case_text: way of preface I should note that up until final written submissions the case had been prosecuted by Hamilton on the basis that AMC, as Hamilton's fiduciary, held the two trademarks as constructive trustee for it, the marks having been obtained by it in breach of its fiduciary duty to Hamilton. The constructive trust claim and with it, seemingly, the allegation of breach of fiduciary duty were abandoned in Hamilton's written submissions. I say "seemingly" in relation to the fiduciary claim because it was scarcely addressed in submissions yet it is anything but non-contentious in the propositions it asserts: see Hospital Products Ltd ; Rickel v Schwinn Bicycle Co 192 Cal Reptr 732 (1983); Glover, Commercial Equity: Fiduciary Relationships , 3.48-3.51 (1995); and for the causes of contention in this area of the law see my "Fiduciary Principle" in Youdan (ed), Equity, Fiduciaries and Trusts , 1 (1989); see also Gibson Motorsport Merchandise Pty Ltd v Forbes [2006] FCAFC 44 ; (2006) 149 FCR 569 at [11] - [16] . I will return to this in the context of AMC's copyright ownership claim. It was open to Hamilton and AMC to cast their contractual relationship in a way which could, for certain purposes at least, have obliged AMC to act in Hamilton's interests alone or, distinctly, in their joint interests: cf Gibson Motorsport Merchandise at [7]-[16]. They chose to formalise their relationship as one of supplier and distributor, a type of relationship which characteristically is designed, subject to contractual limitations, to serve the several interests of the participants: see Hospital Products Ltd v United States Surgical Corporation ; Rickel v Schwinn Bicycle Co . The Distribution Agreement, and the parties conduct under in it in relation to the packaging was quite characteristic of this. Dr Keung was permitted to serve AMC's interests in selling products it acquired from Hamilton, by utilising artwork and language which he considered would facilitate the sale of those products in the area of the Agreement, so furthering AMC's own interests. Hamilton, in turn, would thereby have its own interests served to the extent that enhanced sales by AMC would be likely to lead to enhanced orders from Hamilton. While AMC was given latitude in the language so used, Hamilton in turn was able to protect its own interests in this matter. It retained for itself a right to approve all statements made on the packaging because of its exposure to product liability and it insisted that the two language versions had to match (to comply with requirements of the TGA scheme). There was nothing fiduciary in this arrangement though it doubtless required elements of trust, cooperation and reliance by the parties if it was to work effectively. But these element of themselves did not turn a non-fiduciary contractual relationship into a fiduciary and personal one outside of, and potentially inconsistent with, the contract itself: cf Gibson Motorsport Merchandise at [11].


case_outcome: cited

case_text: way of preface I should note that up until final written submissions the case had been prosecuted by Hamilton on the basis that AMC, as Hamilton's fiduciary, held the two trademarks as constructive trustee for it, the marks having been obtained by it in breach of its fiduciary duty to Hamilton. The constructive trust claim and with it, seemingly, the allegation of breach of fiduciary duty were abandoned in Hamilton's written submissions. I say "seemingly" in relation to the fiduciary claim because it was scarcely addressed in submissions yet it is anything but non-contentious in the propositions it asserts: see Hospital Products Ltd ; Rickel v Schwinn Bicycle Co 192 Cal Reptr 732 (1983); Glover, Commercial Equity: Fiduciary Relationships , 3.48-3.51 (1995); and for the causes of contention in this area of the law see my "Fiduciary Principle" in Youdan (ed), Equity, Fiduciaries and Trusts , 1 (1989); see also Gibson Motorsport Merchandise Pty Ltd v Forbes [2006] FCAFC 44 ; (2006) 149 FCR 569 at [11] - [16] . I will return to this in the context of AMC's copyright ownership claim. The second possibility that copyright is jointly owned by Hamilton and Dr Keung: FAD para 32.3 seems to suggest, implausibly, that the works either are "works of joint authorship" which s 10(1) defines to mean ... a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors. or that, in some unexplained fashion, Keung had bound himself in preparing the artwork and product indications, to act in the joint interest of himself and Hamilton. Again I emphasise that the case has not been pleaded by any party on the basis that there was a joint venture in which, for some purposes at least, they agreed to advance their mutual as distinct from their several interests: cf Gibson Motorsport Merchandise at [11]-[16]. The third possibility ie Dr Keung is the owner: FAD para 32.4 is considered below: see "Consideration". Hamilton has pleaded that AMC was in a fiduciary relationship with Hamilton in virtue (a) of Dr Keung's authorisation to translate literally, his alleged representations and non-disclosures relating to the Chinese marks and literal translations and (b) of the trust and reliance placed on AMC by Hamilton and of its corresponding position of vulnerability: FAD para 17.5. Hamilton has gone on to plead that if intellectual property was created in the "Chinese Language Artwork" , AMC holds that on constructive trust for Hamilton: FAD para 28.4. I would emphasise that this claim is limited to the Chinese Language Artwork and does not extend to the English language product indications. A like claim to the trademarks was abandoned prior to final submissions. The written submissions on the above fiduciary relationship and consequential constructive trust claim are slight to the point of being perfunctory. Applicable principles It was open to Hamilton and AMC to cast their contractual relationship in a way which could, for certain purposes at least, have obliged AMC to act in Hamilton's interests alone or, distinctly, in their joint interests: cf Gibson Motorsport Merchandise at [7]-[16]. They chose to formalise their relationship as one of supplier and distributor, a type of relationship which characteristically is designed, subject to contractual limitations, to serve the several interests of the participants: see Hospital Products Ltd v United States Surgical Corporation ; Rickel v Schwinn Bicycle Co . The Distribution Agreement, and the parties conduct under in it in relation to the packaging was quite characteristic of this. Dr Keung was permitted to serve AMC's interests in selling products it acquired from Hamilton, by utilising artwork and language which he considered would facilitate the sale of those products in the area of the Agreement, so furthering AMC's own interests. Hamilton, in turn, would thereby have its own interests served to the extent that enhanced sales by AMC would be likely to lead to enhanced orders from Hamilton. While AMC was given latitude in the language so used, Hamilton in turn was able to protect its own interests in this matter. It retained for itself a right to approve all statements made on the packaging because of its exposure to product liability and it insisted that the two language versions had to match (to comply with requirements of the TGA scheme). There was nothing fiduciary in this arrangement though it doubtless required elements of trust, cooperation and reliance by the parties if it was to work effectively. But these element of themselves did not turn a non-fiduciary contractual relationship into a fiduciary and personal one outside of, and potentially inconsistent with, the contract itself: cf Gibson Motorsport Merchandise at [11].


case_outcome: applied

case_text: 52 has, over the last 35 years, been the subject of considerable judicial exegesis. The burden of its injunction that a corporation shall not in trade or commerce, engage in conduct that is misleading or deceptive, is not in dispute between the parties. Suffice it for me to say the following. First , conduct is misleading or deceptive if, in the circumstances, it induces or is capable of inducing error: see generally Johnson Tiles Pty Ltd v Esso Australia Pty Ltd [2000] FCA 1572 ; (2000) 104 FCR 564 at [63] . Secondly , the omission to do a thing is a species of conduct such that silence can in particular circumstances constitute or be part of misleading or deceptive conduct: Demagogue Pty Ltd v Ramensky [1992] FCA 557 ; (1992) 39 FCR 31 at 32 and 40. As French J observed in Kimberley NZI Finance Ltd v Torero Pty Ltd [1989] ATPR (Digest) 53 ,193 at 53,195: The cases in which silence may be so characterised [as contravening s 52] are no doubt many and various and it would be dangerous to essay any principle by which they might be exhaustively defined ... [U]nless the circumstances are such as to give rise to the reasonable expectation that if some relevant fact exists it would be disclosed, it is difficult to see how mere silence could support the inference that that fact does not exist. Thirdly , there will be no contravention of s 52 unless error or misconception results from the conduct of the alleged contravenor and not from other circumstances for which that person is not responsible: Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431 at 440. Fourthly , the state of mind of the contravenor is immaterial unless the conduct in question involved a statement about its state of mind. It is sufficient that, tested objectively, the conduct in question was misleading or deceptive or was likely to mislead or deceive: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 88. Fifthly , where, as here, the alleged misleading or deceptive conduct was that of one party to a business relationship and in the course of it and that conduct is the subject of complaint by the other, the complainant must establish a causal link between the impugned conduct and the loss or damage suffered by that conduct: cf TP Act s 87. In so doing, as indicated in Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at [37] , it is necessary to consider the character of the particular conduct of, here, AMC, in relation to Hamilton: ... bearing in mind what matters of fact each knew about the other as a result of the nature of their dealings and the conversations between them, or which each may be taken to have known. Factual Setting


case_title: Demagogue Pty Ltd v Ramensky [1992] FCA 557 ; (1992) 39 FCR 31


case_title: Kimberley NZI Finance Ltd v Torero Pty Ltd [1989] ATPR (Digest) 53 ,193


case_title: Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431


case_title: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82


case_title: Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592


case_text: have referred on a number of occasions to the latitude given Dr Keung in developing "consumer orientated product indications" in Chinese characters. I am satisfied that the Chinese Language product indications were an original literary work. While they consisted essentially of sequentially listed indications in a literary form, obvious skill, judgment and some research were employed in the choices made of some number of the Chinese characters used. The language of science was supplemented with that of popular communication. The compilation had the requisite degree of "originality": see generally, Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information , [7.40] ff; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465. The English language indications are far from a "slavish copy" of Hamilton's initial indications: cf Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 25 IPR 65 at 96-97.


case_title: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 25 IPR 65


case_text: Keung clearly was the author of what I have collectively called the AMC Packaging. It is not necessary for me to enter upon whether such works as he may have produced prior to AMC's formation in December 1990 were held on trust for a company to be formed: cf A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 at 491-2. I simply note there is no evidence to this effect. I likewise have no evidence of his having a contract of service with AMC after December 1990 pursuant to which the AMC Packaging was created: cf Copyright Act , s 35(6). However, I am satisfied that works presently in issue relating to packaging for Urederm were created after 1990. It is, for example, Dr Keung's evidence that the real departures in the Urederm product indications were only implemented in 1992. Importantly, I am not prepared to infer that in creating the works, Dr Keung did so as trustee for AMC. There is no documentary evidence corroborating any declaration of trust. There is, in contrast, documentary evidence prior to the October 2006 assignment of the Urederm copyright works in which Dr Keung clearly asserted his own copyright. So, for example, in the email to Mr Blake of 6 January 2003 he said: As long as AMC remains to be the sole distributor of Hamilton products in Hong Kong and China AMC will put our Chinese trademark FUYUNHON, my version of Chinese translation and my design in English on Hamilton products sold by our company. However, Hamilton should not sell any products bearing this logo and my copyright to any third parties unless prior approval has been obtained from AMC. (Emphasis added.) The evidence does not disclose any assignment by Dr Keung, or any surrender, of his copyright ownership to Hamilton. Subclause 30.2 of the Distribution agreement dealing with any improvement or adaptation of "Products" is of no avail to Hamilton. Construed in its context, what the subclause deemed to be the property of Hamilton was any adaptation or improvement of the particular commodities (Urederm, Rubesal, etc) that were the subjects of the Distribution Agreement.


case_text: parties were so circumstances by their contract and in their relationship in consequence of it, that Hamilton had no entitlement reasonably to expect that AMC would act in Hamilton's interests to the exclusion of AMC's own self interest in relation to the Hong Kong Packaging or the English Language product indications for Urederm: see News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410 at 538-541. Finally, Dr Keung was the original owner of the copyright works. If he had remained such, AMC's copyright claim would have had no foundation. However, some at least of the copyright works (ie those relating to Urederm created between 1992 and 1999) were assigned to AMC in October 2006. In respect of these AMC can maintain its copyright claims. For ease of exposition I will hereafter call the assigned material "the Urederm Labels". These I would note contain, amongst other things, both the English language and Chinese character versions of the product indications. AMC's claim, as so reduced to the copyright works assigned to it, is that Hamilton made unauthorised reproductions of what I have called Urederm Labels and so breached Dr Keung's copyright in those labels for which AMC now sues as assignee. AMC acknowledged, though, that since 1992 it authorised Hamilton to reproduce such labels for the purpose of packaging products to be supplied to AMC. As put in its submissions, AMC claims that each unauthorised sale Hamilton made of Urederm was a publication within s 31 of the Copyright Act . The sales to Crafers, Pharmalines and "[o]ther undisclosed persons in Australia were infringements". AMC also submits that Hamilton should be ordered to discover all of its records of Urederm "incorporating the product descriptions authored by Dr Keung and sold to third parties (ie not AMC)".


case_text: response to the breach claim for present purposes is twofold. First, the pleaded breach is of "reproduction" of the Urederm Label without the licence of AMC, ie a contravention of s 36(1) of the Act, reproduction being an exclusive right comprised in the copyright: s 31(1)(a)(i). Hamilton contends that (i) there is no evidence that Hamilton itself reproduced the Labels, though there is slight evidence from which it could be inferred it "authorised" reproductions; (ii) AMC has neither particularised nor proved that any acts of reproduction that were done without its licence, ie its "permission" or "consent": Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 at 49; and (iii) if Hamilton was authorised to reproduce the labels for the purposes of packaging products to be supplied to AMC and did this, if it later sold those products to a third party, it would not have contravened s 36(1) by reproduction without licence.


case_text: it is contended that AMC should not be permitted to amend its case in final submissions to raise a breach of s 38 of the Copyright Act arising from the unauthorised sale of products. The premise of this contention (contrary to AMC's written submission) would seem to be that such a sale would not in the circumstances have been a "publication" ie a first publication in Australia: see Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 ; (1990) 171 CLR 88 at 93 for the purposes of s 31(1)(a)(ii) of the Act. Section 38(1) provides insofar as presently relevant: 38(1) Subject to Division 3, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, in Australia, and without the licence of the owner of the copyright: (a) sells ... an article; ... if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of the copyright ... (Emphasis added.) Hamilton submitted it did not address the case now put at trial, but that in any event AMC has neither pleaded nor proved the elements of s 38 and in particular that Hamilton knew, or ought reasonably to have known, that the " making " of the packaging embodying the Urederm labels constituted an infringement of the copyright. I should indicate at the outset that I will not permit AMC so late in the day to raise what it curiously claims is infringement by "publication". It has not established that any sale infringed its right of "first publication": cf Avel Pty Ltd , at 93. The claim, as Hamilton correctly suggests is for a contravention of s 38(1). I am satisfied that that claim would fail in any event. It is subject to the same vice as the "reproduction" claim. As to the claim of infringement by reproduction without licence, I agree in substance with Hamilton's submissions. The parties obviously did not turn their mind in any way collectively to the question of copyright in the Urederm labels or for that matter the packaging generally. It is reasonable to infer that Hamilton proceeded wrongly on the assumption that copyright in the packaging belonged to it. Be this as it may, the parties so conducted themselves in relation to Dr Keung's copyright as resulted in Hamilton in fact having Dr Keung's licence to reproduce the AMC packaging, oblivious though they may have been to this legal characterisation of the matter. The question whether or not permission or consent has been given to reproduction is an objective one. The scope of the licence so given by Dr Keung is a matter of inference. While it is the case that no express limitations on reproduction were conveyed to Hamilton prior to Hamilton's sales to Crafers and Pharmalines, I consider it improbable that Dr Keung could reasonably be said to have consented to reproduction other than for the purposes of their relationship, ie for sale to AMC. I find accordingly.


case_text: has not attempted to show when the offending reproductions without permission or consent occurred. The onus in this is on it: cf Nationwide News Pty Ltd v Copyright Agency Ltd [1995] FCA 1045 ; (1995) 55 FCR 271 at 288. The limited evidence that could be said to bear on this matter, does not suggest that the product sold otherwise than to AMC was produced for the purposes of such sales. On the contrary some such sales appear to have been drawn from stock made for AMC. It has not been suggested that Hamilton increased its production so as to accommodate the need to meet its AMC sales. In the circumstances I am in no position to find that when Hamilton reproduced the Urederm labels on its packaging it did so otherwise than in accordance with Dr Keung's licence. Its later conduct in effecting sales of such product may have been an actionable wrong to AMC. It was not the wrong pleaded against Hamilton. I reject AMC's breach of copyright claim.


case_text: is not uncommonly the case, several of the misleading or deceptive conduct claims AMC has made have been twinned with passing off claims. It is appropriate in this setting to refer to observations of the Full Federal Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 ; (2007) 159 FCR 397 at [98] - [99] which bring out the distinction between these two species of action: There is an overlap between causes of action arising under Pt V of the Trade Practices Act and the common law tort of passing off. However, the causes of action have distinct origins and the purposes and interests that both bodies of law primarily protect are contrasting. Passing off protects a right of property in business or goodwill whereas Pt V is concerned with consumer protection. Part V is not restricted by common law principles relating to passing off and provides wider protection than passing off. Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the Trade Practices Act . The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant's product. There are two claims made of contraventions of s 52 and s 53 of the Trade Practices Act . The first is that in the supply of the Products subject to the Distribution Agreement to Crafers for sale into the Hong Kong market, constituted a representation to Crafers that Hamilton was authorised to supply those Products for that purpose. It was not so authorised and the representation was false, hence it contravened s 52 and s 53(c) of the Act. Having rejected the parallel importation claim upon which this is premised, it too must fail at least as pleaded.


case_text: the product sold to Crafers was intended for resale to a class of persons whom the Chinese language characters could address. On the findings I have made that intended class, insofar as Hamilton was concerned, was not that of Chinese language reading Hong Kong consumers. Hamilton did not supply Crafers for the purpose of resale in Hong Kong. The Product was to be resold in Australia. The intended addressees were crew and passengers on ships docking in Australian ports. There is no evidence to suggest that "a not insignificant number" of members of these classes were likely to be misled or deceived by the Chinese characters: see Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 ; (2008) 171 FCR 579. Rather, Crafers sold the Products (seemingly directly and indirectly) to a Hong Kong importer for resale. This was without Hamilton's knowledge or consent and contrary to the understanding it had with Crafers as to resale. Hamilton bore no responsibility for the conduct thus engaged in in Hong Kong. I say this quite independently of the s 5 problem which AMC would have had if Hamilton could otherwise have been found responsible for representations made to Hong Kong consumers. I reject both of the misleading or deceptive conduct claims. AMC claims that the supply by Hamilton of products bearing the Fuyunhon and Tuotoning trademarks constituted a misrepresentation calculated to deceive its prospective and actual Hamilton customers and the end users of the Products, that the Products were the products of AMC. Such representation was made in the course of trade. As with the preceding misleading or deceptive conduct claims, AMC's pleading of, and submissions on, this cause of action are brief to the point of being unhelpful. Hamilton's in contrast are exhaustive. Here again, AMC has not sought to engage with what has been put against it. Considering first the misrepresentation allegedly made in Australia to Crafers, I commence with the well accepted proposition that: The law of passing off does not confer protection on the owners of goods who have no reputation in a particular jurisdiction: Con Agra Inc , at 343. Or, as it is sometimes put, an applicant in "a passing off action" must establish that it had "the requisite reputation in the name or goods in the jurisdiction of the respondent": Hansen Beverage Co , at [34]. Whether an applicant has developed a particular reputation is a question of fact. There is no evidence that either AMC as an entity or the Chinese language marks had any reputation at all in Australia at the relevant date let alone that a substantial number of people in Australia were aware of the Chinese language marks on the goods they distinguished: Hansen Beverage Co , at [34]-[35]. This alone would be sufficient to reject the Australian based aspect of the passing off claim.


case_text: are a significant number of difficulties which doom this claim. I will refer to several of these. By way of preface I refer to the description of the tort of passing off given by Lord Diplock in Erven Warnink BV v J Townsend & Sons [1980] RPC 31 at 93 and do so as AMC's pleading of its claim tracks this description: My Lords, Spalding v Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. See generally, Shanahan's Australian Law of Trade Marks & Passing Off , Ch 20 (3 rd ed, 2003); Kerly's Law of Trade Marks and Trade Names , Ch 15 (14 th ed, 2005); see also Trindade, Cane and Lunney, The Law of Torts in Australia , 6.5 (4 th ed, 2007). It will be necessary to refer below to other elaborations of elements of the tort.


case_text: is well accepted that the concern of the tort is to protect a claimant's trading reputation or goodwill. Importantly for present purposes, the reputation or goodwill "must extend to the geographical area in which [the alleged tortfeasor] is making the representation and to the class of purchaser to which the representation is addressed": Shanahan [20.75], Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51 ; Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 at 394; W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406 ; on the territorial scope of goodwill and reputation see Wadlow, The Law of Passing Off , 2.30 ff (2 nd ed, 1995); ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.


case_title: Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387


case_title: W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406


case_title: ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302


case_text: the reasons I gave in dealing with the misleading or deceptive conduct claim, I am not satisfied that any operative misrepresentation was made to Crafers by Hamilton's misuse of the Chinese language marks. Further, no attempt has been made by AMC to make out a case of passing off by reference to those persons who, on my findings, constituted the classes of purchasers to which any representation made in the supply to Crafers was addressed, ie the passengers and crew of ships, not consumers in Hong Kong. I would note in this that it is well accepted that if a product packaged in such a way as will deceive the ultimate consumers to be addressed by the packaging, it is no defence that wholesalers or retailers with whom the deceiver deals, are not themselves deceived: see Singer Manufacturing Co v Loog (1880) 18 Ch D 395 at 412; Shanahan at [20.175]; Kerly at 15-201. As to the claim of passing off to Hong Kong consumers, consistent with what I said in the misleading or deceptive conduct claims, such misrepresentations as may have been made (I make no finding to that effect) were not the responsibility of Hamilton. The Hong Kong market was not the relevant market in which the product sold by Hamilton to Crafers was to be sold. Crafers assumed responsibility for such misrepresentation when it sold to a Hong Kong importer.


case_text: for present purposes, AMC's claim in any event is for passing off in Australia hence its reliance on the observations of Beaumont J in Pacific Dunlop Ltd v Hogan [1989] FCA 185 ; (1989) 23 FCR 553 at 583 that: The cause of action for passing off is complete as soon as the relevant misrepresentation is made, even though no actual deception and damage to the plaintiff can be shown to have resulted from it. See also British Telecommunications PLC v One in a Million Ltd (1998) 42 IPR 289 at 295 but cf 302: see also Kerly , at 15-201 15-203.


case_title: British Telecommunications PLC v One in a Million Ltd (1998) 42 IP 289


case_text: am, in short, in no position to consider the claim made by Hamilton whatever its underlying merit may be. All I can say is that, without knowledge of the Ordinance and its scheme, I cannot proceed to determine whether a term such as Hamilton suggests could or should be implied into the Distribution Agreement, assuming the "entire agreement" provisions of cl 45 of that Agreement did not preclude such an implication: see Hart v MacDonald [1910] HCA 13 ; (1910) 10 CLR 417 ; Hope v RCA Photophone of Australia Pty Ltd [1937] HCA 90 ; (1937) 59 CLR 348 at 363; Etna v Arif [1999] VSCA 99 ; [1999] 2 VR 353 ; and see generally Cheshire and Fifoot , [10.7] (9 th Aust ed). Absent knowledge of the legislation, its context and purposes, I equally am in no position to determine whether there was any relevant relationship between Hamilton and AMC in relation to the Product Registrations, let alone a fiduciary one. I would also add that absent some express contractual stipulation, it is not altogether obvious to me in any event why, on termination of the Distribution Agreement, AMC ought reasonably to be expected to cooperate with Hamilton in facilitating the distribution of its products in Hong Kong by transferring its Product Registrations to a person capable of holding them under Hong Kong law.


case_title: Hope v RCA Photophone of Australia Pty Ltd [1937] HCA 90 ; (1937) 59 CLR 348


case_text: accepted basis in this country of the equitable jurisdiction to relieve against an actual or threatened abuse of confidential information lies ... in the notion of an obligation of conscience arising from the circumstances in or through which the information was communicated or obtained. Moorgate Tobacco Co Ltd v Phillip Morris Ltd [No 2] [1984] HCA 73 ; (1984) 156 CLR 414 at 438.


case_text: agreed elements of the action for breach of confidence are, for present purposes, that: (i) the information in question must be confidential in character: it must have "the necessary quality of confidence about it": Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; (ii) it must have been imparted in circumstances importing an obligation of confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 40; and (iii) there must have been an actual or threatened unauthorised use or disclosure of that information: Smith Kline & French Laboratories (Aust) Ltd v Department of Community Services and Health [1989] FCA 384 ; (1990) 22 FCR 73 at 87, 111-112; Prince Jefri Bolkiah v KPMG (a firm) [1998] UKHL 52 ; [1999] 2 AC 222. See generally, Dean, The Law of Trade Secrets and Personal Secrets (2 nd ed, 2002); Toulson and Phipps, Confidentiality (2 nd ed, 2006). The essential attribute of confidential information is what has been described as "relative secrecy": Franchi v Franchi [1967] RPC 149 , at 153; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 at 119. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying contexts to sharpen the inquiry to be made: (i) is the information in question widely known, or publicly available in the relevant industry, trade, etc: Coco at 51; cf Ansell Rubber Co at 50; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 at 381; (ii) has the confider made the information public by using it in its manufactured products and placing it on the market, or would the ascertainment of the information from the manufactured product by reverse engineering or otherwise require the expenditure of time, effort, money or experimentation: see eg Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ; Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357 at 379; (iii) did the confider produce or obtain the information only after the expenditure of time and/or money by way of research or in the application of skill and ingenuity; Saltman Engineering Co Ltd ; cf United Sterling Corporation v Felton [1974] RPC 162 ; Interfirm Comparison (Australia) Ltd , at 117; could another person acquire or duplicate the information only by going through a like process: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 at 89-90; Ansell Rubber Co at 49; (iv) what steps has the confider taken to preserve the secrecy of the information and to prevent it becoming public knowledge: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433 at 438; Dean, at [3.165]-[3.175]; (v) is the information intrinsically valuable or is it valuable to the confider or to a competitor or other interested party: Surveys & Mining Ltd v Morrison [1969] Qd R 470 ; Measures Brothers Ltd v Measures [1910] 1 Ch 336 ; and (vi) would a reasonable person in all the circumstances recognise the information to be the "property" of the confider: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 191; Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239 at 255. The alternative test the "purpose" test asks: Has confidential information been imparted for what was known, or ought reasonably to have been known, to be only for a particular purpose? If it has, its use must be limited to that purpose. This approach has commonly been used in cases in which confidential industrial information has been disclosed (usually under contract) to a manufacturer either by way of licence for a period or so as to manufacture a product for the confider: see Saltman Engineering , at 213; Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272 at 280; Ackroyds (London) Ltd at 104; Torrington Manufacturing Co Ltd v Smith & Sons (England) Ltd [1966] RPC 285. Its use extends beyond that context: see Interfirm Comparison (Australia) at 117; and Gurry "Breach of Confidence" in Finn (ed) Essays in Equity , 118 (1985); Smith Kline & French , at 96. Turning to the claims against Dr Keung, it is asserted in the alternative that he owed a duty of confidence directly to Hamilton in virtue of the disclosure actually being made to him and breached that duty by the disclosure he made, or that he knowingly participated in AMC's breach of confidence in that he directed or procured AMC's breach and was liable therefore. I am prepared, for present purposes, to assume that Dr Keung owed a duty of confidence directly to Hamilton. He was the actual recipient of information which he had reason to know was to be kept confidential, albeit he received it for AMC which in turn owed a duty of confidence directly to Hamilton. If, for example, he used such information for his own private purposes which resulted in a gain for him or a loss to Hamilton, he would have been liable therefore at the suit of Hamilton: see Saltman Engineering Co Ltd v Campbell Engineering Co Ltd , at 213; and without the need for any circularity of action by joining AMC as a party. I need not consider AMC's liability in such a case for present purposes: cf Coulthard v South Australia [1995] SASC 4927 ; (1995) 63 SASR 531 at 535. Equally, I am prepared to assume that he would be liable to Hamilton on an accessorial liability basis for his intentional procurement of AMC's breach of confidence to Hamilton. In this I recognise that there is a significant body of discordant case law across the common law world on the question of the liability of directors who are participants in the wrongs of their company, whether that wrong be a breach of contract, a tort, or an equitable wrong: see the helpful discussion of this in relation to tortious liability in Anderson, "The theory of the corporation and its relevance to directors' tortious liability to creditors" (2004) 16 Aust Jo Corp Law 73; on the small company problem for directors, see Finn, "Opening Remarks" (1999) 27 Fed L Rev 171 at 177-180; see the discussion in Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [113] - [147] ; and see Mortimore QC Company Directors Ch 27 (2009 OUP).


case_text: agreed elements of the action for breach of confidence are, for present purposes, that: (i) the information in question must be confidential in character: it must have "the necessary quality of confidence about it": Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; (ii) it must have been imparted in circumstances importing an obligation of confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 40; and (iii) there must have been an actual or threatened unauthorised use or disclosure of that information: Smith Kline & French Laboratories (Aust) Ltd v Department of Community Services and Health [1989] FCA 384 ; (1990) 22 FCR 73 at 87, 111-112; Prince Jefri Bolkiah v KPMG (a firm) [1998] UKHL 52 ; [1999] 2 AC 222. See generally, Dean, The Law of Trade Secrets and Personal Secrets (2 nd ed, 2002); Toulson and Phipps, Confidentiality (2 nd ed, 2006). The essential attribute of confidential information is what has been described as "relative secrecy": Franchi v Franchi [1967] RPC 149 , at 153; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 at 119. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying contexts to sharpen the inquiry to be made: (i) is the information in question widely known, or publicly available in the relevant industry, trade, etc: Coco at 51; cf Ansell Rubber Co at 50; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 at 381; (ii) has the confider made the information public by using it in its manufactured products and placing it on the market, or would the ascertainment of the information from the manufactured product by reverse engineering or otherwise require the expenditure of time, effort, money or experimentation: see eg Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ; Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357 at 379; (iii) did the confider produce or obtain the information only after the expenditure of time and/or money by way of research or in the application of skill and ingenuity; Saltman Engineering Co Ltd ; cf United Sterling Corporation v Felton [1974] RPC 162 ; Interfirm Comparison (Australia) Ltd , at 117; could another person acquire or duplicate the information only by going through a like process: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 at 89-90; Ansell Rubber Co at 49; (iv) what steps has the confider taken to preserve the secrecy of the information and to prevent it becoming public knowledge: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433 at 438; Dean, at [3.165]-[3.175]; (v) is the information intrinsically valuable or is it valuable to the confider or to a competitor or other interested party: Surveys & Mining Ltd v Morrison [1969] Qd R 470 ; Measures Brothers Ltd v Measures [1910] 1 Ch 336 ; and (vi) would a reasonable person in all the circumstances recognise the information to be the "property" of the confider: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 191; Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239 at 255. There are two tests that have been employed commonly enough in commercial settings to determine whether a duty of confidence arises by reason of the subject matter and the circumstances in which the subject matter has come into the hands of the person said to be subject to the duty. The first is the "reasonable person" test and derives from Megarry J's judgment in Coco (at 48): If the circumstances are such that any reasonable person standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given in confidence, this should suffice to impose on that person the equitable obligation of confidence: see Dean, [3.275]; see also Toulson and Phipps, 3-007 3-010. This said, I equally am satisfied that there remained an area, albeit a circumscribed one, in which through experimentation and choice through "the application of the skill and ingenuity of the human brain": Coco , at 47 a product formula could be devised for the production of a 10% urea cream having distinctive, desired properties and that knowledge of that ratio would give a "head start" to use Mr Blake's description, to a person later seeking to produce a cream with such or similar properties. The same, I would add, could be said of a method of manufacture devised for a product with such an ingredient ratio, though this is not presently relevant. Notwithstanding that there was no express reference to confidentiality when the three documents were provided to AMC in 1996 and that the documents on their face made no claim to confidentiality, I am satisfied that Dr Keung would at the time have appreciated the sensitive character of the documents and that they were being supplied to him for a particular purpose and no other and that he could only use them for that purpose. Equally, the circumstances were such that any reasonable man standing in Dr Keung's shoes in 1996 would have realised upon reasonable grounds, as his Vietnamese sub-distributor anticipated, that the information was being given to him in confidence: Coco , at 48. Whichever test is applied, the conclusion is inevitable that the production formula was received by AMC in confidence. In the event that I made such findings, AMC has conceded that (i) the information was provided to Sphere/Tabco by AMC; (ii) Mr Wait used the formula (only in part) to provide a quotation for the manufacture of a 10% urea cream; and (iii) he used the formula (only in part) as a basis for manufacturing a 10% urea cream. It is said, as well, that in the trials and production of commercial batches, there were differences in the ingredients and ratios used. My only comment on the concession is that I consider it rather underplays the use made of the formula by Mr Wait. He was at Dr Keung's insistence keeping close to the formula, though some adjustments were made before commercial quantities were produced. I do not accept AMC's submission that Sphere did no more than use the formula as a reference point for manufacturing a 10% urea cream. This brings me to the contentious subject of remedy. That sought is an account of the profit made on the sale of the Sphere manufactured products containing urea cream. Damages have been disclaimed.


case_text: agreed elements of the action for breach of confidence are, for present purposes, that: (i) the information in question must be confidential in character: it must have "the necessary quality of confidence about it": Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; (ii) it must have been imparted in circumstances importing an obligation of confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 40; and (iii) there must have been an actual or threatened unauthorised use or disclosure of that information: Smith Kline & French Laboratories (Aust) Ltd v Department of Community Services and Health [1989] FCA 384 ; (1990) 22 FCR 73 at 87, 111-112; Prince Jefri Bolkiah v KPMG (a firm) [1998] UKHL 52 ; [1999] 2 AC 222. See generally, Dean, The Law of Trade Secrets and Personal Secrets (2 nd ed, 2002); Toulson and Phipps, Confidentiality (2 nd ed, 2006). The essential attribute of confidential information is what has been described as "relative secrecy": Franchi v Franchi [1967] RPC 149 , at 153; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 at 119. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying contexts to sharpen the inquiry to be made: (i) is the information in question widely known, or publicly available in the relevant industry, trade, etc: Coco at 51; cf Ansell Rubber Co at 50; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 at 381; (ii) has the confider made the information public by using it in its manufactured products and placing it on the market, or would the ascertainment of the information from the manufactured product by reverse engineering or otherwise require the expenditure of time, effort, money or experimentation: see eg Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ; Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357 at 379; (iii) did the confider produce or obtain the information only after the expenditure of time and/or money by way of research or in the application of skill and ingenuity; Saltman Engineering Co Ltd ; cf United Sterling Corporation v Felton [1974] RPC 162 ; Interfirm Comparison (Australia) Ltd , at 117; could another person acquire or duplicate the information only by going through a like process: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 at 89-90; Ansell Rubber Co at 49; (iv) what steps has the confider taken to preserve the secrecy of the information and to prevent it becoming public knowledge: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433 at 438; Dean, at [3.165]-[3.175]; (v) is the information intrinsically valuable or is it valuable to the confider or to a competitor or other interested party: Surveys & Mining Ltd v Morrison [1969] Qd R 470 ; Measures Brothers Ltd v Measures [1910] 1 Ch 336 ; and (vi) would a reasonable person in all the circumstances recognise the information to be the "property" of the confider: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 191; Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239 at 255. There is no single test for determining when the communication of confidential information will import an obligation of confidence. As Gowans J said in Ansell Rubber (at 40): That obligation may come into existence by reason of the terms of an agreement, or what is implicit in them, by reason of the nature of the relationship between persons, or by reason of the subject-matter and the circumstances in which the subject-matter has come into the hands of the person charged with the breach. By way of background I should note that cl 28 of the Distribution Agreement did impose a duty of confidentiality of a qualified variety and its terms presaged that there could be confidential information about the Products imparted during the parties' relationship.


case_text: agreed elements of the action for breach of confidence are, for present purposes, that: (i) the information in question must be confidential in character: it must have "the necessary quality of confidence about it": Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; (ii) it must have been imparted in circumstances importing an obligation of confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 40; and (iii) there must have been an actual or threatened unauthorised use or disclosure of that information: Smith Kline & French Laboratories (Aust) Ltd v Department of Community Services and Health [1989] FCA 384 ; (1990) 22 FCR 73 at 87, 111-112; Prince Jefri Bolkiah v KPMG (a firm) [1998] UKHL 52 ; [1999] 2 AC 222. See generally, Dean, The Law of Trade Secrets and Personal Secrets (2 nd ed, 2002); Toulson and Phipps, Confidentiality (2 nd ed, 2006). The alternative test the "purpose" test asks: Has confidential information been imparted for what was known, or ought reasonably to have been known, to be only for a particular purpose? If it has, its use must be limited to that purpose. This approach has commonly been used in cases in which confidential industrial information has been disclosed (usually under contract) to a manufacturer either by way of licence for a period or so as to manufacture a product for the confider: see Saltman Engineering , at 213; Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272 at 280; Ackroyds (London) Ltd at 104; Torrington Manufacturing Co Ltd v Smith & Sons (England) Ltd [1966] RPC 285. Its use extends beyond that context: see Interfirm Comparison (Australia) at 117; and Gurry "Breach of Confidence" in Finn (ed) Essays in Equity , 118 (1985); Smith Kline & French , at 96.


case_text: agreed elements of the action for breach of confidence are, for present purposes, that: (i) the information in question must be confidential in character: it must have "the necessary quality of confidence about it": Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; (ii) it must have been imparted in circumstances importing an obligation of confidence: Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 40; and (iii) there must have been an actual or threatened unauthorised use or disclosure of that information: Smith Kline & French Laboratories (Aust) Ltd v Department of Community Services and Health [1989] FCA 384 ; (1990) 22 FCR 73 at 87, 111-112; Prince Jefri Bolkiah v KPMG (a firm) [1998] UKHL 52 ; [1999] 2 AC 222. See generally, Dean, The Law of Trade Secrets and Personal Secrets (2 nd ed, 2002); Toulson and Phipps, Confidentiality (2 nd ed, 2006).


case_title: Franchi v Franchi [1967] RPC 149

case_text: essential attribute of confidential information is what has been described as "relative secrecy": Franchi v Franchi [1967] RPC 149 , at 153; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 at 119. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying contexts to sharpen the inquiry to be made: (i) is the information in question widely known, or publicly available in the relevant industry, trade, etc: Coco at 51; cf Ansell Rubber Co at 50; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 at 381; (ii) has the confider made the information public by using it in its manufactured products and placing it on the market, or would the ascertainment of the information from the manufactured product by reverse engineering or otherwise require the expenditure of time, effort, money or experimentation: see eg Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ; Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357 at 379; (iii) did the confider produce or obtain the information only after the expenditure of time and/or money by way of research or in the application of skill and ingenuity; Saltman Engineering Co Ltd ; cf United Sterling Corporation v Felton [1974] RPC 162 ; Interfirm Comparison (Australia) Ltd , at 117; could another person acquire or duplicate the information only by going through a like process: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 at 89-90; Ansell Rubber Co at 49; (iv) what steps has the confider taken to preserve the secrecy of the information and to prevent it becoming public knowledge: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433 at 438; Dean, at [3.165]-[3.175]; (v) is the information intrinsically valuable or is it valuable to the confider or to a competitor or other interested party: Surveys & Mining Ltd v Morrison [1969] Qd R 470 ; Measures Brothers Ltd v Measures [1910] 1 Ch 336 ; and (vi) would a reasonable person in all the circumstances recognise the information to be the "property" of the confider: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 191; Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239 at 255.


case_text: essential attribute of confidential information is what has been described as "relative secrecy": Franchi v Franchi [1967] RPC 149 , at 153; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales [1975] 2 NSWLR 104 at 119. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying contexts to sharpen the inquiry to be made: (i) is the information in question widely known, or publicly available in the relevant industry, trade, etc: Coco at 51; cf Ansell Rubber Co at 50; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 at 381; (ii) has the confider made the information public by using it in its manufactured products and placing it on the market, or would the ascertainment of the information from the manufactured product by reverse engineering or otherwise require the expenditure of time, effort, money or experimentation: see eg Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ; Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357 at 379; (iii) did the confider produce or obtain the information only after the expenditure of time and/or money by way of research or in the application of skill and ingenuity; Saltman Engineering Co Ltd ; cf United Sterling Corporation v Felton [1974] RPC 162 ; Interfirm Comparison (Australia) Ltd , at 117; could another person acquire or duplicate the information only by going through a like process: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 at 89-90; Ansell Rubber Co at 49; (iv) what steps has the confider taken to preserve the secrecy of the information and to prevent it becoming public knowledge: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433 at 438; Dean, at [3.165]-[3.175]; (v) is the information intrinsically valuable or is it valuable to the confider or to a competitor or other interested party: Surveys & Mining Ltd v Morrison [1969] Qd R 470 ; Measures Brothers Ltd v Measures [1910] 1 Ch 336 ; and (vi) would a reasonable person in all the circumstances recognise the information to be the "property" of the confider: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 191; Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239 at 255. The alternative test the "purpose" test asks: Has confidential information been imparted for what was known, or ought reasonably to have been known, to be only for a particular purpose? If it has, its use must be limited to that purpose. This approach has commonly been used in cases in which confidential industrial information has been disclosed (usually under contract) to a manufacturer either by way of licence for a period or so as to manufacture a product for the confider: see Saltman Engineering , at 213; Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272 at 280; Ackroyds (London) Ltd at 104; Torrington Manufacturing Co Ltd v Smith & Sons (England) Ltd [1966] RPC 285. Its use extends beyond that context: see Interfirm Comparison (Australia) at 117; and Gurry "Breach of Confidence" in Finn (ed) Essays in Equity , 118 (1985); Smith Kline & French , at 96.


case_title: Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353


case_title: Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97


case_title: Aquaculture Corporation v New Zealand Green Mussel Co Ltd (1985) 5 IPR 357


case_title: United Sterling Corporation v Felton [1974] RPC 162


case_title: Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81


case_title: Amber Size & Chemical Co Ltd v Menzel (1913) 30 RPC 433


case_title: Surveys & Mining Ltd v Morrison [1969] Qd R 470


case_title: Measures Brothers Ltd v Measures [1910] 1 Ch 336


case_title: Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167


case_title: Printers & Finishers Ltd v Holloway (No 2) [1965] RPC 239


case_text: alternative test the "purpose" test asks: Has confidential information been imparted for what was known, or ought reasonably to have been known, to be only for a particular purpose? If it has, its use must be limited to that purpose. This approach has commonly been used in cases in which confidential industrial information has been disclosed (usually under contract) to a manufacturer either by way of licence for a period or so as to manufacture a product for the confider: see Saltman Engineering , at 213; Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272 at 280; Ackroyds (London) Ltd at 104; Torrington Manufacturing Co Ltd v Smith & Sons (England) Ltd [1966] RPC 285. Its use extends beyond that context: see Interfirm Comparison (Australia) at 117; and Gurry "Breach of Confidence" in Finn (ed) Essays in Equity , 118 (1985); Smith Kline & French , at 96.


case_title: Torrington Manufacturing Co Ltd v Smith & Sons (England) Ltd [1966] RPC 285


case_text: could well be said, as Mr Wait did, "that there didn't appear to be any great intellectual property associated with [Hamilton's] formulation", or, to adapt Lord Denning's formulation in Seager v Copydex Ltd (No 2) [1969] 2 All ER 718 at 719, it bordered on there being "nothing very special about it". Nonetheless, tested by the indicia of confidentiality to which I earlier referred, the ingredient ratios were not, on the evidence, in the public domain in 1996, or, for that matter, in 2006; they were valuable to Hamilton when used by it and, in 2006, they were valuable to AMC who was by then a prospective competitor; the formula resulted from Hamilton's research and experimentation and, as the evidence here indicated, for another person to acquire the same information would require it to go through a like process of experimentation; and the urea cream product was not, on the evidence, easily reverse engineered. While it was suggested to Mr Blake that it could be reverse engineered in a short time a suggestion with which he did not agree AMC did not adduce positive evidence to that effect. It had the opportunity to do so. Mr Wait was its witness.


case_text: the Distribution Agreement clearly contemplated that there could be confidential information associated with the Products, what is surprising is that Hamilton appears not to have taken positive steps to preserve the secrecy of the formula in the hands of third parties to whom it was supplied. This said, it cannot properly be asserted that Hamilton so conducted itself in relation to AMC as reasonably to create the impression that it was making a fairly open invitation to AMC to make use of it: Amway Corporation v Eurway International Ltd [1974] RPC 82 at 87. This brings me to the second matter. I am satisfied the production formula was confidential information for equitable and contractual purposes, but was it imparted in circumstances importing a duty of confidence? Again I think so.


case_text: grant of this form of relief in breach of confidence cases is in the end a matter for the Court, notwithstanding a party's election for an account: see e.g. Seager v Copydex Ltd (No 1) [1967] RPC 349 ; see also Conveyor Co of Australia Pty Ltd v Cameron Bros Engineering Co Ltd [1973] 2 NZLR 38 at 44. An apparent reason for this is that, given the variable character of confidential information, its misuse even in a profit making activity may not realistically be able to be said to result in any profit being attributable to it, the misuse merely effecting what was in effect a saving of time and trouble: see Dean [8-320].


case_title: Conveyor Co of Australia Pty Ltd v Cameron Bros Engineering Co Ltd [1973] 2 NZLR 38


case_text: Mr Wait may over time have been able to devise an acceptable production formula for Dr Keung, I do not consider the present to be a case in which it properly should be said that the only appropriate remedy in the circumstances would be damages for the saving of "time and trouble": Seager (No 1) , at 368. Dr Keung, in my view, designedly was trying to replicate a product for which he had previously established product goodwill. An account is in the circumstances an appropriate form of relief: AMC should not be "permitted to gain from [its] wrongdoing": Attorney-General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 at 262. I am satisfied that the period for which the account should be taken ought commence when AMC began to sell products manufactured in breach of confidence. It should end when sales of those products ceased in 2008 when AMC adopted the alternative formulation incorporating lactic acid. By that point the advantage gained for its misappropriation of the formula was practically spent. It had been overtaken by Sphere's independent endeavours to produce an acceptable product. Hamilton should not be given the benefit of those endeavours. If there was some residue of advantage remaining with AMC from the misuse of the formula, it is inappropriate to attempt to make some apportionment of profits in recognition of it. To attempt that would inevitably be burdensome and unrewarding. Significantly, Hamilton has, because of the product change, abandoned its claim for a permanent injunction.


case_text: the accounting remedy is not without its known difficulties (see Dean [8.325]), I do not have material before me nor have I had considered submissions which would suggest that such might emerge here. That in any event is a matter for Hamilton. It can have obvious costs implications: cf Nokia Corporation v Liu [2009] FCAFC 138. If an account is to be taken I will direct it be before the District Registrar of the Court and I will give liberty to apply for directions in relation to the taking of the account.


case_text: also seeks an order that AMC deliver up the originals and copies of two of the three documents it "holds". No such order is sought against Sphere in respect of the two documents it received. AMC converted the hard copy versions of the documents into electronic form for sending to Sphere. I have not been addressed on the "delivery up" or "destruction" of the electronic versions. I will invite further submissions on this matter: see also Prime Creative Media Pty Ltd v Vranjkovic [2009] FCA 1030 at [17] .


case_text: as concerns the claim for breaches of cl 28 of the Distribution Agreement, I am satisfied such breaches have been established. No claims for damages have been advanced. In light of the considered dictum of the Full Court of this Court in Hospitality Group Pty Ltd v Australian Rugby Union Ltd [2001] FCA 1040 ; (2001) 110 FCR 157 at [155] - [159] , I ought not entertain consideration of whether the contractual breach of confidence could itself be remedied by an account of profits: cf Attorney-General v Blake [2000] UKHL 45 ; [2001] 1 AC 268 ; and see generally Cheshire and Fifoot , [23.2] and esp fn 5 (9 th Aust ed).


case_title: Attorney-General v Blake [2000] UKHL 45 ; [2001] 1 AC 268


case_text: to the claims against Dr Keung, it is asserted in the alternative that he owed a duty of confidence directly to Hamilton in virtue of the disclosure actually being made to him and breached that duty by the disclosure he made, or that he knowingly participated in AMC's breach of confidence in that he directed or procured AMC's breach and was liable therefore. I am prepared, for present purposes, to assume that Dr Keung owed a duty of confidence directly to Hamilton. He was the actual recipient of information which he had reason to know was to be kept confidential, albeit he received it for AMC which in turn owed a duty of confidence directly to Hamilton. If, for example, he used such information for his own private purposes which resulted in a gain for him or a loss to Hamilton, he would have been liable therefore at the suit of Hamilton: see Saltman Engineering Co Ltd v Campbell Engineering Co Ltd , at 213; and without the need for any circularity of action by joining AMC as a party. I need not consider AMC's liability in such a case for present purposes: cf Coulthard v South Australia [1995] SASC 4927 ; (1995) 63 SASR 531 at 535. Equally, I am prepared to assume that he would be liable to Hamilton on an accessorial liability basis for his intentional procurement of AMC's breach of confidence to Hamilton. In this I recognise that there is a significant body of discordant case law across the common law world on the question of the liability of directors who are participants in the wrongs of their company, whether that wrong be a breach of contract, a tort, or an equitable wrong: see the helpful discussion of this in relation to tortious liability in Anderson, "The theory of the corporation and its relevance to directors' tortious liability to creditors" (2004) 16 Aust Jo Corp Law 73; on the small company problem for directors, see Finn, "Opening Remarks" (1999) 27 Fed L Rev 171 at 177-180; see the discussion in Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [113] - [147] ; and see Mortimore QC Company Directors Ch 27 (2009 OUP).


case_title: Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231


case_text: have already indicated the only claim made against Dr Keung is for an account of profits. The evidence before me is that to the extent that confidential information has been misused to generate profit, that has been done by and for the benefit of AMC. If profit has been made, it was AMC's profit. No form of proprietary relief has been sought against Dr Keung or AMC in respect of the breach of confidence. There is no evidence of Dr Keung, as distinct from AMC, deriving profits which are attributable to the information misused. I can see no basis at common law or in equity for an order requiring Dr Keung to account for profit he has not made. I do not consider that Dr Keung's position in this matter can properly be analogised to that of a director of a company diverting a profit making opportunity to his own company such as would render him liable to account for profits derived by that company from the exploitation of that opportunity: cf CMS Dolphin Ltd v Simonet [2001] 2 BCLC 704 ; Premium Real Estate Ltd v Stevens [2009] 1 NZLR 148 at [89]-[91].


case_title: Premium Real Estate Ltd v Stevens [2009] 1 NZLR 148


case_text: Mr Wooding was awarded a certificate from the United States Military Assistance Command, Vietnam in respect of each of his two visits there, attesting to his contribution to the morale and welfare of the military forces in Vietnam (T48/49) [sic].' 4 Further facts were subsequently agreed of which I need refer to only one. It was: "1. Mr Wooding was issued with General Briefing Orders upon his arrival in Vietnam for the second Concert Party. A copy of those orders is attached as Annexure E." The annexure was entitled "Adelaide Concert Party 17 Feb 10 Mar 70" and was prepared by a military officer. It dealt with such matters as travel arrangements, performances, accommodation and allowances (seemingly paid by the Commonwealth), identification ("You will be supplied with a Military Identity Card by your escort officer"), clothing, security etc. 5 Of the material referred to in, or annexed to, the Statement of Agreed Facts, I need only mention the following. In para 9 the references to the Concert Parties being "arranged" and "sponsored" by AFOF are references to newspaper articles where these terms happen to be used. In particular where the word "sponsored" is used it would seem that the journalist who wrote the piece was referring to the fact (also reflected in para 9) that the Concert Party came from South Australia and their trip had been funded by public donation. In Annexure B (referred to in that same paragraph) a member of the Committee of AFOF, SA Division, acknowledged "the great help we have received in arranging the Concert Party to tour Vietnam". 6 As to the history and background referred to in para 12, it is only necessary to refer to the following part of the letter of Major General W J Crews of 24 April 2006: "The RSL Australian Forces Overseas Fund is an approved and accredited philanthropic organisation to operate within the Australian Defence Force. The RSL began providing Christmas parcels to members of the Australian Army serving in Vietnam in 1963. This early RSL fund was amalgamated with the (Sydney) Lord Mayor's Comfort Fund, and hence the Australian Forces Overseas Fund (AFOF) was officially established on 26 January 1966. It was tasked with coordinating a program for the provision of amenities and concert parties for troops serving in the South East Asia Region, and while initially established in NSW, it soon became a National organisation on the establishment of the RSL National Council. In those earliest years, each RSL State Branch appears to have a similarly worded AFOF Constitution (NSW dated Feb 1966 and 28 May 1968, TAS dated 18 June 1968, WA dated 28 Feb 1968), with no specific mention of FACE, except that the Objects state that 'The objects shall be the provision of comforts, equipment and entertainment for Australian Servicemen and women serving overseas or in such other areas as may be determined from time to time'. To assist in the management and coordination of the concert parties, the Minister of Defence has established The Forces Advisory Committee on Entertainment (FACE) in 1966 as a joint venture involving Defence, the RSL and the Australian Broadcasting Commission. FACE was to act as a planning Committee to organise entertainment for Australian forces in Vietnam, thus removing any direct Ministerial involvement with the music industry. It is known from our records that the Concert Parties were originally arranged by the RSL State Branches in rotation, under the guidance of the entertainment managers from within the Australian Broadcasting Commission (ABC). It is of interest that the RSL National Headquarters holds a brief signed by Major General D B Dunstan, Commander Australian Forces Vietnam, dated 23 November 1971, titled 'Canteens and Amenities in Vietnam'. This sets out arrangements for all canteen matters and the provision of amenities. It notes that the provision of amenities were financed from four sources as follows: a. ASCO Rebate to Vietnam Command Amenities Fund (VCAF) all movable amenities; tennis courts at Vung Tau; swimming pool at Phan Rang; part of cost of concert parties from Australia. b. Australian Forces Overseas Fund (AFOF) Part of cost of concert parties; two recreation huts at Nui Dat; AATV Club, Danang. c. RSL (Sportsmen's Appeal) Harold Holt Pool, Vung Tau; most of cost of Kevin Wheatley Stadium, Vung Tau. d. Public Funds Peter Badcoe Club, Vung Tau (contained billiard and reading rooms as amenities but otherwise housed ASCO facilities and living quarters for OC Amenities Unit); Pearson Centre, Nui Dat (contained Amenities store and tape centre but otherwise housed ASCO facilities, education centre and film Library); part of cost of concert parties from Australia. Noting the above, it is quite clear that the earliest concert parties were arranged for or on behalf of AFOF, and that they were managed either directly by FACE or another agency on its behalf. It is also clear that the parties were an official part of the Army's philanthropic program. Unfortunately, the records held in the RSL National headquarters do not provide any listings of which entertainers were accredited to each concert party and we may need to rely on State Branch records for this." 7 The second letter referred to in para 12 warrants reference if only because it may have been the source of some confusion in this matter. "As you are aware, Entertainers in Vietnam who were accredited members of Australian Forces Overseas Fund (AFOF) are considered to be members of a philanthropic organisation and are covered by the instrument signed by the Honourable Ben Humphries, Minister of State for Veterans' Affairs and are eligible for Veterans' Entitlements Act 1986 (VEA) coverage. These personnel completed the accreditation process administered by the Army. As part of this process, they were allocated a service number, have a service record and were issued with approved identification cards. These people were permanent representatives accredited to accompany an Australian Defence Force (ADF) sponsor unit on a full time basis. Unaccredited entertainers may have been in Vietnam at the behest of the Defence Forces and may have had assisted with logistical support for Entertainers in Vietnam (Travel, etc). However, following a review by the Department of Defence, they confirmed that they were not 'attached' to the Forces and were not under the command of the ADF. Accordingly, these entertainers do not have VEA coverage. A number of these entertainers state that the tours were financed by the AFOF and state that their pay was handed to them by the Army acting as AFOF agents. However, this is does not prove that they were employees of the Army. Many of these entertainers have Certificates of Appreciation issued by AFOF. However, this does not indicate that they were members of an approved philanthropic organisation. As we have previously advised you if Mr Wooding or Mr Milburn-Lloyd are able to provide evidence that they completed the AFOF accreditation process, such as being allocated a service number or service record, or were issued with an approved identification card, then they may have a case for being considered an accredited member of a philanthropic organisation." THE TRIBUNAL'S DECISION 8 It is sufficient for present purposes if I set out in full the following paragraphs of the Tribunal's reasons: "8. I was referred to a decision of Edmonds J in Iversen v Repatriation Commission [2006] FCA 942. This decision answered an appeal from a decision of Senior Member Kelly in Re Iversen & Repatriation Commission [2006] AATA 280. In her decision Senior Member Kelly rejected an argument to the effect that Mr Iversen (who also provided entertainment for troops serving in Vietnam under similar circumstances to Mr Wooding) should be treated as a full-time member of the Defence Force serving in an operational area. 9. Senior Member Kelly noted that Mr Iversen rendered courageous and valuable service in performing for the troops in Vietnam; his service was recognised through a listing in the nominal roll of Vietnam veterans and through the awarding of a Logistics Support Medal; he was a member of a group of civilian entertainers who were, in part sponsored by the AFOF and that the AFOF is an approved philanthropic organisation. She nevertheless decided that Mr Iverson was not a representative of AFOF and consequently was not covered by the Ministerial Determination. 10. On appeal Justice Edmonds rejected a submission that Mr Iversen had been a representative of AFOF: '15. The applicant, in his written submissions, contended that "representatives" as it appears in the Determination should be given a meaning that protects those who were in fact in a war zone and thereby exposed to the risks and circumstances associated with that war. It was submitted that such "factual" emphasis on the meaning of representative would accord with the beneficial nature of the Act and the Determination made under it. But such a construction goes well beyond the natural and ordinary meaning of the word "representative" as exemplified in the dictionary meanings of the word upon which the applicant himself relies. 16. In his oral submissions, the applicant articulated what is substantively, albeit not in the same terms, a similar argument, namely that if the applicant's presence in the war zone is only explicable by reference to his participation in a concert tour co-sponsored by the AFOF and the Australian Army, then he can be a representative of the former. That might be so, but such co-sponsorship will not of itself make the applicant a representative of the co-sponsor. Indeed, as the respondent submits, even if the applicant had been an "AFOF sponsored" entertainer rather than an "Army sponsored" entertainer, being sponsored by an organisation cannot be equated with being a representative of that organisation.' 11. I have carefully considered the statement of agreed facts. I have also considered a VRB decision of Milburn-Lloyd dated 30 August 2006. I have reached the view that the only way Mr Wooding could be entitled to benefits under the VE Act would be if his service in Vietnam could be considered to have been performed 'as a representative' of the AFOF. 12. Point 9 of the statement of agreed facts indicates that the concert parties were 'arranged and sponsored' by the AFOF. However, as mentioned by Justice Edmond in Iversen , such sponsorship 'cannot be equated with being a representative of that organisation'. In my view, the term 'representative' connotes an entitlement to act on behalf of another. Point 14 of the statement of agreed facts indicates that Mr Wooding does not recall being a 'member of AFOF'. On the information before me, I have not been satisfied that Mr Wooding was a representative of that organisation. In these circumstances, Mr Wooding does not fall within the ambit of the 1987 Ministerial Direction. I have not been satisfied that Mr Wooding's service, although courageous and valuable, satisfies the basic eligibility conditions for payment of a Disability Pension under the VE Act. The decision under review is affirmed." THE APPLICATION 9 There was, for some time, controversy between the parties as to whether a question of law, as opposed to a mixed question of law and fact was raised in this application: cf s 44(1) of the Administrative Appeals Tribunal Act 1975 (Cth); Vetter v Lake Macquarie City Council [2001] HCA 12 ; (2001) 202 CLR 439. As I now understand it, the parties have agreed the question of law and that is whether or not it was open to the Tribunal to adopt a constrained interpretation of the word "representative" given the context of its use in the Ministerial Determination. 10 To put the applicant's submission shortly, it is that, having regard to the context and purpose of the Determination, the word "representative" comprehends a person who provides the relevant service under the aegis of, as an emissary of, or in association with, one of the defined philanthropic organisations. Iversen v Repatriation Commission (2006) 91 ALD 114, it is said, is distinguishable on its facts. 11 The respondent's case is that the view taken by the Tribunal, that "representative" connotes an entitlement to act on behalf of another, was one that was open to it. It could not be an error of law for it to have taken that view. Iversen , it is said, is presently relevant and highly persuasive. The respondent also emphasised the limitations of the Statement of Agreed Facts. There was simply no evidence on some number of matters. 12 There was some controversy as well as to whether it could properly be said that the Tribunal actually made findings of fact at all. I am satisfied that on a fair reading of the member's reasons, the agreed facts were the facts found. CONSIDERATION 13 The starting point is, necessarily, with the principles of statutory interpretation. Of these, it was observed in the joint judgment in CIC Insurance Ltd v Bankstown Football Club Ltd [1997] HCA 2 ; (1997) 187 CLR 384 at 408: "It is well settled that at common law, apart from any reliance upon s 15AB of the Acts Interpretation Act 1901 (Cth), the court may have regard to reports of law reform bodies to ascertain the mischief which a statute is intended to cure. Moreover, the modern approach to statutory interpretation (a) insists that the context be considered in the first instance, not merely at some later stage when ambiguity might be thought to arise, and (b) uses 'context' in its widest sense to include such things as the existing state of the law and the mischief which, by legitimate means such as those just mentioned, one may discern the statute was intended to remedy. Instances of general words in a statute being so constrained by their context are numerous. In particular, as McHugh JA pointed in Isherwood v Butler Pollnow Pty Ltd , if the apparently plain words of a provision are read in the light of the mischief which the statute was designed to overcome and of the objects of the legislation, they may wear a very different appearance. Further, inconvenience or improbability of result may assist the court in preferring to the literal meaning an alternative construction which, by the steps identified above, is reasonably open and more closely conforms to the legislative intent ": emphasis added. 14 The clear object of the Ministerial Determination was to extend to designated classes of person who were not members of the Defence Force the same entitlements they would have had as an actual member of the Force who was rendering continuous full-time service, for the purposes of the Veterans' Entitlement Act, provided (for present purposes) three requirements were met. These were (i) the person provided welfare services to the Defence Force; (ii) in a prescribed operational area (here Vietnam); and (iii) as a representative of any one of six "approved philanthropic organisation[s]". Those organisations were: (a) the Australian Red Cross Society; (b) the campaigners for Christ Everyman's Welfare Service; (c) the Salvation Army; (d) the Young Women's Christian Association of Australia; and (e) the Young Men's Christian Association of Australia; and (f) the Australian Forces Overseas Fund. 15 While all of these conditions are required to be satisfied, it is, in my view, relatively clear that the first and second of them differ in their significance and burden from the third. They provide the reason why, as a matter of policy, a person who has satisfied those conditions should be considered as having a possibly legitimate claim to be put on the same footing as members of the Defence Force rendering continuous full-time service, for the purposes of the Veterans' Entitlement Act. 16 The third condition (in the "as representative" requirement) would appear to be a channelling or control device regulating who actually will be equated with a member of the Defence Force. The relevant organisation is required to be "approved" and the presupposition is that in some manner it provides or procures the provision of welfare services to the Defence Force. The question posed by the condition is what is the nature of the connection that must exist between the actual service provider and the approved organisation before the service provider will have his or her service recognised for the purpose of the Act. 17 While the third condition controls access to the benefits of the Act, there is nothing in the beneficial policy, that appears to animate the Ministerial Determination, which would warrant a restrictive interpretation of the required connection. For reasons I give below, I consider that both the Veterans Review Board and the Tribunal have given the Determination such an interpretation, in their respective imposition of an "agency" like role on the service provider. This is best illustrated in observations of the Board in reaching its decision. 18 Having referred to a particular dictionary definition the Board said (at [15]): "In this dictionary definition there appears to the Board to be a concept of a person having authority to act 'for' or 'on behalf of' another involving the notion of agency. The evidence before the Board is that the SACP [South Australia Concert Party] tours of Vietnam were organised, funded and sponsored by the AFOF. This included obtaining the unpaid services of Mr Wooding and others as entertainers. Although the SACP travelled and operated under the AFOF banner, there is no evidence of direct authority or any inferential manifestation of consent by the AFOF that Mr Wooding or any other member of the SACP should act on behalf of the Fund." 19 In my view so to treat the representational requirement is to subvert what appears to be the purpose of the Determination itself. That purpose, in my view, is to provide potential benefits to persons who relevantly provide welfare services provided those services are provided or procured by one of the approved organisations. 20 Given that the object of the Determination is to identify the classes of persons who will benefit from the Determination, it is understandable that, in form, its focus is on the relationship of the relevant person to the approved philanthropic organisation (i.e. "who, as representatives of ..."). This said, the apparent policy and purpose of the Determination is manifest in the relationship of the philanthropic organisation to the person providing the service and, especially, to its role in the provision of that service. 26 Secondly, in many instances one can envisage a service provider would, for the purposes of the Determination, be a "member" of the relevant philanthropic organisation and would be performing an agency-like role for that organisation. In this matter, probably as a result of Iversen , the issue of "membership" loomed large but quite unhelpfully in the Statement of Agreed Facts. It was a distraction. As far as I could ascertain from counsel, there was no evidence at all as to whether any member of the AFOF was involved in the actual provision of welfare services in operational areas. This said, evidence on that matter would not have affected the answer to the question of construction raised by the Determination. A "representative" need not necessarily be a member. I would add that there is a range of welfare services (of which those involved in the present matter are ones) which it is unlikely that members of some at least of the approved philanthropic organisations would be able to deliver effectively. 27 I will allow the appeal, set aside the decision of the Administrative Appeals Tribunal and remit the matter to the Tribunal to be heard and decided again. I certify that the preceding twenty-seven (27) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn. Associate: Dated: 13 March 2007 Counsel for the Appellant: Mr S Ower Solicitor for the Appellant: Tindall Gask Bently Counsel for the Respondent: Dr C Bleby Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 12 February 2007 Date of Judgment: 13 March 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/318.html