AUSTRALIA Trends and Developments Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
an applicant … reasonably believes that he, she or it may have a right to relief. The belief therefore must be reasonable … and it is about something that may be the case, not is the case”. With this “recalibration” in mind relating to the stand - ard of proof required, applicants and prospective applicants are increasingly turning to preliminary dis - covery in breach of confidence (and other) cases. A recent matter involving Aristocrat Technologies Australia Pty Limited (“Aristocrat”) and its competitor, Light & Wonder, Inc (L&W), demonstrates the strategic use of preliminary discovery in intellectual property and trade secret disputes. Aristocrat commenced proceedings against L&W in Australia following the launch of L&W’s Dragon Train game, which Aristocrat alleged had been developed using its trade secrets and copyright works. Aristocrat later made similar claims in relation to L&W’s Jewel of the Dragon game. The Federal Court of Australia granted preliminary discovery in April 2024 ( Aristocrat Technologies Aus- tralia Pty Ltd v Light & Wonder, Inc. (2024), FCA 439). Soon after, a substantive trade secret case was filed in Australia. This outcome illustrates the strategic use of an Aus - tralian procedure to obtain evidence early in a dispute. Injunctions and search orders In addition to final injunctions, interim and interlocu - tory injunctions are particularly important in cases involving alleged misappropriation of confidential information. If the recipient of the information is not prevented from using or disclosing it, secrecy may be lost and the applicant’s claim effectively destroyed (except for any claim for damages/compensation). In addition, search and seizure orders (also known as Anton Piller orders) can be critical in this context. Such orders are reserved for only the most extreme cases – where, amongst other elements, there is suf - ficient evidence to establish a real possibility that the respondent might destroy important evidentiary material or cause it to be unavailable for use in court proceedings.
A recent example where such orders were success - fully obtained on an ex parte basis is a Federal Court proceeding commenced by a company against a for - mer employer. The former employee had resigned from the company in December 2023, and the application and orders sought by the company were heard and made on an urgent basis in January 2024. The interim injunction prohibited the former employee from using, disclos - ing, destroying, or deleting any of the files download - ed by him from the company’s servers, and/or any other confidential information or copyright-protected material of the company’s. The search order required the former employee to permit members of the search party to enter specified premises so they could carry out the search. The search was executed the day after the orders were made, during which a range of elec - tronic devices belonging to the former employee were located and seized. The matter was resolved in October 2024 when the former employee provided court enforceable under - takings and agreed to pay financial compensation to the company, having acknowledged that he copied a substantial volume of the company’s intellectual property, including trade secrets, onto external USB storage devices shortly before his resignation. This outcome illustrates the importance of urgent action in disputes of this nature, with interim or inter - locutory injunctions and early access to materials in the possession of the respondent via search orders being invaluable. It also demonstrates the value of establishing a dedicated “IP triage” team, comprising representatives from IT, human resources, in-house legal, and public relations, to ensure an immediate and co-ordinated response to any IP-related issues involving employees Restraints of trade and proposed reforms Although the duty of fidelity is implied in all employ - ment contracts, it is common for employment con - tracts to include express confidentiality obligations on employees (which are often stated to survive post- employment). These contractual obligations may extend to cover subject matter not otherwise protect - ed by the equitable duty of confidence. In addition, to
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