Australian Broadcasting Corporation v Seven Network Limited

The orders that the Court may make under subrule (2) include an order that a person 'make discovery to the applicant of all documents which are or have been in the person's … possession relating to the description of the person concerned'.

background 3 On Monday 8 August 2005 an interview with the singer, Renee Geyer, was screened during the Enough Rope program. During the program, a video recording of which ('Enough Rope recording') is in evidence, Miss Geyer was shown singing and was interviewed by the program host, Andrew Denton. During the interview the following exchange took place: Denton: 'Do you think you're at your peak?' Geyer: 'I'm just starting to get good. I'm only just starting to realise what music is about and creating things and getting ideas and I'm just getting excited now so I'm a late starter in many ways hmm … I've got a few good records left in me I think.'

I will refer to the singing and interview exchange from Enough Rope described aboveas the 'ABC Content'. 4 The second respondent holds a commercial television licence for the television station known as Network 7 in New South Wales. The first respondent is the ultimate parent company of the second respondent. The current affairs program, Today Tonight, is broadcast by Network 7. On Wednesday 10 August 2005 Today Tonight included a segment that was critical of the program Australian Idol which is screened by the television station known as Network Ten. It is alleged that during that segment Network 7 screened the Disputed Adaptation. The Disputed Adaptation is said to involve edited and altered footage of the ABC Content. 5 In his affidavit affirmed on 31 August 2005, Stephen Collins, General Counsel and Head of Legal Services at the ABC, described the Disputed Adaptation as follows: 'On Wednesday 10 August 2005, the Respondents broadcast, on their Today Tonight current affairs program on Network 7, a segment critical of the exploitation of young performers on the Channel 10 Australian Idol program which included the Today Tonight presenter saying, in the introduction to the segment, "But now some of the biggest names in the music industry are saying enough is enough and that Australian Idol is all about television, not music, and contestants should be competing for Logies, not Aria awards" and later included an unauthorized and unlicensed modified version of the ABC Content ('the Disputed Adaptation"). The Disputed Adaptation involves edited and altered footage of Renee Geyer form the ABC Content as follows: (a) An additional voiceover saying words to the effect "Just this week Renee Geyer, one of the best voices this country has produced said at that age its simply asking too much", followed by Renee Geyer saying "I'm just starting to get good, I'm only just starting to realise what music is about".

A video recording of the Today Tonight segment ('Today Tonight recording') was exhibited to Mr Collins' affidavit. As Mr Collins points out in his affidavit, 'The presenter of the show identifies herself as Naomi Robson and identifies the reporter as Glen Connolly but there are no credits that actually identify the producer(s), reporter(s) or editor(s)'. 6 The applicants submit that Renee Geyer's response was made to appear to be a response to an issue discussed in the Today Tonight programme and a reference to the situation of the Australian Idol contestants when it was in fact an answer to a question asked on Enough Rope by Andrew Denton. They also submit that a comparison of the Enough Rope recording and the Today Tonight recording shows that the images in the Disputed Adaptation have been altered or modified. They claim that the creation of the Disputed Adaptation is an infringement of copyright and constitutes misleading or deceptive conduct in breach of s 52 of the Trade Practices Act 1974 (Cth) ('TPA'). Despite the allegation of breach of copyright, the applicants explicitly base their application for preliminary discovery only on their claim of breach of s 52.

Requirements of O 15A 7 The applicants wish to commence proceedings in respect of the alleged breach of s 52 of the TPA but claim that, despite having made reasonable inquiries within the meaning of O 15A r 3(1), they have been unable to ascertain the identity of the person or persons concerned. They submit that the respondents are likely to have in their possession documents that may assist in resolving that problem and that an order in accordance with O 15A r 3(2)(b) that the respondents make discovery of such documents is appropriate and in the interests of justice. 8 The considerations to be taken into account in making an order for preliminary discovery under O 15A r 3 are helpfully summarised by the Full Court of this Court in Hooper v Kirella Pty Ltd (1999) 96 FCR 1 ('Hooper v Kirella') at [31] to [34]. As well as reiterating the requirements of the rule as to reasonable inquiries and the likelihood of 'some person' having knowledge of the facts or possession of relevant documents, the Full Court observed that: (a) An order under the rule may be made against someone who is not implicated in the conduct of which the applicant complains; Stewart v Miller [1979] 2 NSWLR 128 at 135; Hooper v Kirella at [32]. (b) The applicant is not required to demonstrate a prima facie case against the respondent; Levis v McDonald (1997) 75 FCR 36 at 41, 44; Stewart v Miller at 139-140; Hooper v Kirella at [33]. (c) The power to order preliminary discovery under O 15A r 3 must not be used where the proposed proceedings would be merely speculative and the prospect of the applicant succeeding in proceedings against the person he or she wishes to sue is a material factor; Hooper v Kirella at [33]. (d) The order must be necessary in the interests of justice; John Fairfax & Sons Limited v Cojuangco (1988) 165 CLR 346 at 357; Hooper v Kirella at [34].

Reasonable inquiries 9 The evidence adduced by the applicants establishes: (a) On 19 August 2005, the solicitors for the applicants, Baker & McKenzie, wrote to the first respondent and its licensed broadcaster subsidiaries (collectively 'Seven') claiming that the Disputed Adaptation was in breach of the applicants' copyright and contrary to the TPA; (b) On 23 August 2005, the solicitors for the respondents, Mallesons Stephen Jaques ('Mallesons'), wrote to Baker & McKenzie asserting that the segment of Enough Rope used was not sufficiently substantial to infringe the applicants' copyright and claiming that as a prescribed information provider Seven was entitled to rely on s 65A of the TPA; (c) On 24 August 2005, Baker & McKenzie wrote to Mallesons requesting information to identify the producer(s), reporter(s) and editor(s) responsible for the Today Tonight program broadcast on Network 7 on 10 August 2005. They also asked for information in relation to any other persons 'directly involved in the decision to modify and broadcast, or the modification and broadcast' of the ABC Content; (d) The request referred to in (c) was reiterated by letter dated 29 August, however by letter dated 30 August Mallesons, on behalf of Seven, refused to provide the information requested. 10 It appears that during the period covered by the correspondence referred to above the parties were engaged in without prejudice negotiations which did not resolve the issue and the information requested has not been provided.

11 The respondents contend that the applicants have not made all reasonable inquiries and referred the Court to the comments of Tamberlin J in CGU Insurance Ltd v Malaysia International Shipping Corporation Berhad (2001) 187 ALR 279 ('CGU Insurance'). In that case his Honour drew a distinction at [25] between 'some' reasonable inquiries and 'all' reasonable inquiries and commented that the power of the Court arises 'after' the applicant has made all reasonable inquiries. His Honour was commenting, however, on the operation of O 15A r 6 which uses the phrase 'all reasonable inquiries' as opposed to O 15A r 3 where 'reasonable' is not qualified. His Honour observed at [25] that r 6 'appears to contemplate a reasonable exhaustion of alternative sources of information and, in any particular case, involves a pragmatic balancing of considerations'. 12 Although one might attach some significance to the absence of 'all' in O 15A r 3 when it is deployed in O 15A r 6, I am not convinced that the presence of the qualification creates a different standard. Tamberlin J's comment about 'a pragmatic balancing of considerations' recognises a flexibility in the concept that seems inconsistent such a fine distinction as does the concept of 'reasonable exhaustion of alternative sources of information'. In any event, to the extent that the standard differs between the two rules, it is the lower standard that applies here. 13 Clearly making reasonable inquiries is an essential precondition to the exercise of the power, however, what is reasonable is so notoriously dependent on context that it is difficult to make any helpful comments about what is required without taking context into account. One can venture to say that both the extent and nature of the inquiries should be considered including the likelihood that the inquiries would yield a result. The rule does not require applicants to make inquiries that are predictably fruitless. In the present circumstances, the range of reasonable inquiries would seem to be quite limited. In this respect the situation is quite different from that considered by Tamberlin J in CGU Insurance where the issue was whether the plaintiffs might have a cause of action in tort and/or in contract for economic loss arising from circumstances in which a container ship struck a reef in the Great Barrier Reef. In those circumstances it is not difficult to imagine a range of inquiries that might be made beyond seeking access to the ship's log and other records as the applicants in that case sought to do. In this case it is not at all clear to me what other inquiries the applicants might have made in this case other than, as they did, putting the question to the respondents. I see no utility in requiring the applicants to make inquiries of other people depicted on the Today Tonight broadcast. I am satisfied that, in the circumstances, the applicants have made reasonable inquiries and the applicants remain unable to ascertain the description of a person sufficiently for the purpose of commencing proceedings against them.

The strength of the applicants' case and the interests of justice 14 The respondents submit that r 3 contemplates that a prospective respondent exists. They argue that there is no evidence that there were any producers, reporters or editors of the Today Tonight broadcast other than those identified in the broadcast itself; that is, Ms Robson and Mr Connolly. They also submit that the applicants' refusal to give particulars of their claim to the respondents when requested to do so by Mallesons justifies the inference that the applicants have no case or at least not a case that has any prospect of succeeding. For both these reasons they submit that the order is not necessary in the interests of justice. 15 I do not accept these submissions. There does not seem to be any dispute, at least for present purposes, that the Disputed Adaptation was derived from the ABC Content and that, in the circumstances in which it was broadcast, it had the potential to be misleading or deceptive, whether or not in breach of the TPA. The applicants wish to determine who brought about the Disputed Adaptation. I accept that this information is relevant to the decision whether, and against whom, to commence proceedings under the TPA. In the circumstances, it is reasonable for the applicants to suspect that the second respondent may have in their possession documents that would provide this information. 16 However, I accept the respondents' submission that as the ultimate holding company of the second respondent, the first respondent cannot be said to have, or be likely to have, knowledge of relevant facts or to possess relevant documents merely because of its status as a holding company. In the present circumstances, I am not prepared to draw the inference that the first respondent is in a position to command or supply any relevant information. I am not satisfied that the first respondent appears to have or is likely to have or have had any relevant knowledge or documents. Further, any order under r 3 against the first respondent is not, in my view, necessary in the interests of justice. 17 At the hearing of this application the respondents made detailed submissions about the effect of s 65A of the TPA and their alleged entitlement to rely on the section as a defence to a claim under s 52. The applicants rejected these submissions but also argued that these issues were not appropriate for decision in this proceeding. I agree with the latter position and for this reason I do not propose to canvass these submissions. The applicants do not have to make a prima facie case and, as noted above at [8], an order may be made under O 15A r 3 against someone who is merely a witness or bystander and against whom no claim of liability is made. Issues of the proper scope of s 65A or the extended ambit of the TPA under s 6(3) are not appropriate to be determined in this proceeding. It may be that s 65A protects the respondents, and their employees or agents, but that is a matter for substantive proceedings should they eventuate. Nor is it necessary that every element of the proposed cause of action be articulated at this stage. In this proceeding it is sufficient that the issue is not frivolous or speculative. There is an argument to be made on both sides as the duration of the submissions put for each party at the hearing made clear. Those arguments cannot be peremptorily dismissed. That is sufficient to satisfy me that the orders sought are necessary and appropriate in the interests of justice. 18 The respondents contend that, even if the requirements of O 15A r 3 are met, 'on any view' the orders sought are too broad as r 3(2)(b) only authorises the discovery of documents 'relating to the description of the person concerned'. The rule must, however, must be read in context and bearing in mind its expressed purpose. It states expressly that it applies where an applicant is unable to 'ascertain the description of a person sufficiently for the purpose of commencing a proceeding … against that person' (emphasis added). The details the applicants seek seem to me to be necessary to meet that purpose and therefore to fall within that which the provision contemplates. 19 For these reasons I propose to make the orders sought by the applicants, subject to the qualification noted above at [16] in respect of the first respondent. The parties each sought costs against the other. In my view this application should not have been necessary. The second respondent could have supplied the information requested and avoided the unnecessary costs. Although the applicants have not succeeded in their application for discovery against the first respondent, both the respondents were represented by the same counsel and solicitors and the issue of the first respondent took up only a fraction of hearing. As the applicants have in the most part succeeded I propose to order that the second respondent pay the applicants' costs of this proceeding but that the applicants pay the second respondent's reasonable costs of complying with the orders for discovery. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.

Associate: Dated: 16 December 2005 Counsel for the Applicants: Mr BW Walker SC and Ms E Raper

Counsel for the Respondents: Mr TEF Hughes QC and Mr RG McHugh

Solicitor for the Respondents: Mallesons Stephen Jaques