Preliminary Discovery – from Car Parks to Copyright

In Dallas Buyers Club LLC v iiNet Limited, the Federal Court considered an application for preliminary discovery seeking to have iiNet and five other Internet Service Providers (“ISP’s) provide details of customers associated with particular IP addresses said to have been involved in the infringement of copyright.

One of the requirements for obtaining preliminary discovery under Federal Court Rule 7.22 is that the person against whom it is sort must either:

(i)                  know or be likely to know the prospective respondent’s description; or

(ii)                have, or be likely to have, control of a document that would help ascertain the prospective respondent’s description.

dallasIn this case, the ISP’s argued that while they might have documents identifying the account holders associated with the IP addresses, it was not necessarily these case that those account holders were the persons responsible for the alleged infringing conduct. In response, the applicants submitted that even if the account holders were not responsible, there were good reasons to think that they might be able to assist in identifying those who were.

In considering this aspect of the application, the Court referred to two NSW Supreme Court of Appeal decisions made in the context of car park operators seeking to identify motorists who had parked in their facilities in breach of the relevant conditions. The car park operators, knowing the registration plates of the vehicles but not the identity of the relevant drivers, sought preliminary discovery from the Roads and Traffic Authority to ascertain the names in which the vehicles where registered. The RTA argued that they should not be required to give discovery because the registered owner may not have been the driver at the relevant time. In each case, both at trial and on appeal, the Court held that because identifying the registered owner was likely to assist in identifying the relevant driver, the preliminary discovery requirement had been met.

In this case, the Court determined that the test under the Federal Court Rules was not relevantly different to that applied by the NSW Supreme Court and as such those decisions should be followed. The Court also noted that:

From the point of view of principle, it is difficult to identify any good reason why a rule designed to aid a party in identifying wrongdoers should be so narrow as only to permit the identification of the actual wrongdoer rather than the witnesses of that wrongdoing

Ultimately, the Court allowed the preliminary discovery application although did impose certain conditions on how the discovered information could be used.

In addition to discovery for the purpose of identifying a prospective respondent, the Federal Court Rules also provide for preliminary discovery to ascertain whether a cause of action exists. These preliminary discovery procedures are important tools for Intellectual Property owners seeking to enforce their rights.

BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.