case_text: Payne noted Mrs Bogdan's evidence that her father-in-law produced the draft plan and ultimately the plan was taken to Igor Designs for a final plan to be prepared. Magistrate Payne noted that Mr Bogdan did not give evidence and this was unhelpful as he was, according to Mrs Bogdan's evidence, one of the persons who drew up the plan. Magistrate Payne found it unhelpful that no evidence was called from anyone from Igor Designs. Her Honour referred to ss 10 , 14 , 31 and 36 of the Copyright Act and placed reliance upon paras [38], [41], [42], [44], [49] and [55] of the reasons for judgment of Wilcox and Lindgren JJ in Tamawood Ltd v Henley Arch Pty Ltd [2004] FCAFC 78 ; (2004) 61 IPR 378 (Moore J agreeing). Magistrate Payne noted those paragraphs as they contain a statement of principles that, in her Honour's view, governed the resolution of the case. At those paragraphs, Wilcox and Lindgren JJ note these principles. Magistrate Payne also referred to [111] of the reasons for judgment of Wilcox and Lindgren JJ in Tamawood in which their Honours said this: If there is to be a finding of reproduction of a substantial part of a work, the substantial part should be identified . His Honour referred to "the overall design and combination of features" but gives no further detail . His Honour did not attempt to identify any part of the Baltimore as being a qualitatively substantial part of the Baltimore in the sense discussed at [47] [56] above. With respect we think his Honour erred in this regard. Likewise, "striking similarity", without more , does not necessarily mean that there has been a reproduction of the whole or a substantial part of the plan of a project home. The similarity referred to may have been that of common ideas . [emphasis added] Her Honour then applied those principles to the evidence before noting that a plan for a project home is partly functional reflecting "reasonable proximities" that would not be a "substantial part" of a house plan regarded as an artistic work. Her Honour made this finding at p 10 of her reasons: If seen in isolation, a comparison of the Bogdan plan and the Jennings Cortona and Verona plans shows there are striking similarities. Taking up the notion of a requirement on the part of Jennings, in order to discharge its onus, to show more than striking similarities, so as to establish reproduction of the work either as to the whole work or as to a substantial part, Magistrate Payne said this: The footprint of the Bogdan plan and the AV Jennings Cortona plan are similar, although there are differences. There is also similarity between the Bogdan plan and the AV Jennings Verona plan, and again there are differences, and I say this noting that the Bogdan plan was a mirror reverse of the AV Jennings plans. There is a similarity between the arrangement of the rooms and the footprint of the buildings, although all three are different from each other in some respects. These differences include a different floor plan and different roof line. However, it is not the footprint or floor plan alone the plaintiff complains of. The plaintiff says it is the footprint with the original or distinguishing feature of displayed walls and the higher ceilings. [emphasis added] Magistrate Payne then expressed the view set out in para 2 quoted below, which resonates with the reservation expressed by Wilcox and Lindgren JJ in the last sentence of [111] in Tamawood : I note also that Mr and Mrs Bogdan did little to assist me other than to say that Mrs Bogdan in her evidence had never heard of AV Jennings and had never seen one of their plans and she said she had not seen one of their homes until she was contacted by AV Jennings. ... However, despite this little assistance the onus rests on the plaintiff in this matter. When considering all of those similarities and dissimilarities which I have done and then, in applying the law, I do not consider that the plaintiff has discharged its burden of proof. I find that the displayed walls and raised ceiling to be that of a common idea and not sufficient to sustain a conclusion of reproduction of the whole or a substantial part of the AV Jennings Verona plan or Cortona plan by either or both of the first or second defendant. [emphasis added] Consideration of the issues on appeal As to subconscious copying, Willmer LJ noted in Francis Day & Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart & Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and the "protected element may arise out of a combination of elements, any one of which considered individually might not qualify as sufficiently original to attract copyright" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree. In Tamawood at [111], Wilcox and Lindgren JJ (Moore J agreeing) noted that striking similarities however may not be enough in circumstances where the plaintiff has failed to identify the "substantial part" reproduced and has put its case on the footing of the "overall design and combination of features but gives no further detail ". In such circumstances, their Honours noted that substantial similarities may simply be referable to "common ideas". Magistrate Payne found that splayed walls and raised ceilings are a "common idea" and not sufficient to sustain a conclusion of reproduction of the whole or a substantial part of either the Verona plan or the Cortona plan by either respondent. The evidence before Magistrate Payne did not establish the notion that angled walls are a common idea. It is true that the Jennings plans, the Bogdan plan and the Dixon plan exhibit elevated ceilings. However, the conclusion reached by Magistrate Payne did not take into account the particular combination of features reflected at [61] to [65] of these reasons, the evidence of Mr Deshon concerning the evolution of the Bogdan plan as a contended progression from the Canberra plan and the evidence in relation to the features of Annexure C (that is, the elements of [61] to [69]). The evidence that supports the conclusion of striking similarities based upon the identified combination of precise features makes it clear that the combination cannot be described as commonplace or simply a common idea. Taken separately, the notion of elevated ceilings may not suggest actual use of a Jennings plan. The adoption, by itself, of angled walls at 15 degrees "off the right angled rib" might not be sufficient to suggest actual use although the evidence suggests that such a feature is an essential or material feature. The combination of those two features adds incremental weight to the notion of objective similarity suggesting use. The combination of those features together with a floor plan exhibiting substantial similarity in orientation and layout of rooms further supports an inference of use. The expert evidence casting doubt on the proffered explanation of the origin of the Bogdan plan adds further weight to the inference as does Mr Deshon's evidence that the magazine photograph (Exhibit 6) would not lead him to a design of elevated flat ceilings had the photograph been produced to him as a starting point for a design of the rooms and ceilings in a new house, reflecting the design depicted in the photograph. Accordingly, her Honour in reaching the finding as to a "common idea" did not take into account all of the evidence. Moreover, the notion that something more must be shown is put in proper context by their Honours in Tamawood . As their Honours noted, that case concerned circumstances where the plaintiff had failed to identify the substantial part said to be reproduced and had put its case on the basis of overall design and a combination of features in circumstances where no detail had been given. That is not this case. It follows therefore that the evidence supports an inference that the Bogdan plan evolved through the use of either of the Jennings Verona 245 plan, the Cortona 245 or the Cortona 290 (as the embodiment of the combination of features identified and relied upon by the appellant). The question that remains is whether the evidence supports an inference of actual use by either or both of the respondents. Mrs Bogdan gave the evidence described earlier in these reasons which led to a finding of fact and a finding of credit ([50] of these reasons) in her favour. Magistrate Payne accepted her evidence entirely and especially her evidence that she had not seen a Jennings plan and did not have any knowledge that the Bogdan plan was a copy of any Jennings plan. That finding was plainly open on the evidence and counsel for Jennings accepted that such a finding was open to her Honour. It follows therefore that Mrs Bogdan did not make actual use of any Jennings plan in either formulating her ideas or contributing those ideas to her husband and/or Mr Florien Bogdan and there is no basis for disturbing those findings. However, the evidence of Mrs Bogdan makes it plain that Mr Bogdan was an author of Annexure C to Exhibit 4 and contributed together with Mr Florien Bogdan to the draft drawings. Mr Florien Bogdan produced Annexure D1 which was given to Igor Designs to produce Annexure E. Mr Bogdan, by his submissions, says that it is apparent from the transcript that he made statements throughout the proceeding that illustrate the nature of the evidence he would have given had Magistrate Payne made it plain to him that an adverse inference might arise should he not give evidence and those statements are set out at pp 26, 33, 35, 36, 62, 74 to 76 and 84 and 85 of the transcript. However, even if an assumption is made that the statements at those pages of the transcript ought to be treated as, in effect, oral evidence, the statements do not answer the conclusion open on the totality of the evidence that authors of the Bogdan plan used either the Verona 245 plan, the Cortona 245 plan or the Cortona 290 plan (as the embodiment in final form of the features in those plans and the plan in suit) in bringing into existence the Bogdan plan with its combination of features evident in the Cortona 290 plan. It may be that an inference is open that either Mr Bogdan used a Jennings plan and reproduced the combined features relied upon by the appellant or alternatively, Mr Florien Bogdan did so. Alternatively, an inference might be found that both men so used the plan. It seems likely as a matter of inference from all the evidence and particularly that of Mrs Bogdan, that Mr Florien Bogdan as a carpenter who had previously built eight houses, used a Jennings plan and thus reproduced the combined features relied upon by the appellant. However, the evidence of Mrs Bogdan makes it plain that Mr Bogdan was responsible for Annexure C and was a contributory author to the drawings (see [44] to [48] of these reasons). Mrs Bogdan referred to eight drawings in all in the evolution of the Bogdan plan, although only those drawings annexed to Exhibit 4 were produced in evidence. It follows, that Magistrate Payne erred by failing to find use of the appellant's work and reproduction in a material form of that work in suit, as against the respondent, Mr Tiberiu Bogdan. It follows that the order of the Court below dismissing the appellant's claim against Mr Tiberiu Bogdan is to be set aside and judgment entered for the plaintiff below. The second question that arises is the assessment of damages. The Court below did not assess nor make findings as to the quantum of the plaintiff's damage. Accordingly, it is necessary for this Court to do so. Damages


case_outcome: cited

case_text: application of the law of copyright to project homes gives rise to special difficulty as the drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world and many other project homes and plans for them, on the one hand; and the labour, skill and judgment of an author in combining and expressing those ideas in an original work on the other. The more simple and straightforward the work, the closer the similarity must be for infringement to be found. The notion of reproduction involves resemblance to the owner's work and actual use of that work ( S W Hart & Co Proprietary Limited v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ), or put another way, what is required is "a sufficient degree of objective similarity between the two works and ... some causal connection between [the two works]" ( Francis Day & Hunter Ltd v Bron (1963) 1 Ch. 587 at p 614 per Willmer LJ). Causal connection and objective similarity are components of reproduction of the work in a material form. Causal connection might be inferred from access to the plan in suit and objective similarity between that work and the plan said to infringe. Too much can be made of the distinction between the work and a substantial part of it. The notion of substantial part may be found most useful where particular quantitatively small parts of the work in suit, are taken. Can it be said that a quantitatively small part is, for identified reasons given in evidence, nevertheless a substantial part of the work? The ultimate question is not infringement of the part but infringement of the whole . Whether there has been infringement of the whole requires that the originality of the part taken be considered in relation to the work as a whole. The question is whether the part is an "essential or material" feature of the whole. As to subconscious copying, Willmer LJ noted in Francis Day & Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart & Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and the "protected element may arise out of a combination of elements, any one of which considered individually might not qualify as sufficiently original to attract copyright" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree.


case_text: application of the law of copyright to project homes gives rise to special difficulty as the drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world and many other project homes and plans for them, on the one hand; and the labour, skill and judgment of an author in combining and expressing those ideas in an original work on the other. The more simple and straightforward the work, the closer the similarity must be for infringement to be found. The notion of reproduction involves resemblance to the owner's work and actual use of that work ( S W Hart & Co Proprietary Limited v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ), or put another way, what is required is "a sufficient degree of objective similarity between the two works and ... some causal connection between [the two works]" ( Francis Day & Hunter Ltd v Bron (1963) 1 Ch. 587 at p 614 per Willmer LJ). Causal connection and objective similarity are components of reproduction of the work in a material form. Causal connection might be inferred from access to the plan in suit and objective similarity between that work and the plan said to infringe. Too much can be made of the distinction between the work and a substantial part of it. The notion of substantial part may be found most useful where particular quantitatively small parts of the work in suit, are taken. Can it be said that a quantitatively small part is, for identified reasons given in evidence, nevertheless a substantial part of the work? The ultimate question is not infringement of the part but infringement of the whole . Whether there has been infringement of the whole requires that the originality of the part taken be considered in relation to the work as a whole. The question is whether the part is an "essential or material" feature of the whole. There is no doubt that Jennings bears the onus of proving on the balance of probabilities that the respondents made actual use of the work in suit and having used the work, they brought into existence a plan that either takes a substantial part of the plan in suit, shown to be an essential or material feature of the whole (although perhaps a quantitatively small part) or takes substantially the whole plan, viewed quantitatively, assuming that an exact copy of the plan in suit has not been made. As to the last matter, no such claim is made. In this case, actual use is sought to be established as an inference arising out of contended striking similarities between the two plans. Those striking similarities then speak to reproduction of the plan in suit and thus infringement. In Francis Day & Hunter Ltd v Bron , Willmer LJ at p 614 noted, apart from the observations mentioned at [54] of these reasons, these further matters: (3) Where there is a substantial degree of objective similarity, this of itself will afford prima facie evidence to show that there is a causal connection between the plaintiffs' and the defendants' work; at least it is a circumstance from which the inference may be drawn. (4) The fact that the defendant denies that he consciously copied affords some evidence to rebut the inference of causal connection arising from the objective similarity, but is in no way conclusive. As to subconscious copying, Willmer LJ noted in Francis Day & Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart & Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and the "protected element may arise out of a combination of elements, any one of which considered individually might not qualify as sufficiently original to attract copyright" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree.


case_text: to subconscious copying, Willmer LJ noted in Francis Day & Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart & Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and the "protected element may arise out of a combination of elements, any one of which considered individually might not qualify as sufficiently original to attract copyright" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree.


case_title: Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912


case_title: Dixon Investments Pty Ltd v Hall 18 IPR 490


case_title: Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300


case_title: Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503


case_text: Bogdan says that if the respondents had agreed to pay a licence fee to Jennings of $20,000.00, it would follow that Jennings would have no claim for the construction profit as the respondents would not have engaged Jennings to do the work. Mrs Bogdan says that conversely, if an assumption is made that Jennings would have been engaged to construct the respondents' house, there would be no licence fee. More fundamentally, Mrs Bogdan says that Jennings has not suffered any loss of profit based on construction because "we weren't intending to hire A V Jennings to build our house". Mrs Bogdan said that she had obtained advice from lawyers who advised her that on the authority of New England Country Homes Pty Limited v Bradley Moore [1998] FCA 345 , per Burchett J, the appropriate fee for use of a project home drawing was found to be $750.00 and that the case is authority for the proposition that no claim for loss of profit can be sustained in the face of evidence that the infringing respondent would not have engaged the plaintiff to construct the home. Mrs Bogdan says: This is exactly the case here. There is no evidence or even suggestion that the respondents would have engaged Jennings to construct the house in question and indeed such a claim is not even alleged in the statement of claim. More generally, Mrs Bogdan in making the point that the respondents are not project home builders or in the business of building houses, said this: ... to close, we say that we're not business. We're not intending to make business out of our home. We built it for us. We're not builders. We've got an owner/builder permit to do our own home. Mrs Bogdan referred to the authority of New England Country Homes Pty Limited v Bradley Moore (supra) and observations made by Burchett J. In that case, Burchett J considered a claim for compensatory damages in circumstances where, like this case, the respondent "did not construct a house for sale, but as a home to live in" (p 7). His Honour at p 8 referred to a number of authorities that support the proposition that the Court may adopt as a measure of damages where it thinks the course appropriate, a fair fee for the use of the plan the subject of the infringement. Burchett J noted that the applicant sought an assessment of damages on the basis of the profit it would have earned by the sale of a kit for the construction of the respondents' house. However, the evidence demonstrated that the respondent would never have purchased a kit home from the applicant "under any circumstances" and thus the infringement did not cause the loss of profit on the sale of a kit home. The applicant sought an assessment of damages on the basis of a licence fee of $6,000.00 for the use of the kit home construction plans. His Honour referred to evidence that suggested a licence fee based on a fee paid to a draftsman of $535.00 was a more likely fair licence fee and thus awarded the applicant damages of $750.00, as mentioned in submissions by Mrs Bogdan. In this case, it is equally clear that had Jennings quoted to the respondents an amount of $198,550.00 (including GST) as the price for the construction of the Bogdan home including the variations to the plan the subject of the amount of $16,424.00 mentioned in the evidence of Mr Henesey-Smith, the Bogdans would not have accepted that quote. Jennings would not have undertaken the project and would not have derived the construction profit or any profit. Accordingly, in assessing the damages on that footing, I take into account these matters. In this case, the respondents, like the respondent in New England Country Homes , chose to devise a plan for and then construct a home to live in rather than a house for sale. In doing so, Mr Bogdan engaged in conduct of reproducing the appellant's plan in a material form. There is no suggestion that either respondent will engage in any further infringing conduct. Nor is there any evidence that Jennings has suffered a diminution in its revenue by reason of this transactional act of infringement. Moreover, the evidence demonstrates that Jennings would not have derived any profit from the project as the respondents would not have either paid a licence fee to or contracted with Jennings for the design and construction of their home. Nevertheless, the fact that the respondents would not have contracted with Jennings is not an answer to the Jennings' claim for damages suffered as a result of the infringement. It is necessary to formulate the damages referable to the act of infringement by attempting to disaggregate the bundle of services Jennings supplies to a client so as to isolate the best estimate of damages possible on the evidence available as a measure of the appellant's loss directly related to infringement. In undertaking that exercise, it is not appropriate to bring into account the cost of the additions to the Bogdan plan not reflected in the Cortona 290 . Jennings says that the direct cost of design and construction of a Cortona 290 in January 2004 was $118,912.00. A margin of 25% based on those foundation costs would amount to $29,728.00. Jennings, of course, says that its 25% margin is struck on the gross turnover value excluding GST which in respect of the Cortona 290 excluding the Bogdan additions seems to be $164,076.00 representing a margin of $41,019.00 on the preferred method adopted by Jennings. That method of calculating a margin on the turnover value excluding GST is a calculation of its design and construction profit. Damages ought not to be calculated on that footing. An examination of these approaches to the calculation of profit is simply an indication of the net loss Jennings might have derived had it undertaken the project (leaving aside the variations for this purpose). One way of forming a view of the contribution of the copyright in the plan to that profit is to appreciate the aggregation of services which give rise to the profit and to then disaggregate those services and apportion some part of the profit to the use of the plan as an analogue of loss suffered by Jennings by reason of the use by Mr Bogdan of the Jennings plan as joint author with Mr Florien Bogdan. The profit calculation is simply a base starting point. Doing the best I can on the available evidence which is very limited, I estimate the contribution of the copyright in the plan at about 10%. The vast majority of the profit is, no doubt, referable to the quantities of materials supplied and the construction, supervision and completion of the home itself. On that footing, the damages would range between $2,972.00 and $4,101.00. It seems to me that the appropriate amount is the average of the two namely, $3,536.00. There is no basis for an award of exemplary damages.


case_text: an award of damages pursuant to s 115(2) of the Copyright Act might in an appropriate case be the measure of the depreciation in the value of the exclusive bundle of rights comprising the copyright, as a chose in action ( Sutherland Publishing Co. Ltd v Caxton Publishing Co. Ltd [1936] 1 Ch. 323 per Lord Wright MR; Microsoft Corporation v Atifo Pty Ltd (1997) 38 IPR 643) , it is not the right measure in a case such as this ( Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 at 475 per Wilcox J; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 , Bowen CJ at Eq 446). There is, understandably, no evidence of a discounted cash flow valuation of the copyright as a capital asset nor, equally understandably, any evidence of any diminution, by reason of the infringement, in the capacity of Jennings to derive revenue by exploiting the copyright work, that is, by using the plan and constructing houses representing a three-dimensional reproduction of the plan, for clients. In this case, the respondents built a single house as their residential dwelling. They are not project home builders and they are not in the business of repetitious infringing conduct. Since there is no demonstrated impact on the exploitation revenues Jennings derives from the use of the Cortona 290 plan, there is very likely to be no corresponding impact on the value of the copyright as an incorporeal right. However, the formulation of Lord Wright in Sutherland has been described as "no more than a convenient label for the various ways of assessing damages which are available in any particular case" ( Australasian Performing Rights Association v Grebo Trading Co. Pty Ltd (1978) 23 ACTR 30 per Blackburn CJ at 31) and the question to be answered is, what loss has Jennings suffered as a result of the infringement of its copyright? ( Interfirm at 446) As to the general principles concerning the assessment of damages for breach of copyright, see Autodesk v Cheung (1990) 94 ALR 472 at 474 477; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 111 ALR 269 at 285; Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2005) 63 IPR 137 and Eagle Rock Entertainment Ltd & Anor v Caisley (2006) 66 IPR 554. Jennings contends that it does not licence its copyright to enable third party construction to occur. It keeps its copyright in a Jennings safe harbour and uses it solely in its own construction activity. Therefore, it is said, Jennings ought not to be treated in an analogous position to an architect who might, by reason of the nature of the professional work an architect undertakes, be subject to an implied licence of the copyright in a work produced in connection with particular projects. Nor, it is said, should the hypothetical "construct" of a notional willing licensor and licensee be adopted as the framework for determining a surrogate measure of damages by reference to a licence fee. The pleading claims damages on the alternative bases of either a fee for use of the plan or lost profits in the construction of the Bogdan home. Presumably, the pleading does so in order to preserve alternative possible formulations of a remedy in damages in respect of proven infringing conduct. However, it is clear that the letter of demand from Jennings dated 19 November 2003 made a claim for a fee for use of the plan for an amount which remains the amount claimed as a fee for use in the amended pleading.


case_text: an award of damages pursuant to s 115(2) of the Copyright Act might in an appropriate case be the measure of the depreciation in the value of the exclusive bundle of rights comprising the copyright, as a chose in action ( Sutherland Publishing Co. Ltd v Caxton Publishing Co. Ltd [1936] 1 Ch. 323 per Lord Wright MR; Microsoft Corporation v Atifo Pty Ltd (1997) 38 IPR 643) , it is not the right measure in a case such as this ( Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 at 475 per Wilcox J; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 , Bowen CJ at Eq 446). There is, understandably, no evidence of a discounted cash flow valuation of the copyright as a capital asset nor, equally understandably, any evidence of any diminution, by reason of the infringement, in the capacity of Jennings to derive revenue by exploiting the copyright work, that is, by using the plan and constructing houses representing a three-dimensional reproduction of the plan, for clients. In this case, the respondents built a single house as their residential dwelling. They are not project home builders and they are not in the business of repetitious infringing conduct. Since there is no demonstrated impact on the exploitation revenues Jennings derives from the use of the Cortona 290 plan, there is very likely to be no corresponding impact on the value of the copyright as an incorporeal right.


case_text: an award of damages pursuant to s 115(2) of the Copyright Act might in an appropriate case be the measure of the depreciation in the value of the exclusive bundle of rights comprising the copyright, as a chose in action ( Sutherland Publishing Co. Ltd v Caxton Publishing Co. Ltd [1936] 1 Ch. 323 per Lord Wright MR; Microsoft Corporation v Atifo Pty Ltd (1997) 38 IPR 643) , it is not the right measure in a case such as this ( Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 at 475 per Wilcox J; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 , Bowen CJ at Eq 446). There is, understandably, no evidence of a discounted cash flow valuation of the copyright as a capital asset nor, equally understandably, any evidence of any diminution, by reason of the infringement, in the capacity of Jennings to derive revenue by exploiting the copyright work, that is, by using the plan and constructing houses representing a three-dimensional reproduction of the plan, for clients. In this case, the respondents built a single house as their residential dwelling. They are not project home builders and they are not in the business of repetitious infringing conduct. Since there is no demonstrated impact on the exploitation revenues Jennings derives from the use of the Cortona 290 plan, there is very likely to be no corresponding impact on the value of the copyright as an incorporeal right. However, the formulation of Lord Wright in Sutherland has been described as "no more than a convenient label for the various ways of assessing damages which are available in any particular case" ( Australasian Performing Rights Association v Grebo Trading Co. Pty Ltd (1978) 23 ACTR 30 per Blackburn CJ at 31) and the question to be answered is, what loss has Jennings suffered as a result of the infringement of its copyright? ( Interfirm at 446) As to the general principles concerning the assessment of damages for breach of copyright, see Autodesk v Cheung (1990) 94 ALR 472 at 474 477; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 111 ALR 269 at 285; Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2005) 63 IPR 137 and Eagle Rock Entertainment Ltd & Anor v Caisley (2006) 66 IPR 554. Jennings contends that it does not licence its copyright to enable third party construction to occur. It keeps its copyright in a Jennings safe harbour and uses it solely in its own construction activity. Therefore, it is said, Jennings ought not to be treated in an analogous position to an architect who might, by reason of the nature of the professional work an architect undertakes, be subject to an implied licence of the copyright in a work produced in connection with particular projects. Nor, it is said, should the hypothetical "construct" of a notional willing licensor and licensee be adopted as the framework for determining a surrogate measure of damages by reference to a licence fee. The pleading claims damages on the alternative bases of either a fee for use of the plan or lost profits in the construction of the Bogdan home. Presumably, the pleading does so in order to preserve alternative possible formulations of a remedy in damages in respect of proven infringing conduct. However, it is clear that the letter of demand from Jennings dated 19 November 2003 made a claim for a fee for use of the plan for an amount which remains the amount claimed as a fee for use in the amended pleading. In Autodesk v Cheung , Wilcox J did not apply the licence fee approach to the assessment of damages because his Honour could not draw the inference, on the facts of that case, that the respondent, presented with a choice between paying a licence fee or not using the work, would have paid the licence fee. It was simply not a likely event. Similarly, Tamberlin J took the view on the facts before his Honour in Columbia Pictures Industries Inc. & Anor v Luckins (1996) 34 IPR 504 at 509 that a licence was unrealistic. His Honour observed at 509: In my view, the licence fee approach is not appropriate in a situation where it is clear that there never would have been a licence granted by the applicants because of the disruption such a licence would inflict on the applicants' basic strategic marketing timetable in Australia. The evidence in this case does not suggest any element of a competitive threat by the respondent, Mr Bogdan, to the activities of Jennings nor is there any suggestion of any disruption to the applicant's activities manifest in the class of case reflected in the decisions in Autodesk v Cheung , Columbia Pictures v Luckins and Eagle Rock v Caisley . Equally clearly, the element of disruption was the factual foundation upon which their Honours came to the conclusion that the applicants in each case would not have granted a licence. It is clear in this case that had a licence been sought by the respondents from Jennings it would either not have been granted or alternatively a licence fee of $20,000.00 might have been nominated by Jennings. That possibility is at least consistent with the letter of demand and the pleading. Nevertheless, had Jennings sought a licence fee from the respondents of $20,000.00, plainly enough, the respondents would not have taken up that licence.


case_title: Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445


case_text: the formulation of Lord Wright in Sutherland has been described as "no more than a convenient label for the various ways of assessing damages which are available in any particular case" ( Australasian Performing Rights Association v Grebo Trading Co. Pty Ltd (1978) 23 ACTR 30 per Blackburn CJ at 31) and the question to be answered is, what loss has Jennings suffered as a result of the infringement of its copyright? ( Interfirm at 446) As to the general principles concerning the assessment of damages for breach of copyright, see Autodesk v Cheung (1990) 94 ALR 472 at 474 477; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 111 ALR 269 at 285; Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2005) 63 IPR 137 and Eagle Rock Entertainment Ltd & Anor v Caisley (2006) 66 IPR 554. Jennings contends that it does not licence its copyright to enable third party construction to occur. It keeps its copyright in a Jennings safe harbour and uses it solely in its own construction activity. Therefore, it is said, Jennings ought not to be treated in an analogous position to an architect who might, by reason of the nature of the professional work an architect undertakes, be subject to an implied licence of the copyright in a work produced in connection with particular projects. Nor, it is said, should the hypothetical "construct" of a notional willing licensor and licensee be adopted as the framework for determining a surrogate measure of damages by reference to a licence fee. The pleading claims damages on the alternative bases of either a fee for use of the plan or lost profits in the construction of the Bogdan home. Presumably, the pleading does so in order to preserve alternative possible formulations of a remedy in damages in respect of proven infringing conduct. However, it is clear that the letter of demand from Jennings dated 19 November 2003 made a claim for a fee for use of the plan for an amount which remains the amount claimed as a fee for use in the amended pleading.


case_title: Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 111 ALR 269 at 285


case_title: Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2005) 63 IPR 137


case_text: Autodesk v Cheung , Wilcox J did not apply the licence fee approach to the assessment of damages because his Honour could not draw the inference, on the facts of that case, that the respondent, presented with a choice between paying a licence fee or not using the work, would have paid the licence fee. It was simply not a likely event. Similarly, Tamberlin J took the view on the facts before his Honour in Columbia Pictures Industries Inc. & Anor v Luckins (1996) 34 IPR 504 at 509 that a licence was unrealistic. His Honour observed at 509: In my view, the licence fee approach is not appropriate in a situation where it is clear that there never would have been a licence granted by the applicants because of the disruption such a licence would inflict on the applicants' basic strategic marketing timetable in Australia. In that case, Tamberlin J was addressing the assessment of damages arising out of the importation into Australia by the respondent of copies of films distributed on laser disks in the United States by Columbia Pictures . In that context, Tamberlin J rejected the utility of the licence fee approach. A similar view was taken in Eagle Rock v Caisley which concerned the assessment of damages arising out of the sale of DVD copies of an unauthorised recording of a live performance by Eric Clapton and his band. In Eagle Rock at [12], Tamberlin J said this: ... I do not consider that Eagle would, if requested, have granted a licence to Caisley or that Caisley would have paid the licence fee if he was given the choice between so doing or not using the copyright work. The two parties were in direct competition. The evidence in this case does not suggest any element of a competitive threat by the respondent, Mr Bogdan, to the activities of Jennings nor is there any suggestion of any disruption to the applicant's activities manifest in the class of case reflected in the decisions in Autodesk v Cheung , Columbia Pictures v Luckins and Eagle Rock v Caisley . Equally clearly, the element of disruption was the factual foundation upon which their Honours came to the conclusion that the applicants in each case would not have granted a licence. It is clear in this case that had a licence been sought by the respondents from Jennings it would either not have been granted or alternatively a licence fee of $20,000.00 might have been nominated by Jennings. That possibility is at least consistent with the letter of demand and the pleading. Nevertheless, had Jennings sought a licence fee from the respondents of $20,000.00, plainly enough, the respondents would not have taken up that licence.


case_text: the formulation of Lord Wright in Sutherland has been described as "no more than a convenient label for the various ways of assessing damages which are available in any particular case" ( Australasian Performing Rights Association v Grebo Trading Co. Pty Ltd (1978) 23 ACTR 30 per Blackburn CJ at 31) and the question to be answered is, what loss has Jennings suffered as a result of the infringement of its copyright? ( Interfirm at 446) As to the general principles concerning the assessment of damages for breach of copyright, see Autodesk v Cheung (1990) 94 ALR 472 at 474 477; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 111 ALR 269 at 285; Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2005) 63 IPR 137 and Eagle Rock Entertainment Ltd & Anor v Caisley (2006) 66 IPR 554. Jennings contends that it does not licence its copyright to enable third party construction to occur. It keeps its copyright in a Jennings safe harbour and uses it solely in its own construction activity. Therefore, it is said, Jennings ought not to be treated in an analogous position to an architect who might, by reason of the nature of the professional work an architect undertakes, be subject to an implied licence of the copyright in a work produced in connection with particular projects. Nor, it is said, should the hypothetical "construct" of a notional willing licensor and licensee be adopted as the framework for determining a surrogate measure of damages by reference to a licence fee. The pleading claims damages on the alternative bases of either a fee for use of the plan or lost profits in the construction of the Bogdan home. Presumably, the pleading does so in order to preserve alternative possible formulations of a remedy in damages in respect of proven infringing conduct. However, it is clear that the letter of demand from Jennings dated 19 November 2003 made a claim for a fee for use of the plan for an amount which remains the amount claimed as a fee for use in the amended pleading. In that case, Tamberlin J was addressing the assessment of damages arising out of the importation into Australia by the respondent of copies of films distributed on laser disks in the United States by Columbia Pictures . In that context, Tamberlin J rejected the utility of the licence fee approach. A similar view was taken in Eagle Rock v Caisley which concerned the assessment of damages arising out of the sale of DVD copies of an unauthorised recording of a live performance by Eric Clapton and his band. In Eagle Rock at [12], Tamberlin J said this: ... I do not consider that Eagle would, if requested, have granted a licence to Caisley or that Caisley would have paid the licence fee if he was given the choice between so doing or not using the copyright work. The two parties were in direct competition. The evidence in this case does not suggest any element of a competitive threat by the respondent, Mr Bogdan, to the activities of Jennings nor is there any suggestion of any disruption to the applicant's activities manifest in the class of case reflected in the decisions in Autodesk v Cheung , Columbia Pictures v Luckins and Eagle Rock v Caisley . Equally clearly, the element of disruption was the factual foundation upon which their Honours came to the conclusion that the applicants in each case would not have granted a licence. It is clear in this case that had a licence been sought by the respondents from Jennings it would either not have been granted or alternatively a licence fee of $20,000.00 might have been nominated by Jennings. That possibility is at least consistent with the letter of demand and the pleading. Nevertheless, had Jennings sought a licence fee from the respondents of $20,000.00, plainly enough, the respondents would not have taken up that licence.


case_text: follows that applying a licence fee in the present circumstances is an inappropriate measure of damages. Thus, damages should be assessed on the footing that damages are, in this case, at large ( Fenning Film Service Limited v Wolverhampton, Walsall and District Cinemas Limited [1914] 3 KB 1171 ; Gaunt v Hille [2007] FCA 2017 at 75 - 79).


case_title: Gaunt v Hille [2007] FCA 2017


case_text: The Tribunal did not reject the authenticity of the letters. It accepted them at face value. In those circumstances, it is hard to see why it would have thought it necessary or desirable to take evidence from the authors of the letters or form the view that further inquiries would provide material centrally relevant to the decision to be made (cf Prasad v Minister for Immigration & Ethnic Affairs (1985) 6 FCR 155). If there were inconsistencies between the apparent safety of those authors and the appellant's claims, as was put to the appellant by the Tribunal, that was a matter for the appellant to clarify. It was for the appellant to present his case. In any event, the Tribunal was under no duty to summons the authors of the letters or to inquire into their evidence ( Minister for Immigration & Multicultural & Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at [43] per Gummow and Hayne JJ; Minister for Immigration & Multicultural & Indigenous Affairs v Katisat [2005] FCA 1908 at [38] - [67] per Bennett J).


case_title: Minister for Immigration & Multicultural & Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12


case_title: Prasad v Minister for Immigration & Ethnic Affairs (1985) 6 FCR 155


case_outcome: considered

case_text: On appeal from the Federal Magistrate's decision ( SZGQI v Minister for Immigration & Citizenship [2007] FMCA 1461) the appellant, who appears in person, raises the following grounds of appeal: 1. The Federal Magistrate erred in not finding that the Appellant was denied procedural fairness by the Second Respondent and/or did not receive a fair hearing as required by section 425 of the Migration Act 1958 . 2. The Federal Magistrate erred in not finding that the decision of the Second Respondent was affected by apprehended bias. 3. The Federal Magistrate erred by refusing to contact witness and/or to advise or allow the Appellant of his right to call witness in circumstances where the evidence was readily available and was of critical importance. The grounds are substantially similar to those raised before the Federal Magistrate in relation to the Tribunal's decision. 4 Before Lloyd-Jones FM the appellant raised a number of particulars of the grounds relating to the conduct of the hearing before the Tribunal. The appellant argued that the Tribunal hearing and decision making process were inadequate in that he was not accorded procedural fairness or given a real and meaningful opportunity to represent himself. Further, the appellant submitted that the Tribunal member did not bring an impartial mind to the issues or that the member had a preconceived view (at [12]). Many of these claims were directed to the method of questioning and the adequacy of interpreting. Counsel for the appellant acknowledged there was an overlap between the particulars of the first and second grounds (at [12]). 5 His Honour had the benefit of extensive written submissions and the appellant was represented by counsel. After the hearing, Lloyd-Jones FM listened to the tapes of the Tribunal hearing and read the transcript (at [21], [25]). He considered in some detail the matters raised in the particulars and in the written and oral submissions and found that there had been no denial of procedural fairness nor any evidence to support a claim of apprehended bias (at [13]-[33]). 6 The appellant makes no submissions on those aspects of his Honour's reasons. I have reviewed those reasons for this finding and do not consider that his Honour erred. 7 The appellant also asserts that he had been ill at the time of the Tribunal hearing and suffered from depression in a way that affected his ability to participate in the hearing. There is evidence of a medical report before the Tribunal but that report does not mention a reduced ability of the appellant to attend and participate in the hearing. The appellant could not point to any other reference in the material before the Tribunal to suggest that the Tribunal should have been aware of the alleged state of his health. He said that he told his legal advisers but could point to no reference to the state of his health in any submissions to, or correspondence with, the Tribunal nor in the transcript of the hearing. I am not satisfied that there was any denial of procedural fairness on the part of the Tribunal in this regard. 8 The appellant says that the Tribunal did not believe him. That engages merits review which is not a matter for this Court. 9 The appellant asserts that the Tribunal failed to consider evidence that he submitted from Amnesty International. There is reference to that evidence in the Tribunal's decision and in the Federal Magistrate's reasons (at [32]). It is described by the Tribunal as providing a chronology of correspondence in relation to the appellant's case and evidence of his political profile and his family's profile as business people in danger of being targeted as class enemies by Maoists. The underlying facts of the appellant's personal position were accepted by the Tribunal. There is no basis for a finding of jurisdictional error in respect of this evidence.


case_title: Patmore v Upton [2004] TASSC 77

case_text: of the Patmore contract was delayed by litigation over applications initiated by the respondent (on 6 June 2003) and Mr Patmore (on 19 December 2003) for the removal of Mr Upton's caveat. A contested hearing took place in the Supreme Court in March 2004 and on 27 July 2004 Underwood J delivered a judgment ordering that the caveat be removed: Patmore v Upton [2004] TASSC 77. On 6 August 2004 the contract between the respondent and Mr Patmore for the sale of the whole of the land was completed.


case_outcome: applied

case_text: exercising its power of sale the respondent was under a duty to act in good faith, and not to fraudulently, or wilfully or recklessly sacrifice the mortgage property. The taking of reasonable precautions to obtain a proper price is part of the duty to act in good faith: Forsyth v Blundell [1973] HCA 20 ; (1973) 129 CLR 477. I am satisfied that the respondent took all reasonable steps. The land was put up at a properly advertised auction, and then remained on the market for some 15 months, during which time it only attracted one offer, for which it was sold. I am satisfied that the price was a reasonable price, and in fact was at or about market value at the time. I reject valuation evidence given on behalf of Mr Upton by Mr Daryll Timms. He valued the land at 27 November 2000 at $175,000 "for security purposes" but on the basis that "a six lot Council approved development would be completed by Mr Upton himself". It is not quite clear what is meant by this last-mentioned basis. If it means that a hypothetical purchaser was to buy on the basis that Mr Upton himself, and nobody else, would carry out works at some unspecified price, it is quite unreal.


case_text: Sealy on behalf of the respondent sought an order for costs on an indemnity basis. He referred to a number of authorities, including Fountain Meat Sales Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 where Woodward J said that such an order was appropriate where an action has been commenced or continued in circumstances where the party, properly advised, should have known that he had no chance of success. It is not necessary to show that the claim was brought for some collateral purpose or is an abuse of process. In my opinion this was a hopeless case, and should have been recognised as such from the outset. Given the initial auction and the time the property was on the market, there was no arguable basis for contending that the sale to Mr Patmore was improper. On that premise, the respondent could not have been expected to act other than in the way it did. At the heart of Mr Upton's case is, I suspect, a belief that notwithstanding he was a mortgagor in default he had some kind of right of first refusal before the mortgagee could sell. This is a misconception. There should be an award of indemnity costs. I certify that the preceding sixty-eight (68) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey. Associate: Dated: 17 August 2006 Counsel for the Applicant: RA Skiller and JA Munnings Solicitors for the Applicant: CA Johnstone Munnings & Co Counsel for the Respondent: L Sealy and M Chambers Solicitors for the Respondent: Shields Heritage Dates of Hearing: 9, 10, 11 August 2006 Date of Judgment: 11 August 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1088.html


case_title: Woodtree Pty Ltd v Zheng (No 2) [2007] FMCA 989

case_text: In the Federal Magistrates Court Riley FM dismissed all the appellant's claims: Woodtree Pty Ltd v Zheng [2007] FMCA 457. In a subsequent ruling her Honour awarded the respondents costs on an indemnity basis from 2 June 2006, the date of a Calderbank offer: Woodtree Pty Ltd v Zheng (No2) [2007] FMCA 989.


case_outcome: discussed

case_text: In dealing with this issue the learned Magistrate discussed Lott v JBW & Friends Pty Ltd (2000) 76 SASR 105. The work there in question was a graphic bar with the words "Opera in the Outback". The report does not contain a reproduction. Mullighan J held that it was a "drawing". His Honour said at [14] The graphic designer had to create a design and make choices about the layout, font, colour and dimensions of each part of the design. Having perused the graphic ... I do not regard it as so simple as to deny copyright. ... The selection of the font from a computer program is no less creative than manual drawing ... 23 In the present case her Honour, correctly in my view, pointed out at [29] that Lott is not authority for the proposition that anything a graphic designer prepares is a drawing. 24 The same point was made by Mr Minahan, counsel for the respondents, in his written submissions. The submissions, he said, involved the use of a computer and selection of typeface and decisions about layout and presentation including headings and indentation. The same could be said for a newspaper. However neither the submissions nor a newspaper would be regarded as a drawing. 25 Her Honour adopted the statement in Ricketson, S The Law of Intellectual Property, Copyright Designs and Confidential Information , at par 7.365: Essentially, a drawing is a two-dimensional work in which shapes and images are depicted by lines, often without colouring. 26 I would agree that this is the ordinary meaning of the term "drawing". The Macquarie Dictionary gives us several definitions of the noun "drawing": ... 2. representation by lines; delineation of form without reference to colour. 3. a sketch, plan, or design, esp one made with pen, pencil, or crayon. 27 In the context of the visual arts, the traditional distinction has been between paintings, which are coloured, and drawings, which are monotone, usually, but not always, black upon white. The statutory definition, particularly by its inclusion of maps, makes it clear that for the purposes of the Act something may be a drawing notwithstanding that it is coloured. However, the essence of a drawing remains the concept of a representation of some object by a pictorial line.


case_text: Certainly for something to be a "drawing" for copyright purposes no great complexity or (as the statute tells us) artistic quality is required. In Millar & Lang Ltd v Polak [1908] 1 Ch 433 the works held to be drawings included words such as "Greetings", "Friends ever". "Good luck", "Lest we forget", and "For old times sake" in a distinctive form within an ornamental oval or circular scroll. In Roland Corporation v Lorenzo & Sons Pty Ltd (1991) 33 FCR 111 the devices held by Pincus J to be drawings were based on the letters R and B but, as is apparent from the report at 112, were quite stylised. As his Honour said at 114, they were "by no means random and were plainly drawn with care, to obtain an effect". Clearly a letter or letters of the alphabet can provide the subject matter for a drawing. One thinks of the illuminated manuscripts of medieval works such as the Book of Kells. However, in the present case the text is fulfilling a semiotic function. It is communicating to the reader the message that within the cardboard box will be found a wooden photo box with 6 albums which hold 120 10 x 15 cm photos. The pictorial image of that box is conveyed by a photograph, which is not a drawing.


case_title: Roland Corporation v Lorenzo & Sons Pty Ltd (1991) 33 FCR 111


case_text: It appears that, although not pleaded, this issue was at least touched on in the court below. It is discussed at [34]-[37] of the judgment. Mr Minahan objected to this late amendment, citing the decision of the High Court in Metwally v University of Wollongong (No 2) [1985] HCA 28 ; (1985) 60 ALR 68 at 71: It is elementary that a party is bound by the conduct of his case. Except in the most exceptional circumstances it would contrary to all principle to allow a party, after a case has been decided against him, to raise a new argument which, whether deliberately or by inadvertence, he failed to put during the hearing when he had an opportunity to do so. 32 The application to amend should be refused, primarily for the reason that the proposed amendment lacks arguable merit. The notion of compilation involves a collecting and putting together or arranging or organising of disparate data. That is not the case with the appellant's label. It is simply a photograph and a description of an object. It conveys the one message. 33 The appellant's case was pleaded in the common law tort of passing off as well as alleged contraventions of ss 52 and 53 (c) and (d) of the Trade Practices Act 1974 (Cth). Section 52 prohibits conduct in trade or commerce which is misleading or deceptive or likely to mislead or deceive. More specifically, s 53(c) and (d) prohibits representations that goods or a corporation have sponsorship or approval which they do not have.


case_text: In the court below, concentration was very much on the passing off claim. However, as the Full Court has recently pointed out in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 at [96]-[99], the degree of overlap between the two causes of action should not obscure the important differences between them. The law of passing off protests goodwill as a species of property: Boehringer Ingelheim Ltd v Vetplus Ltd (2007) 73 IPR 593 at [37] per Jacob LJ, citing a passage from the judgment of Millett LJ in Harrods Ltd v Harrodian School Ltd (1996) 35 IPR 355 at 366. However claims under the Trade Practices Act it is not necessary for a plaintiff to establish an exclusive reputation, or indeed any reputation at all. The question is rather whether consumers are likely to be misled or deceived by the defendant's conduct.


case_title: Boehringer Ingelheim Ltd v Vetplus Ltd (2007) 73 IPR 593


case_title: Harrods Ltd v Harrodian School Ltd (1996) 35 IPR 355


case_text: Moreover, the learned Magistrate's findings support a conclusion that this was a case of deliberate copying. I would apply the principle in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 657. 56 On the trade practices causes of action the appellant's damages claim is based on the number of sales of the respondents' offending boxes. The appellant claims the gross profit on an equivalent number of sales it says it has lost. 57 There were 676 such sales by the respondents. The lowest profit margin for the appellant, being that on its small photo boxes, was $5.45. The resultant figure is $3684.20.


case_text: In my view, the appellant's approach is a realistic one. The competing products were presented side by side to consumers. As already noted, the effect of the offending packaging was likely to induce consumers into thinking that they were getting the same product from the same source but would be saving money by not having to pay for more elaborate packaging, which they did not need. The misleading and deceptive conduct only has to be one among a number of causes which contributes to a consumer decision harmful to a plaintiff. As Gleeson CJ said in I & L Securities Pty Limited v HTW Valuers (Brisbane) Pty Limited [2002] HCA 41 ; (2002) 210 CLR 109 at [33] : In most business transactions resulting in financial loss there are multiple causes of the loss. The statutory purpose would be defeated if the remedy under s 82 were restricted to loss of which the contravening conduct was the sole cause. 60 While the appellant's claim is based on gross profit lost, that seems a practical measure in the circumstances of this case. It is a modest claim because it assumes that all sales lost were of the small box, which had the lowest margin. It would be an artificial exercise to attempt to calculate some proportion of that profit which represented savings of fixed costs. This case was properly brought in the Federal Magistrates Court, a jurisdiction which is expected to operate as informally as possible: Federal Magistrates Act 1999 (Cth) ss 3(2)(a) and 42 . In a case of this nature parties should not feel they have to engage forensic accountants and similar experts. 61 The appeal will be allowed and the judgment below set aside. In lieu thereof there will be judgment for the appellant against the respondents (the liability of the first respondent under s 79(1)(c) of the Trade Practices Act was not in dispute). The amount of that judgment will be $3684.20 plus appropriate interest under s 51A of the Federal Court of Australia Act 1976 (Cth). 62 There remain the questions of costs. As already mentioned, the learned Magistrate made an order for indemnity costs. The respondents had made Calderbank offers as follows: • 5 April 2006: an undertaking to cease selling products with the offending packaging • 27 April 2006: the undertaking, $3775 for costs and $1200 damages • 19 May 2006: the undertaking, $4331 for costs and $2706 damages • 2 June 2006: the undertaking, $4331 for costs and $9000 damages. (The time for compliance with this offer was extended on two occasions). 63 I direct that the appellant within seven days file written submissions as to interest and costs and that the respondent file answering submissions within seven days thereafter. I certify that the preceding sixty three (63) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey Associate: Dated: 7 December 2007 Counsel for the Appellant: C Golvan SC Solicitors for the Appellant: Middletons Counsel for the Respondent: S Minahan Solicitors for the Respondent: F A L Lawyers Date of Hearing: 23 November 2007 Date of Judgment: 7 December 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1922.html


case_text: Federal Magistrate Cameron found that there had been no jurisdictional error on the part of the reconstituted Tribunal (at [21]). His Honour observed that the appellant only identified, in support of an inference of apprehended bias, the second s 424A letter and the Tribunal's ultimate findings (at [14]). His Honour observed that absent a response by the appellant to that letter, there was nothing upon which to base a conclusion that the Tribunal's mind was closed. His Honour commented further that it was unsurprising that, in the absence of a response from the appellant, the matters raised in the second s 424A letter ultimately formed at least part of the reasons why the Tribunal affirmed the delegate's decision and the two coincided. His Honour also noted that the fact that the second s 424A letter disclosed a predisposition on the part of the Tribunal is not indicative of a closed mind (at [15] citing Minister for Immigration & Multicultural Affairs v Jia [2001] HCA 17 ; (2001) 205 CLR 507 at [71] - [72] per Gleeson CJ and Gummow J).


case_text: As to the alleged breach of s 424A of the Act, the information with regard to letters from members of the Awami League was contained in advice received from the Australian High Commission in Dhaka. That information was put to the appellant for comment in the first s 424A letter sent by the first Tribunal. It was not contained in the second s 424A letter. However, as Cameron FM pointed out, the s 424A information was sent by the Tribunal to the appellant (at [17]). The fact that the first s 424A letter was sent by the first Tribunal and not the reconstituted Tribunal, does not make it any less a letter pursuant to s 424A(1) of the Act for the purposes of the second hearing (at [18]). Federal Magistrate Cameron referred in this respect to SZEPZ v Minister for Immigration & Multicultural & Indigenous Affairs (2006) 159 FCR 291. 6 In his notice of appeal setting forth the grounds of appeal from the decision of the Federal Magistrates Court the appellant raises, in effect, the same grounds as those raised before his Honour. 7 The first ground asserts error on the part of the Federal Magistrate and failure to provide relief because it is said the reconstituted Tribunal cannot rely on the first s 424A letter, sent by the first Tribunal. 8 The second ground alleges that there was a reasonable apprehension that the Tribunal member had made up his mind to affirm the decision of the delegate at the time when the reconstituted Tribunal sought to comply with its obligations under s 424A of the Act. The particulars given of that ground set forth the tests to be applied in the determination of apprehended bias and an assertion that the Tribunal member had already decided to affirm the decision of the delegate at the time that the letter was sent. 9 As to the first ground, I do not see any error in the reasoning of the Federal Magistrate or his Honour's reliance on SZEPZ . The information that formed part of the reason for decision of the reconstituted Tribunal, which it was obliged to provide to the appellant for comment, was the information as to false documents that was contained in the first s 424A letter. As such, it was available to the reconstituted Tribunal to rely upon it without further requirement that it be sent to the appellant again. Although it is for the member of the reconstituted Tribunal to provide the consideration of what would be the reason or part of the reason for affirming a decision under review, the sending of information for the purposes of s 424A(1) of the Act and the receipt of information for the purposes of s 424A(3)(b) does not depend on the identity of the particular member constituting the Tribunal ( SZEPZ at [39] [40]). 10 I also agree with his Honour's reasons for rejecting the claim of apprehended bias. No basis to support this ground has been made out. The appellant appeared before me in person assisted by an interpreter. When asked to expand upon this ground, he asserted that the Tribunal had made its decision in bad faith but was unable to provide particulars other than his wish to have the decision set aside so that he could put more information, being further material that was not before the Tribunal at the time of his decision. to the Tribunal in order to enable it to come, he said, to a different conclusion. 11 I have not discerned jurisdictional error on the part of the Tribunal nor error on the part of the Federal Magistrate. 12 It follows that the appeal must be dismissed. The appellant is to pay the first respondent's costs. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett. Associate: Dated: 18 February 2008 The Appellant was self represented Counsel for the Respondent: T Reilly Solicitor for the Respondent: Sparke Helmore Date of Hearing: 13 February 2008 Date of Judgment: 13 February 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/77.html


case_text: The appellant appealed to the Federal Magistrates Court from the decision of the reconstituted Tribunal ( SZFQB v Minister for Immigration & Citizenship [2007] FMCA 1518). The appellant claimed that: • the Tribunal had already made up its mind to affirm the delegate's decision by the time it sent the second s 424A letter, that is, a ground of apprehended bias; and • the Tribunal had not complied with s 424A of the Migration Act 1958 (Cth) ('the Act'), specifically there was a failure to advise the appellant of information received by the Tribunal, that many members of the Awami League are prepared to offer letters of support at the request of applicants such as those the appellant tendered to the Tribunal.


case_text: In Theodore v Mistford Pty Ltd [2005] HCA 45 ; (2005) 221 CLR 612, the High Court (Gleeson CJ, McHugh, Gummow, Callinan and Heydon JJ) recognised and reinforced that an equitable mortgage can be effected by the deposit of title deeds if they were deposited with intent that the land to which they relate be security for payment of a debt. As in that case (discussed at 621, [24]), this is not a case where I need to consider whether to presume an intention to create a security from the relationship of debtor and creditor and the delivery of title deeds: see Bank of New South Wales v O'Connor (1889) 14 App Cas 273 at 282 283; In re Wallis & Simmonds (Builders) Ltd [1974] 1 WLR 391 at 395. I have found that an intention to create the security existed.


case_title: Bank of New South Wales v O'Connor (1889) 14 App Cas 273


case_title: In re Wallis & Simmonds (Builders) Ltd [1974] 1 WLR 391


case_outcome: distinguished

case_text: My attention was drawn to Arnick Holdings Limited and Ankar Pty Ltd v Australian Bank Ltd (unreported, Supreme Court of New South Wales (Equity Division), Bryson J, 4 December 1987) by counsel for Mr Callipari. That case turned on the findings of Bryson J on the evidence. Given my findings of fact, I do not think it assists me in the resolution of this case. 45 Finally, counsel for Mr Callipari submitted in the alternative that Web Wealth has acted in a manner by which it unequivocally surrendered its security. The question was asked rhetorically; if Web Wealth held security why did it not raise the issue earlier than it did? I have considered that question when making my findings of fact. I do not consider that there is anything which indicates that Web Wealth surrendered its security, or acted in a way which amounts to a waiver of its rights to enforce the security or to an election to surrender it or not to enforce it. 46 The parties were agreed upon the appropriate form of orders if I were to reach the conclusion I have reached. I think they are appropriate. I accordingly declare that Web Wealth Pty Ltd has an interest in the fund comprising the proceeds of sale of the land described in Certificates of Title Register Book Volume 9983 Folio 505 and Volume 9593 Folio 463 ("the properties") corresponding to the equitable mortgage in its favour created by the deposit of duplicate certificates of title by Helimount Pty Ltd in January 2005. I also order that the liquidator pay to Web Wealth Pty Ltd such sum as represents the proceeds of sale of the properties less the costs and disbursements of the liquidator in realising the properties.


case_text: for ASIC submits that the role of the SOFAC was to afford procedural fairness to Mr Gould and that what procedural fairness requires does not involve a fixed body of rules to be applied at a formulaic manner. Counsel refers to the statement by Gleeson CJ in Re Minister for Immigration and Multicultural and Indigenous Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1 at [37] that: Fairness is not an abstract concept. It is essentially practical. Whether one talks in terms of procedural fairness or natural justice, the concern of the law is to avoid practical injustice. Counsel also referred to Adler v Australian Securities and Investments Commission [2003] NSWCA 131 ; (2003) 46 ACSR 504 at [139] where Giles JA quoted from Greek Herald Pty Ltd v Nikolopoulos (2001) 54 NSWLR 165 at [18] where Mason P had said that "pleadings serve the ends of justice [and] must not be permitted to assume an independent self-referential function".


case_title: Adsett v Berlouis (1992) 37 FCR 201

case_text: Tribunal, however, saw the question as being not one of requiring a different mode of delivery, but one of ensuring a sufficient margin of time to allow for any risk of mail delays. This was necessary, according to the Tribunal, in order for a liquidator "to perform the work with reasonable care and skill and in an efficient and economical way" (at [222]), citing Adsett v Berlouis (1992) 37 FCR 201 ( Adsett ) at 212. The Tribunal concluded that the late lodgement was the fault of Mr Gould or his staff. It described that fault as not a serious one, but said that the gravamen of Contention 6.5 was not the late posting but the charging of the late fee as an expense of the liquidation (at [223]). A separate submission made by Mr Gould was, according the Tribunal, based on Mr Gould's right of lien. There were inadequate funds in the liquidation to pay all of Mr Gould's remuneration and expenses, and he was owed many thousands of dollars in fees. His argument was that since the entire fund at the time was payable to him, the $120 was, in effect, paid to him because he would have been entitled at the time to transfer the entire fund to himself for work performed. It followed, according to Mr Gould's submission, that his choice to pay $120 of the funds to ASIC rather than to himself could not be properly the subject of criticism. The Tribunal also cited various passages from Adsett , and implied that the expenditure on the late fees was not "reasonable", was not "prudently and reasonably incurred", and was not incurred "conformably with the duty to perform the work with reasonable care and skill and in an efficient and economical way" (at [228]). The Tribunal concluded its discussion of Contention 6.5 as follows (at [229]): "While the evidence does not warrant a finding of fraud, neither does it depict a genuine misapprehension and a sincere belief that the action was justified, as the applicant submitted. His endeavours to obtain waiver of the fees suggest that he knew that he was personally responsible for them. And describing the payment as "Lodgement fees" in the May 1999 Form 524 was disingenuous at best. The applicant plainly knew he had something to hide and tried to hide it." As indicated at [167] above, I do not agree that Mr Gould's endeavour to obtain a waiver was an acknowledgment of personal responsibility for the fees.


case_text: Tribunal rejected a submission made by Mr Gould in reliance on Ah Toy v Registrar of Companies (1986) 10 FCR 356. In that case, at 381, a Full Court of this Court accepted that circumstances could arise in which it would be accurate to characterise a debit to an estate of penalty fees as a "fraud on the creditors", but considered that that would be so only where the penalty fees had been incurred at "as a result of the neglect or omission of the liquidator" (at 381). In the case before their Honours there was no evidence as to the circumstances under which the penalty fees had become payable: the fault may have lain with the liquidator or with another party or "may have been caused by circumstances outside the control of the liquidator and his agents" (at 381). Their Honours observed that a finding of fraud, especially against a professional person in relation to his or her professional activities, should be made only upon the basis of clear evidence and after the person concerned has had the opportunity to deal with the matter. The Tribunal distinguished Ah Toy . It considered that the Full Court was directing its attention to the trial judge's finding that the liquidator's charging the company's estate with a total of $127 for late filing fees was "most reprehensible" and "a fraud on the creditors, small but important, as indicating serious impropriety" (at 380). The Tribunal remarked (at [220]): "It was the finding of fraud that the court set aside, not the finding that the late fee should not have been charged to the estate as such. That would depend on whose fault it was that the documents were lodged late. In this case it can only have been the applicant's." In substance the Tribunal decided that if Mr Gould chose to rely on the post, he had to accept the risk of incurring a late filing fee "or else allow a margin of a couple of days to guard against the risk of late delivery" (at [221]). The Tribunal recorded Mr Gould's evidence that it was widely regarded as competent practice to mail forms to ASIC, that it was extraordinary for that course to fail and that he had not known of a prior occasion when the mail had "failed". The Tribunal also noted Mr Gould's evidence that to require a different mode of delivery in all cases would increase the cost to creditors, for no real benefit in nearly all cases. The Tribunal said (at [227]) that it did not think the facts warranted a finding of fraud, but nor did it think that Mr Gould was justified in treating the expense as a reasonable expense of the liquidation or as otherwise proper. Indeed, the Tribunal thought that the reasoning in Ah Toy strongly suggested the opposite.


case_text: Gould submits that in the absence of expert evidence, it was not permissible for the Tribunal to find that he had not carried out or performed his duties as liquidator of Popwing "adequately and properly". Mr Gould submits that this question is one of judgment, not a pure question of law, and that the answer must be informed by evidence of accepted proper practice: Mr Gould refers to Re Vouris; Epromotions Australia Pty Ltd and Relectronic-Remech Pty Ltd (in liq) [2003] NSWSC 702 ; (2003) 47 ACSR 155 at [101] and [103] Goodman v Australian Securities and Investments Commission (2004) 50 ACSR 1 at [26]; Dean-Willcocks at [24]-[26]; Albarran v Companies Auditors and Liquidators Disciplinary Board [2007] HCA 23 ; (2007) 231 CLR 350 at [18] , [20] and [24].


case_text: Tribunal dealt with the question of whether Mr Gould's consent could operate nunc pro tunc . It referred to Ascot Investment and Management v Livestock Genetics (1999) 205 LSJS 247 ( Ascot ) and Re Anderson and Companies Auditors and Liquidators Disciplinary Board [2007] AATA 1540 ( Anderson ). In Anderson the Tribunal reviewed a decision under s 1292(2)(d)(ii) of the Act. It was alleged that an administrator had not complied s 439A(4) of the Act. The administrator had been appointed on 12 February 2004 but had not consented to act until four days later. Although the point was not argued, neither ASIC, nor the Board nor the Tribunal expressed any doubt about the validity of the appointment. The Tribunal noted (at [102]) that ASIC did not dispute the correctness or applicability of Ascot or Anderson . The Tribunal concluded that there was no legal impediment to the adoption of an appointment resolution that operated conditionally on the appointee's consenting to the appointment. The Tribunal entered a caveat: the consent must be given within a timeframe that was appropriate to the procedure in question, but the Tribunal saw no difficulty in this respect in the present case in which the lapse of time was of only some three weeks. I do not gain particular assistance from Ascot , which concerned a different statutory provision, s 440D(1) of the Law, nor from Anderson , in which the Tribunal was not called upon to address the present issue.


case_text: Tribunal dealt with the question of whether Mr Gould's consent could operate nunc pro tunc . It referred to Ascot Investment and Management v Livestock Genetics (1999) 205 LSJS 247 ( Ascot ) and Re Anderson and Companies Auditors and Liquidators Disciplinary Board [2007] AATA 1540 ( Anderson ). The Tribunal noted that in Ascot Smith DCJ held that an administrator's written consent to the beginning of a proceeding against a company in administration could operate nunc pro tunc . Section 440D of the Law provided that during the administration of a company, a proceeding in a court against the company or in relation to any of its property could not be begun or proceeded with, except with the administrator's written consent or with the leave of the Court. The Tribunal said (at [100]) that Smith DCJ had held that s 440D did not "invalidate that part of the proceedings that had unfolded before the date of consent". The Tribunal noted (at [102]) that ASIC did not dispute the correctness or applicability of Ascot or Anderson . The Tribunal concluded that there was no legal impediment to the adoption of an appointment resolution that operated conditionally on the appointee's consenting to the appointment. The Tribunal entered a caveat: the consent must be given within a timeframe that was appropriate to the procedure in question, but the Tribunal saw no difficulty in this respect in the present case in which the lapse of time was of only some three weeks. I do not gain particular assistance from Ascot , which concerned a different statutory provision, s 440D(1) of the Law, nor from Anderson , in which the Tribunal was not called upon to address the present issue.


case_text: Gould submits that the Board's decision that it was satisfied of the existence of the ground set out in s 1292(2)(d) was itself a reviewable decision, similar to the decision in Australian Broadcasting Tribunal v Bond [1990] HCA 33 ; (1990) 170 CLR 321 ( Bond ) that the licensees were no longer fit and proper persons to hold broadcasting licences under s 88 of the Broadcasting Act 1942 (Cth). Counsel for Mr Gould refers to passages in the various judgments in Bond in which it was recognised that the Australian Broadcasting Tribunal's "finding" that licensees were no longer fit and proper persons to hold their licences was itself a decision under an enactment because, although it was also a step on the way to the ultimate decision whether to revoke or suspend the licence or to impose conditions, it was a decision on a matter of substance for which the statute provided as an essential preliminary to the ultimate decision: see Mason CJ at 337, 339; Brennan J at 365; Deane J at 369; Toohey and Gaudron JJ at 377. The Tribunal stated (at [31]) that it was not contested that the decision under review before the Tribunal was the Board's decision to make a suspension order as allowed for by the concluding words of s 1292(2). The Tribunal said that the reaching of a state of satisfaction that the grounds for the making of that order were made out was a step along the way to the ultimate decision and was not itself reviewable. The Tribunal also referred to Bond at 336-338 per Mason CJ. However, Mason CJ qualified his description of the position that "ordinarily" prevailed as mentioned above. Section 1317B(1) of the Law (and of the Act) provided that application might be made to the Tribunal for review of, relevantly, a decision made under the Law (or the Act) by the Board. It is at least clear that the Board's decision to suspend Mr Gould's registration as a liquidator was a decision made under an enactment (cf s 1292(2) of the Law and of the Act) and was reviewable by the Tribunal. I will assume, by reference to the passages from Bond referred to above, that the Board's being satisfied of any of the states of affairs referred to in s 1292(2)(d) is also a decision made under the statute, and that the Tribunal erred in stating otherwise. Nonetheless, I do not see how this avails Mr Gould, because Contentions 2.1, 6.5, 6.6 and 6.7A were relied on by ASIC as supporting that essential intermediate decision, as well as the ultimate decision to suspend Mr Gould's registration. The same principles must govern the question whether it was permissible for the Tribunal to entertain those Contentions, regardless of whether the Tribunal was reviewing the ultimate decision to suspend or the essential intermediate decision in the nature of the making of a finding. I do not think that there is merit in Mr Gould's first submission. Mr Gould secondly submits that an assumption by the Tribunal of jurisdiction over charges that were not previously the subject of a Board determination deprives a member of the profession of his or her right to have a "merits review": appeals from the Tribunal are on questions of law only (see s 44(1) of the AAT Act). The five legal principles and the authorities that Mr Gould cites in support of them are as follows: (a) ASIC must act with reasonable promptness and diligence in prosecuting charges in respect of a matter or complaint that comes to its attention: Herron v McGregor (1986) 6 NSWLR 246 at 254; Gill Herron and Gardiner v Walton (1991) 25 NSWLR 190 at 208A per Kirby P; R v Chief Constable of the Merseyside Police ; ex parte Calveley [1986] QB 424 ( Calveley ); (b) A prosecutor will generally be permitted to have only one "bite of the cherry" in respect of any formal hearing of charges against a defendant in respect of a matter in issue: Walter Construction Group v Fair Trading Administrative Corporation [2005] NSWCA 65 ; (c) A decision by an administrative body or court to stay or to refuse to deal with charges on the ground that their prosecution would be unfair and oppressive to the defendant may prevent them from being re-agitated, even if the fresh proceeding could be conducted without unfairness to the defendant, by analogy to principles which inform the rule against double jeopardy or as a species of double jeopardy: Walton v Gardiner (1993) 177 CLR 378 at 396-398 per Mason CJ, Deane and Dawson JJ; Jago v District Court of New South Wales [1989] HCA 46 ; (1989) 168 CLR 23 at 58 per Deane J; Gill v Walton (1991) 25 NSWLR 190 at 200-202 per Gleeson CJ, at 206-207 per Kirby P; (d) Allegations which, owing to the delay in their being prosecuted, may prejudice the defendant and deny him or her his right to a fair hearing, may be stayed: Jago v District Court of New South Wales [1989] HCA 46 ; (1989) 168 CLR 23 ; (e) If, because of the above matters or otherwise, it would be unfair or oppressive to a defendant to face the charges in question, a tribunal such as the Tribunal, is required to stay or to decline to hear the charges: Re Moline and Comcare (2003) 77 ALD 224 , [2003] AATA 827 ; Hughes Aircraft Systems International v Air Services Australia (1997) 146 ALR 1 at 40-42 per Finn J; Melbourne Steamship Co Ltd v Moorehead (1912) 15 CLR 332 at 342 per Griffith CJ; Logue v Shoalhaven Shire Council [1979] 1 NSWLR 537 at 558-9 per Mahoney J; SCI Operations Pty Ltd v Commonwealth of Australia (1996) 139 ALR 595 ; Greiner v Independent Commissioner Against Corruption (1992) 28 NSWLR 125.