SUPREME COURT OF QUEENSLAND

CITATION:	Marel Australia Pty Ltd v Buckmaster [2024] QSC 218 	
PARTIES:	MAREL AUSTRALIA PTY LTD 
(applicant)
v
MICHAEL BUCKMASTER
(respondent)	
FILE NO:	5900 of 2024	
DIVISION:	Trial Division	
PROCEEDING:	Application	
ORIGINATING COURT:	
Supreme Court at Brisbane	
DELIVERED ON:	19 September 2024	
DELIVERED AT:	Brisbane	
HEARING DATE:	29 May 2024	
JUDGE:	Martin SJA	
ORDERS:	1.	by 4:00pm on 30 September 2024, the respondent is to serve an affidavit on the applicant:
(a)	stating, in respect of any Marel Confidential Information:
(i)	any person or persons to whom he has disclosed Marel Confidential Information; 
(ii)	the Marel Confidential Information he has disclosed to that person or persons;
(iii)	the means by which he communicated the Marel Confidential Information to that person or persons; and
(iv)	the date or dates on which he communicated the Marel Confidential Information to that person or persons;
(b)	stating his knowledge about the present location of the following devices (Devices):
(i)	VendorCo ProductCode USB Device;
(ii)	WD My Passport 259D USB Device;
(iii)	Seagate Expansion HDD SCSI Disk Device; and
(iv)	Verbatim STORE N GO USB Device; and
(c)	exhibiting, to the extent that any of the Devices remain in his possession and control, a file list identifying the files stored on each of the Devices remaining in his possession and control as at 10 May 2024.
2.	subject to further order, until the hearing and determination of the originating application, the respondent be restrained from disclosing Marel Confidential Information to any other person;
3.	costs of the interlocutory relief be reserved; and
4.	the originating application be adjourned to a date to be fixed for review.	
CATCHWORDS:	PROCEDURE – CIVIL PROCEEDINGS IN STATE AND TERRITORY COURTS – DISCOVERY AND INTERROGATORIES – DISCOVERY AND INSPECTION OF DOCUMENTS – DISCOVERY OF DOCUMENTS – PRELIMINARY DISCOVERY – where the applicant is a capital goods supplier to the foods industry – where the respondent was, until 22 January 2024, an employee of the applicant responsible for, among other things, selling the applicant’s complex food processing solutions – where the respondent gave notice of his resignation and the applicant learned that he was going to work for a competitor – where the applicant alleges that the respondent attempted to transfer the applicant’s confidential information to his new employer, that the respondent retained the applicant’s confidential information, and that the respondent had not been candid in his post-employment disclosures – where the applicant seeks, by way of interlocutory relief, orders requiring the respondent to provide an affidavit setting out his dealings with the applicant’s confidential information – where the applicant identifies the source of the power to make such orders as the decision of the House of Lords in Norwich Pharmacal and of Justice Warren in Computershare – whether the applicant is entitled to the information discovery as sought
PROCEDURE – CIVIL PROCEEDINGS IN STATE AND TERRITORY COURTS – DISCOVERY AND INTERROGATORIES – DISCOVERY AND INSPECTION OF DOCUMENTS – PRODUCTION AND INSPECTION OF DOCUMENTS – GROUNDS FOR RESISTING PRODUCTION – PRIVILEGE – TENDENCY TO INCRIMINATE AND EXPOSURE TO PENALTY – where the respondent, through his counsel and in an affidavit of his solicitor, claims privilege on the basis that the respondent is concerned that deposing to the listed matters may expose him to civil penalty under section 183 of the Corporations Act 2001 (Cth) – whether the information sought by the applicant would be in breach of privilege 
Corporations Act 2001 (Cth), s 183, s 1317E, s 1317H
Accident Insurance Mutual Holdings Ltd v McFadden (1993) 31 NSWLR 412, applied
Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626, applied
Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434, cited
Deputy Commissioner of Taxation v Shi (2021) 273 CLR 235, cited
Grant v BHP Coal Pty Ltd (2017) 247 FCR 295, cited
Hooper v Kirella Pty Ltd (1996) 96 FCR 1, cited
Macks v Viscariello (2017) 130 SASR 1, cited
Mercantile Group (Europe) AG v Aiyela [1994] QB 366, cited
Norwich Pharmacal Co v Commissioners of Customs and Exercise [1974] AC 133, considered
Sadie Ville Pty Ltd v Deloitte Touche Tohmatsu (2018) 357 ALR 695, cited
Sandhurst Trustees Ltd v Clarke (2015) 321 ALR 1, cited
Stanford Asset Holdings Ltd v AfrAsia Bank Ltd [2024] 1 WLR 1118, cited	
COUNSEL:	A O’Brien for the applicant
J Ford for the respondent	
SOLICITORS:	Franklin Athanasellis Cullen for the applicant
SLF Lawyers for the respondent	
[1]	Marel Australia Pty Ltd designs, manufactures, installs and services equipment for use in the food processing industry. Its products range from standalone machines for a specific task to interconnected machines designed for a particular client.
[2]	Michael Buckmaster was, until his resignation on 22 January 2024, employed by Marel as an industry sales manager. In that role he supervised and trained account managers and had the lead responsibility for selling Marel’s complex food processing solutions.
[3]	Mr Buckmaster’s contract of employment contained provisions relating to confidential information owned by Marel and he was required to comply with Marel’s policies concerning the integrity of that information.
[4]	After he gave notice, Marel learnt that he was going to work for a competitor and he was asked to sign an undertaking about observing his contractual obligations. He declined to do so.
[5]	Marel claims that it has discovered that, before he gave notice, Mr Buckmaster had attempted to transfer confidential information to his new employer and that he had accessed information belonging to Marel in December 2023 and January 2024.
[6]	Marel seeks, by way of interlocutory relief, orders requiring that Mr Buckmaster provide an affidavit setting out his dealings with Marel’s confidential information. 
[7]	Mr Buckmaster resists the application on several fronts including:
(a)	the order sought is outside the ordinary formulation for a Norwich order;
(b)	he has given appropriate undertakings; and
(c)	he claims privilege against self-incrimination. 
What are Mr Buckmaster’s contractual obligations?
[8]	The conditions of Mr Buckmaster’s employment include at cl 9.1(g) that:
“In consideration for employment under this agreement, you agree to:
…
(g)	comply with the obligations of confidentiality, non-competition, non-solicitation and assignment of intellectual property specified in this agreement”.
[9]	Clauses 17.1(a) and 17.3, included under the heading ‘Confidential Information and Company Property’, provide:
“17.1	During your employment, you will have access to the Company’s Confidential Information and property. You acknowledge that:
(a)	Confidential Information includes all trade and business secrets; financial information; any information which the Company or Related Companies tells you is confidential or a reasonable person would consider is confidential and which, if disclosed to third parties, could or might loss or damage [sic] to the Company or Related Companies; client, customer and personnel information; procedures, systems and documents (in whatever form, however stored, and including copies and extracts) relating to the affairs and business that contribute to the sustainable competitive advantages of the Company and Related Companies;
…
17.3	You must take all reasonable precautions to prevent any unauthorised disclosure of Confidential Information, including the following precautions:
(a)	storing all Confidential Information safely and securely;
(b)	except with the prior written authority of the Company, you must not remove any Confidential Information from the premises at which it is stored except where it is necessary to do so for the sole purpose of providing services to the Company;
(c)	You must immediately notify the Company in writing of any actual, threatened or suspected unauthorised disclosure of any Confidential Information; and
(d)	You must take all reasonable measures to minimise any unauthorised dissemination of any Confidential Information which is in any way related to or resulting from an act or failure to act by you.”
[10]	Clause 18.1, included under the heading ‘Confidentiality’, provides:
“18.1	You agree that during your employment and after the termination of your employment, you will not use or disclose to anyone any Confidential Information, and will use your best endeavours to prevent unauthorised use or disclosure of the Confidential Information by third parties, except in the proper course of your duties, or if required by law.”
[11]	Clauses 23.1 and 23.2, included under the heading ‘Policies’, provide:
“23.1	You will read all of the Company’s policies, as amended from time to time.
23.2	You will at all times comply with the terms of all of the Company’s policies (howsoever named) as varied from time to time, and abide by all of the Company’s procedures and professional service standards.”
[12]	Marel created a number of internal policies. Of them, the following are relevant:
(a)	An email policy, which lists under the heading “Don’ts”: 
(i)	“Send internal/ confidential information to people who should not have access to this”; 
(ii)	“Use email for personal use (e.g., personal travel, school newsletters etc.)”; 
(iii)	“Forward emails from Marel mailbox to an external mailbox”.
(b)	An information classification guide, which under cl 5.1 establishes various classifications ranging from public information to internal, then confidential, then restricted. It provides for how information in each category should be handled throughout its ‘lifecycle’ from creation, to usage, storage, transmission, and disposal. Appendix B to that policy includes a table identifying the four data classifications and the company data types which fall into each, alongside various example of types of information which may be confidential or restricted;
(c)	An internet policy, which lists under the heading “Don’ts”: “Share company internal/ confidential information on the internet”; and
(d)	A policy concerning portable USB data devices.

What does Marel allege that Mr Buckmaster did?
[13]	After he gave formal notice of his intention to resign, Marel suspended Mr Buckmaster’s access to his email account because he was going to work for a competitor. Marel asked him to return all Marel equipment including “all IT equipment”. He returned a laptop (#5159) and a credit card. Marel undertook some investigations and alleges that:
(a)	Mr Buckmaster had sent Marel information to his private email address;
(b)	on 13 December 2023 he attempted to transfer Marel information to an email account associated with his new employer;
(c)	on 11 and 19 December 2023 he transferred 1600 documents from the Marel laptop which was later returned (#5159) to an external storage device; and
(d)	on 12 January 2024 he used another Marel laptop (#5139), which was not returned with laptop #5159, to access the WeTransfer website – which provides means of sending or sharing files without an account.
[14]	Marel’s solicitors wrote to Mr Buckmaster on 7 February 2024 requiring that he:
(a)	return laptop #5139;
(b)	detail the information he had extracted from Marel’s system and state whether he had shared it; and
(c)	deliver up any USB or external drive in his possession which was used to copy Marel information between 15 November 2023 and 22 January 2024 (or any other date) in breach of his obligations to Marel.
[15]	Further correspondence ensued. Mr Buckmaster returned laptop #5139, a Seagate hard drive and a USB bearing Marel branding. Soon after that he provided a signed undertaking in which he undertook:
(a)	to comply with his obligations in respect of Marel’s confidential information;
(b)	that he had delivered up any device which contained files, documents, programs or material belonging to Marel; and
(c)	that he had provided full disclosure to Marel of all documents, files, programs or information which he had downloaded or extracted from Marel’s systems in breach of his obligations to Marel.
[16]	Marel did not accept that he had provided “full disclosure”. Further correspondence followed in which Mr Buckmaster said:
(a)	he no longer possessed any confidential information – physically or electronically; and
(b)	he had undertaken a thorough physical check of his premises to ensure he had no other device containing Marel information.
[17]	Notwithstanding his assurances, Marel contends that Mr Buckmaster has taken its confidential information and the whereabouts of that information remains unknown.

What relief is sought? 
[18]	Marel seeks interlocutory orders, that Mr Buckmaster serve an affidavit on Marel:
(a)	with respect to any Marel confidential information – identifying:
(i)	any person or persons to whom he has disclosed Marel confidential information;
(ii)	the Marel confidential information he has disclosed to that person or persons;
(iii)	the means by which he communicated the Marel confidential information to that person or persons; and
(iv)	the date or dates on which he communicated the Marel confidential information to that person or persons;
(b)	stating his knowledge about the present location of four identified devices; and
(c)	exhibiting, to the extent that any of those devices remain in his possession and control, a file list identifying the files stored on each of the devices remaining in his possession and control as at 10 May 2024.
[19]	In its Originating Application Marel seeks final orders that: 
(a)	Mr Buckmaster deliver up any documents in his possession or control which record Marel confidential information;
(b)	he delete any electronic documents in his possession that record Marel confidential information; and
(c)	he be restrained from disclosing Marel confidential information to any other person.
[20]	Marel identifies the source of the power to make such orders as the decision of the House of Lords in Norwich Pharmacal Co v Commissioners of Customs and Exercise and of Warren J in Computershare Ltd v Perpetual Registrars Ltd. It argues that this case comes within the principles established in Norwich. In that case, the order sought was for discovery from a person against whom there was no substantive cause of action. The conditions to the grant of the relief were: (a) a third party must have become mixed up in the transaction requiring discovery; and (b) the order must not offend the “mere witness” rule.
[21]	Marel contends that it can rely on the Computershare decision to obtain not just the identification and location of parties who may have been involved in the wrongful use of the alleged confidential information, but also to elicit the actual information that had been disclosed and accessed. 
[22]	Mr Buckmaster argues that this case can be distinguished from the broader approach to Norwich orders developed in Computershare”:
(a)	there is no “mix up” in a transaction. To emphasise this point, the respondent argues that: “A Norwich order involves the court making an order for preliminary discovery or evidence from a person against whom there is no substantive cause of action” (emphasis added);
(b)	in contrast to Computershare, there is no information asymmetry and if confidential information was taken or retained it resides with the respondent or his new employer. It is not alleged that there is imminent risk of damage or destruction of evidence. Therefore, the applicant may pursue its case through the conventional means of discovery provided by the UCPR; and
(c)	the applicant’s evidence in this case falls short of the level provided by the applicant in Computershare.
[23]	He also relies on his privilege against exposure to the civil penalty which can follow from a breach of s 183 of the Corporations Act 2001.
The Norwich Pharmacal and Computershare decisions
[24]	The Norwich Pharmacal case concerned an infringement of a chemical patent. The owner of the patent sought to obtain the names and addresses of persons who had been involved in the alleged breach of the relevant patent. The House of Lords held that where a person, even innocently, became involved in the tortious acts of another that person was under a duty to give full information by way of discovery and disclosing the identity of the relevant wrongdoers. 
[25]	In Hooper v Kirella Pty Ltd the Full Court of the Federal Court said this about Norwich Pharmacal:
“[26] In Norwich Pharmacal, the House of Lords upheld an order made at first instance requiring the Customs and Excise Commissioners to provide the names and addresses of importers of a chemical compound of which Norwich held the patent. Lord Reid identified the “very reasonable principle” established by the authorities as follows (at 175):
‘… if through no fault of his own a person gets mixed up in the tortious acts of others so as to facilitate their wrong-doing he may incur no personal liability but he comes under a duty to assist the person who has been wronged by giving him full information and disclosing the identity of the wrongdoers. I do not think that it matters whether he became so mixed up by voluntary action on his part or because it was his duty to do what he did. It may be that if this causes him expense the person seeking the information ought to reimburse him. But justice requires that he should co-operate in righting the wrong if he unwittingly facilitated its perpetration.’
The requirement that the person be “mixed up” in the tortious acts of others was said to flow from the so-called “mere witness” rule, which historically has been thought to prevent a court ordering discovery against a mere witness. See also at 180-1, per Lord Morris; at 188, per Viscount Dilhorne; at 197, per Lord Cross.” (emphasis added)
[26]	The Full Court was considering the court’s power in equity with respect to preliminary discovery, as distinct from the powers it had under the Federal Court Rules. The Court went on to say:
“[28] In McLean, Young J expressed (at 645) the view that the principle in Norwich Pharmacal was limited to identity discovery. As such, it was of limited value in New South Wales because the Supreme Court Rules made provision for identity discovery in broad terms (Pt 3, r 1, which is in similar terms to FCR, O 15A, r 3). The same view was expressed by Sheppard J in The “Alley Cat” at 139. Other cases suggest, however, that the scope of preliminary discovery under the general law may not be so limited and may extend to information discovery: Mercantile Group AG v Aiyela [1994] QB 366 at 374-375, per Hoffmann LJ (referred to with apparent approval by Gummow J in Breen v Williams (1996) 186 CLR 71 at 120); P v T Ltd [1997] 1 WLR 1309; [1997] 4 All ER 200 (Sir Richard Scott V-C); Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434 at 445-446, per Gummow J.” (emphasis added)
[27]	In Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) Gummow J traced the power of the Federal Court to order discovery before suit back to the auxiliary jurisdiction in equity, used to aid litigants in the common law courts. His Honour referred to the English and American cases, the latter supporting availability of relief in a broader range of circumstances. In Sandhurst Trustees Ltd v Clarke the Full Court of the Federal Court referred to that decision and said, at [34], that “There seems to be no reason in principle for distinguishing between disclosure of the identity of a potential defendant and disclosure of information relevant to the proposed claim.”
[28]	This court may exercise that jurisdiction –  as Bond J recognised in QNI Metals Pty Ltd v Vannin Capital Operations Ltd:
“[45]  That the Supreme Court of Queensland may exercise the equitable jurisdiction discussed in Norwich Pharmacal has been established: see Re Pyne [1997] 1 Qd R 326. In that case, Shepherdson J (following Hunt J in Re Application of Cojuangco (1986) 4 NSWLR 513) concluded that “the Norwich Pharmacal type of case was sufficient to justify preliminary discovery if the applicant has a cause of action (whether or not he intends to pursue it) and that discovery is necessary to enable justice to be done”. There is some debate as to whether it is a condition of the exercise of the jurisdiction that a cause of action must be established. That debate was referred to in Idoport Pty Ltd v National Australia Bank Ltd [2004] NSWSC 695 at [107], where Einstein J quoted (without necessarily approving) submissions before him which had sought to support the proposition that there might be no such strict requirement. I do not think the present case calls for a resolution of that debate.”
[29]	Marel relies upon the decision of Warren J in Computershare. It is an example of a case in which discovery was sought with respect to a party against whom the plaintiff had made allegations of misuse of confidential information and breach of contract. 
[30]	Computershare Ltd had agreed to provide share registry services to Perpetual Registrars Ltd and Perpetual Trustees Ltd (the first and second defendants). The agreement contained a confidentiality clause. Almost two years after that, Perpetual Registrars and the Australian Stock Exchange announced a joint venture to provide share registry services in apparent competition with Computershare. Computershare issued proceedings against Perpetual Registrars, Perpetual Trustees, and Hutchinson (a senior employee of the stock exchange who became a director of Perpetual Registrars). The plaintiff sought an interlocutory injunction against the defendants to restrain the use of confidential information, supported by an affidavit of its managing director alleging misuse by the defendants. The plaintiff sought further orders that the defendants provide affidavits stating the identities of persons who had access to and use of the confidential information and identifying what confidential information had been disclosed. Outlining the nature of the relief sought, Warren J stated:
“[15]  The plaintiff in effect sought relief pursuant to the principles stated by the House of Lords in Norwich Pharmacal Co v Commissioners of Customs and Excise. …  The approach of the House of Lords in Norwich is referred to as a “Norwich order” made by a court in order to enable an applicant to obtain the identity and location of persons who have participated in the wrongful use of information.”
[31]	Warren J observed:
“[17] In essence, a Norwich order involves the court making an order for discovery from a person against whom there is no substantive cause of action. In order to warrant the exercise of the jurisdiction by the court for discovery of the names and addresses against a third party it is necessary that two conditions be satisfied.” (emphasis added)
[32]	Her Honour went on to consider the decision of Hoffman LJ in Mercantile Group (Europe) AG v Aiyela and said that in order to warrant the exercise of the jurisdiction by the court for discovery of the names and addresses against a third party it is necessary that two conditions be satisfied. These conditions were described by Hoffmann LJ in Mercantile: First, the third party must have become mixed up in the transaction concerning which discovery is required. Secondly, the order for discovery must not offend against the “mere witness” rule, which prevents a party from obtaining discovery against a person who “will in due course be compellable to give that information either by oral testimony as a witness or on a subpoena duces tecum”.
[33]	In Computershare one of the major debates concerned the extent of a Norwich order. Warren J considered decisions in various Australian jurisdictions and concluded:
“[19] … The circumstances of the present proceeding warrant the application of the broader approach of the Norwich order. The plaintiff has provided evidence at an interlocutory stage which stands unchallenged and unrebutted of alleged wrongful use of confidential information. In order to identify the actual information used, the manner of use and, also, the identity of the persons who have had access to such information Computershare is entitled to an order so as to reveal those matters. There is information exclusively within the province of knowledge of the defendants as to the information utilised, the manner of use and the persons who have had access to such use. Furthermore, those persons potentially include third parties who are not at this point parties to the proceedings. An obvious potential such party is the Exchange itself. Similar to the case where a party was entitled to discovery of information in order to trace the disposition of fraudulently obtained moneys so too is Computershare entitled to trace what has happened to its information in the hands of the Perpetual interests especially vis-à-vis the dealings with the Exchange and Mr Hutchinson. If Computershare was compelled to await trial before the information was revealed to it it may well be too late as its dominance in the market place in the provision of its services would be undermined and, further, the value of its next generation software could be totally diminished. Furthermore, on the basis of the final principle stated by Hoffmann LJ in Mercantile I consider that it is in all the circumstances just and convenient to make the order sought by Computershare. I form this view on the basis that the evidence of Computershare stands unchallenged and unrebutted by the Perpetual interests. Secondly, at no stage notwithstanding reasonable opportunity to do so have the Perpetual interests taken the opportunity to depose on affidavit a denial of wrongful use of the information in the course of negotiating or for the purpose of their joint venture with the Exchange. In such circumstances it is appropriate that the plaintiff be granted the relief it seeks with respect to an affidavit of disclosure of the information and the identity of the persons who have been provided with access to such information.” (emphasis added)
[34]	In QNI Metals Bond J summarised the relevant effect of Computershare:
“[43]  In Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626, Warren J made an order requiring the defendant to file an affidavit disclosing details concerning the access, disclosure and use of confidential information based on the old bill of discovery procedure. Warren J relevantly discussed the Court’s jurisdiction to order preliminary discovery in equity. Her Honour concluded that although Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133 was a case in which the jurisdiction was exercised to order discovery of identity in particular circumstances, a broader approach should be taken to that jurisdiction, it not being appropriate to limit it to “identity” cases. In justification of that approach, her Honour referred to the broader approach adopted by Hoffmann LJ in Mercantile Group (Europe) A.G. v Aiyela [1994] QB 366 at 374 and its approval in Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 14 FCR 434 at 445–6 per Gummow J; Breen v Williams (1996) 186 CLR 71 at 120 per Gummow J and Hooper v Kirella Pty Ltd (1999) 96 FCR 1 at 10. Her Honour applied the broader approach to the circumstances in which preliminary discovery in equity could be ordered.” 
[35]	The analysis of the requirements of a Norwich order has been extended in other places. In Stanford Asset Holdings Ltd v AfrAsia Bank Ltd the Privy Council considered an appeal from the Supreme Court of Mauritius. The applicants had sought an order in Mauritius requiring the first respondent bank to disclose to them the names and other particulars of the recipients of a sum exceeding US$11m which had been fraudulently paid out of the first applicant’s account with the bank to another account at the bank belonging to an unrelated company and from there on to unknown parties. The Supreme Court of Mauritius refused the application for a Norwich order. That refusal was overturned by the Privy Council.
[36]	In giving its decision, the Board adopted a fourfold test:
(a)	The applicant has to demonstrate a good arguable case that a form of legally recognised wrong has been committed against them by a person (the Arguable Wrong Condition). 
(b)	The respondent to the application must be mixed up in so as to have facilitated the wrongdoing (the Mixed Up In Condition). 
(c)	The respondent to the application must be able, or likely to be able, to provide the information or documents necessary to enable the ultimate wrongdoer to be pursued (the Possession Condition). 
(d)	Requiring disclosure from the respondent is an appropriate and proportionate response in all the circumstances of the case, bearing in mind the exceptional but flexible nature of the jurisdiction (the Overall Justice Condition).
[37]	This analysis proceeds on the basis that the person who satisfies the Arguable Wrong Condition need not be the person who satisfies the Mixed Up In Condition. That those persons could be the same was not considered and I do not regard this analysis as precluding a Norwich order being granted in that circumstance.
[38]	Computershare has been followed in:
(a)	Nexgen Sydney Pty Ltd v Barakat – “[39] … A Norwich order can be used in order to identify the party alleged to have misused the applicant’s confidential information, but in certain circumstances it can also be used by requiring an existing defendant to proceedings to disclose information that will allow the applicant to trace what has happened to its confidential information.”
(b)	Austin Engineering Pty Ltd v Podulova – “[13]  As formulated in Norwich Pharmacal, the principle was directed at disclosure of the names of wrongdoers otherwise unknown to the plaintiff, but it has since been applied to require disclosure of other details about wrongs allegedly committed: see for example Authors Workshop v Bileru Pty Ltd (1989) 88 ALR 211; 16 IPR 661 (Authors Workshop); Hinchliff v Abu-Dabat (1998) 41 IPR 400; Sky Channel Pty Ltd v Palmer [2003] FCA 1246. This can include information that will allow an applicant to trace what has happened to its confidential information: Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626; [2000] VSC 139 at [18]–[19] …”.
(c)	Tsai v Australia and New Zealand Banking Group Ltd – “[13]  It is now well established that the principles expressed in Norwich Pharmacal are not limited to identity discovery, but extend to information discovery, as is sought here.”
What has happened to the “confidential” information?
[39]	Whether information is truly confidential will depend upon a number of factors. In this case, the relevant background is:
(a)	Marel supplies processing equipment to the poultry industry;
(b)	Marel has a small number of competitors in that field;
(c)	Oestergaard Pty Ltd is Marel’s biggest competitor in Australia;
(d)	Mr Buckmaster resigned from Marel to work for Oestergaard; and
(e)	Mr Buckmaster was subject to the confidentiality provisions of his employment contract as well as the policies referred to above.
[40]	Mr Buckmaster contends that he has returned all relevant material. There is reason to doubt that. A forensic examination of the two laptops was conducted by an external expert (Mr Read from KordaMentha). That examination discloses that:
(a)	with respect to laptop #5139:
(i)	nine external storage devices had been connected to it;
(ii)	Marel documents were accessed from three of those devices: External Drive 2, External Drive 3 and External Drive 4; and
(iii)	the Seagate external hard drive had been connected to it but no relevant artefacts were found.
(b)	with respect to laptop #5159:
(i)	six external storage devices had been connected to it;
(ii)	files located in folders which were labelled as containing Marel documents were accessed from three of those devices: External Drive 2, External Drive 3 and External Drive 4; and
(iii)	it had not been connected to the Seagate external hard drive. 
(c)	External hard drive 3 was accessed by both laptops – most recently on 10 September 2023 – and documents were accessed from folders containing the words “Marel”, “Customers”, “Marel\Poultry”, and so on; and
(d)	External Drive 4 had been connected to both laptops. Laptop #5139 had been connected to this drive on 24 January 2024 and documents within folders named as containing Marel information were accessed. It appears that some of those documents are likely to have been personal to Mr Buckmaster. But other documents strongly suggest, by their folder path location, that they belonged to Marel. They included documents containing the following file path descriptions within a folder named “Marel”: Marketing, Sales\FISH, Business Plan, Customers, PRICING, Training, BUYBACK PROGRAMS, and Marketing\Brochures digital.
[41]	Mr Read took an image of laptop #5139 and captured all of its contents. That revealed the folder structure which enabled a comparison with folders which can be identified as existing on External Drive 4. They follow the same naming convention, but whether the folders are a direct copy of the folders on laptop #5139 cannot be confirmed without access to External Drive 4.
[42]	The folders on Laptop #5139 which, the applicant contends, have been copied include the following which are restricted documents under Marel’s classification systems:
(a)	an internal sales presentation which summarises Marel’s research and technologies used to increase the tenderness of poultry;
(b)	an internal sales presentation that summarises a new machine being developed by Marel;
(c)	an internal marketing specification which is marked “internal use only”;
(d)	an opportunity plan which includes information about a specific client’s facility, the amount previously spent by the client and the plan of approach with respect to a Greenfields site – this customer was not one for which Mr Buckmaster was responsible;
(e)	a product specification of a drum that is patented and which was marked not to be copied or reproduced without written consent;
(f)	another product specification for a specific tender;
(g)	a request for an initial proposal – marked by the external client as being confidential – and which contains information about the proposal, the client’s operations and the end products that they produce;
(h)	a deal pricing tool, which was developed with external consultants, and calculates the levels of discount that can be offered to customers; it contains information relating to Marel’s global pricing strategy;
(i)	spreadsheets setting out the level of discount Marel was prepared to offer to particular clients – it identified products to be sold, associated equipment and the standard and maximum discounts that could be used;
(j)	a quotation including discounted price and terms conditions unique to a particular client as well as a layout designed for the entirety of the client’s poultry processing facility; and
(k)	a technical data sheet that provided detailed information on the design, interface, consumption metrics and installation of equipment – this document was marked “Confidential – Reprinting prohibited”.
[43]	On 13 December 2023 Mr Buckmaster attempted to use WeTransfer.com to send Marel information which included the layout of a new facility for one of Marel’s customers, depictions of the factory layout, process flows and installed base. This occurred after he had received a contract from Oestergaard but before he had given notice to Marel.
The status of the “confidential” information
[44]	Mr Buckmaster did not provide an affidavit. He relies, to a large extent, on statements which had been made on his behalf in correspondence between the parties’ solicitors and on suppositions or inferences proposed in his written submission. 
[45]	In the written submission filed on his behalf it was conceded that Marel had shown that:
(a)	Mr Buckmaster had attempted but failed to transmit a third-party document to Oestergaard – his future employer and a competitor of Marel; and
(b)	he had accessed Marel’s documents on an external hard drive from his work laptops in the months leading up to his resignation and, on one occasion, two days after he ceased employment.
[46]	Mr Buckmaster’s reply to the allegations about the documents referred to in [42] above is that the information they contain is largely publicly available, dated or discloses no imminent or serious danger of damage to Marel’s business that would warrant a Norwich order. I reject that submission. 
[47]	Mr Manuel van ‘t Sant is Marel’s Regional Director Sales for Asia and Oceania. He was cross-examined on his affidavit but only with respect to a few of the documents. He described the documents as containing a wide spectrum of information. One of the documents contained a complete build-up of all the discounts Marel had provided in the past to every customer. It contained information which would allow a competitor to understand its system of discounts and procedures. Others contained information from prospective customers which had been provided in confidence. Where Marel contracted with those clients, the relevant documents contained information relating to Marel’s procedures and pricing. Some of the documents will contain information that is publicly available or which is not otherwise confidential. But I am satisfied that Marel has demonstrated that there has been a transfer of confidential information in a way which is inconsistent with Mr Buckmaster’s contractual obligations.
Application of the principles in Computershare
[48]	I am satisfied of the following:
(a)	Marel has provided sufficient evidence (which, while subject to some challenge, was not rebutted) of wrongful use of confidential information.
(b)	There is information exclusively within the knowledge of Mr Buckmaster as to the information used, the manner of use and the persons who had access to such information.
(c)	Those persons potentially include third parties who are not (yet) parties to the proceedings.
(d)	Mr Buckmaster did not provide an affidavit dealing with any of the issues raised.
Mr Buckmaster claims privilege
[49]	Through his counsel and in an affidavit from his solicitor, Mr Buckmaster claims privilege. In the affidavit of Elizabeth Clair she deposes:
“(3)	My client has reviewed:
(a)	the affidavit of Mr Van’t Sant at court document number two; and
(b)	the originating application at court document number one, in particular the interlocutory relief sought by the applicant at item one under the heading “By way of interlocutory relief.”
(4)	My client is concerned that deposing to the matters listed under the said item one in the originating application may expose him to civil penalty under Corporations Act 2001 section 183 or otherwise may tend to incriminate him or expose him to civil penalty.
(5)	My client exercises his privilege against self-incrimination or exposure to civil penalty and seeks that he is not ordered to give evidence as sought.”
[50]	Section 183 of the Corporations Act provides:
183  Use of information—civil obligations
Use of information—directors, other officers and employees
(1)	A person who obtains information because they are, or have been, a director or other officer or employee of a corporation must not improperly use the information to:
(a)	gain an advantage for themselves or someone else; or
(b)	cause detriment to the corporation.
Note 1: This duty continues after the person stops being an officer or employee of the corporation.
Note 2: This subsection is a civil penalty provision (see section 1317E).
(2)	A person who is involved in a contravention of subsection (1) contravenes this subsection.
Note 1: Section 79 defines involved.
Note 2: This subsection is a civil penalty provision (see section 1317E).
[51]	A person will ordinarily be able to claim privilege where:
(a)	the person genuinely and reasonably apprehends a danger from being compelled to answer the question objected to; and
(b)	the person can show that there is a real and appreciable risk of being liable to a penalty if he or she answers, and that he or she has a bona-fide apprehension of that consequence on reasonable grounds.
[52]	In Deputy Commissioner of Taxation v Shi the High Court considered the privilege against self-incrimination but against the background of the provisions of s 128A of the Evidence Act 1995 (Cth). That section sets out in detail how a person may claim privilege and the information which must be provided in a “privilege affidavit”. Gordon J (with whom Kiefel CJ, Gageler and Gleeson JJ were in general agreement) considered the common law background to the s 128A process and said:
“[30]  What will be necessary to establish whether the information may tend to prove the commission of an offence will vary from case to case. The privilege may be claimed without requiring the person to explain fully how disclosure of the information would bring about the incriminating effect. To require the relevant person to go further would in at least some circumstances annihilate the protection that the section is designed to provide. However, the mere statement by the relevant person that they believe that disclosure of information will tend to incriminate them will rarely be sufficient to protect them from complying with the disclosure order, and it will not do so when other circumstances are such as to induce the court to believe that disclosure of that information will not really have that tendency.” (citations omitted, emphasis added)
[53]	The requirement that a person claiming privilege must do more than merely state a belief that disclosure of information will tend to incriminate is not an aspect peculiar to a s 128A privilege affidavit. It emerges from the common law. Gordon J referred to the observations of Kirby P and Clarke JA in Accident Insurance Mutual Holdings Ltd v McFadden. There Kirby P said:
“4. A mere statement by a witness that the answer may tend to incriminate that witness is not sufficient to found the claim for the privilege against self-incrimination. The Court must be satisfied that there is reasonable ground and that the objection is taken bona fide: Jackson v Gamble [1983] 1 VR 552 at 556. The test applied is whether there is a ‘real and appreciable risk of criminal proceedings … being taken against’ the witness. The test is sometimes expressed as to whether there is a ‘real and appreciable risk of criminal proceedings … being taken against’ the witness: seeRank Film Distributors Ltd v Video Information Centre (A Firm)[1982] AC 380 at 441. A remote or slight possibility of legal peril to a witness may not, in a particular case, be sufficient to invoke the privilege and to sustain a refusal to answer a question …” 
“7. It is for the presiding judicial officer to determine whether the objection taken is good and whether there are reasonable grounds for the belief on the part of the witness that he or she is, or may be, in peril of future criminal or like proceedings if the answer is given. Just as the court must protect the privilege, it must also make sure that the rule is not abused; but applied only where its invocation is justified: see Triplex Safety Glass Co Ltd v Lancegaye Safety Glass (1934) Ltd [1939] 2 KB 395 at 403. The proper procedure in a claim for privilege is to object to each question as it is asked: see Ex parte Reynolds; Brebner v Perry [1961] SASR 177 at 180.”
[54]	Clarke JA referred to Taylor, A Treatise on the Law of Evidence and said:
“… the mere statement by a witness that he believes the answer will tend to incriminate him will not suffice to protect him from answering when the other circumstances of the case are such as to induce the judge to believe that the answer would not really have that tendency (at 1247–1248):
… In all cases of this kind the court must see, from the surrounding circumstances, and the nature of the evidence which the witness is called to give, that reasonable grounds exist for apprehending danger to the witness from his being compelled to answer. When, however, the fact of such danger is once made to appear, considerable latitude should be allowed to the witness in judging for himself of the effect of any particular question; for it is obvious that a question, though at first sight apparently innocent, may, by affording a link in a chain of evidence, become the means of bringing home an offence to the party answering. On the whole, as Lord Hardwicke once observed, ‘these objections to answering should be held to very strict rules’. Vaillant v Dodemead, 2 Atk 524.”  
(emphasis added)
[55]	On the issue of reasonable grounds for an objection, Gordon J said this in Shi:
[34] In assessing whether there are reasonable grounds for the objection, the court must assess whether there is a “real and appreciable risk” of prosecution if the relevant information is disclosed. The gist of the privilege is that disclosure of the information “would tend to expose the claimant to the apprehended consequence”. The “reasonable grounds” inquiry requires the court to assess, having regard to the circumstances of the case and the nature of the information which the relevant person is required to disclose, whether there are reasonable grounds to apprehend danger to them from being compelled to disclose the information. This requires consideration of whether information may tend to prove the commission of an offence, as well as the likelihood, or risk, of steps being taken to prosecute that offence. There must be some material upon which the court can be satisfied of these matters. The court is not limited to information in the privilege affidavit or any other material filed by the relevant person.
[35]  There can be no real and appreciable risk of prosecution, and accordingly no reasonable grounds for invoking the privilege, where the limitation period for commencing a prosecution has expired; where the person claiming the privilege has received a pardon or has already been convicted or acquitted of the crime; or where “the taking of the step in question [the disclosure] will not add to the individual’s jeopardy”. Further, where a court determines that the claim is not made bona fide or is made for an ulterior purpose, such as to protect persons other than the applicant, the court would likely determine that there were not reasonable grounds for the objection.” (citations omitted, emphasis added)
[56]	This case is unlike many of those referred to above in that the claim for final relief against Mr Buckmaster in the originating application only seeks final orders that Mr Buckmaster: 
(a)	deliver up certain documents;
(b)	delete certain electronic documents; and 
(c)	be restrained from disclosing Marel confidential information to any other person.
[57]	Marel does not seek relief based upon an allegation that Mr Buckmaster has, for example, improperly used confidential information to gain an advantage for himself or cause detriment to Marel. It is not alleged that there has been a breach of s 183. Had it been so advised, Marel could have sought a compensation order under s 1317H of the Corporations Act. That would not have required a declaration that s 183 had been breached.
[58]	Section 183 is a civil penalty provision. If it is contravened that can lead to an action by the Australian Securities and Investment Commission seeking a declaration that s 1317E has been contravened. Only ASIC can seek such an order. That is not a complete answer, because the privilege will attach if answering a question or making an affidavit would tend to expose a person to a penalty. 
[59]	The claim for privilege is not made by Mr Buckmaster but by his solicitor on the basis that Mr Buckmaster “is concerned that deposing to the matters listed … may expose him to civil penalty under Corporations Act 2001 section 183 or otherwise may tend to incriminate him or expose him to civil penalty.” Nothing was said which would support a view that deposing to the matters listed in the originating application could expose him to some form of criminal sanction or other type of civil penalty. As Kirby P said: “A mere statement by a witness that the answer may tend to incriminate that witness is not sufficient to found the claim for the privilege against self-incrimination.” 
[60]	The claim is nothing more than a mere statement – not made by Mr Buckmaster himself – that he is concerned that he might be exposed to a Corporations Act penalty. Thus, he does not say anything about matters which might lead him to a genuine and reasonable apprehension of danger. 
[61]	There was also nothing to support a conclusion that ASIC might have any interest in these proceedings which, given that only ASIC can seek a penalty, is an important consideration. There was nothing more than a remote or slight possibility of legal peril.
[62]	The appropriate procedure in a claim for privilege in these circumstances was for Mr Buckmaster to address each part of the claim and provide some basis for the claim of privilege. There was, for example, no attempt made to explain how stating his knowledge about the present location of the “Verbatim STORE N GO USB device” would engage the necessary risk.
[63]	In any event, Mr Buckmaster has also, through his solicitors, admitted to copying a number of folders of documents from a Marel laptop to an external drive and that some of those folders contained documents belonging to Marel. 
[64]	In a written undertaking of 4 March 2024, Mr Buckmaster said that he had provided full disclosure to Marel of “all documents, files, programs or information copied, downloaded or extracted by me or on my behalf from Marel’s systems between 15 November 2023 and 22 January 2024 and on any other date in breach of my obligations to Marel”. In the same document he asserted that he had provided full disclosure to Marel “of all Marel documents, files, programs or information I have provided to third parties since 15 November 2023 in breach of my obligations to Marel, including identifying those third parties and the circumstances of the provision of the information, and if the information is still stored on an online platform”.
[65]	A real and appreciable risk does not exist if a person’s prior statements have already exposed him or her to a risk of being pursued for a penalty where giving answers will not lead to any increase in jeopardy to which the witness is already exposed. This principle was expressed by Lindgren J in the following way:
“[41]  Consistently with the understanding of the nature of the privilege against self-incrimination just adumbrated, the privilege has been held to be not available where it is clear that the taking of the step in question will not add to the individual's jeopardy: Sociedade Nacional de Combustiveis de Angola UEE v Lundqvist [1991] 2 QB 310; [1991] 2 WLR 280; [1990] 3 All ER 283 at QB 324 per Staughton LJ; Marcel v Commissioner of Police of the Metropolis [1992] Ch 225 (CA) at Ch 257 per Dillon LJ; BTR Engineering (Aust) Ltd v Patterson (1990) 20 NSWLR 724 (Giles J) at 730.”
[66]	Mr Buckmaster has admitted: 
(a)	copying files and other documents owned by Marel;
(b)	with respect to some, doing so in breach of his obligations to Marel; and
(c)	providing Marel documents and files to third parties.
[67]	Anything that Mr Buckmaster might say in response to an order made in accordance with the interlocutory relief sought would not expose him to any greater risk than presently exists.
[68]	The information sought would not be in breach of privilege.
Orders
[69]	I order that:
(a)	by 4:00pm on 30 September 2024, the respondent is to serve an affidavit on the applicant:
(i)	stating, in respect of any Marel Confidential Information:
(A)	any person or persons to whom he has disclosed Marel Confidential Information; 
(B)	the Marel Confidential Information he has disclosed to that person or persons;
(C)	the means by which he communicated the Marel Confidential Information to that person or persons; and
(D)	the date or dates on which he communicated the Marel Confidential Information to that person or persons;
(ii)	stating his knowledge about the present location of the following devices (Devices):
(A)	VendorCo ProductCode USB Device;
(B)	WD My Passport 259D USB Device;
(C)	Seagate Expansion HDD SCSI Disk Device; and
(D)	Verbatim STORE N GO USB Device; and
(iii)	exhibiting, to the extent that any of the Devices remain in his possession and control, a file list identifying the files stored on each of the Devices remaining in his possession and control as at 10 May 2024.
(b)	subject to further order, until the hearing and determination of the originating application, the respondent be restrained from disclosing Marel Confidential Information to any other person;
(c)	costs of the interlocutory relief be reserved; and
(d)	the originating application be adjourned to a date to be fixed for review.