Siabon Seet v No Defendant

1. [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. [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. [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. [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. [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

1. [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:

2. [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:

3. [8]

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

4. [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:

5. [10]

   Rule 24.11 of the UCPR provides as follows:

6. [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

1. [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.

2. [13]

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

3. [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.

4. [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 2001 (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 Letter of Request

1. [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.

2. [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".

3. [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.

4. [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.

5. [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.

6. [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.

7. [22]

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

   1. (1)

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

   2. (2)

      The circumstances under which Your employment with Aristocrat ended.

   3. (3)

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

   4. (4)

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

   5. (5)

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

   6. (6)

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

   7. (7)

      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.

   8. (8)

      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.

   9. (9)

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

   10. (10)

       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.

   11. (11)

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

   12. (12)

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

   13. (13)

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

   14. (14)

       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.

   15. (15)

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

   16. (16)

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

   17. (17)

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

   18. (18)

       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.

8. [23]

   The deposition topics for Mr Soo are as follows:

   1. (1)

      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).

   2. (2)

      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.

   3. (3)

      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.

   4. (4)

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

   5. (5)

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

   6. (6)

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

   7. (7)

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

   8. (8)

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

   9. (9)

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

   10. (10)

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

   11. (11)

       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.

   12. (12)

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

   13. (13)

       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.

9. [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.

10. [25]

    On 6 September 2024 Ms Charles produced 657 documents.

11. [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:

12. [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.

13. [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.

14. [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.”

15. [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.”

16. [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.

17. [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.

18. [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.

19. [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".

20. [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.

21. [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

1. [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.

2. [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.

3. [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.

4. [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.

5. [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.

6. [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.

7. [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].

8. [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.

9. [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.

10. [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.

11. [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.

12. [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].

13. [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.

14. [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.

15. [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.

16. [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.

17. [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.

18. [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

1. [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.

2. [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.

3. [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.

4. [58]

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

5. [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.

6. [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.

7. [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).

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.

9. [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.

10. [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.

11. [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.

12. [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].

13. [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).

14. [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.

15. [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:

16. [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.

17. [71]

    At [101] of BAT Spigelman CJ said:

18. [72]

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

19. [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.

20. [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.

21. [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.

22. [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.

23. [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

1. [78]

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

   1. (1)

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

   2. (2)

      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”);

   3. (3)

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

   4. (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. (5)

      The date for service of the amended summons on each witness is no later than 5pm, 24 November 2025;

   6. (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. (7)

      The conduct of the examination as ordered by Hamill J may be further varied by order of a Judge of this Court;

   8. (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. (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. (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. (11)

       The Notices of Motion of Ms Charles and Mr Soo are otherwise dismissed;

   12. (12)

       I make no order as to costs.