case_text: First , it denies use of the new Norm 4 in 1 bucket as a source of ideas. Secondly , it contends that the applicant has adopted an unorthodox approach in adducing evidence of its claim of authorship and originality of the works and thus subsistence of copyright in the plans with the result that, at the threshold, the applicant's case necessarily fails for lack of proof. Thirdly , it contends that if the sequence of development of the plans by the applicant involved developing a three-dimensional part and then a two-dimensional drawing simply as a version of the three-dimensional work, copyright can not subsist in the drawing: the drawing must come first. Fourthly , the diversity of buckets available in the market at the dates on which the drawings are said to have been originated for the applicant' s 4 in 1 bucket, is compelling evidence of a lack of originality in the plans. Fifthly , it contends that the applicant did not originate the plans in suit at the date alleged and thus copyright did not subsist in the plans at the moment in time when the respondent is said to have engaged in infringing conduct. Sixthly , it contends that an examination of the plans makes it plain that its drawings do not constitute a reproduction of the applicant's drawings. Seventhly , the diversity of manufactured buckets in the market at the moment in time when the respondent developed its 4 in 1 bucket is compelling evidence that the features reflected in the respondent's plans are consistent with features well known in the market and thus any similarity of features has not derived from copying the applicant's components for its 4 in 1 bucket. Eighthly , the applicant has failed to properly establish a foundation for the calculation of damages. 15 Ninthly , the respondent contends that if copyright subsists in each artistic work, the applicant has nevertheless industrially applied a corresponding design in circumstances where the corresponding design was either not registrable or had not been registered at the material time and thus by reason of Part III , Division 8, ss 74 to 77 of the Copyright Act , it is not, for the period prior to 17 June 2004, an infringement of the copyright in each artistic work to reproduce the works by applying that corresponding design to an article, at any time after articles made to the corresponding design were first sold (or offered for sale). Further, the respondent contends that after 17 June 2004, it is not an infringement of the copyright in each artistic work, by force of s 77(2) of the Copyright Act (introduced into the legislation by the Designs (Consequential Amendments) Act 2003 effective from 17 June 2004) to reproduce each artistic work on or after the day on which products made to the corresponding design were first sold (or offered for sale), by embodying that corresponding design in a product . 16 The applicant joins issue with the respondent on all of those contentions and says firstly that even though the respondent made changes to its drawings for the components in March 2005 and further changes in October 2005, the changes are simply cosmetic changes designed to obfuscate the continuing conscious reproduction of the applicant's works and secondly, the pre-conditions for the operation of s 77 of the Copyright Act whether under the form of the legislation in existence prior to 17 June 2004 or as amended by the Designs (Consequential Amendments) Act 2003 , are not satisfied. 48 First , the moment in time when Mr Pesch made design changes to the 'First Plans' for the bucket is said to be 2001/2002. Secondly , the changes are described as 'design changes'. Thirdly , the changes were made necessary so as to respond to demands from some customers due to the greater horsepower of some machines using the buckets. Fourthly , initial changes occurred by making changes to the bucket itself in the workshop and as a result Mr Pesch says he managed the process to 'improve and make changes to the previous design' . Fifthly , once the changes had been made to the bucket, the plans were changed to 'reflect' the changes. Sixthly , the plans which show the content of the changes emanating from Mr Pesch's improvements to the First Plans comprise 19 new plans called the 'Second Plans'. Those 19 plans are identified by reference to the applicant's List of Documents and all 19 plans are attached to the list verified by Mr Pesch in December 2005. Seventhly , each of the 19 plans relates to component parts of the bucket and Mr Pesch says he drew those plans using Autocad software. Eighthly , Mr Pesch describes two features of the componentry for the bucket and the orientation of those components as an explanation of the changes to the bucket and thus the changes resulting in the second plans. Mr Pesch says that it was necessary to incorporate a stronger and better structure for the buckets because under additional horsepower, the buckets tended to break using the existing design for the pivot system which under hydraulic pressure would cause the bucket to open and close. Mr Pesch says the other major change to the design resulting in changes to the plans concerned the geometry of the bucket which meant that 'two sides of the buckets were altered so that wear was reduced' . 49 Paragraphs 10 and 11 of Mr Pesch's affidavit of 22 December 2005 and paragraph 2 of his affidavit of 29 May 2006 represent the total evidence-in-chief of the applicant as to the scope and content of the skill, work, effort and labour deployed by Mr Pesch as author of the Second Plans to bring into existence original works in which copyright subsists . 50 Ordinarily, the author of each artistic work would identify the plan, explain each of the circumstances which caused the plan to be brought into existence, the precise steps taken to address the inadequacies in the existing plans and those features of each drawing which are the emanation of the work, skill, effort and labour of the author. The applicant in this case has elected to identify the plans by reference to the List of Documents, assert authorship of the 19 plans and plans 185A to 185G and identify the scope and content of the changes to the First Plans by means of inviting a comparison between the pre-existing First Plans and the Second Plans aided by the explanation at paragraph 11 of the affidavit of 22 December 2005 and paragraph 2 of the affidavit of 29 May 2006. 51 However, Mr Pesch gave oral evidence of the development of the plans in suit and the date of creation of changes to the 4 in 1 bucket and the consequential changes to the drawings. It is necessary to closely examine this evidence in assessing the originality of the Second Plans and in determining the date of authorship of those plans. 52 Mr Pesch says this. 162 First , Mr Preece initiated the idea of introducing a 4 in 1 bucket into the respondent's product range because the sales team was receiving requests from customers for a 4 in 1 bucket. It was perceived as a good idea for sales. It was acted upon. The Norm bucket was the major selling bucket in the market at the time. It was a successful bucket. It was what the respondent needed. The process of developing the respondent's bucket began in either October or November 2003. 163 Secondly , Mr Stewart Wright gave an instruction to Mr Arrowsmith to have a look at the old Norm bucket. Mr Wright says that Mr Arrowsmith's inspection of the old Norm bucket was part of a process of evaluation so that Digga could try and work out some costings and get some general ideas of design. Mr Wright in an equivocal way said that he did not have an entirely certain recollection of observing Mr Arrowsmith make rough measurements of the old Norm bucket. Mr Wright says that the processes undertaken by Mr Arrowsmith were to obtain general ideas of design not to copy the bucket. However, Mr Wright says that Mr Arrowsmith was examining the bucket and perhaps making drawings and measurements of some kind, for a costing purpose . The purpose of identifying the costs in context was one of identifying with some precision the cost of making the bucket and thus a precise understanding of the dimensions of the bucket, its componentry, the amount, grade and quality of steel that would be required, the dynamics of the assembly mechanism, the functionality of the bucket and other such matters so that the cost of labour, time and materials could be accurately determined. The respondent would then know the cost of producing such a bucket and thus be in a position to determine a retail and wholesale price for its buckets. 164 Thirdly , since the initiative to introduce a 4 in 1 bucket into the respondent's product range came from the sales team and particularly Mr Preece against the background of Mr Preece's assessment of the sales success by October 2003 of the Norm bucket, it is entirely unlikely that the respondent did not have regard to and inspect the new successful Norm bucket. Mr Wright accepts that the individuals given the task of developing the respondent's bucket would have referred to both the old and the new Norm buckets; that such an approach was logical and that he hoped that they would have looked at more than the old Norm bucket. Mr Wright recognises that Mr Arrowsmith was given a pretty quick time frame to deliver a 'designed' bucket. Mr Wright recognises that new Norm buckets are readily available to the respondent and Mr Preece seems to have been in a position to obtain a new Norm bucket on one or two days' notice. 182 Although I have found that the respondent made conscious use of the applicant's new 4 in 1 bucket and has consciously copied components of the bucket, the court must be satisfied that the respondent reproduced each of the applicant's drawings or a substantial part of them. The test of reproduction is whether there is a sufficient degree of objective similarity between the applicant's drawings and the respondent's drawings ( Francis Day & Hunter Ltd v Bron [1963] Ch. 587 at p 614 per Wilmer LJ; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ; CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 ; (1999) 44 IPR 512 [52] per Merkel J). The question of what amounts to substantial reproduction in any case is not capable of precise definition and is a matter of fact and degree ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at p 473 per Lord Evershed). The question of reproduction is a separate question from causal use and causal copying although the two overlap ( Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ [27]). 183 In CIPEC v First Melbourne Securities (supra), Merkel J [52] noted the principles governing copyright infringement in architectural plans, isolated by his Honour in Henley Arch Pty Ltd v Clarendon Homes Pty Ltd (1998) 41 IPR 443 at 460 and concluded that the same principles apply in determining infringement by reproduction of drawings for the manufacture of three-dimensional components of industrial manufacture (in that case, expansion joints). Those principles recognise that no reproduction arises where substantially similar works are produced through independent efforts; greater weight will be given to the quality of that copied than to its quantity ; in considering the quality of that copied, the simpler and more common place the plans or drawings the more closely must the alleged infringer adhere to the applicant's work; where a significant proportion of the features found in the challenged plan and that of the work in suit are common to all plans for the relevant subject matter, the subsistence of copyright in respect of those features may be limited; and in determining objective similarity, the court will be assisted by expert evidence which is of value in exposing facets of the ultimate question. 217 The pre-condition to the operation of s 77(2) involves four integers. First , the subsistence of copyright in an artistic work. Secondly , the industrial application of a 'corresponding design' by or with the consent of the copyright owner. Thirdly , the sale (or hire or offering for sale) of 'articles' to which the 'corresponding design' has been 'applied' and fourthly , at the time of sale (or hire or offering for sale) of articles to which a corresponding design has been applied industrially, the corresponding design was not registrable under the Designs Act 1906 or had not been registered under that Act. 224 The formulation of s 77(2) at [216] addresses reproduction of the artistic work by applying a design to an article and operates whether the corresponding design was either not registered or not registrable (s 77(1)(d)). Notwithstanding the change to the earlier formulation of s 77(2) and the inherent 'critical question' identified by Franki J partially raised by the earlier formulation, a design for the purposes of s 74 and s 77 under the formulation at [216] remains a design as defined by the Designs Act ( Hosokawa Micron International v Fortune (supra) at 396; Shacklady v Atkins (1994) 30 IPR 387 at 394 and CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 at [82] ). 228 The applicant says that this conduct is something quite different from the application of a corresponding design inherent in the artistic work to an article in a way which enables the features of shape or configuration to be seen in a finished article. The applicant says there is no design within the meaning of the Designs Act 1906 and thus no corresponding design and therefore no role to play for s 77(2). That submission ultimately turns on three things. First , whether there is a corresponding design in relation to an artistic work capable of application to an article. Secondly , whether the article in question is the 4 in 1 bucket or alternatively components comprised in an assembled bucket. Thirdly , whether, by reason of the notion of a focus upon 'registrability', the artistic work is deprived of registration as a design because each drawing does not qualify for registration under the Designs Act 1906 as a design. 229 As to the first, it seems to me from an examination of each of the applicant's artistic works in suit and particularly those drawings for the components I have found to be original drawings, namely, drawings for the outside mounting bracket, inside mounting bracket and pivot arms comprising the pivot mechanism, that features of shape or configuration are apparent. Having regard to the evidence of Mr Pesch and that of Mr Gould, the shape of the outside mounting bracket might vary in its configuration having regard to the shape a designer might select. The criticism Mr Gould makes is that whatever shape a designer might select, the real question is whether a range of possible shaped outside mounting brackets will perform the function an outside mounting bracket is required to perform. It seems clear that the designer of the outside mounting bracket has selected the particular shape evident in the applicant's artistic work and in that sense there has been 'room for choice' by Mr Pesch. Mr Pesch gave evidence that the designer could have made one of a number of choices and that the shape selected by the author/designer was made to make the component look better and function more efficiently. As to the pivot mechanism, there is no doubt that the outer pivot arm and cranked inner pivot arm assume the features of shape in very large part to give structural strength to the opening mechanism under hydraulic load. That design change was brought into existence as a result of complaints to Mr Pesch of failures in the bucket under load by users. Clearly, the pivot mechanism with its two arms exhibit features of shape. However, it seems to me that these features are more than a blend of industrial efficiency with visual appeal. These features are very substantially determined by the requirements of strength and configuration for a double arm mechanism to enable the applicant's 4 in 1 bucket to open and close under hydraulic static and dynamic load. The demands of function overwhelm the features of shape for such a utilitarian component of a utilitarian bucket. 230 The notion of appeal to the eye does not necessarily mean aesthetic appeal (although that may well be present in a particular design) but simply means a 'mental conception conveyed to the mind of the eye' ( Dart Industries v Décor Corporation Pty Ltd (1989) 15 IPR 403); in that sense, visual differentiation of shape is required. In some cases, the drawings potentially exhibiting a design may be complex such as detailed sectional engineering drawings and the features of shape may therefore be difficult to discern with the result that any element of appeal to the eye is solely based on the functional efficiency of the component (such as an engineering drawing for a sealed expansion joint for a bridge ( CIPEC v First Melbourne Securities (supra)). Although the pivot mechanism exhibits identifiable features of shape, I am satisfied that those features, although they involve some minor element of shape selection, are almost entirely dictated by the utilitarian function that a pivot mechanism must perform in facilitating the separation of the front and back sections of the bucket. In respect of that component therefore, there is no relevant design. However, I take a different view in relation to the inside mounting bracket and accept that the drawing for that component exhibits a design. 237 The protection afforded by s 77(2) of the Copyright Act applies only when a respondent reproduces the applicant's work 'by applying that or any other corresponding design to an article' . An article means any article of manufacture [231] ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461. The process of application by the respondent of a corresponding design inherent in the applicant's artistic work involved a particular process. The respondent brought into existence a two-dimensional drawing representing a substantial reproduction of the applicant's work. That two-dimensional reproduction was used by the respondent to enable it to apply the corresponding design in the applicant's drawing to an article of manufacture. The applicant contends that the step of making a two-dimensional drawing which is a reproduction of the applicant's relevant work is not susceptible of protection under s 77(2) ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (supra) at 474; Shacklady v Atkins (1994) 30 IPR 387 at 393; CIPEC v First Melbourne Securities Pty Ltd (supra) at 530), because the statutory immunity applies only in relation to the application of a corresponding design to articles of manufacture. The two-dimensional drawings of the respondent are not articles of manufacture. If this contention has force, it gives rise to a counter-intuitive anomaly of a respondent being free to apply the applicant's industrially applied corresponding design to articles of manufacture yet being constrained by infringement of copyright in the applicant's artistic work in making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture. 238 The authorities mentioned above which are said to support the notion that making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture is not an infringement of the copyright in the artistic work, require brief examination. In CIPEC v First Melbourne Securities , Merkel J acknowledged that it was common ground between the parties that s 77(2) only applies to three-dimensional reproductions of the drawings in suit and, 'Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393' . Accordingly, there was no controversy about the question between the parties and no contradictor to the proposition that s 77(2) might extend to provide immunity in respect of the two-dimensional drawing. In Shacklady , Davies J accepted that the defence in s 77 'merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially' . That assumed position was adopted by Davies J in response to a submission that s 77 did not apply in the circumstances of the case because Mr Shacklady's right to enforce his copyright was influenced by a transitional period between the statutory regimes arising out of re-enactment of particular provisions taking effect from 1 October 1990 and one issue was the operation of the section in relation to past events in circumstances where, nevertheless, articles to which the corresponding design had been applied were sold after the commencement of the new provisions. Notwithstanding that contextual question, it is clear that Davies J proceeded on the footing that the immunity provided by s 77(2) only operates in relation to three-dimensional reproductions brought about by application of an industrially applied corresponding design. In Amalgamated Mining v Warman (supra), the facts involved both production of an infringing two-dimensional plan used as a step along the way to application of a corresponding design and use of the applicant's two-dimensional artistic work itself to make the two-dimensional infringing plan used as a step along the way. Nevertheless, Wilcox J accepted that s 77 only provided an immunity, relevantly, in relation to acts 'within the scope of the copyright in the corresponding design' being the aggregate of things that the registered owner of a design would have the exclusive right to exercise. Therefore, s 77 'does not include a sheet of paper whose only function is to carry the design. It follows that the subsection has no application to plan to plan copying. The doing of such a thing is not an infringement of the monopoly in the registered design; it is not "within the scope of the copyright" or "monopoly" "in the corresponding design".' 242 There is one further matter which might have the effect of removing the features of shape from the scope of a design for the purposes of the Designs Act 1906 and, as a result, from the notion of a corresponding design. A design excludes 'a method or principle of construction' . As Merkel J notes in CIPEC v First Melbourne Securities (supra) [95] [98], the relevant principles emerged from the judgment of the High Court in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd [1987] HCA 37 ; (1987) 180 CLR 483 at 488. The notion is that only design features or those features which convey the idea of a particular shape qualify as a design. The contended design will not qualify to provide the proprietor with a monopoly in data or information conveying a method or principle of construction. To the extent that a drawing exhibits features of shape or ornamentation and thus exhibits a design but also contains dimensional data or other technological information facilitative of construction of an article of manufacture, such a drawing nevertheless continues to exhibit a design and is not prevented from falling within the scope of the definition of design merely by reason of the addition of other information. Although Wilcox J took a different view and determined that engineering drawings containing technological data either necessary or desirable for the manufacture of parts for slurry pumps for mining operations were not capable of registration as designs as a method or principle of construction and thus outside the definition of a design, I concur with the view of Merkel J in CIPEC v First Melbourne Securities that such a view adopts too broad an approach to the exclusion. 252 First , an infringement of the copyright in the applicant's drawings for the pivot mechanism, outside mounting bracket, inside mounting bracket and front assembly drawing in the period 2 December 2003 to 17 June 2004 by the respondent making a two-dimensional reproduction of those drawings. 253 Secondly , an infringement of the copyright in the applicant's drawing for the pivot mechanism by the respondent making a two-dimensional reproduction of that work and a three-dimensional component effecting a substantial reproduction of the drawing, from 2 December 2003 to trial. 254 The question is, what measure of damage should be awarded in respect of these acts of infringement in order to provide reasonable compensation to the applicant. 267 First , examine the number of sales made by the respondent of the relevant 4 in 1 buckets. 268 Secondly, assume that since Digga was trying to meet the market leader by introducing its 4 in 1 bucket, it was at least trying to capture sales from the supply side market leader (and no doubt from other suppliers). 269 Thirdly , assume that the number of sales actually made by the respondent represents sales, on balance, the applicant would have made, as a starting point.


case_outcome: cited

case_text: In CIPEC v First Melbourne Securities (supra), Merkel J [52] noted the principles governing copyright infringement in architectural plans, isolated by his Honour in Henley Arch Pty Ltd v Clarendon Homes Pty Ltd (1998) 41 IPR 443 at 460 and concluded that the same principles apply in determining infringement by reproduction of drawings for the manufacture of three-dimensional components of industrial manufacture (in that case, expansion joints). Those principles recognise that no reproduction arises where substantially similar works are produced through independent efforts; greater weight will be given to the quality of that copied than to its quantity ; in considering the quality of that copied, the simpler and more common place the plans or drawings the more closely must the alleged infringer adhere to the applicant's work; where a significant proportion of the features found in the challenged plan and that of the work in suit are common to all plans for the relevant subject matter, the subsistence of copyright in respect of those features may be limited; and in determining objective similarity, the court will be assisted by expert evidence which is of value in exposing facets of the ultimate question.


case_text: Because s 14(1) of the Copyright Act recognises that reproduction of an artistic work in a material form includes a reference to reproduction of a substantial part of such a work, the Copyright Act recognises a distinction between the undifferentiated whole of a particular artistic work and a substantial part of it ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 161 FCR 503 (Full Court) per Lindgren J [70]). One class of case might involve a question of whether the respondent's work is a colourable imitation of the applicant's undifferentiated work. Another class of case might simply involve a question of whether a part of the applicant's work has been taken in which event the question will be whether the identified part constitutes a substantial part of the applicant's work. If not a copy , the court must then decide whether that which is reproduced is a colourable imitation of the identified part. 185 Accordingly, the analysis of reproduction might well involve a range of different questions. 186 In this case, the applicant relies upon seven drawings in respect of five components and says that the undifferentiated drawing for each component has been copied. The question is not whether a substantial part of each drawing has been taken. The applicant also says that each component copied is a material and significant component critical to the operation of the assembled 4 in 1 bucket. However, the copyright infringement question is not one of whether the respondent's drawing for a particular component and the respondent's manufacture of a three-dimensional component itself is a reproduction of a 'substantial part' of either the applicant' s 4 in 1 assembled bucket or a drawing for the bucket, that is, in the overall sense. The materiality of the component part to the bucket, is, of course, important in assessing the damages flowing from infringement of the particular drawing in suit. However, the copyright infringement question is whether indirect copying of the applicant's discrete component drawing or drawings has occurred by reason of the respondent making a two-dimensional drawing of the identified component, and a three-dimensional component, being versions of the applicant's relevant drawing. 187 The respondent also contends that there are many manufacturers of 4 in 1 buckets in the market; that these buckets reflect common features necessarily present in 4 in 1 buckets in order that such a bucket might open and close and thus exhibit the functional requirements of a 4 in 1 bucket; that these buckets were in the market at the moment in time when the respondent developed its drawings and commenced manufacture on 2 December 2003 of its 4 in 1 bucket; and that as a result, the court should be slow to draw any conclusion that similarities of feature reflect a reproduction or a substantial reproduction of any of the applicant's drawings for any of its component parts. Secondly, the respondent says that differences evident in the respondent's drawings and thus its three-dimensional components sufficiently differentiate the respondent's work and components from that of the applicant's drawings with the result that reproduction in a material form is not made out. 188 Although the respondent has placed emphasis upon these contended common features evident in other buckets, the respondent did not call evidence of the range of buckets or differentiating features in the field of buckets available in the market which usefully informed the 'designer' within the respondent's research and development group during the course of November 2003 leading up to the design and manufacture of the respondent's finished bucket on 2 December 2003. I am invited to conclude that because these other examples of 4 in 1 buckets were available in the market with similar features, the conduct of the respondent does not amount to reproduction. 190 In the context of these observations, the following remarks of Lindgren J in Eagle Homes v Austec Homes (supra) concerning the role a finding of conscious copying plays in aiding the determination of the question of reproduction apply in the present case. The observations are these: '[91] ...In no case concerning project homes of which I am aware, where there has been such a finding of actual copying, has it been held that nonetheless the copier will not have infringed copyright unless there is in addition an extraordinarily close resemblance between his or her drawing and the copyright work. Rather, I think that the issue of sufficient objective similarity simply poses in the case of project homes, as in other cases, the usual question whether the copyright drawing can still be seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has adopted the "essential features and substance" of the copyright work Hanfstaengl v HR Baines & Co Ltd [1895] AC 20 at 31 [Lord Shand]. [92] ... I do not accept, however, that where, as here, actual copying is found to have occurred, "reproduction", and therefore infringement, cannot be proved in the absence of such a specially close similarity as might be required in a particular case to support an inference of subjective copying. To insist that a copyright owner can satisfy the "sufficient objective similarity" limb of reproduction only by establishing such a close similarity is a hurdle too high to be placed before a copyright owner who is found to have proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be made easy. A copier intends to benefit from another's skill and labour. It may transpire that what the copier produces is, at the end of the day and as a result of whatever intervening causes, so dissimilar from the copyright drawing that the copyright drawing cannot be seen in the allegedly infringing drawing. But in my view that is not this case. ... [94] A similar observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404): "It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the court should not allow one man to take away the result 'of another man's labour, or, in other words, his property', unless it is satisfied that the part taken is 'so slight, and the effect upon the total composition was so small', 'as to render the taking perfectly immaterial', or, what is much the same thing, that the part taken is an unsubstantial part: Hogg v Scott (1874) LR 18 Eq 444 at 458; Chatterton v Cave (1878) 3 App Cas 483 at 490, 495. ... [98] The two elements of "causal link" and "sufficient objective similarity" are not referred to in the Act and are but aspects of "reproduction". The two are interrelated and it can be artificial to consider them separately, at least in a case like the present one where actual copying is found to have occurred. A finding of copying can add significance to objective similarity; cf Anchor, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 289; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 474; 61 ALR 251 (Wilson J). [99] It is often suggested that, once a copyright owner has established subjective copying, that makes easier the task of proving that what was taken was "a substantial part" of a protective work. For example, in Anchor, Mortlock, Street J said (at 289) "I have already ... inferred that the defendant did engage in unfair copying of the plaintiff's plans and houses. This adds significance to the similarities that do exist and diminishes significance from the dissimilarities". See also Bradbury v Hotten (1872) 8 LR Ex 1 and Chappell & Co Ltd v D C Thompson & Co Ltd [1928-35] MacG Cop Cas 476 (Ch D).'


case_text: In the context of these observations, the following remarks of Lindgren J in Eagle Homes v Austec Homes (supra) concerning the role a finding of conscious copying plays in aiding the determination of the question of reproduction apply in the present case. The observations are these: '[91] ...In no case concerning project homes of which I am aware, where there has been such a finding of actual copying, has it been held that nonetheless the copier will not have infringed copyright unless there is in addition an extraordinarily close resemblance between his or her drawing and the copyright work. Rather, I think that the issue of sufficient objective similarity simply poses in the case of project homes, as in other cases, the usual question whether the copyright drawing can still be seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has adopted the "essential features and substance" of the copyright work Hanfstaengl v HR Baines & Co Ltd [1895] AC 20 at 31 [Lord Shand]. [92] ... I do not accept, however, that where, as here, actual copying is found to have occurred, "reproduction", and therefore infringement, cannot be proved in the absence of such a specially close similarity as might be required in a particular case to support an inference of subjective copying. To insist that a copyright owner can satisfy the "sufficient objective similarity" limb of reproduction only by establishing such a close similarity is a hurdle too high to be placed before a copyright owner who is found to have proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be made easy. A copier intends to benefit from another's skill and labour. It may transpire that what the copier produces is, at the end of the day and as a result of whatever intervening causes, so dissimilar from the copyright drawing that the copyright drawing cannot be seen in the allegedly infringing drawing. But in my view that is not this case. ... [94] A similar observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404): "It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the court should not allow one man to take away the result 'of another man's labour, or, in other words, his property', unless it is satisfied that the part taken is 'so slight, and the effect upon the total composition was so small', 'as to render the taking perfectly immaterial', or, what is much the same thing, that the part taken is an unsubstantial part: Hogg v Scott (1874) LR 18 Eq 444 at 458; Chatterton v Cave (1878) 3 App Cas 483 at 490, 495. ... [98] The two elements of "causal link" and "sufficient objective similarity" are not referred to in the Act and are but aspects of "reproduction". The two are interrelated and it can be artificial to consider them separately, at least in a case like the present one where actual copying is found to have occurred. A finding of copying can add significance to objective similarity; cf Anchor, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 289; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 474; 61 ALR 251 (Wilson J). [99] It is often suggested that, once a copyright owner has established subjective copying, that makes easier the task of proving that what was taken was "a substantial part" of a protective work. For example, in Anchor, Mortlock, Street J said (at 289) "I have already ... inferred that the defendant did engage in unfair copying of the plaintiff's plans and houses. This adds significance to the similarities that do exist and diminishes significance from the dissimilarities". See also Bradbury v Hotten (1872) 8 LR Ex 1 and Chappell & Co Ltd v D C Thompson & Co Ltd [1928-35] MacG Cop Cas 476 (Ch D).'


case_title: Hogg v Scott (1874) LR 18 Eq 444 at 458


case_title: Chatterton v Cave (1878) 3 App Cas 483


case_title: Anchor, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278


case_title: Bradbury v Hotten (1872) 8 LR Ex 1


case_title: Chappell & Co Ltd v D C Thompson & Co Ltd [1928-35] MacG Cop Cas 476


case_text: Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition?


case_text: Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition? 224 The formulation of s 77(2) at [216] addresses reproduction of the artistic work by applying a design to an article and operates whether the corresponding design was either not registered or not registrable (s 77(1)(d)). Notwithstanding the change to the earlier formulation of s 77(2) and the inherent 'critical question' identified by Franki J partially raised by the earlier formulation, a design for the purposes of s 74 and s 77 under the formulation at [216] remains a design as defined by the Designs Act ( Hosokawa Micron International v Fortune (supra) at 396; Shacklady v Atkins (1994) 30 IPR 387 at 394 and CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 at [82] ). 225 Moreover, the fundament of a design remains that there must be some aspect of visual appeal to the eye. It may well be that the features of shape serve a functional purpose or assist in making function efficacious but these attributes will not disqualify the features of shape or orientation as a design for the purposes of the Designs Act 1906 if the designer has selected features of shape or configuration or, put differently, 'if there was room for choice by the designer' ( Hosokawa per Gummow J at p 429-430). 226 As a result, it is not an infringement of the reproduction right comprised in the copyright subsisting in an artistic work to reproduce the work by applying features of shape, pattern or configuration derived by selection by the designer (author) notwithstanding efficacious functional contribution, to an article that when so applied, those features are capable of being judged by the eye in the finished article. 227 The essence of the applicant's case is that features of shape or configuration for five components are revealed in the artistic works in suit and those features can be seen in the finished manufactured 4 in 1 bucket of the respondent which contains assembled components representing three-dimensional versions of the applicant's artistic works amounting to reproduction of each artistic work.


case_text: Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition? 234 In Muscat v Le 60 IPR 276, Finkelstein J was prepared to proceed on the assumption that the application of a design to an article involved a determination of whether each component (namely, five components for a pattern) making up a garment ought to be addressed separately in terms of an embodiment of a design rather than simply looking to the assembled garment as an article although in that case the patterns were not articles of manufacture. In Edwards Hot Water Systems v S W Hart & Co Pty Ltd (supra) at p 633, Franki J noted the appellant's argument that in considering the application of a design to an article, the court had to look not only at the completed article (in that case the whole of the solar panel) but also to each individual component depicted in the drawing for the solar panel. In that case, the primary Judge was not satisfied that the individual components were articles for the purposes of the Designs Act 1906. However, Franki J noted that the conclusion of the primary Judge depended upon legislative provisions (subsequently repealed) and further noted that 'the amendment to the definition of "article", whereby an article includes part of an article if made separately, may be a significant change' . It seems to me the change is significant. That approach of testing the question by reference to the components and not just the assembled finished article, is consistent with the approach adopted by Pincus J in Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited (supra) where his Honour considered the application of a design to five component parts (central bearings, shafts, clutch-fork, clutch plate and pulleys) of a drive mechanism for an assembled article namely a ride-on lawnmower, for use in parks and gardens and not simply the ride-on mower itself. 235 The third feature of a design is whether the features of shape satisfying the first limb of the term 'design' inherent in the artistic work once applied to an article of manufacture (the second limb) are features that are capable of being judged in the finished article. It seems to me an inescapable conclusion on the facts of this case that the finished article exhibits the features of shape apparent to the eye. 236 The third matter of contention [228] involves the notion that there can be no corresponding design because the plans are not registrable as a design. However, the question is not whether the plans are registrable as a design but whether a corresponding design inherent in the drawing exhibits features of shape or orientation which would qualify for registration because it satisfies the definition of 'design'. The question is not whether the plan can be lodged and registered as a design.


case_title: Shacklady v Atkins (1994) 30 IPR 387

case_text: The formulation of s 77(2) at [216] addresses reproduction of the artistic work by applying a design to an article and operates whether the corresponding design was either not registered or not registrable (s 77(1)(d)). Notwithstanding the change to the earlier formulation of s 77(2) and the inherent 'critical question' identified by Franki J partially raised by the earlier formulation, a design for the purposes of s 74 and s 77 under the formulation at [216] remains a design as defined by the Designs Act ( Hosokawa Micron International v Fortune (supra) at 396; Shacklady v Atkins (1994) 30 IPR 387 at 394 and CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 at [82] ). 237 The protection afforded by s 77(2) of the Copyright Act applies only when a respondent reproduces the applicant's work 'by applying that or any other corresponding design to an article' . An article means any article of manufacture [231] ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461. The process of application by the respondent of a corresponding design inherent in the applicant's artistic work involved a particular process. The respondent brought into existence a two-dimensional drawing representing a substantial reproduction of the applicant's work. That two-dimensional reproduction was used by the respondent to enable it to apply the corresponding design in the applicant's drawing to an article of manufacture. The applicant contends that the step of making a two-dimensional drawing which is a reproduction of the applicant's relevant work is not susceptible of protection under s 77(2) ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (supra) at 474; Shacklady v Atkins (1994) 30 IPR 387 at 393; CIPEC v First Melbourne Securities Pty Ltd (supra) at 530), because the statutory immunity applies only in relation to the application of a corresponding design to articles of manufacture. The two-dimensional drawings of the respondent are not articles of manufacture. If this contention has force, it gives rise to a counter-intuitive anomaly of a respondent being free to apply the applicant's industrially applied corresponding design to articles of manufacture yet being constrained by infringement of copyright in the applicant's artistic work in making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture. 238 The authorities mentioned above which are said to support the notion that making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture is not an infringement of the copyright in the artistic work, require brief examination. In CIPEC v First Melbourne Securities , Merkel J acknowledged that it was common ground between the parties that s 77(2) only applies to three-dimensional reproductions of the drawings in suit and, 'Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393' . Accordingly, there was no controversy about the question between the parties and no contradictor to the proposition that s 77(2) might extend to provide immunity in respect of the two-dimensional drawing. In Shacklady , Davies J accepted that the defence in s 77 'merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially' . That assumed position was adopted by Davies J in response to a submission that s 77 did not apply in the circumstances of the case because Mr Shacklady's right to enforce his copyright was influenced by a transitional period between the statutory regimes arising out of re-enactment of particular provisions taking effect from 1 October 1990 and one issue was the operation of the section in relation to past events in circumstances where, nevertheless, articles to which the corresponding design had been applied were sold after the commencement of the new provisions. Notwithstanding that contextual question, it is clear that Davies J proceeded on the footing that the immunity provided by s 77(2) only operates in relation to three-dimensional reproductions brought about by application of an industrially applied corresponding design. In Amalgamated Mining v Warman (supra), the facts involved both production of an infringing two-dimensional plan used as a step along the way to application of a corresponding design and use of the applicant's two-dimensional artistic work itself to make the two-dimensional infringing plan used as a step along the way. Nevertheless, Wilcox J accepted that s 77 only provided an immunity, relevantly, in relation to acts 'within the scope of the copyright in the corresponding design' being the aggregate of things that the registered owner of a design would have the exclusive right to exercise. Therefore, s 77 'does not include a sheet of paper whose only function is to carry the design. It follows that the subsection has no application to plan to plan copying. The doing of such a thing is not an infringement of the monopoly in the registered design; it is not "within the scope of the copyright" or "monopoly" "in the corresponding design".'


case_text: The notion of appeal to the eye does not necessarily mean aesthetic appeal (although that may well be present in a particular design) but simply means a 'mental conception conveyed to the mind of the eye' ( Dart Industries v Décor Corporation Pty Ltd (1989) 15 IPR 403); in that sense, visual differentiation of shape is required. In some cases, the drawings potentially exhibiting a design may be complex such as detailed sectional engineering drawings and the features of shape may therefore be difficult to discern with the result that any element of appeal to the eye is solely based on the functional efficiency of the component (such as an engineering drawing for a sealed expansion joint for a bridge ( CIPEC v First Melbourne Securities (supra)). Although the pivot mechanism exhibits identifiable features of shape, I am satisfied that those features, although they involve some minor element of shape selection, are almost entirely dictated by the utilitarian function that a pivot mechanism must perform in facilitating the separation of the front and back sections of the bucket. In respect of that component therefore, there is no relevant design. However, I take a different view in relation to the inside mounting bracket and accept that the drawing for that component exhibits a design.


case_title: Burge & Ors v Swarbrick [2007] HCA 17

case_text: The immunity conferred by s 77(2) from copyright infringement arising out of reproduction of the work might logically be thought to include the making of a two-dimensional drawing along the way to application of the corresponding design to articles of manufacture otherwise the lawful act of applying the design to three-dimensional manufacture would be frustrated. It may be that not every application of the corresponding design involves the intermediate step of making a two-dimensional drawing in order to apply the features of shape to articles of manufacture. However, plainly enough, in a number of cases such a step is orthodoxy in the lawful application of the corresponding design. The scope of the immunity must ultimately be governed by the language of the sections selected by the Parliament but construed according to the legislative scheme adopted for striking the balance mentioned at [220] and discussed more broadly by their Honours Gleeson CJ, Gummow, Kirby, Heydon and Crennan JJ in Burge & Ors v Swarbrick [2007] HCA 17 , [21]-[44].


case_text: There is one further matter which might have the effect of removing the features of shape from the scope of a design for the purposes of the Designs Act 1906 and, as a result, from the notion of a corresponding design. A design excludes 'a method or principle of construction' . As Merkel J notes in CIPEC v First Melbourne Securities (supra) [95] [98], the relevant principles emerged from the judgment of the High Court in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd [1987] HCA 37 ; (1987) 180 CLR 483 at 488. The notion is that only design features or those features which convey the idea of a particular shape qualify as a design. The contended design will not qualify to provide the proprietor with a monopoly in data or information conveying a method or principle of construction. To the extent that a drawing exhibits features of shape or ornamentation and thus exhibits a design but also contains dimensional data or other technological information facilitative of construction of an article of manufacture, such a drawing nevertheless continues to exhibit a design and is not prevented from falling within the scope of the definition of design merely by reason of the addition of other information. Although Wilcox J took a different view and determined that engineering drawings containing technological data either necessary or desirable for the manufacture of parts for slurry pumps for mining operations were not capable of registration as designs as a method or principle of construction and thus outside the definition of a design, I concur with the view of Merkel J in CIPEC v First Melbourne Securities that such a view adopts too broad an approach to the exclusion.


case_text: There may be three difficulties with such an approach. The first is that there is no evidence that the applicant either was or might be willing to licence the reproduction of its drawings. There is evidence that the applicant had in mind licensing its drawings in 1997 and for that reason on a drawing dated 20 September 1994, the applicant endorsed the reference 'Copyright and Confidential Information of Norm Engineering Pty Ltd (c) Norm Engineering Pty Ltd 1997'. However, this step and these endorsements relate to the first plans and not the plans in suit although an inference might be drawn that the applicant's disposition to licence in 1997 reflects a disposition to do so now. However, I am not prepared to draw that inference. Secondly, a royalty or perhaps a licence fee does not provide an appropriate measure of damages where the copyright owner would not have granted a licence ( Columbia Pictures Industries Inc v Luckins (1996) 34 IPR 504 at 509; Autodesk Australia Pty Limited v Cheung (1990) 94 ALR 472 at 476-477; and Microsoft Corporation v Goodview (2000) 49 IPR 578 [55]). Thirdly, although the making of the infringing drawing is a step along the way to non-infringing three-dimensional reproduction, the non-infringing act was arguably only made possible by engaging in the infringing act. However, it seems to me that loss suffered by the applicant however it might be measured is referable to the non-infringing act rather than the reproduction of the drawing and accordingly reasonable compensation for the infringing act is a nominal amount of $100 in respect of each drawing. Although nominal, the applicant is entitled to damages for this infringement pursuant to s 115(2).


case_title: Autodesk Australia Pty Limited v Cheung (1990) 94 ALR 472


case_title: Microsoft Corporation v Goodview (2000) 49 IPR 578


case_text: Measuring the diminished capital value of the asset is not the only way of forming a view as to the proper amount of 'reasonable compensation' attributable to the loss suffered by a copyright owner. The purpose of an award of damages for breach of copyright is to compensate the applicant for the loss suffered as a result of the respondent's infringing conduct ( Interfirm Comparison (Aust) Pty Limited v Law Society of New South Wales (1975) 6 ALR 445 at 446 (Bowen CJ); Bailey v Namol Pty Limited (1994) 53 FCR 102 at 111 (Burchett, Gummow and O'Loughlin JJ).


case_text: Measuring the diminished capital value of the asset is not the only way of forming a view as to the proper amount of 'reasonable compensation' attributable to the loss suffered by a copyright owner. The purpose of an award of damages for breach of copyright is to compensate the applicant for the loss suffered as a result of the respondent's infringing conduct ( Interfirm Comparison (Aust) Pty Limited v Law Society of New South Wales (1975) 6 ALR 445 at 446 (Bowen CJ); Bailey v Namol Pty Limited (1994) 53 FCR 102 at 111 (Burchett, Gummow and O'Loughlin JJ). 302 The principles influencing an assessment of damages under the section are these ( Aristocrat Technologies Australia Pty Limited v DAP Services (supra) [40]-[45]). Flagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear v Polygram Records Inc. (1997) 75 FCR 88 at 93 per Burchett J; per Tamberlin J at 103 and per Lehane J at 104; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 per Lockhart J at 575; Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788 per Jacobson J [158]); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc. v Yee (1996) 68 FCR 391 per Burchett J at 394; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee (supra) at p 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of 'benefit' suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 per Brightman J at 208); the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd (supra) per Lockhart J, p 576); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records (supra), pp 93, 103 and 104; Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522 ; (2005) 148 FCR 310 at pp 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Limited (supra) per Burchett, Gummow and O'Loughlin JJ at p 114).


case_text: The respondent put to Mr Pesch that the Second Plans were actually created in September 2003. Mr Pesch said 'no' and said he 'would have said 2002' . Mr Pesch said he would not rule out the possibility that it was that late and agreed that he was not sure of the date but 'I thought it was done much earlier than that' . 64 Document BC 41 D014F for the 'floor side plate' bears the date 12 March 2002. Mr Pesch said he could not recall the exact date of creation of the drawing but that it was early 2002. Mr Pesch accepted that it was possible that the document was created as late as September 2003. The respondent drew Mr Pesch's attention to the noted addition of 'flat floor dimensions' to the drawing on 3 February 2006. That version of the drawing was produced by the applicant in discovery in March 2006. Thus the respondent put to Mr Pesch that the drawing incorporates any revisions made to the document up to the date of printing out the drawing. If so, the drawing reflecting the original work leading to the changes in November 2001 and March 2002 could not be seen in document 185D. Mr Pesch said that the drawing reflects the features of the floor side plate 'right at the start' of the changes he made. 65 As to the floor plate itself, Mr Pesch agreed that the 'borders' of the old plan (1994) for the floor side plate depict a general triangular form; the triangular form is 'pretty much the same' in the new drawing (BC 41 D014F); and that as to the shape at least, the two drawings are just the same. Mr Pesch says the dimensions however are not the same. 295 However, that sum does not represent a reasonable or fair estimate of the compensatory loss actually suffered by the applicant because it represents a construct based on the particular assumption. The court must do its best to quantify the actual loss even if some degree of speculation or even possible guess work is involved in this exercise ( Aristocrat Technologies Australia Pty Limited v DAP Services [2007] FCAFC 40 per Black CJ and Jacobson). The court is not relieved from the duty of assessing the loss merely because circumstances do not admit of damages being assessed with certainty ( McRae v Commonwealth Disposals Commission [1950] HCA 12 ; (1951) 84 CLR 377 at 412 per Dixon and Fullagar JJ; Enzed Holdings Limited v Wynthea Pty Limited (1984) 57 ALR 167 at p 183 per Sheppard, Morling and Wilcox JJ where their Honours said, 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages' . See also The Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54 ; (1992) 174 CLR 64 at 83 per Mason CJ and Dawson J, where their Honours said, 'The settled rule, both here and in England, is that mere difficulty in estimating damages does not relieve a court from the responsibility of estimating them as best it can' ). 302 The principles influencing an assessment of damages under the section are these ( Aristocrat Technologies Australia Pty Limited v DAP Services (supra) [40]-[45]). Flagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear v Polygram Records Inc. (1997) 75 FCR 88 at 93 per Burchett J; per Tamberlin J at 103 and per Lehane J at 104; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 per Lockhart J at 575; Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788 per Jacobson J [158]); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc. v Yee (1996) 68 FCR 391 per Burchett J at 394; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee (supra) at p 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of 'benefit' suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 per Brightman J at 208); the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd (supra) per Lockhart J, p 576); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records (supra), pp 93, 103 and 104; Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522 ; (2005) 148 FCR 310 at pp 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Limited (supra) per Burchett, Gummow and O'Loughlin JJ at p 114).


case_text: However, that sum does not represent a reasonable or fair estimate of the compensatory loss actually suffered by the applicant because it represents a construct based on the particular assumption. The court must do its best to quantify the actual loss even if some degree of speculation or even possible guess work is involved in this exercise ( Aristocrat Technologies Australia Pty Limited v DAP Services [2007] FCAFC 40 per Black CJ and Jacobson). The court is not relieved from the duty of assessing the loss merely because circumstances do not admit of damages being assessed with certainty ( McRae v Commonwealth Disposals Commission [1950] HCA 12 ; (1951) 84 CLR 377 at 412 per Dixon and Fullagar JJ; Enzed Holdings Limited v Wynthea Pty Limited (1984) 57 ALR 167 at p 183 per Sheppard, Morling and Wilcox JJ where their Honours said, 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages' . See also The Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54 ; (1992) 174 CLR 64 at 83 per Mason CJ and Dawson J, where their Honours said, 'The settled rule, both here and in England, is that mere difficulty in estimating damages does not relieve a court from the responsibility of estimating them as best it can' ).


case_text: In those circumstances, s 77(2) provides that it is not an infringement of the copyright in the artistic work to reproduce the work on or after the relevant date by applying the corresponding design or any other corresponding design to an article. A corresponding design in simple terms is a design which has a relevant correspondence with the artistic work. A 'corresponding design' in relation to an artistic work, in precise terms, means a 'design' that when 'applied' to an 'article' results in a 'reproduction' of that work (leaving aside the exclusion in the concluding words of the definition (s 74)). 219 The term 'design' is not defined in the Copyright Act but it is a central conception of the Designs Act 1906 (Cth). There it is defined to mean 'features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction' (s 4). 220 Sections 74 to 77 of the Copyright Act seek to provide a solution to the overlap between the bundle of exclusive rights comprising the copyright in an artistic work (and their duration) and the perceived need for limitations upon those rights in respect of a design inherent in the artistic work applied industrially in the manufacture of articles which exhibit, to the eye, those design features. Since the scope and duration of rights in such a design, if registered, is comparatively constrained by the Designs Act 1906, ss 74 and 77 of the Copyright Act seek to constrain the reach of the copyright in the artistic work so that no copyright infringement arises if the challenged conduct is the application of the design to a particular article that results in a reproduction of the artistic work even though the copyright owner's design was not registered nor registrable. 295 However, that sum does not represent a reasonable or fair estimate of the compensatory loss actually suffered by the applicant because it represents a construct based on the particular assumption. The court must do its best to quantify the actual loss even if some degree of speculation or even possible guess work is involved in this exercise ( Aristocrat Technologies Australia Pty Limited v DAP Services [2007] FCAFC 40 per Black CJ and Jacobson). The court is not relieved from the duty of assessing the loss merely because circumstances do not admit of damages being assessed with certainty ( McRae v Commonwealth Disposals Commission [1950] HCA 12 ; (1951) 84 CLR 377 at 412 per Dixon and Fullagar JJ; Enzed Holdings Limited v Wynthea Pty Limited (1984) 57 ALR 167 at p 183 per Sheppard, Morling and Wilcox JJ where their Honours said, 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages' . See also The Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54 ; (1992) 174 CLR 64 at 83 per Mason CJ and Dawson J, where their Honours said, 'The settled rule, both here and in England, is that mere difficulty in estimating damages does not relieve a court from the responsibility of estimating them as best it can' ).


case_title: The Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54 ; (1992) 174 CLR 64


case_text: The principles influencing an assessment of damages under the section are these ( Aristocrat Technologies Australia Pty Limited v DAP Services (supra) [40]-[45]). Flagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear v Polygram Records Inc. (1997) 75 FCR 88 at 93 per Burchett J; per Tamberlin J at 103 and per Lehane J at 104; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 per Lockhart J at 575; Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788 per Jacobson J [158]); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc. v Yee (1996) 68 FCR 391 per Burchett J at 394; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee (supra) at p 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of 'benefit' suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 per Brightman J at 208); the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd (supra) per Lockhart J, p 576); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records (supra), pp 93, 103 and 104; Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522 ; (2005) 148 FCR 310 at pp 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Limited (supra) per Burchett, Gummow and O'Loughlin JJ at p 114).


case_text: However, that sum reflects the lost profit upon sales of the bucket rather than the loss suffered by the applicant by reason of infringement of the copyright in the drawing for the pivot mechanism itself. It seems to me that a further discount should apply to take account of that proportion of the profit which is attributable to a component forming part of an assembled article. In this case, it seems to me that the copyright owner is only entitled to damages that represent the loss attributable to the copyright material taken. Although speaking in terms of conversion damages, the principle in relation to severance was expressed this way by Lockhart J in Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 at 571: 'If the court is presented with goods that comprise infringing and non-infringing matter, it will be necessary to decide whether the goods can be severed into infringing and non-infringing components. If the goods can be severed then the court can find that it was the making of the infringing component that constituted an infringement of the work, and therefore that the infringing copy is only comprised by that component. In such a case, the copyright owner is only entitled to damages that represent the value of the copyright material taken.' 298 I have accepted that the pivot mechanism is a major component and is, on the expert evidence, central to the functioning and operation of the bucket. It is the mechanism within the bucket that under hydraulic load causes it to function and articulate. Many of the other parts (although plainly not all), play a dependent role in the configuration of the bucket. It seems to me that the supplementary discount is not simply a question of whether the part or component is one of five or seven or 12 or 30 components within the bucket resulting in a proportionate allocation of the lost profit but whether the component is a material component of real importance. It seems to me that the pivot mechanism is clearly such a component. Its relative importance is a matter of judgment and in determining a reasonable view of compensatory loss it seems to me that the amount at [296] ought to be further discounted by 60% resulting in an amount of $61,223.00. 299 Accordingly, the measure of damage is $61,223.00. 302 The principles influencing an assessment of damages under the section are these ( Aristocrat Technologies Australia Pty Limited v DAP Services (supra) [40]-[45]). Flagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear v Polygram Records Inc. (1997) 75 FCR 88 at 93 per Burchett J; per Tamberlin J at 103 and per Lehane J at 104; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 per Lockhart J at 575; Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788 per Jacobson J [158]); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc. v Yee (1996) 68 FCR 391 per Burchett J at 394; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee (supra) at p 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of 'benefit' suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 per Brightman J at 208); the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd (supra) per Lockhart J, p 576); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records (supra), pp 93, 103 and 104; Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522 ; (2005) 148 FCR 310 at pp 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Limited (supra) per Burchett, Gummow and O'Loughlin JJ at p 114).


case_title: Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788


case_title: Autodesk Inc. v Yee (1996) 68 FCR 391


case_title: Ravenscroft v Herbert and New English Library Limited [1980] RPC 193


case_title: Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522 ; (2005) 148 FCR 310


case_outcome: referred to

case_text: In Re Ansett Australia Ltd (No 3) [2002] FCA 90 ; (2002) 115 FCR 409 Goldberg J reviewed all of the relevant authorities relating to the principles which govern the exercise of the Court's power to give directions to a liquidator. His Honour stated the principles which emerged from the authorities at [65]. The effect of what Goldberg J said was that there must be something more than the making of a business or commercial decision before a Court will give directions. It may be a legal issue or an issue of power, propriety or reasonableness. In the present case I am satisfied that an issue of reasonableness arises in accordance with the principles stated by Goldberg J. 15 It arises because the liquidators have a primary duty to expedite the winding up and to bring it to an early conclusion. Here the liquidators seek to extend the winding up by deferring payments to note holders and creditors. There is sufficient authority for the course that I propose to take in the decision of Master Lee in Re Statewide Investments Ltd (In liq) (1981) 6 ACLR 265 to which Goldberg J referred in Ansett at [50].


case_text: I should add that in making these orders, I have taken into account a matter not referred to by Mr Bathurst this morning. In Ford's Principles of Corporations Law (Butterworths Australia, looseleaf service) at [27.182], the learned authors point out that under s 511 of the Act, the Court's power is more limited than under s 479(3). The authority for that proposition is a decision of Young J in Dean-Willcocks v Soluble Solution Hydroponics Pty Ltd (1997) 42 NSWLR 209 at 212. His Honour there referred to 511(2) of the Act which provides that the Court may accede to an application if it is satisfied that the exercise of the power will be "just and beneficial." 19 In Dean-Willcocks , Young J was of the view that this means that the Court has a discretion as to whether the making of an order under s 511 will be of advantage in the liquidation. For the reasons set out above, I am of the view that this test is satisfied. 20 I should also note Young J's consideration, in Dean-Willcocks at 212 to 213, of the question of whether it is appropriate to make an application such as this ex parte . His Honour observed at 213 that it is proper for such an application to be made ex parte , as has been done in the present case. I will therefore make orders in terms of the short minutes of order, as amended, which I will sign and date. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson. Associate: Dated: 15 December 2008 Counsel for the Applicant: T F Bathurst QC with I M Pike Solicitor for the Applicant: Baker & McKenzie Date of Hearing: 9 December 2008 Date of Judgment: 9 December 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1895.html


case_text: It arises because the liquidators have a primary duty to expedite the winding up and to bring it to an early conclusion. Here the liquidators seek to extend the winding up by deferring payments to note holders and creditors. There is sufficient authority for the course that I propose to take in the decision of Master Lee in Re Statewide Investments Ltd (In liq) (1981) 6 ACLR 265 to which Goldberg J referred in Ansett at [50].


case_title: Allstate Life Insurance Co & Ors v Australian & New Zealand Banking Group Ltd & Ors [1995] FCA 660

case_text: to the operation of Order 62 rule 3 upon the issues the subject of the current interlocutory proceedings, Wieland made the submission that 'an order pursuant to O 62 r 3 whereby the Court exercises its discretion as to costs requires material sufficient to warrant a departure from the general practice that costs ordered in interlocutory proceedings should await the outcome of the proceedings'. Wieland addressed Readymix's reliance on the observations of Lindgren J in Allstate Life Insurance Co. & Ors v Australia & New Zealand Banking Group Ltd & Ors [1995] FCA 660 , where his Honour observed that 'where litigation is complex and parties may face a delay in recovering their costs there exists a basis for consideration departing from the usual course'. Wieland contended nevertheless that '[t]he applicants in these proceedings have not pointed to any basis for suggesting that these proceedings will be excessively delayed'. Contrary to that contention by Wieland however, there is persuasive force in Readymix's submission that 'one is entitled to start with the proposition that the respondent, in the conduct of its defence, has caused egregious delay' and that 'the delay in the progress of the proceedings logically delays resolution of the proceedings when the applicants would, in the ordinary course, [be] entitled to the assessment of costs awarded in its favour'. I am of the view that Readymix is entitled to an order in its favour in relation to its costs thrown away by the postponement of the final hearing, inclusive of those costs of and incidental to the present application of Readymix the subject of the notices of motions of Readymix filed respectively on 30 August 2006, 7 September 2006 and on 12 September 2006, the scope whereof I would observe tend to overlap. Whether any category of legal costs incurred by Readymix otherwise than that of a party and party basis should qualify within the scope of the order for costs is a more difficult consideration. The costs of Readymix thrown away would appear to be in principle those relating to professional work undertaken and disbursements incurred as a result of steps implemented by Readymix's legal representatives to arrange inspection of the SLP 1100 crusher then located in Melbourne and to obtain expert reports in relation thereto, including in principle costs relating to Mr Better's fees and disbursements to the extent to which the same can rightly be described as thrown away, as well as costs associated with the vacation of the hearing. Whether the costs incurred of and incidentally to the mediation incurred by Readymix should be included is a moot point, but I would disincline in principle to include in any event costs of the intervening mediation. I am further of the opinion that in the exercise of the Court's authority and discretion, pursuant to Order 62 rule 3 of the Federal Court Rules as to formulating orders as to costs at a stage of the proceedings prior to finalisation, Wieland should be ordered, in principle, to make payment forthwith of the costs the subject of the orders presently under consideration, I favour that outcome, notwithstanding that the principal proceedings are not of course concluded. My present estimate is that an amount equal to two thirds thereof would be appropriate, but I would in any event grant liberty to apply to either party on seven days' notice should injustice or imponderable uncertainty be contended to arise in relation to any such quantification. I say 'at least' because the existing order as to security shall require revision in any event, so as to exclude quantification of the costs attributable to Wieland's radical misunderstanding earlier discussed.


case_outcome: discussed

case_text: and Hayne JJ said (at 81 [65]) that the relevant principles in Australia are those explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618. They referred to a passage in the reasons for judgment of Kitto, Taylor, Menzies and Owen JJ in that case and to their Honours' use of the phrase "prima facie case". Gummow and Hayne JJ went on to say (at 82 [65]): "By using the phrase 'prima facie case', their Honours did not mean that the plaintiff must show that it is more probable than not that at the trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect by Kitto J in the course of argument. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal: 'How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.'" (Citations omitted.) A little later, after referring to observations by Lord Diplock in American Cyanamid Co v Ethicon Ltd [1975] UKHL 1 ; [1975] AC 396 , their Honours said (at 84 [71]): "Those statements do not accord with the doctrine in this Court as established by Beecham and should not be followed. They obscure the governing consideration that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted and the practical consequences likely to flow from the interlocutory order sought."


case_text: Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57 , Gleeson CJ and Crennan J said (at 68 [19]): "...in all applications for an interlocutory injunction, a court will ask whether the plaintiff has shown that there is a serious question to be tried as to the plaintiff's entitlement to relief, has shown that the plaintiff is likely to suffer injury for which damages will not be an adequate remedy, and has shown that the balance of convenience favours the granting of an injunction. These are the organising principles, to be applied having regard to the nature and circumstances of the case, under which issues of justice and convenience are addressed. We agree with the explanation of these organising principles in the reasons of Gummow and Hayne JJ, and their reiteration that the doctrine of the Court established in Beecham Group Ltd v Bristol Laboratories Pty Ltd should be followed." (Citations omitted.)


case_text: applicant then referred to decisions which have considered whether various grounds in s 5 of the ADJR Act embody a "no evidence" or "no probative material" test. In the context of the ground in s 5(1)(a) (a breach of the rules of natural justice occurred in connection with the making of the decision), he referred to Australian Broadcasting Tribunal v Bond [1990] HCA 33 ; (1990) 170 CLR 321 (" Bond ") at 367 per Deane J and Minister for Immigration and Multicultural Affairs v Rajamanikkam [2002] HCA 32 ; (2002) 210 CLR 222 (" Rajamanikkam ") at 232-233 [25]-[29] per Gleeson CJ. In the context of the ground in s 5(1)(f) (the decision involved an error of law), the applicant referred to Bond at 355-358 per Mason CJ; The Federal Commissioner of Taxation v Broken Hill South Ltd [1941] HCA 33 ; (1941) 65 CLR 150 at 155 per Starke J, at 157 per McTiernan J, at 160-161 per Williams J; Rajamanikkam at 238-240 [49]-[53] per Gaudron and McHugh JJ. In the context of the ground in s 5(1)(h) (there was no evidence or other material to justify the making of the decision; see also s 5(3)), the applicant referred to Bond at 358 per Mason CJ, at 365 per Brennan J, at 369 per Deane J; Rajamanikkam at 233-234 [30]-[34] per Gleeson CJ, at 238-240 [49]-[53] per Gaudron and McHugh JJ, at 250-261 [96]-[125] per Kirby J.


case_text: s 25D of the Acts Interpretation Act to be engaged, it must be established that s 28(1A) of the ACC Act imposes an obligation on an examiner to give written reasons for his or her decision to issue a summons. In my opinion, the applicant cannot establish that matter. Section 28 does not impose an obligation on an examiner to give reasons to an examinee or to give the written record of his reasons to an examinee: Barnes v Boulton [2004] FCA 1219 ; (2004) 139 FCR 356. That decision was not challenged by the applicant. In the course of his decision in that case, Finn J said (at 363-364 [28]-[29]): "It is important to note that the present application is not one for judicial review of the examiner's decision. Rather it asserts an entitlement to be provided with Mr Boulton's record of reasons — an entitlement the satisfaction of which is said to be a precondition to the holding of the examination. The short answer to the claim is that s 28(1A) in its setting gives no such right expressly and there is no conceivable basis in this context for implying such a right: cf R v Young [1999] NSWCCA 166 ; (1999) 46 NSWLR 681 at 686 ff; let alone for making the provision of such reasons a jurisdictional precondition to the holding of an examination. Neither context nor legislative purpose: cf Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14 ; (2004) 78 ALJR 585 at [11] ; and see generally Spigelman, 'The poet's rich resource: Issues in statutory interpretation' (2001) 21 Aust Bar Rev 224 ; lend any support to such an implication. The legislative judgment not to provide a right to reasons can only be regarded as deliberate, the more so as the ACC Act contemplates that decisions under this Act may be the subject of an application under the ADJR Act: s 57; but the ADJR [sic] gives no right to reasons under s 13 for such decisions. The clear purpose of s 28(1A) is both to focus and enhance decision making and to provide an accountability mechanism by requiring the creation of an 'audit trail'. Under s 59 of the ACC Act, that record is potentially available on request to the portfolio Minister and to the Parliamentary Joint Committee on the Australian Crime Commission that is constituted under Pt III of the ACC Act: and see ss 54 and 55 for that Committee's powers and duties. As is not uncommon with investigative agencies, the Parliament has counterbalanced the secrecy regime it has erected to ensure the effectiveness of the ACC's investigations with a measure of public accountability through a dedicated (2004) parliamentary oversight committee: see eg Intelligence Services Act 2001 (Cth). A right such as the applicant propounds would be an alien presence in such a statutory scheme." In my opinion, an obligation to record in writing the reasons for a decision or act (which is the obligation imposed by s 28(1A) of the ACC Act) is quite different from an obligation to give written reasons for a decision (which is the obligation postulated by s 25D of the Acts Interpretation Act ). The latter, no doubt, includes giving written reasons to the person affected by the decision and publishing written reasons. The obligation in s 28(1A) to record in writing the reasons for the issue of a summons does not engage the obligation in s 25D of the Acts Interpretation Act to set out in an instrument giving the reasons the findings on material questions of fact and to refer to the evidence or other material on which those findings are based. The applicant's argument must fail for another reason, even if (contrary to my conclusion) s 28(1A) of the ACC Act engaged the obligation in s 25D of the Acts Interpretation Act . If I assume s 25D was engaged and I assume the examiner's reasons did not satisfy the requirements of s 25D , the applicant's argument must nevertheless fail because s 28(8)(a) of the ACC Act provides that a failure to comply with s 28(1A), "in so far as that subsection relates to the making of a record" does not affect the validity of a summons. The applicant submits that s 28(8)(a) only relates to the time when the record is made. In other words, the applicant submits that s 28(8)(a) is only engaged where the record is not prepared at one of the times specified in s 28(1A)(a), (b) and (c). It is not engaged, so the argument proceeds, where the failure relates to the contents of the record. I see no justification for drawing such a distinction. The words describing the failure as one relating to the "making of [the] record" are wide enough to cover obligations both as to the time at which the record is made and as to its contents.


case_text: Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57 , Gleeson CJ and Crennan J said (at 68 [19]): "...in all applications for an interlocutory injunction, a court will ask whether the plaintiff has shown that there is a serious question to be tried as to the plaintiff's entitlement to relief, has shown that the plaintiff is likely to suffer injury for which damages will not be an adequate remedy, and has shown that the balance of convenience favours the granting of an injunction. These are the organising principles, to be applied having regard to the nature and circumstances of the case, under which issues of justice and convenience are addressed. We agree with the explanation of these organising principles in the reasons of Gummow and Hayne JJ, and their reiteration that the doctrine of the Court established in Beecham Group Ltd v Bristol Laboratories Pty Ltd should be followed." (Citations omitted.) Gummow and Hayne JJ said (at 81 [65]) that the relevant principles in Australia are those explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618. They referred to a passage in the reasons for judgment of Kitto, Taylor, Menzies and Owen JJ in that case and to their Honours' use of the phrase "prima facie case". Gummow and Hayne JJ went on to say (at 82 [65]): "By using the phrase 'prima facie case', their Honours did not mean that the plaintiff must show that it is more probable than not that at the trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect by Kitto J in the course of argument. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal: 'How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.'" (Citations omitted.) A little later, after referring to observations by Lord Diplock in American Cyanamid Co v Ethicon Ltd [1975] UKHL 1 ; [1975] AC 396 , their Honours said (at 84 [71]): "Those statements do not accord with the doctrine in this Court as established by Beecham and should not be followed. They obscure the governing consideration that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted and the practical consequences likely to flow from the interlocutory order sought." It is necessary to consider the balance of convenience in relation to the further ground of review. No doubt, the applicant's likelihood of success is relevant to the balance of convenience. However, two important points must not be overlooked. First, leaving aside cases which on their face are obviously strong or obviously weak, it would be dangerous, and probably futile, to attempt too precise an assessment of an applicant's prospects of success. Any assessment is inevitably made on imperfect material and argument. This leads to the second point. It is not appropriate, in effect, to try the proceeding in order to determine an applicant's prospects of success (see Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618 at 622-623; World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 at 186 per Bowen CJ). It was for these reasons, and because I think the balance of convenience clearly favours the refusal of interlocutory relief, that I considered any further answer to the notices to produce was unnecessary in terms of resolving the present applications.


case_text: is clearly distinguishable from the circumstances of the applications before me. However, I note Mansfield J's reference to the public interest in the timely progression of examinations under the ACC Act. His Honour, after identifying the particular delay relevant in that case, said (at [25]): "That delay in the Examiner being able to complete the examination, and perhaps to progress it much or at all, in a matter which is of public importance is itself very significant. The nature of the ACC, its functions under the ACC Act, and the nature of the special investigation are sufficient reason to be satisfied of its importance, and of the timely gathering of information." (See also CC v Australian Crime Commission [2005] FCA 754 at [15] ).