case_text: is clear that a power of attorney as held by Mr Kerr from Ms Kerr does not provide a lawful basis for a non-lawyer to act for a party in litigation in a Federal Court (cf Slack v Bottoms English Solicitors [2003] FCA 1337). However the Court has discretion to grant leave to a person who is not a qualified legal practitioner to represent a litigant. Such a person is commonly known as a "Mackenzie friend". I note that I consider it inappropriate that an application should be made by Mr Kerr to represent Ms Kerr without Ms Kerr being present. However I understand that in previous proceedings in this Court Mr Kerr has represented Ms Kerr in her absence. For the purposes of today's hearing, which is procedural only, I am prepared to entertain Mr Kerr's application to represent Ms Kerr.


case_outcome: cited

case_text: pointed out by Ipp AJA in Teese v State Bank of New South Wales [2002] NSWCA 219 at [15] , the usual ground for granting leave to a person, not properly qualified, to represent a litigant is impecuniosity, namely where the litigant cannot afford to pay a properly qualified lawyer. In this case Ms Kerr's impecuniosity was the reason for seeking that Mr Kerr should speak for her in Court. In the circumstances I was prepared to grant leave to Mr Kerr to represent Ms Kerr for the purposes of today's proceedings. There was no appearance in Court by either American Express or the Insolvency Trustee Service Australia (ITSA) which is Ms Kerr's trustee in bankruptcy. I understand that American Express has informed Deputy District Registrar Baldwin of the Queensland Registry of this Court that it would not appear either in respect of this notice of motion or in the appeal more generally having regard to the substantial costs already incurred by the company to date, and in light of the fact that Ms Kerr's estate has no funds. At my request Deputy District Registrar Belcher informed the appellant prior to today's hearing that I currently hold an American Express credit card, and inquired whether, from the appellant's perspective, this gave rise to any concerns as to perceived bias on my part. I understand that my possession of this card has not caused the appellant any concern in relation to me hearing this notice of motion.


case_title: Thornberry v R (1995) 69 ALJR 777

case_text: decision of a judge to adjourn a hearing is not only an interlocutory decision, it is a discretionary decision ( Aon Risk Services Australia Ltd v Australian National University [2009] HCA 27 ; (2009) 258 ALR 14 , Goldberg v Morrow [2004] FCA 1490 at [36] ). There is authority that the discretion in respect of ordering or refusing an adjournment miscarries where the refusal of an adjournment results in one of the parties being unable adequately to present his case ( Thornberry v R (1995) 69 ALJR 777). Where there is a proper basis for an application for an adjournment, and refusal would seriously prejudice the party seeking the adjournment and not prejudice the other party, there is authority that adjournment should ordinarily be granted: Jordan v Smart [1961] NSWR 735.


case_outcome: considered

case_text: In relation to the claim that the Tribunal was biased, there is no evidence to support such a finding. The Tribunal is entitled to form adverse conclusions as to the appellant's credibility on the evidence that the appellant presented. The finding of the appellant's credibility is a finding of fact, and it is well established that the Court cannot review the merits of the Tribunal's decision: Minister for Immigration & Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 272. In any event, there is no error of law, let alone a jurisdictional error, in the Tribunal making a wrong finding of fact: see Abebe v Commonwealth [1999] HCA 14 ; (1999) 197 CLR 510 at 560, [137] .


case_text: In my view, the evidence sought to be adduced would not be admissible in this proceeding, and in the course of the proceeding I so ruled. In an appropriate case it may well be permissible to tender evidence on review. However, whether it is an appropriate case will depend upon the grounds of review and the circumstances of the case. I refer to the judgment of Weinberg J in Australian Retailers Association v Reserve Bank of Australia [2005] FCA 1707 ; (2005) 148 FCR 446 where at 564, [454] he stated: I accept that, ordinarily, material not before the decision-maker at the time of the making of the decision will not be admissible in proceedings for judicial review.


case_title: Minister for Immigration & Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259


case_outcome: applied

case_text: Further, I reject the claim that the Tribunal's findings were not based on a logical and rational foundation. The appellant's complaints do not rise above criticisms of the Tribunal's fact finding process. As such, these complaints cannot succeed: see NAMM of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCAFC 32 at [46] . 11 The affidavit in support of the notice of appeal seeks to make unparticularised complaints about the Tribunal's decision. It appears that the appellant is alleging, consistent with the only ground advanced before the Federal Magistrate, that the Tribunal breached s 424A of the Act when deciding his application. 12 It is clear that the Tribunal considered and rejected the appellant's claims. It was satisfied that the appellant was not a Christian. The Tribunal specifically found that the appellant did not face any chance of persecution for reasons of his religion.


case_outcome: referred to

case_text: application previously made by the Applicant for orders pursuant to O 8 r 3(2) of the Federal Court Rules to serve its originating process filed in the present proceeding on the Second, Third and Fourth Respondents overseas was rejected: Gough & Gilmour Holdings Pty Ltd v Caterpillar of Australia Pty Ltd [2009] FCA 1429. Matters of concern addressed in that judgment focussed upon the manner in which the causes of action were sought to be advanced against one or other of those Respondents and the jurisdiction of the Court. The Applicant thereafter filed an Amended Application and a Further Amended Statement of Claim . A further Notice of Motion has also been filed, again seeking orders pursuant to O 8 r 3(2) in respect to the amended documents. Notwithstanding continuing reservation as to the manner in which the Further Amended Statement of Claim is expressed, it is nevertheless not considered that those reservations provide a sufficient basis upon which the discretion conferred by O 8 r 3(2) should be exercised adversely to the Applicant. Such evidential material as is now before the Court, it is concluded, provides an adequate basis upon which the Court can be satisfied that: (i) the Court has jurisdiction in the proceeding; (ii) the proceeding is of a kind mentioned in r 2, being a proceeding of a " kind " falling within Item 1, 2, 3, 6(b), 11 and/or 12; and (iii) the Applicant has a " prima facie case " for the relief claimed. As previously noted, the requirement imposed by O 8 r 3(2)(c) that the person seeking leave satisfy the Court as to a " prima facie case " is a requirement to be assessed " in proportion to the nature of such an interlocutory issue ": [2009] FCA 1429 at [13] , citing WSGAL Pty Ltd v Trade Practices Commission [1992] FCA 510 ; (1992) 39 FCR 472 at 476. The evidence upon which that state of satisfaction has presently been reached is the Affidavits of Michael Daniel Harmer affirmed on 30 November 2009, 2 December 2009 and 11 December 2009 together with exhibits to his Affidavit of 30 November 2009, being Exhibits MDH 8, 63, 64 and 65.


case_text: evidential material as is now before the Court, it is concluded, provides an adequate basis upon which the Court can be satisfied that: (i) the Court has jurisdiction in the proceeding; (ii) the proceeding is of a kind mentioned in r 2, being a proceeding of a " kind " falling within Item 1, 2, 3, 6(b), 11 and/or 12; and (iii) the Applicant has a " prima facie case " for the relief claimed. As previously noted, the requirement imposed by O 8 r 3(2)(c) that the person seeking leave satisfy the Court as to a " prima facie case " is a requirement to be assessed " in proportion to the nature of such an interlocutory issue ": [2009] FCA 1429 at [13] , citing WSGAL Pty Ltd v Trade Practices Commission [1992] FCA 510 ; (1992) 39 FCR 472 at 476. The evidence upon which that state of satisfaction has presently been reached is the Affidavits of Michael Daniel Harmer affirmed on 30 November 2009, 2 December 2009 and 11 December 2009 together with exhibits to his Affidavit of 30 November 2009, being Exhibits MDH 8, 63, 64 and 65.


case_text: applicant suggests that the Tribunal should have drawn his attention to specific passages in the independent country information. It was submitted that those passages were directly related to the applicant's experiences and, had he been able to explain his relationship with those events, the Tribunal would have assessed his risk of persecution differently. This submission must fail. It is not the function of the Tribunal to establish the applicant's case for him. As Gummow and Hayne JJ observed in Abebe v The Commonwealth of Australia [1999] HCA 14 ; (1999) 197 CLR 510 at 576 [187] : 'The proceedings before the Tribunal are inquisitorial and the Tribunal is not in the position of a contradictor. It is for the applicant to advance whatever evidence or argument she wishes to advance in support of her contention that she has a well-founded fear of persecution for a Convention reason. The Tribunal must then decide whether that claim is made out.' The applicant was obliged to raise all of the factual matters which were relevant to his case. That included providing the Tribunal with sufficient details of his personal experiences to allow the Tribunal to make an assessment of his claim. The Tribunal could not have known whether the independent country information referred to arrests of people close to the applicant (such as Dr Rajab) unless the applicant provided specific details of his associates which would enable the Tribunal to recognise circumstances referred to in the country information. The applicant raised the arrests of university colleagues only briefly and vaguely, and did not provide any particular information. If the applicant had additional material which he wished to place before the Tribunal then it was incumbent upon him to place it before the Tribunal. Furthermore, the vast majority of the independent country information which was relied upon by the Tribunal had in fact been provided by the applicant himself, and following the Tribunal hearing, the applicant was offered the opportunity to provide further information. The applicant took up the offer and provided further independent country information to the Tribunal. It is clear that the applicant was not only afforded the opportunity but also exercised his right to comment before the Tribunal.


case_text: applicant submits that the failure to comply with s 431 of the Migration Act gives rise to procedural unfairness. He submits that procedural fairness arises at the pre-hearing stage of the Tribunal hearing and continues during and beyond the hearing and until the Tribunal fulfils its statutory functions by the provisions and publication of its decision. He claims the Tribunal's decision was vitiated by its failure to afford him procedural fairness. The applicant relies upon Ainsworth and Anor v Criminal Justice Commission [1992] HCA 10 ; (1992) 175 CLR 564 and Johns v Australian Securities Commission and Ors [1993] HCA 56 ; (1993) 178 CLR 408 as authority for the proposition that procedural fairness may require an opportunity to oppose publication of a decision. The applicant's reliance on Ainsworth is misplaced. In that case, the Criminal Justice Commission published a report which made adverse factual findings against Ainsworth, in circumstances where Ainsworth had never been given the opportunity to be heard upon the basis for those findings. The report attracted a duty of procedural fairness because its contents had the potential to ' destroy, defeat or prejudice a person's rights, interests or legitimate expectations ' (see Annetts and Anor v McCann and Ors [1990] HCA 57 ; (1990) 170 CLR 596 at 598 per Mason CJ, Deane and McHugh JJ). In contrast, in these proceedings the applicant was given an opportunity to be heard upon the findings which were included in the Tribunal's decision. The Tribunal had invited the applicant to a hearing, which he attended. Accordingly the Tribunal's duty of procedural fairness was discharged in respect of the factual and legal findings which it made in that decision, and ultimately its decision that the applicant was not a refugee.


case_text: applicant's reliance on Ainsworth is misplaced. In that case, the Criminal Justice Commission published a report which made adverse factual findings against Ainsworth, in circumstances where Ainsworth had never been given the opportunity to be heard upon the basis for those findings. The report attracted a duty of procedural fairness because its contents had the potential to ' destroy, defeat or prejudice a person's rights, interests or legitimate expectations ' (see Annetts and Anor v McCann and Ors [1990] HCA 57 ; (1990) 170 CLR 596 at 598 per Mason CJ, Deane and McHugh JJ). In contrast, in these proceedings the applicant was given an opportunity to be heard upon the findings which were included in the Tribunal's decision. The Tribunal had invited the applicant to a hearing, which he attended. Accordingly the Tribunal's duty of procedural fairness was discharged in respect of the factual and legal findings which it made in that decision, and ultimately its decision that the applicant was not a refugee.


case_text: applicant submits that the failure to comply with s 431 of the Migration Act gives rise to procedural unfairness. He submits that procedural fairness arises at the pre-hearing stage of the Tribunal hearing and continues during and beyond the hearing and until the Tribunal fulfils its statutory functions by the provisions and publication of its decision. He claims the Tribunal's decision was vitiated by its failure to afford him procedural fairness. The applicant relies upon Ainsworth and Anor v Criminal Justice Commission [1992] HCA 10 ; (1992) 175 CLR 564 and Johns v Australian Securities Commission and Ors [1993] HCA 56 ; (1993) 178 CLR 408 as authority for the proposition that procedural fairness may require an opportunity to oppose publication of a decision. Johns concerns a decision by the Australian Securities Commission to allow transcript of interviews it had conducted with the appellant to be released to the public. In that case, the High Court held that the applicant ought to have been given an opportunity to make submissions before that decision was made and accordingly it was invalid. On this basis the applicant says that the Tribunal's decision to publish its reasons was also a decision which is reviewable. I accept that the decision by the Tribunal to publish its reasons on the internet in the form which it did was a decision which might be challenged. Indeed, after a request by the applicant, the Tribunal removed the reasons from the internet. If the Tribunal had refused to remove its reasons from the internet, it may have been open to the applicant to challenge that decision and seek injunctive relief to restrain the continued publication on the basis that it was inappropriate for the Tribunal to have published its reasons without giving the applicant an opportunity to make submissions about the details which should not be published. That is, the applicant might have successfully made an allegation that procedural fairness had been denied in relation to the decision to publish . However, any errors which may have occurred in the Tribunal's decision to publish were incapable of affecting its decision on the applicant's refugee status, which had been concluded before publication and in respect of which fair procedures had been observed. It follows that this ground of challenge must be rejected. The applicant's third challenge to the decision relates to the failure of the Tribunal to disclose to the applicant a file note dated 29 April 1998 and made by an officer of the Department, which was provided to the Tribunal. The file note referred to inconsistencies between the applicant's application for a protection visa and that of his brother, whose application for a protection visa was also being determined by the Department. The file note contains information which is potentially adverse to the applicant, in that it suggests the account provided by him is inconsistent with the account provided by his brother. It also incorrectly summarises the information contained in the applicant's protection visa application, stating that he claimed only one brother was detained by authorities, when in fact his application states that the Libyan government ' jailed many of my brothers and cousins since 1984 ' and refers specifically to two brothers.


case_outcome: discussed

case_text: applicant has submitted that the failure by the Tribunal to provide the file note to the applicant was a breach of procedural fairness by the Tribunal. He relies upon the decision of the High Court in Applicant VEAL of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 72 ; (2005) 80 ALJR 228. The decision in VEAL also concerned a decision made by the Refugee Review Tribunal. In that case, the Department had received an unsolicited letter which contained allegations relating to the appellant. The letter was passed on to the Tribunal by the Department, but the Tribunal did not tell the appellant about the letter or about the allegations contained in it. The Tribunal made a decision refusing a protection visa on the basis that the applicant lacked credibility, but explicitly indicated in its reasons that it had given no weight to the letter in arriving at its decision. The High Court held that the Tribunal had failed to afford the applicant procedural fairness. The Court held that information that was credible, relevant and significant must be provided to an affected person and that an opportunity must be given to the person to deal with the information before a decision was reached: see at [17]. It stated that credible, relevant and significant information was information ' that cannot be dismissed from further consideration by the decision-maker before making the decision ' and noted that whether information is credible, relevant and significant does not depend ' upon whatever characterisation of the information the decision-maker may later have chosen to apply to the information when expressing reasons for the decision that has been reached ': see at [17]. At [19] in VEAL , the Court said: 'As has later been rightly said, " the necessity to disclose such material in order to accord procedural fairness is not based on answering a causal question as to whether the material did in fact play a part in influencing the decision " . It follows that asking whether, despite what was said in its reasons, the Tribunal may have been subconsciously affected by the information distracts attention from the relevant inquiry. The relevant inquiry is: what procedures should have been followed? The relevant inquiry is neither what decision should the decision-maker have made, nor what reasons did the decision-maker give for the conclusion reached.' The second respondent submits that VEAL is distinguishable from the present case on the basis of Bennett J's decision in SZECD v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 31 ; (2006) 150 FCR 53. In that decision, Bennett J distinguished the decision in VEAL on the basis that although procedural unfairness had been established in respect of one basis of the Tribunal's decision, there was a separate and independent basis for its conclusion which was not affected by procedural unfairness: see at [28], [40]-[41].


case_text: content of procedural fairness requirements will depend upon the circumstances of the exercise of the power: see Wilson J in Kioa and Ors v West and Anor [1985] HCA 81 ; (1985) 159 CLR 550 at 584-5 per Mason J; 601 per Wilson J; 611-2 per Brennan J; 633 per Deane J. However, common law procedural fairness will generally require that an applicant be given the opportunity to comment upon information held by the Tribunal which is adverse to his or her interest. As Mason J said in Kioa at 582: 'It is a fundamental rule of the common law doctrine of natural justice expressed in traditional terms that, generally speaking, when an order is to be made which will deprive a person of some right or interest or the legitimate expectation of a benefit, he is entitled to know the case sought to be made against him and to be given an opportunity of replying to it ...' I do not accept this submission. The obligations of procedural fairness at common law relate to two 'rules': the bias rule and the hearing rule: see M Aronson, B Dyer and M Groves, Judicial Review of Administrative Action , 3 rd ed, Lawbook Co, 2004 at 370. The bias rule prevents a Tribunal from acting in a way which shows actual or apprehended bias towards an applicant. The hearing rule acts to ensure that an individual is given an opportunity to be heard before a decision is taken and to meet the case which is put against him or her: see the passage in Kioa cited at [19] above. The precise content of the hearing rule is dependent upon the context in which the decision is being made. In any event, if an allegation of procedural fairness is to be made out, the applicant must demonstrate that either the bias rule or the hearing rule has been breached by the Tribunal. The decision of the Tribunal to publish its reasons upon the internet, in the form in which it did so, could not vitiate the decision which had already been made by the Tribunal relating to the applicant's refugee status. No suggestion has been made that the Tribunal's decision to publish its reasons indicated bias on the part of the Tribunal. Nor is there any suggestion that the hearing given by the Tribunal had been in some way deficient. If a breach of neither of these principles is alleged, a claim of procedural unfairness is not made out.


case_text: obligations of the Tribunal are to be determined by reference to the Migration Act as it existed on 7 January 1999, the date of its decision. The Migration Act did not then include s 422B , which provides that Div 4 of Pt 7 of the Migration Act (which relates to the conduct of the Tribunal's review) is taken to be an exhaustive statement of the natural justice hearing rule. It is clear that s 422B of the Migration Act now operates to exclude the requirement for decision-makers to abide by common law principles of procedural fairness: see Minister for Immigration and Multicultural Affairs v Lay Lat [2006] FCAFC 61. However, it is equally clear from decisions of the High Court that common law principles of procedural fairness were not excluded from the Migration Act as it existed prior to the enactment of s 422B: see Plaintiff S157/2002 v The Commonwealth of Australia [2003] HCA 2 ; (2003) 211 CLR 476 at [37] - [38] per Gleeson CJ; at [83] per Gaudron, McHugh, Gummow, Kirby and Hayne JJ; Re Minister for Immigration and Multicultural Affairs and Anor; Ex parte Miah [2001] HCA 22 ; (2001) 206 CLR 57 at [26] per Gleeson CJ and Hayne J; at [95] per Gaudron J; at [128] per McHugh J; at [188] per Kirby J. Accordingly, it is open to the applicant to raise a breach of common law procedural fairness.


case_text: it is not always necessary for the Tribunal to provide to an applicant copies of any country information upon which it relies. The Tribunal's obligations may be discharged if it provides to the applicant orally the substance of adverse material: see NAVM v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 99 at [31] [33]. The important element is that the information provided by the Tribunal enables a person to make a submission concerning its relevance or to adduce competing material. In the present case, it is apparent from the transcript that the Tribunal discussed the independent country information at some length with the applicant. In particular, it raised its concerns that the independent country information did not support the contention that the Libyan government persecuted devout Muslims who were not fundamentalists. In my opinion, the applicant clearly was provided with the substance of the information which was contained in independent country information.


case_title: Plaintiff S157/2002 v The Commonwealth of Australia [2003] HCA 2 ; (2003) 211 CLR 476


case_title: Re Minister for Immigration and Multicultural Affairs and Anor; Ex parte Miah [2001] HCA 22 ; (2001) 206 CLR 57


case_outcome: followed

case_text: arriving at this conclusion, I am mindful of the observations of the High Court in Stead v State Government Insurance Commission [1986] HCA 54 ; (1986) 161 CLR 141. In that case, the Court considered the circumstances in which it was appropriate not to order a new trial because it would inevitably result in the making of the same order as that made at the first trial. Whilst the Court observed that ' not every departure from the rules of natural justice at a trial will entitle the aggrieved party to a new trial ', it cautioned at 145: 'Where, however, the denial of natural justice affects the entitlement of a party to make submissions on an issue of fact ... it is more difficult for a court of appeal to conclude that compliance with the requirements of natural justice could have made no difference .... when the Full Court is invited by a respondent to exercise these powers in order to arrive at a conclusion that a new trial, sought to remedy a denial of natural justice relevant to a finding of fact, could make no difference to the result already reached, it should proceed with caution. ' The procedural unfairness alleged in the present case is directed to a finding of fact, namely a finding as to the applicant's credibility. However, I am nonetheless satisfied that this is a case in which the provision of the information could have made no difference to the result, because the applicant's credibility was determined in his favour. The Tribunal made no adverse findings on the applicant's credibility, but rather believed his factual account. The applicant submitted that the Tribunal impliedly made adverse credibility findings, because it did not find that he had a well-founded fear of persecution. However, the examples pointed to by the applicant were those in which the Tribunal did not agree with the applicant's assessment of events, not where it disbelieved his account of the facts. The Tribunal accepted that the applicant and his brothers and cousins had been detained by the Libyan government. It accepted his description of what had occurred at his place of work and the details of his education. What it did not agree with was the applicant's explanation for these events. While the applicant believed that they resulted from religious persecution, the Tribunal disagreed. The Tribunal did not believe the applicant was lying about the facts. It just considered that he was wrong in his interpretation of them. In terms of the applicant's credibility, the Tribunal clearly found in the applicant's favour. The material contained in the file note was credible, relevant and significant only in respect of the issue of the applicant's credibility. It could not have been relevant to any of the other findings made by the Tribunal. The Tribunal's decision did not include any adverse findings upon the applicant's credibility, but rather was based upon its assessment of his risk of persecution in Libya, derived from independent country information and from its assessment of his personal circumstances. Giving the applicant an opportunity to comment upon the file note could not possibly have altered the Tribunal's findings in respect of matters unrelated to his credibility. For these reasons, I consider that this ground must also be rejected. Regardless of whether a breach of procedural fairness has in fact occurred, I consider that to order the matter to be remitted to the Tribunal would be futile and if a breach of procedural fairness were in fact established, I would exercise my discretion not to order a re-hearing. Accordingly, this ground must fail.


case_text: second respondent submits that VEAL is distinguishable from the present case on the basis of Bennett J's decision in SZECD v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 31 ; (2006) 150 FCR 53. In that decision, Bennett J distinguished the decision in VEAL on the basis that although procedural unfairness had been established in respect of one basis of the Tribunal's decision, there was a separate and independent basis for its conclusion which was not affected by procedural unfairness: see at [28], [40]-[41].


case_text: In Nokia Corporation v Cellular Line Australia Pty Ltd [2006] FCA 726 , delivered on 14 June 2006, the Court held that the first and second respondents had infringed the applicant's trademarks and, as they had failed to establish any arguable defence, the applicant was entitled to summary judgment against them. Further, the third and fourth respondents admitted, in essence, that they had infringed the applicant's trademarks. The Court made orders accordingly.


case_title: Nokia Corporation v Cellular Line Australia Pty Ltd (No 3) [2006] FCA 980

case_text: In Nokia Corporation v Cellular Line Australia Pty Ltd (No 2) [2006] FCA 980 , delivered on 11 August 2006, the Court ordered that 60% of the applicant's costs be paid by the first and second respondents, 20% be paid by the third respondent, and 20% be paid by the fourth respondent (less 20% of costs referable to the applicant's costs of preparing evidence of sales of counterfeit products after 24 February 2006). 4 At a directions hearing on 15 December 2006, the Court gave the applicant leave to discontinue against the first respondent, on the basis that the applicant's costs be taxed and paid forthwith. Further, the Court ordered, by consent, that the proceeding be discontinued as against the fourth respondent, and that the fourth respondent pay the applicant costs and damages in the amount of $25,000 forthwith. The proceeding remains alive with respect to the second and third respondents. 5 At the 15 December 2006 directions hearing, the applicant agreed that the proceedings should be discontinued against the third respondent, subject to the resolution of the question of costs. I stated that, in the circumstances, my preferred course was to fix these costs, a course to which the applicant and the third respondent acceded.


case_title: Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 111

case_text: Where the Court orders costs to be paid, O 62 r 4(2)(c) of the Federal Court Rules enables the Court to specify a gross sum instead of taxed costs: see also s 43 of the Federal Court of Australia Act 1976 (Cth). I consider it appropriate to fix costs because of the patent undesirability of continuing the litigation between the applicant and the third respondent. The Court may make an order fixing costs, even though earlier costs orders in the proceeding contemplated taxation in the ordinary way: see Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 119 at 120 per von Doussa J (' Beach Petroleum '). 11 Naturally enough, the Court's discretion to fix costs must be exercised judicially and by reference to principle. In setting a gross fee, the Court must be "confident that the approach taken to estimate costs is logical, fair and reasonable": see Beach Petroleum at 123. As Von Doussa J said in Beach Petroleum at 123: "On the one hand the Court must be astute to prevent prejudice to the respondents by overestimating the costs, and on the other hand must be astute not to cause an injustice to the successful party by an arbitrary 'fail safe' discount on the costs estimates submitted to the Court..." His Honour held, at 124, that the starting point for fixing costs must be the charges rendered by the applicant's solicitors, although in a complex bill there are likely to be items taxed off and there may well be occasions in which a judge will make a discount. For example, in Canvas Graphics Pty Ltd v Kodak (Australasia) Pty Ltd [1998] FCA 23 , O'Loughlin J held that the sum of costs fixed should be proportionate to the nature, including the complexity, of the case; and, that in a case involving a relatively simple cause of action, it was necessary to keep a firm control on costs, which should not be permitted "to explode".


case_text: Naturally enough, the Court's discretion to fix costs must be exercised judicially and by reference to principle. In setting a gross fee, the Court must be "confident that the approach taken to estimate costs is logical, fair and reasonable": see Beach Petroleum at 123. As Von Doussa J said in Beach Petroleum at 123: "On the one hand the Court must be astute to prevent prejudice to the respondents by overestimating the costs, and on the other hand must be astute not to cause an injustice to the successful party by an arbitrary 'fail safe' discount on the costs estimates submitted to the Court..." His Honour held, at 124, that the starting point for fixing costs must be the charges rendered by the applicant's solicitors, although in a complex bill there are likely to be items taxed off and there may well be occasions in which a judge will make a discount. For example, in Canvas Graphics Pty Ltd v Kodak (Australasia) Pty Ltd [1998] FCA 23 , O'Loughlin J held that the sum of costs fixed should be proportionate to the nature, including the complexity, of the case; and, that in a case involving a relatively simple cause of action, it was necessary to keep a firm control on costs, which should not be permitted "to explode".


case_text: I have no doubt that the applicant sought to have regard to matters of this kind when it put forward the figure of $8,250. It should also be borne in mind that the financial inability of an unsuccessful party to meet costs is generally not a sufficient reason to deprive a successful part of a costs award: see Selliah v Minister for Immigration and Multicultural and Indigenous Affairs [1998] FCA 469 and MZXEF v Minister for Immigration and Multicultural Affairs [2006] FCA 709.


case_title: MZXEF v Minister for Immigration and Multicultural Affairs [2006] FCA 709


case_title: Iyer v Minister for Immigration and Multicultural Affairs [2001] FCA 929 , 192 ALR 71

case_text: Court may permit new grounds to be raised on appeal which were not raised before the Federal Magistrates Court. But there are very real reasons why it should not too readily do so, including: the fact that the relevant jurisdiction conferred on this Court is an appellate jurisdiction; the fact that this Court, in exercising that appellate jurisdiction, is entitled to the not inconsiderable benefit of the reasons for decision of a Federal Magistrate in respect to the issues sought to be agitated by a party to the proceeding; the principle that a party who has had a case resolved against him should usually not be permitted on appeal to raise a completely new or different case to that previously advanced; the principle that to permit a whole new case to be run on appeal has the potential to undermine the appellate process by rendering the trial process almost irrelevant; the fact that there is a legitimate public interest in public law matters being resolved in a timely and efficient manner and that the Minister has a legitimate interest in the timely resolution of applications for protection visas; and the fact that the High Court, in the event that an application for special leave to appeal is granted, is entitled to the benefit of a decision at first instance on the arguments sought to be resolved and to this Court's reasons for decision in respect to the same issues on appeal. To pursue any other course is to shift to the High Court the appellate role which it is the responsibility of this Court to discharge. These are but some of the matters that have been referred to in earlier decisions of this Court: e.g. Iyer v Minister for Immigration and Multicultural Affairs [2001] FCA 929 at [62] , [2001] FCA 929 ; 192 ALR 71 at 86 per Gyles J; SZKMS v Minister for Immigration and Citizenship [2008] FCA 499 per Lander J; SZMRD v Minister for Immigration and Citizenship [2009] FCA 598 per Spender J.


case_text: now Appellant's ability to enter Singapore was said by the Tribunal to derive from his right to permanent residence in Singapore. His passport thus bore the following endorsement: A permanent resident requires a Re-entry Permit if he/she wishes to travel out of Singapore. A valid Re-entry Permit enables him/her to return to Singapore as a permanent resident. It also bore the following additional endorsement: Re-Entry Permit This permit is valid for multiple journeys within five years from date hereof provided the travel document is valid. The holder is authorised to re-enter Singapore for permanent residence so long as this permit is valid. The date of the endorsement is 27 November 2006. It may further be noted that the Tribunal's reasons further record: [74] ... When questioned on this, the applicant acknowledged that he had a right of return to Singapore as he is a permanent resident there. Based on the above, the Tribunal finds that the applicant has a right of entry and residence in Singapore at this time. No submissions were advanced in the present appeal that the Appellant's ability to enter Singapore was not a " right " within the meaning of and for the purposes of s 36(3): cf Minister for Immigration and Multicultural Affairs v Applicant C [2001] FCA 1332 , 116 FCR 154 ; SZLAN v Minister for Immigration and Citizenship [2008] FCA 904 , 171 FCR 145.


case_title: SZKMS v Minister for Immigration and Citizenship [2008] FCA 499


case_title: SZLAN v Minister for Immigration and Citizenship [2008] FCA 904 , 171 FCR 145


case_title: SZMRD v Minister for Immigration and Citizenship [2009] FCA 598


case_outcome: affirmed

case_text: 1 July 2009 the Appellant filed an Application in the Federal Magistrates Court of Australia. The grounds upon which that Application was advanced were expressed as follows (without alteration): The Tribunal denied procedural fairness at the time of the assessment of applicant claim The Refugee Review Tribunal's decision was unjust and was made without taking into account the full gravity of the applicant's circumstances of the decision. That Court addressed those grounds and dismissed the Application on 23 September 2009: SZNSL v Minister for Immigration and Citizenship [2009] FMCA 996. In the course of resolving these two grounds, the Federal Magistrate also set forth the Tribunal's analysis of s 36 of the Migration Act 1958 (Cth) (the " Migration Act ") and its application to the now Appellant. A Notice of Appeal was thereafter filed with this Court on 13 October 2009. The Grounds of Appeal were expressed as follows (without alteration): The Tribunal made a jurisdictional error 'by failing to apply the correct test to determine that there was a real chance of persecution' in assessing whether the appellant's fear of persecution was well-founded. His Honor committed an error of law in dismissing that the decision involved a jurisdictional error of law involving an incorrect interpretation of the applicable law to the facts of the case found by the Refugee Review Tribunal. The Tribunal decision was an improper exercise of the power conferred by the Migration Act or the regulations. The Appellant appeared before this Court on 23 November 2009 unrepresented, although he did have the benefit of an interpreter.


case_text: must always be recognised, however, that leave to raise a ground of appeal which was not previously relied upon may be granted where " it is expedient in the interests of justice to do so ": VUAX v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 158 at [46] . The reference in the Grounds of Appeal to the Tribunal's alleged failure " to apply the correct test to determine that there was a real chance of persecution " permitted (perhaps) of some ambiguity. On one view, the Ground could be construed as a broadly expressed challenge to: the correct construction and application of s 36 of the Migration Act . On another view, the Ground could be construed as a challenge to: the findings made by the Tribunal in respect to the " chance of persecution " confronting the now Appellant. It is not considered that the alternative manner of expressing the Grounds of Appeal raises any different issue.


case_text: The application for a consent determination is made primarily under s 87A of the Act. The parties, however, submit that it could equally be made under s 87. They say that the agreement they have reached relates both to "an area ... included in the area covered by the application" (s 87A(1)(b)) and "part of the proceedings" (s 87(1)(a)(ii); s 87(3)). In this connection reference is made to Brown (On behalf of the Ngarla People) v State of Western Australia [2007] FCA 1025 at [14] . The parties note that following the repeal of s 87(1)(d) the Court no longer has first to consider whether an order should be made under s 87A rather than under s 87. They submit, however, that where it is possible for an order to be made under both sections it is preferable to use s 87A. This is because the balance of the application is deemed to have been amended to remove the area covered by the proposed determination (s 64(1B)) and is exempt from the reapplication of the registration test (s 190A(1A)). The application would remain registered following the amendment and the Registrar would be obliged to amend the Register of Native Title Claims even though the registration test has not been applied (s 190(3)(a)). In this connection the Court was referred to the Explanatory Memorandum to the Native Title Amendment Act 2007 (Cth) at [2.62]: If an order can be made under section 87A, the order should be made under that provision rather than section 87. This is because an order under section 87A will give rise to other measures which will assist in promoting expeditious resolution of claims, including automatic amendment of the claim and exemption from the registration test being reapplied to the amended claim. 8 I accept that it is preferable for the order proposed in these circumstances to be made under s 87A rather than under s 87. 9 In their joint submission the State and the applicants have identified a number of formal requirements in s 87A, each of which they say has been satisfied. The requirements and the basis upon which it is said they have been satisfied are as follows: 1. The period specified in the notice given under s 66 of the Act has ended (s 87A(1)(b)). The notification day referred to in ss 66(8) and 66(10)(c) of the Act ended on 4 July 2000. 2. There is an agreement for a proposed determination of native title in relation to an area included in that covered by the application (s 87A(1)(b)). The terms of the agreement are reflected in the consent minute. 3. All necessary persons comprising the applicant, the State and other parties to the proceeding whose interest is relevant to the determination area are parties to the agreement. The applicant and the State are the only parties to the proceeding. Both are parties to the agreement. 4. The terms of the proposed determination are in writing and signed by, or on behalf of, each of the parties (s 87A(1)(d)). The minute of the proposed determination is in writing and is signed on behalf of the State and the applicants. 5. The Registrar of the Federal Court has given notice to other parties to the proceeding that the proposed determination has been filed with the Court (s 87A(3)). The terms of the proposed determination have been filed with the Court. The only parties to the proceeding are also the parties to the determination. There is therefore no need for notification under s 87A(3).


case_title: Applicant NAHF of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 140 ; (2003) 128 FCR 359

case_text: is submitted on the part of the applicant that the decision to proceed failed to comply with the obligations of s 425 in the context of the Act as it then stood and was also a breach of the rules of procedural fairness sufficient to amount to jurisdictional error. I am not satisfied that this was a breach of s 425 of the Act for the reasons explained by Hely J in Applicant NAHF of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs (NAHF) [2003] FCA 140 ; (2003) 128 FCR 359, particularly at [25] [30]. However, I am satisfied, in the particular circumstances of this case, that what occurred was an unreasonable refusal of an opportunity to present a case sufficient to breach the rules of natural justice or procedural fairness, again as generally explained by Hely J in ( NAHF ) at [31] [39], that reasoning being supported, at least, by the decision of the Full Court in Minister for Immigration and Multicultural and Indigenous Affairs v SCAR [2003] FCAFC 126 ; (2003) 128 FCR 553. I also refer to the passage relied upon by counsel for the applicant from the judgment of Gummow and Gaudron JJ in Minister for Immigration and Multicultural Affairs v Bhardwaj [2002] HCA 11 ; (2002) 209 CLR 597 at [40] .


case_title: Minister for Immigration and Multicultural Affairs v Bhardwaj [2002] HCA 11 ; (2002) 209 CLR 597


case_title: Minister for Immigration and Multicultural and Indigenous Affairs v SCAR [2003] FCAFC 126 ; (2003) 128 FCR 553


case_text: is but one directly applicable authority in respect of the Spam Act and the imposition of penalties under that Act. That is a judgment delivered by Nicholson J in Australian Communications and Media Authority v Clarity1 Pty Ltd [2006] FCA 1399 ; (2006) 155 FCR 377 (Clarity1). One finds, with respect, in his Honour's judgment in Clarity1 a very helpful collation indeed of relevant principle. It is apparent from Clarity1 that Nicholson J was of the opinion that assistance was to be derived in terms of principle from judgments delivered in respect of civil penalties imposed under the Trade Practices Act . I respectfully agree with this approach. To that end, the following general principles are pertinent: the size of the contravening company; the deliberateness of the contravention and the period over which it occurred; whether the contravention arose out of the conduct of senior management in a corporation or at a lower level; whether the corporation has a culture conducive to compliance with the Act, as, for example, evidenced by educational programs and disciplinary or other corrective measures which are taken institutionally in response to an acknowledged contravention; whether the respondent, be it corporate or individual, has cooperated with the authorities responsible for the enforcement of the Act in relation to the contravention; (and this may be part of the size of the corporation, where it is a corporate respondent), the financial position of the contravener and its, his or her capacity to pay; the deterrent effect, both specific and general, of the proposed penalty; the totality principle; and parity and, I think, also relativity of penalty, with other respondents, having regard to individual circumstances of involvement in a contravention. There are other statements in authorities under the Trade Practices Act which are, in my opinion, germane in relation to the imposition of penalty in respect of Spam Act prosecutions. There is no evidence before me in relation to capacity to pay in respect of any of the Respondents. The Authority submits that an approach evident in Nicholson J's judgment in relation to capacity to pay in Clarity1 is apposite in the circumstances of this case. His Honour stated at para 43: Also I accept that the issue of capacity to pay is, although a relevant factor, of less relevance when balanced against the necessity of imposing a penalty that satisfies the objective of general deterrence. His Honour then makes reference in that regard to Leahy Petroleum (No 2). Deterrent Effect of the Proposed Penalty I have already made reference to a particular importance in general deterrence in the imposition of penalty in respect of contraventions of this Act. It may be noted that Parliament itself has, in a sense, capped daily maximum penalties so as to avoid what one might regard as exponential and thus unrealistically large penalties for multiple contraventions. That said, Parliament has, nonetheless, provided for penalties which accrue, at least on a daily basis, which are significant penalties. In this case, the Authority seeks penalties which are not particularly large, having regard to theoretical maximums, but are large having regard to totality, but not so large as to offend that principle. The totality principle requires that the total penalty for related offences ought not to exceed what is proper for the entire contravening conduct involved. So far as penalty is concerned, the Authority submits that penalties should fall within the following ranges: The Authority submits that, though these penalty ranges are substantial, they do not violate the totality principle. They represent a relatively small proportion of the theoretical legislatively-derived maximum amounts in the circumstances of these contraventions. So far as the corporate Respondents are concerned, they are in the order of 5% to 7% of theoretical maximums. I agree with this particular submission so far as the application of the totality principle is concerned. Parity and Relativity The proposed penalty ranges do, in my opinion, reflect appropriate parity and relativities. This might be highlighted in the following way. As between Mobilegate and Winning Bid, Mobilegate's conduct covered a longer period: 331 days as opposed to 187 days. Next, as between individual Respondents, Messrs Owen and Salcedo had a higher level, and a significantly higher level, of authority in the management and control of the corporations than did Mr Maughan. Nonetheless, each of the individual Respondents was involved for over 800 individual days of contraventions. Mr Maughan's subordination is recognised by the penalty range submitted for him being in the order of 40 % to 50 % of that submitted as apt in respect of Messrs Owen and Salcedo.


case_title: Australian Communications and Media Authority v Mobilegate Ltd A Company Incorporated in Hong Kong (No 2) [2009] FCA 887

case_text: reasons for judgment should be read in conjunction with those which I delivered on 14 August 2009: see Australian Communications and Media Authority v Mobilegate Ltd A Company Incorporated in Hong Kong (No2) [2009] FCA 887. Pursuant to the directions given on 14 August 2009, the Australian Communications and Media Authority (the Authority), as Applicant, served upon the Respondents, which and whom I have mentioned, written submissions together with affidavits to be relied upon in respect of penalty or otherwise identified affidavits in respect of which reliance was to be placed. For their part none of the named Respondents has chosen to appear today. That, of course, is their perfect right. One of them, Mr Salcedo, did, though, choose to correspond with the Registry of the Court. He did this by a letter dated 28 September 2009 received by the Registry that day. That letter now forms part of exhibit 2. A subsequent exchange of correspondence occurred as between the Registry and Mr Salcedo on the subject of whether it was his intention that the letter stand as his submissions in relation to the penalty hearing.


case_text: under the Trade Practices Act , it is relevant to take into account whether the conduct that contravened the Act was systematic, deliberate or covert: see J McPhee and Son (Australia) Pty Ltd v Australian Competition and Consumer Commission [2000] FCA 365 ; (2000) 172 ALR 532 at [158] . In this case, the contravening conduct might aptly be described by each of those adjectives. In other words, it was systematic, it was deliberate and, materially, covert in terms of the ability of those mobile phone users preyed upon to ascertain readily the identity of their predator if they were disposed to seek recourse to the courts to recover moneys lost. I shall elaborate a little further on that aspect in a moment.


case_text: in terms of Trade Practices Act authorities, there is useful guidance on the role of both specific and general deterrence in the imposition of penalties. In Trade Practices Commission v Mobil Oil Australia Ltd [1984] FCA 363 ; (1985) 4 FCR 296 at pages 297 to 298, Toohey J, then a judge of this Court, remarked: The penalty should be such as to deter not only the particular offender but others who may be disposed to engage in prohibited conduct of a similar kind. That, in my opinion, is a particularly weighty consideration in relation to Spam Act contraventions. This case discloses on the evidence that while it is possible for a regulatory authority, through diligent investigation, to detect not only those corporations but those individuals involved in contraventions, the task is not an easy or an inexpensive one. It consumes public resources which might otherwise usefully be deployed to other ends. That being so, penalties in respect of contraventions must be such as to deter the unscrupulous from taking a calculated business risk. In other words, in my opinion, penalties must be of such an order that having regard to particular gains which might be involved, it is in effect commercial suicide to seek those gains via contraventions of the Spam Act . Sentiments such as these are evident in prior authority.


case_text: NW Frozen Foods Pty Ltd v Australian Competition and Consumer Commission [1996] FCA 1134 ; (1996) 71 FCR 285 at pages 294 to 295 (NW Frozen Foods), a Full Court opined: The court should not leave room for any impression of weakness in its resolve to impose penalties sufficient to ensure the deterrence, not only of the parties actually before it, but also of others who might be tempted to think that contravention would pay ...


case_text: like effect is the following observation of Selway J in Australian Competition and Consumer Commission v McMahon Services Pty Ltd (2004) ATPR 42-031 at [15]: The penalty must be sufficiently high that a business, acting rationally and in its own best interest, will not be prepared to treat the risk of such a penalty as a business cost.


case_text: course, a penalty should not be so high as to be oppressive, but it is important in this regard to recall exactly what is meant by that sentiment. That was, with respect, aptly and accurately stated by Merkel J in Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 2) [2005] FCA 254 ; (2005) 215 ALR 281 (Leahy Petroleum (No 2)) at para 9 as follows, (and this is a reference to observations made by Smithers J in a case, Trade Practices Commission v Stihl Chain Saws (Australia) Pty Ltd (1978) ATPR 40-091 , which had been referred to by Burchett and Kiefel JJ in NW Frozen Foods): I therefore respectfully agree with the observation of Smithers J, referred to by Burchett and Kiefel JJ in NW Frozen Foods, to the effect that, a penalty that is of no greater than is necessary to achieve the object of general deterrence, will not be oppressive.


case_title: Trade Practices Commission v Stihl Chain Saws (Australia) Pty Ltd (1978) ATPR 40-091


case_text: is not one of those cases of the kind encountered in the State criminal courts where, by reference to a high volume of analogous criminal conduct, it is possible to set, and then for sentencing judges to have regard to, particular benchmarks derived from guidance given by a Court of Appeal. I have already referred to theoretical maximums that one might derive in respect of the corporate Respondents, and to the ability to make an estimation of theoretical maximums in respect of individuals. In Markarian v The Queen [2005] HCA 25 ; (2005) 228 CLR 357 Gleeson CJ and Gummow, Hayne and Callinan JJ, in relation to maximum sentences said at [30]: Legislatures do not enact maximum available sentences as mere formalities. Judges need sentencing yardsticks. It is well accepted that the maximum sentence available may in some cases be a matter of great relevance. In their book Sentencing , Stockdale and Devlin observe that: "A maximum sentence fixed by parliament may have little relevance in a given case, either because it was fixed at a very high level in the last century ... or because it has more recently been set at a high catch-all level ... At other times the maximum may be highly relevant and sometimes may create real difficulties ... A change in a maximum sentence by Parliament will sometimes be helpful [where it is thought that parliament regarded the previous penalties as inadequate]." And then at [31]: It follows that careful attention to maximum penalties will almost always be required, first, because the legislature has legislated for them; secondly, because they invite comparison between the worst possible case and the case before the court at the time; and thirdly, because in that regard they do provide, taken and balanced with all the other relevant factors, a yardstick. I turn to look at particular factors designated in s 24 as relevant. Obviously enough, these factors are measured against the matters pleaded in the statement of claim, and the evidence upon which the Authority seeks to rely and of which notice has been given to the particular Respondents; in particular, affidavits of Mr Weber, filed on 12 May, 13 May, and 21 May 2009. Nature and Extent of Contraventions


case_text: is relevant to note that Mr Owen was the sole director of IMP when that company was the subject of an infringement notice issued by the authority pursuant to the Spam Act . It is also relevant to note that Mr Owen was an individual respondent in proceedings in the Federal Magistrates Court against a company, Dancertext, and him: see Wood v Dancertext Pty Ltd [2007] FMCA 1410 (Dancertext). The conduct described in the reasons for judgment of Raphael FM bears particular comparison with the subject of the present proceedings. Mr Salcedo Mr Salcedo was the manager of IMP from June 2006 to May 2007. He was the manager of Winning Bid from April 2007 and the manager of Mobilegate from August 2007 to April 2009. There is also a basis for regarding him, de facto, as a director of Mobilegate even prior to his taking up that position in April 2009. In June 2006, Mr Salcedo corresponded with the Authority on behalf of IMP in relation to complaints which came to form the basis of the infringement notice to which I have referred already.


case_text: I also reject the attack on the validity of the assignment. It was put that Mr Whiting although a director of Cellite Sales did not have authority to execute the assignment on its behalf. There are several reasons why I will not accept this contention. For one thing, the articles of association (or constitution) of the company would tell me what authority each director has, but the articles were not tendered. Therefore, I do not know on what basis I should assume that a director cannot bind the company in a transaction of the kind under consideration. Secondly, even if there be any lack of express authority, I would apply the indoor management rule for there is no reason to think that Mr Scrinis, who dealt with Mr Whiting as the person who had carriage of the sale transaction, had any reason to doubt the latter's authority to bind the company: Northside Developments Pty Ltd v Registrar-General [1990] HCA 32 ; (1990) 170 CLR 146. 13 At the time Carrera Lighting sold its lighting business to the applicant, the respondent was no longer manufacturing the Cellite; it had not manufactured the light for some years. However, and perhaps prompted by the sale, it decided to resume manufacture. Phil Carney, a director of the respondent, got in touch with Mr Shead and asked him whether there was any reason why the respondent could not make and sell the Cellite. According to Mr Shead, he told Mr Carney: "You can't sell the product as a Cellite and you can't use the same diffuser that's being used on the Cellite fitting." Mr Carney was not called to give his account of this discussion. 14 At all events, shortly after the conversation the respondent manufactured and sold to Pulvin Lighting Wholesalers approximately 415 Centurions. The sale was part of a tender for work at the Kempsey Gaol. The applicant had itself tendered for the supply of lights for the Kempsey Gaol, but lost the tender to the respondent, a fact which it only discovered some time later.


case_text: As to the first question, s 17(1) of the 1906 Act provides a design may be registered if "it is a new or original design". When deciding whether a design is new or original the issue is one of fact, to be determined through the eye of the judge. For that purpose the judge may be instructed by expert evidence. In Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403 Lockhart J (with whom Jenkinson and Gummow JJ agreed) said (at 408-409): "[I]t is for the court to determine the meaning of a design in proceedings under the Act, whether the central question be the meaning of the design, novelty or infringement... [W]hile some designs are simple so that the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them. Such evidence is plainly admissible, but ultimately it is for the court to rule on the meaning of a design." He went on (at 409) to make a similar observation in relation to the prior art: "[P]rior art may be a fairly simple matter in a particular case, requiring little or no technical evidence. On the other hand, the understanding and interpretation of prior art may call for expert assistance to be provided to the court... I see no objection in an appropriate case to evidence being received from persons in the relevant trade or industry or members of the public directed to the question of infringement..." 17 Here the prior art consists of several lighting catalogues and brochures as well as several batten lights. These were examined by Peter Bayly, who has extensive experience, spanning almost 50 years, in industrial design. In the end, of course, it is my own impression that will determine whether the registered design is new or original. But I have been assisted by Mr Bayly's evidence in performing my task. 18 The evidence indicates that there was a prolific product range of batten lights around 1989. Of the many products then in existence the product most visually similar to the registered design is the "AVS Series" vandal resistant luminare (the AVS Light) sold by Macwil Lighting & Electrical Co Pty Ltd. During the course of the hearing, it became apparent that if the registered design is new or original when compared with the AVS Light, its newness or originality will not be brought down by the other products I have seen. 27 It is also important to bear in mind what was said by Lockhart J in Dart Industries at 409: "Where novelty or originality is discovered in slight variations [from the prior art base], there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design... Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article." 28 I make the following observations as regards the Centurion: the luminare is a longitudinal light fitting that houses fluorescent tubes; it is of continuous cross-section and appears to have a greater overall length than the registered design being approximately 11 times its width and having a height approximately two-thirds its width; the shape of the end cap is (as Mr Bayly described it) "basically rectangular, also trapezoidal" and they have no step; the finish of the end caps is not smooth like the finish on the registered design; it has a single centrally aligned screw with a recessed head in the top surface of each end cap; and the diffuser is prismatic rather than the longitudinal lines of the registered design. 29 On the question whether the Centurion is an obvious imitation of the registered design, there is at least one important difference; the registered design has a step in the end caps, the Centurion does not. I consider the presence of the step in the end caps to be a significant feature of the form and shape of the registered design which, together with other configuration features, distinguishes it from the prior art. The absence of the step in the Centurion may be described as a small difference from the registered design but in my opinion it is a sufficient difference to defeat the allegation that the Centurion is an obvious imitation of the registered design.


case_text: Section 17(1)(a) provides that a design shall not be registered in respect of an article if the design "differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered ...". Where, as is this case, the prior art is prolific it will often be that small differences will be regarded as "substantial", rather than "immaterial" differences. See generally Ricketson & Creswell, The Law of Intellectual Property: Copyright, Designs & Confidential Information , vol 2 [21.80]. Put another way, it is important not to allow the existence of prolific prior art to rob a design of its value. As Jacobs J said in D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 227, the differences in designs can be "a subtle thing". 21 In a case such as this it is important to keep in mind that a design will not be new or original where the difference between the design and the prior art results from the introduction of common trade variants into an old design. For example, changing the width of the base depending upon the number of fluorescent tubes to be accommodated is a common trade variant. So also is a change in length to accommodate a longer (and therefore stronger wattage) fluorescent tube. 22 There are some similarities in the configuration of the AVS Light and the registered design, namely, both are of continuous rectangular cross-section with a base and diffuser portion extending the whole length of the luminare, and both have two end caps with at least one screw in their top surface that cover the ends of the base and the diffuser. However, the AVS Light and the registered design have a number of differences in their configurations. They also vary in their form and overall shape. The principal areas of difference in configuration between the AVS Light and the registered design are the differing heights of the continuous cross-sections; the base of the AVS Light is approximately half the overall height whereas the base of the registered design is approximately a third the overall height; the height of the diffuser of the AVS Light is approximately half the overall height whereas the height of the diffuser of the registered design is approximately two-thirds the overall height; the length of the AVS Light end caps are approximately two-thirds the overall height while the registered design has end caps approximately equal in length to the overall height. The AVS Light and the registered design also differ in form and shape: the front face of the end caps of the AVS Light are flat whereas each end cap of the registered design has a raised lower portion or step on its front face; the radius on the top edges of the end caps of the AVS Light are approximately one-fifth of its width, compared to radius on the top edges of the end caps of the registered design which are approximately one-tenth of the width of the registered design.


case_title: Walker & Co v AG Scott (1892) 9 RPC 482

case_text: These differences in configuration, form and shape are "sufficient to impart the character of novelty and originality to the whole" ( Walker & Co v AG Scott (1892) 9 RPC 482 at 485) to distinguish the registered design from the AVS Light. 24 I used the same approach I detailed above to compare the configuration (that is the length versus width and height versus width of the overall light and individual components such as the end caps) and form and shape (focussing on the radius of the edges of the end caps, the positioning of the screws and the presence or absence of a step) of the registered design with the other prior art including in particular the Gayline, the Loira Weather Proof fluorescent, the Minilux and the Regency Series light. The differences in configuration, form and shape between the registered design and these luminaries are more pronounced than the differences I observed between the registered design and the AVS Light. The differences leave me with the impression that the registered design is sufficiently new or original to distinguish it from that prior art referred to. 25 This brings me to the case on infringement. Here, by reason of s 30 of the 1906 Act, there are two issues to be determined. First, is the Centurion an obvious imitation of the registered design (does it appear to be a copy although there are some differences) and, second, is it a fraudulent imitation (with differences made to disguise copying)?


case_text: On this aspect I propose to apply what was said by Gummow J in Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435 at 440. There he summarised the principles to be applied when deciding whether a particular product was an infringement of a registered design: "(i) first impressions are important in determining whether there is an infringement of a design, (ii) an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences, (iii) the question must be looked at as one of substance and by examining the essential features of the design, (iv) a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation, (v) precise mathematical comparisons or matters of measurements or ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be applied as the test of infringement; appearance to the eye is the critical issue, and (vi) questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner."


case_text: The method by which the applicant's damages are to be calculated has been explained by the High Court in Malec v J C Hutton Pty Ltd [1990] HCA 20 ; (1990) 169 CLR 638 at 643: "If the law is to take account of future or hypothetical events in assessing damages, it can only do so in terms of the degree of probability of those events occurring... But unless the chance is so low as to be regarded as speculative say less than 1 per cent or so high as to be practically certain say over 99 per cent the court will take that chance into account in assessing the damages. Where proof is necessarily unattainable, it would be unfair to treat as certain a prediction which has a 51 per cent probability of occurring; but to ignore altogether a prediction which has a 49 per cent probability of occurring. Thus, the court assesses the degree of probability that an event would have occurred, or might occur, and adjusts its award of damages to reflect the degree of probability." See also Mallet v Monagle [1970] AC 166 at 174; Davies v Taylor [1974] AC 207 at 212, 219.


case_title: Mallet v Monagle [1970] AC 166


case_title: Davies v Taylor [1974] AC 207


case_text: In these circumstances the Court of its own motion listed the matter for a directions hearing on 9 April 2008. At that directions hearing the Court directed the parties to file and serve submissions in relation to the disposition of the application pursuant to s 190F(6) of the Native Title Act on or before 7 May 2008. Subsequent to this date and, in light of the Full Court's decision in Gudjala People # 2 v Native Title Registrar [2008] FCAFC 157 delivered on 27 August 2008, parties were invited by the Court to file and serve any further submissions prior to the hearing of the application. 5 In deciding whether the application should be dismissed I have considered s 190F(6) of the Native Title Act , which provides as follows: The Court may, either on the application of a party or on its own motion, dismiss the application in which the claim was made ... if: (a) the Court is satisfied that the application in issue has not been amended since consideration by the Registrar, and is not likely to be amended in a way that would lead to a different outcome once considered by the Registrar; and (b) in the opinion of the Court, there is no other reason why the application in issue should not be dismissed. 6 There is no evidence, and it was not submitted by any party, that this application is likely to be amended at all, never mind in a way that would lead to a different outcome once considered by the Registrar of the National Native Title Tribunal.


case_text: In the substantive judgment on the appeal from the Federal Magistrates Court ( Woodtree Pty Ltd v Zheng [2007] FCA 1922) I upheld the appellant's appeal insofar as it was based on its claims under the Trade Practices Act 1974 (Cth) but rejected its claims for copyright infringement. I assessed damages at $3684.20. The questions of interest under s 51A of the Federal Court of Australia Act 1976 (Cth) and costs were adjourned. The parties have now filed written submissions.


case_text: The trial before the learned Magistrate took place on 12 and 13 November 2006. Earlier that year the respondents had made a number of Calderbank offers (see Calderbank v Calderbank [1975] 3 All ER 333) which are detailed in my judgment at [62]. The last of those was on 2 June 2006. It involved an undertaking to cease selling products with the offending packaging, $4331 for costs and $9000 for damages. By a letter from its solicitors dated 7 June 2006 the appellant rejected that offer and "in order to reach a commercial resolution to this dispute" made a counter offer of $17,500 including costs and the undertaking. The offer was to remain open for seven days. The appellant repeated its offer on 21 July and 7 August. In the last mentioned letter it declined mediation. 3 In its costs submissions the appellant calculated its costs of the trial on the scale under Federal Magistrates Court Regulations 2000 (Cth), sch 1, at $22,078. However, the great bulk of those were for "preparation for final hearing for a 2 day matter for solicitor" ($6,770) and "counsel's fees, including preparation" ($10,000). By the stage of the last Calderbank offer the scale costs apparently were: Fee for commencing proceeding $576 Interim application $2,505 Counsel's fee 10 April 2006 $900 4 Although the appeal was successful, at the conclusion of the appeal the appellant has recovered less by way of damages and costs than it would have had it accepted the respondents' last Calderbank offer back in June 2006. 5 In arguing against giving any costs consequence to the Calderbank offer the appellant says that a term of the undertaking was that the proceeding would be settled on a confidential basis and the respondents were not willing to admit liability. It says that one of its main concerns was that the respondents had been former customers of the appellant. In an effort to stop the respondents' conduct and to ensure other traders did not also try to trade off the appellant's reputation and name, the appellant engaged in litigation seeking a declaration from the Court which it could use as evidence of its actions taken to stop the respondents, or, alternatively, a settlement of the matter which would allow it to demonstrate that it had achieved its purpose of stopping the respondents from carrying on their wrongful actions. 6 The short answer, as the respondents point out, is that the appellant did not in any counter offer raise the need of some public vindication of its rights. On the contrary, it said it was looking for a "commercial resolution". 7 In any case, the claim on which the appellant finally succeeded was not an action in rem . It is not as though the appellant succeeded in establishing some public right, as for example as to the validity of a patent. As against the respondents, the proposed undertaking would have been readily enforceable. The loss of the potential use of a judgment or settlement in terrorem against third parties engaging in similar conduct seems theoretical (there is no evidence of any such conduct, whether existing or threatened) and remote from the practicalities of settling the instant litigation. 8 There remains the issue as to what significance is to be given to the fact that the rejection of the Calderbank offer was followed by a successful appeal by the offeree, albeit one which produced an outcome less favourable than the offer. This situation has been considered by a number of decisions of the New South Wales Court of Appeal. Some of these were reviewed in by a five member bench of that Court in Fotheringham v Fotheringham (No2) [1999] NSWCA 21 ; (1999) 46 NSWLR 194. The general effect of that decision is that while an offer of compromise continues to have cost consequences for an appeal ( Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404 at 410), the appellate court retains its own discretion. In the words of Stein JA at [28] (with whom the other members of the Court agreed): by the time Judgment [at trial] comes to be delivered, it will no longer be open to a party to whom an offer of compromise has earlier been directed to accept that offer, it following that, in the event of the Judgment being affected by error, the only means of seeking to have that error corrected which, in the absence of a further offer of compromise, will be open to the recipient of the original offer of compromise, will be by way of appeal. His Honour said (ibid) that the fact that the appeal was upheld was not only relevant to costs but would "in the normal course, justify the relevant court otherwise ordering" for the purpose of the applicable New South Wales Supreme Court rule. The present case arises under the general discretionary power of this Court over costs and not under any rule of Court. Nevertheless, the New South Wales cases provide an important analogy. 10 Here the rejection of the respondents' Calderbank offer was imprudent. I am inclined to think the appellant's approach was affected by unreasonable expectations of success on its copyright claim. On the appeal (and presumably at first instance also) the appellant argued strongly for an award of additional damages under s 115(4) of the Copyright Act 1968 (Cth). It was submitted that additional damages against both respondents should total no less than $50,000 (submissions par 50). At best, the copyright claim was at the very limit of the law. If copyright infringement was not made out, recovery was always going to be for a modest sum. In final submissions on the appeal the appellant did not seek (apart from additional damages) more than the sum awarded, $3,684.20. 11 On the other hand, it is true to say that the appellant had to invoke the appeal process to remedy an erroneous judgment against it. It would not be fair to make an award of costs of the appeal against this successful appellant, still less on an indemnity basis. 12 I will order that the respondents pay the appellant's costs at first instance up to 7 June 2006 (the last rejection of the respondents' offers) on a party and party basis and thereafter the appellant pay the respondents' costs at first instance on an indemnity basis. There will be no order for the costs of the appeal.


case_text: There remains the issue as to what significance is to be given to the fact that the rejection of the Calderbank offer was followed by a successful appeal by the offeree, albeit one which produced an outcome less favourable than the offer. This situation has been considered by a number of decisions of the New South Wales Court of Appeal. Some of these were reviewed in by a five member bench of that Court in Fotheringham v Fotheringham (No2) [1999] NSWCA 21 ; (1999) 46 NSWLR 194. The general effect of that decision is that while an offer of compromise continues to have cost consequences for an appeal ( Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404 at 410), the appellate court retains its own discretion. In the words of Stein JA at [28] (with whom the other members of the Court agreed): by the time Judgment [at trial] comes to be delivered, it will no longer be open to a party to whom an offer of compromise has earlier been directed to accept that offer, it following that, in the event of the Judgment being affected by error, the only means of seeking to have that error corrected which, in the absence of a further offer of compromise, will be open to the recipient of the original offer of compromise, will be by way of appeal. His Honour said (ibid) that the fact that the appeal was upheld was not only relevant to costs but would "in the normal course, justify the relevant court otherwise ordering" for the purpose of the applicable New South Wales Supreme Court rule. The present case arises under the general discretionary power of this Court over costs and not under any rule of Court. Nevertheless, the New South Wales cases provide an important analogy.


case_title: Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404


case_text: The point has arisen in a number of subsequent New South Wales Court of Appeal cases, the most recent being Estate of Virgona v De Lautour (No 2) [2007] NSWCA 323. Ultimately of course the issue remains one for discretionary judgement dependent on the particular circumstances of the case.


case_text: Accepting that there is no reproduction or substantial reproduction of the Weekly Schedule on the hard drives of subscribers' PCs or Media Centres, authorisation does not arise. If there is such reproduction, the facts support the contention that Ice "authorises" the reproduction of the Weekly Schedule by users of the IceGuide within the meaning of s 36 of the Act. It "sanctions, approves and countenances" such activity ( The University of New South Wales v Moorhouse [1975] HCA 26 ; (1975) 133 CLR 1 at 12-13 per Gibbs J and at 20-21 per Jacobs J). Ice encourages use of the IceGuide and is, at best, indifferent as to whether the Weekly Schedule is reproduced on the hard drives of subscribers' PCs or Media Centres ( Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 210 ALR 244). Ice has the power to prevent such reproduction and takes no steps to do so. The actions of Ice are not dissimilar to those of the proprietor of software made available from websites enabling copying and communication of sound recordings ( Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 220 ALR 1).


case_text: The question is one of protection of the relevant skill and labour ( Desktop at [235] per Lindgren J citing Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683 at 697-8). Once sufficient skill and effort have been expended in working out the information and writing it down, the compilation so created is a literary work and protected by copyright. As put by Lindgren J at [238]: ' [t] he relevant principle is that where copyright protection is attracted to a compilation of factual information by the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, reproduction does not require formal resemblance, and the notion of a substantial part of the compilation is not defined by reference to its form.' (emphasis added) It follows that where the relevant skill and labour is referable also to the form of the compilation, the notion of a substantial part of the compilation is also defined by reference to its form. 201 It is not disputed that Nine's employees expend skill and labour in the content and arrangement of the Weekly Schedule in the form in which it is sent to the Aggregators. 202 Nine contends that, once Mr Healy has decided on the order of the programs best to suit Nine's commercial and strategic interests, the time and title information in the Weekly Schedule is, in the words of Lindgren J in Desktop at [21], a "whole of universe case" a case where there was no selection of the subscribers to be included in the directory and where the directory permitted only one mode of arrangement of the factual information and only one mode of expression of the individual entries. In such a case, anyone exploring the same universe would discover the same factual information and would, inescapably, produce a directory relevantly identical in form, as well as in content, to Telstra's (at [22] [24]).


case_text: The history of the section suggests that it was concerned to deter unjustified threats themselves, threats that did not result in infringement proceedings or could not be justified by actual infringement; threats made to ' frighten away competitors or to damage such persons less directly, by threatening to sue their customers or suppliers as joint tortfeasors ' (Ricketson S and Creswell C, The Law of Intellectual Property: Copyright, Designs & Confidential Information (Lawbook Co., subscription service) at [2.195]; Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154 at 159)). It is a right extended to the threatened person not generally available to those threatened with an action for a civil wrong. 233 Section 202 does not specifically provide for a cross-claim in an infringement action, only for the commencement of an action. However, by O 5 r 1(1) of the Federal Court Rules , a respondent: 'may cross-claim against an applicant for any relief to which the respondent would be entitled against the applicant if the applicant were a respondent in a separate proceeding commenced in the Court by the respondent for that purpose.' 234 Ice did not bring its action when the threats were current. Had it brought the action, Nine would have undoubtedly availed itself of the entitlement in s 202(4) of the Act to bring an action for infringement by way of cross-claim. I do not see that Ice would have been precluded from bringing a cross-claim under s 202(1) just because Nine filed its proceedings first. It is important, however, to make it clear that Ice at no time has the right under s 202 to claim for any remedy that is not based upon the threats. To the extent that those threats were directed to Ice, they ceased upon the commencement of proceedings by Nine. Section 202 does not entitle Ice to claim damages resulting from the commencement of these proceedings.


case_text: There are a number of indicia in s 202 that assist in determining the scope of application of the section: • The threat is of an action or proceeding. The action or proceeding cannot have commenced before the threat is made. Once the proceedings for infringement are commenced, the threat no longer exists. • The threat must be unjustifiable, that is the acts in respect of which the complaint is made do not constitute an infringement of copyright. • The words ' threatens ' and ' making the threats ' in s 202(1) are in the present tense. • An action for groundless threats may be commenced by a "person aggrieved", that is, standing to bring the action is not restricted to the recipient of the threat. In Avel Proprietary Ltd v Multicoin Amusements [1990] HCA 58 ; (1990) 171 CLR 88 at 118 McHugh J observed that the evident object of the section is to enable a "person aggrieved" by the threat of legal proceedings to obtain a determination as to whether the activities in respect of which an action or proceeding is threatened are an infringement; it prevents the "Sword of Damocles" hanging over the head of the threatened person ( Avel Proprietary Ltd [1990] HCA 58 ; (1990) 171 CLR 88 at 104 per Dawson J). • The remedies provided for are a declaration that the threats are unjustifiable, an injunction against the continuation of the threats and damages. These remedies relate to the threats and not to any action or proceeding for infringement of copyright. • The remedies are not available if the acts do constitute an infringement of copyright. • Not only is it a defence that the acts constituted infringement, a defendant in an action for unjustifiable threats may counterclaim, effectively as an action for infringement (s 202(4)). • There is no provision for an action or a cross-claim for the unjustified or unjustifiable commencement of an action for infringement of copyright.


case_text: Nine relies on the decisions in which British courts have found infringement of copyright in television or radio guides. In British Broadcasting Company v Wireless League Gazette Publishing Company [1926] 1 Ch 432, the British Broadcasting Company ('BBC') began publishing its own daily programs for the ensuing week each Friday in the Radio Times . The published material gave the day and hour of each performance and certain additional information. The preparation, arrangement and editing of the actual programs involved considerable time, skill and labour, although the preliminary work of fixing the times, engaging the artists and choosing the items had been done some time beforehand. Justice Astbury held that there was copyright in the compilation of the seven advance daily programs from which the defendants selected and deliberately copied items. His Lordship found that the defendants had, by copying the published program listings, infringed copyright in the Radio Times . Justice Astbury observed that there was still infringement where less than the whole of the compilation was taken but did not give this aspect any detailed consideration because there had been "wholesale copying" (at 443). 181 In neither of these two cases was there not only an absence of wholesale copying but also the checking of information against a third party aggregated guide, the checking of a selection of listed items and that selection being of the information for a given entry and the number of entries in the compilation. The cases illustrate that copying is an important factor and that it is a matter of fact and degree to ascertain whether there has been a taking of a substantial part. Each case turns on its own facts. While Independent Television Publications and Wireless League Gazette are examples that have fallen on one side of the line, they are not determinative of these proceedings.


case_text: Where there is skill and labour not only in the obtaining or collection of the material but also in the form of arrangement, or where there may be more than one arrangement of the obtained material, it does not follow that any form of arrangement will infringe. Cambridge University Press v University Tutorial Press (1928) 45 RPC 335 is illustrative of this principle. In Cambridge , there was no infringement of a collection of 13 essays where the collection was included in a later work with an additional seven essays, in different order and with different notes and introductions.


case_text: Nine asserts that copyright subsists in the Nine Schedules as compilation literary works within the meaning of s 10(1) of the Copyright Act 1968 (Cth) ('the Act'). It submits that any doubt as to whether copyright so subsists was extinguished by the Full Court decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 ; (2002) 119 FCR 491. The infringement allegations are founded on the assertion that Ice appropriates the ' skill and labour of authorship ' of Nine in compiling the Nine Schedules by reproducing program time, title and date of broadcast information from the publicly available Aggregated Guides. 6 Nine alleges that the IceGuide includes a close to 100% reproduction of the time and title information in the Nine Schedules, as updated by any late changes and that the activities of Ice in producing and disseminating the IceGuide involve five acts of infringement of the copyright in the Nine Schedules. The second respondent ('Ice Holdings') is said to be jointly liable for those acts of infringement. 7 The allegations are denied by Ice. Ice does not dispute that copyright subsists in the Weekly Schedule. Ice asserts that it did not (and does not) copy the Weekly Schedule in creating and updating the IceGuide. It denies taking all or a substantial part of the Weekly Schedule. It denies that Nine owns independent copyright in components of the Weekly Schedule and submits that other Nine Schedules are not relevant to the proceedings. Ice also seeks leave to file a cross-claim alleging that Nine has made unjustified threats of copyright infringement ('the second cross-claim'). An earlier cross-claim was discontinued.


case_title: Donoghue v Allied Newspapers, Limited [1938] Ch 106

case_text: The originality of a compilation may lie in the selection or arrangement of the information. It also may reflect the skill and labour of gathering the facts. As already noted, in the present case, the Weekly Schedule reflects both. It is only the originality of expression that is relevant, not the originality of the idea the subject of the expression ( Donoghue v Allied Newspapers Limited [1938] Ch 106 at 110 per Farwell J). It must be determined whether the part that is taken is an essential or material feature of the whole work, regarded as a copyright work; that is, ' whether the part or parts taken represent a substantial part of the labour, skill and judgment of the author that made the whole work "original" ' ( Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at [55] per Wilcox and Lindgren JJ). As one should not dissect a work to determine if a part could be protected by copyright standing alone ( Ladbroke at 277 per Lord Reid), so it is inappropriate to dissect the work for the purposes of infringement. The correct approach is to decide whether the work as a whole is protected by copyright and then to determine whether the work or a substantial part of the work as a whole has been taken.


case_text: Where the manner of presentation is the basis for the attraction of copyright, it may be that a presentation of the same information in different form would not infringe ( Victoria Park per Dixon J at 511). In such circumstances there may not have been a taking of a "substantial part", which is assessed by reference to the quantity and the quality of what is taken and the inter-relationship between them ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 87 FCR 415 at [70] per Lindgren J, cited in Gold Peg at [170]). It is a question of fact and degree (Crennan J in Gold Peg at [190]; also emphasised by McHugh and Kirby JJ in dismissing an application for special leave to appeal from the Full Court in Network Ten Pty Limited v TCN Channel Nine Pty Limited [2005] HCATrans 842). A defendant may rework the work of a plaintiff, capturing the ideas used or facts referred to but in a way that does not infringe because it is not a substantial reproduction. It may constitute a new original work. The taking of a substantial part of a copyright work will vary depending on the nature of the work and the degree of originality of the original work ( Skybase at 532 per Hill J, with whom French J agreed). The ' originality of that part of the work taken by the alleged infringer ' is critical ( Desktop at [409] per Sackville J).


case_text: Nine relies on what it describes as the high level of protection in Australia afforded to ' industrious collection [s] of facts ' or ' "sweat of the brow" compilations organised in an orthodox or natural manner (cf the position in the United States of America as outlined in Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340). Nine submits that the preparatory skill of the thinking and the planning and the skill of setting down the program time and title in material form as a compilation are not to be separated. That may be the case where, as in Desktop , the skill and labour was in the collection of the data and the form of the compilation followed from that collection and the nature of the work. It does not follow where the skill and labour of collection of information was preparatory to the further exercise of skill and labour of creation of the arrangement of that information in the Weekly Schedule. Nine's submission also ignores the correct characterisation of the skill and labour employed in the creation of the Weekly Schedule, as the arranging in a single document of not only the order of the programs and their time and title which followed from the creation of the Nine Programming, but also the additional program information and the synopses and the arrangement of the different sets of data. 56 Accordingly: (a) Where sufficient skill and labour is expended in gathering the material for inclusion in the compilation, but not in the form of presentation or arrangement of the material because the form is dictated by the nature of the material, that skill and labour is protected. This was the relevant skill and labour protected in Desktop . (b) Where the form of presentation or arrangement of a compilation is a product of the skill and labour of the author, it is that form that is protected. (c) Copyright subsists in the Weekly Schedule as an original work by reason of both "types" of skill and labour. 57 As I have said, the Weekly Schedule is not issued to the public. It is relevantly sent to HWW, eBroadcast and Pagemasters, the Aggregators who aggregate the information therein with comparable information obtained from other television broadcasters, from 17 (Pagemasters) to 14 (eBroadcast and HWW) days before the start of the broadcast week. The Aggregated Guides are published in: • print (eg, magazine TV Week and newspaper The Sydney Morning Herald ); • online (eg, <yourtv.com.au> ('the YourTV Guide')); • mobile phone content services (eg, the Vodaphone Mobile Phone Guide ); • the Channel 4 Digital Guide ; and • an EPG provided by Foxtel to its subscribers ('the Foxtel Digital Guide').