IceTV Pty Ltd v Ross & ors

[2009] NSWSC 832

CITATION:	IceTV Pty Ltd v Ross & ors [2009] NSWSC 832
HEARING DATE(S):	8 April 2009
JURISDICTION:	Equity Division Expedition List
JUDGMENT OF:	Brereton J
EX TEMPORE JUDGMENT DATE:	8 April 2009
DECISION:	Notice to Produce set aside
CATCHWORDS:	PROCEDURE – Notice to Produce – documents in categories excluded from discovery – documents already covered by order for discovery – categories so broad as to necessarily catch relevant material – served shortly before trial – does not comply with requirement for specificity – abuse of process
LEGISLATION CITED:	(NSW) Uniform Civil Procedure Rules 2005 r 21.10
CATEGORY:	Procedural and other rulings
CASES CITED:	Azzi v Volvo [2006] NSWSC 283 Norris v Kandiah [2007] NSWSC 1296 Penrith Rugby League Club Limited v Brown [2004] NSWSC 1182
PARTIES:	IceTV Pty Ltd (plaintiff) Duncan Ross (first defendant) Peter Vogel (second defendant) Vogel Ross Pty Ltd (third defendant)
FILE NUMBER(S):	SC 2577/07
COUNSEL:	Mr M Petrucco (sol) (plaintiff) Mr D Ross (first defendant) (in person) Mr P Vogel (second defendant) (in person)
SOLICITORS:	Bartier Perry (plaintiff)

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION
EXPEDITION LIST

BRERETON J

Wednesday 8 April 2009

2577/07 IceTV Ltd v Duncan Ross & Ors

JUDGMENT (ex tempore)

1 HIS HONOUR: On 13 March 2009 I set these proceedings down for final hearing before Rein J for three days commencing 27 April 2009 and made pre-trial directions in the form I usually use. Deleted from them was any provision for subpoenas, for the reason that the case was said to be ready for hearing and it was not envisaged there would be any requirement for further subpoenas or Notices to Produce. This is to be contrasted with the situation when the matter was previously set down by Palmer J, to be heard before me in February this year, when the directions made by his Honour, otherwise in similar form, provided for subpoenas to be made returnable before the Registrar on 6 February, in anticipation of a hearing commencing on 23 February.

2 Accordingly, the first relevant matter is that at the final pretrial directions hearing there was no indication or contemplation that the matter was other than ready and that further production would be required.

3 On 10 July 2007, the Court, by consent, made an order that the parties exchange categories of discovery by 20 July and provide verified discovery by 17 August. On 16 August 2001, an order was made that the parties provide verified discovery of the agreed categories on or before 31 August. The only evidence before me of what the categories were, so far as the discovery required of the defendants is concerned, is a letter from the plaintiff’s solicitors Argyle Partnership to the defendants’ then solicitors, of 19 July 2007. It specifies 8 categories, as follows:

1. Any document with respect to any bank account held by First, Second and/or Third Defendants, collectively referred to as the Defendants, for the period 4 July 2006 to the present.

2. Any document with respect to any bank account held by Ross Trading Pty Limited for the period 4 July 2006 to the present.

3. Any document, including but not limited to diary entries and file notes, relating to appointments, conferences, meetings and/or attendances by the First and/or Second Defendant with any organisation referred to in the “Departure Notes” that were prepared by Duncan Ross and which are Exhibit COB-Confidential-2 to the affidavit of Colin O’Brien sworn 4 May 2007.

4. Any document, including but not limited to diary entries and file notes, relating to appointments, conferences, meetings and/or attendances by the First and/or Second Defendant with Two Way TV Australia Limited for the period of 4 July 2006 to present.

5. Any document, including but not limited to file notes, emails and diary entires, relating to appointments, conferences, meetings and/or attendances by the First and/or Second Defendant with Mobilesoft Limited for the period of 4 July 2006 to the present.

6. Any diaries or appointment books maintained by the First and/or Second Defendant for the period of 4 July 2006 to present.

7. An electronic copy of the information stored on the laptop ordinarily used by the Second Defendant for the period of 4 July 2006 to present.

8. A copy of any application and patent, including any provisional application, lodged with the Patents office of IP Australia by the First, Second and/or Third Defendant during the period 4 July 2006 to the present.

4 It is said on behalf of the plaintiff that incomplete discovery was provided in respects of those categories, and that some of them may have been removed from the scope of discovery by subsequent correspondence. If incomplete discovery was provided in any of those categories, then the proper remedy is an application for further and better discovery [see Azzi v Volvo [2006] NSWSC 283]. If categories were removed from the scope of discovery, then it is an abuse of process to use a Notice to Produce to try to obtain from a party documents in categories which have been removed from the scope of discovery or were not originally in that scope, the proper course being to seek to add additional categories by application for further discovery [see Azzi v Volvo].

5 The Notice to Produce served by the plaintiff on the defendants on or about 26 March, which requires production of documents for inspection by 9 April, specifies 12 categories of documents, as follows:

1. A copy of any bank account statement held by the First, Second and/or Third Defendants (collectively referred to as “the Defendants”) for the period 4 October 2007 to 26 March 2009.

2. A copy of any document held by Duncan Ross in respect to any bank account held by Ross Trading Pty Limited for the period 4 October 2007 to 26 March 2009.

3. A copy of any document, including but not limited to diary entries and file notes, relating to appointments, conferences, meetings and/or attendances by the First Defendant with any organisation referred to in Annexure “A” including any employees of such organisations, for the period 4 July 2006 to 4 October 2007.

4. A copy of any document including but not limited to diary entries and file notes relating to appointments, conferences, meetings and/or attendances by the Second Defendant with any organisation, including employees of such organisations for the period of 4 July 2006 to 4 October 2007.

5. A copy of any diaries or appointment books including information stored electronically maintained by the First and/or Second Defendants for the period of 4 July 2006 to 26 March 2009.

6. An electronic copy of the information stored on the laptop ordinarily used by the First Defendant for the period of 4 October 2006 to 26 March 2009.

7. An electronic copy of the information stored on the laptop ordinarily used by the First Defendant for the period of 4 October 2006 to 26 March 2009.

8. A copy of any application and patent, including any provisional application, lodged with the Patents office of IP Australia by the First, Second and/or Third Defendant during the period 4 July 2006 to 26 March 2009.

9. A copy of any application or document evidencing any such application for employment submitted by the First Defendant during the period 4 July 2006 to 26 March 2009.

10. A copy of any reply in relation to any application, or document evidencing any such application for employment submitted by the First Defendant during the period 4 July 2006 to 26 march 2009.

11. A copy of any application or document evidencing any such application for employment submitted by the Second Defendant during the period 4 July 2006 to 26 March 2009.

12. A copy of any reply in relation to any application, or document evidencing any such application for employment submitted by the Second Defendant during the period 4 July 2006 to 26 March 2009.

6 It is self-evident that a number of those categories – in particular categories 1, 2, and 3 – duplicate the order for discovery. On that account also, the Notice is an abuse of process. Some of the categories of documents sought in the Notice to Produce are plainly excessively wide and call for many documents that could not possibly be of relevance to the proceedings: for example, category 4, which requires production of any documents relating to appointments, meetings or attendances by the second defendant with any organisation over a period of 18 months must necessarily catch material which could not conceivably be relevant; and categories 6 and 7, which seek an electronic copy of all information stored on the defendants’ laptops over a period of two and a half years, necessarily capture extensive material which could not possibly be relevant and would require laborious scrutiny of their computer to identify and segregate what is potentially relevant, and, for that matter, what is privileged.

7 In many cases Young CJ in Eq has said that Notices to Produce imposing extensive burdens on the recipients served only shortly before a trial are liable to be set aside because it is not reasonable to expect parties to cease their preparations for trial in order to answer the last minute demands of their opponents for production of documents [see: Azzi v Volvo, at 4]. This is yet another reason why this Notice to Produce should be set aside.

8 Moreover, the Notice to Produce is served as one under UCPR, r 21.10. Such a notice must require only production of “any other specific document or thing that is clearly identified in the Notice”. The requirement for specificity has been articulated by Young CJ in Eq in Penrith Rugby League Club Limited v Brown [2004] NSWSC 1182; see also Norris v Kandiah [2007] NSWSC 1296, [4]-[5]. This Notice to Produce does not require production of “specific documents” clearly identified in the Notice, but numerous documents described by 12 categories in the Notice.

9 For all these reasons, in my view the Notices to Produce in question are abuses of process. I order that the Notices to Produce addressed to the first defendant and to the second defendant dated 26 March 2009 be set aside. I order that the plaintiff pay the defendants’ costs of the application.

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