Santiago-Brown v Australian Wine Research Institute Limited
[2023] FedCFamC2G 889
•5 October 2023
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Santiago-Brown v Australian Wine Research Institute Limited [2023] FedCFamC2G 889
File number(s): SYG 2076 of 2021 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 5 October 2023 Catchwords: INTELLECTUAL PROPERTY – Practice and procedure – application for declaration that it is in the interests of the administration of justice to allow discovery by first respondent – whether such declaration should be made given the first respondent has been ordered to give discovery of documents by reference to agreed categories of documents and the first respondent had filed affidavits of documents – whether agreed categories of documents in relation to which the first respondent had been ordered to give discovery related to all issues arising on the pleadings – declaration made it is in the interests of the administration of justice allowing the first respondent to give discovery of documents that relate to issues not covered by the categories of documents in relation to which the first respondent has given discovery. Legislation: Copyright Act 1968 (Cth) ss 10, 35(6), 115(1)
Federal Circuit and Family Court of Australia Act 2021 (Cth) s 176
Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) r 14.03
Federal Circuit Court of Australia Act 1999 (Cth) s 45(1)
Cases cited: Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100
Coopes v Daishat Pty Ltd (No 2) [2017] FCCA 2210
Harwood v The Trustee of the Property of John Mervyn Harwood [2015] FCCA 1058
Division: General Number of paragraphs: 26 Date of hearing: 30 August 2023 Place: Sydney Counsel for the Applicant: Mr A Fox SC and Mr J Brook, by telephone Solicitor for the Applicant: ClarkeKann Lawyers Counsel for the First Respondent: Mr R Williams, by telephone Solicitor for the First Respondent: Gilchrist Connell The Second Respondent: No appearance by, or on behalf of, the second respondent ORDERS
SYG 2076 of 2021 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: IRINA SANTIAGO-BROWN
Applicant
AND: THE AUSTRALIAN WINE RESEARCH INSTITUTE LIMITED (ACN 007 558 296)
First Respondent
AUSTRALIAN GRAPE AND WINE INCORPORATED
Second Respondent
ORDER MADE BY:
JUDGE MANOUSARIDIS
DATE OF ORDER:
5 OCTOBER 2023
THE COURT DECLARES THAT:
1.Pursuant to s 176(2) of the Federal Circuit and Family Court of Australia Act 2021 (Cth) it is in the interests of the administration of justice to allow the first respondent to give discovery in relation to the issues arising from its defence to paragraphs 18, 19, and 29 of the statement of claim.
THE COURT ORDERS THAT:
2.By 2 November 2023, or by such other day as the Court may order, the first respondent file an affidavit of documents pursuant to r 14.03 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) in relation to the issues arising from its defence to paragraphs 18, 19, and 29 of the statement of claim.
3.The matter be listed for further directions at 9:30 am on 9 November 2023.
4.The parties have liberty to apply on such notice as the circumstances warrant.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
The applicant, Dr Santiago-Brown, applies for a declaration under s 176 of the Federal Circuit and Family Court of Australia Act 2021 (Cth) (FCFC Act) that it is in the interests of the administration of justice that the first respondent (AWRI) be ordered to give general discovery on all issues. Dr Santiago-Brown applies for such declaration, even though the parties have given discovery by way of categories of documents pursuant to orders the Court made by consent.
To be in a position to determine this application, it will be necessary to set out the pleadings the parties have filed; identify, at least in broad terms, the issues that arise on the pleadings; and describe the discovery the parties have already given.
PLEADINGS AND ISSUES
Statement of claim
Dr Santiago-Brown, in her statement of claim, purports to plead two sets of causes of action, one under s 115(1) of the Copyright Act 1968 (Cth) (Copyright Act) for infringement of copyright, and one based on false or misleading representations. In relation to her causes of action based on infringement of copyright, the statement of claim alleges as follows:
(a)From between March 2010 to July 2014 Dr Santiago-Brown created the following works (Works):[1]
[1] Statement of Claim, [1(b)], [4], [5]
(i)a PhD thesis titled “Sustainability Assessment in Wine Grape Growing” (PhD Thesis), including chapter 4 of the PhD Thesis, which is titled “Comparison of Sustainability Assessment Programs for Viticulture and a Case-study on programs’ engagement processes”;
(ii)an electronic document known as the “McLaren Vale Sustainable Winegrowing Australia Program” (SWA Program) that includes computer programs designed to facilitate the collation and interpretation of research data;
(iii)a document titled “McLaren Vale Sustainable Winegrowing Australia – Workbook”, which is an appendix to the PhD Thesis (Workbook);
(iv)chapter 5 of the Workbook titled “Waste Management” (Workbook Chapter 5); and
(v)chapter 6 of the Workbook titled “Social (Work, Community and Wineries relations)” (Workbook Chapter 6).
(b)At the time she created the Works Dr Santiago-Brown was a citizen and resident of Australia.[2]
[2] Statement of Claim, [5(a)]
(c)The PhD Thesis was published by the University of Adelaide in 2014.[3]
(d)Between about January 2011 and February 2015 Dr Santiago-Brown worked part-time with McLaren Vale Grape & Wine Tourist Association (MVGWTA) as a sustainability program officer; but she did not create any of the Works pursuant to the terms of any contract of employment with MVGWTA.[4]
(e)Each of the Works is an original literary work within the meaning of s 10 of the Copyright Act.[5]
(f)Given (a), (b), (d), and (e) copyright subsists in the Works, and Dr Santiago-Brown is the owner of the copyright in the Works.[6]
(g)In about 2019 MVGWTA provided all content from the SWA Program (SWA content) to AWRI. MVGWTA did so without Dr Santiago-Brown’s consent, and on the basis that the SWA content would be used for the benefit of the Australian winegrowing industry, and would not be sought to be used exclusively for the benefit of, or monopolised in any way by, AWRI.[7]
(h)AWRI claimed that on 1 July 2019 the “Sustainable Winegrowing Australia Program” was established as a single national program through which grape growers and winemakers in Australia can demonstrate, continuously improve, and benchmark their sustainability practices against a national certification standard; and AWRI has claimed it is the owner of the Sustainable Winegrowing Australia Program.[8]
(i)The Sustainable Winegrowing Australia Program includes the SWA content, or content that has been derived or taken from the SWA content. Further, the Sustainable Winegrowing Australia Program is a literary work within the meaning of the Copyright Act; and by including the SWA content, the Sustainable Winegrowing Australia Program reproduces a substantial part of the Works.[9]
(j)From at least 2019, AWRI and the second respondent (AGW), without the licence of Dr Santiago-Brown, have been promoting in Australia the Sustainable Winegrowing Australia Program. The promotion includes AWRI referring to the Sustainable Winegrowing Australia Program in the “Sustainability Timeline” AWRI published on its website. AWRI has also benefited from the promotion of the Sustainable Winegrowing Australia Program. “Membership in the [Sustainable Winegrowing Australia Program] is available for an annual fee”, and the Sustainable Winegrowing Australia Program “currently has 788 members”.[10]
(k)On 24 August 2020 AWRI entered into a memorandum of understanding (MOU) with AGW which sets out how AWRI and AGW would govern and manage the Sustainable Winegrowing Australia Program in Australia; and, by reason of the MOU, AWRI and AGW claim exclusive rights in, and to the contents of, the Sustainable Winegrowing Australia Program.[11]
(l)In these circumstances, AWRI and AGW have each infringed Dr Santiago-Brown’s copyright in the Works; or, in the alternative, AGW has authorised, procured, induced, or joined in a common design with AWRI to infringe Dr Santiago-Brown’s copyright in the Works.[12]
[3] Statement of Claim, [1(b)]
[4] Statement of Claim, [5(c)]
[5] Statement of Claim, [4]
[6] Statement of Claim, [6]
[7] Statement of Claim, [7], [8]
[8] Statement of Claim, [2(b), (c)]
[9] Statement of Claim, [10]
[10] Statement of Claim, [9], [17(e)]
[11] Statement of Claim, [11]
[12] Statement of Claim, [14], [15]
In relation to her causes of action based on false or misleading representations, Dr Santiago-Brown alleges that by having promoted the supply of, and having supplied access to the Sustainable Winegrowing Australia Program, AWRI and AGW have falsely represented to consumers that:[13]
(a)AWRI and AGW are the authors of, or alternatively own all the rights in, the Sustainable Winegrowing Australia Program;
(b)the Sustainable Winegrowing Australia Program contains an approved, authorised, or licensed version of, or parts of, the SWA Program;
(c)the Sustainable Winegrowing Australia Program is endorsed, approved, licenced, authorised or sponsored by the author of the SWA Program, Dr Santiago-Brown; and
(d)AWRI and AGW are associated with or endorsed, approved, licenced, authorised or sponsored by the author of the SWA Program, Dr Santiago-Brown.
[13] Statement of Claim, [22]
AWRI’s defence
In its defence AWRI:
(a)admits that:
(i)the document Dr Santiago-Brown describes as the PhD Thesis exists; and
(ii)the first page includes a University of Adelaide mark, the words “submitted by Irina Santiago-Brown”, and the words “A thesis submitted for the fulfilment of the requirements of a Doctor of Philosophy”;[14]
[14] AWRI Defence, [1.2]
(b)says that:
(i)the University of Adelaide has made, and continues to make available for reading and downloading the PhD Thesis online;[15]
[15] AWRI Defence, [1.3]
(ii)the digital version of the PhD Thesis is unsigned and omits some pages which the text of the digital version states are in the print copy;[16]
[16] AWRI Defence, [1.5]
(iii)the appendix to the PhD Thesis contains, among other things, a document titled “McLaren Vale Sustainable Winegrowing Australia 2013 Results”, and a document titled “McLaren Vale Sustainable Winegrowing Australia 2012 Results”, being documents MVGWTA had published, and each of which include an express reservation of copyright to MVGWTA;[17] and
[17] AWRI Defence, [1.6(h)(vi)(vii)], [1.8]
(iv)the Workbook includes six chapters which records that Dr Santiago-Brown and another person are the authors of Workbook Chapter 5 and Workbook Chapter 6, but other persons are the authors of chapters 1-4;[18]
[18] AWRI Defence, [1.9(b)]
(c)denies Dr Santiago-Brown is the author of the appendix to the PhD Thesis or, if she is, denies she is the sole author of the appendix;[19]
[19] AWRI, Defence, [1.11]
(d)does not admit that Dr Santiago-Brown is the author of the PhD Thesis;[20]
[20] AWRI Defence, [1.10]
(e)says there is a program known as the Sustainable Winegrowing Australia Program that is in operation as at the date of filing of AWRI’s defence;[21]
[21] AWRI Defence, [2.2(a)]
(f)says that the Sustainable Winegrowing Australia Program:
(i)is open for membership to Australian grape growers and winemakers;
(ii)is a national program for grape growers and winemakers to demonstrate and continuously improve their sustainability practices in the vineyard and winery industries, through the environmental, social and economic aspects of their businesses;
(iii)is a product of collaboration between AWRI, AGW, and Wine Australia (a body corporate established by s 6 of the Australian Grape and Wine Authority Act 2013 (SA)); and
(iv)comprises and involves key features and elements which include annual reporting by members of the Sustainable Winegrowing Australia Program on a series of business metrics while completing a workbook or vineyard or winery practice; AWRI reviewing data provided by members in connection with their annual reporting and completion of the workbook, and providing those members with access to individual, and customisable benchmarking reports; auditing those members who choose to be certified against certain standards owned and independently maintained by Freshcare Ltd; permitting members who have achieved certified member status to use Australian registered trade mark number 2085147 (Trust Mark) on their promotional material and wine packaging to publicise their commitment to sustainable grape and wine production.[22]
[22] AWRI Defence, [2.2(b)(iv)]
(g)says that:
(i)AWRI claims to be, and is the owner of the Sustainable Winegrowing Australia Program and the owner or licensee of the intellectual property rights in the Sustainable Winegrowing Australia Program;[23]
[23] AWRI Defence, [2.2(c)]
(ii)AWRI manages and administers the Sustainable Winegrowing Australia Program for members of the Sustainable Winegrowing Australia Program;[24]
[24] AWRI Defence, [2.2(d)]
(iii)the Trust Mark is jointly owned by AWRI and AGW; [25]
[25] AWRI Defence, [2.2(e)]
(iv)AGW provides the oversight and guidance of the Sustainable Winegrowing Australia Program, liaises with the Commonwealth and State governments, and consults with the “sector’s key stakeholders” on policy and development;[26]
[26] AWRI Defence, [2.2(h)(i)]
(v)AWRI provides the management and administration of members, program management, technical development, and the extension and adoption of activities; and[27]
[27] AWRI Defence, [2(h)(ii)]
(vi)Wine Australia provides the market and communication to help attract and retain members for the Sustainable Winegrowing Australia Program, and to promote Australia’s sustainability credentials to key stakeholder groups globally;[28]
[28] AWRI Defence, [2(h)(iii)]
(h)admits that AWRI and AGW entered into the MOU, and says that the MOU addressed, among other things, the manner in which AWRI and AGW would support the Sustainable Winegrowing Australia Program;[29]
[29] AWRI Defence, [2.3]
(i)admits the PhD Thesis is a literary work within the meaning of the Copyright Act;[30]
[30] AWRI Defence, [4.2]
(j)says that paragraph 4 of the statement of claim fails to plead sufficient material facts to properly identify the work or works said to comprise the “McLaren Vale Sustainable Winegrowing Australia Program”;[31]
[31] AWRI Defence, [4.5]
(k)does not admit Dr Santiago-Brown is the author of the Works, and says the Workbook comprised:
(i)a revision of, or an addition to, earlier versions of a sustainability program developed and maintained before 2012 by MVGWTA, the earlier versions of which comprised a financial benchmarking program for McLaren Vale grape growers (implemented in 2005);
(ii)pest and disease, soil and water and biodiversity codes developed in about 2006 and 2007 for use by McLaren Vale growers; and
(iii)a “generational farming” workbook, together with a self-assessment program for growers to improve their sustainability and on-farm practices which had been launched in 2009;[32]
[32] AWRI Defence, [5.4]
(l)denies that any part of chapters 1, 2, 3, or 4 of the Workbook were created by Dr Santiago-Brown, or that Dr Santiago-Brown is the sole author of Workbook Chapter 5 and Workbook Chapter 6;[33]
[33] AWRI Defence, [5.6], [5.7]
(m)says that to the extent Dr Santiago-Brown created any of the Works, she did so as an employee of MVGWTA and, therefore, by the operation of s 35(6) of the Copyright Act, MVGWTA was at, and from the time of the creation of the Works, the owner of any copyright subsisting in the Works;[34]
[34] AWRI Defence, [5.8]
(n)says that on:
(i)4 February 2019 MVGWTA provided by email to AWRI electronic copies of “Excel” program files with the names “BIODIVERSITY”, “ECONOMIC”, “MAIN SURVEY”, “PEST and DISEASE”, “SOCIAL”, “SOIL HEALTH – NUTRITION – FERT MANAGEMENT”, “WASTE” and “WATER” (2019 Program Material);[35]
[35] AWRI Defence, [7.1]
(ii)the 2019 Program Material comprised copies of material and text from a program known as “Sustainable Australia Winegrowing” operated by MVGWTA;[36]
(iii)in the period after Dr Santiago-Brown concluded her employment with MVGWTA, Dr Santiago-Brown had reviewed and updated the text and contents of the materials for the 2019 Program Material, including the Workbook;[37] and
(iv)when providing the 2019 Program Material to AWRI, MVGWTA intended to and did transfer to AWRI intellectual property rights, including copyright in the 2019 Program Material;[38]
(o)says that:
(i)Dr Santiago-Brown was aware, and did not object to the commencement of the Sustainable Winegrowing Australia Program by AWRI on 1 July 2019, replacing the McLaren Vale Sustainable Australia Winegrowing Program, and a program known as Entwine Australia;[39]
(ii)a copy of the Workbook was and remains available for free public access at the Sustainable Winegrowing Australia website;[40] and
(p)otherwise denies or does not admit the allegations made in the statement of claim.
[36] AWRI Defence, [7.2]
[37] AWRI Defence, [7.3]
[38] AWRI Defence, [7.4]
[39] AWRI Defence, [8.4]
[40] AWRI Defence, [8.6]
AGW’s defence
In its defence AGW:
(a)says on 1 July 2019 AWRI, AGW, and Wine Australia collaboratively established the Sustainable Winegrowing Australia Program as the single national sustainability program for wine growers and producers in Australia;[41]
[41] AGW Defence, [2(b) (c)]
(b)says the Sustainable Winegrowing Australia Program was derived from:
(i)the “Sustainable Australia Winegrowing Program” (SAW program) which had been developed, operated, and promoted by MVGWTA, who owned all intellectual property rights in the SAW Program which MVGWTA transferred to AWRI; and
(ii)the “Entwine Australia Program” that had been owned, operated, and administered by the Winemakers’ Federation of Australia Incorporated (WFAI), who owned all intellectual property rights in the Entwine Australia Program and which, in 2015, WFAI transferred to AWRI;[42]
[42] AGW Defence, [2(d)]
(c)says AWRI is the owner or, in the alternative, the licensee of all intellectual property rights in the Sustainable Winegrowing Australia Program, including the copyright in the Sustainable Winegrowing Australia Program workbook (both in its written and digital form), and in the “SWA website”;[43]
[43] AGW Defence, [2(e)]
(d)admits that on or about 24 August 2020 AWRI, AGW, and Wine Australia entered into the MOU under which the Sustainable Winegrowing Australia Program is governed by a joint steering committee comprising of representatives of AWRI, AGW, and Wine Australia;[44]
[44] AGW Defence, [2(f), (g)]
(e)says that:
(i)AWRI provides the management and administration of members, program management, technical development, and extension and adoption activities;
(ii)AGW provides the oversight and guidance of the program; and liaises with the Commonwealth and State governments, and consults with the sector’s key stakeholders on policy and development; and
(iii)Wine Australia provides the marketing and communications to help attract and retain members for the program and to promote Australia's sustainability credentials to key stakeholder groups globally;[45]
(f)says that paragraph 4(c) of the statement of claim does not sufficiently define or identify the “McLaren Vale Sustainable Winegrowing [Australia] Program” and, for that reason, AGW does not admit that the “McLaren Vale Sustainable Winegrowing [Australia] Program” is an original literary work for the purposes of the Copyright Act;[46]
(g)admits the Workbook is an original literary work for the purposes of the Copyright Act, but says that MVGWTA is the author of that work;[47]
(h)admits that Dr Santiago-Brown is one of two authors of Workbook Chapter 5 and Workbook Chapter 6, but that, insofar as Dr Santiago-Brown is an author of those chapters, she performed the work that created the chapters pursuant to her employment with MVGWTA, and MVGWTA has expressly claimed copyright in Workbook Chapter 5 and Workbook Chapter 6;[48]
(i)says Dr Santiago-Brown did not author chapters 1-4 of the Workbook;[49]
(j)admits that to the extent that the Sustainable Winegrowing Australia Program comprises written materials the Sustainable Winegrowing Australia Program is in electronic form and includes computer programs designed to facilitate collation and interpretation of research data;[50]
(k)admits the appendix to the PhD Thesis contains a presentation on the Sustainable Winegrowing Australia Program, but says that the appendix states the presentation was by Dr Santiago-Brown and another person;[51] and
(l)otherwise denies or does not admit the allegations made in the statement of claim.
[45] AGW Defence, [2(h)]
[46] AGW Defence, [4(d)]
[47] AGW Defence, [4(e)]
[48] AGW Defence, [4(f), (g)]
[49] AGW Defence, [4(h)]
[50] AGW Defence, [4(i)]
[51] AGW Defence, [4(j)]
Issues on the pleadings
It is apparent from the pleadings that Dr Santiago-Brown’s claims are directed to the use by AWRI and AGW of a program known as the “Sustainable Winegrowing Australia Program”. This program is directed at growers of grapes and makers of wine who desire to cultivate grapes and make wine in a sustainable manner. The program appears to lay out criteria of what constitutes sustainable methods and practices for cultivating grapes, and making wine; and sets out the means by which growers and makers could apply to be certified as persons who cultivate grapes and make wine in accordance with the criteria that constitutes the sustainable methods and practices, as specified by the program, for cultivating grapes and making wine.
The central element of Dr Santiago-Brown’s claims is that the Sustainable Winegrowing Australia Program that AWRI and AGW made available to persons constitutes the reproduction in a material form of a substantial part of the PhD Thesis which is an original work of which Dr Santiago-Brown is the author and in which, therefore, copyright of which she is the owner subsists. More particularly, the central element of Dr Santiago-Brown’s claims is that the Sustainable Winegrowing Australia Program constitutes the reproduction in material form of the “McLaren Vale Sustainable Winegrowing Australia Program” (that is, the “SWA Program”). The principal issues that arise on the pleadings are as follows:
(a)Whether Dr Santiago-Brown has identified with sufficient precision what she alleges are the “Works”, and, more particularly, whether Dr Santiago-Brown has identified with sufficient precision the “McLaren Vale Sustainable Winegrowing Australia Program”.
(b)Whether Dr Santiago-Brown is the author of the “Works”, and in particular, the “McLaren Vale Sustainable Winegrowing Australia Program” (assuming it is sufficiently identified).
(c)Assuming Dr Santiago-Brown is the author of the “McLaren Vale Sustainable Winegrowing Australia Program” (assuming, in turn, this is sufficiently identified), whether Dr Santiago-Brown made the program “in pursuance of the terms of her employment by MVGWTA”,[52] as a consequence of which MVGWTA would be the owner of any copyright that may subsist in the program.
(d)Assuming (a) and (b) are answered in the affirmative, and (c) is answered in the negative, whether:
(i)the Sustainable Winegrowing Australia Program constituted the reproduction, or the substantial reproduction, of the Works, and in particular the “McLaren Vale Sustainable Winegrowing Australia Program”; and
(ii)assuming (i) is answered in the affirmative:
(A)what use AWRI and AGW have made of the Sustainable Winegrowing Australia Program and what commercial benefit accrued to them from their use of the Sustainable Winegrowing Australia Program; and
(B)what loss, if any, did Dr Santiago-Brown suffer as a result of any use AWRI and AGW made of the Sustainable Winegrowing Australia Program.
[52] AGW Defence, [4(g)]
COURSE OF DISCOVERY
On 25 October 2022 Judge Baird made orders in chambers by consent that AWRI and AGW give “discovery of documents in the agreed categories” set out in schedule A and schedule B to the orders respectively. AWRI was required to give discovery of documents falling within the following categories:
1. Any Document that provides for the transfer of, or assignment of rights in, the SAW Program from MVGWTA to the First Respondent, as referred to in paragraph 7 of the Statement of Claim, including but not limited to any Document created that records or evidences the basis upon which, or the purpose for which, MVGWTA provided the SAW Program to the First Respondent, as referred to in paragraph 8(a) of the Statement of Claim.
2. Any Document:
(a) recording when the Infringing Program was first promoted;
(b) that records or contains any assertion to the effect that the First Respondent is the author of, or the owner of the rights in the Infringing Program;
(c) published by the First Respondent to promote or market the Infringing Program that records or contains an approved, authorised or licenced version of the SAW Program;
(d) published by the First Respondent to promote or market the Infringing Program that refers to the Applicant.
3. Any drafts of the Infringing Program created between the First Respondent's receipt of the SAW Program from MVGWTA and the date of publication of the Infringing Program.
4.Any Document created between the First Respondent’s receipt of the SAW Program from MVGWTA and the date of publication of the Infringing Program which records or refers to any communication between the First Respondent and the Second Respondent as to the derivation of the contents of the Infringing Program from the SAW Program.
5.All Documents that record any version of the Infringing Program made and published from 1 July 2019 to date.
6. A copy of the Memorandum of Understanding (MOU) entered into between the First and Second Respondents and Wine Australia on 24 August 2020.
7. A copy of the Documents described at paragraph 7.1 of the First Respondent’s Defence as at 4 February 2019, and all subsequent versions of those Documents as modified after 4 February 2019.
On 9 December 2022 AWRI filed an affidavit of discovery made by Ms Dodd, AWRI’s company secretary.
On 14 February 2023 I made an order that Dr Santiago-Brown give discovery of documents on all issues of liability and quantum by filing and serving an affidavit of documents in accordance with r 14.03 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules). I also made orders in relation to a request Dr Santiago-Brown, through her lawyers, had made that AWRI give further discovery. On 9 March 2023 AWRI filed a further affidavit of documents made by Ms Dodd.
By letter dated 24 March 2023 to AWRI’s lawyers, Dr Santiago-Brown’s lawyer, Mr Kintis, identified what he claimed were “[a]dditional examples of documents not produced” by AWRI.[53] Mr Kintis foreshadowed that at the next scheduled case management hearing Dr Santiago-Brown would apply for a general discovery order.
[53] Affidavit of J S Milazzo 30.06.2023; annexure JSM-4
At the case management hearing of 5 April 2023 Dr Santiago-Brown, by her counsel, applied for general discovery orders. AWRI, who also appeared by counsel, opposed my ordering general discovery. Counsel informed me, however, that AWRI required further time to consider Mr Kintis’ letter of 24 March 2023. AGW, on the other hand, said it would consent to my making a general discovery order against it. I ordered that AGW give discovery on all issues of liability and quantum by filing and serving an affidavit of documents in accordance with r 14.03 of the GFL Rules; and I listed the matter for directions on 7 June 2023.
On 6 June 2023 I made orders in chambers by consent relating to Dr Santiago-Brown’s making an application for an order that AWRI give general discovery. After Dr Santiago-Brown informed AWRI and my associate that she intended to apply for an order that AWRI give general discovery, I listed that application for hearing on 30 August 2023.
On 9 June 2023 AWRI’s lawyer responded to Mr Kintis’ letter dated 24 March 2023, in which the following is stated:[54]
2.1In the course of preparing this response, we have provided a copy of the 24 March letter to Shiralee Dodd, Company Secretary of the AWRI and taken her instructions in relation to the matters therein.
2.2 In providing this response and the further discovery, our client does not accept that the further documents referred to in the 24 March letter fall within the Agreed Categories as alleged or that our client was obliged to discover those documents in its Affidavit of Documents.
2.3 Notwithstanding that, in the interests of bringing the issue of discovery to a close, we are instructed to provide a comprehensive response to the 24 March letter and provide further informal discovery.
[54] Affidavit of J S Milazzo 30.06.2023; annexure JSM-4
The letter then addressed each class of documents Mr Kintis identified in his letter dated 24 March 2023, and attached additional documents by way of “informal discovery”.
PARTIES’ SUBMISSIONS
In her counsel’s written submissions Dr Santiago-Brown submitted that an order for general discovery will be the most efficient and cost effective means of further progressing the matter, and that the making of such order “will likely contribute to the fair and expeditious conduct of the proceeding”, being a factor the Court “must have regard to”.[55] In support of this submission, counsel relied on AGW having consented to being ordered to give general discovery.[56] Additionally, counsel submitted as follows:
(a)AWRI’s “compliance with discovery by way of categories has been inadequate”,[57] and that ordering AWRI to give general discovery will “obviate the need for further Court time ventilating compliance with discrete categories”.[58] Counsel referred to the letter dated 24 March 2023 from Mr Kintis to AWRI’s lawyer.
(b)The categories of documents the parties agreed would form the basis of the discovery order that Judge Baird made was premised on the matter proceeding on the basis that liability would be determined separately from quantum. That premise no longer applies because at the case management hearing on 14 February 2023 I heard and dismissed Dr Santiago-Brown’s application that liability be determined separately from quantum.[59]
(c)Ordering general discovery would not cause prejudice to AWRI “as it will sit alongside the orders for discovery already given”.[60]
[55] Applicant’s Submissions on General Discovery Orders for First Respondent, at [2], quoting from Coopes v Daishat Pty Ltd (No 2) [2017] FCCA 2210, at [14]
[56] Applicant’s Submissions on General Discovery Orders for First Respondent, [3]
[57] Applicant’s Submissions on General Discovery Orders for First Respondent, [3]
[58] Applicant’s Submissions on General Discovery Orders for First Respondent, [7]
[59] Applicant’s Submissions on General Discovery Orders for First Respondent, [6]
[60] Applicant’s Submissions on General Discovery Orders for First Respondent, [8]
AWRI submits that making an order for general discovery against AWRI would not contribute to the fair and expeditious conduct of the proceeding; it would not ensure that justice is delivered effectively and efficiently; and it would not facilitate the just resolution of the dispute as quickly, inexpensively, and efficiently as possible.[61] To the contrary, to order general discovery would waste time and costs. AWRI relies on the following submissions:
(a)Dr Santiago-Brown nominated the categories of documents in relation to which AWRI gave discovery; and she did so before she suggested that liability be determined separately from quantum. That Dr Santiago-Brown now wants broader discovery does not justify making a general discovery order.[62]
(b)AWRI has met its discovery obligations, and has no further documents to discover in relation to the categories in relation to which it was ordered to give discovery.[63] In any event, AWRI has addressed the issues in relation to discovery Dr Santiago-Brown has raised through her lawyer.[64]
(c)Requiring AWRI to give general discovery would be unduly prejudicial to it, because it would “effectively need to return to the start and conduct all aspects of the process again”.[65] AWRI relies on the affidavit of Ms Dodd in which she describes in some detail the significant amount of additional work AWRI would have to undertake if it were ordered to give general discovery.
[61] First Respondent’s Written Outline Submissions on Applicant’s Application for General Discovery, [17]
[62] First Respondent’s Written Outline Submissions on Applicant’s Application for General Discovery, [18.1]
[63] First Respondent’s Written Outline Submissions on Applicant’s Application for General Discovery, [18.2]
[64] First Respondent’s Written Outline Submissions on Applicant’s Application for General Discovery, [18.3]
[65] First Respondent’s Written Outline Submissions on Applicant’s Application for General Discovery, [18.5]
DETERMINATION
The source of this Court’s power to order discovery, other than in relation to family law and child support proceedings, is s 176(2) of the FCFC Act, which provides:
[I]nterrogatories and discovery are not allowed in relation to any other proceedings in the Federal Circuit and Family Court of Australia (Division 2), unless the Court or a Judge declares that it is appropriate, in the interests of the administration of justice, to allow the interrogatories or discovery.
Subsection 176(3) of the FCFC Act identifies the matters to which the Court must have regard when deciding whether to make a declaration under s 176(2). These are “whether allowing the . . . discovery would be likely to contribute to the fair and expeditious conduct of the proceedings; and such other matters (if any) as the Court or the Judge considers relevant”.[66]
[66] In these reasons I ignore interrogatories.
I have considered elsewhere the principles that should guide the exercise of the power under s 45(1) of the Federal Circuit Court of Australia Act 1999 (Cth) (which was the same as s 176(2) of the FCFC Act).[67] I adhere to the views I there expressed. In particular, I adhere to the view that whether it would be in the interests of the administration of justice to allow discovery largely turns on whether there is a substantial imbalance between the parties of their knowledge, or means of acquiring knowledge, of the existence of documents that are relevant to all or some of the issues in the proceeding.[68]
[67] Harwood v The Trustee of the Property of John Mervyn Harwood [2015] FCCA 1058; Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100
[68] Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100, at [40]
It would not be appropriate to apply this view, at least without qualification, to Dr Santiago-Brown’s application for an order for general discovery; and that is because Dr Santiago-Brown has already joined in the Court ordering AWRI give discovery of documents in relation to categories she formulated, and AWRI has filed two affidavits of documents pursuant to an order that it give discovery of documents that fall within those categories. The question I must consider is whether, given that AWRI was ordered to give, and has given, discovery by categories, it would be in the interests of the administration of justice now to order general discovery. The determination of that question turns on the purpose or purposes for which Dr Santiago-Brown now seeks an order for general discovery.
Dr Santiago-Brown has articulated or at least suggested two purposes. The first is, in effect, to remedy what Dr Santiago-Brown submits has been AWRI’s failure to properly discover the documents that fall within the category of documents, or, at least, to avoid the Court having to hear and determine whether AWRI has complied with the orders for discovery by categories of documents. This purpose does not justify making an order for general discovery. If Dr Santiago-Brown in truth is of the view, and has grounds to support her view, that AWRI has not complied with the current order for discovery, her remedy is to make an application to compel AWRI to comply with the orders for discovery that have already been made.
The second purpose for which Dr Santiago-Brown seeks an order for general discovery is that the categories of documents in relation to which AWRI was required to give discovery do not cover all of the issues that arise on the pleadings. In particular, Dr Santiago-Brown says the categories in relation to which AWRI was required to give discovery do not relate to the quantum of Dr Santiago-Brown’s claims.
It is the case that the categories of documents in relation to which AWRI was ordered to give discovery appear to relate only to the issues arising on liability; and they do not include categories relating to quantum. Issues relating to quantum arise from the allegations made in paragraphs 18, 19, and 29 of the statement of claim. It would be in the interests of the administration of justice that AWRI give discovery of all documents relevant to the issues that arise from its defence to paragraphs 18, 19, and 29 of the statement of claim. First, the documents would not, or at least would not substantially, overlap with the categories of documents in relation to which AWRI has already given discovery. Second, whether documents relating to the issues arising from AWRI’s defence to paragraphs 18, 19, and 29 of the statement of claim exist is a matter that would be largely within the knowledge of AWRI, and it would be more efficient if AWRI were ordered to disclose such documents, rather than leaving it to Dr Santiago-Brown to seek to obtain such documents by notice to produce or by subpoena.
DISPOSITION
For these reasons, I am not satisfied it is in the interests of the administration of justice to allow AWRI to give general discovery; I am satisfied, however, that it is in the interests of the administration of justice to allow AWRI to give discovery of documents in relation to the issues arising from AWRI’s defence to paragraphs 18, 19, and 29 of the statement of claim. I will therefore make a declaration to that effect; and I will order that AWRI file an affidavit of documents relating to the issues that arise from AWRI’s defence to paragraphs 18, 19, and 29 of the statement of claim.
I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 5 October 2023
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