Interlego a.G. v. Tyco Industries, Inc and Others

HCA004231A/1984

BETWEEN:-

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Coram: The Honourable Mr. Justice Jones in Chambers.

Date of hearing: 4 December 1984

Date of delivery of judgment: 7 December 1984

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JUDGMENT

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1. The 1st and 2nd defendants by a summons issued on the 6th November 1984, that has been referred to me by a Master seek an order for inspection and for permission to take copies of certain documents that were exhibited to an affidavit sworn on the 23rd June 1984 by Mr. A.C.D. Evans the plaintiff's solicitor. The plaintiff has requested that disclosure of the documents be restricted to the defendants counsel and solicitor and not be revealed to the defendants as the exhibits contain information which is highly confidential to the plaintiff. The affidavit and exhibits were filed in support of an application for an Anton Piller order which was granted ex-parte by Jackson-Lipkin J. on the 23rd June 1984.

2. At the hearing of the inter-partes summons on the 29th June 1984 part of the order was discharged by consent whilst the remainder was adjourned for argument on a date to be fixed.

3. By the Statement of Claim the plaintiff claims an injunction to restrain the defendants from infringing their copyright in original artistic works for "Lego" and "Duplo" toy building bricks and other relief. The three exhibits which the plaintiff contend should not be disclosed to the defendants are marked ACDE 3, ACDE 4 and ACDE 5. Exhibit ACDE 3 sets out the latest turnover of the plaintiff for the year ending 31st March 1984 and the total assets and value of the plaintiff at that date. ACDE 4 refers to the turnover of Lego products worldwide since 1955 in Danish currency, since 1973 in United States currency, and in Hong Kong since 1979 in Danish currency. The figure for the sales of Duplo since 1979 are also given in the same currency and are included in the total sales of Lego. Marketing costs such as advertising and promotion expenses are also set out. Samsonite are permitted to manufacture and sell Lego products in Canada. Exhibit ACRE 5 gives details of the approximate sales turnover of Samsonite on an annual basis.

4. Neither I nor counsel and the solicitor for the defendants have seen the evidence in question so that the issue of relevance does not arise at this stage.

5. The plaintiff desires that the information be kept confidential and not revealed to the defendants because it is sensitive information which could be of valuable assistance to the defendants as they are competitors of the plaintiff.

6. Mr. Garland who appeared for the defendants submitted that as a matter of principle the plaintiff is obliged to disclose the documents to the defendants. He relies upon WEA Records Ltd. and Others v. Visions Channel 4 Ltd. and Others (1984) F.S.R. at 404 in which the English Court of Appeal heard an appeal concerning an Anton Piller order. The Master of the Rolls Sir John Donaldson in his judgment at page 406 had this to say:-

".....we are told that counsel also revealed to the judge certain information which may well have been relevant, but which was so confidential and sensitive that the plaintiffs considered that it would not properly be revealed to the defendants at a later stage.

I do not know what this information was, but I cannot at the moment visualise any circumstances in which it would be right to give a judge information on an ex parte application which can not at a later stage be revealed to the party affected by the result of the application. Of course there may be occasions when it is necessary, for example, to conceal the identity of informants, but the judge should then be told that this information cannot be given to him and the judge will then have to make up his mind to what extent he is prepared to rely upon information coming from anonymous and unidentifiable sources.".

Mr. Rogers for the plaintiff referred to two cases In re Moritz Deceased [1960] 1 Ch. 251 and Warner-Lambert Co. v. Glaxo Laboratories Ltd. (1975) R.P.C. 354. However, both these cases were very different from the present application and are not relevant. Mr. Rogers also submitted that the information was disclosed to the court in respect of the plaintiff's cross-undertaking as to damages. However, I am unable to accept that such detailed evidence was necessary for this purpose.

7. Although the plaintiff desires to keep the details confidential as it might assist the defendants as competitors nevertheless they have chosen to place the evidence before the court. Accordingly in my judgment they are bound to disclose this information to the defendants. I would respectfully adopt the words used by the Master of the Rolls that I have already cited in WEA Records Ltd. v. Visions Channel 4 Ltd. The defendants are therefore entitled to an order in the terms of the summons.

Representation:

Mr. A. Rogers, Q.C. (Johnson, Stokes & Master) for Plaintiff.

Mr. P. Garland (Robin Bridge & John Liu) for 1st & 2nd Defendants.