Drivetime Radio Australia Pty Ltd v Pivotal Creative Solutions Pty Ltd trading as Broadcast GP

CATCHWORDS : PROCEDURE - Supreme Court Procedure - Procedure under rules of Court - Evidence - Subpoenas - Restricted access to documents claimed to be confidential

AMI Australia Holdings Pty Ltd v Fairfax Media Publications Pty Ltd (2009) NSWSC 1484 Australia Pty Ltd v Starkey Consulting Pty Ltd (2008) NSWSC 1136 Gray v Associated Book Publishers (Aust) Pty Ltd (in liq) (formerly the Law Book Co Ltd t/as LBC Information Services) (2002) FCA 1045 CASES CITED : NAK Australia Pty Ltd v Starkey Consulting Pty Ltd (2008) NSWSC 1136 Portal Software v Bodsworth (2005) NSWSC 1115 Telstra Corp Ltd v Australis Media Holdings [1997] NSWSC (Unreported, McLelland CJ in Eq, 10 February 1997) TZ Ltd v ZMS Investments Pty Limited & Ors; Sigalla v TZ Ltd [2010] NSWSC 138

Drivetime Radio Australia Pty Ltd (plaintiff) PARTIES : Pivotal Creative Solutions Pty Ltd t/as Broadcast GP (first defendant) Helen Ann Whelan (second defendant)

COUNSEL : M Sneddon (plaintiff) M Hall (defendants)

SOLICITORS : Somerville Legal (plaintiff) Kenny & Co Solicitors (defendants)

IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION

2009/290257 Drivetime Radio Australia Pty Ltd v Pivotal Creative Solutions Pty Ltd t/as Broadcast GP

JUDGMENT (ex tempore) 1 HIS HONOUR: There are before the Court four motions, three brought by the defendants Pivotal Creative Solutions Pty Ltd and Helen Ann Whelan in respect of subpoenas for production issued at the request of the plaintiff Drivetime Radio Australia Pty Ltd and seeking, in effect, first, leave to mask or redact documents produced on subpoena by KND, secondly, restrictions on access to documents produced on subpoena by Alcon Laboratories and by Somerville and Co, and thirdly, restrictions on access to documents produced on subpoena by Bayer and MYOB. The fourth motion is brought by the plaintiff Drivetime and seeks general access to documents produced on subpoena by Boehringer, access to which has apparently previously been limited, and to have set aside subpoenas addressed to Digital Mail and Media Mail. However, counsel for the defendants having indicated that those subpoenas will not be called on, those claims are not now pressed. The issues therefore relate essentially to the extent of access to be granted to the documents produced in response to the plaintiff's subpoenas.

2 The plaintiff's case as articulated in its amended statement of claim, can be summarised for present purposes as: (1) both the plaintiff and the first defendant are engaged in the business of distributing material recorded on compact discs to members of the health profession - a in particular, general practitioners and pharmacists;

(2) the distribution of that material is funded by sponsorships, particularly from pharmaceutical companies;

(3) the first defendant has published various reports to sponsors and prospective sponsors which are said to be misleading and deceptive, essentially in describing the extent of market penetration and scale of distribution and reception of the second defendant's products;

(4) as a result, the first defendant is attracting or may attract business which would otherwise come the plaintiff's way, and thus the plaintiff has suffered and is suffering loss and damage.

3 The defendants admit publication of the reports in question, at least for the most part, and the real question is whether the representations made, conveyed or contained in them are misleading or deceptive.

4 The defendants have given discovery. That discovery has been of limited assistance to the plaintiff, as the defendant has not retained certain documents which the plaintiff contends it might be expected to have had.

5 The proceedings before me were conducted largely having regard to a schedule that the defendants had prepared, specifying what particular documents produced on subpoena were the subject of objection in respect of general access (as distinct from access limited to the legal representatives and experts) and arranging them in 16 specified categories. It is common ground that that schedule was provided to the plaintiff's representatives about a week ago, and a response invited to it, which was not forthcoming. It is also germane that all the documents in question have already been produced to the Court and the plaintiff's representatives, though not the plaintiff itself, have had access to all of them, in the sense that access on a basis restricted to the legal representatives has previously been granted.

6 The defendant reduced to short minutes the orders sought: 1. Set aside the subpoenas issued by the Plaintiff to KND Web Consultants Pty Limited and MYOB Australia E1 Pty Limited on 15 February 2010 and order that there be no access to documents held in the Registry in relation to those subpoenas. Direct any part holding copies of any of those documents to return them to the Registry forthwith.

2. Order that access to documents identified in Column 4 of categories 1, 3, 4, 5, 6, 7, 8, 9, 13, 14 and 15 in the attached Table be limited to the Defendants and to external solicitors, counsel and experts retained by the Plaintiff.

3. Order that access to the documents identified in column 4 of category 10 of the attached Table be limited to the redacted versions thereof.

4. Otherwise and subject to all prior orders there be general access to all documents produced under subpoena.

5. The Plaintiff issue no further subpoena without prior consent of the Defendants or leave of the court. 6. The Plaintiff pay the Defendant's costs of the Motions filed on 9 and 30 March, 27 April and 4 May 2010.

7 In the course of the hearing, as a result of some ground given by each party, order 1 was no longer pressed, and order 2 was amended by inserting the reference to category 13.

8 Before turning to the categories that remain in dispute, I shall make some general observations. First, there is not before the Court, at least any longer, any application to set aside any of the subpoenas. The application before me is one at the second of the three stages described in the authorities as pertaining to production of documents on a subpoena. That is the stage at which documents have been produced to the Court, and the Court is asked to exercise its discretion to grant access to the documents so produced. That is a discretion of considerable width, in the exercise of which the Court has regard to the interests of justice to the parties, and also justice to, and the rights of, third parties called on to produce documents on subpoena.

9 I accept that, at this stage, insofar as the Court may be concerned with questions of relevance, the same broad test of relevance as applies at the first stage on an application to set aside a subpoena is appropriate. The Court should not take an unduly rigorous view of what is, or may prove to be relevant, and if it is "on the cards" that a document may add in some relevant way to the body of evidence in the case, even if not ultimately admissible, then it will be sufficiently relevant.

10 I also accept that confidentiality is no absolute objection to a grant of access. But it is a relevant consideration - particularly so, the confidentiality of a third party, to which a Court will have regard by designing an appropriate access regime in order to minimise the risk of injustice to a party or third party arising from exposure of its confidential information. In that context, while Courts are reluctant to exclude the party personally from knowledge of relevant material by limiting access only to the parties' advisors, that is a course that nonetheless sometimes has to be taken. (See Portal Software v Bodsworth (2005) NSWSC 1115, [42]-[45] and NAK Australia Pty Ltd v Starkey Consulting Pty Ltd (2008) NSWSC 1136, [8]-[9].) Thus, while restricted access is undesirable and the Court endeavours to avoid it, it is sometimes a necessary course in the interests of justice.

11 Thirdly, although the defendant contends that many of the documents in the subject dispute are irrelevant as well as confidential, it does not seek to prevent the plaintiff's external lawyers and experts from having access to them; it seeks only to restrict access to the plaintiff itself - which, in the present context of a corporate plaintiff, means the plaintiff's directors, employees and agents other than external lawyers and experts retained for the purpose of the proceedings.

12 Fourthly, as I have commented, the plaintiff's lawyers have had, though it is not entirely clear that they have exercised, an opportunity to inspect the documents the subject of dispute, as specified in the schedule to which I have referred.

13 Fifthly, any order that I make restricting access will be interlocutory and, if the plaintiff can establish a case for more extensive access than that granted on an interlocutory basis, or that any of the documents referred to in the schedule do not in fact fall within the description of the relevant category, it will be open to it to make an application then.

14 Sixthly, in the course of the hearing, counsel for the plaintiff conceded that the documents in categories 6, 7, 8, 11, 12, 14 and 15 could not advance the plaintiff's case in a relevant way. In addition, there was no dispute about the documents in categories 2 and 16, the defendant having agreed that the plaintiff should have access to those documents.

15 Seventhly, no objection has been taken by any recipient to any subpoena, nor to access being granted to the documents produced pursuant to them. As I have said, the documents have already been produced. This is particularly significant when it comes to any argument that a subpoena is oppressive.

16 Eighthly, as to the remaining disputed categories, no examples are in evidence. In some respects, this has made it difficult to determine whether the categories in question are truly entitled to the protection of restricted access. It was agreed that it would be convenient if I proceeded to rule in principle on the various categories, leaving for further argument, if necessary, whether a particular document referred to in column 4 of the schedule was truly covered by that ruling, and that is the course that I propose to adopt. No hardship to the plaintiff is involved in that approach, since the plaintiff's lawyers in any event have had, and will continue to have, access to the documents in question, and can mount an argument that wider access is necessary if they wish.

17 I turn then to the categories that remain in dispute. 18 Category 1 is described as "Results reports, Reach and ROI reports and related correspondence in respect of additions of Broadcast GP and/or Broadcast Pharmacy not referred to in the amended statement of claim or the further and better particulars". Such documents are said to be irrelevant on the basis that they are not the Result reports, Reach and ROI reports the subject of complaint in the proceedings. The plaintiff sought to support their relevance, first by a contention that such documents when inspected might found an application for leave to amend to extend the case to cover them. As the plaintiff's lawyers have already had access to those documents, one would have thought that, if that were the case, such an amendment might by now have been formulated. In any event, it is not a permissible use of a subpoena to investigate whether the case might be broadened to cover material facts and matters not yet pleaded; that is a fishing exercise.

19 However, I do accept that these documents, which are reports of the same kind as those the subject of complaint in the proceedings, but relate to different editions of the relevant publication to medical practitioners and pharmacists, could be used to support the case, by way of similar fact evidence, and/or could go to credit of the defendant's witnesses (if, for example, they contained similar misstatements to those complained of in the reports about which complaint is made). No claim of confidentiality is advanced in respect of the documents in this category. Having regarding to their potential relevance, and the absence of any claim for confidentiality, there should be general access to the documents in category 1.

20 Category 3 is described as "Promotional and marketing materials including CDs, Bayer envelopes, brochures, fliers, banner inserts, electronic files and related correspondence". That description does not enable any conclusion to be drawn that the documents described are not relevant to issues in the proceedings. The subpoenas to Alcon, Bayer, Boehringer, Media Movers and Solvay pursuant to which that material was produced do not on their face call for material that would be apparently irrelevant. The documents in category 3 are not said to be confidential. I am not satisfied that a case of irrelevance has been sufficiently made out to warrant the imposition of a restrictive access regime in respect of them. There should be general access to the documents in category 3.

21 Category 4 is described as "Confidential documents containing product inclusions, terms and conditions of services offered to sponsors relating to proposed sponsorship of segments of Broadcast GP and/or Broadcast Pharmacy not in relation to editions of Broadcast GP and/or Broadcast Pharmacy referred to in the amended statement of claim or the further and better particulars ". It is not easy to see how the terms and conditions of proposed sponsorships of editions other than those the subject of complaint in the proceedings could advance the plaintiff's case. These documents are said to be confidential. There is no evidence before me proving their confidentiality and I am left to draw an inference from the description, but it is a reasonable inference that the terms offered to sponsors or potential sponsors would be regarded as confidential: knowledge of such terms might well afford an advantage to a competitor. Given the combination of their apparent irrelevance and their apparent confidentiality, in my view, the documents in category 4 should until further order remain subject to restricted access.

22 Category 5 is described as "Confidential documents containing product inclusions, terms and conditions of services offered to sponsors relating to proposed sponsorship of segments of Broadcast GP and/or Broadcast Pharmacy in relation to editions of Broadcast GP and/or Broadcast Pharmacy referred to in the amended statement of claim or the further and better particulars". The difference between category 5 and category 4 is that the terms and conditions referred to in category 5 are in respect of editions of the publications in question that are the subject of complaint in the proceedings, so that there is a closer connection and potentially a higher degree of relevance. But it remains difficult to see how the terms and conditions of services offered to sponsors could advance the plaintiff's case that the contents of the publications in question were misleading and deceptive. These documents also are said to be confidential and, again, knowledge of their contents might well afford an advantage to a competitor. If the plaintiffs can sustain an argument that they are somehow relevant, it would be easy for their lawyers, having inspected them, to demonstrate why they are relevant and why further access would be appropriate. Until further order, the documents in category 5 should remain subject to restricted access.

23 Category 9 is described as "Invoices relating to services provided to Pivotal by FATS Digital Services Pty Ltd and Media Movers Pty Ltd not relating to editions of Broadcast GP or to Broadcast Pharmacy referred to in the amended statement of claim or further and better particulars". The invoices so described are by definition unrelated to the editions the subject of complaint in the proceedings - they relate to editions of the relevant publications other than those the subject of complaint. Although they are said to be confidential, it is difficult to see how invoices issued by a third party to the defendant could be confidential, and there is no evidence to support the claim of confidentiality. However, on the basis of their apparent irrelevance, and the intrusion into the affairs of a third party which would be involved, until further order they should remain subject to restricted access.

24 Category 10 is described as "Invoices relating to services provided to Pivotal by FATS Digital Services Pty Ltd and Media Movers Pty Ltd relating to editions of Broadcast GP and/or Broadcast Pharmacy referred to in the amended statement of claim redacted versions of which have been supplied to the plaintiff by the defendants". The evidence before me does not establish what has been redacted and what has not been redacted. The plaintiff's argument is that where redaction was sought on any ground other than a claim for privilege, it should be refused. Reference was made to the judgment of Palmer J in TZ Ltd v ZMS Investments Pty Limited & Ors; Sigalla v TZ Ltd [2010] NSWSC 138, [41], where his Honour said that masking to protect disclosure of material said to be both irrelevant and commercially sensitive was not established practice and should not become accepted practice. However, a number of authorities indicate that masking may be permitted in such circumstances [see Telstra Corp Ltd v Australis Media Holdings [1997] NSWSC (Unreported, McLelland CJ in Eq, 10 February 1997) and Gray v Associated Book Publishers (Aust) Pty Ltd (in liq) (formerly the Law Book Co Ltd t/as LBC Information Services) (2002) FCA 1045, [14]; see also NAK Australia v Starkey, [6]-[7] and AMI Australia Holdings Pty Ltd v Fairfax Media Publications Pty Ltd (2009) NSWSC 1484, [47-48]].

25 In my view, in an appropriate case the Court will grant leave to a party required to produce documents or otherwise having an interest in documents produced to mask or redact irrelevant and confidential information in those documents. That is not a matter of right - as distinct from where the redaction is based on a claim for privilege - and must be the subject of an application for leave to the Court. Essentially, the question is whether the defendant has made out a case for leave to redact versions of the invoices in category 10. The evidence does not show why these invoices would be irrelevant: prima facie, invoices relating to services provided to Pivotal by FATS Digital and Media Movers might well disclose the true volume of circulation of the publications in question, and advance the plaintiff's case in that way. As I have said, in connection with category 9, it is difficult in the extreme to see how invoices issued by a third party to the defendant could be confidential, and the evidence does not begin to show why they would be. There is no apparent reason why there should not be general access to the documents in category 10.

26 Category 13 is described as "SUL database and Excel spreadsheet files containing confidential personal information relating to online registrants including names, residential addresses, email addresses". This is said to comprise confidential personal information of online registrants. Generally speaking, neither the name of a person, nor a person's address, whether street or email, is a matter of confidence, and it would require evidence for the Court to be persuaded that names and addresses were provided by registrants on a confidential basis. Normally, entering such data in to a website is the antithesis of keeping one's name, address and email confidential. As I understand it, the documents in this category would provide a list of medical practitioners and pharmacists who have registered on the plaintiff's website, having received editions of the plaintiff's product, in order to complete online quizzes, acquire CPD points and so on. There is nothing before me to suggest that the list of registrants is confidential property of the defendant. There is nothing to indicate, for example, that the defendant uses such lists to target its distributions - as distinct from, for example, distributing to all registered GPs in an area, or having some other characteristic. The medical practitioners who register in this way are not customers in the sense of the persons who pay the defendant: the source of payment is the sponsorship, not the recipient medical practitioner. That is not conclusive, because they are the audience to which the distribution takes place, and the size of that audience, particularly the active audience, may well be relevant to the ability of the defendant to compete with the plaintiff for sponsorship. But no suggestion is made that this material is not relevant, and the evidence does not persuade me that it is confidential information of the first defendant. It should be subject to general access. 27 In the course of the proceedings counsel for the plaintiff conceded that the documents described in categories 11 and 12 could not advance the plaintiff's case and that access would not be sought to those documents. 28 The defendant has sought an order that the plaintiff be restrained from issuing any further subpoenas without the prior consent of the defendants or leave of the Court. As I have observed, no recipient of a subpoena has complained that it has been vexatious or oppressive. The extent of the defendant's discovery, or lack thereof, has made it necessary for the plaintiff to resort to third-party sources for relevant documents. In many ways, it is desirable that the evidence emerge earlier rather than later in the proceedings. I do not think it is appropriate to impose on the plaintiff the restraint sought by the defendant, at least at this stage. 29 It seems to me that each party has had a measure of success on the matters that have been agitated and that it is practically impossible to apportion that success in any sensible way. Each party should bear its own costs of the motions in question.

30 For the foregoing reasons, I make the following orders: 1. Order that access to the documents identified in column 4 of categories 4, 5, 6, 7, 8, 9, 14 and 15 in the table initialled by me, dated this day and placed with the papers be limited to the defendant and to external solicitors, counsel and experts retained by the plaintiff.

Order that the plaintiff and its representatives not have access to the documents described in categories 11 and 12 of the table.

Order that there be general access to all other documents so far produced under subpoena.

Order that costs of the motions filed on 9 and 30 March, 27 April and 4 May 2010 be costs in the proceedings.

Directions in accordance with the document entitled "Short Minutes of Order" initialled by me, dated this day and placed with the papers. Adjourn proceedings to 30 August 2010 at 9 am before the Registrar for further mention.

Direct that the exhibits may be returned.

DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated.