The Guide Dog Owners' and Friends' Association Inc v Guide Dog Association of New South Wales and Act
[1998] FCA 375
•16 APRIL 1998
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NG 948 of 1996
BETWEEN:
THE GUIDE DOG OWNERS’ & FRIENDS’ ASSOCIATION INC
(ACN 004 758 641)
APPLICANTAND:
GUIDE DOG ASSOCIATION OF NEW SOUTH WALES & ACT
(ACN 000 399 744)
FIRST RESPONDENTROYAL GUIDE DOGS ASSOCIATIONS OF AUSTRALIA
(ACN 008 427 423)
SECOND RESPONDENTJUDGE:
SACKVILLE J
DATE OF ORDER:
16 APRIL 1998
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
Subject to paragraphs 2 and 3, the applicant make available in Sydney for inspection by the respondents’ solicitors the documents numbered 1, 2 and 3 in the Applicant’s Further List of Documents verified on 4 March 1998 (“the disputed documents”), at or before 12 noon on 20 April 1998.
The applicant’s obligation in paragraph 1 is conditional upon Mark Nicholas Johnson and any employed solicitor engaged in the case on behalf of the respondents executing an undertaking in respect of documents numbered 1 and 2 in the applicant’s Further List of Documents in or to the effect of the undertaking executed by Mark Nicholas Johnson on 23 March 1998 (being part of annexure D to the affidavit of Mark Nicholas Johnson sworn 7 April 1998), except that the period of notice in paragraph 5 of the undertakings should be 48 hours, such undertakings to be delivered to the applicant’s solicitors by 4 pm on 17 April 1998.
The applicant’s obligations under paragraph 1 may be satisfied by making available for inspection by the respondents’ solicitors true copies of the disputed documents (including the cassette tapes). Should the applicant make available copies of the disputed documents (or some of them) the respondents must pay to the applicants the reasonable costs of copying or reproducing those copies.
The Notice of Motion filed by the applicant on 7 April 1998 (“the motion”) be dismissed.
The applicant pay the respondents’ costs of the motion.
The applicant and the respondents each serve, on or before 4 pm on 28 April 1998, an indexed bundle of documents to be tendered in the principal proceedings (“tender bundle”).
The applicant and the respondents each notify the other, on or before 4 pm on 1 May 1998, of objections to the tender of any documents in the other’s tender bundle, including a brief statement of the grounds of each objection.
The applicant and the respondents each serve, on or before 4 pm on 28 April 1998 a list of objections to affidavits, including a brief statement of the grounds of each objection.
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
NG 948 of 1996
BETWEEN:
THE GUIDE DOG OWNERS’ & FRIENDS’ ASSOCIATION INC
(ACN 004 758 641)
APPLICANTAND:
GUIDE DOG ASSOCIATION OF NEW SOUTH WALES & ACT
(ACN 000 399 744)
FIRST RESPONDENTROYAL GUIDE DOGS ASSOCIATIONS OF AUSTRALIA
(ACN 008 427 423)
SECOND RESPONDENTJUDGE:
SACKVILLE J
DATE:
16 APRIL 1998
PLACE:
SYDNEY
REASONS FOR JUDGMENT
SACKVILLE J:
The applications
These proceedings are set down for hearing on 4 May 1998. Two applications are now before the Court.
The applicant, by a Notice of Motion filed on 7 April 1998, seeks an order striking out pars 29(a), 29(b) and 30 of the Amended Defence to the Further Amended Statement of Claim (the “Amended Defence”).
The respondents, pursuant to liberty to apply in respect of an order for the filing by the applicant of a Supplementary List of Documents, seek an order that, subject to appropriate confidentiality undertakings, the applicant forthwith make available for inspection the documents numbered 1, 2 and 3 in the Applicant’s Further List of Documents (the “Further List”) verified on 4 March 1998 (the “disputed documents”). The disputed documents are described in the Further List as follows:
“1.Transcript of the investigation conducted by Mr L W Flanagan QC and Mr B Omizzolo (approximately 3,000 pages).
36 cassette tapes recording the evidence obtained by Mr L W Flanagan QC and Mr B Omizzolo during their investigations.
Written submissions on behalf of [the applicant] and its officers.”
The transcript referred to is that of inquiries undertaken by Messrs Flanagan and Omizzolo, as Special Investigators appointed in Victoria. It was common ground that the Special Investigators prepared a report, which was tabled in the Victorian Parliament on 9 December 1988, and that the report made adverse comments on some aspects of the applicant’s operations. I was told from the bar table that the cassette tapes record the same material as the transcript, but of course in different form.
Mr Ellicott QC appeared with Mr Studdy for the applicant. Mr MacFarlane QC appeared for the respondents. Mr Ellicott and Mr MacFarlane agreed that the applications should be heard together. Because of the imminence of the hearing, scheduled for seven days, it has been necessary to resolve the applications urgently.
The pleadings
The case pleaded by the applicant, in brief outline, is as follows. The applicant is registered as a charity and for many years has conducted a training centre for ”Seeing Eye” dogs. It has provided many services to blind persons, including training “Seeing Eye” dogs for blind persons from all parts of Australia. The applicant has extensively promoted its services under and by reference to the name “Seeing Eye” and has acquired a significant reputation throughout Australia in that name when used in conjunction with the training of dogs for the blind and the provision of services to blind people.
Since at least 1994, the first respondent has promoted, trained and supplied guide dogs for the blind, and provided other services for blind people, by reference to the names “Seeing Eye” and “Seeing Eye Dog”. This and other conduct on the part of the first respondent falsely represented to the public, inter alia, that the guide dogs provided by the first respondent were trained or approved by the applicant. This conduct contravened ss 52 and 53(d) of the Trade Practices Act 1974 (Cth) (“TP Act”), and constituted the tort of passing off.
The applicant has used a logo in connection with its activities. Since 1996, the first respondent has used a logo deceptively similar to that employed by the applicant. This conduct, too, contravened ss 52 and 53(d) of the TP Act and constituted the tort of passing off.
The second respondent has registered the name “Seeing Eye” as a business name in a number of States and Territories. By doing this, the second respondent has falsely represented that its guide dogs are trained by on or behalf of the applicant, or are approved by the applicant. These representations were false and contravened ss 52 and 53(d) of the TP Act.
The applicant seeks damages, including donations and testamentary dispositions which it would have received but for the misleading and deceptive conduct on the part of the respondents. The applicant also seeks exemplary damages and injunctive relief.
The Amended Defence denies or does not admit the material allegations in the Amended Statement of Claim. The Amended Defence pleads that some of the causes of action are statute barred. Paragraphs 29 and 30 of the Amended Defence are as follows:
“29. In further answer to the whole of the Amended Application and the whole of the Further Amended Statement of Claim (“FASC”) the Respondents say that:
(a)the advertising and promotion pleaded in paragraph 10 of the FASC (which is not admitted), to the extent to which it occurred, falsely exaggerated the extent to which the Applicant’s conduct involved the activities and services pleaded in paragraphs 4 to 10 of the FASC;
Particulars
(i)Until at least late 1988 the applicant was engaged in a consistent pattern over many years of supplying to the public, Government Departments and trainees, in the applicant’s literature and promotions, false figures as to its output of guide dogs, giving rise to a false perception that the Applicant trained a large number of people with guide dogs and otherwise provided considerable rehabilitation services for the blind when in truth such training and services were not substantial (see pages 16, 64-89, 154 of the Report of 16 November 1988 by Special Investigators, Messrs Flanagan and Omizzolo);
(ii)In the Applicant’s Annual Reports it has expressly represented that it was a ‘national’ organisation, when in fact the applicant has not in any substantial way carried on business, or in any way conducted the services and activities alleged in paragraphs 4 to 11 of the FASC, in any States or territories other than Victoria and Queensland;
(iii)In the Applicant’s Annual Reports it has expressly represented that it provides “all forms of mobility training”, when in fact it does not provide services in relation to -
(a)orientation;
(b)sonic guide;
(c)cortico spatial;
(d)low vision;
(e)orientation and mobility;
(f)pathfinder;
(b)accordingly, if the reputation pleaded in paragraph 12 of the FASC was acquired (which is denied), that reputation was acquired as a result of the misrepresentations referred to in (a).
30.Accordingly, even if (which is denied) it were otherwise entitled to any of the relief claimed, the Applicant is disentitled to, or should be refused, the relief it claims on any or all of the following grounds -
(a)its lack of clean hands;
(b)ex turpi causa non oritur actio;
(c)in the exercise of the discretion of this Honourable Court.”
The course of events
On 27 November 1997, an order was made that the applicant file and serve a Supplementary List of Documents on or before 11 December 1997, which list was to include the documents mentioned in a letter from the respondents’ solicitors to the applicants’ solicitors dated 21 November 1997. That letter included the following paragraph:
“Our clients note that your client will include in its Supplementary List of Documents the Report of Inspectors L W Flanagan QC, Crown Counsel for Victoria and Mr B Omizzolo dated 16 November 1988 in relation to your client’s operations. Please ensure that, in addition to including such Report, your client discovers all documents which relate to the investigation giving rise to such Report.”
It will be seen that the terms of the letter of 21 November 1997 are broad enough at least to include the transcript of the inquiries undertaken by the Special Investigators (document no 1) and the cassette tapes recording the inquiries made by the Special Investigators (document no 2). It is not clear whether the paragraph is broad enough to embrace the written submissions made on behalf of the applicant and its officers (document no 3).
Despite the orders made on 27 November 1997, a dispute arose between the parties concerning discovery of the Special Investigators’ Report and the documents relating thereto. On 23 February 1998, the discovery dispute was referred to another Judge of the Court for hearing. This was done, in part, because I was told by the legal representatives that my involvement in determining the discovery dispute might prejudice my role as the trial Judge.
The interlocutory dispute was listed before O’Connor J on 27 February 1998. On that day, consent orders were made by Her Honour. The orders made included the following:
1. Grant leave to the Respondents to amend their Defence to the Further Amended Statement of Claim by adding the paragraphs set out in the Schedule to the Amended Notice of Motion served on 26 February 1998.
...
3. Direct that the Applicant discover on or before 6 March 1998 documents in its possession, custody or power falling within the six categories itemised in the “List of Categories of Documents which the Respondents Require the Applicant to Discover” filed on 4 February 1998.”
Two points should be noted about these orders. First, the paragraphs set out in the Schedule to the Amended Notice of Motion included what are now pars 29 and 30 of the Amended Defence. That is, the applicant consented to the amendment of the Defence in precisely the form that is now challenged. Secondly, the “List of Categories”, referred to in order 3, identified a number of categories of documents relating to matters dealt with in the Special Investigators’ Report. The List of Categories specified that the documents in respect of which discovery was sought were those created during the course of, or in connection with, the investigation including transcripts of evidence and submissions.
On 5 March 1998, the applicant’s solicitors forwarded to the respondents’ solicitors a copy of a Further Supplementary List of Documents verified by Mrs Gration, the applicant’s chief executive officer. Schedule 1, Part 1 of the Further Supplementary List identified, inter alia, the disputed documents, but made no claim for privilege in respect of those documents. The letter of 5 March 1998 stated that the original of the Further Supplementary List would be filed and served as soon as it was received from the applicant in Victoria. It also stated that the documents in Schedule 1 Part 1 were available for inspection, once the respondents’ solicitors executed a confidentiality undertaking. However, so far as the disputed documents were concerned, the confidentiality undertaking was required only in relation to document no 3 (that is, the written submissions) and not in relation to documents 1 and 2. The Further Supplementary List was filed with the Court on 6 March 1998.
On 13 March 1998, a pre-trial directions hearing took place before me. A status report was prepared on behalf of the applicant in connection with that directions hearing. The status report referred to further evidence that was required for the hearing, but made no mention of any outstanding issue concerning the applicant’s discovery.
On 23 and 24 March 1998, Mr Johnson and Ms Yourell, respectively a partner and employed solicitor with the respondents’ solicitors, executed confidentiality undertakings relating to (inter alia) document no 3 in the Further List. The undertakings required the solicitors not to disclose the relevant documents to any person other than the respondents’ counsel or legal representatives or to an independent expert who executed a similar confidentiality undertaking. If the solicitors formed the view that any of the documents were not confidential, they were to give the applicant’s solicitors fourteen days notice of this intention to show the documents to their clients.
On 30 March 1998, Mr Johnson spoke with Mr Vernier, acting on behalf of the applicant. Mr Vernier said that the respondents would have to go to Melbourne to inspect the documents discovered relating to the Special Investigators’ Report. According to Mr Vernier, his client had instructed him that it would not permit the documents to leave the premises at Malvern because the documents arose out of proceedings which were in camera. On 31 March 1998, Mr Johnson confirmed in writing his understanding that the applicant was unwilling to make the disputed documents available for inspection anywhere other than at the applicant’s premises.
On 1 April 1998, at a further hearing before me, Mr Ellicott stated that the applicant took the view that the investigators’ Report and associated documents were confidential and privileged. This prompted Mr Johnson to attempt to make an appointment for inspection of the documents. However, the applicant declined to permit inspection to take place. In a letter of 2 April 1998, the solicitors for the applicant stated that the disputed documents were confidential and that a claim for privilege was made. The nature of that claim was not elaborated, although it was said that the transcript of the evidence before the Special Investigators was confidential and was never intended for release to third parties.
The strike out application
It is, to say the least, curious that the applicant, having consented to the respondents being granted leave to file an Amended Defence specifically incorporating pars 29 and 30, should now apply to strike out those paragraphs. The point at which the objection should have been taken was when the respondents sought leave to file the Amended Defence.
Mr Ellicott founded the strike out application on the absence of evidence to support the allegations in the particulars to par 29 of the Amended Defence. He submitted that, in the absence of supporting evidence, the pleading had a tendency to cause prejudice, embarrassment or delay in the proceedings, or was otherwise an abuse of process. Thus the Court had power under Federal Court Rules (“FCR”), O 11, r 16, to strike out the offending paragraphs. He explained the applicant’s consent to the filing of the amended defence on the basis that it was expected that the respondents would file any supporting evidence within the timetable for the filing of affidavits in the principal proceedings and that the time for such affidavits had expired no later than 25 March 1998.
I think that the answer to the applicant’s submission is that the respondents have not, as yet, been ordered to file all documentary evidence upon which they intend to rely in support of the allegations in the particulars to par 29 of the Amended Defence. The consent orders made on 27 February 1998 did not make any provision for the respondents to file affidavit evidence in support of par 29 of the Amended Defence. Mr MacFarlane stated that the respondents intend to rely upon documentary evidence, including extracts from the transcript of evidence given by the applicant’s representatives to the investigators in Victoria. Mr MacFarlane pointed out, with considerable force, that the respondents would have been in a position to identify the documentary evidence upon which they intend to rely, had they been given access to the disputed documents at an earlier stage.
It is enough to say at this stage that the particulars to par 29 make allegations that may be capable of proof by documentary evidence of the kind referred to by Mr MacFarlane. In my opinion, the fact that the respondents have not filed affidavits to support those allegations does not mean that they will be unable to establish the facts pleaded. It is true that, as Mr Ellicott pointed out, the particulars to par 29 lack specificity in certain respects. But the applicant has thus far not sought further and better particulars of the Amended Defence and made no complaint about lack of specificity when consenting to the filing of the Amended Defence.
I think that it is unfortunate that the Defence has been amended at a late stage of the proceedings to raise potentially broad and time-consuming issues. It is imperative that the documentary evidence on which the respondents say they intend to rely should be prepared in a manner that is compatible with the orderly conduct of the trial. The respondents should serve an indexed bundle of documents they intend to tender prior to the commencement of the hearing. Provision should be made for the applicant to notify the respondents of any objections to the proposed tender. Similar orders should be made in respect of the documents the applicant intends to tender in the proceedings. The respondents should not assume that they will be permitted to file further affidavit evidence in support of the allegations contained in the particulars to par 29.
Nothing I have said is intended to suggest that the facts pleaded in the particulars to par 29, if established, will necessarily have the consequences claimed by the respondents. I have had occasion to remark more than once in these proceedings that the parties show no enthusiasm for limiting the scope of the issues to be resolved. Paragraph 29 of the Amended Defence raises factual questions potentially going back many years. Care will need to be taken to ensure that the proceedings do not become unmanageable by reason of the breadth of those allegations. Regrettably, however, par 29 of the Amended Defence is not the only pleading in these proceedings that opens up areas of factual inquiry that might, if not kept in check, take an inordinate amount of court time to resolve. The parties and the Court will need to be alert to ensure that a sensible approach is taken at the hearing. The powers conferred, for example, by s 135(c) of the Evidence Act 1995 (Cth) may have to be invoked.
Access to the disputed documents
In the course of the hearing, I made certain evidentiary rulings. The evidence ultimately admitted is insufficient, in my opinion, to establish an evidentiary foundation for the applicant’s claim that the disputed documents are privileged or subject to some form of public interest immunity.
The evidence reveals that Messrs Flanagan and Omizzolo were appointed “Special Investigators” to investigate certain matters connected with the affairs of the applicant and (so I infer) an associated company, Northern Thanet Pty Ltd (“Thanet”). The subject matter of the inquiry was not identified in the evidence. In the event, however, the Special Investigators prepared a report which was tabled in the Victorian Parliament on 9 December 1988.
Thereafter the Attorney-General for the State of Victoria brought proceedings against the applicant and Thanet. Although the nature of the relief sought by the Attorney-General was not made entirely clear by the evidence, the proceedings appear to have been based upon adverse findings made by the Special Investigators.
The proceedings were ultimately settled. The terms of settlement, which were in evidence, recited, inter alia, that the Attorney-General was satisfied that it was in the best interest of the charity, of which the applicant and Thanet were trustees, for it to continue to operate. Accordingly, the Attorney-General had decided not to press for the relief sought in the proceedings nor to seek to implement the recommendations of the Special Investigators. Each party to the proceedings agreed that orders should be made striking out the proceedings, with no order as to costs, but with a right to reinstatement.
In my opinion, there is nothing in the evidence to support a claim that the transcript of the proceedings before the Special Investigators is subject to executive privilege or public interest immunity. Mr Ellicott asked me to infer that the transcript related to evidence taken in camera. Even if I draw that inference, I do not think that the fact that evidence was taken in camera, of itself establishes that the transcript (or, for that matter, the tapes) are subject to executive privilege or public interest immunity. Mr Ellicott cited no authority to support such a sweeping proposition.
Mr Ellicott also submitted that the transcript and the cassette tapes had come into the applicant’s possession pursuant to orders made by the Supreme Court of Victoria which limited the use that the applicant could make of them. But there was no admissible evidence to this effect. The evidence given by Mr Damian-Smith merely shows that Mrs Gration, the chief executive officer of the applicant, was provided by the Attorney-General with cassette tapes because she was blind and not able to read the transcript. Mr Damian-Smith’s evidence does not establish that Mrs Gration obtained the cassette tapes by reason of court orders imposing confidentiality obligations.
Finally, Mr Ellicott contended that document no 3 (the written submissions) was the subject of client legal privilege, which had not been lost. Once again, in my opinion, the evidence does not support this submission. In substance, the only evidence is the description of document no 3 as “[w]ritten submissions on behalf of [the applicant] and its officers”. That description is consistent with the submissions having been presented to the Special Investigators and, for that matter, more widely.
I should add that it may be difficult for the applicant, assuming these submissions were subject to client legal privilege, to resist the proposition that privilege had been lost by reason of the applicant’s consent to the respondents inspection of the submissions, albeit in Melbourne: see Adelaide Steamship Co Ltd v Spalvins, 2 March 1998, unreported (FCA/FC). It is, however, not necessary for me to consider this question further.
Conclusion
The applicant should be ordered to make available for inspection the disputed documents. Mr MacFarlane, on behalf of the respondents, indicated that there was no objection to confidentiality undertakings being given substantially to the same effect as the undertaking already provided in respect of document no 3. Accordingly, the order should be conditional upon the respondents providing confidentiality undertakings in these terms. The documents should be made available for inspection in Sydney. If the applicant wishes to make available a copy of the transcript and submissions, it should be free to do so and the respondents should pay reasonable photocopy expenses. The documents, or copies thereof, should be made available for inspection by noon on Monday, 20 April 1998.
The applicant’s motion to strike out pars 29 and 30 of the Amended Defence should be dismissed, with costs.
Each party should be ordered to serve upon the other an indexed bundle of documents to be tendered in the proceedings. The bundle should be served by 4 pm on 28 April 1998. Provision should be made for objections to the documents identified in the bundle.
I certify that this and the preceding ten (10) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Sackville
Associate:
Dated: 16 April 1998
Counsel for the Applicant: Mr R J Ellicott QC and Mr D B Studdy Solicitor for the Applicant: Eakin McCaffery Cox Counsel for the Respondent: Mr R B S MacFarlane QC Solicitor for the Respondent: Holman Webb Date of Hearing: 15 April 1998 Date of Judgment: 16 April 1998
0
0
0