IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
HIGH COURT ACTION NO 1779 OF 2011
Before : Deputy High Court Judge Au-Yeung in Chambers
Date of Hearing : 3 February 2012
Date of Decision : 3 February 2012
D E C I S I O N
1. The plaintiff applies for (A) a preservation order concerning confidential materials; (B) ancillary disclosure order against thedefendants in respect of confidential materials; and (C) continuation of an interim injunction restraining the defendants from breachingthe provisions of the non-disclosure/non-compete agreements signed by the defendants. The preservation order has been dealt withafter discussion. The question is whether, pending the substantive hearing of the plaintiffs’ application, I should make an interimdisclosure order and continue the interim injunction of accepting an undertaking from the defendants.
2. The plaintiffs are entities in the same company group engaged in the business of buying and selling overseas real properties toinvestors. The defendants were former contractors engaged by the plaintiffs as agents in respect of the plaintiff’s property portfolio.D1 is the sole director of both D2 and D3.
3. On the 13 August 2011, the independent contractors contract was terminated. Those contracts contained non-disclosure of confidentialinformation clauses.
4. The defendants are said to have access to the confidential information of the plaintiffs after termination of the contract. Theyalso appeared to have contacted two of the plaintiffs’ exclusive third-party agents and have set up and are carrying on a competingproperty business in Hong Kong through D3.
5. The plaintiffs commenced this action for breach of contract, breach of confidence and torts committed by the defendants during and/orafter their termination as contractors. In amending the writ, the plaintiffs further sued in breach of undertaking, copyright infringementand defamation.
6. On 30 January 2012, the plaintiffs obtained, on ex parte basis, a preservation order from Fung J concerning materials comprisingP2’s confidential information which the defendants wrongly had access to since termination of the contractual relationship. Theex parte order was served on Hamilton Brand, Plaintiffs’ e-mail service provider and an entity mentioned in paragraph 3(2) of theex parte order, on the following day.
7. On 1 February, 2012, the plaintiffs solicitors received information from Hamilton Brand showing that D1 had contacted that entityon 31 January and 1 January by e-mail and by phone:
8. Such contact showed an attempt by the defendants to breach paragraph 3(2) of the ex parte order because gaining access to the relevantMX records (concerning the defendants e-mail accounts) would make it possible that the records contained in the archive repositorycould be tempered with or deleted. It was also confirmed by server access logs kept by Hamilton Brand that there had been successfulaccess to the plaintiffs’ management accounts. The un-authorised accesses to e-mails were over 14,000. The e-mails contained confidentialinformation and trade secrets.
9. P2 seeks an ancillary disclosure order compelling the defendants to disclose full details of the un-authorised access to e-mailsin their possession custody or power since their termination on 13 August 2011. Such an order is said to be urgently required bythe plaintiffs to identify any third parties who may have (through the defendants) wrongfully received the confidential informationsuch that urgent curative measures might be put in place and additional third parties named as defendants.
10. The plaintiffs also seek for continuation of the interim injunction against the defendants on the ground that there was evidenceof breach of the non-disclosure agreement which bars the defendants from dealing with the supplier, agent, customers for periodsranging from 6 to 12 months
The disclosure order
11. Mr Chau for the defendants contend that:
12. Mr Chau suggests that there is no urgency in making an interim preservation order now but only after arguments. A tight timetablefor filing of evidence and hearing can be imposed. I do not think this is realistic. The supporting affidavits which the defendantsneed to answer are hefty.
13. The plaintiffs are involved in the business of buying and selling of properties. The information is time sensitive. By its nature,the confidential information, once disclosed to third parties, will lose its confidentiality and cause damage to the plaintiffs.The clientele will be lost. Urgency is demonstrated.
14. A disclosure order can be made in aid of the preservation order. I accept that this application is not for early discovery or inspectionbut with a view to ascertaining persons to whom the confidential information might have been disclosed, such that those third partiesmight be made defendants if necessary. In CSAV Group (Hong Kong) Ltd v Jamshed Safdar, unrep, CACV133/2006, 28.4.2006, Rogers VP, the Court of Appeal upheld the disclosure order made in aid of the preservation order.The Court of Appeal, however, refused to allow inspection and taking of copies.
15. The disclosure order should be framed in clear terms that should leave a defendant in no doubt of what he has to disclose and thatthe ambit must not be too wide as to be oppressive. The complaint that the proposed terms of the disclosure order do not followthe standard terms in PD 11.2 can be dealt with easily. The standard terms (paragraph 5 under “disclosure of information by thedefendant”) are just the starting point which can be adjusted as and when the case requires. The standard terms require a defendant to state where the listed items are, those to whom he has supplied those listed items, and the names and address of everyone towhom he has supplied the listed items, full details of the dates and quantities of every such supply.
16. I am satisfied that the plaintiffs are not asking beyond what is standard and justifiable with the terms as amended by me. The defendantsare required to do no more than disclose whether and what confidential information they have disclosed or supplied to third partiesand to ascertain the current whereabouts of the confidential information. They are not required to disclose how else they themselveshave used the confidential materials at this stage. That might be a matter for future discovery. Nor are they required to contactthe third parties to ascertain how the confidential materials have been used by them.
The interim injunction
17. The only issue is whether or not the terms of the interim injunction should continue in the form of an order or undertaking. MrChau submits that an undertaking and an injunction are, in effect, the same thing. Yet, an injunction might create future proceduralproblems as it might be more difficult to set aside. An undertaking is more suitable in view of the fact that there will be a substantivehearing for arguments.
18. The evidence points strongly to breach of the contracts. The defendants had contacted the exclusive agents is engaged by the plaintiffsto provide ancillary services to the plaintiff’s customers, trying to convince those exclusive agents to work for the defendantsinstead of the plaintiffs and sought to persuade them to deliver future clients to the defendants and not P2 for financial reward. The defendants had interfered with a purchase contract under which the purchasers allowed their deposit to be forfeited and becameuncontactable thereafter. Further, D1 wrongly accessed P2’s management account without authority, and commented on the plaintiffsbeing “stupid” not to have changed the code of access to those of management accounts.
19. The defendants were bound by the nondisclosure agreement. On termination of the contract, D1 had deceived the plaintiffs into believingthat he did not possess the plaintiffs’ confidential information. Despite the plaintiffs’ reminder by letter dated 16 August2011 of the defendants’ non disclosure obligation and the defendant’s confirmation on 26 September 2011 and undertaking not tobreach the non-solicitation and nondisclosure agreements, that undertaking had been breached.
20. I agree with Mr Lo that the defendants’ word is not to be trusted. In my view, the proper thing to do is to continue with theinterim injunction instead of accepting an undertaking from them. I therefore grant an order in terms of paragraph 3 of the plaintiffssummons with the slight amendment that the injunction shall continue until the contractual date of expiry of the restraint clause,“or the substantive hearing of the plaintiffs summons, or” further order of the court, “whichever is the earlier”.
21. With regard to the plaintiffs’ summons, I order that:
22. The preservation order has been dealt with after discussion of the parties. There have been variations to the terms of the ex parteorder. Whilst I appreciate the efforts of the defendants in trying to discuss with the plaintiffs on varying the terms of the preservationorder, the time available since grant of the ex parte preservation order until today was too short for a consent summons to be signedto dispense with hearing of this part of the plaintiffs’ application. I therefore ordered that costs should be in the cause ofthe action.
23. The defendants have resisted, without success, the application for interim disclosure order and continuation of the injunction.It is true that the terms of the disclosure order have been modified in the course of the arguments. However the plaintiffs are eventuallyable to convince me that there is sufficient urgency to make an interim order to day. I consider it appropriate to order the costsin relation to these two limbs of the application to be the plaintiffs’ costs in the cause of the plaintiffs summons.
Mr Benny Lo, instructed by Reed Smith Richards Butler, for the 1st to 3rd Plaintiffs
Mr Jeffrey Chan, instructed by Tanner De Witt, for the 1st to 3rd Defendants