Taylor v Killer Queen, LLC (No 2)

Case [2021] FCA 680

FEDERAL COURT OF AUSTRALIA

Taylor v Killer Queen, LLC (No 2) [2021] FCA 680  

File number(s): NSD 1774 of 2019
Judgment of: CHEESEMAN J
Date of judgment: 25 June 2021
Catchwords: PRACTICE AND PROCEDURE – application for discovery of documents – objection to production of documents on the basis of legal advice privilege and litigation privilege – Alternatively object to production of documents on the basis of statutory privilege of patent and trade mark attorney advice privilege – whether the Respondents have waived privilege by either express or implied waiver – Held : all documents save for those over which waiver has been conceded are privileged by reason of advice or litigation privilege and / or trade mark attorney advice privilege
Legislation:

Patents Act 1990 (Cth), s 200

Trade Marks Act 1995 (Cth), s 229
Cases cited:

Archer Capital 4A Pty Ltd as trustee for the Archer Capital Trust 4A v Sage Group plc (No 2) [2013] FCA 1098

Cantor v Audi Australia Pty Ltd [2016] FCA 1391

Col Crawford Pty Ltd v Nissan Motor Co (Australia) Pty Ltd [2020] NSWSC 87

Commissioner of Australian Federal Police v Propend Finance Pty Ltd [1997] HCA 3; (1997) 188 CLR 501

Commissioner of Taxation v Rio Tinto Ltd [2006] FCAFC 86; (2006) 151 FCR 341

Council of the NSW Bar Association v Archer [2008] NSWCA 164; (2008) 72 NSWLR 236

DSE (Holdings) Pty Ltd v Intertan Inc [2003] FCA 384; (2003) 127 FCR 499

Eli Lily and Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850; (2004) 137 FCR 573

Esso Australia Resources Limited v Commissioner of Taxation [1999] HCA 67; (1999) 201 CLR 49

Ferella v Official Trustee in Bankruptcy [2010] FCA 766; (2010) 188 FCR 68

Grant v Downs [1976] HCA 63; (1976) 135 CLR 674

GR Capital Group Pty Ltd v Xinfeng Australia International Investment Pty Ltd [2020] NSWCA 266

Hastie Group Ltd (in liq) v Moore [2016] NSWCA 305

Kennedy v Wallace [2004] FCAFC 337; (2004) 142 FCR 185

Kenquist Nominees Pty Ltd v Campbell (No 5) [2018] FCA 853

Macquarie Bank Limited v Arup Pty Limited [2016] FCAFC 117

Mann v Carnell [1999] HCA 66; (1999) 201 CLR 1

New South Wales v Betfair Pty Ltd [2009] FCAFC 160; (2009) 180 FCR 543

Osland v Secretary to the Department of Justice [2008] HCA 37; (2008) 234 CLR 275

Wheeler v Le Marchant [1881] 17 Ch D 675
Division: General Division
Registry: New South Wales
National Practice Area: Intellectual Property
Sub-area: Trade Marks
Number of paragraphs: 59
Date of last submissions: 7 May 2021
Date of hearing: 11 May 2021
Counsel for the Applicant: R Cobden SC with R Clark
Solicitor for the Applicant: Silberstein & Associates
Counsel for the Respondents:  M J Darke SC with E Bathurst
Solicitor for the Respondents: Corrs Chambers Westgarth

ORDERS

NSD 1774 of 2019
BETWEEN:

KATIE JANE TAYLOR

Applicant
AND:

KILLER QUEEN, LLC

First Respondent

KATHERYN ELIZABETH HUDSON

Second…

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AGLC
Taylor v Killer Queen, LLC (No 2) [2021] FCA 680
Case
[2021] FCA 680
Decision Date

CaseChat Overview and Summary

The case of Taylor v Killer Queen, LLC (No 2) involved an application for discovery of documents by the Applicant, Ms Taylor, a clothing designer, against the Respondents, which included Ms Hudson, a recording artist, and several United States companies associated with her interests. The dispute centred on the production of documents from the period of 8 May to 21 July 2009, relating to the registration of Ms Taylor's trade mark KATIE PERRY. The legal issues before the Court were whether the Respondents had waived legal advice privilege, litigation privilege, and/or trade mark attorney advice privilege over the documents in question. The Court had to determine whether the Respondents had waived any privilege by express or implied means and, if not, whether the documents were indeed privileged.

The Court found that the Respondents had established the existence of privilege over the documents in dispute, with the exception of those documents over which a waiver had been conceded. The Court examined the nature of the relationship between Ms Hudson and her legal and trade mark advisers, concluding that Ms Hudson's agent, Mr Jensen, acted on her behalf in liaising with various service providers, including legal professionals. This relationship was sufficient to establish the requisite lawyer/client relationship necessary for privilege to apply. The Court also found that there was no evidence of waiver by the Respondents, either express or implied. Therefore, the documents were privileged by reason of advice or litigation privilege and/or trade mark attorney advice privilege.

The Court dismissed the Applicant's Interlocutory Application for discovery of the documents, except for those in respect of which privilege had been waived. The Court also ordered the Applicant to pay the Respondents' costs of the Interlocutory Application, with an opportunity for the parties to apply for a different costs order. The Court's decision was based on the evidence presented, the parties' submissions, and the documents in dispute, as outlined in the Schedule to the Court's reasons.

Orders

Orders of the court

1. The Applicant’s Interlocutory Application filed on 15 April 2021 is dismissed.

2. Subject to Order 3, the Applicant pay the Respondents’ costs of the Interlocutory Application filed 15 April 2021.

3. The parties are granted leave to apply for a different costs order to that in Order 2 by filing submissions (of no more than 3 pages) in support of the costs order they seek within 7 days of these orders, in which event any party opposing such different costs order is to file submissions (of no more than 3 pages) in support of such opposition within 7 days thereafter.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

The Respondents provided the Court with a confidential bundle of the documents which are the subject of the dispute. The parties agreed that the Court, constituted by a judge other than the docket judge, may inspect the documents for the purposes of determining the Interlocutory Application.BACKGROUNDThe Substantive Proceedings The Applicant, Ms Taylor, is a clothing designer who has traded clothing under the trade mark KATIE PERRY in Australia since about November 2006. She owns Australian Registered Trade Mark 1264761 for the word KATIE PERRY in class 25 for “clothes”, with the priority date of 29 September 2008 (the Applicant’s Mark). The Second Respondent, Ms Hudson, is a recording artist/performer who, at some point before approximately 2007, adopted the name “Katy Perry” for the purposes of her professional musical career and associated commercial merchandise licensing activities. The date from which, and the extent to which, the Second Respondent has a reputation under her performing name in Australia is in issue. The First, Third and Fourth Respondents are United States companies associated with the Second Respondent’s interests. In broad terms, the Applicant sues the Second Respondent and the corporate respondents in proceedings commenced on 24 October 2019 for infringement of the Applicant’s Mark pursuant to ss 120(1) and (2) of the Trade Marks Act 1995 (Cth) (Trade Marks Act). The Applicant seeks either an account of profits or damages together with additional damages pursuant to ss 126(1)(b) and 126(2) of the Trade Marks Act. The Applicant alleges that the Respondents have imported for sale, distributed, advertised, promoted, marketed for sale, supplied, sold and/or manufactured in Australia, or to people in Australia, clothes bearing the following marks: Further and in the alternative the Applicant alleges that the Respondents acted with a common design to carry out those acts. The Respondents raise various defences and also cross-claim for the removal of the Applicant’s Mark. In response to the whole claim the Respondents allege that the Applicant is disentitled to the relief she seeks by one or more of delay, laches, acquiescence and/or the Court’s discretion to refuse equitable relief on the basis that at all material times, the Respondents’ impugned use was undertaken with the Applicant’s knowledge, and in the period from 2009 onwards, with the Applicant’s encouragement. The proceedings are listed for final hearing, on liability alone, before Justice Markovic commencing on 29 November 2021.The 2009 Trade Mark dispute The circumstances surrounding the registration of the Applicant’s Mark in 2009 are relevant to the privilege dispute. The documents the subject of the dispute date from this period, 8 May to 21 July 2009. On 8 May 2009, prior to the Applicant’s Mark being registered but after the close of the legislative window within which third parties may oppose registration, an application for an extension of time to file a notice of opposition and a proposed notice of opposition to the mark were filed in the Second Respondent’s name supported by a statutory declaration of Paul Thompson, registered Australian patent and trade mark attorney, Fisher Adams Kelly (FAK). The Respondents concede that Mr Thompson’s statutory declaration expressly waived privilege over a limited number of documents, in whole or in part. The Applicant contends that Mr Thompson’s statutory declaration is an express waiver in respect of further documents over which the Respondents maintain their claim for privilege.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In his affidavit, Mr Jensen says that he saw the YouTube video in late June 2009 and that he saw a 30 June 2009 blog post referring to and linking the video at the time. He does not give evidence that he or any of the Respondents were in fact encouraged as a result of the YouTube video or the other conduct of the Applicant that is particularised in paragraph 19 of the Amended Defence. The Respondents do not allege that they acted on the basis of the Applicant’s conduct which they characterise as acts of encouragement by the Applicant. The Respondents have not put their state of mind in issue. The Amended Defence affixes on the Applicant’s state of mind or knowledge and her conduct, not the state of mind of the Respondents or their agents. The Respondents’ pleading in paragraph 19 of the Amended Defence raises an issue about whether the Applicant acquiesced to the Respondents’ alleged infringing conduct as a result of her conduct which the Respondents seek to characterise in their Amended Defence as encouragement. The relevant delay or laches arises by reason of the Applicant’s awareness of the Respondents’ use of the KATY PERRY mark in relation to clothes for over almost ten years before commencing the proceedings and her “encouragement” in respect of that use as particularised in particulars C to E of paragraph 19(a) of the Amended Defence. Those particulars refer to a YouTube video post, a blog post and a radio interview conducted by the Applicant. The allegation at paragraph 19 of the Amended Defence essentially requires the Court to determine whether it would be inequitable to allow the Applicant to recover an account of profits or damages in circumstances where it is alleged that she knowingly stood by or encouraged the conduct of which she now complains.CONCLUSION For reasons outlined the Applicant’s Interlocutory Application is dismissed. To the extent that the Respondents have not otherwise already done so they are to discover to the Applicant those documents in respect of which they conceded privilege had been waived in the course of the application and which are identified in the Schedule to these reasons. I do not expect it is necessary to make an order to this effect, the concession having been made, with respect, properly, in the course of argument. This Schedule identifies each of the documents in dispute by reference to the Respondents’ verified list of documents. The Respondents discovered the Redacted Documents in Parts 1 and 2 and therefore the Redacted Documents each have two identifying references. The date and description of each individual document has been taken from the Respondents’ list of documents. Where necessary, I have corrected or supplemented the document details provided in the Respondents’ list of documents. My ruling is given on each individual document. The ruling should be read with the substantive analysis in the reasons for judgment. The following acronyms are used in this Schedule:(1)DMG refers to Direct Management Group; (2)GT refers to Greenberg Traurig; (3)FAK refers to Fisher Adams Kelly; and (4)HR refers to Holding Redlich.

Ratio Decidendi

Legal Principle Established

All but two documents in dispute comprise print outs of chains of email correspondence, the remaining documents are letters and enclosed draft documents prepared by lawyers. The documents are individually listed in the Schedule to these reasons.CONSIDERATION On the basis of my consideration of the evidence, the parties’ submissions, and the documents the subject of the dispute, I am satisfied that the Respondents have established that the documents in dispute are privileged and that privilege has not been waived other than as has been conceded by the Respondents. My reasons for reaching those conclusions in relation to each of the documents are set out in the attached Schedule and should be read with the following general observations.Existence of Privilege Notwithstanding that the Respondents carry the onus on this issue, it is convenient to first address the Applicant’s contention that the Respondents could not claim privilege because the Second Respondent was not in a lawyer / client relationship with the relevant legal and trade mark advisers. The Applicant challenged the Respondents’ contention that the documents in issue, or some of them, were privileged on the basis that the Second Respondent was not a client at the relevant time and therefore the communications over which privilege is claimed did not arise in the confines of the requisite lawyer / client relationship. That submission was based on the Court drawing an inference that the Second Respondent was not aware of, and had not authorised, actions taken in her name in respect of the trade mark dispute in 2009. The Applicant’s submission on this point is necessarily based only on part of the relevant contemporaneous communications. The Applicant only has access to that part of the document in category 6 that the Respondents have discovered on the basis of their acceptance that privilege over some parts of the document has been waived. Other parts of those documents have been redacted to preserve the claims for privilege which the Respondents maintain. Looking at the communications on which the Applicant relies in isolation and out of context there is some slight ambiguity which permits the Applicant to make the submission that the Second Respondent may not have been a client at the time the documents were created. However with the benefit of Mr Jensen’s affidavit as to the scope of his role in liaising on behalf of the Second Respondent with other service providers, including in respect of legal services, and his practice in keeping the Second Respondent informed of actions taken on her behalf, it is clear that Mr Jensen was acting as the Second Respondent’s agent in communicating with the various Australian and foreign lawyers and Australian registered trade mark attorneys: Wheeler v Le Marchant [1881] 17 Ch D 675 at 684. I am fortified in my conclusion in this regard by having read the whole of the communications in unredacted form and in context. I am satisfied that the documents attract legal advice, TMAP or litigation privilege for the following reasons.