case_text: The Yawuru claimants did not contest the extinguishment claimed in respect of the areas on which the gaol and the police station have been constructed. As I later explain, it is common ground that extinguishment has occurred in any event in respect of those areas because the gaol and police station are public works. The contest relates to the vacant land in the reserves that has not yet been used for the purposes of a gaol or police station. Although a similar issue was considered in Daniel v State of Western Australia [2003] FCA 666 (' Daniel ') at [688] and [698], the question of whether the assertion of the right to build a gaol or a prison on part of the reserved land extinguished inconsistent native title rights over the whole of the reserved land was not considered in Daniel or Ward HC . 128 Although it was accepted by the parties that the resolution of the dispute involved matters of fact and degree, the State's submissions set out a number of useful examples and guidelines: 'In Hayes v Northern Territory [1999] FCA 1248 ; (1999) 97 FCR 32 ( Hayes ) at page 109 (xiv) Justice Olney found that "it may well be inferred that 'recreation equipment' would be both a structure and a fixture." Again, at page 102 (viii), his Honour stated that "... there is no evidence of any building or structure in the nature of a fixture other than possibly a fence ..." Clearly Justice Olney regarded recreation equipment and fences as examples of structures that could be considered as public works for the purposes of the NTA . This accords with the ordinary meaning of structure being simply something "built or constructed". At page 108 of Hayes his Honour said: "Whether or not a particular structure is to be regarded as a fixture will depend upon the context in which that question has to be determined but the general principles are well established and do not need to be recited here." The general principles can be summarised as follows: 217.1 The common law previously looked to the degree of annexation of an item; if substantially affixed, the item was a fixture, otherwise, it remained a chattel. 217.2 The importance of annexation has, however, declined over time, and the focus now is on the intention with which the item was put in place; if for better use or enjoyment of the land, the item is a fixture, for better use or enjoyment of the item, it is likely to be a chattel. There are two prima facie presumptions applied: 218.1 first, if an item is affixed to the land, it is presumed to be a fixture, and the burden of proof lies on those who assert it is not; 218.2 second, if an item rests by its own weight, it is presumed not to be a fixture, and the burden of proof rests on those asserting that it is. The presumptions may be rebutted by evidence to the contrary; for example, stone blocks resting by their own weight and placed to form a dry stone wall would be intended for better enjoyment of the land, and hence a fixture, whereas such blocks stacked in a builders yard would not. A concrete rail head or culvert for a drain, on the principles set out above, is more likely to have been put in place to enhance enjoyment of the land, hence would be a fixture, regardless of whether it is affixed or resting of its own weight. Likewise, it cannot be said as a matter of generality that playground equipment or pine bollard fencing are not fixtures, as it will depend upon the intention of the person or persons who bring it onto the land. In Daniel v State of Western Australia [2003] FCA 666 at [1047] Nicholson J found that water tanks and sewerage and waste water treatment plants were public work previous exclusive possession acts. In Sampi at [1126] and [1148] his Honour Justice French found a radio site constructed by Telstra to be a public work previous exclusive possession act. As to major earthworks, the Explanatory Memorandum to the Native Title Bill 1993 gave as examples: "... dams and weirs whose construction permanently and significantly disturbs or changes the land." Excluded from the examples given were digging wells, cultivating land for crops or establishing a walking trail in a National Park. ... In any event, as to the extent of the public works in each area, the First Respondent relies upon the decision of his Honour Justice Sundberg in Neowarra v State of Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 ( Neowarra ) at [654] to [660] to the effect that: "Section 251D [NTA] is specifically directed to public works, and is plainly intended to operate in conjunction with ss 23B(7) and 23C(2). There is no reason to deny its beneficial function of ensuring that a public work has the benefit of adjacent land that is necessary for or incidental to the operation of the work, especially in relation to access to landlocked works."'


case_outcome: applied

case_text: There remains the question of whether, by constructing a gaol and a police station on the reserves, the Crown 'created in others, or asserted, rights in relation to the land that were inconsistent with native title rights and interests over the land': see [214] in Ward HC . In my view, the exercise of the right to construct a gaol or police station on part only of the reserved land is not necessarily inconsistent with native title rights and interests in the remaining part of the reserved land if that part of the reserve is not reasonably necessary for, or incidental to, the operation or enjoyment of the gaol or police station: cf De Rose v South Australia (No 2) [2005] FCAFC 110 ; (2005) 145 FCR 290 (' De Rose No 2 ') at 332 [152] and 335 [166]. In De Rose No 2 , that formulation was applied in respect of the extinguishment that occurred upon the exercise by the lessee of the lessee's right under a pastoral lease to construct improvements. In the present context, the exercise of the right to construct an improvement on a reserve in pursuance of the reserved purpose is analogous to the exercise of the right to construct an improvement under a pastoral lease. Accordingly, it is appropriate to apply the same criterion. As that criterion is similar to, but not identical with, the criterion that is to be applied to the gaol and police station as public works under s 251D of the NTA , it is appropriate to deal with both criteria in the context of the extinguishment that resulted from the construction of the gaol and the police station as public works. 59 In summary, construction of the gaol and police station on part of the reserves extinguished native title rights and interests in the areas on which the gaol and police station were constructed and on areas adjacent thereto that were reasonably necessary for or incidental to the operation or enjoyment of the gaol or police station. However, the construction did not necessarily extinguish native title rights and interests in respect of the remaining areas of the respective reserves. 60 It was common ground that, as a result of the decision in Ward HC , the grant of valid pastoral or mining leases was inconsistent with, and therefore extinguished, any native title right or interest to exclusive possession of, or to control access to or use of, the areas the subject of the leases. It was also common ground that, as a result of the decision of the Full Court in De Rose No 2 at 329-335 [139]-[165], the exercise by the pastoral lessees of their rights under the leases to construct improvements on the land leased was inconsistent with the continuation of any inconsistent native title rights or interests insofar as they related to the land on which the improvements were constructed and any adjacent land the use of which was reasonably necessary for, or incidental to, the operation or enjoyment of the improvements.


case_text: The issue on which the Yawuru claimants and the State differed concerned whether the native title right and interest 'to live' on the leased land was inconsistent with the rights conferred by the pastoral or mining leases. The State accepted that I was bound by the decision of the Full Court in Northern Territory of Australia v Alyawarr, Kaytetye, Warumungu, Wakaya Native Title Claim Group [2005] FCAFC 135 ; (2005) 145 FCR 442 (' Alyawarr ') at 480-481 [130]-[132] to find that the native title right to live on a pastoral lease is not inconsistent with the rights of the lessee under the lease. In Alyawarr , the Full Court stated at 481 [131]-[133]: '131. The pastoral leases which have affected the claim area in the present case are historical grants. The relevant extinguishment of native title rights and interests derives only from inconsistency with the rights historically conferred by those leases. No question of prospective activity under a subsisting pastoral lease arises. Consistently with what was said by Nicholson J in Daniel (No 2) and Sundberg J in Neowarra , the right to 'live' on the land can be interpreted as a right to live permanently on the land without any conflict with pastoral leaseholders' rights. That right does not necessarily involve permanent settlement at a particular place. The issue therefore reduces to the question whether a native title right of permanent settlement is inconsistent with a pastoral leaseholder's rights. There is no logical reason why it must be so. Just as the right to live permanently on the land does not necessarily give rise to inconsistency with the pastoral leaseholder's rights, neither does the right to erect a permanent structure. The existence of such a structure does not preclude a pastoralist's right to require its removal in the event that it conflicts with a proposed exercise by the pastoralist of a right under the lease. It is not inevitable that such a conflict will arise. 132. The inconsistency posited by the Northern Territory in respect of the grant of historical pastoral leases long expired, is based on a theoretical conflict which would not inevitably have occurred. No inconsistency of rights giving rise to extinguishment of the native title right to live on the land and to erect permanent structures thereon is demonstrated. The concept of "permanency" referred to here is, in any event, a relative one. 133. The right defined in par 3(b) to live on the land, to camp, to erect shelters and other structures, and to travel over and visit any part of the land and waters, should stand.' 62 Accordingly, subject to the outcome of any appeal in Alyawarr , the State accepts that the determination proposed by the Yawuru claimants, which includes a native title right to live in the areas covered by pastoral leases, should stand. 65 The passages relied upon by the parties must now be considered in the light of the Full Court decisions in Alyawarr and De Rose No 2 . As was pointed out in Alyawarr , a right to live upon the land does not necessarily involve permanent settlement at a particular place. Thus, even if a permanent structure was erected in pursuance of the right to live upon the land, that 'does not preclude a pastoralist's right to require its removal in the event that it conflicts with a proposed exercise by the pastoralist of a right under the lease': see Alyawarr at [131]. Their Honours added that it 'is not inevitable that such a conflict will arise'. 66 The same reasoning applies to the exercise of the extensive range of rights conferred under a mining lease. A native title right to live on the land leased is not necessarily inconsistent with any of the rights conferred under a mining lease. In the event there is a necessary inconsistency, the lessee's rights will prevail. As is clear from the reasoning in De Rose No 2 , if the right under the lease was, for example, to erect improvements necessary for mining operations, the exercise of that right will extinguish any inconsistent native title rights (including the right to live on the land) in respect of the area on which the improvements have been constructed and any adjacent area necessary for their enjoyment. However, it is not suggested that there has been any exercise of rights that are inconsistent with a native title right to live on the areas the subject of the mining leases that are within the Yawuru claim area. 67 Accordingly, I do not accept the State's contention that the rights conferred by the grant of the mining leases under the MA are necessarily inconsistent with, and therefore extinguish, a native title right to live on the leased land. However, the native title right to live on the leased land is qualitatively different from a native title right to live on land in respect of which the holders of the native title right have a right of exclusive possession because, in the latter case, the right of the holder is not subject to the risk of subsequent extinguishment. 73 The more difficult question arising under ss 47A and 47B concerns the requirement that there be occupation of the relevant area. In Alyawarr at 496 ([193]-[195]), the Full Court discussed several cases which had considered that requirement: '193. The requirement of occupation in s 47A of the NT Act, which is the same as that in s 47B, was considered by Beaumont and von Doussa JJ in Ward FC 1 . Their Honours considered that a broad view should be taken of the word (at [449]): "We think this requirement is met where a claimant member is one of many people who share occupancy, and that the land may be relevantly occupied even though the person is rarely present on the lands so long as the person makes use of the land for the reserved purpose as and when that person wishes to do so." 194. In Rubibi Community v Western Australia [2001] FCA 607 ; (2001) 112 FCR 409, Merkel J found the following activities to evidence occupation of an area of land for the purposes of s 47A(1)(c) of the NT Act: . continuing supervisory and protective activities of the senior Yawuru men in relation to the claim area; . the holding of traditional ceremonies on the claim area as and when the senior lawmen authorised those activities; . continued storage of sacred objects on the claim area; . occupancy of the Leregon structures constructed on the claim area by members of the Lee family who are acknowledged to be members of the Rubibi claim group. In Passi v Queensland [2001] FCA 697 Black CJ, on a consent determination, said that although the islands the subject of that determination were not permanently inhabited the evidence showed that the Meriam people used the land as and when they wished. Its use was consistent with its reserved purpose. His Honour was satisfied that the people occupied the relevant islands. In Daniel at [973] Nicholson J also applied what Beaumont and von Doussa JJ had said in Ward FC 1 . He equated "connection" and "occupation". 195. As Toohey J said in Mabo (No 2) at 188 presence on land does not have to be possession at law to amount to occupancy. He referred to United States and Canadian cases which established occupancy by reference to the demands of the land and society in question "in accordance with the way of life, habits, customs and usages of the [indigenous people] who are its users and occupiers" Sac and Fox Tribe of Indians of Oklahoma v United States (1967) 383 F 2d 991 at 998. His Honour observed in particular that "... a nomadic lifestyle is not inconsistent with occupancy."' 74 In reliance upon the cases referred to by the Full Court, the Yawuru claimants adduced extensive evidence of connection with, visits to and use of, numerous urban and bush areas within the Yawuru claim area. The evidence was relied upon by the Yawuru claimants to contend that the traditional connection with, and use of, the areas in question over a period of time by certain members of the claimant group constituted occupation of those areas at the relevant date. The Yawuru claimants even argued that they did not have to establish use because the entitlement I had found to exclusive possession of the Yawuru claim area (which was subject to the findings on extinguishment) was sufficient to constitute occupation. The argument is erroneous as it fails to distinguish between the criteria under s 223(1) of the NTA that must be satisfied in order to justify a finding of a native title right to exclusive occupation and the discrete requirement in ss 47A and 47B for occupation as a matter of fact. 75 The State contended that the difficulty with the broad brush approach adopted by the Yawuru claimants is that it equates visits to and use of an area from time to time with occupation of that area. While use and visitation may be sufficient in some instances, each case will depend on its own facts. 77 This approach has been accepted and followed in a number of other cases (see, for example, Daniel at [938], Alyawar at 496 [193] and Neowarra at [682]).


case_outcome: cited

case_title: Daniel v State of Western Australia [2003] FCA 1425

case_text: The Yawuru claimants disputed the State's contentions. They relied upon a later decision of RD Nicholson J in Daniel v State of Western Australia ([2003] FCA 1425 [23]-[25]) to contend that a mining lease is not relevantly distinguishable from a pastoral lease. Under both leases, so it was argued, a native title right to live on the land the subject of the lease is not inconsistent with the rights of the lessees under the relevant leases although the Yawuru claimants accepted that, upon the exercise of some of the lessee's rights, inconsistent native title rights and interests may be extinguished. 80 RD Nicholson J adopted this approach in Daniel at [973] . Although it is not necessary to establish frequent use of the land, it is clear that frequency of the use of the land can be a relevant factor in determining whether or not there is occupation of that land. 82 In Ward FC at 437 [449], use of the land for the reserved purpose was regarded as an indicator of occupation. In Daniel (at [973]), RD Nicholson J also regarded it as significant that the claimants made use of the land 'for its purpose as and when [they wished] to do so'. The references in the cases to the 'purpose' of the use, at least in relation to s 47A, indicate that a traditional use of the area, or a use that is consistent with the purpose of the reservation, being for the benefit of Aboriginal peoples, may be more likely to result in a finding of occupation of 'the area'. The reason for that was explained by Olney J in Hayes in the passage referred to above.


case_text: In Rubibi Community v Western Australia (No 4) [2004] FCA 1019 ; (2004) 138 FCR 536, I determined that the date 'when the application is made' is the date of the filing in the Court of the application for native title in respect of 'the area' referred to in ss 47A(1)(c) and 47B(1)(c). Plainly, 'the area' referred to in those sub-sections must be an area within the area the subject of a claimant application. However, as was explained by Sundberg J in Neowarra at [686] and [721], the area need not be the whole of the area claimed as that could lead to clearly unintended consequences in relation to the operation of ss 47A and 47B. Rather, the relevant area is the particular area with which each of the sections is concerned.


case_text: Although occupation is a question of fact involving matters of fact and degree, some general principles can be discerned from the cases. In Western Australia v Ward [2000] FCA 191 ; (2000) 99 FCR 316 (' Ward FC '), Beaumont and von Doussa JJ considered the meaning of the term 'occupy' in ss 47A and 47B and stated (at 437 [449]): 'A broad view should be taken of the word "occupy" in the requirement in s 47A(1)(c) that one or more members of the native title claim group occupy the area.'


case_text: In Hayes v Northern Territory [1999] FCA 1248 ; (1999) 97 FCR 32 (' Hayes ') at 144 ([162]), Olney J pointed out that, given the context in which s 47B was enacted (namely as part of Parliament's response to the decision in Wik Peoples v Queensland [1996] HCA 40 ; (1996) 187 CLR 1), the requirement for occupation of the land should be understood in the sense that the indigenous people had traditionally occupied the land, rather than in the sense of occupation according to common law principles. His Honour then stated at 144 [162] : 'The use of traditional country by members of the relevant claimant group which is neither random nor co-incidental but in accordance with the way of life, habits, customs and usages of the group is in the context of the legislation sufficient to indicate occupation of the land.' A similar approach was adopted by French J in Sampi at [1136]. 82 In Ward FC at 437 [449], use of the land for the reserved purpose was regarded as an indicator of occupation. In Daniel (at [973]), RD Nicholson J also regarded it as significant that the claimants made use of the land 'for its purpose as and when [they wished] to do so'. The references in the cases to the 'purpose' of the use, at least in relation to s 47A, indicate that a traditional use of the area, or a use that is consistent with the purpose of the reservation, being for the benefit of Aboriginal peoples, may be more likely to result in a finding of occupation of 'the area'. The reason for that was explained by Olney J in Hayes in the passage referred to above. 84 The State argued that the kind of occupation contemplated by ss 47A and 47B was traditional occupation, in the sense of use of the land in accordance with traditional laws and customs, rather than random or co-incidental use. Whilst random or co-incidental use may be unlikely to constitute occupation, and traditional use may be more likely to constitute occupation, there is no proper basis for reading a requirement of traditional occupation into ss 47A and 47B. However, traditional use was successfully relied upon to establish occupation in Hayes and Daniel . Where the use is not traditional, the question remains whether the evidence about connection, use, habitation or visitation is sufficient to warrant a conclusion, as a matter of fact, that the requisite occupation has been established. 85 Finally, it is not necessary for the occupation of the land to be exclusive or confined in fact to persons who are members of the claimant group. In Ward FC (at 437 [449]), Beaumont and von Doussa JJ noted that it was sufficient for the claim group member to be 'one of many people who share occupancy' and that occupation by non-claimant persons does not preclude the claimants from occupying the area. However, in my view, if the evidence establishes a similar non-traditional use of the relevant area by the general public, the fact that some members of the public using the area are claim group members is unlikely to be sufficient to justify a finding of occupation of the area by one or more claim group members. The Shire of Broome contended that, where the physical presence of a claim group member in an urban area is for a purpose and of a character that is indistinguishable from the physical presence of a member of the public, the presence should not be considered to be 'occupation' for the purposes of ss 47A or 47B. Although there is merit in the Shire's submission, I would not go so far as to accept it as a criterion for refusing to find the requisite occupation. However, general public use of the relevant area is a relevant, if not a determinative, factor. Ultimately, the question is whether the requisite occupation by a claim group member has been established. 86 The Yawuru claimants argued that their traditional connection with the Yawuru claim area, or with specific areas, distinguishes the use of claim areas by claim group members from use by the general public. While that question is a matter for evidence, I do not accept that the connection contended for can be assumed in respect of use of public areas where the use of those areas by claim group members is not a use for a traditional activity and is not distinguishable from use of the areas by other members of the public. 128 Although it was accepted by the parties that the resolution of the dispute involved matters of fact and degree, the State's submissions set out a number of useful examples and guidelines: 'In Hayes v Northern Territory [1999] FCA 1248 ; (1999) 97 FCR 32 ( Hayes ) at page 109 (xiv) Justice Olney found that "it may well be inferred that 'recreation equipment' would be both a structure and a fixture." Again, at page 102 (viii), his Honour stated that "... there is no evidence of any building or structure in the nature of a fixture other than possibly a fence ..." Clearly Justice Olney regarded recreation equipment and fences as examples of structures that could be considered as public works for the purposes of the NTA . This accords with the ordinary meaning of structure being simply something "built or constructed". At page 108 of Hayes his Honour said: "Whether or not a particular structure is to be regarded as a fixture will depend upon the context in which that question has to be determined but the general principles are well established and do not need to be recited here." The general principles can be summarised as follows: 217.1 The common law previously looked to the degree of annexation of an item; if substantially affixed, the item was a fixture, otherwise, it remained a chattel. 217.2 The importance of annexation has, however, declined over time, and the focus now is on the intention with which the item was put in place; if for better use or enjoyment of the land, the item is a fixture, for better use or enjoyment of the item, it is likely to be a chattel. There are two prima facie presumptions applied: 218.1 first, if an item is affixed to the land, it is presumed to be a fixture, and the burden of proof lies on those who assert it is not; 218.2 second, if an item rests by its own weight, it is presumed not to be a fixture, and the burden of proof rests on those asserting that it is. The presumptions may be rebutted by evidence to the contrary; for example, stone blocks resting by their own weight and placed to form a dry stone wall would be intended for better enjoyment of the land, and hence a fixture, whereas such blocks stacked in a builders yard would not. A concrete rail head or culvert for a drain, on the principles set out above, is more likely to have been put in place to enhance enjoyment of the land, hence would be a fixture, regardless of whether it is affixed or resting of its own weight. Likewise, it cannot be said as a matter of generality that playground equipment or pine bollard fencing are not fixtures, as it will depend upon the intention of the person or persons who bring it onto the land. In Daniel v State of Western Australia [2003] FCA 666 at [1047] Nicholson J found that water tanks and sewerage and waste water treatment plants were public work previous exclusive possession acts. In Sampi at [1126] and [1148] his Honour Justice French found a radio site constructed by Telstra to be a public work previous exclusive possession act. As to major earthworks, the Explanatory Memorandum to the Native Title Bill 1993 gave as examples: "... dams and weirs whose construction permanently and significantly disturbs or changes the land." Excluded from the examples given were digging wells, cultivating land for crops or establishing a walking trail in a National Park. ... In any event, as to the extent of the public works in each area, the First Respondent relies upon the decision of his Honour Justice Sundberg in Neowarra v State of Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 ( Neowarra ) at [654] to [660] to the effect that: "Section 251D [NTA] is specifically directed to public works, and is plainly intended to operate in conjunction with ss 23B(7) and 23C(2). There is no reason to deny its beneficial function of ensuring that a public work has the benefit of adjacent land that is necessary for or incidental to the operation of the work, especially in relation to access to landlocked works."'


case_text: I am not satisfied that his Honour was clearly wrong and, indeed, I am in agreement with his Honour's approach (cf Risk v Northern Territory of Australia [2006] FCA 404 at [881] ). The rules of the associations are not relevantly distinguishable from the rules considered by Sundberg J. It must follow that the property of each of the three associations is held by them expressly for the benefit of Aboriginal peoples.


case_text: The State contended, correctly in my view, that exclusive native title was not recognised in these areas under s 223(c) of the NTA . As a consequence, ss 47A and 47B cannot be relied upon to claim exclusive possession because the sections are concerned with past extinguishment, rather than non-recognition: see Gumana v Northern Territory of Australia [2005] FCA 50 at [263] . 124 The State contended that past extinguishment by the exercise of the right to erect an improvement on a leasehold to which s 47A or s 47B applies, is not to be disregarded notwithstanding that the sections require the grant of the lease or prior interest to be disregarded. In my view, the contention is not correct because the past extinguishment only occurred by the grant of the lease or prior interest which conferred the right to construct the improvement. As is clear from De Rose No 2 at [157], the extinguishment arises from the grant of the lease and operates when the improvement is constructed. It follows that, if the grant of the lease or other prior interest is to be disregarded under s 47A or s 47B, there can be no extinguishing effect by the exercise of the right to construct the improvement. 125 Public works that are category A past acts (s 229(4)) or previous exclusive possession acts (s 23B(7)) extinguish native title. A public work is defined in s 253 of the NTA to mean: '(a) any of the following that is constructed or established by or on behalf of the Crown, or a local government body or other statutory authority of the Crown, in any of its capacities: (i) a building, or other structure (including a memorial), that is a fixture; or (ii) a road, railway or bridge; or (iia) where the expression is used in or for the purposes of a Division 2 or 2A of Part 2 a stock-route; or (iii) a well, or bore, for obtaining water; or (iv) any major earthworks; or (b) a building that is constructed with the authority of the Crown, other than on a lease.'


case_text: If settlements do not occur and native title claims have to be resolved in an adversarial proceeding, there remains the risk for the claimant community that native title may prove to be yet another of the prospects held out to indigenous communities where the realisable gain falls short of that originally expected as a result of the decision in Mabo v Queensland (No 2) [1992] HCA 23 ; (1992) 175 CLR 1. However, if compromises are able to be achieved, the cause of reconciliation between Australia's past and present will be greatly advanced and the economic, social and educational benefits available to all Australians may be better able to be accessed by members of claimant communities. 169 There remains the question of how the present native title gridlock may be resolved by mediation. Plainly, some changes to the present system of mediation and resolution are necessary. The areas of possible change include: (a) amending s 87 of the NTA to: (i) make it quite clear that the requirement of agreement of parties to mediated outcome only applies to the parties whose interests are affected by the outcome (s 87 of the NTA ); (ii) empower the Court to give effect to a mediated outcome of part of the claim when that is agreed to by all parties whose interests are affected by that outcome, leaving it to the remaining parties to contest the balance of the proceeding only insofar as their interests are affected by the outstanding and unresolved part of the claim; (b) providing for formal and confidential offers of settlement to be made by parties in the course of mediation the offers may be presented to the trial court after a final determination has been made so that adverse costs consequences may follow for the parties for whom the final outcome was not greater than that offered in the mediation; (c) greater emphasis being placed in mediation on case management and the narrowing of contested issues thereby reducing costs and enhancing the efficiency of the trial process; (d) reviewing the guidelines for Commonwealth funding of NTA claims to include as one of the guidelines whether there has been a recommendation of a mediator that the funded party has made a bona fide and reasonable endeavour to resolve the dispute; (e) each state party developing a mediated settlement model that may be used generally by the state party for mediated outcomes; and (f) adopting a practice in mediation and in the Court of determining issues that have not been resolved by mediation at an early hearing such a practice will require the parties to finally decide to either settle or contest the native title claim. 170 Hopefully, if notice is taken of the above observations, it might diminish the risk of, and the harm that can flow from, a final finding at an adversarial hearing that the 'tide of history' has washed away recognition of a community's native title under Australian law. It might also greatly advance the reconciliation between Australia's past and present. I certify that the preceding one hundred and seventy (170) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Merkel. Associate: Dated: 28 April 2006 Counsel for the Applicants: Mr R Blowes SC with Mr A Frith Solicitor for the Applicants: Kimberley Land Council Counsel for the State of Western Australia: Ms R Webb QC with Mr S Begg Solicitors for the State of Western Australia: Crown Solicitor for the State of Western Australia Counsel for the Commonwealth of Australia: Mr A Rorrison Solicitors for the Commonwealth of Australia: Australian Government Solicitors Counsel for the Western Australian Fishing Industry Council (Inc): Mr M McKenna Solicitors for the Western Australian Fishing Industry Council (Inc): Hunt and Humphry Appearing as a representative of the Walman Yawuru Respondents: Ms R Hanigan Solicitor for Shire of Broome: Mr PL Wittkuhn of McLeods Dates of further hearing: 4, 5, 6, 7 and 27 April 2006 Date of these Reasons: 28 April 2006 SCHEDULE APPLICANTS: CORPUS, Michael DJIAGWEEN, Cecilia DJIAGWEEN, Francis DODSON, Patrick EDGAR, Elsie EDGAR, Felix HUNTER, Richard ROE, Joseph ROE, Joseph 'Nipper' ROE, Teresa SADDLER, Thelma SEBASTIAN, Frank RESPONDENTS: 01 Government Interests State of Western Australia Aboriginal Affairs Department Aboriginal Lands Trust Commissioner of Main Roads Electricity Corporation Minister for Aboriginal Affairs Minister for Energy Minister for Fisheries Minister for Lands Minister for Mines Minister for Transport Minister for Water Resources State of Western Australia 02 Government Interests Commonwealth of Australia Airservices Australia 02A Government Interests Commonwealth of Australia Commonwealth of Australia 02A Government Interests Local Government Shire of Broome 04 Indigenous Interests Bilgungurr Aboriginal Corporation Kimberley Land Council MATSUMOTO, Peter ROBINSON, Margaret Mary ROE, Edward Leonard 05 Mining Interests CONNOLLY, Peter Scott COUNTY, Brian Stanley Maple Oil Exploration NL (Administrators Appointed) (Receivers and Managers Appointed) 06 Pastoral Interests CROOK, Reginald D Thangoo Pty Ltd (Thangoo Station) 07 Telecommunications Industry Interests Telstra Corporation Limited 08 Tourism Interests Broome Crocodile Park Cable Beach Jet Boat Charter Dampier Creek Boat Tours Kimberley Birdwatching The Kimberley Connection Pty Ltd 09 Fishing Interests Australian Ocean Exporters Pty Ltd BLATCHFORD, Kevin Broometime Charters CANNEY, Pam FRASER, Alan John IGNOTI, Les IGNOTI, Peter IGNOTI, Russell Kimberley Fish and Ice Supplies Lenden Nominees Pty Ltd Leveque Wilderness Fishing Charters LEW, Ian LITTLETON, Kyran R MOORE, Gary NEWTON, Ross Pearl Coast Charters Pearl Sea Coastal Cruises WEIR, Neville 09A Fishing Interests Western Australian Fishing Industry Council (Inc) 10 Pearling Interests Australian Sea Pearls Pty Ltd Broome Pearls Pty Ltd Cygnet Bay Pearls Paspaley Pearling Company Pty Ltd Pearls Pty Ltd Roebuck Pearl Producers Pty Ltd Willie Creek Pearl Farm and Broome Coachlines 11 Petroleum Interests E-Com Multi Limited 12 Non Party (For Information Only) National Native Title Tribunal AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/459.html


case_text: It is common ground between the plaintiffs on the one hand, and the defendants for whom Mr Thomson appears on the other hand, that the test which I should apply in determining the present application is the ordinary test applicable when the Court is considering the grant of an interlocutory injunction in aid of private rights. This test is captured in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at [8] to [21] (pp 216 220) (per Gleeson CJ); at [59] to [61] (pp 231 232) (per Gaudron J); and at [86] to [92] (pp 239 242); at [98] to [100] (pp 244 246); and at [105] (p 248) (per Gummow and Hayne JJ). Gleeson CJ (as he then was) also specifically cited with approval Spry, Principles of Equitable Remedies , 5 th ed (1997) pp 446 56.


case_text: The plaintiffs submitted that: (a) It is well established that the use of company funds to defend oppression proceedings may, in certain circumstances, constitute oppression (see Re DG Brims and Sons Pty Ltd (1995) 16 ACSR 559 at 591 592; Fexuto Pty Ltd v Bosnjak Holdings Pty Ltd [1998] NSWSC 413 ; (1998) 28 ACSR 688 at 733; and Cassegrain v CTK Engineering Pty Ltd [2005] NSWSC 495 ; (2005) 54 ACSR 249 at [90] to [99] (pp 267 269); and Food Improvers Pty Ltd v BGR Corp Pty Ltd (No 3) [2007] FCA 97 at [250] to [258]). (b) Where the issue has been raised prior to the final determination and there is a significant risk of the company's resources being expended in the defence of the interests of the majority, there is no reason why the Court would not step in at the interlocutory stage and make appropriate orders. In support of this submission, Counsel for the plaintiffs relied upon certain observations made by Brereton J in Grace v Grace (2007) 25 ACLC 141 ; [2007] NSWSC 6 at [52] and at [61] (second dot point). (c) The normal test for the grant of an interlocutory injunction applies in the circumstances of the present case; (d) The plaintiffs have established a strong case that there is a serious question to be tried; and (e) The balance of convenience favours the grant of an injunction because " ... there is a decidedly uneven playing field ... " in the sense that the plaintiffs are compelled to fund the litigation in circumstances where they have no assets of any significance whereas their protagonists, the Buskens, have access to company funds.


case_text: The plaintiffs submitted that: (a) It is well established that the use of company funds to defend oppression proceedings may, in certain circumstances, constitute oppression (see Re DG Brims and Sons Pty Ltd (1995) 16 ACSR 559 at 591 592; Fexuto Pty Ltd v Bosnjak Holdings Pty Ltd [1998] NSWSC 413 ; (1998) 28 ACSR 688 at 733; and Cassegrain v CTK Engineering Pty Ltd [2005] NSWSC 495 ; (2005) 54 ACSR 249 at [90] to [99] (pp 267 269); and Food Improvers Pty Ltd v BGR Corp Pty Ltd (No 3) [2007] FCA 97 at [250] to [258]). (b) Where the issue has been raised prior to the final determination and there is a significant risk of the company's resources being expended in the defence of the interests of the majority, there is no reason why the Court would not step in at the interlocutory stage and make appropriate orders. In support of this submission, Counsel for the plaintiffs relied upon certain observations made by Brereton J in Grace v Grace (2007) 25 ACLC 141 ; [2007] NSWSC 6 at [52] and at [61] (second dot point). (c) The normal test for the grant of an interlocutory injunction applies in the circumstances of the present case; (d) The plaintiffs have established a strong case that there is a serious question to be tried; and (e) The balance of convenience favours the grant of an injunction because " ... there is a decidedly uneven playing field ... " in the sense that the plaintiffs are compelled to fund the litigation in circumstances where they have no assets of any significance whereas their protagonists, the Buskens, have access to company funds. 30 However, that is not the end of the matter. None of the authorities to which I have been referred involved an application for interlocutory relief founded upon the same ground as the ground relied upon by the plaintiffs in the present application. Further, some of those authorities support the proposition that, because it may be difficult to determine on an interlocutory basis which costs may be regarded as the legitimate responsibility of the corporate defendants over which the oppression suit is being fought, courts are reluctant to make a determination in advance, ie, at an interlocutory stage ( Fexuto [1998] NSWSC 413 ; 28 ACSR 688 at 733; 20 28; Re A Company (No 001126 of 1992) [1994] 2 BCLC 146 at 155 156; Grace 25 ACLC 141 ; [2007] NSWSC 6 at [49] to [52] and at [59] to [61]). This latter point may not be a very strong point in favour of the first, second, fourth and fifth defendants in the present case but is one that nonetheless needs to be weighed in the balance. It seems to me that the Court is generally reluctant to interfere at the interlocutory stage with the payment of legal fees and expenses unless there is good reason to do so.


case_title: Food Improvers Pty Ltd v BGR Corp Pty Ltd (No 3) [2007] FCA 97


case_title: Grace v Grace (2007) 25 ACLC 141 ; [2007] NSWSC 6


case_text: However, that is not the end of the matter. None of the authorities to which I have been referred involved an application for interlocutory relief founded upon the same ground as the ground relied upon by the plaintiffs in the present application. Further, some of those authorities support the proposition that, because it may be difficult to determine on an interlocutory basis which costs may be regarded as the legitimate responsibility of the corporate defendants over which the oppression suit is being fought, courts are reluctant to make a determination in advance, ie, at an interlocutory stage ( Fexuto [1998] NSWSC 413 ; 28 ACSR 688 at 733; 20 28; Re A Company (No 001126 of 1992) [1994] 2 BCLC 146 at 155 156; Grace 25 ACLC 141 ; [2007] NSWSC 6 at [49] to [52] and at [59] to [61]). This latter point may not be a very strong point in favour of the first, second, fourth and fifth defendants in the present case but is one that nonetheless needs to be weighed in the balance. It seems to me that the Court is generally reluctant to interfere at the interlocutory stage with the payment of legal fees and expenses unless there is good reason to do so.


case_title: Re DG Brims and Sons Pty Ltd (1995) 16 ACSR 559


case_title: Spry, Principles of Equitable Remedies , 5 th ed (1997)


case_text: Section 126 of the Act allows an applicant, at its option, to claim damages or an account of profit. The nature of the choice was explained by Windeyer J in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25 (at 32): 'The plaintiff whose mark has been infringed can choose between damages or an account of profits. He cannot have both. They are alternative remedies. The distinction between an account of profits and damages is that by the former the infringer is required to give up his ill-gotten gains to the party whose rights he has infringed: by the latter he is required to compensate the party wronged for the loss he has suffered.' That observation clearly proceeded on the basis that the damages recoverable for infringement of a trade mark are compensatory.


case_text: In relation to the assessment of damages for the infringement of patents, Jacob J set out a number of principles in Gerber Garment Technology Inc v Lectra Systems Ltd [1995] RPC 383 at 393 and following: 1. Damages are compensatory only. 2. The burden of proof lies on the plaintiff but damages are to be assessed liberally. 3. Where a patentee has licensed his patent, the damages are the lost royalty. 4. It is irrelevant that the defendant could have competed lawfully. 5. Where the patentee has exploited his patent by manufacture and sale, he can claim: (a) lost profit on sales by the defendant he would have made otherwise; (b) lost profit on his own sales to the extent that he was forced, by the infringement, to reduce his own price; and (c) a reasonable royalty on sales by the defendant which he would not have made. In the 13 th Edition of Kerly's Law of Trade Marks and Trade Names (London, Sweet & Maxwell, 2001) p 18-144, the learned authors set out those principles and suggest that they are also applicable to trade mark infringement. Accepting the compensatory character of damages awarded under s 126 and the like formulation in s 122 of the Patents Act 1990 (Cth), I accept that the principles enunciated by Jacob J are relevant to the assessment of compensatory damages for trade mark infringement under the Australian Act. 35 In this case the applicants also seek exemplary damages. There is, however, no provision in the Trade Marks Act for exemplary damages to be awarded. Section 126 of the Act may be contrasted with s 115 of the Copyright Act 1968 (Cth). That makes provision for the recovery of damages under s 115(2) in terms similar to those used in s 126. Section 115 also makes provision for "additional damages" in s 115(4). There is no equivalent to that provision in the Trade Marks Act . The head of additional damages for infringement of copyright requires consideration of "flagrancy of the infringement" and "benefit shown to have accrued to the defendant" as well as other factors relevant to both aggravated and exemplary damages as understood at common law. No authority was cited for the proposition that exemplary damages are available for trade mark infringement. Nevertheless it was submitted that, having regard to the purpose of the Act, the absence of any express limitation in the language used in s 126 and the availability of exemplary damages in passing off actions, exemplary damages should be available under that provision. 42 I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.'


case_text: A review of the authorities relating to the availability and principles underlying the award of exemplary damages in tort was set out in Musca v Astle Corporation Pty Ltd (1988) 80 ALR 251. Although not necessarily to be regarded as an anomalous or illogical remedy, it is nevertheless an unusual one. In my opinion where a statute creates a remedy by way of damages for breach of a proprietary right, then absent specific provision or necessary implication, it should not be read as extending that remedy to exemplary damages. In this case a statutory formulation is used which has been construed as compensatory. It contrasts notably with the express provision in the Copyright Act for "additional damages". Exemplary damages are not available under s 126. 37 The applicants claim their compensatory damages under the following heads: 1. Loss of sales through eBay. 2. Loss through devaluation of their product. 3. Loss through damage to their reputations. 38 Under the heading of 'Loss of sales" the applicants referred to the numbers of DVD titles relevant to each applicant sold by Mr Hasluck on eBay. They also referred to the number of DVDs delivered up by him relevant to each applicant. As a matter of inference, having regard to the marks on the delivered up DVDs and Mr Hasluck's acknowledgment of his infringing conduct in relation to sales over eBay, each of the DVDs sold through the eBay bearing the title belonging to a particular applicant would have borne the trade mark of that applicant.


case_title: Nominet UK v Diverse Internet Pty Ltd (No 2) (2005) IPR 131

case_text: The Court was not assisted by any evidence as to the licence fees or royalties charged by the applicants in respect of the particular titles at the time of their sale or at all. The reference to "sell through" price in Mr Kerin's evidence did not provide any basis for the estimation of either a licence fee or a royalty. In this connection the evidence necessary to quantify the loss was in the hands of the applicants. Its absence may be contrasted with the extensive evidence of a notional royalty offered by the applicant in Nominet UK v Diverse Internet Pty Ltd (No 2) (2005) 68 IPR 131. In that case damages were assessed, in relation to the infringing use of copyright material "mined" from a domain name register, by the calculation of a "reasonable royalty", that sum which would be agreed between a willing licensor and a willing licensee in a hypothetical arms length negotiation. The approach has been held to offer guidance in other cases of copyright infringement: LED Builders Pty Ltd v Eagle Homes Pty Ltd (1999) 44 IPR 24. Nominet was a more difficult case than the present because the copyright owner was a not-for-profit company which was not engaged in the business of licensing its copyright.


case_title: LED Builders Pty Ltd v Eagle Homes Pty Ltd (1999) 44 IPR 24


case_title: Adidas-Salomon AT v Turner (2003) 58 IPR 67

case_text: The applicants made reference in their submissions to Adidas-Salomon AT v Turner [2003] 58 IPR 67. Goldberg J commented upon the limited evidence available to him upon which to base the assessment of damages for the infringement of trade mark rights. The difficulty arose from the limited information which could be extracted from the respondent as to the sale of infringing items. His Honour however said (at 67): '... notwithstanding the difficulty facing me on the assessment of damages the Court has to do the best it can on available material.' He quoted from the judgment of the Full Court in Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 where the Court said (at 183): 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasize, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant.' See also: Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852. 42 I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.' 49 In Adidas Salomon , Goldberg J also considered the devaluation of trade marked products. His Honour found that the respondent had offered infringing items for sale over the internet. Their availability for sale was made apparent to the public and such persons as would go his website. As in the case of the Sony Play Stations, he found it unlikely that the purchasers of the items or persons looking at the website would reasonably have believed that the items were genuine Adidas items. He said (at 68 [7]): 'I am prepared to draw an inference that, in general terms, a buyer would be satisfied that in order to obtain a genuine Adidas garment, one would need to buy it through more official channels and that it would have been apparent by reference to price that these were not genuine Adidas items. I am satisfied that the fact that infringing items were available in the circumstances in which the respondent was offering them for sale tended to diminish the reputation of the genuine product sold by Adidas and tended to devalue the products that Adidas offers for sale.' Like Emmett J his Honour found it very difficult to place any specific figure on the loss that would have been suffered by Adidas by way of additional devaluation of its products by reason of the conduct of the respondent. He was satisfied that such damages would not be nominal having regard to the extensive audience available to a website such as the respondent's website. 52 The applicants also claim compensation for damage to their reputation. It is submitted on their behalf that the Court should be willing to draw the inference, as did Goldberg J in Adidas Salomon , that the infringing items were offered for sale in circumstances which tended to diminish the reputation of the genuine products. The applicants, it was said, have a reputation for producing good quality DVDs. Those sold by Mr Hasluck were of poor quality. 53 The applicants submitted that the feedback on Mr Hasluck's eBay sales record, revealed that some people did not know they were buying infringing copies and complained. It was submitted that it is not until a person plays the DVD and sees its poor quality that it becomes apparent that it is an infringing copy. On that basis it was argued that Mr Hasluck's conduct had damaged each applicant's reputation. Those applicants who had greater numbers of DVD titles sold were likely to have suffered greater damage to reputation. 54 In the eBay member profile for the period from 6 March 2005 to 5 May 2005 the positive feedback score was 89.6%. 206 members left a positive comment, 24 left a negative comment. It is evident that there were some members who, thinking they were buying the genuine item, discovered it was illegal and complained about that fact. It is difficult to see how that kind of discovery would reflect back upon the reputation of the applicants. As to those who made positive comments, again it is difficult to see how their positive experience would reflect upon the reputation of the applicants. This is conceptually distinct from the question of devaluation of the product arising from the lower price at which it was available on the internet. I would add that the feedback comments were not correlated to the purchasers of particular DVDs and therefore not correlated to any applicant's product.


case_text: The applicants made reference in their submissions to Adidas-Salomon AT v Turner [2003] 58 IPR 67. Goldberg J commented upon the limited evidence available to him upon which to base the assessment of damages for the infringement of trade mark rights. The difficulty arose from the limited information which could be extracted from the respondent as to the sale of infringing items. His Honour however said (at 67): '... notwithstanding the difficulty facing me on the assessment of damages the Court has to do the best it can on available material.' He quoted from the judgment of the Full Court in Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 where the Court said (at 183): 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasize, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant.' See also: Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852. 42 I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.'


case_title: Sony Computer Entertainment Australia Ltd v Stirling [2001] FCA 1852

case_text: The applicants made reference in their submissions to Adidas-Salomon AT v Turner [2003] 58 IPR 67. Goldberg J commented upon the limited evidence available to him upon which to base the assessment of damages for the infringement of trade mark rights. The difficulty arose from the limited information which could be extracted from the respondent as to the sale of infringing items. His Honour however said (at 67): '... notwithstanding the difficulty facing me on the assessment of damages the Court has to do the best it can on available material.' He quoted from the judgment of the Full Court in Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 where the Court said (at 183): 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasize, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant.' See also: Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852. 48 There is a question about precisely what is meant by the concept of 'devaluation of product". In Sony Computer Entertainment , Emmett J was concerned with the sale of counterfeit Sony Play Station games. His Honour said (at [9] and [10]): 'I am ... satisfied that there would be some damage to the applicants by reason of counterfeit games being made available for sale. The respondent offered games for sale by advertisements in the Trading Post newspaper. Sales took place by people calling at a private home. In the circumstances I do not consider that purchasers of the counterfeit games would reasonably have believed that the games were genuine Sony products. I would draw the inference that, generally, a buyer would be satisfied that, in order to obtain a genuine Sony game, one would need to buy it through ordinary channels. Nevertheless, the fact that Sony games are available in the circumstances in which the respondent was selling them tends to devalue the product that the applicants offer for sale. Ten per cent of the sale value is a very substantial proportion. It is very difficult to place any figure on the loss that would have been suffered by Sony by way of additional devaluation of its products by reason of the conduct of the respondent.' His Honour concluded that the loss occasioned by the respondent would be very small. However it would not be nominal. He considered it appropriate to order the respondent to pay damages which he assessed at $3,000. 49 In Adidas Salomon , Goldberg J also considered the devaluation of trade marked products. His Honour found that the respondent had offered infringing items for sale over the internet. Their availability for sale was made apparent to the public and such persons as would go his website. As in the case of the Sony Play Stations, he found it unlikely that the purchasers of the items or persons looking at the website would reasonably have believed that the items were genuine Adidas items. He said (at 68 [7]): 'I am prepared to draw an inference that, in general terms, a buyer would be satisfied that in order to obtain a genuine Adidas garment, one would need to buy it through more official channels and that it would have been apparent by reference to price that these were not genuine Adidas items. I am satisfied that the fact that infringing items were available in the circumstances in which the respondent was offering them for sale tended to diminish the reputation of the genuine product sold by Adidas and tended to devalue the products that Adidas offers for sale.' Like Emmett J his Honour found it very difficult to place any specific figure on the loss that would have been suffered by Adidas by way of additional devaluation of its products by reason of the conduct of the respondent. He was satisfied that such damages would not be nominal having regard to the extensive audience available to a website such as the respondent's website.


case_text: I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.' 43 In the case of a patentee who has licensed his patent, the damages are the lost royalty. The same principle applies to trade marks which are licensed. Jacob J said (at 394): 'The court must be satisfied that the royalty represents a true bargain.' Again he cited Lord Wilberforce in General Tire (at 394): 'Before a "going rate" of royalty can be taken as the basis on which an infringer should be held liable, it must be shown that the circumstances in which the going rate was paid are the same, or at least comparable with those in which the patentee and the infringer are assumed to strike their bargain.'


case_text: I would add the cautionary observation in Kerly at 18-146: 'It is important to note that in assessing damages for lost sales on a compensatory basis, it will be necessary for the court to determine what proportion of the defendant's customers have been confused. The claimant is not entitled to damages for sales to persons who have not been misled, since he has suffered no loss in respect of them, and, arguably, no actionable wrong has been committed in respect of sales to them. If he were to recover damages in relation to such persons, he would be over-compensated. This principle distinguishes passing-off and trade mark infringement from other intellectual property proceedings such as those for patent infringement, where all the defendant's activities of a given kind infringe.' See AG Spalding & Bros v AW Gamage Ltd [1918] 35 RPC 101 and Draper v Trist and Tristbestos Brake Linings, Ld [1939] 56 RPC 429. In the latter case, which concerned passing off by Trade Name and get up of goods, the Master of the Rolls, Sir Wilfrid Greene MR, said (at 437): '... it has been said more than once - and indeed it is obvious that, taking the sales of deceptive articles, the Court is not entitled to assume that every one of those sales would have been obtained by the Plaintiff. For obvious reasons that is an assumption which would be quite unwarranted. The unwarrantable nature of such an assumption is further strengthened, of course, where there are differences in price, differences in quality and so forth, because it is not legitimate to assume that a person who bought the Defendants' article at a lower price, if it was sold at a lower price, would necessarily have bought the Plaintiff's article at a higher price, even if he was deceived into thinking that the Defendants' article was the Plaintiff's. That is a consideration which must be borne in mind.'


case_title: Draper v Trist and Tristbestos Brake Linings, Ld [1939] 56 RPC 429


case_text: It is difficult to see a rational basis upon which the applicants' products are devalued except to the extent that the availability of the cheap pirate DVDs has a potential competitive impact upon the price at which the applicants' DVDs can be sold and therefore the royalties that they can charge. Accepting that there is some devaluation of that kind, I consider it almost incapable of estimation not simply as a matter of difficulty, but as a matter of principle. By that I mean that, absent evidence of some competitive response by the applicants, the error in assessing changes in the value of a product by reference to infringement may be greater than the value shift itself. A case in which there was evidence of a lowering of the trade mark owner's prices which may have been partially affected by the infringer's conduct was Alexander & Co v Henry & Co [1895] 12 RPC 360. There is, of course, no such evidence here. Nevertheless, in deference to previous authority and the injunction to take a "liberal approach" to the assessment of compensatory damages in this area, I would allow a figure of $1,000 to each applicant for product devaluation. I have not differentiated between applicants on the basis of the volume of sales of products over the eBay. It seems to me that if there is any principle underlying the devaluation of product it is predominantly the availability of the cheaper product, rather than the particular number that might have been sold in a given period. Having said that, I accept that the volume of sales was not trivial for the period between March and May 2005.


case_title: GEC Marconi v BHP (2003) 201 ALR 55

case_text: I will also allow pre-judgment interest at the rate of 6% per annum from 1 May 2005 to 1 November 2006. This amounts to $135 in respect of each of the applicants. The interest amount is awarded under s 51A(1) of the Federal Court of Australia Act 1976 (Cth) and follows the usual practice of adopting rates of interest applied in the relevant State Supreme Court: GEC Marconi v BHP (2003) 201 ALR 55; Walker v Citigroup [2005] FCA 1866. As to costs, having regard to the applicants' lack of success on the question of exemplary damages and the unnecessarily protracted presentation of evidence in this case, I will order, against the second respondent, half of the costs of the assessment of damages. That is to be taxed as one set. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice French. Associate: Dated: 2 November 2006 Counsel for the Applicant: Mr D Stewart Solicitor for the Applicant: Minter Ellison No appearance for the Respondents Date of Hearing: 4 September 2006, 24 October 2006 Date of Judgment: 2 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1431.html


case_title: Walker v Citigroup [2005] FCA 1866


case_text: The overriding principle in assessing penalty is that the amount of the penalty should reflect the Court's view of the seriousness of the offending conduct in all , the relevant circumstances: Coochey v Commonwealth [2005] FCA 1165 ; (2005) 149 FCR 312 and the cases there cited. 117 The relevant circumstances will vary from case to case and by reference to the objects of the particular legislation which has been contravened. 118 Pursuant to s 3 of the OHS Act the objects of the Act include: (a) to secure the health, safety and welfare at work of employees of the Commonwealth and of Commonwealth authorities; and ... (d) to promote an occupational environment for such employees at work that is adapted to their needs relating to health and safety; ... (f) to encourage and assist employers, employees and other persons to whom obligations are imposed under the Act to observe those obligations; and (g) to provide for effective remedies if obligations are not met, through the use of civil remedies and, in serious cases, criminal sanctions.


case_outcome: followed

case_text: Order 35, r 7(1) and (2)(e) provide as follows: Setting aside (1) The Court may vary or set aside a judgment or order before it has been entered. (2) The Court, where it is not exercising its appellate or related jurisdiction under Division 2 of Part III of the Act, may if it thinks fit vary or set aside a judgment or order after the order has been entered where: ... (e) the order does not reflect the intention of the Court; or ... In addition to such power as is conferred by Rule 7, the Court also has an implied power to vary an order: Owston Nominees No 2 Pty Ltd v Branir Pty Ltd [2003] FCA 629 at [27] [29], [2003] FCA 629 ; 129 FCR 558 at 569 70 per Allsop J. 6 Within the constraints imposed by that Rule, it is considered that Orders 1 and 2 as made on 30 November 2007 should be varied. Order 35, r 7(2) relevantly confers power where, as in respect to these orders, they have been entered and where an order " does not reflect the intention of the Court ". The intention of the Court was that the then form of the Statement of Claim should be struck out. The reasons for decision then given expressed reservation as to the utility of the Respondents' Notice of Motion being heard in advance of further amendments being made, as contemplated by the Applicants. But the intent of the Court was that the Applicants were to file any Amended Statement of Claim in the same proceeding within the time then specified. The reservation expressed arose because the Applicants had not previously amended their pleadings and could do so unless the proceeding itself was dismissed: Federal Court Rules, O 13, r 3. The intention was not to foreclose the opportunity to be extended to the Applicants to amend the then existing Statement of Claim . 7 Order 4 as made on 30 November 2007 contemplated an " Amended Application " also being filed. None was in fact filed -- but the intention of the Court was to permit such an amendment to be made should the Applicants so have wished. That order reflected the intention of the Court and should thus not now be varied.


case_text: In varying and setting aside these orders it must be acknowledged that there has been both an imprecision in the language previously employed in the reasons for decisions and the orders made. The reasons previously provided could also have been expressed in greater detail. But an application made pursuant to O 35, r 7 to vary or set aside orders previously made is not considered to be the occasion to supplement reasons previously provided or to make findings which could more conveniently have been made on earlier occasions. In a civil action there is a limited ability to alter reasons previously given, provided that the alteration is not one of substance: cf. Todorovic v Moussa [2001] NSWCA 419 , 53 NSWLR 463 at 468 9 per Beazley JA (Powell JA and Sperling J agreeing). To supplement the reasons previously provided would not fall within that limited exception. 13 The orders of the Court are: 1. Order 1 as made on 30 November 2007 be varied as follows: "1. The Statement of Claim as filed on 7 August 2007, as against the First Respondent, be struck out." 2. Order 2 as made on 30 November 2007 be varied as follows: "2. The Statement of Claim as filed on 7 August 2007, as against the Second Respondent, be struck out." 3. Order 1 as made on 31 March 2008 be varied as follows: "1. The proceeding be dismissed as against both Respondents." 4. There be no order as to the costs of 7 July 2008. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick. Associate: Dated: 8 July 2008 Counsel for the First Applicant: The First Applicant appeared in person Counsel for the First Respondent: G Curtis Solicitor for the First Respondent: Australian Government Solicitor Counsel for the Second Respondent: J Turnbull Solicitor for the Second Respondent: McCabe Terrill Date of Hearing: 7 July 2008 Date of Judgment: 8 July 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1028.html


case_text: Two previous decisions have been given in this matter -- the first on 30 November 2007 ( Von Reisner v Commonwealth [2007] FCA 1959) and the second on 31 March 2008 ( Von Reisner v Commonwealth (No 2) [2008] FCA 430).


case_text: Two previous decisions have been given in this matter -- the first on 30 November 2007 ( Von Reisner v Commonwealth [2007] FCA 1959) and the second on 31 March 2008 ( Von Reisner v Commonwealth (No 2) [2008] FCA 430). 9 Insofar as the orders as made on 31 March 2008 are concerned, it was the intention of the Court to resolve " the proceedings generally ": [2008] FCA 430 at [8] . On that occasion there had been non-compliance with a previous order that any Amended Statement of Claim was to be filed by 29 February 2008. There was, however, before the Court on 31 March 2008 a draft document which the First Applicant accepted " reflected the principles which she wished to agitate ": [2008] FCA 430 at [5] . An order was made that the " proceedings be dismissed ". This order has not been entered and may be varied or set aside pursuant to O 35, r 7(1). This order should be varied -- but only to the extent of referring to a singular " proceeding ". In seeking such an order, reliance was properly placed by the Respondents upon either s 31A of the Federal Court of Australia Act 1976 (Cth) or O 20, r 5 of the Federal Court Rules . Both of those provisions refer to an order being made in a " proceeding ". Order 20, r 5 was the power invoked. It was considered appropriate to dismiss the proceeding. 10 Order 2 as made on that occasion, the Court has been told, has been the subject of leave being granted to appeal to the Full Court. It is thus inappropriate to revisit either the form of that order or whether such an order should have been made given the dismissal of the proceeding. 11 The orders made on both occasions should be varied to reflect that which was intended. Whether such orders as now varied have been properly made remains a matter for the Full Court.


case_outcome: referred to

case_text: Finally, because the appellant was unrepresented on the appeal, counsel for the first respondent informed me that the first respondent had considered whether any breach of s 424A(1) of the Act can be said to arise following the decision in SZEEU v Minister for Immigration & Multicultural & Indigenous Affairs [2006] FCAFC 2. In that regard, counsel submitted that while the Tribunal's knowledge of the date of the appellant's application for the protection visa (December 2003) and the appellant's travel to Australia on a business visa in March 2000 may have derived initially from the protection visa application, this did not mean that s 424A was engaged by those parts of the protection visa application in this case. He submitted that the Tribunal's account of the hearing and the Tribunal's reasons indicate that the Tribunal was relying upon what the appellant said at the hearing about his travel to Australia in 2000 and subsequent activities until lodging his protection visa application in December 2003 as the relevant 'part of the reason' for its decision. He further submitted that on a fair reading the reason for the Tribunal's decision on this issue was based solely on information the appellant gave at the hearing, which falls within s 424A(3)(b). I accept these submissions. Accordingly, there was no breach of s 424A(1) of the Act. 22 The appeal must be dismissed with costs. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Edmonds. Associate: Dated: 30 March 2006 Solicitor for the Applicant: The appellant appeared in person Counsel for the Respondent: Mr T Reilly Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 20 March 2006 Date of Judgment: 30 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/303.html


case_text: In my opinion, it is appropriate to grant a stay and to extend the injunctions: Australia and New Zealand Banking Group Ltd v Merribee Pastoral Industries Pty Limited [1998] 84 FCR 367. 14 In light of those reasons, the orders that I will make, therefore, are, as to the first four orders, in terms of paragraphs 1 to 4 of the notice of motion as amended. As to 5, I will order that costs be reserved. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gilmour. Associate: Dated: 25 February 2008 Counsel for the Applicant: Mr G H Murphy SC with Mr B Dharmanada Solicitors for the Applicant: Minter Ellison Counsel for the 1 st Respondent: Dr A S Bell SC with Mr C Lockhart Solicitors for the 1 st Respondent: Maxim Litigation Counsel for the 2 nd - 4 th Respondents: Mr K A Reid Solicitors for the 2 nd - 4 th Respondents: Allens Arthur Robinson Date of Hearing: 21 December 2007 Date of Judgment: 21 December 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/2110.html


case_text: I made orders earlier today including orders for the discharge of injunctions previously made against each of the respondents. In order to avoid repetition and to give relevant context, these reasons ought to be read together with the reasons for making those orders: Clough Engineering Ltd v Oil & Natural Gas Corporation Ltd [No 3] [2007] FCA 2082. 2 Immediately following the pronouncement of those orders the applicant, Clough Engineering Ltd, by an amended motion invited the Court to stay their execution and further, to extend the injunctions previously made, pending the determination of an application for leave to appeal from my judgment in respect of those orders. 3 In an ex tempore judgment I granted the stay of execution and extended the injunctions.


case_title: Erinford Properties Ltd v Cheshire County Council [1974] Ch 261

case_text: Such a limited stay and injunction is open to be made, although the court has ordered the dissolution of the injunctions already made: Erinford Properties Ltd v Cheshire County Council [1974] 1 Ch 261 at 267-268. It is necessary for the applicant to establish that there are reasonably arguable grounds of appeal: Smith v New South Wales Bar Association [1991] HCA 59 ; (1991) 66 ALJR 219 at 220.


case_text: I take into account that on such an application, points of substance will be raised and not merely procedural matters. In such circumstances the threshold for obtaining leave is somewhat lower than otherwise might be the case: Johnson Tiles Pty Ltd v Esso Australia Ltd [2000] FCA 1572 at [45] ; Visy Industries Holdings Pty Ltd v Australian Competition and Consumer Commission [2007] FCAFC 147 at [39] .


case_title: Smith v New South Wales Bar Association [1991] HCA 59 ; (1991) 66 ALJR 219


case_title: Visy Industries Holdings Pty Ltd v Australian Competition and Consumer Commission [2007] FCAFC 147


case_text: Mr Hannaford also filed written submissions, which he developed at the hearing. Mr Hannaford contends that: 1. The bases for the claims against him for delivery up and/or destruction of the trees are the terms of the Non-Propagation Agreements pleaded in subpars (c)(ii) of pars 11, 14, 17, 20 23 and 26 of the applicants' Further Amended Statement of Claim. As Mr Hannaford observes, he pleads that these are unenforceable since they are penalties and/or seeks relief against forfeiture. Mr Hannaford further submits that this claim, which will have to be determined before the applicants' entitlement to relief in the nature of delivery up or destruction is granted, "will require a determination of the factors which may have led to the subject clauses being inserted into the agreements and whether ... the rights sought to be granted by the clauses were extravagant or oppressive at the time of entry into the agreements". He added that "[t]he question of relief against forfeiture will require a consideration of the circumstances as at the date of the breach and will require a consideration of the effect of the proposed delivery up or destruction orders on [him]". Counsel for Mr Hannaford submits that these matters "sit ill" with a trial as to liability only since the witnesses in relation to these matters may also be witnesses in connection with damages issues. Findings regarding their credit may need to be made prior to the damages hearing if a split trial is ordered. In an amendment to his written submissions filed prior to the hearing, Mr Hannaford noted that his defence "rests significantly on his credit" and that, if unsuccessful, he would also be a likely witness in relation to assessment of damages or account of profits. He argued that, therefore, an order for a split trial would have the potential to cause embarrassment and the need for the judge hearing the trial on liability to disqualify herself from hearing the latter part of the proceeding. 2. Zee Sweet Pty Ltd v Magnom Orchards Pty Ltd [2003] VSC 486 (" Zee Sweet ") is distinguishable. 3. If there is an enquiry as to profits at the trial on liability, as suggested by the Notice of Motion, then issues will plainly overlap. (I note that the applicants disavowed this suggestion at the hearing.) 4. The relief sought by the applicants includes discretionary relief such as declarations and injunctions, which ordinarily weigh against the splitting of a trial. 26 The parties did not rely at the hearing on Zee Sweet and I do not consider much turns on its conduct. It is, plainly enough, a different case from the present, although involving a similar subject matter. 27 Mr Hannaford raises the possibility that, after the trial on liability, it may be necessary to make adverse credit findings against some witnesses, who may later be required for the trial on pecuniary relief. Mr Hannaford claims and, for present purposes, I accept that his credit will be in issue on liability. Mr Hannaford places particular reliance on the evidence that he foreshadows in connection with his penalty and/or relief against forfeiture claim, which, according to him, would overlap with evidence he is likely to give at a trial on monetary relief. His counsel points out that he is a sole trader and, as such, is the person most familiar with all aspects of his business. 28 I accept that there is a risk that I might take an adverse view of Mr Hannaford's credit at the trial on liability. Whether or not Mr Hannaford will need to give evidence at a trial on monetary relief is uncertain, although I accept that he may. I accept that if I were to make adverse credit findings against him, he might perceive that he was at some disadvantage at the second stage of the proceeding. Whether or not this possibility is realised remains to be seen. I doubt, however, that any real disadvantage is likely to arise for him. The possibility of disadvantage is limited because at this second stage it is likely that much would turn on documentary business and other records and expert accountants' evidence. Notwithstanding this, I accept that the possibility that I may take an adverse view of Mr Hannaford's credit at the trial on liability, which will impact on him if he is needed to give evidence at the trial on monetary relief, is a factor tending against a split trial.


case_text: The principles that govern the circumstances in which an order under O 29 r 2 of the Federal Court Rules may be made are well established. They are discussed by Branson J in Reading Australia Pty Ltd v Australian Mutual Provident Society [1999] FCA 718 ; (1999) 217 ALR 495 (" Reading ") at [7] and [8] and by French J in Olbers Co Ltd v Commonwealth (No 3) [2003] FCA 651 at [7] . Ultimately, the question is whether, in the exercise of the Court's discretion, this is an appropriate case for the departure from the ordinary course that all issues of fact and law should be determined at the one time, on the basis that it is just and convenient for the order to be made: see Reading at [9]; Tallglen Pty Ltd v Pay TV Holdings Pty Ltd (1996) 22 ACSR 130. As counsel for the applicants pointed out, the outcome of the reported decisions on O 29 r 2 turns in each instance on the nature of the case and the particular circumstances relevant to it. 18 It is customary in intellectual property cases, however, to hear and determine issues of liability separately and before issues of pecuniary relief. This is largely because it is generally thought just and convenient to so order on account of the fact that an applicant in such a case is not compelled to make an election as between damages and an account of profits at least before the evidence on liability has been received: see Reading at [9] per Branson J; Dr Martens Australia Pty Ltd v Bata Shoe Company of Australia Pty Ltd (1997) 75 FCR 230 ; Digi International Inc v Stallion Technologies Pty Ltd (2001) 53 IPR 529 at [40] per Ambrose J; and Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013 at [7] - [9] per Stone J. Under s 56(3) of the PBRA, in an action for infringement, Canada is entitled to make an election for damages or an account of profits. That is, the nature of Canada's case attracts the same considerations as other intellectual property cases requiring an election between the remedies in the event that liability is established.


case_text: The principles that govern the circumstances in which an order under O 29 r 2 of the Federal Court Rules may be made are well established. They are discussed by Branson J in Reading Australia Pty Ltd v Australian Mutual Provident Society [1999] FCA 718 ; (1999) 217 ALR 495 (" Reading ") at [7] and [8] and by French J in Olbers Co Ltd v Commonwealth (No 3) [2003] FCA 651 at [7] . Ultimately, the question is whether, in the exercise of the Court's discretion, this is an appropriate case for the departure from the ordinary course that all issues of fact and law should be determined at the one time, on the basis that it is just and convenient for the order to be made: see Reading at [9]; Tallglen Pty Ltd v Pay TV Holdings Pty Ltd (1996) 22 ACSR 130. As counsel for the applicants pointed out, the outcome of the reported decisions on O 29 r 2 turns in each instance on the nature of the case and the particular circumstances relevant to it.


case_title: Tallglen Pty Ltd v Pay TV Holdings Pty Ltd (1996) 22 ACSR 130


case_text: It is customary in intellectual property cases, however, to hear and determine issues of liability separately and before issues of pecuniary relief. This is largely because it is generally thought just and convenient to so order on account of the fact that an applicant in such a case is not compelled to make an election as between damages and an account of profits at least before the evidence on liability has been received: see Reading at [9] per Branson J; Dr Martens Australia Pty Ltd v Bata Shoe Company of Australia Pty Ltd (1997) 75 FCR 230 ; Digi International Inc v Stallion Technologies Pty Ltd (2001) 53 IPR 529 at [40] per Ambrose J; and Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013 at [7] - [9] per Stone J. Under s 56(3) of the PBRA, in an action for infringement, Canada is entitled to make an election for damages or an account of profits. That is, the nature of Canada's case attracts the same considerations as other intellectual property cases requiring an election between the remedies in the event that liability is established.


case_title: Digi International Inc v Stallion Technologies Pty Ltd (2001) 53 IPR 529


case_title: Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013


case_text: I accept that, if the applicants succeed on their principal liability issues, they will have a good basis for injunctive relief. In turn, to quote Sundberg J, this would provide an "end point" to the respondents' infringing conduct and a proper foundation for a consideration of the quantum of pecuniary relief to which the applicants would be entitled: see Polaris Communications Pty Ltd v Dynamic Hearing Pty Ltd [2007] FCA 627 at [5] . 22 Any trial on liability would, of course, include a hearing and determination of the penalty and/or relief against forfeiture issues that Mr Hannaford pleads by way of Defence. On account of these claims, however, Mr Hannaford argues that the applicants exaggerate the savings in time and expense if a split trial were ordered. He maintains that the penalty and/or relief against forfeiture issues would necessitate discovery of certain of his and Fleming's Nurseries' financial records since the value (to him and to Fleming's Nurseries) of the asset (the cherry trees) subject to the so-called penalty clause is in issue. There would, so his counsel says, be a corresponding need to prepare and present financial evidence directed to these matters. Accordingly, his counsel submits that the cost to Mr Hannaford of a trial on all issues would not be appreciably greater than the cost of a trial on liability alone. 23 The applicants respond that, so far as they are concerned, the evidence as to penalties and/or relief against forfeiture is not co-terminous with the evidence as to monetary relief. They affirm that, so far as they are concerned, there would remain significant cost and time advantages with a split trial.


case_text: Apparently there will be a need for some plant DNA testing in relation to issues 1 and 2. Issues 2 and 5 also involve some questions of construction. The applicants foreshadow that they will argue that, when properly construed, the so-called penalty clause does not provide for a penalty at all but is merely intended to provide further protection against unauthorised use. Counsel for Mr Hannaford, on the other hand, states that, on the matter of penalty, Mr Hannaford wishes to adduce evidence of the value of the asset to him, the value to Fleming's Nurseries, the sum paid in respect of it, and related matters: see in this connection Ringrow Pty Ltd v BP Australia Pty Ltd [2005] HCA 71 ; (2005) 222 ALR 306 at 309-309 (citing Dunlop Pneumatic Tyre Co Ltd v New Garage and Motor Co Ltd [1914] UKHL 1 ; [1915] AC 79 at 86-87).


case_title: Dunlop Pneumatic Tyre Co Ltd v New Garage and Motor Co Ltd [1914] UKHL 1 ; [1915] AC 79


case_text: Full Court applied these principles in Australian Broadcasting Commission v Parish (1980) 29 ALR 228. Bowen CJ said at 29 ALR at 233 that: 'Where proceedings are brought to restrain publication of confidential material, similar consideration apply. Disclosure would prejudice the court's proper exercise of the function it was appointed to discharge, to do justice between the parties. The possible cases where an order may be necessary to prevent prejudice to the administration of justice range fairly widely. The categories of this public interest are not closed and must alter from time to time whether by restriction or extension as social conditions and legislation develop.'


case_text: Dickason v Dickason [1913] HCA 77 ; (1913) 17 CLR 50 at 51 Barton ACJ giving the judgment of the High Court said that: '... the judgment of the House of Lords in Scott v Scott ([1913] AC 417), the effect of which is that there is no inherent power in a Court of justice to exclude the public, inasmuch as one of the normal attributes of a Court is publicity, that is, the admission of the public to attend the proceedings. Power to exclude may be conferred expressly by law, but there is no law which empowers us to proceed otherwise than with the ordinary publicity of a Court of justice.'


case_text: other Full Courts have continued to apply these principles; see Herald and Weekly Times Ltd v Williams [2003] FCAFC 217 ; (2003) 130 FCR 435 at 443 where Merkel J, with whom Finn and Stone JJ agreed, applied what Gibbs J had said in Russell v Russell [1976] HCA 23 ; (1976) 134 CLR 495 at 520, namely: 'It is the ordinary rule of the Supreme Court as of other courts of the nation, that their proceedings should be conducted "publicly and in open view" ( Scott v Scott [1913] AC 417 at 441). This rule has the virtue that the proceedings of every court are fully exposed to public and professional scrutiny and criticism without which abuses may flourish undetected. Further, the public administration of justice tends to maintain confidence in the integrity and independence of the courts. The fact that courts of law are held openly and not in secret is an essential aspect of their character. It distinguishes their activities from those of administrative officials for "publicity is the authentic hallmark of judicial as distinct from administrative procedure" ( McPherson v McPherson [1936] AC 1777 at 200). Merkel J went on to recognise at 130 FCR 444-445 [36]: 'A different situation might arise, for example, if the embarrassment or damage that publicity might occasion is such that it would prevent or deter a person from prosecuting or defending a proceeding in the court or "if there was a real risk as opposed to a remote possibility that this would occur": see Johnston v Cameron [2002] FCAFC 251 ; (2002) 124 FCR 160 at 180. If that situation arises it can be waived in the discretionary balance that is to be struck between the public interest of open justice and preventing prejudice to the administration of justice.'


case_text: am of opinion that the construction which the courts have given to these two provisions in effect make them reflective of the implied power of every court to do justice in proceedings before it and of the concomitant inherent power of superior courts of record to supervise the administration of justice generally (see John Fairfax & Sons Pty Ltd v McRae [1955] HCA 12 ; (1955) 93 CLR 351 at 363-365. John Fairfax & Sons Ltd v Police Tribunal (1986) 5 NSWLR 465 at 476E-G per McHugh JA).


case_text: my opinion it is important to start with the recognition that our system of justice depends upon the public having confidence in what takes place in open court. In John Fairfax and Sons Limited v Police Tribunal of New South Wales (1986) 5 NSWLR 465, McHugh JA said at 476: 'The fundamental rule of the common law is that the administration of justice must take place in open court. A court can only depart from this rule where its observance would frustrate the administration of justice or some other public interest for whose protection Parliament has modified the open justice rule. The principle of open justice also requires that nothing should be done to discourage the making of fair and accurate reports of what occurs in the courtroom. Accordingly, an order of the court prohibiting the publication of evidence is only valid if it is really necessary to secure the proper administration of justice in proceedings before it. Moreover, an order prohibiting publication of evidence must be clear in its terms and do no more than is necessary to achieve the due administration of justice. The making of the order must also be reasonably necessary; and there must be some material before the court upon which it can reasonably reach the conclusion that it is necessary to make an order prohibiting publication.' I am of opinion that the construction which the courts have given to these two provisions in effect make them reflective of the implied power of every court to do justice in proceedings before it and of the concomitant inherent power of superior courts of record to supervise the administration of justice generally (see John Fairfax & Sons Pty Ltd v McRae [1955] HCA 12 ; (1955) 93 CLR 351 at 363-365. John Fairfax & Sons Ltd v Police Tribunal (1986) 5 NSWLR 465 at 476E-G per McHugh JA).