Siabon Seet v No Defendant

Category: Principal judgment

Parties: Siabon Seet (Plaintiff/Respondent)
Emma Charles (Applicant)
William Soo (Applicant)

Representation: Counsel:
C K Amato (Plaintiff/Respondent)
M E Hall (Applicant – Charles)
A R Lang SC (Applicant – Soo)
Solicitors:
Gilbert + Tobin (Plaintiff/Respondent)
Deutsch Miller (Applicant – Charles)
Argyll Law (Applicant – Soo)

File Number(s): 2025/00226363

JUDGMENT

1. By separate notices of motion, Emma Charles and William Soo seek to set aside subpoenas compelling them to give evidence, and in Ms Charles’ case to produce documents, issued by Hamill J on an ex parte basis in his capacity as Common Law Duty Judge on 7 July 2025: Siabon Seet v NA NA [2025] NSWSC 759. The time for compliance with those orders has been extended by Ierace J and also by me. Consent orders have been made in relation to a third person who was affected by the orders made by Hamill J.

2. The subpoenas gave effect to a request made by a Judge of the United States, the Honorable Gloria M. Navarro, District Court, District of Nevada, in proceedings pursued by Aristocrat Technologies, Inc. and Aristocrat Technologies Australia Pty Limited (“Aristocrat”) against Light & Wonder, Inc., LNW Gaming Inc., and SciPlay Corporation (“L&W US”) (“the US Proceedings”). The orders of Hamill J, sought to be maintained by the plaintiff Siabon Seet, were made pursuant to the Evidence on Commission Act 1995 (NSW) (“the Act”). The plaintiff, Ms Seet, is a partner of an Australian law firm, Gilbert + Tobin, and has been nominated to undertake the role of plaintiff by the Nevada District Court.

3. As stated by her Honour Judge Navarro, in granting injunctive relief in the US Proceedings, Aristocrat and L&W US are competitors in the electronic video slot machine space. The US Proceedings were commenced in February 2024, and comprise an intellectual property dispute wherein it is claimed that L&W US used Aristocrat's confidential information relating to Aristocrat's 'Dragon Link' game, in connection with the development of L&W's 'Dragon Train' game. In particular, Aristocrat alleges that L&W US acquired Aristocrat's trade secrets through Emma Charles, a former Aristocrat employee. A trial date has not been set in relation to the US Proceedings. However, as discussed below, a judgment on injunctive relief has been delivered, and significant evidence has been produced.

4. Neither Ms Charles nor Mr Soo is a party to the US Proceedings. Ms Charles is the third respondent to proceedings in the Federal Court of Australia arising out of similar allegations. Ms Charles is a mathematician who has worked for Aristocrat Australia and L&W, and Mr Soo has worked with her in her team at L&W.

5. The Court has power to set aside the orders of Hamill J because they were made on an ex parte basis. The three main areas requiring resolution by the notices of motion are whether the subpoenas are properly issued for the purpose of adducing evidence in the US Proceedings, or are in the nature of impermissible United States style discovery; whether it is not appropriate to make the orders because of the prospect of compromising the legitimacy of the Federal Court proceedings, when the United States does not have an equivalent of the Harman undertaking and there was arguably, in the issuing of the Letter of Request, an expectation that there would be sharing of information between the representatives for Aristocrat in both sets of proceedings; and whether the proposed questioning interferes with the privilege of Ms Charles and Mr Soo against exposure to a civil penalty.

Statutory Framework

6. Part 4 of the Evidence on Commission Act 1995 (NSW) (“the Act”) is entitled “Taking of evidence for foreign and Australian Courts”. It enacts the treaty provisions of the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters 1970 847 UNTS 241 into domestic law. It is in the following terms:

Part 4 Taking of evidence for foreign and Australian Courts

31 Definitions

In this Part:

Australian court means a person or body authorised to exercise an adjudicative function:

(a) whether on behalf of a court or otherwise, and

(b) whether or not the person or body is empowered to require the answering of questions or the production of documents.

proceedings means:

(a) proceedings in any civil or commercial matter, or

(b) proceedings in or before a court in relation to the commission of an offence or an alleged offence.

property includes any land, chattel or other corporeal property of any description.

request includes any commission, order or other process issued by or on behalf of a requesting court.

requesting court means a court or tribunal by or on whose behalf a request is issued, as referred to in section 32.

32 Application to the Supreme Court for assistance in obtaining evidence for proceedings in other court

(1) The following provisions of this Part apply if an application is made to the Supreme Court for an order for evidence to be obtained in the State and the Court is satisfied:

(a) that the application is made in pursuance of a request issued by or on behalf of a court or tribunal exercising jurisdiction in a place outside the State, and

(b) that the evidence to which the application relates is to be obtained for the purposes of proceedings which either have been instituted before the requesting court or whose institution before that court is contemplated.

(2) This Part does not apply in respect of proceedings relating to the commission of an offence or an alleged offence unless the requesting court is a court of a place in Australia or of New Zealand.

33 Power of the Supreme Court to give effect to application for assistance

(1) The Supreme Court has power, if an application is made under section 32, by order to make such provision for obtaining evidence in the State as may appear to the Court to be appropriate for the purpose of giving effect to the request in pursuance of which the application is made.

(2) An order under this section may require a specified person to take such steps as the Court may consider appropriate for that purpose.

(3) Without limiting the generality of subsections (1) and (2), an order under this section may, in particular, make provision as follows:

(a) for the examination of witnesses, either orally or in writing,

(b) for the production of documents,

(c) for the inspection, photographing, preservation, custody or detention of any property,

(d) for the taking of samples of any property and the carrying out of any experiments on or with any property,

(e) for the medical examination of any person,

(f) without limiting paragraph (e), for the taking and testing of samples of blood from any person.

(4) An order under this section is not to require any particular steps to be taken unless they are steps that can be required to be taken by way of obtaining evidence for the purposes of proceedings in the Supreme Court (whether or not proceedings of the same description as those to which the application for the order relates).

(5) Subsection (4) does not preclude the making of an order requiring a person to give testimony (either orally or in writing) otherwise than on oath if this is asked for by the requesting court.

(6) An order under this section must not require a person:

(a) to state what documents relevant to the proceedings to which the application for the order relates are or have been in the person’s possession, custody or power, or

(b) to produce any documents other than particular documents specified in the order and appearing to the court making the order to be, or likely to be, in the person’s possession, custody or power.

(7) A person who, because of an order under this section, is required to attend at any place is entitled to similar conduct money and payment for expenses and loss of time on attendance as is a witness in proceedings before the Supreme Court.

34 Privilege of witnesses

(1) A person must not be compelled by virtue of an order under section 33 to give any evidence which the person could not be compelled to give:

(a) in similar proceedings in the State, or

(b) in similar proceedings in the place in which the requesting court exercises jurisdiction.

(2) Subsection (1) (b) does not apply unless the claim of the person in question to be exempt from giving evidence is either:

(a) supported by a statement contained in the request (whether it is so supported unconditionally or subject to conditions that are fulfilled), or

(b) conceded by the applicant for the order.

(3) If such a claim by any person is not so supported or conceded, the person may (subject to the other provisions of this section) be required to give the evidence to which the claim relates, but that evidence is not to be transmitted to the requesting court if that court, on the matter being referred to it, upholds the claim.

(4) In this section, references to giving evidence include references to answering any question and to producing any document, and the reference in subsection (3) to the transmission of evidence given by a person is to be construed accordingly.

35 Operation of other laws

This Part is not intended to exclude or limit the operation of any law of the State that provides for the taking of evidence in the State for the purpose of a proceeding outside the State.

36 Rules of court

(1) The power to make rules under the Supreme Court Act 1970 extends to the making of rules for or with respect to:

(a) the manner in which an application under section 32 is to be made, and

(b) the circumstances in which an order can be made under section 33, and

(c) the manner in which any reference mentioned in section 34 (3) is to be made.

(2) Any such rules may include such incidental, supplementary and consequential provisions as are necessary or convenient.

7. Principles relevant to the application of this part of the Act, approved in British American Tobacco Australia Services Ltd v Eubanks for the United States of America*; Cannar v* Eubanks for the United States of America*; British American Tobacco (Investments) Ltd v* Eubanks for the United States of America (2004) 60 NSWLR 483; [2004] NSWCA 158 (“BAT”) at [42] and taken into account on the current applications, are as follows:

“(1) Comity requires this court to view a letter of request issued by a foreign court for the purpose of civil proceedings before it benevolently. It is our pleasure and duty to assist those courts and the parties to them in arriving at a fair and just determination of their civil litigation where we can properly do so.

(2) Nonetheless when an application for an order under the Act is disputed, the High Court must determine whether the order sought is one which it can or should properly make.

(3) The issue whether the order sought is for an illegitimate investigation rather than to obtain evidence to be adduced at trial is to be determined principally by reference to the terms of the letter of request and of the proposed order of this court. However, the court will consider the evidence before it as a whole.

(4) Particularly pertinent will be the stage at which the order is sought and the extent to which the party seeking the order is able to demonstrate that the information sought is relevant to issues in the foreign proceedings in the sense of being capable of being adduced at trial in support of those issues.

(5) The fact that testimony is sought as part of the discovery process in the United States proceedings is not of itself decisive. The fact that it is sought at the discovery stage is an indication that what is sought is discovery. However, the High Court has power to make an order for such testimony to be taken if it is limited to evidence to be adduced at trial. The court has a discretion to refuse to make an order at that stage even for such evidence to be taken on the grounds that it is premature, for example, and that the deposition of the proposed witness will be more efficiently and shortly taken, involving less inconvenience or intrusion into matters confidential to him or to other third parties, if it is taken at a later stage.

(6) Statements in a letter of request to the effect that evidence is sought for use at trial are relevant but not conclusive. The letter of request must be viewed as a whole.

(7) This court will take into account anything in the evidence before it that indicates that the party that obtained the order for the letter of request appreciated and took into account the differences between United States and English procedural rules.

(8) Similarly, the court will take into account evidence that the US judge appreciated and took into account those differences. In this connection, this court appreciates that orders for the issue of letters of request are normally made by the US judge without any real scrutiny. The order is normally made in the terms sought by the applicant without any (or any significant) amendment and without the judge being informed of the significant differences between US federal procedure and those of these courts.

(9) The fact that the evidence sought is described in wide or general terms is not inconsistent with its being sought for the trial. There will be occasions where the subject matter of the testimony sought is so extensive as to preclude specification. However, where that is the case, the court in the exercise of its discretion may refuse to make an order on the basis that it would be oppressive to the witness to require him to prepare himself to give evidence and to require him to give evidence without identification of the matters to be addressed. See State of Minnesota v. Philip Morris Incorporated & Ors., a decision of the Court of Appeal of 30th July 1997.

(10) The court will take into account any safeguards or restrictions incorporated in the terms of the proposed order. However, the order made by this court cannot depart substantially from the terms of the letter of request. The requirement of the statute is that the order of the court give effect to the letter of request. The limitation on the power of amendment of the terms of the deposition sought by the letter of request was referred to by Lord Fraser in the Westinghouse case [1978] AC 547 , 644-645 and in turn by Sir Richard Scott V.C. at p.1169 of First American Corporation.

(11) Generally an order may be refused or set aside on the grounds that would lead this court to set aside a witness summons – oppression being one of those grounds.

(12) This court will not in general seek to determine whether evidence sought here will be admissible under the law of the foreign court. However, doubts as to admissibility may be taken into account. Issues of relevance will be addressed by this court, notwithstanding that relevance and admissibility may raise identical issues. An example of an enquiry into relevance by the English court is to be found at para.14 of the judgment of the Court of Appeal in the Genira Trade & Finance case and at p.1165 of the judgment the Vice-Chancellor in First American, in which he said:

‘In my opinion, therefore, an English court must look at the issue of the relevance of the requested testimony, if it is raised, in broad terms, leaving to the foreign court, in all but the clearest cases, the decision as to whether particular answers, or answers on particular topics, would constitute relevant admissible evidence.’

(13) In determining whether an order offends the statutory prohibition in relation to discovery of documents, the court must address the terms of the order rather than the claimed intentions of the party seeking it. An order requiring the deponent to say whether he has any documents relevant to the foreign proceedings offends against section 2(4)(a) . An order made requiring him to say whether he has had any communication relevant to the foreign proceedings, in my judgment, is similarly illegitimate since ‘communication’ includes a documentary communication and the order would require the deponent to state whether or not he has or had such a document. Put otherwise, such an order would circumvent the statutory prohibition and is not to be made for that reason.

(14) Similar principles must apply where what is sought is a deposition without any written documents. The person conducting the examination of the witness, the witness himself, those representing him and those representing the parties to the foreign litigation must be able to ascertain the limits of proper questioning of the witness from the terms of the order itself.”

8. Sections 128 and 131A of the Evidence Act 1995 (NSW) are in the following terms:

128 Privilege in respect of self-incrimination in other proceedings

(1) This section applies if a witness objects to giving particular evidence, or evidence on a particular matter, on the ground that the evidence may tend to prove that the witness—

(a) has committed an offence against or arising under an Australian law or a law of a foreign country, or

(b) is liable to a civil penalty.

(2) The court must determine whether or not there are reasonable grounds for the objection.

(3) Subject to subsection (4), if the court determines that there are reasonable grounds for the objection, the court is not to require the witness to give the evidence, and is to inform the witness—

(a) that the witness need not give the evidence unless required by the court to do so under subsection (4), and

(b) that the court will give a certificate under this section if—

(i) the witness willingly gives the evidence without being required to do so under subsection (4), or

(ii) the witness gives the evidence after being required to do so under subsection (4), and

(c) of the effect of such a certificate.

(4) The court may require the witness to give the evidence if the court is satisfied that—

(a) the evidence does not tend to prove that the witness has committed an offence against or arising under, or is liable to a civil penalty under, a law of a foreign country, and

(b) the interests of justice require that the witness give the evidence.

(5) If the witness either willingly gives the evidence without being required to do so under subsection (4), or gives it after being required to do so under that subsection, the court must cause the witness to be given a certificate under this section in respect of the evidence.

(6) The court is also to cause a witness to be given a certificate under this section if—

(a) the objection has been overruled, and

(b) after the evidence has been given, the court finds that there were reasonable grounds for the objection.

(7) In any proceeding in a NSW court or before any person or body authorised by a law of this State, or by consent of parties, to hear, receive and examine evidence—

(a) evidence given by a person in respect of which a certificate under this section has been given, and

(b) evidence of any information, document or thing obtained as a direct or indirect consequence of the person having given evidence,

cannot be used against the person. However, this does not apply to a criminal proceeding in respect of the falsity of the evidence.

Note—

This subsection differs from section 128 (7) of the Commonwealth Act. The Commonwealth provision refers to an “Australian Court” instead of a “NSW court”.

(8) Subsection (7) has effect despite any challenge, review, quashing or calling into question on any ground of the decision to give, or the validity of, the certificate concerned.

(9) If a defendant in a criminal proceeding for an offence is given a certificate under this section, subsection (7) does not apply in a proceeding that is a retrial of the defendant for the same offence or a trial of the defendant for an offence arising out of the same facts that gave rise to that offence.

(10) In a criminal proceeding, this section does not apply in relation to the giving of evidence by a defendant, being evidence that the defendant—

(a) did an act the doing of which is a fact in issue, or

(b) had a state of mind the existence of which is a fact in issue.

(11) A reference in this section to doing an act includes a reference to failing to act.

(12) If a person has been given a certificate under a prescribed State or Territory provision in respect of evidence given by a person in a proceeding in a State or Territory court, the certificate has the same effect, in a proceeding to which this subsection applies, as if it had been given under this section.

(13) For the purposes of subsection (12), a prescribed State or Territory provision is a provision of a law of a State or Territory declared by the regulations to be a prescribed State or Territory provision for the purposes of that subsection.

(14) Subsection (12) applies to a proceeding in relation to which this Act applies because of section 4, other than a proceeding for an offence against a law of the Commonwealth or for the recovery of a civil penalty under a law of the Commonwealth.

Notes—

1 Bodies corporate cannot claim this privilege. See section 187.

2 Clause 3 of Part 2 of the Dictionary sets out what is a civil penalty.

3 Section 128 (12)–(14) of the Commonwealth Act give effect to certificates in relation to self-incriminating evidence under the NSW Act in proceedings in federal and ACT courts and in prosecutions for Commonwealth and ACT offences.

4 Subsections (8) and (9) were inserted as a response to the decision of the High Court of Australia in Cornwell v The Queen[2007] HCA 12 (22 March 2007).

131A Application of Part to preliminary proceedings of courts

(1) If—

(a) a person is required by a disclosure requirement to give information, or to produce a document, which would result in the disclosure of a communication, a document or its contents or other information of a kind referred to in Division 1, 1A, 1C or 3, and

(b) the person objects to giving that information or providing that document,

the court must determine the objection by applying the provisions of this Part (other than sections 123 and 128) with any necessary modifications as if the objection to giving information or producing the document were an objection to the giving or adducing of evidence.

(2) In this section, disclosure requirement means a process or order of a court that requires the disclosure of information or a document and includes the following—

(a) a summons or subpoena to produce documents or give evidence,

(b) pre-trial discovery,

(c) non-party discovery,

(d) interrogatories,

(e) a notice to produce,

(f) a request to produce a document under Division 1 of Part 4.6.

9. The following provisions of the Uniform Civil Procedure Rules 2005 (NSW) (“UCPR”) are relevant. Part 52 of the UCPR governs the taking of evidence for foreign and Australian courts and tribunals. Rule 52.2 of the UCPR is in the following terms:

52.2 Application of other rules regarding the taking of evidence (cf SCR Part 58, rule 2)

Subject to this Part, rules 24.7–24.16 apply to an examination held pursuant to an order under this Part—

(a) as if the matter pending before the requesting court were proceedings in the Supreme Court, and

(b) as if the order had been made under rule 24.3 in proceedings in the Supreme Court, and

(c) if a Judge, associate Judge or registrar is appointed under section 33 of the Evidence on Commission Act 1995, as if an order had been made under rule 24.3 for the examination of a person on oath before a Judge, associate Judge or registrar.

10. Rule 24.11 of the UCPR provides as follows:

24.11 Objection (cf SCR Part 27, rule 7; DCR Part 25, rule 12)

(1) If a party objects to a question put to a person being examined, or a person being examined objects to answering such a question or to producing any document or thing—

(a) the examiner must state to the parties his or her opinion, but must not decide, on the validity of the objection, and

(b) the question, the ground for the objection, the examiner’s opinion on the objection and the answer (if any) of the person being examined must be set out in the transcript of that person’s evidence or in a statement attached to the transcript, and

(c) the court may, on motion by any party, decide the validity of the objection, and

(d) if the court decides against the objector, the court may order the objector to pay the costs occasioned by the objection.

(2) This rule does not apply if the examiner is a judicial officer of the court.

11. Rule 52.6 of the UCPR governs the procedure where an objection is taken because a privilege is said to arise on the foreign law of the requesting Court. There was no submission advanced before me that such an objection (under s 34(1)(b) of the Act) is here applicable.

The evidence

12. The plaintiff relies on the affidavit of Siabon Seet, dated 13 June 2025 and that of Peter Munro of 27 August 2025. Ms Charles relies on two affidavits of Christopher Langby, one of 15 August 2025 and the other 21 August 2025, and the 21 August 2025 statement and expert report of Matt Lee dated 21 August 2025. Mr Soo relies on two affidavits of Fiona Henderson, one of 15 August 2025 and the other 21 August 2025. Collectively these affidavits exhibit or annex a significant amount of documentary material assisting with explaining the content of the US Proceedings and the Federal Court proceedings, and aspects of United States procedure relevant to this litigation.

Further outline of the two sets of proceedings

13. The filed written submissions for all parties were extremely helpful and comprehensive, and I have drawn heavily from them in summarising the evidence.

14. As noted earlier, the US Proceedings, commenced in February 2024, comprise an intellectual property dispute between Aristocrat and L&W US. They are each providers of electronic games. In the US proceedings, Aristocrat alleges that L&W US used Aristocrat's confidential information relating to Aristocrat's 'Dragon Link' game, in connection with the development of L&W US' 'Dragon Train' game. In particular, Aristocrat alleges that L&W US acquired Aristocrat's trade secrets through Emma Charles, a former Aristocrat employee. Mr Soo was an employee of L&W AU, and a member of Ms Charles' team, which developed the Dragon Train game.

15. On 30 April 2024, before the Letter of Request was issued in the US Proceeding, Aristocrat Technologies Australia Pty Limited (Aristocrat AU) commenced related proceedings in the Federal Court of Australia, against Light & Wonder, Inc., LNW Gaming ANZ Pty Ltd (L&W AU), and Emma Charles. In the Federal Court proceedings, Aristocrat AU now (but not at the outset of proceedings) alleges breach of confidence under s 183 of the Corporations Act 200**1 (Cth), and copyright infringement, against L&W AU and Ms Charles, in relation to the development of Dragon Train. The Federal Court proceedings have been set down for a first hearing tranche for three weeks commencing on 29 June 2026. Burley J has conduct of these proceedings.

The L**etter of Request

16. The Letter of Request was issued on 31 December 2024. It is described as pertaining to “an ongoing civil litigation in which fact discovery is scheduled to conclude June 30, 2025." That date had been extended to 11 September 2025 at the point of the hearing before me, with an application outstanding for further extension, and has been subsequently extended to 15 December 2025.

17. The Letter of Request is reasonably detailed, setting out the nature of the proceedings and the relevance of Ms Charles and Mr Soo to the proceedings, and at various points states that the evidence being sought is "intended for use at trial".

18. It is outlined that Ms Charles was a senior game designer at Aristocrat from around December 2008 to October 2012, and from October 2012 to July 2017 she worked on secondment to High Roller Gaming, which develops games exclusively for Aristocrat, including the games Dragon Link and Lightning Link. It is said that whilst at Aristocrat, Ms Charles had unfettered access to confidential information about the games, including details of the underlying maths and functionality. It is further alleged that after her departure from Aristocrat, Ms Charles went to work for Light & Wonder, where she was assigned to work on the competitor product, Dragon Train, during which time she used confidential Aristocrat documents and information in the development of that product. According to the Letter of Request, the evidence sought from Ms Charles concerns her retention of Aristocrat documents and her use and dissemination of Aristocrat trade secrets whilst working for Light & Wonder.

19. The submissions made to the issuing judge in support of the Letter of Request are not in evidence, although a summary is in the Letter of Request. The Letter of Request does not contain detail of any defences filed in the US proceedings, and this material has not been otherwise placed before me.

20. The Letter of Request contained a number of specific requests which should be noted, as they are submitted on behalf of Ms Charles and Mr Soo to bear on the objective characterisation of the purpose of the request. One was that Gilbert + Tobin, being the Australian lawyers for Aristocrat in the Federal Court proceedings, be present at the deposition. Another was the request that "each deposition be allowed to continue until completed" and "continue day by day until completed". This is different from the usual application of civil rules in Nevada regarding the duration of a deposition, which is "limited to one day of 7 hours". Further, the production of documents was sought no later than 14 days prior to the depositions.

21. The evidence before the Court indicates that deposition testimony, under Nevada law, is not limited to use at trial in the US Proceedings and can (amongst other uses) extend to being used to revise pleadings or expand the claims pleaded in a case.

The revised deposition topics

22. The amended proposed deposition topics for Ms Charles are as follows:

23. Your work for Aristocrat and Your knowledge of mathematical or game design information about any Aristocrat games, including Lightning Link and Dragon Link.

24. The circumstances under which Your employment with Aristocrat ended.

25. Your possession of any Aristocrat Documents or Documents containing Aristocrat information after leaving Your employment by Aristocrat.

26. Any Communications between You and L&W prior or subsequent to any period of Your employment by L&W.

27. Your hiring or re-hiring by L&W and the commencement of all periods of Your employment by L&W.

28. Your work on and contributions to any L&W game, including Dragon Train.

29. Your Communications while working for L&W regarding game design or game math, including disclosures of Aristocrat Documents or Aristocrat mathematical or other game design information.

30. Your use and dissemination of Aristocrat Documents or any Aristocrat mathematical or other game design information during Your employment by L&W or in contemplation of your employment by L&W.

31. Your knowledge of L&W's use and dissemination of Aristocrat mathematical or other game design information.

32. L&W's knowledge of Your use and dissemination of Aristocrat mathematical or other game design information during Your employment by L&W or in contemplation of your employment by L&W.

33. Your knowledge of efforts by L&W to compete with Dragon Link, Lightning Link, or other Aristocrat games.

34. The electronic devices and computer systems used by You, or issued to You by L&W, in connection with Your employment by L&W.

35. The circumstances under which Your employment by L&W ended in or around February 2022, and in or around September or October 2024.

36. Any agreements or arrangements (e.g., joint defense, joint representation, or cooperation agreements) You had or have with L&W relating to the U.S. Litigation or any Australian Proceeding.

37. Documents and information responsive to this subpoena, including your efforts to collect and produce such Documents and information.

38. The deletion, destruction, or loss of Documents and information relating to the U.S. Litigation or any Australian Proceeding.

39. Your involvement in L&W's investigation concerning Aristocrat's allegations in the U.S. Litigation or the Australian Proceedings.

40. The facts and circumstances relating to any declaration, affidavit, or written attestation that You signed in connection with the U.S. Litigation or any Australian Proceeding, including the declarations dated July 27, 2024 and September 5, 2024 that You signed in connection with the U.S. Litigation and the affidavit dated September 6, 2024, that You signed in connection with the Federal Court of Australia proceeding no. NSD1576/2023 Aristocrat Technologies Australia Pty Ltd v Light & Wonder, Inc. & Ors.

41. The deposition topics for Mr Soo are as follows:

42. Your work on and contributions to L&W’s Dragon Train game and other L&W games that include a hold and spin feature (or variations on such a feature).

43. Your Communications with Emma Charles, or any other former Aristocrat employee, regarding game design or game math, including disclosures of Aristocrat Documents or Aristocrat mathematical or other game design information.

44. Your acquisition, use, or dissemination of any mathematical or game design information that (a) relates to Dragon Train or (b) You obtained directly or indirectly from Emma Charles or any other former Aristocrat employee.

45. Your knowledge of, and Communications regarding L&W’s attempts to reverse engineer Dragon Link, Lightning Link, or any other Aristocrat game.

46. Your use or dissemination of Aristocrat Documents and any Aristocrat mathematical or other game design information during Your employment by L&W.

47. Your knowledge of L&W’s use or dissemination of Aristocrat Documents Aristocrat’s mathematical or other game design information.

48. L&W’s knowledge of Your use or dissemination of Aristocrat mathematical or other game design information during Your employment by L&W.

49. Your knowledge of efforts by L&W to compete with Dragon Link, Lightning Link, or other Aristocrat games.

50. The electronic devices and computer systems used by You, or issued to You by L&W, in connection with Your employment by L&W.

51. The circumstances under which Your employment by L&W ended.

52. Any agreements or arrangements (e.g., joint defense, joint representation, or cooperation agreements) You had or have with L&W relating to the U.S. Litigation or any Australian Proceeding.

53. Your involvement in L&W’s investigation concerning Aristocrat’s allegations in the U.S. Litigation or the Australian Proceedings.

54. The facts and circumstances relating to any declaration, affidavit, or written attestation that You signed in connection with the U.S. Litigation or any Australian Proceeding, including the declaration dated July 27, 2024, that You signed in connection with the U.S. Litigation.

Documents already produced, and final amended request for Ms Charles to produce documents

24. On 30 April 2024 Nicholas J made orders for preliminary discovery in the Federal Court proceedings. These orders required the production of documents by Ms Charles, such as recordings of mathematical rules, formulae or models used to create or implement Dragon Train; documents related to Dragon Link or Lightning Link or other Aristocrat games copied, transferred or removed by her after leaving her employment with Aristocrat; or documents created by Ms Charles after she commenced working for or after she commenced providing services to L&W, which referred to Dragon Link or Lightning Link or any feature of those games. Photographs or video files saved at a particular file path were ordered to be produced. The orders of Nicholas J included express orders regarding the confidentiality of the documents so produced.

25. On 6 September 2024 Ms Charles produced 657 documents.

26. During the course of oral submissions Ms Amato for the plaintiff acknowledged that in light of a number of issues with earlier versions of the order for production of documents, raised by Ms Hall in written and oral submissions on behalf of Ms Charles, that the terms of a suitable order would be:

“The 657 documents that you have produced in the Australian proceedings in response to the order of Nicholas J dated April 30, 2024 in Federal Court of Australia proceedings number NSD1576 of 2023.”

The preliminary injunction judgment in the US Proceedings

27. On 20 September 2024 Nevada District Judge Gloria M. Navarro delivered a 21 page judgment granting Aristocrat’s motion for a preliminary injunction. The orders enjoined L&W from using or disclosing Aristocrat’s trade secrets or other confidential and proprietary information relating to Dragon Link and Lightning Link, including any continued or planned sale of Dragon Train. L&W was further ordered to search for and identify all documents and materials it held reflecting Aristocrat’s trade secrets, account for these by describing them with specificity, and isolate them so that they cannot be used, copied or deleted. Every instance in which L&W has disclosed Aristocrat’s trade secrets was ordered to be specified.

28. The judgment is detailed, and provides an insight as to the advanced stage of evidence gathering in the US Proceedings. As her Honour states, the core of the suit is Aristocrat’s claim that L&W’s Dragon Train was developed using Dragon Link game mathematics that it acquired through the hiring of Ms Charles. Ms Charles is alleged to have first begun working on Dragon Train in late 2021, and eventually led the overall direction for all Dragon Train games, with her team including Mr Soo, who had never been employed by Aristocrat.

29. Her Honour found that “Aristocrat has shown a fair chance of success on its trade secret misappropriation claim by demonstrating that L&W acquired their trade secrets by hiring Ms Charles.”

30. The judgment provided an analysis of evidence, including comparison of spreadsheets Ms Charles is alleged to have been connected with at both Aristocrat and L&W relating to Dragon Link and Dragon Train, showing their similarity. The requirements for the pleaded causes of action are set out. Her Honour found that Aristocrat has identified three instances in which L&W acquired its trade secrets through Ms Charles. Her Honour found that “This information was acquired and disclosed by ‘improper means’ because as a part of her employment agreement with Aristocrat, Ms Charles contracted not to disclose Confidential Information.”

31. Aspects of the defence raised by L&W in the US proceedings are set out in the judgment, including the actual work done by L&W employees, the capacity to reverse engineer aspects of the relevant games, the existence of similarities, not because they involve trade secrets, but because they contain well known game creation methods, and so on. Her Honour discussed the defendant’s burden of demonstrating that trade secrets were obtained through proper means.

Breach of civil penalty provision raised

32. On 26 May 2025, a Further Amended Statement of Claim was filed by Aristocrat in the Federal Court proceedings. This alleged against Ms Charles a breach of a civil penalty provision (s 183 of the Corporations Act). It seeks a declaration of her contravention of this provision by her improperly using information obtained because she has been an employee of Aristocrat to gain an advantage for herself, L&W Inc. or LNW Gaming; and / or to cause detriment to Aristocrat. The material before me does not indicate this was the first occasion this breach was alleged, but it was not contained in the original Statement of Claim.

33. The Further Amended Statement of Claim also raises allegations in relation to another Light & Wonder game, namely Jewel of the Dragon. The additional allegations concerning Jewel of the Dragon are not directed against Ms Charles, only Light & Wonder entities.

An Amended Protective Order is made, and other matters regarding confidentiality

34. On 16 June 2025 an “Amended Protective Order” was made in the US Proceedings. This effectively permits the sharing of information designated as 'Confidential' or 'Highly Confidential' in the US Proceedings and Australian Federal Court Proceeding. Such designation is effectively agreed between the parties to the US Proceedings. The original Protective Order restricted the use of confidential or highly confidential material "only for purposes of this Action and any appeal therefrom".

35. Gilbert + Tobin have obtained access to over 300,000 documents produced by L&W in the US proceedings as a result of this information sharing regime.

36. An undertaking was given by the plaintiff prior to the ex parte application before Hamill J addressing to some extent issues of potential compromise of the Australian Federal Court proceedings by virtue of the proposed examinations.

Parties’ submissions

37. The written submissions for Ms Charles were filed prior to the significant narrowing of the description of documents to be produced suggested by the plaintiff. The effect of the submission that was maintained orally, however, was that even with such narrowing such an order for production would offend the requirement of s 33(6)(b) of the Act for specification of “particular documents”, meaning individual documents separately described, as discussed in Application of Monier Inc (2009) 76 NSWLR 158; [2009] NSWSC 986 (“Monier”) at [27] and [29]. Reference was also made to the discussion of this issue by Peden J in Louis Dreyfus Company B.V. (f/k/a Louis Dreyfus Commodities B.V) v Glencore Ltd [2025] NSWSC 388 at [31]-[41]. It was submitted that the order would still impermissibly require the production of classes of documents.

38. The alternative course of seeking individual releases from the Harman undertakings in the Federal Court proceedings was submitted to be the correct one. The narrowing of focus of documents to produce was contended to be undercut by the broadness of the topics for oral examination.

39. The list of topics for oral depositions was submitted to seek evidence that is of "indirect" relevance, given the scope of topics which, contrary to principle 14 in paragraph [42] of BAT and other established authority, and are expressed so broadly there are no limits of proper questioning. They were submitted to constitute examination on a “train of inquiry” methodology, this reinforced by the suggested requirement that they continue until completed rather than the ordinary time restraint of seven hours, and the fact that under Nevada law the use of deposition testimony extends beyond use in trial and can include expanding the claims in a pleaded case.

40. It was submitted that the Court would not be satisfied the evidence sought is relevant to the live issues at trial, as opposed to being of indirect relevance, because of the paucity of evidence of the defences filed in the US Proceedings and of the submissions made to the requesting Court. Whether because of the power in s 32(1)(b) of the Act not being made out, or discretionary reasons arising by reference to ss 33(4) and (6), it was submitted that the Court should not permit the depositions to occur.

41. Based on the application of the principles discussed by Northrop J in National Mutual Holdings Pty Ltd v Sentry Corporation (Federal Court of Australia, 30 May 1990, unrep) (“Sentry”) to the Court’s discretion, it was submitted that the proposed deposition would present a real risk of conferring an advantage on Aristocrat in the Federal Court proceedings, interfering with the administration of justice and preparation for hearing under the rules of that Court. This was said to arise because of the capacity to use the information obtained from the oral depositions (expressly or derivatively) in the Federal Court Proceedings prior to Ms Charles electing whether or not she is to go into evidence, and, if she does so elect, prior to any cross-examination of her. It was submitted that safeguards would be required, but would be difficult and complicated as it would need to extend to the corporate structure of Aristocrat, not just its legal representatives.

42. It was submitted for Ms Charles that in light of the amended Statement of Claim in the Federal Court proceedings, she was in danger of the imposition of a civil penalty, as declarations are conclusive evidence of a contravention of a civil penalty provision: s 1317E of the Corporations Act. It was easy in this case to imagine similar proceedings in NSW for the purposes of s 34(1)(a) of the Act, because they are in fact in train.

43. The privilege against exposure to penalties was submitted to operate “to excuse a person from being compelled to answer any question or produce any document if doing so would have the tendency to expose that person either directly or indirectly … to a penalty", quoting Australian Securities and Investments Commissions v Mining Projects Group Ltd (2007) 164 FCR 32; [2007] FCA 1620 (“Mining Projects”) at [7]. It was submitted that the privilege "extends to protect against compelled disclosure of evidence or documents that would increase the tendency of exposure to penalty", citing MacDonald v Australian Securities & Investments Commission (2007) 73 NSWLR 612; [2007] NSWCA 304 at [64].

44. It was submitted that penalty privilege is separate and distinct from both legal professional privilege and privilege against self-incrimination, and unlike those is merely a procedural rule, not a substantive rule of law and, accordingly, its application outside of judicial proceedings is in some doubt. In relation to this latter proposition, Ms Hall for Ms Charles referred to Daniels Corporation International Pty Ltd v Australian Competition and Consumer Commission (2002) 213 CLR 543; [2002] HCA 49 at [31], Rich v Australian Securities and Investments Commission (2004) 220 CLR 129; [2004] HCA 42 at [24], and Mining Projects. It was accepted that there was a requirement for a “real and appreciable risk” of institution of proceedings for a civil penalty before the privilege arose.

45. By reference to Application of the Securities and Exchange Commission of the United States of America under the Evidence on Commission Act 1995 (NSW) (No 2) [2020] NSWSC 1500 (“Securities and Exchange Commission”) at [322] it was submitted that an order would not be made if issuing the subpoena will only result in an examination where the privilege is comprehensively invoked; and by reference to [335] that the Court could have no confidence the regime envisaged under s 128 of the Evidence Act would apply.

46. It was submitted that the oral depositions referred to topics, not specified questions as is required for oral interrogatories under r 22.1 of the UCPR, and thus contrary to s 33(4) of the Act. Examples were provided of other orders made by this Court under the Act where more specific questions had been nominated.

47. An alternative course advanced for Ms Charles was deferring the time for compliance with the subpoena until after the determination of tranche 1 of the Federal Court Proceedings.

48. Alternatively again, the imposition of identified conditions was proposed, although emphasising that these did not satisfactorily deal with the matters raised on Ms Charles’ behalf. These included that no solicitor or individual from Gilbert + Tobin acting for Aristocrat in the Federal Court Proceedings be permitted to be present at any examination of the subpoena recipients; the plaintiff undertakes to not make any use of information or material obtained during the course of the examination of the subpoena recipients or portion thereof, until the transcript of testimony is tendered in the US Proceedings, unless required to produce or disclose those materials to another person under compulsion of law; and other undertaking for non-disclosure of material (and the requirement to obtain further orders from The District Court of Nevada if such undertakings are not given). Extensive undertakings were contended to be necessary, as the Harman undertaking extends to derivative use of “any knowledge acquired from” the inspection: Sentry at [32].

49. It was submitted for Mr Soo that the subpoena is not an order for "evidence to be obtained" for the purposes of the US Proceedings, as required by s 32 of the Act, but was instead in the nature of an impermissible “investigation”, demonstrated by its not being limited to topics that will adduce evidence for the purposes of use in the US Proceedings. That is particularly clear in relation to proposed deposition topics 11 through to 13. Even many of the earlier ones, however, were submitted to impermissibly draw in games beyond those specifically the subject of the litigation.

50. Relatedly, those topics were said to appear to have been crafted with a view to gaining a forensic advantage in the Australian Federal Court Proceedings (noting that there is no US equivalent of the Harman undertaking restricting use for the purposes of the US Proceedings). In that sense, examination on these topics was submitted to fall outside the scope of an order permitted by s 32 of the Act, and thus improper. The traversal of matters related to the Federal Court proceedings was submitted to pose such a risk of an interference with the administration of justice in the Federal Court proceedings as to constitute a contempt of the Federal Court.

51. Significant reliance was placed upon Mr Soo’s entitlement to exercise his privilege against self-incrimination. Topics 1 through to 10, and particularly topics 5 and 6, were submitted to involve examination of Mr Soo in respect of his personal involvement in alleged contraventions by L&W or Ms Charles. Although there were only claims against Ms Charles for breach of s 183 of the Corporations Act in the Federal Court proceedings, such provision is also contravened where a person is “involved in” the primary contravention. While Aristocrat has not yet made a claim against Mr Soo pursuant to that provision, it was submitted that there was a prospect of this happening. Accordingly it was submitted that Mr Soo would be entitled to refuse to answer any questions of substance on these topics, on the basis of the privilege against self-incrimination. It was thus submitted that there was little utility in allowing the examination on these topics to proceed.

52. If the subpoena is not set aside in its entirety, it was submitted that the impugned topics should be excluded from its scope. Alternatively, the examination should be conducted by a Judge of this Court, rather than a member of the Bar, to enable any such claims to be properly determined. However during oral submissions regarding the decision of Walton J in Securities and Exchange Commission, it was submitted that there would in fact probably be no utility in having a judge instead of another examiner address the privilege issue, as a judge would also have no power to issue a certificate under s 128 of the Evidence Act.

53. For the plaintiff the detail of the Letter of Request, and clear indication of relevance of the topics proposed in light of other material before the Court, was emphasised. It was conceded that some of the proposed deposition topics lower down the lists for each of Ms Charles and Mr Soo (for example from 13 onwards for Ms Charles) were more difficult to justify. It was submitted that the restricted description of documents to be produced was clearly in accordance with the requirements of the Act.

54. It was conceded that if there was any doubt about the capacity to claim privilege the examination should be overseen by a judge.

Determination

55. While there was some dispute between the plaintiff and Ms Charles as to whether the Court’s power to set aside the subpoena was pursuant to r 33.4 of the UCPR or r 36.16(2), there was no dispute that the Court has such a power, as the orders were made by Hamill J on an ex parte basis. Although the plaintiff’s written submissions emphasised the finality principle, the authorities relied upon and arguments advanced are somewhat inapt for a situation such as the present. The proceedings before Hamill J had no opponent, and were brief in terms of the evidence adduced and submissions made. There are complex matters raised in the present case that were not aired before Hamill J. The matter should be dealt with on its merits rather than starting with a presumption about the orders standing because of the principle of finality.

56. As endorsed in BAT, comity requires this Court to view a Letter of Request issued by a foreign Court for the purpose of civil proceedings before it benevolently; and “It is our pleasure and duty to assist those courts and the parties to them in arriving at a fair and just determination of their civil litigation where we can properly do so.” Settling the evidence for trial at this stage in the US Proceedings assists in achieving justice between the parties in those proceedings (including allowing L&W US to be on notice at an appropriate time of the case being pursued against it), as well as assisting the Nevada District Court. Nonetheless, when an application for an order under the Act is disputed, the Court must determine whether the order sought is one which it can or should properly make.

57. The Letter of Request in the current proceedings is detailed, and expressly states repeatedly that what is sought is evidence from Ms Charles and Mr Soo for use in the US Proceedings. The outline of evidence and issues in the Letter of Request supports this assertion. Other material before the Court, such as the judgment granting the preliminary injunction, shed light on the scale of the litigation, and the complexity and detail of the material already within the understanding of the requesting Court.

58. If the Court has power, and is able to mould an order to appropriately assist the requesting Court it should do so.

59. Noting that some moulding is required, I am satisfied for the purposes of s 32(1) of the Act that the request was issued by a court exercising jurisdiction in a place outside NSW, and that the evidence to which the application relates is to be obtained for the purposes of proceedings which have been instituted before the requesting Court.

60. I am satisfied in the main that questioning of Ms Charles on topics 1-11 and Mr Soo on topics 1-8 is clearly sought to obtain evidence for use in the US Proceedings rather than the obtaining of evidence that might lead to the procurement of evidence, or a train of inquiry, or discovery: BAT at [22]-[24], [26]-[27], [33]-[34], [40]-[41], [42](2)-(6), (9). With some modification, I am not of the view that the breadth of these topics in this case is inconsistent with the use of the evidence for trial, given the complexity of the issues for trial: BAT at [8], [42](9). Something of a divergence of analysis occurred in the submissions of the plaintiff and those for Ms Charles regarding the proposition in Application of Forsyth; Re Cordova v Philips Roxane Laboratories Inc (1984) 2 NSWLR 327 at 333 that a dual purpose does not invalidate a Letter of Request, and obiter dicta of Northrop J in Sentry. I am not of the view that the current proceedings are an appropriate vehicle for delving further into the detail of any such divergence of authority. The topics I have referred to are clearly advanced for obtaining evidence for trial.

61. However, considering aspects of those proposed topics, the other proposed topics, and the prospect of interference with the Federal Court proceedings, I take into account that the evidence does not indicate that the difference between United States and Australian law and procedure was taken into account in issuing this Letter of Request, and also the fact that orders for requests of this kind may be made without real scrutiny: BAT at [42](7), (8).

62. The evidence does not satisfy me even at a level of generality of the need for evidence in the trial of the circumstances in which Ms Charles’ employment with L&W ended, the credibility of suggestions her expenses are being funded by L&W, nor what was said to be the prospect of testing her on the adequacy of her compliance with the obligation to produce documents. I am not satisfied on the material before me that Ms Charles or Mr Soo should be questioned about other games such as Jewel of The Dragon, Dragon Unleashed Link, or other unnamed games. On the material before me, questioning Mr Soo about the “hold and spin” function is directly relevant. Information relating to the Australian proceedings is not appropriate for examination. I accept the submission of Mr Lang SC for Mr Soo that topic 9, namely examination about electronic devices and computer systems used by Mr Soo or issued to him by L&W, appears to be a train of enquiry area of examination rather than the adducing of evidence for trial, and I am of the same view regarding Ms Charles’ proposed topic 12.

63. The plaintiff’s undertaking addresses to some extent the fact that the non-existence of obligations pursuant a Harman undertaking or equivalent has seemingly not been taken into account in issuing the Letter of Request. However I am of the view that further explicit direction regarding the limited use of the evidence should be made. I have proposed a basic limitation (which accords with the limitation made by James J at first instance in the BAT proceedings) but regard the terminology of this as something that would benefit from more specific input from the parties. For this reason and others, the matter is to be listed before me for further directions within the next fortnight.

64. I am not satisfied that the prospect of risk of exposure to a civil penalty means that the orders for examination should not be made, or deferred. With the exception of the issue of whether a judicial officer acting as examiner pursuant to an order under s 33 of the Act has power to issue a certificate under s 128 of the Evidence Act, the case before Walton J in Securities and Exchange Commission was quite different. Mr Waldron was facing serious criminal charges which were listed for trial. The problems associated with compulsory examination prior to a criminal trial fundamentally altering the process of criminal justice discussed by the High Court in X7 v Australian Crime Commission (2013) 248 CLR 92; [2013] HCA 29, and at play in the application before his Honour, do not pertain to Ms Charles nor Mr Soo.

65. There is however a realistic prospect of exposure to a civil penalty in the focused deposition topics I have indicated a preparedness to approve. This is particularly so in light of the amended Statement of Claim filed in May 2025 in the Federal Court.

66. Apart from the alteration of the process of criminal justice considered by Walton J in Securities and Exchange Commission, his Honour also determined that a judge as examiner would not have power to issue a certificate under s 128 of the Evidence Act: see [328]-[345].

67. I note however that potential aspects of the UCPR such as rule 52.2 were seemingly not addressed before his Honour, and were not addressed before me. The argument about whether an examiner who is a judge of this Court can issue a certificate under s 128 of the Evidence Act, or alternatively whether a judge of this Court hearing a notice of motion can make orders having the same effect as a certificate under s 128 of the Evidence Act in an upcoming examination, were not adequately explored in submissions before me to reach a concluded view about it (and no order such as the second prospect I have raised was sought).

68. Rule 24.11 of the UCPR would indicate that the issue of whether Ms Charles or Mr Soo can be compelled to provide answers on a penalty privilege claim will not be able to be determined by an examiner other than a judicial officer. I am of the view that this should occur, and note the plaintiff’s concession in this regard despite her initial preference for a different course.

69. In the BAT proceedings, Bell J had made an order that the examination proceed before a judge. There were issues of potential exposure to criminal and civil liability for Mr Cannar, as well as legal professional privileges. The Court of Appeal’s resolution of Mr Cannar’s relevant grounds in these respects is not reported. At [97]-[98] Spigelman CJ said:

“Insofar as the proposition is advanced as to Mr Cannar’s exposure to possible criminal proceedings, this is expressly dealt with by s34 of the Act. That section creates a regime of dual protection to the effect that a witness is not compelled, by virtue of an order under s33, to give evidence which he or she could not be compelled to give either in similar proceedings in the State, (i.e. the Australian privilege against self-incrimination) or in similar proceedings in the requesting court’s jurisdiction, (i.e. the equivalent of the privilege against self-incrimination in the requesting country). I will set out the section in full below when I discuss the alternative ground of oppression based on the rejection of the affidavit evidence. The section contains its own procedure with respect to privilege. It is a comprehensive regime of protection intended to operate in accordance with its own terms. Any order made under s33 operates subject to that regime and would not, on that basis, be regarded as ‘oppressive’ or an order which was not “appropriate” for the Court to make.

The position with respect to exposure to civil or disciplinary proceedings may arise with respect to either a discretion, if there be such, or with respect to the modification of the order in terms of its ‘appropriateness’. It is not, in my opinion, sufficient for any person, the potential subject of an examination, to refer to the mere possibility of proceedings in the abstract without any indication of their probability or severity. Nothing was presented before Bell J or to this Court which would indicate that there was any real possibility of any detriment to Mr Cannar, let alone oppression of him, from civil, or indeed criminal, proceedings that could be brought in any jurisdiction. For this reason alone leave to appeal in this respect should be refused.”

70. The exercise of discretion against ordering examination arises more clearly in Ms Charles’ case by virtue of the amended Statement of Claim in the Federal Court. However I am of the view that there was not sufficient evidence or argument advanced to find that a judicial officer presiding over an examination under s 33 of the Act would necessarily not compel her, or Mr Soo, to give evidence at all because of the risk of exposure to a civil penalty, to determine the discretion against this being resolved by such a judicial officer. The futility argument is significantly less clear than in the proceedings before Walton J.

71. At [101] of BAT Spigelman CJ said:

“Even if I were minded to grant leave and intervene, I would give less weight to this factor than Sir Richard Scott appeared to give in the Sheikh Zayed Al-Nahyan case. Exposure to civil proceedings, even those involving allegations of serious misconduct are matters to which witnesses may come to be exposed as the result of the processes of the Court compelling them to either produce documents or give testimony in other proceedings. In domestic proceedings this would not be a basis for refusing to give evidence. Foreign courts in nations which are parties to the Hague Convention are expected to accede to requests from Australian courts for evidence in proceedings to be used in Australian courts, even if such evidence may expose the witness whose testimony is sought to civil proceedings in which their conduct is attacked, even proceedings alleging civil fraud. As a matter of comity, Australian courts should, as a general rule, accede to a similar request in such circumstances.”

72. The case referred to is First American Corporation v Sheikh Zayed Al-Nahyan [1999] 1 WLR 1154.

73. Another significant difference between the case before the Court and Securities and Exchange Commission is that deferring the examination until after the first tranche of the Federal Court proceedings does not provide a clear solution to the privilege issue. There was no evidence or submission advanced as to the likely time for the resolution by the Federal Court of the issue of whether Ms Charles in fact contravened the Corporations Act, so as to provide the declaratory relief sought there by Aristocrat. Further, there was no submission advanced that if that issue was determined in her favour, a prosecuting body could not seek orders to similar effect in future proceedings or seek to prove such breach. That is, there was no consideration in the submissions before me of the potential difference between Ms Charles’ case and the case of someone facing a criminal trial, where with very limited exceptions an acquittal results in the autrefois acquit plea in bar to any future criminal prosecution. Here, on the other hand, Ms Charles and Mr Soo would presumably wish to exercise a right to object to giving answers that may expose them to a civil penalty even after the Federal Court proceedings have been resolved.

74. For these reasons I am not of the view that the matters raised by Ms Charles nor Mr Soo render it inappropriate to order their examination, and I do not exercise my discretion to decline that they be examined or defer it.

75. I am of the view that the description of the documents as set out in paragraph [26] of these reasons, in the context of the specificity of the orders made by Nicholas J, is particular enough to comply with the Act, in light of the authorities to which my attention was drawn.

76. Rules 24.4 and 52.2 of the UCPR seem to suggest that the concurrence of the Chief Justice or Chief Judge at Common Law is required before an order is made for a judge of this Court to act as examiner. My orders will be subject to that concurrence. This is the way in which similar decisions under the Act have been expressed.

77. Both applicants sought costs. I heard no submissions on this issue. They have been partially successful and partly not. I propose to make no order as to costs.

ORDERS

78. For the above reasons I make the following orders, noting the undertaking given by the plaintiff:

79. The orders made by Hamill J on 7 July 2025 are set aside in part;

80. Leave is granted, pursuant to s 33 of the Evidence on Commission Act 1995 (NSW) and r 52.1(1)(a) of the UCPR to issue a subpoena to each of Emma Charles and William Soo to give evidence, and in the case of Ms Charles produce documents, in a form that will be annexed to these orders and marked Annexure A (“the Subpoenas”);

81. The following variations are made to the amended summons in evidence:

(a) The Notice to Ms Charles to produce documents is amended to reflect the plaintiff’s narrowed description quoted at paragraph [26] of these reasons. The documents are to be produced no later than 4 pm on Monday 1 December 2025; (b) The deposition topics for Ms Charles are to be amended as follows: in topic (6), the word “the” is to be substituted for the word “any”, and “, including” is to be deleted, in topic (7) the word “being” is to be substituted for the word “including”, in topic (11) the word “or” is to be inserted between “Dragon Link” and “Lightning Link”, and the words after “Lighting Link” are to be deleted, topics (12)-(18) are to be deleted; (c) The deposition topics for Mr Soo are to be amended as follows: in topic (2) the word “being” is to be substituted for the word “including”, in topics (4) and (8) the word “or” is to be inserted between “Dragon Link” and “Lightning Link” and the words after “Lighting Link” are to be deleted, topics (9)-(13) are to be deleted;

4. The plaintiff is to forward to my chambers amended subpoenas for annexing to these orders, in accordance with the above orders and my reasons, by 4 pm on Friday 21 November 2025;
5. The date for service of the amended summons on each witness is no later than 5pm, 24 November 2025;
6. Subject to the concurrence of the Chief Justice or Chief Judge at Common Law, a judge of this Court be appointed as examiner pursuant to s 33 of the Act;
7. The conduct of the examination as ordered by Hamill J may be further varied by order of a Judge of this Court;
8. The plaintiff is to keep the transcript of the examination and any video recording of the examination confidential and is not to make any use of any transcript or recording of the evidence other than to tender the same at the US Proceedings;
9. The matter is to be listed for directions before me on a date to be fixed as convenient to the parties within the next two weeks;
10. Any further application for order of this Court regarding the conduct of the examinations is to be made by Notice of Motion, filed and served prior to such directions hearing if possible;
11. The Notices of Motion of Ms Charles and Mr Soo are otherwise dismissed;
12. I make no order as to costs.

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Amendments

24 November 2025

Typographical errors in case name and para 12.