Titan Enterprises (Qld) Pty Ltd v Cross

LOGAN J: 1 This proceeding is being conducted in accordance with the Court's "Fast Track" practice and procedure to the end of what in more prosaic times would have been termed a speedy trial. Lest that end be "derailed", it therefore behoves me to resolve expeditiously an interlocutory controversy which has arisen. The nature of that controversy is whether particular documents produced under subpoena in advance of the trial by a third party are attended with a claimed privilege such that the applicants (collectively, Titan Enterprises) should be refused leave to inspect and copy them. 2 Titan Enterprises' "fast track statement" discloses that the dispute which it has raised in the principal proceeding concerns the content of a website allegedly operated by the respondents, Mr Dale Cross and Dr Adam Harmon entitled "BEWARE OF TITAN GARAGES" (the BOTG Website). Titan Enterprises contends that the publication of the BOTG Website infringes its registered trade marks, has infringed its copyright and amounts to misleading or deceptive conduct in contravention of s 18 and s 29 of the Australian Consumer Law as set out in Sch 2 of the Competition and Consumer Act 2010 (Cth) and to the tort of injurious falsehood. These allegations are put in issue by Dr Harmon in his "fast track response", as is Titan Enterprises' further allegation that Mr Cross is a fictitious person. Mr Cross has not filed and served a fast track response. 3 The subpoena in question has been directed to the proper officer of a firm of trade marks attorneys, Davies Collison Cave (DCC). It seeks the production of: (a) all records of instruction received by DCC from Mr Cross or any other person concerning Mr Cross' domain name dispute with Titan Enterprises (Qld) Pty Ltd before the World Intellectual Property Organisation Arbitration and Mediation Centre (the Titan dispute) such records to be redacted to obscure any information or instruction protected by client legal privilege but not obscuring any information identifying the name or contact details of the client and/or the person giving instructions. (b) all documents recording the levying and payment of professional fees in relation to the Titan dispute, including but not limited to any documents (or other information) which identify the billing information for the account, including: (i) the name of the bank account; (ii) the name of the account holder; (iii) the name of the credit card holder of any account from which payment has been made; (iv) the invoices levied; and (v) the address/es to which invoices were sent in relation to the matter. (c) all documents recording details of the identity of Mr Dale Cross including: (i) full name; (ii) date of birth; (iii) telephone number or mobile telephone number; (iv) street address; (v) mailing address; (vi) company name or ACN; (vii) alternative email addresses; and (viii) name and address of employer. (d) all documents identifying or recording steps taken to identify or confirm the identity of the person(s) providing instructions in relation to the Titan dispute. 4 In response to the subpoena, DCC initially produced documents in a redacted form. These were inspected by Titan Enterprises. Thereafter, Titan Enterprises put to DCC that it was entitled to inspect more of the contents of the documents. DCC disputed this. Correspondence between their respective solicitors ensued but did not result in a complete, consensual resolution of this dispute. DCC was then ordered to and has produced to the Court, in an unredacted form, the documents answering the subpoena. These are presently housed in a series of discretely marked, sealed envelopes. 5 As to most of the produced documents, DCC contends that Titan Enterprises is not entitled to inspect them in their unredacted form because the remaining contents are subject to the privilege for which s 229 of the Trade Marks Act 1995 (Cth) (Trade Marks Act) provides, which privilege reposes in Mr Cross. At least nominally (and it is not necessary presently to resolve whether it was other than nominal), DCC acted for Mr Cross in the Titan dispute. That privilege not having been waived by Mr Cross, DCC apprehends is that it is, in the circumstances, obliged to object to the inspection of the documents in an unredacted form. There is a separate, smaller category of produced documents the unredacted portions of which are said to be subject to client legal privilege enjoyed by DCC itself. Whether Titan Enterprises is entitled to inspect in an unredacted format this separate category of documents was once but is no longer controversial. That is because, at the hearing, Titan Enterprises came not to press its claim for further inspection in respect of this separate category of produced documents. That means that the remaining controversy is whether in law and in fact the privilege asserted under s 229 of the Trade Marks Act is made out. 6 Quite properly, DCC has, by correspondence, endeavoured to draw to the attention of Mr Cross the existence of the claim by Titan Enterprises to inspect in an unredacted form the produced documents. In the result, there was no appearance by or on behalf of Mr Cross at the hearing. Nor was an affidavit made by him concerning the privilege claim read by DCC. 7 Section 229 of the Trade Marks Act provides as follows: Privileges of trade marks attorney and patent attorney (1) A communication made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a lawyer providing legal advice to a client. (1A) A record or document made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a lawyer providing legal advice to a client. (1B) A reference in subsection (1) or (1A) to a registered trade marks attorney includes a reference to an individual authorised to do trade marks work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided. (2) The regulations may provide that a registered trade marks attorney or a patent attorney has, in relation to documents and property of a client in a matter relating to trade marks, the same right of lien that a solicitor has in relation to the documents and property of a client. (3) Intellectual property advice means advice in relation to: (a) patents; or (b) trade marks; or (c) designs; or (d) plant breeder's rights; or (e) any related matters. (4) Nothing in this section authorises a registered trade marks attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court. Neither the researches of counsel nor my own have disclosed that the meaning and application of the privilege for which s 229 of the Trade Marks Act provides (s 229 privilege) has hitherto fallen for judicial consideration. 8 Unprecedented though a determination of a claim for s 229 privilege may be, neither in that section, elsewhere in the Trade Marks Act nor in the regulations made under that Act is there any detailed provision in respect of the practice and procedure to attend the determination of such a claim, which is not to say that that there is any such need. For there is no particular reason why well settled principles concerning the resolution of controversies concerning claims for a privilege known to law, whether arising at common law or under statute ought not to attend a s 229 privilege claim. Further, that sentiment may well be taken up in the expression, "in the same way, and to the same extent" found in s 229. Thus, it is for the person asserting the privilege to prove that it is applicable in the circumstances of a particular case. And that proof is not found in "a mere sworn assertion": Hancock v Rinehart [2016] NSWSC 12 at [7] per Brereton J (Hancock v Rinehart). 9 Section 229 provides for what may be described as a purposive privilege. That is a feature which it shares with client legal or, to use an older term, legal professional privilege. That being so, "the essential issue on a claim for privilege is the purpose for which the document or communication in question was made": Hancock v Rinehart at [32]. It necessarily follows that the best, though not the only sufficient, source of evidence is the direct evidence of the person whose purpose is in question: Hancock v Rinehart at [32]. Procedural fairness questions in relation to other affected parties intrude in relation to any endeavour to prove the requisite purpose just by an inspection by the Court of the document which is the subject of the asserted privilege. That means that a court ought to be cautious about acting upon an invitation so to do, especially if that invitation is not attended by separate evidence describing the document and the circumstances of its creation: Woollahra Municipal Council v Westpac Banking Corporation (1994) 33 NSWLR 529 at 541-542 per Giles J. In this regard, it must also be remembered that no party is entitled to insist that the court inspect the document in respect of which (in whole or in part) privilege is claimed. 10 In Esso Australia Resources Ltd v Federal Commissioner of Taxation (1999) 201 CLR 49 at 64, [35] (Esso Australia v FCT), Gleeson CJ and Gaudron and Gummow JJ observed of client legal privilege: Legal professional privilege (or client legal privilege) protects the confidentiality of certain communications made in connection with giving or obtaining legal advice or the provision of legal services, including representation in proceedings in a court. 11 Client legal privilege may therefore have its origin in one or the other of two underlying purposes: communications made in connection with giving or obtaining legal advice or the provision of legal services, including representation in proceedings in a court. Esso Australia v FCT also establishes that, at common law in Australia, it is both necessary and sufficient that such a purpose be the dominant purpose in relation to that communication for that privilege to be attracted. 12 In contrast, consideration of the text of s 229 discloses that there is not a complete assimilation of s 229 privilege and client legal privilege. The assimilation is only with the advisory aspect of client legal privilege and then only to the extent that the advice constitutes "intellectual property advice" as defined. Not every service provided to a client by a registered trade marks attorney falls within the scope of s 229 privilege. In particular, advice constituting "intellectual property advice" as defined aside, the communications or documents generated in the course of the provision by a registered trade marks attorney of services in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre do not attract s 229 privilege. Nor, subject to that same caveat, would services provided to a client by a registered trade marks attorney in relation to proceedings in a court attract s 229 privilege. 13 Regard to the explanatory memorandum in respect of the Bill which became the grandiosely entitled Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which inserted the present s 229 into the Trade Marks Act, confirms that this incomplete assimilation was not unintended by Parliament. The expressed reason for that in the explanatory memorandum was that, "Attorneys do not have the same rights as lawyers do to initiate proceedings and represent parties in court": see item 23, p 93. It seems that in this case DCC did provide representational and related services to Mr Cross in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre. Even if that exemplifies an evolution, here and abroad, as to the scope of the practice of a registered trade marks attorney, it is for Parliament, not the courts, to make a value judgment as to whether the scope of s 229 privilege ought to be extended. 14 As s 229 is presently drawn, it is certainly possible to conceive of anomalous outcomes concerning the existence or otherwise of s 229 privilege with respect to such an arbitral proceeding. For example, it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of "intellectual property advice" in s 229(3). And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights did or did not extend to an Internet domain name seem to fall within the ambit of s 229 privilege - either by virtue of paragraph (b) or (e) of the s 229(3) definition. But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege. Likewise, advice as to what submission ought to be made to demonstrate that the asserted trade mark right did or did not extend to cover a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission for use in an arbitral proceeding would not. However this may be, the present claim must be determined solely by reference to the scope of the privilege as presently enunciated by Parliament. 15 The evidence tendered in support of the claim for s 229 privilege is to be found in an affidavit made by a solicitor in the employ of the solicitors firm acting for DCC. There is no direct evidence either from Mr Cross or, apparently, the registered trade marks attorney who furnished the advice which is said to be found in the redacted parts of the produced documents and covered by s 229 privilege. Titan Enterprises has expressly disavowed reliance upon any insufficiency of proof of the privilege claim based on the hearsay quality of the solicitor's affidavit. 16 In that affidavit it is stated: (a) at paras 4 to 7: 4. I am informed by Adam Sears, partner of DCC that DCC, in its capacity as trade mark attorneys, acted for Dale Cross in respect of a complaint by the first applicant to the World Intellectual Property Organization Arbitration and Mediation Centre ("the Complaint"). Annexure "NSB-1" is a true copy of the document by which the Complaint was made, which document is dated 13 November 2015 (not inclusive of the annexures thereto). 5. I am informed by Adam Sears that DCC's file for Dale Cross contains documents which are and record confidential communications with DCC for the purpose of giving and obtaining intellectual property advice relating to the Complaint. 6. DCC were served with a subpoena to produce documents under cover of a letter from Andrew Nicholson of Mullins Lawyers, who were then the solicitors for the applicants, dated 28 July 2016. Annexure "NSB-2" is a true copy of the letter dated 28 July 2016. 7. I am instructed by Adam Sears that DCC formed the view that the: (a) documents sought by the subpoena concerning the Complaint, including the records of instructions sought in category one are documents which are and record confidential communications with DCC for the purpose of giving and obtaining advice in respect of the Complaint (hereafter I refer to those documents as the Dale Cross documents) ; and (b) it was consistent with DCC's obligations of confidentiality, including under the s19(2) of the Code of Conduct for Patent and Trade Mark Attorneys 2013 to maintain confidentiality and privilege in the Dale Cross documents until such time as it was expressly instructed otherwise. (b) at para 14: 14. I am instructed by Adam Sears to inform the Court that: (a) with the exception of two envelopes of documents referred to at paragraphs 16 and 20 below, all of the documents produced to the Court on 12 October 2016 form part of a confidential file kept by DCC which owes confidentiality obligations in respect of that file to Dale Cross; (b) all the documents in the envelope marked "QUD411/2016, Documents produced pursuant to order made 11 October 2016, Category 1 of Subpoena 26.07.16, Privilege Objection: Dale Cross' privilege, Confidentiality Objection: Confidential communications with Davies Collison Cave" are confidential communications with DCC for the purposes of giving or obtaining advice related to the Complaint. Those documents were previously produced to the Court on 19 August 2016 with the documents having been redacted except for the name and contact details described in the subpoena; (c) all the documents in the envelope marked "QUD411/2016, Documents produced pursuant to order made 11 October 2016, Category 1 of Subpoena 26.07.16, Privilege Objection: Dale Cross' privilege over parts, Confidentiality Objection: Confidential communications with Davies Collison Cave" contain some parts which record confidential communications with DCC which communications were made for the purposes of giving or obtaining advice related to the Complaint. Those documents were previously produced to the Court on 19 August 2016 with the privileged parts redacted; and (d) all the documents in the envelope marked "QUD411/2016, Documents produced pursuant to order made 11 October 2016, Category 2 of Subpoena 26.07.16, Privilege Objection: Dale Cross' privilege over parts, Confidentiality Objection: Confidential communications with Davies Collison Cave" contain some parts which record confidential communications with DCC which communications were made for the purposes of giving or obtaining advice related to the Complaint. Those documents were previously produced to the Court on 19 August 2016 with the privileged parts redacted. 17 For completeness and in fairness, I should record that the solicitor's affidavit also discloses that an endeavour was made, without success, to seek and obtain instructions and related evidence from Mr Cross in relation to the s 229 privilege claim. 18 Consideration of surrounding circumstances and the drawing of inferences necessarily arising therefrom may well make it apparent that what viewed in isolation is nothing more than a conclusory statement is in fact a succinct summary of the purpose for which a particular document or other communication was made. I have read the statements made in the solicitor's affidavit, quoted above, with this in mind. In particular, I have had regard to the complaint which initiated the arbitral proceeding before the World Intellectual Property Organization Arbitration and Mediation Centre and to the draft of a statutory declaration of Dr Harmon prepared for use in that proceeding. Even so, there is substance in the point taken on behalf of Titan Enterprises, in the course of the careful and comprehensive submissions made on their behalf by Mr O'Shea QC and Mr Gardiner, which is that these statements in the affidavit, quoted above, do not rise above mere assertion. I gave notice to DCC in the course of the hearing that I might reach such a conclusion and offered an opportunity, on terms as to costs, for a short adjournment so that DCC might furnish such further evidence as it might be able and advised so to do in relation to the s 229 privilege claim. DCC, by its counsel, stated that it did not wish to avail itself of that opportunity. Neither was I invited by DCC myself to inspect any of the unredacted documents. I have not done so of my own motion. 19 For completeness and in light of submissions made in the course of the hearing I should make the following observations. A duty of confidentiality, derived from the incorporation into a contract of retainer of s 19(2) of the Code of Conduct for Patent and Trade Marks Attorneys 2013, is not to be assimilated with the scope of s 229 privilege (though it might well explain why DCC felt obliged to raise an issue in relation to s 229 privilege, especially when fresh instructions could not be obtained from Mr Cross). Section 229 refers in the singular to a registered trade marks attorney. From this it was put on behalf of Titan Enterprises to follow that it would be necessary to identify each and every individual attorney who had furnished advice and the particular advice which that attorney provided in order to make out a s 229 privilege claim. While it is not necessary for the purposes of this application finally to decide that point, I am not inclined to accept it. In the absence of a contrary intention, and none is evident here, the singular includes the plural in a Commonwealth statute: s 23, Acts Interpretation Act 1901 (Cth). Section 229 would therefore seem to me to extend to a firm of registered trade marks attorneys practising in partnership. Within the confines of the privilege as conferred by s 229, I therefore find it difficult to see why the privilege ought not to extend to advice furnished by such a partnership in the same way as legal advice to a client furnished by a firm of solicitors practising in partnership would attract client legal privilege. It was further submitted that advice by a non-registered trade mark attorney would not attract s 229 privilege. Such circumstances considered in isolation, this may readily be accepted. But it does not follow from this that work undertaken by such a person within a firm and then adopted by a registered trade mark attorney as that firm's advice would not attract s 229 privilege. More detailed consideration of these issues is not warranted by the circumstances of this case. 20 The result then is that this is a case where the onus of proving on the balance of probabilities that the asserted privilege extends to the redacted portions of the produced documents in question has not been discharged. It follows that, save in respect of that category of document in respect of which it is no longer controversial that the unredacted parts are subject to client legal privilege, Titan Enterprises is entitled to an order granting them leave to inspect and to copy at the registry the produced documents in unredacted form. There will be an order accordingly. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Logan.

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