case_text: What then is the proper method for calculating the amount of loss caused by the infringement? Various methods of measuring damages for infringement of copyright have been described: see Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746 at [11] and TS&B Retail Systems Pty Ltd 158 FCR 444 at [204]-[209]. 58 I come now to Krueger's claim for additional damages. In a claim for additional damages under s 115(4) of the Copyright Act , some general observations were made by Besanko J in Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746 at [17] : First, there is no need ... to consider if an award of additional damages can be made under s 115(4) [even where] no damages are awarded under s 115(2) because I have awarded ... damages under s 115(2) ( Polygram Pty Ltd v Golden Editions Pty Ltd (No 2) 38 IPR 451 at 459-461 per Lockhart J; MJA Scientifics [International Pty Ltd v S C Johnson and Son Pty Ltd (1998) 43 IPR 275] at 283-284 per Sundberg J). Secondly, it is not necessary that there be a proportionate relationship between the additional damages awarded under subs (4) and the damages awarded under subs (2): Flags 2000 Pty Ltd v Smith (2003) 59 IPR 191 at 198 per Goldberg J. An award of additional damages under subs (4) is not dependent upon the adequacy or inadequacy of an award of damages under subs (2). Thirdly, the matters in subs (4)(b)(i)-(iv) inclusive are not preconditions to an award of additional damages. In other words, and using the flagrancy of the infringement as an example, the Court must have regard to the flagrancy of the infringement in determining whether to award additional damages, but is not the case that additional damages can be awarded only if the breach involves a particular degree of flagrancy. Fourthly, ...there is a distinction between conduct of a defendant after an infringement (or after being informed that he has allegedly infringed the plaintiff's copyright) and relevant to the substantive allegations against him on the one hand, and the defendant's conduct of his defence to an action for an infringement of copyright in relation to procedural matters on the other. The former matter is within the terms of s 115(4)(b)(ib) of the [Copyright] Act, whereas ... the latter matter is a matter to be taken into account in determining the appropriate order as to costs. ... Fifthly, an award under s 115(4) of the [Copyright] Act can encompass damages which at common law would be aggravated damages and exemplary damages: Bailey 53 FCR at 113-114. 63 Vawdrey's conduct in its defence of the instant action must also be mentioned as it bears on the issue of costs: see Futuretronics at [17]. That conduct included: (1) Vawdrey's contention that Paul Vawdrey and if not Paul, then Michael Vawdrey, developed the load restraint system: see [20], [24], [44], [56] of the reasons for decision. On any view, those contentions were inconsistent with each other, as well the other evidence, and thus improbable to say the least; (2) Michael Vawdrey instructing an employee (Lang) to backdate the electronic copy of the second Vawdrey drawing (drawing number 25-1056-2) to be provided to Krueger during preparation for trial to create the impression that the document was created and sent on 5 December 2002 when in fact the drawing was sent no earlier than 12 December 2002, if at all: see [80] of the reasons for decision; (3) Michael Vawdrey adducing in evidence an internal job sheet of a hand drawing of what was described as a "Vawdrey-type lock" said to have been created in 1995 in support of a contention that the Krueger Concept was not original. In fact, the reference to the "Vawdrey-type lock" was added much later than 1995 and "only in respect of the litigation". Despite being called for, Vawdrey did not produce the original of the job sheet: see [101] of the reasons for decision; and (4) Vawdrey did not seek to explain how or when it came into possession of a copy of Krueger's invoice for the manufacture of the trailers with the handwriting of Cameron staff: see [73] of the reasons for decision. 64 I find that this conduct (separately and collectively) added significantly to the length of the trial. Moreover, it involved the use of tactics and taking of positions intended to benefit Vawdrey when Vawdrey knew that such positions and tactics were, at the very least, inconsistent with the objective evidence. Subject to what the parties have to say, I therefore propose to make the following costs orders: (1) Vawdrey pay on an indemnity basis one-third of Krueger's costs of, and incidental to, the proceedings through the end of the trial on liability; (2) Vawdrey pay on a party-party basis all of Krueger's costs of, and incidental to, the proceedings following the end of the trial on liability, excluding any costs of and incidental to Krueger's settlement with Camerons. 65 The reason I propose to award only one-third of Krueger's costs through trial against Vawdrey is that until the end of trial Camerons was also a party who would have been liable for a share of the prevailing party's costs. Indeed, it would have been liable for a greater share because, as noted earlier, Vawdrey was a respondent only in relation to the copyright claim, not the confidentiality claims. One might ask, then, whether it is more appropriate to make an indemnity costs order against Vawdrey only in relation to one half of Krueger's costs incurred in prosecuting the copyright claim. On its face, such an order would appear to more accurately capture the costs for which Vawdrey can be said to be responsible. The problem, however, is that much of the same evidence and facts was relevant to both the confidentiality and copyright claims and I foresee that it would thus be difficult, if not impossible, for the parties or a taxing master to allocate or separate costs on a claim-by-claim basis. Accordingly, and this is again subject to what the parties may say, I consider that in the circumstances the better approach is simply to order that Vawdrey pay a percentage share of Krueger's overall costs.


case_outcome: cited

case_text: This section has been the subject of previous judicial analysis: e.g. Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 61 FCR 479 ; see also Boyapati v Rockefeller Management Corporation [2008] FCA 995 ; Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63 ; (1999) 85 FCR 436 ; Sheldon & Hammond Pty Ltd v Metrokane Inc [1999] FCA 63 ; (2004) 85 FCR 436 ; Cody Opal (Australia) Pty Ltd v Dimasi (2004) 64 IPR 378 ; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 84 FLR 101. Adopting the language of Burchett and Tamberlin JJ in Golden Editions at 480 when considering a s 115(3) defence: [I]n general the question is not whether [Vawdrey] knew the identity of the owner of the copyright but whether [Vawdrey] has established a lack of awareness, and of reasonable grounds for suspecting, that the relevant act was an infringement of the copyright, in whomsoever that copyright might be vested. (Emphasis added.)


case_title: The Koursk [1924] P 140

case_text: In the present case, there is a single course of infringement (the creation of the Vawdrey Engineering Drawings and the resulting manufacture of trailers) of a single copyright (the Krueger Drawings). Both Camerons and Vawdrey joined in that infringement in that Vawdrey could not have completed its drawings and manufacture without receiving instructions, based on the Krueger Drawings, from Camerons, and Camerons could not have completed the infringement without the execution by Vawdrey of those instructions. Each participated in committing the wrong of which Krueger now complains and thus the liability of each for the damage sustained by Krueger as a consequence of commission of that wrong is to be determined as if each was a joint tortfeasor with the other: The Koursk [1924] P 140 , cited with approval in Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443 ; (2006) 156 FCR 158 at [149] ; see also Balkin and Davis, Law of Torts (3rd 2004) at [29.24]-[29.41]. 22 In TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444 at [177]-[178], Finkelstein J described joint tortfeasors in the following terms: The common law rule is that one tort may be committed by two or more persons: they are usually referred to as joint tortfeasors. Although the term is commonly used, the concept is not well defined. To be joint tortfeasors it is not sufficient that the independent wrongful acts of two persons have caused the same damage. Those persons are several tortfeasors. In Sir John Haydon's Case [1572] EngR 356 ; (1612) 77 ER 1150 at 1151 joint tortfeasors were described as "all coming to do an unlawful act, and of one party, the act of one is the act of all of the same party being present." The rule goes back to when an action in trespass was principally criminal ( Sir Charles Stanley's Case [1708] EngR 26 ; (1663) 84 ER 1094) but has been extended. There are three classes of joint tort: where a party is vicariously responsible for the acts of another as in master and servant, principal and agent and partnership; when there is a breach of a joint duty, be it a statutory or common law duty; and concerted action. As regards the third class (concerted action) to be joint tortfeasors the unlawful act must be for a "joint purpose" ( Clark v Newsam and Edwards [1847] EngR 531 ; (1847) 154 ER 55) or "concerted action... towards a common end" ( The Koursk [1924] P140, 152). In Thompson v Australian Capital Television Pty Limited [1996] HCA 38 ; (1996) 186 CLR 574 the High Court accepted as a correct description of joint tortfeasors that given by Sargeant LJ in the The Koursk [1924] at 159-160, namely that "there must be a concurrence in the act or acts causing damage not merely a coincidence of separate acts which by their conjoined effect cause damage". So, employing the language of criminal lawyers, all persons who aid or counsel direct or join in the commission of a tort are joint tortfeasors: Pratt v British Medical Association [1919] 1 KB 244 at 254 citing Petrie v Lamont [1841] EngR 66 ; (1841) 174 ER 424 at 426. Intent, of course, is not an ingredient of the tort for we are dealing with the civil law, not criminal conduct. 25 Dowsett J helpfully canvassed the principal tort authorities in Louis Vuitton at [148]-[170]; see also Bialkower v Acohs Pty Ltd (1998) 83 FCR 1 , 12. In deciding whether two defendants should be held jointly liable for copyright infringement, his Honour also relied on The Koursk , concluding that it must be shown that they acted in concert; that is, that there was a "concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect cause damage": Louis Vuitton at [171]. Again, this is such a case. Camerons and Vawdrey concurred in the acts which caused Krueger the damage of which it complains; there was more than a coincidence of separate acts joining together to cause damage to Krueger. Accordingly, each of Camerons and Vawdrey is jointly and severally liable for the copyright infringement.


case_outcome: referred to

case_text: Vawdrey's submission at this hearing that because it did not have "direct access or reference to, or direct knowledge of, the ... Kruger Drawings ... there can be no basis to conclude that Vawdrey had direct knowledge of the ... Drawings or ... of any copyright in them" is also rejected. Merely stating the argument demonstrates the fundamental flaws in it. First, there can be copyright infringement without direct access to the copyright work, and this was such a case: see [132] of the reasons for decision, citing LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215 , 225; see also Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at [21].


case_outcome: followed

case_text: In the present case, there is a single course of infringement (the creation of the Vawdrey Engineering Drawings and the resulting manufacture of trailers) of a single copyright (the Krueger Drawings). Both Camerons and Vawdrey joined in that infringement in that Vawdrey could not have completed its drawings and manufacture without receiving instructions, based on the Krueger Drawings, from Camerons, and Camerons could not have completed the infringement without the execution by Vawdrey of those instructions. Each participated in committing the wrong of which Krueger now complains and thus the liability of each for the damage sustained by Krueger as a consequence of commission of that wrong is to be determined as if each was a joint tortfeasor with the other: The Koursk [1924] P 140 , cited with approval in Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443 ; (2006) 156 FCR 158 at [149] ; see also Balkin and Davis, Law of Torts (3rd 2004) at [29.24]-[29.41]. 25 Dowsett J helpfully canvassed the principal tort authorities in Louis Vuitton at [148]-[170]; see also Bialkower v Acohs Pty Ltd (1998) 83 FCR 1 , 12. In deciding whether two defendants should be held jointly liable for copyright infringement, his Honour also relied on The Koursk , concluding that it must be shown that they acted in concert; that is, that there was a "concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect cause damage": Louis Vuitton at [171]. Again, this is such a case. Camerons and Vawdrey concurred in the acts which caused Krueger the damage of which it complains; there was more than a coincidence of separate acts joining together to cause damage to Krueger. Accordingly, each of Camerons and Vawdrey is jointly and severally liable for the copyright infringement.


case_title: Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63 ; (1999) 85 FCR 436


case_text: One method for assessing damages is the licence fee or royalty method. Under this approach, the owner of the copyright recovers "a sum equal to the fee that would fairly be charged for use of the copyright work": TS&B at [206]. As Vawdrey properly conceded, such a method is often rejected if the court takes the view that the applicant would not have granted such a licence to the respondent because, for example, the parties are competitors or the copyright work was devised for a particular purpose and that purpose was frustrated or destroyed by the infringing use of the work by the respondent: see Bailey v Namol 53 FCR at 112 (concluding that lost profits is the better measure of damages where the copyright work was created for a specific purposes which has been frustrated by the infringement) and TS&B at [206] (stating that the a lost profits approach is preferable to a licence fee approach where the plaintiff and infringer are "in actual or potential competition in relation to the copyright work"). See also Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 at [27]-[29]; Norm Engineering Pty Ltd v Digga Australia Pty Ltd (2007) 162 FCR 1 at [257], appeal allowed in part on other grounds at 166 FCR 268.


case_title: Sheldon &Hammond Pty Ltd v Metrokane Inc [1999] FCA 63 ; (2004) 85 FCR 436


case_title: Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378


case_title: TS&B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444

case_text: In TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444 at [177]-[178], Finkelstein J described joint tortfeasors in the following terms: The common law rule is that one tort may be committed by two or more persons: they are usually referred to as joint tortfeasors. Although the term is commonly used, the concept is not well defined. To be joint tortfeasors it is not sufficient that the independent wrongful acts of two persons have caused the same damage. Those persons are several tortfeasors. In Sir John Haydon's Case [1572] EngR 356 ; (1612) 77 ER 1150 at 1151 joint tortfeasors were described as "all coming to do an unlawful act, and of one party, the act of one is the act of all of the same party being present." The rule goes back to when an action in trespass was principally criminal ( Sir Charles Stanley's Case [1708] EngR 26 ; (1663) 84 ER 1094) but has been extended. There are three classes of joint tort: where a party is vicariously responsible for the acts of another as in master and servant, principal and agent and partnership; when there is a breach of a joint duty, be it a statutory or common law duty; and concerted action. As regards the third class (concerted action) to be joint tortfeasors the unlawful act must be for a "joint purpose" ( Clark v Newsam and Edwards [1847] EngR 531 ; (1847) 154 ER 55) or "concerted action... towards a common end" ( The Koursk [1924] P140, 152). In Thompson v Australian Capital Television Pty Limited [1996] HCA 38 ; (1996) 186 CLR 574 the High Court accepted as a correct description of joint tortfeasors that given by Sargeant LJ in the The Koursk [1924] at 159-160, namely that "there must be a concurrence in the act or acts causing damage not merely a coincidence of separate acts which by their conjoined effect cause damage". So, employing the language of criminal lawyers, all persons who aid or counsel direct or join in the commission of a tort are joint tortfeasors: Pratt v British Medical Association [1919] 1 KB 244 at 254 citing Petrie v Lamont [1841] EngR 66 ; (1841) 174 ER 424 at 426. Intent, of course, is not an ingredient of the tort for we are dealing with the civil law, not criminal conduct. 30 What then is the proper method for calculating the amount of loss caused by the infringement? Various methods of measuring damages for infringement of copyright have been described: see Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746 at [11] and TS&B Retail Systems Pty Ltd 158 FCR 444 at [204]-[209]. 31 One method for assessing damages is the licence fee or royalty method. Under this approach, the owner of the copyright recovers "a sum equal to the fee that would fairly be charged for use of the copyright work": TS&B at [206]. As Vawdrey properly conceded, such a method is often rejected if the court takes the view that the applicant would not have granted such a licence to the respondent because, for example, the parties are competitors or the copyright work was devised for a particular purpose and that purpose was frustrated or destroyed by the infringing use of the work by the respondent: see Bailey v Namol 53 FCR at 112 (concluding that lost profits is the better measure of damages where the copyright work was created for a specific purposes which has been frustrated by the infringement) and TS&B at [206] (stating that the a lost profits approach is preferable to a licence fee approach where the plaintiff and infringer are "in actual or potential competition in relation to the copyright work"). See also Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 at [27]-[29]; Norm Engineering Pty Ltd v Digga Australia Pty Ltd (2007) 162 FCR 1 at [257], appeal allowed in part on other grounds at 166 FCR 268. 34 The appropriate measure of damage in circumstances such as these (ie where the plaintiff and defendant are in actual or potential competition in relation to the copyright work) was described by Finkelstein J in TS&B at [207] as follows: ... Then lost profit is usually the best measure of damage. The plaintiff must show that he has lost sales to the defendant as a result of the infringement and quantify the loss suffered. This requires the court to explore the counterfactual hypothesis of the contracts the plaintiff would have obtained absent the infringement and the costs associated with them . Necessarily the process will involve a degree of speculation, but that is no bar to recovery. The claim is not for loss of revenue but for loss of profits. The profits to be calculated are the lost net profits. By net profits I mean revenue less all costs including variable and indirect costs, but not including income tax. Care must be taken to ensure that costs savings are brought to account. If a plaintiff sells less of his products he will have less costs and that should be treated as a gain to be offset against the lost revenue which forms the basis of the computation of lost profits. The plaintiff is also entitled to recover indirect losses (such as damage to goodwill) as long as the cause is the infringement, the loss is foreseeable and is not unduly speculative. It will often be impossible to be precise in the calculation of lost profit. If needs be, the calculation can be rough and ready, with the benefit of any doubt favouring the plaintiff. (Emphasis added.) See also Bailey 53 FCR at 111-112 (acknowledging that the lost profits assessment depends upon a counterfactual). 37 In TS&B at [208], Finkelstein J described the issue and the relevant principle as follows: There is a question whether the relevant lost profits are those that would have been earned by the plaintiff from use of the copyright work alone or where, as here, the copyright work is employed by the plaintiff as part of a wider profit-making venture. While there was, at one point, doubt about the matter, modern cases permit the recovery of any secondary loss caused by the infringement. Secondary loss would include for example loss of sales of non-copyright work that is sold with the copyright work. Again, the issue is one of causation, and perhaps also of foreseeability: Gerber Garment Technology [1995] RPC 383 ; on appeal Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443. 38 Any loss related to non-copyright items is recoverable where it is a foreseeable consequence of the infringement. In the present case, the loss in relation to the whole trailer was foreseeable because, as I found at [69] in the reasons for decision, "the concept of restraints fitted to the side sliding poles was both innovative and key to Camerons' proposal and its ultimate success in the Tender." That Tender was not for a load restraint system but for the supply of distribution services for, and cartage of, the Amcor cargo. That in turn, required the manufacture of trailers. From the outset, Vawdrey was aware that the successful trailer designer would manufacture trailers and, in particular, trailers with a load restraint system suitable for the cartage of the Amcor cargo. Moreover, Vawdrey was also aware from the outset of the importance of the load restraint system to the overall trailer design: see [20] of the reasons for decision. In those circumstances, I conclude that it was reasonably foreseeable that the Camerons-Vawdrey infringement of the load restraint system design would cause (and did cause) Krueger to lose not just the design for the gates, but the overall contract for the design and manufacture of trailers in accordance with the Amcor Tender. 39 For those reasons, the loss related to the gates is not severable from the overall loss in relation to the trailers. 40 I now turn to consider the calculation of the damages payable by Vawdrey for the infringement. 41 Krueger called Neil Leslie Bridgman, its General Manager of Finance & Administration. Mr Bridgman calculated Krueger's damages claim on what was described as a component approach. Mr Bridgman estimated the direct material and labour costs that would have been incurred in manufacturing the trailers the subject of the dispute. As noted earlier, this exercise was hypothetical. Estimated materials and labour costs were addressed separately. In relation to the materials costs, a hypothetical bill of materials, being a list of each of the components that would have been required by Krueger to manufacture the finished goods (the trailer with the gates) and identifying the quantity of each item and the cost of that item, was prepared. Mr Bridgman estimated that the total direct costs of materials that would have been incurred in the manufacture of a trailer with a set of sliding side gates would have been $23,826.73. That amount included $2,672.73 for sign writing (a matter I will deal with presently). 54 As I have already noted, subject to issues of causation and foreseeability, any secondary loss, including goodwill, caused by the infringement is recoverable: TS&B at [207]-[208]. In the present case, I find that it was reasonably foreseeable that infringement of the load restraint system would cause a loss of goodwill to Krueger in terms of brand-name recognition and a first-entrant advantage in connection with the load restraint system. Unsurprisingly, truck manufacturers strategically place their name on each truck they manufacture to advertise not only that they manufacture trucks but trucks of a particular size capable of carrying the customer's cargo. It is free advertising. The fact that the load restraint system in the present case could not be viewed because it was covered by the curtains is irrelevant. It is the association of the manufacturer's name with trucks and with a particular customer which generates goodwill and the possibility of new orders. It can scarcely be denied that the chance to have its name associated with Camerons and an important end-client like Amcor was a thing of value to both Krueger and Vawdrey. Moreover, the chance to be the first to market with a new and innovative load restraint system would likely have given Krueger an advantage in competing for the design of trailers for the transport of other non-standard cargos. As they say, success breeds success. So much was ultimately conceded by Vawdrey when Krueger tendered an advertisement published by Vawdrey containing a photograph of Mr Glen Cameron standing in front of a truck manufactured by Vawdrey bearing both names Camerons and Vawdrey. While the precise quantification of Krueger's lost goodwill is necessarily speculative to some degree, I would award it an additional sum of $10,000 in this regard. That amount represents the best assessment I can make in the circumstances of the advertising and first-entrant advantage loss that Vawdrey's infringement caused to Krueger. 55 In addition to lost goodwill, Krueger also argued that it should be awarded the sum of $59,404.89 as consequential damages in the form of mitigation costs. Specifically, Krueger claims $31,904.89 as the costs of emergency marketing undertaken "in an effort to have Krueger recognised in the market as the innovator of the Krueger concept," and $27,500 as the costs of creating demonstration trailers fitted with the Krueger Concept and offering them to various companies for free trial and evaluation. For the following reasons, I reject the claim for mitigation costs. 56 The fundamental problem with the claim for mitigation costs is that the use of the Krueger Concept by Vawdrey was not an infringing act because, as I found in the reasons for decision, it is an unprotected idea rather than a protected expression of an idea: see [130] of the reasons for decision. On the other hand, the loss suffered by Krueger for infringement of the concept as expressed in the Krueger Drawings (which were protected expressions of the slide-a-gate concept created for the specific purpose of winning the Tender and the contract with Camerons) is wholly encapsulated in the lost profits and lost goodwill from the contract that would have been obtained with the copyrighted work had it not been infringed. There was no evidence that the particular load restraint system expressed in the drawings for the Amcor Tender could be or was used other than for the cartage of the Amcor freight as specified in the Tender. Thus to the extent that mitigation costs might be recoverable at all, they would be recoverable only from Camerons as part of the damages for breach of confidence.


case_outcome: applied

case_text: The word 'label' as used in par (a) of the definition of 'accessory' in s 10(1) should be given a meaning distinct from that provided by other paragraphs of the definition, such as the 'written instruction, warranty or other information provided with the article' referred to in par (d): ASIC v DB Management Pty Ltd [2000] HCA 7 ; (2000) 199 CLR 321 at 338 [34] - [35] per Gleeson CJ, Gaudron, Gummow, Hayne and Callinan JJ. 'Other information' referred to in par (d) would include the descriptions on the navy-blue and silver embroidered internal labels on the articles in Exhibits A to P (including the scarf, where those labels appear on its exterior surface). Likewise par (c) of that definition would catch the use of the copyright in the painting the subject of the decision in Bailey 4 NSWLR 701.


case_text: In Burge v Swarbrick [2007] HCA 17 ; (2007) 234 ALR 204 Gleeson CJ, Gummow, Kirby, Heydon and Crennan JJ examined in detail the legislative history of the design/copyright overlap provisions of the Act and cognate legislation as they existed immediately prior to the enactment of the current version of Div 8. In 2003 the Designs Act 2003 (Cth) was passed and the former Div 8 of Pt 3 of the Copyright Act was replaced by the current provisions. The current expression of the Parliament's intention is found in the present provisions of the Copyright Act . The definition of 'corresponding design' in s 74(1) of the current Act is substantially different to that examined in Burge [2007] HCA 17 ; 234 ALR 204. 72 The amendments came about following concerns raised in the Australian Law Reform Commission's Report No. 74, Designs : see the revised explanatory memorandum accompanying the Designs ( Consequential Amendments) Bill 2003 circulated by the authority of the Parliamentary Secretary to the Minister for Industry, Tourism and Resources in the Senate. The revised explanatory memorandum said: 'The broad policy is that artistic works commercially exploited as three-dimensional designs should generally be denied copyright protection. However, artistic works exploited as two-dimensional designs continue to receive copyright protection (and may have dual protection if registered as a design). The ALRC supported the policy underlying sections 74 to 77 and the level of protection but recommended amendments to give more clarity and legal certainty. The amendments are to: • clarify the meaning of the term "work of artistic craftsmanship"; • amend the definition of "corresponding design" to deal with certain technical difficulties ...' 73 The revised explanatory memorandum also said that one purpose of the proposed amendment to the definition of 'corresponding design' was to remove the anomalous protection afforded to utilitarian three-dimensional articles such as pump parts. Those were not registrable as designs because they constituted a method or principle of construction, but the drawings for those pump parts were entitled to copyright protection. Another purpose of the amendments was to focus on the three-dimensional aspects of a design (see par 11 of the revised explanatory memorandum). The revised explanatory memorandum explained the reason for adding a new definition of 'embodied in' in s 74(2) was to address the previous exclusion of a design consisting solely of features of two-dimensional pattern or ornamentation applicable to the surface of an article (see par 13). It went on to say that the amendments to s 74 were intended to clarify that visual features could be embodied in a product by being woven into, impressed on or worked into the product. The revised explanatory memorandum continued (pars 15, 16): '... That is, a "corresponding design" can include artistic works exploited in products such as tapestries, knitted items and carpets. ... For example, artistic works will not have copyright protection (when used as a design) if a corresponding design is not registered but is industrially applied unless they are works of artistic craftsmanship, buildings or models of buildings. Under the amended definition, artistic works exploited in two dimensions as visual features of pattern or ornamentation will remain excluded from the definition of "corresponding design" and therefore retain copyright protection'.


case_text: Polo/Lauren argued that, in essence, the embroidery of the polo player logo was part of a pattern or ornamentation on the surface of the garments. It contended that the embroidery was not an essential feature or characteristic of the appearance of the garments amounting to a visual feature of shape or configuration in the sense explained in cases such as Cow ( PB) & Co Ltd v Cannon Rubber Manufactures Ltd [1959] RPC 240 at 244 per Lloyd-Jacob J. There, Lloyd-Jacob J said that a design of a hot-water bottle which had a ribbed appearance had to be '... considered on the footing that the particular ribbed appearance which it provides in articles to which it is applied is a characteristic feature of it'. In contrast, Polo/Lauren suggested that the subtlety of the embroidery as used on the various garments retained the essential two-dimensional character of the visual appearance of the polo player logo, so that it was to be regarded as a part of a pattern or ornamentation of the garment, and thus outside the definition of 'corresponding design'. 81 Embroidery, of its nature, affects the shape of the fabric on to which the stitching is applied. On each of the 15 exhibits (A to P) it is immediately apparent that the polo player logo is embroidered, not printed, and that the fabric surrounding the embroidery is subtly, but noticeably, differently woven to the distinct area embroidered. 82 One picture in the polo knit shirt catalogue showed six differently coloured polo knit shirts. They were in a pile folded one top of the other. Each polo knit shirt had an embroidered, but differently coloured, polo player logo visible on it. The embroidery is noticeably raised above the surface of the rest of each of those garments as depicted in the picture. The catalogue had stated: 'For Ralph/Lauren, there was no better way to celebrate the spirit of the original Polo and the heritage of this gentlemen's sport than with the signature Polo Player logo fashioned any time from no less than 784 stitches.'


case_text: Each of the articles imported by Ziliani was genuine, rather than counterfeit. It had been manufactured in the country of manufacture with the licence of the owner of the copyright in the polo player logo and then was lawfully imported into or displayed for sale in the United States of America where it was sold to Ziliani Holdings. The question here is whether the sales to and purchases by Ziliani Holdings in the United States of America entitled it to engage in 'parallel importing' of those goods into Australia: ie importing them without the licence of Polo/Lauren as the Australian licensee of the polo player logo. It is common ground that in the absence of a licence from Polo/Lauren and a defence under the Act, Ziliani would infringe any copyright in the polo player logo by importing the goods here or then trading with them: Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV [1977] HCA 52 ; (1977) 138 CLR 534. 6 Polo/Lauren claimed that Ziliani has infringed its copyright in the polo player logo here on two bases when it appeared embroidered on an article. 7 First, Polo/Lauren argued that Ziliani, from the time of their first act of importation, infringed its copyright in breach of s 37 of the Copyright Act by importing into Australia without Polo/Lauren's licence or consent each article of clothing on which the polo player logo was embroidered for the purpose of selling it by retail. Alternatively, it argued that, at least since the time Polo/Lauren or its predecessor made known to Ziliani its claim of infringement of its copyright in June 2006, Ziliani continued their importations and display for sale with knowledge of the breach of copyright. Ziliani accepted that if their defences failed they were liable on that latter basis.


case_text: The 1998 amendment of the Act to provide an exception in s 44C so that a label in which copyright subsisted would not be able to control the use of the goods to which the label was attached was prompted by the decision of Young J in the Supreme Court of New South Wales in R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701; 77 ALR 177. There, a manufacturer produced a liqueur known as 'Baileys Original Irish Cream' in the Republic of Ireland and sold it to various distributors around the world. The Australian distributor did not sell the liqueur to the defendant, which had imported its supplies of the liqueur from Baileys' Dutch distributor. The manufacturer and Australian distributor sought to restrain the importer from further importations and sales in Australia. Young J found that the label was exempt from registration under the then provisions of the Designs Act 1906 (Cth) ( Bailey 4 NSWLR at 711C). He also held that there was no infringement of Baileys' trade mark by the importation. There was no dispute that the sticker forming the label on the bottles of the liqueur imported via the Dutch distributor contained an artistic work, being a painting depicting a country scene, the copyright of which was vested in Baileys or its Australian distributor. There was no express licence by the copyright holder for the use by the importer of the artistic work depicted on the labels appearing on the bottles imported from Holland. Young J found that the importation into, and sale of the Dutch bottles in, Australia was a breach of the copyright in the labels. Thus, only because the plaintiffs controlled the copyright in the painting on the label, they could restrain the importation and sale of the liqueur in the bottles on which the label appeared. 53 Young J's decision led to recommendations for the reform of the law by the Copyright Law Review Committee. The Importation Provisions of the Copyright Act 1968 (AGPS, Canberra, 1988) reported at p 224 [181]: '181. The Committee is strongly of opinion that distributors of goods should not be able to control the market for their products by resorting to the subterfuge of devising a label or a package in which copyright will subsist . The purpose of copyright is to protect articles which are truly copyright articles such as books, sound recordings or films. This purpose is achieved by conferring on authors of works and makers of subject matter a bundle of exclusive rights entitling them to restrain conduct antipathetical to their incorporeal property and to sue for damages where such conduct has already been committed. If the simple expedient of affixing or attaching a label in which copyright subsists to any goods at all entitles the owner of the goods to exclude others from marketing similar goods, the sooner the practice is stopped the better it will be. However imaginatively labelled or packaged a bottle of liquor may be, the product is liquor . The same may be said of cigarettes, perfume and cosmetics.' (Emphasis added.) 54 The committee noted that abuses could be remedied by resort to causes of action for passing-off, breaches of s 52 of the Trade Practices Act or for infringement of the trade mark. In the present case, the product or article is the garment. In this regard, Polo/Lauren could not seek to prevent the garment being imported into Australia under the Copyright Act if the polo player logo were not embroidered onto its external surface. 55 In 1997 the Copyright Amendment Bill 1997 (Cth) was introduced to amend the Act. It provided in the proposed s 44C for a new exception of a non-infringing accessory. The Attorney-General circulated an explanatory memorandum for these amendments. It recorded in its introduction that the Bill was proposed to amend the law to prevent the owner of copyright in packaging and labelling of goods, not themselves protected by copyright, from using that copyright to stop anyone from importing the goods (see p 3 of the explanatory memorandum for the Copyright Amendment Bill 1997 , introduced into the House of Representatives on 18 June 1997). 56 The explanatory memorandum, when dealing with the amendments relating to labelling and packaging of imported goods, referred to the 1988 report of the Copyright Law Review Committee. It noted that the practice of controlling importation of goods through copyright in the artistic and/or literary works on the packaging or label was believed (in 1997) to have been quite widespread in industries such as the liquor and toy industries and continued: '... [o]ther industries such as footwear and sunglasses also have reported incidences of this practice. Removal of the ability to use copyright in this way would eliminate one of the means by which exclusive market access is able to be provided to certain distributors of such goods and would implement a recommendation of the Copyright Law Review Committee.' After reviewing a range of options, the explanatory memorandum commented upon the proposed clauses of the bill (at [119]-[122]). Then having referred to the decision in Bailey 4 NSWLR 701, it said (at [122]): ' In essence the amendments will allow the importation of goods with copyright packaging or labelling without the permission of the copyright owner, if the owner of the copyright had agreed to the use of the copyright material with the goods. The amendments will not, however, affect the operation of the law governing trade marks, insofar as the packaging or labelling includes a trade mark. ' 57 A non-infringing accessory, as defined in s 10(1), such as a label placed on an article in the country of manufacture with the consent of the person entitled to the copyright in that label or accessory, is removed from any exclusive right in the artistic work which, but for s 44C, would otherwise be conferred by the Act on the owner of the copyright. Thus s 44C(1) of the Act removes from the scope of the exclusive right protected by s 37(1), copyright in a work which falls within the meaning of a non-infringing accessory in s 10(1). And s 44C(2) modifies the operation of the exclusive right in s 38(1) in a similar way. The two exceptions in s 44C require relevantly that first, the artistic work (here, the polo player logo) must have been used in the country of manufacture with the licence of the person entitled there to the copyright by embroidering or weaving it onto an article (here, a garment) and, secondly, it be an accessory (as defined: here, a label) to the article which is imported into Australia. 58 The definition of an 'accessory' in s 10(1) recognises a distinction between the article as a functional item of commerce, and a subsidiary constituent part of the article such as a label embroidered on to it. The embroidered component is functionally accessorial to the article's use. The function which an accessory, as described in pars (a) (d) of the definition of 'accessory' in s 10(1), performs is incidental to the use of the article as an item of commerce. The article can be used for its intended purpose regardless of whether the s 10 'accessory' is present on it or as part of it. The Parliament intended that a non-infringing accessory, as defined in s 10(1), could be embroidered into an article even though, had the non-infringing accessory been sold by itself without the article, the owner of copyright in it would have been entitled to protection in Australia under the Copyright Act . 59 The word 'label' as used in par (a) of the definition of 'accessory' in s 10(1) should be given a meaning distinct from that provided by other paragraphs of the definition, such as the 'written instruction, warranty or other information provided with the article' referred to in par (d): ASIC v DB Management Pty Ltd [2000] HCA 7 ; (2000) 199 CLR 321 at 338 [34] - [35] per Gleeson CJ, Gaudron, Gummow, Hayne and Callinan JJ. 'Other information' referred to in par (d) would include the descriptions on the navy-blue and silver embroidered internal labels on the articles in Exhibits A to P (including the scarf, where those labels appear on its exterior surface). Likewise par (c) of that definition would catch the use of the copyright in the painting the subject of the decision in Bailey 4 NSWLR 701. 62 I am of opinion that the 1998 amendments to the Copyright Act were designed to prevent this inappropriate use of copyright. The Parliament had been informed, when making those amendments, that other industries including the footwear and sunglasses industries had developed similar practices to those in Bailey 4 NSWLR 701. The polo player logo, used in the way it is in the 15 exhibits, is affixed to or displayed on or incorporated into the surface of the accompanying article, within the meaning of par (a) of the definition of 'accessory' in s 10(1) of the Act. The polo player logo conveys to anyone who looks at the garment a message of its provenance: ie, it is a product of the Ralph Lauren design or fashion house or 'label'. The definitions of 'accessory' in s 10(1) recognise that such a use can take a variety of forms but is not confined simply to external packaging or internal marking. The polo player logo embroidered on an article of clothing is the 'label' of the design or fashion house, Ralph Lauren, on it. The embroidered polo player logo conveys at once that the article is authentic and is the 'label' of a Ralph Lauren garment. In this practical manner it 'labels' the garment as a product of that design or fashion house. 63 The embroidered polo player logo is not primarily a decorative feature, although it can be attractive to the eye in some of its manifestations. The polo player logo will usually remain covered by the wearer's outer clothing when it appears on the hem of an item of underwear, such as in Ex O. This may not always be the case, but this positioning of the polo player logo suggests that, at least on such a garment, its function is primarily to signify the manufacturer's identity, ie to act as a label. 64 The embroidered polo player logo on an article of clothing acts as a symbol to convey that the clothing was made by the Ralph Lauren design or fashion house. It is a 'signature' or label conveying that information of the garment's provenance. The purpose of s 44C was to prevent such a symbol being used to deny the article its ordinary use as clothing simply because the polo player logo is copyright. The owner of the trade mark and the person entitled to the goodwill of, or associated with, the polo player logo is adequately protected by the rights given under both under the Trade Marks Act and by the tort of passing off from wrongful exploitation by another person of that trade mark or symbol associating the goods with the provenance of the fashion or design house of Ralph Lauren.


case_text: Polo/Lauren argued that the visual features of the polo player logo cannot be described as features of 'shape or configuration' within the meaning of s 74. It argued that the polo player logo is basically two-dimensional and has an aesthetic, and not a functional, or utilitarian, purpose. Polo/Lauren contended that the polo player logo should properly be regarded as possessing features of pattern or ornamentation, referring to what Lehane J had said in Wrangler Apparel Corp v Classic Boots Australia Pty Ltd (1997) 38 IPR 19 at 25. 76 However, there his Honour made an obiter observation that 'W' shaped stitching on jeans was capable of being (but did not have to be) regarded as a feature of pattern or ornamentation, within the meaning of the definition in s 4 of the Designs Act 1906 (Cth) . Equally, here, there is no dispute about the capacity of the polo player logo to fall within one or other of the characterisations 'shape or configuration' or 'feature of pattern or ornamentation'. The real issue is which is the proper characterisation.


case_outcome: considered

case_text: The present application is over two years outside the time provided for under O 52 r 15(1) of the Federal Court Rules . The Minister submitted that in light of the lateness of the application, an extension of time should be refused as the applicants elected to pursue Ministerial intervention under s 417 and chose to abandon their rights of appeal. The Minister relied on an observation of Goldberg J in Daniel v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 21 ; (2004) 205 ALR 198 at [14] : 'Over nine months elapsed between the order dismissing the application for review in the Federal Court and the filing of the application in the High Court. The High Court application was made prior to the handing down of the decision in Minister for Immigration & Multicultural Affairs v Yusuf [2001] HCA 30 ; (2001) 206 CLR 323. During that intervening period, on 14 July 2000 the letter had been written to the Minister requesting him to exercise his power under s 417 of the Act. The taking of that course of action by the applicant is indicative of a decision by him to abandon any course that would seek to challenge the decision of the Tribunal on grounds available under the Act or otherwise at law. ... This course of conduct, in my view, should properly be characterised as an indication by the applicant that he was prepared to accept that the Tribunal's decision was correct and that he did not intend to challenge that decision further in the Court. A similar approach has been taken in a number of cases in this Court: Applicant A2 of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 576 ; Re Batuwantudawa [2003] FCA 684 ; Opanayaka Mudiyanselage v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 823 ; Applicant M29 of 2001 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 1266 ; Applicant VUAD of 2003 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 1331 at [16] - [20] .' 17 I very much doubt that what his Honour said in this extract from his reasons was being put as a general statement of principle; more likely, a conclusion drawn from the facts of the case before his Honour. But if I am wrong, then, with respect, I cannot agree with it. The Minister submitted that a Full Federal Court approved Goldberg J's approach in M211 of 2003 v Refugee Review Tribunal & Anor [2004] FCAFC 293 ; (2004) 212 ALR 520 at [16] [24] and cited other cases where this Court has held that a request under s 417 of the Act indicates acceptance of the Tribunal's decision and does not provide an adequate explanation for delay (at [11] of his submissions). Although the Full Court did not expressly endorse the observation cited above in Daniel , it concluded at [36]: 'Although the primary judge did not dismiss the application for prohibition on the ground of the appellant's lengthy delay in seeking constitutional writs, that, and the making of a s 417 application, reinforce the propriety of the proceeding having been brought to an end.'


case_title: M211 v Refugee Review Tribunal & Anor [2004] FCAFC 293 ; (2004) 212 ALR 520

case_text: I very much doubt that what his Honour said in this extract from his reasons was being put as a general statement of principle; more likely, a conclusion drawn from the facts of the case before his Honour. But if I am wrong, then, with respect, I cannot agree with it. The Minister submitted that a Full Federal Court approved Goldberg J's approach in M211 of 2003 v Refugee Review Tribunal & Anor [2004] FCAFC 293 ; (2004) 212 ALR 520 at [16] [24] and cited other cases where this Court has held that a request under s 417 of the Act indicates acceptance of the Tribunal's decision and does not provide an adequate explanation for delay (at [11] of his submissions). Although the Full Court did not expressly endorse the observation cited above in Daniel , it concluded at [36]: 'Although the primary judge did not dismiss the application for prohibition on the ground of the appellant's lengthy delay in seeking constitutional writs, that, and the making of a s 417 application, reinforce the propriety of the proceeding having been brought to an end.'


case_title: Minister for Immigration and Multicultural Affairs v Rajalingam [1999] FCA 794 ; (1999) 93 FCR 220

case_text: The second additional ground of appeal asserts that the Tribunal failed to apply the correct test in determining whether the applicants had a well-founded fear of persecution. The applicants submitted that the Tribunal assessed their evidence on the basis of a 'balance of probabilities' test and failed to ask itself 'what if I am wrong?' as per Minister for Immigration & Multicultural Affairs v Rajalingam [1999] FCA 794 ; (1999) 93 FCR 220. The Minister contended that nothing in the Tribunal's decision suggests that it misunderstood its task of determining whether the applicants had a well-founded fear of persecution for a Convention reason. The applicants did not identify any aspect of the Tribunal's decision that supports this claim in their outline of submissions. In these circumstances, I agree with the Minister's submission and this ground must also fail. 32 In considering whether to exercise my discretion to grant the extension of time that is being sought, in addition to my earlier consideration of the s 417 application at [21], I find it impossible to find any error, let alone jurisdictional error, in the learned Federal Magistrate's decision or that the applicants have any prospects of success on appeal. 33 It is for these reasons that I have come to the conclusion that I should not exercise my discretion to grant an extension of time to file and serve a notice of appeal; even if such an extension were granted, the applicants would have no reasonable prospects of success on appeal.


case_text: The Federal Magistrate also found that the Tribunal did assess the objective basis of the applicants' fear of the specific assailants in a location other than the land at Nadi. The applicants had indicated that they could not return to their farm at Nadi since the lease had expired. His Honour held that the Tribunal did not make a relocation finding under the principle in Randhawa v Minister for Immigration, Local Government and Ethnic Affairs (1994) 52 FCR 437 but an assessment of fear based on a changed fact situation (at [54]). 13 On 17 November 2005, Scarlett FM dismissed the application in respect of the first, second and fourth applicants and dismissed the application in respect of the third applicant pursuant to s 48A of the Act. 14 On 29 April 2008, the applicants filed an application for an extension of time to file and serve a notice of appeal from the orders of Scarlett FM. In an affidavit filed and sworn 29 April 2008, the first applicant explained that the reason for the delay was that the applicants had sought Ministerial intervention on humanitarian grounds under s 417 of the Act in the intervening period. The applicants received notification of the final outcome of their s 417 application from the Minister by letter dated 2 April 2008. A draft notice of appeal was annexed to the affidavit and contains four grounds of appeal. These grounds of appeal assert that the learned Federal Magistrate had erred in failing to find jurisdictional errors in the Tribunal's decision.


case_text: The first ground of appeal asserts that the Tribunal erred in failing to consider whether the second, third and fourth applicants, had a well-founded fear of persecution by reason of their membership of a particular social group comprising 'Indo-Fijian (young) females'. The Minister submitted that the sole basis on which the applicants say the Tribunal was required to consider this possibility was that the first applicant had told the Tribunal he did not want to return to Fiji because his 'wife and daughters might be the victims of violence' (at 5 of the Tribunal's reasons). The Minister contended that the context in which this statement appears does not support the applicant's claims that they advanced the argument to the Tribunal that 'Indo-Fijian (young) females' comprised a particular social group in Fiji. In Appellant S395/2002 v Minister for Immigration and Multicultural Affairs [2003] HCA 71 ; (2003) 216 CLR 473 , Gleeson CJ stated at [1]: ' ... this Court has insisted that, on judicial review, a decision of the Tribunal must be considered in the light of the basis upon which the application was made, not upon an entirely different basis which may occur to an applicant, or an applicant's lawyers, at some later stage in the process.' 24 In these circumstances, this ground cannot be sustained. 25 The second ground of appeal asserts that the Tribunal erred in failing to consider an integer of the claims, namely, whether the applicants had a well-founded fear of persecution by reason of the first applicant's support for the Fiji Labour Party at the time of the general election. The first applicant argued in his submissions that the Tribunal addressed the wrong issue in stating that 'I am satisfied from the independent evidence that the party is unlikely to achieve power again in the reasonably foreseeable future' at 17. However, the Tribunal went on to find in the same paragraph that: ' ... there is also no evidence in the U.S. State Department report for 2003 (2004) or any of the other sources cited above that people supported it in the past, or who support it now, are being subjected to any serious discrimination or harm, either at a societal level or by agents of the state.'


case_text: The third ground of appeal asserts that the Tribunal breached the requirements of s 424A of the Act. The section requires that, subject to certain exceptions, the Tribunal must give an applicant in writing, clear particulars of information which it considers would be the reason, or a part of the reason, for affirming a decision that is under review, and invite the applicant to comment on that information. The information that the applicants claim the Tribunal was required to give them under s 424A is particularised in the draft notice of appeal 'as discrimination against Indo-Fijians' through affirmative action programs for other ethnic groups. The Minister submitted that this is not 'information' that attracts an obligation under s 424A of the Act: see SZBYR v Minister for Immigration and Citizenship [2007] FCA 26 ; (2007) 235 ALR 609 at [18] . The Tribunal based its findings in relation to affirmative action on the U.S. State Department report for 2004 (within the exception of s 424(3)(a)) ; the evidence given by the applicants to the Tribunal (within the exception of s 424(3)(b)) ; and the insufficient evidence that the applicants might be targeted for serious harm by reason of their race in the reasonably foreseeable future (not 'information' within the meaning of s 424A). In these circumstances, this ground cannot be sustained. 28 The fourth ground of appeal asserts that the Tribunal failed to consider whether they had a well-founded fear of persecution by reason of the first applicant's provision of his truck to the Fiji Labour Party, as opposed to his party membership. The Minister submitted that the applicants did not articulate any claim that the first applicant's provision of his truck to the Fiji Labour Party gave rise to any fear of harm as distinct from the harm they claimed to fear by reason of his party membership, nor did any such argument clearly arise from their evidence. The Tribunal referred to the first applicant's provision of his truck to the Fiji Labour Party in its reasons (at 5) and concluded that there is no evidence that people who supported the party in the past or present are being subjected to any serious discrimination or harm, either at a societal level or by agents of the state (at 17). In these circumstances, I agree with the Minister's submission and this ground must fail. 29 In the first applicant's outline of submissions dated 6 August 2008, two additional grounds of appeal are raised in addition to the four grounds in the draft notice appeal.


case_title: SZGNO v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1816

case_text: At the hearing before this Court, the Minister conceded that the applicants had been pointed in the direction of pursuing the s 417 application by the Tribunal implicitly and by the Federal Magistrate explicitly. I am mindful of the fact that the applicants are self-represented and may not have obtained legal advice in pursuing one course over another, instead of pursuing both courses simultaneously. I am also mindful of the conclusion of Graham J in SZGNO v Minister for Immigration & Multicultural & Indigenous Affairs [2005] FCA 1816 , where His Honour said at [11]: 'In my opinion the learned Federal Magistrate has fallen into error in concluding that by making an application to the Minister under s 417 of the Act and the subsequent delay the Applicant thereby elected to accept the correctness of the Tribunal's decision.'


case_outcome: distinguished

case_title: SZHRZ v Minister for Immigration and Citizenship [2008] FCA 1440

case_text: In the present case, there is no evidence before the Court that in electing to pursue Ministerial intervention under s 417 , the applicants chose to abandon their rights of appeal, such as by the filing of a notice of discontinuance: cf., SZHRZ v Minister for Immigration & Citizenship [2008] FCA 1440. The applicants received notification of the final outcome of their s 417 application from the Minister by letter dated 2 April 2008 and filed the application for an extension of time on 29 April 2008. In my considered view, the applicants, by pursuing the s 417 application, should not be considered as abandoning their rights of appeal in respect of the Tribunal's decision. 22 On the hearing of the application, I indicated to the parties that if I was minded to grant an extension of time to file and serve a notice of appeal, I would proceed to determine the applicants' appeal on the basis of the grounds in the draft notice of appeal and the two further grounds in the first applicant's outline of submissions.


case_title: Briffa v Hay (1997) 75 FCR 428

case_text: The process of decision-making has been explained in a number of cases including Briffa v Hay (1997) 75 FCR 428; National Mutual Life Association of Australia Ltd v Campbell [2000] FCA 852 ; (2000) 99 FCR 562; and Cullinane v Mercer Benefit Nominees Ltd [2006] FCAFC 82 ; (2006) 152 FCR 1. For the purposes of determining this appeal, it is not necessary to refer in detail to those decisions.


case_title: National Mutual Life Association of Australia Ltd v Campbell [2000] FCA 852 ; (2000) 99 FCR 562


case_title: Cullinane v Mercer Benefit Nominees Ltd [2006] FCAFC 82 ; (2006) 152 FCR 1


case_text: I agree with the contention that the Trustee did fail properly to apply cl 27(g) of the Trust Deed. It is clear that it had a discretion as to whether to appoint Public Trustee or some other person to be trustee for the SST benefit: see cl 27(g)(ii). It does not appear to have exercised that discretion, because it has said in its letter of 25 October 2006 that it simply applied a rule or policy without regard to the particular circumstances of the case. See Croft v Minister for Health (1983) 45 ALR 449; Mendoza v Minister for Immigration, Local Government and Ethnic Affairs (1991) 31 FCR 405.


case_title: Mendoza v Minister for Immigration, Local Government and Ethnic Affairs (1991) 31 FCR 405


case_text: In those circumstances, even assuming that the Tribunal should have given Mr Genikas a further opportunity to comment upon that new material, there was no operative breach of the obligation to accord procedural fairness: see Stead v State Government Insurance Commission [1986] HCA 54 ; (1986) 161 CLR 141 at 145 147; Turner v Official Trustee in Bankruptcy (1996) 71 FCR 418 at 420; Sommer v NM Superannuation Pty Ltd [2001] FCA 923 at [34] . That is, even if strictly speaking the Tribunal should have given Mr Genikas the opportunity to comment further on that additional material, its failure to do so in the particular circumstances did not in fact cause him any unfairness as the Tribunal (as its reasons show) did not in fact have regard to that additional material in making its decision. In all other respects, Mr Genikas was given a copy of the material which Ellen Appleby had provided to the Tribunal and the opportunity to respond to it.


case_title: Turner v Official Trustee in Bankruptcy (1996) 71 FCR 418 at 420


case_title: Sommer v NM Superannuation Pty Ltd [2001] FCA 923


case_text: The important consideration for the Trustee and, subject to s 37(6) of the Act, for the Tribunal is the best interests of the beneficiary or the beneficiaries and the security of the trust property: Miller v Cameron [1936] HCA 13 ; (1936) 54 CLR 572 at 580 581. In circumstances such as the present, it would be appropriate for the Trustee to be guided by the sorts of considerations to which the Court might have regard when exercising its powers under s 36 of the Trustee Act 1936 (SA). The Trustee must therefore have regard to all the particular facts; cf Re Estate of Roberts (1983) 20 NTR 13 at 17 18; Re Henderson [1940] Ch 764. In Re Grace [1955] QWN 81 the trustee was appointed showed that the putative trustee could secure a better income than the existing trustee.


case_title: Re Estate of Roberts (1983) 20 NTR 13


case_title: Re Henderson [1940] Ch 764


case_title: Re Grace [1955] QWN 81


case_text: The applicant submits that the fact that he still received the Minister's correspondence is irrelevant. In support he cited Chan Ta Srey v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 1292 and Vean of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 311. The applicant submitted that he was not notified in accordance with the Migration Act and consequently a precondition of the exercise of the Minister's power to cancel his visa had not been satisfied.


case_text: In his affidavit the applicant appears to argue that in taking into account the nature and severity of the offences for which he was imprisoned and in considering the need to protect the Australian community, the Minister is usurping the role of the court which has the obligation to impose an appropriate sentence. The reference to a Chapter III court is misplaced. The applicant was tried, convicted and sentenced in the District Court of New South Wales which is not a federal court and there is no suggestion that any federal offence was involved. There is ample authority that in cancelling the applicant's visa, the Minister is not imposing any further punishment for the applicant's crimes or exercising judicial power; see Djalic v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 151 ; (2004) 139 FCR 292 at 306; Tuncok v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 172 at [44] ; Ex parte Walsh and Johnson; Re Yates [1925] HCA 53 ; (1925) 37 CLR 36 at 95-96. 21 In his submissions in reply the applicant denied that he relied on any argument that s 501 is punitive. He submitted that in purporting to protect the Australian community "from past conduct already dealt with by way of a finding of guilt and sentence of imprisonment" the Minister "offends" the integrity of the courts. According to the applicant a sentence imposed by the court "is an exhaustive statement by the court as to the length of time the community needs protection from the applicant's criminal conduct". This submission must be rejected. It runs counter to the scheme of the Act as found in s 501 and following, in particular s 501(6) , which sets out the various circumstances in which a non-citizen fails the character test. Those circumstances place clear emphasis on criminal conduct (including past criminal conduct) and other behaviour which may pose a threat to the community. As the Full Court observed in Djalic at 310: The authorities recognise that the protection of the Australian community lies at the heart of the discretionary power to cancel the visa of, or deport a non-citizen convicted of serious criminal offences. 22 Having discussed some of the relevant authorities the Full Court further observed, at 311: [T]he matters identified in s 501(6) show that the legislation is designed to protect the community from criminal or other undesirable conduct and to permit the Minister to give effect to what might loosely be described as community expectations that perpetrators of such conduct, should not be permitted to remain in Australia. It follows from what we have said that s 501(2) of the Migration Act , on its proper construction, permits the Minister to take into account, in the exercise of his or her discretion, the effect cancellation of the non-citizen's visa will have in protecting the Australian community. Similarly, s 501(2) is sufficiently broad to allow the Minister to take into account his or her assessment of the expectations of the Australian community as to whether or not a non-citizen who commits serious criminal offences should be permitted to remain in the country. 23 I accept the respondent's submission that for the Minister to make a decision in the public interest as to whether a particular non-citizen should be allowed to remain in Australia does not involve any invasion of the proper sphere of the criminal courts.


case_text: In his affidavit the applicant appears to argue that in taking into account the nature and severity of the offences for which he was imprisoned and in considering the need to protect the Australian community, the Minister is usurping the role of the court which has the obligation to impose an appropriate sentence. The reference to a Chapter III court is misplaced. The applicant was tried, convicted and sentenced in the District Court of New South Wales which is not a federal court and there is no suggestion that any federal offence was involved. There is ample authority that in cancelling the applicant's visa, the Minister is not imposing any further punishment for the applicant's crimes or exercising judicial power; see Djalic v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 151 ; (2004) 139 FCR 292 at 306; Tuncok v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 172 at [44] ; Ex parte Walsh and Johnson; Re Yates [1925] HCA 53 ; (1925) 37 CLR 36 at 95-96.


case_outcome: discussed

case_text: The Migration Act does not impose any express obligation on the Minister to give written notice of an intention to cancel a visa although in this case the Minister did so. In Osborne v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCA 1113 ; (2002) 124 FCR 416 at 423, French J held that there is an implied obligation to give prior notice of the Minister's intention to cancel a visa under s 501. As his Honour observed, the power to cancel a visa cannot be exercised unless the visa holder "fails to satisfy the Minister that the person passes the character test". His Honour continued: It is not to be supposed that the Parliament intended that condition to be met by the silence of the visa holder in the absence of any notice of the Minister's intention to cancel. Some process of notification is therefore contemplated even thought [sic] the Act does not set it out. Indeed the regulations seem to assume as much. The implied condition of notification is not absolute. It could not be. For otherwise a person could defeat the cancellation provisions simply by moving to an address not known to the Minister or his officers. The implied condition requires only that reasonable steps be taken to notify the visa holder. 11 The notice of intention dated 30 April 2007 was sent to the applicant at the Long Bay Correctional Complex, PO Box 13 Anzac Parade, Matraville, NSW 2036 . The applicant submits that "at all times relevant to the cancellation ... his correct address for service was Locked (Mail) Bag 20, MATRAVILLE NSW 2036 ". He submits that the Minister "was informed of this address as early as July 27 th 2006". The applicant does not dispute that he actually received the notice and that he responded to it. He signed an acknowledgment of its receipt on 7 May 2007 and he sent a two page submission to the Department on 28 June 2007. At the hearing he was not able to point to any prejudice that resulted from the document being sent to the above address. In my view the applicant was given reasonable notice of the intention to consider cancellation of his visa. 12 The position with regard to the notice of cancellation of the applicant's visa is different. Section s 501G(1) requires the Minister to give a person written notice of the decision to cancel a visa and sets out the information that must be included in such a notice. Section 501G(3) provides that the notice is to be given in "the prescribed manner". Regulation 2.55 of the Migration Regulations 1994 (Cth) prescribes several methods for giving the notice to the person whose visa has been cancelled. One method is delivery by prepaid post to the person's last known residential address, business address or post box address known to the Minister. The address to which the notice of cancellation dated 11 November 2007 was sent was Long Bay Complex, Locked Bag 21, Matraville NSW 2036 . The applicant signed an acknowledgement of receipt of the notice on 21 November 2007.


case_text: The applicant claims that he was denied procedural fairness because he was in communal detention at the time of the "purported notice and cancellation", that he did not have a lawyer or migration agent to assist him and that he informed the Minister of these circumstances. In support of this submission he cited Sales v Minister for Immigration and Multicultural Affairs [2006] FCA 1807. The facts in Sales bear some similarity in that Mr Sales was also in custody when he was notified of the intention to consider cancellation of his visa and given 14 days within which to respond. The seven page letter containing the notice of intention to consider cancellation also resembles that received by the applicant. It was described by Allsop J at [12]- [14] as follows: The letter dealt with the character test and whether his visas would be cancelled. On page 3 of the letter the applicant was advised of the considerations that would be taken into account if the decision was made by a delegate or if made by a Minister. It was not clear to the applicant who would make the decision, but in either case direction number 21 was said to be relevant. If the decision were to be made by a delegate it was mandatory and if it were to be made by the Minister it would be a direction to which the Minister could have regard. Thus direction number 21 was a document which was highly relevant to any applicant and this applicant to consider in relation to the position that such a person and this person would face under s 501. The letter included a number of other documents including extracts from the Act, the applicant's criminal history, pre-release reports of various dates, parole reports and a copy of the sentencing judge's remarks. Page 7 of the letter sets out in detail the documents which the applicant recognised receiving. The letter urged the applicant to read fully and carefully the contents of the Minister's direction. It urged him to address each and every topic that he felt applied to him or that was relevant to his circumstances and to provide any other information which he thought was relevant. The direction is a comprehensive and careful document of 11 pages. It makes clear in the preamble that the exercise of the discretion whether or not to cancel the visas will take into account a wide range of factors including the protection and the expectations of the Australian community, the nature of the crimes committed, the non-citizen's links to Australia and any relevant international law obligations of Australia. The preamble went on to say that the purpose of refusing or cancelling a visa under s 501 is to protect the safety and welfare of the Australian community and to exercise a choice on behalf of the Australian community as a whole as to who should be allowed to enter or remain in the community. The task to prepare material for a consideration of such matters, objectively understood, is wide-reaching and significant. 17 His Honour held that a 14 day period was "plainly inadequate" for Mr Sales to address the task before him. His Honour focused not only on the complexity of the task but also on the fact that Mr Sales was in custody; that he had spent a significant part of his youth in an institution; that he had suffered from heroin and alcohol addiction; that he was not well educated and that his own and his family's resources were not extensive. Allsop J stated at [34]: Fourteen days for this man, in prison, with a background of incarceration, drug and alcohol addiction and otherwise of the background revealed by the papers was manifestly inadequate to undertake and complete the task before him. 18 His Honour held that Mr Sales was not accorded procedural fairness. In reaching this conclusion Allsop J did not suggest that the Minister had any obligation in relation to the difficulties facing Mr Sales other than to allow him adequate time. 19 The applicant here does not complain that the time allowed for him to respond (approximately two months) was inadequate. His complaint seems to be that the Minister did nothing to address the difficulties that he was facing because he was in custody and without professional advice. Whether procedural fairness has been accorded is always a matter of degree. Despite the similarities between the position of Mr Sales and the applicant, in my view the facts here are distinguishable. The time allowed to the applicant was not inadequate, and, in the circumstances, it is my opinion that there was not a breach of the obligation to grant procedural fairness.


case_title: Tuncok v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 172


case_title: Vean of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 311


case_text: To succeed in its interlocutory claim for relief, Telstra must make out a prima facie case in the sense that if the evidence remains as it is, there is a probability that at the trial in the action Telstra will be held entitled to relief. The balance of convenience must also favour the grant of interlocutory relief sought. These propositions have recently been emphasised by the High Court in Australian Broadcasting Corporation v O'Neil [2006] HCA 46 ; (2006) 229 ALR 457. At this point, the facts need a little more explanation. 20 Premier Media Group is the exclusive licensee of what can be conveniently referred to, as it was by the applicant in its written submissions, as the exclusive licensee of the pay TV slice of the rights in NRL audio-visual footage. Publishing and Broadcasting Limited, a half-owner of Premier Media Group, has the so-called free-to-air slice. The other half-owner of Premier Media Group, News Limited, through its subsidiary, National Rugby League Investments Limited, half owns the NRL, which has been responsible for licensing out these rights. It was submitted by Telstra that in a so-called fully negotiated, high-priced deal, the NRL partnership licensed the new media slice, so-called - that is, internet and telephony - to Telstra in an agreement under which Telstra also became the six-year sponsor of the NRL Partnership's rugby league competition. 21 These facts, in particular, expressed in this way - that is, in a manner taken from the applicant's submissions - were relied upon by the applicant to show that it had paid for a significant grant of a body of rights. That proposition was, in effect, the premise for the applicant's complaint that the grant to it was being derogated from by the respondents and, through them, indirectly, those that controlled the respondents, who also partly controlled those who supplied the grant. In evaluating this submission of derogation from grant, the terms of clause 8.5 of the agreement between the applicant and the two members of the NRL partnership should be borne in mind at all times.


case_text: It is unnecessary to compare minutely the length of time taken in these examples of other media, given the respondents' evidence as to the impugned broadcasts. It may be, and I do not make a finding about this now, that even by these standards, that is the standards of pay television and free to air television, it will be found, that the respondents have, to put it bluntly, been a little greedy in what they have taken for the dealing to be fair as well as newsworthy. Ultimately, that will be a matter of judgment and impression, see British Broadcasting Corporation v British Satellite Broadcasting Ltd [1992] Ch 141 and Hubbard v Vosper [1972] 2 QB 84 and other cases. It is not clear to me that that judgment ought be made, that is, that there has been a taking of too much by reference to the benchmark of free to air and pay television. As I said, it is unnecessary to pursue this judgmental analysis given the way the matter has been argued. My doubts and uncertainties about whether what has been done, goes beyond fair dealing, is strengthened by some evidence concerning the approach of Telstra itself in negotiating with the Australian Football League (the "AFL") in December 2005. Telstra in those negotiations was seeking to reach agreement with that other sporting code about the same kind of rights that it has been able to extract by agreement from the NRL.


case_text: There was a separate and distinct argument that the provision by Fox Sports News to third parties, Hutchison and Vodafone, precludes a fair dealing defence. This was based on the news clippings case, De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99. The applicant, in this connection said that the respondents were simply broking or selling content, not delivering news. That point may be made good on a final hearing; at this point, I am not persuaded that that conduct - that is, the on-passing of the Fox Sports News to the third parties - is not a fair dealing associated with the reporting of news by Vodafone and Hutchison for the purposes of s 103B(1)(b). 52 I turn to the balance of convenience. I am prepared to accept that if I am not to grant interlocutory relief, and if the respondents have overstepped the mark on fair dealing, real and substantial impairment will occur to the applicant's rights. Some evidence was given in a form which I did not find satisfactory and which I rejected. However, I am prepared to approach the application on the basis that the respondents exceeding their entitlement under s 103B would cause a real impairment of valuable commercial rights to the applicant. Whether this is in any way permanent or otherwise irreparable may perhaps be doubted. If there has been infringement, the profit derived by the respondents from Hutchison and Vodafone would be readily able to be ascertained. Any difficulty in that ascertainment would almost certainly work against the respondents rather than in their favour in accordance with well-understood principle. And as to the use by the respondents themselves on the Foxsports website, a putative licence fee could, no doubt, be calculated. 53 On the other hand, if I grant an injunction and if it turns out that the applicant fails, whilst there would be an undertaking as to damages the interference with the businesses, not only of the respondents but also Hutchison and Vodafone, would be extremely difficult to quantify. The respondents, Hutchison and Vodafone, would not have the ability to call upon the kind of account of profits that the applicant would if the reverse were the case. Further, the nature of the status quo ante favours, in my view, withholding any relief. The evidence reflects that the footage of NRL matches on internet and mobile phones in 2007 is at least comparable to that which occurred in 2006.


case_title: Hubbard v Vosper [1972] 2 QB 84


case_text: The judgment that the appellant seeks to appeal was apparently made under O 13.03A of the Federal Magistrates Court Rules. Order 13.03A(c) permits the Court to dismiss an application if a party fails to appear at a hearing. The judgment is in the nature of an interlocutory judgment: see recently, for example, MZXMD v Minister for Immigration and Citizenship [2007] FCA 769 at [7] per Weinberg J and the cases there cited. Accordingly, pursuant to s 24(1A) of the Federal Court of Australia Act 1976 (Cth), the appellant requires leave to appeal. The appellant has not sought leave, notwithstanding that the defect is apparent from the first respondent's notice of objection to competency. I note too that leave must be sought within 21 days of the pronouncement of the interlocutory decision or an extension of time sought in which to seek such leave. The appeal is incompetent in the absence of a grant of leave.


case_title: MZWHW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 460

case_text: Even if leave were sought, I would not be disposed to grant it. The present is a hopeless case. This is the second occasion in which the appellant has instituted proceedings for judicial review of the Tribunal's decision in March 2004. There is no suggestion that the appellant seeks to challenge the decision on any new ground. Res judicata can operate as a bar to a judicial review application in these circumstances: see, for example, MZWHW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 466 at [11] referring to Wong v Minster for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722 at [71]; and MZXEF v Minister for Immigration and Multicultural Affairs [2006] FCA 507 at [15] . Even if the circumstances did not give rise to res judicata, these second judicial review proceedings would attract an Anshun estoppel: see Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589. Such an estoppel bars a party from raising any point which properly belonged to the subject of earlier litigation that the party, exercising reasonable diligence, might have brought forward at the time of the earlier proceeding. Furthermore, there is nothing to support the appellant's contention that the course taken by the Federal Magistrate on this occasion was so unfair or otherwise affected by error that it ought be set aside on appeal.


case_title: Wong v Minster for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722


case_title: MZXEF v Minister for Immigration and Multicultural Affairs [2006] FCA 50


case_title: Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589


case_text: Moreover, it seems to me that the approach proposed by the respondents is not consistent with the usual practice which applies to search orders. The terms of O 25B of the Federal Court Rules are to be considered in light of the practice which evolved in the years following the decision in Anton Piller KG v Manufacturing Process Ltd [1975] EWCA Civ 12 ; [1976] Ch 55. 29 Prior to the advent of the computer era, the practice was for a physical search to be conducted at the premises. Questions of relevance were not an issue, although provision was always made for the protection of material claimed to be privileged or confidential. The computer imaging which now takes place seems to me to be the equivalent of what Mr Cobden SC for the applicants called the "flick through", which took place in the searched premises in the days when only hard copy documents and other physical materials were the subject of searches. 30 I accept that the effect of the modern regime of computer imaging as applied in the present case is to grant an applicant a far more leisurely period in which to examine the seized materials than was previously available. This will be a particular concern where the seized materials are obtained from a trade competitor as has happened in the present case. This emphasises the draconian and exceptional nature of the remedy. 31 However, in order to obtain a search order an applicant must satisfy the stringent conditions laid down in O 25B r 3. As I have already noted, Allsop J was satisfied that the necessary conditions were met. His Honour was also satisfied that the search should not be limited to the precise cause of action known to the applicants when the search order was obtained.


case_title: Home Office v Harman [1983] 1 AC 280

case_text: Order 14 provides for the respondents to file and serve affidavits setting out the nature and basis of any claim for privilege or confidentiality. Order 16 provides in effect for a complete release of the obligations arising from the principle in Home Office v Harman [1983] 1 AC 280. 20 On 16 October 2006 the computer experts prepared a report in accordance with Order 10. They stated that, in accordance with Order 7, they performed an independent analysis of the forensic images and extracted certain files from the images based upon the search regime. They stated that the results have been saved to a series of spreadsheets accompanying the report. 21 The computer experts' report was not provided to the solicitors for the respondents until 17 October 2006, and the relevant files ("Extracted Files") referred to therein were only made available for inspection on 8 November 2006. The solicitors inspected the Extracted Files and determined that there are approximately 284,000 electronic files in some 15,600 folders, and approximately 68,000 emails. Plainly the work involved in the search of that material to determine the existence of privileged or confidential material is significant. 34 With one exception, I am not satisfied that there are sufficient changed circumstances to warrant any amendments to the orders made on 7 September 2006. The exception is that the Home Office v Harman exemption, which is contained in Order 16, ought in my view to be deleted. In many instances such an exemption may be appropriate, but in the circumstances of the present case where the known infringement consisted of the sale of a limited number of gaming machines in Peru in 2000-2002 I do not think that the terms of Order 16 should be maintained. It seems to me to be contrary to the interests of justice in the case for them to remain as part of the court orders. It follows that I will make orders in terms of those that have been provided to me by senior counsel for the applicants. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson J. Associate: Dated: 30 November 2006 Counsel for the Applicants: R Cobden SC with N Murray Solicitor for the Applicants: Baker & McKenzie Counsel for the Respondents: J Ireland QC with M Green Solicitor for the Respondents: Paul Bard Lawyers Date of Hearing: 27 November 2006 Date of Judgment: 30 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1707.html


case_text: The ground of appeal is cast as involving a denial of procedural fairness, this being particularised as follows: "(a) The Tribunal conducted a hearing on 2 June 2006. (b) The Tribunal sent the applicant and [sic] 'Invitation to Comment' on Information on 9 June 2006. (c) The Tribunal's decision was made on 19 July 2006 and handed down on 8 August 2006. (d) The Tribunal's decision was based, in part, on the inconsistencies between the appellant's evidence at the hearing and his response to the 'Invitation to Comment on Information'. In those circumstances, the Tribunal was required, by the rules of procedural fairness, to give the Appellant an opportunity to comment on those inconsistencies." I would add that the obligation to give this opportunity is sourced in the appellant's submissions to s 425(1) of the Migration Act 1958 (Cth). That subsection requires the Tribunal to invite the applicant to appear before the Tribunal to give evidence and to present argument "relating to the issues arising in relation to the decision under review": and see SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 ; (2006) 81 ALJR 515 at [34] - [35] . 3 The appeal is from a judgment of Emmett FM dismissing an application for judicial review of a decision of the Refugee Review Tribunal affirming the delegate's decision not to grant the appellant a Protection visa. The appellant is a Pakistani national whose original refugee application based his alleged fear of persecution on his being a homosexual in Pakistan. 4 Given the course now sought to be taken by the appellant, it is appropriate to refer initially to the delegate's decision which was for s 425 purposes "the decision under review". In rejecting the application the delegate observed: "In considering all of these matters, I do not accept the unsubstantiated claims as feasible and I do not accept that the applicant has provided an honest account of his personal circumstances prior to his departure from Pakistan. The claims relating to his homosexuality are confused and inconsistent with other information he has provided. This leads me to find that he has fabricated a set of claims for himself for the sole purpose of engaging Australia's protection obligations." 11 In support of the claimed basis of the Tribunal's obligation to disclose this "issue" to the appellant for s 425 purposes, reliance is placed on the concluding sentence of [47] of the High Court's reasons in SZBEL . For convenience I have set out the entirety of [47] because the sentence relied upon can only properly be understood in the context of the paragraph as a whole. The Court observed: "... there may well be cases, perhaps many cases, where either the delegate's decision, or the Tribunal's statements or questions during a hearing, sufficiently indicate to an applicant that everything he or she says in support of the application is in issue. That indication may be given in many ways. It is not necessary (and often would be inappropriate) for the Tribunal to put to an applicant, in so many words, that he or she is lying, that he or she may not be accepted as a witness of truth, or that he or she may be thought to be embellishing the account that is given of certain events. The proceedings are not adversarial and the Tribunal is not, and is not to adopt the position of, a contradictor. But where, as here, there are specific aspects of an applicant's account, that the Tribunal considers may be important to the decision and may be open to doubt, the Tribunal must at least ask the applicant to expand upon those aspects of the account and ask the applicant to explain why the account should be accepted." (Emphasis in original.) 12 To anticipate matters, while the appellant contends the present matter is one falling within the final sentence of the quotation, the respondent Minister contends that the first sentence aptly describes this case. 13 The Minister both opposes the grant of leave because the new ground lacks substantive merit and contends as well that the appeal would fail in any event. As I am satisfied that the ground is without merit, I will deal with the substantive ground and grant leave accordingly. 14 Before indicating the reasons for my view, it is appropriate to make an additional reference to the reasons in SZBEL as they enlarge upon the burden of s 425. The Court said (at [33]-[35]) that: "[33] The Act defines the nature of the opportunity to be heard that is to be given to an applicant for review by the Tribunal. The applicant is to be invited 'to give evidence and present arguments relating to the issues arising in relation to the decision under review '. The reference to 'the issues arising in relation to the decision under review' is important. [34] Those issues will not be sufficiently identified in every case by describing them simply as whether the applicant is entitled to a protection visa. The statutory language 'arising in relation to the decision under review' is more particular. The issues arising in relation to a decision under review are to be identified having regard not only to the fact that the Tribunal may exercise all the powers and discretions conferred by the Act on the original decision-maker (here, the Minister's delegate), but also to the fact that the Tribunal is to review that particular decision, for which the decision-maker will have given reasons. [35] The Tribunal is not confined to whatever may have been the issues that the delegate considered. The issues that arise in relation to the decision are to be identified by the Tribunal. But if the Tribunal takes no step to identify some issue other than those that the delegate considered dispositive, and does not tell the applicant what that other issue is, the applicant is entitled to assume that the issues the delegate considered dispositive are 'the issues arising in relation to the decision under review'. That is why the point at which to begin the identification of issues arising in relation to the decision under review will usually be the reasons given for that decision. And unless some other additional issues are identified by the Tribunal (as they may be), it would ordinarily follow that, on review by the Tribunal, the issues arising in relation to the decision under review would be those which the original decision-maker identified as determinative against the applicant." (Emphasis in original, footnotes omitted) 15 There is, in my view, no room whatever for doubt, as I earlier indicated, that the delegate's reasons put in issue all of the claims that by that stage had been made as to why the appellant had a well founded fear of persecution and moreover that his credibility in relation to his claims was equally in issue. Not only did the Tribunal do nothing to engender any expectation that these were no longer operative issues in the review, the Tribunal in turn accentuated their centrality to it both in the questions it asked of the appellant at the hearing (as recorded in its reasons) and in its s 424A letter which referred (inter alia) to inconsistencies in the evidence he had given, questions asked at the hearing the answers to which cast doubt on his claim to having a well founded fear of persecution, to the veracity of fresh claims made at the hearing and to the authenticity of documents there produced.