AAP Industries Pty Ltd v Han's Pipe Fittings Co Ltd
[2017] FCA 1619
•22 December 2017
FEDERAL COURT OF AUSTRALIA
AAP Industries Pty Ltd v Han's Pipe Fittings Co Ltd [2017] FCA 1619
File number: NSD 2283 of 2017 Judge: PERRAM J Date of judgment: 22 December 2017 Catchwords: PRACTICE AND PROCEDURE – application for leave to serve originating application outside jurisdiction – application for anti-anti-suit injunction Legislation: Copyright Act 1968 (Cth) s 115
Judiciary Act 1903 (Cth) s 39B(1A)(c)
Federal Court Rules 2011 (Cth) rr 10.42, 10.43(4), 10.43(4)(a), 10.43(4)(b), 10.43(4)(c)
Date of hearing: 22 December 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 9 Counsel for the Applicants: Mr C Wood with Mr J Raftery Solicitor for the Applicants: Rydge Evans Lawyers ORDERS
NSD 2283 of 2017 BETWEEN: AAP INDUSTRIES PTY LTD
First Applicant
AAP ENGINEERING PTY LTD
Second Applicant
AND: HAN'S PIPE FITTINGS CO LTD
First Respondent
GLOBAL VALVE & FITTINGS PTY LTD
Second Respondent
CHUNSHENG HAN
Third Respondent
JUDGE:
PERRAM J
DATE OF ORDER:
22 DECEMBER 2017
THE COURT ORDERS THAT:
1.The Applicants have leave to serve the Originating Application on the First Respondent and the Third Respondent pursuant to Article 5(1)(a) of the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters.
2.Stand over the balance of the Interlocutory Application to the docket judge.
3.Costs reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
PERRAM J:
This is an application for leave to serve an originating application on the First and Third Respondents, in China, under the Hague Convention. The proceedings are for infringement of copyright said to inhere in a catalogue or catalogues which are concerned with pipe fittings and valves.
Contained in the catalogue are tables of the pipe fittings and valves. The Applicants contend that their catalogue is a work in which copyright inheres. The Applicants were formally in a business relationship with the Respondents, who operate from China. It appears that the relationship between them has been terminated, and the Respondents are now themselves importing fittings and valves into Australia. That is not the complaint which is made in the proceeding. The complaint rather is that the Respondents are doing so with a catalogue which bears more than a passing resemblance to the Applicants’ catalogue. The Applicants contend that this is an infringement of their copyright under s 115 of the Copyright Act 1968 (Cth) (‘Copyright Act’).
In order for me to be satisfied that I should grant leave to serve outside the jurisdiction, I must be satisfied of the various matters which are set out in Rule 10.43 of the Federal Court Rules 2011 (Cth) (‘FCR’). Specifically, I must first be satisfied that the Court has jurisdiction with respect to the proceeding. The proceeding which is proposed is a proceeding for damages under the Copyright Act and this Court has jurisdiction in relation to matters which arise under Commonwealth statute by virtue of s 39B(1A)(c) of the Judiciary Act 1903 (Cth). Accordingly, the requirement in FCR 10.43(4)(a) is satisfied.
I must then be satisfied that the proceeding is of a kind mentioned in FCR 10.42: see FCR 10.43(4)(b). The matter is a matter which involves a proceeding based on a contravention of an Act of the Commonwealth and therefore falls within item 13 of the table in FCR 10.42.
And thirdly, I must be satisfied that the party has a prima facie case for all or, indeed, any of the relief which is claimed in the proceeding: see FCR 10.43(4)(c).
I have inspected the Applicants’ catalogue and the Respondents’ catalogue, and to my mind there is certainly a prima facie case that the two catalogues do look very similar and therefore that there is an infringement of copyright. Accordingly, I am satisfied of the requirements of FCR 10.43(4). However, I must also be satisfied as to the proposed method of service. The Applicants have indicated that they propose to serve the proceeding under the Hague Convention and I am satisfied that China is a party to the Hague Convention. I am satisfied that the documents which are sought to be served are judicial documents within the meaning of the Convention. Accordingly, I propose to grant the Applicants leave to serve the documents in China.
The Applicants also sought an anti-anti-suit injunction to restrain the commencement by the Respondents in China of anti-suit injunction proceedings in that country to restrain the commencement of the proceedings in this country. I am not disposed to grant such an injunction. The evidence that any such proceeding was threatened was, to my mind, not sufficient. It consisted largely of discussions which happened after the breakdown of the relationship between the gentlemen. Certainly those discussions revealed a degree of animosity between them, but they do not seem to me to provide much succour for the notion that an anti-suit injunction is about to be sought in China.
My attention was also drawn to an article which is indicative that at least one court in China, specifically the Wuhan Maritime Court, appears to be disposed to grant anti-suit injunctions, at least in relation to the Hong Kong High Court. I do not think that that advances matters very far. For those reasons, I decline to grant the ex parte anti-anti-suit injunction which is sought. I reserve the costs.
I will make these orders:
(1)The Applicants have leave to serve the Originating Application on the First Respondent and the Third Respondent pursuant to Article 5(1)(a) of the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters.
(2) Stand over the balance of the interlocutory application to the docket judge;
(3) Costs reserved.
I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate:
Dated: 9 January 2018
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