Bomanite Pty Ltd v Slatex Corporation Australia Pty Ltd

[1991] FCA 639

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I JUDGMENT No. S?!?.. I........ .. Q\ ........ ..

IN THE FEDERAL COURT OF AUSTRALIA	)
1
NEW SOUTH WALES DISTRICT REGISTRY )	No. NG 246 of 1990

1

GENERAL DIVISION )

BETWEEN :  BOMANITE PTY LIMITED

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First Applicant

BOMANITE CORPORATION INC

Second Applicant , I

JONATHON NASVIK

Third Applicant

JON'S DESIGNS INC

Fourth Applicant

DENNIS A. PAUL

Fifth Applicant

G & M TERRAZZO CO INC

Sixth Applicant

AND:  SLATEX CORP. AUST. PTY
LIMITED

First Respondent

SLATECRETE PTY LIMITED

Second Respondent

BRENDAN ROBERTS

Third Respondent

NEIL LAURIE

Fourth Respondent

ROBBIE BURKE

Fifth Respondent

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SLATEX CORP. AUST. PTY

RECEIVED LIMITED

2 9 OCT 1991 Cross Claimant

BOMANITE PTY LIMITED

Cross Respondent

!	JUDGE MAKING ORDER:	LOCKHART J.
WHERE ORDER MADE:	SYDNEY
DATE ORDER MADE:	25 OCTOBER 1991

MINUTE OF ORDER

j	THE COURT DIRECTS THAT:
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1. The applicants be given leave to join Cookville Pty Limited

as the sixth respondent to this proceeding.

2.    Any further evidence than that already filed upon which the applicants may seek to rely as against Cookville Pty Limited, be filed and served by 4.00 pm ~uesd$ 29 October

1991 and the Court notes that that evidence .is either

evidence in the form of affidavits or draft affidavits the Court has before it today, the subject of the applicants' application, or fresh affidavits which will place in better form certain of that material.

3.   Leave be granted to the applicants to file the second further amended application and the second further amended statement of claim in the form handed up to the Court this morning and that they be filed in Court.

4.   Service of the second further amended application and the second further amended statement of claim is dispensed with Limited. upon the respondents except in relation to Slatecrete Pty

5.       Any amended defence to the second further amended statement

of claim be filed and served by 4.00 pm, Tuesday 29 October

1991.

6.      Any further affidavits which the respondents may seek to

adduce in reply to those that are to be filed by the applicants be filed and served by Wednesday, 6 November

7.    The notices of motion of the applicants dated 21 October 1991 and 25 October 1991 be otherwise dismissed.

8.    The matter be adjourned to 6 November 1991 at 9.30 am for

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any further directions and for the return of arjy subpoenas.

9. m y	notices to attend for cross-examination to be given by any party in relation to affidavits that have been filed and served before today be given by 4.00 pm on Tuesday, 29 October 1991 and any notices to attend for cross- examination directed to witnesses who may henceforth give affidavits be given wlthin 48 hours after those affidavits have been flled and served.
10.	The applicants pay one-half of the respondents' costs of the two motions.

NOTE:  Settlement and entry of orders is dealt with in Order

36 of the Federal Court Rules.

1	IN THE FEDERAL COURT OF AUSTRALIA	)
I
i	I

NEW SOUTH WALES DISTRICT REGISTRY )	No. NG 246 of 1990
GENERAL DIVISION	1

l	BETWEEN:	BOMANITE PTY LIMITED First Applicant
BOMANITE CORPORATION INC

Second Appticant

JONATHON NASVIK ,

Third Applicant

JON'S DESIGNS INC

Fourth Applicant

DENNIS A. PAUL

Fifth Applicant

G & M TERRAZZO CO INC

Sixth Applicant

AND:  SLATEX CORP. AUST. PTY
LIMITED

First Respondent

SLATECRETE PTY LIMITED

Second Respondent

BRENDAN ROBERTS

Third Respondent

NEIL LAURIE !

Fourth Respondent !

ROBBIE BURKE

Fifth Respondent

SLATEX CORP. AUST. PTY

LIMITED

Cross Claimant

BOMANITE PTY LIMITED

Cross Respondent

25 October, 1991

REASONS FOR JUDGMENT

LOCKHART J.

There are before the Court today two notices of motion in

which the moving parties are the applicants in the proceeding.

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The first motion seeks an order that the applicants be given leave to join Cookville Pty Limited ("Cookville") as an additional respondent and to file and serve a second further amended application and a second further amended statement - of claim in which, in essence, they make assertions against Cookville in a similar vein to the allegations made against existing respondents. Consequential orders are also sought on the assurnptlon that leave is granted including that the applicants be given leave to file further affidavits concerning Cookville before 4 November.

The second notice of motion asks primarily for the applicants to be given leave to file further affidavits generally. It also asks for leave to issue subpoenas returnable before the hearing date and for certain orders in relation to the provision of security to cover expenses of three overseas witnesses.

respondents except the orders as to the return of subpoenas and A11 the orders sought by the applicants are resisted by the	the proposal by the applicants to amend the statement of claim
and the application by inserting a claim for interest pursuant to section 51A of the Federal Court Act 1976.
The applicant's case is based on alleged breach of copyright, contraventions of S. 52 of the Trade P r a c t i c e s A c t
1974 and the tort of passing off. The first respondent has cross-claimed that the first applicant has made unjustifiable

threats with respect to an action or proceeding in respect of an

infringement of copyright within the meaning of S. 202 of the

Copyright Act 1968. The matter was fixed on 6 August 1991 for

hearing on 18 November 1991 and was estimated to take five to

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seven days.

This matter has a long and chequered history. It is described fully in the evidence and, in particular, in the

affidavit of Mr Hazan, the solicitor for the first, third, fourth	1	i
and fifth respondents, for whom Mr Ellicott appears this morning.	t	L
I need not refer to it: in detail. It establishes that there have
been sixteen directions hearings in this matter, the matter	I
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having been commenced in this Court on 11 May 1990. C l r Justice

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Wilcox had before him seven of those directions hearings and, in

particular, directions hearings around the middle of this year,

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culminating in a directions hearing of 31 July 1991. The

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transcripts of those directions hearings show that counsel for

the respondents made submissions to his Honour on more than one

in affidavit form by the applicants and that his Honour himself occasion about the state of the evidence which had been adduced	l -
on more than one occasion referred to it.	His Honour allowed the
matter to be fixed for trial on the basis that the evidence was	i
to be confined to affidavit evidence, subject to cross-	b
examination as required, and on the basis that the affidavit	1 '
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evidence in the form in which it then stood was the form in which	. ,
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it would take at the trial.	It was made plain to the applicants	I
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that there were real deficiencies in the affidavits, but the	1- -.
applicants accepted this and nevertheless sought to proceed to	i-

trial. In short, his Honour was assured that the evidence was in its final state in affidavit form notwithstanding the

deficiencies which had been pointed out to the applicants by his

Honour and by counsel for the respondents. It was on that basis

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that the matter was allowed to proceed to trial.

The evidence paints, I am afraid, a much sorrier picture than that which I have just briefly described, but it speaks for itself.

In ordinary circumstances I would be the first to allow a party to amend its case and file further evidence if the prejudice to the other party was costs to be lost by an adjournment, it could be cured by appropriate orders for costs, and, if necessary, a stay imposed until the costs are paid. The history of the matter including the way in which the matter was conducted before Wilcox J. when he gave directions in June and July this year, culminating on 31 July, 1991 provides in itself

evidence to be given. But the matter proceeds beyond that. sufficient basis in my oplnion for declining to allow the fresh

It is plain that the evidence which is now sought to be adduced is evidence which could have been adduced, if the applicants had sought to do so, by February this year but it was not adduced.

Also, I have read the affidavits which the applicants seek
to have filed. Some of it consists of sworn affidavits; some

of it consists of draft affidavits, although I have been assured

that the drafts will be the subject of sworn affidavits in the

very near future, so I will proceed on the basis that they are

all in fact affidavits before the court. Some of the material

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sought to be adduced is obviously in admissible f&, but much of it is plainly inadmissible. Some of it is of arguable admissibility about which I will say nothing.

The regrettable feature of the matter is that certain of the evidence which the applicants now seek to adduce by affidavit does indeed seem to go to the heart of the applicant's copyright case and is relevant to the cross claim. In particular, it is sought to trace the chain of title to copyright or assignment by tendering certain documents referred to in the concluding paragraphs of what is described as a second further affidavit of Alan Christopher Bate of 23 October 1991. It is sought also in relation to the copyright claim to adduce evidence from the third and fifth applicants as to the particular activities in which they engaged which led to the forming of castings and moulds of

relevant objects.

In directions hearings before Wilcox J. in July, the very deficiencies which the counsel for the respondents perceived in the evidence in the form in which it then stood were specifically brought to the attention of the applicants in Court and to his Honour and, notwithstanding that, the assurance was given to his Honour by the applicant's counsel that the matter was nevertheless ready for tr~al on the state of the then evidence.

The evidence as to the relevant documents to support the chain of title referred to in Mr Bate's affidavit is plainly inadmissible on a final hearing in the form in which it presently is deposed to. So, to allow it to be given would be to simply

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allow a nothing because I would be allowing evidence to be given of something which would be of necessity rejected at the trial. The same cannot be said of the evidence in the two affidavits from the third and fifth applicants that are sought to be used.

I express no view on its admissibility except to say that it may

be admissible. I hesitate to shut it out and to shut out the applicants from the chance to adduce it but, in my opinion, the history of the matter is such that, though unjust to the applicants not to allow it in one sense, it would be a greater injustice to the respondents to allow it to be given because, as counsel for the respondents tells me, in the absence of that evidence, his case had been shaped along a certain path and that of necessity would have to be re-examined if that evidence was given and it would follow, he says, that the hearing date would

have to be vacated and I am quite convinced that that is right. I take into account, however, the additional fact that the

applicants are prepared to bring out the three overseas witnesses

who are involved and who have already sworn evidence which is on file, two of whom are the third and fifth applicants, at their cost at least initially and that therefore they do not press the order in the second notice of motion which refers to those matters. I note, however, that no notice to attend for cross- exammation apparently has yet been given by the respondents and

indeed it may not be given at all

In all the circumstances, I decline to exercise the Courts discretion to allow any of the fresh evidence that is sought through the second motion to be adduced to be filed!kn affidavit form. The Court adheres to the view expressed earlier by Wilcox

J. that the evidence to be adduced in the case must be by

affidavit subject to cross examination as required and subject to whatever may be produced on subpoena by way of doementation. As a result, I decllne to vacate the fixture commencing on 18 November.

I would add that I have never seen a clearer case for refusing the reception of fresh evidence and the necessary vacation of a hearing date than this one.

That leaves the first motion concerning the question of the
joinder of Cookville as a party. It appears that the applicants

were not aware of any role that Cookville may play in this matter

that Cookville is a company that has common shareholdings and	until 20 September 1991. There is evidence which makes it plain
directors to certain of the respondents and the contrary is not suggested by counsel for the respondents. As I understand the evidence, there is no evidence in its present form which would implicate Cookville in any way. However, in the bundle of affidavits that are before me, there is some evidence in relation to Cookville.

I think in the circumstances it is right to allow Cookville to be joined as the sixth respondent and for the applicants to be able to shape their case against it by way of affidavits and

through whatever documents come to light on the production of

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subpoenas.

Accordingly, since I am allowing Cookville to be joined as a respondent, and on the assumption that the necessary amendments are made to the pleadings to join Cookville as a respondent, the Court directs that any further evidence than that already filed upon which the applicants may seek to rely as against Cookville, may be filed and served by 4.00 pm Tuesday next, 29 October 1991 and the Court notes that that evidence is either evidence in the form of affidavits or draft affidavits that I have before me today, the subject of the applicants1 application or fresh

affidavits which will place in better form certain of that

material.

statement of claim in the form handed up to the Court this	further amended application and the second further amended The Court gives leave to the applicants to file the second
morning. They may be filed in Court and service is dispensed with upon the respondents except in relation to Slatecrete Pty Limited.
The Court also directs that any amended defence to the second further amended statement of claim should be filed and served also by Tuesday next, 29 October.

Any further affidavits which the respondents may seek to adduce in reply to those that are to be filed by the applicants are to be filed and served by Wednesday, 6 November next.

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The matter will be adjourned to 6 November nedt at 9.30 am
for any further directions and for the return of any 'subpoenas.

Any notices to attend for cross-examination to be given by any party in relation to affidavits that have been filed and served before today should be given by 4.00 pm on Tuesday, 29 October next and any notices to attend for cross-examination directed to witnesses who may henceforth give affidavits should be given within 48 hours after those affidavits have been filed and served.

The question arises as to costs of the motions which have

been heard together by consent. I think the proper order for

costs is to broadly reflect the result of the motions. The

but has failed in relation to further affidavits, save those in	applicant has succeeded in relation to the joinder of Cookville
relation to Cookville, and in respect of the order sought about provision of security for expenses of overseas witnesses. I think the proper order for costs is that the applicants should pay one half of the respondents' costs of the two motions.

I certify that this and the preceding elght (8)pages

are a true copy of the reasons for judgment herein of

the Honourable Mr. Justice Lockhart.

Associate Dated: 25 October 1991

Counsel for the Applicant	J P Hamilton QC, M B Evan
Solicitors for the Applicant	Dynon & Dynon

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Counsel for lst, 3rd, 4th,

5th Respondents	14 R ~llicokt
Solicitors for lst, 3rd,
4th, 5th Respondents	Abbott Tout Russell Kennedy
Date of Hearing	25 October 1991
Date of Judgment	25 October 1991