Taylor v Killer Queen, LLC (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 25 June 2021
• Neutral Citation: [2021] FCA 680
• Court: Federal Court
• Date: 25 June 2021

Federal Court of Australia

Taylor v Killer Queen, LLC (No 2) [2021] FCA 680

File number(s):	NSD 1774 of 2019
Judgment of:	CHEESEMAN J
Date of judgment:	25 June 2021
Catchwords:	PRACTICE AND PROCEDURE – application for discovery of documents – objection to production of documents on the basis of legal advice privilege and litigation privilege – Alternatively object to production of documents on the basis of statutory privilege of patent and trade mark attorney advice privilege – whether the Respondents have waived privilege by either express or implied waiver – Held : all documents save for those over which waiver has been conceded are privileged by reason of advice or litigation privilege and / or trade mark attorney advice privilege
Legislation:	Patents Act 1990 (Cth), s 200 Trade Marks Act 1995 (Cth), s 229
Cases cited:	Archer Capital 4A Pty Ltd as trustee for the Archer Capital Trust 4A v Sage Group plc (No 2) [2013] FCA 1098 Cantor v Audi Australia Pty Ltd [2016] FCA 1391 Col Crawford Pty Ltd v Nissan Motor Co (Australia) Pty Ltd [2020] NSWSC 87 Commissioner of Australian Federal Police v Propend Finance Pty Ltd [1997] HCA 3;(1997) 188 CLR 501 Commissioner of Taxation v Rio Tinto Ltd [2006] FCAFC 86; (2006) 151 FCR 341 Council of the NSW Bar Association v Archer [2008] NSWCA 164;(2008) 72 NSWLR 236 DSE (Holdings) Pty Ltd v Intertan Inc [2003] FCA 384;(2003) 127 FCR 499 Eli Lily and Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850; (2004) 137 FCR 573 Esso Australia Resources Limited v Commissioner of Taxation [1999] HCA 67;(1999) 201 CLR 49 Ferella v Official Trustee in Bankruptcy[2010] FCA 766; (2010) 188 FCR 68 Grant v Downs [1976] HCA 63;(1976) 135 CLR 674 GR Capital Group Pty Ltd v Xinfeng Australia International Investment Pty Ltd[2020] NSWCA 266 Hastie Group Ltd (in liq) v Moore [2016] NSWCA 305 Kennedy v Wallace [2004] FCAFC 337; (2004) 142 FCR 185 Kenquist Nominees Pty Ltd v Campbell (No 5) [2018] FCA 853 Macquarie Bank Limited v Arup Pty Limited [2016] FCAFC 117 Mann v Carnell[1999] HCA 66; (1999) 201 CLR 1 New South Wales v Betfair Pty Ltd [2009] FCAFC 160;(2009) 180 FCR 543 Osland v Secretary to the Department of Justice [2008] HCA 37;(2008) 234 CLR 275 Wheeler v Le Marchant [1881] 17 Ch D 675
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	59
Date of last submissions:	7 May 2021
Date of hearing:	11 May 2021
Counsel for the Applicant:	R Cobden SC with R Clark
Solicitor for the Applicant:	Silberstein & Associates
Counsel for the Respondents:	M J Darke SC with E Bathurst
Solicitor for the Respondents:	Corrs Chambers Westgarth

ORDERS

		NSD 1774 of 2019
BETWEEN:	KATIE JANE TAYLOR Applicant
AND:	KILLER QUEEN, LLC First Respondent ; KATHERYN ELIZABETH HUDSON Second Respondent ; KITTY PURRY, INC (and another named in the Schedule) Third Respondent
AND BETWEEN:	KILLER QUEEN, LLC (and another named in the Schedule) First Cross-Claimant
AND:	KATIE JANE TAYLOR Cross-Respondent

order made by:	CHEESEMAN J
DATE OF ORDER:	25 June 2021

THE COURT ORDERS THAT:

1. The Applicant’s Interlocutory Application filed on 15 April 2021 is dismissed.

2. Subject to Order 3, the Applicant pay the Respondents’ costs of the Interlocutory Application filed 15 April 2021.

3. The parties are granted leave to apply for a different costs order to that in Order 2 by filing submissions (of no more than 3 pages) in support of the costs order they seek within 7 days of these orders, in which event any party opposing such different costs order is to file submissions (of no more than 3 pages) in support of such opposition within 7 days thereafter.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

CHEESEMAN J:

1. By interlocutory application filed on 15 April 2021 the Applicant and Cross-Respondent (Applicant) seeks orders that certain documents discovered by the Respondents and Cross-Claimants (Respondents) over which privilege is claimed be produced to the Applicant. The Applicant challenges the claims for privilege over the documents and contends that, if the documents are privileged, the Respondents have waived privilege. The Applicant asserts that privilege has been waived by express waiver or by implied, or issue, waiver.

2. The Respondents resist an order requiring them to produce the discovered documents on the basis that discovery of the documents would reveal communications which are subject to privilege in circumstances where privilege has not been waived. The Respondents rely on advice privilege and litigation privilege at common law and on the statutory privilege of patent and trade mark attorney advice privilege (TMAP).

3. The Applicant tendered a bundle of documents. The Respondents read the affidavit of their solicitor, Odette Gourley, sworn 23 April 2021 and tendered exhibit OMG-1, which was subject to orders in respect of confidentiality. An annexure to Ms Gourley’s affidavit was an affidavit of Mr Steven Jensen of 30 July 2020. Mr Jensen’s affidavit was tendered in evidence on the Interlocutory Application without prejudice to any objections that may be taken in the substantive proceedings.

4. The Respondents provided the Court with a confidential bundle of the documents which are the subject of the dispute. The parties agreed that the Court, constituted by a judge other than the docket judge, may inspect the documents for the purposes of determining the Interlocutory Application.

BackgroundThe Substantive Proceedings

5. The Applicant, Ms Taylor, is a clothing designer who has traded clothing under the trade mark KATIE PERRY in Australia since about November 2006. She owns Australian Registered Trade Mark 1264761 for the word KATIE PERRY in class 25 for “clothes”, with the priority date of 29 September 2008 (the Applicant’sMark).

6. The Second Respondent, Ms Hudson, is a recording artist/performer who, at some point before approximately 2007, adopted the name “Katy Perry” for the purposes of her professional musical career and associated commercial merchandise licensing activities. The date from which, and the extent to which, the Second Respondent has a reputation under her performing name in Australia is in issue. The First,...