Washington v Qantas Airways Limited
[2013] FCCA 778
•16 July 2013
FEDERAL CIRCUIT COURT OF AUSTRALIA
| WASHINGTON v QANTAS AIRWAYS LIMITED | [2013] FCCA 778 |
| Catchwords: CONSUMER LAW – Applications in a Case for discovery – whether confidentiality is a consideration in ordering discovery – relevance – Applications in a Case granted in part. |
| Legislation: Competition and Consumer Act 2010 (Cth), ss.18, 29 of Sch.2 |
| NAQR v Minister for Immigration [2002] FMCA 271 DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474 Index Group of Companies Pty Ltd v Nolan [2002] FCA 608 Cadbury Pty Ltd v Amcor Ltd (No 2) [2009] FCA 663 NAK Australia v Starkey ConsultingPty Ltd [2008] NSWSC 1136 |
| Applicant: | MEGAN ALEXANDER WASHINGTON |
| Respondent: | QANTAS AIRWAYS LIMITED (ACN 009 661 901) |
| File Number: | SYG 449 of 2013 |
| Judgment of: | Judge Nicholls |
| Hearing date: | 21 June 2013 |
| Date of Last Submission: | 21 June 2013 |
| Delivered at: | Sydney |
| Delivered on: | 16 July 2013 |
REPRESENTATION
| Counsel for the Applicant: | Mr SW Balafoutis |
| Solicitors for the Applicant: | Gilbert & Tobin |
| Counsel for the Respondent: | Ms C Cochrane |
| Solicitors for the Respondent: | Allens |
ORDERS
The respondent give discovery in relation to the following classes of documents by 4pm on 9 August 2013:
(a)Amended Category 13: “Documents recording or referring to the amount paid by Qantas for the right to reproduce or communicate any recording of a performance by a musical artist for performing a third party’s copyright works on its YouTube Channel.”
(b)Further Category 14: “Documents recording the terms of any agreement between Qantas and Daniel Johns under which:
(i)Qantas commissioned Daniel Johns to compose and record the piece of music known as ‘Atlas’ for its use, including for advertising itself or its good or services; and
(ii)Daniel Johns agreed to sponsor, endorse or affiliate himself with Qantas or Qantas’ goods or services.”
Access to the discovered documents in “Further Category 14” is restricted to the applicant, her solicitors and any counsel briefed in the matter.
The applicant’s Application in a Case, made on 18 June 2013, is otherwise dismissed.
The applicant give discovery in relation to the following classes of documents by 4pm on 9 August 2013:
(a)Category 7: “Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant received a payment for:
(i)sponsoring, approving or affiliating herself with a third party or its goods or services; or
(ii)providing a testimonial relating to the third party or its goods or services.”
(b)Category 8: “Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant or her representatives agreed that the Applicant’s performance would be recorded, including without limitation details of any express terms in those agreements regarding the purposes for which the recording of the Applicant’s performance might be used.”
The respondent’s Application in a Case, made on 18 June 2013 and amended on 21 June 2013, is otherwise dismissed.
BY CONSENT, THE COURT FURTHER ORDERS THAT:
Order 6 on 27 March 2013 is varied so as to extend time by which the applicant is to file and serve any affidavits to 27 September 2013.
Order 7 on 27 March 2013 is varied so as to extend time by which the respondent is to file and serve any affidavits to 8 November 2013.
Order 5 on 10 May 2013 is vacated.
Liberty is granted to the parties to apply to the Court for further directions on three clear days notice.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT SYDNEY |
SYG 449 of 2013
| MEGAN ALEXANDER WASHINGTON |
Applicant
And
| QANTAS AIRWAYS LIMITED (ACN 009 661 901) |
Respondent
REASONS FOR JUDGMENT
On 7 March 2013, Megan Alexander Washington (“the applicant”) made an application to this Court pursuant to the Competition and Consumer Act 2010 (Cth) and the Copyright Act 1968 (Cth), alleging that Qantas Airways Limited (“Qantas” and “the respondent”) engaged in misleading or deceptive conduct and made false or misleading representations, in contravention, respectively, of ss.18 and 29 of the Australian Consumer Law (“ACL” – Sch.2 of the Competition and Consumer Act 2010 (Cth)). Further, that the respondent breached the agreement between it and Ms Washington and, in contravention of the Copyright Act 1968 (Cth), engaged in unauthorised use of the recording of Ms Washington’s performance.
On 18 June 2013 orders were made in chambers, by consent, granting leave to both parties to file an Application in a Case in relation to discovery of certain documents. Each party filed an Application in a Case, and evidence in support by way of affidavit, on 18 June 2013. At the hearing of those applications, Qantas, the respondent, filed an amended Application in a Case and Ms Megan Alexander Washington, the applicant, orally amended further category 10 and category 13 of “Schedule A” to her Application in a Case (see further below). It is those Applications in a Case, as amended, that are the subject of the Court’s current consideration.
Background
The applicant, Ms Washington, was engaged to perform a song, “I Still Call Australia Home” (“the song”), at a dinner held by the respondent in November 2010 (Mr Cooley’s affidavit at [7]). The recording of that song was subsequently, and variously, distributed by Qantas on its YouTube channel, website, and in flight entertainment. The applicant alleges that those uses were unauthorised and, further, that the respondent, in contravention of s.18 of the ACL, engaged in conduct that was misleading or deceptive. Further, that in contravention of s.29 of the ACL, the respondent made representations that were false or misleading.
The matter was first before the Court on 27 March 2013 and, on that day, an order was made that “[p]ursuant to s.45(1) of the Federal Magistrates Act 1999 (Cth), the Court declares that it is appropriate, in the interests of the administration of justice, to allow discovery”. Further, that the exchange of categories of discovery was to occur by 12 April 2013. By consent orders made on 10 May 2013, the time for the filing of “any affidavit of documents and …inspection of discovered documents” was extended to 17 June 2013.
I note that, for the sake of clarity and ease, the parties will be referred to in this judgment as “applicant” and “respondent” as per the substantive application. That is, Ms Washington is “the applicant” and Qantas is “the respondent”, even when considering the respondent’s Application in a Case.
Before the Court
The Applications in a Case were both set down for hearing on 21 June 2013. At that time, Mr SW Balafoutis of counsel appeared for the applicant, and Ms C Cochrane of counsel appeared for the respondent.
The applicant characterised the current dispute before the Court as deriving from whether a “broad” or “narrow” approach should be taken to the issue of discovery. Specifically, that the applicant sought a “broader” approach to that advocated for by the respondent. Further, that the applicant was content to allow the respondent access to the documents it sought in its Application in a Case, provided that the same “broad” approach was afforded to the applicant in relation to the documents she sought, which were, in the applicant’s submission, of “the same category”.
The respondent, however, sought to distinguish the type of documents sought by the respondent from those sought by the applicant. In particular, the respondent objected to the categories of documents sought by the applicant on the basis of, variously and for example, relevance, undue burden and confidentiality (see further below).
Before the Court, submissions were first made in relation to the applicant’s Application in a Case and then, subsequently and separately, the respondent’s. I have adopted that approach in this judgment.
The Applicant’s Application in a Case
The Application in a Case filed by the applicant on 18 June 2013 sought the following orders:
“1. The Respondent disclose, pursuant to Rule 14.02(2), those classes of documents listed in Schedule A to this application by 27 June 2013.
2. The Respondent pay the Applicant’s costs of this Application.
3. Such further order as the Court thinks fit.”
Annexed to that application, and marked “Schedule A”, was the description of each category of documents sought by the applicant. [Each “category” is set out at the relevant point below.]
Before the Court, the applicant orally amended category 13 and further category 10 (see further below).
In support of her Application in a Case the applicant sought leave to read and rely on the affidavit of Michael John Cooley, solicitor, affirmed on 19 June 2013 and filed on 20 June 2013. That affidavit was admitted, save for the words “relatively small” in [8]. Further, following objection by the respondent, [13] and [14] were “admitted” as “a broad overview” only. Paragraphs [21] – [26], [29] – [32] and [40] – [44] are to be “read as submissions”.
In response to the applicant’s Application in a Case, the respondent sought to read and rely on the affidavit of Ms Jillian Mary Arnott, senior legal counsel for Qantas, sworn on 21 June 2013 and filed on that date. The applicant objected to [11] and [24] of that affidavit, on the basis that they were “conclusions unsupported by any evidence”. In particular, that [11] was “an assertion that [agreements with the Qantas “ambassadors” are] highly confidential”. Similarly, [24] simply stated that Qantas’ agreement with Daniel Johns, a musician, was “highly confidential” without providing the basis for that assertion.
The applicant was, however, content for those paragraphs to be “read as submissions”. The respondent did not consent to that course.
The respondent pressed the admission of [11] and [24]. It submitted that Ms Arnott was “senior legal counsel” for the respondent and, from her own “observations and experience” ([1] of Ms Arnott’s affidavit), she was seeking to explain why the material in question was highly confidential. In particular, that the disclosure of the agreements would “undermine” Qantas’ future negotiations and “undermine the parties’ public image” [in context, Qantas, its “ambassadors” and Mr Johns] ([11] and [24] of Ms Arnott’s affidavit). That is, Ms Arnott was explaining why the documents were confidential without revealing the contents of the documents.
At the hearing, I provisionally admitted [11] and [24] of Ms Arnott’s affidavit and reserved my position on the admission of those paragraphs.
Although not expressly argued as such, I saw the applicant’s objection as stemming from s.76 of the Evidence Act 1995 (Cth). That is, that what is set out at [11] and [24] of Ms Arnott’s affidavit is her opinion, the admission of which seeks to “prove the existence of a fact about the existence of which the opinion was expressed” (s.76(1) of the Evidence Act 1995 (Cth)). In essence, in the current circumstances, that the respondent’s agreements with its “ambassadors” and with Mr Johns (who was otherwise engaged by the respondent to compose and sing another song) were “highly confidential”.
Section 76 of the Evidence Act 1995 (Cth) supports the applicant’s objection. However, s.79 of the Evidence Act 1995 (Cth) provides the answer in favour of the respondent. Ms Arnott’s other evidence, which was admitted without objection, is that she is the senior legal counsel for the respondent, has been in the respondent’s employment for some nine years and that her awareness of the facts deposed to, including relevantly at [11] and [24], are from her own observations, experience or review of the respondent’s records ([1] of her affidavit).
I am satisfied on this evidence (to which no objection was taken, or indication of challenge given) that Ms Arnott has “specialised knowledge” based on her “training, study and experience” (s.79(1) of the Evidence Act 1995 (Cth)). That is, that the opinion she expresses at [11] and [24] of her affidavit is “wholly or substantially” based on that specialised knowledge (s.79(1) of the Evidence Act 1995 (Cth)). On this basis, the prohibition expressed in s.76 of the Evidence Act 1995 (Cth) does not apply. The evidence of Ms Arnott at [11] and [24] is admitted.
(Amended) Further Category 10
“Documents recording the role of the Song, including whether it had been adopted by Qantas as an anthem in advertising and promotion of itself or its goods or service.”
At the hearing, and in attempted answer to the respondent’s objections, the applicant sought to orally amend further category 10. That is, the applicant sought to limit the category to only “summary documents to senior management”. Further category 10, as amended, is as follows:
“Summary documents to senior management recording the role of the Song, including whether it had been adopted by Qantas as an anthem in its advertising and promotion of itself or its goods or service.”
The applicant submitted that this category of discovery, as amended, was necessary for the purpose of establishing the “official status within the company” of the song. Ms Washington had performed that song for the respondent and it was the applicant’s contention that, by promoting her performance of the song, Qantas has engaged in misrepresentations and misled others.
The respondent did not consent to the amended further category 10. The respondent’s position was that further category 10 was too onerous. While counsel had not had the opportunity to obtain “specific instructions” on the amended further category 10, even as amended, its relevance and utility was “highly questionable”.
In particular, the respondent noted that the “role of the song” was irrelevant to the Court’s assessment. First, in determining whether conduct was misleading or deceptive, the Court was required to apply an objective test ([13] of the respondent’s written submission in opposition to the applicant’s Application in a Case). The subjective belief of individuals within Qantas as to “the role of the Song” was said, by the respondent, to be irrelevant to that assessment. Further, that the use of the word “anthem” in this context was ambiguous.
Even further, Qantas had already made admissions as to the song’s use (with reference to page 33 of annexure “MAS-1” to the affidavit of Miriam Anne Stiel, solicitor, sworn on 19 June 2013 and filed on 20 June 2013 – see also [16] of the respondent’s written submissions in opposition to the applicant’s Application in a Case). Even further, that the applicant’s assertion that the song was used by Qantas as an “anthem”, that is used “exclusively”, was contradicted by the presence of another song (specifically, the song created by Mr Johns).
(Amended) Further Category 10: Consideration
One of the applicant’s claims before the Court is, relevantly, that Qantas contravened ss.18 and 29 of the ACL. That is, that Qantas engaged in conduct (in trade or commerce) that was misleading or deceptive, or likely to mislead or deceive, and made representations that were false or misleading. The applicant contended that, by promoting Ms Washington’s performance of the song in the way that it did, Qantas misled the general public (with reference to the class of “consumers” likely to be affected by this conduct) into believing that Qantas had the approval, or support, of Ms Washington.
It is difficult to see, even with the “amendment” to further category 10, which narrows the scope, or range, of the documents sought, that the documents are necessary in the resolution of the applicant’s case.
The applicant says she seeks those documents for the purpose of establishing the “official status” of the song within Qantas. Yet, the questions raised in these proceedings, as the respondent submits, involve a focus on whether the asserted representations were made, and then whether they were in fact false or misleading. I agree with the respondent that what Qantas employees said internally to senior management about their view of the character and status of the song, and the like, does not go to whether the representations, said to have been made by Qantas, were made, or whether they were false or misleading. Noting that the focus of these representations was external to Qantas.
I should note that the respondent’s arguments against discovery here (that the applicant already had certain admissions from the respondent or that the applicant had given contradictory evidence about the “status” of the song), were arguments perhaps more relevant to issues arising at the final hearing rather than at this stage of the proceedings.
In any event, the applicant’s request for discovery of the (amended) further category 10 documents is refused.
(Amended) Category 13
“Documents recording or referring to the amount paid by Qantas for the right to reproduce or communicate any audio-visual content on its YouTube Channel, including any license fees paid to any owner of the copyright in any musical work, sound recording or cinematograph film.”
In response to Qantas’ objection to the burden imposed by the category as originally drafted, and its relevance, the applicant sought to limit the category to documents relating to “any recording of a performance by a musical artist for performing a third party’s copyright works”. Further, the applicant no longer required documents “including any licence fees paid to any owner of the copyright in any musical work, sound recording or cinematograph film.” Category 13 was, orally, amended at the hearing to reflect those changes.
Category 13, as amended, is as follows:
“Documents recording or referring to the amount paid by Qantas for the right to reproduce or communicate any recording of a performance by a musical artist for performing a third party’s copyright works on its YouTube Channel.”
The applicant submitted that this category of documents was relevant as Qantas had distributed her performance on YouTube and, it was the applicant’s contention that that was done without her authorisation and she was entitled a royalty for that infringement. In order to calculate the value of the royalty she was entitled to receive, it was necessary to have regard to how much Qantas had paid other individuals for the right to reproduce their works on its YouTube “channel”.
The applicant submitted that the category, as amended, was now a very limited category of documents and, as such, was not oppressive.
The respondent did not consent to the discovery of documents in the amended category. While unable to obtain instructions on the amended category, the respondent’s counsel submitted that, “on its face” and even as amended, it seemed onerous. Particularly as the YouTube “channel” had been operational since 2006. Further, the applicant had not “pointed to” any specific YouTube videos that were comparable with Ms Washington and her performance of the song as recorded by the respondent.
Further, the respondent submitted that the category was of “tangential relevance” given that it was unlikely, or “nearly impossible to conceive”, that the YouTube videos would be comparable to the applicant’s circumstances. That is, her level of celebrity, the “type” of performer she is, and the song she was performing (noting that, on the applicant’s submissions, she had added her own “creative flair” to her performance of the song).
In reply, the applicant submitted that the respondent had failed to put forward “any evidence” that the more limited category (that is, category 13 as amended) was onerous. In particular, that the respondent had failed to provide evidence (in any of its affidavits) that category 13, as originally drafted, was onerous. In those circumstances, since amended category 13 was much narrower than the original category, it could not be said to be onerous.
(Amended) Category 13: Consideration
I do not agree with the respondent’s position that discovery of the documents in category 13, as amended, is onerous or of “tangential relevance”. The former may have been the case with the category as first proposed. However, the amended category of documents gives definition and confines the scope, or range, of the documents to circumstances akin, and relevant, to the applicant’s asserted circumstances.
As to the latter objection (relevance), the documents now sought directly address the respondent’s objections and are relevant to the question of quantum of damages in this case. The applicant’s Application in a Case is made out in relation to the category 13, as amended.
Category 14
“Documents recording the terms of any agreement between Qantas and current Qantas ambassadors Andrew Bogut, Mark Webber, Daniel Ricciardo, Catherine Freeman and Miranda Kerr under which those people agreed to sponsor, endorse or affiliate themselves with Qantas or Qantas’ goods or services.”
Category 14 relates to agreements between Qantas and persons described as its “ambassadors”. It was the applicant’s contention that, although she was not an “ambassador”, Qantas, through its use of the recording of her performance of the song, had represented to the public that she had, at least, endorsed Qantas. Further, that Qantas’ agreements with its “ambassadors” were relevant as they disclosed how much the respondent was willing to pay to be endorsed by a “celebrity”.
In attempted answer to the respondent’s “confidentiality” concern, the applicant submitted that access to any material produced in response to category 14 would be restricted to herself, her lawyers and her agent. [The respondent’s concern was that if the confidential agreements between Qantas and its “ambassadors” became public it would prejudice both the respondent and the relevant persons.]
The respondent submitted that, on her own evidence, Ms Washington was not a Qantas “ambassador” and, as such, Qantas’ contracts with its “ambassadors” were “of very limited use” in these proceedings. In particular, that the “ambassadors” had a “special” and “ongoing” relationship” with Qantas, while the applicant’s involvement with Qantas was limited to one performance of the song. That is, in contrast to “ambassadors”, Ms Washington’s’ relationship with Qantas was for a “finite period”.
Further, the respondent submitted that the documents sought in category 14 were “highly confidential” and, given their limited use, discovery should not be allowed. In support of this the respondent referred the Court to s.45 of the Federal Circuit Court of Australia Act 1999 (Cth), r.14.01 of the Federal Circuit Court Rules 2001 (Cth), Pt.20 of the Federal Court Rules 2001 (Cth) and the judgment of Judge Driver in NAQR v Minister for Immigration [2002] FMCA 271 (“NAQR”).
In particular, and with reference to NAQR at [5], the respondent submitted that, in determining whether to permit discovery, the Court should have “regard to the issues in the case, the likely benefit of discovery and the likely cost of discovery and whether that cost is proportionate to the nature and complexity of the proceeding” ([8] of the respondent’s written submissions in opposition to the applicant’s Application in a Case). It was the respondent’s contention that the confidentiality of documents sought was a matter going to the costs of discovery.
The respondent’s position was that restricting access to the discovered documents to the applicant, her solicitor and her agent, did not address its confidentiality concerns. Before the Court, the respondent’s oral submissions on this issue were directed to, for the most part, the applicant’s agent. However, as counsel had been unable to take “specific instructions” on restricting access only to Ms Washington, her agent and solicitors, it was not clear whether the respondent’s objection was only to the applicant’s agent accessing the documents, or also encompassed the applicant and her solicitors.
At the hearing, the respondent was not able to provide any “authority” for the proposition that confidentiality was an issue going to whether discovery should be ordered. Leave was sought to subsequently provide to the Court “authority” for that proposition. In particular, reference was made by the respondent to a judgment handed down by North J. Leave was granted to the respondent for that purpose. Leave was also granted to the applicant to reply to that submission and to provide any authority for the contrary proposition.
By email to my Associate on 24 June 2013, the respondent provided a copy of North J’s reasons for judgment in DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474 (“DSM”). The respondent also noted the judgment of Kiefel J in Index Group of Companies Pty Ltd v Nolan [2002] FCA 608 (“Index Group”), in particular at [8]. In addition, the respondent provided a “copy of the second affidavit of Ms Farago-Diener, filed by Suntory Holdings Limited in opposition to the discovery request, which addresses the issue of confidentiality at paragraph 9”.
By email later the same day, the applicant objected to the affidavit of Ms Farago-Diener being read and relied on. In particular, the applicant submitted that “the affidavit is not evidence in [these] proceedings” and was not part of the judgment in DSM.
In that email, the applicant also submitted that, in Index Group, Kiefel J’s comments were directed to whether access to discovered documents should be granted, not whether discovery should be ordered. In support of the proposition that “documents are not protected from discovery by reason of confidentiality”, the applicant referred to, and provided copies of, Cadbury Pty Ltd v Amcor Ltd (No 2) [2009] FCA 663 at [6] per Gordon J, and NAK Australia v Starkey Consulting Pty Ltd [2008] NSWSC 1136 (“NAK”) at [4] – [9] per Bereton J.
In oral submissions in reply, the applicant also noted that, while she had only been contracted to perform a song, the recording of her performance of the song had then been used by Qantas for the purpose of promoting the company. In that way, the use by the respondent of the recording of her performance of the song was comparable to the respondent’s relationship with its “ambassadors”.
Even further, in reply, the applicant submitted that Qantas’ use of the recording of her performance was “not for a short period of time”. Although various activities ceased at different times, the “promotion” commenced in November 2010 and ceased in November 2011. That is, a 12 month period. The applicant contended that, while an ambassador may have a relationship with Qantas that continues for many years, it should not be assumed that their contracts covered such an extensive period of time. Rather, the contracts could be for a period of time, such as a year, with an option to renew.
Category 14: Consideration
On the issue of Ms Farago-Diener’s affidavit, I agree with the applicant. That affidavit is not evidence in these proceedings. Further, leave was granted to the respondent to file any “authority” in support of the proposition that confidentiality was an issue in the assessment of whether to make an order for discovery (noting that, at most, the respondent indicated that it may be necessary to provide a transcript of the proceedings before North J). It is trite to say that an affidavit, being evidence, is not an “authority”. If the respondent sought to adduce further evidence in support of its Application in a Case, then the appropriate course would have been to seek a further hearing. That is so if for no other reason than to allow an opportunity to the applicant to test the admissibility of this evidence. In light of this, I have not had regard to Ms Farago-Diener’s affidavit.
I note the authorities provided by the parties (set out at [47] and [49] above). Direction is provided by Kiefel J in Index Group at [8]:
“A private right of confidentiality in documents may be taken into account in considering whether to order discovery and inspection, although it is right to say that the fact that documents have that character is not usually itself a sufficient reason to deny discovery: Mobil Oil v Guina Developments, 38. When a document is shown to be confidential the Courts must balance the effect of its disclosure and of it being withheld from a party to litigation. In that latter respect much may turn upon what it is necessary for that party to prove or disprove.”
While I agree with the applicant that the Court in that case was concerned with access to already discovered documents (see [5] of Index Group), I respectfully understand her Honour’s reasoning to equally apply to the contemplation of an order for discovery. That is, the question of confidentiality may be relevant, although it “alone” won’t usually be a sufficient reason for refusing discovery (Index Group at [5], see also NAK at [4] per Bereton J).
However, the answer to the applicant’s application for discovery of these documents is the remoteness of the applicant’s circumstances and the case she asserts against Qantas, and the circumstances of the various individuals who are regarded as Qantas “ambassadors” and their relationship with Qantas.
What is at issue in these proceedings is the conduct of Qantas, and its representations, arising from the circumstances of the presentation of the song and as that can be understood in the context of the relationship between Qantas and Ms Washington. [Noting of course the need for the applicant to also subsequently establish that that conduct was misleading or deceptive and/or that the representations were false or misleading.]
Ms Washington was not an “ambassador”. The nature of that concept and the relationship between Qantas and its “ambassadors” is set out in the affidavit of Ms Arnott (see at [12] – [23]). (I note that while [11] and [24] of that affidavit have been admitted, given what is set out above, they are not necessary to the disposition of this particular issue.)
In the evidence before the Court the relationship between Qantas and its “ambassadors” is described as being “ongoing” and “involving public appearances and promotional activities” (at [12] of Ms Arnott’s affidavit). I understood this to involve some “personal” ongoing involvement, beyond the electronic presentation and distribution of past public appearances and promotional activities. This can be distinguished from the situation involving Ms Washington where her actual “appearance” (the singing of the song) was confined to one occasion. While the evidence is that that “appearance” was electronically repeated, there was no further “personal” appearance on behalf of, or with, Qantas by Ms Washington.
Further, it is clear that the “ambassador” concept has an international dimension (see Ms Arnott’s affidavit at [12]). That is, while all the “ambassadors” (referred to in the affidavit of Ms Arnott) are Australian, there is an “international personality” element to the “ambassador” concept involving ongoing public appearances and promotional activities, not only in Australia but also overseas. On the evidence of Mr Cooley, at its highest, while Ms Washington “is an award winning musician and performer” (at [6]) there is nothing to show any international dimension to this status, let alone any ongoing personal (as opposed to electronic) presentation of a relationship with Qantas. [I note that this is supported by Ms Washington’s Points of Claim, filed in support of her substantive application to the Court, at [3](i) – (v), where reference is made to Ms Washington’s profile in Australia.]
While Qantas’ use of the recording of the song may have lasted for longer than “a short period of time”, the nature of the relationship between Qantas and Ms Washington was markedly distinguishable from the relationship between Qantas and those who were actually designated, and presented, by Qantas as its “ambassadors”.
Discovery for category 14 is refused.
Further Category 14
“Documents recording the terms of any agreement between Qantas and Daniel Johns under which:
(a) Qantas commissioned Daniel Johns to compose and record the piece of music known as ‘Atlas’ for its use, including for advertising itself or its good or services; and
(b) Daniel Johns agreed to sponsor, endorse or affiliate himself with Qantas or Qantas’ goods or services.”
The applicant submitted that the contract between Qantas and Mr Johns, an “award winning musician”, was relevant as it was for a “roughly comparable event”. That is, Mr Johns was paid by Qantas to compose, perform, and record a song that was to be used by Qantas in promotions.
While recognising that that was not the same as what she had been contracted to do, the applicant submitted that “no agreement [was] going to be right on point”. While Mr Johns had been required to compose a song, and she had only been required to perform a song (already composed), her performance was “unique and had flair”. In that sense, both events had the “same creative element”.
The applicant submitted that, if the agreement between the respondent and Mr Johns was itemised (that is, if he was paid separate amounts for his composition, performance and endorsement of Qantas), then the agreement would be highly relevant. In the event that the agreement was not itemised, then the Court could make an assessment as to what portion of the sum paid to Mr Johns was attributable to which elements. This was not a matter therefore to argue against the discovery of the documents sought in further category 14.
As set out above in relation to category 14, before the Court the applicant submitted that she was content to restrict access to the documents to herself, her agent and her solicitors.
The respondent’s position was that its agreement with Mr Johns was of a different character to its agreement with Ms Washington. In particular, Mr Johns was required to compose a unique piece of music, to record it with an orchestra, and that piece of music was then used by Qantas in its promotions “in an ongoing way”. The respondent’s position was that it was “better” to look at agreements between the applicant and others, as opposed to agreements between Qantas and Mr Johns, being a different artist in a different context.
Again, the respondent reiterated its concerns about confidentiality and relied on the same arguments in relation to confidentiality as set out above in relation to category 14.
Further Category 14: Consideration
Unlike the situation with the “ambassadors” (category 14), I agree with the applicant that Mr Johns’ relationship with Qantas is comparable with Qantas’ relationship with Ms Washington. The only matter of difference (the composition of the song) is not such as to overcome the stronger points of similarity.
Qantas’ impugned conduct, in the sense of the alleged breach of the ACL, is not necessarily focused on the events surrounding the actual performance at which Ms Washington sang the song (although what may have been said by a Qantas representative at that time may be relevant to the applicant’s case). Nonetheless, the conduct at issue is the subsequent use, and presentation of, this event and whether in that use Qantas made representations which were false or misleading.
That Mr Johns composed the song and recorded it with an orchestra is, therefore, not a relevant point of comparison. Comparison should occur with what Qantas is said to have done with both recordings of the “events”, after the “events”. The use by Qantas “in an ongoing way” of Mr Johns’ music is directly comparable to what Ms Washington now alleges was the use to which her performance was put by Qantas.
It is understandable that Qantas would wish to keep its commercial agreements with other “celebrities” confidential. However, in the situation of Mr Johns, any such concern is objectively outweighed by the relevance to a fact, or facts, in issue in these proceedings. Namely, Qantas’ use of songs in an “ongoing” way in promotional situations. The document would also go to the applicant’s capacity to establish the quantum of damages.
Unlike the situation with the “ambassadors”, which involved a larger number, “discovery” of the agreement with Mr Johns should not involve any significant impact on the costs of discovery.
However, the question of access to this document is one which should be resolved with reference only to the parties to these proceedings and their legal advisors. In this case, access to the discovered further category 14 documents should be limited to Ms Washington and her legal advisors. That is, her solicitors and any counsel briefed in the matter.
It may be that her agent, either though her election or contractual agreement, has some role in the prosecution of these proceedings as part of the conduct of Ms Washington’s business affairs. However, there is no evidence before the Court to support any such proposition. On its face, and on the best evidence available, the situation is that Ms Washington’s legal representatives receive ultimate instructions from her. Access to the document, and its contents, should be limited to only Ms Washington and her legal representatives.
Conclusion
The applicant’s Application in a Case is granted with respect to category 13, as amended, and further category 14. The Application in a Case is otherwise dismissed.
The Respondent’s Application in a Case
The orders sought in the respondent’s amended Application a Case are as follows:
“1. That the Applicant give discovery in relation to the following classes of documents by 4pm on 26 June 2013:
5. Documents recording the agreement between the Applicant and Virgin Australia Airlines Pty Ltd (or any of its related bodies corporate) (Virgin) entered into in or about October 2012.
6. Documents created on or after 15 October 2010, including without limitation correspondence, emails and notes of conversations, recording or referring to discussions between the Applicant or her representatives and Virgin in relation to the agreement referred to in paragraph 5, including without limitation before that agreement was made.
7. Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant received a payment for:
(i) sponsoring, approving or affiliating herself with a third party or its goods or services; or
(ii) providing a testimonial relating to the third party or its goods or services.
8. Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant or her representatives agreed that the Applicant’s performance would be recorded, including without limitation details of any express terms in those agreements regarding the purposes for which the recording of the Applicant’s performance might be used.
2. That the applicant pay the respondent’s costs of this application.
3. Such further orders as the Court thinks fit.”
In support of its amended Application in a Case, the respondent sought to read and rely on the affidavit of Miriam Anne Stiel, sworn on 19 June 2013 and filed on 20 June 2013. There was no objection by the applicant and leave was granted. The respondent also sought to read and rely on the affidavit of Ms Arnott (noting the above discussion regarding the admissibility of [11] and [24] and my finding on that issue).
Category 5
“5. Documents recording the agreement between the Applicant and Virgin Australia Airlines Pty Ltd (or any of its related bodies corporate) (Virgin) entered into in or about October 2012.”
Category 5 relates to the agreement between the applicant and Virgin Australia Airlines Pty Ltd (“Virgin Airlines”).
The applicant submitted that category 5 was of limited use as her agreement with Virgin Airlines was in 2012, two years after her agreement with Qantas, and her “appeal” to the public varied over time. [I understood the reference to “appeal” to be the “appeal” of Ms Washington’s music, and her personality, to the public. That is, her “celebrity” status.] Further, and more fundamentally, the applicant’s agreement with Virgin Airlines only involved her singing a song and that song being used in a promotion. It was submitted that there was no image of Ms Washington in that video, nor was her image used in connection with the song.
In reply, the respondent submitted that the Court should refer to annexure “MAS-2” to Ms Stiel’s affidavit and prefer that evidence to any evidence from the bar table that the applicant’s agreement with Virgin Airlines did not include use of her image, or video.
Category 5: Consideration
The respondent has not satisfactorily explained how the discovery of Ms Washington’s agreement with Virgin Airlines is necessary to the conduct of its response to Ms Washington’s application to the Court.
The respondent relied on the material annexed to the affidavit of Ms Stiel at “MAS-2”. I cannot see that this assists its Application in a Case in relation to category 5.
What seems to have been forgotten by the respondent here is that what is centrally at issue is its alleged conduct, and representations allegedly made by it, following the performance of the song by Ms Washington (noting of course that some statements made at the time may assist in informing the issue). Whether Ms Washington, two years later, entered into an agreement with a competitor to Qantas for it to use her image or performance in any promotional capacity, or the terms of any such agreement at that time, is not relevant to, or necessary for, the respondent’s response to the “charge” made in the substantive application to the Court. Discovery of this category is refused.
(Amended) Category 6
“6. Documents created on or after 15 October 2010, including without limitation correspondence, emails and notes of conversations, recording or referring to discussions between the Applicant or her representatives and Virgin in relation to the agreement referred to in paragraph 5, including without limitation before that agreement was made.”
Before the Court, in submissions in reply, the respondent indicated that it was “prepared” to limit category 6 to those documents created prior to when the agreement between the applicant and Virgin Airlines was made. Category 6, as amended, is as follow:
“6. Documents created on or after 15 October 2010, including without limitation correspondence, emails and notes of conversations, recording or referring to discussions between the Applicant or her representatives and Virgin in relation to the agreement referred to in paragraph 5, limited to before that agreement was made.”
The documents specified in category 6 were said, by the respondent, to be “useful” for two reasons:
1)First, the applicant had not identified the heads of damages claimed in this case. In those circumstances, if the applicant was to be successful, and seek damages for loss of opportunity, the agreement with Virgin Airlines would be useful to establish whether Qantas’ use of her performance had had any impact on her negotiating position with the respondent. Before the Court, the respondent submitted that its use of Ms Washington’s song had provided beneficial “exposure” to her and had “enabled” her to negotiate a sponsorship deal with Virgin Airlines.
2)Second, the applicant had originally agreed to discovery of the documents in category 6 and had then rescinded that agreement when the respondent objected to several categories of discovery sought by her. However, it was not made clear before the Court how that made the documents sought in category 6 “useful”.
The applicant submitted that category 6, as originally drafted, sought documents leading up to the agreement, as well as those after the agreement. That is, it was too broad, particularly given the purpose for which Qantas said they sought the documents. Following the respondent’s amendment to the category (as set out above), the applicant indicated that the “amendment” addressed only one objection (the time period covered). However the category was still too broad for the purpose for which the documents were said to be required. That is, it was not limited to documents referring to Qantas and the song.
Further, in response to the submission that the documents were relevant to whether Ms Washington’s association with Qantas benefited her bargaining position, the applicant submitted that any improvement in her bargaining position was most likely attributable to her winning three Australian Record Industry Association (“ARIA”) awards three days prior to her performance for Qantas.
Finally, the applicant noted that the documents sought in categories 5 and 6 “raised more of an issue of confidentiality” than any other category. That was said to be because Virgin Airlines was Qantas’ major competitor.
In reply, the respondent continued to press the category, as amended. In particular, the respondent noted that all documents leading up to the negotiation (not just those referring to Qantas and the applicant’s performance of the song) were required as their purpose was to establish that the applicant had been “bargaining from a position of strength”.
Further, the respondent noted that the applicant had made a “late claim of confidentiality”, which had not been raised in Mr Cooley’s affidavit.
(Amended) Category 6: Consideration
At its highest, the respondent’s position is that discovery of these documents goes to the question of damages should the Court otherwise find against Qantas. That is, the documents would be “useful” on the question of any impact on the negotiations between Virgin Airlines and Ms Washington of the exposure received by Ms Washington as a result of Qantas’ conduct in exposing her performance of the song.
The applicant’s argument that there may have been other reasons (various ARIA awards) that may have led to a beneficial contractual outcome for her with Virgin Airlines does not assist. Such matters would be questions for the Court to decide in any assessment of damages if the case were to progress to that stage.
What must again be kept in mind is the central focus raised by the application to the Court. That is, Qantas’ conduct, and any representations made by it, surrounding the recording of the song and the subsequent use to which it was put that recording.
Any attempt by the respondent to discover documents concerning negotiations and discussions between Ms Washington and her representatives and another company (Qantas’ competitor) would require some persuasive argument that the documents sought were relevant to the purpose for which the respondent says they are otherwise necessary. The respondent’s argument has not been persuasive.
I agree with the applicant that, even as amended, the category is far too broadly set such as to say that the documents falling within the category are relevant to a fact in issue within the context referred to above.
It is not for the Court to “assist” the parties in refining their attempts to obtain discovery. Had the category had a narrower focus, directly linking Qantas’ claimed conduct with the negotiations and discussions between Ms Washington, her representatives and Virgin Airlines, then a different consideration may apply. However, the Court is left with dealing with the category as proposed and amended by the respondent.
However, what is also of assistance to the applicant (in addition to the “relevance” and the “too broad point”) are the vagaries of the passage of time. Again, as set out above and as with category 5 documents, it is Qantas’ alleged conduct, and its alleged representations, that is central.
The agreement between Ms Washington and Virgin was entered into in October 2012. It must be allowed that the time between Qantas’ claimed conduct (which was said to have continued for about one year) and any negotiations between Ms Washington and Virgin Airlines (the negotiations obviously have pre-dated the signing of the agreement) is shorter than two years. However, whatever may have been said between Ms Washington, or those on her behalf, and Virgin Airlines in the period leading up to the agreement is, as Mr Cooley’s “submissions” say (at [47] of his affidavit), not relevant. Further, it is irrelevant whether or not access is granted to category 5 (which it is not).
What may be reflective of any beneficial advantage on the part of Ms Washington is what is in the agreement itself, not what may have been said in the process leading up to the execution of the agreement.
Had the agreement date been closer to the impugned conduct by Qantas, then the agreement may have been usefully discoverable. However, as set out above, the passage of time diminished any usefulness. I did consider the question of whether this could be dealt with by allowing discovery, and then assigning appropriate weight to these documents in any final consideration (in the event that they were pressed in some way).
However, on balance, I am persuaded that the discussions, and negotiations, between Ms Washington and Virgin Airlines leading to their agreement is of even lesser utility in relation to what is necessary for the respondent to be able to argue its case.
I also note that, on the respondent’s submission, the applicant first agreed to discovery of this category of documents and then “rescinded” that agreement. That does not assist the respondent. As the applicant now submits, this says nothing about the utility of discovery in this regard. Discovery of amended category 6 documents is refused.
Category 7
“7. Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant received a payment for:
(i) sponsoring, approving or affiliating herself with a third party or its goods or services; or
(ii) providing a testimonial relating to the third party or its goods or services.”
The respondent sought the documents set out in category 7 on the basis that, if the applicant was successful in making out her case, then they would be relevant to assessing the quantum of damages. The documents sought were said to be “highly relevant” as they related to Ms Washington and could be used to determine how much money she was paid in circumstances similar to those, on the respondent’s contention, between her and Qantas.
The respondent noted that the applicant had, originally, “recognised” that discovery in category 7 should be made. However, that that was subsequently “rescinded”.
The applicant’s objection to category 7 was that Qantas had not limited the agreements sought to those agreements between Ms Washington and a company in a similar position to Qantas. That is, an international company. In that way, the category was too broad.
Category 7: Consideration
Again, discovery of the category 7 documents is said by the respondent to be for the purpose of quantifying Ms Washington’s claim should she be successful in showing representations were made by Qantas and that those representations were misleading and deceptive.
Further, that these documents will go to the assessment of the commercial value of the “exposure” given to Ms Washington by Qantas’ conduct in using her performance of the song.
Unlike the situation with the agreement with Virgin Airlines, the utility and purpose of discovery of these documents is focused, relevant and contemporaneous to one of the questions for the Court to decide.
Documents from the period just prior to the alleged conduct by Qantas provide a benchmark, or basis, from which any commercial value can be calculated. The utility, and indeed relevance, of documents created after this time may diminish with the passage of time, but this would be a question of weight to be accorded to them not a reason for refusing discovery. The respondent should be allowed to discover this category.
Category 8
“8. Documents recording any other agreements with third parties dated on or after 1 January 2009 under which the Applicant or her representatives agreed that the Applicant’s performance would be recorded, including without limitation details of any express terms in those agreements regarding the purposes for which the recording of the Applicant’s performance might be used.”
The respondent submitted that the documents sought in category 8 were important to the “liability element of the case”. In particular, that the applicant relied on a certain terms being orally agreed upon and the respondent sought the applicant’s agreements with other parties for the purpose of determining whether those terms were present in those agreements. That is, was it her usual practice to include the claimed terms in her contracts.
Further, the respondent asserted that the documents were relevant to the issue of quantum of damages. That is, if the agreements did provide for royalty fees to be paid for reproduction, then they would reveal what the applicant normally charged for that right.
With reference to Mr Cooley’s affidavit at [50] and [51], it was submitted that the applicant did not appear to dispute the relevance of the documents sought by the category. Rather, the applicant only asserted, in Mr Cooley’s affidavit, that the category was “overly broad” and “oppressive”.
In answer to the applicant’s complaint that the category was “overly broad”, the respondent submitted that it was limited to the period from 2009 and that, during that time, the applicant had only released three “recorded albums”. Further, the respondent noted that the applicant’s agent had said that it would only take him one week to gather the documents.
The applicant subsequently clarified, with reference to Mr Cooley’s affidavit at [53], that the applicant’s agent could not locate the documents in a week. In light of that clarification, the respondent submitted that Mr Cooley’s evidence on this matter was “vague and unhelpful” and that there was no other evidence to show that the category was onerous.
The applicant also objected to the category on the basis of relevance. In particular, it was not restricted to documents relating to contracts where Ms Washington performed a cover of a song. For example, the category as presently drafted would capture the contracts for Ms Washington’s “recorded albums”, which involved her composing and performing several songs.
The applicant also questioned the use to which Qantas said it wished to put the documents. That was said to be, with reference to [17] of the respondent’s written submissions in support of its Application in a Case, for the purpose of determining what terms were agreed on between Qantas and Ms Washington, noting that that would be with reference to Ms Washington’s agreement with different parties and in different circumstances. Further, that it had never been the applicant’s case that she would not have, nor never, agreed to wider dissemination of recordings of the song. Rather, her case was that she had not agreed, for the sum paid in this case, to the “wider” dissemination by Qantas of the recording of her performance of the song.
Category 8: Consideration
I agree with the respondent that this category of documents is relevant and necessary to the respondent’s case as to, what the respondent described as, the “liability element”. What the applicant “sought” in her negotiations with Qantas in relation to the performance and subsequent use of the song can be informed by what she sought in her agreements with other parties in comparable circumstances.
These circumstances, given the nature of the question to be addressed by the Court, are not limited to the performance of “cover” songs. The applicant’s practice in relation to the types of restrictions she placed on the use of the recordings of her performances is a matter that can be derived from a number of different contexts (such as the recording of record albums or the like).
I also agree with the respondent that the discovery of these documents would assist in the consideration of the question of damages in the sense, for example, of the assessment of any royalty fees. The discovery of these documents is necessary for the respondent to answer the applicant’s claims in this regard (whatever that may be and however the applicant may choose to articulate it at the final hearing). The documents would give some basis from which any relevant calculations can be made.
Of course, in these circumstances the weight to be afforded to each individual document is for the Court to determine, and not an argument against discovery.
The applicant’s objection, based on the onerous task to be imposed by any such order for discovery, and therefore it being oppressive, was not satisfactorily articulated. The steps necessary to comply (set out at [51] of Mr Cooley’s affidavit) should not pose any undue burden on any well managed business enterprise with access to modern electronic facilities. If there are any difficulties in this regard they were not presented by Mr Cooley in his affidavit.
That the applicant’s agent (who it is said would need to conduct the relevant search) is out of the country for a certain period (until 24 June 2013) is no longer relevant given the passage of time since the making of Mr Cooley’s affidavit ([53] of Mr Cooley’s affidavit).
Similarly, that any of the relevant documents have been “archived” may go to the question of the cost of discovery. However, I am persuaded by the respondent that any such cost is outweighed by the necessity of the documents to enable to the respondent to argue its case. Discovery of this category is appropriate.
Conclusion
The respondent’s Application in a Case, as amended, is granted in relation to category 7 and category 8. It is otherwise dismissed.
I certify that the preceding one hundred and twenty-four (124) paragraphs are a true copy of the reasons for judgment of Judge Nicholls
Associate:
Date: 16 July 2013
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