The battle between Gram Engineering and Bluescope is continuing: this time Jagot J has ruled that Gram’s managing director (and sole shareholder), Mr Mann, may have access to financial information Bluescope has been required to make available.

Following the Full Court’s ruling that Gram’s design for its steel fencing panel was valid and Bluescope had infringed that design, Bluescope has been required to provide an affidavt disclosing its sales, revenues and costs so that Gram can make an informed election whether to seek damages or an account of profits. Bluescope claimed confidentiality in the information and Gram applied for permission to disclose the information to Mr Mann so that Gram could make an informed decision.

Jagot J was not at all inclined to accept that most of the information was confidential in the sense of requiring stringent protection: it related to the period 2005 – 2010 and was largely stale. However, some more recent information relating to the period 2013 – 2015 could be fairly regarded as sufficiently current and confidential to warrant protection.

However, confidentiality alone is not enough to resist production. Where the information is relevant, a balancing exercise is involved.

Jagot J accespted that the relationship of the proposed disclosees to the discloser’s trade competitor was highly relevant, especially where the disclosees owed fiduciary obligations to the trade competitor (and so putting them potentially in a position of conflict of interest).

Here, however and unlike the cases Bluescope relied on,[1] Gram was not a large company with a large (executive) staff. Mr Mann was the managing director and sole shareholder. It was “not difficult to infer that he was [Gram’s] controlling mind.” He was the person who would have to make the decision whether to proceed with a claim for damages or an account and he could not make that decision without access to the relevant infromation.

Gram Engineering Pty Limited v BlueScope Steel Pty Limited (No 2) [2016] FCA 452