Bucyrus (Australia) Pty Ltd v ANI Mining Services Ltd [1999] FCA 136 (16 February 1999)

Last Updated: 24 February 1999

CATEGORY: NO QUESTION OF PRINCIPLE

FEDERAL COURT OF AUSTRALIA

Bucyrus (Australia) Pty Ltd v ANI Mining Services Ltd [1999] FCA 136

BUCYRUS (AUSTRALIA) PTY LTD AND BUCYRUS INTERNATIONAL INC v

ANI MINING SERVICES LIMITED AND AUSTRALIAN NATIONAL INDUSTRIES LTD

QG 168 of 1998

DOWSETT J

16 FEBRUARY 1999

BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 168 OF 1998

BETWEEN:	BUCYRUS (AUSTRALIA) PTY LTD (ACN 000 819 232) First Applicant BUCYRUS INTERNATIONAL INC Second Applicant
AND:	ANI MINING SERVICES LIMITED (ACN 008 445 725) First Respondent AUSTRALIAN NATIONAL INDUSTRIES LTD (ACN 000 066 071) Second Respondent
JUDGE:	DOWSETT J
DATE OF ORDER:	16 FEBRUARY 1999
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1. The application for premature discovery is stood over to a date to be fixed.

2. Costs be reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 168 OF 1998

BETWEEN:	BUCYRUS (AUSTRALIA) PTY LTD (ACN 000 819 232) First Applicant BUCYRUS INTERNATIONAL INC Second Applicant
AND:	ANI MINING SERVICES LIMITED (ACN 008 445 725) First Respondent AUSTRALIAN NATIONAL INDUSTRIES LTD (ACN 000 066 071) Second Respondent

JUDGE:	DOWSETT J
DATE:	16 FEBRUARY 1999
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1 A number of matters have arisen concerning the conduct of this action. I will deal with them individually. An Anton Pillar order was made late last year. A substantial quantity of documentation relating to the respondents' business was seized and is presently in the possession of the applicants' solicitors. The intention of the order was that the documentation be safeguarded in the short term. I did not understand that the grant of the Anton Pillar order in any way determined the entitlement of the applicants to have access to that material for the purposes of the litigation. On the other hand, it was my understanding that the respondents and their solicitors would have access to that material, given that it is their material. There have been some differences of opinion concerning the question of access, but none of them seems to have been very serious, and I am confident that for the future, the solicitors for the parties will be able to find a reasonable basis for co-operating.

2 The respondents seek to have possession of the material transferred to an independent third party. I give some weight to the respondents' preference in this regard, because they are, after all, their documents. However, there seems to me to be no real point, for the present, in changing the status quo. The documents are secure with the applicants' solicitors. I do not think that any good purpose would be served by changing that. If, however, ill-feeling continues to be generated, I may have to reconsider the matter.

3 In reaching this conclusion, I am expressing confidence in the applicants' solicitors to act as honest broker with respect to the material and in the respondents' solicitors to do everything necessary to make the status quo work. For that reason I do not presently propose to vary the order relating to possession of the material. It is my intention that the respondents' solicitors have access to that material at all reasonable times.

4 The second question relates to an application by the applicants for discovery in advance of pleading. The applicants have formulated a list of seven categories of document to which they seek access in advance of pleading. They are as follows: (1) memoranda referring to drawing and information obtained from XTEK regarding dragline parts; (2) all documents passing between ANI and XTEK concerning dragline parts, including drawings and correspondence concerning dragline parts and agreements for the provision of information, and drawings concerning such parts; (3) dragline parts lists provided to customers by ANI; (4) agreements between ANI and XTEK relating to the provision of drawings and information concerning dragline parts; (5) drawings of dragline parts supplied to ANI by XTEK, whether on paper, by facsimile or electronic media; (6) drawing of dragline parts prepared by ANI, whether on paper, by facsimile or electronic media, based upon drawings and information supplied by XTEK; (7) memoranda and correspondence relating to knowledge on the part of ANI that the drawings and information supplied by XTEK were confidential to the applicants.

5 I should say that the cause of action arises out of alleged breach of the applicants' copyright, by the company XTEK in some way obtaining copies of various drawings used by the applicants in the manufacture of parts for draglines. It is alleged that XTEK supplied its illegal copies to ANI and that ANI has been reproducing those drawings and producing parts from those drawings in breach of the applicants' copyright. It is also alleged that ANI is a party to a breach of confidentiality which is also said to be actionable.

6 The respondents resist the application for premature discovery with respect to all categories of documents except 4 and 5 above. It seems to me that the other categories are also documents which may reasonably be required in order fully to particularise the applicants' claim, but the respondents have replied to this by saying that they do not for the moment think that they will require that degree of particularity with respect to the pleading. If this is so, then it is not necessary that there be premature discovery of those documents. The matter can stand over until after the close of pleadings or, should the respondents depart from their currently indicated position and seek particulars, the application can be brought on for further hearing. With one exception, I am inclined to leave the question of premature discovery of the other categories until such time as the respondents' attitude to the applicants' pleading is known, without prejudice to the applicants' right to renew the application at an earlier stage should it find in the course of drafting its statement of claim that it is still short of relevant information.

7 The one exception to that general approach is class 6: drawings of dragline parts prepared by ANI, based upon drawings and information supplied by XTEK. There are, in effect, three levels of drawing in this case: (i) the original drawings prepared by the applicants; (ii) copies allegedly generated by XTEK; (iii) drawings allegedly generated by ANI, based upon material supplied to it by XTEK. It is the third category with which category 6 is concerned.

8 Although drawings prepared by ANI may not assist the applicants in preparing their statement of claim, it seems at least possible that they may. The case involves allegations of reproduction and further reproduction of drawings. Something in the drawings eventually generated by ANI may be of assistance in explaining the way in which earlier drawings were used and developed. The connection between the documents referred to in category 5 and those referred to in category 6 is fairly tenuous. I have, I think, throughout this hearing tried consistently to keep in mind the purposes for which premature discovery should be permitted and the general rules limiting the availability of that remedy. I make this exception only because I think there is some prospect that it may assist the applicants in understanding the aetiology of the earlier drawings in the sequence, and thereby, in formulating its claim. It is, of course, also the case that the drawings prepared by ANI are substantial evidence of the alleged breach of copyright. In those circumstances, too, and in the interests of completeness in pleading, it is probably desirable that at this early stage, the applicants have an opportunity to trace through the development of the drawings from their own initial drawings to, as it alleges, ANIs eventual products. I will make an order accordingly.

9 The third matter concerns access by an employee of the applicants to the respondents' documents. No notice was given of this application and no affidavit has been sworn, identifying the reasons for such order. Although the request seems reasonable to me, I am not willing to so order in the absence of appropriate notice and sworn evidence. In those circumstances I will leave that matter for consideration at a later time, should appropriate application be made. The application for premature discovery should otherwise be stood over to a date to be fixed.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.

Associate:

Dated: 16 February 1999

Counsel for the Applicants:	Mr W. Sofronoff QC with Mr L F Kelly
Solicitor for the Applicants:	Phillips Fox
Counsel for the Respondents:	Mr P McMurdo QC with Mr R Traves
Solicitor for the Respondents:	Allen Allen & Hemsley
Date of Hearing:	16 February 1999
Date of Judgment:	16 February 1999