case_title: SZDFW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1821

case_text: On 6 February 2006 the respondent's application came on for hearing before a Federal Magistrate and he made the orders which I have set out above. The Magistrate said that the applicant's application challenges the delegate's decision and he said that it was doomed to fail because the decision of the delegate was subsumed in the decision of the Tribunal. 3 I do not think that the applicant's proposed appeal enjoys any prospect of success. This case is similar to the case which came before Wilcox J in SZDFW v The Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1821. The Tribunal conducted a full merits review in relation to the decision of the delegate and the applicant was given every opportunity to present his case (see s 415 of the Migration Act 1958 (Cth), Zubair v The Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 248 ; (2004) 139 FCR 344). The Federal Magistrate found that the decision of the Tribunal was in no way affected by jurisdictional error and a judge of this court refused leave to appeal against that decision. 4 The delegate's decision is now of no significance having regard to the fact that it was reviewed by the Tribunal. The application for leave to appeal is dismissed. I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. Associate: Dated: 31 May 2006 Counsel for the Applicant: The applicant appeared in person. Counsel for the Respondent: Ms E Knight Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 10 May 2006 Date of Judgment: 10 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/663.html


case_outcome: referred to

case_title: Zubair v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 248 ; (2004) 139 FCR 344


case_outcome: cited

case_text: Sections 5, 6 and 7 of the Administrative Decisions (Judicial Review) Act 1997 (Cth) make provision for persons, who are aggrieved by decisions, by conduct engaged in for the purpose of making decisions or by the failure to make decisions, to apply for orders of review in respect thereof. In that context, Mason CJ, with whose reasons Brennan and Deane JJ relevantly agreed, said in Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 341-342: 'The distinction between reviewable decisions and conduct engaged for the purpose of making such a decision is somewhat elusive. However, once it is accepted that "decision" connotes a determination for which provision is made by or under a statute, one that generally is substantive, final and operative, the place of "conduct" in the statutory scheme of things becomes reasonably clear. ... .... There is a clear distinction between a "decision" and "conduct" engaged in for the purpose of making a decision. A challenge to conduct is an attack upon the proceedings engaged in before the making of the decision. It is not a challenge to decisions made as part of the decision-making process except in the sense that if the decisions are procedural in character they will precede the conduct which is under challenge. In relation to conduct, the complaint is that the process of decision-making was flawed; in relation to a decision, the complaint is that the actual decision was erroneous. To give an example, the continuation of proceedings in such a way as to involve a denial of natural justice would amount to "conduct". That is not to deny that the final determination of the proceedings would constitute a decision reviewable for denial of natural justice.' 47 In relation to the exercise by the Tribunal of its powers, s 36 of the SRC Act provided: '36. The Tribunal, in reviewing a decision or conduct: (a) is not bound by technicalities, legal forms or rules of evidence; and (b) is to act as speedily as proper consideration of the review allows, having regard to: (i) the objectives laid down by section 11 [providing mechanisms for the conciliation of complaints; and if a complaint cannot be resolved by conciliation the review of the decision or conduct to which the complaint relates; that are fair, economical, informal and quick]; and (ii) if the complaint relates to a fund the interests of all the members of the fund; and (c) may inform itself of any matter relevant to the review in any way it thinks appropriate.'


case_text: In considering the scope of a review by the Tribunal under ss 36-37 of the SRC Act Allsop J, as his Honour then was, said in Retail Employees Superannuation Pty Limited v Crocker [2001] FCA 1330 ; (2001) 48 ATR 359 ('Crocker') at [132]: '132 ... if the matters thrown up by events and circumstances, including correspondence from the member, do not properly raise anything beyond what was in fact decided by the Trustee, it is not appropriate for the tribunal, with a matter before it received by way of s 14 and under Pt 4 of the Superannuation (Resolution of Complaints) Act 1993 (Cth), to take the opportunity to deal with other aspects of the relationship between the member and the Trustee foreign to the decision for review: see Hay v Briffa. ...' The last mentioned case was reported as Briffa v Hay (1997) 75 FCR 428. 92 Even if the Tribunal had power under s 37(1) and (3) of the SRC Act, when taken with s 25 of the 1990 Act and s49(1)(e) of the Trustee Act , to compromise a claim made by a former member in the position of the second respondent for the payment of a benefit greater than that for which the Rules provided, it would not, in my opinion, have been open to the Tribunal, exercising all the powers, obligations and discretions that are conferred on the Board, to compromise the relevant claim in a manner that would be contrary to s 37(5) of the SRC Act. Section 37(5) precludes the Tribunal from doing anything that would be contrary to the 'governing rules of the fund concerned' and those Rules fixed the amount of the second respondent's benefit in the amounts indicated in the letter of 14 January 2006 to which reference has been made. (See Rule B3.5.1 and see generally National Mutual Life Association of Australia Ltd v Campbell [2000] FCA 852 ; (2000) 99 FCR 562 at [10] - [12] and [15]-[16]; see also Crocker at [22]-[23] and [27]).


case_title: Briffa v Hay (1997) 75 FCR 428

case_text: In considering the scope of a review by the Tribunal under ss 36-37 of the SRC Act Allsop J, as his Honour then was, said in Retail Employees Superannuation Pty Limited v Crocker [2001] FCA 1330 ; (2001) 48 ATR 359 ('Crocker') at [132]: '132 ... if the matters thrown up by events and circumstances, including correspondence from the member, do not properly raise anything beyond what was in fact decided by the Trustee, it is not appropriate for the tribunal, with a matter before it received by way of s 14 and under Pt 4 of the Superannuation (Resolution of Complaints) Act 1993 (Cth), to take the opportunity to deal with other aspects of the relationship between the member and the Trustee foreign to the decision for review: see Hay v Briffa. ...' The last mentioned case was reported as Briffa v Hay (1997) 75 FCR 428.


case_text: The learned authors of Jacobs' Law of Trusts in Australia (7 th edition 2006) said in relation to the general nature of a trustee's power to compromise that it had been considered in England by the Court of Appeal in In re Earl of Strafford, DECD; Royal Bank of Scotland Ltd v Byng [1980] 1 Ch 36. It was said at [2048]: 'That case establishes that the power is not to be construed narrowly, nor restricted by considerations which do not clearly emerge from the statute conferring the power. In particular, it was held that, in compromising a claim adverse to the trust, the consent of the beneficiaries is not required.'


case_text: In Re Irismay Holdings Pty Ltd [1996] 1 QdR 172 Lee J identified the matter before the Court as an application raising an important question concerning the powers of a trustee to compromise a dispute with a beneficiary relating to the beneficiary's entitlement to trust property under the trust deed. His Honour ended up considering the matter before him by reference to the power contained in s 44(f) of the Trusts Act 1973 (Qld) which was in substantially the same terms as s 49(1)(e) of the Trustee Act . At 174 Lee J said: 'At first blush it is difficult to see what limitations can be implied into the subsection which do not arise from the language itself. ... one hardly needs to cite authority for the proposition that expressions such as "claim or thing" and "relating to the trust or to the trust property" are of the widest import and should not be read down unless their context or other circumstances clearly require it. Later, at 175, his Honour said: '... Where the very subject matter of the dispute concerns the nature of a beneficiary's interest under the trust then it would seem eminently sensible to confer on the trustee power to settle that dispute provided that the compromise is entered into bona fide and for the benefit of the trust as a whole, an expression which no doubt encompasses the notion that the compromise is reached for the genuine purpose of settling the dispute and not merely as an expedient means of achieving some ulterior or extraneous agenda ... in other words the mere fact that a dispute has arisen and an agreement has been entered into is not enough; the agreement must relate to the resolution of the dispute before it can come within the power.'


case_text: In Dowling v St Vincent De Paul Society of Victoria Inc [2003] VSC 454 Nettle J took a somewhat more restrictive view of the breadth of s 19(1)(f) of the Trustee Act 1958 (Vic) being the comparable Victorian provision. That case concerned the efficacy of an agreement to compromise a probate proceeding in which the validity of a will was contested. The question was whether s 19(1)(f) authorised the executors to enter into the compromise in anticipation of a grant of probate. Nettle J reached the view that s 19(1)(f) did not authorise an executor to compromise a dispute as to the validity of a will without the consent of affected parties or an order of the Court that bound them. At [19] his Honour said: '19 Despite what has been said about the breadth of s 19(1)(f) I do not consider that s 19(1)(f) empowers an executor as such to compromise a probate proceeding in which the validity of the will is contested.' His Honour continued at [21]: '21 The word "claim" is capable in some contexts of including almost any sort of demand. Equally, according to context, the conception of things which relate to an estate may include a very broad range of possible subject matters. But it requires no recitation of authority to establish that the words of a statutory provision are to be read in context and according to the apparent purpose of the provision. And in their context and according to what I perceive to [be] the purpose of the s 19 of the Trustee Act , "claims relating to ... the estate" appear as limited to claims upon or against the estate. With respect, I think the observations of Sir Robert Megarry VC in Re Earl of Strafford to be persuasive. The section is concerned with claims against the estate be they from the outside world or as between the beneficiaries not proceedings to determine the title of the executor or trustee.' 91 It may be seen from the above that Nettle J took the view that the relevant section could lead to compromises of claims by the relevant trustees or against them.


case_text: Even if the Tribunal had power under s 37(1) and (3) of the SRC Act, when taken with s 25 of the 1990 Act and s49(1)(e) of the Trustee Act , to compromise a claim made by a former member in the position of the second respondent for the payment of a benefit greater than that for which the Rules provided, it would not, in my opinion, have been open to the Tribunal, exercising all the powers, obligations and discretions that are conferred on the Board, to compromise the relevant claim in a manner that would be contrary to s 37(5) of the SRC Act. Section 37(5) precludes the Tribunal from doing anything that would be contrary to the 'governing rules of the fund concerned' and those Rules fixed the amount of the second respondent's benefit in the amounts indicated in the letter of 14 January 2006 to which reference has been made. (See Rule B3.5.1 and see generally National Mutual Life Association of Australia Ltd v Campbell [2000] FCA 852 ; (2000) 99 FCR 562 at [10] - [12] and [15]-[16]; see also Crocker at [22]-[23] and [27]).


case_text: Contrary to the submissions of the second respondent, I am satisfied that each of the questions of law identified in the Notice of Appeal were questions of law within the meaning of s 46(1) of the SRC Act (see Vetter v Lake Macquarie City Council [2001] HCA 12 ; (2001) 202 CLR 439 at [24] et seq). 105 In my opinion, it was not open to the Tribunal to find that any decision of the Board in relation to the second respondent was unfair or unreasonable. 106 The directions which the Tribunal purported to give to the Board, upon the remission of the complaint, were beyond the power of the Tribunal. Neither the Board nor the Tribunal could provide for a benefit to be paid to the second respondent out of the PSS Fund which did not accord with the Rules and which contemplated calculations being made on the premise that the second respondent could require the date of termination of her employment as an Australian Public Servant to be notionally treated as a date other than that fixed by her employer.


case_text: has been made clear in many cases (recently, for example, in Australian Competition and Consumer Commission v Prouds Jewellers Pty Ltd [2008] FCAFC 199 at [69] ), the only limitation on the exercise of the Court's discretion as to costs is that the discretion be exercised judicially. Hearings of 8 December 2008 and 20 February 2009 In my view, Mrs Tracy in her submissions correctly summarises the position of the parties with respect to the filing of additional submissions, the hearings of 8 December 2008 and 20 February 2009, and the resultant costs incurred, particularly in respect of the hearing of 20 February 2009. As I indicated on 20 February 2009, Mrs Tracy was entitled to file written submissions by 6 February 2009 in relation to notice of motion as a whole. The history of why I had originally made orders simply anticipating an exchange of submissions on 6 February 2009 is set out in the transcript of the hearing of 20 February 2009 and I do not propose to repeat that history. While it is true that Mrs Tracy was late in filing the written submissions due by 6 February 2009 indeed the submissions were not filed until 10 February 2009 as I indicated on 20 February 2009 Mrs Tracy had not done anything wrong in filing those detailed written submissions. The confusion of the first and second respondents arose because Mrs Tracy's principal written submissions were filed late, and from what appeared to be the belief of the first and second respondents that the direction concerning the filing of any supplementary written submissions concerning a jurisdictional issue by 9 February 2009 limited the written submissions which the parties were entitled to file by 6 February 2009. I agree with Mrs Tracy that that was never the case. I do not accept the submission of the first and second respondents that costs connected with the hearings of 8 December 2008 and 20 February 2009 be costs on the motion. In my view the costs of those hearings should follow the event, and should be awarded to Mrs Tracy. Is Mrs Tracy entitled to indemnity costs?


case_text: first and second respondents have submitted that Mrs Tracy ought to pay their costs in respect of the jurisdictional issue. As recently observed, in the past the Full Court has cautioned against too ready a resort to apportionment according to issue based outcomes ( Emirates v Australian Competition and Consumer Commission (No 2) [2009] FCA 492 at [8], Australian Trade Commission v Disktravel [2000] FCA 62 at [3] ). Looking at the proceedings as a whole, the jurisdictional issue was a relatively minor aspect of the case, as was the question whether Mrs Tracy should be liable on an indemnity basis for costs of the first and second respondents. In my view, it is clear that the principal aspect of these proceedings concerned the question whether Mrs Tracy was in fact liable for non-party costs. Mrs Tracy was successful in respect of this principal issue and should, in my view, be entitled to a significant proportion of her costs. However, the facts that: Counsel for Mrs Tracy raised the jurisdictional issue at the hearing of the notice of motion without notice; which in turn necessitated further oral and written submissions by Counsel; and in the final analysis the first and second respondents were successful in respect of this issue; in my view justifies some apportionment of costs in favour of the first and second respondent. However I am not persuaded by the submission of the first and second respondents that Mrs Tracy should be entitled only to one third of her costs on the notice of motion. In light of the fact that Mrs Tracy was successful overall in these proceedings and taking into consideration the minor significance of the jurisdictional issue in the proceedings, I consider that the appropriate order is that Mrs Tracy's costs be discounted by 15%. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier. Associate: Dated: 3 June 2009 Solicitor for the Applicants: Mr P Lynch of Lynch Morgan Counsel for the Respondents: Mr PP McQuade Solicitor for the Respondents: McCullough Robertson Date of Hearing: 15 May 2009 Date of Judgment: 3 June 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/590.html


case_text: course, the usual rule is that costs follow the event in the absence of special circumstances justifying some other order ( Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748 , Bowen Investments Pty Ltd v Tabcorp Holdings Ltd (No 2) [2008] FCAFC 107). The first and second respondents were unsuccessful in respect of their notice of motion. However, for very different reasons, the parties have submitted that the usual rule as to costs should not be perfunctorily applied in relation to this notice of motion. In summary: The first and second respondents have submitted that: the parties' costs of the hearings on 8 December 2008 and 20 February 2009 be costs of the notice of motion; and because, of three clear issues identified in the notice of motion, Mrs Tracy was successful in relation to two, the first and second respondents should pay one-third of Mrs Tracy's costs on a party and party basis. Mrs Tracy has submitted that: there is no question that Mrs Tracy was wholly successful in the proceedings; in the circumstances, the costs ordered in favour of Mrs Tracy should be on an indemnity basis because: Mrs Tracy had to instruct solicitors and Counsel and thereby incur legal fees and disbursements, and if only party and party costs are awarded to Mrs Tracy she will be penalised by the difference between the party and party costs awarded and the amount of her own solicitor and client costs incurred in defending the proceedings; The first and second respondents engaged in inflammatory correspondence to the Court wrongfully claiming that the filing by Mrs Tracy of her written submissions on 9 February 2009 was not contemplated when they knew that those submissions were both contemplated, and ordered by the Court. The result of that conduct was that the Court convened a directions hearing, at which hearing it emerged that the objections made by the first and second respondents were groundless; The notice of motion was commenced or continued in disregard of known facts, including that the first and second respondents had evidence that Mrs Tracy had not provided any financial support for the principal action; The notice of motion was commenced or continued for an ulterior motive, presumably for the purpose of applying pressure to Mrs Tracy or her husband the second applicant as some form of intimidation or punishment. Mrs Tracy arranged time off work in order to comply with the requirement for cross-examination as notified by the first and second respondents, which the first and second respondents subsequently advised was not necessary; The notice of motion was commenced or maintained in disregard of clearly established law, including that the first and second respondents pressed for indemnity costs against Mrs Tracy notwithstanding that the applicants in the substantive proceedings had been the subject of an order for standard costs; The proceedings have been unduly prolonged by the making of groundless contentions by the first and second respondents; and The first and second respondents persistently breached the directions made by the Court in the proceedings and thereby caused Mrs Tracy to incur greater costs than she would have incurred had they complied with the directions of the Court. Consideration


case_title: Caboolture Park Shopping Centre Pty Ltd (in liquidation) v White Industries (Qld) Pty Ltd [1993] FCA 471 ; (1993) 45 FCR 224


case_outcome: related

case_text: Citrus Queensland Pty Ltd v Sunstate Orchards Pty Ltd (No 8) [2008] FCA 1556 I discussed in some detail principles relevant to the award of indemnity costs by the Court in appropriate circumstances. A number of those key principles are: As I also observed in Citrus (No 8) [2008] FCA 1556 , a long and non-exhaustive list of relevant issues for the Court in considering whether to award indemnity costs can be found in such cases as Colgate-Palmolive v Cussons [1993] FCA 536 ; (1993) 46 FCR 225 and InterTAN Inc v DSE (Holdings) Pty Ltd [2005] FCAFC 54.


case_text: Citrus Queensland Pty Ltd v Sunstate Orchards Pty Ltd (No 10) [2009] FCA 498 I dismissed a notice of motion filed by the first and second respondents to the substantive proceedings in which they sought an order for non-party costs against Mrs Adrienne Tracy, the wife of the second applicant to the substantive proceedings. At the time of delivery of judgment I made directions permitting the parties to make written submissions as to costs in respect of the notice of motion, to be filed by 4.00 pm on 29 May 2009, and which submissions I indicated I would take into consideration in making my decision as to costs. I made it clear at that time that final submissions (if any) were to be made by the parties in accordance with the directions. The parties understood that directions were made on that basis. The first and second respondents complied with those directions, and filed submissions on 29 May 2009. Mrs Tracy filed submissions last Monday, one business day late, however I do not consider that any prejudice is occasioned to the first and second respondents as a result of this late filing.


case_text: I also observed in Citrus (No 8) [2008] FCA 1556 , a long and non-exhaustive list of relevant issues for the Court in considering whether to award indemnity costs can be found in such cases as Colgate-Palmolive v Cussons [1993] FCA 536 ; (1993) 46 FCR 225 and InterTAN Inc v DSE (Holdings) Pty Ltd [2005] FCAFC 54.


case_title: Emirates v Australian Competition and Consumer Commission (No 2) [2009] FCA 492


case_title: Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748


case_title: InterTAN Inc v DSE (Holdings) Pty Ltd [2005] FCAFC 54


case_outcome: discussed

case_text: In Australian Competition and Consumer Commission v ABB Transmission & Distribution Ltd (No 3) [2002] FCA 609 , Finkelstein J said at [7] that the proper approach is that access should be allowed unless the interests of justice require a different course. His Honour went on to say that there is a strong presumption in favour of allowing any member of the public who wishes to do so to inspect any document or thing that is put into evidence. 34 It is true that in ACCC v ABB Finkelstein J expressed the principle in terms which reflect Dr Bell's submission. It is also true that Sackville J has expressed his agreement with the passage of the judgment; Seven Network at [25]; see also Nyangatjatjara Aboriginal Corporation v Registrar of Aboriginal Corporations [2006] FCA 606 at [14] . But in my opinion, Seven Network and other relevant authorities do not establish a rule that there must be exceptional circumstances for an application to be refused. 40 ACCC v ABB is the only Australian authority to which I have referred in which access was granted to a non-party who was not a media organisation. The applicant was a non-party who sought access to a statement of agreed facts and joint submissions of the parties in proceedings brought by the Commission against a company and its executives for civil penalties for contravention of s 45 of the Trade Practices Act 1 974 (Cth): see ACCC v ABB at [1]. The applicant sought access to those documents to determine whether it should bring an action to recover losses suffered as a consequence of the admitted breaches. 41 The extension of the principle of open justice to those circumstances is perfectly understandable. The Commission's proceedings were brought in the public interest and parties affected by the contravention ought to be given access to determine whether a private action for damages caused by the contravention would be justified. The documents sought were confined in nature. The applicant did not seek to trawl willy-nilly through the court file. 42 The question of whether access should be granted to Merlin arises in different circumstances. The authorities to which I have referred indicate, in my view, that the discretion is one to be exercised in the interests of justice, having regard to all the circumstances. 43 Where leave is sought to inspect documents that have not been read in open court, or at least tendered in evidence and considered by the judge as evidence or submission, the rule in my opinion is that leave will ordinarily be refused to inspect that material. This approach is consistent with that suggested by Sackville J in Macquarie Radio Network Pty Ltd v ABA [2002] FCA 1408 at [21] ; cf. ACCC v ABB at [6]. 44 It is true, as Finkelstein J said in ACCC v ABB at [6] that O 46 r 6(3) does not distinguish between documents that have been admitted into evidence and those which have not. But as Santow J observed in eisa Ltd v Brady [2000] NSWSC 929 , there is a risk of serious injustice if untested allegations can be published to the world at large: cited in Macquarie Radio Network at [21]. 64 Here, the application is not made in furtherance of the principle of open justice. It uses, as a springboard, the corollary to which Moore-Bick J referred in Dian , namely that persons present during a court hearing may learn of information they can use to their advantage. But in truth it goes further because it seeks "access to justice" based upon the modern approach to commercial litigation with its emphasis upon creation, and preservation of large volumes of written material, much of which is not read out in open court. Finkelstein J referred to this in ACCC v ABB at [4] [5].


case_text: This seems to me to be consistent with the approach taken by Cowdroy J in Churche v Australian Prudential Regulation Authority (No 3) [2006] FCA 1168 at [26] . His Honour granted access to affidavits admitted into evidence, but access was otherwise refused. Access was granted to annexures but they form part of the affidavit and are to be distinguished from exhibits in the proceedings.


case_outcome: distinguished

case_text: Dr Bell pointed to [64] [66] of the judgment of Wilcox J in which his Honour referred to the evidence of Mr Johnsen, stating that it contained evidence of routine downloading of ARIA Top 50 and Top 100 recordings. Dr Bell referred me to the decision of Heerey J in Dawson Nominees v Multiplex (2007) 64 ACSR 53 at [30] to support the proposition that access to the exhibits to the affidavits ought to be granted. But the observations of Heerey J in Dawson Nominees v Multiplex are not a charter for access to documents by non-parties. His Honour's remarks were made in the context of existing proceedings where the documents had potential relevance to the issues in the litigation.


case_text: In Dian AO v Davis Frankel & Mead (a firm) [2005] 1 All ER 1074, a non-party applied to the court for permission to inspect and copy the court file in proceedings which had been concluded by compromise some eight years earlier. The non-party made the application in the hope of obtaining information which would be of use to it in litigation which was on foot in the British Virgin Islands. 50 Moore-Bick J granted access to affidavits and pleadings notwithstanding the substantial delay. Of course, he did so under the relevant English rules of court but a number of his observations are in my view applicable to the regime established under O 46 r 6. 51 First, the principle of open justice is primarily concerned with monitoring the decision-making process as it takes place, not with reviewing the process long after the event: Dian at [30]. 52 Second, an application for permission to use the court file as a source of potentially useful information to assist in other litigation does not engage the principle of open justice. Nevertheless, one consequence of the application of the principle of open justice is that persons who are present in Court may obtain access to information that they may be able to use to their advantage in other litigation. But this is merely a consequence of doing justice in public. It is not one of its primary objects: Dian at [31]. 53 Third, the rules do not contemplate permission to inspect the file as a whole. The documents which an applicant wishes to inspect must be identified with reasonable precision: Dian at [32]. 59 In his speech in Home Office v Harman , Lord Diplock referred at 303 to the inevitable side effect of administering justice in open court and the corollary that persons present in court may use documents that are read out in court for purposes other than the attainment of justice in the particular case. The observations of Moore-Bick J in Dian at [31] are to the same effect. 64 Here, the application is not made in furtherance of the principle of open justice. It uses, as a springboard, the corollary to which Moore-Bick J referred in Dian , namely that persons present during a court hearing may learn of information they can use to their advantage. But in truth it goes further because it seeks "access to justice" based upon the modern approach to commercial litigation with its emphasis upon creation, and preservation of large volumes of written material, much of which is not read out in open court. Finkelstein J referred to this in ACCC v ABB at [4] [5]. 75 So too in Dian , the documents were sought for the purpose of obtaining information of potential use in litigation that was already on foot. It was not to determine whether a case may be launched, and if so, by whom. 76 Mr Cobden submitted that I ought not to grant access to Ms Ball's affidavits. It is true that Ms Ball made copies of sound recordings in circumstances in which she obtained the protection of s 104 of the Copyright Act 1968 (Cth). However, I do not think that the grant of access to those parts of her affidavit which were read in evidence would put her in breach of that provision, or in breach of the implied undertakings pursuant to which she obtained and used the material.


case_title: Dobson v Hastings [1992] Ch 394

case_text: In Dobson v Hastings [1992] Ch 394 at 401-402, Sir Donald Nicholls VC considered that the Rules of the Supreme Court indicate that save when permitted under the rules, documents on the court file are not intended to be inspected or copied. He said that: ... a court file is not a publicly available register. It is a file maintained by the court for the proper conduct of the proceedings. Access to that file is restricted. Non-parties have a right of access to the extent, but only to the extent, provided in the rules.


case_title: eisa Ltd v Brady [2000] NSWSC 929

case_text: It is true, as Finkelstein J said in ACCC v ABB at [6] that O 46 r 6(3) does not distinguish between documents that have been admitted into evidence and those which have not. But as Santow J observed in eisa Ltd v Brady [2000] NSWSC 929 , there is a risk of serious injustice if untested allegations can be published to the world at large: cited in Macquarie Radio Network at [21].


case_text: There is an implied undertaking by parties to litigation that documents produced by one party to another in the course of discovery will not be used for any purpose other than in relation to the litigation: Esso Australia Resources Ltd v Plowman [1995] HCA 19 ; (1995) 183 CLR 10 at 32 (per Mason CJ), citing inter alia Harman v Secretary of State for the Home Department [1983] 1 AC 280 (" Home Office v Harman ").


case_text: In GIO Personal Investment Services Ltd v Liverpool and London Steamship Protection and Indemnity Association Ltd [1999] 1 WLR 984 at 995, Potter LJ said that when evidence, including court bundles, are read out in court they "enter the public domain" and a member of the press or public may quote from the document: ... but the right of access to it for the purposes of further use or information depends upon that person's ability to obtain a copy of the document from one of the parties or by other lawful means. 48 Nevertheless, the approach taken by his Lordship was not as narrow as this passage might suggest. FAI General Insurance Co Ltd sought access to counsel's written submissions in the proceedings to identify documents that might be the subject of a subpoena in parallel litigation. His Lordship at 996 regarded this as a legitimate purpose for the grant of access to the documents.


case_title: Harman v Secretary of State for the Home Department [1983] 1 AC 280


case_text: As Sackville J observed in Seven Network at [24], O 46 r 6 does not confer a right on a non-party to obtain access to documents admitted into evidence. Leave from the Court is required. His Honour referred with approval to the statement made by Spigelman CJ in John Fairfax Publications Pty Ltd v Ryde Local Court (2005) 62 NSWLR 512 at [29] that open justice is a principle, not a "freestanding right".


case_text: Where leave is sought to inspect documents that have not been read in open court, or at least tendered in evidence and considered by the judge as evidence or submission, the rule in my opinion is that leave will ordinarily be refused to inspect that material. This approach is consistent with that suggested by Sackville J in Macquarie Radio Network Pty Ltd v ABA [2002] FCA 1408 at [21] ; cf. ACCC v ABB at [6]. 44 It is true, as Finkelstein J said in ACCC v ABB at [6] that O 46 r 6(3) does not distinguish between documents that have been admitted into evidence and those which have not. But as Santow J observed in eisa Ltd v Brady [2000] NSWSC 929 , there is a risk of serious injustice if untested allegations can be published to the world at large: cited in Macquarie Radio Network at [21].


case_text: It is true that in ACCC v ABB Finkelstein J expressed the principle in terms which reflect Dr Bell's submission. It is also true that Sackville J has expressed his agreement with the passage of the judgment; Seven Network at [25]; see also Nyangatjatjara Aboriginal Corporation v Registrar of Aboriginal Corporations [2006] FCA 606 at [14] . But in my opinion, Seven Network and other relevant authorities do not establish a rule that there must be exceptional circumstances for an application to be refused.


case_text: I will not allow access to the digital music files discovered by the Sharman respondents, or to the digital files seized from the universities. They are not part of the Court file and they do not appear to have been admitted into evidence. Particular caution is required before granting access to this class of documents: Re Bond; Ex parte Hongkong Bank [1999] FCA 403 at [4] (per Hely J). 78 The "Applicant's' Main Tender Bundle" may have been admitted into evidence but it was a compilation of exhibits and is therefore covered by what I said above about the property in those documents. 79 The same approach is applicable to the appeal books. Access will be obtained by Merlin to the body of the affidavits but the balance of the appeal books (other than pleadings and other documents otherwise available under O 46 r 6(2)) merely reproduce exhibits and transcript.


case_text: This is hardly surprising because the principle which informs the exercise of the power is that of open justice, the underlying rationale being the belief that exposure to public scrutiny is the surest safeguard against abuse of power of the courts: see Seven Network at [21]ff; Re Richstar Enterprises Pty Ltd; Australian Securities and Investments Commission v Carey (No 2) (2006) 232 ALR 398 at [16]ff; Rich v Harrington (2007) 99 ALD 297 at [17]ff. 38 This was the view taken by French J in Richstar at [18] where his Honour agreed with the observations of Sackville J in Seven Network to which I have referred in the two preceding paragraphs of my judgment. So too did Branson J in Rich v Harrington at [23]. Her Honour said that this approach recognises that the discretion under O 46 r 6 must be exercised having regard to the particular circumstances of the case.


case_title: Rich v Harrington (2007) 99 ALD 297


case_outcome: applied

case_text: The application raises an important question of principle which does not seem to have been dealt with in any earlier authority. Although Dr Bell invoked the principle of open justice, referred to in cases such as Seven Network Ltd v News Ltd (No 9) [2005] FCA 1394 ; (2005) 225 ALR 256 , ultimately he put the application on the footing that it was for access to justice. 7 The purpose for which Merlin seeks access to the documents is to obtain information concerning possible infringements of its members' copyright in the same period as was covered by the Kazaa proceedings. Merlin seeks to obtain evidence of copyright infringement by the respondents to the Kazaa proceedings, by the same conduct as was in issue in those proceedings. 8 The essential issue which arises is whether a non-party ought to be given access to a defunct court file in order to gather evidence for a case it (or, more accurately, some of its members) may wish to bring against the respondents to the Kazaa proceedings in circumstances in which the non-party cannot satisfy the requirements for an order for preliminary discovery under O 15A of the Federal Court Rules . 31 This is hardly surprising because the principle which informs the exercise of the power is that of open justice, the underlying rationale being the belief that exposure to public scrutiny is the surest safeguard against abuse of power of the courts: see Seven Network at [21]ff; Re Richstar Enterprises Pty Ltd; Australian Securities and Investments Commission v Carey (No 2) (2006) 232 ALR 398 at [16]ff; Rich v Harrington (2007) 99 ALD 297 at [17]ff. 33 Sackville J has expressed his agreement with the abovementioned statements of principle by Finkelstein J: Seven Network at [25]. However, I do not think it follows that the principle is as broad as was submitted by Dr Bell SC for Merlin. Dr Bell's submission was that, at least with respect to documents which have been admitted into evidence, exceptional circumstances are required for an application under O 46 r 6(3) to be refused. 34 It is true that in ACCC v ABB Finkelstein J expressed the principle in terms which reflect Dr Bell's submission. It is also true that Sackville J has expressed his agreement with the passage of the judgment; Seven Network at [25]; see also Nyangatjatjara Aboriginal Corporation v Registrar of Aboriginal Corporations [2006] FCA 606 at [14] . But in my opinion, Seven Network and other relevant authorities do not establish a rule that there must be exceptional circumstances for an application to be refused. 35 As Sackville J observed in Seven Network at [24], O 46 r 6 does not confer a right on a non-party to obtain access to documents admitted into evidence. Leave from the Court is required. His Honour referred with approval to the statement made by Spigelman CJ in John Fairfax Publications Pty Ltd v Ryde Local Court (2005) 62 NSWLR 512 at [29] that open justice is a principle, not a "freestanding right". 36 The guiding principle seems to me to be as stated by Sackville J in Seven Network at [27]. His Honour there said that, unless the interests of justice require otherwise, the Court would ordinarily take the view that a non-party should have access to all non-confidential documents and other material admitted into evidence. 37 Sackville J went on at [27] to make the important point that in each application the Court will have to take into account the particular circumstances of the case. A convenient "touchstone" will be whether the documents have been admitted into evidence. Access to that material: ... can be expected to be helpful to a person seeking to understand or explain the proceedings, or to evaluate, the court's determination of the issues arising in the proceedings : see Seven Network at [27]. 38 This was the view taken by French J in Richstar at [18] where his Honour agreed with the observations of Sackville J in Seven Network to which I have referred in the two preceding paragraphs of my judgment. So too did Branson J in Rich v Harrington at [23]. Her Honour said that this approach recognises that the discretion under O 46 r 6 must be exercised having regard to the particular circumstances of the case. 46 It seems to me that these observations are equally applicable to the scheme established under O 46 r 6, as construed in authorities such as Seven Network. 63 Although Sackville J said in Seven Network at [27] that a convenient "touchstone" for the grant of access is whether the material has been admitted into evidence, the effect of his Honour's judgment is that this is a general rule which will serve the interests of open justice; but all the circumstances must be considered.


case_text: Nevertheless, the implied undertaking continues to apply to documents produced on discovery; it also applies to witness statements, affidavits and other documents produced by one side to the other for the purposes of the litigation: Springfield Nominees Pty Limited v Bridgelands Securities Limited (1992) 38 FCR 217 at 221-223 (per Wilcox J). 57 Leave of the court to be released from the undertaking in order to use the documents in other proceedings will only be granted in "special circumstances"; they include the nature of the document, the absence of prejudice to the author and the likely contribution of the document to achieving justice in the second proceeding: Springfield Nominees at 225. 74 Dr Bell pointed to [64] [66] of the judgment of Wilcox J in which his Honour referred to the evidence of Mr Johnsen, stating that it contained evidence of routine downloading of ARIA Top 50 and Top 100 recordings. Dr Bell referred me to the decision of Heerey J in Dawson Nominees v Multiplex (2007) 64 ACSR 53 at [30] to support the proposition that access to the exhibits to the affidavits ought to be granted. But the observations of Heerey J in Dawson Nominees v Multiplex are not a charter for access to documents by non-parties. His Honour's remarks were made in the context of existing proceedings where the documents had potential relevance to the issues in the litigation.


case_text: The respondent relies on evidence that the notice was posted in accordance with the requirements of s 29(1) , and the evidence recorded at [12] that it was received at the applicant's place of business on 30 June 2005. It relies on this last-mentioned evidence as proof to the contrary for the purposes of the concluding limb of s 29(1). The applicant did not contest this aspect of the "service" issue. If service by post (ie s 28A(1) of the AIA) was available to the respondent, its reliance on s 29(1) is made out. See Skalkos v T & S Recoveries Pty Ltd [2004] FCAFC 321 ; (2004) 141 FCR 107 at [22] , [24]-[25]. 16 The issue between the parties was whether service by post was available. The applicant contended that s 36 of the Act discloses a contrary intention for the purposes of s 28A(1) of the AIA. I cannot discern in s 36 any indication that service by post is not to be available in relation to a notice under sub-s (7) thereof. 17 The applicant relied on sub-s (8)(a), which speaks of notice having been "given" to a person under sub-s (7). Sub-section (7) requires the appropriate person to "serve" the notice. Sub-section (8)(b) speaks of a failure to bring an action within four months after "service" of the notice. It was said that the contrast between "serve" and "service" on the one hand and "given" on the other shows that "serve" in sub-s (7) requires personal service. In my view that contrast is too feeble to constitute a contrary intention. In any case, s 28A(1) of the AIA applies "whether the expression 'serve', 'give' or 'send' or any other expression is used".


case_text: The applicant also relied on the obiter observations of Gummow J in Secretary, Department of Social Security v Garratt (1992) 109 ALR 149 at 157-158, approved in obiter by a Full Court in Secretary, Department of Social Security v O'Connell (1992) 38 FCR 540 at 551-554. In my view Garratt is readily distinguishable. The statutory scheme in s 168(3) and (4) of the Social Security Act 1947 (Cth) (the SSA) was entirely different from that in the Act. Section 168(4) dealt with the time at which a determination upon internal review would take place. If the person concerned had sought review within three months after "a notice was given to the person ... advising the person of the making of the previous decision", or if no such notice was given, the determination took effect on the date of the previous decision. Otherwise, the determination took effect on the date of the application for review. 20 Unlike the present case, there was no provision in the SSA that required a notice to be given of a cancellation decision. Although the Act implicitly permitted the Secretary to serve such a document, and to serve it in accordance with s 28A of the AIA, there was no statutory link between that document and the notice of the previous decision referred to in s 168(4)(a). Thus in O'Connell at 552, the question whether the Secretary was entitled to serve a notice of cancellation in accordance with s 28A was treated as separate from whether notice had in fact been given of the previous decision for the purposes of s 168(4)(a). By contrast, s 36(7) of the Act expressly requires a notice to be served, and sub-s (8) refers to the service of that notice. That is to say, the time period specified in sub-s (8) begins to run on "the service of the notice" under sub-s (7). This is not analogous to the legislative setting in Garratt , where the relevant provisions fixed a date which was "determinative of the right of persons in relation to pensions, benefits and claims under the Act": Garratt at 157. 21 It was submitted by the applicant, again by analogy with Garratt at 157, that a contrary intention was constituted by the fact that s 36(8) brought about the forfeiture of property. I do not think that constitutes a contrary intention. In Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 at 96, speaking of a Queensland provision in the same form as s 28A, the High Court said: "Paragraphs (b) and (c) of s 42(1) contemplate the possibility of something less than actual receipt by the person to be served. As was observed by Tindal CJ in Bishop v Helps in relation to a comparable provision, although leaving notices at a place of abode or sending them through the post involve the possibility of non-receipt by the intended recipient: 'It was probably considered that the public convenience would be promoted by the present provision, and that its advantages would greatly outweigh the inconvenience which, in some few cases, might possibly arise from it.' Nevertheless, proof of the use of any one of the methods of service provided by s 42(1) constitutes proof of service for the purpose of the Hire Purchase Act ...."


case_text: The applicant also relied on the obiter observations of Gummow J in Secretary, Department of Social Security v Garratt (1992) 109 ALR 149 at 157-158, approved in obiter by a Full Court in Secretary, Department of Social Security v O'Connell (1992) 38 FCR 540 at 551-554. In my view Garratt is readily distinguishable. The statutory scheme in s 168(3) and (4) of the Social Security Act 1947 (Cth) (the SSA) was entirely different from that in the Act. Section 168(4) dealt with the time at which a determination upon internal review would take place. If the person concerned had sought review within three months after "a notice was given to the person ... advising the person of the making of the previous decision", or if no such notice was given, the determination took effect on the date of the previous decision. Otherwise, the determination took effect on the date of the application for review. 20 Unlike the present case, there was no provision in the SSA that required a notice to be given of a cancellation decision. Although the Act implicitly permitted the Secretary to serve such a document, and to serve it in accordance with s 28A of the AIA, there was no statutory link between that document and the notice of the previous decision referred to in s 168(4)(a). Thus in O'Connell at 552, the question whether the Secretary was entitled to serve a notice of cancellation in accordance with s 28A was treated as separate from whether notice had in fact been given of the previous decision for the purposes of s 168(4)(a). By contrast, s 36(7) of the Act expressly requires a notice to be served, and sub-s (8) refers to the service of that notice. That is to say, the time period specified in sub-s (8) begins to run on "the service of the notice" under sub-s (7). This is not analogous to the legislative setting in Garratt , where the relevant provisions fixed a date which was "determinative of the right of persons in relation to pensions, benefits and claims under the Act": Garratt at 157.


case_text: It was submitted by the applicant, again by analogy with Garratt at 157, that a contrary intention was constituted by the fact that s 36(8) brought about the forfeiture of property. I do not think that constitutes a contrary intention. In Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 at 96, speaking of a Queensland provision in the same form as s 28A, the High Court said: "Paragraphs (b) and (c) of s 42(1) contemplate the possibility of something less than actual receipt by the person to be served. As was observed by Tindal CJ in Bishop v Helps in relation to a comparable provision, although leaving notices at a place of abode or sending them through the post involve the possibility of non-receipt by the intended recipient: 'It was probably considered that the public convenience would be promoted by the present provision, and that its advantages would greatly outweigh the inconvenience which, in some few cases, might possibly arise from it.' Nevertheless, proof of the use of any one of the methods of service provided by s 42(1) constitutes proof of service for the purpose of the Hire Purchase Act ...."


case_outcome: considered

case_text: Repatriation Commission v Gordon (1990) 26 FCR 569 concerned a situation analogous to that in the present case. Service of a copy of a decision marked the commencement of the period within which an application for review could be made. Spender J held that the veterans' entitlements legislation did not evince an intention that service by post was not available. His Honour said at 577: "The object of service, in whatever form, is to bring the contents of the document or documents served to the attention of the person to be served. The mere fact that one might more confidently expect that aim to be achieved if personal service, as opposed to service by pre-paid post, is required, does not permit the conclusion that service by pre-paid post was intended to be excluded. Such a consideration would apply in every case. Accepting, as I do, that the veterans' entitlement legislation is benevolent in purpose, nonetheless in my view there is nothing in its provisions which manifests an intention to preclude service by pre-paid post of the documents that s 34(2) requires the Commission to cause to be served on the claimant or applicant." 23 My conclusions are that s 28A of the AIA was available to the respondent, the notice was served in accordance with s 29 , and was delivered on 30 June 2005. 24 In case it might be thought that the application of s 28A has produced a harsh result in this case, I note four matters. First, as I have said, the notice was delivered to the applicant's business premises on 30 June 2005. Second, it was received by him, in the sense that he read it, on 5 July 2005, which gave him almost four months in which to commence proceedings. The four month period did not expire until 31 October. Third, according to the applicant's statement of claim, on or about 29 June 2005 Mr Wohlers notified him that if he did not bring an action for recovery within four months of service of the notice, the objects would be forfeited. Fourth, the applicant's counsel contacted the Department on 20 October and was informed of the Department's view that the period expired on 31 October. The file note recording the conversation states that counsel responded that "they would contemplate (bringing the action) by the end of the following week [ie 28 October 2005]". Notwithstanding this, the proceeding was commenced out of time. 25 The action against the Commonwealth for which s 37 provides is available only if two conditions are satisfied. The first is that a protected object has been seized under the Act. The second is that the object has not been forfeited by s 36. The action that is authorised by s 37(1) is one to recover the object on the ground that it is not forfeited or liable to be forfeited. In a case such as the present, the ultimate task for the court is to decide whether the object is liable to forfeiture by virtue of s 14(1). That involves determining the three matters prescribed by s 14(1): whether a protected object has been exported from a foreign country, whether the export was prohibited by a law of that country relating to cultural property, and whether the object has been imported into Australia. Section 37(3) prescribes what the court is to do in certain events. If it determines that the object is liable to forfeiture under s 14(1), it is required to order that the object is forfeited. If it finds that the object is not liable to forfeiture, it may order its return. 26 There is an oddity in the drafting of ss 34 to 37. Section 34 confers power to seize a "protected object" where the relevant belief exists. Section 36(2) and (5) and s 37 also use these words. Although s 36(8) speaks of "an object" and "the object", it is clear from s 36(5) that what sub-s (8) calls an "object" is a "protected object". One of the questions for the Court under s 37(3) is whether what has been seized is a protected object. See par (b) and s 14(1)(a). Where the court finds that an object is not liable to forfeiture by virtue of s 14(1), it may order its return. This it may do if it is not liable to forfeiture because it is not a protected object within s 14(1)(a). Accordingly, it seems to me that "protected object" in s 37(1)(a) and "the object" in par (b) must include an object that is alleged to be a protected object. Similarly with s 34, which appears to contemplate that in some cases a seized object will not in fact be liable to be forfeited because, for example, it is not in fact a protected object within s 14(1)(a).


case_text: Section 126 has been the subject of little judicial consideration although it has been usefully considered by Sackville J in Towney v Minister for Land and Water Conservation (NSW) (1997) 76 FCR 401. For present purposes it is sufficient if I note that in that case his Honour indicated that the section contemplated the application of an objective standard. His Honour went on to observe at 414: In applying the standard specified by s 126 of the Evidence Act , it is to be borne in mind that the expression "proper understanding" is by no means narrow. The dictionary definition of "proper" includes "complete or thorough"; the definition of "understand" includes "to apprehend clearly the character or nature of" and "to grasp the significance, implications or importance of" (Macquarie Dictionary). It may or may not be correct to say that the test stated in s 126 of the Evidence Act , is, or appears to be, narrower than the principles governing implied waiver under the general law: cf Cross on Evidence (Aust ed), par 25300. Any precise assessment of the scope of s 126 must await further decisions. However, I think it fair to say that, if a privileged document is voluntarily disclosed for forensic purposes, and a thorough apprehension or appreciation of the character, significance or implications of that document requires disclosure of source documents, otherwise protected by client legal privilege, ordinarily the test laid down by s 126 of the Evidence Act will be satisfied. 8 While it is true that each of the invoices on its face requires no explanation of its contents (other than the need for translation from Chinese), the invoices themselves bear upon a number of potential questions. There is sharp disagreement between the parties over the incidence, effects and duration of the alleged parallel importation. The invoices that have been produced relate to a quite confined period in 2001 and 2002. For my own part I am satisfied that the significance properly to be attributed to them can only be discerned if one also is aware of the nature of the request that was addressed on Hamilton's behalf to Lo & Lo. Whether it was quite specific or quite general in character, for example, could markedly affect how one would forensically evaluate the significance of the invoices. Hamilton, having tendered the Lo & Lo emails and attachments, cannot now in my view properly resist putting into evidence its own lawyers' request. 9 In the circumstances I am satisfied that client legal privilege has been lost in relation to that request because the disclosure of the request itself is reasonably necessary to enable a proper understanding of the invoices.


case_text: It is well accepted that the aim of the court's power to amend under O 13 r 2 of the Federal Court Rules is to allow all the issues which arise in a proceeding to be determined and for a decision to be given on the real matter in controversy. Hence it has been emphasised that amendments to pleadings should be allowed if it not be unjust to do so: see Lactos Fresh Pty Ltd v Finishing Services Pty Ltd [2006] FCA 219 at [122] . The imperative in favour of amendment has been long accepted and is illustrated, for example, in the observations of Stephen, Mason and Jacobs JJ in Leotta v Public Transport Commission (NSW) (1976) 9 ALR 437 at 446 where their Honours said: If in the cause of action upon which the plaintiff sued there had emerged at the conclusion of the evidence facts which, if accepted, established that cause of action, then it was the duty of the trial judge to leave the issue of negligence to the jury. The pleadings should have been amended in order to make the facts alleged and the particulars of negligence precisely conform to the evidence which had emerged ... Now, and for many years past, a plaintiff does not fail by being refused leave to amend or through failure formally to apply for amendment, where the evidence has disclosed a case in the cause of action fit to be determined by the tribunal of fact. Particularly is this so when the action finally determines the rights of the parties in the cause of action.


case_title: Leotta v Public Transport Commission (NSW) (1976) 9 ALR 437


case_text: In my opinion, the latter is the correct characterisation. The statutory provisions are not directed to a continuing state of affairs, but rather conduct which answers a particular description. If there are episodes of conduct distinct in time or place, albeit related and engaged in with the same purpose, there will be separate contraventions. To take an example discussed in argument, if an employer on each morning of a week threatened to assault an employee if he did not sign an AWA, there would be a contravention on each day. The evidence in relation to Ms Thompson is in essence no different: cf Carr v Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union [2005] FCA 1802 at [12] and [16]. However, before penalties are finally fixed in respect of all contraventions, and not just those concerning Ms Thompson, I must look at the totality of all the unlawful conduct: Mill v The Queen [1988] HCA 70 ; (1988) 166 CLR 59 at 63, Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 2) (2005) 215 ALR 281 at [14].


case_title: Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 2) (2005) 215 ALR 281


case_text: Two aspects may be noted. First, these penalties were increased very substantially, from $10,000, in 2004: schedule 3 Workplace Relations Amendment (Codifying Contempt Offences) Act 2004 (Cth). As to the seriousness with which the legislature views such contraventions, this increase "speaks for itself": Australian Competition and Consumer Commission v Australian Safeway Stores Pty Ltd (1997) 75 FCR 238 at 242. 96 Secondly, in s 407(2) the current Act prescribes different penalties for different contraventions. There are two levels, 30 or 60 penalty units. The contraventions presently under consideration attract the higher level. 97 The Group of which the respondent is a member has been in the hotel business in Tasmania since 2000.


case_text: In a small, intimate workplace like the Hotel, the conduct of the respondent can be taken to have had a significant intimidatory effect on other employees; cf Canturi v Sita Coaches Pty Ltd [2002] FCA 349 ; (2002) 116 FCR 276 at [91] . The respondent must have been aware of this advantage for the implementation of its policy. 104 The respondent's submissions in mitigation of penalty centred on its admission of liability and an attempt to distance itself from the conduct of Mr Barry. It was said that Mr Kalis had gone to Greece on holiday and decided that Mr Barry, a person of long experience in the hotel industry, would be left in charge of the Hotel. 105 This proceeding was commenced on 31 October 2006. It was initially fixed for a four day trial commencing on 27 August 2007. The respondent had filed a number of affidavits in opposition to those of the applicant. I was told that negotiations for a possible admission commenced in June. The Court was not firmly advised until mid August that a full trial on liability would not be needed.


case_title: R v Shannon (1979) 21 SASR 442

case_text: The significance of a plea of guilty is discussed by Professor Kate Warner in her Sentencing in Tasmania (2 nd ed, The Federation Press, 2002) in these terms " Guilty Pleas 3.603 A plea of guilty is a mitigating factor but the weight it is given will depend upon the relevant circumstances including remorse, the degree to which psychological trauma to potential witnesses is avoided, the length of the trial and the strength of the prosecution case. Recent Tasmanian decisions have accepted the following propositions advanced by King CJ in Shannon (1979) 21 SASR 442 at 452-453 as a correct statement of the principles governing the mitigatory effect of pleas of guilty: (1) A plea of guilty may be taken into account in mitigation of sentence where (a) it results from genuine remorse, repentance or contrition, or (b) it results from a willingness to co-operate in the administration of justice by saving the expense and inconvenience of a trial, or the necessity of witnesses giving evidence, or results from some other consideration which is in the public interest; notwithstanding that the motive, or one of the motives, for such co-operation may be a desire to earn leniency, and where to allow the plea a mitigatory effect would be conducive to the public purposes which the sentencing judge is seeking to achieve. (2) A plea of guilty is not of itself a matter of mitigation where it does not result from any of the above motives, but only from a recognition of the inevitable, or is entered as the means of inducing the prosecution not to proceed with a more serious charge. (3) In cases falling within (1), the judge is not bound to make a reduction, but should consider the plea with all the other relevant factors in arriving at a proper sentence. (4) In assessing the weight to be attached to a plea of guilty as a factor making for leniency, it is proper for the judge to bear in mind that it is important to the administration of justice that guilty persons should not cause expense to the public and delay to other causes by putting forward false stories and on the basis of such false stories contesting the charges against them. (5) The above propositions are not to be taken as weakening in any way the principle that there must be no increase in the sentence which is appropriate to the crime because the offender has contested the charge." 107 It is true that the admission by the respondent has saved a substantial amount of public money (in this jurisdiction under the Act costs would not normally be awarded: s 824). Also the employees have been saved the stress of having to give evidence about unpleasant events. On the other hand, the admission came at a late stage and after substantial costs had been incurred.


case_title: Joel v Morison (1834) 6 Car & P 502

case_text: However, such mitigation as may have been obtained by an admission of liability was somewhat lessened by the submission that the respondent should get a "further discount" because it was giving up a possible defence. It was not, so the argument went, "bowing to the inevitable". Mr Barry was, in the time-honoured metaphor, engaging in "a frolic of his own" (a catchy phrase coined by Parke B in Joel v Morison (1834) 6 Car & P 502 at 503 and explained by Diplock LJ in Morris v C W Martin & Sons Ltd [1966] 1 QB 716 at 733-734). If there had been apportionment, it was said, Mr Barry would be 70 per cent liable, as against 30 per cent for the respondent.


case_title: Morris v C W Martin & Sons Ltd [1966] 1 QB 716


case_text: In the circumstances of the present case, s 826 does not operate as some technical or artificial deeming provision. In reality, for those employed at the Hotel, Mr Barry was the respondent: cf Meridian Global Funds Management Asia Ltd v Securities Commission [1995] 2 AC 500 at 509-511 .


case_text: Approached on common law principles of vicarious liability, and even assuming that his conduct was unauthorised and it was necessary to find that Mr Barry acted within the course of his employment, his conduct was so connected with what he was authorised to do securing signatures to AWAs and arranging rosters that it was a wrongful way of doing what he was employed to do: New South Wales v Lepore [2003] HCA 4 ; (2003) 212 CLR 511 at [40] - [54] . Obtaining signatures to the AWAs was not a private benefit for Mr Barry but something from which the respondent itself would profit. 112 It was not only Mr Barry who was aware of and implemented the policy; see [86]-[87] above. 113 At the most, a modest discount for admission of liability may be allowable. I would accept the figure of ten per cent as proposed by counsel for the applicant.


case_outcome: followed

case_text: 28 April 2009 I overruled a threshold or preliminary objection to the motion by ASIC and the second and third respondents, Brookfield Multiplex Limited and Brookfield Multiplex Funds Management Limited (collectively "Multiplex") that the applicants were precluded from bringing the motion as it re-litigated a matter not open to them on an interlocutory hearing because the matter had already been determined against them by the decision of the Full Court of the Federal Court in Australian Securities and Investments Commission v P Dawson Nominees Pty Ltd [2008] FCAFC 123 ; (2008) 169 FCR 227. ASIC and Multiplex submitted that the motion amounted to an abuse of process. On the same day, I dismissed a notice of motion filed by Multiplex on 13 March 2009 seeking orders that the applicants' motion be dismissed or permanently stayed as an abuse of process of the Court. ASIC sought leave to appeal against the orders. The Full Court granted leave to appeal, allowed the appeal, set aside the orders and ordered that the thirty-six specified documents and forty-one transcripts of examination of twenty-three witnesses produced to the Court pursuant to the subpoena were protected from production to, and inspection by, the applicants and Multiplex on the ground of PII: Australian Securities and Investments Commission v P Dawson Nominees Pty Ltd [2008] FCAFC 123 ; (2008) 169 FCR 227. An application by the applicants to the High Court for leave to appeal was refused. The parties were in agreement as to the process of analysis and consideration which I should undertake in determining a challenge to an application for production and inspection of documents produced under subpoena on the ground of PII because the documents might tend to disclose the identity of an informer or informers. The first step is to determine whether the documents disclose the existence of an informer or informers to ASIC. The second step is to determine whether the documents tend to identity an informer or informers to ASIC. If they do, the second step also involves determining whether the documents can be redacted or masked in such a way that, in their masked form, it will not be possible, even by the conveying of "a shrewd idea", to identify the informer or informers. The third step is to undertake a balancing exercise and determine whether, in the circumstances of this case, the documents to the extent to which they are not redacted or masked are of sufficient importance for the applicants' conduct of the proceeding to outweigh the importance of not disclosing the identity of the informer or informers. ASIC and Multiplex submitted that the Full Court had decided this balancing exercise against the applicants and that it was not open to the applicants to raise this issue and that I was bound by the Full Court's finding. The position and circumstances facing the Court on the hearing of the present motion are different from the circumstances facing the Court at the time I made the order on 14 November 2007 dismissing ASIC's application. The relevant different circumstances are as follows: (a) it has been made public, and the applicants are now aware, that the basis for ASIC's claim that the documents and transcripts are protected from production and inspection on the ground of PII is that inspection will disclose the identity of an informer or informers to ASIC. The exact number of informers is irrelevant for present purposes; (b) the identity of Mr Stuart Cummins as an informer to ASIC in relation to the affairs of Multiplex has been disclosed. The consequence is that there is no longer any confidentiality attached to Mr Cummins' identity as an informer to ASIC or as a person entitled to protection pursuant to Pt 9.4AAA of the Corporations Act 2001 (Cth) ("the Act"); (c) the Full Court handed down its decision on 4 July 2008. As a result of the disclosure of the identity of Mr Cummins as an informer to ASIC, ASIC accepts, subject to it reserving its rights in respect of any appeal which it may seek to bring against my ruling on 28 April 2009 that production and inspection of the following documents cannot be objected to by it on the ground that they would or might disclose Mr Cummins' identity as an informer to ASIC. The documents numbered: (a) 1, 5, 8, 9, 10, 13, 15, 16, 20, 21, 23, 24, 25, 28, 29, 30, 35 and 36 on the ground that they would or might disclose Mr Cummins' identity as a protected discloser and informer to ASIC. (b) 4, 6, 7, 11, 12, 14, 18, 19, 22, 26, 27, 31 and 32 in redacted or masked form. ASIC still opposes the production and inspection of documents numbered 2, 3, 17, 33 and 34 on the ground that inspection of those documents would or might disclose the identity of an informer or informers to ASIC who are entitled to protection in respect of their disclosures to ASIC pursuant to Pt 9.4AAA of the Act. For the same reason ASIC continues to object to the production and inspection of all forty-one transcripts.


case_text: is a considerable background to the applicants' motion and this proceeding which is set out in my earlier ruling on 28 April 2009: P Dawson Nominees Pty Ltd v Australian Securities and Investments Commission (No 2) (2009) 255 ALR 466. I do not propose to rehearse it in detail and I incorporate that ruling in these reasons.


case_text: the return of the subpoena first came before the Court, ASIC objected to the production of the documents and transcripts for inspection on the ground of PII. At the time the basis for the objection that they tended to reveal the identity of informers to ASIC was not disclosed publicly in open hearing. I rejected ASIC's objection, in substance, on the basis that the identity of the informers, which ASIC was seeking to protect from disclosure, was already known within Multiplex and I set out my reasons in a confidential schedule to the published judgment: P Dawson Nominees Pty Ltd v Australian Securities and Investments Commission [2007] FCA 1659 ; (2007) 65 ACSR 239. On 14 November 2007 I ordered that ASIC's application that the documents and transcripts were protected from production for inspection on the ground of PII be dismissed.


case_text: practice or task of undertaking the redaction or masking exercise in respect of documents the subject of an order for discovery or inspection is well accepted. However, there have been different approaches to the manner in which such redaction or masking is to be undertaken and as to the principal basis for the practice. The various approaches are discussed and analysed by Martin CJ in Areva NC (Australia) Pty Ltd v Summit Resources (Australia) Pty Ltd (No 2) [2009] WASC 67.


case_text: Sankey v Whitlam [1978] HCA 43 ; (1978) 142 CLR 1 at 66-67, Stephen J considered whether Loan Council documents in issue might be the subject of redaction or masking. The informant had sought the production of the Loan Council documents for the purpose of establishing that the claimed proposed borrowing of $4 billion was not the subject of Loan Council consent. Stephen J said at 67: "At the conclusion of argument it seemed to me scarcely credible that an inspection of the papers would not reveal the practicability of extracting material in itself quite innocuous, consisting perhaps of no more than the figure of approved Commonwealth borrowings not in fact availed of, which would provide evidence of this negative character. Were production of such material, and of such material only, to be permitted, no public interest would be prejudiced and at the same time the course of justice would not be impeded unnecessarily. Authority for such a course is to be found in Conway v Rimmer . Lord Reid (35), contemplated that part only of a document might properly be withheld, according to it alone privilege from production: Lord Pearce said (36), that the court might call for and itself inspect a document and then, if 'part of a document is innocuous but part is of such a nature that its disclosure would be undesirable, it should seal up the latter part and order discovery of the rest, provided that this will not give a distorted or misleading impression'. A statement of the outcome of the inspection of the Loan Council documents which has in fact been undertaken by this Court appears at the end of the several statements of reasons for judgment in this case." In the result, the High Court undertook an inspection of the Loan Council documents and ordered disclosure of those parts that disclosed only the figure of borrowing approved by the Commonwealth. As I have noted earlier (par [8] above) ASIC accepts that, subject to any appeal against my ruling on 28 April 2009, the following documents cannot be the subject of objection to it on the ground of PII, namely 1, 5, 8, 9, 10, 13, 15, 16, 20, 21, 23, 24, 25, 28, 29, 30, 35 and 36. ASIC made a similar submission in relation to the documents numbered 4, 6, 7, 11, 12, 14, 18, 19, 22, 26, 27, 31 and 32 in a redacted or masked form. I have considered the redaction or masking proposed by ASIC in relation to those documents and have also had regard to the confidential affidavits filed by ASIC which bear upon the redaction and masking of these documents. I have reached the conclusion that the redaction and masking undertaken by ASIC goes beyond the redaction and masking which are necessary in order to ensure that the documents do not have a tendency to disclose the identity of an informer or informers to ASIC. I set out in confidential Appendix A to these reasons the redaction and masking of these documents which I consider should be undertaken. This appendix will only be made available to ASIC's legal advisers and the deponents of its affidavits for the purpose of determining the form of any public non-confidential order which I should make. Adopting and adapting the observation and words of Stephen J in Sankey v Whitlam (supra), the applicants submitted that it "seemed scarcely credible" that an inspection of the forty-one transcripts would not reveal the practicability of extracting material in itself quite innocuous without revealing or tending to reveal the identity of any informer. I have considered whether I should accept that submission and undertake the exercise of seeking to redact and mask parts of the forty-one transcripts so as to leave those parts which are, in general terms, innocuous, on the basis that they do not identify or tend to identify an informer or informers. I have reached the conclusion that I should not undertake this task for the following reasons. The transcripts record the evidence of twenty-three witnesses. The identity, occupation, role, employment title and employer of each of them is disclosed in the transcripts. If I were to redact or mask the transcripts so as to leave the "innocuous" parts so that the names, occupations, roles, employment titles and employers of the various witnesses and the organisation or company which employs them or with which they were involved were still disclosed, the applicants' legal advisers would still be left with material by which a shrewd idea would be conveyed as to the identity of an informer or informers other than Mr Cummins.


case_text: am satisfied that the confidential material relied upon by ASIC discloses the existence and identity of an informer or informers to ASIC other than Mr Cummins. It is implicit in the Full Court's reasoning that the Court reached the same conclusion. It was accepted by all parties that the protection of the identity of an informer or informers to ASIC from disclosure is a legitimate and accepted basis upon which to object to the protection and inspection of documents on the ground of PII: see, for example, Rogers v Home Secretary [1973] AC 388; Cain v Glass (No 2) (1985) 3 NSWLR 230 ; Spargos Mining NL v Standard Chartered Australia Ltd (No 1) (1989) 1 ACSR 311 ; Attorney-General (NSW) v Stuart (1994) 34 NSWLR 667.


case_title: Cain v Glass (No 2) (1985) 3 NSWLR 230


case_title: Rogers v Home Secretary [1973] AC 388


case_title: Spargos Mining NL v Standard Chartered Australia Ltd (No 1) (1989) 1 ACSR 311


case_text: It is plain that the examinable affairs of a company (as defined in s 53 of the Act) may include information as to the capacity of a person who is or may be liable to the company in the event of successful proceedings against that person: see Grosvenor Hill (Qld) Pty Ltd v Barber (1994) 48 FCR 301 at 311-312; Gerah Imports Pty Ltd v Duke Group Ltd (In Liq) (1993) 61 SASR 557; Re BPTC Ltd (In Liq) (1994) 14 ACSR 460. A liquidator may seek to be in a position to determine, in a commercial sense as well as a legal sense, how the liquidator is best able to discharge duties to the company in liquidation.


case_text: It is plain that the examinable affairs of a company (as defined in s 53 of the Act) may include information as to the capacity of a person who is or may be liable to the company in the event of successful proceedings against that person: see Grosvenor Hill (Qld) Pty Ltd v Barber (1994) 48 FCR 301 at 311-312; Gerah Imports Pty Ltd v Duke Group Ltd (In Liq) (1993) 61 SASR 557; Re BPTC Ltd (In Liq) (1994) 14 ACSR 460. A liquidator may seek to be in a position to determine, in a commercial sense as well as a legal sense, how the liquidator is best able to discharge duties to the company in liquidation. 24 I do not accept that the November Order could not, in the exercise of the Court's discretion under s 596D, require the production of documents relating to Mr Viscariello's capacity to meet any judgment. The authorities are plain that that topic falls within the examinable affairs of a corporation. In Grosvenor 48 FCR, the Full Court (Beaumont, Spender and Cooper JJ) at 311 distinguished between the power of the Court to have made such an order on the one hand, and the control of the examining officer in the course of an examination on the other. Consequently, I do not accept the contention that seeking information about Mr Viscariello's capacity to meet any judgment, even at an early stage of the investigation process, was necessarily inappropriate or that the Court did not have power to order production of documents for that purpose. However, I do not regard the scope of the documents required to be produced by the summons as limited to seeking practical information as to the actual worth of any claim that might be made against Mr Viscariello. 25 The width of pars 2-4 of the schedule to the summons is self-evident. They are in the following terms: "2. All documents, which are in your possession or control, including but not limited to letters, memoranda, notes, invoices, statements or schedules, whether in electronic or hardcopy format, relating to or otherwise concerning your personal financial position from December 2001 to the present, including but not limited to: 2.1 taxation returns; 2.2 contracts of employment; 2.3 share certificates; 2.4 bank account statements; 2.5 title deeds; 2.6 mortgages; 2.7 certificates of registration; and 2.8 superannuation returns of you personally, any trust of which you are a beneficiary, trustee or settlor, or of any private company of which you are a shareholder or member. 3. For the purpose of paragraph 2 above, 'personal financial position' includes, but is not limited to, details of: 3.1 income received; 3.2 legal or equitable interests in chattels, including motor vehicles, boats, furniture, jewellery, whitegoods and the like; 3.3 legal or equitable interests in real property; 3.4 cash in bank accounts; 3.5 investment portfolios (including but not limited to share portfolios, managed investment funds, property trusts) in which any interest is held whatsoever; 3.6 liabilities or debts, including but not limited to credit cards, mortgages and loan facilities, including any such facility relating to either real property or chattels. 4. All documents which are in your possession or control, including but not limited to letters, memoranda, notes, invoices or schedules, whether in electronic or hardcopy format, relating to all transfers of any interests in real property or chattels, whether legal or equitable, taking place in the period from December 2001 to the present." 26 Counsel for Mr Lock first sought to justify those paragraphs of the schedule in their terms, but subsequently on instructions proposed that they be somewhat varied so that pars 2.2-2.7 be struck out, and that the documents to be produced be confined to those "referring to or relating to assets or transactions with a value of at least $5000". It was also proposed that par 4 be varied, but not in a way which, in my view, limited its scope. It was proposed to remove the words "whether legal or equitable' and substitute the words "any trust of which [Mr Viscariello] is a beneficiary, trustee or settlor, or of any private company of which [Mr Viscariello] is a shareholder or member."


case_title: Harvey v Burfield (2002) 84 SASR 11

case_text: A similar contention succeeded in Harvey v Burfield (2002) 84 SASR 11. In that case, there had been no order that the liquidators were appointed severally, so Perry J concluded after a review of the authorities that they should be regarded as having been appointed jointly. Consequently, his Honour said at 16, [37]: " ... where two or more liquidators are appointed, the appointment should be regarded as joint and not several, so that absent any statutory provision to the contrary, liquidators must act together and are unable to authorise any one or more of them to act on behalf of all of them." The position, as his Honour noted at 17, [42] may be different if the liquidators are appointed jointly and severally: cf Re Parker (1997) 80 FCR 1. Where liquidators are not appointed severally, s 506(4) would permit two of several (in the sense of "more than two or three, but not many" per Perry J at [53]) liquidators to exercise the powers of the liquidators under the Act. Perry J explained the operation of s 506(4) at 18, [55] in the following terms: "If it is accepted that where more than one liquidator is appointed the liquidators should be regarded as joint liquidators, with the consequence that they must act jointly and not severally in the exercise of any powers which may be conferred upon them, the reason why s 506(4) deals only with the situation where 'several liquidators' are appointed becomes clear. Absent any determination to the contrary made at the time of their appointment, where three or more liquidators are appointed, any power given by the Act may be exercised by any number not less than two ."


case_title: Re BPTC Ltd (In Liq) (1994) 14 ACSR 460

case_text: It is plain that the examinable affairs of a company (as defined in s 53 of the Act) may include information as to the capacity of a person who is or may be liable to the company in the event of successful proceedings against that person: see Grosvenor Hill (Qld) Pty Ltd v Barber (1994) 48 FCR 301 at 311-312; Gerah Imports Pty Ltd v Duke Group Ltd (In Liq) (1993) 61 SASR 557; Re BPTC Ltd (In Liq) (1994) 14 ACSR 460. A liquidator may seek to be in a position to determine, in a commercial sense as well as a legal sense, how the liquidator is best able to discharge duties to the company in liquidation. 22 Mr Viscariello placed reliance upon BPTC 14 ACSR at 463 where McLelland CJ in Eq said: "The power to require an examinee to produce 'books' either by the terms of the examination summons (s 596D(2) and (3)), or by separate direction (s 97(9)), is similarly discretionary. Numerous recent cases have emphasised the importance of the difference between the legal ambit of these powers, and the appropriateness of their exercise in particular cases. The court must ensure that a proper balance is maintained between the legitimate interests of the person seeking the exercise of the court's power on the one hand, and those of the persons to be affected by any such exercise of power, on the other hand." It was argued that the legitimate requirements of the examination at present do not extend to investigating the capacity of Mr Viscariello to meet any judgment. 23 An examination under s 596A, as noted, was an entitlement of the liquidators. There was no discretion to decline to permit it. That, of course, does not preclude the Registrar presiding at the examination from deciding that certain questions are oppressive in all the circumstances and so not allowing them to be put. Most, if not all, the cases in which summonses such as the present have been contentious have involved discretionary examination orders under s 596B. Nevertheless, I think similar considerations arise where there is an examination ordered under s 596A and production ordered under s 596D. There may well be circumstances where examination on a particular topic is oppressive because the balance referred to in BPTC 14 ACSR 460 is not maintained at one stage of an examination and is at an adjourned stage of the examination, or is oppressive at one examination but not at any subsequent examination. Counsel for Mr Viscariello acknowledged that Mr Lock and Mr Sheahan might secure a further order for the examination of Mr Viscariello under s 596A at a later date and for the production of documents relating to his personal financial position to assess his capacity to meet any judgment.


case_title: Re Parker (1997) 80 FCR 1


case_title: A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478

case_text: Pakula Tackle website has the hall marks of a trade catalogue. So too does that of Zacatak. A trade catalogue can constitute an original literary work; University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608. In A One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 at 487, Drummond J stated: Copyright subsists in an "original literary work": s 32 of the Act. The expression "literary work" is defined in s 10 to include: "a table, or compilation, expressed in words, figures or symbols ... ". Trade catalogues are capable of constituting original literary works: University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608; Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955) 72 RPC 89 at 95. The cases repeatedly say that whether a compilation has sufficient originality to attract copyright protection depends on the degree of skill, judgment or labour which has been involved in producing it. See Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; [1964] 1 All ER 465; Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637 at 650-651; Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396 at 398-399; Real Estate Institute of New South Wales v Wood (1923) 23 SR (NSW) 349 at 352. So far as compilations that consist entirely of existing material, that is, material not created by the compiler, are concerned, Ladbroke (Football) Ltd is authority that originality may be found, and a claim of copyright may therefore subsist, by virtue of selection alone. See at 277-278; 469-470, per Lord Reid, at 286-287; 476-477 per Lord Hodson, at 289-290; 478-479 per Lord Devlin and at 292, 293; 480, 481 per Lord Pearce. In Collis v Cater, Stoffell & Fortt Ltd (1898) 78 LT 613, a decision that has "never been doubted" ( Ladbroke (Football) Ltd at 290; 479) copyright was held to exist in a chemist's catalogue "although it contained `nothing whatever but a simple list' of drugs, etc with names and prices which the plaintiff kept in stock or could obtain to order": Ladbroke (Football) Ltd at 278; 470. That copyright can exist in such a mundane compilation of information readily available to all shows why the skill, judgment and labour in selecting what to include in a trade catalogue will be as relevant as the often very limited skill, judgment and labour involved in putting that selection into written form, in determining whether the compilation has sufficient "originality" to attract copyright. In considering whether a compilation that wholly consists of or that includes existing material is itself an original work, the question is whether the compilation, looked at as an entity, is original: it is not proper to dissect the work into its parts, and by determining that the individual parts lack originality, to deny originality to the whole work. This issue is dealt with fully in Ladbroke (Football) Ltd . The reason is that by s 32 of the Act, "copyright is a statutory right which ... would appear to subsist, if at all, in the literary or other work as one entity", per Lord Hodson at 285; 475. See also Ladbroke (Football) Ltd at 276-277, 290 and 291; 468-469 and 478-479. Copyright in a work will be infringed by the unauthorised reproduction of a substantial part of the work: see ss 36(1) and 14 (1) of the Act. In determining whether that has occurred, it is sometimes said that the question is whether the part taken could by itself be the subject of copyright. But as Lord Reid said at 277; 469, when both the questions whether copyright subsists in a work and, if so, whether it has been infringed are in issue: " ... that is only a shortcut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is `original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial." Later in that same case, Drummond J observed (at 490): Ladbroke (Football) Ltd, Reddwood Music and Eisinger proceed on the basis that a composite work made up of pirated material and original material produced by the compiler can itself be an original work possessing copyright, even though it may also infringe the copyright in the pirated material included in it. In my opinion, a work can be an original work in which copyright will subsist, even though it is itself an infringement of the copyright in an earlier work because it is, in part, a copy of a substantial part of that copyright work. This will be the position provided the later work includes qualitatively significant changes to the copies material.


case_text: not raised in submissions by Pakula Tackle, I accept that s 196 of the Copyright Act does not prevent the creation of an equitable interest in copyright pursuant to an oral agreement for value to assign copyright: Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 6 FCR 277. No such agreement is pleaded and evidenced in relation to Pakula Tackle.


case_title: Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 65 IPR 44 ; [2008] FCA 605

case_text: was relied upon behalf of Zacatak so as to question whether Pakula Tackle had even established any standing to bring the alleged copyright infringement claim. For its part, Pakula Tackle sought comfort from a more recent decision, Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 65 IPR 44. In that case, in the course of an interlocutory judgment in respect of an application for the dismissal of a proceeding or alternatively the striking out of a statement of claim, Goldburg J (at page 56, para 59) stated: According to para 24 of the statement of claim, the deed of assignment purports to assign "all part, present and future rights to sue for infringement of the copyright and all other intellectual property rights in the said sample patterns and footwear patterns used to produce footwear under licence from the applicant". This assignment of rights to sue is an assignment not of a bare right of action but the assignment of a right which is incidental to the assignment of intellectual property rights: see Taypar at FCR 491-2; IPR 153. The distinction between an assignment of copyright simpliciter and an assignment of copyright coupled with an assignment of rights to sue for infringement, whether past, present or future, does not appear to have been the subject of consideration in Dixon v Masterton .


case_text: remind myself too that a contravention of s 52 of the Trade Practices Act is not established by the mere manufacture and distribution of a product which, though properly labelled with the distinguishing name and mark of the manufacturer, bears great resemblance and is even intended to bare such resemblance to the product of another manufacturer which has and continues to be marketed and advertised: Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1981) 149 CLR 191. Perhaps out of an abundance of caution, Zacatak by its Counsel offered the following undertaking: UNDERTAKING In respect of the first page of the website, www.zacataklures.com.au (attached hereto) the Respondents shall within 30 days hereof: cause the words 'previously Pakula Lures' in the first paragraph to be deleted; cause the words 'which we were manufacturing for ten years prior' in the third paragraph to be deleted; cause the words 'now' and 'more so than before' in the sixth paragraph to be deleted; cause the words 'under the old banner' in the tenth paragraph to be deleted. The Respondents undertake, until the trial of this action or earlier order, to keep full and proper accounts of and relating to the sale of all game fishing lures by the First Respondent. All in all, having regard to its pleaded case and the evidence relied upon in support thereof on the application, there are flaws evident in Pakula Tackle's ability even to prosecute its trade mark and copyright infringement claims. This aside, most of the trade mark infringement claims do not, in my opinion, raise a serious question to be tried. Assuming that questions of standing could be resolved, Pakula Tackle has raised a serious question to be tried in respect of a copyright infringement claim. The pleaded claims for relief relying upon the Trade Practices Act and the Fair Trading Act are not strong. Especially that is so in relation to claims again Mr Mario Zacaropoulos and his wife personally.