case_outcome: distinguished

case_title: Knight v F.P. Special Assets LTD [1992] HCA 28 ; 1992 174 CLR 178

case_text: The Probiotec parties refer in support of their case on costs to the decision in Knight v F.P. Special Assets Ltd [1992] HCA 28 ; (1992) 174 CLR 178 at 192-193, where Mason CJ and Deane J considered the principles on which costs may be awarded against a non-party to the litigation. Their Honours referred to the position where the non-party has played an active part in the conduct of the litigation and where the non-party, or some person on whose behalf he or she is acting, has an interest in the subject of the litigation. The Probiotec parties say in the present case that they were not party to the cross claim alleging invalidity of the patent claim, that they were drawn into the litigation in which they played no active role, and that they should not be the subject of adverse costs order. 23 I do not accept this submission. Clearly the Probiotec parties were a party to the litigation. The expression "litigation" in this case should be read as a reference to both the infringement and validity aspects of the proceeding. It should not be confined simply to the cross claim alleging invalidity brought by the NSI parties. They denied not only infringement but also invalidity. They gave an undertaking inter partes not to carry out relevant conduct, but this was a conditional undertaking in that it was made without admissions and was only to continue until the outcome of the proceedings, and even then only in the event that they were unsuccessful in their defence. In my view, the principles in Knight are not relevant to the present circumstances. When looked at in the context of the overall litigation, the Probiotec parties intended to and did take advantage of the invalidity claim and non-infringement submissions advanced on behalf of the NSI parties. Looking at the substance of the position taken by the Probiotec parties, the non-infringement defence in relation to the patent involves by its nature, substance and effect a consideration of the patent's validity in a real sense: see Baygol Pty Ltd v Huntsman Chemical Co Australia Pty Limited t/a RMAH [2004] FCA 1248 at [27] - [28] ; and Farmitalia Carlo Erba SrL v Delta West Pty Ltd (1994) 28 IPR 336 at 339 and 341. The end result of this consideration is that, although they took no active part in argument or in the conduct of the proceeding, the Probiotec parties, in denying infringement and asserting invalidity in the event that infringement was found to have been made out, were content to allow the NSI parties to put the case and to rely on the same submissions thus advanced. When regard is had to the limited and conditional nature of the position taken by them in the undertaking and in not withdrawing the pleading as to invalidity, the approach of the Probiotec parties to the litigation was not one simply of a submitting party. The University parties therefore are entitled to their costs against the Probiotec parties, including costs on the question of invalidity and infringement.


case_outcome: applied

case_title: Stumm v Dixon & Co (1889) 22 QBD 529

case_text: It is settled law that liability for payment of a costs order is ordinarily joint and several. In the present case it cannot be said that the Probiotec parties have raised a separate and distinct defence which has incurred costs that cannot be attributed to the joint conduct of the Cross Respondents in the course of this action. In Stumm v Dixon & Co (1889) 22 QBD 529 at 533-534, the Court of Appeal said: 'When an action is tried against two or more defendants, and any defendant separates in his defence, and the judgment is against all, the law is that each of them is liable for the damages awarded by the judgment, and each of them is liable to the plaintiff for all costs taxed on his behalf as properly incurred by him in the maintenance of his action, except as to costs caused to him by so much of the separate defence of any defendant as is ... a defence for that defendant as distinguished from other defendants.' 25 The above principle set out in Stumm was referred to by Cooper J in Thiess Watkins White Constructions Limited (in liq) v Witan Nominees (1985) Pty Ltd [1992] 2 Qd R 452 at 453. 26 The final orders made in the case by way of restraint are against all Cross Respondents in relation to the relevant claims challenged. In order to make good its case on the pleadings, it was necessary for the University parties to prove the involvement of the Probiotec parties, and I note no director of any of the Probiotec parties gave evidence about the relationship between those parties and the NSI parties until after the 20 March 2007 hearing on costs. It was also necessary to counter the allegation of invalidity and appropriate to obtain a Court order, especially having regard to the fact that the undertaking as to conduct was given without admission 27 After the hearing on costs on 20 March 2007, I gave liberty to the University parties to make further written submissions, and gave leave for the Probiotec parties to file an affidavit of Mr Stringer, the Chief Executive Officer of Probiotec (Australia) Pty Ltd. That affidavit was filed the next day, on 21 March 2007. In it, Mr Stringer gives a detailed history and states that he was the person responsible for the Probiotec parties' instructions to solicitors in respect of the current proceedings. He states that he has never given instructions to Messrs Spruson & Ferguson that the Probiotec parties wished to dispute the validity of the University's patents or to assist the First to Fifth Cross Respondents in their contest of the validity of the University parties' patents. His instructions are reflected in the Letter of Undertaking from Spruson & Ferguson to Freehills dated 17 September 2004. In view of the conclusion which I have reached above and the reasons for that conclusion, the contents of Mr Stringer's affidavit do not persuade me that the Probiotec parties should not be jointly and severally liable for costs in this matter. Consequently, although the University parties have not, since the hearing of 20 March 2007, made written submissions in reply to either the content of Mr Stringer's affidavit or the written submissions handed up by the Probiotec parties in court on that date, in any event, in view of my conclusion, any further submissions on behalf of the University parties would not affect the outcome of my decision on costs in this matter, as the orders which I have made are in favour of the University parties. In those circumstances, there is no necessity for any further submissions on behalf of the University parties in relation to the costs question.


case_outcome: cited

case_title: Thiess Watkins White Construction Limited (in liq) v Witan Nominees [1992] Qd R 452


case_outcome: referred to

case_text: The applicant submitted that the issues paper presented to the Minister to facilitate his decision-making, contained misleading statements which the applicant should have been given an opportunity to correct. The applicant submitted that failure to do so resulted in a breach of procedural fairness which can result in the decision being set aside: see Johnson v Williams [2000] FCA 3 , R v Kylsant (1932) 1 KB 442 and Dagli v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 298 ; (2003) 133 FCR 541. The material errors of fact and law pleaded in the second further amended statement of claim included those relating to the statements that the applicant's citizenship was the "Federal Republic of Yugoslavia" and that he "would be entitled to apply for a new Yugoslav passport". 24 Secondly, the issues paper incorrectly stated that he had not made any claims that required assessment in relation to international obligations in circumstances where he had made the following claims. The applicant had claimed that in the event that his visa was cancelled and he was deported to the then current Federal Republic of Yugoslavia that he had no family ties or friends in that country, limited knowledge of the language and vocabulary and no financial support. He had also claimed that the deportation was likely to have a devastating effect on his then successful rehabilitation from drug addiction, perhaps causing his relationship with his de facto to end or causing him to commit suicide. He claimed that he would have extreme difficulties in finding employment and that he did not hold a current travel document to enter the then current Federal Republic of Yugoslavia. 25 The applicant submitted that these claims required assessment in relation to international obligations including those under the ICCPR and the CSSP and that to have proceeded based on the errors in the issues paper was not a course obviously open on the known material and the applicant could not reasonably have been expected to have been aware of it. 29 The last issue is whether the issues paper was misleading and enlivened the obligation to invite comment as discussed in Dagli . It was said to be misleading in two respects. Firstly that the applicant was a citizen of the Federal Republic of Yugoslavia and would appear to be entitled to apply for a new Yugoslavian passport. Secondly that the applicant had not made any claims that required assessment in relation to international obligations. For the reasons discussed in the preceding paragraph, the issues paper was not misleading in this second respect. That leads to a consideration of whether it was misleading in the first respect and, if so, should the applicant have been invited to comment. 30 The judgment of the Full Court in Dagli reinforced, in the context of decision-making under s 501 , the principle that a person is entitled to an opportunity to comment on adverse material provided to the decision-maker by others, and the failure to provide an opportunity constitutes a denial of procedural fairness. As illustrated by the recent Full Court judgment in VKAC , that adverse material can include assertions in an issues paper about the citizenship of the person whose visa is at risk of cancellation. However, as Mansfield and North JJ noted in VKAC (at [19]) the comment in the issues paper in the matter, that the appellant was a Burmese citizen, was adverse because it removed from consideration the position advanced by the appellant (a contention of substance based on probative material) that she was stateless and could not be returned to Burma. 31 The present case is different. At no point did the applicant contend that he was stateless or, additionally, that he could not be removed to Serbia or any contemporary manifestation of Yugoslavia. Thus the statement that he was a "Yugoslav citizen" and, later in the issues paper, that he would be "entitled to apply for a new Yugoslav passport" did not constitute adverse material as it did not impeach or have the potential to impeach the case he had advanced in opposition to the cancellation of his visa. 32 The application should be dismissed with costs. I certify that the preceding thirty-two (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore. Associate: Dated: 15 December 2006 Counsel for the Applicant: I Archibald Solicitor for the Applicant: Michaela Byers, Solicitor Counsel for the Respondents: S Lloyd with S Free Solicitor for the Respondents: Australian Government Solicitor Date of Hearing: 31 January 2006; 9 June 2006 (counsel for the Respondent on latter date only) Date of Judgment: 15 December 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1758.html


case_text: These proceedings were commenced on 20 December 2005 as an application for a declaration that the applicant, who had been removed from Australia, was entitled to an absorbed person visa pursuant to s 34 of the Migration Act 1958 (Cth) (the Act). The applicant also sought an order that the respondents arrange the return of the applicant to Australia, a declaration of wrongful imprisonment and damages. Since then, a number of events have occurred which have altered the issues that need to be determined. First, the applicant has been returned to Australia by the Commonwealth. Secondly, the High Court has given judgment allowing an appeal against a judgment of a Full Court of this Court. The Full Court's judgment underpinned part of the case originally advanced by the applicant. The parties agreed that judgment in this matter could be reserved until the High Court gave its judgment. The High Court gave judgment, Minister for Immigration and Multicultural and Indigenous Affairs v Nystrom [2006] HCA 50 , on 8 November 2006. The judgment of the High Court had the effect of removing two of the grounds relied on by the applicant. The High Court's judgment is discussed shortly. 2 The facts agreed upon by the parties were as follows. The applicant was born in Paris, France on 4 December 1966 to parents who were then both citizens of Yugoslavia. In 1968, when the applicant was two years of age, his parents migrated to Australia with him and his siblings. The applicant and his family members were granted permanent entry permits on their arrival into Australia. In 1983, the applicant's parents became Australian citizens. The applicant was not included in his parents' application for citizenship. From 19 September 1984 to 4 November 1984, the applicant travelled with his father to that part of Yugoslavia which, up until very recently, was known as Serbia and Montenegro, and then returned to Australia as the holder of an old visa of a kind known as a "Return Endorsement". 3 On 1 September 1994, the applicant became the holder of a transitional (permanent) visa by operation of reg 9 the Migration Reform (Transitional Provisions) Regulations 1994 (Cth). Between 1979 and 2001, the applicant was convicted of a number of criminal offences. On 15 October 2002, the then Minister for Immigration and Multicultural and Indigenous Affairs made a decision pursuant to s 501(2) of the Act to cancel the applicant's transitional (permanent) visa. The applicant was removed from Australia on 18 June 2004. 4 Before the decision of the High Court in Nystrom the principal ground relied on by the applicant was that he held an absorbed person visa by operation of s 34 of the Act and that the failure of the Minister to take into account that he held that visa gave rise to jurisdictional error. One of the statutory criteria for that visa was that the applicant had not, on or after 2 April 1984, left Australia. The Minister contended this criterion had not been satisfied by the applicant having regard to his travel to Yugoslavia in late 1984. Submissions were directed to the meaning of "left Australia". 5 Another argument advanced by the applicant was that s 200, and not s 501, was the applicable source of the power on which the Minister might have acted and that there was a direct repugnance between s 501 and ss 200 and 201, with the result that the first respondent's decision was vitiated by jurisdictional error. 6 It is not necessary to consider those arguments in light of the High Court's decision which held that where a person held two visas (the same visas the applicant contends he held in this matter), each of which conferred the same substantive rights, in cancelling one the Minister was not bound to take into account the "nature" of the other because there was no consideration relevant to the applicant's absorbed person visa which was not relevant to and considered when the Minister cancelled his transitional (permanent) visa (at [129] per Heydon and Crennan JJ). Gummow and Hayne JJ held that nothing in the text of s 501 or s 501F provided any support for reading into s 501(2) a requirement to consider the possible effect of s 501F on the visa holder (at [41]). Even if the applicant held an absorbed person visa in addition to his transitional (permanent) visa, s 501F(3) operates to cancel the absorbed person visa. 7 The other issues which Nystrom resolved concerned whether there was repugnancy between ss 200 and 201, and s 501 of the Act. The issue was whether s 501 of the Act, as a general provision, yielded to the more specific provisions in s 200 and s 201 governing the deportation of non-citizens who have committed criminal offences with the result that the Minister had no power to cancel a visa under s 501 in circumstances governed by s 200 and s 201. 8 The High Court in Nystrom rejected this proposition and held that (at [61] per Gummow and Hayne JJ): ...the two powers do not deal with the same subject-matter so as to attract the operation of the maxim expressum facit cessare tacitum and the reasoning which underpins Anthony Hordern and other decisions. The scheme of the Principal Act does not treat as having the one identity deportation and cancellation of a visa. This is so notwithstanding that, by reason of other provisions of the Principal Act, the exercise of both powers may well result in the same practical outcome. and at [67], and [69]-[70]: The powers in s 501(2) and s 200 have different provenances, and persons in respect of whom a deportation order has been made have a different status and different rights under the Principal Act. Those differences cannot be ignored by an ellipsis which regards s 200 and s 501 as directed to the same practical outcome. ... Section 501(2) and ss 200 and 201 have different consequences for the status of individuals in the context of the Principal Act. Where a deportation order is made, the individual has the status of a lawful non-citizen who is subject to deportation. If an order under s 501(2) be made, the status of the individual changes to that of unlawful non-citizen. The Principal Act attaches significance to each status. Accordingly it is not open to characterise the powers as dealing with the same subject-matter in the sense of the Anthony Hordern line of cases. In the circumstances of this case, the inapplicability of s 200 (by reason of non-satisfaction of s 201(b)(i)) cannot deny the application of s 501(2) by reference to s 501(6)(a). 9 The remaining grounds in this matter concern the procedures adopted by the Minister in reaching the decision to cancel the applicant's transitional (permanent) visa. 10 The applicant submitted that Direction 21 required the decision-maker to consider certain international obligations found in the International Covenant on Civil and Political Rights (ICCPR). Direction 21 was made under s 499 of the Act which provides that the Minister may give directions to a person or body about the performance of functions under the Act or as to the exercise of powers under the Act, but such a direction must not be inconsistent with the Act or the Migration Regulations 1994 (Cth). A person or body receiving the direction must comply with the direction. Direction 21 concerns "visa refusal and cancellation under section 501 of the Migration Act 1958 ".


case_text: The applicant submitted that the intention to proceed on the basis that no claims had been made out which might be affected by the implicit non-refoulement obligation was inconsistent with the legitimate expectation that the Minister would act in conformity with the ICCPR. There was an expectation that if the Minister proposed to act in a manner which was not consistent with Australia's obligations under the ICCPR, that he would be afforded procedural fairness in relation to this intention and given the opportunity to argue against that course. Reference was made to Minogue v Human Rights & Equal Opportunity Commission [1999] FCA 85 ; (1999) 84 FCR 438 at [37] . 14 The Minister submitted that the applicant had not in fact made claims that required assessment in relation to international obligations. The Minister submitted that the applicant's claims did not show or reasonably show that he would suffer subjection to torture or cruel, inhuman or degrading treatment or punishment by someone in Serbia. 15 Article 7 of the ICCPR provides: No one shall be subjected to torture or to cruel, inhuman or degrading treatment or punishment. In particular, no one shall be subjected without his free consent to medical or scientific experimentation. 18 The applicant submitted that the Minister was required to consider Australia's international obligations under Art 31(1) of the Convention relating to the Status of Stateless Persons (CSSP) and that if he proposed to depart from that, the applicant was entitled to notice and that he had a legitimate expectation that he would be given an opportunity to argue against that course being taken: Minogue . Article 31 provides that: The Contracting States shall not expel a stateless person lawfully in their territory save on grounds of national security or public order. 28 As the Full Court noted in Minogue , the authority relied on by counsel for the applicant, the notion that departure from a course that a person has an expectation will be followed, is an aspect of procedural fairness. Even making a range of assumptions in the applicant's favour about the contents of the two international instruments and that an expectation of the type asserted had been raised in a general sense, the applicant singularly failed to provide the Minister with any information which might reasonably have caused the Minister not to decide to cancel the applicant's visa because of the instruments. In substance, the factual case now called in aid to establish that there would have been an expectation that the Minister would act in a particular way, was a case never raised with the Minister before he made the impugned decision. There was no unfairness: see Lam at [24]-[25]. At best, it would be a case based on facts now known and advanced by the applicant in these proceedings.


case_text: The Minister submitted that, following the decision in Re Minister for Immigration and Multicultural and Indigenous Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1, the applicant must do more than simply identify an expectation that a particular treaty would be applied. The applicant must identify some respect in which he suffered a practical injustice because of the procedure that was followed. The Minister submitted that even if the Court were to find that the applicant was stateless the applicant could not have had a legitimate expectation that the Minister would consider obligations arising under the CSSP because the CSSP was not one of the international instruments expressly referred to in Direction 21. 28 As the Full Court noted in Minogue , the authority relied on by counsel for the applicant, the notion that departure from a course that a person has an expectation will be followed, is an aspect of procedural fairness. Even making a range of assumptions in the applicant's favour about the contents of the two international instruments and that an expectation of the type asserted had been raised in a general sense, the applicant singularly failed to provide the Minister with any information which might reasonably have caused the Minister not to decide to cancel the applicant's visa because of the instruments. In substance, the factual case now called in aid to establish that there would have been an expectation that the Minister would act in a particular way, was a case never raised with the Minister before he made the impugned decision. There was no unfairness: see Lam at [24]-[25]. At best, it would be a case based on facts now known and advanced by the applicant in these proceedings.


case_text: The Minister referred to authority for the proposition that citizenship or statelessness are not relevant considerations required to be taken into account (see VKAC v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 974 (at [43])) however, since making that submission a Full Court has allowed an appeal against that decision ( VKAC v Minister for Immigration and Multicultural Affairs [2006] FCAFC 124).


case_title: VKAC v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 974


case_title: Bodney v Bropho [2004] FCAFC 226 ; (2004) 140 FCR 77

case_text: If the evidence were to establish unequivocally that Worimi has not been authorised by the native title claim group, the application may be summarily dismissed for failure to comply with s 61 of the [2004] FCAFC 226 ; Act ( Bodney v Bropho (2004) 140 FCR 77 at [52] per Stone J). However, the application should only be dismissed where the claim as expressed is untenable and on the basis of the evidence most favourable to Worimi ( Landers v State of South Australia (2003) 128 FCR 49 at [7]). 28 Ms Jowett also emphasises that the factual issues, many of which are complex in nature, should not be determined in interlocutory proceedings. The merits of the claim should be determined at trial ( Bodney at [11]). She points out, correctly, that there was no cross-examination of Worimi; nor has Mr Hillig adduced evidence from his mother Beryl Dates senior or from his sister Debbie Dates. Her explanation for the identification by Worimi of the different claim group in the first application is an assumption on his part that other Worimi people were recipients of the same knowledge as he held. The second application and the identification of the claim group was, according to Ms Jowett, prepared in the knowledge from the first application that some Worimi women and Mr Kelvin Dates, Worimi's brother, denied holding any native title rights over the Land. 29 Mr Jowett submits that, if individuals cease to acknowledge and observe relevant laws and customs, they will cease to possess native title. That provides an explanation why Worimi and his wife and children who continue to observe those laws and customs represent the totality of the claim group. That knowledge was passed to Worimi by his father, his father's brothers and his father's mother. She stresses that the determination of the recipients of the native title rights requires findings of fact to be made which ought not be the subject of inquiry for the purposes of a strike-out application. 30 Having made those submissions, Ms Jowett acknowledges that, if the second application does not comply with ss 61 and 62 of the Act, it is liable to be struck out. 48 Ms Jowett placed considerable reliance on Bodney , where the Full Court dealt with a claim group analogous to that of the present application and allowed an appeal against an order to strike out the application pursuant to s 84C of the Act. 49 Worimi has, unlike Mr Bodney, changed the composition of the claim group from the first to the second applications (cf Bodney at [5]) and has, in these proceedings, sought to explain his reasons for doing so. My consideration of the claim group and authorisation is based only on Worimi's evidence, as relied upon by him in these proceedings. That evidence includes his affidavit in these proceedings which refers to the first application and his affidavits in support of that application. Those affidavits were relied upon by Worimi in his written submissions. That evidence is untested by cross-examination. I have accepted that evidence. However, that does not preclude an analysis of that evidence to present a coherent understanding of the asserted claim group and the extent of authorisation. 50 Worimi's evidence is that there are other persons outside his immediate family who, as part of the Garuahgal people or the Worimi nation, would have been entitled to assert native title over the Land (cf Bodney at [28]). His qualification is that he now understands that they do not observe traditional laws and customs and that, accordingly, the persons specified in the claim group are the whole of the group alleged by him to hold the claimed native title rights and interests. In other words, as discussed in Bodney by Branson J at [31], Worimi relies upon the theoretical possibility that individuals who are Garuahgal or Worimi by descent do not share in all of the native title rights and interests because they have ceased to acknowledge the traditional laws and observe the traditional customs of the community. That is not a question that needs to be determined on this strike-out application. I am prepared to accept that possibility, for the purposes of this application. 51 The characteristics of those persons are members of the Garuahgal or Worimi people who presently observe traditional law and custom as described by Worimi or who may claim entitlement through marriage to the eldest son of the family. Worimi is the eldest son, as was his father. As Worimi's wife is included by her marriage to Worimi although there is no suggestion that she observes traditional law and custom, so also is his mother. As his daughters are part of the claim group as members of his family, to whom he has passed laws and customs, so too is his sister Debbie and possibly her children. The claim group of the second application is not comprised of all the persons who, according to traditional law and custom, hold the common or group rights and interests comprising the native title claimed. It follows that it is liable to be struck out for failure to comply with s 61(1) of the Act. 52 It is necessary to consider whether Mr Hillig has established that the requirements of authorisation in s 251B(a) have not been met.


case_text: Worimi's case seems to be that, if the persons otherwise possessing native title interests have abandoned them, they are no longer identifiable as members of a community living under the relevant laws and customs. Worimi does not claim that, according to traditional laws and customs, individual rights or family rights (in the sense of Worimi, his wife and daughters) are recognised by traditional law and custom. This is not a case where Worimi claims that his immediate family hold native title rights by virtue of the membership of their family alone (cf Colbung v Western Australia [2003] FCA 774). He acknowledges that the Land is Worimi land. That is, according to traditional law and custom, the rights are held by Worimi people or the particular clan or group, such as the Garuahgal people. Whatever the precise identity of the people who possess such rights over the Land (see Hillig (No 2) at [20]-[22]), it is a group larger than Worimi and his family. If that is the case the family, by calling itself a native title claim group, does not establish that it is a "native title claim group" for the purposes of Worimi's entitlement to make the second application pursuant to s 61(1) of the Act ( Risk v National Native Title Tribunal [2000] FCA 1589 at [60] ).


case_outcome: considered

case_text: The reasoning can be said to be as follows. The native title rights are held by the Worimi people. The custodian and protector is the eldest son in a family, although this is not an exclusive right because, for example, women are custodians of the women's site; it is not suggested that Worimi's father's mother was the sole female custodian. There is no evidence of a basis in traditional law and custom as to the restricted class of persons who hold native title rights or individual rights or of the restriction to Worimi and his family. It is Worimi's own deduction that others whom he acknowledges would have such native title rights cannot have them because they fail to acknowledge that such rights exist over the Land. A claim group, however, may exist for the purposes of s 223(1) of the Act where only a part of the community have acknowledged and observed traditional laws and customs ( De Rose v South Australia (No 2) [2005] FCAFC 110 ; (2005) 145 FCR 290 at [58] ). 44 In De Rose (No 2) at [57] the Full Court said that a claimant group whose members have never acknowledged or observed traditional laws and customs cannot succeed in a claim for native title rights and interests merely because other Aboriginal peoples have acknowledged and observed the relevant traditional laws and customs, even if by those laws and customs observed by others, the claimant group "possessed" native title rights. The Court observed that the position would be similar where a native title claim is made by one or more individuals who do not assert a communal or group claim. Here, on the basis of Worimi's evidence, traditional law and custom identifies Worimi people other than Worimi and his family as "possessing" rights and interests in the Land, not least Worimi women. Worimi's evidence is that at least some of those persons have not been taught about the Land; they do not acknowledge and observe the relevant laws and customs. They do not, by the laws and customs described by Worimi, have a connection with the Land. That would preclude them from succeeding in a claim (s 223(1)(b); De Rose (No 2) at [56]). 45 Worimi concludes that those persons who denied native title did not know of the traditional laws and customs that established it. Worimi's assertion is that he and his family hold native title rights within the meaning of s 223(1)(a) and (b) of the Act. He does not suggest that, by traditional law and custom, native title rights were only "possessed" by his family (s 223(1)(a)) or that they "hold" exclusive to them the common or group rights and interests comprising the particular native title claimed (s 61(1)). 46 De Rose (No 2) discussed the fact that a group that does not fulfil the requirements of s 223(1)(a) and (b) cannot succeed in a native title claim. This included a group that possessed the rights and interests under traditional laws and customs but did not, by those laws and customs, have a connection with the land. The native title claimant group must establish rights and interests possessed under the traditional laws acknowledged and the traditional customs observed by that community or group (at [58], original emphasis). Here, Worimi's evidence is that his claim group, himself, his wife and the daughters to whom he has passed the laws and custom, is not the totality of the group which possesses the rights and interests under traditional laws and customs. That group is the Worimi people, or Garuahgal people; the descendents of Mary Mahr. At the least it includes Worimi's mother Beryl Dates senior; his sister Debbie Dates and those of Debbie Dates' children to whom she has imparted knowledge of traditional laws and customs as specified in the first application.


case_text: Mr Hillig accepts that he bears a heavy onus in seeking to strike out the proceedings. He does not rely on s 31A of the Federal Court of Australia Act 1976 (Cth). He submits that the test in General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 at 129 is satisfied: the second application is so obviously untenable that it cannot possibly succeed. He points out that, as expressed in General Steel , the test is met where the case disclosed is one which the Court is satisfied cannot succeed and where it is manifest that to allow the pleading to stand would involve useless expense (see also Lindon v Commonwealth of Australia (No 2) [1996] HCA 14 ; (1996) 136 ALR 251 at 255 6).


case_text: Mr Hillig is the Administrator of Worimi Local Aboriginal Land Council ('the Land Council'). He seeks a declaration in separate proceedings ('the Hillig proceedings') that no native title exists over land at Port Stephens ('the Land'). The Land Council owns the fee simple in the Land, subject to any native title rights or interests (s 36(9) of the Aboriginal Land Rights Act 1983 (NSW)) and wishes to sell the Land. On 22 August 2006, I struck out a claimant application by Mr Dates, who prefers to be known as Worimi, for a determination that native title exists over the Land ('the first application'): Hillig as Administrator of Worimi Local Aboriginal Land Council v Minister for Lands for the State of New South Wales (No 2) [2006] FCA 1115. Worimi has now filed a further claimant application ('the second application'). These proceedings concern the second application. Mr Hillig moves the Court for orders that the second application be struck out. 2 In order to deal with Mr Hillig's motion, it is necessary to reiterate some matters considered in Hillig (No 2). The first application was a claimant application by Worimi on behalf of women who asserted a native title interest in the Land as a sacred site for women. Worimi had sought, by a draft proposed application ('the proposed application'), to amend the first application to assert a native title interest held by himself and his family. The claim group of the second application is the same as the claim group identified in the proposed application considered in Hillig (No 2). 3 In Hillig (No 2) at [60] I discussed whether s 61(1) of the Native Title Act 1993 (Cth) ('the Act') requires the claim group to consist of the whole group of persons who hold native title over an area or whether it can comprise a sub-group which is only part of a larger group of native title holders. I concluded that, subject to an exception that is not relevant in this case, where a small family group or sub-group is only part of the group who claim to hold native title, the sub-group does not hold the common or group rights or interests within s 61. 4 I determined that the first application should be struck out (at [72]). I did not permit Worimi to amend that application for reasons that I gave. I did, however, give him the opportunity to file a further claimant application. A relevant consideration was the delayed hearing of the Hillig proceedings for a declaration of no native title over the Land ( Hillig (No 2) at [79]). I directed at [83] that any further application filed by Worimi include, in accordance with the requirements of the Act, the proper identification of and authorisation by the claim group; the connection between the claim group and the relevant traditional laws and customs observed; and the basis for the claim by that claim group from the time of sovereignty. 5 Worimi filed the second application on 19 September 2006 and in so doing initiated these proceedings. Without objection from Worimi, I made an order that Mr Hillig be joined. Mr Hillig now seeks to strike out the proceedings pursuant to s 84C of the Act or to dismiss them summarily pursuant to O 20 r 2 of the Federal Court Rules .


case_text: If the evidence were to establish unequivocally that Worimi has not been authorised by the native title claim group, the application may be summarily dismissed for failure to comply with s 61 of the [2004] FCAFC 226 ; Act ( Bodney v Bropho (2004) 140 FCR 77 at [52] per Stone J). However, the application should only be dismissed where the claim as expressed is untenable and on the basis of the evidence most favourable to Worimi ( Landers v State of South Australia (2003) 128 FCR 49 at [7]).


case_title: Lindon v Commonwealth of Australia (No 2) [1996] HCA 14 ; (1996) 136 ALR 251


case_title: Risk v National Native Title Tribunal [2000] FCA 1589


case_text: categories of costs in which a court may order a non-party to pay costs are not closed: Applicant NAGM of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 396 ; (2002) 125 FCR 488. In that case, at [62] the Court said: There are certain categories of cases in which the jurisdiction to award costs against a non-party has been exercised, if not frequently, then with some degree of regularity. One such category is where the non-party is considered to be the "real party" to the litigation: Knight v Special Assets at 188 per Mason CJ and Dean J. Another is where the non-party is a legal representative of a party to the proceedings. A costs order may be made, for example, against a solicitor in consequence of his or her conduct in the litigation: Caboolture Park at 231. While s 43 of the Federal Court Act empowers the Court to make a costs order against a legal representative of a party, a second source of jurisdiction is the "implied", "accrued" or "inherent" jurisdiction of the Court over its own officers: Caboolture Park at 231.


case_text: is not possible to determine whether the statutory demands were in fact ever served on the defendants in accordance with the Act. Mr Byrnes contends they were and the defendants contend they were not received. That was an issue to be determined at the trial but the proceedings were dismissed for the reasons given. I do not think, in the absence of hearing the witnesses whose evidence is relevant to this issue and particularly Mr Byrnes, the issue can be resolved. Moreover, the resolution of that issue would be undesirable after the proceedings were dismissed at the behest of the defendants: Australian Securities Commission v Australian Home Investments Ltd (1993) 116 ALR 523 at 530.


case_text: will be an abuse of process if a creditor brings a winding up proceeding under Pt 5.4 against a solvent company as a means of putting pressure on the company to pay its debt: Baillieu Knight Frank v Ted Manny Real Estate Pty Ltd (1992) 30 NSWLR 359 ; Re A Company (No 0012209 of 1991) [1992] 2 All ER 797.


case_text: Bent v Gough [1992] FCA 267 ; (1992) 36 FCR 204 , the Full Court of the Federal Court determined that s 32 of the Bankruptcy Act empowered the Court to make an order for costs against the liquidator who was not a party in the bankruptcy proceeding.


case_text: finding is enough, it seems to me, to make the order sought by the defendants that the plaintiffs pay the defendants' costs on an indemnity basis: In the matter of Bond Corporation Holdings Ltd (1990) 1 WAR 465 ; Packer v Meagher (1984) 3 NSWLR 486. In Ragata Developments Pty Ltd v Westpac Banking Corporation (1993) 217 ALR 175 , Davies J said at [7]: ... it is not open to an individual Judge to award costs having regard to his own view as to the adequacy of party/party costs so fixed. An award of costs on an indemnity basis may be made only in a special case, where the circumstances justify departure from the ordinary principle. The circumstances must be such as to justify an award indemnifying the successful party in respect of all of the costs incurred, save only as to those costs which are unreasonable in amount. The very nature of the award of costs on an indemnity basis gives a guide to the type of case in which such an award is appropriate. Thus, indemnity costs may be awarded where unsuccessful proceedings have been brought and prosecuted, not for the bona fide purpose of protecting and enforcing a legal right, but to achieve an ulterior or extraneous purpose. However, there are further reasons for making the orders.


case_text: decision in Knight v F.P. Special Assets Ltd [1992] HCA 28 ; 174 CLR 178 and its application to s 43 of the Federal Court Act was considered by the Full Court of the Federal Court in Caboolture Park Shopping Centre Pty Ltd (in liquidation) v White Industries (Qld) Pty Ltd [1993] FCA 471 ; (1993) 45 FCR 224. The Full Court said at 229: There seems no reason to doubt that s 43 confers upon the court jurisdiction to award costs not only against persons who are parties but also against persons who are not. Clearly the section is no narrower than the provisions of O 91, r 1 of the Rules of the Supreme Court of Queensland considered by the High Court in Knight v FP Special Assets . In Caboolture Park v White Industries [1993] FCA 471 ; 45 FCR 224 , it was argued that the Court's jurisdiction under s 43 to award costs ceased at the time that judgment was entered. It was submitted in that case that "once the original action or proceedings had been completed by entry of judgment there was no longer a 'proceeding' before the Court in respect of which a cost order could be made" (at 230). That argument was rejected by the Court as being inconsistent with the definition of "proceeding" in s 4 of the Federal Court Act which is defined to mean: ... a proceeding in a Court, whether between parties or not, and includes an incidental proceeding in the course of, or in connexion with, a proceeding, and also includes an appeal; The Court said at 230: The context of the Act provides no indication that the words defining the grant of jurisdiction in s 43 of the Act have a temporal meaning which limits the jurisdiction conferred to a jurisdiction which terminates when a judgment has been pronounced and extracted in the proceeding that has invoked the jurisdiction. The Court said at 231: What s 43 requires is that the jurisdiction to order costs be one limited to costs relating to a proceeding. In other words, there is no jurisdiction to order costs at large. There has to be or have been, within the Court's jurisdiction, instituted a proceeding. It is irrelevant, subject to the application of common law principles discussed later, that judgment has been given and entered. As I have already observed, the first argument was rejected by the Court following the decision of this Court in Caboolture Park v White Industries [1993] FCA 471 ; 45 FCR 224. His Honour then turned to consider the effect of s 1335(2). Section 24(1) of the SC Act (Vic) relevantly provided: Unless otherwise expressly provided by this or any other Act or by the Rules, the costs of and incidental to all matters in the Court ... is in the discretion of the Court and the Court has full power to determine by whom and to what extent the costs are to be paid. The Master relied upon two decisions for the second proposition that the rule was not inconsistent with s 1355(2): Myers v Elman [1940] AC 282 and Caboolture Park v White Industries [1993] FCA 471 ; 45 FCR 224. I am not sure how those cases support the proposition that there is no conflict between the Rules of Court of the Supreme Court of the Northern Territory and s 1335(2) of the Corporations Act . The first case stands for the proposition that the High Court in England has power to order a solicitor to indemnify a party who has been injured by the solicitor's default. The power rests upon the Court's jurisdiction over its own officers. That proposition can no longer be doubted. The second case, a decision to which I have already referred, is authority for the proposition that the Federal Court has the power to award costs against a non-party and, in that case, the solicitors for a party. The power to award costs against a non-party, and in particular against a solicitor, are not the questions in issue. The question, further refined, is whether the Court can award costs against a legal practitioner who is a non-party. The Master, it seems to me, with respect, did not address that issue. The categories of costs in which a court may order a non-party to pay costs are not closed: Applicant NAGM of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 396 ; (2002) 125 FCR 488. In that case, at [62] the Court said: There are certain categories of cases in which the jurisdiction to award costs against a non-party has been exercised, if not frequently, then with some degree of regularity. One such category is where the non-party is considered to be the "real party" to the litigation: Knight v Special Assets at 188 per Mason CJ and Dean J. Another is where the non-party is a legal representative of a party to the proceedings. A costs order may be made, for example, against a solicitor in consequence of his or her conduct in the litigation: Caboolture Park at 231. While s 43 of the Federal Court Act empowers the Court to make a costs order against a legal representative of a party, a second source of jurisdiction is the "implied", "accrued" or "inherent" jurisdiction of the Court over its own officers: Caboolture Park at 231.


case_text: may be an abuse of process if the creditor who has served a statutory demand has knowledge that the company is unaware of the statutory demand but persists with the winding up proceedings: Chief Commissioner of Stamp Duties v Paliflex Pty Ltd [1999] NSWSC 15 ; (1999) 149 FLR 179.


case_text: defendants relied upon a decision of Master Coulehan of the Supreme Court of the Northern Territory in Construction Enterprises Pty Ltd v Lafarge Plasterboard Pty Ltd [2002] NTSC 21 for the proposition that an order for costs could be made against solicitors without making the solicitors parties and notwithstanding s 1335(2) of the Corporations Act . That case concerned an application to set aside a statutory demand pursuant to s 459G of the Corporations Act . Shortly after the proceeding was commenced, the plaintiff was wound up by order of the Supreme Court of New South Wales. The defendant sought costs against the plaintiff's solicitor who had pursued the application on the part of the plaintiff, notwithstanding that the plaintiff had been wound up before the hearing of the application and notwithstanding that the liquidator was unaware of the application.


case_text: J described the purpose of Pt 5.4 of the Act in David Grant & Co Pty Ltd v Westpac Banking Corporation [1995] HCA 43 ; (1995) 184 CLR 265 at 270: The provisions of the new Pt 5.4 constitute a legislative scheme for quick resolution of the issue of solvency and the determination of whether the company should be wound up without the interposition of disputes about debts, unless they are raised promptly. A winding up proceeding which is brought for a purpose other than the purpose identified may amount to an abuse of process: Williams v Spautz [1992] HCA 34 ; (1992) 174 CLR 509 at 518-522. A winding up proceeding brought for a collateral purpose will be an abuse of process and will attract the Court's implied power to prevent abuse of its own processes: David Grant & Co Pty Ltd v Westpac Banking Corporation [1995] HCA 43 ; (1995) 184 CLR 265 at 279.


case_title: Garnett v Bradley (1878) 3 App Cas 944

case_text: 154 of the Licensing Act provided for a penalty of imprisonment for a term not less than six months or more than 12 months for a second offence of selling liquor without a licence. The question for the Court was whether the exceptive words in s 74(1) meant that the Court could not exercise the power in s 74(1) to reduce a penalty to something less than imprisonment if the justice of the case would be better met. The Court said: Because this is so, exceptive words such as those which introduce s. 74(1) have no legal effect beyond saving earlier enactments which otherwise would be inconsistent with the provision introduced. In regard to later enactments they "go no farther than the general law": Garnett v Bradley (1878) 3 App. Cas. 944 , at p. 965 and "are not really necessary because if the later Act shows a contrary intention the earlier enactment cannot control it. But they remind us of the general rule". So Isaacs J. observed in Bennett v. Minister for Public Works (N.S.W.) [1908] HCA 50 ; (1908) 7 C.L.R. 372 , at p. 384, speaking of the exceptive expression "unless the contrary intention appears". Whatever the verbal formula employed, it cannot have in regard to later legislation any greater force or value than that expression. As Keating J. remarked in Chorlton v. Lings (1868) L.R. 4 C.P. 374, "to do more would be exceeding the competency of parliament with reference to future legislation" (1868) L.R. 4 C.P., at p. 395. The Court said at 359: The general provision of s. 74(1) of the Justices Act is accordingly prefaced by words which have a saving effect as regards earlier enactments and serve as a reminder in relation to later, meaning in regard to both that the general provision which follows is not to be denied any of its operation save by something actually inconsistent with it in the operation of another enactment. Section 43 authorises the Court to make an order for costs against a non-party. The exceptive words in the body of s 43 do not by themselves limit the operation of s 43 by any later Act. Section 43 of the Federal Court Act was enacted before s 1335(2) of the Corporations Act . It cannot control that subsection. A later Act could limit the operation of s 43 but that would raise the question of the construction of the later Act. Therefore, the question which is to be determined is whether s 1335(2) as a later enactment has the effect of limiting the operation of s 43(1) to a party or a party to a proceeding brought under the Corporations Act . His Honour traced the legislative history of s 1335(2). He noted that the English Judicature Acts of 1873-1875 did not address all of the anomalies which then existed in relation to the Court's powers in relation to costs. Costs in the common law courts were entirely creatures of statute: Garnett v Bradley (1878) 3 App Cas 944 at 962. On the other hand, the Court of Chancery claimed to have power to deal with costs at its discretion although there was some uncertainty as to the extent of that power. The authorities suggested that the position in equity continued after those Acts. He noted that s 5 of the Judicature Act 1890 (UK) which gave the Court expanded jurisdiction to award costs resolved the uncertainty. That section relevantly provided: subject to the ... Acts and the Rules ... and to the express provisions of any statute ... the costs of and incidental to all proceedings in the Supreme Court ... shall be at the discretion of the Court or Judge and the Court or Judge shall have full power to determine by whom and to what extent such costs are to be paid. He noted that it was not until 1928 that s 5 of the Judicature Act 1890 (UK) was adopted in Victoria as s 32(1) of the Supreme Court Act 1928 (Vic) (now s 24(1) of the SC Act (Vic)). Section 32(1) gave the Court jurisdiction to deal with all questions of costs, including proceedings under the Companies Act. Before the Uniform Companies laws of 1961, there was no equivalent of s 1335(2) in the Victorian legislation. There was on his Honour's reasons no need for s 1335(2) because s 32(1) gave the Court power to award costs in all proceedings and therefore s 1335(2) was not picked up by the Victorian Companies Act of 1938 or its consolidation in 1958. He turned his attention to the New South Wales jurisdiction. He noted that New South Wales did not adopt the Judicature Acts until 1970 when the Court was given the statutory provision equivalent to s 5 of the Judicature Act 1890 (UK). In the meantime, the predecessor of s 1335(2) was introduced into the Companies Act 1936 (NSW) (the Companies Act) by s 365(2). Section 365(2) eventually became s 1335(2). His Honour said at 211: It seems fairly clear that this subsection was an enabling provision, intended to give the Supreme Court in New South Wales a similar discretion to that which was given to English Courts in 1890 and to the Victorian Supreme Court in 1928. Bearing in mind that s. 24(1), or its equivalent, was in force in Victoria and England, there was no need to introduce in those jurisdictions a provision such as s. 365(2) of the Companies Act of New South Wales. On the other hand, there was reason to pass such legislation in New South Wales in 1936 if its Supreme Court was to have a wide discretion to award costs in a proceeding under the companies legislation. Because there was no general power in New South Wales of the kind given by s 5 of the Judicature Act, it was arguable that the Courts did not have the power to award costs in matters under the Companies Act. The enactment of s 365(2) was to put beyond doubt the Courts' power to award costs for proceedings under that Act. It was not enacted to limit the circumstances in which costs might be awarded. Thus it was that his Honour held that s 365(2) at the time of its introduction was an enabling provision, not a limiting provision. His Honour also noted that the equivalent of s 365(2) was not introduced into Victorian law until 1961 at the time of the Uniform Companies legislation in the form of s 363(2). His Honour pointed out that there was no need to introduce such legislation into the Victorian Uniform Companies legislation because the position was covered by s 24(1) of the SC Act (Vic). Moreover, his Honour observed was that there was no need to continue with s 365(2) in the New South Wales legislation after the New South Wales Parliament adopted the Judicature Act in 1970 but the provision has remained and has become s 1335(2). For those reasons, his Honour found that s 1335(2) was intended to be an enabling provision, not a limiting provision. In those circumstances, it did not limit the provisions of s 24(1) of the SC Act (Vic). His Honour concluded and said at 212: Whatever may be the position in relation to s. 43 of the Federal Court of Australia Act , s. 1335(2) does not so inhibit the jurisdiction of this court on the question of costs as was contended for by the respondents. His Honour's analysis of the legislative history of s 1335(2), in my opinion, has the same application in the construction of s 43 of the Federal Court Act.


case_text: follows that this Court has the power to award costs against a person not a party to the proceedings: see also Gore v Justice Corporation Pty Ltd (2002) 119 FCR 429. The non-parties argued that the Court could not now make an order that they pay costs because the proceedings had been dismissed by my orders made on 27 August 2008.


case_text: Gribbles Pathology Pty Ltd v Health Insurance Commission (1997) 80 FCR 284 , Finkelstein J said at 287: For my own part I should wish to emphasise that in the absence of a hearing on the merits it is difficult to see how any order, other than an order that each party bear its own costs, can be made except in special circumstances. To do otherwise would require some prediction of the outcome of the case. It seems to me that the third proposition stated by Hill J was intended to cover the situation where the Court was in fact able to form a clear view about the merits of a case without a trial. So, if a claim is patently hopeless that would be a good reason to make an order for costs against the claimant. Likewise if a defence was bound to fail that would be good reason for awarding costs in favour of the claimant. But I venture to suggest that there will be very few cases where the issues will be sufficiently clear, in the absence of a hearing, for an order for costs to be made in favour of a party. Debelle J agreed with the decision in Gribbles Pathology Pty Ltd v Health Insurance Commission 80 FCR 283 in Boscaini v Corporation of Kensington and Norwood [1999] SASC 327 and said at [22]: I immediately acknowledge the assistance of Hill J but suggest that proposition (3) is of limited assistance. The fact that a party has not conducted himself reasonably may disentitle him to costs. But, beyond that, the reasonableness of the conduct of the parties is not likely to assist in determining whether the applicant should recover his costs. The real question is whether the applicant had reasonable prospects of success. It seems preferable, therefore, to express proposition (3) in different terms. Finkelstein J cast some doubt on the third principle referred to by Hill J. I do not need to decide whether I agree with the proviso mentioned by Finkelstein J because, in my opinion, at the very least this is one case where the issues are sufficiently clear, in the absence of a hearing, for orders for costs to be made. The plaintiffs' behaviour, which was demonstrated by Mr Byrnes' emails and correspondence generally prior to the commencement of proceedings, was quite unreasonable. Mr Byrnes behaved like a bully as he claimed to be. He threatened the defendants and Mr Harris with all sorts of commercial harm. His communications were calculated to induce fear into the defendants. His threats, if carried out, would have ruined the defendants in circumstances where he knew the defendants took issue with the debts. His actions were taken for the benefit of the plaintiffs and for the assignors, Cobra and Contor. The threats which were made prior to the proceedings commencing indicate that the proceedings were to be used for a collateral purpose; namely, the recovery of a debt, rather than for the purpose for which the proceedings were designed; namely, the winding up of an insolvent corporation. The proceedings were an abuse of the Court's processes.


case_text: reasons should be read in conjunction with the reasons given today in action number NSD 584 of 2008 in which the defendants to these proceedings are the plaintiffs and the plaintiffs in these proceedings are the defendants: Hardel Investments Pty Ltd (ACN 083 276 000) v Consolidated Byrnes Holdings Limited (ACN 111 052 585) [2009] FCA 400. This is an application by the defendants for the costs of these proceedings. It is necessary to trace the history of the proceedings before identifying against whom the defendants seek orders for costs and the particular orders sought. THE PROCEEDINGS Both these proceedings were commenced in the New South Wales Registry of this Court on 28 March 2008 by the plaintiffs seeking the winding up of the two defendants in the separate proceedings in insolvency pursuant to s 459P of the Corporations Act 2001 (Cth) (the Corporations Act ). In both proceedings the plaintiffs claimed to be creditors of the defendants and relied upon the defendant's failure to comply with two statutory demands. They claimed that debts had been assigned to them. As I have said in [2] of these reasons, these reasons should be read with the reasons in Hardel Investments Pty Ltd (ACN 083 276 000) v Consolidated Byrnes Holdings Limited (ACN 111 052 585) [2009] FCA 400 given today. I have made no order for costs in that proceeding for the reasons given. However, the affidavit sworn by Peter William Harris on 28 April 2008 which was filed in that other proceeding was used extensively in these proceedings and for the purpose of these reasons. Indeed, the defendants filed an affidavit in each of these proceedings sworn by Mr Harris on the same day in which he referred to and relied upon his affidavit sworn in the other proceeding. In that way the affidavit was used in these proceedings. It would be appropriate to allow the defendants the costs of that affidavit even though it was filed in the other proceeding because it contained the relevant information relied upon by the defendants for the defence of these proceedings. The costs which the defendants are entitled to recover on the orders in these proceedings shall include the costs of the preparation, swearing and filing of Mr Harris' affidavit sworn on 28 April 2008 and filed in action number NSD 584 of 2008.


case_text: decision was given about three weeks before the High Court's decision in Knight v F.P. Special Assets Ltd [1992] HCA 28 ; (1992) 174 CLR 178. In that case, the High Court was concerned with s 58 of the Supreme Court Act 1857 which provided, "The Supreme Court shall have power to award costs in all cases lawfully brought before it and not provided for otherwise than by this section." Order 91 rule 1 of the Rules of Court of the Supreme Court of Queensland provided that costs should be in the discretion of the Court. The High Court held that the discretion to award costs was not confined to the parties to the proceeding but that the Rules conferred jurisdiction to make orders for costs against non-parties and, in that case, the receiver. The decision in Knight v F.P. Special Assets Ltd [1992] HCA 28 ; 174 CLR 178 and its application to s 43 of the Federal Court Act was considered by the Full Court of the Federal Court in Caboolture Park Shopping Centre Pty Ltd (in liquidation) v White Industries (Qld) Pty Ltd [1993] FCA 471 ; (1993) 45 FCR 224. The Full Court said at 229: There seems no reason to doubt that s 43 confers upon the court jurisdiction to award costs not only against persons who are parties but also against persons who are not. Clearly the section is no narrower than the provisions of O 91, r 1 of the Rules of the Supreme Court of Queensland considered by the High Court in Knight v FP Special Assets . The Federal Court Act and Rules recognise that the Court may make orders for costs against non-parties in accordance with the general rules relating to costs: Knight v F.P. Special Assets Ltd [1992] HCA 28 ; 174 CLR 178. That jurisdiction must carry with it the power to enforce any order that justice demands be made. If it be necessary to make an order that the non-party be made a party so that an order can be made that the non-party pay that party's costs then it must be assumed that the Court has jurisdiction to make the non-party a party to the proceeding. Order 6 rule 8 gives that power to the Court. Where it appears that a non-party ought to be held liable to pay a party's costs the Court can, in my opinion, utilise O 6 r 8(1)(b) to join that non-party to the proceeding. It follows therefore that if I am of the opinion that any of the non-parties should be ordered to pay the defendants' costs and contrary to my opinion s 1335(2) prevents any such order being made, I can make an order joining those non-parties as parties to the proceedings. Mason CJ and Deane J (with whom Gaudron J agreed) said in Knight v F.P. Special Assets Ltd [1992] HCA 28 ; 174 CLR 178 at 192-193: For our part, we consider it appropriate to recognize a general category of case in which an order for costs should be made against a non-party and which would encompass the case of a receiver of a company who is not a party to the litigation. That category of case consists of circumstances where the party to the litigation is an insolvent person or man of straw, where the non-party has played an active part in the conduct of the litigation and where the non-party, or some person on whose behalf he or she is acting or by whom he or she has been appointed, has an interest in the subject of the litigation. Where the circumstances of a case fall within that category, an order for costs should be made against the non-party if the interests of justice require that it be made. It cannot be thought, as some of the non-parties contended, that the High Court was intending to lay down the only category of case in which an order for costs may be made against a non-party. The discretion to award costs against a non-party is unfettered except that it must be exercised judicially. Having said that, the cases identify the principles upon which the exercise of the discretion might be exercised. The categories of costs in which a court may order a non-party to pay costs are not closed: Applicant NAGM of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 396 ; (2002) 125 FCR 488. In that case, at [62] the Court said: There are certain categories of cases in which the jurisdiction to award costs against a non-party has been exercised, if not frequently, then with some degree of regularity. One such category is where the non-party is considered to be the "real party" to the litigation: Knight v Special Assets at 188 per Mason CJ and Dean J. Another is where the non-party is a legal representative of a party to the proceedings. A costs order may be made, for example, against a solicitor in consequence of his or her conduct in the litigation: Caboolture Park at 231. While s 43 of the Federal Court Act empowers the Court to make a costs order against a legal representative of a party, a second source of jurisdiction is the "implied", "accrued" or "inherent" jurisdiction of the Court over its own officers: Caboolture Park at 231.


case_text: winding up procedure is not to be used for the purpose of compelling a solvent company to pay a disputed debt: Radiancy (Sales) Pty Ltd v Bimat Pty Ltd [2007] NSWSC 962 ; (2007) 25 ACLC 1216. Nor is it to be used for the purpose of coercing a company into paying a debt without allowing the company a reasonable opportunity to ascertain that the debt is payable: L & D Audio Acoustics Pty Ltd v Pioneer Electronics Australia Pty Ltd (1982) 7 ACLR 180 at 183. In L & D Audio Acoustics Pty Ltd v Pioneer Electronic Australia Pty Ltd (1982) 7 ACLR 180 , McLelland J said at 183: Proceedings by a person as creditor for the winding up of a company on the ground that it is unable to pay its debts will ordinarily be held to be an abuse of process: (1) if the winding up proceedings are bound to fail eg if it is clear that the applicant will not be able to prove that he is a creditor within the meaning of s 363(1)(b) of the Code, or will not be able to prove that the company is unable to pay its debts within the meaning of s 364(1)(e); (2) if the application is made for some improper purpose eg if the applicant is seeking to use the winding up proceedings to coerce a company into paying an alleged debt without affording the company a reasonable opportunity to ascertain or have it established that the debt is properly payable; or (3) if issues will arise in the winding up proceedings of a kind inappropriate for determination in such proceedings eg a substantial contest as to the existence or enforceability of a debt relied on by the applicant, which should properly be resolved in separate proceedings brought for that purpose. The question to be determined when it is asserted that the proceedings constitute an abuse of process is the purpose for which the proceedings have been brought. If the proceedings have been brought for an ulterior or collateral purpose, then the proceedings are an abuse of the Court's processes. The party who has initiated the proceedings may then be liable to pay the costs of the party against whom the proceedings were brought on an indemnity basis. The defendants' claims for indemnity costs against the plaintiffs and the non-parties necessitate an examination of the facts and circumstances giving rise to the bringing of the winding up applications and the circumstances which transpired after their commencement.


case_text: Naomi Marble and Granite Pty Ltd v FAI General Insurance Company Ltd (No 2) [1998] QSC 18 ; (1999) 1 Qd R 518 , Shepherdson J identified categories of cases where it might be appropriate to make an order for costs against a non-party. He said at 545: Where a person has some management of the action e.g. a director of an insolvent company who causes the company improperly to prosecute or defend a proceeding (191). Where a person has maintained or financed the action (citing Singh v. Observer Ltd [1989] 2 All E.R. 751). Balcombe L.J. was a member of the Court of Appeal in each of Bahai v. Rashidian and Symphony Group and in Symphony Group went on to say that he accepted that the categories which he had set out were neither rigid nor closed. To the above two categories of non-parties against whom costs orders may be made the following can be added: (a) Where the unsuccessful party is a corporation (as is the case here) the director or directors who have the right to control the corporation; ( Oz B and S Pty Ltd v. Elders IXL Ltd [1993] FCA 371 ; (1993) 117 A.L.R. 128 (Einfeld J.); Re Land and Property Trust Co. Plc. [1991] 1 W.L.R. 601 at 604-605 and H. Leverton Ltd v. Crawford Offshore (Exploration) Services Ltd unreported decision on costs of Garland J. in Queens Bench Division dated 11 October 1996). (b) In the situation of a party to litigation who was an insolvent person or a man of straw, a person who has played an active part in the conduct of the litigation and who has an interest in the subject matter of the litigation ( Knight v. F.P. Special Assets Limited at 193 in a passage I set out earlier in these reasons). (c) Where the non-party is the effective litigant standing behind the actual party Knight v. F.P. Special Assets Limited at 202 (per Dawson J.). (d) Where the non-party is funding or otherwise financially assisting the unsuccessful party to the litigation and stands to benefit if that party has been successful ( Re Foster; Ex parte Foster v. Duus (1994) 121 A.L.R. 494 at 503; (Einfeld J.) H. Leverton Ltd v. Crawford Offshore (Exploration) Services Ltd) . (e) Where a non-party has supported the unsuccessful party and has done so acting in bad faith towards the other parties and towards the court such as by giving false testimony or forging documents or preventing relevant documents being discovered ( H. Leverton Ltd v. Crawford Offshore (Exploration) Services Ltd ). As I have already said, I am not satisfied that either of the plaintiffs are in a position to satisfy an order for indemnity costs which is the order I propose to make against them. As I have already said, CBH's financial position is that Mrs Byrnes would be in a position to cause CBH not to be able to pay costs if she called upon the amount owing to her. Dr Low has not descended into advising the Court of the financial position of Alpha. In my opinion, the plaintiffs may well be incapable of satisfying the orders for costs which are to be made against them.


case_title: Packer v Meagher (1984) 3 NSWLR 486


case_text: winding up procedure is not to be used for the purpose of compelling a solvent company to pay a disputed debt: Radiancy (Sales) Pty Ltd v Bimat Pty Ltd [2007] NSWSC 962 ; (2007) 25 ACLC 1216. Nor is it to be used for the purpose of coercing a company into paying a debt without allowing the company a reasonable opportunity to ascertain that the debt is payable: L & D Audio Acoustics Pty Ltd v Pioneer Electronics Australia Pty Ltd (1982) 7 ACLR 180 at 183.


case_title: Ragata Developments Pty Ltd v Westpac Banking Corporation (1993) 217 ALR 175


case_text: can be no doubt, because these winding up proceedings were dismissed, that the defendants are entitled to the costs of the proceedings as against the plaintiffs at least on a party and party basis: Ritter v Godfrey [1920] 2 KB 47 ; Re British Electric Street Tramways [1903] 1 Ch 725. No submission was made by any party to the contrary.


case_text: is not to try a hypothetical action between the parties. The Court should not be called upon to decide whether the plaintiffs' proceedings if pursued would or would not have succeeded. The parties should not be burdened with the conduct of proceedings already dismissed. Moreover, the only evidence before the Court is in affidavit form. The Court has not had the advantage of seeing and hearing the witnesses on matters where the facts are in dispute. In those circumstances, the inquiry must be limited to whether commencing the proceedings was reasonable and whether the conduct in the proceedings, including the conduct leading up to my dismissing the proceedings, was reasonable: Re Minister for Immigration and Ethnic Affairs; Ex parte Lai Quin [1997] HCA 6 ; (1997) 186 CLR 622 per McHugh J at 624. The following matters are taken from the affidavits to which I have referred. The defendant, Hardel is the trustee for the Hardel Investments Unit Trust. It entered into a loan agreement with Contor as trustee for the Contor Developments Unit Trust on or about 16 December 2005 (the loan agreement).


case_text: decision in U.T.S.A. v Ultra Tune 1 VR 204 was followed by Brereton J in Re Struthers (liq of Project Management, Architecture and Construction Interiors Pty Ltd) (No 3) [2005] NSWSC 1113 ; (2005) 56 ACSR 238. His Honour said at [50]-[51]: At first sight, the suggestion that the Commonwealth Parliament has enacted a provision to detract from the existing costs powers of courts in which it invests jurisdiction to deal with proceedings under the Corporations Act is a surprising one. But were it not for the judgment of Chernov J in UTSA , despite these initial impressions about s 1335 , I would unquestionably have followed Wridgemont and Australian Forest Managers , particularly given Lindgren J's strong endorsement of Wridgemont , and also given that those cases had been followed in this court by Bergin J. However, in circumstances where there has been, since Australian Forest Managers , what impresses me as a compelling analysis of the history and purpose of the section by Chernov J — the benefit of which does not appear to have been afforded to Bergin J when her Honour came to consider the point — and where Ryan J, albeit without reference to the authorities, had adopted an opposite approach, I consider that I am at liberty to give effect to my own views. I agree with Chernov J that s 1335 should not be construed as a limiting provision, but as an enabling one. Its history shows that it was intended to confer a jurisdiction or a power to make costs orders when there was doubt as to the existence that power, at least in the equitable jurisdiction of this court in this state. If there were no s 1335(2) , the court would not be without power to make costs orders in proceedings under the Act; it would have all its powers under the Supreme Court Act and the Civil Procedure Act. Section 1335 was not intended to limit such other powers to make costs orders as the court already enjoyed, but to supplement them. In my opinion, the current provisions ought not be taken as intended to exclude the power of courts under, for example, Civil Procedure Act, s 98, and UCPR, r 42.27, to make costs orders which are designed to protect the processes of the courts and the integrity of those processes and the procedural rights of parties who litigate in those courts. The defendants contended that in the event that the decisions of this Court in Re Wridgemont Display Homes Pty Ltd [1992] FCA 604 ; 39 FCR 193 and in Australian Forest Managers Ltd (in liq) v Bramley 136 ALR 431 are to be preferred to the decisions of in U.T.S.A. Pty Ltd (In liquidation) v Ultra Tune Australia Pty Ltd 1 VR 204 and Re Struthers (liq of Project Management, Architecture and Construction Interiors Pty Ltd) (No 3) [2005] NSWSC 1113 ; 56 ACSR 238 then I should make an order joining the non-parties as parties for the purpose of avoiding the consequences of s 1335(2).


case_title: Ritter v Godfrey [1920] 2 KB 47


case_text: purpose of a winding up order and the appointment of a liquidator is to impose a regime for the benefit of all of the company's creditors not to secure the repayment of the plaintiff creditor's debt: TS Recoveries Pty Ltd v Sea-slip Marinas (Aust) Pty Ltd (2007) 25 ACLC 1371 at [19].


case_text: decision was followed by Chernov J in the Supreme Court of Victoria in U.T.S.A. Pty Ltd (In liquidation) v Ultra Tune Australia Pty Ltd [1998] VSC 13 ; (1999) 1 VR 204. His Honour held that orders for costs are truly supplemental and do not affect the legal impact of the earlier judgment. He said at 208: Consequently, it is my view that the entry of judgment in this case did not deprive the court of jurisdiction to hear and determine an application under s. 24(1) of the Act for an order that the non-party respondents pay U.T.A.'s costs incurred in relation to its proceeding against U.T.S.A. and Titan. It follows therefore that the Court would have jurisdiction to order costs against the non-parties in these proceedings even though orders have already been made dismissing the proceedings. The non-parties argued that s 1335(2) of the Corporations Act is a bar to making an order in a proceeding under the Corporations Act against a non-party. Section 1335(2) provides: The costs of any proceeding before a court under this Act are to be borne by such party to the proceeding as the court, in its discretion, directs. However, there are decisions of the Supreme Court of Victoria and the Supreme Court of New South Wales which need to be considered. In U.T.S.A. Pty Ltd (In liquidation) v Ultra Tune Australia Pty Ltd 1 VR 204, Chernov J was concerned with an application by the defendant to a proceeding for an order that two non-parties pay the costs of the proceeding. His Honour assumed, but later decided otherwise, that the proceeding with which he was concerned was a proceeding under the Act. The two non-parties sought to set aside the notice of motion seeking costs on two grounds. First, because judgment had been entered and therefore there was no jurisdiction for the Court to exercise its discretion under s 24(1) of the Supreme Court Act 1986 (Vic) (SC Act (Vic)) to order that costs be paid by the respondents; and secondly, because s 24(1) of the SC Act (Vic) which gave the Court jurisdiction to award costs was to be read subject to s 1335(2) of the Corporations Law. The decision in U.T.S.A. v Ultra Tune 1 VR 204 was followed by Brereton J in Re Struthers (liq of Project Management, Architecture and Construction Interiors Pty Ltd) (No 3) [2005] NSWSC 1113 ; (2005) 56 ACSR 238. His Honour said at [50]-[51]: At first sight, the suggestion that the Commonwealth Parliament has enacted a provision to detract from the existing costs powers of courts in which it invests jurisdiction to deal with proceedings under the Corporations Act is a surprising one. But were it not for the judgment of Chernov J in UTSA , despite these initial impressions about s 1335 , I would unquestionably have followed Wridgemont and Australian Forest Managers , particularly given Lindgren J's strong endorsement of Wridgemont , and also given that those cases had been followed in this court by Bergin J. However, in circumstances where there has been, since Australian Forest Managers , what impresses me as a compelling analysis of the history and purpose of the section by Chernov J — the benefit of which does not appear to have been afforded to Bergin J when her Honour came to consider the point — and where Ryan J, albeit without reference to the authorities, had adopted an opposite approach, I consider that I am at liberty to give effect to my own views. I agree with Chernov J that s 1335 should not be construed as a limiting provision, but as an enabling one. Its history shows that it was intended to confer a jurisdiction or a power to make costs orders when there was doubt as to the existence that power, at least in the equitable jurisdiction of this court in this state. If there were no s 1335(2) , the court would not be without power to make costs orders in proceedings under the Act; it would have all its powers under the Supreme Court Act and the Civil Procedure Act. Section 1335 was not intended to limit such other powers to make costs orders as the court already enjoyed, but to supplement them. In my opinion, the current provisions ought not be taken as intended to exclude the power of courts under, for example, Civil Procedure Act, s 98, and UCPR, r 42.27, to make costs orders which are designed to protect the processes of the courts and the integrity of those processes and the procedural rights of parties who litigate in those courts. The defendants contended that in the event that the decisions of this Court in Re Wridgemont Display Homes Pty Ltd [1992] FCA 604 ; 39 FCR 193 and in Australian Forest Managers Ltd (in liq) v Bramley 136 ALR 431 are to be preferred to the decisions of in U.T.S.A. Pty Ltd (In liquidation) v Ultra Tune Australia Pty Ltd 1 VR 204 and Re Struthers (liq of Project Management, Architecture and Construction Interiors Pty Ltd) (No 3) [2005] NSWSC 1113 ; 56 ACSR 238 then I should make an order joining the non-parties as parties for the purpose of avoiding the consequences of s 1335(2).


case_title: Vestris v Cashman (1998) 72 SASR 449

case_text: Vestris v Cashman (1998) 72 SASR 449 at 467, I said, when a member of the Supreme Court of South Australia: The circumstances in which it is just to order costs against a person who was not a party to the litigation will be both rare and exceptional: see Aiden Shipping Ltd v Interbulk Ltd per Lord Gough of Chieveley. If the order for costs which is sought against non-parties in lieu of, in substitution for or complementary to an order for costs against a party, the circumstances for making such an order will not arise unless there is some connection or association between the party to the litigation and the non-party against whom the order for costs is sought. The connection must be of a kind that makes it just to make an order for costs in that the connection must be material to the question of costs: see Bischof v Adams (1992) 2 VR 198 at 205. The ordinary rule is that only parties to the proceedings will be subject to costs orders but that rule will give way where "within the circumstances of the particular case, it is just and equitable that a non-party pay the costs of a party to the litigation": Vestris v Cashman 72 SASR 449 at 469.


case_text: winding up proceeding which is brought for a purpose other than the purpose identified may amount to an abuse of process: Williams v Spautz [1992] HCA 34 ; (1992) 174 CLR 509 at 518-522. A winding up proceeding brought for a collateral purpose will be an abuse of process and will attract the Court's implied power to prevent abuse of its own processes: David Grant & Co Pty Ltd v Westpac Banking Corporation [1995] HCA 43 ; (1995) 184 CLR 265 at 279.


case_outcome: related

case_text: This is an application for costs in relation to a proceeding in which I have already given a judgment on 21 August 2008: Logic Group Tyres Pty Limited v Tokio Marine & Nichido Fire Insurance Co Limited [2008] FCA 1297. In that judgment, I dismissed the application by the applicant. Pursuant to the Court's broad discretion as to costs, and following the general principle that costs follow the event, I ordered that the applicant pay the costs of the respondents. 2 Subsequent to delivery of that judgment, the first respondent made an application seeking costs from the applicant on an indemnity basis. The second respondent did not seek such an order. I granted the applicant and first respondent some time to file and serve submissions as to whether the applicant should pay indemnity costs to the first respondent. 3 The applicant submits that it should not have to pay the costs of the first respondent on an indemnity basis. The applicant goes further and, without leave to file submissions on this point and despite the Court's order on 21 August 2008, argues that it should not have to pay any costs. 4 To support its position, the applicant makes several arguments. Most of these arguments relate to the conduct of the case and, in my view, to a large extent simply seek to canvass for a second time the merits of the dispute. By way of example, the applicant submits: that the respondents did not "come to the Court with clean hands"; that there was inadequate disclosure of certain information, and in particular information relating to Australian Business Numbers; that it has suffered and will continue to suffer considerable loss; that the second respondent has breached s 153 of the Corporations Act 2001 (Cth); that the respondents' pleadings were inadequate; and that there was late filing of relevant documents and/or non-compliance with orders of the Court. 5 I have considered the arguments advanced on behalf of the applicant. They are not sufficient to warrant variation of the order made on 21 August 2008. It is also my view that the applicant's arguments do not have sufficient force to displace the general principle which led me to the conclusion on the last occasion that discretion should be exercised to require the applicant to pay the costs of the respondents.


case_text: In relation to the first respondent's application for indemnity costs, I note that the first respondent made an offer of compromise, which it filed and served on 28 April 2008. The content of that offer was that judgment would be entered for the first respondent and the first respondent would not seek its costs in the proceeding. In the present case, I am satisfied that such an offer was reasonable. As is evident from my earlier judgment, the case advanced by the applicant was ultimately unsuccessful, the arguments which they advanced as to agency and liability were clearly untenable, and the order of the Court was less favourable to the applicant than those offered to it by the first respondent on 28 April 2008. In the present circumstances having regard to s 43 of the Federal Court of Australia Act 1976 (Cth), O 23 r 11 of the Federal Court Rules , and the relevant authorities on this point (see Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 ; Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1 ; Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2008] FCA 126) I am of the view that making the orders sought by the first respondent is appropriate.


case_title: Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225


case_title: Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1


case_text: As far as I can see, the Council defended the proceedings upon the basis of its further amended defence and cross-claim filed on 4 August 1997 (ex JFW 10 to Ms Whiting's affidavit), notwithstanding the fact that such pleading was delivered prior to the further amended and consolidated statement of claim filed on 6 October 1997. Although, in that document, the applicants relied upon two patents, the Council's defence related only to patent 645740 (the "previous patent"). It seems that the previous proceedings originally concerned the previous patent, whilst action No QG 21 of 1996 involved a similar claim based on petty patent 662284. See Stack v Brisbane City Council [2004] FCA 354 at [13] - [15] . Both petty patents were based upon patent application 85236/91 which, in turn, was based upon two provisional applications, PK 2036 and PK 5286. The temporal history of these documents was as follows: '30 August 1990 - provisional application PK 2036 filed 26 March 1991 - provisional application PK 5286 filed 30 August 1991 - patent application 85236/91 filed 25 August 1993 - petty patent application 645740 filed 20 January 1994 - petty patent 645740 issued 17 February 1994 - petty patent application 662284 filed 24 August 1995 - petty patent 662284 issued.' 11 Shortly before the trial of the previous proceedings, the applicants sought to consolidate them with action No QG 21 of 1996. Consolidation was granted. However the trial which followed was, as Cooper J held, only concerned with the previous patent. It seems that for present purposes only the previous patent and application 85236/91 are relevant.


case_text: The Council denied the validity of the previous patent and denied that it had exploited, or would exploit the alleged invention. This latter allegation appears to have involved a denial that the relevant water meter assemblies were within any claim in the previous patent. By its cross-claim the Council sought revocation of the previous patent. Its grounds were said to appear in particulars of objection which do not appear in Ms Whiting's affidavit. However the grounds ventilated at the trial appear from the reasons for judgment ( Stack v Brisbane City Council [1999] FCA 1279) and from the reasons of the Full Court ( Stack v Davies Shephard Pty Ltd & Ors [2001] FCA 501). One ground of invalidity was that neither Stack nor GST was entitled to the patent because Stack was not the sole inventor.


case_title: Stack v Davies Shephard Pty Ltd & Ors [2001] FCA 501


case_text: The present motion depends solely upon a plea of res judicata. Issue estoppel is not raised. The difference between the two defences was addressed in the reasons of the majority of the High Court (Gibbs CJ, Mason and Aickin JJ) in Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589 at 597 as follows: 'The distinction between res judicata (in England called "cause of action estoppel") and issue estoppel was expressed by Dixon J. in Blair v. Curran ... in these terms: "In the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action, a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decree or order." The distinction was restated by Fullagar J. in his dissenting judgment in Jackson v. Goldsmith ... . His Honour expressed the rule as to res judicata by saying: "where an action has been brought and judgment has been entered in that action, no other proceedings can thereafter be maintained on the same cause of action. This rule is not, to my mind, correctly classified under the heading of estoppel at all. It is a broad rule of public policy based on the principles expressed in the maxims 'interest reipublicae ut sit finis litium' and 'nemo debet bis vexari pro eadem causa.' " His Honour went on to discuss issue estoppel, citing the comment of Dixon J. in Blair v. Curran ...: "A judicial determination directly involving an issue of fact or of law disposes once for all of the issue, so that it cannot afterwards be raised between the same parties or other privies." ' 23 The Council does not presently rely on the extended notion of estoppel for which the decision in Anshun is authority. 24 At par 15 of its written submissions, the Council identifies the various elements necessary to establish its plea of res judicata: '(a) the judgment was a final judgment on the causes of action it addressed. The fact that there are some other causes of action yet to be litigated in that action does not change the status of the judgment; a fortiori given the Court's separation of issues, by order, in the earlier proceedings. (b) it was a judgment on the merits, following a trial. (c) there was relevantly an identity of parties the present Applicant was an applicant in the previous proceedings and the present Respondent was one of the respondents. The relevant cause of action was pursued against the present Respondent. Other causes of action were pursued against other respondents. (d) The causes of action were the same in each proceeding.' For present purposes, elements (c) and (d) are of primary relevance. 25 For present purposes it may be accepted that the Council is an authority of the kind contemplated in s 162 and that it has engaged in, or authorized conduct which amounts to exploitation of the invention as disclosed in the current patents. The Council's submission is that the question of GST's entitlement to remuneration for such exploitation was determined against it in the previous proceedings. This submission seems to depend upon the proposition that a patentee's rights pursuant to Ch 17 are derived from the "invention" rather than from the relevant patent. The chapter certainly contemplates exploitation of an invention prior to grant of a patent and the fixing of the terms for such exploitation, including remuneration. In the course of argument the parties identified numerous difficulties in understanding the operation of the chapter. In the end, they may not matter for present purposes, but I will set out my understanding of the chapter and say a little about comparable legislation in the United Kingdom.


case_text: Such a manner of new manufacture may not necessarily be a patentable invention under the Act. See the decision of the High Court in N V Philips Gloeilampenfabrieken & Anor v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655. Other requirements of the Act must also be satisfied. The inclusion in the definition of an 'alleged' invention is also relevant. It is arguable that s 165 contemplates remuneration for exploitation of an invention which is not patentable. However such an interpretation seems unlikely. The notion of remuneration for exploitation implies some recognizable "right" in the invention which is protected or recognized by the Act. An applicant may, prior to grant, have a right to such grant and a right to assign, but it is difficult to see how Crown use could, absent s 161, "infringe" such rights. The primary rights conferred by the Act are those conferred by s 13 and supporting sections such as those contained in Ch 11. Those rights are conferred upon patentees. If an applicant has, prior to grant, any rights in connection with exploitation of the invention, they are inchoate. Infringement before grant may be actionable after grant because the patent will probably have retrospective effect pursuant to ss 47 and 39. As the Act confers no rights in connection with the exploitation of a non-patentable invention, it seems unlikely that s 165 does so. Of course the parties may agree terms of exploitation upon a mistaken belief as to the patentability of an invention, but this case concerns legal rights and obligations, not freedom of contract. 29 As I have pointed out, the section does not expressly confer power to determine whether a patent is valid or whether an application is likely to result in a valid grant. Nor does it expressly authorize an enquiry as to whether there has been exploitation of an invention. This suggests that it assumes acceptance by the parties of the validity of any patent or anticipated patent and that the relevant authority's conduct or proposed conduct amounts, or will amount to exploitation. On the other hand s 169 empowers a patentee (but not an applicant) to apply for a declaration as to exploitation and an exploiting authority to counter-claim for revocation. 30 Whilst it would be impossible for anybody to commence proceedings concerning the validity of a patent in advance of grant, it would be possible to seek to determine entitlement to a grant. However proceedings of that kind would compromise the Commissioner's power and duty to grant patents and might lead to embarrassing results. Proceedings as to infringement in advance of grant might also pose problems. It is presumably for this reason that in a slightly different context, a declaration under Part 2 of Ch 11 may not be made prior to grant (s 126(1)).


case_title: Singh v Singh (1897) LR 24 Ind App 50

case_text: To put the matter in a slightly different way, it might be said that in the previous proceedings it was determined that Stack was not individually entitled to a grant pursuant to application 85236/91, and that GST had not derived a valid patent from him. That says nothing concerning the entitlement of Stack and Grieves jointly, or GST claiming through them. Some support for this proposition is to be found in the decision of the Privy Council in Singh v Singh (1897) LR 24 Ind App 50. In that case, it was held that dismissal of a claim for want of a necessary plaintiff (a joint claimant) did not justify a plea of res judicata in subsequent proceedings by all necessary plaintiffs. That decision concerned procedural matters, namely the joinder of necessary parties. The decision in the previous proceedings was not based on procedural considerations but on the absence of substantive rights. Nonetheless any different result in the present case would mean that if Grieves were to claim, he could not join Stack as an applicant. Presumably, he might join him as a respondent and, in any event, would presumably hold the benefit of any judgment on trust for the two of them. Such an unlikely result suggests that the better view is that Stack would not be prevented from claiming with Grieves as joint applicants, and that GST may claim through them jointly. 42 There is another approach to the question which leads to the same result. At par 383 in Spencer Bower, Turner & Handley, The Doctrine of Res Judicata (3rd edition) the learned author observes: 'There is substantial authority that there can be no res judicata in a changing situation.'