High Court of Ireland Decisions

1. This is a motion for (a) further and better discovery and (b) directing the Defendants to specify the general classification of privilege claimed in respect of each document.

2. This action which commenced on 20th July, 1998 is an action challenging the constitutionality of Sections 4 and 5 of the Intellectual Property (Miscellaneous Provisions) Act, 1998 (the Act). The Plaintiff had previously initiated judicial review proceedings which are still in being.

3. In this action on an interim ex parte application, Johnson J., by order dated 20th July, 1998, restrained the Defendants until the 22nd July, 1998 or further order from interfering with the functions, powers and duties of the Plaintiff in the performance by him of his office or in unilaterally altering or purporting to alter the terms of his employment, warrant or contract for the independence of his office. It was further ordered that the Defendants make discovery on oath of all documentation in relation to the preparation, drafting, advice, changes, amendments, discussions with and briefing of Dail deputies and members of Seanad Eireann concerning the Copyright (Amendment) Bill, 1998 as initiated in Dáil Éireann on the 29th day of April, 1998 and presented by the First named Defendant and the said Bill as changed to the Intellectual Property (Miscellaneous Provisions) Bill, 1998 as passed by Dáil Éireann on the 1st day of July, 1998.

4. Time was extended to 29th July, 1998 and the substantive motion was heard over three days by Mr. Justice Peter Kelly. The relief sought in the Notice of Motion was:-

5. By order dated 31st July, 1998 Kelly J. refused the relief sought at paragraphs (1), (2) and (3). He fixed time for the delivery of the statement of claim and defence and by consent ordered that the Defendants make discovery on oath of all documents in their possession, power or procurement relating to the matters in question in this section, the affidavit to be made by John Walsh on behalf of the Defendants.

6. In his judgment Kelly J. dealt with (inter alia) an issue raised by the Plaintiffs that the legislation had been procured in an improper way. The Defendants argued that what happened in either the upper or lower house of the Oireachtas is neither cognizable by the High Court or relevant to the issue to be tried. Kelly J. referred to the judgment of Murphy J. in An Blascaod Mór Teoranta & Others -v- The Commissioners of Public Works in Ireland & Others (1994) 2 I.R. 372. Part of the passage he cited (at p.378) is as follows:-

7. In accordance with the judgment of Murphy J. he refused the order for discovery sought at paragraph 3 of the Notice of Motion.

8. At the conclusion of the judgment he says that he would, if asked, be prepared to make an order for general discovery. The order shows that an order for discovery was made by consent.

9. An appeal dated 31st August, 1998 against the order of Kelly J. has been lodged.

10. The first affidavit of discovery in this matter was sworn on 2nd September, 1998. In relation to the documents set out in the second part of the First Schedule, the Defendants claim privilege on the grounds that the documents have come into existence for the purposes of giving or receiving legal advice or for the purpose of processing the proceedings in question or the judicial review proceedings or in contemplation of either of these proceedings. The Third Schedule sets out some material relevant to the preparation of Sections 4 and 5 of the Act and it is claimed that they are not relevant since they contain material preparatory to the enactment of legislation. Certain numbered documents are identified as advises from the Office of the Attorney General or the Parliamentary Draftsman's Office and it is claimed they are protected by legal professional privilege. It is also claimed that discovery is contrary to Article 15 of the Constitution and that further that certain numbered items consist of notes of briefings and discussions between Ministers and members of the Oireachtas.

11. A supplemental affidavit of discovery was sworn by Mr. Wall following the replying affidavit of the Second Plaintiff in which Mr. Wall states that in error certain documents which had been discovered by the Defendants in their capacity as Respondents in the related judicial review proceedings were omitted from the affidavit of discovery in these proceedings and he proceeded to list and identify the documents omitted in Section (a) of the first part of the Schedule to the affidavit. While claiming they were not strictly relevant he also made discovery of further documents in relation to the period between the beginning of May 1998 and 25th September, 1998 and they are set out in Section (b) of the first part of the Schedule. He identifies the commencement order for the Act and the designation order in relation to the location of the Patents Office which he says are publicly available. Copies were furnished to the Plaintiff and were at all times available to them. They are set out at Section (c) of the first part of the Schedule.

12. In relation to the second part of the Schedule he identifies additional documentation in respect of the period between the beginning of May 1998 and 25th September, 1998 which were not listed and identified in the original affidavit of discovery and claims privilege on the grounds of legal professional privilege. These are set out at Section (a) and consist of documents in the Office of the Attorney General in relation to the judicial review proceedings and these proceedings. They came into existence for the purpose of the judicial review proceedings and these proceedings. They contain and refer to legal advice furnished for the purpose of both proceedings.

13. The documents contained in Section (b) of the second part of the Schedule are documents from the file of the parliamentary draftsman's office relating to the commencement of the Act, documents consisting of draft orders and correspondence between the Office of the Attorney General and the Office of the Parliamentary Draftsman which are privileged on the grounds of legal professional privilege and further grounds of executive and public interest privilege.

14. In the course of the application, the Plaintiff identified certain documents in the second part of the First Schedule to the first affidavit of discovery as being required as follows:-

15. In the file of the Chief State Solicitor, Nos. 1, 14, 20, 22, 39, 42, 44, 47, 51, 65, 72, 78, 79, 81, 128, 129, 130 and 131.

16. In the file of the Attorney General (ref. SR 5/62/A7106), Nos. 1, 2, 3 and 4.

17. In the Third Schedule:- the file of the Attorney General (ref. SR 5/62/A7106), Nos. 1-11, and the brown envelope and pink folder (all documents) and ref. No. 2 C/001/150 and 360/01/04/05, Nos. 2-25.

18. No document in the second part of the First Schedule in the supplemental affidavit of discovery was identified by the Plaintiffs as being required.

19. The documents listed in the Third Schedule to the original affidavit of discovery are documents related to the preparation of Section 4 and Section 5 of the 1998 Act. The Defendants claim that Mr. Justice Kelly expressly refused the application for discovery of these documents. The Plaintiffs do not agree with this interpretation and claim to be entitled under the general order of discovery.

20. It seems abundantly clear to me that the general order for discovery made on 31st July, 1998 was made in the context of having refused a particular order for discovery (an order which has been appealed to the Supreme Court). By applying again for the production of documents referred to in the order which was refused, the Plaintiff is treating the judgment of Mr. Justice Kelly on particular discovery as having no effect, and is asking me to rule again on the same matter. It seems to me the matter of specific discovery was decided by Kelly J. but in case there is any doubt about it I hold that the Plaintiff is not entitled to discovery of any of the documents identified in the Third Schedule for the same reasons as set out in the judgment of Kelly J. This disposes of the application in relation to the Third Schedule documents.

21. In relation to the documents in the second part of the First Schedule the Defendants have identified the privilege they are claiming. They claim it in respect of documents that came into existence for the purpose of giving or receiving legal advice or for the purpose of processing the two sets of proceedings or in contemplation of the two sets of proceedings.

22. The Plaintiffs argue that privilege could not be claimed as being made in contemplation of litigation until after proceedings were issued. Therefore documents generated in advance of litigation could not be privileged.

23. This submission is contrary to the judgment of the Supreme Court in Smurfit Paribas Bank Limited -v- AAB Export Finance Limited 1991 1 I.R. 469. Finlay C.J. said at page 478:-

24. I am satisfied that in relation to the documents specified in the second part of the First Schedule, the Defendants have identified the type of privilege they claim and are entitled to claim.

25. For the reasons given above I refuse the relief sought at paragraphs (1) and (2) of the Notice of Motion.