13 Nonetheless, as was recognised by Lord Wilberforce in Science Research Council v Nasse [1980] AC 1028 at 1065, in a passage also cited by Spender J in Mackay Sugar Co‑operative Association Limited v CSR Limited:
"There is no principle in English law by which documents are protected from discovery by reason of confidentiality alone."
14 There is an established practice whereby inspection is provided of discovered documents with parts of the documents masked (Grofam Pty Limited v Australia and New Zealand Banking Group Limited (1993) 43 FCR 408; Optus Communications Pty Ltd v Telstra Corporation Ltd [1995] FCA 254; GEC Marconi Systems Pty Ltd v BHP Information Technology Pty Ltd [2000] FCA 593; Fort Dodge Australia Pty Limited v Nature Vet Pty Limited [2002] FCA 501; GE Capital Corporate Finance Group Ltd v Bankers Trust Co [1995] 1 WLR 172 (CA)). Where there is a valid claim for privilege in respect of the portion of the document withheld from inspection, this practice is based on a positive right to withhold from inspection that part of the document. However, there is no such positive right in respect of portions of documents sought to be withheld from inspection on the grounds of confidentiality or irrelevance (Telstra Corporation v Australis Media Holdings (McLelland CJ in Eq, 10 February 1997, unreported)).
15 In my view, where in this Court categories of documents are required to be discovered and thereafter made available for inspection, the true obligation on the party giving discovery is the same as that identified by McLelland CJ in Eq in Telstra Corporation v Australis Media Holdings by reference to Pt 23 of the New South Wales Supreme Court Rules. The Chief Judge there said:
"Under the new discovery rules, Pt 23 of the Supreme Court Rules, … classes of documents required to be discovered may be, and were in the present case, specified not by reference to relevance to a fact or facts in issue, but by description of the nature of the documents, rendering it unnecessary to consider questions of relevance to an issue, as such. If in such cases the party giving discovery desires to withhold, by making or otherwise, production of part of a discoverable document on the ground that that part does not contribute to the satisfaction of any of the criteria by reference to which the class of documents is described, then it may be that a case can be made for giving effect to that desire, but in my view, unless there is some relevant qualification in the order for discovery, the order requires that the whole document be produced unless there is an agreement to the contrary by the party to which discovery is being made, or unless relief from the requirement, for example by making certain portions is obtained from the Court.
16 The respondents did not obtain the agreement of the applicant to the masking of portions of their discovered documents, nor did they seek relief from the Court from their prima facie obligations to allow full inspection of their discovered documents. Nonetheless, having regard to the course of argument on the applicant's notice of motion, it seems appropriate now to give consideration to the claim of the respondents that the masking undertaken by them is appropriate in the circumstances and ought to be authorised by the Court.
17 As Kiefel J observed in Index Group of Companies Pty Ltd v Nolan [2002] FCA 608 at [6], in this Court a party has only a qualified right to access another party's documents through the procedures of discovery and inspection. The Court has a discretion to order, or not to order, discovery or inspection of discovered documents and it will endeavour to avoid unnecessary discovery or inspection. The Court will be guided by what is necessary to ensure justice between the parties (Index Group of Companies Pty Ltd v Nolan at [7]). So far as discovery is concerned O 15 r 2(5) is a guide to factors that the Court may take into account in determining in a particular case the appropriate extent of discovery. However, it is not an exhaustive guide.
18 In Index Group of Companies Pty Ltd v Nolan at [8] Kiefel J said:
"A private right of confidentiality in documents may be taken into account in considering whether to order discovery and inspection, although it is right to say that the fact that documents have that character is not usually itself a sufficient reason to deny discovery …. When a document is shown to be confidential the Courts must balance the effect of its disclosure and of it being withheld from a party to litigation. In that latter respect much may turn upon what it is necessary for that party to prove …."
19 The applicant argues, in effect, that it is necessary to ensure justice between the parties for her to learn the names of, and relevant details concerning, other editors in a similar position to the applicant to determine their respective experience and circumstances. This information the applicant argues is relevant to the issue of whether the applicant was paid a reasonable remuneration for an expanded licence to reproduce works in which the applicant claims copyright. Further it is argued that the information is relevant to the issue in the claim under the Workplace Relations Actof the alleged unfairness of the applicant's contract. In short, the applicant wishes to be in a position to determine whether the respondents treated their external editors in a consistent way.
20 The respondents argued that the applicant has not pleaded that any other external editor in a comparable position to her was treated by the respondents more favourably than she was treated. This argument, in my view, is based on an inappropriately narrow understanding of the matters in question in the proceeding (Mulley v Mainfold (1959) 103 CLR 341 at 345 per Menzies J). The applicant has pleaded in par 20 of her amended statement of claim that the respondents have infringed her copyright in certain works deliberately, well knowing the applicant's rights. A comparison between the respondents' conduct concerning the applicant and their conduct concerning other external editors might throw light on this question. Further, the applicant in par 43 of the amended statement of claim has claimed a review of the contracts between her and the respondents respectively on the basis that the contracts were or became unfair and harsh by reference to twelve criteria. Again the comparison referred to above might throw light on the question of unfairness and harshness (or otherwise) of the contracts.
21 The concerns expressed by Ms Brown with respect to the possibility that the applicant will issue subpoenas to the external editors whose identity the applicant learns upon inspection of the respondents' discovered documents overlooks the need for the applicant to obtain the Court's leave to issue subpoenas. The Court is in a position to prevent the inappropriate issue of subpoenas in this as in other cases. If the issue of a subpoena to an external editor is appropriate it will be regrettable but of little relevance that the external editor might be displeased to receive the subpoena.
22 I conclude that the applicant is entitled to see complete (ie unmasked) copies of those documents discovered by the respondent in those categories which deal with the remuneration and fee reviews of external editors (see schedule A categories 10 and 11).
23 I turn to the respondents' claims of privilege. Order 15 rule 6(4) of the Federal Court Rules (see [8] above) required the respondents in their list of documents to "sufficiently state the grounds of the privilege". Although par 3 of the respondents' list of documents (see [6] above) appears to assert that the documents for which privilege is claimed are all privileged from production on three different bases, this seems unlikely to be true. Mr Kerr, who appeared for the respondents, acknowledged that the claim made was that each of them was privileged on one or other of the grounds identified in the paragraph. Such a claim does not, in my view, "sufficiently state the grounds of the privilege" within the meaning of O 15 r 6(4). The applicant took no objection to the respondents further detailing their claim for privilege on the hearing of the motion.
24 The only claim for privilege given detailed consideration on the hearing of the applicant's motion was a claim for privilege in respect of legal advice apparently provided to the second respondent.
25 The applicant gave affidavit evidence, upon which she was not cross‑examined, that on 14 February 2000 she attended a meeting with Anita Walters ("Ms Walters"). She described the meeting as "the termination meeting". I understand Ms Walters to be an employee of the second respondent. The applicant's affidavit includes the following passage:
"At the termination meeting Anita Walters said to me 'We have legal advice that you are entitled to six months notice of termination …'.
Later during the same meeting I asked Anita Walters whether she was instructed on the subject of copyright by saying to her 'What about you Anita are you briefed on the matter and do you have authority to deal with the copyright issue?' Anita Walter replied 'The company claims ownership of copyright'. I expressed disbelief and she said 'We have legal advice. the company owns copyright'
At the meeting Anita Walters read from a prepared script. On the first occasion when she referred to legal advice and said 'We have legal advice that you are entitled to six months notice of termination ….' she was in fact reading from the document in front of her. On the second occasion when she referred to legal advice and said 'We have legal advice the company owns copyright' she was not reading from the script but looking at me."
26 The applicant contended that the legal professional privilege which would otherwise have been attracted to the legal advice referred to by Ms Walters was waived by her references to the content of the advice. As no attempt has yet been made to adduce in evidence the legal advice referred to by Ms Walters, the issue of waiver is to be determined by reference to the common law rather than the Evidence Act 1995 (Cth) ("the Evidence Act") (Esso Australia Resources Limited v The Commissioner of Taxation (1999) 201 CLR 49). For this reason I use the common law expression "legal professional privilege" rather than the statutory terminology "client legal privilege".
27 I do not understand the applicant to suggest that there has been an express or intentional general waiver by the second respondent of its legal professional privilege in its legal advice. I do not think that the applicant's evidence goes that far. The issue is therefore whether a waiver of legal professional privilege is to be imputed from the limited disclosures made by Ms Walter in her meeting with the applicant.
28 In Attorney‑General (NT) v Maurice (1986) 161 CLR 475 at 487‑488 Mason and Brennan JJ said:
"Legal professional privilege is an ancient doctrine which has assumed a life of its own. Succinctly stated, the privilege protects from disclosure 'communications made confidentially between a client and his legal adviser for the purpose of obtaining or giving legal advice or assistance': Reg. v. Bell; Ex parte Lees [(1980) 146 CLR 141 at 144], per Gibbs J. The raison d'etre of legal professional privilege is the furtherance of the administration of justice through the fostering of trust and candour in the relationship between lawyer and client. The privilege is based on:
'… the need of laymen for professional assistance in the protection, enforcement or creation of their legal rights. They should have the benefit of that assistance, free of any restraint which fear of the disclosure of their communications with those advisers would impose'. (Reg. v. Bell, per Stephen J.)
When the privilege applies, it enables the client to keep the communication from disclosure and interferes with the public's 'right to every man's evidence': Cobbett''s Parliamentary History (1812), vol. 12, p.675. Because of this conflict between the public interest in ensuring the availability of all relevant evidence in a particular case and the public interest in the administration of justice through effective legal representation, the privilege is confined within strict limits: Grant v. Downs [(1976) 135 CLR 674 at 685], per Stephen, Mason and Murphy JJ.
The limiting effect of legal professional privilege on the availability of evidence otherwise relevant is confined, inter alia, by the doctrine of waiver. A litigant can of course waive his privilege directly through intentionally disclosing protected material. He can also lose that protection through a waiver by implication. An implied waiver occurs when, by reason of some conduct on the privilege holder's part, it becomes unfair to maintain the privilege. 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 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. [[1981] 1 WLR 529].
Hence, the implied waiver inquiry is at bottom focused on the fairness of
imputing such a waiver."
29 In Goldberg v Ng (1995) 185 CLR 83 at 98, Deane, Dawson and Gaudron JJ indicated that they did not read Attorney‑General (NT) v Maurice:
"… as suggesting either that a claim for waiver of legal professional privilege made in a proceeding before a court or quasi‑judicial tribunal must be based upon conduct occurring in that proceeding or, for that matter, upon conduct occurring in, or in anticipation of, any proceeding before a court or other tribunal."
30 The respondents placed reliance on the decision of Drummond J in Southern Cross Airlines Holdings Ltd (in liq) v Arthur Andersen & Co (1998) 84 FCR 472. However, that case was decided before the decision of the Full Court of this Court in Adelaide Steamship Co Ltd v Spalvins (1998) 81 FCR 360 ("Adelaide Steamship v Spalvins") was disapproved by the High Court in Esso Australia Resources Limited v Commissioner of Taxation. His Honour considered the issue of waiver, as the Full Court decision then obliged him to, by reference to s 122 of the Evidence Act. Telstra Corporation Ltd v BT Australasia Pty Ltd (1998) 85 FCR 152 (FC) ("Telstra Corporation v BT") is another decision reached before the High Court expressed its disapproval of Adelaide Steamship v Spalvins. The extent, if any, of the difference between the common law position concerning waiver of legal professional privilege and the position under s 122 of the Evidence Act is not entirely clear. However, so far as the conduct relied upon as constituting a waiver is some disclosure of legal advice there may be a real difference (see Adelaide Steamship v Spalvins at 371 and Telstra Corporation v BT per Branson and Lehane JJ at 649). For present purposes, only limited guidance is therefore to be found in cases decided under the Evidence Act.
31 Disclose of the content of the advice by the second respondent to the first respondent, as may be assumed to have happened, was not itself sufficient to destroy its confidential nature so as to give rise to a loss of the privilege. The respondents have a common interest in the subject matter of the legal advice (Farrow Mortgage Services Pty Ltd (in liq) v Webb (1996) 39 NSWLR 601 (CA) per Sheller JA, with whom Waddell A-JA agreed, at 609).
32 Nor is it the case, in my view, that the disclosure of part of a document makes it impossible for a claim of legal professional privilege to be advanced in respect of other parts of the same document (Grofam Pty Limited v Australia and New Zealand Banking Group per Heerey J at 415). I do not understand the applicant to have argued otherwise.
33 The critical issue, in my view, is whether it would be unfair to permit the respondents to rely on legal professional privilege in view of the discloses made by Ms Walters to the applicant concerning the effect of the advice. The mere fact that the applicant will be left in ignorance of the total content of the legal advice cannot be said to be unfair because, as Lockhart J observed in Optus Communications Pty Ltd v Telstra Corporation Ltd, that is the inevitable consequence of the operation of the doctrine of legal professional privilege.
34 In considering the issue of unfairness, the authorities suggest that significance is to be attached to the voluntary nature of Ms Walter's disclosures to the applicant (Goldberg v Ng per Deane, Dawson and Gaudron JJ at 100). It is a fair inference from the unchallenged evidence of the applicant (see [25] above) that the disclosures were made with the calculated purpose of giving added weight to the words of Ms Walters when she spoke with the applicant. That is, of strengthening the position of the second respondent in its dealings with the applicant. Those dealings included dealings in respect of questions at the heart of this proceeding (ie whether the applicant's employment was terminated in breach of contract and whether the applicant is the owner of copyright in certain work).
35 Having regard to the voluntary nature of the disclosures, the nature and extent of the disclosures and the circumstances in which the disclosures were made, I conclude that it would be unfair to permit the respondents to rely on legal professional privilege in respect of the legal advice to which Ms Walters referred at her meeting with the applicant. Fairness requires, in my view, that the applicant have the opportunity of ascertaining whether Ms Walters' statements accurately reflected the advice received by the second respondent having regard to the applicant's circumstances.
36 I turn finally to consider the applicant's contention that the respondents should be required to provide further discovery. As is mentioned above (see [9]), the Court has a discretion as to the extent of discovery, if any, that should be ordered in any case. Ms Brown gave evidence, which I accept, that it would be a huge task for the respondents to give the further discovery sought by the applicant. Having regard particularly to the nature of this proceeding and the significance of the documents likely to be found, I do not consider that the cost and disruption that would be occasioned by the respondents giving such discovery can be justified. Nonetheless, I am satisfied that it is reasonably necessary in the interests of a fair trial and a fair disposition of the proceeding that the respondents give some further discovery. The difficulty is to identify the nature and extent of that further discovery.
37 I do not consider that I have received from the parties the assistance which I need to identify that nature and extent. This may be, at least in part, because the forum provided by a contested motion is inherently inappropriate for the determination of the questions which require to be answered. A significant amount of the material of which discovery is sought by the applicant is maintained by the respondents on computer databases. Without expert evidence as to the ways in which searches may be conducted on those databases I cannot know what would, in practical terms, be involved in the retrieval of particular classes of information. So far as physical searches of stored boxes of documents is concerned, it may be necessary for some trial examination of appropriately selected boxes to be undertaken before a judgment can be made as to the extent of any further search which it would be reasonable for the respondents to be required to undertake.
38 As I foreshadowed during the hearing of the motion, I propose to provide the respective parties with an opportunity to further consider the means by which the respondents might provide appropriate and useful further discovery which is proportionate to the nature, complexity and significance of this proceeding. If necessary, the parties will be required to attend before a Registrar of the Court where the relevant issues can be explored.
39 I will hear from the parties as to the orders, including orders as to costs, that should be made in the light of these reasons for decision.
I certify that the preceding thirty-nine (39) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson.