Casella Wines Pty Limited v Casa Barzana Pty Limited [2007] FCA 1585

Third Respondent

JUDGE: GRAHAM J

DATE: 31 AUGUST 2007

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 This is a complex copyright matter which is fixed for hearing before the Court commencing on Monday, 3 September 2007. It concerns a label used by an Australian wine producer, Casella Wines Pty Limited, which features a stylised kangaroo. My understanding is that the label is known as a 'yellow tail' label. 2 Proceedings for infringement of copyright in respect of the applicant's use of the label were settled in the United States. In these proceedings the applicant seeks damages from the respondents referable to the obligation which it says fell upon it to pay the money which was the subject of the settlement of the foreshadowed United States proceedings. I perceive that one of the issues on the hearing of the matter commencing next Monday will be the reasonableness of the settlement of the claims made against the applicant in the United States. 3 One of the deponents of affidavits for the applicant is an Alfred Zaher of Philadelphia, Pennsylvania in the United States of America, an attorney. He apparently made an affidavit on 1 August 2007 which was filed on 8 August 2007 which is said to have been sworn by him in front of a notary public and is referred to in the preamble to the affidavit as having been declared. In paragraph 7 of that affidavit he has said: '7. Between that time [referring to 16 September 2005] and November 2005, I had in conjunction with Pizzeys and Casella, developed a litigation strategy in order to deal with the issue of the Kanga Reserve label. In summary terms, my advice to Casella in connection with this issue was to pre-empt the first launch of the product, using either a formal demand letter, or litigation, or both, to avoid the position where Albertsons may have become "wedded" to the competing mark and logo, and entrenched by virtue of the expenditure of large amounts of money in promoting that competing mark and logo, in order to persuade Albertsons at an early stage to move to a different mark and logo which was non infringing.' 4 My understanding is that the Kanga Reserve label is not the label the subject of the proceedings which are due to commence on Monday. However, it was at a time when the applicant was pursuing possible claims in respect of a third party's 'Kanga Reserve label' that the proceedings which were settled in the United States were under consideration. Notwithstanding the reference made by Mr Zaher to the Kanga Reserve label dispute it is said by counsel for Casella that is has no relevance to the proceedings which are due to commence in Sydney on Monday. 5 On 28 August 2007, that is say last Tuesday, a Notice to Produce was served by the respondents on the applicant requiring the production before the Court at 10:00 am on Monday next of certain documents. 6 Order 33 rule 12 of the Federal Court Rules permits the service of Notices to Produce. Under that rule, a party who has been served with a relevant notice must comply without the need for any subpoena for production. The effect of a Notice to Produce is essentially the same as that of a subpoena served on a party. 7 The documents the production of which has been sought by the respondents at this late stage of the pre-trial part of the proceedings were identified in three paragraphs as follows: '1. All documents evidencing or recording the litigation strategy to deal with the issue of the Kanga Reserve label referred to in paragraph 7 of the affidavit of Alfred Zaher dated 13 July 2007 (Zaher affidavit). 2. All documents evidencing or recording communications between two or more of the Applicant, the Trade Mark Attorneys Pizzeys (referred to in paragraph 6 of the Zaher affidavit) and Woodcock Washburn LLP concerning the issue of the Kanga Reserve label. 3. A copy of the Kanga Reserve label.' 8 It is evident from a reading of the Notice to Produce that it is bad in its formulation at least in respect of the first two categories. I would not be disposed to allow a Notice to Produce to stand which required the production of documents which were qualified by the word 'evidencing', nor would I allow a Notice to Produce to stand which described the documents sought in the rather loose way that has been presently indicated. 9 In the course of discussion with the bench, counsel for the respondents have indicated that in lieu of paragraphs 1 and 2 what is really sought is: '1. All documents recording or referring to a litigation strategy of Alfred Zaher in respect of the Kanga Reserve label bearing date or brought into existence at any time between 16 September 2005 and 31 January 2006. 2. All letters, copies of letters, facsimiles, copies of facsimiles, emails, copies of emails passing between any two or more of the applicant, the Trade Mark Attorneys Pizzeys (referred to in paragraph 6 of the Zaher affidavit) and Woodcock Washburn LLP concerning the issue of the Kanga Reserve label.' 10 Had the Notice to Produce so described the documents sought in paragraphs 1 and 2, I would have been disposed to allow it. 11 Counsel for the applicant submits that the documents which, if it had them or had them within its custody, possession or power, it would be obliged to produce in response to the Notice to Produce would be the subject of claims for, as I understand it, legal professional privilege, and that that would constitute a ground of objection to the production of the documents to the Court. At this stage there has been no evidence provided to identify which documents, if any, would fall within the privileged category out of those that may be required to be produced. There would also of course be the issue as to whether or not in the light of the disclosure by Mr Zaher of his advice any relevant claim for legal professional privilege could be made in respect of any of the documents. 12 It is, in my respectful view, quite erroneous to suggest that the yardstick by which a valid Notice to Produce should be judged is relevance. As the learned President of the New South Wales Court of Appeal Moffat P said in Waind v Hill and National Employers' Mutual General Association Ltd (1978) 1 NSWLR 376 there are three steps to compliance with a subpoena. Firstly, there is the issue of production to the Court. Secondly, there is the issue of access being granted by the Court to the parties to the documents for the purpose of inspecting same and thirdly, the issue as to whether or not any document is if tendered admissible. Obviously admissibility will be determined by relevance but that does not mean that material which may not be of a character that it can be tendered should not properly be produced to the Court. 13 It was faintly suggested that the exercise involved in producing the documents called for would be oppressive. I would need to have evidence to satisfy me that that was the case had a proper Notice to Produce been served. 14 If the respondents chose to serve a fresh Notice to Produce calling for the production of documents along the lines indicated by counsel for the respondents in the course of his oral submissions, the question of any non-compliance with such a notice if served at this late stage before the commencement of the hearing would have to be judged by reference to the circumstances prevailing at the time when production of the documents was required. At the moment no such Notice to Produce has been served. 15 An application is presently before the court filed by the applicant seeking to have the Notice to Produce set aside. For the reasons which I have indicated I order that the Notice to Produce dated 28 August 2007 be set aside in respect of the requirements imposed by paragraphs 1 and 2 thereof. 16 In the light of observations which I have made it is a matter for the respondents to consider whether or not they choose to issue a fresh Notice to Produce seeking other documents and to formulate the terms in which they wish to express such a notice, and also it is a matter for the respondents to decide when they call for the production of the documents covered by it. Whether or not any proper grounds of objection are taken to the production of documents can be addressed if and when objection is taken at the relevant time for the production of documents assuming, of course, documents are capable of being produced. 17 I note that Mr Zaher's affidavit was filed, and I presume served, over three weeks ago and of course it is very late in the day that this Notice to Produce has been served. I think the relevant date is almost three weeks after Mr Zaher's affidavit came to hand. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.