Supreme Court New South Wales Medium Neutral Citation: Application by 24/7 Customer, Inc [2017] NSWSC 1609 Hearing dates: 22 November 2017 Date of orders: 23 November 2017 Decision date: 23 November 2017 Jurisdiction: Common Law Before: Schmidt J Decision: Orders made. Catchwords: EVIDENCE – Evidence on Commission Act 1995 – request from US Court – ex parte application – orders sought made Legislation Cited: Evidence on Commission Act 1995 (NSW) Uniform Civil Procedure Rules 2005 (NSW) Category: Procedural and other rulings Parties: 24/7 Customer, Inc (Plaintiff) Representation: Counsel: Dr RCA Higgins (Plaintiff) Solicitors: Corrs Chambers Westgarth (Plaintiff) File Number(s): 2017/352952 Publication restriction: Nil Judgment 1. By summons filed on 2 November 2017, 24/7 Customer, Inc sought ex-parte orders under the Evidence on Commission Act 1995 (NSW), to permit evidence on oath to be obtained in this State, from Ms Parkin, a former employee of Singtel Optus Pty Ltd, pursuant to a request issued on 31 October 2017, by the Hon. Kandis A. Westmore, who is a US Magistrate Judge of the United States District Court for the Northern District of California, United States of America. The request was directed to the Central Authority of the requested State, identified to be the Private International Law Section of the Attorney General's Department of the Australian Government. 2. The application was supported by an affidavit sworn by the company's Australian solicitor, Mr Pagent, to which was annexed the request and other relevant documents, including pleadings in the US proceedings. 3. The evidence establishes that the Company is a defendant in the proceedings brought in the US Court by Live Person Inc, a competitor. In issue in the proceedings, which the Company defends, are claims of misappropriation or infringement of intellectual property; breach of contract; unlawful conduct; and wrongful interference in contractual relations. These claims are directed to the circumstances in which Optus, a former customer of Live Person, Inc, became a customer of the Company. 4. Ms Parkin was at the relevant time Optus' Director of Digital Service. Documents produced in the US proceedings indicate that she was then in communication with both companies. The matters she is sought to be examined about, as a result, are identified in the US Court's request. 5. There is evidence that Ms Parkin, with whom Mr Pagent communicated in November 2017 about this application, has since notified Optus of the application, but it did not seek to appear at the hearing of the application. The Company also proposes to notify Optus that the examination of Ms Parkin is to proceed under the Court's orders. 6. It is ss 32 and 33 of the Evidence on Commission Act which govern the application. They relevantly provide: "32 Application to the Supreme Court for assistance in obtaining evidence for proceedings in other court (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 requesting court or whose institution before that court is contemplated. … 33 Power of the Supreme Court to give effect to application for assistance (1) The Supreme Court has power, if an application is made under section 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) An order under this section may require a specified person to take such steps as the Court may consider appropriate for that purpose. (3) Without limiting the generality of subsections (1) and (2), an order under this section may, in particular, make provision as follows: (a) for the examination of witnesses, either orally or in writing, … (4) An order under this section is not to require any particular steps to be taken unless they are steps that can be required to be taken by way of obtaining evidence for the purposes of proceedings in the Supreme Court (whether or not proceedings of the same description as those to which the application for the order relates). (5) Subsection (4) does not preclude the making of an order requiring a person to give testimony (either orally or in writing) otherwise than on oath if this is asked for by the requesting court. (6) … (7) A person who, because of an order under this section, is required to attend at any place is entitled to similar conduct money and payment for expenses and loss of time on attendance as is a witness in proceedings before the Supreme Court." 1. Part 52 of the Uniform Civil Procedure Rules 2005 (NSW) also governs this application, relevantly providing in r 52.1: "52.1 Procedure (1) Proceedings for an order under section 33 of the Evidence on Commission Act 1995 in relation to a matter pending before a requesting court may be commenced in the Supreme Court: (a) by a person nominated for that purpose by the requesting court, or (b) if no person is so nominated, by the Attorney General. (2) In proceedings for such an order, no person is required to be joined as a defendant. (3) If proceedings for such an order have been commenced in relation to a matter pending before a requesting court, any other application for such an order in relation to the same matter is to be made by notice of motion in the proceedings. (4) Rules 52.2-52.5 have effect unless the Supreme Court otherwise orders." 1. On the evidence, I am satisfied that these statutory requirements have been met. 2. The request of the US Court in respect of which the orders sought are pursued, is in evidence: s 32(1)(a). It identifies the proceedings to be "Live Person, Inc v 24/7 Customer, Inc, Number 3:17-cv-01268-JST" in the United States District Court for the Northern District of California. It also identifies the names and addresses of the parties and their representatives; the nature of the proceedings; provides a summary of the complaint advanced and the defence pursued; explains how the evidence about Optus relates to what is in issue; and identifies the subject matters about which Ms Parkin is to be examined. This, I consider, satisfies the requirements of s 33(1)(b). 3. The request also specifies that it is oral testimony to be given under oath or affirmation and recorded by identified means, which is sought to be obtained from Ms Parkin at the trial due to proceed in 2018 before the US court in February 2018. 4. A deadline to close the collection of Ms Parkin's evidence has been specified in the request to be 11 December 2017, or as soon as practicable thereafter. 5. Arrangements have been made for Gleeson SC and Sheahan SC to preside over the examination of Ms Parkin, fixed to be undertaken from 11 to 15 December 2017. 6. It is proposed that Ms Parkin's testimony will then be given, to the extent compatible with Australian law, under the United States Federal Rules of Civil procedure, which involves her being examined by counsel for both parties. The requirement specified is that she testifies under oath or affirmation to provide complete and truthful testimony pursuant to United States Federal Rule of Evidence 603. Provision is also made in relation to the designation of evidence, as to specified levels of confidentiality. 7. The orders sought reflect these aspects of the request and, I am also satisfied, make appropriate provision for the Company to obtain the requested evidence in this State, in order to give effect to the request: s 33. I am also satisfied that what is proposed are steps that can be required to be taken by way of obtaining evidence for the purposes of proceedings in this Court: s 33(4). 8. The orders also make appropriate provision in respect of Ms Parkin's conduct money: s 33(7). 9. The request also identified Mr Pagent as the person to whom the executed request was to be returned. It is he who brought the proceedings on the Company's behalf and is the solicitor on the record. That satisfied the requirement of Rule 52.1. 10. In the result I am satisfied that the Court must give effect to the US Court's request. Orders 1. For these reasons, I make the orders sought in the summons which were pressed at the hearing, as follows: "Examination of Elizabeth Ann Parkin 3 Pursuant to ss 32(1) and 33(1) and (3)(a) of the Evidence on Commission Act 1995 (NSW) (the Act), that evidence be obtained in this State, from Ms Elizabeth Ann Parkin, in pursuance of the request issued by the United States District Court for the Northern District of California, United States of America dated 31 October 2017 (the Request) for use in proceedings before that court (the US Proceedings). 4 Pursuant to s 33(1), (2) and (3)(a) of the Act, that a Senior Counsel be appointed to administer and conduct the examination of Ms Parkin pursuant to and in accordance with the Examination Request. 5 Pursuant to s 33(3)(a) of the Act, that the plaintiff, in consultation with the defendants in the US Proceedings, have liberty to apply to the Senior Counsel appointed under order 4, for the allocation of a time, date and place for the commencement of the examination of Ms Parkin, such date being on 11 December 2017 or as soon as practicable thereafter. 6 Pursuant to s 33(1) of the Act, that the plaintiff, the defendant in the US Proceeding and Ms Parkin are each be entitled to be legally represented at the examination of Ms Parkin at their own cost (including, without limitation, the appearance of one or more attorneys from the United States of America), and to ask questions of Ms Parkin. 7 Pursuant to ss 33(1), (2) and (3) of the Act, that the examination of Ms Parkin is to: (a) commence on the date fixed by the Senior Counsel appointed under order 4 above and continue thereafter from day to day until complete, at such places and times as the Senior Counsel may direct; (b) be conducted under oath, in camera and orally by question and answer; (c) be digitally video recorded on a digital disk (DVD) and transcribed by a court reporter to be engaged by the plaintiff or its legal representatives. 8 Pursuant to ss 33(1) and (3) of the Act, that: (a) the DVDs and transcripts referred to in order 7 above, together with any documents tendered or marked for identification, be signed and certified as correct and authenticated by the Senior Counsel (Examination Material); and (b) true copies of the Examination Material be made available to the plaintiff's legal representatives in Australia and to those persons identified in order 6 above. 9 Pursuant to s 33(7) of the Act, that the plaintiff pay the costs and expenses of the examinations including: (a) the expense of the Senior Counsel; (b) the preparation, copying and certification of the DVDs, transcripts and documents referred to in order 7 above; and (c) subject to order 6 above, any amount otherwise reasonably payable to Ms Parkin. Transmission of Examination Material to the United States of America 10 Pursuant to ss 33(1) and (3) of the Act, that a true copy of the Examination Material is to be: (a) forwarded by the Principal Registrar, under seal of this Honourable Court, to: The Honourable Kandis A. Westmore United States Magistrate Judge The United Stated District Court for the Northern District of California Oakland Courthouse 1301 Clay Street Oakland, California 94612 United States of America (b) made available to the plaintiff's legal representatives in Australia. Use of the Examination Material 11 Pursuant to ss 33(1) of the Act, that subject to further order of this Court, the plaintiff is not to make any use of the Examination Material (or portion thereof) other than in accordance with order 12 below, or to tender the same in the US Proceeding, unless required to produce or disclose those materials to another person under compulsion of law. 12 Pursuant to ss 33(1) of the Act, that subject to further order of this Court or order of the United States District Court for the Northern District of California, the plaintiff may disclose the Examination Material to the other parties to the US Proceedings, provided: (a) the plaintiff obtains from each receiving party an undertaking that they will not make any use of that material, other than to tender the same in the US Proceeding, (unless required to produce or disclose the materials to another person under compulsion of law); and (b) if the plaintiff is unable to obtain such an undertaking from the other parties to the US Proceedings by consent, the plaintiff to apply to the United States District Court for the Northern District of California for orders limiting the use of those materials in terms contemplated by paragraph 12a above." ********** Amendments 07 December 2017 - Counsel's name corrected 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: 07 December 2017