THE HAGUE CONVENTION ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS 1970
[2008] SASC 51
•29 February 2008
SUPREME COURT OF SOUTH AUSTRALIA
(Applications Under Various Acts or Rules: Civil)
In the Matter of THE HAGUE CONVENTION ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS 1970
[2008] SASC 51
Judgment of The Honourable Justice Gray
29 February 2008
EVIDENCE - EVIDENCE ON COMMISSION OR LETTERS OF REQUEST - REQUESTS BY FOREIGN STATES OR COURTS
Application to take evidence in South Australia under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters 1970 847 UNTS 231 - application arises out of trademark infringement and unfair competition proceedings instituted in California, United States of America - plaintiffs seek to examine non-parties, who all reside in South Australia, on specific questions at issue in the California trial - plaintiffs also seek to inspect relevant documents - defendants consented to orders sought - whether orders should be made under section 59F of the Evidence Act 1929 (SA) or Rules 184-186 of the Supreme Court Civil Rules 2006 (SA) - whether subject matters on which the plaintiffs seek to examine are clearly defined - whether the testimony that the plaintiffs seek to adduce will be evidence relevant to issues in dispute at the trial - whether making the orders would be oppressive.
Held: orders made under section 59F of the Evidence Act 1929 (SA) - subject matters on which the plaintiffs seek to examine are clearly defined - testimony that the plaintiffs seek to adduce will be evidence relevant to issues in dispute at the trial - no suggestion nor any reason to conclude that allowing the letter of request would be in any way oppressive.
Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters 1970 847 UNTS 231 Articles 1, 9; Evidence Act 1995 (NSW) Pt 4; Evidence Act 1958 (Vic) Pt 1, Div 1C; Evidence Act 1977 (Qld) Pt 3, Div 3; Evidence Act 1906 (WA) s 115, s 116, s 117 and s 118A; Evidence on Commission Act 2001 (Tas); Evidence Act 1971 (ACT) Pt 12B; Evidence Act 1939 (NT) Pt 6, Div 2; Evidence Act 1929 (SA) s 59F; Supreme Court Civil Rules 2006 (SA) r 184, r 185 and r 186, referred to.
Great China Metal Industries Co Limited v Malaysian International Shipping Corporation Berhad (1999) 196 CLR 161; Rio Tinto Zinc Corporation v Westinghouse Electric Corporation [1978] AC 547; Gredd v Arpad Busson [2003] EWHC 3001; British American Tobacco Australia Services Limited & Ors v Eubanks [2004] 60 NSWLR 483, considered.
In the Matter of THE HAGUE CONVENTION ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS 1970
[2008] SASC 51REQUEST BY THE US DISTRICT COURT TO OBTAIN TESTIMONY IN RELATION TO CALIFORNIAN PROCEEDINGS
Civil
GRAY J
This is an application to take evidence in South Australia under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters 1970 847 UNTS 231.
On 18 January 2008 I made orders granting the application. I now provide my reasons for making the orders. The orders have subsequently been amended in minor respects, and the final form of the orders appears at the conclusion of these reasons.
Background
Pursuant to the Convention, the Attorney-General for South Australia received from the Commonwealth Attorney-General’s Department an examination request from the United States District Court, Central District of California.
Australia is a party to the Convention. The Secretary of the Attorney-General’s Department (Cth) is Australia’s Central Authority for the purposes of the Convention. There is an arrangement between the Commonwealth Attorney-General and State and Territory Attorneys-General under which the Commonwealth Attorney-General’s Department receives requests and then forwards them to the State in which the persons sought to be examined reside.
This application arises out of trademark infringement and unfair competition proceedings instituted in California, United States of America. The plaintiffs, The Grateful Palate Inc, Marquis Philips Pty Ltd, and Daniel Philips, allege that the defendant, Joshua Tree Imports LLC, engaged in infringement of the plaintiffs’ trademarks by using the trademarks on wines, despite being warned by the plaintiffs that such use was unauthorised. The defendant denies infringing the plaintiffs’ trademarks, and engaging in unfair competition.
The plaintiffs seek testimony and other information from S&S Marquis Pty Ltd and its principals, Njal Marquis and Sarah Louise Marquis. S&S Marquis is the company from whom the defendant alleges it obtained the disputed labelled wines, and on whom the defendant bases its defences. S&S Marquis and its two principals all reside in South Australia. The plaintiffs seek to examine S&S Marquis and its principals on the following:
-whether S&S Marquis Pty Ltd asserts that it was authorised to distribute the disputed labelled wines in commerce, with the plaintiffs’ trademarks attached and, if so, the bases for such assertion.
-the agreement(s) pursuant to which S&S Marquis Pty Ltd sold the disputed labelled wines to the defendant.
-the blending, bottling, labelling, packaging, handling, storage and allocation of the 2004 Marquis Philips including the plaintiffs’ wines and the disputed labelled wines.
-the plaintiffs’ authorisation of the blending, bottling, labelling, packaging, handling, storage and allocation of the 2004 Marquis Philips including the plaintiffs’ wines and the dispute labelled wines.
-the claims and defences relating to the disputed labelled wines which S&S Marquis Pty Ltd has asserted against the plaintiffs in the lawsuit pending in Australia.
The plaintiffs also seek to inspect documents relating to these matters.
The Convention
Article 1 of the Convention provides:
In civil or commercial matters a judicial authority of a Contracting State may, in accordance with the provisions of the law of that State, request the competent authority of another Contracting State, by means of a Letter of Request, to obtain evidence, or to perform some other judicial act.
A Letter shall not be used to obtain evidence which is not intended for use in judicial proceedings, commenced or contemplated.
The expression “other judicial act” does not cover the service of judicial documents or the issuance of any process by which judgments or orders are executed or enforced, or orders for provisional or protective measures.
Article 9 provides:
The judicial authority which executes a Letter of Request shall apply its own law as to the methods and procedures to be followed.
However, it will follow a request of the requesting authority that a special method or procedure be followed, unless this is incompatible with the internal law of the State of execution or is impossible of performance by reason of its internal practice and procedure or by reason of practical difficulties.
A Letter of Request shall be executed expeditiously.
Power to Make the Orders Sought
The Convention has been implemented into domestic law by all States and Territories of Australia. The Commonwealth has not enacted equivalent legislation. All States except South Australia adopted uniform legislative enactments,[1] and South Australia adopted a similar scheme in different terms – section 59F of the Evidence Act 1929 (SA). Section 59F provides:
(1)Where a foreign court requests an authorised South Australian court to take evidence in this State for the purpose of proceedings before that foreign court the South Australian court may summon any person to appear before it for the purpose of giving evidence or for the purpose of producing documents.
(2)A witness summoned to appear before an authorised South Australian court under this section may be examined, cross-examined or re-examined before that court.
(3)Subject to this Part, the South Australian court in taking evidence under this section shall have the same powers as if the proceedings originated in that court.
(4)If, while any person is being examined before an authorised South Australian court, objection is taken to any question, or to answering any question, the ground of the objection and the answer (if any) to the question shall be set out in the deposition of that person.
(5)Subject to subsections (6) and (7), the validity of the ground of any such objection shall not be determined by the authorised South Australian court but by the foreign court at whose request the examination is being conducted.
(6)The authorised South Australian court may permit a witness to decline to answer a question where in the opinion of the court the answer to that question might incriminate him or where it would in the opinion of the court be unfair to the witness, or to any other person, that the answer should be given and recorded.
(7)A witness cannot be compelled to give evidence on a particular subject if he or she could not be compelled to give evidence on that subject in the foreign court from which the request to take evidence originated.
[1] See Part 4 of the Evidence Act 1995 (NSW); Part 1, Division 1C of the Evidence Act 1958 (Vic); Part 3, Division 3 of the Evidence Act 1977 (Qld); Sections 115-118A of the Evidence Act 1906 (WA); Evidence on Commission Act 2001 (Tas); Part 12B of the Evidence Act 1971 (ACT); and Part 6, Division 2 of the Evidence Act 1939 (NT).
It was suggested that an alternative power to make the orders sought existed under the Supreme Court Civil Rules 2006 (SA). Rule 184 of these Rules provides:
(1)The Court may, on its own initiative or on application, appoint an examiner to take the evidence of a witness.
(2) A Judge or Master is eligible to be appointed as an examiner.
(3) The Court may exercise its powers under this rule for the purposes of –
(a) an action in the Court; or
(b) a proceeding in a foreign court or tribunal.
Rule 185 provides:
(1)Subject to any direction by the Court, a witness in proceedings before an examiner may be examined, cross-examined and re-examined in the same way as a witness at the trial of an action.
(2) If the Court so directs, a videotape record of the examination is to be made.
(3)An examiner is an officer of the Court and has such of the Court’s powers as the Court may assign (but not, unless the examiner is a Judge, the power to punish for contempt).
(4)The Court may, on application by an examiner or an interested person, make an order for punishment of –
(a) a contempt committed in the face of the examiner; or
(b) a contempt of an order of the examiner.
Rule 186 provides:
(1) A record of the examination must be made and certified by the examiner.
(2)The examiner must allow the witness to note any objection made to the accuracy of the record.
(3) At the conclusion of the examination, the examiner –
(a) must forward the certified record of the examination to the Registrar; and
(b) must report to the Court any failure by a witness to answer lawful questions or to produce evidentiary material to the examiner when lawfully required to do so.
(4)If the examination was conducted for the purpose of proceedings before a foreign court or tribunal, the Registrar must forward to the proper officer of the foreign court or tribunal –
(a) a certificate under the seal of the Court to the effect that the examination has been conducted in accordance with the order or request of the foreign court or tribunal; and
(b) a copy of the certified record of the examination; and
(c) a copy of any report made on the examination by the examiner.
Both the Evidence Act and the Supreme Court Civil Rules provide power to make the orders sought in the present proceedings. Although Rules 184(3)(b) and 186(4) of the Supreme Court Civil Rules contemplate that evidence may be taken under those Rules for the purpose of proceedings under a foreign court, in my view section 59F of the Evidence Act provides a more suitable avenue for the making of orders under the Convention, as it was enacted with the specific purpose of implementing the Convention into domestic law, and it is in similar terms to legislation enacted by the other States and Territories of Australia.
Consideration of the Application
Where possible, international treaties should be interpreted in an internationally uniform way.[2] In addition, the legislation which was adopted as uniform legislation in all States except South Australia was modelled on the Evidence (Proceedings in Other Jurisdictions) Act 1975 (UK).[3] At the time of the legislative enactments in Australia, the UK legislation had already been construed in authorities such as Rio Tinto Zinc Corporation v Westinghouse Electric Corporation,[4] lending weight to the desirability of international consistency in interpretation.
[2] Great China Metal Industries Co Limited v Malaysian International Shipping Corporation Berhad (1999) 196 CLR 161 at [38], [138].
[3] David McClean and Campbell McLachlan, ‘The Hague Convention on the Taking of Evidence Abroad: Explanatory Documentation Prepared for Commonwealth Jurisdictions’ (1985) Commonwealth Secretariat, London, 22-26.
[4] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation [1978] AC 547.
In Gredd v Arpad Busson,[5] Burnton J summarised the position in English law with respect to the Convention. This was adopted as representing the law in Australia by the New South Wales Court of Appeal[6] in British American Tobacco Australia Services Limited & Ors v Eubanks.[7]
[5] Gredd v Arpad Busson [2003] EWHC 3001 at [27].
[6] Spigelman CJ, with whom Handley and Bryson JJA agreed.
[7] British American Tobacco Australia Services Limited & Ors v Eubanks [2004] 60 NSWLR 483 at [42].
Courts should view letters of requests issued by foreign courts “benevolently” – it is a court’s duty, where it properly can, to assist foreign courts and the parties to them in resolving their disputes.
Orders can only be sought to obtain evidence to be adduced at trial, and cannot be sought to investigate whether a cause of action exists. The purpose for which the order is sought is a matter to be determined by reference to the terms of the letter or request, the proposed order, and the evidence available to the court as a whole. Of particular relevance is the stage at which the order is sought and the relevance of the information sought to the issues in the foreign proceedings. The party seeking the order must be able to demonstrate that the information sought is capable of being adduced at trial in support of the issues.
In the United States, testimony can be sought as part of the discovery process, but seeking testimony for discovery is prohibited under the Convention. Foreign courts making orders under the Convention have power to make orders for testimony limited to evidence to be adduced at trial. However, where the evidence sought is articulated in the letter of request in wide or general terms, that is not necessarily inconsistent with its being sought for the trial.
One of the ways in which equivalent legislation in the State and Territories of Australia differ from the section 59F of the Evidence Act, is that the uniform legislation allows evidence to be obtained for judicial proceedings which are “commenced or contemplated”. As earlier observed, Article 1 of the Convention provides that a letter shall not be used to obtain evidence which is not intended for use in judicial proceedings, commenced or contemplated.
This has been adopted by, for example, section 32(1)(b) of the Evidence Act 1995 (NSW) which requires that the Supreme Court of New South Wales must be satisfied that the “evidence” is for proceedings “which either have been instituted ... or whose institution ... is contemplated”. Section 59F of the Evidence Act 1929 (SA), however, only allows evidence to be adduced for “the purpose of proceedings before that foreign court”.
An order can be refused due to the same factors that can lead a court to set aside a witness summons, for example, oppression.
In the present proceedings, it is appropriate to make the orders sought. The subject matters on which the plaintiffs seek to examine S&S Marquis and its principals are clearly defined, and the testimony that the plaintiffs seek to adduce will be evidence relevant to issues in dispute at the trial. There has been no suggestion, nor is there any reason to conclude, that allowing the letter of request would be in any way oppressive.
Conclusion
I order that:
1A Master of the Supreme Court of South Australia be appointed examiner.
2The dates for examination be 17-20 March 2008.
3The representative of the plaintiffs in the foreign proceeding have leave to issue a subpoena for the production of the documents referred to in the Letter of Request, such subpoena to be returned prior to the examination date.
4The representative of the plaintiffs in the foreign proceedings have leave to issue subpoenas for attendance of witnesses as requested in the Letter of Request.
5Transcript be taken at the examination.
6The plaintiffs be permitted to make arrangements for the video taping of the examination, subject to appropriate liaison with the Court and defendant regarding arrangements for video taping.
7Liberty to the parties to apply at short notice.
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