Copyright Tribunal of Australia

DLA Group Pty Limited v Western Australia (Summons) [2023] ACopyT 1

COMMONWEALTH OF AUSTRALIA

COPYRIGHT ACT 1968

THE TRIBUNAL ORDERS THAT:

1.    The parties provide a draft summons to the Tribunal reflecting these reasons.

2.    Mr David Lewis be granted access to the documents subject to the confidentiality regime in these proceedings.

3.    Order 2 be stayed for 14 days, during which time Civica Pty Ltd and Civica Education Pty Ltd have liberty to apply to set aside that order.

THE TRIBUNAL NOTES THAT:

4.    Mr David Lewis gave a confidentiality undertaking to the Tribunal on 18 April 2023.

REASONS FOR DETERMINATION

PERRAM J (PRESIDENT):

1    The question in this application is whether the Tribunal should issue a summons to the Respondent pursuant to s 167(3) of the Copyright Act 1968 (Cth) (‘the Act’) requiring it to produce certain documents in this proceeding. The Applicant is The DLA Group Pty Ltd (‘DLA Group’) and the Respondent is the State of Western Australia, which encompasses the Department of Education Western Australia. Also relevant are two third parties, Civica Pty Ltd (‘Civica’) and Civica Education Pty Ltd (‘Civica Education’) (together, the ‘Civica Entities’), who previously filed an interlocutory application to be joined as parties to this proceeding. As a result of an order made on 11 November 2022, this joinder application was in effect discontinued. The question of costs in relation to that interlocutory application was determined by the Tribunal on 11 November 2022: DLA Group Pty Limited v Western Australia (Costs of Joinder Application) [2022] ACopyT 6.

BACKGROUND TO THE PROCEEDING

2    In order to understand the context to this application for the production of documents, it is necessary to briefly recount some of the events giving rise to the broader proceeding.

3    These proceedings relate to software broadly referred to as the Omnis Software, which is made up of ‘Omnis Studio’ and ‘Omnis Runtime’. Omnis Studio is essentially a software suite for mobile, web and desktop app development and Omnis Runtime is installed on systems to allow applications created with the Omnis Software to run. This software was used to develop another software product called ‘Integris’, which is a student information system used for school administration, student management, timetabling and school finance. Integris is licensed to the Respondent by Civica Education and is used in the Department of Education Western Australia and by schools across Western Australia. It does not appear to be in dispute that the Respondent’s use of Integris necessarily involves the use of Omnis Runtime.

4    On 20 April 1998, OMNIS Software Ltd (‘Omnis’) entered into an agreement with Research Machines PLC (‘RM’) by which it granted a license to RM in respect of the Omnis Software (the ‘1998 Agreement’). RM developed Integris using the Omnis Software and subsequently licensed Integris to Civica Education, which was then called RM Australasia Pty Ltd (‘RMAP’).

5    The Respondent and RMAP (now Civica Education) first entered into a contract for the license and supply of Integris in 1999 (‘1999 Agreement’), with further agreements in 2005, 2010 and 2021. The 2021 Agreement is the agreement currently in force between the Respondent and Civica Education and includes the grant of a licence to the Respondent in respect of Omnis Runtime but not Omnis Studio.

6    The Applicant applied to the Tribunal on 19 April 2022 for the Tribunal to fix the terms upon which the Respondent may do the acts comprised in the copyright in Omnis Runtime. This is on the basis that DLA Group has been the sole exclusive licensee in Australia of the Omnis Software since 29 September 2021 such that the Respondent is not lawfully entitled to use that software, including Omnis Runtime. The Applicant alleges that it terminated the initial 1998 Agreement on 13 October 2021 such that the Respondent owes it a licence fee from that date for the use of Omnis Runtime.

7    The Respondent disputes this. It denies the Tribunal has jurisdiction, and also relies on the licence granted to it by Civica Education to use Integris and a perpetual sub-licence said to have been granted to it by Civica Education with respect to Omnis Runtime.

ISSUES IN THE PROCEEDING

8    Against this background, the Applicant identifies three ‘key questions’ in the proceeding:

(1)    the terms and scope of any sub-licence granted by Civica Education to the Respondent in relation to the Omnis Software;

(2)    whether any sub-licence to the Omnis Software granted by Civica Education to the Respondent continues in circumstances where Omnis has terminated the 1998 Agreement; and

(3)    whether any sub-licence granted by Civica Education to the Respondent in relation to the Omnis Software is inconsistent with the 1998 Agreement (including Integris as used by the Respondent), with the result that the sub-licence relied upon by the Respondent is invalid.

9    The Respondent does not dispute that these are the ‘key questions’ that the Applicant seeks to ventilate and about which it will need to put on evidence.

10    The Applicant seeks production by the Respondent of documents it says are relevant to these key issues. These documents fall into five categories. Broadly speaking, the Respondent objects on the basis that these categories are too broad and will result in the Respondent having to produce thousands of documents, the large bulk of which it says will be irrelevant to the case before the Tribunal.

RELEVANT PRINCIPLES

11    I have canvassed many of the principles applying to the Tribunal’s power to require the production of documents in Reference by APRA AMCOS (Summonses) [2022] ACopyT 4 at [2]-[20] (‘APRA AMCOS’). This power is contained in s 167(3) of the Act:

(3)    A member or the Registrar may summon a person to produce specified documents or articles to the Tribunal by producing the documents or articles to a specified person at a specified time at a specified place.

12    The Tribunal may only exercise this power if it is satisfied that the specified documents have a proximate connection with the discharge of the Tribunal’s functions: APRA AMCOS at [6]. In this case, any documents sought must have a proximate connection to the exercise of the Tribunal’s power to fix the terms upon which the Respondent may do the acts comprised in the copyright in Omnis Runtime.

13    If a category of production does not sufficiently identify the documents sought, those documents will not be ‘specified’ for the purposes of s 167(3) with the consequence that a summons to produce that category will be beyond power: APRA AMCOS at [10]-[11].

14    Further, the power in s 167(3) is discretionary. Even if relevance is established, the Tribunal may refuse to issue the summons where, for example, it would be unduly burdensome to require a party to comply with the summons having regard to how necessary the documents sought are: APRA AMCOS at [12]. This assessment will necessarily be impressionistic and involve a degree of speculation about the ultimate relevance of the material. The Tribunal ought to approach production applications with caution and circumspection where a proceeding is still at an early stage: APRA AMCOS at [9], [12].

CONSIDERATION

Category 1(a)

15    By category 1(a), the Applicant seeks:

(a)    Complete, unredacted copies of all agreements between the Respondent, or any entity owned or controlled by the Respondent, and any one or more of Civica Pty Ltd (ACN 003 691 718) (Civica), Civica Education Pty Ltd (ACN 086 405 174) (Civica Education), or any related entity of either Civica or Civica Education (together and separately, the Civica Entities).

16    The Applicant submits that the 2021 Agreement operates as a variation of earlier agreements between the Respondent and Civica Education. As such, the Applicant says that these earlier documents are required in order fully to understand how the 2021 Agreement purports to sub-licence the relevant Omnis Software to the Respondent and to understand whether the 2021 Agreement (and earlier agreements) are consistent with the limitations on sub-licensing contained in the 1998 Agreement.

17    The Respondent criticises this category as being too broad because it captures a number of irrelevant documents. According to the Respondent, this category would take in, for example: (1) documents relating to the extension of agreements, none of which have been in force during the period for which the Applicant is seeking payment of a licence fee and which do not vary the terms on which the Respondent was granted a licence to Integris, Omnis Runtime or any other software; (2) service level agreements relating to software support, maintenance and training which do not affect or alter provisions pursuant to which software licences are granted to the Respondent; and (3) an agreement between the Respondent and Civica for the supply of a cloud-based student information system, which does not relate to Integris or Omnis Runtime at all. The Respondent submits that it is sufficient for the Applicant’s purposes that the Respondent’s solicitor, Ms Gay, has given affidavit evidence that these documents are not relevant to matters in dispute in these proceedings. The only agreements that are relevant to the Integris and Omnis Runtime licences, it says, are those from 1999, 2005, 2010 and 2021, to all of which the Applicant already has access.

18    The Applicant informed the Tribunal that in light of Ms Gay’s evidence, it proposed in correspondence that it would not press for further production provided that the Respondent would limit its case to the documents already produced. However, this proposal was rejected by the Respondent as ‘unreasonable’ given that there were documents beyond those identified, such as the 1998 Agreement between Omnis and RM, on which the Respondent proposes to rely.

19    I accept the Applicant’s submission that the concept of relevance that Ms Gay, on behalf of the Respondent, seeks to apply to this application is narrower than that which the Respondent seeks to apply to the documents in its own case. As I observed in APRA AMCOS at [8]-[9], the relevance inquiry tends to narrow over time as the true nature of the dispute between the parties crystallises, and as such, it is rare at this relatively early stage in a proceeding for it to be appropriate to reject the issue of a summons for the production of documents ‘on a rigid view of what must be relevant or irrelevant’. The Tribunal should approach relevance debates in circumstances such as these with caution: APRA AMCOS at [9].

20    In that vein, I consider that documents falling within this category may colour how the relationship between the Respondent and the Civica Entities, founded on the granting of the relevant sub-licences, has developed over time. This may well be relevant to an issue in dispute, which will, in turn, affect the discharge of the Tribunal’s power (if enlivened) in s 183(5) of the Act to fix the terms upon which the Respondent may do the acts comprised in the copyright in Omnis Runtime. The Applicant ought to have the opportunity to examine these documents.

21    I do not take the Respondent to submit that producing this category of documents would be overly burdensome. It would also appear that the Respondent has already identified a substantial portion of the documents falling within this category for the purposes of responding to this application for production. In these circumstances, I would grant the Applicant production of this category of documents.

Categories 1(b), (c) and (d)

22    By categories 1(b), (c) and (d), the Applicant seeks:

(b)    All documents (such as release notes, descriptions, work requests, change logs or similar) concerning all software with which the software “OMNIS 7 Runtime” and/or “OMNIS Studio Runtime” have been used by the Respondent, including any changes, upgrades or revisions to such software;

(c)    All documents (such as release notes, descriptions, work requests, change logs or similar) concerning the “Modules” listed in Schedule 18 to the 2021 “Contract Variation for EDRFP002/1997 Support, Maintenance and Essential Services for the School Information System” (the 2021 Agreement);

(d)    All communications or other documents concerning any request(s) for upgrades from the Respondent to any Civica Entity in relation to software used with [t]he software “OMNIS 7 Runtime” and/or “OMNIS Studio Runtime”, and any responses from any Civica Entity;

23    Documents falling within these categories relate to the practical dealings that have occurred in relation to software with which the relevant Omnis Software is used and the software modules the Respondent is entitled to use. Given the overlap that appears to exist between these categories, the parties have dealt with them together. I will do the same.

24    The Applicant says that these documents are required for it to determine whether there have been any dealings with the relevant Omnis Software that are inconsistent with the terms of the licence and sub-licence. For example, release notes and communications are relevant to understanding whether the Respondent has used the Omnis Software in conjunction with an ‘Application’ as required by the 1998 Agreement. The Respondent complains that the categories are too broad, including in their failure to identify specified documents and in their temporal boundlessness. This would result in thousands of irrelevant documents being produced which, in turn, so the Respondent says, would place an undue burden on it.

25    I am satisfied that there are documents falling within these categories relevant to the matters in dispute. I accept that these documents go to the way in which the relevant Omnis Software has been used by the Respondent which may consequently assist the Tribunal in determining whether there has been any use of the relevant Omnis Software beyond the scope of any licence. However, the categories as currently formulated do not sufficiently specify the documents sought, such that the power in s 167(3) is not enlivened. As I observed in APRA AMCOS at [11], the summons must ‘mention or name specifically or definitely’ or ‘state in detail’ the documents to be produced. In that case, I held at [42] that the word ‘evidencing’ used in that context did not specify a document as required by s 167(3), but found that the word ‘recording’ was sufficiently specific. Here, I consider that the word ‘concerning’ as used in this context does not sufficiently specify the documents sought for the purposes of s 167(3).

26    Anticipating that this conclusion could be reached by the Tribunal, the Applicant provided amended formulations of these categories as an alternative which, in relation to categories 1(b) and (c), remove its claim for ‘all documents’ and replace the word ‘concerning’ with ‘referring to’. In amended category 1(d), the general catch-all ‘or other documents’ is removed, and ‘referring to’ is added as an alternative to ‘concerning’.

27    I accept that, like the word ‘recording’ in APRA AMCOS, the words ‘referring to’ used in this way are sufficiently specific for the purposes of s 167(3). The use of the word ‘concerning’ in category 1(d) remains unsatisfactory, and it should be removed.

28    It should not be thought that assessing a summons against the specificity requirement of s 167(3) requires no more than identifying the gerund by reference to which the summons operates and plotting it along a continuum. Rather, the terms of the summons must be considered in their entirety and in the context of the circumstances of the particular case.

29    Further, I do not see any reason to limit production, as the Respondent suggests, to various documents in force since 13 October 2021. This is because the Applicant’s case appears to extend out beyond those temporal bounds, given the long history of dealings between the Respondent and the Civica Entities.

30    As to burden, the Applicant has made a modified production proposal whereby production would be limited in the first instance to documents which have been digitised, after which it would make an assessment as to whether the remaining documents falling in these categories would be required. In circumstances where a substantial number of these documents have been identified by the Respondent for the purposes of responding to this application, and where I am satisfied as to their relevance, I do not accept the Respondent’s contention that collating and reviewing these documents will be disproportionately burdensome and costly. I will grant production of the Applicant’s amended categories as annexed to its reply submissions, subject to the removal of the words ‘concerning or’ from amended category 1(d), on the modified terms proposed by the Applicant.

Category 1(e)

31    By category 1(e), the Applicant seeks:

(e)    Any documents recording any license fees paid by the Respondent under the 2021 Agreement.

32    The Applicant says these documents will allow it to understand what royalties are owed or have been paid by the Respondent under the 2021 Agreement and thus to test whether conduct under the 2021 Agreement was consistent with the limitations in the 1998 Agreement. The Respondent has offered to produce a document recording all fees paid by it to Civica Education under the 2021 Agreement as well as from 13 October 2021 to date. However, it is not prepared to include in this document details of how such fees were calculated, as proposed by the Applicant in correspondence, which it regards as an expansion of this category. In response, the Applicant contends that the relevance of the documents in this category is not merely the quantum of the fees paid by the Respondent but also the descriptions of the rights and services to which those fees relate. I am inclined to agree. Although it is not certain whether such descriptions are included in the documents captured by this category, I am satisfied that production of these documents has the potential to clarify the issues in dispute between the parties and therefore assist the Tribunal in discharging its functions.

33    In these circumstances, I consider it appropriate for the Applicant to be granted production of any documents recording any license fees paid by the Respondent under the 2021 Agreement including, for the purposes of this application, fees paid from 13 October 2021 to date.

Other matters

34    There are two further matters to be addressed. First, the Applicant in its reply submissions sought an order from the Tribunal granting Mr David Lewis, the Applicant’s CEO and ‘key instructor’, access to documents subject to the confidentiality regime currently in place. The Tribunal notes that on 18 April 2023, Mr Lewis gave a confidentiality undertaking to the Tribunal in relation to these documents.

35    The Respondent submits that it is not, in principle, opposed to Mr Lewis being granted access upon his undertaking and has sought consent from the Civica Entities to which these documents are also confidential.

36    By a communication dated 17 May 2023, the solicitors for the Respondent informed the Tribunal that it understands that the Civica Entities’ position is that they do not consent to this proposal on the basis that the Applicant has not provided a proper basis for this request. Under these circumstances, I will order that Mr Lewis be granted access to the documents subject to the confidentiality regime but I will stay the effect of that order for 14 days. The Respondent is to notify the Civica Entities that they have 14 days to apply to set aside this order.

37    The second matter relates to the costs of this application. There should be no order as to costs.

Associate:

Dated:    16 June 2023