THE SUPREME COURT
Record No. 277/1999
Denham J.
Murray J.
Geoghegan J.

IN THE MATTER OF A HIGH COURT APPLICATION
IN THE MATTER OF THE FOREIGN TRIBUNAL’S EVIDENCE ACT, 1856
IN THE MATTER OF AN APPLICATION BY THE UNITED STATES DISTRICT
COURT I FOR THlE DISTRICT OF UTAH, CENTRAL DIVISION
IN THE MATTER OF PROCEEDINGS IN THE COURTS OF THE CENTRAL
DISTRICT OF UTAH
IN CONSOLIDATED CASES NO.2: 29CV00200B

BETWEEN
NOVELL INC.
PLAINTIFF I RESPONDENT
and
MCB ENTERPRISES, ET AL.
DEFENDANTS
NOVELL INC.
PLAINTIFF I RESPONDENT
and
COMPUTER RECYCLERS, ET AL.
DEFENDANTS

AND IN THE MATTER OF ORDER 39 RULE 39 OF THE RULES OF THE SUPERIOR COURTS

BETWEEN
SEAN RAINEY AND JACQUELINE RAINEY
APPELLANTS
and
NOVELL INC.
RESPONDENT

	Judgment of the Court delivered by The Hon. Mrs. Justice Susan Denham on the 30th day of January, 2001.[Nem Diss]

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1.	Issue

This is an appeal by Sean Rainey and Jacqueline Rainey, hereinafter referred to as the appellants, against an order made by the High Court (O’Sullivan J.) on the 18th October, 1999, and the subsequent refusal to discharge the same order on the 30th November, 1999, for the examination on oath of the appellants before an examiner, Paul McGarry, Barrister-at-Law, pursuant to the Foreign Tribunal’s Evidence Act, 1856, and Order 39 Rule 39 of the Rules of the Superior Courts. The appellants ask this court to exercise its discretion under the Foreign Tribunal’s Evidence Act, 1856, and refuse the application that there be an examination of the appellants on oath or affirmation and production of documents for the benefit of court proceedings in Utah.

2.	The High Court

On the 18th October, 1999, the High Court (O’Sullivan J.) ordered that P.J. Kennedy, Sean Rainey and Jacqueline Rainey attend before Paul McGarry, Barrister at Law, who was appointed examiner, and to submit to being examined on oath or affirmation touching the testimony so required and do then and there produce:

1)	All documents that refer or relate to any IntranetWare for small Business or other Novell Inc software that AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey received from Modus Media International or any other person or company in 1997 such as invoices order forms purchase order packing slips inventory lists or reports purchase or acquisition reports receipts correspondence documents evidencing payment accounting reports and so forth
2)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc software that AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey sent to MBC Enterprises LLC and/or James Craghead in 1997 1998 or 1999 such as invoices order forms purchase orders packing slips inventory lists or reports purchase or acquisition reports receipts correspondence documents evidencing payment accounting reports and so forth
3)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc Software that MEC Enterprises LLC and/or James Craghead

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returned to AUI P.S. Kennedy Sean Rainey and/or Jacqueline Rainey in 1997 1998 or 1999 such as invoices order forms purchase orders packing slips inventory lists or reports purchase or acquisition reports receipts correspondence documents evidencing payment accounting reports and so forth
4)	All documents that refer to any IntranetWare for Small Business or other Novell Inc. Software that AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey sent to Computer Commodity Inc. And/or Michael Jacobson in 1997 1998 or 1999 such as invoices order forms purchase orders packing slips inventory lists or reports purchase or acquisition reports receipts correspondence documents evidencing payment accounting reports and so forth
5)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc. Sofiware that Computer Commodity Inc. And/or Michael Jacobson returned to AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey in 1997 1998 or 1999 such invoices order forms purchase orders packing slips inventory lists or reports purchase or acquisition reports receipts correspondence documents evidencing payment accounting reports and so forth
6)	All documents including but not limited to letters facsimiles e-mail and other correspondence whether electronic or written both draft and final versions between AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey and MBC Enterprises LLC James Craghead Computer Commodity Inc. And/or Michael Jacobson in 1997 1998 or 1999 that refer or relate to any IntranetWare for Small Business or other Novell Inc software
7)	All copies of IntranetWare for Small Business or other Novell Inc. Software that MBC Enterprises LLC James Craghead Computer Commodity Inc and/or Michael Jacobson returned to AUI P.J. Kennedy Sean Rainey and/or Jacqueline Rainey.”
The High Court ordered that the examiner take down in writing the evidence of the said witnesses and when completed transmit same to the Master of the High Court for transmission to the President of the Tribunal desiring the evidence of such witnesses.

3.	Appeal

Against that order the appellants have appealed to this court on the grounds that:
1.	The learned High Court Judge erred in law and failed to give any or any sufficient weight to the submission on behalf of the appellants that the affidavit upon which the order 

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was granted was not a full and frank affidavit and did not disclose to the court matters which were material to the applicant, in particular that there were proceedings in Ireland between the plaintiff and the appellants arising from the same matters which were the subject of the said proceedings in Utah; that there was a criminal investigation taking place in Ireland arising from matters common to the Irish and Utah proceedings;

2. That having regard to the foregoing the plaintiff was manoevring itself into a position whereby it could cross-examine the appellants before the Irish proceedings came on for plenary hearing and thereby circumvent the normal procedure in a common law jurisdiction and the appellants’ right to fair procedures under the Constitution that the defendants can elect to testify or not to testify in the course of proceedings and if that they do elect to testify that the normal procedure would be that they give their evidence direct before cross-examination.

4.	Stay

On the 7th December, 1999, this court ordered that the order of the High Court dated the 18th October, 1999, insofar as it relates to the appellants be stayed until after the determination of the appeal. The court noted the undertaking of counsel on behalf of the appellants to expedite the lodgement in the Office of the Registrar of all relevant books of appeal and that the appeal be listed for mention before this court on the 14th January, 2000.

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5.	Amendment of Notice of Appeal

The appellants then brought a motion to the Supreme Court seeking to amend the appellants’ notice of appeal by the addition of a number of grounds. In an ex tempore judgment on the 11th day of April, 2000, the Supreme Court, Murphy J., with whom the other members concurred, held:

“This is an application in the first instance by the Appellants for liberty to amend the notice of appeal served by them herein. Effectively, it might be said that the original notice of appeal sought to make the case that the learned trial Judge, Mr. Justice O’Sullivan, in making the order which he did under the Foreign Tribunals Evidence Act, 1856, had erred in the exercise of his discretion. Now it is sought to make the case that he had no jurisdiction to make the order. Whilst this may seem a radical amendment that is not quite the case and indeed the need for the amendment is explained by the circumstances which have evolved since the hearing before Mr. Justice O’Sullivan.

Effectively at issue is the nature of the process which it was intended to conduct in this jurisdiction pursuant to the letter of request issued by the US District Court, Central District of Utah, on the 17th August, 1999. It is contended by Counsel on behalf of Novell Incorporated that what they seek is to record evidence which would be admissible in the first instance in summary proceedings in the United States and if that is unsuccessful in the plenary proceedings there. As a result of information which became available since the hearing before Mr. Justice O’Sullivan as to the nature of the proceedings in the United States and indeed as to the relevant United States law the Appellants now explain that the proceedings in this jurisdiction pursuant to the order of Mr. Justice O’Sullivan would be in the nature of an investigative process sometimes described a “a discovery process”, they seek to make that argument in this Court conceding that it was not agreed in the Court below that such a process would not fall within the terms or provisions of the 1856 Act. I am of opinion that the amendment should be allowed. It is in a sense the obverse of the case already made. It is an inquiry or an argument as to the nature of the order to be made by Mr. Justice O’Sullivan in the High Court and it seems to me that this is a proper issue for the parties to ventilate in this Court. Accordingly I would allow the amendment but of course on terms that the Respondents be afforded an adequate opportunity to meet it. This would necessitate at least a brief adjournment and I would propose that the amendment be allowed and the matter be adjourned to the next list to fix dates.”

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6.	Letter of Request

This action arises from a letter of request dated the 18th August, 1999 signed by the Honourable Dee Benson, Judge of the United States District Court, Central District of Utah.
This request states:
“The United States District Court for the District of Utah, Central Division, presents its compliments to the Registrar of the High Court and other appropriate judicial authorities of the Republic or Ireland and requests international judicial assistance to issue Orders of Subpoena Duces Tecum to require witnesses to appear for questioning and produce documents so that evidence may be obtained for a civil proceeding before this court in the above-captioned matter.
This court requests the assistance described herein as necessary in the interests of justice in order to obtain evidence needed in the above-captioned proceeding before this court.”

The proceeding is the consolidated case and the letter sets out the names and addresses of the parties to the proceeding and their representatives; these include Novell Inc., plaintiff, Gregory M. Hess, Esq., attorney for the plaintiff, MBC Enterprises, LLC, defendants, Michael Jacobson and Computer Commodity Inc., defendants, the attorneys for the defendants, MBC Enterprises, Computer Recyclers Inc., defendants, and the attorneys for the defendants, Computer Recyclers Inc. and others. The nature of the proceedings is described as:
“This is a civil action in which the plaintiff, Novell, Inc., alleges, among other things, that more than 2000 copies of its copyrighted Intranetware for Small Business Software (the “Software”) were sent for destruction and recycling by a company in the Republic of Ireland called Modus Media International (“Modus”). Novell Inc. further alleges that the Software was stolen or otherwise wrongfully diverted from Modus and ended up in the hands of an Irish company named AU Industries, Ltd (“AUI”). Novell, Inc. contends that AUI sent the Software to defendants MBC Enterprises, LLC, Computer Commodity, Inc., and associated individuals in the United States, who sold quantities of the Software to other companies, including defendant Computer Recyclers, Inc. Based on these allegations, Novell, Inc. asserts claims against defendants for copyright and trademark infringement and seeks to recover damages and other relief.”

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The names and addresses of witnesses to be examined are listed and they include P.J Kennedy, Sean Rainey and Jacqueline Rainey. The Sean Rainey and Jacqueline Rainey named are the appellants in this action.

Under the heading “Subject Matter of Examination and Items to be Produced” the letter of request states:

“Novell, Inc. seeks to examine the above-referenced witnesses concerning all matters relating to the IntranetWare for Small Business software that was allegedly diverted from Modus Media International and sent to the United States, including but not limited to the following specific topics:

1. Any IntranetWare for Small Business or other Novell, Inc. software that AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey received from Modus Media International or any other person or company in 1997 or 1998.

2. Any IntranetWare for Small Business or other Novell, Inc. software that AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey sent to MBC Enterprises, LLC, and/or James Craghead in 1997, 1998 or 1999.

3. Any Intranetware for Small Business or other Novell, Inc. software that MBC Enterprises, LLC, and/or James Craghead returned to AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey in 1997, 1998 or 1999.

4. Any IntranetWare for Small Business or other Novell, Inc. software that AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey sent to Computer Commodity, Inc. and/or Michael Jacobson in 1997, 1998 or 1999.

5. Any IntranetWare for Small Business or other Novell, Inc. software that Computer Commodity, Inc. and/or Michael Jacobson returned to AUI, P.J.
Kennedy, Sean Rainey and/or Jacqueline Rainey in 1997, 1998 or 1999.

6. Any conversations or other communications that AUI, P. J. Kennedy, Sean Rainey, and/or Jacqueline Rainey had with MBC Enterprises, LLC, James
Craghead, Computer Commodity Inc. and/or Michael Jacobson in 1997, 1998 and/or 1999, referring or relating to any IntranetWare for Small Business or other Novell, Inc. software.

7. The sources, amount, and division between the parties of all revenues and profits obtained by AUI, P.J. Kennedy, Sean Rainey, Jacqueline Rainey, MBC Enterprises, LLC, James Craghead, Computer Commodity, Inc., and/or Michael Jacobson from IntranetWare for Small Business or other Novell, Inc. software in 1997, 1998 or 1999.

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Novell, Inc. also seeks the production of all documents and tangible things in the witnesses’ possession or control that relate to the IntranetWare for Small Business sofiware that was allegedly diverted from Modus Media International and sent to the United States, including but not limited to the following specific categories of documents:

i)	All documents that refer or relate to any IntranetWare for Small Business or other Novell, Inc. software that AUI, P.J. Kennedy, Sean Rainey and/or Jacqueline Rainey received from Modus Media International or any other person or company in 1997, such as invoices, order forms, purchase orders, packing slips, inventory lists or reports, purchase or acquisition reports, receipts, correspondence, documents evidencing payment, accounting reports and so forth.

ii)	All documents that refer or relate to any IntranetWare for Small Business or other Novell, Inc. software that AUI, P.J. Kennedy, Sean Rainey and/or Jacqueline Rainey sent to MBC Enterprises, LLC, and/or James Craghead in 1997, 1998 or 1999, such as invoices, order forms, purchase orders, packing slips, inventory lists or reports, purchase or acquisition reports, receipts, correspondence, documents evidencing payment, accounting reports, and so forth.

iii)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc. software that MBC Enterprises, LLC, and/or James Craghead returned to AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey in 1997, 1998, or 1999, such as invoices, order forms, purchase orders, packing slips, inventory lists or reports, purchase or acquisition reports, receipts, correspondence, documents evidencing payment, accounting reports, and so forth.

iv)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc. software that AUI, P.J. Kennedy, Sean Rainey, and/or Jacqueline Rainey sent to Computer Commodity Inc. and/or Michael Jacobson in 1997, 1998, or 1999, such as invoices, order forms, purchase orders, packing slips, inventory lists or reports, purchase or acquisition reports, receipts, correspondence, documents evidencing payment, accounting reports, and so forth.

v)	All documents that refer or relate to any IntranetWare for Small Business or other Novell Inc. software that Computer Commodity Inc. and/or Michael Jacobson returned to AUI, P.J. Kennedy, Sean Rainey and/or Jacqueline Rainey in 1997, 1998 or 1999, such as invoices, order forms, purchase orders, packing slips, inventory lists or reports, purchase or acquisition reports, receipts, correspondence, documents evidencing payment, accounts reports, and so forth.

vi)	All documents, including but not limited to letters, facsimiles, e-mail, and other correspondence, whether electronic or written, both draft and final versions, between AUI, P,J. Kennedy, Sean Rainey and/or Jacqueline Rainey, and MBC Enterprises, LLC, James Craghead, Computer Commodity Inc., and/or Michael Jacobson in 1997, 1998 or 1999, that refer or relate to any IntranetWare for Small Business or other Novell Inc. software.

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vii) All copies of IntranetWare for Small Business or other Novell, Inc. software that MBC Enterprises, LLC, James Craghead, Computer Commodity Inc., and/or Michael Jacobson returned to AUI, P.J. Kennedy, Sean Rainey and/or Jacqueline Rainey.

This Court therefore respectfully requests that the Registrar of the High Court or other appropriate judicial authority of the Republic of Ireland issue Orders of Subpoena Duces Tecum to the above-named witnesses, in such form as is appropriate requiring that the above-named witnesses submit to such examination and produce such documents and tangible things.”

Arising out of that request and after the hearing before the High Court O’Sullivan J. made the order the subject of this appeal. The said order is set out previously in this judgment

7.	Chronology of Events

The chronology of events as presented by the appellants, which was not contested, is as follows:
1)	On the 13th May, 1997 Novell supplied a large quantity of INWSB software to Modus Media International, Kildare for “reworking”. It is alleged by Novell that they had agreed with Modus Media that the “...diskettes contained in the said consignment would be destroyed”. Novell alleges that the diskettes were in turn transported to the premises of AU Industries Ltd. in Cork for destruction. Novell alleges that AU Industries Ltd. transported the diskettes to, inter alia, Computer Company Inc.(“CCI”) of Fort Lauderdale, Florida, in breach of Novell’s copyright in the software(see paragraphs 3 - 6 of the Novell statement of claim against AU Industries in the proceedings delivered 20th March, 1998). These events took place on or after 26thMay, 1997 (see Novell’s reply to particulars dated June 2nd, 1999 - reply No. 8”).

2)	On 12th March, 1998, a plenary summons was issued in an action by Novell Inc. against AU Industries Ltd. in Ireland (the High Court, 1998, Record No. 3240P).
3)	On 20th March, 1998, Novell commenced their first set of proceedings in the U.S. District Court, Central District of Utah, against MBC Enterprises PLC et al.
4)	On 20th March, 1998, Novell served the statement of claim in their Irish proceedings against AU Industries Ltd.

5)	On 8th March, 1998, AU Industries Ltd. enter an appearance in the Irish proceedings.

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6)	On 16th April, 1998, Novell commenced their second set of proceedings before the U.S. District Court, District of Utah, against CCI and others.

On 16th April, 1998, two members of the Gardai seized Novell products at the premises of AU Industries Ltd., at Mallow Road, Cork. (See Novell’s replies to particulars dated 25th February, 1999, filed in the Irish proceedings.)

7)	On 20th July, 1998, Novell applied to join Mr. and Mrs. Rainey as additional defendants in their Irish proceedings and delivers an amended plenary summons and statement of claim alleging fraud against the appellants and their company, AU Industries Ltd., and also alleged that the appellants had been involved in the handling of stolen property (see paragraphs 6 - 10 of the amended statement of claim dated 20th July, 1998). In replies to particulars dated 4th November 1998, (Reply No. 17) Novell contends that the handling of stolen property spans the period from May, 1997 to December, 1997.

8)	On 9th September, 1998 the two sets of U.S. proceedings are consolidated.

9)	On 18th December, 1998, first scheduling order is made in the U.S. proceedings.

10)	On 12th March, 1999, Novell deposes Michael Jacobson of CCI in the U.S. proceedings.

11)	On 5th March, 1999, Novell deposes James Craghead of MBC and a defendant in his own right in the U.S. District Court proceedings.

12)	On 17th August, 1999, U.S. District Court issues letters of request to Irish Courts. The said letter of request is set out previously in this judgment.

13)	On 18th October, 1999, the High Court (O’Sullivan J.) orders enforcement of letters of request. The terms of this judgment have been set out previously in this judgment.

14)	9th November, 1999, is original date set for the examination of the appellants and P.J. Kennedy. The examination was adjourned to 24th November, 1999.

15)	On 24th November, 1999, the examination of the appellants was further adjourned. However, deposition of P.J. Kennedy proceeded. Mr. Kennedy claimed privilege against incrimination by way of answer to most questions.

16)	On 30th November, 1999, the High Court (O’Sullivan J.) refused to set aside order of October 18th, 1999, insofar as it concerns the appellants.

17)	2/12/1999. Appellants made application to the Supreme Court for an Order giving leave to abridge time for service of a notice of motion seeking a further stay on the Order of the High Court made the 18th October 1999 pending the determination of an appeal. Supreme Court abridged time for the service of a notice of motion to this effect returnable for December 7th 1999.

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18)	7/12/1999. Supreme Court placed a stay on the Order of Mr. Justice O’Sullivan made October 18th 1999 pending the determination of the appeal to the Supreme Court and lists case for mention before the Supreme Court on Friday 14th January 2000 with a view to fixing a date for the hearing. Appellants undertake to lodge the books of appeal in the Supreme Court with all possible speed. Respondents directed to file an affidavit from their US lawyers setting forth the purposes of the inquiry and the use to which the evidence in answer would be put, along with an affidavit of US law in this regard.

19)	14/1/2000. Matter put back for mention to 21/1/2000

20)	20/1/2000. Respondents file affidavit of US law and affidavit of their US legal agents. (See affidavits of Clarke Waddoups dated 15/1/2000 and affidavit of Gregory M. Hess dated 15/1/2000).

21)	21//1/2000. Supreme Court directs that further affidavits from the appellants to be filed by 29/2/00; legal submissions to be filed in exchange between the parties by 3 1/3/00, and appeal listed for 11/4/00.

22)	Early April, 2000. Appellants file affidavits of Gifford W. Price (on US law), and fourth affidavit of Sean Rainey (sworn 3/4/00).

23)	3/4/2000. Appellants deliver legal submission.

24)	3/4/2000. Appellants file motion to be allowed amend notice of appeal to add two additional grounds of appeal.

25)	11/4/2000. Appellants appeal listed for hearing before the Supreme Court. Appellants inform the court that they had learned indirectly of information suggesting that one or both sets of the respondents US litigation had settled, possibly thereby rendering the appeal moot. Counsel for the respondent confirms that there had been some settlement in the matter, although the details were unknown. After hearing submissions, the Supreme Court directs the appellant to move its motion to be allowed file additional grounds of appeal, and having done so, the Supreme Court directs:

(i)	Leave for the appellant to amend its grounds of appeal;

(ii)	Adjournment of the balance of the appeal, with leave to the respondent to file a further affidavit should they wish, with the matter to appear in the next list to fix dates. Supreme Court does not direct the respondent to file an affidavit setting out details of the settlement but suggests that that be the subject of correspondence inter partes with leave to the appellants to apply to the court if needs be for an Order directing the respondents to furnish an affidavit setting out particulars of the settlements.

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26)	31/10/2000. Appellants, in their capacity as defendants to the High Court proceedings brought by Novell, move application to the High Court for an Order disallowing the claim by Novell to privilege in respect of certain documents discovered in their High Court proceedings. As a result of this application, privilege is conceded or directed to be conceded in respect of all bar two documents.

27)	4/12/2000. Second date listed for hearing of substantive appeal by appellants. The appellants inform the court that the respondent had settled its U.S.A. proceedings against MDC Enterprises, but that the status of the second U.S.A. proceedings was unclear. Counsel for the respondent confirms this, and states that he had received instructions that his clients wish the matter to proceed in respect of the second U.S.A. action. However, details of the status of the second U.S.A. proceedings are unclear, and the court adjourns the matter pending the making of further inquiries by the respondent, to the next list to fix dates.

28)	End December, 2000. Respondent’s High Court action listed in High Court list to fix dates. Respondents fail to appear and the action is struck out of the list to fix dates. Respondents intimate an intention to apply to have the matter re-listed.

29)	January 2001. Appellants intimate intention to issue High Court proceedings of their own against the respondent.

30)	12/1/2001. Third listed date for substantive hearing of appeal in the Supreme Court.

8.	Irish Proceedings

Novell Inc.’s proceedings in Ireland are against AU Industries Limited, Sean Rainey and Jacqueline Rainey. In the proceedings Novell Inc. claim that Sean and Jacqueline Rainey are directors of AU Industries Limited. Novell Inc.’s claim is for damages for negligence, damages for fraud and dealing in stolen property and it also seeks injunctions. Novell Inc. claims that the diskettes in issue were transported to AU Industries Limited for destruction and that AU Industries Limited were under the personal control of Sean and Jacqueline Rainey. Novell Inc. claim that wrongfully, fraudulently, negligently and in breach of Novell Inc.’s copyright over the diskettes, AU Industries Limited, on the instructions of Sean and Jacqueline Rainey, transported the diskettes, which had been entrusted to them for

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destruction, to the U. S.A. and/or sold them, inter alia, to Computer Company, Inc., Fort Lauderdale, U.S.A. The shipment was in breach of Novell Inc.’s copyright. And it is claimed that there were losses and damage to Novell Inc.

These facts overlap those set out in the letter of request, which is set out earlier in this judgment. Both allege wrongful actions by AU Industries Limited in relation to diskettes of the same software.

9.	Submissions on Behalf of the Appellants

Mr. John Trainor, S.C., counsel for the appellants, made two central submissions in support of the application to have the Order of October 18, 1999 set aside. First, he submitted that there was oppression. He submitted that it was oppressive against the appellants in that he and/or she can be examined on an issue in the action pending in this jurisdiction; that the plaintiff/respondent would be in a preferred position for knowing the information; that it is an inequality as it puts the plaintiff/respondent in a position they otherwise would not be in; that it unfairly gives the plaintiff/respondent an advantage. He argued that as there were allegations of fraud against his clients, the proposed procedure was particularly oppressive. Furthermore a lodgment had already been made in the Irish proceedings.

Secondly counsel submitted that even allowing for the different nature of pre-trial proceedings in the U.S. courts the request was essentially for discovery of documents rather than “testimony” within the meaning of the 1856 Act. This would be impermissible (see inter alia judgment of Devlin J. (as he then was) in Radio Corporation of America v.

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Rowland Corporation [1956] 1 All E.R.545 and in this jurisdiction McCracken J. in In Re Air Crash in the Florida Everglades v. Valujet Airlines unreported judgment 1st July 1999.

10.	Submissions of the Respondent

Mr. Frank Clarke, S.C., counsel on behalf of the plaintiff/respondent, submitted that it was the practice of the courts to give effect to such requests, in conformity with international practice and the Comity of Nations. He submitted that the court should not depart from normal procedure. Insofar as there is any concern about self incrimination he submitted that the provisions of section 5 of the Foreign Tribunals Evidence Act, 1856, provides sufficient safeguards. It was submitted that there was no lack of candour on the part of the plaintiff/respondent who applied to the High Court on 18th October, 1999, for the order on foot of the request of Judge Dee Benson of the United States District Court for the District of Utah; that the Irish proceedings are unaffected by the existence of the U.S. proceedings and their existence is irrelevant to the original application. There was therefore no intention to conceal them. It was submitted that the approach of the court should be in accordance with the decision in In Re Chomutov Savings Bank 1957 I.R. 355 where Maguire C.J. stated at p. 357:

“The order will require Mary Samuel (formerly Mary Pienart) to appear before District Justice Patrick D. O’Grady on 21st November, 1957 to give evidence and product documents touching the testimony required by the said letter of request. Her attitude before the Court and her decision to give evidence, withhold or produce documents is a matter for herself.”

Counsel submitted that the application should be treated as a subpoena duces tecum in proceedings before the court. However, he pointed out that in assessing the matter the court

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should take note of the fact that the word ‘discovery’ has a different meaning in Ireland and Utah.

Counsel stated that if there is a problem with the Order of the High Court, if the documents indicated are too broad, then the Order could be amended appropriately. Thus, the Order could refer only to the software the subject of the claim as set out in the complaint, and be limited to the topics and documents which could be proved under Irish Rules of Evidence.

Finally he pointed out that the matter is listed for 7th February, 2001, in Utah.

11.	Law

The Foreign Tribunals Evidence Act, 1856, provides, in Section 1:

“Where, upon an Application for this Purpose, it is made to appear to any Court or Judge having authority under this Act that any Court or Tribunal of competent Jurisdiction in a Foreign Country, before which any Civil or Commercial Matter is pending, is desirous of obtaining the Testimony in relation to such Matter of any Witness or Witnesses within the Jurisdiction of such first mentioned Court, or of the Court to which such Judge belongs, or of such Judge, it shall be lawful for such Court or Judge to order the Examination upon Oath, upon Interrogatories or otherwise, before any Person or Persons named in such Order, of such Witness or Witnesses accordingly; and it shall be lawful for the said Court or Judge, by the same Order, or for such Court or Judge or any other Judge having Authority under this Act, by any subsequent Order, to command the Attendance of any Person to be named in such Order, for the Purpose of being examined, or the Production of any Writings or other Documents to be mentioned in such Order, and to give all such Directions as to the Time, Place, and Manner of such Examination, and all other Matters connected therewith, as may appear reasonable and just; and any such Order may be enforced in like Manner as an Order made by such Court or Judge in a Cause depending in such Court or before such Judge.”

A protection against self-incrimination is afforded in section 5 which provides that:

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“Provided also, That every Person examined under any Order made under this Act shall have the like Right to refuse to answer Questions tending to incriminate himself, and other Questions, which a Witness in any Cause pending in the Court by which or by a Judge whereof or before the Judge by whom the Order for Examination was made would be entitled to; and that no Person shall be compelled to produce under any such Order as aforesaid any Writing or other Document that he would not be compellable to produce at a trial of such a Cause.”

Order 39 Rule 39 of The Rules of the Superior Courts, 1986, provides:

“Where under The Foreign Tribunals Evidence Act, 1856, ... any civil or commercial matter, or any criminal matter, is pending before a Court or tribunal of a foreign country, and it is made to appear to the Court, by commission rogatoire, or letter of request or other evidence as hereinafter provided, that such Court or tribunal is desirous of obtaining the testimony in relation to such matter of any witness or witnesses within the jurisdiction, the Court may, on the exparte application of any person shown to be duly authorised to make the application on behalf of such foreign Court or tribunal, and on production of the commission rogatoire, or letter of request, or other evidence pursuant to the Foreign Tribunals Evidence Act, 1856, section 2, or such other evidence as the Court may require, make such order or orders as may be necessary to give effect to the intention of the Acts above mentioned in conformity with the Foreign Tribunals Evidence Act, 1856, section 1.”

12.	Decision

There are essentially two matters which this Court has to decide. The first is whether in all the circumstances the proposed examination of the appellants at this stage would be oppressive. If the Court were of the view that the High Court order would not be oppressive, or that a more limited order to be worked out by this Court would not be oppressive, the next question which would have to be considered is whether the purpose of the proposed examination is essentially for discovery of documents in the Irish sense rather than for the purposes of testimony whether on an application for summary judgment under the Utah procedures or a full contested trial in Utah. In other words is the American plaintiff promoting these procedures essentially seeking evidence to be directly used or is the plaintiff

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essentially seeking documentary information to enable it to obtain evidence. An examination for the latter purpose would be impermissible under the 1856 Act. The modern English case law in these matters is based on the English Act of 1975 which in turn arose out of an international treaty. The English courts have made it quite clear that the principles under the new Act are not the same as those which applied under the 1856 Act which is repealed in England. The Irish Courts are bound by the 1856 Act as it is still the law in this jurisdiction.

Under the principle of comity, the courts of this jurisdiction would always be favourably disposed towards complying with such a letter of request from a court of another jurisdiction. The courts should be slow to refuse such an order. There is nevertheless a settled jurisprudence as to the circumstances in which it would be appropriate for a court to exercise its discretion against making the order. One instance of this is where the order would be oppressive in all the circumstances. The two issues involved in this decision are not entirely disconnected in that it is well established that the extent of the documentation required may itself be an element of oppression. These principles are well set out by Sir Richard Scott V-C in First American v. Sheikh Al-Nahyan [1998] 4 All E.R.439, although the English Court of Appeal presided over by Sir Richard Scott V-C was applying the more liberal 1975 Act now enacted in England. After referring to the importance in general of acceding to letters of request by foreign courts, Sir Richard Scott commented at p. 449 that this was particularly so “where the litigation arises out of a fraud practised on an international scale “. He pointed out that a civil action in any part of the world based upon an aspect of that fraud will be an action in respect of which there are likely to be individuals in many different countries who are potential witnesses with relevant evidence to give. It is significant that in this case (and this is one of the complaints of the appellants) no mention of the Irish proceedings was made

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in the original grounding affidavit. The cases therefore are not internationally entwined in the sense referred to by Sir Richard Scott but the court has little doubt that  information gleaned as a consequence of the examination would be extremely useful or at least could be extremely useful to the plaintiff/respondent in the Irish proceedings. There is a much more relevant passage later in the judgment of Sir Richard Scott. In that case evidence was being sought from Price Waterhouse the well known accountancy firm. On page 451 of the judgment, Sir Richard Scott stated as follows:-
“First American have given no undertaking that they will not join Price Waterhouse in a civil action, whether the existing action or a new action, in an attempt to recover damages for Price Waterhouse’s alleged knowing complicity in the fraud. First American’s lawyers plainly believe that they already have material that justifies them in making public allegations to that effect. It is, it seems to me, inherently oppressive to hold over the head of two witnesses serious allegations of complicity in fraud and the real possibility of being joined as defendants in a civil action based on that alleged complicity, while at the same time requesting an opportunity for a wide examination of the two witnesses on the very topics that would be relevant in an action against them. For the reasons I have endeavoured to give, I would not refuse to give effect to these letters of request on the ground that the main purpose underlining them was not to obtain evidence for the existing action but was to obtain evidence for a contemplated action against Price Waterhouse. In Rio Tinto Zinc Corp. v. Westinghouse Electric Corp., RTZ Services Limited v. Westinghouse Electric Corp. [1978] 1 All ER 434 at 444 119781 AC 547 at 611 Lord Wilberforce commented:

‘The fact, if it be so, that evidence so obtained may be used in other proceedings and indeed may be central in those proceedings is no reason for refusing to allow it to be requested...’

I accept that, in general, that would be so. But allegations of fraud raise special considerations and so long as First American hold themselves free to use any information they may obtain from these two witnesses in a civil action for fraud in which the witnesses, or their firm, are defendants, the requests are, in my judgment oppressive.”

While the judgment cited is that of another jurisdiction it has persuasive authority. Moreover, in having regard to the Constitutional guarantee of fair procedures the Court must ensure that

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parties to litigation are allowed to bring their cases on an equal and fair footing. This means that the Court, when exercising discretion must take into account whether an order sought in favour of one party would be oppressive of another in the same or related proceedings. As previously noted there are already proceedings in being before the High Court between the respondent and the appellants arising from the same subject matter as the proceedings in Utah. There are clear allegations of fraud against the appellants in the Irish proceedings. If the plaintiff/respondent was permitted to examine the appellants on the very subject of the Irish proceedings (albeit for the purpose of the proceedings in Utah), it would give them an advantage and potentially place the appellants in an invidious position with regard to preparing and advancing their own defence to the case of fraud being made against them by the respondent. It would, in all the circumstances, be oppressive to permit the respondent to examine the appellants in advance of the hearing of the fraud action against them in Ireland. If the proceedings in Utah were adjourned until after the Irish proceedings the position would then be quite different.

Since the court would allow the appeal on this ground it is reluctant to consider in any detail the second ground since it may be more appropriate for this court to reconsider the parameters of the 1856 Act in some case where it arises directly. It has been explained to the court that in pre-trial procedures in the District Court in Utah the evidence if obtained could be used by either side to establish that they had an unlosable case, in which event summary judgment could be obtained. On the other hand, if the case went on to a full trial the evidence could be used at the trial. On the face of it there would seem to be nothing in the 1856 Act which would preclude the evidence being used for an application for summary judgment in those circumstances. The evidence in that event would itself be “testimony” and not information

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with a view to obtaining evidence analogous to discovery in the Irish sense. Given the limitations on the High Court order to which Mr. Frank Clark S.C. was prepared to agree, which would have the effect that the evidence obtained would be confined to evidence which could be used in an Irish Court but that such evidence having been obtained could be used either for the purpose of summary judgment or at the final trial, the members of the court would incline to the view that there would be no legal obstacle in the way of the court approving such an order. But it is not necessary to express a final opinion on the matter as it does not arise in the light of the view the court takes on the oppression issue.

The court will allow the appeal.