Supreme Court New South Wales Medium Neutral Citation: Jonathan Paul Eyewear, Inc [2015] NSWSC 134 Hearing dates: 24 February 2015 Date of orders: 27 February 2015 Decision date: 02 March 2015 Jurisdiction: Common Law Before: Hall J Decision: Leave granted pursuant to s 32 Evidence on Commission Act 1995 to issue a Subpoena to Attend to Give Evidence and Produce Legislation Cited: Evidence on Commission Act 1995 (NSW) Category: Procedural and other rulings Parties: Jonathan Paul Eyewear, Inc (Plaintiff, ex parte) Representation: Counsel: L Merrick (Plaintiff) Solicitors: Corrs Chambers Westgarth (Plaintiff) File Number(s): 2015/41849 Judgment 1. The plaintiff, Jonathan Paul Eyewear, Inc, by way of summons filed on 10 February 20156 makes application, pursuant to a letter of request issued by the County Court of Texas for a number of orders, including orders for production of documents by a resident of New South Wales and an order for his examination. 2. The summons is supported by the affidavit evidence of Robert Kleinman, attorney in practice in the United States who has had the care and conduct of the proceedings on behalf of the plaintiff. The affidavit of Mr Kleinman was sworn 29 January 2015. 3. In addition, the plaintiff relies upon the affidavit of Stephen Marcus Stern sworn 28 January 2015. Mr Stern is a partner of Corrs Chambers Westgarth and has the care and conduct of the proceedings in Australia on behalf of the plaintiff. Mr Stern's affidavit is made in support of the application pursuant to rule 52.1 of the Uniform Civil Procedure Rules 2005 and s 32 of the Evidence on Commission Act 1995 (NSW) for orders that evidence be taken on commission from three specified persons. 4. At the hearing of the application Mr Merrick of counsel who appeared on behalf of the plaintiff stated that, on his instructions he was only pressing for an examination and for production of documents from Mr Mark Cushway being one of three persons specified by Mr Kleinman in paragraph [3] of his affidavit: T 24 February 2015 at p 4:30-35. Evidence on the Application 1. Mr Kleinman stated in his affidavit that the application is made in pursuance of a request issued by on behalf of a court exercising jurisdiction in the place outside the State. 2. On or about 21 January 2015, a Letter of Request was filed in the County Court, Travis County, Texas. The Letter of Request designated, as the Competent Authority, the Registrar of the Supreme Court of New South Wales. 3. A copy of the Letter of Request was annexed to Mr Kleinman's affidavit (Annexure "A"). It identifies the "Sender" as County Court at Law No. 1, Travis County, Texas. That Court is identified in paragraph 5(a) of the letter as the Requesting Judicial Authority. 4. In paragraph 5(c) of the letter, the case is named as between the plaintiff, Jonathan Paul Eyewear Inc and the defendant, Live Eyewear Inc. 5. In paragraph 7(a) of the letter the nature of the proceedings is identified as "breach of contract". 6. Paragraph 7.(b) of the letter, Summary of Complaint, refers to an annexure that summarises the complaint, the defence and counterclaim. 7. The Summary of Complaint annexure identifies the background matters to the case. It records that the plaintiff and defendant entered into a Settlement Agreement on 4 January 2014 which contained a confidentiality clause precluding the parties from disclosing the agreement or its contents without written consent of the parties. The Settlement Agreement also contained an anti-disparagement clause. 8. The Summary of Complaint states that the plaintiff alleges that the defendant's President, Kieran Hardy, disclosed the contents of the Settlement Agreement and made disparaging statements regarding the plaintiff and the plaintiff's CEO/President in an email dated 27 January 2014 to a third party, namely, John Groppoli. The Summary of Complaint states that the contents of that email of that date were somehow transmitted to a reporter for the Australian Optical Journal, Mivision, and these were then contained in an article dated 2 March 2014 entitled "Final Episode for Fitovers Trademark Saga" that is said to have been published by Mivision on the internet and in hardcopy form. 9. Paragraph 7(c) of the annexure to the Letter of Request contains a Summary of Defence and Counterclaim which sets out particulars as to the defence relied upon. 10. Paragraph 8(a) of the Letter of Request and the annexure provides details of the evidence to be obtained on oral examination, in particular, of Mark Cushway (taken pursuant to the Texas Rules of Civil Procedure) as to the following subject matter or matters: "a. The source(s) of the information that formed the basis of the Article, which was published on the internet and in hardcopy form by the Australian optical journal Mivision; b. The source(s) of the statements that appear in the Article attributed to Kieran Hardy; and c. information concerning where and how the Article was published and the readership of the Mivision journal." 1. In addition, particulars are set out in the annexure to the letter of request as to certain documents for which production would be sought. The documents listed comprise emails, communications between specified persons and notes of discussions as particularised in paragraphs 2(a), 2(b) and 2(c) of the response to paragraph 8(a) in the annexure to the Letter of Request. 2. Paragraph 10 of the Letter of Request identifies, by reference to the attached annexure, the subject matters upon which, amongst others, Mr 3. Mark Cushway is sought to be orally examined. 4. Paragraph 11 of the Letter of Request specifies documents and other property to be inspected. 5. On the hearing of the application, Mr Merrick referred to other material annexed to Mr Kleinman's affidavit including Confidential Annexure B, the Settlement Agreement. 6. Mr Kleinman stated in his affidavit at paragraph 6 that on 3 March 2014, he became aware that an article entitled "Final Episode for Fitovers Trademark Saga" had been published on 2 March 2014 on the internet and in hardcopy form in the Australian optical publication, Mivision. Mr Kleinman stated that the Article contained a number of statements about the substance and nature of the litigation, the Settlement Agreement and the plaintiff corporation and its President, Paul Stables. 7. Mr Kleinman also stated that as result of the "statements" referred to in paragraph 6 of his affidavit a proceeding was commenced in the County Court, Travis County, Texas, for breach of clauses 6.4, 6.5 and 6.6 of the Settlement Agreement. 8. Mr Merrick referred to further material annexed to Mr Kleinman's affidavit, including annexures E to K which include a series of interrogatories and requests for particulars issued in the Texas proceedings. Reference was made to emails attached to Mr Kleinman's affidavit relevant to the question of the content of the Mivision Article and its source or sources or origin. One such email dated 28 January 2014 was copied to Mr Cushway. Other material annexed to Mr Kleinman's affidavit, including a copy of an email from Mr John Groppoli to Mr Mark Cushway dated 28 January 2014, was said to be part of what was referred to as the 'chain' of emails involving the alleged transmission of information from Mr Hardy to Mivision. 9. Mr Stern in his affidavit sworn 28 January 2015 referred to inquiries and efforts made by his firm to obtain evidence voluntarily. It is unnecessary here to set out the detail of such inquiries other than to refer to the fact that at paragraphs 8-13 inclusive Mr Stern sets out details of emails and other communications that took place with Mr Cushway. 10. Based on Mr Stern's evidence, efforts to obtain evidence voluntary from Mr Cushway have been unsuccessful. The Statutory Provisions 1. The Evidence on Commission Act is an Act, inter alia, in relation to the taking of evidence in the State of New South Wales for the purposes of proceedings outside the State. 2. The relevant provisions are contained in Part 4, entitled Taking of evidence for foreign and Australian Courts. 3. Section 31 sets out relevant definitions. It is clear that the proceedings in the County Court, Travis County, Texas, are "proceedings" within the meaning of s 31. 4. Section 32 of the Act, entitled Application to the Supreme Court for assistance in obtaining evidence for proceedings in other courts, is in the following terms: "32(1) The following provisions of this Part apply if an application is made to the Supreme Court for an order for evidence to be obtained in the State and the court is satisfied: (a) that the application is made in pursuance of a request issued by or on behalf of a court or tribunal exercising jurisdiction in a place outside the State, and (b) that the evidence to which the application relates is to be obtained for the purposes of proceedings which either have been instituted before the request in court or whose institution before that court is contemplated. (2) This Part does not apply in respect of proceedings relating to the commission of an offence or an alleged offence unless the requesting court is a court of a place in Australia or of New Zealand." 1. Under s 33 of the Act the Supreme Court has the power, if an application is made under s 32, by order to make such provision for obtaining evidence in the State as may appear to the court to be appropriate for the purpose of giving effect to the request in pursuance of which the application is made. 2. Under s 33(2) an order under s 33 may require a specified person to take such steps as the court may consider appropriate for that purpose. 3. Subsections 33(3)(a) and (b) provides that an order made under that section may make provisions "(a) for the examination of witnesses, either orally or in writing, (b) for the production of documents." Consideration 1. The affidavit evidence in support of the summons to which I have referred above provides the basis upon which I am satisfied that the requirements of s 32(1)(a) and (b) have been met. 2. On that basis, it is necessary to consider the nature and form of the orders sought in the application made by the plaintiff under s 32 for the obtaining of evidence in this State from Mr Mark Cushway by way of giving effect to the request to which the application relates. 3. On the hearing of the application, Mr Merrick produced a draft "Order" which set out the terms of the orders sought to be made by this Court. 4. Mr Merrick also produced a draft of the subpoena sought to be issued and served on Mr Cushway. 5. In summary, the orders sought, if made, provide for a subpoena to be issued to Mr Cushway, for arrangements to be implemented necessary to conduct the proposed examination of Mr Cushway before Mr Potts, a member of the New South Wales Bar, and that examination of him would take place in accordance with the usual protocols at the offices of Corrs Chambers Westgarth, Sydney. 6. Mr Merrick noted: "... what's proposed in the interests of making this efficient and cost effective, the US attorneys for both sides will participate, I imagine by video, and conduct the questioning of the witness with Mr Potts performing the role of examiner. But what's contemplated is before that occurs, so examination can be conducted efficiently, the limited amount of production of documents sought should occur, and the examination can be conducted calling, where necessary, on those documents." T 24 February 2015 at 5:15-25. 1. Mr Merrick advised that those instructing him had made enquiries as to the availability of the US attorneys and it is on that basis that the 31 March 2015 has been chosen as the date for the examination: T 24 February 2015 at 5: 30-35. 2. On 27 February 2015 I made orders as follows with reasons to follow: Orders 1. Leave be granted to issue a subpoena to attend to give evidence and produce addressed to Mark Cushway (Witness) in the form annexed to this order (Subpoena to Attend to Give Evidence and Produce). 2. Direct that a sealed copy of these orders be served on the Witness concurrently with service of the Subpoena to Attend to Give Evidence and Produce no later than 3 March 2015. Orders for oral examination 1. Jason Potts of the New South Wales Bar (Examiner) be appointed as examiner pursuant to r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW) (UCPRs). 2. (4) Direct that the Plaintiff comply with r 24.7 of the UCPRs. (5) The Examiner conduct the examination at the offices of Corrs Chambers Westgarth (Corrs), Level 17, 8 Chifley, 8-12 Chifley Square, Sydney, at a convenient time, but no later than 31 March 2015. (6) At the examination, oral examination (including cross-examination and re­examination, either in person or by videoconference) of the Witness be permitted to be conducted by the US counsel for the parties in CAUSE NO. C-1-CV-14-002159 Jonathan Paul Eyewear, Inc. - Plaintiff v. Live Eyewear, Inc. pending before County Court at Law No. 1, Travis County, Texas, United States of America (US Proceeding) on the following subject matter: 1. the source(s) of the information that formed the basis of the article titled "Final Episode for Fitovers Trademark Saga" dated 2 March 2014 (Article), which was published on the internet and in hardcopy form by the Australian optical journal Mivision; 2. the source(s) of the statements that appear in the Article attributed to Kieran Hardy; and 3. information concerning where and how the Article was published and the readership of the Mivision journal. 1. The examination be conducted in accordance with 24.9 of the UCPRs. 2. The Witness be sworn or affirmed before evidence is taken. 3. The Examiner cause: 1. the evidence of the Witness to be transcribed in writing (the Transcript) and videorecorded (the Video-Recording); and 2. such documents or other articles produced and identified during the Examination to be marked and attested as exhibits (the Exhibits). 1. The Examiner forward the Transcript, the Video-Recording and the Exhibits to the Registrar pursuant to r 52.4 of the UCPRs. 2. The Registrar comply with r 52.5 of the UCPRs by delivering the certificate and annexures to the Plaintiff for provision to the County Court at Law No. 1, Travis County, Texas, United States of America. 3. Advance notice of the examination be given by the Examiner to: 1. Requesting Court County Court at Law No. 1, Travis County, Texas, United States of America 1. Attorneys for the Plaintiff in the United States proceeding John W. Thomas, George, Brothers, Kincaid & Horton, LLP, 114 West 7th Street, Suite 1100, Austin, Texas 78701, United States of America 1. Attorneys for the Defendant in the United States proceeding William M. Parrish & John D. Saba, Jr., Dinovo, Price, Ellwanger & Hardy 7000 North MoPac Expressway, Suite 350, Austin, Texas 78701 United States of America 1. Local counsel for the Plaintiff Stephen Stern, Corrs Chambers Westgarth, Level 36, 600 Bourke Street, Melbourne, VIC 3000, Australia 1. Local counsel for the Witness Kate Haddock, Banki Haddock Fiora, Level 10, 179 Elizabeth Street, Sydney, NSW 2000, Australia Orders for production of documents 1. In respect of any document produced pursuant to the Subpoena to Attend to Give Evidence and Produce which access is granted (the Documents), a Corrs solicitor be at liberty to access, inspect and take copies of the Documents produced to the Court and to provide copies of the Documents to Mr Stephen Stern of Corrs for forwarding to the US counsel for the Plaintiff in the US Proceeding. Confidentiality 1. All documents annexed or exhibited to affidavits and any other document as may be produced or filed by the Plaintiff during the course of this proceeding and claimed by the Plaintiff to be confidential be prominently marked "CONFIDENTIAL" and treated in accordance with the procedure set out in Order 15. 2. The Plaintiff must not disclose or allow to be disclosed any such document marked "CONFIDENTIAL" or its contents or substance or any copies or extracts thereof to any other person other than: 1. the Examiner; 2. the Plaintiff and its legal representatives; and 3. the Witness and his legal representatives. ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 06 March 2015