Application by Isentia Pty Limited
[2021] ACopyT 1
•9 February 2021
COPYRIGHT TRIBUNAL OF AUSTRALIA
Application by Isentia Pty Limited [2021] ACopyT 1
File number: CT 2 of 2018 The Tribunal: GREENWOOD J (PRESIDENT) Date of decision: 9 February 2021 Legislation: Copyright Act 1968 (Cth) Cases cited: Betfair Pty Ltd v Racing New South Wales and Another (No 7) (2009) 181 FCR 66
Field v Commissioner for Railways for New South Wales (1957) 99 CLR 285
Yokogawa Australia Pty Ltd and Others v Alstom Power Ltd (2009) 262 ALR 738Date of hearing: 4 February 2021 Category: No Catchwords Number of paragraphs: 25 Counsel for the Applicant: Ms L Thomas Solicitor for the Applicant: Clayton Utz Counsel for the Respondent, Fairfax Media Limited and Nine Entertainment Co Pty Ltd: Mr R Yezerski Solicitor for the Respondent: MinterEllison Counsel for News Pty Limited: Ms J Beaumont Solicitor for News Pty Limited: Allens Counsel for Meltwater Australia Pty Ltd: Ms F St John Solicitor for Meltwater Australia Pty Ltd: Baker McKenzie COMMONWEALTH OF AUSTRALIA
Copyright Act 1968
IN THE COPYRIGHT TRIBUNAL CT 2 of 2018 APPLICATION BY: ISENTIA PTY LIMITED (ABN 11 002 533 851) BETWEEN: ISENTIA PTY LIMITED (ABN 11 002 533 851)
ApplicantAND: COPYRIGHT AGENCY LIMITED (ABN 53 001 228 799)
RespondentTRIBUNAL: GREENWOOD J (PRESIDENT) DATE OF ORDER: 9 FEBRUARY 2021 THE TRIBUNAL DIRECTS THAT:
1.Each challenge to each summons the subject of the applications before the Tribunal on 4 February 2021 is dismissed.
REASONS FOR DETERMINATION
GREENWOOD J (PRESIDENT):
Last Thursday afternoon, 4 February 2021, the Tribunal heard submissions in relation to objections to five summonses issued by the Tribunal.
Three of those summonses were issued on 13 October 2020 and two were issued on 16 October 2020. Each summons was issued at the request of Isentia Pty Limited (“Isentia”).
The three summonses issued on 13 October 2020 are addressed respectively to News Pty Limited (“News”), Fairfax Media Limited (“Fairfax”) and Streem Pty Limited (“Streem”).
Each summons calls for documents relating to the negotiation of Deed Polls between News and Streem on the one hand and Fairfax and Streem on the other, and communications about the Deed Polls.
As to the summonses issued on 16 October 2020, one summons is issued to Copyright Agency Limited (“CA”) and the other is issued to Streem.
By the Deed of Settlement between Streem and CA in settlement of the Streem application, each party releases the other from all claims in relation to matters recited in the Deed including the Previous Agreement, the Interim Licence and the Interim Orders as those terms are understood. Each summons of 16 October 2020 seeks documents relating to the topic of the releases. Isentia seeks those documents so as to investigate and understand the extent of CA’s claim or entitlement under those instruments against Streem and, in particular, whether Streem or CA has quantified the value of the foregone entitlements.
That matter is said to be relevant because CA pleads that the arrangements with Streem taken together with the Settlement Agreement and the Deed Polls is a comparable bargain that the Tribunal should take into account in resolving the applications by Isentia and Meltwater Australia Pty Ltd (“Meltwater”).
The advantage conferred on Streem, in its capacity as a licensee to a contended comparable bargain, by being released from any anterior claims by CA, is a material matter in determining the scope of the contended comparable bargain. Isentia and Meltwater contend that the bargain reached with Streem is not comparable due in part to the element relating to the releases: see, for example, Isentia Second Further Amended Statement of Points in Support of the Applicant’s Case (“Statement of Points”) at para 126.
Since the issuing of each summons, the parties have been conducting negotiations with a view to resolving the various challenges to each summons. Some aspects of each summons have not been able to be resolved.
As to the summons issued to News on 13 October 2020, the only remaining question is whether the documents set out in the Schedule described as “Annexure Revised C1 – WPP claims only” attract privilege from production to Isentia (and ultimately Meltwater) on the ground that they contain “without prejudice” communications within the limits of the scope of that privilege. Streem objects to production of documents comprehended by the summons to it and contends that it will be prejudiced by production because the information contained within the documents is “commercially sensitive”.
I have had the benefit of reading Streem’s written submissions although Streem elected not to appear on the hearing of the challenge to each summons and thus elected not to make any oral submissions. I have also considered the written submissions of News and I have had the benefit of oral submissions from counsel for News, Ms Beaumont. CA was represented by counsel but took the position that in circumstances where Streem asserts claims of “without prejudice” privilege over documents which are “counterparts” of documents in CA’s possession, CA will not produce the documents pending a determination of whether the privilege, if it subsists at all, can be unilaterally waived. Nine and Fairfax, by counsel, did not wish to be heard on any issues concerning “without prejudice” privilege.
One other aspect of the new Isentia points in support of its application should also be noted. Isentia says at para 127 of its Statement of Points that the New CAL Licence (otherwise known as the Alternative Licence) should not be regarded as a comparable bargain, “because it appears to be a bargain struck by competitors (being CAL, Fairfax and News Corp) acting collectively”. No further particulars are given of that proposition and it is contested by CA.
For the purposes of resolving the challenges to each summons it is sufficient to make these observations.
First, neither News nor Fairfax are parties to either of the two applications presently before the Tribunal. News and Fairfax could have elected to have been joined but they have chosen not to become parties to any controversy. Nor were they parties to the Streem application.
Second, the question of whether the arrangements with Streem and thus the contents of those arrangements in their entirety constitute, in all the circumstances, a comparable bargain is expressly in issue on each application as is the contention that the releases are material to the question of whether the bargain is truly comparable. Fairness would suggest that, absent any properly subsisting privilege from production, documents relevant to these matters ought to be produced to enable the parties to address the contentions raised on each application and to enable the Tribunal to reach an informed view about whether the bargain reached with Streem is truly a comparable bargain.
Third, the privilege from production of documents relevant to a question in issue in each application on the ground that the documents reveal “without prejudice” communications is confined to a document (or as some authorities suggest, parts of a document) revealing express or implied admissions about a claim or integers of a cause of action. The privilege arises as a matter of public policy so that settlement negotiations may take place between parties to a dispute unhampered by the embarrassment of subsequent probative disclosures of admissions made, either expressly or by conduct, of aspects of a claim.
So it follows that if B makes admissions in negotiations with A concerning aspects of A’s claims about a particular subject matter, C could not compel production of documents by B to prove admissions about that subject matter in subsequent litigation, assuming that the subject matter in question is relevant to C’s proceedings. However, if the purpose of the disclosure is not to seek to prove an admission but simply to address and prove facts about a relevant matter in the proceeding, no privilege from production arises.
Having regard to the composition of the present proceedings, the only party against whom a statement could operate as an admission, is CA. If CA has said something which amounts to an admission of relevant subject matter then CA could assert “without prejudice” privilege in relation to the document so as to prevent the document being used as probative evidence of an admission it may have made. However, that question simply does not arise as no assertion of that kind is made.
The documents Isentia seeks are plainly relevant to the scope of the “pleading”, and the evidence put on to resist production of the documents on the ground of “without prejudice” do not establish that the documents contain admissions which would fall within the scope of the notion of “without prejudice” privilege, at least as articulated in Field v Commissioner for Railways for New South Wales (1957) 99 CLR 285 at 291 and 292; Betfair Pty Ltd v Racing New South Wales and Another (No 7) (2009) 181 FCR 66 at [1], [4] and [64] to [74].
A further question that arises is whether, if the privilege subsists, the privilege is jointly held and whether it can be waived by one of the parties which enjoys the privilege.
Obviously in a case between A and B in which those parties conduct negotiations with a view to resolving matters between them, the contents of statements amounting to admissions cannot be put into evidence except with the consent of the participants to the negotiations. If it were otherwise, the privilege would not count for much. However, in cases of subsequent litigation in which one of the parties to the negotiations becomes a party to the later proceedings and those proceedings plead into relevance, for the purposes of the subsequent proceedings, matters which touch upon matters the subject of the earlier proceedings, there can be an implied waiver by one of the parties to the earlier proceedings of the “without prejudice” communications.
In those circumstances, as elaborated in the observations of Duggan J in Yokogawa Australia Pty Ltd and Others v Alstom Power Ltd (2009) 262 ALR 738 at [69] to [100], there can be unilateral waiver of the privilege. Accordingly, the cases discussed by Duggan J support the proposition that the unilateral actions of one of the negotiating parties can have the effect of waiving the privilege in subsequent litigation involving a third party. That is the position in these applications.
As to the documents, I have not had the benefit of looking at each individual document. However, I have looked closely at the Schedule provided by News. I am satisfied that those documents ought to be produced and are not subject to “without prejudice” privilege on the present material. Having regard to the obvious relevance and materiality of the contentions on the “pleadings”, I am satisfied that the documents in the hands of CA and Streem ought to be produced on the footing that they go to issues which have been made relevant and the material does not suggest that the privilege otherwise subsists. Even if it did, the documents appear to be sufficiently connected with such an important question presently in issue that the parties and the Tribunal ought, as a matter of fairness, to have access to the documents.
Streem says that the documents are commercially sensitive.
It may be necessary to adopt a protocol about who can look at those documents but, subject to that matter, the documents are to be produced to enable the parties and the Tribunal to do the work contemplated by the provisions of the Copyright Act 1968 (Cth) that place matters of this kind before the Tribunal.
I certify that the preceding twenty‑five (25) numbered paragraphs are a true copy of the Reasons for Determination herein of the Honourable Justice Greenwood, President, Australian Copyright Tribunal Associate:
Dated: 9 February 2021
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