Designer Entertainment Pty Ltd v D Club Pty Ltd

[2003] FCA 1445

FEDERAL COURT OF AUSTRALIA

Designer Entertainment Pty Ltd v D Club Pty Ltd [2003] FCA 1445

DESIGNER ENTERTAINMENT PTY LTD v D CLUB PTY LTD & ORS

N1456 OF 2003

EMMETT J
24 OCTOBER 2003
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1456 OF 2003

BETWEEN:

DESIGNER ENTERTAINMENT PTY LTD
(ACN 098 634 305)
APPLICANT

AND:

D CLUB PTY LIMITED
LICENSEE OF ‘METRO CITY NIGHT CLUB’
(ACN 095 099 639)
FIRST RESPONDENT

LIVE & LOUD ENTERTAINMENT PTY LIMITED
(ACN 095 581 623)
SECOND RESPONDENT

TONY GREGO
THIRD RESPONDENT

JOE DEMASI
FOURTH RESPONDENT

R&B SUPERCLUB WA PTY LIMITED
(ACN 095 105 874)
FIFTH RESPONDENT

GROOVE EVENTS LIMITED
(ACN 104 847 412)
SIXTH RESPONDENT

ENTERTAINMENT CONSULTANTS AUSTRALIA PTY LIMITED
(ACN 098 366 762)
SEVENTH RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

24 OCTOBER 2003

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.the proceeding be transferred to the Western Australia District Registry;

2.the applicant file and serve any application for interlocutory relief and any affidavits in support of such an application on or before 4.00 pm on 28 October 2003;

3.the respondent file and serve any evidence in reply on or before 4 November 2003;

4.the application for interlocutory relief be returnable for directions on 7 November 2003 either before the Western Australian docket judge or, if the Western Australian docket judge thinks it appropriate that the interlocutory application be heard by another judge, before  Emmett J;

5.the costs of today be the parties’ costs of the proceeding;

6.the proceeding be listed, nominally, for directions on 7 November 2003 before Emmett J.

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	N1456 OF 2003

BETWEEN:

DESIGNER ENTERTAINMENT PTY LTD
(ACN 098 634 305)
APPLICANT

AND:

D CLUB PTY LIMITED
LICENSEE OF ‘METRO CITY NIGHT CLUB’
(ACN 095 099 639)
FIRST RESPONDENT

LIVE & LOUD ENTERTAINMENT PTY LIMITED
(ACN 095 581 623)
SECOND RESPONDENT

TONY GREGO
THIRD RESPONDENT

JOE DEMASI
FOURTH RESPONDENT

R&B SUPERCLUB WA PTY LIMITED
(ACN 095 105 874)
FIFTH RESPONDENT

GROOVE EVENTS LIMITED
(ACN 104 847 412)
SIXTH RESPONDENT

ENTERTAINMENT CONSULTANTS AUSTRALIA PTY LIMITED
(ACN 098 366 762)
SEVENTH RESPONDENT

JUDGE:	EMMETT J
DATE:	24 OCTOBER 2003
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. I have before me an application under O 10 r 1(2)(f) of the Federal Court Rules, which provides that the Court may direct that a proceeding be transferred to a place at which there is a Registry of the Court other than the proper place.  The proper place is where the proceeding is commenced.  This proceeding was commenced in the New South Wales Registry of the Federal Magistrates Court and was then transferred to the New South Wales District Registry of this Court.

2. The first to fifth respondents have moved for transfer of the proceeding to the Western Australia District Registry on the basis that the claims made in the proceeding arise out of conduct that is alleged to have occurred in Perth and the majority of the witnesses who are likely to be called to give evidence in the proceeding reside in Perth.  The respondents are involved in a nightclub business.

3. The applicant is a licensee of a trade mark that is owned by the seventh respondent. The applicant alleges that one or other of the first to fifth respondents has either engaged in conduct or assisted in conduct that infringes the trade mark, constitutes passing off or constitutes conduct that contravenes s 52 of the Trade Practices Act 1974 (Cth). The applicant conducts a business throughout Australia of music promotion. Its headquarters are in Sydney and it has no direct representation in Western Australia.

4. The evidence that would be relied upon by the applicant includes evidence from its directors and general manager, together with the following:

   • evidence of a record label proprietor resident in Melbourne;
   • evidence of a booking agent resident in Sydney;
   • evidence of a master of ceremonies resident in Sydney;
   • evidence of disc jockeys resident in Sydney;
   • evidence of another promoter resident in Sydney;
   • evidence of the manager of an entertainment agency resident in Melbourne;
   • evidence of a promoter based in Queensland; and
   • evidence of a marketing manager as to record labels resident in Sydney. 

   Thus, the majority of the applicant’s witnesses can be characterised as residing in eastern Australia, although not all of them reside in Sydney.  If they are to give evidence personally, they would be required to travel.  Sydney is, of course, closer to Melbourne and Brisbane than Perth.  However, once one is in an aeroplane these days, it is only a matter of hours.

5. An applicant for transfer of course must show there is good reason why a transfer should occur. It is a matter of judgment for the Court as to where the greatest convenience lies.  The Court’s convenience must also have some part to play in the matter.  It is accepted by the applicant that it may be desirable for evidence to be taken both in Sydney and in Perth. In my view, that course would be undesirable and, if possible, is to be avoided.  If need be, the Court’s video conferencing facilities enable evidence to be taken viva voce.

6. I am satisfied, on balance, that the Western Australia District Registry is a more convenient Registry for the management and trial of the proceeding.  The Court’s docket system requires that the trial judge manage the interlocutory stages of the proceeding and, since it is clear enough that the majority of the trial would be conducted in Perth, it is preferable that the proceeding be managed by a judge attached to the Western Australia District Registry.

7. Nevertheless, having regard to the nature of the evidence that would be given by the applicant’s witnesses, the transfer to the Western Australia Registry should be on the basis that there would be no opposition from the respondents for the evidence of the applicant’s witnesses, if the applicant so desires it, to be given by a video conference facility between Perth and the witnesses’ places of residence or Sydney, at the option of the applicant.  There is also no reason why management hearings should not be conducted by video link, although that sometimes involves an inconvenience to the Court and to the parties by reason of the time difference between Sydney and Perth, particularly after next weekend when some of the eastern states adopt daylight saving, whereas Western Australia does not.

8. The applicant has also foreshadowed a further application for interlocutory relief and has proposed a timetable for the filing of affidavits that would involve the proceeding being ready for hearing on an interlocutory basis in the second week of November.  The respondents are not presently in a position to oppose or consent to directions for the preparation of an interlocutory hearing.  It seems to me to be appropriate that any interlocutory hearing be conducted by the docket judge who is to manage the proceeding. 

9. At this stage, it is not clear whether the interlocutory application is likely to raise issues of credit and the like that would make it difficult for the judge who hears the interlocutory application to deal with the trial.  It therefore seems to me to be appropriate to give directions for the preparation of the interlocutory hearing on the basis that, if the docket judge considers that there were a prospect of the interlocutory application embarrassing him in terms of the final hearing, I would be content for the matter to remain in my docket for the purpose of dealing with the interlocutory application only.

10. Therefore, on the basis that there is no opposition on the part of the respondents to evidence of the nature referred to in the draft affidavit of Leonardo Salvaggio being given by video link, I will order that the proceeding be transferred to the Western Australia District Registry. 

I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:             9 December 2003

Counsel for the Applicant:	T A Hall
Solicitor for the Applicant:	Norman Waterhouse Lawyers
Counsel for the First to Fifth Respondents:	M J Heath
Solicitor for the First to Fifth Respondents:	Vincent Partners
Date of Hearing:	24 October 2003
Date of Judgment:	24 October 2003