Wartsila Ship Design Singapore Pte Ltd v Liu Jiachun and others

Yeong Zee Kin SAR:

[1] The plaintiff is a company that is engaged in the ship design business. The fifth defendant is in the business of providing naval architectural services, particularly ship and marine structure design. The first to fourth defendants in this case were the former employees of the plaintiff. The first to third defendant incorporated the fifth defendant; they, along with the fourth defendant, are currently its employees. The sixth to eighth defendants are the wives of the first to third defendants respectively and they are also the directors and shareholders of the fifth defendant.

[2] The present application is one for the re-tender of copies of ship drawings, in their native AutoCAD format, that the fifth defendant had disclosed in compliance with four discovery orders. This is not an application for discovery, but an application for supply of copies of electronic documents that had previously been ordered to be disclosed.

[3] The substantive claim between parties involves, inter alia, issues of copyright infringement arising from a breach of employment contract. The plaintiff claims that the first defendant had downloaded a list of 1,719 drawings from them. The plaintiff also claims that the ship drawings disclosed by the fifth defendant infringes their copyright. During discovery, the fifth defendant had disclosed 1,903 drawings. Copies of these drawings were supplied to the plaintiff in PDF format on 3 occasions: ie, 9 December 2013, 8 January and 9 January 2014. On 20 February 2014, the plaintiff wrote to the defendants and requested for copies of these documents in their native AutoCAD format.

[4] On 20 March 2014, the third defendant disclosed a portable hard disk belonging to the third defendant containing, inter alia, ship drawings in AutoCAD format. These were supplied to the plaintiff who, upon looking through the metadata of some of these documents, discovered that the date and time of creation of some of these drawings were exactly the same as those that were owned by the plaintiff. The specific date and time is not important at this juncture except that this was a date and time in 1996, before the incorporation of the fifth defendants in 2011. Incidentally, the plaintiff has been registered since 1976; and the first to third defendants have been working for the plaintiff since 1994.

[5] After this discovery, the plaintiff filed the present application requesting for the re-tender of all the ship drawings (that had previously been supplied by the fifth defendant in PDF format) in their native AutoCAD format, with internal metadata intact. Their submissions may be summed up in two main planks. First, the orders for discovery of these documents had already been made. Hence, the application was not meant to revisit the issue of disclosure, but to enforce their entitlement to be supplied with copies in their native format. This is because the Part V of the Supreme Court Practice Directions (the e-discovery PD) requires that copies of electronic documents be supplied in their native format with internally stored metadata. In any event, the drawings were first created and should still exist in AutoCAD format and the fifth defendants had in fact to take the additional step of converting these drawings to PDF format before supplying them to the plaintiff. The plaintiff is asking for no more than digital copies of the originals.

[6] Second, the plaintiff has discovered evidence from examining the metadata in the AutoCAD drawings from the third defendant’s portable external hard disk that have essentially put them on a train of inquiry: these drawings are the fifth defendant’s drawings and they bear a date and time stamp that is exactly the same as one of the plaintiff’s drawings created in 1996. This was created before the fifth defendant was incorporated in 2011. The plaintiff intends to pursue this line of inquiry in order to ascertain how many of the drawings that the fifth defendant had already disclosed bear the exact same date and time stamp as drawings that the plaintiff owns. This will then be used to prove that the defendants had copied the plaintiff’s drawings.

[7] The defendants oppose the application on essentially one ground: copies of the drawings had already been supplied in PDF format, which is listed in the Practice Directions as a reasonably usable format (whereas the AutoCAD format is not so listed), and it would be oppressive and prejudicial to require them to re-tender copies in native format. The defendants submitted that the plaintiff had not specified the file formats in which the drawings were to be supplied in any of the four discovery applications under which the orders for disclosure were made. The defendants had acted reasonably by selecting the PDF format, which is listed in the e-discovery PD as a reasonably usable format, when they supplied copies. These were provided on three occasions between 9 December 2013 and 9 January 2014; and all three tenders had been accepted by the plaintiff. The defendants point out that between 9 December 2013, when the first batch of drawings in PDF format was supplied, and 20 February 2014, when the plaintiff made its request for re-tender of these drawings in native AutoCAD format, a period of two and a half months had passed.

[8] The defendants also rely on paragraph 52(4) of the e-discovery PD, which states that “the party giving discovery shall not be required to supply copies of electronically stored documents in more than one format”, to bolster their submissions that they are not bound to re-tender the drawings in native format since they have already provided – and the plaintiff had accepted – the drawings in PDF format. They also rely on the following passage from “Discovery and Inspection of Electronically Stored Documents: A Commentary on Practice Direction 3 of 2009 (Part II)”, Law Gazette, November 2009, an article that I had previously written where I had expressed the following views:

[9] Before I leave my discussion of the legal submissions, I should deal with a minor skirmish relating to certain representations made by defendants’ counsel during a pre-trial conference on 12 March 2014. The certified transcripts record that counsel for the defence had agreed to provide the drawings that are now the subject matter of the application before me in native AutoCAD format. Pursuant to this, I had directed them to provide the copies by Friday, 21 March 2014. As defendants’ counsel explained, he reviewed his client position after the pre-trial conference and thereafter wrote to the plaintiff’s counsel on 20 March 2014 retracting his offer and stating his client’s position as to why they objected to the plaintiff’s request. The plaintiff sought to prevent the defendants from reneging from their counsel’s offer. I think that there is very limited mileage that the plaintiff can make out of this.

[10] The framework for the supply of copies of electronic documents that is set out in paragraphs 52(1) and (2) of the e-discovery PD is for copies of discoverable electronic documents to be supplied in their native format with internally stored metadata intact:

[11] That is the starting point. Under paragraph 52(3), the framework allows the party entitled to discovery a choice – he may specify the file format that he wishes to receive the electronic documents. The party giving discovery can either propose a reasonably usable format if he does not agree to supply the electronic documents in the format that had been request. A list of reasonably usable format is provided to enable parties to reach a consensus. If parties are unable to come to an agreement, then the party giving discovery can supply copies in native format:

[12] As can be seen, the framework provides a degree of party autonomy but defaults to the native format if parties are not able to come to an agreement.

[13] Turning to our present case, the onus laid first on the plaintiff to specify to the fifth defendant that they required copies of the drawings to be supplied in their native AutoCAD format. They had omitted to do so. This was the first wrong. The fifth defendant ought to have sought an agreement with the plaintiff before supplying copies of the drawings in PDF format. The list of reasonably usable formats is intended to provide a list of common file formats that can be used as a neutral list to assist parties in reaching an agreement. It is not intended to provide a safe harbour in the sense that the party supplying copies cannot be said to have discharged his obligations by providing copies in one of these reasonably usable formats. It is clear from the e-discovery PD that the default disclosure format where no consensus is achieved is the native format. Hence, the fifth defendant erred by unilaterally electing to supply copies in PDF format. This is the second wrong.

[14] Can two wrongs make things right? I think not. In this case, the fifth defendant had tendered copies in PDF format on three occasions over a period of 1 month – 9 December 2013, 8 January 2014 and 9 January 2014 – and the plaintiff had accepted each of them without protest, which eventually came on 20 February 2014, more than a month after the last tender. As highlighted by the defendants, this is some two and half months after the plaintiff had received the first tender of drawings. There is some force in the submission that after a course of conduct in accepting the PDF versions without protest, the plaintiff should not now be permitted to demand for a re-tender. I should think that if one were minded to, one might find in the plaintiff’s acquiescence and course of conduct in accepting the two subsequent tenders of drawings in the same PDF format sufficient basis for an ex post facto implied agreement that PDF format was acceptable to the plaintiff. At the very least, the plaintiff’s acquiescence and course of conduct should amount to an estoppel preventing them from now demanding a re-tender.

[15] The purpose of paragraph 52(4) is intended to prevent abuse by limiting the supply of copies to one format: “The party giving discovery shall not be required to supply copies of electronically stored documents in more than one format.” Implicit in this statement is the assumption that there ought to be only a single tender. Paragraph 52(4) would have operated in this precise factual scenario to prevent a party, having agreed to accept electronic documents in one format, from thereafter putting the party giving discovery at a procedural disadvantage by requiring him to re-tender these documents again in a different format. This would be prejudicial to the party giving discovery.

[16] In Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd and another [2012] SGHCR 19, the court was faced with a similar situation:

[17] I cannot agree more with the sentiments expressed in this passage. If there had been an agreement validly reached between parties to accept a tender of the drawings in PDF format, and the drawings having been so tendered and accepted, the plaintiff ought not be allowed to compel the fifth defendant to re-tender documents that are otherwise perfectly legible for it will be prejudicial to the fifth defendant.

[18] Where does procedural fairness lie in this case? “One of [the e-discovery PD’s] objectives is to promote the exchange of electronically stored documents in a text searchable electronic form”: per Lee Seiu Kin J in Sanae Achar v Sci-Gen Ltd [2011] 3 SLR 967; [2011] SGHC 87, at [11]. The e-discovery PD established a framework wherein parties are permitted to agree on the file format for the supply of copies but defaults to the native format when there is no consensus. Parties are thereby exhorted to engage in dialogue in order to establish consensus. The provision of a default rule in favour of the native format is therefore intended to discourage unilateral decision-making in the selection of the file format in which electronic documents are to be supplied.

[20] The fifth defendant also did not come with clean hands. Had they tendered the drawings in the native AutoCAD format in accordance with paragraph 52(3) of the e-discovery PD, or had they sought an agreement with the plaintiff before tendering the drawings in PDF format, they would have had the full protection of paragraph 52(4). Having made a unilateral election to tender the drawings in PDF format, can they now protest that a re-tender is oppressive? I think that their protest is weak.

[22] For the foregoing reasons, I grant an order-in-terms of the plaintiff’s application for the re-tender of copies of the drawings in native format, but dismiss the prayer for a peremptory order.