State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2019] FCA 1464

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2019] FCA 1464

Special circumstances justified release only for category 1 documents because those communications with the artist or her attorney had high relevance and utility for the US proceeding, particularly depositions, may not be adequately obtainable through the artist's discovery, confidentiality could be protected by a US protective order, and the respondents identified no significant relevant prejudice. Although category 2 and category 3 documents were relevant and could have a legitimate forensic purpose, SSGA had not demonstrated sufficient need for their release at this stage, and the interests of justice in the Australian proceeding and the parties before the Court were to be given primacy.

Jurisdiction
Australia
Judgment Date
05 September 2019
Procedural Posture
Practice and Procedure Application in an Intellectual Property Proceeding Concerning Trade Mark Infringement, Copyright Infringement and Related Claims / Interlocutory Application for Release From Implied Harman Undertaking
Outcome
Application granted in part.
Legal Topics
['implied Harman Undertaking' 'special Circumstances' 'use of Discovered Documents in Foreign Proceeding' 'confidentiality' 'discovery' 'subpoena' 'fearless Girl']
['practice and Procedure' 'intellectual Property' 'trade Marks' 'copyright' 'australian Consumer Law'] ['implied Harman Undertaking' 'special Circumstances' 'use of Discovered Documents in Foreign Proceeding' 'confidentiality' 'discovery' 'subpoena' 'fearless Girl']

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Procedural Posture

Practice and Procedure Application in an Intellectual Property Proceeding Concerning Trade Mark Infringement, Copyright Infringement and Related Claims / Interlocutory Application for Release From Implied Harman Undertaking

Legal Issues

  1. 1 ['Whether the first applicant and its external legal representatives should be released from their implied Harman undertaking to use documents produced in the Australian proceeding for the purposes of the US proceeding against the artist.' 'Whether special circumstances justified release of category 1, category 2 and category 3 documents.' 'Whether the relevance and forensic utility of the documents in the US proceeding justified modifying the undertaking.' 'Whether confidentiality concerns, timing, and prejudice to the respondents weighed against release.']

Ratio Decidendi

Special circumstances justified release only for category 1 documents because those communications with the artist or her attorney had high relevance and utility for the US proceeding, particularly depositions, may not be adequately obtainable through the artist's discovery, confidentiality could be protected by a US protective order, and the respondents identified no significant relevant prejudice. Although category 2 and category 3 documents were relevant and could have a legitimate forensic purpose, SSGA had not demonstrated sufficient need for their release at this stage, and the interests of justice in the Australian proceeding and the parties before the Court were to be given primacy.

Court Disposition

Application granted in part.

Orders

  • ["The first applicant and its external legal representatives be released from their respective obligations to use for the purposes of this proceeding only the documents reproduced in confidential exhibit MJW-8 to the fifth affidavit of Michael John Williams sworn 5 August 2019 and confidential exhibit MJW-11 to the...