Australia: Discovery of electronic files in litigation: do you identify and preserve potentially discoverable documents early?

In any litigation, a party's obligation to disclose relevant documents can spark debate about what must be produced. This occurred in the recent case of Integrated Medical Technology Pty Ltd and Anor v Gilbert and Ors [2015] QSC 124 where the Supreme Court of Queensland considered whether, in the context of a copyright dispute about software and source code, various system and other electronic files needed to be disclosed.

The decision is a reminder to parties involved in copyright and other disputes that sometimes electronic files which are less obvious are still relevant, and must be produced. The case also demonstrates the importance of giving early consideration to some of the less obvious documents that may have evidentiary significance, so that they can be appropriately identified, preserved and produced if they are ultimately called for.

The facts

Integrated Medical Technology Pty Ltd and Others (IMT) commenced proceedings against a number of former employees for breaches of copyright, confidence and other duties including contractual, fiduciary and statutory obligations. In those proceedings, which are ongoing, IMT alleges that some former employees copied or misused computer software source code.

When IMT received the defendants' disclosure, it formed the view that certain documents which should have been discovered had not been disclosed. In particular, IMT was interested in reviewing a range of the defendants' electronic files which were not part of the software or source code itself, but may have had some relevance to the issues in dispute. IMT filed an application asking the Court for orders to compel the defendants to disclose the additional files and other documents.

The decision

Whether a particular document, file or class of documents has to be disclosed depends on the issues in dispute between the parties. The question of what is relevant must be determined on a case by case basis.

In this case, Justice Jackson cautioned that the obligation to make disclosure was not a general roving inquiry, but went on to find that the defendants had taken too narrow a view of their duty. His Honour required the defendants to disclose additional electronic files because they could have evidentiary significance to the issues in the proceeding. Those files included object, temporary, DLL, text, installation, RAR, help, build, executable, data configuration, bitmap, report and log files, none of which were directly linked to the source code.

However, IMT did not enjoy total success in obtaining all of the documents it sought. It was unable to compel disclosure of a number of categories of documents because it failed to prove sufficiently that those documents actually existed or were in the defendants' possession or control.

Managing your disclosure obligations

It is now well understood that the obligation to give disclosure of documents extends to all forms of documents, including purely electronic information and its metadata. In some cases, the medium in which the information is stored might also need to be disclosed – for example, a database that contains discoverable documents may itself be discoverable.

At times, it may be difficult to recognise a class of document or electronic file as having relevance to a dispute. There are various strategies which you and your business can implement to ensure that information management, identification, preservation and collection of all relevant and potentially documents and electronic files occur efficiently at the start of a dispute. Particular steps might include:

• ensuring there are adequate information management systems in place in your organisation to store your electronic information
• taking early action to identify and preserve electronic information which may be relevant to a dispute
• giving early and proper consideration to the potential classes of documents your opponent or third parties might have which are relevant to the dispute
• taking steps to gather intelligence and evidence about the existence of those documents which may be held by your opponent.

Key takeaways

Success in litigation often turns on the details and metadata of documents and other electronic files. Sometimes the importance of a file, document or class of documents is not obvious until later in the dispute, and often not until the trial has begun. Further, you may need to fight for the evidence you need to win your case.

Proper systems and planning about documents at the beginning of a dispute will help to give you and your business the best opportunity of success. Taking steps like those outlined above enables you to respond properly to requests made for documents, and will better equip you to hold your opponent accountable if they fail to meet their duty to make proper disclosure. Being well prepared can help you avoid and reduce the cost and distraction of side-disputes about disclosure and get on with what really matters – achieving your best outcome.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.