Business Software Alliance and Others v SM Summit Holdings Ltd and another and other appeals

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 24 April 2000
• Neutral Citation: [2000] SGCA 23
• Docket Number: Civil Appeals Nos 176, 177,
• Date: 24 April 2000
• Year: 2000
• Published date: 19 September 2003
• Plaintiff Counsel: VK Rajah SC, Lionel Tan and Simon Cheong (Rajah & Tann),Harry Elias SC, Tan Chee Meng, Michael Palmer, Valerie Tan and Andy Lem (Harry Elias Partnership)
• Citation: [2000] SGCA 23
• Defendant Counsel: Engelin Teh SC and Thomas Sim (Engelin Teh & Partners) (instructed), Manjit Singh and Govin Menon (Manjit Samuel & Partners)
• Court: Court of Appeal (Singapore)
• Subject Matter: Order of court prohibiting discovery of documents seized,Whether discovery barred by appellants' implied undertaking,Tort,Respondents' seizing documents,Whether appellants' can rely on information obtained independently of raid,Scope of implied undertaking,Scope of order for discovery,Test of relevancy,Defamation,Striking out,Whether discovery barred by order of court,"Fishing expedition",Appellants conducting raid on respondents' premises,Civil Procedure,Discovery of documents and information,Whether discovery barred by implied undertaking,Whether respondents' applications for striking out of discovery appropriate,Discovery of documents

(delivering the judgment of the court): These are four appeals against the interlocutory orders made by the High Court in the libel action, Suit 1323/98, taken out by SM Summit Holdings Ltd and its subsidiary, Summit CD Manufacture Pte Ltd, the plaintiffs, against seven defendants, Microsoft Corporation, Adobe Systems Incorporated, Autodesk Inc, Business Software Alliance, Stuart Ong, Lee Cross and Ronald T Eckstrom, the defendants. We shall continue to refer to the parties here as the plaintiffs and the defendants. The appeals arise out of the same facts, and it is convenient to deal with them together in this judgment.

The matters under appeal had their origin in a raid carried out by the defendants at the plaintiffs` premises on 12 August 1997 pursuant to two search warrants obtained by the defendants before a magistrate. These search warrants authorised representatives of the defendants to carry out a search at the plaintiffs` premises for alleged copyright and trade mark offences. In the course of carrying out the raid, the parties representing the defendants found that the two warrants did not authorise them to seize various documents and papers at the premises. For that reason, the fourth defendant, Business Software Alliance (`BSA`), on the same evening applied to a judge of the High Court and obtained a third search warrant, and acting on these warrants they seized and took away a large number of documents (and copies thereof) and other items. Immediately after the raid (`the Summit raid`), the defendants, on 13 August 1997, called a press conference and at the conference they published or caused to be published a press release which now forms the subject of the present libel action.

Soon after the Summit raid, the plaintiffs applied by way of criminal revision to the High Court to quash the search warrants. Almost simultaneously BSA applied by way of criminal motion for an order permitting their solicitors to take copies of the documents and requiring the plaintiffs to deliver further documents. Both the applications were heard before the learned Chief Justice, and at the conclusion of the hearing on 29 September 1997 the learned Chief Justice decided as follows: (i) he upheld the two search warrants issued by the magistrate but quashed the third search warrant granted by the judge of the High Court; (ii) he ordered all the documents (and copies) seized pursuant to the first two search warrants and all items seized pursuant to the third search warrant be returned to the plaintiffs, and (iii) he dismissed the application taken out by BSA: see SM Summit Holdings Ltd & Anor v PP [1997] 3 SLR 922 .

Reverting to the present action, Suit 1323/98, the plaintiffs claimed damages against the defendants for libel contained in the press release published or caused to be published by the latter at the press conference held on 13 August 1997. After the commencement of the action, the plaintiffs applied for a determination of the meaning of the words complained of and also for summary judgment. The application was of course opposed by the defendants. Prior to the hearing of the application, the defendants filed their joint defence to the claim and pleaded, inter alia, justification and the meaning they sought to justified. They also filed affidavits in opposing the plaintiffs` application. At the hearing of the application, counsel for the plaintiffs raised a preliminary objection to the reference by the defendants, in the defence and affidavits, to certain documents and information, which were obtained by the defendants as a result of the Summit raid, on the grounds first, that there was an implied undertaking on the part of the defendants not to use those documents and information in unrelated civil proceedings, such as Suit 1323/98, and secondly, that by reason of the order made by the learned Chief Justice on 29 September 1997 (`the Chief Justice`s order`) the use of such documents and copies thereof and information derived therefrom was impermissible. The assistant registrar who heard the application overruled the objection, and determined that the words complained of bore the meaning as pleaded by the plaintiffs and gave leave to the defendants to amend the pleadings. Subsequently, the pleadings were amended. Against the assistant registrar`s decision both the plaintiffs and the defendants appealed to a judge-in-chambers, each appealing against that part of the decision that was against them. Three appeals were filed: one by the plaintiffs and two by the defendants, the defendants being in two groups, namely, the first, second, third and seventh defendants being one group, and the fourth, fifth and sixth defendants being the other group, each group being represented by separate firms of solicitors. The learned judge, after hearing the arguments, on 3 March 1999 affirmed the decision below and dismissed all the three appeals. Again, both the plaintiffs and the defendants appealed against the decision of the learned judge, and three appeals were filed, namely: CA 39/99 filed by the plaintiffs and CA 37 and 38/99 filed by the defendants (`the three appeals`).

While the three appeals were pending, the defendants on 5 July 1999 filed two applications for, inter alia, a further and better list of documents and specific discovery of certain documents from the plaintiffs, namely, Summons for Further Directions Entered 4236 and 4237/99. The two applications were filed by the parties as follows: one application by the first, second, third and seventh defendants, and the other by the fourth, fifth and sixth defendants; and both the applications were identical in all material respects. Among the documents sought were the following five categories of documents:

(1) all the invoices, sales orders, delivery orders and/or correspondence of the second respondents, Summit CD Manufacture Pte Ltd (`Summit CD`), relating to the following persons or companies:

(a) Hardware House Computer and Electronic Shop; and/or

(b) Hardware House Computer Pte Ltd, and/or

(c) Power Multivision; and/or

(d) Ivan Yee Multi-vision; and/or

(e) PLL Computer Trading; and/or

(f) PT Tomato; and/or

(g) PT Dynamitra

(2) all documents generated during Summit CD`s CD ROM manufacturing process, namely:

(a) sales orders (including those that had been cancelled on the grounds of copyright infringement and/or related problems);

(b) work orders;

(c) printouts;

(d) records of incoming orders; and

(e) other records maintained during the said manufacturing process, but not limited to:

(i) order processing;

(ii) pre-mastering;

(iii) glass mastering;

(iv) nickel plating;

(v) polishing;

(vi) re-cycling; and

(vii) quality control checking

(3) any and all reference documents used during the alleged root directory checks which are purportedly conducted by Summit CD`s personnel;

(4) all documents relating to debts owed by the following parties, including but not limited to, sales orders and/or work orders and/or invoices and/or all correspondence from the respondents to the following customers requesting that payment of their debts be made and/or records of any payments received from the said customers:

(a) Hardware House Computer and Electronic Shop; and/or

(b) Hardware House Computer Pte Ltd, and/or

(c) Power Multivision; and/or

(d) Ivan Yee Multi-vision; and/or

(e) PLL Computer Trading; and/or

(f) PT Tomato; and/or

(g) PT Dynamitra

(5) all documents which support Summit CD`s annual turnover figures for the period 1995 to 1998.

Initially, there were other categories of documents sought to be discovered; however, these categories were later withdrawn pursuant to a court order to expunge all references to those documents from the cause papers in this suit.

Not to be outdone, the plaintiffs a few days later, on 9 July 1999, filed two applications, namely, SIC 4302 and 4303/99, seeking to strike out the defendants` two applications for discovery.

These are the four applications which ultimately give rise to the present appeals. All the four applications came on for hearing before the assistant registrar on 12 July 1999 and he allowed the defendants` applications for discovery and dismissed the plaintiffs` applications for striking out. In his view, the present defamation action was a `distinct and independent` action from the earlier civil suit brought by the BSA to enforce their intellectual property rights (Suit 1596 of 1997). Therefore, whilst the defendants may have been barred from using the improperly seized documents in that earlier suit, they were entitled under the rules governing civil procedure to apply for the necessary documents to defend this action. The applications for discovery were `not a collateral attack on a final decision nor [were they] an abuse of process of the court.` Further, the documents sought to be discovered were relevant, necessary and expedient to ensure a fair disposal of the matter and to save costs.

The plaintiffs appealed from the decision of the assistant registrar on the four applications. When the appeals came on for hearing before a judge in chambers, the three appeals were still pending before the Court of Appeal, and in view of that, the learned judge adjourned the hearing until the disposal of the three appeals. However, he expressed a tentative view that he was in broad agreement with the assistant registrar`s decision.

The three appeals were heard by the Court of Appeal on 18 August 1999, and its judgment was handed down on 21 September 1999. The court held as follows: first, the Chief Justice`s order prohibited the use of all documents and copies thereof obtained in those criminal proceedings, as well as the use of all information extracted from such documents, for any collateral purpose; secondly, aside from the Chief Justice`s order, there was an implied undertaking by the defendants that they would not use the documents or copies thereof obtained by...