Autodesk Australia P/L v Dyason, M.P.

[1993] FCA 866

866 93

JUDGMENT No. ...,..., ........ , ...,....,.~

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

B E T W E E N :

AUTODESK AUSTRALIA PTY LIMITED AND ANOTHER

A N D :

MARTIN PATRICK DYASON AND AN

COURT :  NORTHROP J

RECEIVED

PLACE :	MELBOURNE	- 1 OEC 1993
W:	25 OCTOBER 1993	FEDERAL COURT Of  A U W

EX TEMPORE REASONS FOR JUDGMENT

This matter has had a very long and unfortunate history which I need not describe in any detail. It involves a case where the applicants, initially, applied to me for Anton

Piller orders. In the course of the written judgment I gave,

I indicated, from recollection, that the material upon which

that Anton Piller order had been obtained was itself a
fascinating story, but in the events which had occurred, there

were fought tenaciously and at length, both in relation to the

is no need to repeat them in the reasons for judgment. As a
result of the initial Anton Piller order, which was directed

against Mr and Mrs Dyason, the name of the third respondent,

Mr Kelly, was obtained. A similar order was made against him.

The matter came before the Court for trial. At the

trial, which extended over a long period, Mr and Mrs Dyason
were represented by counsel. Mr Kelly was represented by
another counsel. The whole matter was in issue. All points

alleged breach of copyright and also in inducing a breach of
contract based upon the contracts between the persons who
acquired the Autocad programme from Autodesk and then were
induced to buy the Autokey from either Mr Dyason or Mr Kelly.
There was also the question of whether, by doing this, the

respondents were authorizing a breach of copyright.

The parties had agreed that the question of liability

should be determined before any relief was granted. The Court
found that the respondents had acted in breach of the
copyright of the applicants, but had not committed a breach of
contract or induced a breach of contract, or had authorized a
breach of copyright by the sale of the Autokey. The Court at
the same time gave leave to appeal on these findings and on
the injunction granted. Other matters were reserved,

including costs.

There was an appeal to the Full Court by Mr and Mrs

Dyason and Mr Kelly.	The appeal succeeded. The order made by
the Court in the first instance was set aside and the

application dismissed. Orders were made that Autodesk pay the
costs of the respondents both on the appeal and on the trial.

The matter then went to the High Court on two occasions, the effect of which was that in due course the High Court set aside the order of the Full Court, varied the orders made by

the trial Court, but continued the injunctions and also
ordered that Mr and Mrs Dyason and Mr Kelly pay the costs of
Autodesk of the Full Court proceedings, as well as the

proceedings in the High Court.

One other fact should be mentioned. Following the Full

Court decision and leave to appeal being granted to appeal to the High Court, the question arose as to what was to happen in the meantime in relation to the sale of the Aufokey device. Following submissions, the order restraining the respondents from selling Autokey was lifted upon undertakings being given by the respondents to keep records of any sales taking place.

The applicants now are seeking orders to bring the matter

to an end and for this purpose they have given notice of
motion seeking orders that (1) the respondents file and serve
an affidavit within 14 days setting out a full and accurate
account of the sale of every Autokey sold by them or by any of
them, including (a) the date of each sale; (b) the name and
address of the purchaser; (c) the price paid for each Autokey
so sold; and (2) the applicants' costs up to and including the
trial and judgment of this Court, including any reserved

costs, be taxed and the respondents forthwith pay the

applicants' said taxed costs.

I propose to deal with the question of the costs first.

In the course of submissions reference was made to what had occurred during the course of the proceedings from the time when apparently Autodesk first became aware of what had

occurred, the events leading up to the making of the Anton
Piller orders, and at the trial. Mr and Mrs Dyason have said
that in reality they were not directly involved and they had

some arrangements with Mr Xelly, but nevertheless they
themselves participated at the trial before this Court, played
a very active part, and lost. Mr Kelly likewise appeared at
the trial, played a very active part, and lost. Prime facie,
therefore, Autodesk is entitled to its costs as against the
three respondents. It is one of the consequences of the law
that if an applicant commences proceedings which are opposed
by the respondents, and the applicant succeeds, normally the
applicant is entitled to the costs. The law is uncertain.
The facts are uncertain. But it is always open to a
respondent to say at a very early stage of the proceedings "no
matter what the law or facts are, I am prepared to accept the
claim made by the applicants and will consent to the demands
being made". That could have been done in this case,
particularly by Mr and Mrs Dyason, if, as they say, they were
not directly involved. But they did participate and played an
active part at the trial in opposing the claims made by

Autodesk.

Having regard to the way in which the action was

conducted at the trial and having regard again to the way in
which the applicants had to go through the procedures to
ascertain the names of the respondents, this is a case where I
see no reason at all to depart from the normal position of
ordering that the applicants' costs be paid by the
respondents. The only reservation I have is that at the trial
there was also.the claim based upon inducing a breach of
contract and authorizing a breach of copyright in which the
respondents did succeed in their defence.

There is a wide discretion imposed upon the Court. In

this regard reference may be made also to Order 62 rule 36 of

the Federal Court R u ~ ~ S , but I should indicate that I find

nothing to support the submission made by Mr Kelly based upon
rule 36. This is a case where the applicants should not
obtain their full costs but in the exercise of my discretion I
propose to limit the costs to a proportion of the total costs,
as an act of judgment, to make the task of taxing the costs
more practical and to avoid unnecessary costs incurred in a
taxation.

It is not an easy task to estimate the amount of the time

and expense incurred in relation to the claims based upon the
alleged inducing a breach of contract and authorizing a breach
of copyright, but I propose to estimate them at 10 per cent.
Accordingly there will be an order that the respondents pay to
the applicants 90 per cent of the applicants' costs of the
trial. This has no bearing on the costs awarded by the Full
Court or by the High Court, and I direct it only to the costs

of the trial itself.

Order 62 rule 3 provides that normally costs on

interlocutory matters are not to be paid until the completion

of the matter but here the question of liability is a

completely separate and discrete aspect of the case. It is

the aspect of the case which has gone to the Full Court and to

the High Court. It is appropriate that orders be made to

enable those costs to be taxed and paid forthwith.

Accordingly, the Court makes an order that 90 per cent of

the applicants' costs up to and including the trial and
judgment in this Court, including any reserved costs, be taxed
and the respondents forthwith pay the applicants' said taxed
costs. This order is made pursuant to the powers conferred by

Order 62 subrules 3 ( 2 ) and (3) of the Federal Court Rules.

There still remains to be considered the other orders

sought in relation to the matters outstanding as to what

relief should be granted, apart from the injunctions which are

in operation. In cases of this kind it is normal to make an

order of the type sought in paragraph 1 of the motion.
Although it is said that there may be difficulty in giving the
names and addresses of persons to whom the Autokey had been

sold prior to the undertaking being given by the respondents,

nevertheless, the affidavit required should include those.	If
those names and addresses cannot be given, that will need to be deposed to in the affidavits.

In the circumstances, the Court makes the following

additional orders:

1. The respondents file and serve an affidavit or affidavits within 28 days setting out a full and accurate account of the sale of every Autokey sold by them or by any of them

   including:

(a) the date of each sale;
(b) the name and address of the purchaser; and

(c) the price paid for each Autokey so sold.

2.    The costs of the motion and the costs of the day be reserved.

I adjourn the directions hearing to 13 December.

I certify that this and the preceding six (6) pages are a true copy of the Ex Tempore Reasons for Judgment of The Honourable

Mr Justice R.M. Northrop.

Associate: @Ye&(m

Date : dS Iqq3