C21 Pty Ltd (Trustee) v Hou (No 7) - [2025] FedCFamC2G 1299

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
C21 Pty Ltd (Trustee) v Hou (No 7) [2025] FedCFamC2G 1299

File number(s): SYG 2055 of 2021

Judgment of: JUDGE MANOUSARIDIS

Date of judgment: 14 August 2025

Catchwords: INTELLECTUAL PROPERTY – Final relief – scope of delivery up orders - whether applicant’s proposed form of order, if made, might call for the identification and destruction of files or data beyond the files and data that are the subject of findings made in the reasons for judgment in relation to which the delivery up orders are intended to be made – delivery up orders to be made in the form proposed by respondents.

Cases cited: C21 Pty Ltd (Trustee) v Hou (No 6) [2025] FedCFamC2G 927

Division: General

Number of paragraphs: 8

Date of last submission/s: 10 July 2025

Date of hearing: Decided on the papers

Solicitor for the Applicant: Gilbert + Tobin

Solicitor for the Respondents: MGA Lawyers
ORDERS

SYG 2055 of 2021

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
C21 PTY LTD ATF THE RAMADAN FAMILY TRUST

Applicant

AND:
KATE HOU

First Respondent

HIBI DESIGN PTY LTD

Second Respondent

ORDER MADE BY:

JUDGE MANOUSARIDIS

DATE OF ORDER:

14 AUGUST 2025

THE COURT ORDERS THAT:
1.In these orders:
(a)Downloaded Files means all or any of the files or part of the files that were the subject of the downloads specified in the log of the NAS server for 20 August 2021; the 43 downloads identified in the email Google sent to the first respondent at 11.36 pm on 22 August 2021; and the 2 downloads identified in the email Google sent to the first respondent at 6.22 pm on 15 September 2021 referred to in declaration 4(a) to (c) of the orders of the Court dated 13 June 2025 (Orders);
(b)Hibi Files means the files or part of the Hibi Keycap Design template files identified in columns 2 of Infringement Table 2 and Infringement Table 3 of the Orders.

2.Within 14 days of the date of these orders, but subject to any claim for privilege by the first respondent, the first respondent file and serve an affidavit in which the first respondent:
(a)identifies every device or devices the first and second respondents control, or to which they have access:
(i)to which the Downloaded Files were downloaded, uploaded, transferred, or copied;
(ii)which contain any of the Hibi Files;

(b)to the best of the first respondent’s belief and information, identifies every device or devices the first and second respondents once controlled or had access to, but no longer control or have access to:
(i)to which the Downloaded Files were downloaded, uploaded, transferred, or copied to;
(ii)which contained any of the Hibi Files.

3.Within 14 days of filing the above affidavit, each of the parties are to comply with the Delivery Up Protocol at Attachment 1 to these orders.
4.Prior to the commencement of the Delivery Up Protocol, Rod McKemmish of Cyter and anyone assisting him in…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] FedCFamC2G 1299
Decision Date: 14 August 2025

CaseChat Overview and Summary

In C21 Pty Ltd (Trustee) v Hou (No 7), the plaintiff sought final relief concerning intellectual property infringement. The plaintiff alleged that the defendant had infringed copyright in relation to certain computer programs. The Federal Court of Australia was tasked with determining the scope of delivery up orders that should be granted as part of the final relief. The court had to decide whether the plaintiff's proposed form of order, which included the identification and destruction of files or data, was appropriate and whether it extended beyond the files and data that were the subject of findings in the reasons for judgment.

The primary legal issue was the appropriate scope of the delivery up orders in relation to intellectual property infringement. The plaintiff argued that the orders should include the identification and destruction of files or data beyond those already identified in the reasons for judgment. The court needed to balance the plaintiff's interest in ensuring that the defendant could not continue to infringe copyright against the defendant's rights and the potential for overreach in the form of the orders. The court considered the principles of equity and fairness in intellectual property disputes and the need to tailor remedies to the specific facts of the case.

The court concluded that the proposed form of order by the plaintiff might result in the identification and destruction of files or data beyond those that were the subject of findings in the reasons for judgment. It determined that such an approach could lead to an unjust enrichment of the plaintiff and an unjust penalty for the defendant. The court held that the delivery up orders should be made in the form proposed by the respondents, which were more narrowly tailored to the specific findings made in the reasons for judgment. This decision ensured that the relief granted was proportionate to the infringement found and avoided any potential overreach.

The court made delivery up orders in the form proposed by the respondents, ensuring that the scope of the orders was limited to the files and data that were the subject of the findings in the reasons for judgment. This outcome balanced the need to protect the plaintiff's intellectual property rights with the need to avoid imposing excessive penalties on the defendant. The court's decision provided clarity on the appropriate scope of delivery up orders in intellectual property disputes, ensuring that remedies are tailored to the specific circumstances of each case.

Orders