T-2028-95
B E T W E E N:
WHIRLPOOL CORPORATION and
INGLIS LIMITED
Plaintiffs
- and -
CAMCO INC., and GENERAL ELECTRIC COMPANY
Defendants
REASONS FOR ORDER AND ORDER
GILES, A.S.P.:
The motion before me seeks the production of documents from the U.S. plaintiff's U.S. lawyers filed in connection with the prosecution of the U.S. plaintiff's Canadian patent. The documents in question are part of an exchange between the U.S. plaintiff's U.S. lawyer and persons admitted by plaintiff's counsel to be Canadian patent agents and not solicitors.
The exchange took place for the purposes of prosecuting the Canadian patents now in issue. No litigation was specifically contemplated at the time.
The evidence of the U.S. lawyer is that, in entering into the exchange with the Canadian patent agents, he thought the correspondence would attract solicitor and client privilege.
At least two types of solicitor and client privilege exist which might be considered here. First, is the privilege attaching to communications between a solicitor and his client for the purposes of obtaining legal advice or assistance. The second, is the privilege attaching to reports and information prepared by third parties for the use of the client's solicitor in litigation. In my view, the second type of privilege which has been discussed in such cases as Waugh v. British Railways Board, [1980] A.C. 521, is not applicable here as litigation was scarcely if at all in contemplation of litigation at the relevant time. Certainly, the dominant if not the sole purpose of a communication was to obtain a Canadian patent.
With regard to the first type of privilege, I note that it was said by Lord Chancellor Brougham in Greenough v. Gaskell, 1 My. & K. 98 at 102 in connection with solicitor and client privilege:
| If this protection were confined to cases where proceedings had commenced, the rule would exclude the most confidential, and it may be the most important of all communications - those made with a view of being prepared either for instituting or defending a suit, up to the instant that the process of the Court issued. |
| Lord Chancellor Brougham went on, to note, that: |
| ... a person oftentimes requires the aid of professional advice upon the subject of his rights and his liabilities, with no reference to any particular litigation, and without any other reference to litigation generally than all human affairs have, in so far as every transaction may, by possibility, become the subject of judicial inquiry. "It would be most mischievous", said the learned Judges in the Common Pleas, "if it could be doubted whether or not an attorney, consulted upon a man's title to an estate, was at liberty to divulge a flaw". |
| The foundation of this Rule is not difficult to discover. It is not (as has sometimes been said) on account of any particular importance which the law attributes to the business of legal professors, or any particular disposition to afford them protection, though certainly it may not be very easy to discover why a like privilege has been refused to others, and especially to medical advisers. |
| But it is out of regard to the interests of justice, which cannot be upholden, and to the administration of justice, which cannot go on, without the aid of men skilled in jurisprudence, in the practice of the Courts, and in those matters affecting rights and obligations which form the subject of all judicial proceedings. If the privilege did not exist at all, every one would be thrown upon his own legal resources; deprived of all professional assistance, a man would not venture to consult any skilful person, and would only dare to tell his counsellor half his case. If the privilege were confined to communications connected with suit begun, or intended, or expected, or apprehended, no one could safely adopt such precautions as it might eventually render any proceedings successful, or all proceedings superfluous. |
At page 101, the learned Judge is quoted as saying:
| To compel a party himself to answer upon oath, even as to his belief on his thoughts, is one thing; nay, to compel him to disclose what he has written or spoken to others, not being his professional advisers, is competent to the party seeking the discoveries; for such communications are not necessary to the conduct of judicial business, and the defence or prosecution of men's rights by the aid of skilful persons. To force from the party himself the production of communications made by him to professional men seems inconsistent with the possibility of an ignorant man safely resorting to professional advice, and can only be justified if the authority of decided cases warrants it. But no authority sanctions the much wider violation of professional confidence, and in circumstances wholly different, which would be involved in compelling counsel or attorneys or solicitors to disclose matters committed to them in their professional capacity, and which, but for their employment as professional men, they would not have become possessed of. |
There appears to be a conflict between the protection of solicitor's files mentioned in Greenough v. Gaskell and the apparent exposure of solicitor's non-litigation work product in Waugh v. British Railways Board. The leading case upon which the proposition that information conveyed to solicitors for the purpose of advising a client is only protected if there is a prospect of litigation, is said to be Wheeler v. Le Marchant (1881), 17 Ch. D. 675, in that case the solicitor having been called on for legal advice, requested information from the client's surveyors, who, it appeared, had obtained the requested information for purposes other than of assisting the client to obtain legal advice. Wheeler v. Le Marchant was not a case where the solicitor had asked the person to generate information for the purpose of enabling the solicitor to give the legal advice or assistance asked by the client. The information already existed, the solicitor asked for it. The request did not render the pre-existing information privileged. It is my view, that where a solicitor requests the person to obtain or generate and supply information to the solicitor so that the solicitor can render legal advice or assistance to his client, that information while possibly exigible from other sources is not exigible from the solicitor's files. This protection is not diminished by the fact that the material or information in the U.S. attorney's files may have been originated by a patent agent.
The matter was also raised of the applicability of the right to claim privilege for the files of a foreign lawyer. As mentioned above, the client is a U.S. Corporation and the lawyer in question is a U.S. house counsel operating in the United States.
No case in this Court was cited to me. Counsel cited United States of America v. Mamouth Oil Co., [1925] 2 D.L.R. 966. In that case an Ontario lawyer present in New York was asked to advise by a U.S. resident and citizen with regard to U.S. law. The Ontario lawyer returned to Ontario and sought to claim solicitor and client privilege to refuse to answer questions posed by a commission seeking evidence for use in a law suit in the United States. Ferguson J.A. for the majority pointed out that the lawyer was not called on to advise a Canadian, nor in reference to Canadian business nor on Canadian laws. The lawyer was not a member of the New York Bar entitled to practice in New York or even residing in New York. What the Court was being asked to do, was to excuse the Ontario lawyer because he was an Ontario lawyer from answering questions he had been ordered to answer by a U. S. Court. The allegedly privileged exchange had been in the United States, where privilege apparently did not apply in the circumstances.
I note that it is stated on page 501 of the 14th Edition of Phipson unequivocally, "Foreign legal advisers are certainly within the scope of the privilege." The authority stated on that page is Great Atlantic Insurance v. Home Insurance, [1981] 2 All E.R. 485 (C.A.). Elsewhere in Phipson Re Duncan [1968] P 306 is quoted as authority. In Sopinka, Lederman and Bryant - Law of Evidence in Canada at page 648, it is indicated that the protection has expanded since Mamouth Oil and Canadian cases are cited as well as Re Duncan as authority for the proposition. I am satisfied that, in these circumstances, the American plaintiff's house counsel qualifies as a legal adviser for the purposes of the American plaintiff being able to claim solicitor and client privilege. I have read each of the documents for which privilege is claimed, and I am satisfied that each of them was generated by or at the request of the U.S. plaintiff's house counsel for the purposes of counsel providing advice to the U.S. plaintiff. At the hearing I ordered the document sealed, they are to continue sealed until this matter is finally disposed of, at which time they may be returned to the solicitor in question.
ORDER
The motion for production of documents from the solicitors' files is dismissed.
A.S.P.
Toronto, Ontario
April 3, 1997
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-2028-95
STYLE OF CAUSE: WHIRLPOOL CORPORATION and
INGLIS LIMITED
- and -
| CAMCO INC., and GENERAL ELECTRIC COMPANY |
DATE OF HEARING: MARCH 3, 1997
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER
AND ORDER BY: GILES, A.S.P.
DATED: APRIL 3, 1997
APPEARANCES:
Christopher J. Kvas
For the Plaintiffs
Ronald E. Dimock
For the Defendants
SOLICITORS OF RECORD:
Christopher J. Kvas
Barrigar, Moss
Suite 1502
77 Bloor Street West
Toronto, Ontario
M5S 1M2
For the Plaintiffs
Ronald E. Dimock
Dimock Stratton Clarizio
Suite 3202, Box 102
20 Queen Street West
Toronto, Ontario
M5H 3R3
For the Defendants
FEDERAL COURT OF CANADA
Court No. T-2028-95
Between:
WHIRLPOOL CORPORATION and
INGLIS LIMITED
Plaintiffs
- and -
CAMCO INC., and
GENERAL ELECTRIC COMPANY
Defendants
REASONS FOR ORDER & ORDER