Microsoft Corporation v Crosslink Marketing Group (CMG) Pty Ltd

[2005] FCA 216

FEDERAL COURT OF AUSTRALIA

Microsoft Corporation v Crosslink Marketing Group (CMG) Pty Ltd [2005] FCA 216

MICROSOFT CORPORATION, MICROSOFT PTY LIMITED AND MICROSOFT LICENSING, GP v CROSSLINK MARKETING GROUP (CMG) PTY LIMITED t/as MAGIC COMPUTERS, KELL WALKER, ROSALIND SUMNER aka PEE LOO TAN AND WAYNE DAVID SUMNER

N 1325 OF 2004

DOWSETT J
9 FEBRUARY 2005
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	N 1325 OF 2004

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LIMITED
SECOND APPLICANT

MICROSOFT  LICENSING, GP
THIRD APPLICANT

AND:

CROSSLINK MARKETING GROUP (CMG) PTY LIMITED t/as MAGIC COMPUTERS
FIRST RESPONDENT

KELL WALKER
SECOND RESPONDENT

ROSALIND SUMNER aka PEE LOO TAN
THIRD RESPONDENT

WAYNE DAVID SUMNER
FOURTH RESPONDENT

JUDGE:

DOWSETT J

DATE OF ORDER:

9 FEBRUARY 2005

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

(1)The first and second respondents make discovery on oath of all documents in its/his possession, power or custody which are relevant to the matters in issue between the parties in these proceedings;

(2)The second respondent produce for inspection by the applicants all documents in his possession, custody or power which documents are the property of the first respondent and relate to the matters in issue in these proceedings;

[So as to be clear, I indicate that, upon what Mr Walker has told me, it seems that all possibly relevant documents which he has in his possession are the property of the company.]

(3)The applicants, within seven days, deliver to the first and second respondents, copies of hot line reports received by them concerning the conduct of the business of the first respondent, save for documents referred to in the letters of 9 August and 6 October 2004 from Trademark Investigation Services to Harris and Company in respect of which documents I uphold the applicants’ claim to legal professional privilege;

(4)The applicants furnish a further affidavit relating to any other claim to privilege concerning private investigators’ reports on or before 16 February 2005;

(5)The trial be listed for hearing for five days commencing on Monday 27 June 2005;

(6)       The applicants file and serve their affidavits on or before 31 March 2005;

(7)The respondents file and serve their affidavits on or before Friday, 13 May 2005;

(8)       Costs reserved;

(9)The exhibits to the affidavit of Mr Hansen, filed on 8 February 2005, be returned to the applicants’ solicitors upon their undertaking to maintain them in their current form until the final resolution of this matter, including any appeal or application for leave or special leave to appeal, and to reproduce them to this Court or to the High Court in the event that there is any request that they be so produced.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	N 1325 OF 2004

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LIMITED
SECOND APPLICANT

MICROSOFT  LICENSING, GP
THIRD APPLICANT

AND:

CROSSLINK MARKETING GROUP (CMG) PTY LIMITED t/as MAGIC COMPUTERS
FIRST RESPONDENT

KELL WALKER
SECOND RESPONDENT

ROSALIND SUMNER aka PEE LOO TAN
THIRD RESPONDENT

WAYNE DAVID SUMNER
FOURTH RESPONDENT

JUDGE:	DOWSETT J
DATE:	9 FEBRUARY 2005
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. In this matter, unfortunately, the respondents are not legally represented.  Questions have arisen as to the adequacy of disclosure of documents by the first and second respondents.  The first respondent is a company;  the second respondent/first cross-claimant is, as I understand it, its sole director.

2. In his list of documents, the second respondent asserts that he has certain documents in his possession or power, which documents are listed in two schedules.  With respect to the second schedule documents, privilege is claimed.  It seems that the first respondent claims to have no relevant documents in its possession or power other than those disclosed in the second respondent’s list.  The second respondent appeared on behalf of himself and the first respondent.  He made it clear that the list was prepared upon the basis that a company could not create or have possession of documents – that documents could only be created or possessed by a natural person.  This, in a sense, is technically correct.  However the obligation to make discovery resting upon the first respondent is to disclose documents which are in its possession, custody or power.  It has clearly misunderstood its obligation in this regard.  Mr Walker has freely conceded that he holds documents which were produced in the course of the company’s business and on its behalf.  Both the first and second respondents must make affidavits of documents which reflect proper understandings of the duty to make discovery. 

3. It has been asserted that documents in the second schedule are privileged because discovery of them may expose one or other of the respondents to the risk of prosecution for a criminal offence.  The feared prosecution appears to be prosecution under either the Copyright Act 1968 (Cth) or the Trade Marks Act 1995 (Cth). It is conceded by the applicants that if the second respondent authorized conduct of the first respondent which was contrary to either of those acts he would, himself, be exposed to criminal liability.

4. Insofar as the claim for privilege relates to the first respondent, it is misconceived.  It is settled in this country that a company cannot claim privilege against self-incrimination.  The position is not so clear as concerns the second respondent.  As I understand it, the applicants are willing to allow the question of the validity of his claim of privilege to stand over, pending receipt of the first respondent’s affidavit.  In those circumstances, I will make the following orders: 

   (1)That the first and second respondents make discovery on oath of all documents in its/his possession, power or custody which are relevant to the matters in issue between the parties in these proceedings;

   (2)That the second respondent produce for inspection by the applicants all documents in his possession, custody or power which documents are the property of the first respondent and relate to the matters in issue in these proceedings;

   [So as to be clear, I indicate that, upon what Mr Walker has told me, it seems that all possibly relevant documents which he has in his possession are the property of the company.]

   (3)That the applicants, within seven days, deliver to the first and second respondents, copies of hot line reports received by them concerning the conduct of the business of the first respondent, save for documents referred to in the letters of 9 August and 6 October 2004 from Trademark Investigation Services to Harris and Company in respect of which documents I uphold the applicants’ claim to legal professional privilege;

   (4)That the applicants furnish a further affidavit relating to any other claim to privilege concerning private investigators’ reports on or before 16 February 2005;

   (5)That the trial be listed for hearing for five days commencing on Monday 27 June 2005;

   (6)       That the applicants file and serve their affidavits on or before 31 March 2005;

   (7)That the respondents file and serve their affidavits on or before Friday, 13 May 2005;

   (8)       Costs reserved;

   (9)That the exhibits to the affidavit of Mr Hansen, filed on 8 February 2005, be returned to the applicants’ solicitors upon their undertaking to maintain them in their current form until the final resolution of this matter, including any appeal or application for leave or special leave to appeal, and to reproduce them to this Court or to the High Court in the event that there is any request that they be so produced.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.

Associate:

Dated:            10 March 2005

Counsel for the Applicants:	Mr A J MacSporran
Solicitor for the Applicants:	Harris & Company
Counsel for the First Respondent:	The Second Respondent appeared on behalf of the First Respondent.
Counsel for the Second Respondent:	The Second Respondent appeared in person.
Counsel for the Third Respondent:	The Third Respondent did not appear.
Date of Hearing:	9 February 2005
Date of Judgment:	9 February 2005