Australia: Pop Singer Katy Perry Successfully Defends Interlocutory Application For Access To Privileged Documents

Pop singer Katy Perry has successfully defended an application in the Federal Court of Australia, filed by Australian clothing designer Katie Taylor, which sought access to certain documents over which Ms Perry and her associated companies claimed privilege.  The documents related to advice given to Ms Perry in relation to a trade mark application filed by Ms Taylor in 2009 and which Ms Perry sought to oppose.  The interlocutory application was filed as part of a trade mark dispute filed by Ms Taylor in which she alleges that Ms Perry and associated companies (the Respondents) infringed her Australian registered trade mark for KATIE PERRY by using the mark KATY PERRY on clothes in Australia.

Background to the trade mark infringement claim

Ms Taylor has traded under the name KATIE PERRY in Australia since November 2006.  Her KATIE PERRY trade mark has been registered in class 25 for “clothes” since 29 September 2008.  Ms Perry (born Katheryn Hudson) is a recording artist and performer who adopted the name Katy Perry for the purposes of her musical career sometime before around 2007.  The Respondents are defending the trade mark infringement claim and have cross-claimed to remove Ms Taylor's trade mark from the Register.

At the time Ms Taylor sought registration of her trade mark, the parties entered into discussions which were precipitated by Ms Perry seeking an extension of time to oppose the registration of Ms Taylor's trade mark after the formal window for opposition had closed.  During these discussions, Ms Taylor posted a YouTube video, in June 2009, in which she requested that Ms Perry “leave me to carry on my dream” and communicated that she was no threat to Ms Perry.  In a July 2009 blog post, Ms Taylor also expressed a wish for a positive end to the dispute and formally invited Ms Perry to visit her studio in Australia. No formal settlement documents were signed between the parties, but Ms Perry withdrew her extension of time request to oppose Ms Taylor's trade mark and filed a mark in her own name for KATY PERRY, which (after Ms Taylor's mark was cited against it) was amended to remove the “apparel” class of goods and then proceeded to registration.

A few years after registering her trade mark, in 2013, Ms Taylor was interviewed on Sydney radio and (Ms Perry and her companies allege) she acknowledged her awareness of Ms Perry and said that members of the public had been confused as to an association between her business and Ms Perry but that the confusion was commercially beneficial to her.

Ms Taylor commenced the trade mark infringement proceedings in October 2019.

Documents over which privilege was claimed

As part of the trade mark infringement dispute, the court made orders for discovery by category and the Respondents produced a list of discoverable documents, which included certain documents over which the Respondents claimed privilege (some of which were partially redacted for privilege).  Those documents:

• fell within a discovery category which (broadly) sought documents relating to any risk Ms Perry associated with Ms Taylor's application to register the KATIE PERRY trade mark or the registration of that mark; Ms Perry's decision to withdraw her application for an extension of time; and her decision to amend her own trade mark application to remove the “apparel” class; and
• were all confidential communications between Australian or foreign lawyers and/or Australian registered patent/trade mark attorneys; and
• (all but two) comprised print outs of chains of email correspondence.

Privilege and waiver principles

As the interlocutory application related to pre-trial disclosure and inspection (rather than the adducing of evidence at trial), the Court was concerned with the common law principles of privilege and waiver rather than those under the Evidence Act 1995 (Cth).  Common law privilege applied either because the communications concerned Australian or foreign lawyers or by application of the Trade Marks Act 1995  (Cth) and the Patents Act 1990 (Cth) which both extend common law privilege to communications involving Australian registered patent/trade mark attorneys.

Ms Perry claimed that the relevant documents attracted legal advice, trade mark attorney and/or litigation privilege.

The Court's decision provides a useful summary of privilege principles, including that:

• Privilege involves a “careful balance between competing public interests – namely the disclosure of all available and relevant information and the public administration in maintaining confidentiality in communications which assist and advance the administration of justice by encouraging and supporting the obtaining of legal advice and assistance”.
• To achieve the right balance, the Court must protect confidential communications made for the dominant purpose of giving or obtaining legal advice or the provision of legal services.
• The “dominant” purpose is the “prevailing or paramount purpose or one which predominates over other purposes”.
• A communication's purpose is a question of fact and is assessed at the time the communication was made.
• A dominant purpose may be established by “focused and specific evidence” or other material and circumstances.
• Confidential communications with legal advisors will not attract privilege unless there is the requisite purpose associated with obtaining or giving legal advice (for example, advice which relates to purely commercial or public-relations matters may not be covered, but in circumstances where a lawyer is retained to provide advice in relation to a particular transaction, communications relating to that transaction will prima facie be privileged even if they do not contain advice on matters of law).

In assessing an email chain, the most recent email (the lead email) is considered to be the principal communication and is the document for which the dominant purpose must be ascertained.  The subsequent chain of emails in an email chain may also be considered to be privileged if the emails were forwarded to, or sent by, a lawyer for the dominant purpose of obtaining legal advice (even if the earlier emails were not themselves privileged communications).

In relation to waiver:

• A person entitled to claim privilege may waive that privilege.
• A waiver will occur where the holder of the privilege engages in conduct which is inconsistent with the maintenance of that privilege.
• Privilege may be waived where “the privilege holder directly or indirectly puts the contents of an otherwise privileged communication in issue, makes an assertion (express or implied) which is either about the contents of the confidential communication or lays them open to scrutiny such that an inconsistency arises between the act and the maintenance of the confidence” (at [31]).
• For example, an inconsistency may arise if the privilege holder makes assertions about their state of mind and there are confidential communications that are likely to have affected that state of mind or which gave rise to the formation of that state of mind (at [32]).

Did privilege exist?

Justice Cheeseman found that the relevant documents were privileged (and attracted, as relevant, legal advice, trade mark attorney advice or litigation privilege) and that privilege had not been waived.

Her Honour rejected Ms Taylor's claim that the documents could not be privileged on the basis that Ms Perry was not in a relevant client and legal/attorney relationship at the time of the communications and was not aware of the action being taken in relation to Ms Taylor's trade mark application in 2009.  Her Honour held that, having had regard to the whole of the communications, it was clear that Ms Perry was a client due to the fact that her manager, Steven Jensen, was acting as her agent and was liaising with service providers on her behalf (and was keeping her informed of actions taken on her behalf).

Her Honour held that the documents in dispute were all created for the dominant purpose of obtaining, or providing, legal advice in relation to trade marks, which is covered by the statutory privilege provisions which covered patent/trade mark attorneys and/or for the dominant purpose of anticipated litigation:

• In respect of the advice privilege and trade mark attorney advice privilege, these privileges arose in the context of advice being given regarding the application for registration of Ms Taylor's trade mark, the potential opposition to that mark by Ms Perry and Ms Perry's own application to register her mark.
• In respect of the litigation privilege, this privilege arose where communications concerned any potential for litigation in relation to the competing uses of Ms Taylor's and Ms Perry's trade marks.
• The relevant communications were with personnel who were either practising Australian or foreign (US) lawyers and/or Australian registered patent/trade mark attorneys.

Was privileged waived?

Ms Taylor claimed that an express waiver of privilege had occurred because parts of a statutory declaration filed by Ms Perry's Australia trade mark attorney as part of the proposed opposition in 2009 and parts of an affidavit of Mr Jensen, filed as part of the interlocutory application, expressly waived privilege over some of the documents.  The Respondents accepted that privilege had been waived in relation to the unredacted parts of those documents and a small number of other documents but maintained privilege over the balance.  Her Honour held that the declaration and affidavit did not, for the most part, directly or indirectly expose the content of confidential communications and as such, there had been no express waiver of privilege.  The Respondents conceded that the declaration expressly waived privilege in a small number of documents.

In respect of the claims of implied, or issue, waiver, Ms Taylor alleged that this arose on two bases: (1) as the Respondents had put their state of mind in issue as a result of evidence provided by Mr Jensen in his affidavit that he had provided instructions to the US lawyers relating to the opposition proceeding, and (2) a defence raised by the Respondents which asserted that Ms Taylor was disentitled to equitable relief on the basis of delay, laches, acquiescence and discretion to refuse relief given her knowledge of the Respondent's conduct (evidenced by, at least, the 2009 YouTube video post and blog post and in the radio interview, all mentioned above).

Her Honour held that the Respondents had not put in issue legal advice to vindicate the states of mind to which Mr Jensen deposed in his affidavit, nor had the Respondents advanced a positive defence (as was suggested by Ms Taylor) that Ms Taylor had encouraged the Respondents' conduct by virtue of the video, blog and interview (rather the Respondents were asserting that Ms Taylor was disentitled to equitable relief based on that conduct), in which case their state of mind may have been relevant.

The matter is scheduled for trial, beginning on 29 November 2021.

Key takeaways

As more and more legal matters are dealt with electronically, making it easier to forward and reply to correspondence from/to legal practitioners and attorneys, this case serves as a useful reminder of the principles of privilege and, in particular, those in respect of email chains.  Practitioners, and clients, should be aware of the implications of forwarding an email chain, particularly in circumstances where privilege may be subsequently waived.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.