Australia New College v Li
[2005] FMCA 984
•13 July 2005
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| AUSTRALIA NEW COLLEGE v LI & ORS | [2005] FMCA 984 |
| COPYRIGHT – Ex parte Application for interlocutory orders in the nature of Anton Piller orders and Norwich Pharmacal relief - where it is alleged that the respondent will obtain and utilise educational materials produced by the applicant – where the applicants seek Anton Piller orders to prevent distribution of the educational materials and Norwich Pharmacal relief to ascertain the extent of the breach – whether it is appropriate to grant these orders in all the circumstances. |
| Copyright Act 1968 |
| University of London Press Limited v University Tutorial Press Limited (1916) 2 Ch 601 Joyce Bewick and Martin Bewick v Brian Lee [1997] EWCA Civ 2490 Lock International v Beswick [1989] 1 WLR 1628 Brilliant Digital Entertainment Pty Limited v Universal Music Australia Pty Limited [2004] FCR 448 Television Broadcasts Limited v Nguyen [1988] 21 FCR 34 |
| Applicant: | AUSTRALIA NEW COLLEGE PTY LTD |
| Respondent: | CHRIS LI, PATRICK LI, JOSEPHINE CHUNG & ABCD HOLDING PTY LTD |
| File Number: | SYG 1846 of 2005 |
| Judgment of: | Raphael FM |
| Hearing date: | 13 July 2005 |
| Date of Last Submission: | 13 July 2005 |
| Delivered at: | Sydney |
| Delivered on: | 13 July 2005 |
REPRESENTATION
| Counsel for the Applicant: | Mr S Balafoutis |
ORDERS
The time for service of copies of these orders, the Application and affidavits of James Lee, Michael Kim, Kathy Kee Jung Hong and Hoiman Wong be abridged and that service be effected on the first to third respondents by delivering the documents to the premises of Easypath College, Suite 1, 1st Floor Murray Arcade, 127-133 Burwood Road, Burwood, and service be effected on the fourth respondent by delivering the documents at the premises of Easypath College Hurstville, Unit 7, 153 Forest Road, Hurstville at 2pm on Thursday
14 July 2005 and the addresses of each of the respondents given in the application.
The Application be made returnable before Federal Magistrate Raphael at 2.15pm on 15 July 2005.
Entry of these orders be expedited.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT SYDNEY |
SYG 1846 of 2005
| AUSTRALIA NEW COLLEGE PTY LTD |
Applicant
And
| CHRIS LI, PATRICK LI, JOSEPHINE CHUNG and ABCD HOLDING PTY LTD |
Respondent
REASONS FOR JUDGMENT
There comes before me today an application for interlocutory orders in the nature of Anton Piller orders and Norwich Pharmacal relief. The circumstances in which this relief is sought are as follows: the applicants is a company which trades as Pre-Uni New College, a coaching college with 19 offices over Sydney consisting of branches and franchises. It specialises in coaching students for the examinations set by the State of New South Wales for entry into selective high schools. In order to do this, it provides teaching material and mock examination papers. I am satisfied that this teaching material, including the mock examination papers, qualifies as orginal literary works for the purposes of the Copyright Act 1968 (Cth): University of London Press Limited v University Tutorial Press Limited (1916) 2 Ch 601.
The respondents are a family and a company who together trade as Easy Path College, which is a business in the same area both physically and operationally as the applicant. One of the respondents, Ms Josephine Chung, is a franchisee of the applicant. It is alleged that as such franchisee, Ms Chung obtained copies of the educational material created by the applicant. It is alleged that she has allowed that material to be utilised by the respondents for the purposes of the business of Easy Path College. It is alleged that on Saturday, 16 July 2005, a new term will start at Easy Path College and new students will be enrolled and will be distributed with infringing material for which they will have paid (including tuition) approximately $500. The amount which they have paid is less than the amount they may have paid had they enrolled with the applicant, and the material distributed to them will be distributed to them a term earlier than it would have been distributed had they enrolled with the applicant.
The evidence produced by the applicants indicates a serious breach of its copyright in material. The applicant seeks orders in the nature of Anton Piller orders because it says the material is unlikely to be in the hands of the respondents much before Saturday, and after Saturday will have been distributed to the students. Its says the loss to it as applicant will already have taken place because the students will have already enrolled with the respondents. It seeks Norwich Pharmacal relief to find out exactly how serious and how extensive the breaches of copyright are.
The application before me has been prepared in an exemplary manner, and the submissions made by Mr Balafoutis are cogent and unexaggerated. However, I am not prepared to grant him the relief he seeks today. In Joyce Bewick and Martin Bewick v Brian Lee [1997] EWCA Civ 2490, Lord Justice Robert Walker in the English Court of Appeal made some remarks about the status of Anton Piller orders that bear recollection in any court requested to provide such relief. His Honour referred, in fact, to the description given by Hoffmann J in Lock International v Beswick [1989] 1 WLR 1628, and quotes therefrom:
“"The growth in the Anton Piller jurisdiction, from the original invention of such orders in 1974 as the ultimate weapon against fraudulent copyright pirates to their widespread use today has been described by Scott J in Columbia Picture Industries Inc v Robinson [1987] Ch 38. As Scott J pointed out, they potentially involve serious inroads on principles which bulk large in rhetoric of English liberty, such as the presumption of innocence, the right not to be condemned unheard, protection against arbitrary searches and seizures, the sanctity of the home. My common experience of the evident surprise of counsel when I have refused applications leads me to endorse Scott J's observation, at page 76:
'the practice of the court has allowed the balance to swing much too far in favour of plaintiffs and that Anton Piller orders have been too readily granted and with insufficient safeguards for respondents.'
Hoffmann J then referred to some other authorities and to the need for proportionality, and concluded that section of his judgment at page 1281:
"The more intrusive orders allowing searches of premises or vehicles require a careful balancing of, on the one hand, the plaintiff's right to recover his property or preserve important evidence against, on the other hand violation of the privacy of a defendant who has had no opportunity to put his side of the case. It is not merely that the defendant may be innocent. The making of an intrusive order ex parte even against a guilty defendant is contrary to normal principles of justice and can only be done where there is a paramount need to prevent a denial of justice to the plaintiff. The absolute extremity of the court's powers is to permit a search of the defendant's dwelling house, with the humiliation and family distress which that frequently involves."”
The issue of Anton Piller orders was considered by the Federal Court in Brilliant Digital Entertainment Pty Limited v Universal Music Australia Pty Limited [2004] FCR 448, where reference was made to remarks of his Honour Lee J in Television Broadcasts Limited v Nguyen [1988] 21 FCR 34 of 38:
“The grant of an Anton Piller order is a peremptory and severe interference of the ordinary rights of a party when it is done without the support of any binding judgment, and care must be taken to see that the order is only granted in appropriate cases with due safeguards:
First, there must be an extremely strong prima facie case.
Secondly, the damage, potential or actual, must be very serious of the applicant.
Thirdly, there must be clear evidence that the defendants have in their possession incriminating documents or things and that there is a real possibility that they may destroy such material before any application inter partes can be made. (Brilliant Digital at [5].)
In Brilliant Digital his Honour Tamberlin J was sitting on appeal from the interlocutory orders of his Honour Wilcox J. Both judges allowed the Anton Piller orders to be granted in the particular and special circumstances of that case. This court has also granted Anton Piller orders, and will not shy away from doing so where it is appropriate. But I cannot see that it is appropriate here.
It would appear from the submissions of Mr Balafoutis and the affidavits of his client that what is intended to happen is for the Anton Piller orders to be executed on the Saturday on which the students enrol. One can imagine what will happen. A gaggle of legally qualified persons will get out of a car, go into premises where a number of young children have been enrolled, and will act as if they were police, seizing documents and computers and possibly frightening a lot of people. I do not think that is acceptable in Australia today for commercial legal purposes. If the respondents can be prevented in some other way from disseminating the material, and hopefully have the material itself delivered up, the applicants will have succeeded in preserving evidence and preventing a further breach of their copyright.
To achieve this, the course I propose to take is as follows: I propose to allow Mr Balafoutis time to return to the court with an amended interlocutory application and draft orders which provide for the following:
(1)short service of the proceedings;
(2)the return of those proceedings at 2.15 pm on Friday, 15 July 2005;
(3)draft orders requiring the respondents to provide the applicants with information concerning the production of course material for the course due to begin on 15 July.
The respondents will then have an opportunity of explaining to me why I should not make orders of that type.
I am satisfied that in this way, no real loss will be occasioned to the applicant. If the course material that was to be handed to the children commencing on 15 July did contain infringing booklets and examination papers, it will certainly not do so after the matter has come to this court. If the respondents are unable to provide their students with class material on the Saturday because the class material they intended to supply was infringing, then the respondents will lose the custom of those students, who may well find themselves attending the courses provided by the applicant.
I certify that the preceding eight (8) paragraphs are a true copy of the reasons for judgment of Raphael FM
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