Autodesk Inc & Ors v Ginos Engineers Pty Ltd & Anor
[2007] FMCA 1848
•5 November 2007
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| AUTODESK INC & ORS v GINOS ENGINEERS PTY LTD & ANOR | [2007] FMCA 1848 |
| COPYRIGHT – Alleged infringement of copyright of licensed software in contravention of s.36 of the Copyright Act 1968 (Cth). PRACTICE AND PROCEDURE – Application for transfer of proceedings from the Sydney Registry to the Adelaide Registry of the Federal Magistrates Court – application refused. |
| Copyright Act 1968 (Cth) Federal Court of Australia Act 1976 (Cth), s.48 Federal Court Rules (Cth), O.10 r.1, O.30 r.6 Federal Magistrates Act 1999 (Cth), s.52 Federal Magistrates Court Rules 2001 (Cth), r.8.01 Federal Magistrates Regulations 2000 (Cth) |
| Australian Competition & Consumer Commission v Pauls Ltd [2002] FCA 71 National Mutual Holdings Pty Ltd and Orders v The Sentry Corporation and Another (1988) 19 FCR 155 Ogawa v The University of Melbourne [2005] FCA 1139 |
| First Applicant: | AUTODESK INCORPORATED |
| Second Applicant: | AUTODESK ASIA PTY LTD |
| Third Applicant: | AUTODESK AUSTRALIA PTY LTD |
| First Respondent: | GINOS ENGINEERS PTY LTD |
| Second Respondent: | ZISIS GINOS |
| File number: | SYG 2536 of 2007 |
| Judgment of: | Lloyd-Jones FM |
| Hearing date: | 29 October 2007 |
| Delivered at: | Sydney |
| Delivered on: | 5 November 2007 |
REPRESENTATION
| Counsel for the Applicants: | Mr JM Hennessy |
| Solicitors for the Applicants: | Gilbert + Tobin |
| Counsel for the Respondents: | Mr RW Evans |
| Solicitors for the Respondents: | Peter Scragg & Associates |
ORDERS
The application to transfer these proceedings from the Sydney Registry to the Adelaide Registry is dismissed.
The respondents, Ginos Engineers Pty Ltd and Zizis Ginos, pay the applicants, Autodesk Incorporated, Autodesk Asia Pte Ltd and Autodesk Australia Pty Ltd, costs of this application.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT SYDNEY |
SYG 2536 of 2007
| AUTODESK INCORPORATED |
First Applicant
And
| AUTODESK ASIA PTE LTD |
Second Applicant
And
| AUTODESK AUSTRALIA PTY LTD |
Third Applicant
And
| GINOS ENGINEERS PTY LTD |
First Respondent
And
| ZISIS GINOS |
Second Respondent
REASONS FOR JUDGMENT
The Proceedings
The first applicant, Autodesk Incorporated, is a corporation incorporated in the United States of America and engaged in the business of making and licensing software. The second applicant, Autodesk Asia, is a corporation incorporated in Singapore and engaged in the business of licensing software in Australia through Autodesk Incorporated’s Australian subsidiary, Autodesk Australia Pty Ltd, the third applicant. I will name the three applicants collectively as “the Autodesk group”. The Autodesk group control in Australia a suit of computer software (“Autodesk software”), each piece of which is and was at all material times an original literally work within the meaning of the Copyright Act 1968 (Cth). The first respondent, Ginos Engineers Pty Ltd, is an Australian company based in Adelaide engaged in the business of providing civil Engineers consultancy services including advice, design and supervision. The second respondent, Mr Ginos, is the sole director, secretary, shareholder and manager of Ginos Engineers. Ginos Engineers held software licenses for Autodesk software. However it is alleged that from a date unknown to the Autodesk group, Ginos Engineers reproduced in a material form copies of the Autodesk software without a license (infringing copies).
The Autodesk group, with full cooperation from Ginos Engineers, conducting an audit on 5 June 2007 in relation to the Autodesk software present on the Ginos computer systems at their offices in Victoria Square, Adelaide. That audit identified 33 copies of Autodesk software, five copies of which had current or previous licenses. The Autodesk group claim that their audit showed 28 copies of their software which had not been licensed. Ginos Engineers admitted that there are a number of unlicensed copies on their premises and installed on their computers.
Application that proceedings be heard in Adelaide
This is an application by the respondents to transfer these proceedings from Sydney to Adelaide which was adjourned from the first Court date of 6 September 2007. On that date, I made orders in respect of the future conduct of these proceedings which included the filing of affidavit evidence. This approach was adopted on the basis that if the pleadings were closed and all the evidence filed, I would be in a better position to know the ambit of the dispute. The other consideration was that the respondents in these proceedings had commenced a separate Court action in Adelaide against the applicants which, if continued, would have a direct effect on these proceedings. The Adelaide proceedings subsequently settled and no longer remain a consideration in these proceedings.
The respondents have not complied with my orders of 6 September 2007. The applicants applied before Raphael FM on 12 October 2007 for an order that the respondents to comply with my orders of 6 September 2007. His Honour granted a short extension of time for the respondents to comply. I note that at the time of this hearing, a number of the orders of both Raphael FM and myself have not been complied with. I note that there have been attempts to rectify these breaches immediately prior to this scheduled hearing. However, discovery is in issue and there appears to be deficiencies from the list of categories for discovery filed by the applicants.
Transfer of proceedings – proper test to apply
Section 52 of The Federal Magistrates Act 1999 (Cth) states:
52(1) The Federal Magistrates Court may sit at any place in Australia.
(2) The Federal Magistrates Court or a Federal Magistrate may, at any stage of a proceeding in the Federal Magistrates Court, order that:
(a) the proceeding; or
(b) part of the proceeding;
be conducted or continued at a place specified in the order, subject to such conditions (if any) as the Federal Magistrates Court or Federal Magistrate imposes.
Rule 8.01 of the Federal Magistrates Court Rules 2001 (Cth) states:
8.01 Change of venue
(1) A party who files an application or response in a proceeding may apply to have the proceeding heard in another registry of the Court.
(2) In considering an application, the Court must have regard to:
(a) the convenience of the parties; and
(b) the limiting of expense and the cost of the proceeding; and
(c) whether the matter has been listed for final hearing; and
(d) any other relevant matter..
The operation of the Federal Magistrates Act and the Federal Magistrates Regulations 2000 (Cth) was considered by the Federal Court in Ogawa v The University of Melbourne [2005] FCA 1139 at [103] per Ryan J:
103…Both this Court and the Federal Magistrates Court are national courts with facilities to conduct proceedings by video link between most of the major cities of the Commonwealth. As well, each Court may sit at any place in Australia. The discretion to conduct hearings in those ways may be exercised to accommodate the convenience or exigencies of witnesses from time to time; see eg, ss 52 and Div 5 of Pt 6 of the Federal Magistrates Act 1999…
The proper test to apply for a transfer between Court registries has been examined in greater detail in the Full Court of the Federal Court in National Mutual Holdings Pty Ltd and Orders v The Sentry Corporation and Another (1988) 19 FCR 155. The Full Court considered the operation of s.48 of the Federal Court of Australia Act 1976 (Cth) and Order 10 Rule 1(2)(f) and Order 30 Rule 6 of the Federal Court Rules (Cth). Section 48 of the Federal Court of Australia Act states:
Change of venue
The Court or a Judge may, at any stage of a proceeding in the Court, direct that the proceeding or a part of the proceeding be conducted or continued at a place specified in the order, subject to such conditions (if any) as the Court or Judge imposes.
Order 10, r.1 of the Federal Court Rules states:
Directions hearing – general
(2) Without prejudice to the generality of subrule (1) or (1A) the Court may:
…
(f)direct that the proceeding be transferred to a place at which there is a Registry other than the then proper place. Where the proceeding is so transferred, the Registrar at the proper place from which the proceeding is transferred shall transmit all documents in his charge relating to the proceeding to the Registrar at the proper place to which the proceeding is transferred.
Order 30 r.6 of the Federal Court Rules states:
Place of Trial
(1) Subject to subrule (2), the place of trial of a proceeding is to be the proper place.
(2) The Court may direct that the trial, or part of the trial, of a proceeding be held at a place other than the proper place.
Their Honours Bowen CJ, Woodward and Lockhart JJ state in National Mutual Holdings Pty Ltd at 162:
The power conferred by s 48 recognises the national character of this court. The factors which the court is entitled to take into account in considering whether one city is more appropriate than another for interlocutory hearings or for the trial itself are numerous. The court must weigh those factors in each case.
…
The balance of convenience will generally be a relevant consideration, but not necessarily determinative of each case. A party commences a proceeding by filing an application in a particular registry of the court…
There is no onus of proof in the strict sense to be discharged by the party seeking to conduct or continue the proceedings elsewhere. It should be noted that the court may exercise its powers under O 30, r 6 either on the application of a party or of its own motion. The court must, however, be satisfied, after considering all relevant matters, that there is sound reason to direct that the proceeding be conducted or continued elsewhere. Its starting point is that the proceeding has been commenced at a particular place. Why should it be changed? On the one hand, if the party who commenced the proceeding chose that place capriciously the Court would be justified in giving no weight to the choice of place…
The balance of convenience is important, but its weight must vary from case to case. Ultimately the test is: where can the case be conducted or continued most suitably bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the court. It cannot and should not, in our opinion, be defined more closely or precisely.
Justice O’Loughlin said in Australian Competition & Consumer Commission v Pauls Ltd [2002] FCA 71 at [17] and [19]:
[17] In Cycles & Wheelman Pty Ltd & Ors v Beltech Corporation Ltd (1988) 80 ALR 279, Gummow J heard a motion to direct the transfer of a proceeding from the New South Wales Registry to the Western Australian Registry. His Honour noted that the consequence of an order that the further conduct of the proceedings be at the Western Australian Registry was that Perth would be the "proper place" within par (b) of the definition of that term in O 1, r 4, with the result that under O 30, r 6 the trial of the proceedings would be at Perth unless fixed elsewhere. As to the test to be applied, his Honour observed:
"It is not, in my view simply a question of the Court locating the balance of convenience, because the Court must be satisfied by the applicant that there be a change in the status quo and in the identity of the `proper place' and that transfer be ordered. Nor, contrary to some of the submissions made this morning, is much guidance to be derived from cases in other jurisdictions, particularly those jurisdictions lacking the national character of this Court, and those providing for trial by jury of civil claims…
[19] These present proceedings were appropriately instituted in the Northern Territory Registry; hence the Court must be satisfied that there is a sound reason to direct that the proceedings be conducted or continued elsewhere. While the balance of convenience will generally be a relevant consideration, it is not necessarily determinative: National Mutual v Sentry Corporation at 162; furthermore, the test of "manifest preponderance of convenience" is not the appropriate test for this Court to apply in considering motions under s 48 of the Federal Court Act and the Court's Rules: National Mutual v Sentry Corporation at 167. Although there is no onus as such on the moving party, the Court must be satisfied, after considering all relevant matters, that there is a sound reason to direct that the proceeding be conducted or continued elsewhere: National Mutual v Sentry Corporation at 162…
Consideration
The application before this Court seeks that the proceedings be transferred from the Sydney Registry, where it was originally filed, to the Adelaide Registry. When the matter was first brought before me on 6 September 2007, it was foreshadowed that there would be a transfer application and this was accommodated in the orders made on that date. The consented draft order handed up on that date was on the understanding that all the formal pleadings would be completed by the anticipated date of the interlocutory hearing seeking the transfer. It was suggested by both parties, and I agree with the submission, that this would provide me with an opportunity to more accurately assess the scope and magnitude of these proceedings and enable me to make a decision. An “Application in a Case” was filed on 13 September 2007 formally seeking this order.
The substantial part of the submissions and supporting evidence before the Court with respect to the transfer application focused on Ginos Engineers’ failure to comply with the orders of 6 September 2007 and subsequent orders of FM Raphael. Corresponding submissions from their solicitors explain the non-compliance. Mr Evans, for the respondents, also anticipated further applications to vary both sets of orders and a possible vacation of the hearing date. Mr Evans submits that a transfer would naturally result in vacating the Sydney hearing dates and the allocation of new hearing dates in Adelaide. This would also result in an extension of time to prepare the respondents’ case. Mr Evans submits that it became apparent to the respondents that they would not be able to comply with the orders of 6 September 2007 when they received the list of discovery documents from the applicants. The relevant orders required:
3. The parties to exchange categories of documents for discovery by Monday 17 September 2007; and
4. The parties to give discovery in accordance with the agreed categories by Monday 24 September 2004.
Mr Evans argues that one week was insufficient to agree to the categories and provide full discovery under the Federal Magistrates Act and the Federal Magistrates Court Rules. Mr Evans acknowledged that in hindsight that order was totally inappropriate in relation to the case that the applicants intended to bring against the respondents. Mr Evans then relied upon the affidavit of Peter Scragg, affirmed on 10 October 2007, which set out the alleged problems experienced by the respondents in complying with the orders. He foreshadowed a further interlocutory application to the Court objecting to the discovery orders.
Mr Hennessy, for the applicants, referred to the affidavit of Siabon Seet, sworn on 9 October 2007, which contained correspondence between the parties about the submission of material in accordance with the orders set out at [11] above. I note that the magnitude of the discovery was larger than anticipated by the parties and myself when the orders were made on 6 September 2007. However, I also note the element of delay on the part of the respondents to reply to correspondence from the applicants with respect to discovery and, significantly, that there has been no attempt until this hearing to seek a variation or an extension of time to comply with the orders. Nor has there been any application in respect of the discovery orders. This action has now been foreshadowed, being an order to be complied with by 17 September 2007.
Discovery now appears to be a major issue in the further conduct of these proceedings, although it may explain the delay, it does not explain why no action has been taken by the solicitors for Ginos Engineers to bring this to the Court’s attention. I note that Mr Hennessey has referred me to correspondence annexed to the affidavits of Sioban Seet concerning discovery. Mr Evans enquired whether this Court was available to consider an application in respect of discovery. I draw the parties’ attention to Order 10 made by me on 6 September 2007 which states that the parties had liberty to apply on two days’ notice. As there has been no formal application on the issue of discovery and no application seeking to vary the Court’s orders, I do not intend to consider the issue of discovery any further in this application and will confine my consideration to the transfer issue.
Mr Evans initially raised the issue of the volume of documentation to be provided by Ginos Engineers as it relates to convenience, as their offices are located in close proximity to the Adelaide Registry. Mr Evans subsequently conceded that filing of documents was not a relevant factor and I make no further reference to that point.
Mr Evans then referred to paragraph [7] of the affidavit of Peter Scragg affirmed on 10 October 2007:
It was considered that the Adelaide Registry was the appropriate Registry as all dealings between the parties had occurred in Adelaide, and any witnesses who may have to give evidence in relation to those dealings were resident in Adelaide. There was uncertainty as to the extent of the financial records and other business records of the first respondent that would have to be produced in relation to the matter and any deficiency in production of documents which may have become apparent in the course of the trial could be quickly remedied if the matter was heard in Adelaide. The first respondent’s place of business is on the opposite side of the Victoria Square where the Adelaide Registry of the Federal Court is situated. The place of business of the applicant’s agents, being the employers of the individuals who may have to give evidence on behalf of the applicants is within minutes of that Registry.
Mr Evans submits that the nature of the evidence that will be called at the trial is fundamental to this transfer application. He submits that the categories of documents and the breadth and depth of discovery indicate that this case will be substantially determined on the documents produced by Autodesk Incorporated.
Mr Evans also relied on the affidavit of William Vagenas, affirmed on 5 September 2007, a solicitor employed by Peter Scragg and Associates, solicitors for Ginos Engineers. Mr Evans referred to paragraphs [20] to [25] of that affidavit:
20. I am instructed that Ginos Engineers Pty Ltd have their sole office in Victoria Square, Adelaide, South Australia and operate solely from South Australia, and it has all its records in South Australia. The computers that use the software are situated in Adelaide.
21. I am instructed that Ginos Engineers Pty Ltd employs between 15-20 employees, and nearly all of its business is in Adelaide.
22. I am instructed that the second respondent in the Sydney action, lives in Adelaide and has extensive business interests in Adelaide and would find it very difficult to travel interstate.
23. The contract of purchase of the software was made in Adelaide, the use of the software is in Adelaide. The business from which the first respondent purchased software from carries on business in Adelaide.
24. The respondents wish to use the legal firm Peter Scragg and Associates as their legal representatives and this firm has its sole office in Adelaide.
25. The majority of possible witnesses are resident in Adelaide and it would result in undue expenses for them to be required travel to Sydney to be required to give evidence.
Mr Evans also indicated that one of the witnesses who has sworn an affidavit and may be called is Michael Kelly, a salesman of the Autodesk software. Mr Kelly and the respondents’ solicitors are both based in Adelaide. Mr Evans submits that if the case was a claim for damages based on an audit, Sydney would be the appropriate venue. However, the case relates to an account of profits which is of a substantially broader nature and consequently affects the choice of venue.
Mr Hennessey submits in reply that Gino Engineers was ordered to file affidavits by 25 October 2007. He notes that some affidavits were sent to the applicants’ solicitors by facsimile and do not appear to have been filed in Court. However, the applicants assume that they are the affidavits on which the respondents intend to rely. Mr Hennessey submits that the respondents’ solicitors have not indicated that other affidavits would follow. There does not appear amongst the affidavits sent to the applicants’ solicitors any affidavit by a bookkeeper or the like which would confirm that a substantial number of witnesses would be required to travel to Sydney. Mr Hennessey further submits that the applicants had served the respondents with all of their affidavits in accordance with the timetable, but there has been indication that those witnesses are not required for cross-examination. In the circumstances, I agree with Mr Hennessey that the travel of the applicants’ witnesses should not be taken into consideration at present.
As I indicated at paragraph [10] above, this application was deferred to permit the filing of evidence to enable me to assess the relevant merits in respect of the transfer. From the evidence before me, the issue has been narrowed to a consideration of travel of witnesses to the hearing venue. I am not satisfied that, at this stage, it is possible to identify the amount of travel required. Consequently, I am currently not prepared to transfer these proceedings on the basis of the material before me. I accept the submission of Mr Hennessey that when an applicant has filed an initiating process in a jurisdiction, the balance of convenience must be sufficiently pronounced to warrant positive action to change the status quo. The matters of convenience relied upon by the parties were almost equally weighted and there is little separating them. Therefore, the prima facie presumption should prevail. I dismiss the application for transfer of these proceedings with costs.
I certify that the preceding twenty (20) paragraphs are a true copy of the reasons for judgment of Lloyd-Jones FM
Associate:
Date: 5 November 2007
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