DISTRICT COURT OF SOUTH AUSTRALIA
(Civil: Interlocutory Application)
D'ANNUNZIO v WILLUNGA PROJECTS PTY LTD (No 2)
[2021] SADC 53
Decision of his Honour Judge Burnett
7 May 2021
PROCEDURE - STATE AND TERRITORY COURTS: JURISDICTION, POWERS AND GENERALLY
PROCEDURE - STATE AND TERRITORY COURTS: JURISDICTION, POWERS AND GENERALLY - INHERENT AND GENERAL STATUTORY POWERS - TO PREVENT ABUSE OF PROCESS - ATTEMPTS TO RELITIGATE
INTELLECTUAL PROPERTY - COPYRIGHT - INFRINGEMENT - ARTISTIC WORKS
INTELLECTUAL PROPERTY - COPYRIGHT - REMEDIES FOR INFRINGEMENT - ACCOUNT OF PROFITS
The applicant had brought a claim against the respondent for breach of copyright. In his claim, the applicant alleged that the respondent had breached the copyright in plans that he had developed for the subdivision of certain land at Willunga. The applicant claimed that he was entitled to an account of profits and that those profits should be assessed on the basis of the profits of the whole subdivision.
The applicant has sought an account of profits in the sum of $2,000,000.00.
The respondent denies it has copied the plans of the applicant or that the applicant is entitled to an account of profits. The respondent also denies that, if an account is ordered, profits should be assessed on the profits of the whole development, but submits that they should be assessed on the cost of the plan (being the extra profit derived from the alleged breach).
The subdivision comprises two stages. Stage 1 comprised nine allotments and settlement on those allotments occurred in about March 2021. Stage 2 comprises the remaining 21 allotments and is due to be completed in about July 2021.
By an interlocutory application dated 1 March 2021 the applicant sought an order that the respondent pay the net proceeds of sale after the deduction of expenses, including amounts owed by the mortgagee into Court. That application was refused following a hearing before a judge of this Court.
The applicant has brought a further interlocutory application dated 16 April 2021 in which it seeks substantially the same order although it has framed that application as an application for a freezing order.
Rule 102.1(5) of the Uniform Civil Rules 2020 (SA) provides that if a party seeks the same or substantially the same orders as were sought in a previous application, the party must seek leave to bring the application and the question of leave must be considered first.
In the period between the two applications, the applicant has obtained documents that were produced to him on discovery by the respondent. The applicant submits that these new documents constitute new evidence which was not available to him at the time of the hearing of the first application. The applicant submitted that the proposed new material is relevant both to the assessment of the prima facie case of the applicant and the balance of convenience.
The respondent opposed the application.
Held:
1. The application is granted and leave is given to the applicant to bring the second application.
2. The two applications sought…
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- AGLC
- D'ANNUNZIO v Willunga Projects Pty Ltd (No 2) [2021] SADC 53
- Case
- [2021] SADC 53
- Decision Date
CaseChat Overview and Summary
The central legal issues in the case were whether D'Annunzio's second application constituted an abuse of process, and if leave should be granted for the applicant to bring the second application. The court had to consider the principles governing the grant of leave in such circumstances, as well as the relevance and availability of new evidence that the applicant sought to rely upon in the second application. The court also had to assess the impact of the new evidence on the balance of convenience and the interests of justice.
The court found that the principles relevant to the granting of leave to bring a second application were the same as those that determine whether it is an abuse of process to bring such an application. The court held that to justify the granting of leave, the applicant needed to establish either a material change of circumstances or the availability of new evidence that was not available at the time of the original hearing. In this case, the evidence regarding the respondent's trustee status and the assignment of copyright to D'Annunzio were not new evidence, as they were available to D'Annunzio at the time of the first application. However, the evidence regarding the alleged contravention of the copyright by the respondent from the commencement of the project and the respondent's budget were relevant to the assessment of the balance of convenience and, therefore, in the interests of justice, the applicant should be permitted to bring the second application.
The court granted the application and gave leave to D'Annunzio to bring the second application. The court found that the principles relevant to the granting of leave were the same as those that determine whether it is an abuse of process to bring a second application. The court held that the evidence in relation to the trustee status of the respondent and the assignment of copyright to D'Annunzio were not new evidence and could not justify the granting of leave. However, the evidence regarding the alleged contravention of the copyright by the respondent from the commencement of the project and the respondent's budget were relevant to the assessment of the balance of convenience and, therefore, in the interests of justice, the applicant should be permitted to bring the second application.
Orders
Orders of the court
Held:
1. The application is granted and leave is given to the applicant to bring the second application.
2. The two applications sought the same or substantially the same orders, so leave was required. It did not matter that the basis upon which the applicant sought the orders was different in the two applications.
3. The principles relevant to the granting of leave are the same principles that determine whether it is an abuse of process to bring a second application: Preston v Nikolaidis [2021] NSWSC 36 applied.
4. To justify the granting of leave to bring the second application, the applicant needed to establish that there had been a material change of circumstances or that evidence had become available that was not available at the time of the original hearing.
5. The evidence in relation to the trustee status of the respondent was available to the applicant at the time of hearing of the first application and therefore could not constitute new evidence which would justify the granting of leave.
6. The assignment of copyright to the applicant by his surveyor was not a material matter as the judge hearing the first application had proceeded on the basis that the applicant had, on a prima facie basis, established that he was the joint author of the work. Therefore, the requirement that he hold copyright was satisfied on the interlocutory application.
7. The failure of the respondent to provide an undertaking was not new evidence as the respondent, by its opposition to the first application, had always maintained the position that it was not required to and would not pay the net profit of the development into court.
8. The new evidence in relation to alleged contravention of the copyright by the respondent from the commencement of the project was relevant to the question as to how an account of profits, if ordered, would be assessed. As such, it was a matter that was relevant to the balance of convenience. It was in the interests of justice that the applicant be permitted to bring the second application utilising that evidence.
9. The new evidence regarding the budget of the respondent is relevant to the assessment of the balance of convenience and therefore whether and to what extent the respondent would be inconvenienced by the making of such an order.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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