Boomerang Investments Pty Ltd v Padgett
[2018] FCA 4
•12 January 2018
FEDERAL COURT OF AUSTRALIA
Boomerang Investments Pty Ltd v Padgett [2018] FCA 4
File number: NSD 1738 of 2017 Judge: PERRAM J Date of judgment: 12 January 2018 Catchwords: PRACTICE AND PROCEDURE – application for leave to serve originating application and amended statement of claim outside jurisdiction Legislation: Copyright Act 1968 (Cth) ss 10, 115
Judiciary Act 1903 (Cth) s 39B(1A)(c)
Federal Court Rules 2011 (Cth) Divisions 10.4, 10.6, rr 10.42, 10.43, 10.43(3), 10.43(3)(c), 10.43(4), 10.43(4)(a), 10.43(4)(b), 10.43(4)(c), 10.44, 10.44(4)(a)(ii)
Convention on the Service of Judicial and Extrajudicial Documents in Civil or Commercial Matters. Opened for signature 15 November 1965. 658 UNTS 163 (entered into force 10 February 1969) art 1
Date of hearing: Determined on the papers Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 11 Counsel for the Applicants: Ms J Beaumont Solicitor for the Applicants: Banki Haddock Fiora ORDERS
NSD 1738 of 2017 BETWEEN: BOOMERANG INVESTMENTS PTY LTD ACN 009 670 919
First Applicant
JOHANNES VAN DEN BERG (ALSO KNOWN AS HARRY VANDA)
Second Applicant
GEORGE YOUNG
Third Applicant
AND: JOHN PADGETT
First Respondent
LORI MONAHAN
Second Respondent
KOBALT MUSIC PUBLISHING AUSTRALIA PTY LTD ACN 144 996 609 (and another named in the Schedule)
Third Respondent
JUDGE:
PERRAM J
DATE OF ORDER:
12 JANUARY 2018
THE COURT ORDERS THAT:
1.Leave be granted to the Applicants to serve the following documents on the First Respondent and the Second Respondent in the United States of America in accordance with the Convention on the Service of Judicial and Extrajudicial Documents in Civil or Commercial Matters done at the Hague on 15 November 1965:
(a)the Originating Application;
(b)the Amended Statement of Claim; and
(c)this Order.
2.Costs be reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
PERRAM J:
This proceeding was commenced on 3 October 2017 and the originating process and pleadings were served on the Third and Fourth Respondents who have since appeared. They have not, however, been served on the First and Second Respondents, John Padgett and Lori Monahan, who are residents of the United States. The Applicants now seek leave to serve on the First and Second Respondents in the United States:
(a)the Originating Application;
(b)the Amended Statement of Claim; and
(c)the Order of the Court if it accedes to the present interlocutory application.
Service out of jurisdiction is governed by Division 10.4 of the Federal Court Rules 2011 (Cth) (‘FCR’). FCR 10.43 relates to service of an originating process outside Australia. There are a number of requirements under that Division which must be met before service of an originating process out of the jurisdiction can be permitted.
First, the Court must be satisfied it has jurisdiction with respect to the claim (FCR 10.43(4)(a)). I am so satisfied. The matter arises under a law of the Commonwealth (viz the Copyright Act 1968 (Cth) (‘Copyright Act’)) and this Court has jurisdiction to hear such cases by virtue of s 39B(1A)(c) of the Judiciary Act 1903 (Cth).
The second (FCR 10.43(4)(b)) requirement is that the proceeding should be a kind mentioned in the table in FCR 10.42. The proceeding alleges a contravention of an Australian copyright in Australia, contraventions of the Copyright Act and claims relief under that Act. Accordingly, the suit falls within items 1, 13, 14 and 15 of the table in FCR 10.42 which provide:
‘10.42 When originating application may be served outside Australia
Subject to rule 10.43, an originating application, or an application under Part 7 of these Rules, may be served on a person in a foreign country in a proceeding that consists of, or includes, any one or more of the kinds of proceeding mentioned in the following table.
Item Kind of proceeding in which originating application may be served on a person outside Australia
1Proceeding based on a cause of action arising in Australia
…
13Proceeding based on a contravention of an Act (wherever occurring) seeking relief in relation to damage suffered wholly or partly in Australia
14Proceeding in relation to the construction, effect or enforcement of an Act, regulations or any other instrument having, or purporting to have, effect under an Act.
15Proceeding seeking any relief or remedy under an Act, including the Judiciary Act 1903
Thirdly, the Court must be satisfied that the Applicants have a prima facie case for all or any of the relief claimed (FCR 10.43(4)(c)). The First Applicant, Boomerang Investments Pty Ltd, is the owner of the copyright in the famous musical work Love is in the Air which was first performed by John Paul Young in 1977 and has since been reprised with considerable success on more than one occasion. The Second and Third Applicants are its composers. They are joined to the suit to assert their moral rights in the literary and musical works comprised in the song.
The First and Second Respondents appear to carry on a business of producing and performing music under the name Glass Candy. The Applicants allege that the Glass Candy members have made available for download and streaming, their song, Warm in the Winter. The evidence before me shows that this song was available to be accessed in Australia on Spotify, YouTube, Facebook and SoundCloud at relevant times. Since making a work available online is a ‘communication’ of the work under s 10 of the Copyright Act, these actions are capable of being infringements of the copyright within the meaning of s 115.
The question then is whether there is a prima facie case that Warm in the Winter contains a substantial part of Love is in the Air. The Applicants say that Warm in the Winter contains the same line ‘Love is in the Air’ as the Applicants’ song and that, in effect, the melody for that line is also the same. There is also some evidence that the subsequent chordal structure of both songs is the same. I have listened to both songs and doing so arguably supports that view. I am satisfied, therefore, that there is a prima facie case.
Each of the requirements of FCR 10.43(4) being satisfied, the Court is therefore authorised to grant leave to serve the process out of the jurisdiction. FCR 10.44 relates to service of other documents outside Australia which, relevantly, covers the Amended Statement of Claim and an order of the Court. For these documents, the Court must be satisfied that service of them is permitted by the Hague Convention (FCR 10.44(4)(a)(ii)).
The Applicants propose to serve the Originating Application, Amended Statement of Claim and the Court’s Order under the Convention on the Service of Judicial and Extrajudicial Documents in Civil or Commercial Matters done at the Hague on 15 November 1965 (‘the Hague Convention’). In relation to the originating process, the Applicants are next required to prove (FCR 10.43(3)) the country where service is to be effected, the proposed method of service and that that method of service is authorised.
Each of those matters is demonstrated. The country in question is the United States of America (‘US’) and the method of service is proposed to be under the Hague Convention. The US is a party to the Hague Convention which applies to ‘judicial or extrajudicial documents’ in commercial or civil cases: Article 1. I am satisfied that the Originating Application and Amended Statement of Claim (and the Court’s Order) are ‘judicial documents’. Hence, I am satisfied that the Hague Convention permits service of the documents in the US. Accordingly, FCR 10.43(3)(c) is satisfied. As these matters have been demonstrated, I am also satisfied that service of the Amended Statement of Claim and the Order of the Court is permitted under FCR 10.44. Finally, for completeness, the application for service ex juris satisfied the requirements of FCR 10.43(3) in that it was accompanied by an affidavit dealing with the prescribed matters.
In those circumstances, I propose to grant the leave sought. I make the orders sought in the Interlocutory Application. The Applicants should now approach the Registrar under FCR Division 10.6.
I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate:
Dated: 12 January 2018
SCHEDULE OF PARTIES
NSD 1738 of 2017 Respondents
Fourth Respondent:
SOCIETE AIR FRANCE, SA
0
0
4