of issues is clearly dominant or separable (Elite Protective Personnel Pty Ltd and Anor v Salmon (No 2) [2007] NSWCA 373 at [6]-[11]; Bostik Australia Pty Ltd v Liddiard (No 2) [2009] NSWCA 304) but it is acknowledged that the appellants were unsuccessful on the Adepole issue (hence the proposal that they recover only 90% of their party/party costs). 99It is submitted by the City that the 90% costs order proposed by the appellants would not fairly reflect the reality of the different interests of the parties and the respective successes on the different issues. In particular, it is submitted that this does not take into account the fact that Mr Obeid did not succeed on its primary submissions that the proceedings should be dismissed against him; that there were numerous amendments to the original Notice of Appeal; and that the City had success in relation to the Adepole issues and delivery up. 100In that regard, the Court considers that this is a case where it is appropriate that there be a determination of which party was in substance the successful party on the particular issues determined on the appeal and that the orders proposed by the City appropriately reflect this. 101Finally, the appellants have sought orders for the release of security provided by them for the City's costs. This is opposed by the City on the basis that there have already been costs orders against the appellants in the appeal concerning their stay application (order made on 3 April 2012 by Young JA) and in relation to costs thrown away by the substantial amendments to the pleadings (consent order made on 6 September 2012). Further, it is noted that the City would also be entitled to claim against the security for any costs ordered against Streetscape in relation to its appeal. 102The amount paid into Court as security for costs should be retained until the final outcome of the costs of the various proceedings is determined. Orders 103Accordingly, the following orders should be made: 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. ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 26 July 2013