FEDERAL COURT OF AUSTRALIA Reckitt Benckiser (Australia) Pty Limited v SC Johnson & Son Pty Limited [2004] FCA 1277 JUDGMENT AND ORDERS – claim as confidential material comprising inter-company communications – whether that material should be set out in reasons for judgment to be published – interests of justice and due administration require publication David Syme & Co Ltd v General-Motors Holden Ltd (1984) 2 NSWLR 294 Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 638 Idoport Pty Ltd v National Australia Bank Limited [2001] NSWSC 1024 RECKITT BENCKISER (AUSTRALIA) PTY LIMITED v SC JOHNSON & SON PTY LIMITED N 1147 OF 2004 CONTI J 1 OCTOBER 2004 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 1147 OF 2004 BETWEEN: RECKITT BENCKISER (AUSTRALIA) PTY LIMITED APPLICANT AND: SC JOHNSON & SON PTY LIMITED RESPONDENT JUDGE: CONTI J DATE OF ORDER: 1 OCTOBER 2004 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The reasons for judgment delivered on 21 September 2004 be wholly published. 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 N 1147 OF 2004 BETWEEN: RECKITT BENCKISER (AUSTRALIA) PTY LIMITED APPLICANT AND: SC JOHNSON & SON PTY LIMITED RESPONDENT JUDGE: CONTI J DATE: 1 OCTOBER 2004 PLACE: SYDNEY REASONS FOR JUDGMENT 1 In my reasons for judgment in the present proceedings furnished on 21 September 2004, I extracted four internal communications which had earlier passed between certain officers of Reckitt Benckiser (Australia) Pty Limited ('Reckitt'). Before doing so, I made the following observations generally in relation to the content of those internal communications: 'These internal communications are revealing, demonstrating as they do the reaction of Reckitt to SC Johnson's recent introduction to the US market of the product Oust, which contains… TEG [triethylene glycol]. Thus the perceived need for Reckitt to take active steps to halt the march of SC Johnson's product challenge in the United States is exemplified…'. Those four internal Reckitt communications were reproduced in subpars (i) to (iv) of [21] of my reasons. 2 Upon the application of Reckitt during the hearing, I made an order for the confidentiality of those four Reckitt communications at least for the time being. By reason of the operation of that order, my reasons for judgment furnished on 21 September 2004, by way of final disposal of the proceedings, have not yet been published. 3 In those reasons for judgment, I stipulated that the same would not be published until after the parties had provided to me written submissions on the issue of maintenance permanently of the confidentiality order. Each of the parties have since provided comprehensive, and if I may say so, thoughtfully expressed submissions as to the maintenance or otherwise of the confidentiality of the material in question. That claim for confidentiality is now confined to subpars (ii), (iii) and (iv) of my reasons for judgment of 21 September 2004. 4 The submission of Reckitt is essentially to the effect that the information the subject of those three remaining internal communications, the subject of the continuing confidentiality claim, has the potential to cause harm to Reckitt, by giving SC Johnson & Son Pty Limited ('SC Johnson') a competitive advantage that it would not otherwise have had, for the reasons set out in the affidavit since presented by the marketing director of Reckitt, Mr Armstrong, and now put before me, but that it is 'not practicable to identify the potential harm in more specific terms at the present time.' Speaking generally, Mr Armstrong has asserted that the subject information in issue 'relates in essence to internal research and development and marketing initiatives.' 5 SC Johnson has strenuously opposed the present application, at least upon the following grounds in outline: (i) Mr Armstrong's affidavit contains nothing more that bare assertions of confidentiality, unsupported by reasoning as to why the claimed confidential passages should continue to be the subject of any confidentiality regime; (ii) SC Johnson's Group General Manager was present in Court during the closing submissions on 30 August 2004, when several references to the matters the subject of the claimed confidential passages were made without opposition (I was referred in that regard to part of what is recorded in transcript pages 220, 221, 222 and 226 of that day); and (iii) the subject matter of the claimed confidential passages are 'of the clearest relevance' to the allegations made by Reckitt against SC Johnson in the proceedings. 6 SC Johnson referred me to authorities governing the general principles as to the reproduction of confidential material permissibly to be set out in reasons for judgment generally, including David Syme & Co Ltd v General-Motors Holden Ltd (1984) 2 NSWLR 294 at 300-1 (Street CJ), and Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 638 (Beaumont J), and additionally in Idoport Pty Ltd v National Australia Bank Limited [2001] NSWSC 1024, where Einstein J has set out a comprehensive judicial exegesis. 7 In my reasons for judgment at [82], I observed as follows: 'It is apparent that SC Johnson's research initiatives, leading to exploitation in the consumer market of the ingredient of TEG in ethanol solutions, has impacted positively upon the air spray product market in Australia, and that Reckitt has found itself embroiled in 'catch up' activities in order to meet a modern product challenge at the instance of SC Johnson, both in the United States andin Australia. So much is exemplified by the internal memoranda of Reckitt officers, which have been largely reproduced above, and in the aggregate occasion a significant measure of damage to Reckitt's case. In my opinion, the evidentiary opinions and findings of a scientific nature, adduced in evidence by SC Johnson, are more significantly persuasive in their reasoning and conclusions to those presented to the Court on behalf of Reckitt. That conclusion is already sufficiently apparent from what I have reviewed at length earlier in these reasons, in each case as extensively as I think reasonable bounds have permitted in the circumstances of the case.' 8 I have not found it easy to resolve this collateral issue. Commercial competitors engaged in litigation should be afforded every incentive to provide full and frank disclosure in marginal or arguable situations as to discoverability of documentary material, and I would infer from the material placed before me that Reckitt has afforded full and proper discovery of documents in the present litigation. Having given the matter some thought, I have reached the conclusion that the interests of justice and due administration require that the subject material of concern on Reckitt's part should fall outside the case for exclusion from my published reasons for judgment. In particular, I do not think that on balance, the subject matter of the internal communications has the tendency to inform SC Johnson of scientific data whereof SC Johnson's expert advisers were not already aware at least in sufficient outline. 9 Accordingly I will now publish my reasons for judgment delivered on 21 September 2004. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Conti. Associate: Dated: 1 October 2004 Counsel for the Applicant: C Dimitriadis Solicitor for the Applicant: Cowley Hearne Lawyers Counsel for the Respondent: S Fendekian Solicitor for the Respondent: Minter Ellison Date of Hearing: On the papers Date of Judgment: 1 October 2004