Classic Frosted Glass Pty Ltd v Wilhand Pty Ltd

[1999] FCA 540

FEDERAL COURT OF AUSTRALIA

Classic Frosted Glass Pty Ltd v Wilhand Pty Ltd [1999] FCA 540

CLASSIC FROSTED GLASS PTY LTD v WILHAND PTY LTD
NG 1117 OF 1997

JUDGE:         SACKVILLE J
DATE:           27 APRIL 1999

PLACE:         SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1117 OF 1997

BETWEEN:	CLASSIC FROSTED GLASS PTY LTD Applicant
AND:	WILHAND PTY LTD Respondent
JUDGE:	SACKVILLE J
DATE OF ORDER:	27 APRIL 1999
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.A declaration that the applicant is the owner of copyright in the following designs and drawings for ceramic glass panels contained in its catalogue, being Exhibit A in the proceedings herein, entitled “Classic Frosted Glass presents the Classic Range of Ceramic Enamel Glass Panels”:

(a)    Orchid

(b)    Rose Jewel

(c)    Blue Wren PN

(d)    Kookaburra Jewel

(e)    Kookaburra Gum Leaves

(f)     Shield

2.An order that the respondent, its servants and agents, be restrained from manufacturing, producing, selling, causing to be sold or offering for sale, the ceramic enamel glass panels shown in the respondent’s eleven page catalogue, being Exhibit B in the proceedings herein, as:

(a)    X0E3 “Orchid Frost” with Border (in pair)

(b)    “Triple Orchid Frost” with Border (in pair)

(c)    “Rose Jewel Frost”

(d)    “Blue Wren Frost” (in pair)

(e)    “Kookaburra Jewel Frost” (in pair)

(f)     “Kookaburra Green Leaves” (in pair)

(g)    “Kookaburra Brown Leaves” Cathedral (in pair)

(h)    “Double Orchid Frost” (in pair)

(i)   “Double Orchid Frost” with Border (in pair)

(j)   “Double Orchid Gluechip” (in pair)

(k)    “Rose Jewel” Cathedral

(l)   “Rose Jewel” Gluechip

(m)  “Shield Frost”

except with the licence of the applicant.

3.The proceedings otherwise be dismissed.

4.There be no order as to costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1117 OF 1997

BETWEEN:	CLASSIC FROSTED GLASS PTY LTD Applicant
AND:	WILHAND PTY LTD Respondent

JUDGE:	SACKVILLE J
DATE:	27 APRIL 1999
PLACE:	SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

1. In this matter, the parties have handed up short minutes of order by consent and asked me to make the declaration and order contemplated by those short minutes of order.  The short minutes take the following form:

   “By consent

   1.A declaration that the applicant is the owner of copyright in the following designs and drawings for ceramic glass panels contained in its catalogue entitled “Classic Frosted Glass Presents the Classic Range of Ceramic Enamel Glass Panels”

   (a)      Orchid
   (b)      Rose Jewel
   (c)       Blue Wren PN
   (d)      Kookaburra Jewel
   (e)       Kookaburra Gum Leaves
   (f)       Shield

   2.An order that the respondent, its servants and agents be restrained from manufacturing, producing, selling, causing to be sold or offering for sale, the ceramic enamel glass panels shown in the respondent’s eleven page catalogue as:

   (a)      X0E3 “Orchid Frost” with Border (in pair)
   (b)      “Triple Orchid Frost” with Border (in pair)
   (c)       “Rose Jewel Frost”
   (d)      “Blue Wren Frost” (in pair)
   (e)       “Kookaburra Jewel Frost” (in pair)
   (f)       “Kookaburra Green Leaves” (in pair)
   (g)      “Kookaburra Brown Leaves” Cathedral (in pair)
   (h)      “Double Orchid Frost” (in pair)

   (i)       “Double Orchid Frost” with Border (in pair)
   (j)       “Double Orchid Gluechip” (in pair)
   (k)      “Rose Jewel” Cathedral
   (l)       “Rose Jewel” Gluechip
   (m)     “Shield Frost”
   except with the licence of  the applicant.

   3.        The proceedings be otherwise dismissed with no order as to costs.”

2. Mr Wilson, counsel for the applicant, indicated that he wished to adduce evidence to support the granting of the declaration in paragraph 1.  He has read affidavits and tendered a catalogue which establish the basis of the applicant's claim to be the holder of copyright in the designs reproduced in the catalogue.  The catalogue was admitted into evidence as Exhibit A.

3. I raised with Mr Wilson the question of the Court's power to make a declaration in the form of paragraph 1 of the short minutes of order, as distinct from a declaration that the respondent had, in a particular manner, contravened the applicant's copyright.  Mr Wilson referred me to Mr Justice Young’s book, Declaratory Orders (Butterworths, 2nd ed, 1984), par 1111.  That paragraph in turn refers to the decision of Upjohn J in Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637.

4. In that case, Upjohn J made a declaration, inter alia, that the plaintiff was entitled to copyright in a fixtures list which it had compiled.  It does not appear that any of the cases in Australia that have cited Football League have made a declaration in the same form.  However, in A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478, Drummond J (at 502) provided the following question and answer in proceedings relating to copyright in a catalogue:

   “(3)     Does the first applicant own the copyright in the catalogue?  Yes.”

5. Section 21 of the Federal Court Act 1976 (Cth) gives the Court power, in relation to a matter in which it has original jurisdiction, to make binding declarations of right, whether or not any consequential relief is or could be claimed.  There is, in my opinion, no reason to doubt that the jurisdiction conferred by s 21 of the Federal Court Act is sufficient to sustain a declaration in the form of par 1 of the short minutes of order.  Football League shows that there are circumstances in which a declaration that the applicant holds copyright in particular items will be made.  Of course, such a declaration binds only the parties and would create no res judicata or issue estoppel against a third party.

6. In this case, the declaration is one to which the respondent consents.  As I have indicated, the unchallenged evidence establishes that the applicant holds the copyright in the designs and drawings identified in par 1 of the short minutes of order.  Accordingly, I think it appropriate to make a declaration in the form that has been sought.

7. I also think it is appropriate to make an order in the form of par 2 of the short minutes restraining the respondent, its servants and agents, from the conduct identified therein. 

8. Accordingly, I make the declaration and order in pars 1 and 2 respectively of the short minutes of order.  In accordance with par 3, I order that the proceedings be otherwise dismissed with no order as to costs.

I certify that this and the preceding 8 (eight) paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sackville

Associate:

Dated:             27 April 1999

Counsel for the Applicant:	Mr R D Wilson
Solicitor for the Applicant:	H Danalis & Co
Solicitor for the Respondent:	Sprusons Solicitors
Date of Hearing:	27 April 1999
Date of Judgment:	27 April 1999