DFD Rhodes Pty Ltd v Hancock Prospecting Pty Ltd [No 2]

[2015] WASC 457

JURISDICTION     :   SUPREME COURT OF WESTERN AUSTRALIA

IN CHAMBERS

CITATION:   DFD RHODES PTY LTD -v- HANCOCK PROSPECTING PTY LTD [No 2] [2015] WASC 457

CORAM:   LE MIERE J

HEARD:   16 SEPTEMBER 2015

DELIVERED          :   2 DECEMBER 2015

FILE NO/S:   CIV 2737 of 2013

BETWEEN:   DFD RHODES PTY LTD

First Plaintiff

MATTHEW JOHN KEADY AND DOROTHEA MARGARET CAMPBELL by chain of Executors, the Executors of the Estate of DONOVAN FRANCES DUNCAN RHODES
Second Plaintiff

AND

HANCOCK PROSPECTING PTY LTD
First Defendant

WRIGHT PROSPECTING PTY LTD
Second Defendant

HOPE DOWNS IRON ORE PTY LTD
Third Defendant

FILE NO/S              :CIV 3041 of 2010

BETWEEN             :WRIGHT PROSPECTING PTY LTD

Plaintiff

AND

HANCOCK PROSPECTING PTY LTD
First Defendant

HOPE DOWNS IRON ORE PTY LTD
Second Defendant

HAMERSLEY WA PTY LTD
Third Party

Catchwords:

Discovery - Confidentiality of materials - Confidentiality regimes - Duty owed to the court - Implied undertaking not to make collateral use of discovery documents

Legislation:

Nil

Result:

Directions given

Category:    B

Representation:

CIV 2737 of 2013

Counsel:

First Plaintiff                  :     Mr N D C Dillon

Second Plaintiff             :     Mr N D C Dillon

First Defendant              :     Mr J C Giles & Mr D J Pratt

Second Defendant         :     Mr J Rowland QC

Third Defendant            :     Mr D J Pratt

Solicitors:

First Plaintiff                  :     G E Taylor & Associates

Second Plaintiff             :     G E Taylor & Associates

First Defendant              :     Jackson McDonald

Second Defendant         :     Clayton Utz

Third Defendant            :     Jackson McDonald

CIV 3041 of 2010

Counsel:

Plaintiff:     Mr N J Cooper

First Defendant              :     Mr C Bova

Second Defendant         :     Mr C Bova

Third Party  :     Mr J Garas

Solicitors:

Plaintiff:     Clayton Utz

First Defendant              :     Jackson McDonald

Second Defendant         :     Jackson McDonald

Third Party  :     Allens

Case(s) referred to in judgment(s):

Alcoa of Australia Ltd v Apache Energy Ltd [2014] WASCA 148

Hearne v Street (2008) 235 CLR 125

1. LE MIERE J:  On 5 June 2015 the court directed the parties to this action (the Rhodes Proceeding) and to proceedings CIV 3041 of 2010 and 2617 of 2012 (the Consolidated Proceedings) to file minutes of proposed orders in relation to, amongst other things, confidentiality in relation to the inspection and use of documents in interlocutory proceedings and at trial.  The parties filed minutes of proposed orders.  The court heard argument in relation to the making of confidentiality orders on 23 July 2015.  The court made orders by consent in August 2015 (the Consent Orders).  The Consent Orders resolved the confidentiality issues in the Rhodes Proceeding and the Consolidated Proceedings except for issues of confidentiality between the plaintiffs in the Rhodes Proceeding (Rhodes Parties) and the third party (Hamersley).  I will start by outlining the Consent Orders.

Consent Orders

1. The Consent Orders were made in the Consolidated Proceedings and the Rhodes Proceeding and were consented to by the parties and third party in each of those proceedings, including the Rhodes Parties and Hamersley.  The Consent Orders consist of ten paragraphs followed by four schedules and five annexures.  Paragraphs 1 and 2 provide that the orders are made in the Consolidated Proceeding and in the Rhodes Proceeding.  Paragraph 3 provides that the previous confidentiality orders made in the Consolidated Proceedings are discharged.  Paragraph 4 makes orders consequential upon that.  Paragraph 5 provides that  HPPL (the first defendant in the Consolidated Proceedings and in the Rhodes Proceeding) and HDIO (the second defendant in the Consolidated Proceedings and third defendant in the Rhodes Proceeding) are to provide to the Rhodes Parties, WPPL (the plaintiff in the Consolidated Proceeding and second defendant in the Rhodes Proceeding) and Hamersley a list of all documents discovered by HPPL and HDIO in both proceedings that identifies the documents which they claim as confidential pursuant to schedule 2 of the Consent Orders.  Each of the schedules contain orders with respect to documents claimed to be confidential by one or more parties or Hamersley.  Schedule 2 contains orders with respect to HPPL's and HDIO's confidential documents.  Paragraph 6 provides that Hamersley shall mark on the list drawn by HPPL and HDIO of discovered documents claimed to be confidential which documents it claims as confidential pursuant to either schedule 3 or schedule 4 of the Consent Orders.  Schedules 3 and 4 contain orders with respect to documents claimed by Hamersley to be confidential.  Schedule 3 deals with Hamersley's First Tier Confidential Documents and Schedule 4 deals with Hamersley's Second Tier Confidential Documents.  Paragraph 7 provides that WPPL shall give to HPPL, HDIO, Hamersley and the Rhodes Parties a list of all documents discovered by WPPL in both proceedings which identifies the documents which it claims as confidential pursuant to schedule 1 of the Consent Orders. 

2. Schedule 1 contains orders with respect to the access and use of documents discovered by WPPL which it notifies HPPL, HDIO and the Rhodes Parties are confidential.  It is not necessary to say anything further about those orders.

3. Schedule 2 contains orders with respect to HPPL and HDIO's confidential documents.  Paragraph 1 provides that access to and use of the documents discovered and produced by HPPL/HDIO in either proceeding which HPPL/HDIO notifies WPPL, the Rhodes Parties, and Hamersley are confidential in either proceeding (HPPL/HDIO's Confidential Documents) are restricted to the named persons or classes of persons.  In relation to the Rhodes Parties, the named persons are Mr Rhodes, Mrs Ellis and Mr Keady who are directors of DFD Rhodes Pty Ltd and any in‑house solicitors employed by DFD Rhodes Pty Ltd in respect of either proceeding.  The other persons to whom access and use is permitted are any external solicitors, external barristers, prospective witnesses or experts and any administrative staff utilised by the Rhodes Parties, or their external solicitors, barristers or experts.  Access to and use of the documents is restricted to those specified persons who have given a confidentiality undertaking in the form set out at Annexure B.

4. Paragraphs 2 and 3 of Schedule 2 make provision in relation to the disclosure of pleadings, evidence and submissions which recite or identify confidential information.  Paragraph 4 provides that, subject to par 5, if the same document is nominated as a HPPL/HDIO Confidential Document and is nominated by Hamersley as a Hamersley First Tier Confidential Document, then it is to be treated as a Hamersley First Tier Confidential Document such that the orders in schedule 3 and the undertaking in Annexure C apply in respect of that document.  Paragraph 5 provides that if the same document is nominated as a HPPL/HDIO Confidential Document and is nominated by Hamersley as a Hamersley Second Tier Confidential Document, then it is to be treated as a Hamersley Second Tier Confidential Document only such that the orders in schedule 4 and the undertaking in Annexure D apply in respect of that document.  Paragraph 6 provides that in the event any party proposes to tender or to disclose in open court or in chambers any HPPL/HDIO Confidential Documents or any information contained therein, that party shall give HPPL/HDIO notice of the intended disclosure and HPPL/HDIO may bring an application for orders preserving the confidentiality of the material to be disclosed.

5. Schedule 3 deals with orders with respect to Hamersley's First Tier Confidential Documents.  Paragraph 1 of Schedule 3 provides that access to and use of the documents discovered and produced by HPPL/HDIO in either proceeding which Hamersley notifies WPPL, HPPL/HDIO and the Rhodes Parties are first tier confidential (Hamersley's First Tier Confidential Documents) will be restricted to the persons specified.  In relation to WPPL, access to and use of the documents is restricted to the persons specified who have signed a confidentiality undertaking in the form of annexure C.  In relation to the Rhodes Parties, access by the Rhodes Parties was deferred until further order of the court.  Paragraphs 2 and 3 deal with disclosure of pleadings, evidence and submissions.  Paragraph 4 provides that if WPPL or HPPL/HDIO proposes to tender or to disclose in open court or in chambers any Hamersley First Tier Confidential Document, that party shall give Hamersley and HPPL/HDIO notice of the intended disclosure and Hamersley and HPPL/HDIO may bring an application for orders preserving the confidentiality of the material to be disclosed.

6. Schedule 4 deals with orders with respect to Hamersley's Second Tier Confidential Documents.  Paragraph 1 deals with access to and use of documents discovered and produced by HPPL/HDIO in either proceeding which Hamersley notifies WPPL, HPPL/HDIO and the Rhodes Parties are second tier confidential (Hamersley's Second Tier Confidential Documents).  Access to and use of the documents by WPPL is restricted to persons specified who have provided the solicitors for HPPL and HDIO and Hamersley a signed confidentiality undertaking in the form set out in annexure D.  As to access by the Rhodes Parties, access is deferred until further order of the court.  Paragraphs 2 and 3 deal with pleadings, evidence and submissions which recite or identify Hamersley's Confidential Information.  Paragraph 4 provides that if WPPL or HPPL/HDIO propose to tender or disclose in open court or in chambers any Hamersley Second Tier Confidential Documents then that party shall give Hamersley and HPPL/HDIO notice and Hamersley and HPPL/HDIO may bring an application for orders preserving the confidentiality of the material to be disclosed.

7. The undertakings to be given by persons who have access to the confidential documents are set out in the annexures to the orders.  Annexure A is an undertaking in respect of WPPL's Confidential Documents.  The undertaking is given to the Court and to WPPL.  Annexure B is the undertaking in respect of HPPL/HDIO's Confidential Documents.  The undertaking is given to the court, HPPL and HDIO.  Annexure B1 is the undertaking in respect of HPPL/HDIO's non‑Hamersley confidential documents.  The undertaking is given to the court, HPPL and HDIO.

8. Annexure C is the undertaking in respect of Hamersley's First Tier Confidential Documents.  The undertaking is given to the Court, HPPL, HDIO, Hamersley and Hamersley's Related Entities, that is the 10 companies specified in par 16 of the annexure.  Paragraphs 1, 2 and 3 are undertakings to keep Hamersley's First Tier Confidential information confidential.  Paragraph 4 is an undertaking not to make any electronic copies of Hamersley's First Tier Confidential Documents.  Paragraph 5 is an undertaking, other than in respect of use of the e.Law Secure Data Room to ensure that any electronic copies of any notes, records, memoranda or other documents created by the person giving the undertaking which recite Hamersley's First Tier Confidential Information are stored on local drives only and are not stored on any network location or offsite backup facility.  Paragraph 6 is an undertaking to only use the e.Law Secure Data Room for the purpose of exchanging documents which recite Hamersley's First Tier Confidential Information with the persons who are given access to the documents by the orders and who have signed the required confidentiality undertaking.  Paragraph 7 sets out a protocol for using the e.Law Secure Data Room.  Paragraph 13 provides that on completion of the proceedings, including any appeals, the person giving the undertaking will destroy any copies of Hamersley's First Tier Confidential Information and any notes, records, memoranda or other documents (including but not limited to any electronic versions) which recites Hamersley's First Tier Confidential Information providing that the undertaking shall not extend to briefs to experts, expert reports, evidence read or tendered, affidavits or transcripts.  The paragraph further provides that it does not require the person to destroy any document which is derived from (without reciting) Hamersley's First Tier Confidential Information that is retained as part of any file created and retained in the course of the person's professional duties or to the extent that he or she is required to retain any information by law or to satisfy the rules or regulations of a regulatory body to which he or she is subject, providing that he or she continues to comply with all of the other provisions of the undertaking including keeping Hamersley's First Tier Confidential Information confidential.  Paragraph 15 is a form of the Rhodes Ridge Restriction contained in earlier confidentiality orders in the Consolidated Proceedings.  The person giving the undertaking undertakes not to act for WPPL, its shareholders or related entities, in any commercial negotiations with Hamersley or its related entities concerning their respective interests in the Rhodes Ridge Joint Venture subject to the qualifications set out. 

9. Annexure D is the undertaking in respect of Hamersley's Second Tier Confidential Documents.  The undertaking is given to the Court, HPPL, HDIO and Hamersley.  Paragraph 7 of the undertaking is in similar terms to paragraph 13 of annexure C.

Proposed confidentiality orders in relation to Rhodes Parties

1. Hamersley and the Rhodes Parties have conferred in relation to the appropriate terms of access by the Rhodes Parties to the Hamersley documents.  There is significant agreement on the terms of access but there are some outstanding differences.  The differences are most easily seen in the plaintiffs' minute dated 14 September 2015 and entitled 'Plaintiffs' minute of proposed orders for a confidentiality regime to protect the third party's confidential documents'.  The minute is a version of Hamersley's minute of proposed orders dated 14 September 2015 which is marked up to show the changes to the Hamersley minute proposed by the Rhodes Parties.  The proposed confidentiality orders are set out in schedule 1 of the proposed orders. 

2. The schedule has ten paragraphs and two annexures.  Paragraph 1 provides that access to Hamersley's First Tier Confidential Documents and any parts of documents which recite or identify the contents of those documents (Hamersley's First Tier Confidential Information) is restricted to the persons specified in paragraph 1(a) to (f).  Paragraph 1(a) specifies Mr Rhodes, Ms Ellis and Mr Keady or other individuals to be agreed who have signed a confidentiality undertaking in the form set out at Annexure A.  Paragraph 1(b) specifies prospective witnesses or experts (and administrative staff employed by experts) for the Rhodes Parties who have signed a confidentiality undertaking in the form at Annexure B and the undertaking has been filed with the court in a sealed envelope.  Paragraph 1(b) makes provision for access to the filed undertaking.  Hamersley proposes that, except by order of the court, no one access the filed undertaking until the completion of the trial.  The Rhodes Parties propose that, except by order of the court, no one access the filed undertaking until the conclusion of the trial and any appeals.  Paragraph 1(c) to (f) refer to other persons who presently need not be identified. 

3. Paragraph 2 is in the same terms as paragraph 1 except that it relates to Hamersley's Second Tier Confidential Documents where paragraph 1 refers to Hamersley's First Tier Confidential Documents. 

4. Paragraph 3 deals with the proposed tender by the Rhodes Parties in open court or in chambers of Hamersley Confidential Information, that is Hamersley's First Tier Confidential Information or Hamersley's Second Tier Confidential Information. 

5. Paragraphs 4 and 5 deal with the solicitors for Hamersley providing to the solicitors for the Rhodes Parties copies of the Hamersley Confidential Documents after receiving a signed confidentiality undertaking. 

6. Paragraph 6 provides for the solicitors for Hamersley to maintain a register of persons who have signed relevant undertakings.

7. Paragraph 7 provides that nothing in the orders precludes a person from describing the title or date of or parties to Hamersley's Confidential Documents or providing a general description of a document to any person for the purposes of the proceedings.  There is a dispute between the parties as to how that general description may be determined.

8. Paragraph 8 provides that for the avoidance of any doubt any document or information which is obtained or known by the Rhodes Parties or any prospective witness or expert other than through discovery by a party in the Consolidated Proceeding or the Rhodes Proceeding does not fall under this regime and the use of it is not restrained by this regime.  Hamersley opposes an order in those terms.

9. Paragraph 9 provides that if the Rhodes Parties wish to produce Hamersley's Confidential Documents to any prospective witness who is not prepared to sign an undertaking in the form of Annexure B the parties are to confer as to any amendments required to be made to the orders and any restrictions to apply to the prospective witness.

10. Paragraph 10 provides for the parties to have liberty to apply including to vary the orders and to contest the confidentiality of any document.

11. Annexure A is the form of undertaking to be given by the specified directors or employees of the Rhodes Parties and their external solicitors and barristers.  Annexure B is the form of undertaking to be given by prospective witnesses or experts for the Rhodes Parties.  There are some disputes concerning some of the terms of those proposed undertakings.

12. I will now refer to the parts of the proposed confidentiality regime in relation to which there is a dispute between the Rhodes Parties and Hamersley.

Additional authorised persons

1. Paragraph 1 of the schedule provides that access to Hamersley's First Tier Confidential Documents and any parts of documents which recite or identify the contents of Hamersley's First Tier Confidential Documents (Hamersley's First Tier Confidential Information) is restricted to the persons or class of persons set out in six subparagraphs.  There is a dispute about subpars (a) and (b). 

Schedule 1 paragraph 1(a) and paragraph 2(a)

1. Paragraph 1(a) as proposed by Hamersley and with the marked up changes proposed by the Rhodes Parties is as follows:

   (a)Kenneth Rhodes, Maxine Ellis and Matthew Keady of the DFD Rhodes Parties (or other individual(s) as agreed by HPPL/HDIO and Hamersley the plaintiffs with the party or parties which claim the subject document is confidential under this regime, or as determined by the Court if such agreement is not reached) and the DFD Rhodes Parties' external solicitors and barristers (including administrative staff employed by the external solicitors or barristers) who have first signed a confidentiality undertaking in the form set out at Annexure A to these orders and provided it to the solicitors for HPPL, HDIO and Hamersley the party or parties which claim the subject document is confidential under this regime.

2. Paragraph 2(a) of the schedule is in the same terms except that it refers to Hamersley's Second Tier Confidential Documents.  The dispute between the parties in relation to that paragraph is the same as the dispute in relation to paragraph 1(a).

3. In my opinion the order should take the form proposed by Hamersley, that is it should extend to 'other individuals as agreed by HPPL/HDIO and Hamersley'.  Hamersley's First Tier Confidential Documents are documents or parts of documents discovered and produced at any time by HPPL/HDIO in either proceeding which Hamersley notifies the Rhodes Parties are First Tier Confidential Documents.  Specifying that the additional persons must be agreed by HPPL/HDIO and Hamersley avoids any uncertainty about which party or parties claim the documents are confidential.  The number of additional persons nominated by the Rhodes Parties are not likely to be so numerous as to make the requirement to obtain the agreement of HPPL/HDIO and Hamersley unduly onerous.

Schedule 1 paragraph 1(b) and paragraph 2(b)

1. Paragraph 1(b) of the schedule provides that prospective witnesses or experts (and administrative staff employed by experts) for the Rhodes Parties who have signed a confidentiality undertaking in the form of annexure B shall have access to and use of Hamersley's First Tier Confidential Documents.  Hamersley proposes that the signed confidentiality undertaking is to be filed with the court in a sealed envelope and not to be accessed by any party or person until the conclusion of the trial in the Rhodes Proceeding.  The Rhodes Parties propose that the sealed undertaking not be accessed by any party or person until conclusion of the trial in the Rhodes Proceeding and any appeals.  There is a similar dispute in relation to paragraph 2(b) which relates to the persons who are to have access to the Hamersley Second Tier Confidential Information.

2. The Rhodes Parties submit that disclosure to the other parties, including Hamersley, of the identity of persons who have signed the confidentiality undertaking discloses to those other parties the identity of potential witnesses or experts who the Rhodes Parties approached or engaged but elected not to adduce evidence from.  The Rhodes Parties say that if that disclosure is made after the trial of the action and there is a subsequent appeal and retrial then the other parties' knowledge of the identity of witnesses and experts approached or retained but not called by the Rhodes Parties at the first trial is potentially a forensic advantage to those other parties.

3. The purpose of disclosure to the other parties, including Hamersley, of the identity of prospective witnesses and experts who have signed the confidentiality undertaking is so that those parties will know who has had access to the relevant confidential information.  That will facilitate Hamersley in ensuring that the undertakings are not breached.  It will facilitate Hamersley in ensuring that persons do not participate in negotiations between WPPL and Hamersley in relation to Rhodes Ridge where those persons have had access to the confidential information.

4. It is not presently necessary to preserve the confidentiality of the identity of prospective witnesses or experts for the Rhodes Parties who have signed the confidentiality undertaking beyond the trial of the action.  The orders provide that they are made 'until further order' and there is liberty to apply.  If there is an appeal or a retrial then the Rhodes Parties may apply to extend the operation of the orders.

Schedule 1 paragraph 3(b)

1. Paragraph 3 deals with the tender or disclosure in open court or in chambers of Hamersley's Confidential Information, that is Hamersley's First Tier or Second Tier Confidential Information.  In the minute proposed by Hamersley par 3(b) refers to the obligations owed to HPPL/HDIO and Hamersley and the Court by the Rhodes Parties pursuant to these orders.  The Rhodes Parties say that the reference should be to obligations owed only to the Court by the Rhodes Parties.  This reflects the dispute about who the undertakings to be given should be given to which I will deal with when considering the terms of the annexures.

Schedule 1 paragraph 7

1. The next dispute concerns the terms of par 7 of Schedule 1.  Paragraph 7 as marked up showing the original proposal by Hamersley and the changes proposed by the Rhodes is as follows:

   Nothing in these orders precludes a person from describing the title or date of or parties to Hamersley's First Tier Confidential Documents or Hamersley's Second Tier Confidential Documents, or providing a general description of a document in terms previously agreed between Hamersley and the DFD Rhodes Parties if the title does not adequately describe its general subject nature, to any person provided that such disclosure is for the purposes of the proceeding.

2. The form of words proposed by the Rhodes Parties has the effect that the Rhodes Parties may unilaterally determine whether the title of the document adequately describes its general subject nature and if they decide it does not, they may unilaterally determine the appropriate general description of the document.  In my view that is not appropriate.  The documents are Hamersley's documents and it is Hamersley which claims the documents to be confidential.  The Rhodes Parties or their solicitors may not appreciate the extent of the confidentiality or whether or not a general description given by the Rhodes Parties or their solicitors to a document might infringe upon the confidentiality.  In my opinion the risk and consequences of that occurring outweigh any inconvenience to the Rhodes Parties in having to confer with Hamersley about a general description of any document in respect of which the Rhodes Parties consider the title does not adequately describe its general subject matter.  However, there is one qualification.  In the affidavit of Richard Mark Bickerton sworn 26 March 2015 there is a list of documents described by HPPL and HDIO.  The Rhodes Parties should be at liberty to adopt that description of the documents. 

Schedule 1 paragraph 8

1. The next dispute is that the Rhodes Parties propose, and Hamersley resists, the inclusion of par 8 in these terms:

   For the avoidance of doubt, any document or information which is obtained or known by the Rhodes Parties or any prospective witness or expert other than through discovery by a party in the Consolidated Proceeding or the DFD Rhodes Proceeding, does not fall under this regime and the use of it is not restrained by this regime.

2. This dispute reflects the dispute about par (d) of Annexure A which I will refer to later in these reasons.

The annexures

1. Annexure A is the undertaking to be given by the named directors of Rhodes or the other persons specified in par 1(a) of the schedule including the Rhodes Parties' external solicitors and barristers and administrative staff employed by them.  The annexure relates to Hamersley's First Tier Confidential Information.  Annexure B is the undertaking to be given by prospective witnesses or experts for the Rhodes Parties and administrative staff employed by those experts.

Annexure A, paragraph (d), Annexure B, paragraph (d) - definition of Confidential Information

1. This dispute concerns the definition of Confidential Information.  The Rhodes Parties propose the following definition:

   (d)Confidential Information means the contents of the Confidential Documents, except where the information is publicly available, or is disclosed in other documents which have been discovered in the Proceeding which have not been nominated as falling under this confidentiality regime, or was already within my knowledge and lawfully able to be used by me, or has been disclosed in open court or in chambers and no order is made restricting disclosures of it.

2. The Rhodes Parties have prepared memorandums, chronologies and emails which address the project structure of the Hope Downs mine and the joint venture arrangement between HPPL/HDIO and Hamersley based on information disclosed in non‑confidential discovered documents.  These memorandums and emails, the information in them and the information from which they were derived are subject to the obligation not to use documents received by way of discovery or other compulsory court process for any purpose other than the conduct of the proceedings in which they were produced:  Hearne v Street (2008) 235 CLR 125. The definition of Confidential Information proposed by Hamersley is very broad. It refers to the 'contents of the Confidential Documents'. The definition of a 'Derived Document' encompasses any 'note, record or memoranda or other document ... incorporating or referring to, or derived directly or indirectly from the Confidential Information'. The confidentiality regime imposes strict requirements on dealing with Confidential Information and Derived Documents. Without the amended definition proposed by the Rhodes Parties the confidentiality regime would have the effect that information previously known about, or obtained lawfully from other sources, would become Confidential Information under the regime. The Rhodes Parties submit that it is not appropriate for the confidentiality regime to operate in a manner such that information which has been lawfully obtained elsewhere must be treated as confidential under the regime. The regime should only apply to information which is of such a nature that protection beyond the ordinary Hearne v Street obligation is required.  If information in a non‑confidential document is also contained in a Confidential Document, that piece of information should not be the subject of extraordinary protection.

3. The Rhodes Parties say that they should be permitted to speak with people who know information about the Hope Downs project and who are legally entitled to divulge that information.  They submit it is not appropriate to have a regime whereby Hamersley can restrict access to those people simply because Hamersley nominates documents or information as confidential.  If a witness has direct knowledge of certain information, or a copy of a particular document, and they are legally entitled to use that information or document, that witness should be entitled to speak with the Rhodes Parties without having to provide an undertaking in the form set out in Annexure B.

4. The Rhodes Parties further submit that the Confidential Information definition should not include information disclosed in open court, or chambers, with no order having been made restricting further disclosure.

5. Hamersley submits that the definition of Confidential Information set out in each of Annexures A and B accords with the definition in each of Annexures A, B, C and D of the Consent Orders.  Hamersley submits that the further and lengthy qualifying words proposed by the Rhodes Parties will give rise to inconsistencies between the Consent Orders and these orders and are unnecessary, vague and uncertain in their operation.

6. I do not consider that the definition proposed by the Rhodes Parties, and the additional words proposed by the Rhodes Parties to par 8 of the schedule, are unnecessary, vague or uncertain in their operation.  In my opinion, where the Rhodes Parties, or experts or prospective witnesses, have obtained information from other sources and are legally entitled to use and disclose that information, their entitlement to use that information should not become subject to the restrictions of the confidentiality regime by reason of Hamersley having nominated as confidential a document which contains the same information.  The confidentiality regime will apply to information obtained by any person from the discovered Confidential Documents and the confidentiality regime will apply to that information as well as the disclosure and use of the documents themselves.  The amended definition proposed by the Rhodes Parties should be included in the orders.  Furthermore, the words proposed by the Rhodes Parties to be added to par 8 of the schedule should be added.

The undertakings should be given to the court

1. The next dispute concerns to whom the undertakings should be given.  The Rhodes Parties say the undertakings should be given only to the court.  Hamersley says that the undertakings should be given to the court, HPPL, HDIO and Hamersley.

2. It is appropriate to start by considering the basis on which orders imposing a confidentiality regime are to be made.  The court has a discretion under O 26 r 9(1) to make an order for production or inspection and a power to impose restrictions and/or conditions on inspection.  The court may impose restrictions or conditions on the inspection of discovered documents when it is of the opinion that the 'implied undertaking' not to use discovered documents for a collateral purpose is insufficient to protect the confidentiality of discovered documents.  In Alcoa of Australia Ltd v Apache Energy Ltd [2014] WASCA 148, McLure P said at [57] that it is established by authority that:

   [T]he court may exercise its power to impose limitations, restrictions or conditions for the purpose of protecting the efficacy of the implied undertaking;

3. The implied undertaking not to make collateral use of documents disclosed on discovery arises automatically as an incident of the discovery process.  Although the obligation is for the benefit of the parties, it is an obligation that is owed to the court.  It is for that reason that breach of the obligation is treated as contempt:  Hearne v Street [106] (Hayne, Heydon & Crennan JJ). Parties may be released from the implied undertaking by applying for leave to the court which had the conduct of the proceeding in which the material that is the subject of the undertaking was provided. This is a direct result of the undertaking being owed to that court, rather than to the parties themselves. It is the court which has the right to control the undertaking and can modify it or release a party from it.

4. The court may impose a confidentiality regime where it is necessary to protect the efficacy of the implied obligation.  A confidentiality regime typically imposes restrictions on who should have access to discovered documents, and requires those who are given access to provide undertakings regarding their compliance with the confidentiality regime.  In my opinion, such an undertaking should be given to the court and not to the parties.  That is because the purpose of the confidentiality regime is to protect the efficacy of the implied undertaking and the implied undertaking is an obligation owed to the court not the party discovering the documents notwithstanding that the obligation exists for the benefit of that party.

5. Confidentiality regimes agreed by the parties often include persons who are given access to the documents giving undertakings to the disclosing party as well as the court.  However, as a general rule, where the confidentiality regime is imposed by the court without the consent of the parties then an undertaking which the court requires to be given by a person who is given access to the confidential documents should be given to the court and not to the party disclosing the documents.

Annexure A, paragraph 6 - emailing Confidential Information

1. The next dispute concerns the transmission by email by the nominated Rhodes Parties personnel or their external solicitors and barristers of any notes, records, memoranda or other documents which contain or recite Confidential Information.  Hamersley says that persons given access to the Confidential Information should undertake not to send any emails which contain or recite Confidential Information.  The Rhodes Parties say that the nominated Rhodes Parties' directors or employees and external solicitors and barristers who access Hamersley's First Tier Confidential Information should be permitted to send emails which contain or recite Confidential Information.

2. Hamersley says that the restriction on the transmission of Confidential Information by email is consistent with the corresponding provisions of the Consent Orders, which govern the use of Hamersley's First Tier Confidential Documents and Hamersley's Second Tier Confidential Documents.  Paragraph 6 of Annexure C to the Consent Orders provides that the person giving the undertaking will only use the e.Law Secure Data Room for the purpose of exchanging documents which recite Hamersley's First Tier Confidential Information.  There is no similar provision in Annexure D which contains the undertaking given by persons given access to Hamersley's Second Tier Confidential Documents.

3. I am not satisfied that the restrictions on the use of Hamersley's First Tier Confidential Documents by WPPL, its lawyers, experts or witnesses in Annexure C to the Consent Orders is a sufficient reason for requiring a similar restriction in the undertaking to be given by persons giving an undertaking in respect of access by the Rhodes Parties.  Counsel for HPPL and Hamersley sought leave to lead evidence in relation to this matter if the court was not satisfied on the materials presently before the court that the Rhodes Parties should be restricted from transmitting Hamersley's First Tier Confidential Documents and Hamersley's Second Tier Confidential Documents by email.  Counsel submitted that it was only on the eve of the hearing that HPPL and Hamersley became aware that the Rhodes Parties opposed the email restriction and had not had an opportunity to put on evidence in support of it.  I will give HPPL and Hamersley an opportunity to put on further evidence in relation to this matter.

Annexure A, paragraph 7; Annexure B, paragraph 8

1. The final dispute concerns the destruction upon the completion of the proceedings of copies of the Confidential Information and parts of Derived Documents that contain Confidential Information.  Derived Documents means any parts of notes, records, memoranda or other documents incorporating or referring to, or derived directly or indirectly from, the Confidential Information.  Paragraph 7 of Annexure A and paragraph 8 of Annexure B each provides that upon completion of the proceedings, including all appeals, the person giving the undertaking will destroy any copies of the Confidential Information and such parts of the Derived Documents that contain Confidential Information provided that, subject to contrary order, the undertaking shall not extend to briefs to experts, expert reports, evidence read or tendered, affidavits or transcripts.  Hamersley proposes that a qualification to the undertaking should be that nothing in the paragraph shall require the person giving the undertaking 'to destroy any document which is derived from, (without reciting) the Confidential Information that is retained as part of any file created and retained in the course of my' professional duties or to the extent that I am required to retain any information by law or to satisfy the rules or regulations of a regulatory body to which I am subject'.  The Rhodes Parties say that the words 'without reciting' should be deleted.

2. In my opinion the words 'without reciting' should be included in paragraphs 7 and 8 of Annexures A and B respectively.  They are included in the corresponding provisions of the relevant annexures in the Consent Orders.  The words 'without reciting' have the effect of including within the class of documents to be destroyed documents which are derived from the Confidential Information whether or not the document recites that the document was derived from the Confidential Information.  In my view that is appropriate and does not cause any significant prejudice, disadvantage or inconvenience to the Rhodes Parties or the person giving the undertaking.  Further, it is desirable that the same regime should apply between all parties and Hamersley where it does not cause any significant prejudice, disadvantage or inconvenience to any party or Hamersley.  A consistent set of provisions is administratively more convenient for the parties and Hamersley.

Conclusion

1. I have set out in these reasons my decision in relation to each of the matters in dispute between Hamersley and the Rhodes Parties concerning the proposed confidentiality regime, except for the provisions in the proposed undertakings relating to the transmission of Confidential Information by email.  I will hear from the parties as to directions for the resolution of that outstanding matter.