Phoenix Eagle Company Pty Ltd v Tom McArthur Pty Ltd [No 6]
[2022] WASC 262
JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
CITATION: PHOENIX EAGLE COMPANY PTY LTD -v- TOM McARTHUR PTY LTD [No 6] [2022] WASC 262
CORAM: ALLANSON J
HEARD: ON THE PAPERS
DELIVERED : 15 AUGUST 2022
PUBLISHED : 15 AUGUST 2022
FILE NO/S: CIV 1746 of 2016
BETWEEN: PHOENIX EAGLE COMPANY PTY LTD
Plaintiff
AND
TOM McARTHUR PTY LTD
First Defendant
TREVOR HOWARD BRICKHILL
Second Defendant
LAURA COSTANTINA BRICKHILL
Third Defendant
LAURA COSTANTINA BRICKHILL ATF THE TLAJ TRUST
Fourth Defendant
Catchwords:
Practice and procedure - Evidence - Legal professional privilege - Where evidence in chief to be by witness statements -Whether references in witness statements inconsistent with party maintaining privilege - Turns on own facts
Legislation:
Nil
Result:
Application dismissed
Category: B
Representation:
Counsel:
| Plaintiff | : | No appearance |
| First Defendant | : | No appearance |
| Second Defendant | : | No appearance |
| Third Defendant | : | No appearance |
| Fourth Defendant | : | No appearance |
Solicitors:
| Plaintiff | : | K D Legal |
| First Defendant | : | Roe Legal Services |
| Second Defendant | : | Roe Legal Services |
| Third Defendant | : | Roe Legal Services |
| Fourth Defendant | : | Roe Legal Services |
Cases referred to in decision:
Expense Reduction Analysts Group Pty Ltd v Armstrong Strategic Management and Marketing Pty Limited [2013] HCA 46; (2013) 250 CLR 303
Mann v Carnell [1999] HCA 66; (1999) 201 CLR 1
ALLANSON J:
Introduction
On 11 September 2020, I ordered discovery of categories of documents, including (in order 4(c)) all documents recording or relating to communications between the defendants and Guy Provan between the date of incorporation of the first defendant and 31 May 2017. Mr Provan is a legal practitioner.
On 9 October 2020, the defendants filed an affidavit of discovery sworn by the second defendant, Trevor Brickhill. By reference to order 4(c), the defendants discovered 12 emails. The defendant objected to producing any of the 12 documents on grounds that they were prepared by the defendants and their solicitors for the dominant purpose of obtaining legal advice or for use in these proceedings.
The plaintiff applied for orders that three of those documents, described as emails from Guy Provan to Trevor Brickhill dated 8, 23 and 30 March 2012, be produced. The plaintiff submits that privilege has been waived by the defendants.
The plaintiff's application was programmed to be heard on the papers.
On 28 July 2022, the defendants conceded that privilege had been waived in two of the documents. The application is now limited to an email from Mr Provan to Mr Brickhill, dated 8 March 2012 (document 271 in the defendants' discovery).
The issue is not whether the email was privileged - in this case, as a confidential email written by Mr Provan for the dominant purpose of providing legal advice. The question is whether the acts of the defendants are inconsistent with the maintenance of the confidentiality which the privilege is intended to protect.[1]
[1] Expense Reduction Analysts Group Pty Ltd v Armstrong Strategic Management and Marketing Pty Limited [2013] HCA 46; (2013) 250 CLR 303, Mann v Carnell [1999] HCA 66; (1999) 201 CLR 1.
The pleadings
The plaintiff pleaded that the defendants, or some of them, consulted Mr Provan, a patent lawyer, in October 2010, to obtain advice regarding whether the defendants breached the plaintiff's Australian patent.[2] The defendants do not dispute that they sought advice from Mr Provan at that time.[3]
[2] Further (Second) Amended Substituted Statement of Claim, filed 23 July 2021 [108A].
[3] Further Amended Defence and Counterclaim, filed 19 August 2021 [58A] - [58C].
Neither party pleaded matters related to advice given by Mr Provan in 2012, or at any other time, on the legal effect of agreements which purport to transfer future intellectual property to the plaintiff.
Mr Provan's statement
Mr Provan made a witness statement that has been filed on behalf of the defendants. He does not specifically refer to any emails on 8 March 2012, although he refers to events in March 2012 when he assisted in preparing a statement on behalf of Tom McArthur.
Mr Provan states that on 2 March 2012 he received a phone call from Mr Brickhill to the effect that Mr McArthur was not well and Mr Provan should go to Queensland (where Mr McArthur was living) to meet with him.[4] Mr Provan's notes of that conversation include the note, 'Get copy of agreement'.[5]
[4] Witness Statement of Guy William Provan, dated 7 May 2018 [46].
[5] Witness Statement of Guy William Provan, dated 7 May 2018, GWP 31.
Mr Provan received an email from Mr Brickhill on 6 March 2012 which attached some agreements: the email is attached to his witness statement.[6] Mr Provan states that he flew from Perth to Brisbane on 12 March 2012 and from there to where Mr McArthur was living. Accordingly, the email in dispute precedes Mr Provan meeting Mr McArthur and assisting with the preparation of his statement.
[6] Witness Statement of Guy William Provan, dated 7 May 2018 [49] and GWP 32.
The email from Mr Brickhill on 6 March 2012 attached some agreements, including an agreement dated 24 June 2002 between Mr McArthur, Lynda McArthur, and Mark Richardson. Mr Brickhill wrote:
Tom believes [the agreement of 24 June 2002] is the only agreement he signed that had him transferring (or purporting to transfer) his future intellectual knowledge to Phoenix Eagle Company Pty Ltd or any other party… My view of this agreement is that it is an agreement where the transferees are Tom's late wife (Lynda McArthur) and Mark Richardson, as distinct from the transferee being Phoenix Eagle Company Pty Ltd.
I also attach agreement between Janette McArthur, Tom McArthur, Lynda McArthur and Mark Richardson whereby Janette McArthur… agrees to assign her intellectual knowledge and the rights in her 'yet to be discovered' products to Phoenix Eagle Company Pty Ltd.
I am told that there was no agreement between Lynda McArthur and Phoenix Eagle Company Pty Ltd whereby Lynda McArthur agreed to assign her intellectual knowledge and future intellectual knowledge and products and inventions to Phoenix Legal Company Pty Ltd.
I also attach Deed of Confirmation dated 18 July 2003 and agreement dated 9 May 2003 under which mention is made of Tom McArthur and/or Lynda McArthur transferring intellectual knowledge to Phoenix Eagle Company Pty Ltd.[7]
[7] Witness Statement of Guy William Provan, dated 7 May 2018, GWP 32. The agreement of 24 June 2002 is pleaded in Statement of Claim [18], and Affidavit of Mark Richardson, sworn 6 September 2019, MR 6 in the documents for trial.
Copies of the agreements of 24 June 2002 and 9 May 2003 became attachments to the affidavit prepared for Mr McArthur.[8]
[8] Witness Statement of Guy William Provan, dated 7 May 2018, GWP 44.
Mr Provan also attaches some notes he made of his meeting with Mr McArthur. They include some reference to those agreements, including the absence of Lynda's signature.[9] On their face, they are simply notes of the meeting, not advice.
[9] Witness Statement of Guy William Provan, dated 7 May 2018, GWP 33.
Mr Provan does not say he was asked to advise or that he gave advice on those agreements. The email sent by Mr Brickhill on 6 March 2012 does not ask for advice. The affidavit of Mr McArthur does not refer to advice on, or the legal effect of, the agreements.
Mr Brickhill's statement
Mr Brickhill also filed a witness statement in which he discusses organising for Mr Provan to meet Mr McArthur for the purpose of preparing an affidavit.[10]
[10] Witness Statement of Trevor Howard Brickhill, dated 7 June 2018 [232] ff.
Mr Brickhill attached his email correspondence with Mr Provan about the preparation of the affidavit, and the various drafts. There is no request for advice and no reference in any of that material to advice given by Mr Provan on 8 March 2012.
Mr Brickhill's affidavit
For the purposes of this application, Mr Brickhill swore an affidavit dated 9 August 2022. Relevantly, he deposed:
(1)At the time the email of 8 March 2012 was sent, Mr Provan was engaged as a solicitor for the defendants.
(2)The defendants have disclosed other privileged communications with Mr Provan concerning whether the patent held by the plaintiff was infringed by any of the variants of the process used by Mr McArthur; whether the plaintiff's patent was valid, including by reason of evidence of prior use; and the process by which the affidavit of Mr McArthur was prepared and executed.
(3)The email of 8 March 2012 does not deal with those matters. It is a communication dealing with the legal effect of agreements between Mr McArthur and Mr Richardson, and the ownership of intellectual property and Mr McArthur's inventions.
The plaintiff's case for waiver
The plaintiff asserts that Mr Provan was 'centrally involved in advising the defendants on, and assisting the defendants to implement, a strategy to avoid the plaintiff's claims to ownership of the intellectual property'. It submits that the defendants have forensically deployed large parts of Mr Provan's advice on that strategy and that it would be inconsistent and unfair to then allow the defendants to hold back advice on a strategy.
The plaintiff specifically refers to the evidence given by Mr Provan, and the documents attached to his witness statement.
The flaw in the plaintiff's position is the failure to establish any forensic use of Mr Provan's advice in the manner alleged that would give rise to the alleged inconsistency.
The plaintiff submits that the defendants waived privilege over Mr Provan's advice on legal effect of the agreements referred to in Mr Brickhill's email of 6 March 2012 by disclosing their instructions to Mr Provan in relation to the agreements and partially disclosing the substance of his advice.
The submission relies, in part, on the email of 6 March 2012 being a letter of instruction to Mr Provan. The email provided instructions for Mr Provan to meet Mr McArthur and attached and referred to documents, with Mr Brickhill's comments, for that purpose. It did not include, expressly or by implication, any instructions or request for advice on the legal effect of the agreements.
The notes made by Mr Provan at his meeting Mr McArthur on 12 March 2012 (four days after the email in dispute) are not reasonably read as advice or the substance of advice on the effect of the agreements.
I accept the submission made by the defendants that they have not disclosed any advice they received on the legal effect of the agreements referred to or the substance of that advice. In my opinion, they have not disclosed the substance of any instructions seeking that advice.
The defendants also submit that they have not sought to rely on the fact that they took advice on the legal effect of the agreements. The plaintiff has not pointed to any issue on the pleadings where there is such reliance by the defendants.
I will dismiss the application.
I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.
KK
Associate to the Honourable Justice Allanson
15 AUGUST 2022
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