case_text: There were employees at the factory as at August 2006 and during the period of the overtime bans who did not engage in the overtime ban, but nevertheless received the sign on bonus. These included A Rico, F Bacosa, LJ Ferdinads; TL Pui; EF Gonzales; VD Wijeyeratne; SS Chan; SH Chan; M Yan; A Loh; VN Tran; G Caruso and S Reinink, V Plavlianic; AS Falken; M Kostur; TT Ta; NB Luong; RB Allen; KO Lau; P Dillon; GW Gapper; H Abbasszadeh; S Fernando; PE Forbes; DC Gardner; FC MA; J Gao; C Reinink; F Manuse; O Grah. FURTHER FACTS 5 It is necessary to refer to some further facts. 6 In respect of how overtime was worked at the factory, there were differences in the practices of different sections of the factory. Generally, overtime shifts lasted for approximately two hours, from 4.30 pm to 6.30 pm, and between one and 25 of the factory employees might work on any given evening. However, some sections regularly worked overtime and other sections worked overtime infrequently. The assembly workers generally worked minimal overtime, whilst the qualified fitters were called on frequently to perform overtime because of their specialised skills. It was also clear from the evidence of both Mr Ross, the General Manager of Heinemann, and Mr Aspinall, a Factory Manager of Heinemann, as well as from the employees, that there was not a practice of relying on overtime rosters. Instead, notice of overtime was commonly given to employees either on the day before or on the day that overtime was required. Employees then had an opportunity to accept or decline the extra hours. The evidence was that there was never any difficulty in finding employees to perform the additional work and that employees ordinarily accepted the work. It is also clear that employees could and did decline overtime work without ascribing any cause or reason. 7 There was no evidence of Heinemann's overtime requirements on the days in question. There was no evidence of whether any employees actually performed overtime that week. Heinemann did not have overtime records for 22, 23, 24, 28 and 29 August 2006. The handwritten notations on the questionnaires show which employees of those interviewed were and were not available for overtime over the life of the overtime ban, and a reason for not working overtime. However, they do not indicate whether Heinemann required overtime on any evening, and if so, how much overtime was required, whether requests were made of employees to perform overtime, or whether any employee performed any requested overtime on any evening. 8 Nevertheless, it was uncontested that the employees in Column 1 of the table engaged in the ban on overtime on the days in question, and that they were not paid wages referrable to these days. In addition, Heinemann also failed to pay Ms Maria Barros for the days in question on the basis that she too was implementing the ban on overtime. The applicant submits that Ms Barros was not in fact implementing the ban and should have been paid in full for those days irrespective of the operation of s 507. MS BARROS 9 It is convenient to first consider the position of Ms Barros. Ms Barros failed to answer any questions asked of her in the questionnaire. She was initially questioned by her manager, Mr Aspinall, and later by Mr Ross. Her questionnaire was annotated simply, 'Will not answer any questions. Do not understand'. Mr Ross wrote at the end of Ms Barros' questionnaire that he had explained to Ms Barros the position in detail. He was referring to informing those employees, who had confirmed that they were enforcing the ban that they would not be paid for the duration of the overtime ban or any industrial action. Mr Ross told the Court that he believed Ms Barros understood his explanation. Ms Barros told the Court that she did not understand. She said her failure to answer was because she did not know what overtime Mr Aspinall and Mr Ross were referring to (as she rarely performed overtime) and she did not want to answer before speaking with her union representative. 10 Ms Barros agreed that she participated in the strike of 25 August 2006 and participated in the six week strike which commenced on 30 August 2006. Heinemann submitted that Ms Barros' participation in the strikes goes some way to demonstrate that she also participated in the ban on overtime. This does not necessarily follow, although it is a factor to consider in the balance, as to the likelihood of the happening of events. Heinemann also contended that Ms Barros' evidence was unreliable because of the discrepancy in her affidavit evidence and the documentary evidence showing the amount of overtime she had in fact worked previously. 11 My own assessment of the evidence is this. Ms Barros cannot understand English very well; she deposed to this, and it was apparent from her cross-examination. She said she was very confused about the questions asked of her by Mr Aspinall and Mr Ross, and she appeared confused under cross-examination both as to what was being asked of her by Counsel and as to the overtime position. In my view, despite the belief of Mr Ross, she was confused. Ms Barros had little understanding of the matters being asked of her by Counsel, and I consider had little understanding of the matters put to her by Mr Aspinall and Mr Ross at the time of the questionnaire. 12 While I consider that Ms Barros was endeavouring to tell the truth, her recollection as to when her overtime was in fact taken was faulty. She did indicate that she would go to the Union for advice, which had implemented overtime bans. She did participate in the strike of 25 August 2006 and the six week strike commencing on 30 August 2006. In my view, it is more than likely that she did engage in the overtime bans by following the Union's approach. 13 In any event, in view of Ms Barros' obvious confusion, I cannot be satisfied on the balance of probabilities that it has been demonstrated by the applicant that Ms Barros was entitled to be paid in full irrespective of the operation of s 507. The onus rests on the applicant to demonstrate this element of the case, in respect of Ms Barros, on the balance of probabilities: see Briginshaw v Briginshaw [1938] HCA 34 ; (1938) 60 CLR 336 as explained in Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd [1992] HCA 66 ; (1992) 110 ALR 449. 14 Therefore, in relation to Ms Barros, I place her in the same category as the other employees listed in Column 1 of the table. OPERATION OF SECTION 507 15 I now turn to the main issue in this proceeding, the operation of s 507 of the Act, which is in the following terms: Payments not to be made or accepted in relation to periods of industrial action (1) This section applies if an employee engaged, or engages, in industrial action (whether or not protected action) in relation to an employer on a day. (2) The employer must not make a payment to an employee in relation to: (a) if the total duration of the industrial action on that day is less than 4 hours--4 hours of that day; or (b) otherwise--the total duration of the industrial action on that day. (3) If: (a) the industrial action is during a shift (or other period of work); and (b) the shift (or other period of work) occurs partly on 1 day and partly on the next day; then, for the purposes of this section, the shift is taken to be a day and the remaining parts of the days are taken not to be part of that day. (4) For the purposes of subsection (3), overtime is taken not to be a separate shift. (5) An employee must not accept a payment from an employer if the employer would contravene subsection (2) by making the payment. ... 16 The definition of industrial action is found in s 420 of the Act. It provides the following: Meaning of industrial action (1) For the purposes of this Act, industrial action means any action of the following kinds: (a) the performance of work by an employee in a manner different from that in which it is customarily performed, or the adoption of a practice in relation to work by an employee, the result of which is a restriction or limitation on, or a delay in, the performance of the work; (b) a ban, limitation or restriction on the performance of work by an employee or on the acceptance of or offering for work by an employee; (c) a failure or refusal by employees to attend for work or a failure or refusal to perform any work at all by employees who attend for work; (d) the lockout of employees from their employment by the employer of the employees; but does not include the following: (e) action by employees that is authorised or agreed to by the employer of the employees; (f) action by an employer that is authorised or agreed to by or on behalf of employees of the employer; (g) action by an employee if: (i) the action was based on a reasonable concern by the employee about an imminent risk to his or her health or safety; and (ii) the employee did not unreasonably fail to comply with a direction of his or her employer to perform other available work, whether at the same or another workplace, that was safe and appropriate for the employee to perform. (2) For the purposes of this Act: (a) conduct is capable of constituting industrial action even if the conduct relates to part only of the duties that employees are required to perform in the course of their employment; and (b) a reference to industrial action includes a reference to a course of conduct consisting of a series of industrial actions. 17 It is unnecessary here to consider the definition of industrial action in s 420 of the Act in much detail. It is uncontested between the parties that the employees engaged in industrial action within the meaning of s 420(1)(b) of the Act for the purposes of s 507. It is well accepted that part performance of work, or performance of work other than as directed, amounts to industrial action. An ongoing ban on the operation of a certain machine, or on performing certain tasks, while otherwise completing a full day's work, is industrial action. A lock-out from, or a ban on, performing overtime, where overtime is not required or expected under a contract of employment may constitute industrial action. 18 In Construction, Forestry, Mining and Energy Union v Master Builders' Association of Victoria [2000] FCA 169 ; (2000) 100 FCR 395 , Goldberg J considered the meaning of the expression 'preventing employees from performing work' for the purposes of the then s 170ML(4). His Honour was addressing the question of whether preventing employees from performing overtime work that they did not have a right to perform under their contracts of employment could constitute a lock-out under that provision. His Honour said at 409 (at [41]): The expression "preventing" in the context of s 170ML(4) involves the doing of an act which has the consequence that employees cannot perform work which, if performed, would be work performed under their contracts of employment. The concept of "preventing" in the context of s 170ML(4) is not limited to a situation of putting up a barrier or bar to something which is going to happen in the absence of some supervening event stopping it; it also covers a situation where something is stopped in circumstances where if it was allowed or granted it would occur in a particular way. 19 The same analysis can be applied in the circumstance here, where these employees imposed a ban on the performance of overtime even where there was no contractual obligation or right to perform it. Using the words of s 420(1)(b) of the Act, it was a ban 'on the acceptance of or offering for work'. 20 The main dispute in this proceeding between the parties was whether the overtime ban constituted ongoing industrial action commencing at the time specified in the notice advising of overtime bans, being the morning of 22 August 2006 and continuing until the ban was removed (after 29 August 2006), or whether there were a series of industrial actions in relation to overtime separated by days of ordinary work. 21 As I have indicated, Heinemann contended that it was prohibited by the operation of s 507 of the Act from paying the employees any wages for any of the days 22, 23, 24, 28 and 29 August 2006. It said that the notice of intention to take protected action (which included the overtime bans) served on Heinemann by the Union was in terms that imposed an ongoing ban on performing overtime, commencing on Tuesday, 22 August 2006 and continuing for 12 months or until agreement was reached on the terms of a new Union collective agreement. Heinemann also contended that the company enquired with the employees whether they intended to implement the ban and the employees advised Heinemann of their intention to do so. Heinemann contended that the ban was clearly in place, and was not lifted and reapplied on a daily basis and as such it constituted ongoing industrial action. 22 The applicant contended that the industrial action implemented by the employees was a series of bans either from 4.30 pm each day until the start of the shift the following day, or for a two hour period between 4.30 pm and 6.30 pm each day being the time that an ordinary overtime shift takes place at the factory. 23 In resolving the main dispute between the parties, it is important to understand and appreciate the purpose of s 507. There has been no judicial consideration of the legislative purpose of s 507, although some consideration has been given to its predecessor, s 187AA of the pre-reform Act. In Independent Education Union of Australia v Canonical Administrators (1998) 87 FCR 49 , Ryan J discussed the policy behind s 187AA of the pre-reform Act, which operated similarly to s 507 to prohibit the payment of 'strike pay'. His Honour said at 73-4: I consider that s 187AA in the context of Pt VIIIA of the WR Act evinces a policy that collective bargaining should occur in an environment where employer and employee are to appreciate and accept the detrimental consequences for themselves of industrial action used as part of the negotiating armoury. For the employee those consequences are normally loss of remuneration in respect of the period of the industrial action and for the employer they are the loss of production attendant on a lockout. Consistently with that policy, s 187AA is framed to ensure that the loss of remuneration is not recouped after the bargaining is over and necessarily applies to protected action. 24 Justice Lander also commented on the legislative purpose of s 187AA of the pre-reform Act in Ponzio v B & P Caelli Constructions Pty Ltd [2007] FCAFC 65 ; (2007) 158 FCR 543. His Honour said at 557-58 (at [83] [84]): 83. The policy of the Act is to discourage industrial action as it is defined in s 4 of the Act. The purpose of Pt VIIIA of the Act, in which these provisions are contained, is to prevent an employer making a payment to the employer's employee in relation to any period during which the employee engages in industrial action. It is the intention of the Act to discourage employers and employees agreeing to the employer paying employees for that period of industrial action engaged in by the employee. To that end, s 187AA makes it a contravention for an employer to make a payment to an employee who has in relation to a period during which the employee engaged or engages in industrial action and at the same time makes it a contravention for the employee to accept a payment from an employer if by doing so the employer will contravene subs (1) by making that payment. The policy of the Act is that if an employee engages in industrial action then it must be at the employee's own expense. The purpose of s 187AB is to discourage unions and their officers from making claims for a payment or engaging in or threatening to engage in or organising industrial action for the purpose of coercing the employer to make a payment to an employee during a period of industrial action. That section has as its added purpose a protection to the employer in the event that a union or its members engage in that further industrial action. 84. Industrial action is discouraged by putting the cost of that industrial action upon the employee rather than the employer. No doubt it is thought that an employee will be less likely to take industrial action if the employee knows that it is a contravention for both the employer and the employee if the employer makes a payment for the period of industrial action. 25 Both Ryan and Lander JJ's considerations of the policy standing behind s 187AA suggest that the purpose of that provision was to make employees carry the expense of any industrial action engaged in by them. Neither Ryan or Lander JJ considered that the provision was intended to operate more broadly to punish the parties for engaging in protected industrial action beyond shouldering the burden of the actual economic loss resulting from the action. 26 Section 507 is in different terms to s 187AA, although basically the same purpose behind the provision is as set out by Ryan and Lander JJ in their consideration of its predecessor. 27 However, it is important to observe that s 507(2) sets out a calculation to assess how many hours' pay an employer must withhold from an employee who engages in industrial action on a day, depending on whether the employee engages in industrial action for a period less than four hours or four hours or more. The effect of the subsection is that an employee who engages in industrial action for any period less than four hours in a day, even if it is a period of five or ten minutes, must have four hours of pay withheld. Notably, an employee who engages in industrial action for four hours or more in a day must not be paid in relation to the period of industrial action on that day, but may be paid in relation to hours worked. For example, an employee who takes industrial action for five hours in a day but works the other 3.5 hours of an ordinary day must not be paid in relation to 5 hours of the day but is entitled to payment in relation to 3.5 hours. 28 It seems one purpose of the operation of s 507 is to deter industrial action for minor grievances. An employee will seriously consider stopping work for just five minutes if the consequence is losing a half day's pay. On the other hand, I do not consider the provision to be punitive. If it were, the provision would operate to deduct a full day's pay from an employee who engages in four hours or more industrial action on a day. Rather the intention seems to be to ensure that industrial action is not taken lightly and that the employee who engages in industrial action bears the economic consequences of that industrial action. 29 The Court must construe the words of s 507 in context. Part of the context of s 507 is that there is a right to take protected action. Another part of the context is that, because of other provisions of the Act, there is a right ordinarily to be paid for the work undertaken. Another part of the context is that the Act is trying to ensure that either employer or employee bears the financial consequence of loss of production; in the case of a lock-out, the employer, in the case of a strike, the employee.


case_outcome: cited

case_text: It was accepted that one cannot contract out of award provisions: see Josephson v Walker (1914) 18 CLR 691 at 700; Byrne v Australian Airlines Ltd [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at 256. However, the parties agreed that there was, in theory, no barrier to compromising or satisfying a claim arising under the Act for underpayment of wages. The compromise or settlement of a claim in accord and satisfaction was distinguishable from a contracting out scenario where an employer seeks to avoid award obligations by entering into an employment agreement that strips away award rights.


case_outcome: considered

case_text: I have ignored the expressions of subjective intention of the employees, although such were in evidence before me. Obviously, the subjective intentions of any party should not be taken into account when construing an agreement: see eg, DTR Nominees Pty Ltd v Mona Homes Pty Ltd [1978] HCA 12 ; (1978) 138 CLR 423 at 429, and Pacific Carriers Limited v BNP Paribas (2004) 281 CLR 451 , 461-62. Of course, the objective background which I may consider does include the purposes and assumptions shared by the parties: see Codelfa Construction Pty Ltd v State Rail Authority of New South Wales [1982] HCA 24 ; (1982) 149 CLR 337 , 354. It is the fact of their concurrence by the parties which converts what would otherwise be 'subjective intention' into objective elements of an agreement's context. Relevantly, in this proceeding, as I will return to later, I take into account Heinemann's position made known to the Union and the employees that it could not make any payment by reason of s 507 of the Act, and the fact that the issue of the unpaid wages in respect of the overtime ban was not up for discussion or consideration by Heinemann at the time of entering each sign-on bonus agreement.


case_title: Construction, Forestry, Mining and Energy Union v Master Builders' Association of Victoria [2000] FCA 169 ; (2000) 100 FCR 395


case_outcome: followed

case_title: DTR Nominees Pty Ltd v Mona Homes Pty Ltd [1978] HCA 12 ; (1978) 138 CLR 423


case_title: Independent Education Union of Australia v Canonical Administrators (1998) 87 FCR 49


case_title: Josephson v Walker (1914) 18 CLR 691


case_title: Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd [1992] HCA 66 ; (1992) 110 ALR 449


case_title: Pacific Carriers Limited v BNP Paribas (2004) 281 CLR 451


case_title: Poletti v Ecob (No 2) (1989) 31 IR 321

case_text: In Australian and New Zealand Banking Group Limited v Financial Services Union of Australia (2001) 111 IR 227 at 236, the Full Court (Black CJ, Wilcox and von Doussa JJ) considered the circumstances in which a payment under contract could discharge an obligation under an award. Their Honours quoted the Full Court in Poletti v Ecob (No 2) (1989) 31 IR 321 at 236, (at [41]): 41 In Poletti v Ecob (at 393; 332-333) the Full Court made this comment: "It is to be noted that there are two separate situations dealt with in the passage from the judgment of Sheldon J which has been quoted and in the reasoning of the Commission in Pacific Publications . The first situation is that in which the parties to a contract of employment have agreed that a sum or sums of money will be paid and received for specific purposes, over and above or extraneous to award entitlements. In that situation, the contract between the parties prevents the employer afterwards claiming that payments made pursuant to the contractual obligation can be relied on in satisfaction of award entitlements arising outside the agreed purpose of the payments. The second situation is that in which there are outstanding award entitlements, and a sum of money is paid by the employer to the employee. If that sum is designated by the employer as being for a purpose other than the satisfaction of the award entitlements, the employer cannot afterwards claim to have satisfied the award entitlements by means of the payment. The former situation is a question of contract. The latter situation is an application of the common law rules governing payments by a debtor to a creditor. In the absence of a contractual obligation to pay and apply moneys to a particular obligation, where a debtor has more than one obligation to a creditor, it is open to the debtor, either before or at the time of making a payment, to appropriate it to a particular obligation. If no such appropriation is made, then the creditor may apply the payment to whichever obligation or obligations he or she wishes: see Halsbury's Laws of England , 4th ed, vol 9, pars 505 and 506."


case_text: There were employees at the factory as at August 2006 and during the period of the overtime bans who did not engage in the overtime ban, but nevertheless received the sign on bonus. These included A Rico, F Bacosa, LJ Ferdinads; TL Pui; EF Gonzales; VD Wijeyeratne; SS Chan; SH Chan; M Yan; A Loh; VN Tran; G Caruso and S Reinink, V Plavlianic; AS Falken; M Kostur; TT Ta; NB Luong; RB Allen; KO Lau; P Dillon; GW Gapper; H Abbasszadeh; S Fernando; PE Forbes; DC Gardner; FC MA; J Gao; C Reinink; F Manuse; O Grah. FURTHER FACTS 5 It is necessary to refer to some further facts. 6 In respect of how overtime was worked at the factory, there were differences in the practices of different sections of the factory. Generally, overtime shifts lasted for approximately two hours, from 4.30 pm to 6.30 pm, and between one and 25 of the factory employees might work on any given evening. However, some sections regularly worked overtime and other sections worked overtime infrequently. The assembly workers generally worked minimal overtime, whilst the qualified fitters were called on frequently to perform overtime because of their specialised skills. It was also clear from the evidence of both Mr Ross, the General Manager of Heinemann, and Mr Aspinall, a Factory Manager of Heinemann, as well as from the employees, that there was not a practice of relying on overtime rosters. Instead, notice of overtime was commonly given to employees either on the day before or on the day that overtime was required. Employees then had an opportunity to accept or decline the extra hours. The evidence was that there was never any difficulty in finding employees to perform the additional work and that employees ordinarily accepted the work. It is also clear that employees could and did decline overtime work without ascribing any cause or reason. 7 There was no evidence of Heinemann's overtime requirements on the days in question. There was no evidence of whether any employees actually performed overtime that week. Heinemann did not have overtime records for 22, 23, 24, 28 and 29 August 2006. The handwritten notations on the questionnaires show which employees of those interviewed were and were not available for overtime over the life of the overtime ban, and a reason for not working overtime. However, they do not indicate whether Heinemann required overtime on any evening, and if so, how much overtime was required, whether requests were made of employees to perform overtime, or whether any employee performed any requested overtime on any evening. 8 Nevertheless, it was uncontested that the employees in Column 1 of the table engaged in the ban on overtime on the days in question, and that they were not paid wages referrable to these days. In addition, Heinemann also failed to pay Ms Maria Barros for the days in question on the basis that she too was implementing the ban on overtime. The applicant submits that Ms Barros was not in fact implementing the ban and should have been paid in full for those days irrespective of the operation of s 507. MS BARROS 9 It is convenient to first consider the position of Ms Barros. Ms Barros failed to answer any questions asked of her in the questionnaire. She was initially questioned by her manager, Mr Aspinall, and later by Mr Ross. Her questionnaire was annotated simply, 'Will not answer any questions. Do not understand'. Mr Ross wrote at the end of Ms Barros' questionnaire that he had explained to Ms Barros the position in detail. He was referring to informing those employees, who had confirmed that they were enforcing the ban that they would not be paid for the duration of the overtime ban or any industrial action. Mr Ross told the Court that he believed Ms Barros understood his explanation. Ms Barros told the Court that she did not understand. She said her failure to answer was because she did not know what overtime Mr Aspinall and Mr Ross were referring to (as she rarely performed overtime) and she did not want to answer before speaking with her union representative. 10 Ms Barros agreed that she participated in the strike of 25 August 2006 and participated in the six week strike which commenced on 30 August 2006. Heinemann submitted that Ms Barros' participation in the strikes goes some way to demonstrate that she also participated in the ban on overtime. This does not necessarily follow, although it is a factor to consider in the balance, as to the likelihood of the happening of events. Heinemann also contended that Ms Barros' evidence was unreliable because of the discrepancy in her affidavit evidence and the documentary evidence showing the amount of overtime she had in fact worked previously. 11 My own assessment of the evidence is this. Ms Barros cannot understand English very well; she deposed to this, and it was apparent from her cross-examination. She said she was very confused about the questions asked of her by Mr Aspinall and Mr Ross, and she appeared confused under cross-examination both as to what was being asked of her by Counsel and as to the overtime position. In my view, despite the belief of Mr Ross, she was confused. Ms Barros had little understanding of the matters being asked of her by Counsel, and I consider had little understanding of the matters put to her by Mr Aspinall and Mr Ross at the time of the questionnaire. 12 While I consider that Ms Barros was endeavouring to tell the truth, her recollection as to when her overtime was in fact taken was faulty. She did indicate that she would go to the Union for advice, which had implemented overtime bans. She did participate in the strike of 25 August 2006 and the six week strike commencing on 30 August 2006. In my view, it is more than likely that she did engage in the overtime bans by following the Union's approach. 13 In any event, in view of Ms Barros' obvious confusion, I cannot be satisfied on the balance of probabilities that it has been demonstrated by the applicant that Ms Barros was entitled to be paid in full irrespective of the operation of s 507. The onus rests on the applicant to demonstrate this element of the case, in respect of Ms Barros, on the balance of probabilities: see Briginshaw v Briginshaw [1938] HCA 34 ; (1938) 60 CLR 336 as explained in Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd [1992] HCA 66 ; (1992) 110 ALR 449. 14 Therefore, in relation to Ms Barros, I place her in the same category as the other employees listed in Column 1 of the table. OPERATION OF SECTION 507 15 I now turn to the main issue in this proceeding, the operation of s 507 of the Act, which is in the following terms: Payments not to be made or accepted in relation to periods of industrial action (1) This section applies if an employee engaged, or engages, in industrial action (whether or not protected action) in relation to an employer on a day. (2) The employer must not make a payment to an employee in relation to: (a) if the total duration of the industrial action on that day is less than 4 hours--4 hours of that day; or (b) otherwise--the total duration of the industrial action on that day. (3) If: (a) the industrial action is during a shift (or other period of work); and (b) the shift (or other period of work) occurs partly on 1 day and partly on the next day; then, for the purposes of this section, the shift is taken to be a day and the remaining parts of the days are taken not to be part of that day. (4) For the purposes of subsection (3), overtime is taken not to be a separate shift. (5) An employee must not accept a payment from an employer if the employer would contravene subsection (2) by making the payment. ... 16 The definition of industrial action is found in s 420 of the Act. It provides the following: Meaning of industrial action (1) For the purposes of this Act, industrial action means any action of the following kinds: (a) the performance of work by an employee in a manner different from that in which it is customarily performed, or the adoption of a practice in relation to work by an employee, the result of which is a restriction or limitation on, or a delay in, the performance of the work; (b) a ban, limitation or restriction on the performance of work by an employee or on the acceptance of or offering for work by an employee; (c) a failure or refusal by employees to attend for work or a failure or refusal to perform any work at all by employees who attend for work; (d) the lockout of employees from their employment by the employer of the employees; but does not include the following: (e) action by employees that is authorised or agreed to by the employer of the employees; (f) action by an employer that is authorised or agreed to by or on behalf of employees of the employer; (g) action by an employee if: (i) the action was based on a reasonable concern by the employee about an imminent risk to his or her health or safety; and (ii) the employee did not unreasonably fail to comply with a direction of his or her employer to perform other available work, whether at the same or another workplace, that was safe and appropriate for the employee to perform. (2) For the purposes of this Act: (a) conduct is capable of constituting industrial action even if the conduct relates to part only of the duties that employees are required to perform in the course of their employment; and (b) a reference to industrial action includes a reference to a course of conduct consisting of a series of industrial actions. 17 It is unnecessary here to consider the definition of industrial action in s 420 of the Act in much detail. It is uncontested between the parties that the employees engaged in industrial action within the meaning of s 420(1)(b) of the Act for the purposes of s 507. It is well accepted that part performance of work, or performance of work other than as directed, amounts to industrial action. An ongoing ban on the operation of a certain machine, or on performing certain tasks, while otherwise completing a full day's work, is industrial action. A lock-out from, or a ban on, performing overtime, where overtime is not required or expected under a contract of employment may constitute industrial action. 18 In Construction, Forestry, Mining and Energy Union v Master Builders' Association of Victoria [2000] FCA 169 ; (2000) 100 FCR 395 , Goldberg J considered the meaning of the expression 'preventing employees from performing work' for the purposes of the then s 170ML(4). His Honour was addressing the question of whether preventing employees from performing overtime work that they did not have a right to perform under their contracts of employment could constitute a lock-out under that provision. His Honour said at 409 (at [41]): The expression "preventing" in the context of s 170ML(4) involves the doing of an act which has the consequence that employees cannot perform work which, if performed, would be work performed under their contracts of employment. The concept of "preventing" in the context of s 170ML(4) is not limited to a situation of putting up a barrier or bar to something which is going to happen in the absence of some supervening event stopping it; it also covers a situation where something is stopped in circumstances where if it was allowed or granted it would occur in a particular way. 19 The same analysis can be applied in the circumstance here, where these employees imposed a ban on the performance of overtime even where there was no contractual obligation or right to perform it. Using the words of s 420(1)(b) of the Act, it was a ban 'on the acceptance of or offering for work'. 20 The main dispute in this proceeding between the parties was whether the overtime ban constituted ongoing industrial action commencing at the time specified in the notice advising of overtime bans, being the morning of 22 August 2006 and continuing until the ban was removed (after 29 August 2006), or whether there were a series of industrial actions in relation to overtime separated by days of ordinary work. 21 As I have indicated, Heinemann contended that it was prohibited by the operation of s 507 of the Act from paying the employees any wages for any of the days 22, 23, 24, 28 and 29 August 2006. It said that the notice of intention to take protected action (which included the overtime bans) served on Heinemann by the Union was in terms that imposed an ongoing ban on performing overtime, commencing on Tuesday, 22 August 2006 and continuing for 12 months or until agreement was reached on the terms of a new Union collective agreement. Heinemann also contended that the company enquired with the employees whether they intended to implement the ban and the employees advised Heinemann of their intention to do so. Heinemann contended that the ban was clearly in place, and was not lifted and reapplied on a daily basis and as such it constituted ongoing industrial action. 22 The applicant contended that the industrial action implemented by the employees was a series of bans either from 4.30 pm each day until the start of the shift the following day, or for a two hour period between 4.30 pm and 6.30 pm each day being the time that an ordinary overtime shift takes place at the factory. 23 In resolving the main dispute between the parties, it is important to understand and appreciate the purpose of s 507. There has been no judicial consideration of the legislative purpose of s 507, although some consideration has been given to its predecessor, s 187AA of the pre-reform Act. In Independent Education Union of Australia v Canonical Administrators (1998) 87 FCR 49 , Ryan J discussed the policy behind s 187AA of the pre-reform Act, which operated similarly to s 507 to prohibit the payment of 'strike pay'. His Honour said at 73-4: I consider that s 187AA in the context of Pt VIIIA of the WR Act evinces a policy that collective bargaining should occur in an environment where employer and employee are to appreciate and accept the detrimental consequences for themselves of industrial action used as part of the negotiating armoury. For the employee those consequences are normally loss of remuneration in respect of the period of the industrial action and for the employer they are the loss of production attendant on a lockout. Consistently with that policy, s 187AA is framed to ensure that the loss of remuneration is not recouped after the bargaining is over and necessarily applies to protected action. 24 Justice Lander also commented on the legislative purpose of s 187AA of the pre-reform Act in Ponzio v B & P Caelli Constructions Pty Ltd [2007] FCAFC 65 ; (2007) 158 FCR 543. His Honour said at 557-58 (at [83] [84]): 83. The policy of the Act is to discourage industrial action as it is defined in s 4 of the Act. The purpose of Pt VIIIA of the Act, in which these provisions are contained, is to prevent an employer making a payment to the employer's employee in relation to any period during which the employee engages in industrial action. It is the intention of the Act to discourage employers and employees agreeing to the employer paying employees for that period of industrial action engaged in by the employee. To that end, s 187AA makes it a contravention for an employer to make a payment to an employee who has in relation to a period during which the employee engaged or engages in industrial action and at the same time makes it a contravention for the employee to accept a payment from an employer if by doing so the employer will contravene subs (1) by making that payment. The policy of the Act is that if an employee engages in industrial action then it must be at the employee's own expense. The purpose of s 187AB is to discourage unions and their officers from making claims for a payment or engaging in or threatening to engage in or organising industrial action for the purpose of coercing the employer to make a payment to an employee during a period of industrial action. That section has as its added purpose a protection to the employer in the event that a union or its members engage in that further industrial action. 84. Industrial action is discouraged by putting the cost of that industrial action upon the employee rather than the employer. No doubt it is thought that an employee will be less likely to take industrial action if the employee knows that it is a contravention for both the employer and the employee if the employer makes a payment for the period of industrial action. 25 Both Ryan and Lander JJ's considerations of the policy standing behind s 187AA suggest that the purpose of that provision was to make employees carry the expense of any industrial action engaged in by them. Neither Ryan or Lander JJ considered that the provision was intended to operate more broadly to punish the parties for engaging in protected industrial action beyond shouldering the burden of the actual economic loss resulting from the action. 26 Section 507 is in different terms to s 187AA, although basically the same purpose behind the provision is as set out by Ryan and Lander JJ in their consideration of its predecessor. 27 However, it is important to observe that s 507(2) sets out a calculation to assess how many hours' pay an employer must withhold from an employee who engages in industrial action on a day, depending on whether the employee engages in industrial action for a period less than four hours or four hours or more. The effect of the subsection is that an employee who engages in industrial action for any period less than four hours in a day, even if it is a period of five or ten minutes, must have four hours of pay withheld. Notably, an employee who engages in industrial action for four hours or more in a day must not be paid in relation to the period of industrial action on that day, but may be paid in relation to hours worked. For example, an employee who takes industrial action for five hours in a day but works the other 3.5 hours of an ordinary day must not be paid in relation to 5 hours of the day but is entitled to payment in relation to 3.5 hours. 28 It seems one purpose of the operation of s 507 is to deter industrial action for minor grievances. An employee will seriously consider stopping work for just five minutes if the consequence is losing a half day's pay. On the other hand, I do not consider the provision to be punitive. If it were, the provision would operate to deduct a full day's pay from an employee who engages in four hours or more industrial action on a day. Rather the intention seems to be to ensure that industrial action is not taken lightly and that the employee who engages in industrial action bears the economic consequences of that industrial action. 29 The Court must construe the words of s 507 in context. Part of the context of s 507 is that there is a right to take protected action. Another part of the context is that, because of other provisions of the Act, there is a right ordinarily to be paid for the work undertaken. Another part of the context is that the Act is trying to ensure that either employer or employee bears the financial consequence of loss of production; in the case of a lock-out, the employer, in the case of a strike, the employee. 30 Some assistance can be derived in determining the duration of the industrial action in the present case by comments by Jessup J in Ponzio [2007] FCAFC 65 ; 158 FCR 543 of how to define 'period' in the context of s 187AA, at 566-67 (at [136]): 136. ... Whether particular industrial action occurs during a single period, or during separate periods, will also be a question of fact. For my own part, I do not regard it as self-evident that every day upon which industrial action occurs should be regarded as a separate "period". In the present case, for example, I consider that an employee who stopped work on 5 August 2003 and did not resume work until 10.00 am on 6 August 2003 should be regarded as having engaged in industrial action during one period only. If that period were broken by a period during which the employee performed work normally, there would then have been two periods of industrial action. 31 It is important to note that Jessup J's comments were made in relation to s 187AA which did not require looking at industrial action 'on a day'. Section 187AA included the words 'in relation to a period in which'. An important feature of s 507, and the most salient distinction between s 507 and its predecessor s 187AA, is the focus on the industrial action 'on a day' and to calculate the duration of industrial action on a day by day basis. However, his Honour makes clear that the industrial action is not necessarily considered a continuing period of industrial action if it is broken by a period of ordinary work. 32 As I have said, the operation of s 507 has the consequence that employees are to bear the economic loss of their industrial action. In a case where the employees have contributed the benefit of a full day's work to their employer, it seems contrary to the intention of the provision to punish employees beyond the calculation allowed for in the provision. 33 It was agreed that on each of 22, 23, 24, 28 and 29 August 2006, the employees imposed a ban on overtime. On the facts of the case before me, I am satisfied that the ban constituted two hours of industrial action on each of those days.


case_title: Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250


case_text: The application of the expression 'in respect of' was discussed by the High Court in The Workers' Compensation Board of Queensland v Technical Products Pty Ltd [1988] HCA 49 ; (1988) 165 CLR 642 (per Deane, Dawson and Toohey JJ) at 653-54: Undoubtedly the words "in respect of" have a wide meaning, although it is going somewhat too far to say, as did Mann CJ in Trustees Executors & Agency Co Ltd v Reilly [1941] VLR 110 at 111, that "they have the widest possible meaning of any expression intended to convey some connection or relation between the two subject-matters to which the words refer". The phrase gathers meaning from the context in which it appears and it is that context which will determine the matters to which it extends. 64 The wage dispute in respect of the overtime ban could be viewed as in someway connected to the industrial action. The overtime ban was part of the industrial action, as shown by the notice given by the Union. The employees actually engaged this form of industrial action and, as a consequence of that course of conduct, Heinemann withheld all pay for the period. 65 However, the context in which the release appears in the sign-on bonus agreement, and the context of the agreement with the Union, indicates that the basis of the payment was not intended to extend to the unpaid wages in respect of the five days in August 2006. The employees' claim arising from Heinemann's failure to pay the employees in full for the period of industrial action was essentially only a claim for non-payment of wages. While the non-payment of employees occurred during the period of industrial action, this does not mean the employees' claim was 'in respect of' any industrial action as contemplated by the ambit of the sign-on bonus agreement and the releases contained therein.


case_text: there is no violation of s 65C of the TPA. As noted earlier s 65C1(a) prohibits the supply of goods which do not comply with a prescribed safety standard. In contrast to ss 52 and 53, s 65C does not ask whether a consumer is likely to be misled, nor does it ask what a consumer might understand about a certain product. To put it even more bluntly, s 65C is not concerned with representations at all. It simply poses an objective question: has a product been supplied for consumer use which does not comply with a prescribed safety standard? To prove a case under this provision, a party must: (1) identify a product; (2) identify the time of supply of that product; (3) identify the relevant safety standard in force at the time; and (4) lead evidence showing that the particular product did not meet the standard: see ACCC v Hercules Iron Pty Ltd [2008] FCA 1182 at [10] . LED Tech, in approaching its case on a misleading and deceptive conduct basis only, failed to establish the elements of its s 65C case in a satisfactory manner. While it led evidence of safety tests and the supply of lamps, it failed to connect particular lamps, having been supplied at particular times, to particular tests demonstrating non-compliance of those lamps with the ADRs. The last bit would in any event have been tricky, if not impossible, because the ADRs, due to the peculiar amendments that have been made to the UNECE Regulation and the uncertain status of the Circulars, do not really prescribe much of a standard. Not only is a 20% variance in luminosity allowed, there is no procedure (notwithstanding any industry practice or understanding to the contrary) as to how compliance with the standard is to be assessed and proved. Based on the evidence, it appears that the tests relied on by LED Tech to establish the non-compliance of the Condor Products may have applied stricter procedural and substantive criteria than those actually imposed by the applicable rules and regulations. Therefore, I cannot be satisfied on the balance of the probabilities that the Corporate Respondents did in fact supply products that did not comply with the ADRs. No damage


case_title: ACCC v Kaye [2004] FCA 1363

case_text: if LED Tech had established damage, I do not consider that each of Messrs Keller and Armstrong knew of the "essential matters" that enabled the representations to be characterised in the manner contended: ACCC v Kaye [2004] FCA 1363 at [182] - [186] . To adopt the language of the majority of the Full Court in Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 ; (2003) 135 FCR 1 at [12-16] , although I accept that each of Messrs Keller and Armstrong knew (1) that the Condor Products were manufactured, sold and packaged and (2) the content of the manner in which they were sold which might lead members of at least one class of consumer to believe that the products complied with "prescribed consumer product safety standards", I do not conclude that either Messrs Keller or Armstrong knew the facts that meant that the Representations were not correct. As to the "ADR Approved" representation, they gave evidence as to their subjective understanding of the representation conveyed, which, while possibly negligent or even reckless, was not such as to suggest wilful blindness or actual knowledge of how a relevant purchaser might understand it. As to the "Complies with ADR" representation, their evidence (which I accept) was that they relied upon oral and written assurances from their Chinese manufacturer and testing laboratories which turned out to be belatedly or never substantiated. Was that conduct less than wise? - Yes. Was it negligent and possibly even reckless? - Again, yes. But on the current state of the authorities that is not sufficient to establish the actual knowledge necessary to establish accessorial liability under the TPA. Significantly, it was never put to either Mr Keller or Mr Armstrong during the course of cross-examination that they knew these "essential matters". Accordingly, even if LED Tech had established that the TPA contraventions had caused it damage, they could not establish the secondary liability of the Directors for those contraventions.


case_text: the question remains, what then is the Australian standard? One thing that does not inform the answer to this question is industry practice. A deal of evidence was led as to what automotive industry experts thought the ADRs required and how the industry tested for compliance in practice. The general thrust of this evidence was that the industry treated much of the removed sections as still being applicable. However, as the Court stated in MHG Plastic Industries v ACCC (2000) ATPR (Digest) 46-206 at [49], any industry practice adopted as to the testing of products against a safety standard cannot affect the proper construction of the requirements under the safety standard. As Emmett J said at first instance in that decision ( ACCC v MHG Plastic Industries Pty Ltd [1999] ATPR 41-712 at [22]), " The Standard means what it says" .


case_text: the circumstances, the better approach is to assess damages doing the best I can, even if such quantification necessarily involves a degree of speculation and guesswork: eg Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at [37] - [38] ; Adidas-Solomon AG v Turner (2003) 58 IPR 66 at [4]-[5]; Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 , 183; Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 at [7] .


case_text: Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd [2001] FCA 1838 ; (2001) 53 IPR 400 at [39] , a design infringement case, the Full Court of the Federal Court considered the two tests in the following terms: The authorities were collected and analysed by Beazley J in King v Milpurrurru (1996) 66 FCR 474 at 494-500..... Her Honour noted the existence of two lines of authority. One line supported what she called the "Performing Right Society test " : whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". Beazley J expressed a preference for the Mentmore test, on the basis that the Performing Right Society test did not "pay sufficient regard, either to the separate legal existence of the company, or to the fact that the company acts through its directors": see [66 FCR at 500]. However, this preference had no immediate consequence; her Honour held (again at [500]) that the appellants were not liable under either test.


case_outcome: referred to

case_title: Apple Computer Inc (2007) 74 IPR 164

case_text: "informed user" concept has also been considered by the courts in the United Kingdom. In Woodhouse UK plc v Architectural Lighting Systems [2006] RPC 1 at [59], Judge Fysh QC of the Patents County Court defined an informed use r in the following terms: First, this notional person must obviously be a user of articles of the sort which is subject of the registered design - and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of "the man in the street". " Informed " to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of "what's about in the market?" and "what has been about in the recent past?" I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the "man skilled in the art" whose "nerd-like" (and other) attributes seem too technical: Technip France SA's Patent [2004] EWCA Civ 381 ; [2004] R.P.C. 46 at [6-12] ( CA). This formulation was considered and approved by Lewison J in Proctor & Gamble Company 73 IPR 605 at [31], [32] and [41] and was also applied in Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd [2007] ECDR 10. To the extent that it matters (and it might not), the Australian Designs Office ("the ADO") has indicated that the informed user concept is an objective test where the user is an ordinary or typical member of a sample of users of the product who is reasonably informed, being neither barely informed nor fully expert: Apple Computer Inc (2007) 74 IPR 164 and Icon Plastics Pty Ltd [2007] ADO 2 as discussed in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [25] .


case_title: Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd [2007] ECDR 10


case_text: relevant legal principles are well known. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded representations is conveyed by the particular events complained of: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45 at [105] ; National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] ATPR 42-000 at [18] per Dowsett J (with whom Jacobson and Bennett JJ agreed) and Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 ; [2006] ATPR 42-106 at [37] .


case_outcome: applied

case_text: .au Domain Administration Ltd v Domain Names Australia Pty Ltd [2004] FCA 424 ; (2004) 207 ALR 521 at [12] - [26] , Finkelstein J provided a useful summary of the approach that might be taken where a court is required to assess conduct by reference to a specific class or classes of consumers and did that by particular reference to Taco Co of Australia Inc v Taco Bell Pty Ltd [1982] FCA 136 ; (1982) 42 ALR 177 , 202-203 per Deane and Fitzgerald JJ and Nike at [100]-[103]. The approach may be summarised in six points, as follows:


case_text: it is necessary to ask whether the representations conveyed are false, misleading or deceptive or likely to mislead or deceive. This is a "quintessential question of fact": Australian Competition and Consumer Commission v Telstra [2004] FCA 987 ; (2004) 208 ALR 459 at [49] .


case_text: the conduct complained of in the present matter was not directed at a specific individual, both questions that have been identified must be considered by reference to the class or classes of consumers likely to be affected by the conduct: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 , 199 per Gibbs CJ; Nike at [102], [103], [105] and [106]; Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at [36] per Gleeson CJ, Hayne and Heydon JJ.


case_text: relevant legal principles are well known. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded representations is conveyed by the particular events complained of: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45 at [105] ; National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] ATPR 42-000 at [18] per Dowsett J (with whom Jacobson and Bennett JJ agreed) and Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 ; [2006] ATPR 42-106 at [37] . Because the conduct complained of in the present matter was not directed at a specific individual, both questions that have been identified must be considered by reference to the class or classes of consumers likely to be affected by the conduct: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 , 199 per Gibbs CJ; Nike at [102], [103], [105] and [106]; Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at [36] per Gleeson CJ, Hayne and Heydon JJ. In .au Domain Administration Ltd v Domain Names Australia Pty Ltd [2004] FCA 424 ; (2004) 207 ALR 521 at [12] - [26] , Finkelstein J provided a useful summary of the approach that might be taken where a court is required to assess conduct by reference to a specific class or classes of consumers and did that by particular reference to Taco Co of Australia Inc v Taco Bell Pty Ltd [1982] FCA 136 ; (1982) 42 ALR 177 , 202-203 per Deane and Fitzgerald JJ and Nike at [100]-[103]. The approach may be summarised in six points, as follows:


case_text: of a design is in the "person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form": Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75 , 80. On the facts just described, it is clear that Mr Ottobre is the person who conceived the relevant shape, configuration and pattern of the Designs and reduced it to a visible form; "M" simply converted that design to an electronic form in order to facilitate the production process. Put another way, it was Mr Ottobre, not "M", who had the idea for dual and triple combination LED lamps in one base. It was Mr Ottobre who reduced that idea to visible form in the sketches. As the engineering drawings marked "1", "2" and "3" on Annexure C record, it was Mr Ottobre's sketches which contained the features different from those in any other previous design. Accordingly, Mr Ottobre was "the person who created the design" and his company as his employer was the sole person entitled to be registered as its owner: s 13(1)(b) of the 2003 Designs Act . Assuming, contrary to what I have just found, that the facts set out above would support the conclusion that it was an employee or employees of "M", instead of (or in addition to) Mr Ottobre, who was the author of the Designs, then my conclusion on the entitlement question would not change. I accept (and it was not contested) that "M" was an independent contractor rather than an employee of LED Tech. That being so, "M" and its employees did the work "under a contract with another person" (LED Tech) within the meaning of s 13(1)(b) of the 2003 Designs Act and LED Tech is the person entitled to register the design thus created. There was some dispute as to whether there was in fact any contract between LED Tech and "M" for the creation of the CAD drawings. The proposition was founded on the basis that there was no separate charge or entry on any billing invoice relating specifically to the provision of that particular service. It may greatly be doubted that the absence of an itemised amount charged for the service goes any distance towards showing that the work was not done under a contract. Be this as it may, in the end, I accept the evidence of Mr Chao that the price on the invoice for the moulds included in it the cost of the creation of the CAD drawings, which were necessary and incidental to the manufacture of the moulds themselves. In other words, I am satisfied that the Designs, to the extent that they were created by "M" at all, were so created pursuant to a contract with LED Tech.


case_text: is an Administrator of Vehicle Standards: s 22 of the MVSA. It is common ground that proof of vehicle standards is not required: s 143(1)(b) of the Evidence Act 1995 (Cth). The Minister has determined the following relevant standards as vehicle standards pursuant to s 7 of the MVSA: Vehicle Standard (Australian Design Rule 1/00 Reversing Lamps) 2005 White dated 21 November 2005 ("ADR 1"), prescribes the photometric requirements for reversing lamps which will warn pedestrians and other road users that the vehicle is about to move or is moving in the reverse direction, and which during the hours of darkness will aid the driver in reversing manoeuvres; Vehicle Standard (Australian Design Rule 6/00 Direction Indicators) 2005 Yellow / Amber dated 13 December 2006 ("ADR 6"), prescribes the photometric requirements for a device mounted on a motor vehicle or trailer which when operated by the driver signals the latter's intention to change the direction in which the vehicle is proceeding; Vehicle Standard (Australian Design Rule 49/00 Front and Rear Position (Side) Lamps, Stop Lamps and End Outline Marker Lamps) 2005 Red dated 3 April 2007 ("ADR 49"), prescribes the photometric requirements for light-signalling devices which will indicate the presence, width and position of the vehicle when viewed from the front and from the rear. The determination accompanying ADR 1 suggests that the ADR was determined to be a vehicle standard under s 7(1) of the MVSA. No such provision exists. For the purposes of this analysis I have assumed that the determination was in fact made under s 7 of the MVSA. None of the parties suggested that this apparent error invalidated or otherwise altered the operation of the standard, and in any event the authorities hold that, as a general matter, judicial redrafting of obvious typographical errors is permitted: Saraswati v The Queen [1991] HCA 21 ; (1991) 172 CLR 1 , 21-22; Cooper Brookes (Wollongong) Pty Ltd v Commissioner of Taxation (Cth) [1981] HCA 26 ; (1981) 147 CLR 297 , 305, 311, 321.


case_text: a result of difficulties in interpretation and application, the Australian Law Reform Commission ("ALRC") recommended that the "innovation threshold" in s 17(1) of the 1906 Designs Act be replaced by the two-step "new and distinctive" test now found in the 2003 Designs Act: Report No 74, Designs (1995) (the "ALRC Report"). The ALRC addressed the issue in the following terms: 5.8 Meaning of distinctive. Distinctiveness is a term used by the courts to express the quality that a design must have to differentiate it sufficiently from previously published or used designs. For example the courts have said for a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character: [ Dart Industries Inc v Decor Corporation Pty Ltd (1989) AIPC 90-569 , 38, 975. In another case, relating to furniture design, it was said that design in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 227; approved in Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd [1986] AIPC 90-302.] Other cases have spoken of 'the overall distinctive appearance of the registered design' [ Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) AIPC para 37, 634, 638] the ridging or grooving of a design being 'sufficiently bold and distinctive in its appeal to the eye', [ Aluminum Specialities Pty Ltd v Ibis Building Products Pty Ltd ( 1982) 42 ALR 127 , 133] a shape or configuration that is 'distinctly different' from that in respect of which a design is registered [ Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd [1989] AIPC para 90-616, 39, 334, 348] and a design that must be 'distinct and must present an appearance that strikes the eye as being different' [ Fisher LJ & Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611] ... 5.9 Grounds for adopting the new test. The [ALRC] favours the two tiered approach and the distinctiveness test for several reasons. The distinctiveness test is a design approach. It recognises the importance of design in product differentiation. It is consistent with the way in which designers work. It will discourage the tendency to focus narrowly on 'one individual specific appearance' and to count up the differences between designs. It incorporates in a single concept many of the qualities sought in other unsatisfactory expressions such as 'judged by the eye', 'eye appeal', 'immaterial detail', 'trade variants', and 'obvious adaptation'. It is a more focussed test for assessing the degree to which a design is an advance on the prior art. It allows a different prior art base to be defined for novelty as against distinctiveness. This is useful because the aim with the novelty test is to exclude identical designs but the aim with the distinctiveness test is to recognise innovation. It directly addresses the need for greater differentiation between designs, both for registration and infringement purposes, that was evidenced by submissions, consultations and the [ALRC's] survey of design users. (Some formatting altered; footnotes moved to text in brackets.) The ALRC Report formed the basis of the 2003 Designs Act: Explanatory Memorandum to the Designs Bill 2002 (Cth) at 1. Under the 2003 Designs Act, a design is distinctive "unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design" as it existed before the priority date of each Design: s 16(2) (emphasis added). As noted earlier, that test has an important temporal aspect: anything which occurs after the priority date (the filing date of the application for registration) is irrelevant: s 16(3). Thirdly, the judgment is an objective one. In assessing substantial similarity in overall impression, the standard to be applied is that of the informed user - namely, the court standing in the shoes of a notional person who is familiar with the product to which the design relates, or products similar to the product to which the design relates: s 19(4); Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 ; see also Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 , 408-409. That informed user , in assessing substantial similarity in overall impression: gives more weight to similarities between the designs than to differences between them: s 19(1); considers the state of development of the prior art base for the design: s 19(2)(a); considers the particular visual features of the design described in the statement of newness and distinctiveness in the context in which they appear: s 19(2)(b) and (c); if only part of the design is substantially similar to another design, considers the amount, quality and importance of that part in the context of the design as a whole: s 19(2)(c); and considers the freedom of the creator of the design to innovate: s 19(2)(d).


case_text: the second event, the 7 September 2007 letters, contained a threat of legal proceedings at a time when the current proceedings had already been on foot for some 5 months against Elecspess and AAA in respect of infringement of the Designs: see Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 76 IPR 83 at [41] and authorities there cited (stating that threats made after proceedings have already been instituted or that result in the bringing of proceedings are less likely to be deemed unjustified). For those reasons, the cross-claimants' claim of unjustified threats of design infringement is rejected. TPA claims The cross-claimants also claim that LED Tech and Mr Ottobre engaged in misleading and deceptive conduct. The conduct said to breach s 52 of the TPA comprised three separate events. LED Tech's website


case_title: Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167


case_text: next matter to be considered is the claim of secondary liability of the Directors under the TPA. The principles are well established. Natural persons will be liable in damages for a contravention by a corporation if they had a "close, rather than a remote involvement in the contravention": Fencott v Muller [1983] HCA 12 ; (1983) 152 CLR 570 , 584. Moreover, the participation in the contravention requires actual, rather than constructive, knowledge of the essential matters that make up the contravention: Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661 , 666-670 and 677, Rural Press Ltd v ACCC [2002] FCAFC 213 ; (2002) 118 FCR 236 at [67] and Quinlivan v ACCC (2004) 160 FCR 1 at [8]-[9].


case_title: Finucane v New South Wales Egg Corp (1988) 80 ALR 486


case_title: Icon Plastics Pty Ltd [2007] ADO 2


case_text: "informed user" concept in the 2003 Designs Act has been the subject of recent judicial consideration in Australia: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [19] - [27] ; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589. It is a concept the ALRC borrowed from European Community Design law, now codified in Council Regulation (EC) No. 6/2002 and in the Registered Design Act 1949 (UK): see ALRC Report, para 5.17-5.21 and 6.12-6.13; Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd (2007) 73 IPR 605 at [32] and J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [7]. There is little doubt that first impressions are important when comparing a registered design with an allegedly infringing product in the manner prescribed by the 2003 Designs Act: ALRC Report para 5.15. In the United Kingdom, in applying an "overall impression" test, the approach is to hold a product embodying the registered design (provided that the Court is satisfied that it is a true embodiment of the registered design) and the alleged infringing product in hand and undertake a reasonably careful comparison between the two: Proctor & Gamble Company 73 IPR 605 at [12]. See also J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [6] (citing Proctor & Gamble for the proposition that court may have regard to a physical embodiment of the registered design in making the comparison to the allegedly infringing product); but see Rolawn Lawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 Pat at [124] (stating that the exercise involves comparing the registered design to a photograph of the allegedly infringing product rather than the product itself).


case_text: question is therefore whether, in all the circumstances, it would have been reasonable in this case for the Respondents to have searched the Register? In my view, it would have been. That conclusion is dependent on two findings. First, having regard to the substantial similarity between the Designs and the Condor Products and in the absence of any evidence to the contrary, it would be reasonably open to infer that a representative of Ren and Olsen (and for that matter, AAA and Elecspess) saw the commercial embodiment of the Design: Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298. Secondly and more importantly, the commercial embodiments of the Designs, in both their packaged and unpackaged form, contain a form of notice that would give rise at least to a duty to check the name LED Technologies on the Register. The notice is at the foot of the packaging and comprises the words "Registered Design". The rear of the base of each lamp has embossed on it a further notice, "Design Certificate Registration Number [NUMBER STATED]." There is no suggestion here that the notification on LED Tech's packaging was defective for s 75 purposes in any of the ways described by Kenny J or Jessup J: see Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [80] - [81] (accepting that a design notification affixed to the product, such as a swing tag, could be sufficient to put a potential infringer on notice but finding on the facts that there was not such notice at the relevant time); and Innovative at [48]-[52] (finding that the swing tag did put the infringer on notice, but refusing to take the notification into account in determining damages because the tag was misleading in part).


case_text: contrary to the Respondents' submissions, distinctiveness is to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art: s 15(1) read with ss 16(1) and (2). Part 4 of Chapter 2 of the 2003 Designs Act must be read as a whole. The Respondents cannot, as they do, simply selectively choose ss 15(1) and 19(2) to support their contention that a comparison is made of the design with the totality of the entire relevant prior art base for that design whilst ignoring the express words of the rest of Pt 4 including ss 16 and 19(1). It is those sections which expressly provide that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. As a result, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being distinctive: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [60] ; Karen Millen Ltd v Dunnes Stores Ltd [2008] ECDR 11 at [82]-[84] (stating that the registered design must be assessed with regard to particular prior designs rather than a hypothetical amalgam of a number of prior designs). See also Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 ; (2007) 235 ALR 202 (upholding the validity in the patent context of a combination of features known collectively in the prior art).


case_text: LJ Fisher & Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565 , 571-72, Fullagar J said: I am clearly of opinion that a registered design in order to be valid, must be reasonably "clear and succinct"; that is to say the design sought to be monopolised by copyright must appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the design has been applied. In argument in Phillips v Harbro Rubber Co (1920) 37 RPC 233 , Sir Duncan Kerly KC said: A design may be valid for any form that is new, subject to this, that it must be distinct and present an appearance that strikes the eye as being different from any previously existing shape. [Emphasis added.] ... But in design law I think that the design is addressed to a person of some skill who might be called a person skilled in the art, but that a person skilled in the art is not necessarily familiar with particular methods of manufacture per se; I think he knows the prior art articles and the prior art registered designs and knows as much about manufacture as he would reasonably be expected to deduce from a study of those designs and articles, but not necessarily any more. ... I do think that if a design, depicted by reference to an article to which it has been applied, appears difficult to construe, evidence is admissible from persons familiar with those articles and with methods of applying designs to them, at all events where the design is as here confined to configuration. In what follows I use the expression "person skilled in the art" as a shorthand for a person with the elementary knowledge that I have above indicated; that is to say a person in the circumstances of this case, who is familiar at least with the shape and appearance and (so far as obvious) constituents of prior art roof tiles composed wholly or chiefly of metal, as known at the priority date of the registration. (Emphasis added.) Much of the cross-claimants' arguments proceeded from the premise that no sufficient representation of each Design appeared on IP Australia's website. The cross-claimants submitted that the visual features of the Designs were hard to discern when looking at the pink drawings. Mr Garrard, a consultant to the automotive electrical industry, was called to give evidence by the cross-claimants. He looked at the pink drawings on the IP Australia website and in the Certificates of Registration produced by the Designs Office tendered in evidence and initially said he had difficulty in understanding the features of the Designs such as the side profile of the base and the degree of rounding of the lens. In cross-examination, he modified that evidence to the extent of acknowledging that he was able to discern features of the Designs except for the curved ends. Other witnesses gave evidence about the pink drawings and what they could and could not discern from them. It is therefore necessary to examine the validity of the cross-claimants' premise that no sufficient representation of each Design appeared on IP Australia's website with some care. As I noted earlier, printed representations of some of what was displayed when IP Australia's database was searched were tendered in evidence. Five different views of each Design were tendered. Even if one of those views were to be thought insufficient to convey to the observer all of the relevant features of the Design it by no means follows that the combination of images is necessarily deficient in that respect. In my view, it is possible to discern from the printed representations the visual features of the Designs, including the two particular matters to which Mr Garrard drew special attention, the side profile of the base and the degree of rounding of the lens. Adopting the language of Fullagar J, I consider each Design to be reasonably "clear and succinct" . It may be said that the pink drawings are not perfect or that they could be better or clearer. However, each Design does appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the design has been applied . It is necessary to record, however, that the documents that were tendered show a particular magnification and resolution of the representations appearing in the database. Because the data is held electronically and displayed on the IP Australia website (in Adobe Reader as PDF documents), it is possible, within limits, to reproduce the representations at greater magnification than may first be displayed on the screen. That is, the printed exhibits cannot be taken as necessarily indicating the largest magnification or best resolution of what appears in the database and is accessible by the public. Again, it is possible to observe on IP Australia's website the five different views of each Design. When those views are displayed at higher magnifications, the details and specifications of each Design appear not just with reasonable clarity, but with great clarity. However, when I asked the parties after the hearing whether it would permissible for the Court to have regard to the magnified displays on the website (which were not tendered into evidence by way of printed or electronic copy), the Respondents contended that there was no evidence that the representations on the IP Australia website could be or were in fact magnified by any witness or that a member of the public seeking information as to a registered design would be expected to electronically magnify the online representations. I reject both contentions. First, there was evidence that witnesses had accessed the Designs on the IP Australia website and magnified the representations to some extent.


case_title: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 ; (2007) 235 ALR 202


case_text: if LED Tech had established damage, I do not consider that each of Messrs Keller and Armstrong knew of the "essential matters" that enabled the representations to be characterised in the manner contended: ACCC v Kaye [2004] FCA 1363 at [182] - [186] . To adopt the language of the majority of the Full Court in Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 ; (2003) 135 FCR 1 at [12-16] , although I accept that each of Messrs Keller and Armstrong knew (1) that the Condor Products were manufactured, sold and packaged and (2) the content of the manner in which they were sold which might lead members of at least one class of consumer to believe that the products complied with "prescribed consumer product safety standards", I do not conclude that either Messrs Keller or Armstrong knew the facts that meant that the Representations were not correct. As to the "ADR Approved" representation, they gave evidence as to their subjective understanding of the representation conveyed, which, while possibly negligent or even reckless, was not such as to suggest wilful blindness or actual knowledge of how a relevant purchaser might understand it. As to the "Complies with ADR" representation, their evidence (which I accept) was that they relied upon oral and written assurances from their Chinese manufacturer and testing laboratories which turned out to be belatedly or never substantiated. Was that conduct less than wise? - Yes. Was it negligent and possibly even reckless? - Again, yes. But on the current state of the authorities that is not sufficient to establish the actual knowledge necessary to establish accessorial liability under the TPA. Significantly, it was never put to either Mr Keller or Mr Armstrong during the course of cross-examination that they knew these "essential matters". Accordingly, even if LED Tech had established that the TPA contraventions had caused it damage, they could not establish the secondary liability of the Directors for those contraventions.


case_text: the question remains, what then is the Australian standard? One thing that does not inform the answer to this question is industry practice. A deal of evidence was led as to what automotive industry experts thought the ADRs required and how the industry tested for compliance in practice. The general thrust of this evidence was that the industry treated much of the removed sections as still being applicable. However, as the Court stated in MHG Plastic Industries v ACCC (2000) ATPR (Digest) 46-206 at [49], any industry practice adopted as to the testing of products against a safety standard cannot affect the proper construction of the requirements under the safety standard. As Emmett J said at first instance in that decision ( ACCC v MHG Plastic Industries Pty Ltd [1999] ATPR 41-712 at [22]), " The Standard means what it says" .


case_outcome: discussed

case_text: submitted by counsel for the Directors, the test to be applied is far from certain. One line of cases adopts what is known as the "direct or procure" test ( Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 , 14-15, while the other line of cases adopts the test in Mentmore Manufacturing v National Merchandising Manufacturing (1978) 89 DLR (3d) 195 that a director is only personally liable if it is reasonable to conclude that the purpose of the director was not the direction of the manufacturing and selling activity of the company in the course of his relationship to it but the "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it": at 204-205. In Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd [2001] FCA 1838 ; (2001) 53 IPR 400 at [39] , a design infringement case, the Full Court of the Federal Court considered the two tests in the following terms: The authorities were collected and analysed by Beazley J in King v Milpurrurru (1996) 66 FCR 474 at 494-500..... Her Honour noted the existence of two lines of authority. One line supported what she called the "Performing Right Society test " : whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". Beazley J expressed a preference for the Mentmore test, on the basis that the Performing Right Society test did not "pay sufficient regard, either to the separate legal existence of the company, or to the fact that the company acts through its directors": see [66 FCR at 500]. However, this preference had no immediate consequence; her Honour held (again at [500]) that the appellants were not liable under either test. After listing a number of cases (at [40]-[41]) supporting each approach and considering the submissions of the parties, the Full Court went on to say (at [43]-[44]): The difference between the two tests may be more apparent than real. We are not aware of any case in which it has been held that a director or officer of a company directed or procured the company's infringing act, yet that person escaped liability because he or she did not deliberately, wilfully or knowingly pursue a course of conduct that was likely to constitute infringement or that reflected indifference to the risk of infringement. This may be because, in practice, an act of direction or procurement will generally meet the Mentmore test. It is notable that, in Mentmore itself, the Canadian Federal Court of Appeal declined (at 204) to "go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement". The Court declined to do this because that "would be to impose a condition of liability that does not exist for patent infringement generally". To the extent there is a real difference between the tests, each has eloquent supporters. One day it may be necessary, in a practical sense, to choose between them. But it is not necessary to do so in this case. The position here is the same. This is not a case in which Messrs Keller and Armstrong acted only as directors of the infringing companies. Each had personal knowledge of the Designs and of the other facts and matters set out above (see [169]). To adopt the language of the Full Court, it was clear that each of Messrs Keller and Armstrong "was personally an actor invading [LED Tech's] rights: by creating the [Condor Products]" and taking the other steps outlined above. These sequences of actions were "the deliberate, wilful and knowing pursuit of a course of conduct" that was likely to constitute infringement or, at least, reflected a conscious indifference to the risk of infringement. As a result, each of the Directors also engaged in the design infringement. Each is a joint tortfeasor to the design infringement as each had "a common design" with Ren and Olsen to infringe the Designs and is jointly and severally liable to LED Tech for the damages assessed. Secondary liability under the TPA


case_text: relevant legal principles are well known. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded representations is conveyed by the particular events complained of: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45 at [105] ; National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] ATPR 42-000 at [18] per Dowsett J (with whom Jacobson and Bennett JJ agreed) and Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 ; [2006] ATPR 42-106 at [37] .


case_text: of these documents supports such an allegation. First and foremost, I found that the Designs were properly registered and the claim of infringement is made out, so it could not be said that allegations of infringement were unjustified even if they were deemed threats: Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [232] (suggesting that where there is actual infringement a threat will not be unjustified). Secondly, the 5 February 2007 document did not, in its terms, contain any threat of proceedings for design infringement. The document contained 6 paragraphs. The first five related to the ADRs. The last paragraph stated: Since the lamps are similar in appearance to LED Technologies' lamps, we are currently consulting our legal advisers regarding litigation against vendors of these lamps in order to protect our reputation and to protect consumers. Taken at its highest, it states that LED Tech was seeking legal advice. It makes no threat of proceedings for design infringement: but cf Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312 (concluding that a similar letter constituted a threat under s 128 of the Patent Act 1990 (Cth)).


case_title: Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312


case_title: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191


case_text: submitted by counsel for the Directors, the test to be applied is far from certain. One line of cases adopts what is known as the "direct or procure" test ( Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 , 14-15, while the other line of cases adopts the test in Mentmore Manufacturing v National Merchandising Manufacturing (1978) 89 DLR (3d) 195 that a director is only personally liable if it is reasonable to conclude that the purpose of the director was not the direction of the manufacturing and selling activity of the company in the course of his relationship to it but the "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it": at 204-205. In Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd [2001] FCA 1838 ; (2001) 53 IPR 400 at [39] , a design infringement case, the Full Court of the Federal Court considered the two tests in the following terms: The authorities were collected and analysed by Beazley J in King v Milpurrurru (1996) 66 FCR 474 at 494-500..... Her Honour noted the existence of two lines of authority. One line supported what she called the "Performing Right Society test " : whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". Beazley J expressed a preference for the Mentmore test, on the basis that the Performing Right Society test did not "pay sufficient regard, either to the separate legal existence of the company, or to the fact that the company acts through its directors": see [66 FCR at 500]. However, this preference had no immediate consequence; her Honour held (again at [500]) that the appellants were not liable under either test.


case_text: the circumstances, the better approach is to assess damages doing the best I can, even if such quantification necessarily involves a degree of speculation and guesswork: eg Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at [37] - [38] ; Adidas-Solomon AG v Turner (2003) 58 IPR 66 at [4]-[5]; Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 , 183; Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 at [7] .