D'ANNUNZIO v Willunga Projects Pty Ltd (No 2) - [2021] SADC 53

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 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.
Uniform Civil Rules 2020 (SA) r 1.5, 3.1, 12.2, 102.1(5); Copyright Act 1968 (Cth) s 115, referred to.
Preston v Nikolaidis [2021] NSWSC 36, applied.
D’Annunzio v Willunga Projects Pty Ltd [2021] SADC 36; Bajramovic v Calubaquib [2015] NSWCA 139; Liu v The Age Company Limited (2016) 92 NSWLR 679; [2016] NSWCA 115; Bernard v Minster for Immigration, Citizenship, Migrant Services and Multicultural Affairs (No. 2) [2020] FCA 109; P Dawson Nominees Pty Ltd v Australian Securities Commission (No. 2) [2009] FCA 413; Commonwealth of Australia v Albany Port Authority [2006] WASCA 185; Nominal Defendant v Manning (2000) 50 NSWLR 139; Australian Broadcasting Corporation v O’Neill [2006] HCA 46; (2006) 227 CLR 57; D A Christie Pty Ltd v Baker [1996] 2 VR 581; Dart Industries Inc v The Décor Corporation Pty Ltd (1993) 116 ALR 385; (1993) 179 CLR 101; Seely International Pty Ltd v Millenium Electronics Pty Ltd [2020] SASC 205; Sony Computer Entertainment Australia Pty Ltd v Kasmara [2003] FCA 1496; Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 59 FCR 49, considered.

D'ANNUNZIO v WILLUNGA PROJECTS PTY LTD (No 2)
[2021] SADC 53

Civil
Introduction

This decision concerns whether the applicant is required to seek leave, and if so whether leave should be granted, to file an interlocutory application in which he seeks a freezing order and an order for payment into Court of the net proceeds of a subdivision of a property at Willunga. The respondent submits that the applicant requires leave because he has already brought an earlier application for the same or substantially the same relief.
By an interlocutory application dated 1 March 2021 (the first application), the applicant sought, inter alia, an order that:
The respondent be ordered to pay net proceeds of the sale of the subject land and improvements after the deduction of all proper expenses in respect of the purchase, subdivision and sale of the subject land by the respondent and the payment of the amount due under any mortgage secured over the land be paid into Court to the credit of this action in an account to be entitled ‘CIV-21-001750 Nic D’Annunzio v Willunga Projects Pty Ltd (ACN 642 919 453) – Proceeds of Sale of Land’ there to abide the further order of the Court.
That application was heard on 9 March 2021 by Judge Davison of this Court. By a judgment delivered on 29 March 2021, Her Honour refused the application.[1]
[1] D’Annunzio v Willunga Projects Pty Ltd [2021] SADC 36.
The applicant has brought a further interlocutory application dated 16 April 2021 (the second application) in which he seeks a freezing order and an order for payment into Court in the following terms:
The respondent be ordered to pay net proceeds of the sale of the land comprised in Certificate of Title Register Book Volume 6249 Folio 835 into Court to the credit of this action in an account to be entitled ‘CIV-21-001750 Nic D’Annunzio v Willunga Projects Pty Ltd (ACN 642 919 453) – Proceeds of Sale of Land’ there to abide the further order of the Court.
The respondent submits that the applicant has sought the same or substantially the same orders as had been sought in a previous interlocutory application and therefore leave to bring the second application is required.
Rule 102.1(5) of the Uniform Civil Rules 2020 (SA) (UCR) states:
(5)If a party seeks (whether by written or oral interlocutory application) the same or substantially the same orders as were sought in a previous interlocutory application (whether written or oral), the party must seek leave to bring the application and the question of leave will be considered first when the application is to be heard or listed for hearing.
The applicant accepted that the ultimate effect and outcome of the applications, if granted, would be the same, but submitted that the first application was for an injunction, whereas the second application was for a freezing order. The applicant submitted that this difference was significant, because in the hearing of the first application the respondent had submitted that the first application must fail because an application for a freezing order ought to have been made as an account of profits was a personal remedy and not a proprietary remedy. The respondent had further submitted that the injunction, as framed, provided for a proprietary remedy. The applicant submitted that the issue of whether an account was a personal remedy was not relevant to the second application in which a freezing order was sought, because such an order sought to prevent the risk that a prospective judgment might be wholly or partly unsatisfied as a result of the assets of the respondent, in this case the profits of the development, having been distributed by the time that judgment was obtained.
Background
The applicant entered into a written contract dated 24 April 2015 to purchase land at Willunga from the then registered proprietor, a Mr Inkley, being three vacant allotments situated at Willunga comprising Certificate of Titles Register Book Volume 5800 Folio 162, Volume 5606 Folio 992 and Volume 5793 Folio 937 (the Willunga land). The applicant’s plan was to subdivide the Willunga land into 35 vacant allotments.
The applicant, in consultation with a Mr Andrew Davidson of Andrew Davidson Property Development Consultants, prepared a plan for subdivision. The final drawing prepared by the applicant and Mr Davidson was a drawing entitled “Land Division Concept Plan” dated 1 June 2018 (the 2018 Plan) and was lodged with the City of Onkaparinga. The applicant claims that the respondent infringed the copyright in the 2018 Plan.
The contract between the applicant and Mr Inkley was terminated by notice dated 21 August 2019.
Mr Inkley had entered into a contract with the respondent (which was the nominee of Mr Gray who was initially a party to the contract) on 26 February 2019 pursuant to which Mr Inkley agreed to sell to the respondent the Willunga land. Settlement was initially to take place under that contract on 31 October 2019 or within 90 days of the satisfaction of various special conditions, whichever was the latter. The special conditions included a condition that the contract was subject to the respondent obtaining approval from the Onkaparinga Council for a residential subdivision on or before 30 August 2019. The contract was also subject to the termination of the contract between Mr Inkley and the applicant.
By an addendum to the contract dated 30 August 2019, the date for the respondent to obtain development approval was varied from 30 August 2019 to 31 December 2019. The settlement date was also varied from 31 October 2019 to 31 January 2020 or within 90 days of the satisfaction of the special conditions, whichever was the latter.
A second addendum to the contract dated 23 October 2019 varied the date for the respondent to obtain the development approval from 31 December 2019 to 28 March 2020 and the date for settlement from 31 January 2020 to 30 April 2020 or within 90 days of the satisfaction of the special conditions, whichever was the latter.
Lastly, a third addendum to the contract dated 12 May 2020 noted that the respondent had waived the condition that it obtain development approval by a certain date as development approval had been granted, but extended the date for settlement from 30 April 2020 to 6 August 2020.
Ultimately settlement occurred on or about 10 August 2020 and on that date the respondent became the registered proprietor of the Willunga land.
The respondent’s plan was to subdivide the Willunga land into 30 allotments. The subdivision was to be in two stages, with Stage 1 comprising nine allotments and Stage 2 comprising 21 allotments. As at 9 March 2021 (when the first application for the injunction was heard and an affidavit filed on behalf of the respondent), Stage 1 had been completed and six of the nine blocks had settled with a sale price of approximately $250,000 after GST per allotment. At that date, it was expected that civil works in relation to Stage 2 would be completed in approximately two months and that settlement of those 21 allotments would occur by the end of May/June 2021.[2] The proceeds from the sale of the allotments of Stage 1 were to be used to fund the Stage 2 works as there were otherwise insufficient funds to complete Stage 2. The respondent therefore submitted at the hearing of the first application that there was a risk of substantial loss and damage to the Willunga project if those funds were not made available.[3]
[2] Reasons at [20].
[3] Ibid.
The respondent in its affidavit material in relation to this application[4] provided an update as to the status of the project. The respondent had settled on all nine allotments in Stage 1, but there had been some delays and it expected that the settlement of the 21 allotments of Stage 2 was likely to be completed by the end of July 2021. The respondent had currently $317,000 in its bank account which it said was needed to proceed to complete the development of Stage 2 in order to discharge its current and future anticipated expenses, including contingencies. Mr Gray, the director of the respondent further gave evidence that the total cost of the development was likely to be around $4.5 million and that the plan of subdivision formed only a tiny fraction of that cost.[5]
[4] Affidavit of David Gray sworn 22 April 2021 at [5]-[8].
[5] Ibid at [10].
The respondent engaged Weber Frankiw Surveyors Pty Ltd (WFK) to prepare a plan for the subdivision and for submission of that plan to the City of Onkaparinga Council. That plan was first submitted for approval to the Council on or about 1 October 2019. Amended plans were submitted on 15 October 2019 and 6 August 2020. After some further amendments, the final plan was approved by the Council.
The applicant has alleged that the respondent’s plan of subdivision infringes the applicant’s copyright over the 2018 Plan and that the respondent’s plan is a reproduction of the 2018 Plan or a substantial part of that plan. The applicant claims to be entitled to an account of profits pursuant to s 115 of the Copyright Act 1968 (Cth) in relation to the profits made by the respondent by reason of the infringement of the copyright. The applicant has sought an account of profits in the sum of $2,000,000.00, being the amount that he claims was the anticipated profit of the entire development.
During the course of the hearing on 29 April 2021 (in which the question of leave was addressed) it became apparent that the applicant would need to file an amended statement of claim as it appeared that the applicant was now alleging that the respondent had access to and copied a plan which had been published by the Land Services Group of the Government of the South Australia. The respondent now alleges in its amended statement of claim that this plan (the Government Plan) was not an original work so as to attract copyright, but was a reproduction of the applicant’s 2018 Plan. The applicant further alleges that the respondent inspected the Government Plan. The applicant pleads that it was the intention of the respondent, in reproducing the 2018 Plan, to gain from the benefit of the work done by the applicant in producing that plan and the favourable view of the Council to the essential elements of that plan, so as to facilitate the granting of development approval to the respondent’s plan for subdivision
Legal principles as to granting of leave to bring a second application
The parties were in broad agreement as to the principles which govern an application for leave to bring a second application for the same or substantially the same orders. The decision of Williams J in Preston v Nikolaidis[6] provides a useful and recent overview of the relevant authorities which set out when a second application should be refused on the basis that it would be an abuse of process to bring the application. In my view, the same principles apply to a determination of whether leave should be given to bring the second application. The following principles are relevant:
1.First, an application for an injunction (or a freezing order) is an interlocutory application. Interlocutory orders create no res judicata, issue estoppel or Anshun estoppel.[7]
2.Secondly, the general rationale of the principles relating to res judicata, issue estoppel and Anshun estoppel of private injustice and the public undesirability of permitting litigation of matters already litigated once, also applies to the reconsideration of interlocutory orders. There would be injustice to the other party and the waste of public judicial time and resources if that was not so.[8]
3.Thirdly, the overarching principles of case flow management and civil practice and procedure are designed to facilitate the just resolution of disputes according to law as inexpensively and efficiently as possible.[9] These principles mandate that there be constraints on bringing a second interlocutory application on the same subject matter.
4.Fourthly, the overriding principle that informs the approach of courts in determining whether to permit the hearing of a second interlocutory application seeking the same or similar relief is that the court should do whatever the interests of justice require in the particular circumstances of the case.[10]
5.Fifthly, it will not be an abuse of process to bring a second application where there has been a material change of circumstances or where evidence has become available that was not available at the time of the original hearing.[11]
6.Sixthly as held by McColl JA in Liu v The Age Company Limited, McColl JA in determining what it is the interests of justice, the court will have regard amongst other matters to the nature of the first interlocutory application, the nature of the change in position and whether any matter relied upon to change the basis upon which the challenged earlier order was made was open to be advanced at the earlier hearing.
[6] [2021] NSWSC 36.
[7]    Bajramovic v Calubaquib [2015] NSWCA 139 at [40]-[41] per Emmett JA (Leeming JA and Adamson J concurring) Liu v The Age Company Limited (2016) 92 NSWLR 679; [2016] NSWCA 115 at [168]-[169] and [199] per McColl JA.
[8]    Liu v The Age Company Limited ibid at [168]; Bernard v Minster for Immigration, Citizenship, Migrant Services and Multicultural Affairs (No. 2) [2020] FCA 109 at [4].
[9]    Uniform Civil Rules 1.5, 3.1 and 12.2.
[10] Liu v The Age Company Limited at [199]; Bajramovic v Calubaquib [2015] NSWCA 139 at [41].
[11] Bajramovic v Calubaquib at [41].

In P Dawson Nominees Pty Ltd v Australian Securities Investments Commission (No. 2),[12] Goldberg J held that for the applicant to satisfy the threshold issue, they needed to persuade him that since the earlier order, one or more of the following factors had occurred or had been satisfied:
1.There was new evidence which was not available or reasonably available to them at the time the previous orders were made.
2.There had been a material change in the circumstances since those orders were made.[13]
[12] [2009] FCA 413.
[13] Ibid at [49].
I accept the submission from the respondent that the court must exercise caution in permitting a second application and therefore should scrutinise the new evidence or change in circumstances to determine whether it justifies the second application. The respondent referred to the decision of Pullin JA in Commonwealth of Australia v Albany Port Authority[14] (which cited with approval the judgment of Hedyon JA in Nominal Defendant v Manning[15] and Charles JA’s judgment in D A Christie Pty Ltd v Baker,[16] where Pullin JA stated:
I refer again to Manning and Christie, Hedyon JA in Manning said:
…a litigant bringing a second application where circumstances have not changed on evidence available earlier is facing serious and self-created risks of an adverse exercise of judicial discretion. The real evils to which Hayne JA referred to in DA Christie Pty Ltd v Baker-the risk of conflicting decisions, the unnecessary vexing of respondents, judge shopping and a diminution of certainty in the conduct by respondents of their affairs - and others - damaging public confidence in the integrity of judicial decisions, expending time and money on litigation unnecessarily - are evils which each court in its individual discretion will rightly strain to avoid.
[14] [2006] WASCA 185 at [74]-[76].
[15] (2000) 50 NSWLR 139.
[16] [1996] 2 VR 581.
In the present case, the applicant accepted that it needed to show either a material change of circumstances or new evidence which was now available, but which was not previously available. The applicant further submitted that those matters had to be considered in the context in which the application was made and in particular, the fact that at the time of the first application, the applicant did not have any documentation regarding how the respondent had allegedly used the 2018 Plan of the applicant.
The judgment of Judge Davison in dismissing the first application
The relevance of new evidence which was not available at the time the previous orders were made and the materiality of any change in circumstances since those orders were made, must be considered in the context of the findings made by Judge Davison on the first application.
At the hearing of the first application, the respondent submitted that the applicant had established not a prima facie case as that term was explained in Australian Broadcasting Corporation v O’Neill.[17] In that respect, the respondent submitted that the applicant had not established, even on a prima facie basis, that it owned the copyright in the 2018 Plan. The respondent submitted that the author of that plan was Mr Davidson. Her Honour was satisfied for the purposes of the interlocutory application that the applicant was the joint author of the 2018 Plan.[18]
[17] [2006] HCA 46; (2006) 227 CLR 57 at [65].
[18] Paragraph 30 of the Reasons.
As to whether there had been an infringement of copyright, Her Honour found that there were sufficient similarities between the 2018 Plan and the subdivision plan of the respondent to justify a finding on a prima facie basis that the respondent had infringed the copyright of the applicant by reproducing the plan.[19]
[19] Paragraph 37 of the Reasons.
As to the balance of convenience, Her Honour was satisfied that if the injunction were granted, the respondent would be significantly inhibited or prevented from carrying on with the project. Her Honour observed that the project had just concluded the first stage and there was to be settlement in relation to the properties that comprised that stage. Her Honour further observed that there was no reason to think that the respondent could not satisfy any order making an account of profits. Her Honour further held that the risk to the applicant that profits might be distributed prior to the court ordering an account of profits could be accommodated by an order for an urgent trial.
Is leave required to bring the second application
The applicant submitted that his first application was couched as an ordinary injunction application, whereas the second application is characterised as a freezing order application.
I do not consider that to be an answer to the requirement that leave be obtained before the application is heard.
UCR r 102.1(5) refers to a party seeking the same or substantially the same orders. In my opinion that rule requires the court to examine the substance of the orders being sought in each of the interlocutory applications, rather than a characterisation of the basis upon which they were made.
In each case, the applications seek the same or substantially the same orders. It does not therefore matter, in my view, that on one occasion the orders were sought on the basis of an interlocutory injunction and on the second occasion on the basis of a freezing order. The same restraint of the respondent was sought and the same payment into court in each application.
It would be contrary to public policy and the undesirability of permitting matters that had been fully argued to be litigated again as well as being unjust to the other party, if a party could seek relief on one basis which was refused, and then seek the same relief on some other basis. Although not directly a bar, such an approach would be contrary to the Anshun principle, considered in Liu v The Age Company Limited[20] to be a relevant factor in determining whether a second application on the same subject matter should be permitted.
[20] (2016) 92 NSWLR 679; [2016] NSWCA 115 at [168]-[169].
I note that Judge Davison referred to the respondent’s submission in the hearing of the first application that the applicant was seeking a freezing order under the guise of an application for an injunction,[21] but did not explicitly accept that submission. That submission played no part in Her Honour’s reasoning in dismissing the application for an injunction.
[21] Judgment of reasons at [43].
For the above reasons, I consider that the applicant is required to seek leave to bring the second application.
New evidence and material change in circumstances
The applicant has submitted that it has satisfied the Court that there has been new evidence or a material change in circumstances in four respects.
First, the applicant submits that he did not know at the time of the first hearing that the respondent was only a trustee for the Willunga Projects Unit Trust and therefore had no other assets.[22]
[22] Affidavit of the applicant sworn 28 April 2021 at [7] and exhibit NDA 13.
In my view that information was clearly available to the applicant at the time of the first hearing. The information was obtained from a Government register (Australian Government – Australian Business Register) and could have been obtained from that source prior to the first hearing.
In fact, in his statement of claim filed on 1 March 2021, the applicant pleaded the respondent was the trustee of a trust known as The Willunga Project Unit Trust.[23] Therefore, the existence of the trust was a matter known to the applicant at the time of the first hearing. It cannot therefore be considered as new evidence which would justify the bringing of the second application.[24]
[23] Paragraph [3] of the Statement of Claim.
[24] See Bajramovic v Calubaquib [2015] NSWCA 139 at [141]; [P Dawson Nominees Pty Ltd v Australian Securities Investments Commission (No 2)] [2009] FCA 413 at [49].
Secondly, in the hearing of the first application it was submitted by the respondent that the applicant did not have copyright in the 2018 Plan (which was the plan which was alleged in the statement of claim to have been copied by the respondent). In the second application, the applicant adduced evidence that subsequent to that hearing there was an assignment by Mr Davidson to the applicant of any interest that Mr Davidson may have in the 2018 Plan.[25]
[25] Affidavit of the applicant sworn 28 April 2021 at [8]-[12].
I do not consider this to be a material change in circumstances or new evidence that would justify the bringing of the second application.
I make that finding because Judge Davison accepted that the applicant had established on a prima facie basis that he was joint author of the 2018 Plan and further accepted on the same basis there had been an infringement of that plan.[26]
[26] Reasons at [30] and [37].
Therefore, the further evidence on this topic could not possibly lead to a different result in the second application as the fact that it tended to prove (namely that the applicant had copyright in the 2018 plans) had already been accepted by the Court.
Thirdly, the applicant claimed that there had been a material change in circumstances because the respondent, after the hearing of the first application, had refused to provide an undertaking that it would pay into court the net settlement proceeds received on sale of the allotments.[27]
[27] See email dated 15 April 2021 and response the same date in the affidavit of the applicant sworn 16 April 2021 at [10] and Exhibit NDA 10.
Again, I do not consider that to be new material change of circumstance. The respondent had already opposed the first application and the order being sought that it pay into court the net proceeds of sale. Therefore, to refuse an undertaking in the same terms or substantially the same terms, is simply confirming that position and is not in my view new evidence.
Fourthly, the applicant relied upon a series of documents which it obtained on discovery from the respondent after the first hearing and which it says constitutes new evidence that was not previously available to him.
I accept that this material is new evidence in that sense. What I must consider is whether that evidence is material and whether it justifies the bringing of a second application.
The applicant submits that this material permits an inference to be drawn that the whole project of the respondent only went ahead because of the applicant’s plans and that is a relevant matter when determining how an account of profits might be assessed.
The applicant refers to the following documents, all of which were discovered by the respondent subsequent to the hearing:
1.The contract between the respondent and the vendor, Mr Inkley, dated 26 February 2019, which contained a special condition that the contract was subject to the respondent obtaining approval for the subdivision from the Onkaparinga Council on or before 30 August 2019. The contract contained a further special condition that it was subject to the termination of the earlier contract between the applicant and Mr Inkley. The applicant submits that these terms are relevant for two reasons: first, they demonstrate that the respondent had knowledge of the applicant’s prior interest in developing the land (when it became aware of the existing plans for subdivision) and secondly, that it suggested that there was a need for the respondent to obtain development approval as a matter of urgency.
2.The addendum to the contract dated 30 August 2019 extending the date for settlement and extending the date for the respondent to obtain development approval from 30 August 2019 to 31 December 2019. The applicant submitted that there was no document discovered by the respondent that showed that the respondent had undertaken any steps itself to develop a plan of subdivision prior to 30 August 2019. The applicant submitted that this document supported an inference that it was the intention of the respondent at all times simply to reproduce the applicant’s plans for subdivision;
3.The emails between the respondent and its surveyors on 2 September 2019 and 3 September 2019 in relation to a plan that had been provided by the surveyors to the respondent some time prior to 2 September 2019 and which the respondent, through Mr Gray, said that it had marked up. That plan is a plan of the subdivision which was published on the website by the Government of South Australia. The applicant submits that this plan is a schematic plan of the applicant’s 2018 Plan. The applicant further submits that the evidence showed Mr Gray on behalf of the respondent and Mr Vassey, from the surveyors, had been working from that plan. The schematic plan made specific reference to the 2018 Plan. The applicant says that the respondent knew that the schematic plan represented the existing development application that had been lodged with the Council by the applicant.
4.The email from Mr Vassey to Mr Gray on 30 September 2019 in which the surveyor attaches, for the first time, a preliminary design. The applicant submits that at that time Mr Vassey had the schematic plan which was a reproduction of the 2018 Plan. The applicant further submits that the preliminary design produced by the respondent on or about 30 September 2019 was very similar to the 2018 Plan. That plan was then lodged with the council on 1 October 2019.
5.The budget of the respondent. That budget discloses that prior to November 2019 there had been no expenditure on the project by the respondent, notwithstanding that it was a condition precedent to the contract between the respondent and Mr Inkley that the respondent initially obtain development approval by 30 August 2019 and then by 31 December 2019. The applicant submitted this supported the inference that the project was based on copying the plans of the applicant. The applicant submitted that the respondent could only achieve these deadlines if it copied the plans that had been prepared by the applicant.
The applicant further submitted that the budget showed the true position of the development at any point of time in relation to the inflow and outflow of funds and how an injunction might inhibit the development. In particular, it shows the position at the time of the first hearing and at the present time. Significantly, the applicant submitted that there was only relatively minimal expenditure from May 2021 onwards and the respondent was coming to a point when all expenditure would be completed.
There are two ways in which the applicant submits that this material is new evidence which justifies the second application.
First, the applicant submits that the inference from this material is that the whole project was premised on the respondent gaining approval for the plan that was the applicant’s plan. That he says is relevant to how the account of profits must be assessed. The applicant further submits that the development would never have been undertaken unless it was premised on his, the applicant’s plan.
Secondly, the applicant submits that the budget material is relevant to the balance of convenience and what impact an injunction may have on the project.
In Australian Broadcasting Corporation v O‘Neill,[28] the High Court emphasised the interaction between the requirement of a prima facie case and the balance of convenience. The Court made that connection when it said how strong the probability [of success] needed to be depended upon the nature of the rights the applicant was asserting and the practical consequences likely to flow from the orders that they seek. Therefore, the strength of the applicant’s case must be considered when assessing the practical consequences of the orders.
[28] [2006] HCA 46; (2006) 227 CLR 57 at [5].
Although the test for obtaining a freezing order is different and does not apply the Australian Broadcasting Corporation v O’Niell test, the balance of convenience must be considered when determining the application.[29]
[29] Seely International Pty Ltd v Millenium Electronics Pty Ltd [2020] SASC 205.
The documents that have been obtained by the applicant in relation to the development of the plans permit a submission to be made that the respondent appropriated the applicant’s design from the outset. That evidence may be relevant to the basis upon which an account of profits is to be made (if an order for an account is made) and therefore part of the assessment of the balance of convenience that the Court needs to undertake.
In Dart Industries Inc v The Décor Corporation Pty Ltd,[30] the High Court held:
An account of profits was a form of relief granted by equity whereas damages were originally a purely common law remedy. As Windeyer J pointed out in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25, at p.34.), even now an account of profits retains its equitable characteristics in that a defendant is made to account for, and is then stripped of, profits which it has dishonestly made by the infringement and which it would be unconscionable for it to retain. An account of profits is confined to profits actually made, its purpose being not to punish the defendant but to prevent its unjust enrichment. The ordinary requirement of the principles of unjust enrichment that regard be paid to matters of substance rather than technical form is applicable.
[30] (1993) 116 ALR 385 at 387; (1993) 179 CLR 101 at [110]-[111],
In assessing an account of profits, the court is required to estimate the proportion of the respondent’s profits that may be attributed to the infringement. The honesty of the respondent is a factor to be carried out.[31] A test that has been accepted as a method of assessing profits is that stated by Carr J in Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd[32] namely what is the amount of profit, if any, derived by a respondent in reproducing the applicant’s plans and in particular to what extent, if at all, did that reproduction contribute to the profits of the development.
[31] Sony Computer Entertainment Australia Pty Ltd v Kasmara [2003] FCA 1496 at [28] per Allsop J.
[32] (1995) 59 FCR 49.
It appears to me that the new evidence obtained from the discovered documents, if the applicant was successful in the proceedings, may affect how the assessment of profits is carried out and in particular what proportion of the respondent’s profits may be attributed to the infringement. It is, in my opinion, in the interests of justice, that the applicant be given the opportunity to bring the second application when these matters can be considered. I am mindful that Judge Davison had refused the first application, based on the balance of convenience. In Her Honour’s view, the potential prejudice suffered by the respondent if the injunction was granted, outweighed the potential prejudice suffered by the applicant. Therefore, new evidence which arguably could be relevant to how that balancing of convenience is determined, justifies, in my view, the applicant being given leave to bring the second application.
Further, the new evidence relating to the budget of the respondent suggests that the practical consequences of an injunction may be different from those determined by Judge Davison in the earlier hearing in that the budget suggests that the vast majority of the expenses to be incurred by the respondent have already been paid. I take into account that the budget may not be an accurate representation of the state of affairs, given that it was made some time before November 2019.
The consequences of granting the injunction in circumstances where the development was still proceeding was a matter that apparently weighed significantly on Judge Davison when she held that she was satisfied that if the injunction was granted, the respondent would be significantly inhibited or prevented from carrying on with the project.[33] The new evidence could be used to contradict a conclusion, such as that made by Judge Davison, that the development would be impeded by the making of the order.
[33] Reasons at [44].

I have considered the injustice to the respondent in being subject to essentially the same application on two occasions and the cost and expense and time occasioned by that circumstance. However, I consider those matters outweighed by the prejudice that would be suffered by the applicant if it were not to be permitted to bring the second application in which it could use the new evidence.
I therefore consider that this material also justifies leave being given to the applicant to bring the second application.
Conclusion
For the above reasons, I am satisfied that the applicant has new evidence that was not reasonably available to him at the time of the hearing of the first application. I am satisfied that it is in the interests of justice that the applicant be given the opportunity to bring the application, utilising that evidence.
I therefore grant leave to the applicant to bring the second application.