Nine Films and Television Pty Ltd v Ninox Television Limited - [2005] FCA 358

FEDERAL COURT OF AUSTRALIA
Nine Films & Television Pty Ltd v Ninox Television Limited [2005] FCA 358
PRACTICE AND PROCEDURE – discovery – motion by applicants seeking orders that the first and third respondents give verified discovery of specific categories of documents – relevance and breadth of categories of documents
Copyright Act 1968 (Cth) s 202
NINE FILMS & TELEVISION PTY LTD (ACN 066 040 024) AND NINE NETWORK AUSTRALIA PTY LTD (ACN 008 685 407) v NINOX TELEVISION LIMITED (formerly known as NINOX FILMS LIMITED), TELEVISION NEW ZEALAND LIMITED AND JOHN CHARLES McEWEN
NSD 1820 OF 2004
TAMBERLIN J
SYDNEY
5 APRIL 2005

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 1820 OF 2004

BETWEEN:

NINE FILMS & TELEVISION PTY LTD
ACN 066 040 024
FIRST APPLICANT

NINE NETWORK AUSTRALIA PTY LTD
ACN 008 685 407
SECOND APPLICANT

AND:

NINOX TELEVISION LIMITED
(formerly known as NINOX FILMS LIMITED)
FIRST RESPONDENT

TELEVISION NEW ZEALAND LIMITED
SECOND RESPONDENT

JOHN CHARLES McEWEN
THIRD RESPONDENT

JUDGE:

TAMBERLIN J

DATE OF ORDER:

5 APRIL 2005

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1. The following categories of documents be allowed: 8, 11, 12, 22 and 25.
2. The following categories of documents be disallowed: 6, 12, 13, 16, 21 and 26.
3.The First and Third Respondents file and serve evidence that they do not have any documents falling within Categories 10 and 14.
4.The parties bring in Short Minutes of Order to give effect to these Reasons for Judgment within the next seven (7) days.

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

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 1820 OF 2004

BETWEEN:

NINE FILMS & TELEVISION PTY LTD
ACN 066 040 024
FIRST APPLICANT

NINE NETWORK AUSTRALIA PTY LTD
ACN 008 685 407
SECOND APPLICANT

AND:

NINOX TELEVISION LIMITED
(formerly known as NINOX FILMS LIMITED)
FIRST RESPONDENT

TELEVISION NEW ZEALAND LIMITED
SECOND RESPONDENT

JOHN CHARLES McEWEN
THIRD RESPONDENT

JUDGE:

TAMBERLIN J

DATE:

5 APRIL 2005

PLACE:

SYDNEY

REASONS FOR JUDGMENT
Application for Discovery

The applicants, Nine Films & Television Pty Ltd and Nine Network Australia Pty Ltd (herein referred to collectively as “Nine”), filed a Notice of Motion on Friday 4 March 2005, in respect of which a hearing took place on 8 March 2005 and continued on 16 March 2005. The Notion of Motion seeks orders in relation to the provision of particulars by the first and third respondents in accordance with Schedule A attached to the Notice of Motion and an order that the first and third respondents give verified discovery of specific categories of documents.
Many of the matters initially raised in the Notice of Motion are no longer live issues. The issues concerning particulars have effectively been resolved. The remaining issues, which relate to discovery, mainly turn on relevance, the breadth of the categories in respect of which discovery is sought and one question of privilege in respect of an advice by senior counsel to Ninox.
I turn now to the questions concerning discovery.
I set out below the categories of documents sought and give my reasons for my rulings.
Category 6
All documents provided to the applicants (or any related entity) by or on behalf of the First Respondent or Becker Group Ltd relating to the production of Dream Home in Australia by Nine.
Becker Group Ltd (“Becker Group”) is an unrelated third party to the proceedings. Pursuant to an agreement with Ninox on or about 11 July 2000, Becker Group granted to Nine the right to produce a program entitled “Dream Home” in Australia from 11 July 2000 using the “Dream Home” format. Becker Group was referred to in the agreement as the exclusive licensee in Australia and Papua New Guinea of the format for the program entitled “Dream Home”.
Nine contends that documents provided by Ninox or Becker Group relating to the production of “Dream Home” in Australia are relevant as identifying and describing the “Dream Home” program and format, which is a central issue in the proceedings.
In my view, this category need not be provided because it is too general and because it seeks documents provided by Ninox to Nine. The applicants must know what documents they have received from these entities. Moreover, the Becker Group is not a party to the proceedings and it is not established that the Becker Group is subject to the control and direction of Ninox in relation to the production of documents. In my view, these documents are not sufficiently related to the issues raised on the pleadings to warrant the production sought. Category 6 is also too general and uncertain insofar as it refers to documents provided to any related entity of the applicants.
Categories 8, 10 and 14
Category 8
All documents recording, referring or relating to any consideration of the format of The Block.
Category 10
All documents recording, referring or relating to the ratings of Dream Home as broadcast in Australia in 2000.
Category 14
All documents recording, referring or relating to the ratings achieved by The Block when broadcast in Australia including without limitation whether The Block achieved successful ratings in Australia.
It is said by Nine that Category 8 is relevant because it covers documents pursuant to which Ninox considered the format of The Block before threatening to commence legal proceedings against Nine. It is also said that there may be documents which contain admissions in this material. Documents in this category should be discovered.
It is said that the respondents do not have any documents falling within Categories 10 and 14 above and that evidence can be filed to this effect, if required. Having regard to what I have said above, I think it is necessary that there should be a formal evidentiary response to these categories.
In my view, Category 10 is not sufficiently relevant to warrant the discovery sought. It seems to me, on the present evidence and pleadings, that the precise ratings of “Dream Home” raise a side issue of insufficient significance to warrant the discovery sought. There is simply an assertion in the Statement of Claim that “Dream Home” achieved only “limited” ratings success in Australian. Nothing of any import seems to turn on this. The Defence simply does not admit this assertion. In any event, it seems that this issue is best resolved by the filing of evidence by Ninox that there are no documents in categories 10 and 14 as foreshadowed in submissions.
Category 11
All documents, recordings, referring or relating to communications between the First Respondent (or its agents) and the applicants (or their agents) in respect of Dream Home, including, but not limited to, all communications relating to the licensing, or possible licensing, of Dream Home and any option to renew or extend such licence, by the applicants.
Nine contends that it is no answer to assert that the documents are within the knowledge and possession of Nine because Nine may not have retained copies of all its correspondence and because the documents may include notices of telephone communications or notations authored by Ninox which were never in the possession of Nine. It is said that the communications are relevant because they bear on the subject matter of the infringement claim, namely, the “Dream Home” format. Although this category is cast in broad terms, in my opinion, documents which record, refer or relate to communications between Ninox or its agents and Nine or their agents in respect of “Dream Home” are relevant to issues in the proceeding. For example, there may be notations, telephone notes, recordings, messages, emails or facsimiles that contain notations and observations relating to the format of “Dream Home”, which have never been in the possession of Nine. Accordingly, I allow discovery in respect of this category.
Category 12
The production Bible of the television programme entitled “The Block” (The Block Bible) (including any version of The Block Bible or variations thereto) or any other documents (including production schedules) created by the First and or Second Respondents or their licensees detailing the format or production details for The Block and all documents recording or referring to the receipt of such documents (including the timing of such receipt) by the First or Third Respondents (or their agents).
In my opinion, the dispute concerning The Block Bible is not relevant to the present proceeding. In my view, it is more appropriately the subject of separate proceedings as discussed on the hearing. I disallow this category.
Category 13
All documents relating or referring to The Block.
This category contains no limitation as to time or location and, in my opinion, is far too wide. Nine is prepared to omit two sub-paragraphs, however, this change does not lessen the excessive generality of the category. It is said for Nine that the category is relevant and that it is appropriate to seek documents of Ninox that reveal and record its thought processes regarding “The Block”, including prior to and during the continuance of the making of the threats which are the subject of the Statement of Claim. Ninox contends that the thought processes of Ninox regarding The Block are irrelevant, at least in relation to the causes of action under s 202 of the Copyright Act 1968 (Cth). There is some support for this view. Since there may be room for argument that subjective intent could possibly be relevant, I will not resolve this question at this point. The real difficulty with the category is its wide-ranging nature. Accordingly, I disallow this category.
Category 16
Copies of all documents (including without limitation video-tapes or copies thereof) provided by or on behalf of the First Respondent or Becker (or their agents) to the applicants in relation to the licensing, or proposed licensing, of Dream Home in Australia.
In my view, this category should not be permitted for the reasons given in relation to Category 6. It simply seeks copies of documents which have been provided to the applicants. Nine must know what documents they have. In my view, it is not a sufficient reason for Nine to seek the documents to assert, without evidence, that some documents may be lost or they are unable to be located or identified. The same observations made in relation to Category 6 in regards to Ninox’s lack of control over the documentation of the Becker Group and its agents applies in relation to this category.
Category 21
A copy of all documents recording the advice and recommendations provided to the First and or Third respondent by Stuart Littlemore, QC (and referred to in the statements made by John McEwen to the Sydney Morning Herald/Stay in Touch as published on 17 May 2004.
I deal with this question in a separate judgment. For reasons there given, I have decided that privilege has not been waived. I disallow this category.
Category 22
Copies of pleadings, court process [sic], affidavits, documents filed or served in the proceedings brought by the First Respondent in relation to the Dream Home format in other jurisdictions including without limitation proceedings against Magna Global Entertainment Inc (US District Court Southern District of New York) and Fremantle Media North America Inc.
In relation to the pleadings and court process affidavits and documents in the two United States proceedings, I am satisfied that they are relevant and appropriate categories for discovery because they appear to relate to the “Dream Home” format. More importantly, they are relevant because in the threatening letters, the subject of the Statement of Claim, there is reference to Ninox having already instituted and settled legal proceedings in respect of the New York Southern District Court proceedings.
Categories 25 and 26
Category 25
All documents (or copies thereof) deposited with the United States Copyright Office relating to Dream Home, and copies of all records of communications with the United States Copyright Office relating to Dream Home.
Category 26
All documents (or copies thereof) provided to the Copyright Office (or comparable government department) of any country (other than the United States of America) relating to Dream Home, and copies of all records of communications with such office relating to Dream Home.
In relation to category 25, I consider that this is an appropriate category. There is no evidence as to any oppression in producing the documents sought. I am satisfied that they may be relevant on the pleadings. I grant discovery of this category.
In relation to category 26, which concerns documents given to any other country, this is clearly mere speculation and, in my view, it is not relevant on the material before me at the present time. Accordingly, I disallow this category.
Having regard to the above rulings, I make no order as to costs.
I direct the parties to bring in Short Minutes of Order to give effect to these reasons within seven days.

I certify that the preceding 32 numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Associate:
Dated: 5 April 2005

Counsel for the Applicants: S G Finch SC and D T Kell (8 March 2005)
D T Kell (16 March 2005)

Solicitor for the Applicants: Gilbert and Tobin

Counsel for the First and Third Respondents: Kylie Downes (8 March 2005)
D R Sibtain (16 March 2005)

Solicitor for the First and Third Respondents: McCullough Robertson

Counsel for the Second Respondent: Rachel Pepper (8 March 2005)
Did not appear (16 March 2005)

Solicitor for the Second Respondent: Blake Dawson Waldron

Date of Hearing: 8, 16 March 2005

Date of Judgment: 5 April 2005

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1820 OF 2004

BETWEEN:	NINE FILMS & TELEVISION PTY LTD ACN 066 040 024 FIRST APPLICANT NINE NETWORK AUSTRALIA PTY LTD ACN 008 685 407 SECOND APPLICANT
AND:	NINOX TELEVISION LIMITED (formerly known as NINOX FILMS LIMITED) FIRST RESPONDENT TELEVISION NEW ZEALAND LIMITED SECOND RESPONDENT JOHN CHARLES McEWEN THIRD RESPONDENT
JUDGE:	TAMBERLIN J
DATE OF ORDER:	5 APRIL 2005
WHERE MADE:	SYDNEY

JUDGE:	TAMBERLIN J
DATE:	5 APRIL 2005
PLACE:	SYDNEY

Counsel for the Applicants:	S G Finch SC and D T Kell (8 March 2005) D T Kell (16 March 2005)
Solicitor for the Applicants:	Gilbert and Tobin
Counsel for the First and Third Respondents:	Kylie Downes (8 March 2005) D R Sibtain (16 March 2005)
Solicitor for the First and Third Respondents:	McCullough Robertson
Counsel for the Second Respondent:	Rachel Pepper (8 March 2005) Did not appear (16 March 2005)
Solicitor for the Second Respondent:	Blake Dawson Waldron
Date of Hearing:	8, 16 March 2005
Date of Judgment:	5 April 2005