State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd

1. The first applicant and its external legal representatives be released from their respective obligations to use for the purposes of this proceeding only the documents reproduced in confidential exhibit MJW-8 to the fifth affidavit of Michael John Williams sworn 5 August 2019 and confidential exhibit MJW-11 to the sixth affidavit of Michael John Williams sworn on 28 August 2019 but only in respect of category 1 documents as identified in the Court's reasons for judgment delivered on 5 September 2019, with such release operating only to the extent that they may each use such category 1 documents for the purposes of proceeding State Street Global Advisors Trust Company v Visbal, case number 1:2019cv01719, in the US District Court for the Southern District of New York but for no other purpose.
2. The parties' costs of the first applicant's application concerning the partial release of the said obligations be their costs in the cause. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

BEACH J: 1 State Street Global Advisors Trust Company (SSGA), the first applicant in the proceeding before me, seeks an order that it be released from its implied Harman undertaking with respect to the use of 114 documents reproduced in confidential exhibit MJW-8 to the affidavit of Mr Michael Williams sworn 5 August 2019 and 116 documents reproduced in confidential exhibit MJW-11 to the affidavit of Mr Williams sworn 28 August 2019 (the Harman documents), such as to enable SSGA to use the Harman documents for the purposes of a US federal proceeding between SSGA and Ms Kristen Visbal (the artist) in the US District Court for the Southern District of New York (the US proceeding), but for no other purpose. 2 The first respondent, Maurice Blackburn Pty Ltd (MB), and the second respondent (Cbus) oppose the release of the Harman documents. The Harman documents contain material produced by MB and Cbus under the Court's coercive processes including discovery as well as material produced under a subpoena directed to One Green Bean Pty Ltd (OGB). 3 SSGA seeks the orders based on the so-called special circumstances that: (a) documents have been produced to SSGA by MB and Cbus in this proceeding including by way of discovery, and by OGB in response to a subpoena; (b) SSGA is both a party to this proceeding and the US proceeding, although I would note that neither MB nor Cbus are parties to the US proceeding; (c) pursuant to orders of the US Court, SSGA is required to complete its discovery in the US proceeding by 21 October 2019; and (d) each of the Harman documents is relevant to an issue before the US Court. 4 Further, as to SSGA's ability to compel production of the Harman documents in the US proceeding from the artist, who is the sole defendant to that proceeding, SSGA says that the artist has notified SSGA's lawyers that her email account has been compromised by unknown third parties, and that this may affect her ability to produce documents by way of discovery. Further, SSGA says that some of the documents are unlikely, by their nature, to be documents that would be in the possession of the artist and capable of production by her in the US proceeding. 5 The principles to apply in dealing with a release or modification of the implied undertaking are not in doubt. In these reasons I will use the label of "implied undertaking" although it will be appreciated that "in truth it is an obligation of law arising from circumstances in which the material was generated and received" (Hearne v Street (2008) 235 CLR 125 at [102] per Hayne, Heydon and Crennan JJ). 6 Now the need to demonstrate "special circumstances" and what is meant by that phrase are not matters that require any elaborate disquisition. As stated in Liberty Funding Pty Ltd v Phoenix Capital Ltd (2005) 218 ALR 283 at [31], the notion of special circumstances "does not require that some extraordinary factors must bear on the question before the discretion will be exercised. The discretion is a broad one and all the circumstances of the case must be examined". 7 Further, in Australian Trade Commission v McMahon (1997) 73 FCR 211 at 217, Lehane J said that "[w]here an application for release is decided in contested proceedings, it seems that 'special circumstances' will fairly readily be found where it is established that the use of documents discovered in a proceeding is reasonably required for the purpose of doing justice between the parties in other proceedings" (my emphasis). Of course in so assessing, a matter of significance in the exercise of the discretion is a commonality of issues between the proceeding in which the documents are produced and the proceeding in which the documents are sought to be used, a matter which I will discuss in more detail later. Another consideration is whether there is a unity of parties in the two proceedings or a difference; in the present matter there is no such unity. 8 Before proceeding further I would note that in Hearne at [107] it was accepted that in giving discovery "the law ensures that there is not placed upon litigants … any burden which is 'harsher or more oppressive … than is strictly required for the purpose of securing that justice is done'". Ms Claire Cunliffe, counsel for Cbus, put forcefully and attractively that such an expressed stricture should discipline any commercial latitude that I might otherwise be inclined to give to SSGA's application. Fair point. But of course Hearne was not dealing with the context of any release or modification of the implied undertaking as such, albeit that their Honours went on to observe that although the undertaking can be released or modified, "that dispensing power is not freely exercised and will only be exercised where special circumstances appear", but with nothing said as to the specific boundaries or content of "special circumstances". For my part, on the question of such release or modification, I am bound to apply the Full Federal Court authority of Liberty. 9 The Harman documents fall within one or more of the following three categories. 10 The first category is any communication with the artist or her attorney (Ms Nancy Wolff) regarding the Australian Replica (I will define "Replica" later), including: (a) what was permitted or prohibited under the artist's agreements with SSGA being the Master Agreement (I will define this later), the copyright licence and the trademark licence; (b) the artist's or Ms Wolff's knowledge, approval or encouragement of MB's planned activities; and (c) the artist's or Ms Wolff's efforts to trump SSGA's planned activities (category 1). 11 The second category is any communication between and among the artist's buyers or their agents, recording what the artist told them about any permitted use of the Replica and their understanding of the same (category 2). 12 The third category is any document evidencing alleged infringing activities in Australia, including: (a) the sale of the Replica; (b) the Australian Launch Event (I will define this later); (c) social media posts; and (d) the lack of attribution to SSGA (category 3). 13 SSGA submits that there are special circumstances justifying the release of the Harman documents in each of categories 1, 2 and 3 for the purposes of the US proceeding. Both MB and Cbus oppose the release. 14 For the reasons set out below I have decided to permit the release of category 1 documents, but not category 2 or category 3 documents at this stage; I may revisit those categories at a later stage. Category 2 and category 3 documents may be relevant to the US proceeding or at least may be used for a legitimate forensic purpose in the US proceeding including as a launching pad for the questioning of the artist, either in a deposition or at trial. But I am not satisfied that sufficient need has been demonstrated to justify their release at this stage. Mr David Studdy SC for SSGA cleverly put me in the hypothetical past of how in the glory days I might have used these category 2 and category 3 documents if I had been so armed with them for the purposes of a firm but fair cross-examination. He did not need much to persuade me that all of them could have been used. Mr Colin Golvan QC for MB countered that I should not apply the lens of a hypothetical past Australian advocate, but rather the lens of a hypothetical future US trial attorney. I tend to agree. But having said that, I am not sure that the two lenses are so different when it comes to planning and performing a profitable cross-examination. In any event, as I say, SSGA has established a legitimate forensic purpose for obtaining the category 2 and category 3 documents not only to question the artist but also to tender some for a non-hearsay purpose or indeed as business records as a hearsay exception. But that is not sufficient to justify their release at this stage. I will revisit this during and after the trial before me in late November 2019. 15 Let me now begin with some background.