Propend Finance Pty Ltd & Ors v The Commissioner, Australian Federal Police & Ors [1995] FCA 149

CATCHWORDS

Administrative law - validity of search warrants - non-disclosure of material facts by those procuring issue of warrants to issuing magistrate - whether terms of warrant uncertain.

Legal professional privilege - whether copy of non-privileged original document made solely for a "privileged purpose" is privileged.

Legal professional privilege - whether communications made in furtherance of an improper purpose - whether admissible evidence establishing that there was colour to the charge.

Crimes Act 1914 - s 10

Dunesky and Bay Wool Pty. Limited v Elder, (1995) 126 ALR 522 - applied

George v Rockett (1990) 170 CLR 104 - applied

Harry Brandy v Human Rights and Equal Opportunity Commission (1995) 127 ALR 1 - cons.

Sankey v Whitlam (1978) 142 CLR 1 - cons.

Alister v The Queen (1984) 154 CLR 404 - cons.

Commonwealth v Northern Land Council (1993) 176 CLR 604 - cons.

Baker v Campbell (1983) 153 CLR 52 - applied

National Employers' Mutual General Insurance Association Ltd. v Waind (1979) 141 CLR 648 - applied

Langworth Pty. Ltd. v Metway Bank Ltd. (1994) 126 ALR 428 - cons.

Nickmar Pty. Ltd. v. Preservatrice Skandia Insurance Ltd. (1985) 3 NSWLR 44 - cons.

Attorney-General (NT) v Kearney (1985) 158 CLR 500 - cons.

Baker v Evans (1987) 77 ALR 565 - cons.

PROPEND FINANCE PTY. LIMITED & ORS. v THE COMMISSIONER, AUSTRALIAN FEDERAL POLICE & ORS.

No. G658 of 1994

BEAUMONT, HILL AND LINDGREN JJ.

SYDNEY

24 MARCH 1995

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No.G658 of 1994

GENERAL DIVISION )

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: PROPEND FINANCE PTY LIMITED First appellant

RICHARD SCHEINBERG HOLDINGS PTY LIMITED

Second appellant

CHUSAN NOMINEES PTY LIMITED

Third appellant

GINGES HOLDINGS PTY LIMITED

Fourth appellant

BEST & LESS (AUSTRALIA) PTY LIMITED

Fifth appellant

BARNEY RICHARD SCHEINBERG

Sixth appellant

ALBERT SCHEINBERG

Seventh appellant

BEREL GINGES

Eighth appellant

MICHAEL DUNKEL

Ninth appellant

AND: THE COMMISSIONER, AUSTRALIAN FEDERAL POLICE

First respondent

DETECTIVE SERGEANT ALAN TACIAK MEMBER OF THE AUSTRALIAN FEDERAL POLICE

Second respondent

WENDY ELDER, JUSTICE OF THE PEACE

Third respondent

CORAM: BEAUMONT, HILL AND LINDGREN JJ.

DATE: 24 MARCH 1995

MINUTES OF ORDER

THE COURT ORDERS THAT:

1. Leave to appeal be granted from orders 4, 5, 6 and 8 made at first instance on 7 September 1994.

2. The appeal be allowed in part.

3. Orders 4, 5, 6 and 8 be set aside; and that, in lieu thereof, it be ordered that there be a fresh hearing on the appellants' claims for privilege.

4. The appeal otherwise be dismissed.

5. There be no order as to the costs of the appeal.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No.G658 of 1994

GENERAL DIVISION )

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: PROPEND FINANCE PTY LIMITED First appellant

RICHARD SCHEINBERG HOLDINGS PTY LIMITED

Second appellant

CHUSAN NOMINEES PTY LIMITED

Third appellant

GINGES HOLDINGS PTY LIMITED

Fourth appellant

BEST & LESS (AUSTRALIA) PTY LIMITED

Fifth appellant

BARNEY RICHARD SCHEINBERG

Sixth appellant

ALBERT SCHEINBERG

Seventh appellant

BEREL GINGES

Eighth appellant

MICHAEL DUNKEL

Ninth appellant

AND: THE COMMISSIONER, AUSTRALIAN FEDERAL POLICE

First respondent

DETECTIVE SERGEANT ALAN TACIAK MEMBER OF THE AUSTRALIAN FEDERAL POLICE

Second respondent

WENDY ELDER, JUSTICE OF THE PEACE

Third respondent

CORAM: BEAUMONT, HILL AND LINDGREN JJ.

DATE: 24 MARCH 1995

REASONS FOR JUDGMENT

BEAUMONT J.

INTRODUCTION

In these proceedings, the appellants sought judicial review of decisions made, and conduct that took place, under s.10 of the Crimes Act 1914 in connection with the issue of several search warrants. By that provision, authority to search and seize is conferred on police officers by the issue of a search warrant in the event that the conditions there specified are satisfied (see, generally, George v Rockett (1990) 170 CLR 104).

In their further amended application for an order of review under the Administrative Decisions (Judicial Review) Act 1977 ("AD(JR) Act") and s.39B of the Judiciary Act 1903, the appellants sought, inter alia, a declaration that the search warrants were invalid and consequential relief; and, alternatively, a declaration that certain documents seized under the warrants were protected by legal professional privilege. A Judge of the Court (Davies J.) made orders, inter alia, declaring that the warrants were valid and had not been unreasonably or excessively executed. With respect to the claims for legal professional privilege, his Honour declared that the privilege claimed did not extend to (1) some of the documents in question "by reason of the allegation of offences under section 86(1)(e) and section 86A of the Crimes Act 1914 (Commonwealth) and of the proof given in support thereof ..."; and (2) "copies of documents made for the purpose of obtaining legal advice, the originals of which are not subject to legal professional privilege ... ". (His Honour's judgment is now reported: see (1995) 35 ALD 25.)

The appellants now appeal from these orders.

Before going to the reasoning of the learned primary Judge, it will be necessary to say something about the form of the warrants and the nature of the proceedings at first instance.

THE FORM OF THE WARRANTS

With the exception of a warrant for the search of the premises of a firm of solicitors, to be mentioned later, the warrants were identical. A copy of one of the warrants is annexed to these reasons. In addition, there was annexed to the warrant to search the offices of Michael Dunkel & Co., solicitors, a copy of the General Guidelines between the Australian Federal Police and the Law Council of Australia as to the execution of search warrants on lawyers' premises, Law Societies and like institutions, in circumstances where a claim of legal professional privilege is made; these guidelines are also annexed to these reasons.

THE EXECUTION OF THE WARRANTS

The warrants were executed on the business and residential premises of the appellants; very many documents were seized.

THE NATURE OF THE PROCEEDINGS AT FIRST INSTANCE

In claiming relief, the appellants stated the following as their grounds for judicial review: (1) The second respondent erred in law "in failing to disclose
material facts to the third respondent which he knew or ought to have known". (2) The second respondent erred in law "in failing to make proper inquiries of the Australian Taxation Office prior to seeking the issue of the Warrants". (3) Procedures that were required by law to be observed in connection with the making of the decisions were not observed in that "the second respondent failed to disclose material facts to the third respondent". (4) The decisions were improper exercises of the power conferred in that the third respondent failed to take account of relevant considerations:

(a) the volume of material already held by the Australian Taxation Office which fell within the scope of the warrants;

(b) the scope of the warrants, and the oppression which their execution would cause; and (c) facts that were known, or ought to have been known, to the second respondent but were not disclosed to the third respondent. (5) That the warrants were too wide and uncertain. (6) The decisions, and each of them, were so unreasonable that no reasonable person could have so exercised the power. (7) The manner of execution of the search warrants by members of the Australian Federal Police and persons assisting them was unreasonable or oppressive. (8) Documents were seized to which legal professional privilege attached. (9) Documents were seized which fell outside the terms of the warrants.

The application for review was supported by several affidavits sworn by solicitors acting for the appellants,
including affidavits sworn by Mr. Dunkel and by Miss Karen Garner, a partner of Mr. Dunkel. Exhibited to one of Mr. Dunkel's affidavits, in which a claim for legal professional privilege was made, was a lengthy schedule entitled "Schedule of Privileged Documents". Many documents were described in the schedule by reference to a "key" to expressions there used. For instance, the first document there listed was described as follows:

"1. Copy memorandum Undated D001 001

Privileged Des[cription]: Statement of History prepared by client for solicitors use in apprehended tax litigation.

Supplementary Des[cription]: The document is a statement prepared by Mr A Scheinberg at the request of Mr M Dunkel, Solicitor for the purpose of enabling Mr Dunkel to give advice to DS Trading Pty Limited and Berag Pty Limited in connection with apprehended tax litigation arising out of audit conducted of the financial affairs of Best & Less and Scheinberg groups. The document was prepared at the time legal advice was sought by DS Trading and Berag in relation to matters which has arisen during the course of the tax audit and for the sole purpose of obtaining legal advice from Mr Dunkel and in due course for use in the apprehended tax litigation.

Deponent: M Dunkel

Person Claim: DS Trading Pty Ltd/Berag

Author: Scheinberg

Pages: 5

Receiver: M Dunkel"

In one of his affidavits, Mr. Dunkel gave this evidence in support of the claim for privilege:

"(g)on each occasion I received a request for
advice and gave advice in circumstances where no litigation was contemplated:

(i) each request was received by me in my capacity as a Solicitor:

(ii)the information provided to me by the client was provided in confidence;

(iii)the advice I gave was given in confidence;

(iv)where copies of documents were provided they were provided for the sole purpose of the giving of my advice.

(h) on each occasion that a document is stated to have been brought into existence for the purpose of use in legal proceedings or providing evidence to be used in legal proceedings:

(i) litigation had been commenced or given the facts which had occurred, it was reasonable to apprehend that there would be litigation in respect of the matters in dispute;

(ii)if the document was created by or received from a person or company which was a client, it was a client involved or likely to be involved in the actual or apprehended legal proceedings;

(iii)if the document was received from a person or company not being a client or an agent of a client likely to be involved in the litigation, the document was prepared or provided solely for the purposes of the apprehended or actual litigation.

(i) on each occasion that a document is stated to have been brought into existence for the purpose of obtaining or collecting evidence to be used in legal proceedings:

(i) Litigation had been commenced or given the facts which had occurred, it was reasonable to apprehend that there would be litigation in respect of the matters in dispute;

(ii)if the document was created by me it was created for that purpose;

(iii)if the document was created by another person I believe it was created for that purpose.

(j) if in the context of the 'Apprehended Tax Litigation', 'Apprehended Stamp Duty Litigation', 'Settlement of the Tax Dispute' or 'Winding Up Proceedings' I received from a person or company a document or copy of a document, it was received by me solely for the purpose of use in that context.

(k) where in the course of the preparation and briefing of Counsel to advise, or appear on behalf of a client either in pending or apprehended litigation, a copy document or a copy of part of a document was included within Counsel's brief it was copied solely for the purpose of the brief to Counsel.

(l) on each occasion that a request was made to a prospective witness or an expert for information or evidence to be used in any of the 'Apprehended Tax Litigation', 'Apprehended Stamp Duty Litigation', 'Settlement of the Tax Dispute' and 'Winding up Proceedings' it was requested solely for use in one or more of those contexts."

In other affidavits read on behalf of the appellants, more detail of these matters was given. However, apart from the description in the schedule already mentioned, none of the parties attempted to make an analysis of the nature of the individual documents in question. As will appear, this is significant for the purposes of considering an issue in the appeal, namely, whether a copy of a document may be privileged even if the original is not the subject of legal professional privilege.

THE REASONING AT FIRST INSTANCE

(a) Initial validity of the warrants

Davies J. first rejected the submission that there had not been a sufficient disclosure of the material facts to the Justice of the Peace.

(Although the appellants now appeal against this finding, they accept that, in the light of the recent decision of the Full Court in Dunesky and Bay Wool Pty. Limited v Elder (1995) 126 ALR 522 ("Dunesky") on this point against their argument, their submissions to this Court are formal only. We were informed that in Dunesky an application to the High Court for special leave to appeal is pending.)

His Honour also rejected the appellants' contention that the terms of the warrant were not sufficiently specific and that, in any event, the warrants were so extensive as to be oppressive. Davies J. said that once all three conditions of the warrant were read together, an ordinary reader of the warrant would be given "adequate reference points" whereby he or she could delimit the area of the search. His Honour went on to say that the warrants were appropriate for the purpose for which they were issued, namely, to obtain evidence of the commission of the alleged offences; and that since the underlying facts which were considered to constitute those offences were complex and involved many acts and transactions occurring over a substantial period of time, "the search for
evidence was necessarily a lengthy and complex one".

(b) Manner of execution of the warrants

Davies J. further held that the manner of execution of the warrants was not excessive. He said that there was no evidence that the reasonable limits of a search were exceeded; that there were many companies and individuals alleged to have been involved in the offences; and that the solicitor himself was one of the persons alleged to have committed an offence. Accordingly, "an extended and detailed search was appropriate".

His Honour added:

"The material before the Court does not enable me to say that any particular documents had no relevant evidentiary value. If documents are identified as being irrelevant to the specified offences they should, of course, be returned.

Mr. Bloom [for the appellants] submitted that I should examine a number of the documents seized to determine whether or not they were evidence of the stated offences. However, that is not my task. The material before the Court would not enable me to decide, by merely reading a particular document, whether it answered the description in the warrant. A background knowledge of the nature of the offences charged and of how the particular documents fitted into the picture would be required. Presumably, the officers authorised to execute the warrants had that knowledge. The Court has no jurisdiction to interfere with their seizure unless their actions are proved to have been excessive. A mere examination of a particular document would be unlikely to establish that.

However, as I have said, there is, in my opinion, an obligation on the part of the Australian Federal Police to return documents which they are satisfied do not meet the description in the warrants. If this were not so, the seizure of such a vast quantity of documents would be likely to be held excessive."

Turning to the claim for legal professional privilege, which was made in respect of approximately 292 documents, Davies J. said that he was content to accept that there had been over the period a great deal of material which was conveyed to Michael Dunkel & Co for the purpose of legal advice. That material would not encompass, however, letters written by the Australian Taxation Office to Michael Dunkel & Co. or to the companies or their accountants. Nor would it encompass letters, including offers of settlement which may have been sent by Michael Dunkel & Co. or their accountants or any of the companies to the Australian Taxation Office. Such documents were not prepared for the purpose of obtaining or giving advice. They formed part of the facts comprising the transactions between the companies and the Australian Taxation Office.

(i) Were copies privileged?

His Honour next addressed the question, already mentioned, of copy documents, including copies of documents in briefs to counsel. Davies J. said that on this issue, the cases were conflicting and there are many different views but his view accorded with that expressed by Wood J. in Nickmar Pty Ltd v Preservatrice Skandia Insurance Ltd (1985) 3 NSWLR 44 where (at 61-2) his Honour said:-

"In my view, it is incorrect to state, as a general proposition, that a copy of an unprivileged document becomes privileged so long as it is obtained by a party, or its solicitor, for the sole purpose of advice or use in litigation. I think that the result in any such case depends on the manner in which the copy or extract is made or obtained. If it involves a selective copying or results from research, or the exercise of skill and knowledge on the part of a solicitor, then I consider privilege should apply ... . Otherwise, I see no reason, in principle, why disclosure should be refused of copies of documents which can be obtained elsewhere, and in respect of which no relationship of confidence, or legal professional privilege exists."

Davies J. went on to hold that copy agreements, copy letters and the like were not privileged notwithstanding that the copies were made for the purpose of obtaining legal advice. He said:

"There are many bundles of documents in the schedule in respect of which, in my opinion, privilege fails for the reason that the original documents themselves are not shown to be the subject of legal professional privilege. At the present time, the evidence does not show that there was any particular legal expertise used in the selection of the documents."

Davies J. added that he was satisfied that some of the documents on their description would appear to fall within the privilege and that some would not. Some of the documents were bundles which included copy documents of the type mentioned. There were many documents in respect of which he would not wish to make a ruling without inspecting the documents themselves. In the absence of agreement between the parties, a Judge, a Registrar or an agreed independent person should examine the original documents to determine which of them would fall within the privilege, or would do so but for another matter to which he then turned.

(ii)Were the communications in furtherance of an improper purpose?

Davies J. next considered whether any privilege was lost by virtue of the principle that communications made in furtherance of an improper purpose, such as a crime or fraud, are not protected. His Honour said that with respect to the offences alleged under ss.86(1)(e) and 86A of the Crimes Act, it was alleged in particular, that the companies in the Best & Less partnership claimed substantial deductions for "garment-testing" and for control. The allegation made in the sworn information was, in substance, that any significant garment-testing was performed by an overseas organisation, Shenka College of Textile Technology & Fashion ("Shenka"), which provided the services for a fee which was much less than that paid by and claimed by the companies in the Best & Less partnership. The payments by the companies in the Best & Less partnership did not go directly to Shenka, but to Control Research & Development Pty Ltd, and from it, to Interco Research & Development Ltd. It was alleged that only a small part of the payments made went to Shenka, that the excess funds were not in reality used to obtain garment testing and like services, but instead found their way to Midilux SA (Luxembourg) and Fidelity Pacific Banking Corporation (Cook Is.) and thence to Chandhurst Finance Ltd and other companies, which then on-lent money back to Australia, particularly to Propend Finance Pty Ltd, which was a financier to the group. It was alleged that Mr Dunkel, who was married to the daughter of Mr Scheinberg, was a director of a number of the companies involved in what was alleged to be a scheme. It was further alleged that some of the money came back to Australia via the Sanwa Bank in the form of a loan by the bank to Propend Finance Pty Ltd under an agreement executed by Mr Dunkel. It was alleged that the money lent was, however, originally provided to Sanwa Bank by another company in the scheme and that the Sanwa Bank was a mere intermediary.

Davies J. said that the Australian Taxation office had conducted a lengthy audit and had disallowed the deductions claimed and that he could accept the assessments or amended assessments as evidence that the deductions claimed were not allowable. The Australian Federal Police suspected that crimes defrauding the Commonwealth had been committed and Detective Sergeant Taciak had sworn an information setting out the factual basis of that belief.

His Honour continued:

"Taking account of and weighing up as best I can the public interest in the identification and prevention of crimes and the competing public interest in maintaining that basic element of client/lawyer confidentiality upon which the attainment of justice in our society depends, it seems to me that there has been a sufficient particularisation of and
verification of the allegations of crimes under ss.86(1)(a) and 86A of the Crimes Act to overcome the privilege which would otherwise attach to the documents authorised to be seized.

The sworn information has not been supplemented by additional evidence, but the information has been put before the Court and counsel are content that I should have regard to it. I do not suggest that the evidence before the Justice of the Peace amounted to proof of the commission of any offence, even on the balance of probabilities. It did not. But it seems to me that there is sufficient prima facie evidence in the material before the Justice of the Peace to overcome, in the public interest, the claim of legal professional privilege."

His Honour concluded that certain of the documents, which he then specified, were therefore exempt from the privilege.

ORDERS MADE AT FIRST INSTANCE

Davies J. made orders declaring that the warrants were validly issued; that the warrants were not invalid by reason of their terms; and that the execution of the warrants was not unreasonable or excessive. In respect of the claim of privilege, his Honour made these orders:

"...

[THE COURT]:

4. Directs that, subject to declaration 5, issues as to whether legal professional privilege attached to the documents seized be determined after the documents in question have been examined.

5. Declares that, by reason of the allegation of offences under [s] 86(1)(e) and [s] 86A of the Crimes Act ... and of the proof given in support thereof, the following documents are not subject to legal professional privilege:

[Several documents are here identified by number]

6. Declares that copies of documents made for the purpose of obtaining legal advice, the originals of which are not subject to legal professional privilege are not privileged. [Examples of such documents are then given]

...

8. Orders that the documents to which legal professional privilege is not attached be released to the Australian Federal Police.

..."

LEAVE TO APPEAL

As a matter of form as well as substance, the orders 4, 5, 6 and 8 made by Davies J. on the claim for legal professional privilege were interlocutory so that leave to appeal is required. However, the respondents do not oppose the grant of that leave and important points are now raised in this connection. In these circumstances, it is appropriate that leave to appeal should be granted.

GROUNDS OF APPEAL

Apart from the formal grounds of appeal already mentioned, the appellants also put, again as a formal submission only, that, in accordance with the reasoning in the dissenting opinion of Black C.J. in Dunesky, these warrants were beyond power because they did "not specify the things as to which the justice has been satisfied there are reasonable grounds for believing that the same will afford evidence of the commission of the specified offences".

In addition, the appellants contend that, by reason of their width, the warrants were invalid; and that, by virtue of the size and dimensions of the search and seizure exercise undertaken, the manner of execution of the warrants was so excessive and unreasonable as to be illegal. They also contend that, for these and other purposes, the primary Judge should have inspected the documents in question.

On their claim for privilege, the appellants say that his Honour should have found that a copy of a document made for the purpose of obtaining legal advice was privileged, even if the original of the document was not privileged. The appellants further challenge, in principle, the primary Judge's conclusion that, in some instances, the privilege was lost because of the appellants' alleged improper purpose. Further, at the procedural level, the appellants say that his Honour should have inspected the documents for this purpose.

CONCLUSIONS ON THE APPEAL

(a) Initial validity

These warrants used the format employed in other cases, for instance, those considered in Dunesky. Whilst, as was pointed out in Dunesky, it is not usually profitable to take into account, in any specific sense the actual terms of warrants used in other decided cases, much of the general
reasoning of the majority in Dunesky can nonetheless be applied to the present warrants. That is, there is nothing wrong in principle with the adoption of the three stages required by these warrants which, as noted in Dunesky, operated as a refining process having the legitimate effect, of narrowing, by stages, the scope of the enquiry to be undertaken by those executing the warrants. Again, as was pointed out in Dunesky, it does not follow from the mere fact that the description of the object of the warrant is non-specific, that the warrant is invalid. Rather the position is, as the High Court held, in this context, in George v Rockett, above, as follows:

"A thing must be identified either as a specific object or as an object which answers a particular description ... . Where the object is identified by description, the broader and less specific the description, the more difficult it is likely to be to satisfy the requirement of reasonable grounds for believing that a thing answering the description will afford evidence of the commission of an offence."

The question, then, is whether, as in Dunesky (at 24), the statutory conditions laid down by s.10(1) were fulfilled. Again, the reasoning which follows this passage in Dunesky (at 24-9), which need not be restated here is, in principle, pertinent for present purposes.

Applying those principles to these warrants, it is true that some of the descriptions in the first condition are broadly expressed; for instance, the references to "notes" and to "documents". However, when subjected to the refining process stipulated by the terms of the second and third conditions, a more specific result will follow. Moreover, the reference in the third condition to an alleged offence is not, as was suggested in argument, unacceptably vague, even if conspiracy may be a wide offence. One of the statements of the offence alleged that the parties mentioned did, between the dates specified, "conspire to defraud the Commonwealth by the submission of false claims for deductions relating to quality control in [Berag's] income tax returns..." must confine the inquiry to particular "notes" or "documents".

But, in my view, for reasons similar to those given in Dunesky, the present warrants were not so broad that it was impossible to comply with the requirements of s.10(1).

In this connection, much reliance was placed by the appellants on the reference by Davies J. to the need to have a "background knowledge of the nature of the offences charged". But, as has been seen, this comment was made in dealing with a suggestion that his Honour should embark, uninstructed, upon an examination of a random selection of the documents seized. The Judge, in my view, was right to decline the invitation. In the exercise of judicial, as distinct from administrative, functions, the primary Judge had no inquisitorial function in this respect (cf. Harry Brandy v Human Rights and Equal Opportunity Commission (1995) 127 ALR 1. Moreover, the present question did not raise any special considerations of
the kind encountered in public immunity claims where, quite exceptionally, the Judge alone looks at the documents (see Sankey v Whitlam (1978) 142 CLR 1; Alister v The Queen (1984) 154 CLR 404; cf. The Commonwealth v Northern Land Council (1993) 176 CLR 604 at 620). On the contrary, the appellants, and their legal representatives, were at all times entitled to access each of the documents seized, for the purpose of inspecting them in preparing for this proceeding in all its aspects, including their claim for privilege.

That is to say, there was no reason, whether of principle or of a practical kind, why the present matter could not proceed in the usual way. The position was that the appellants, as the moving party, alleged that the warrant was invalid on several grounds. They claimed, without being specific, that support for their challenge could be found upon an examination of some of the very many documents seized. Instead of seeking to make good their claim by making reference to particular documents, the appellants, in effect, invited his Honour to attempt the exercise himself. This is not an appropriate way to proceed. Neither the other party nor the Court is informed of the real case the appellants seek to make.

When, as a passing comment, his Honour observed, in effect, that if one picked up a document or two out of the

very many seized, their relevance might not be obvious, at least to the uninitiated, the Judge was doing no more than drawing attention to the apparent complexities of the matter, given the very large number of documents seized. As his Honour said, "background knowledge", which could take the form of a working knowledge of the purport of some of the other documents seized, might reveal, to a person with such knowledge, a connection between them, and thus their relevance. However, it is not necessary to pursue the point, as it cannot, in my view, assist the appellants here. Plainly, the appellants bore the onus of demonstrating that the warrants were beyond power. They could not discharge that onus merely by inviting the primary Judge, without any particular focus, to inspect some of the substantial body of documents in question and then form a conclusion about the question. The fair conduct of litigation, especially between represented parties, requires that the parties identify, in an appropriately specific fashion, the real questions for resolution by the Court. Only in the most exceptional situations, for instance, claims for public interest immunity, should the parties depart from this procedure in presenting their cases. This was not such a special situation, nor was it a case where, as a practical course, the parties were able to agree that a particular result should follow from the consideration by the Court of a representative sample of documents.

In my opinion, Davies J. correctly held that the warrants were not initially invalid.

(b) "Excessive" execution of the warrants

Again, I agree with the primary Judge, for the reasons he gave, that no illegality had been demonstrated, notwithstanding that there were very many documents and many police officers engaged; and that a search of a solicitor's office was involved. The exhortations in the latter connection made by Gibbs C.J. in Baker v Campbell (1983) 153 CLR 52 (at 70 and 72) although made before the introduction of the Law Council Guidelines, are still pertinent; but, in my view, no element of invalidity is involved in this regard.

It will be convenient to deal with the two separate aspects of this claim in turn.

(i) "Copy" documents

As Davies J. noted, there are two competing approaches to this question. In considering it, the reason for the existence of this privilege should be recalled. In Baker v Campbell, above, the High Court held that the privilege applied to documents within the scope of a search warrant under s.10 of the Crimes Act. Wilson J. (at 95) there described the rationale of the privilege as the "fostering" of the confidential relationship in which legal advice is given
and received; in this way, the common law serves the ends of justice because it is facilitating the orderly arrangement of the client's affairs as a member of the community. Furthermore, in promoting the faithful discharge of his responsibilities and the enjoyment of his rights under the law the ends of justice are being served. It is in the public interest to encourage the service of such ends. As his Honour noted, the multiplicity and complexity of the demands which the modern state makes upon its citizens underlines the continued relevance of the privilege to the public interest. The adequate protection according to law of the privacy and liberty of the individual is, as Wilson J. observed, "an essential mark of a free society" and, unless abrogated or abridged by statute, the common law privilege attaching to the relationship of solicitor and client "is an important element in that protection". It is not only a matter of protection of the client. The freedom to consult one's legal adviser in the knowledge that confidential communications will be safeguarded will, Wilson J. said, "often make its own contribution to the general level of respect for and observance of the law within the community".

Observations to similar effect were made by Deane J. (at 120) and by Dawson J. (at 130).

There must also be kept in mind, in this context, the important distinction between the purpose for which
information is obtained, on the one hand, and the purpose for which a document recording information is brought into existence, on the other. As Mason J. pointed out in National Employers' Mutual General Insurance Association Ltd. v Waind (1979) 141 CLR 648 at 654, it is the latter purpose only which the privilege protects.

Whilst the general principles in this area are now settled, the particular question here, which is concerned with the scope of the privilege, is, as has been seen, controversial.

In Baker, Dawson J. described the general scope of the privilege as follows (at 122-3):

"Legal professional privilege attaches only to communications made for the purpose of giving or receiving advice or for use in existing or anticipated litigation. Moreover, if the communication in question is in the form of a document submitted by a client to his solicitor for use in existing or anticipated litigation, privilege will attach to it only if it comes into existence solely for that purpose. The privilege cannot operate to put beyond the reach of the law documentary or other material which has an existence apart from the process of giving or receiving advice or the conduct of litigation. There is no privilege for physical objects other than documents and there is no privilege for documents which are the means of carrying out, or are evidence of, transactions which are not themselves the giving or receiving of advice or part of the conduct of actual or anticipated litigation." [Emphasis added]

The "copy document" point was considered recently by Cooper J. in Langworth Pty. Ltd. v Metway Bank Ltd. (1994) 126 ALR 428. After a full review of the authorities, which need not be repeated here, Cooper J. said (at 452):

"...I am of the opinion that legal professional privilege does not attach to the documents ... simply because the copies of the original documents came into existence at the request, or by the conduct, of the solicitors for the respondent for the purposes of the litigation. The respondent did not seek to argue that disclosure of the documents would expose the advice given by the solicitors to the respondent. Neither the description of the copy documents nor the circumstances in which they were obtained suggests that disclosure would expose the legal advice being given to the respondent. Such of the documents as have been exposed in the materials on these applications do not suggest any pattern or the nature of any advice being given. The clear impression is that the documents were simply regarded as relevant and photocopied on that basis. The copy documents constituted but part of the general pool of information being obtained by the respondent's solicitors for the purpose of the litigation."

The present question was helpfully discussed by Neil J. Williams in "Four Questions of Privilege: the Litigation aspect of Legal Professional Privilege", Civil Justice Quarterly (1990). Williams noted that the privilege applies to the advice the client sought from the lawyer and to the advice the lawyer gave; it covers the actual words, oral or written, passing between the lawyer and the client; and it extends to any document prepared by one or the other from which the nature of the advice sought, or given, might be inferred, for instance, a draft pleading, a solicitor's draft letter to the other side, or a bill of costs. Since the client is not to be fettered in preparing a document for communication to the lawyer for advice, a document prepared for that purpose, but not actually communicated, is protected; however, no privilege attaches to a document which has an existence apart from the giving or receiving of legal advice, that is, a document which is the means of carrying out, or is evidence of, a transaction not itself the giving, or receiving, of legal advice.

Williams argued (at 158-159) that allowing privilege for a document created for litigation that is a copy of, or which contains extracts from, a document not itself privileged, provided the document is made by the lawyer for the party in the exercise of legal professional skill, is not a "workable" test of privilege. It raises the question of the extent to which production of the document must involve the exercise of legal expertise before privilege is recognised; according to what was said in Nickmar, it would seem that making a summary of the relevant parts of a document would be sufficient; but if the lawyer, instead of selecting the relevant parts of a document to copy, selects from a bundle of documents those which are relevant and copies them, then the copies are verbatim copies of the originals, but, Williams asks, is identifying the documents that are relevant any less a process of selection involving the exercise of professional legal skill, than identifying the relevant parts of a single document? And if separating relevant documents from the irrelevant involves the exercise of legal skill to the extent
that copies made of the former attract privilege, can privilege be denied, he questions, where the lawyer employs that skill to determine that a third person has possession of a document all of which is relevant, and then proceeds to make or obtain a copy?

Williams wrote (at 160):

"The case for the broader test of privilege for a copy document where the original is not privileged rests on the pragmatic consideration that protection of the copy is essential to the proper functioning of an adversary system of adjudication. Denying privilege for copies made for litigation of non-party documents that are not privileged would impair the proper preparation of cases for trial in two respects. First, it would encourage parties, rather than searching for documents in the hands of third persons themselves, to use discovery to find out what documents the adversary had managed to locate. Second, the lawyer might be inclined to make or obtain copies of non-party documents if it was thought that there was a tactical advantage in leaving the other side ignorant of the existence of the original documents. ... Making a summary of the relevant parts of the documents while they are with the non-party is one way the lawyer could avoid the obligation to disclose copies, for then, under the strict test of privilege, the summary would be privileged as the product of the exercise of the lawyer's legal skill and knowledge. This is hardly an efficient method of recording the contents of a document now that documents can so easily be copied mechanically. Reading the documents and memorising the salient parts is another, and even less efficient, way the lawyer could avoid the obligation to disclose copies. Invariably, however, reproducing a document mechanically is the soundest way to get a record of its contents. The reproduction will be a true copy and will be cheaper and faster to make than a summary of the original."

There is force in these comments; yet, as Cross on Evidence, 4th ed. (Byrne and Heydon) notes (at 25,108), the privilege is concerned with communications, and only incidentally with the form in which they are made or preserved. Thus, even if, literally speaking, a photocopy of a document may be said to have been brought into existence solely for the requisite purpose, it may not be fair to characterise it as, in truth, part of the substantive process of seeking or obtaining legal advice or of preparing for litigation.

In my opinion, the fact that a document is a copy does not mean that it cannot be privileged, even if the original is not; but, on the other hand, in such a case, the circumstance that the copy was brought into existence solely for the requisite purpose should not always mean that the copy is privileged. Rather, in both situations, a broader inquiry is, in my opinion, called for; that is, in the particular circumstances in which the copy document came into existence, should it be treated as, in truth, part of the substantive process of the seeking or the obtaining of legal advice or of preparing for litigation?

As has been seen, the learned primary Judge took another approach. Since I respectfully disagree, I would set aside the orders made in this regard at first instance; in lieu of those orders, I would order a fresh hearing on this issue, since we do not have the material necessary to express an opinion ourselves on the copy documents in the light of the
circumstances in which each such document was created; this may involve questions of fact, and perhaps of judgment as well. For this purpose, to attempt a "global" approach would not be feasible, unless the parties can agree on an appropriate sampling procedure. Otherwise, it will be necessary for the Court, on the fresh hearing, to consider, ad hoc, the individual circumstances in which each copy document, for which privilege is claimed, came into existence.

(ii) The allegation of improper purpose

In Attorney-General (N.T.) v Kearney (1985) 158 CLR 500, Gibbs C.J. said (at 516):

"[Legal professional] privilege is of course not displaced by making a mere charge of crime or fraud or, as in the present case, a charge that powers have been exercised for an ulterior purpose. ... As Viscount Finlay said in the latter case ... 'there must be something to give colour to the charge'. His Lordship continued:

'The statement must be made in clear and definite terms, and there must further be some prima facie evidence that it has some foundation in fact ... The Court will exercise its discretion, not merely as to the terms in which the allegation is made, but also as to the surrounding circumstances, for the purpose of seeing whether the charge is made honestly and with sufficient probability of its truth to make it right to disallow the privilege of professional communications.'"

As has been noted, the trial Judge relied exclusively for present purposes upon the material contained in the Information. But in regard to the truth of the matters there stated, that material was clearly hearsay, and its tender, in this connection, was objected to by the appellants. (The position would have been different if, as in Baker v Evans (1987) 77 ALR 565 (at 569), the Information had gone into evidence without objection.) In my opinion, the tender of the Informtion on the present issue should have been rejected as inadmissible hearsay. It could not have been suggested that O.33 r.2 or r.3 had any application here. Moreover, the Information was not admissible as a business record. Further, its tender by the respondents for the limited, but distinct, purpose of supporting their claim of public interest immunity in certain respects would not make the Information admissible for the purpose of removing the present privilege.

Since there was no other evidence on the question tendered, it must follow, in my view, that there was no admissible evidence before the Court on the issue whether there was "something to give colour to the charge". The respondents did not, of course, have to prove the charge, even on the civil onus; but they did have to adduce some admissible evidence to show why the Court should disallow the privilege; the mere allegation of an offence was not sufficient.

Again, in the absence of the appropriate material before us, it must follow, in my opinion, that there should be a fresh hearing on this question also.

ORDERS PROPOSED

I propose that the appeal be allowed in respect of the privilege claims, but otherwise dismissed. In the circumstances, it is appropriate that there should be no order for costs.

The orders I propose are as follows:

1. Grant leave to appeal from orders 4, 5, 6 and 8 made at first instance on 7 September 1994.

2. Appeal allowed in part.

3. Set aside orders 4, 5, 6 and 8; in lieu thereof, order that there be a fresh hearing on the appellants' claims for privilege.

4. Appeal otherwise dismissed.

5. Make no order in respect of the costs of the appeal.

I certify that this and the preceding twenty-nine (29) pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Beaumont.

Associate

Dated: 24 March 1995

IN THE FEDERAL COURT OF AUSTRALIA )

)

NEW SOUTH WALES DISTRICT REGISTRY ) No NG658 of 1994

)

GENERAL DIVISION )

ON APPEAL FROM A JUDGE OF

THE FEDERAL COURT OF AUSTRALIA

BETWEEN: PROPEND FINANCE PTY LIMITED

First Appellant

RICHARD SCHINBERG HOLDINGS PTY LIMITED

Second Appellant

CHUSAN NOMINEES PTY LIMITED

Third Appellant

GINGES HOLDINGS PTY LIMITED

Fourth Appellant

BEST & LESS (AUSTRALIA) PTY LIMITED

Fifth Appellant

BARNEY RICHARD SCHINBERG

Sixth Appellant

ALBERT SCHEINBERG

Seventh Appellant

BEREL GINGES

Eighth Appellant

MICHAEL DUNKEL

Ninth Appellant

AND: THE COMMISSIONER, AUSTRALIAN FEDERAL POLICE

First Respondent

DETECTIVE SERGEANT ALAN TACIAK, MEMBER OF THE AUSTRALIAN FEDERAL POLICE

Second Respondent

WENDY ELDER, JUSTICE OF THE PEACE

Third Respondent

CORAM: BEAUMONT, HILL & LINDGREN JJ

PLACE: SYDNEY

DATED: 24 MARCH 1995

REASONS FOR JUDGMENT

HILL J:

On 2 September 1993, Ms Elder, the Third Respondent, a Justice of the Peace, issued nine search warrants addressed to some 60 members of the Australian Federal Police in respect of premises of the appellants. The warrants were issued pursuant to s.10 of the Crimes Act 1914 (Cth). Among the officers to whom the warrants were addressed was Detective Taciak, the Second Respondent.

Each of the warrants followed the form discussed by the Full Court of this Court in Dunesky v Elder (1995) 126 ALR 522. A copy of one of these warrants is attached to the judgment of Beaumont J. Each of the warrants is identical, other than the warrant in respect of the search of premises of Michael Dunkel & Co, Solicitors. Attached to the main body of that warrant were the general guidelines between the Australian Federal Police and the Law Council of Australia as to the execution of search warrants on "lawyers' premises".

Each of the warrants was executed on the day it was issued at the premises, business or residential, of the appellants. A large number of documents were seized. A list describing these documents runs to some 153 pages. Documents in respect of which a claim for privilege was made at the time of execution of the warrant were lodged with the Court's Registry in accordance with the Law Council's General Guidelines. The balance of the documents remain in the custody of the Australian Federal Police who, by consent, have agreed not to access them pending the outcome of the present proceedings. Access to the documents was permitted to the legal advisers of the appellants for the purposes of determining whether any further claims for legal professional privilege should be made. Some of the documents in the custody of the Australian Federal Police have also been the subject of access by the appellants, in so far as they were necessary for the day to day conduct of the appellants' business. No other request for access to the documents was made by the appellants.

The appellants applied to the Court, pursuant to the provisions of the Administrative Decisions (Judicial Review) Act 1977 (Cth) for judicial review of the magistrate's decision to issue each warrant. The application sought review also of the conduct of members of the Australian Federal Police in the execution of the warrant. Reliance was placed additionally upon s.39B of the Judiciary Act (1903) (Cth) and declarations as to the invalidity of the warrants were sought in addition to injunctive relief restraining inspection or copying of items seized in the execution of the warrants and the return of those items to the persons from whom they were seized. Additionally, a declaration was sought that certain of the documents seized were subject to legal professional privilege and should be returned.

Before his Honour the appellants attacked the validity of the warrants on the grounds that the applicant for the warrants, Detective Taciak, the second respondent, had not fully disclosed all material facts to the magistrate at the time of seeking the warrant. In particular it was submitted that had the magistrate been informed of the extent of the documentation held by the Australian Taxation Office in respect of the matters into which the Australian Federal Police were enquiring, the magistrate may not have granted the warrants sought.

This argument was largely disposed of by a prior interlocutory appeal (Propend Finance Pty Ltd v The Commissioner, Australian Federal Police (No 1) (1994) 94 ATC 4399) in respect of which judgment was delivered by a Full Court comprising Jenkinson, Lee and Hill JJ (1994) 94 ATC 4399. That judgment found it unnecessary to consider the correctness of the proposition upon which the submission depended, as stated in Karina Fisheries Pty Limited v Mitzen (1990) 26 FCR 473 at 480-483. In the meantime that proposition was considered by another Full Court and rejected in Lego Australia Pty Limited v Paraggio (1994) 124 ALR 225.

It was argued also that the warrants were excessively broad and uncertain for reasons dealt with in a judgment of the Full Court of this Court in Dunesky. That argument was effectively foreclosed to the appellants before us, having regard to the decision of the Full Court by majority, Lockhart, Beaumont, Hill and Lindgren JJ, Black CJ dissenting.

In addition to some incidental arguments no longer at issue between the parties in which it was suggested that the warrants were ambiguous, it was argued generally that the warrants did not permit the officers to whom they were addressed or the occupiers of the premises to be searched to know whether a document seized did or did not fall within the warrants. This decision is reported in (1995) 35 ALD 25.

The execution of the warrants was said to have been excessive. Particular reliance was placed, for example, upon the circumstance that the search of the premises of Mr Dunkel had commenced at 11.30pm on 2 September 1993 and concluded at 1.40am the following day. His Honour did not regard this fact alone as leading to the conclusion that the reasonable limits of search were exceeded and no other evidence was addressed to the question.

The principal matters dealt with at first instance and before us concerned a claim by the appellants for legal professional privilege. Two matters were at issue before his Honour and before us. The first was whether the officers executing the warrants were entitled to seize copies of documents which, on the unchallenged evidence, were made for the sole purpose of obtaining or giving advice. Some of the documents had been copied by the client and forwarded by him to the client's solicitor for advice. Others were copies of documents in briefs to advise which had been sent by the solicitors to eminent counsel. It would seem that the photocopies in this latter category were still comprised in the relevant briefs.

His Honour was of the view that the copy documents were not the subject of legal professional privilege, notwithstanding that the copies had been made for the sole purpose of obtaining legal advice.

There was no dispute that many of the documents in respect of which privilege had been claimed were prima facie the subject of the privilege and but for a matter to be mentioned later, his Honour was disposed to order an examination of these documents to determine which did and which did not fall within the privilege. However, a second argument was made on behalf of the respondents which affected the question whether legal professional privilege could be claimed in respect of certain nominated documents. It was submitted, and his Honour found, that the privilege had been displaced because there was sufficient prima facie evidence before his Honour that the communications the subject of the documents were made in furtherance of an improper purpose, specifically offences committed under ss.86(1)(a) and 86A of the Crimes Act 1914 (Cth) namely the defrauding of the Commonwealth.

From this decision, the appellants appealed.

Before us it was conceded that the grounds of appeal related to alleged non-disclosure to the Justice of the Peace at the time of issue of the warrants were foreclosed by the three full court decisions, to which reference has already been made, namely, Propend (No 1), Lego and Dunesky. A formal submission was put that these cases were wrongly decided. Although a Full Court of this Court is not bound by decisions of other full courts, as a matter of comity it will follow the decisions of other full courts unless persuaded that they are clearly wrong. Nothing has been put so to persuade us.

A submission that there was evidence that the manner of execution of the warrants was excessive, having regard to the duration of the search, the number of police who executed the warrants, the quantity of documents seized and the probability that a number of the documents seized fell outside the scope of the warrants was but faintly pressed. Some 15 documents were pointed to which, it was said by reference to their description, clearly fell outside the scope of the warrants. That fact, either alone or in combination with the other matters relied upon, would clearly not lead to the conclusion that the exercise of the warrants was an unreasonable exercise of the licence conferred upon the officers by the search warrants to enter and search the named premises.

Related, however, to the attack on the manner of execution of the warrants was a suggestion that the warrants were invalid on their face because they did not permit the persons to whom they were addressed or the occupants of the premises authorised to be searched to determine whether documents did or did not fall within the terms of the warrant. In support of this argument reference was made to a passage in the judgment appealed against. Before citing the passage, it is necessary to put it in context. Before his Honour the submission had been made that the manner of execution of the warrants was excessive. In answering that argument which, it will be recalled, in part relied upon saying that documents were seized which did not meet the description in the warrant, his Honour commented:

Mr Bloom submitted that I should examine a number of the documents seized to determine whether or not they were evidence of the stated offences. However that is not my task. The material before the Court would not enable me to decide, by merely reading a particular document, whether it answered the description in the warrant. A background knowledge of the
nature of the offences charged and of how the particular documents fitted into the picture would be required. Presumably the officers authorised to execute the warrants had that knowledge. The Court has no jurisdiction to interfere with their seizure unless their actions are proved to be have been excessive. A mere examination of a particular document would be unlikely to establish that.

...

As I have said, there is, in my opinion, an obligation on the part of the Australian Federal Police to return documents which they are satisfied do not meet the description in the warrants. If this were not so, the seizure of such a vast quantity of documents would be likely to be held excessive."

It must be emphasised that the comments made by his Honour were not made in the context of the validity of the warrant. As commonsense would make clear and decisions such as George v Rockett (1990) 170 CLR 104; Lego and Dunesky emphasise, questions of validity of a warrant must be determined by reference to whether the warrant satisfies the statutory conditions in s.10(1). Relevantly, in a matter such as the present, that question will be determined by looking at the warrant and determining whether on its face it satisfies the statutory condition. The question whether a particular person might or might not need additional knowledge before attempting the execution of the warrant would really be irrelevant.

The majority judgment in Dunesky pointed out that the operation of the warrant there in consideration, in terms relevantly identical to the present, did not depend upon the subjective opinion of the executing officer. It was pointed out that the possibility that an executing officer might exceed or even misconstrue the terms of the warrant would not demonstrate that the warrant was invalid. The judgment continued (at 27-28):

"Two matters should be noted in this connection. First, the present question is one of initial validity of the warrant so that, of necessity, the matter is tested as at the date of its issue. Secondly, it must follow that anything done, or omitted to be done, by the executing officer cannot bear upon the initial validity of the warrant. The officer's function is to execute the warrant in accordance with (1) its terms and (2) the provisions of s.10(1)."

So far as the question of reasonableness of exercise of the warrant or the relief sought by the appellants of return of documents depended upon demonstrating that the officers exercising the warrants seized documents not complying with the terms of the warrant, that would be a matter upon which the appellants had the onus of proof. For the appellants merely to show that a small number of documents seized did not fall within the terms of the warrant would be inadequate for them to show that the manner of execution of the warrant was excessive. It would only lead to an order that the documents in question should be returned.

There is some difficulty in determining precisely the way in which the matter arose at the trial. The recollections of counsel appear to have dimmed. In the passage cited the learned trial judge mentions an invitation on the part of senior counsel for the applicant before his Honour to examine "a number of the documents". It is unclear whether particular documents were specified. Rather it seems that some reference may have been made to the description of certain documents as illustrative of documents that were said not to fall within the terms of the warrant. Correctly, his Honour declined in those circumstances to embark upon the task of examining documents. A mere allegation that documents did not meet the statutory description would not satisfy the onus of proof.

Whether what his Honour said in the passage cited, as to the need for background knowledge to determine the issue of whether a particular document fell within the terms of the warrant, is correct, it clearly does not involve any finding of fact. Senior counsel for the appellants submitted that the Court was bound by what his Honour said as there had been no notice of contention raising the matter. With respect, it is hard to see how there is any finding in the passage cited, given the circumstances in which the question arose, and the Court is clearly not bound by it.

There is, accordingly, no substance in the submission.

Legal Professional Privilege and Copy Documents

The starting point for any consideration of the law relating to legal professional privilege in Australia are the decisions of the High Court in Grant v Downs (1976) 135 CLR 674 and National Employers' Mutual General Insurance Association Ltd v Waind (1979) 141 CLR 648. In the former, the Court, by majority, Stephen, Mason, Jacobs and Murphy JJ, Barwick CJ dissenting, adopted as the law in Australia a sole purpose test rather than a dominant purpose test. The authoritative statement of general principle is to be found in the joint judgment of Stephen, Mason and Murphy JJ at 685. Their Honours spoke of the powerful considerations which suggested that the privilege should be confined within strict limits and stated the law in the following terms (at 688):

"All that we have said so far indicates that unless the law confines legal professional privilege to those documents which are brought into existence for the sole purpose of submission to legal advisers for advice or for use in legal proceedings the privilege will travel beyond the underlying rationale to which it is intended to give expression ... We consider that the sole purpose test should now be adopted at the criterion of legal professional privilege."

When read by itself this passage may suggest that legal professional privilege attaches to documents, rather than the information contained in them. That, however, is clearly not the case. Barwick CJ (at 677), who had adopted a dominant purpose test, spoke of legal professional privilege in terms which covered the use of the contents of a document as well as the use of the document itself. Stephen, Mason and Murphy JJ (at 682) spoke of "communications and materials" submitted by a client to his solicitor for the purpose of advice. That it is the communication rather than the piece of paper itself follows from the rationale of the privilege in the following terms (at 685):

"The rationale of this head of privilege, according to traditional doctrine, is that it promotes the public interest because it assists and enhances the administration of justice by facilitating the representation of client by legal advisers, the law being a complex and complicated discipline. This it does by keeping secret their communications, thereby inducing the client to retain the solicitor and seek his advice, and encouraging the client to make a full and frank disclosure of the relevant circumstances to the solicitor. The existence of the privilege reflects, to the extent to which it is accorded, the paramountcy of this public interest over a more general public interest, that which requires that in the interests of a fair trial litigation should be conducted on the footing that all relevant documentary evidence is available."

Jacobs J, in a separate judgment, referred to the existence of a rule that (at 690):

"... communications with one's legal adviser are privileged from disclosure and that the privilege extends not only to communications actually made but to material prepared for the purpose of communication thereof to the legal adviser." (emphasis added)

His Honour posed (at 692) the following question as apposite:

"... does the purpose of supplying the material to the legal adviser account for the existence of the material?"

Later in Waind Aickin J wrote (at 657) of the necessity:

"... that the sole purpose for bringing the relevant document into existence was its submission to legal advisers for obtaining legal advice or for use in litigation."

The subsequent decision of the High Court in Baker v Campbell (1983) 153 CLR 52, overruling in part the reasoning in O'Reilly v The Commissioners of the State Bank of Victoria (1982) 153 CLR 1 held that the doctrine of legal professional privilege was not confined to judicial or quasi-judicial proceedings, but applied to documents within the scope of a search warrant under s.10 of the Crimes Act. In that case Deane J spoke of the underlying principle as being concerned with the "general preservation of confidentiality" (at 114).

None of the cases so far discussed were concerned with the issue presently before the Court. The question whether privilege attaches to copies of documents otherwise not privileged, where those copies were brought into existence for the purpose of obtaining legal advice or for the purposes of extant or anticipated litigation has, however, been the subject of numerous decisions of single judges or intermediate courts of appeal, none binding upon this Court.

Some have taken the absolute position that privilege can never attach to a copy of a document itself not the subject of privilege: Shaw v David Syme & Co [1912] VLR 336; Chadwick v Bowman (1886) 16 QBD 561; Buttes Oil and Gas Co v Hammer (No 3) [1981] QB 223; Lambert v Home [1914] 3 KB 86; Ventouris v Mountain; The Italia Express [1991] 1 WLR 607; Dubai Bank v Galadari [1990] ChD 98; Lubrizol Corporation v Esso Petroleum Co Ltd [1992] 1 WLR 957. Others have taken the view that legal professional privilege will attach to copies of documents brought into existence for the purposes of obtaining advice or for litigation: Cole v Elders Finance & Investment Co Ltd [1993] 2 VR 356; Davis & Anor v Lambert-bain Pty Ltd and anor (1989) Tas R 274; Kaye v Hulthen (1981) QdR 289; McCaskill v Mirror Newspapers Ltd [1984] 1 NSWLR 66; Wade v Jackson's Transport Service Pty Ltd [1979] Tas R 215; Dubai Bank v Galadari (No 7) [1992] 1 WLR 106; R v Inland Revenue Commissioners; Ex parte Goldberg [1989] QB 267; Watson v Cammell Laird & Co (Shipbuilders & Engineers) Ltd [1959] 1 WLR 702; Lyell v Kennedy (No 3) [1884] 27 ChD 1; The Palermo [1883] 9 PD 6; Hunt v T & N Plc (1992) 68 BLC (2d) 133; Regional Municipality of Ottowa-Carlton v Consumers' Gas Co. Ltd; City of Ottowa et al., Third Parties (1990) 74 DLR (4th) 742; Hodgkinson v Simms et al (1988) 55 DLR (4th) 577. Yet others have adopted an intermediate position: JN Taylor Holdings Ltd (In liq) v Bond (1992) 57 SASR 21 - copy documents will not generally be privileged, however where disclosure would reveal the legal advisor's line of reasoning, the copy will be privileged (at 37); Water Authority of Western Australia v All Holdings Pty Ltd (1991) 7 WAR 137; Nickmar Pty Ltd v Preservative Skandia Insurance Ltd (1985) 3 NSWLR 44 - privilege attaches to copy only if there has been selective copying or the exercise of skill and knowledge by the solicitor (at 61G); Vardas v South British Insurance Co Ltd [1984] 2 NSWLR 652 dicta of Clarke J at 659-660; Anderson v Bank of British Columbia (1876) 2 ChD 644; Polk v Royal Trust Corp of Canada [1990] 1 WWR 78. The absolute view that privilege will never attach to copies is most stridently stated in the United Kingdom by Lord Denning, then Master of the Rolls, in Buttes Gas & Oil Co v Hammer (No 3) [1981] 1 QB 223 at 244 where his Lordship said:

"If the original document is privileged (as having come originally into existence with the dominant purpose aforesaid), so also is any copy made by the solicitor. But, if the original is not privileged, a copy of it also is not privileged - even though it was made by a solicitor for the purpose of the litigation: see Chadwick v Bowman (1886) 16 QBD 561. There are some cases which appear to give a privilege to copies on their own account, even when the originals are not privileged. They range from the Palermo (1883) 9 PD 6 down to Watson v Cammell Laird & Co (Shipbuilders & Engineers) Ltd [1959] 1 WLR 702. But those cases are suspect. They were adversely commented on in the Sixteenth Report of the Law Reform Committee on Privilege in Civil Proceedings (1967) (Cmnd. 3472). Since Waugh's case [1980] AC 521 it is open to us reconsider them. In my opinion, if the original is not privileged, neither is a copy made by a solicitor privileged. For this simple reason, that the original (not being privileged) can be brought into court under a subpoena duces tecum and put in evidence at the trial. By making the copy discoverable we only give accelerated production to the document itself."

The reference to "dominant purpose" in the above passage reflects the difference between the United Kingdom rule on privilege as stated in Waugh v British Railways Board [1980] AC 521 and the law in Australia as stated in Grant v Downes.

It will be seen that Lord Denning was speaking in the context of litigation and not in the context of copies brought into existence for the purpose of obtaining advice. This is not to suggest that his Lordship saw any relevant distinction. In the context of litigation, however, there seems little logic in refusing production of the copy of a document where the original document is itself not the subject of privilege, merely because the copy has been brought into existence for the purpose of the litigation.

The view in favour of absolute privilege of copies brought into existence for the sole purpose of legal advice being obtained, notwithstanding that the original of the document itself is not the subject of the privilege, finds support from what was said by James LJ in the Court of Appeal in Anderson v Bank of British Columbia (1876) 2 ChD 644 at 656 where his Lordship said:

"... as you have no right to see your adversary's brief, you have no right to see that which comes into existence merely as the materials for the brief."

In delivering the judgment of the Court, Watkins LJ referred to the Palermo (1883) 9 PD 6, a judgment of the Court of Appeal, and emphasised that the question depended upon the circumstances in which the copies came into existence. His Lordship said (at 278):

"But in this case we are concerned with copy documents, which, on the evidence, came into existence for the purpose and only for the purpose of obtaining legal advice from Mr Goldberg. As the law stands we have no hesitation in saying that because the documents came into existence for that purpose they do attract privilege so that Mr Goldberg cannot, without the consent of his client, comply with the requirements of the notice which has been served upon him."

The Court did not find it necessary to decide whether, as an alternative, the documents attracted privilege for the reasons set out in Lyell v Kennedy (No 3) (1884) 27 ChD 1 to which reference will shortly be made. It is clear, however, that his Lordship saw that as an alternative basis for the copy documents attracting the privilege.

There is, perhaps, a logical difficulty in the acceptance of an absolute privilege for copy documents where the sole fact which attracts the privilege is that the copies are prepared for the purpose of obtaining legal advice. It is generally accepted that once a document attracts a claim for privilege, that privilege continues unless and until waived. The absolute view has thus been suggested to have the consequence that once a copy has been made for the purpose of obtaining advice and is later returned to the client after that advice had been given, privilege would remain in the copy, notwithstanding that in the hands of the client, at least, the original, if still in existence, would not be the subject of privilege.

Byrne and Heydon, in the Australian edition of Cross on Evidence, criticise the conferral of privilege upon copies of documents (at 25,107-8) in the following passage:

"There are conflicting authorities on this matter. Those who would grant privilege to such a copy rely on the obvious fact that the document in question (the copy) was brought into existence solely for a privileged purpose. The contrary view asserts that a copy should not enjoy greater immunity than the original. In
these circumstances it is not possible to express a confident view as to the law in any jurisdiction. Nevertheless it is submitted that the arguments against privilege for a copy of a non-privileged document are more persuasive. If the solicitor, having made a facsimile of a non-privileged document, returns the copy and retains the original, no claim for privilege can be made. Why should it be otherwise with the copy? And where he loses the original but retains the copy so that this may be used at trial as secondary evidence of a lost document, why should the other parties be denied inspection of this evidence or the right to use it in evidence themselves? Conversely, a copy of a privileged document which is brought into existence for a non-privileged purpose is itself privileged, as is a copy of a privileged document which is made and sent by one defendant to another for the purpose of that defendant's use in pending or anticipated litigation."

The learned editors cite, in support of the proposition that the arguments in favour of the privilege not existing are more persuasive, the decision of Byrne J in Roux v Australian Broadcasting Commission [1992] 2 VR 577 at 589-600.

An intermediate approach was taken in Lyell v Kennedy (supra). That intermediate principle may be seen as an additional rule by those who support the general position that privilege can attach to copies of documents, on the one hand, or as an exception to the general rule by those who support a general rule that privilege should not attach to copies of documents, on the other.

The solicitor in Lyell v Kennedy had got together copies of certain burial certificates and other records and had made copies of the inscriptions on certain tombstones. In upholding a claim for privilege, Bowen LJ said (at 31):

"A collection of records may be the result of professional knowledge, research, and skill, just as a collection of curiosities is the result of the skill and knowledge of the antiquarian or virtuoso, and even if the solicitor has employed others to obtain them, it is his knowledge and judgment which have probably indicated the source from which they could be obtained. It is his mind, if that be so, which has selected the materials, and those materials, when chosen, seem to me to represent the result of his professional care and skill and you cannot have disclosure of them without asking for the key to the labour which the solicitor has bestowed in obtaining them."

Cotton LJ, who was of a similar view, emphasised that the very fact of particular copies having been made was apt to indicate the view which the solicitor took in respect of his client's case. Fry LJ agreed with the other members of the Court of Appeal on this point.

The headnote in Lyell v Kennedy, so far as it suggests that the case determined that prima facie copies of documents were not the subject of privilege, is incorrect, although, as Cooper J points out in Langworth Pty Ltd v Metway Bank Limited (1994) 126 ALR 428, the proposition may be inferred from the reasoning.

No doubt before the advent of photocopiers, the relevant part of a document was extracted when advice was sought of a solicitor. Likewise a solicitor preparing a brief in turn extracted relevant parts of documents rather than, in accordance with the present practice, photocopying the documents in full. A not infrequent practice adopted by solicitors today is to photocopy every document that might exist in seeking advice of counsel, on the theory, presumably, the more complete the documents briefed, the more likely the advice will be comprehensive.

Modern technology, and particularly the mechanistic making of copies, has led some critics to suggest that the circumstances today which might fall within the Lyell v Kennedy principle would be rare. Thus Clarke J in Vardas v South British Insurance Co Ltd [1984] 2 NSWLR 652 at 660 spoke of "mechanical reproductional copying" and distinguished between "the collating and recording of information in a document and the mere reproduction of that document" as being a matter of substance. The judgment of Clarke J was cited with approval by Olssen J with whom Matheson J agreed in JN Taylor Holdings Ltd (In Liq) v Bond (1991) 57 SASR 21, (affirmed on appeal sub nom Bond v JN Taylor Holdings Ltd (1992) 57 SASR 38). His Honour barely admitted the possibility of a Lyell v Kennedy exception, referring to it as involving "the rarest of circumstances". Perry J, with whom Matheson J also agreed, speaking of Lyell v Kennedy said (at 46):

"As to the second point, and the line of cases commencing with Lyell v Kennedy (No 3) (1884) 27 ChD 1, I very much doubt that it has any relevant application today. If it does, its application must necessarily be restricted to the very unusual situation where disclosure of a selected group of otherwise discoverable documents would necessarily reveal the content of the advice of a legal practitionery to his client or the nature of a communication between solicitor and client. No privilege could possibly be involved simply because disclosure would tend to indicate what someone thought of documents relevant to a particular case."

The question has been agitated in other jurisdictions. The Canadian cases appear to have elevated the Lyell v Kennedy view to the status of a general principle. Delivering the judgment of the majority of the British Columbia Court of Appeal in Hodgkinson v Simms et al (1988) 55 DLR (4th) 577, with which Taggart JA concurred, McEachern CJ BC stated the law for British Columbia in the following terms (at 589):

"It is my conclusion the law has always been, and in my view should be continue to be, that in circumstances such as these, where a lawyer exercising legal knowledge, skill, judgment and industry has assembled a collection of relevant copy documents for his brief for the purpose of advising on or conducting anticipated or pending litigation he is entitled, indeed required, unless the client consents, to claim privilege for such collection and to refuse production. ... It follows that the copies are privileged if the dominant purpose of their creation as copies satisfies the same test (Voth) as would be applied to the original documents of which they are copies. In some cases the copies may be privileged even though the originals are not.

I would not wish it thought that the foregoing applies only to collections of copies. It could apply also to a single copy-document, or to a number of unrelated copies if they meet the test of Voth as I have described it."

The reference to Voth is a reference to Voth Bros Construction (1974) Ltd v Board of School Trustees of School District 44 (North Vancouver) [1981] 5 WWR 91 where it had been held that in Canada the dominant purpose rule, as enunciated in Waugh v British Railways Board should apply.

Hodgkinson v Simms was followed by the General Division of the Divisional Court of Ontario in Regional Municipality of Ottowa/Carleton v Consumers Gas Co Ltd (1990) 74 DLR (4th) 742 (O'Leary, Southy and Sutherland JJ).

As the list of cases earlier cited in support of each view makes clear, decisions in Australia are divided, just as they appear to be in the United Kingdom.

What then is the true position? It is obvious that a copy of a document made by a client, where the document itself is not privileged, will not attract the benefit of legal professional privilege merely because it is handed to a solicitor. At the very least, for the copy to attract privilege it must be made for a purpose of the kind referred to in Grant v Downs. Those cases supporting the absolute existence of privilege to copied documents, do so relying upon Grant v Downs as authority for the proposition that what must be looked at is the purpose for which the document was "brought into existence" or "called into being". No doubt the circumstances in which an original document is produced or brought into existence will be determinative of the existence of legal professional privilege over that document. But Grant v Downs was not concerned with the question of whether privilege attached to copies.

Legal professional privilege is not restricted to documents. The privilege attaches to communications, whether those communications are recorded in documents or are oral. As the High Court in the passage cited above earlier indicated, an important rationale for privilege is to keep the communication passing between the solicitor and the client confidential. No one would doubt that a copy made at the time (or indeed later) of either the advice or request for advice would likewise be the subject of privilege, whatever the purpose of making that copy may be. The making of the copy for some purpose other than a Grant v Downs purpose, would hardly constitute a waiver. Where the copy is of an original document, itself not the subject of privilege, the privilege should consistently only attach to the copy where disclosure of it would or could disclose the request for advice which the
client has made of the solicitor or the request for advice which the solicitor had made of counsel.

Lyell v Kennedy may thus be seen as an illustration of a general principle. The fact that skill and responsibility were necessary to the production of excerpts is evidentiary of the ultimate conclusion that perusal of the excerpts would or could reveal the subject matter of the privilege communication. But it does not follow that because copies may now be made as a matter of routine, privilege may not attach.

If legal professional privilege is to be held to attach to copies of otherwise unprivileged documents, this can only be, in principle, because disclosure of those copies may tend to indicate, in the case of advice sought by a client, the subject matter of the advice to be taken. Giving of access to documents briefed to counsel to advise, likewise may tend to disclose the matter on which advice is sought or at least those matters which the solicitor deems relevant to brief counsel, if any selection process is involved. In both those cases it is not the contents of the photocopy as such which is the subject matter of the privilege. It is the communication between solicitor and client or solicitor and counsel which is protected.

This leads me to the conclusion that copies of documents otherwise not the subject of legal professional privilege are themselves the subject of such privilege only where the copies are made for the sole purpose of obtaining advice upon matters contained in or concerning the original and in circumstances where to compel production of the copy would or could operate to reveal the subject matter upon which advice was sought. I leave to one side the question of copies made for the purposes of actual or impending litigation. By confining the privilege in this way, the law ensures that the privilege attached only to the communication between solicitor and client or solicitor and counsel, rather than to the copy itself. If the copy were later returned to the client after advice had been given and no longer appeared in the context of a brief or request for advice, the copy itself would not retain the benefit of the privilege for it could no longer disclose the fact that advice was sought or the subject matter of the advice.

It is unnecessary in the present case to consider whether a different principle would apply to documents copied for the purposes of litigation. Clearly, in my view, copies of documents made for inclusion in counsel's brief for the purposes of litigation should attract the subject of privilege. Those who favour privilege extending to copies usually refer to such an example. While these documents are in context, that is to say, while they are in or with counsel's brief so as effectively to form part of it, that privilege exists. If the copies were later extracted from the brief so that the contextual significance of them was no longer apparent, there seems no reason why privilege should continue to attach to the copy.

In the present case the copies in the hands of the solicitor have been shown to have been made for the sole purpose of obtaining legal advice. The copies remain in the hands of the solicitor so that production of them could tend to reveal something of the matters upon which advice had been sought by the client. That will depend upon the context in which the copy is held (for example, whether the copy forms part of a brief or other request for advice or whether it is unconnected with any request for advice). This is a matter which will need to be determined by the trial judge. I would accordingly uphold the appeal to this extent and remit to the trial judge the question whether the relevant copies fall within the ambit of the privilege.

Privilege where communications made in furtherance of an improper purpose

It is not in dispute that legal professional privilege does not extend to communications between solicitors and clients in furtherance of an illegal or improper purpose. The present is not a case where the extent of improper purposes requires elaboration. The submission of the respondent is that in the present case the communications in question were made in pursuance of an illegal purpose, namely, breaches of ss.86(1)(a) and 86A of the Commonwealth Crimes Act relating to defrauding the Commonwealth.

It is not open on the state of authority to the respondent to submit that privilege is to be denied merely because an allegation is made that a crime or fraud has been committed. So much was made clear in O'Rourke v Darbishire [1920] AC 501 at 604 per Viscount Finlay and 614 per Lord Sumner. That this was so was also accepted by Gibbs CJ in Attorney-General (NT) v Kearney (1985) 158 CLR 501. Mason and Brennan JJ, at 516-517, agreed with Gibbs CJ.

In the passage cited, Gibbs CJ said (at 516):

"The privilege is of course not displaced by making a mere charge of crime or fraud or, as in the present case, a charge that powers have been exercised for an ulterior purpose. This was made clear in Bullivant v. Attorney-General (Vict.) [1901] A.C., at pp.201, 203, 205 and in O'Rourke v Darbishire [1920] A.C. 581, at pp.604, 613-614, 622-623, 632-633. As Viscount Finlay said in the latter case [1920] A.C. at p.604, `there must be something to give colour to the charge'. His Lordship continued:

`The statement must be made in clear and definite terms, and there must further be some prima facie evidence that it has some foundation in fact ... The Court will exercise its discretion, not merely as to the terms in which the allegation is made, but also as to the surrounding circumstances, for the purpose of seeing whether the charge is made honestly and with sufficient probability of its truth to make it right to disallow the privilege of professional communications.'"

Once it is accepted that something more than a mere allegation is necessary, that something more must appear from evidence. Putting the matter at the lowest, there must be some evidence from which the illegal or improper purpose may arguably appear, whether that be, as Gibbs CJ put it, "a prima facie case", or, as Lord Denning MR put it, in Buttes Gas & Oil Co v Hammer (at 246) "strong evidence of fraud".

The learned trial judge relied upon the information which had been admitted into evidence subject to the appellants' objection to it. Without the information there would have been no more than a bare assertion. The information was exhibited to an affidavit of the Second Respondent who was not himself the informant. That affidavit no doubt served to identify the information but did not enable the information to be treated as evidence of the matters contained in it. Not only was the information itself hearsay, emanating in part from undisclosed sources but the informant was not available for cross-examination. The information should not have been admitted into evidence.

As no other evidence of illegal or improper purpose was before the Court, his Honour should have held that the material for which privilege was claimed should, in the absence of agreement between the parties, have been examined to determine whether the privilege was properly claimed.

Accordingly I would allow the appeal in part.

I agree with the orders proposed by Beaumont J.

I certify that this and the

preceding thirty (30) pages

are a true copy of the Reasons

for Judgment herein of his Honour

Justice Hill.

Associate:

Date: 24 March 1995

IN THE FEDERAL COURT OF AUSTRALIA)

NEW SOUTH WALES DISTRICT REGISTRY) No NG 658 of 1994

GENERAL DIVISION )

On appeal from a Judge of the Federal Court of Australia

BETWEEN:

PROPEND FINANCE PTY LIMITED (ACN 002 275 685)

First Appellant

RICHARD SCHEINBERG HOLDINGS PTY LIMITED (ACN 000 625 742)

Second Appellant

CHUSAN NOMINEES PTY LIMITED (ACN 000 210 466)

Third Appellant

GINGES HOLDINGS PTY LIMITED (ACN 000 621 563)

Fourth Appellant

BEST & LESS (AUSTRALIA) PTY LIMITED (ACN 005 035 955)

Fifth Appellant

BARNEY RICHARD SCHEINBERG

Sixth Appellant

ALBERT SCHEINBERG

Seventh Appellant

BEREL GINGES

Eighth Appellant

MICHAEL DUNKEL

Ninth Appellant

AND:

THE COMMISSIONER, AUSTRALIAN FEDERAL POLICE

First Respondent

DETECTIVE SERGEANT ALAN TACIAK MEMBER OF THE AUSTRALIAN FEDERAL POLICE

Second Respondent

WENDY ELDER, JUSTICE OF THE PEACE

Third Respondent

CORAM: Beaumont, Hill and Lindgren JJ

PLACE: Sydney

DATE: 24 March 1995

REASONS FOR JUDGMENT

LINDGREN J:

INTRODUCTION

I have had the benefit of reading in draft the Reasons for Judgment of Beaumont J and of Hill J. I gratefully adopt their account of the facts, of the proceedings before the trial judge, of his Honour's reasons and orders, reported at (1995) 35 ALD 25, and of the grounds of appeal. This enables me to proceed immediately to state my conclusions on the appeal and my reasons for them.

CONCLUSIONS ON APPEAL AND REASONS

(a) Initial validity - non-disclosure.

The appellants make a formal submission that the warrants are invalid because of lack of disclosure to the third respondent by those who procured the issue by her of the warrants, of the fact that the Australian Federal Police already held up to 17 lever arch folders of material which satisfied the description in the warrants. The appellants accept that the submission is contrary to Full Court holdings in Lego Australia Pty Ltd v Paraggio (1994) 124 ALR 225 (FCA/FC) and in Dunesky v Elder (1995) 126 ALR 522 (FCA/FC) (and see Propend Finance Pty Ltd v Commissioner, Australian Federal Police (1994) 94 ATC 4399 (FCA/FC)).

(b) Initial validity - term of the warrants.

The appellants make two submissions. First, they make a formal submission that the warrants are invalid because the third condition does not limit the objective facts by reference to which reasonable grounds can be shown to exist, to those facts disclosed in the information on oath placed before the magistrate: see Black CJ (dissenting) in Dunesky v Elder (1995) 126 ALR 522 at 524. The appellants accept, however, that the submission is inconsistent with the holding of the majority in Dunesky v Elder, supra.

Secondly, the appellants submit that the following passage in the trial judge's Reasons for Judgment show that the terms of the warrants in the present case are "excessively broad or uncertain":

"The material before the court does not enable me to say that any particular documents had no relevant evidentiary value. If documents are identified as being irrelevant to the specified offences they should, of course, be returned.

Mr Bloom submitted that I should examine a number of the documents seized to determine whether or not they were evidence of the stated offences. However, that is not my task. The material before the court would not enable me to decide, by merely reading a particular document, whether it answered the description in the warrant. A background knowledge of the nature of the offences charged and of how the particular documents fitted into the picture would be required. Presumably, the officers
authorised to execute the warrants had that knowledge. The court has no jurisdiction to interfere with their seizure unless their actions are proved to have been excessive. A mere examination of a particular document would be unlikely to establish that.

The passage occurs in that part of the trial judge's Reasons which deal with the submission that the manner of execution was excessive. In the first sentence of the preceding paragraph, Davies J said, "There is no evidence that the officers engaged in the task exceeded the authority conferred by the warrants" (at 36).

The appellants did not refer the trial judge to any particular document and his Honour did not examine any particular document. In my opinion, the passage quoted does not constitute a finding by his Honour that it was impossible to know whether any particular document or documents fell within or without the warrant description. The trial judge's statements that "a background knowledge of the nature of the offences charged and of how the particular documents fitted into the picture would be required" and that "a mere examination of a particular document would be unlikely to establish [excessiveness of seizure]" (emphasis supplied) make this clear.

In Dunesky v Elder, supra, I said this:

"On one view, the subsection [sub-s 10 (1) of the Crimes Act 1914 (Cth)] authorises the issue of a warrant for the seizure of, relevantly, documents on the basis that the reasonable grounds for belief referred to in para (b) are to be found exclusively by a comparison of the terms of the documents inspected with the terms of the offence stated in the warrant (a view which has much to commend it). If so, the warrants in this case, by incorporating the language of s 10(1)(b), are within the authority conferred by s 10(1) so construed. Another view is that the subsection authorises the issue of a warrant for the seizure of, relevantly, documents on the basis that the reasonable grounds for belief referred to in para (b) may be found in part otherwise than by a comparison of the terms of the documents inspected with the terms of offence stated in the warrant.

According to this view, the subsection permits the issue of a warrant authorising seizure by reference to "reasonable grounds" based, for example, on the contents of the sworn information, or even on facts which were not before the Issuer. Again, according to this alternative construction, the warrants in the present case, by incorporating the language of s 10(1)(b), are within the authority conferred by s 10(1) so construed." (at 540)

In my view, nothing in the passage quoted earlier from the trial judge's Reasons for Judgment renders those observations inapplicable in the present case, although that passage may indicate that his Honour preferred the second construction to the first construction referred to by me.

It was not incumbent upon the trial judge, for any purpose, to embark upon an examination of documents seized. The appellants might have referred him to a particular document for the purpose of supporting a submission that the terms of the warrant alone did not establish reasonable grounds for believing that the document would afford evidence of the
commission of one or more of the offences referred to. If the trial judge had accepted that submission in relation to a document, a question would, no doubt, have been raised by the respondents as to whether the "reasonable grounds" referred to in the third condition of the warrant may properly be found to exist otherwise than by reference to facts referred to within the four corners of the warrant. The course of the trial was such that his Honour was not required to decide that question.

(c) Unreasonableness or excessiveness of execution of warrants.

I agree with what Beaumont J and Hill J have said in relation to this ground, and also refer to what I have said above. The warrants were valid and the onus was on the appellants to prove that documents lying outside their scope had been seized. They did not discharge that onus in my view.

(d) Legal professional privilege - copy documents.

The remaining two grounds of appeal relate to legal professional privilege. The following is the paragraph of his Honour's order relevant to the first:

"THE COURT 1 ... 2 ... 3 ... 4 ... 5 ...

6. Declares that copies of documents made for the
purpose of obtaining legal advice, the originals of which are not subject to legal professional privilege are not privileged. Examples of such documents are pages DO23 O74 - 076 forming part of document 676, page DO14 120 being part of document 341, and pages DO14 132-148 being part of document 341."

As will become clear, as a generalisation the first sentence in this declaration accords with my understanding of the law (but see pp 23 - 24 below). But as will also become clear, in my view special circumstances touching a particular copy document may require that its privilege status be determined by something more than an application of the general principle.

The circumstances in which the appellants asserted legal professional privilege are set out in the judgments of Beaumont J and Hill J. This ground raises the question whether the privilege attaches to a copy of a document where the copy was made for the sole purpose of the obtaining or giving of legal advice or of use in anticipated or current litigation (I will refer to these as "privileged purposes"), but the original was not made solely for a privileged purpose, that is to say, is "non-privileged".

The three leading High Court decisions on legal professional privilege did not have to address this issue. The cases are Grant v Downs (1976) 135 CLR 674 ("Grant v Downs") National Employers' Mutual General Insurance Association Ltd v Waind (1979) 141 CLR 648 ("Waind") and Baker v Campbell (1983) 153 CLR 52 ("Baker v Campbell"). When the majority in Grant v Downs held that a "sole purpose" rather than "dominant purpose" test was to be applied in the determination of the existence of legal professional privilege in relation to documents, what was contemplated was the documenting of a communication or of information solely for a privileged purpose.

In an important passage in Grant v Downs, Stephen, Mason and Murphy JJ stated the rationale of the privilege in these terms:

"The rationale of this head of privilege, according to traditional doctrine, is that it promotes the public interest because it assists and enhances the administration of justice by facilitating the representation of clients by legal advisers, the law being a complex and complicated discipline. This it does by keeping secret their communications, thereby inducing the client to retain the solicitor and seek his advice, and encouraging the client to make a full and frank disclosure of the relevant circumstances to the solicitor. The existence of the privilege reflects, to the extent to which it is accorded, the paramountcy of this public interest over a more general public interest, that which requires that in the interests of a fair trial litigation should be conducted on the footing that all relevant documentary evidence is available. As a head of privilege legal professional privilege is so firmly entrenched in the law that it is not to be exorcised by judicial decision. None the less there are powerful considerations which suggest that the privilege should be confined within strict limits." (at 685)

In Waterford v The Commonwealth (1987) 163 CLR 54 at 64, Mason and Wilson JJ described the rationale of the privilege as expressed in Grant v Downs as "increasingly compelling when applied to decision-makers in the public sector".

The status, in terms of privilege, of a copy of a non-privileged document which has been made solely for a privileged purpose must be determined by reference to the rationale of the doctrine as given in the passage from Grant v Downs quoted above. The High Court's formulation is narrower than the passage quoted below from the judgment of Cotton LJ in Lyell v Kennedy (1884) 27 Ch D 1 (CA), a case which has given rise to some difficulty. In that case the defendant's solicitor had caused to be made for a privileged purpose "copies of entries in registers and public records, and of other original documents" and "photographs of tombstones and houses" and extracts of them, and the plaintiff sought to inspect and take copies of them (at 26 Cotton LJ referred to the solicitor's having made "copies of the inscriptions on certain tombstones" rather than to "photographs of tombstones"). Cotton LJ said this:

"... the reason for this privilege being, as has frequently been stated, that the English law being technical, the greatest facilities ought to be afforded to every one who is involved in litigation to consult a solicitor and to receive from his solicitor communications which shall be privileged, and to enable the legal adviser of the party employing him to make a sufficient investigation, and so obtain the fullest means of ascertaining what advice he shall give as to the course to be adopted, without affording the opportunity to an opponent of prying into those communications, those searches, those responses, which are according to English law all of a confidential character." (at 18-19)

His Lordship's expansive references to a solicitor's making "sufficient investigation" and obtaining "the fullest means of ascertaining what advice is to be given" and to "searches" and "responses" are not consonant with the caution in the joint judgment in Grant v Downs that "the privilege should be confined within strict limits" (at 685), a caution which was endorsed with the later warning (at 688) that if the privilege was not confined to documents brought into existence for the sole purpose of submission to lawyers for advice or for use in legal proceedings, it would travel far beyond the rationale which it is intended to express (but see below as to the true proposition for which Lyell v Kennedy may be authority). The first limb of his Lordship's statement refers to lawyer-client communications. In terms, the second limb would accord privilege to all searches and inquiries made by a solicitor and the responses received, whether, in either case, in original or copy (form).

Although it is convenient to speak of "privileged documents", this involves an ellipsis which is apt to mislead. What are privileged from disclosure are communications, whether between lawyer and client or between one of them and a third party, and information which happen to be in documentary form; cf the passages in Grant v Downs referred to by Hill J in his judgment; O'Reilly v The Commissioners of the State Bank of Victoria (1983) 153 CLR 1 at 22 (Mason J); Roux v Australian Broadcasting Commission [1992] 2 VR 577 (Vic/Byrne J) at 598; Cross on Evidence (4th Aust'n ed., 1991) at [25108].

The making of copies of non-privileged documents solely for a privileged purpose is far removed from the situation
contemplated by the High Court in Grant v Downs, Waind and Baker v Campbell. When the judgments in those cases referred to the purpose for which a document was "brought into existence" they were referring to the purpose for which information was, for the first time, being put into documentary form for communication. It is to take those authorities out of context and to dissociate them from the rationale referred to above, to say that they make a copy privileged merely because, literally, it is brought into existence solely for a privileged purpose.

In his judgment, Hill J refers to many cases in which the question of legal professional privilege in relation to copies of non-privileged documents has arisen. They reveal two inconsistent lines of authority. Lyell v Kennedy, supra, has been a source of much of the difficulty. The cases can be classified as:

1. cases in which it is accepted that privilege attaches to copies simply because the purpose of the making of the copy was a privileged purpose satisfying the relevant test (in Australia, the "sole purpose" test of Grant v Downs, in England, the "dominant purpose" test of Waugh v British Railways Board [1980] AC 521);

2. cases in which that proposition is rejected, whether or not reference is also made to additional factors which might make the copy document privileged after all.

Appendix I to these Reasons is a table of cases of the first class; Appendix II is a table of cases of the second class; and Appendix III is a table of other discussions of the present issue.

In terms of the rationale identified in the joint judgment in Grant v Downs referred to earlier, it must be asked whether the privilege must be accorded to copies of non-privileged documents made solely for a privileged purpose in order that clients may be effectively legally advised and effectively represented in litigation? In my opinion, the answer is "no". In my view the public policy which supports the existence of legal professional privilege is satisfied if copy documents stand in the same position in relation to privilege as the original. If the original is privileged, so is a copy of it even though the copy was not made solely for a privileged purpose (although this aspect of privilege relating to copy documents is not of immediate concern, the position as stated is supported by authority: Komacha v Orange City Council unreported, (NSW/Rath J) 30 August 1979; Brambles Holdings Ltd v Trade Practices Commission (No 3) (1981) 58 FLR 452 (FCA/Franki J); Vardas v South British Insurance Co Ltd [1984] 2 NSWLR 652 (NSW/Clarke J); Eager v The Australian Government Solicitor and Ryan, unreported, 28 September 1992 (FCA/Wilcox J). If the original is non-privileged, so is a copy of it even though the copy was made for a privileged purpose. (I put to one side questions of waiver which may, for example, arise when a copy is made of a privileged document for a non-privileged purpose.)

Issues of legal professional privilege arise in different contexts. In inter partes litigation they arise in contexts of inspection of discovered documents and of documents produced on subpoena or pursuant to a notice to produce. Outside of inter partes litigation, they may arise in the context of inspection of documents seized under a search warrant or of documents made available under compulsion of law to an investigating authority. Examples of legislation providing for the latter are to be found in s 77C of the Bankruptcy Act 1966 (Cth), (cf Bond v Tuohy, unreported, (FCA/Ryan J), 24 February 1995), ss 30-33 of the Australian Securities Commission Act 1989 (Cth) and s 155 of the Trade Practices Act 1974 (Cth).

The general principle of assimilating the privilege status of a copy and that of the original overcomes the often noted anomalies associated with the first proposition referred to earlier, that is to say, that copying solely for a privileged purpose, without more, attracts privilege. Examples of these anomalies are that a photocopy of a publicly registered document made solely for a privileged purpose would be privileged whereas the original used for the same purpose would not be, and that a photocopy made solely for use in anticipated litigation would be privileged whereas a photocopy of the same document made earlier and not for a privileged purpose, although in fact subsequently used in that
litigation, would not be.

Moreover, to accord conclusive effect to a "sole purpose of copying" test in relation to non-privileged documents is inconsistent with the approach taken to the copying of privileged documents. Copies made of the latter for such purposes as record keeping or supply to officers of the client (not privileged purposes) are treated as privileged, and the "sole purpose" test of Grant v Downs has not been seen to stand in the way of this: see Komacha v Orange City Council, supra; Brambles Holdings Ltd v Trade Practices Commission (No 3), supra; Vardas v South British Insurance Co Ltd, supra; Eager v The Australian Government Solicitor and Ryan, supra. This raises the possibility of a yet further anomaly: that a copy made for a non-privileged purpose of a non-privileged document could be privileged if it was not made directly from the non-privileged original but from an intervening copy of it, which copy was made for a privileged purpose!

There may be cases in which the general principle to which I referred earlier (the privilege status of a copy is the same as that of the original), in the absence of explanation or elaboration, appears to be an inadequate statement of the law. But reflection will show that that principle accommodates such cases after all. The cases are all ones in which inspection would reveal more than merely the content of the copy document.

Firstly, inspection may reveal a line of thinking, whether of lawyer or of client, which led to the selection of the material which has been copied or the collocation of it in its assembled form. In such exceptional cases, the privilege attaches in order to prevent intrusion upon the confidentiality of processes involved in the client-lawyer relationship rather than the content of the document itself.

Secondly, a copy document may bear the client's or lawyer's highlighting, underlining or other symbolic marking or even annotation. If these give a clue as to the client's or lawyer's line of thinking (in the case of annotations they will certainly do so) the privilege arises. According to the circumstances, it may be proper to regard the composite document (the copy and the addition to it) either as a single original document the whole of which is privileged, or as two severable documents only one of which (the addition) is privileged.

Thirdly, copied documentation may be so integrated and mixed up with privileged original material that the former cannot be inspected without the latter being seen or its nature being revealed (cf Churton v Frewen (1865) 2 Dr & Sm 390; 62 ER 669). This would be so where, for example, phrases, expressions, sentences or paragraphs are quoted within a client's request for advice, a solicitor's observations to counsel, or a barrister's opinion. Concealment of the privileged material may not be a practicable solution. It may
not be practicable physically, or even if it is, what is inspected may, in context, suggest the nature of that which is hidden. Generally it will be found appropriate if not necessary to treat the entire document, including the copied material, as a single document the whole of which is attracts the privilege.

(For recent considerations of "severance" of privileged from non-privileged parts of a document, see Curlex Manufacturing Pty Ltd v Carlingford Australia General Insurance Ltd [1987] 2 Qd R 335 (Qld/FC) and Grofam Pty Ltd v Australia and New Zealand Banking Group Ltd (1993) 43 FCR 408 (FCA/Heerey J).)

The three cases just referred to are consistent with the general principle enunciated earlier: the position is the same as if it had been the original non-privileged documentary material rather than a copy of it that had been selected and assembled, or marked by the client or lawyer, or (after a "cut and paste" exercise) included in place of the quotation. Whether the non-privileged original or a copy of it is in issue, privilege will be attracted if and only if inspection would reveal a communication or line of thought which, consistently with the rationale referred to in the joint judgment in Grant v Downs, is privileged from disclosure.

Copies of non-privileged documents may be in a barrister's brief or in a solicitor's file. I would not allow the circumstance of such location alone to conclude the privilege
status of the copy. In this respect my views accord with those of Byrne J in Roux v Australian Broadcasting Commission, supra at 600.

It has been said or implied in some of the cases, with attribution to Lyell v Kennedy, supra, that copies of non-privileged documents are privileged where the copies result from "selective copying" or "research" or "the exercise of skill and knowledge" by a solicitor. In my opinion the rationale of legal professional privilege as described in Grant v Downs does not justify such a proposition. The proposition is too broad. In this respect, my views are in accord with those expressed by Debelle J in J N Taylor Holdings Ltd v Bond (1991) 57 SASR 21 (SA/Debelle J) at 35-37 (appeal dismissed, sub nom Bond v J N Taylor Holdings Ltd (1992) 57 SASR 38 (SA/FC)) and by Byrne J in Roux v Australian Broadcasting Commission, supra, at 597-598.

Debelle J and Byrne J suggested that Lyell v Kennedy, supra, is in fact authority only for the proposition that copies of non-privileged documents may themselves be privileged if and to the extent that inspection would reveal a lawyer's line of thinking. Cotton LJ at 26 gave as the reason why the solicitor in that case would be inhibited if privilege were not accorded, that inspection "might shew what his view was as to the case of his client as regards the claim made against him" and added that he would not say whether privilege should be accorded if any different case were made with regard to
documents like those before the Court. Bowen LJ agreed. He referred (at 31) to the solicitor's exercise of "professional knowledge, research and skill", "judgment" and "professional care" as justifying the treatment of the copy documents as privileged, but added that he too would not say what ought to be done in another case. Fry LJ agreed with Cotton and Bowen LJJ.

Statements can be found in the judgments in Lyell v Kennedy which, taken in isolation, support either, the broader proposition or the narrower "disclosure of line of thinking" ground as the basis on which the documents were held to be privileged in that case. What is clear is that their Lordships expressly refrained from laying down a principle which would govern the fate of all copies of non-privileged documents made by solicitors for use in litigation. Lyell v Kennedy should be treated as authority for only the narrower proposition, and the actual according of privilege to the copy documents in question in that case as turning on the special facts of the case.

When a solicitor prepares to advise and advises his or her client or briefs counsel, the common associated copying of documents always involves some measure of professional skill and knowledge, first in the identification and perhaps procuring of that which is to be copied, and next in the compiling of the copied material. In my view, none of "selective copying", "research" or "exercise of skill and
knowledge" provides a principled exception to the general rule that copies of non-privileged documents are themselves not privileged.

A claim of privilege calls for resolution of a conflict between the two public interests referred to in Grant v Downs. One is the availability of all relevant documentary evidence in the interests of a fair contest between informed and equipped litigants and of truth-finding. The other is uninhibited communication in the lawyer-client relationship in the interests of the effective seeking and providing of legal advice and legal representation. In at least one respect, investigatory procedures differ from inter partes litigation in the present context. In inter partes litigation, where a party's opponent knows of the existence of a non-privileged original document (that knowledge may be acquired through the party's discovery of the copy) since, and to the extent that, its production (from whatever source) can be compelled, denial of privilege to the copy merely accelerates revelation of the document's contents, and there is no countervailing public interest in according privilege to the copy; see Buttes Gas and Oil Co. v Hammer (No 3) [1981] 1 QB 223 (CA) at 244D per Lord Denning MR. But in the case of investigatory procedures, such as the execution of search warrants or the service of notices under the authority of such statutory provisions as those referred to at p 13 above, the relevant investigating authority may not be aware of the identity of particular documents encompassed by the description in the warrant or
notice which are in fact held. That authority will become aware of them only upon execution of the warrant or enforcement of the notice. What result does the rationale of legal professional privilege produce in these circumstances? Is it an undue intrusion into the confidentiality of the lawyer-client relationship that copies of non-privileged documents made solely for a privileged purpose should be compulsorily made available for inspection by the public authority where the public authority would not otherwise know of their existence? I think not.

In such a case, the countervailing public interest is the free availability of relevant evidence, in this case for public law purposes of truth-finding often as a part of criminal investigation rather than the private law purpose that litigants be properly informed and equipped for a fair contest. Would a client be unduly inhibited in seeking legal advice or being professionally represented in litigation, and would a legal practitioner be unduly inhibited in giving advice and representing a client in litigation, if production of such copy documents for inspection could be compelled? I think not. Ex hypothesi, when the copy is made the client or lawyer knows that the original document is non-privileged and that if the relevant public authority were to become aware of its existence, production of it for inspection would be compellable. It would only be in a case where the client or lawyer was confident that the authority would not become aware of the existence of the original that it would even be arguable that uninhibited communication in the lawyer-client relationship or uninhibited representation of the client in litigation was interfered with by denial of the privilege. I do not think that the public interest in the confidentiality of communication in the lawyer-client relationship recognised in the rationale referred to in Grant v Downs, requires that an exception be made in the respect mentioned to the general principle that a copy of a non-privileged document made solely for a privileged purpose is also not privileged.

In the case of search warrants, particularly those which describe the things to be searched for and seized in general terms such as the three-condition warrants with which this case is concerned, a practical difficulty arises. This is that unless the client or someone on his or her behalf asserts the privilege in relation to particular documents, those executing the warrant will, in the ordinary course, see all documents covered by the warrant including any which, it may transpire, are privileged. This difficulty has been foreseen and provided for in the "General Guidelines between the Australian Federal Police and the Law Council of Australia" dated 7 June 1990 where a warrant is to be executed on the premises of lawyers or of their professional associations (a copy of the Guidelines is annexed to the judgment of Beaumont J). The Guidelines allow for the making of a claim of privilege and the securing of the documents pending the determination of the claim. But privileged documents may also be present on other premises.

Assume that a written advice is located at a client's home and that a barrister's brief to advise is located in the barrister's chambers. Assume that the advice and that the "memorandum to counsel" in the brief each has stapled to it copies of non-privileged documents which were made solely for the purpose of the giving and seeking of legal advice respectively. In each case, in conformity with the reasons given earlier, legal professional privilege does not attach to the copies merely because the making of them literally satisfies the "sole purpose" test of Grant v Downs. The client or barrister may choose to detach the non-privileged annexures and assert privilege in respect of the clearly privileged advice or memorandum to counsel. If, however, privilege is asserted in respect of the entirety (including the non-privileged copy documents annexed), the issue raised will fall to be determined by reference to the "revelation of protected communications and lines of the thinking" test referred to earlier. In the case of the execution of a warrant on the premises of lawyers or their professional associations, if the Guidelines are adhered to, it will not be necessary for those executing the warrant to take a decision immediately as to the validity of the privilege claim, because the Guidelines sensibly provide for a mechanism under which that decision is deferred. In any case where some such accommodation is not reached, the executing officers will need to take a decision immediately as to the validity of the claim by reference to the test mentioned.

Davies J directed, in para 4 of the Order dated 7 September 1994 and entered on 16 September 1994, that subject to an order that certain specified documents were not subject to legal professional privilege by reason of the taint of illegal or improper purpose, issues as to whether legal professional privilege attached to the documents seized were to be determined after they had been examined. This was consistent with the following passage from his Honour's Reasons:

"I am satisfied that some of the documents on their description would appear to fall within the privilege and that some would not. Some of the documents are bundles which include copy documents of the type I have mentioned. There are many documents in respect of which I would not wish to make a ruling without inspecting the documents themselves. In the end, I have concluded that the claims made in the affidavits should not be accepted without there being such an inspection. In the absence of agreement between the parties, a Judge, a Registrar or an agreed independent person should examine the original documents to determine which of them would fall within the privilege ..." (35 ALD 25 at 42)

But para 6 of the Order was the declaration set out at pp 6-7 earlier in these Reasons. Yet it is possible that examination of the "copies of documents made for the purposes of obtaining legal advice" referred to in para 6 would reveal the existence of exceptional circumstances of the kind to which I have referred. I agree with the passage quoted above from his Honour's Reasons and with his direction that privilege issues be determined after the documents in question are examined. I do not agree, however, with the unqualified terms of the declaration in para 6.

If, relevantly, a declaration was to be made, it should have been of the form "Declares that copies of documents made solely for the purpose of obtaining legal advice, the originals of which are not subject to legal professional privilege, are not, by that reason alone, privileged" (my insertions underlined). Paragraph 6 was not part of the orders proposed by his Honour in his Reasons for Judgment and apparently it found its way into the Order as a result of two somewhat lengthy directions hearings on 19 August 1994 and 7 September 1994 on the subject of the form of the orders to be made.

In my opinion, the appeal should be allowed in respect of para 6 of the trial judge's orders.

(e) Legal professional privilege - where communication made in furtherance of an illegal or improper purpose.

I agree with what Beaumont J and Hill J have said in their respective judgments on this issue.

CONCLUSION

I concur in the orders proposed by Beaumont J.

I certify that this and the preceding 24 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lindgren.

Associate:

Dated: 24 March 1995

Heard: 20, 21 February 1995

Place: Sydney

Decision: 24 March 1995

Appearances: Mr D H Bloom QC, Mr A Robertson and Mr N J Williams of counsel instructed by Minter Ellison Morris Fletcher, solicitors appeared for the appellants.

Mr P Roberts and Mr D G Staehli of counsel instructed by The Commonwealth Director of Public Prosecutions appeared for the respondents.

APPENDIX I

Cases in which it has been accepted that legal professional privilege attaches to copies simply because the purpose of the making of the copy was a privileged purpose satisfying the relevant test ("sole purpose" in Australia, "dominant purpose" in England);

The Palermo (1883) 9 PD 6 (CA). Action for damages arising from collision of ships - copies of depositions of ship's master and crew in relation to collision obtained by solicitors for owner of the ship Rivoli - the depositions had been taken by the Receiver of Wrecks under s 432 of Merchant Shipping Act 1854 - original held by Board of Trade which refused to provide a copy to owners of Palermo - motion by latter for leave to inspect and take copies of the copy depositions held by Rivoli's solicitors - for Butt J it sufficed that copies obtained "to form part of the brief" - Court of Appeal affirmed Butt J without calling on the respondents and "without delivering a judgment at length" (at 8).

Watson v Cammell Laird & Co (Shipbuilders and Engineers) Ltd (1959) 1 WLR 702; [1959] 2 All ER 757 (CA). Copy of hospital case notes relating to injured plaintiff made by his solicitor to assist them in advising plaintiff on claim - accepted that defendants could have compelled hospital to produce original
notes and would have been entitled to inspect them - Lord Evershed MR said that in so far as professional skill may be required for the privilege to exist, it was exercised when the solicitor advised the plaintiff to go to the hospital and get copy of the notes.

Wade v Jackson's Transport Services Pty Ltd [1979] Tas R 215 (Green CJ). Copy of unprivileged notice of injury form - original held by defendant's insurer - copy made for sole purpose of defending proceedings and obtaining professional advice on them - original and copy discovered in defendant's list.

Kaye v Hulthen [1981] Qd R 289 (Qld/Master Weld). Bundle of 35 pages of photocopied copy documents obtained by defendant's solicitors from Workers' Compensation Board of Queensland relating to payment of Workers' Compensation benefits to injured plaintiff, discovered by defendant - plaintiff refused production for inspection.

McCaskill v Mirror Newspapers Ltd [1984] 1 NSWLR 66 (NSW/Hunt J). Defendant's successful claim of privilege in respect of copies of unprivileged documents discovered in its list, made solely for privileged purpose.

Reg v Board of Inland Revenue; ex parte Goldberg [1989] QB 267. Taxation barrister served with notices under sub-s 20 (3) of the Taxes Management Act 1970 (UK) requiring him to produce copies of documents in his possession for purpose of providing legal advice to clients.

Davis v Lambert-Bain Pty Ltd [1989] Tas R 274 (Tas/Underwood J). Action against plaintiff's insurance broker - at request of its solicitors, broker obtained photocopies of contents of its insurer's file concerning claim - plaintiff's application for order for production of photocopies for inspection.

APPENDIX II

Cases in which it has been rejected that legal professional privilege attaches to copies simply because the purpose of the making of the copy was a privileged purpose satisfying the relevant test ("sole purpose" in Australia, "dominant purpose" in England) whether or not reference is also made to additional factors which might make the copy privileged after all.

Chadwick v Bowman (1886) 16 QBD 561. Defendant to action for price of goods sold and work done had written letters to third persons and received answers from them, the letters and answers being relevant to the issue whether he had authorised the placement of orders on his behalf - defendant had not retained copies of the letters sent by him or the originals of the letters received by him - his solicitor obtained for the purposes of the action copies from the other parties to the correspondence - production for inspection ordered.

Shaw v David Syme & Co [1912] VLR 336 (Vic/FC). Action against newspaper proprietor for damages for libel arising out of report of earlier court proceedings against plaintiff - defendant discovered verbatim transcript of notes of evidence taken on the earlier hearing obtained by defendant for supply to its solicitors for advice after plaintiff threatened action.

Lambert v Home [1914] 3 KB 86 (CA). Action for damages for personal injuries in motor accident - defendant's solicitors had shorthand note taken of proceedings in two earlier county court actions arising out of same accident, and transcript made - defendant discovered transcript but unsuccessfully objected to produce it for inspection on ground of privilege.

Buttes Gas and Oil Co v Hammer (no 3) [1981] 1 QB 223 (CA). Action for damages for slander - at 244 Lord Denning MR cast doubt on cases which accorded privileged status to copies of non-privileged originals made for privileged purpose and said that if original not privileged neither was copy.

Vardas v South British Insurance Co Ltd [1984] 2 NSWLR 652 (NSW/Clarke J). Action for indemnity under fire policy in which defendant insurer raised defences of arson by, or with connivance of, plaintiff - defendant claimed privilege in respect of 33 copy documents discovered by it and made for privileged purpose - in obiter dicta at 659D-661B, Clarke J expressed opinion that copy is in no better position in relation to privilege than original.

Nickmar Pty Ltd v Preservatrice Skandia Insurance Ltd (1985) 3 NSWLR 44 (NSW/Wood J). Action on insurance policy - plaintiff's motion for order that insurance loss adjusters' reports to defendant's solicitors together with enclosures discovered in defendant's list are not privileged - annexures included copies of unprivileged documents - Wood J held that copying a non-privileged document solely for a privileged purpose does not attract the privilege.

Dubai Bank Ltd v Galadari [1990] 1 Ch 98 (CA). Bank sought inspection and opportunity to copy affidavit of a former employee of the defendants which had never been filed in court proceedings but which had been obtained by solicitors for privileged purpose - appeal against order for disclosure of the copy affidavit dismissed because (1) no clear evidence as to whether copy was made for privileged purpose or was a copy sent by deponent to defendants and passed on by them to their solicitors; (2) in any event, since original not privileged in defendants' hands, copy made for privileged purpose not privileged either.

Ventouris v Mountain [1991] 1 WLR 607: [1991] 3 ALL ER 472 (CA). Application against insurers and/or underwriters for discovery of documents obtained by defendant's solicitor after the date when they were instructed for the purpose of anticipated or pending litigation.

J N Taylor Holdings Ltd (in liq) v Bond (1991) 57 SASR 21 (SA/Debelle J) (on appeal, sub nom Bond v J N Taylor Holdings Ltd (in liq) (1992) 57 SASR 38 (SA/FC)). Plaintiffs applied for order that defendants describe documents for which they claimed privilege in their list - these included "bundles of copy documents obtained by solicitors ... from third parties" and made for a privileged purpose - some of the original documents were not privileged - defendants ordered to make further and better discovery by describing the copy documents, without disclosing contents and without disclosing lawyer's line of reasoning - appeal to Full Court dismissed.

Lubrizol Corporation v Esso Petroleum Co Ltd [1992] 1 WLR 957 (Aldous J). Action for patent infringement - copies of experts' affidavits sworn in Canadian proceedings were made for privileged purpose in United Kingdom - inspection sought and ordered.

Roux v Australian Broadcasting Commission [1992]2 VR 577 (Vic/Byrne J). Ruling in the course of the trial of a defamation action, on a claim of privilege in respect of documents produced on subpoena - Byrne J rejected the claim that copies of non-privileged documents made solely for a privileged purpose are privileged and explained the references in Lyell v Kennedy to "professional knowledge, research and skill" and to "selection" of the materials copied, was intended to refer to disclosure of the view of the defendant or of its lawyers of the plaintiff's case.

Director of Public Prosecutions (Commonwealth) v Blake, (NSW/James J) unreported, 7 February 1992. Notice to produce law stationer's searches of land title comprising only copies of registered documents of title or registered dealings - search made solely for privileged purpose.

Water Authority of Western Australia v AIL Holdings Pty Ltd (1992) 7 WAR 135 (Acting Master Adams). Defendant obtained order for production and inspection of photocopies of unprivileged originals.

Langworth Pty Ltd v Metway Bank Ltd (1994) 126 ALR 428 (FCA/Cooper J). Privilege unsuccessfully claimed for copies of unprivileged documents obtained from third parties for privileged purpose.

APPENDIX III

Suzanne B McNicol, Law of Privilege (Law Book Co 1992) at 95-97.

Law Reform Committee, Sixteenth Report (Privilege in Civil Proceedings), (1967), HMSO Cmnd 3472), para 20, p 9 (fn).

Neil J Williams, "Four Questions of Privilege: the Litigation Aspect of Legal Professional Privilege" (1990) 9 Civil Justice Quarterly, 139 at 154-160.

Cross on Evidence (4th Aust'n ed., 1991) para [25275].

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