Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust)

1. [1]

   HIS HONOUR: I published my principal judgment in this matter on 8 December 2017: see Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2017] NSWSC 1703. During the course of the hearing I indicated that I considered that privilege had been waived by the defendant with respect to a document, part of which had been annexed to an affidavit that was read in the proceedings. With the agreement of the parties at that time, I indicated that I would provide reasons for my decision at a later time. These reasons deal with that issue.

2. [2]

   On 8 August 2014, the defendant received a letter from F B Rice, patent and trade mark attorneys in Sydney. The letter and its attachments were provided to me and marked MFI 1. The letter commences with the following sentence:

3. [3]

   Page 2 of the letter has been annexed to an affidavit sworn by Ian David Charles Creak and served on the plaintiff. A copy of that page is attached to these reasons.

4. [4]

   The plaintiff has called for production to it of the letter in full. That call is resisted by the defendant upon the basis of client legal privilege. The letter purports to be an advice from the defendant’s patent attorneys concerning the availability of the trade mark referred to in the first sentence of the 8 August 2014 letter. The plaintiff contends that the production of page 2 of the letter, not being unintentional or inadvertent, has operated to waive any privilege that might otherwise attach to it.

Applicable principles

1. [5]

   Section 122 of the Evidence Act 1995 relevantly provides that:

2. [6]

   Where a privileged document is partially disclosed, privilege is generally waived in respect of the entire document unless:

3. [7]

   This is known as "disclosure waiver": see ASIC v Rich [2004] NSWSC 923 at [9]. The principle applies notwithstanding that the disclosure occurs in the final hearing or at some earlier stage, such as in response to a notice to produce or in an affidavit in response to an interlocutory application: see, e.g., Banksia Mortgages Ltd v Croker [2010] NSWSC 535 at [33]–[34]; ASIC v Rich [2004] NSWSC 923 at [14].

4. [8]

   In Banksia Mortgages Ltd v Croker, an affidavit sworn by the defendant's lawyer was relied upon in resisting an application for summary judgment. The affidavit referred to privileged emails and their content: at [29]–[30]. Schmidt J held at [35] that the earlier disclosure was inconsistent with the maintenance of a claim for privilege: see also ASIC v Rich at [13]–[15] (although in this case it was held that the documents relied upon by the defendants did not disclose the advice given to ASIC: at [38]); IOOF Holdings Ltd v Maurice Blackburn Pty Ltd [2016] VSC 311 at [48]; Mortgage Results Pty Ltd v Millsave Holdings Pty Ltd (Legal Privilege) [2017] VSC 704 at [10].

5. [9]

   Similarly, in Attorney-General for the Northern Territory v Maurice (1986) 161 CLR 475; [1986] HCA 80 at 488, Mason and Brennan JJ said that:

6. [10]

   Further, in Bailey v Department of Land and Water Conservation at [132], Tobias JA explained that the decision in Great Atlantic Insurance Co v Home Insurance Co [1981] 1 WLR 529; [1981] 2 All ER 485 remains good law under s 122 and stands for the proposition that:

7. [11]

   The decision in Great Atlantic was referred to with approval in Maurice by Gibbs CJ at [8] and Mason and Brennan JJ at [11]: see also Commissioner of Taxation v Coombes (1999) 92 FCR 249; [1999] FCA 842 at [39].

8. [12]

   In deciding whether privilege has been waived, the Court can have regard to considerations of fairness. However, this is not a "freestanding or overriding principle" that operates at large: Mann v Carnell (1999) 201 CLR 1; [1999] HCA 66 at [29]; Bailey v Department of Land and Water Conservation at [3]–[4], [81]. In Mann v Carnell at [29], Gleeson CJ, Gaudron, Gummow and Callinan JJ said that:

9. [13]

   See generally Krok v Commissioner of Taxation [2015] FCA 51 at [22]–[27].

Consideration

1. [14]

   The precise purpose of the disclosure of page 2 of the 8 August 2014 letter in the context of the present litigation is unclear to me. It is in any event an irrelevant consideration. The defendant did not contend that the disclosure was other than intentional. Having purported to rely upon the document for some (as yet unexplained) purpose, the defendant cannot in my view resist the plaintiff’s call for production of the whole of the document of which it forms part.

Order

1. [15]

   In the circumstances I consider that the following order should be made:

   1. (1)

      Order the defendant within 14 days of the date of publication of these reasons to provide the plaintiff with a true copy of the document marked MFI 1 in these proceedings.