Discovery applications must demonstrate specificity, relevance, and possession of documents; broad requests deemed oppressive are not permitted.

JUDGMENT

[Plaintiff's Application For Discovery]

Azlan Sulaiman JC:

Introduction

[1] In September 2023, the Plaintiff filed this action against the Defendant for copyright infringement of its computer software. After unsuccessfully applying for summary judgment of its claim and to strike out the Defendant's counterclaim, after being ordered to pay RM100,000.00 as security for the Defendant's costs to the Defendant's Solicitors as stakeholder, and after filing a bundle of the documents it intended to rely on, with the trial looming the Plaintiff then filed an application for discovery against the Defendant ("Plaintiff's Application"). This Judgment explains the reasons for this Court 's decision on it.

Salient Facts

[2] The Plaintiff is software development company based in Pennsylvania, USA. It claims copyright in computer software for the design, construction, and the infrastructure industries - particularly in the areas of architecture, engineering, construction and operation - which for the purpose of this action it calls "Bentley Software". It further claims that one type of the Bentley Software is an offshore structural analysis software known as "SACS Connect Edition", which it calls "SACS Computer Programs", that optimize and facilitate the design of all types of offshore structures. The Plaintiff claims copyright in the SACS Computer Programs and their various versions, alleging that they further contain the Plaintiff's copyrighted language, codes or notations, and are also embedded with a security mechanism that identifies and reports to the Plaintiff the use of infringing copies of them ("Security Mechanism").

[3] The Defendant is a Malaysian company primarily based in Sarawak but with an office in Kota Damansara, Selangor. Its nature of business is "project managers and consultants in the field of engineering, construction and commerce of all and every description."

[4] The Plaintiff alleges that, based on the information generated by the Security Mechanism, the Defendant and/or its employees were using infringing copies of the SACS Computer Programs in over 10 computers.

[5] Consequently, on 26 September 2023, the Plaintiff brought this action against the Defendant for copyright infringement of its SACS Computer Programs and various versions thereof, seeking the quantified sum of RM4,437,330.00 and other relief.

[6] After filing its Defence and Counterclaim (for damages), the Defendant filed an application for security for costs ("Defendant's Application"), on the notion that, if the Plaintiffs claim for copyright infringement against it were dismissed costs, the Defendant would be put to great expense and effort in having to recover those costs from the Plaintiff in the USA.

[7] The Plaintiff's immediate response to that was to file two separate applications, for summary judgment of its copyright infringement claim and to strike out the Defendant's counterclaim. Quite understandably, if those applications were allowed, that would dispose of this whole action summarily and dispense with the need to even hear the Defendant's application for security for costs. With this in mind, I directed that those two applications be heard first ahead of the Defendant's Application.

[8] As it turns out, on 11 March 2024 I dismissed both of the Plaintiff's applications and issued directions for the hearing and disposal of the Defendant's Application as well as directions for the trial, which at the time was scheduled for three days in late July, and then by consent deferred to late August. Counsels for both parties agreed to those dates.

[9] On 24 April 2024, I allowed the Defendant's Application, ordered the Plaintiff to pay that RM100,000.00 as security for the Defendant's costs, and at a Case Management on 21 May 2024 after the Plaintiff had filed its Bundle of Documents (containing the documents that it intended to rely on to prove its claim for copyright infringement against the Defendant and for thwarting the Defendant's counterclaim),