The Tuesday ruling means Australian playwright Thomas Duncan-Watt, who is suing former collaborator and now bitter enemy Jonathan Rockefeller in New York for ripping off their Muppet-style play to stage an Off-Off-Broadway production, can access the communications to defend against a “counterattack” by Rockefeller in the Federal Court.

Rockefeller’s case alleges Duncan-Watt is breaching the copyright on photographs depicting the four puppets from the stageshow the pair wrote called ‘Thank You for Being a Friend’. Rockefeller claims he owns the copyright in the images and Duncan-Watt has reproduced them on his website without permission or licence.

The action was launched after Duncan-Watt, along with producers Neil Gooding and Matthew Henderson, sued Rockefeller in October 2016 for infringing on their work with his 2016 New York play ‘That Golden Girls Show! A puppet parody!’

Duncan-Watt claims Rockefeller gave him an express oral licence in January 2015 to reproduce the photographs at issue and only drafted an agreement with photographer Dario Cardiman restricting use of the photographs in December 2016, after Duncan-Watt had commenced his New York case. Rockefeller has filed a separate suit in Federal Court against Gooding.

“Mr Rockefeller… went looking around for weapons that he could throw at Mr Duncan-Watt in Australia, and he decided that these photographs – or the copyright in them, we say – was one of the ways that he could launch a counterattack,” Duncan-Watt’s lawyer said.

Duncan-Watt sought access to two emails from Rockefeller to Gardiman, saying any legal professional privilege attached to the documents was waived by the unrestricted disclosure to Gardiman.

In arguing against production of the emails, Rockefeller’s lawyer, Bird & Bird partner Lynne Lewis, told the court in an affidavit that one of the emails contained a document she had drafted for Rockefeller, while she was still with her former firm, MinterEllison. The other email contained “reference to anticipated litigation” and was for the purpose of seeking advice from Rockefeller’s former solicitor, she said.

Duncan-Watt argued any privilege had been waived because the communications had been sent to Gardiman, who is not a party to the case.

In siding with Duncan-Watt, Justice Melissa Perry ruled that unrestricted communications to a third party were “inconsistent” with a claim of privilege.

She noted that while the emails contained reference to “lawyers”, nothing in the commnunications would have alerted the photographer to any current or pending litigation, or any need for him to keep the material confidential.

“The mere reference to ‘lawyers’ in Mr Rockefeller’s email to Mr Gardiman falls well short in my view of suggesting that the communications were subject to legal professional privilege or that it was otherwise asserted that they should be kept confidential,” the judge said.

“The respondent rightly submits that no restriction was imposed upon Mr Gardiman as the recipient of the allegedly privileged emails with respect to further disclosure of the communications and as such he was at liberty to show these to the respondent or anyone else.”

Justice Perry further found that the emails from Rockefeller to Gardiman were not made for the purpose of obtaining legal advice or enabling Rockefeller to prosecute an action against Duncan-Watt, but to secure an assignment of the copyright from the photographer in order to bring a case.

“I accept the respondent’s submission that the communications are potentially relevant to the case on which Mr Duncan-Watt opened at trial and upon which he cross-examined Mr Rockefeller, insofar as Mr Duncan-Watt contends that the bringing of these proceedings is collateral to the New York proceedings and seeks to challenge the applicants’ motivations in pursuing the litigation,” the judge said.

JWR Productions and Rockefeller are represented by Bird & Bird. Duncan-Watt is represented by Banki Haddock Fiora.

The case is JWR Productions Australia Pty Ltd v Thomas Duncan-Watt.