case_title: Citibank Ltd v Liu [2003] NSWSC 569

case_text: The Court observed that the appellants had not only sued the company but also the third respondent and that circumstance indicated that the appellants sought relief against the third respondent. The Court said at [13]: 'The authorities show that a director of a corporation who acts on its behalf in the course of trade or commerce also acts himself or herself in trade or commerce and, if the corporation is liable under a State Fair Trading Act for their conduct, they also attract primary liability under the same statute: Cleary v Australian Co-operative Foods Ltd (1999) 32 ACSR 701 at [54]-[57]; Lauriana Pty Ltd v Corfield Food Warehouse Pty Ltd, unreported, Supreme Court of Western Australia, Wallwork J, 28 April 1995 at 6 and 22; Citibank Ltd v Liu [2003] NSWSC 569 at [53] and the cases there discussed, and Miba Pty Ltd v Nescor Industries Group Pty Ltd (1996) 141 ALR 525 at 541. That is supported in particular by the provision in s 84(2) of the TPA and s 82(2) of the FTA that conduct engaged in on behalf of a body corporate by a director within the scope of actual or apparent authority is deemed 'also' to have been engaged in by the body corporate. It is not correct, as the case for the third respondent asserted, that the principle recognized in these authorities is applicable only when there is a finding of 'separate conduct' by the director; that is, conduct other than in the capacity of director or agent. It is accepted in J D Heydon, Trade Practices Law, Law Book Company, Sydney, 1989 at 18.350 that corporate officers acting in the course of their employment, or in the scope of their authority as agents causing the corporation to be liable under s 84(2) also have personal liability. It is added there that in normal circumstances such officers will be knowingly concerned in the conduct: s 75B(c).' 287 In Citibank Ltd v Liu [2003] NSWSC 569 , an employee of a corporation (Mr Wong), who was not a director, presented draw down notices to a bank for the purpose of certifying certain matters necessary for a lease to the company. The notices contained false representations which were not known to the employee. In those circumstances, accessorial liability under s 75B of the Trade Practices Act did not attach. However, Hamilton J, in the New South Wales Supreme Court, held Mr Wong liable under s 42 of the Fair Trading Act 1987 (NSW) which is the equivalent of s 10 of the Fair Trading Act (WA) . Hamilton J said at [53]: 'In my view, no difference is made to the application of the principle by the fact that the representor on behalf of a corporation is an employee. The fact that he is an employee does not negative the fact that he is acting as an agent. That the FTA may impose liability on employees acting as such is illustrated by Australian Competition and Consumer Commission v McCaskey [2000] FCA 1037 ; (2000) 104 FCR 8. That was a case under the TPA but, as the conduct involved telephone communications, the provisions bound natural persons as well as corporations. The injunctive orders were made by consent, but French J scrutinised them carefully to see that they were authorised by the Act (see at 21). His Honour made orders against the employee who had engaged in the conduct. In Primcom Pty Ltd v Sgarioto (1994) ATPR (Digest) 46-135, a case under the Victorian FTA, Eames J held an estate agent liable for misleading conduct although his principals selling their own house could not be held liable because not engaged in trade or commerce. The FTA proscribes conduct by natural persons. If that conduct is in trade or commerce and cannot be said not to be misleading conduct of the person who engages in it by reason that that person is acting merely as a conduit, in my view the person is not removed from the purview of the Act by the fact he is engages (sic) in the conduct as the employee of another.' 292 That matter went on appeal. The Full Court of the Federal Court in Arms v Houghton [2006] FCAFC 46 discussed the decisions in Arktos Pty Ltd v Idyllic Nominees Pty Ltd, Citibank Ltd v Liu , and Wong v Citibank and concluded at [38] that there was authority both in the Full Court of this Court and in the Court of Appeal in New South Wales that 'an employee can be found to have engaged in misleading or deceptive conduct for actions taken within the scope of his actual authority; that is, not independently of such authority'.


case_outcome: cited

case_text: The matter went on appeal to the Court of Appeal and is reported sub nomine Wong (as Executor of the Estate of the Late Casey Wong) v Citibank Limited [2004] NSWCA 396. 289 Mr Wong, who died subsequent to the trial, was the general manager of the corporation of which Ms Liu was the principal. His executor appealed against the finding of the trial judge that Mr Wong had breached s 42 of the Fair Trading Act (NSW). The Court of Appeal said at [17]-[19]: 'In the course of his reasons, the trial judge referred to John G. Glass Real Estate Pty. Limited v. Karawi Constructions Pty. Limited (1993) ATPR 41-249, where the Full Court held that an agent (in that case a real estate agent), who had transmitted a false misrepresentation to it by the owner, itself engaged in conduct that was misleading and deceptive. Here, his Honour held that it did not matter that the "agent" was an employee. In support of this proposition, he relied upon the decision of French J in Australian Competition and Consumer Commission v. McCaskey [2000] FCA 1037 ; (2000) 104 FCR 8 where French J made injunctive orders against an employee who had engaged in the misleading and deceptive conduct. Counsel for the appellant submitted that McCaskey was not binding on this Court and was of little persuasive authority in circumstances where the issue as to whether an employee could be liable under s.52 had not been fully argued. He submitted therefore that his Honour erred in placing reliance upon it. Although McCaskey is a first instance authority, French J is an experienced Federal Court judge who, in the Full Court system of that court, sits both at first instance and on appeal. His decision commands respect, and, if the appellant wishes this Court not to have regard to it, an attempt should have been made to establish that his Honour was wrong in some respect or that there was some reason why the case had no application or was irrelevant to the issue under consideration. No such attempt was made. But in any event, his Honour's acceptance that relief could be granted against an employee for breach, in that case of s.52 of the Trade Practices Act , is clearly correct. As a matter of law, an employee acts as agent for the employer. There is no basis in principle why different rules should apply to agents who are appointed in different circumstances. Provided that a party alleging the contravention is able to establish that the agent is liable within the principles state in Yorke v, Lucas , then liability under the section attaches, notwithstanding that the agent in question is an employee acting within authority in the course of employment.' 292 That matter went on appeal. The Full Court of the Federal Court in Arms v Houghton [2006] FCAFC 46 discussed the decisions in Arktos Pty Ltd v Idyllic Nominees Pty Ltd, Citibank Ltd v Liu , and Wong v Citibank and concluded at [38] that there was authority both in the Full Court of this Court and in the Court of Appeal in New South Wales that 'an employee can be found to have engaged in misleading or deceptive conduct for actions taken within the scope of his actual authority; that is, not independently of such authority'.


case_text: In their joint judgment, Carr, Tamberlin and RD Nicholson JJ set out the appellants contentions: ' 7 The first is that the conduct of Mr Price, which was the conduct of Idyllic in this matter, was itself in trade or commerce and attracted primary liability under ss 10 , 77 and 79 of the FTA, because that conduct was misleading. 8 Secondly, the appellants contend that it is no part of a cause of action under those sections that a director or agent engages in misleading conduct "on his own account". 9 Thirdly, the appellants say that the statement of claim adequately raised a cause of action under those sections of the FTA against Mr Price. 10 Finally, the appellants say that, if they do not succeed on their third point, the statement of claim pleaded all the facts found at trial sufficient to sustain a cause of action under ss 10 , 77 and 79 of the FTA against Mr Price and he would have been afforded procedural fairness had judgment been entered against him.' 290 In Arms v WSA Online Limited (ACN 081 121 495) [2005] FCA 943 , the primary judge was concerned with representations made by two employees in the course of their employment of a corporation.


case_title: Arms v Houghton [2006] FCAFC 46

case_text: That matter went on appeal. The Full Court of the Federal Court in Arms v Houghton [2006] FCAFC 46 discussed the decisions in Arktos Pty Ltd v Idyllic Nominees Pty Ltd, Citibank Ltd v Liu , and Wong v Citibank and concluded at [38] that there was authority both in the Full Court of this Court and in the Court of Appeal in New South Wales that 'an employee can be found to have engaged in misleading or deceptive conduct for actions taken within the scope of his actual authority; that is, not independently of such authority'.


case_outcome: considered

case_text: It is not enough for an applicant to merely establish that a corporation has contravened s 52 of the Trade Practices Act and thereby claim that any director of that corporation is liable under s 10 of the Fair Trading Act . There must be a contravention by the director himself or herself. That was made clear by Nicholson J in Caple v All Fasteners (WA) (A Firm) [2005] FCA 1558. In that case, it was alleged that a corporation had contravened s 52 of the Trade Practices Act . It was pleaded that the appellant, who was a director of the corporation but who had not been party to any of the representations which had been made, was accessorily liable under s 75B of the Trade Practices Act and, in the alternative, primary liable under s 10 of the Fair Trading Act . The Federal Magistrate found the appellant was accessorily liable under s 75B of the Trade Practices Act , even though the representations were not made by the appellant. He did not find her liable under s 10 of the Fair Trading Act . On appeal, the respondent filed a notice of contention contending that 'in addition, or in the alternative, to the grounds for liability of the appellant contained in the reasons of his Honour, the appellant is liable to the respondent in relation to her breach (sic) of s 10 of the Fair Trading Act 1985 (WA) as pleaded in the respondent's re-amended statement of claim': at [77]. The respondent relied on this Court's decision in Arktos Pty Ltd v Idyllic Nominees Pty Ltd to support the submission. 298 Nicholson J said at [87]-[89]: 'In Arktos a Mr Price made misleading pre-contractual representations on behalf of a company of which he was a director. It was held that such representations were made both on behalf of the company and in his individual capacity, thereby grounding his direct liability pursuant to s 10 of the Fair Trading Act 1985 (WA) (sic). However, here the appellant, although a director of the company, did not make any representation nor was it pleaded or put to her that she had done so. Further, it was not pleaded or put to her that she had given any authority for any representation to be made on her behalf beyond negotiation of the lease of the premises. Nor was it pleaded or put to her that any agent who acted on her behalf exceeded the agent's actual ostensible authority in circumstances such as to bind her or render her personally liable. I agree with the appellant's submissions. The notice of contention cannot be upheld.'


case_text: There are other decisions of the same effect at first instance; Astvilla Pty Ltd v Director of Consumer Affairs Victoria [2006] VSC 289 ; Miba Pty Ltd v Nescor Industries Group Pty Ltd (1996) 141 ALR 525, particularly at 541; Cleary v Australian Cooperative Foods Ltd (No 2 & 3) (1999) 32 ACSR 701.


case_text: The Court observed that the appellants had not only sued the company but also the third respondent and that circumstance indicated that the appellants sought relief against the third respondent. The Court said at [13]: 'The authorities show that a director of a corporation who acts on its behalf in the course of trade or commerce also acts himself or herself in trade or commerce and, if the corporation is liable under a State Fair Trading Act for their conduct, they also attract primary liability under the same statute: Cleary v Australian Co-operative Foods Ltd (1999) 32 ACSR 701 at [54]-[57]; Lauriana Pty Ltd v Corfield Food Warehouse Pty Ltd, unreported, Supreme Court of Western Australia, Wallwork J, 28 April 1995 at 6 and 22; Citibank Ltd v Liu [2003] NSWSC 569 at [53] and the cases there discussed, and Miba Pty Ltd v Nescor Industries Group Pty Ltd (1996) 141 ALR 525 at 541. That is supported in particular by the provision in s 84(2) of the TPA and s 82(2) of the FTA that conduct engaged in on behalf of a body corporate by a director within the scope of actual or apparent authority is deemed 'also' to have been engaged in by the body corporate. It is not correct, as the case for the third respondent asserted, that the principle recognized in these authorities is applicable only when there is a finding of 'separate conduct' by the director; that is, conduct other than in the capacity of director or agent. It is accepted in J D Heydon, Trade Practices Law, Law Book Company, Sydney, 1989 at 18.350 that corporate officers acting in the course of their employment, or in the scope of their authority as agents causing the corporation to be liable under s 84(2) also have personal liability. It is added there that in normal circumstances such officers will be knowingly concerned in the conduct: s 75B(c).' 299 There are other decisions of the same effect at first instance; Astvilla Pty Ltd v Director of Consumer Affairs Victoria [2006] VSC 289 ; Miba Pty Ltd v Nescor Industries Group Pty Ltd (1996) 141 ALR 525, particularly at 541; Cleary v Australian Cooperative Foods Ltd (No 2 & 3) (1999) 32 ACSR 701.


case_title: Cleary v Australian Cooperative Foods Ltd (No 2 & 3) (1999) 32 ACSR 701


case_text: In Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (No 1) (1988) 39 FCR 546, Lockhart J said at 558-559: 'These decisions support the view that recovery under s 52 is founded by the applicant's actual reliance upon the misleading or deceptive conduct of the respondent although that conduct was not the only factor in the applicant's decision to enter a particular agreement, and although the applicant did not seek to verify the representations or did so inadequately and so failed to discover their falsity. The circumstances of this case do not support the conclusion that Collins Marrickville did not in fact rely upon the misleading conduct of Mr Saade and Henjo. Their conduct not only played some part in contributing to the purchase of the business but was in fact, the major inducement. It matters not that the solicitor's failure to carry out his client's instructions prevented what may or indeed would, more likely than not, have been a different result. The fact is that reliance was placed by the purchaser upon what it assumed to be the true position as a result of the conduct of the vendor and the absence of knowledge of the true facts.' 312 The applicants relied upon the pleaded representations, which I have found to be made out, up to 28 February 2000 and indeed beyond. The respondents' conduct was the inducement for the applicants entering into the agreement to purchase on 29 December 1999 and settling on that agreement on 28 February 2000. It is not the point that Mr Moore did not ascertain the representations were false. His failure to recognise the falsity of the representations was the fault of the respondents who continued to publish the false representations in the Moore 1997, 1998 and 1999 profit and loss statements.


case_text: In my opinion, the applicants were not careless about the way in which they entered into the transaction. Indeed, the evidence is all to the contrary. They employed an accountant and a solicitor to advise. That was appropriate. Even if there was some want of care on their part, which I reject, that would not mean they could not recover. In Henville v Walker [2001] HCA 52 ; (2001) 206 CLR 459 (' Henville v Walker '), Gleeson CJ said at 468: 'It will commonly be the case that a person who is induced by a misleading or deceptive representation to undertake a course of action will have acted carelessly, or will have been otherwise at fault in responding to the inducement. The purpose of the legislation is not restricted to the protection of the careful or the astute. Negligence on the part of the victim of a contravention is not a bar to an action under s 82 unless the conduct of the victim is such as to destroy the causal connection between contravention and loss or damage.' 314 I have already found that the applicants were not poor managers of the business. They worked hard in the business and, as a result, significantly increased the turnover. They were not able to generate significant profits in the business because the business was not capable of making a profit of the kind represented in the brochure or anything near that. There were no external factors which adversely affected the profitability of the business. 315 I have already dealt with the last matter raised by the first, second and third respondents in their defence relating to accessorial liability. 319 The Court has the task of selecting 'a measure of damages which conforms to the remedial purpose of the statute and to the justice and equity of the case': Henville v Walker per Gleeson CJ at [18]. 320 In this case, the representations induced the first applicant to enter into the agreement to purchase the business from the first respondent; to borrow $400,000 upon which it agreed to pay interest; to enter into the lease of the premises for the purpose of carrying on the business; and to incur the transactional costs associated with the purchase, borrowing and leasing. 321 The second applicant was induced by the representations to cause the first applicant to purchase the business and enter into the lease of the premises. That, however, did not cause the second applicant any separate loss or damage. He, however, in reliance upon the representations, gave up his time to work in the business acquired by the first applicant for the purpose of generating the profits it was represented the first applicant could make. 322 The third applicant, in reliance upon the same representations, gave up her paid employment as a teacher to work full time in the first applicant's business. 323 The first applicant claimed the transactional costs to which I have referred in [128]. I find that those were costs associated with the transaction and were losses incurred by the first applicant by reason of the contravention.


case_text: Usually the Court adopts the rate of interest applied by the Supreme Court in the State or Territory in which this Court is sitting: GEC Marconi Systems Pty Ltd v BHP Information Technology Pty Ltd (2003) 201 ALR 55 at 58. I am not aware of that rate and have not been addressed on that issue. I will need to hear the parties. However, the calculation of interest would proceed: ($308,000 x X% x 6.5) + (184 x X% x 3.25) (Where 6.5 years represents the period over which interest will run for transactional and purchase costs and 3.25 years represents the period over which interest will run on the damages awarded for interest paid and X % represents the rate of interest applied in the Supreme Court of Western Australia.) 411 If the second and third applicants are granted leave to amend their statement of claim, damages would have accrued over the same period as the interest component over the first applicant's damages. They would be entitled to interest for half the period. In that case, the respective calculations would be: ($31,518 x X% x 3.25) and ($94,554 x X% x 3.25) 412 The first applicant seeks an order rescinding the lease of the premises. In his closing address, Mr Mendelow repeated the first applicant's call for rescission.


case_text: The lease was entered into before settlement on 28 February 2000. However, it was clearly entered into in contemplation of the purchase of the business. But for the representation contained in the brochure, the first applicant would not have entered into the lease. Rescission is available under s 87 to prevent or reduce loss or damage: Demagogue Pty Ltd v Ramensky (1992) 39 FCR 31. It is necessary to make such an order to prevent ongoing damage to the first applicant. 414 However, it is necessary to hear the parties as to the precise order to be made because any order as to rescission will mean that the business can no longer be carried on on the premises. 415 The second and third applicants may seek leave to amend. If they do they should provide the first, second and third respondents and the Court with a formal minute of the proposed amendment. The applicants should be heard on the rate of interest that ought to be applied for the purpose of a calculation of interest under s 51A of the Federal Court of Australia Act . They should supply a calculation of the amount of interest applicable to the separate awards of damages.


case_text: This is an appeal against a judgment of a Federal Magistrate delivered on 8 July 2008 dismissing an application for judicial review of a decision of the Refugee Review Tribunal ("the Tribunal") handed down on 4 March 2008: see SZMCF v Minister for Immigration and Citizenship [2008] FMCA 939. The Tribunal had affirmed a decision of a delegate of the Minister for Immigration and Citizenship to refuse to grant a protection visa to the appellant. 2 The appellant is a citizen of the People's Republic of China. The appellant entered Australia on 30 January 2007 on a tourist visa. On 9 February 2007 the appellant lodged an application for a protection visa with the Department of Immigration and Multicultural and Indigenous Affairs as it was then known. A delegate of the first respondent refused the application for a protection visa on 30 April 2007. On 31 May 2007 the appellant applied to the Tribunal for a review of that decision. 3 The appellant claimed that he used to run a successful restaurant with a close friend, Mr Min Yun Cao, but in October 2005 the restaurant was closed down and his friend was arrested after an argument between his friend and some Public Security Bureau ("PSB") officials. The appellant paid a bribe to have his friend released in December 2005. He went into debt because he was forced to borrow money to pay the bribe. 4 The appellant stated that, in order to earn money, they went to work in a coal mine in July 2006. On 26 November 2006, there was an explosion in the coal mine, resulting in the death of 8 people and the injury of others. The appellant was employed at in the mine at the time but was not working when the explosion occurred. He was not paid as most of the owners fled. In December 2006 he and Mr Cao organised coal miners to approach various government agencies, to ask them to investigate and take action against corrupt officials and the coal mine owners, to provide compensation to the victims of the explosion and to pay the money owed to the workers. On 22 December 2006 the appellant and Mr Cao organised about 200 coal miners to attend a protest in front of a government building, but the protest was quickly suppressed by armed police and more than 20 people, including the appellant, were arrested. 5 The appellant claimed that he was subjected to torture whilst in detention, and forced to write a statement promising not to make any more trouble for the government. He was released on 31 December 2006, but was regarded as a political dissident and had to report to the local police station weekly and was often questioned by the police. Mr Cao, who was not arrested during the demonstration, went to Beijing. The appellant managed to travel to Beijing in late January 2007 and, with the help of Mr Cao, who had arranged for him to leave the country as part of a tour group, was able to leave China. 15 The third ground read: "The Tribunal made its finding based on completely incorrect information; and my evidences have completely been misstated by it. In particulars, I have never given the information that I am a dissidents on wanted lists . But, the Tribunal still made its finding based on the information that a person, who is on wanted list, would not be able to leave China on a passport in his own name." 16 The fourth ground read: "The Tribunal's finding was contradictory. In particulars , on one hand the Tribunal has stated that The Tribunal is aware from reliable country information that bribery is commonplace in China (PRC) though frowned on officially. But, on the other hand, the Tribunal has in fact believed that the Chinese government system is lawless, airtight and unquestionable. So it is impossible for me or my wife or my friend to get me out of the country through bribery." 17 The fifth ground read: "The Tribunal failed to consider my evidences fairly. In particulars, it is definitely not the case that I raised the new claim in relation to my departure through bribery."


case_text: The nature and extent of native title 35 - 38 1. Introduction 1 In interim reasons for judgment ( Rubibi Community v State of Western Australia (No 5) [2005] FCA 1025) ('the interim reasons') I determined that: (a) the Yawuru community is a recognisable body of persons united in and by traditional laws and customs which, since sovereignty, have constituted the normative system under which the native title rights and interests in issue in the present case are being claimed ([366]-[369]); (b) under the traditional laws and customs acknowledged and observed by the Yawuru community, native title rights and interests in relation to the claim area are possessed by the Yawuru community which, by those laws and customs, has a connection with land and waters that are situated within that area ([370]-[376]); and (c) the rights and interests possessed by the Yawuru community are communal native title rights and interests ([376]). 2 The key findings in the interim reasons that are relevant for present purposes may be summarised as follows. (a) The Yawuru community ([366]) 3 The present Yawuru community, as generally defined in the genealogies before the Court, is a recognisable body of persons who are likely to be descendants, on an ambilineal or cognatic basis, of members of the Yawuru community at the time of colonial contact and therefore at the time of sovereignty. The genealogies before the Court support an inference of continuity of the Yawuru community that existed at the time of sovereignty through to the present time. As the definition of the Yawuru community, based on ambilineal or cognatic descent, is in accordance with the traditional laws and customs of the Yawuru community, it follows that the present Yawuru community is one whose members are descended from the members of the Yawuru community at sovereignty in accordance with traditional laws and customs. (b) Traditional laws and customs ([367]-[369]) 4 The source of the Yawuru community's traditional laws and customs, which include the laws and customs known as the southern tradition, is the Bugarrigarra . The holding, passing on and receiving of the Yawuru community's traditional knowledge and law has been in accordance with the southern tradition. The southern tradition formed part of the traditional laws and customs of the Yawuru community at sovereignty and is still acknowledged and accepted by the Yawuru community as governing all aspects of the traditional life of the community. In the interim reasons, I made findings concerning the role in the Yawuru community of the traditional laws and customs relating to rai , the Yawuru language, the skin section system, kinship, malinyanu laws and customs, traditional stories, bush names, hunting, bush foods, looking after country, speaking for country, increase sites and permission requirements. When considered cumulatively, the evidence in relation to those matters demonstrated that the present Yawuru community still acknowledges and observes the traditional laws and customs which, since sovereignty, have constituted the normative system under which the native title rights and interests in issue are being claimed. 5 Changes that have occurred over time to the traditional laws and customs of the Yawuru community are of a kind contemplated by those laws and customs and have not been such as to result in those laws and customs no longer being properly characterised as traditional. More specifically, the changes or adaptations to those laws and customs are not of a kind that would result in the native title rights and interests asserted not being possessed under the traditional laws and customs acknowledged and observed by the Yawuru community. 6 While there may have been an evolution of traditional laws and customs, the Yawuru community observes a body of traditional laws and customs which have normative content and which have continued in existence from prior to the time of sovereignty to the present time. Those laws and customs have plainly been transmitted from generation to generation, find their origins in pre-sovereignty norms and, notwithstanding their evolution over time, have had a continuous existence and vitality since sovereignty.


case_text: In Rubibi Community v The State of Western Australia [2001] FCA 607 (' Rubibi '), which concerned the Yawuru community's claim to the law ground at Kunin, the evidence concerning the Djugan led me to conclude (at [99]) that 'at least in relation to their traditional connection to Kunin, the Djugan people are a subgroup of the Yawuru people'. At the hearing in this proceeding, which related to the establishment of native title in the Yawuru claim area, a considerably greater body of evidence was adduced in relation to the Djugan. An aspect of that evidence was that, unlike the Yawuru who practiced the southern tradition, the Djugan practiced the northern tradition. In the interim reasons I made certain observations (at [55]-[61] and [79]) about the two traditions practiced in the claim area: '55. Two legal traditions, which lay down "the law", are claimed to be applicable in Yawuru country. Each of the traditions involves the creation of the world by mythological creatures or heroes who gave the people their "law", waterholes (soaks or jilas ), "law grounds", songs, "skin sections" and languages. Patrick Dodson outlined the path of the southern tradition in the Yawuru claim area in a restricted exhibit. The southern tradition is "the law" that is generally practiced by the Yawuru, Karajarri, Nyangumarta, Nygina and Mangala people. The northern tradition is generally practiced by the Bardi, Nyul Nyul, Jabirrr Jabirrr and Nyambal people. The southern tradition (southern law) may be referred to in Yawuru country as the Yawuru law. The northern tradition is often called Bardi law. The "law bosses" for the southern tradition in Yawuru country are Felix Edgar, Frank Sebastian (Gajai), Francis Djiagween (Lulga), Joseph "Nipper" Roe and Patrick Dodson. The "law bosses" for the northern tradition in Yawuru country were said to be Joseph Roe, Richard Hunter and Phillip Hunter. 56. The two traditions are kept separate. Joseph Roe said that the laws sit side by side without overlapping because "Bugarrigarra make them like that, we're just following Bugarrigarra." 57. While the Bugarrigarra and many of the basic rituals, customs and laws it prescribes are common to the northern and southern traditions, the two mytho-ritual traditions differ in their origin, being the journeys and undertakings of the mythological creators of the respective traditions. However, support for the claim of the Yawuru claimants that both traditions were observed in the same country is to be found in R Piddington's article, which contains observations about the initiation ceremonies under both traditions in the country of the Karajarri people, which is to the south of the Yawuru claim area. (R Piddington, "Karadjeri Initiation", Oceania , vol 3, no 1, 1932, p 46) 58. Men can go through both northern and southern law. Gajai said "[i]t has always been okay for a man to go through more than one law...The two laws don't mix but they are respected in this country." Patrick Dodson said "[i]t's not a unusual thing for a Yawuru man to go through northern law." Yawuru community members who have been through both laws include Lulga and Patrick Dodson's grandson (by "skin" and nephew by blood), Sooty Pigram. Several men who are now deceased, have also been through both laws, namely Paddy Djiagween, Bandak Bernard, Peter Kajit, Johnny Peters, and Stanley Djiagween, as well as Lulu and Paul Sampi. 59. Paul Sampi, a senior Bardi "law man", described how the northern tradition of "law" travels along two paths. The first path, Ungui , which is the first stage of "law", travels down from Bardi country along the east coast of the Dampier Peninsula from Swan Point to the mouth of the Fitzroy River at Langey Crossing, then west to Garawan and then to Willie Creek. From there, it travels back to the east to Garawan and then north to La Djardarr Bay. The other part, Ululong , the second stage of "law", travels down along the west coast of the Dampier Peninsula from Swan Point through to Wapunu in Karajarri country. Paul's evidence was that, after World War Two, Bardi men, who were living and working in Broome and wanted to be able to practice Bardi law in Yawuru country, asked permission of the Yawuru "law men" to start Ululong at Four Mile. Paul was living in Broome in 1949 and, as he had been through Ungui , was able to go through the second stage of the southern law. He says that "[i]n those days people went through both law[s]." 60. There is also a third tradition, which starts at Bilinnguru (Hidden Valley) in Yawuru country and goes out into the desert. This tradition is like a "song line" and is known as the Wanji or Dingarri . Peter Clancy, a Mangala man who gave evidence about the Wanji , stated that it speaks "Yawuru language in Yawuru country, Karajarri language in Karajarri country, and Mangala language in Mangala country. I know the songs for the Wanji right through." 61. There was some confusion as to how the Yawuru claimants relied upon the northern tradition in making out their case. Ultimately, they accepted that the normative system upon which they relied was the southern tradition, but they claimed that under that tradition there was a recognition and acceptance of the overlapping role played by the northern tradition in the Yawuru claim area. ... 79. ... The evidence referred to above establishes that, on balance, "the law" is still acknowledged and observed, notwithstanding that many of the rituals of "the law" are no longer practiced. Fundamentally, "the law", as laid down by the southern tradition, remains "the law" that is acknowledged and accepted by the Yawuru community as governing all aspects of its traditional life.'


case_outcome: applied

case_text: In Rubibi Community v The State of Western Australia [2001] FCA 607 (' Rubibi '), which concerned the Yawuru community's claim to the law ground at Kunin, the evidence concerning the Djugan led me to conclude (at [99]) that 'at least in relation to their traditional connection to Kunin, the Djugan people are a subgroup of the Yawuru people'. At the hearing in this proceeding, which related to the establishment of native title in the Yawuru claim area, a considerably greater body of evidence was adduced in relation to the Djugan. An aspect of that evidence was that, unlike the Yawuru who practiced the southern tradition, the Djugan practiced the northern tradition. In the interim reasons I made certain observations (at [55]-[61] and [79]) about the two traditions practiced in the claim area: '55. Two legal traditions, which lay down "the law", are claimed to be applicable in Yawuru country. Each of the traditions involves the creation of the world by mythological creatures or heroes who gave the people their "law", waterholes (soaks or jilas ), "law grounds", songs, "skin sections" and languages. Patrick Dodson outlined the path of the southern tradition in the Yawuru claim area in a restricted exhibit. The southern tradition is "the law" that is generally practiced by the Yawuru, Karajarri, Nyangumarta, Nygina and Mangala people. The northern tradition is generally practiced by the Bardi, Nyul Nyul, Jabirrr Jabirrr and Nyambal people. The southern tradition (southern law) may be referred to in Yawuru country as the Yawuru law. The northern tradition is often called Bardi law. The "law bosses" for the southern tradition in Yawuru country are Felix Edgar, Frank Sebastian (Gajai), Francis Djiagween (Lulga), Joseph "Nipper" Roe and Patrick Dodson. The "law bosses" for the northern tradition in Yawuru country were said to be Joseph Roe, Richard Hunter and Phillip Hunter. 56. The two traditions are kept separate. Joseph Roe said that the laws sit side by side without overlapping because "Bugarrigarra make them like that, we're just following Bugarrigarra." 57. While the Bugarrigarra and many of the basic rituals, customs and laws it prescribes are common to the northern and southern traditions, the two mytho-ritual traditions differ in their origin, being the journeys and undertakings of the mythological creators of the respective traditions. However, support for the claim of the Yawuru claimants that both traditions were observed in the same country is to be found in R Piddington's article, which contains observations about the initiation ceremonies under both traditions in the country of the Karajarri people, which is to the south of the Yawuru claim area. (R Piddington, "Karadjeri Initiation", Oceania , vol 3, no 1, 1932, p 46) 58. Men can go through both northern and southern law. Gajai said "[i]t has always been okay for a man to go through more than one law...The two laws don't mix but they are respected in this country." Patrick Dodson said "[i]t's not a unusual thing for a Yawuru man to go through northern law." Yawuru community members who have been through both laws include Lulga and Patrick Dodson's grandson (by "skin" and nephew by blood), Sooty Pigram. Several men who are now deceased, have also been through both laws, namely Paddy Djiagween, Bandak Bernard, Peter Kajit, Johnny Peters, and Stanley Djiagween, as well as Lulu and Paul Sampi. 59. Paul Sampi, a senior Bardi "law man", described how the northern tradition of "law" travels along two paths. The first path, Ungui , which is the first stage of "law", travels down from Bardi country along the east coast of the Dampier Peninsula from Swan Point to the mouth of the Fitzroy River at Langey Crossing, then west to Garawan and then to Willie Creek. From there, it travels back to the east to Garawan and then north to La Djardarr Bay. The other part, Ululong , the second stage of "law", travels down along the west coast of the Dampier Peninsula from Swan Point through to Wapunu in Karajarri country. Paul's evidence was that, after World War Two, Bardi men, who were living and working in Broome and wanted to be able to practice Bardi law in Yawuru country, asked permission of the Yawuru "law men" to start Ululong at Four Mile. Paul was living in Broome in 1949 and, as he had been through Ungui , was able to go through the second stage of the southern law. He says that "[i]n those days people went through both law[s]." 60. There is also a third tradition, which starts at Bilinnguru (Hidden Valley) in Yawuru country and goes out into the desert. This tradition is like a "song line" and is known as the Wanji or Dingarri . Peter Clancy, a Mangala man who gave evidence about the Wanji , stated that it speaks "Yawuru language in Yawuru country, Karajarri language in Karajarri country, and Mangala language in Mangala country. I know the songs for the Wanji right through." 61. There was some confusion as to how the Yawuru claimants relied upon the northern tradition in making out their case. Ultimately, they accepted that the normative system upon which they relied was the southern tradition, but they claimed that under that tradition there was a recognition and acceptance of the overlapping role played by the northern tradition in the Yawuru claim area. ... 79. ... The evidence referred to above establishes that, on balance, "the law" is still acknowledged and observed, notwithstanding that many of the rituals of "the law" are no longer practiced. Fundamentally, "the law", as laid down by the southern tradition, remains "the law" that is acknowledged and accepted by the Yawuru community as governing all aspects of its traditional life.' 32 However, it does not follow that the Djugan and the Yawuru each possessed their own discrete communal native title rights and interests at and since sovereignty in respect of the northern and southern areas respectively. The entitlement of different groups to communal native title was considered by the Full Court in Northern Territory of Australia v Alyawarr, Kaytetye, Warumungu, Wakaya Native Title Claim Group [2005] FCAFC 135 ; (2005) 145 FCR 442 (' Alyawarr ') at 466-475 [78]-[112]. The Full Court, after citing a number of cases, observed that members of a 'community' may possess communal native title rights and interests, albeit that they are 'intramurally allocated' to different groups or subsets of the community. Although each of the cases cited by the Full Court turns on its own facts, their Honours (at 475 [112]) accepted that the evidence of 'extensive connections' across the claimant groups supported the primary judge's characterisation of those groups as 'one native title holding community' that had the necessary connection with the land in the claim area 'at a communal or claim group level'. 33 Accordingly, it is necessary to consider the totality of the evidence concerning the Djugan and the Yawuru in order to determine whether, notwithstanding their cultural and other differences at and since sovereignty, the Djugan and the Yawuru are one native title holding community that had the necessary connection with Yawuru 'country' at a communal level. 34 Extensive evidence was adduced to the effect that Yawuru 'country' included the northern area. The evidence, which included the views of senior law men and women, was not seriously challenged. The evidence of senior law men from 'country' adjacent to the claim area and the evidence adduced as to the views of senior Yawuru law men and women was that Yawuru 'country' consisted of the southern and the northern areas. Peter Clancy, a senior Mangala law man regarded the northern area as being within 'Yawuru Country because the old people told me'. A senior Nyangumarta law man stated that the shared law that comes from the Bugarrigarra included 'the whole lot of that country up to Willie Creek'. Evidence adduced as part of the Walman Yawuru case was also to the effect that 'Mimi', a senior Yawuru law woman who lived in Broome up to the 1950s, had claimed that Yawuru country included Broome and extended up to Willie Creek.


case_text: Subject to the possible exception referred to above, I am satisfied that, generally, the evidence supports the inference contended for by the Yawuru claimants of exclusive possession and occupation of the Yawuru claim area (excluding the intertidal zone) where there has been no extinguishment. However, for the reasons given by French J in Sampi on behalf of the Bardi and Jawi People v Western Australia [2005] FCA 777 at [1072] , the right should be limited to exclusive possession and occupation and should not extend to the broader concepts of 'use and enjoyment'. I also agree with his Honour that the right claimed to 'speak for' the land and to make decisions about its use and enjoyment by others is also subsumed in the global right of exclusive possession and occupation.


case_text: In paras 1.1.3.1 and 1.1.3.2 of his thesis, Hosokawa stated: ''1.1.3 Local groups and dialects of Yawuru 1.1.3.1 Local groups Although the distinction between local subgroups of Yawuru is virtually defunct today, the following names of local groups, which were probably based on patrilineal clans, have been elicited (from information provided by [Lulu], Jacky Edgar and [Susie Gilbert's husband]): ... dyukun (Jukun) north-west coast of Broome, around Cable Beach area minydyirr minynyirr (Minyjirr) Broome township area walman (Walman) Fisherman's Bend area up to Crab Creek marangana marangan (Marangana) north-eastern inland (Derby side) kardarru (Kadarru) (south-)eastern inland marrmarrmanyurdany (Marrmarrma) south of Crab Creek area burrany (Burrany) coastal area north of Thangoo dyulbayi (Julbayi) area around Thangoo k*arraldyunu (Garraljunu) south of Thangoo lankandyunu (Lankanjunu) southernmost of the Yawuru country birrmanan (Birrmanan) south-eastern side (bordering Nyikina country) and a few others (without designation) in the eastern inland region. Of these local group names only Jukun and Yawuru appear in the linguistic literature. Although there seems to be some confusion among informants as regards the distinction between Jukun and Minyjirr (or Minynyirr, Minyirr), it is surmised that Jukun is the name for the people originally inhabiting the area around the Cable Beach area (north-west of Broome), while Minyjirr refers to the area around rubibi (or Kennedy Hill in the north-east, within the Broome township) and the people in that area. Jukun, Minyjirr and Walman groups and their language are jointly called "Big Yawuru" by Julbayi informants, while the Julbayi people call themselves "Small Yawuru". The latter folk category also encompasses Garraljunu and Lankanjunu groups in addition to Julbayi. When Aboriginal people in Broome today (1.3.2) mention the name "Yawuru", it usually refers to the "Small Yawuru" groups. Those may be designated in geographical terms as Southern Coastal Yawuru. 1.1.3.2 Dialects There seem to be three principal regional dialects of the Yawuru language: 1) Jukun (Djugan) (or Northern), spoken by Minyirr, Jukun and Walman groups; 2) Julbayi (Djulbayi) (or Southern Coastal), spoken by Julbayi and other coastal groups including Burrany, Garraljunu, Lankanjunu and possibly Marrmarrma; 3) Marangan (or Eastern Inland), spoken by Marangana, Kardarru and other inland groups.' 59 In a footnote, Hosokawa explained the other information he received concerning the distinction between 'Minyjirr' and 'Jukun': 'Other versions of the information are as follows: (1) Jukun is the language name and Minyjirr is the name for the people. Such division in language/tribe nomenclature, however, is rather unusual in the region; (2) Jukun refers to the language/people and Minyjirr is a specific place name in the Jukun country (namely, Gantheaume Point); (3) Jukun and Minyjirr are mutually interchangeable synonyms (no explanation provided as to possible differences at connotative level). According to [Lulu] (p.c. in 1986), the northern boundary of the Jukun country is Willie Creek, north of Cable Beach; from there up to Quondon Point is the Ngumbarl country (1.2.1), although Jukun people often had fishing camps there.' 60 In another footnote Hosokawa explained 'big' and 'small' Yawuru: 'The exact connotation of "big" and "small" in the folk nomenclature is unclear, but the adjective "big" seems to have some sort of negative evaluation. Nyikina also distinguishes between "Big Nyikina" and "Small Nyikina" (Stokes 1982, Hudson & McConvell 1984). Interestingly, it is the Small Nyikina (westernside) people who designate themselves as "small" (autonym) and call the eastern group "big" (exonym).' 119 In conclusion, the evidence and findings to which I have referred support a finding of the existence of the rights claimed by the Yawuru claimants as set out in [111] save that the references to use and enjoyment are to be deleted. Also, the proposed determination of the Yawuru claimants does not state the purposes for which the resources of the land and waters in the claim area, including the intertidal areas, may be accessed and used: cf Sampi v Western Australia (No 3) [2005] FCA 1716. I doubt that it is contended that the purposes are to be unlimited or are to extend to a general right of commercial exploitation. In the circumstances, it is desirable that the Yawuru claimants address that issue. 120 I would add that, apart from the fact that the rights claimed in the intertidal zone are not exclusive and are necessarily more limited than the rights claimed in the land areas, I see no proper basis for otherwise distinguishing between the native title rights and interests in that zone and in the land. No such distinction was drawn in the evidence or in the traditional laws and customs acknowledged and observed by the Yawuru community. 121 As there will be some issues as to how the final determination should reflect my findings and conclusions, I propose to afford the parties an opportunity of making further submissions on that matter. There also remains for determination the issues the parties still propose to press in relation to extinguishment, as well as any issues arising out of these reasons. I propose to give directions for an early determination of all of those issues. I certify that the preceding one hundred and twenty one (121) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Merkel. Associate: Dated: 13 February 2006 Counsel for the Applicants: Mr K Bell QC with Mr G Irving and Mr A Firth Solicitor for the Applicants: Mr I Irving of the Kimberley Land Council Counsel for the State of Western Australia: Ms R Webb QC with Mr B King Solicitors for the State of Western Australia: Crown Solicitor for the State of Western Australia Counsel for the Commonwealth of Australia: Mr P Quinlan with Mr A Rorrison Solicitors for the Commonwealth of Australia: Australian Government Solicitors Counsel for the Western Australian Fishing Industry Council (Inc): Mr G Hiley QC with Mr M McKenna Solicitors for the Western Australian Fishing Industry Council (Inc): Hunt and Humphrey Counsel for the Walman Yawuru Respondents: Mr I Viner QC Appearing as a representative of the Walman Yawuru Respondents: Ms R Hanigan Solicitor for Shire of Broome: Mr P Wittkuhn of McLeods Dates of hearing: 12, 13, 14, 15, 16, 17, 18, 19, 20, 21 May 2003; 3, 4, 5, 6, 9, 10, 11, 12, 13 June 2003; 27, 28, 29, 30, 31 October 2003; 3, 4, 5, 6, 7, 10, 11, 12, 13, 14 November 2003; 14, 15, 16, 17, 18 June 2004; 27, 28, 29, 30 September 2004; and 1, 4, 5, 6, 7 October 2004. Date of Interim Reasons: 29 July 2005 Date of these further Reasons: 13 February 2006 SCHEDULE APPLICANTS: CORPUS, Michael DJIAGWEEN, Cecilia DJIAGWEEN, Francis DODSON, Patrick EDGAR, Elsie EDGAR, Felix HUNTER, Richard ROE, Joseph ROE, Joseph 'Nipper' ROE, Teresa SADDLER, Thelma SEBASTIAN, Frank RESPONDENTS: 01 Government Interests State of Western Australia Aboriginal Affairs Department Aboriginal Lands Trust Commissioner of Main Roads Electricity Corporation Minister for Aboriginal Affairs Minister for Energy Minister for Fisheries Minister for Lands Minister for Mines Minister for Transport Minister for Water Resources State of Western Australia 02 Government Interests Commonwealth of Australia Airservices Australia 02A Government Interests Commonwealth of Australia Commonwealth of Australia 02A Government Interests Local Government Shire of Broome 04 Indigenous Interests Bilgungurr Aboriginal Corporation Kimberley Land Council MATSUMOTO, Peter ROBINSON, Margaret Mary ROE, Edward Leonard 05 Mining Interests CONNOLLY, Peter Scott COUNTY, Brian Stanley Maple Oil Exploration NL (Administrators Appointed) (Receivers and Managers Appointed) 06 Pastoral Interests CROOK, Reginald D Thangoo Pty Ltd (Thangoo Station) 07 Telecommunications Industry Interests Telstra Corporation Limited 08 Tourism Interests Broome Crocodile Park Cable Beach Jet Boat Charter Dampier Creek Boat Tours Kimberley Birdwatching The Kimberley Connection Pty Ltd 09 Fishing Interests Australian Ocean Exporters Pty Ltd BLATCHFORD, Kevin Broometime Charters CANNEY, Pam FRASER, Alan John IGNOTI, Les IGNOTI, Peter IGNOTI, Russell Kimberley Fish and Ice Supplies Lenden Nominees Pty Ltd Leveque Wilderness Fishing Charters LEW, Ian LITTLETON, Kyran R MOORE, Gary NEWTON, Ross Pearl Coast Charters Pearl Sea Coastal Cruises WEIR, Neville 09A Fishing Interests Western Australian Fishing Industry Council (Inc) 10 Pearling Interests Australian Sea Pearls Pty Ltd Broome Pearls Pty Ltd Cygnet Bay Pearls Paspaley Pearling Company Pty Ltd Pearls Pty Ltd Roebuck Pearl Producers Pty Ltd Willie Creek Pearl Farm and Broome Coachlines 11 Petroleum Interests E-Com Multi Limited 12 Non Party (For Information Only) National Native Title Tribunal AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/2007.html


case_text: Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp & Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577).


case_text: Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp & Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 182 Although I have found that the respondent made conscious use of the applicant's new 4 in 1 bucket and has consciously copied components of the bucket, the court must be satisfied that the respondent reproduced each of the applicant's drawings or a substantial part of them. The test of reproduction is whether there is a sufficient degree of objective similarity between the applicant's drawings and the respondent's drawings ( Francis Day & Hunter Ltd v Bron [1963] Ch. 587 at p 614 per Wilmer LJ; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ; CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 ; (1999) 44 IPR 512 [52] per Merkel J). The question of what amounts to substantial reproduction in any case is not capable of precise definition and is a matter of fact and degree ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at p 473 per Lord Evershed). The question of reproduction is a separate question from causal use and causal copying although the two overlap ( Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ [27]).


case_title: Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49


case_title: University of London Press v University Tutorial Press [1916] 2 Ch 610


case_title: Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231


case_title: Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371


case_text: Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp & Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 237 The protection afforded by s 77(2) of the Copyright Act applies only when a respondent reproduces the applicant's work 'by applying that or any other corresponding design to an article' . An article means any article of manufacture [231] ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461. The process of application by the respondent of a corresponding design inherent in the applicant's artistic work involved a particular process. The respondent brought into existence a two-dimensional drawing representing a substantial reproduction of the applicant's work. That two-dimensional reproduction was used by the respondent to enable it to apply the corresponding design in the applicant's drawing to an article of manufacture. The applicant contends that the step of making a two-dimensional drawing which is a reproduction of the applicant's relevant work is not susceptible of protection under s 77(2) ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (supra) at 474; Shacklady v Atkins (1994) 30 IPR 387 at 393; CIPEC v First Melbourne Securities Pty Ltd (supra) at 530), because the statutory immunity applies only in relation to the application of a corresponding design to articles of manufacture. The two-dimensional drawings of the respondent are not articles of manufacture. If this contention has force, it gives rise to a counter-intuitive anomaly of a respondent being free to apply the applicant's industrially applied corresponding design to articles of manufacture yet being constrained by infringement of copyright in the applicant's artistic work in making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture. 238 The authorities mentioned above which are said to support the notion that making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture is not an infringement of the copyright in the artistic work, require brief examination. In CIPEC v First Melbourne Securities , Merkel J acknowledged that it was common ground between the parties that s 77(2) only applies to three-dimensional reproductions of the drawings in suit and, 'Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393' . Accordingly, there was no controversy about the question between the parties and no contradictor to the proposition that s 77(2) might extend to provide immunity in respect of the two-dimensional drawing. In Shacklady , Davies J accepted that the defence in s 77 'merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially' . That assumed position was adopted by Davies J in response to a submission that s 77 did not apply in the circumstances of the case because Mr Shacklady's right to enforce his copyright was influenced by a transitional period between the statutory regimes arising out of re-enactment of particular provisions taking effect from 1 October 1990 and one issue was the operation of the section in relation to past events in circumstances where, nevertheless, articles to which the corresponding design had been applied were sold after the commencement of the new provisions. Notwithstanding that contextual question, it is clear that Davies J proceeded on the footing that the immunity provided by s 77(2) only operates in relation to three-dimensional reproductions brought about by application of an industrially applied corresponding design. In Amalgamated Mining v Warman (supra), the facts involved both production of an infringing two-dimensional plan used as a step along the way to application of a corresponding design and use of the applicant's two-dimensional artistic work itself to make the two-dimensional infringing plan used as a step along the way. Nevertheless, Wilcox J accepted that s 77 only provided an immunity, relevantly, in relation to acts 'within the scope of the copyright in the corresponding design' being the aggregate of things that the registered owner of a design would have the exclusive right to exercise. Therefore, s 77 'does not include a sheet of paper whose only function is to carry the design. It follows that the subsection has no application to plan to plan copying. The doing of such a thing is not an infringement of the monopoly in the registered design; it is not "within the scope of the copyright" or "monopoly" "in the corresponding design".' 240 On the face of s 77(2) , the immunity is one from infringement of the reproduction right in the work expressed by applying a corresponding design to an article which having regard to s 74 is a design that 'when applied to an article , results in a reproduction of [the] artistic work'. Since the term 'design' for the purposes of the term 'corresponding design' must be understood having regard to the definition in the Designs Act 1906, the relevant reproduction seems logically to be confined to features capable of being judged in the finished article , that is, three-dimensional reproduction. Section 74 itself contemplates a resultant reproduction of the work by application of the design to an article . Although a construction of the provisions which avoids the frustration or partial frustration of the conferral of an immunity from copyright infringement in the application of a corresponding design industrially applied by the copyright owner, to articles of manufacture, has considerable merit, the court in CIPEC, Shacklady and Warman has accepted that the scope of the immunity does not extend to the two-dimensional infringing plan produced as a step along the way. Moreover, the Parliament intervened in a way which the respondent describes as merely declaratory or clarifying of the true prevailing position in any event so as to eliminate what is only an apparent anomaly, by introducing s 77A into the Copyright Act by s 14 of the D (CA) A 2003 which, subject to the terms of the section to be discussed shortly, in principle, provides that no infringement of copyright in the artistic work arises out of reproduction of the work derived from a three-dimensional product that embodies a corresponding design in relation to the artistic work. Accordingly, making a two-dimensional drawing from a three-dimensional product embodying the corresponding design is not an infringement of the reproduction right of the copyright owner in the artistic work. The Explanatory Memorandum for the Designs (Consequential Amendments) Bill 2002 before the House of Representatives at clause 46, provides: ' Sections 75 and 77 permit three-dimensional products to be reproduced without infringing copyright in an artistic work that relates to the design. However, a practical problem arises from the fact that it is not permissible to produce either a plan or drawing, or possibly a mould from which the product is made. That is, a drawing or plan made in the course of manufacturing non-infringing three-dimensional products may infringe copyright in the original drawing or plan. Unless such indirect copying in the course of manufacture is permissible, the legislative purpose of avoiding dual copyright and design protection for three-dimensional products may be frustrated.' 241 It seems to me that the only conclusion open to me is that s 77(2) in the period 2 December 2003 to 17 June 2004 did not operate so as to provide the respondent with an immunity from copyright infringement in relation to the applicant's artistic works reproduced by making a two-dimensional drawing as a step along the way to industrial application of a corresponding design (where applicable) to articles of manufacture reflecting the features of shape in the finished article.


case_text: Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp & Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 182 Although I have found that the respondent made conscious use of the applicant's new 4 in 1 bucket and has consciously copied components of the bucket, the court must be satisfied that the respondent reproduced each of the applicant's drawings or a substantial part of them. The test of reproduction is whether there is a sufficient degree of objective similarity between the applicant's drawings and the respondent's drawings ( Francis Day & Hunter Ltd v Bron [1963] Ch. 587 at p 614 per Wilmer LJ; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ; CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 ; (1999) 44 IPR 512 [52] per Merkel J). The question of what amounts to substantial reproduction in any case is not capable of precise definition and is a matter of fact and degree ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at p 473 per Lord Evershed). The question of reproduction is a separate question from causal use and causal copying although the two overlap ( Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ [27]). 190 In the context of these observations, the following remarks of Lindgren J in Eagle Homes v Austec Homes (supra) concerning the role a finding of conscious copying plays in aiding the determination of the question of reproduction apply in the present case. The observations are these: '[91] ...In no case concerning project homes of which I am aware, where there has been such a finding of actual copying, has it been held that nonetheless the copier will not have infringed copyright unless there is in addition an extraordinarily close resemblance between his or her drawing and the copyright work. Rather, I think that the issue of sufficient objective similarity simply poses in the case of project homes, as in other cases, the usual question whether the copyright drawing can still be seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has adopted the "essential features and substance" of the copyright work Hanfstaengl v HR Baines & Co Ltd [1895] AC 20 at 31 [Lord Shand]. [92] ... I do not accept, however, that where, as here, actual copying is found to have occurred, "reproduction", and therefore infringement, cannot be proved in the absence of such a specially close similarity as might be required in a particular case to support an inference of subjective copying. To insist that a copyright owner can satisfy the "sufficient objective similarity" limb of reproduction only by establishing such a close similarity is a hurdle too high to be placed before a copyright owner who is found to have proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be made easy. A copier intends to benefit from another's skill and labour. It may transpire that what the copier produces is, at the end of the day and as a result of whatever intervening causes, so dissimilar from the copyright drawing that the copyright drawing cannot be seen in the allegedly infringing drawing. But in my view that is not this case. ... [94] A similar observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404): "It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the court should not allow one man to take away the result 'of another man's labour, or, in other words, his property', unless it is satisfied that the part taken is 'so slight, and the effect upon the total composition was so small', 'as to render the taking perfectly immaterial', or, what is much the same thing, that the part taken is an unsubstantial part: Hogg v Scott (1874) LR 18 Eq 444 at 458; Chatterton v Cave (1878) 3 App Cas 483 at 490, 495. ... [98] The two elements of "causal link" and "sufficient objective similarity" are not referred to in the Act and are but aspects of "reproduction". The two are interrelated and it can be artificial to consider them separately, at least in a case like the present one where actual copying is found to have occurred. A finding of copying can add significance to objective similarity; cf Anchor, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 289; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 474; 61 ALR 251 (Wilson J). [99] It is often suggested that, once a copyright owner has established subjective copying, that makes easier the task of proving that what was taken was "a substantial part" of a protective work. For example, in Anchor, Mortlock, Street J said (at 289) "I have already ... inferred that the defendant did engage in unfair copying of the plaintiff's plans and houses. This adds significance to the similarities that do exist and diminishes significance from the dissimilarities". See also Bradbury v Hotten (1872) 8 LR Ex 1 and Chappell & Co Ltd v D C Thompson & Co Ltd [1928-35] MacG Cop Cas 476 (Ch D).'


case_title: Walter v Lane [1900] AC 539


case_text: Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp & Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands & McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 223 Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition?


case_text: Although I have found that the respondent made conscious use of the applicant's new 4 in 1 bucket and has consciously copied components of the bucket, the court must be satisfied that the respondent reproduced each of the applicant's drawings or a substantial part of them. The test of reproduction is whether there is a sufficient degree of objective similarity between the applicant's drawings and the respondent's drawings ( Francis Day & Hunter Ltd v Bron [1963] Ch. 587 at p 614 per Wilmer LJ; S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ; CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 ; (1999) 44 IPR 512 [52] per Merkel J). The question of what amounts to substantial reproduction in any case is not capable of precise definition and is a matter of fact and degree ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at p 473 per Lord Evershed). The question of reproduction is a separate question from causal use and causal copying although the two overlap ( Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ [27]).