Ford Motor Company of Australia Limited v Tallevine Pty Ltd

Supreme Court of NSW|2017-11-29|Before: Harrison J

Judgment

HIS HONOUR: I published my principal judgment in this matter on 8 December 2017: see Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2017] NSWSC 1703. During the course of the hearing I indicated that I considered that privilege had been waived by the defendant with respect to a document, part of which had been annexed to an affidavit that was read in the proceedings. With the agreement of the parties at that time, I indicated that I would provide reasons for my decision at a later time. These reasons deal with that issue.
On 8 August 2014, the defendant received a letter from F B Rice, patent and trade mark attorneys in Sydney. The letter and its attachments were provided to me and marked MFI 1. The letter commences with the following sentence: "Dear Mr Creak, Thank you for your instructions of 22 July 2014 requesting a full availability search for the trade mark RAPTOR (word and logo) which is intended to be used and registered in relation to vehicles parts and accessories including grill panels, car lights, mouldings, sport and nudge bar, carbon fibre wraps, leather door trims."
Page 2 of the letter has been annexed to an affidavit sworn by Ian David Charles Creak and served on the plaintiff. A copy of that page is attached to these reasons.
The plaintiff has called for production to it of the letter in full. That call is resisted by the defendant upon the basis of client legal privilege. The letter purports to be an advice from the defendant's patent attorneys concerning the availability of the trade mark referred to in the first sentence of the 8 August 2014 letter. The plaintiff contends that the production of page 2 of the letter, not being unintentional or inadvertent, has operated to waive any privilege that might otherwise attach to it.

Applicable principles

Section 122 of the Evidence Act 1995 relevantly provides that: "(2) Subject to subsection (5), this Division does not prevent the adducing of evidence if the client or party concerned has acted in a way that is inconsistent with the client or party objecting to the adducing of the evidence because it would result in a disclosure of a kind referred to in section 118, 119 or 120. (3) Without limiting subsection (2), a client or party is taken to have so acted if: (a) the client or party knowingly and voluntarily disclosed the substance of the evidence to another person; or (b) the substance of the evidence has been disclosed with the express or implied consent of the client or party."
Where a privileged document is partially disclosed, privilege is generally waived in respect of the entire document unless: 1. the initial disclosure was inadvertent: see, eg, Hooker Corporation Ltd v Darling Harbour Authority (1987) 9 NSWLR 538; Bailey v Department of Land and Water Conservation (2009) 74 NSWLR 333; [2009] NSWCA 100 at [3]-[4] or 2. part of the document is severable: Sundararajah v Teachers Federation Health Ltd (No. 2) [2010] NSWSC 259 at [36]; Bailey v Department of Land and Water Conservation at [132].
This is known as "disclosure waiver": see ASIC v Rich [2004] NSWSC 923 at [9]. The principle applies notwithstanding that the disclosure occurs in the final hearing or at some earlier stage, such as in response to a notice to produce or in an affidavit in response to an interlocutory application: see, e.g., Banksia Mortgages Ltd v Croker [2010] NSWSC 535 at [33]-[34]; ASIC v Rich [2004] NSWSC 923 at [14].
In Banksia Mortgages Ltd v Croker, an affidavit sworn by the defendant's lawyer was relied upon in resisting an application for summary judgment. The affidavit referred to privileged emails and their content: at [29]-[30]. Schmidt J held at [35] that the earlier disclosure was inconsistent with the maintenance of a claim for privilege: see also ASIC v Rich at [13]-[15] (although in this case it was held that the documents relied upon by the defendants did not disclose the advice given to ASIC: at [38]); IOOF Holdings Ltd v Maurice Blackburn Pty Ltd [2016] VSC 311 at [48]; Mortgage Results Pty Ltd v Millsave Holdings Pty Ltd (Legal Privilege) [2017] VSC 704 at [10].
Similarly, in Attorney-General for the Northern Territory v Maurice (1986) 161 CLR 475; [1986] HCA 80 at 488, Mason and Brennan JJ said that: "The holder of the privilege should not be able to abuse it by using it to create an inaccurate perception of the protected communication. Professor Wigmore explains: '[W]hen his conduct touches upon a certain point of disclosure, fairness requires that his privilege shall cease whether he intended that result or not. He cannot be allowed, after disclosing as much as he pleases, to withhold the remainder' (Wigmore, Evidence in Trials at Common Law (1961), vol. 8, par. 2327, p 636). In order to ensure that the opposing litigant is not misled by an inaccurate perception of the disclosed communication, fairness will usually require that waiver as to one part of a protected communication should result in waiver as to the rest of the communication on that subject-matter: see Great Atlantic Insurance Co. v Home Insurance Co."
Further, in Bailey v Department of Land and Water Conservation at [132], Tobias JA explained that the decision in Great Atlantic Insurance Co v Home Insurance Co [1981] 1 WLR 529; [1981] 2 All ER 485 remains good law under s 122 and stands for the proposition that: "where the whole of a document is a privileged communication between legal adviser and client, the party entitled to claim that privilege cannot waive the privilege as to part of the communication but claim it with respect to the remainder if to do so would result in unfairness. Either privilege is claimed with respect to the whole or waived as to the whole. The only exception to this would be where the communication dealt with two entirely different subject matters in respect of which privilege was claimed for the one that was relevant to the issues at hand and waived for the other which was not."
The decision in Great Atlantic was referred to with approval in Maurice by Gibbs CJ at [8] and Mason and Brennan JJ at [11]: see also Commissioner of Taxation v Coombes (1999) 92 FCR 249; [1999] FCA 842 at [39].
In deciding whether privilege has been waived, the Court can have regard to considerations of fairness. However, this is not a "freestanding or overriding principle" that operates at large: Mann v Carnell (1999) 201 CLR 1; [1999] HCA 66 at [29]; Bailey v Department of Land and Water Conservation at [3]-[4], [81]. In Mann v Carnell at [29], Gleeson CJ, Gaudron, Gummow and Callinan JJ said that: "What brings about the waiver is the inconsistency, which the courts, where necessary informed by considerations of fairness, perceive, between the conduct of the client and maintenance of the confidentiality; not some overriding principle of fairness operating at large."
See generally Krok v Commissioner of Taxation [2015] FCA 51 at [22]-[27].

Consideration

The precise purpose of the disclosure of page 2 of the 8 August 2014 letter in the context of the present litigation is unclear to me. It is in any event an irrelevant consideration. The defendant did not contend that the disclosure was other than intentional. Having purported to rely upon the document for some (as yet unexplained) purpose, the defendant cannot in my view resist the plaintiff's call for production of the whole of the document of which it forms part.

Order

In the circumstances I consider that the following order should be made: 1. Order the defendant within 14 days of the date of publication of these reasons to provide the plaintiff with a true copy of the document marked MFI 1 in these proceedings. Page 2 of letter from F B Rice (95.3 KB, pdf)

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. Decision last updated: 23 February 2018

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