FEDERAL COURT OF AUSTRALIA
Digga Australia Pty Ltd v Norm Engineering Pty Ltd (No 2) [2008] FCAFC 76
PRACTICE AND PROCEDURE – offer of compromise made by respondent under O 23 of Federal Court Rules (Cth) – applicant suing for infringement of copyright in its drawings for 4 in 1 bucket – offer of undertaking to Court not to manufacture and sell 4 in 1 buckets to applicant’s design, and of payment of $5,000 – value of undertaking proffered – result obtained by applicant following respondent’s appeal less favourable to applicant than terms of offer.
Held: applicant ordered to pay respondent’s costs on indemnity basis.Federal Court Rules (Cth) O 23 r 11(5)
DIGGA AUSTRALIA PTY LTD (ACN 010 443 875) v
NORM ENGINEERING PTY LTD (ACN 010 799 943)QUD 175/2007
LINDGREN, BENNETT AND LOGAN JJ
14 MAY 2008
BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
QUD 175/2007
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN:
DIGGA AUSTRALIA PTY LTD (ACN 010 443 875)
AppellantAND:
NORM ENGINEERING PTY LTD (NO 2) (ACN 010 799 943)
Respondent
JUDGES:
LINDGREN, BENNETT AND LOGAN JJ
DATE OF ORDER:
14 MAY 2008
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The appeal be allowed in part.
2.Paragraph (b) of the declarations made on 25 May 2007 be set aside and in lieu thereof the Court declares that the appellant infringed the respondent’s copyright subsisting in the respondent’s drawings for a pivot mechanism (Applicant’s Drawing No. BC41-D015) (“the Pivot Arms Drawing”) by making a two-dimensional reproduction of the Pivot Arms Drawing in the period from 2 December 2003 to 17 June 2004.
3.Paragraphs 1, 2, 3(b) and 4 of the Orders made on 25 May 2007 be set aside and in lieu thereof the Court orders that the appellant pay the respondent $100.00 damages on or before 22 June 2008 to the respondent pursuant to s 115(2) of the Copyright Act 1968 (Cth) for infringement of the respondent’s copyright in the Pivot Arms Drawing (as identified in the declaration in para 2 above) between 2 December 2003 and 17 June 2004.
4.Paragraphs 1, 6 and 7 of the Orders made on 26 June 2007 be set aside and in lieu thereof the Court orders that:
(a)The appellant pay the respondent’s costs of the proceeding incurred before 11 am on 2 December 2005, save for those costs which have been the subject of earlier orders, taxed on a party and party basis; and
(b)The respondent pay the appellant’s costs of the proceeding incurred after 11 am on 2 December 2005, taxed on an indemnity basis.
5.The respondent pay the appellant’s costs of the appeal, taxed on an indemnity basis.
6.The respondent refund to the appellant all monies paid to the respondent by the appellant on account of damages pursuant to paras 3(b) and 4 of the Orders made on 25 May 2007 and interest pursuant to para 7 of the Orders of 26…
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- Case
- [2008] FCAFC 76
- Decision Date
CaseChat Overview and Summary
The central legal issues in the appeal pertained to the correctness of the primary judge's findings regarding copyright infringement and the adequacy of the remedies ordered. Specifically, the court needed to determine whether the appellant had indeed infringed the respondent's copyright by making a two-dimensional reproduction of the Pivot Arms Drawing, and if the damages and costs awarded were appropriate. The court also needed to assess whether the primary judge had correctly exercised his discretion under Order 23 rule 11(5) of the Federal Court Rules 2011 in setting aside certain declarations and orders.
The court found that the primary judge had correctly concluded that the appellant had infringed the respondent's copyright. However, the court disagreed with the primary judge's exercise of discretion under Order 23 rule 11(5) in setting aside the original declarations and orders. The court held that the primary judge should have considered the appellant's conduct and whether it warranted a departure from the usual approach to costs. The court emphasised that the appellant's conduct, including its refusal to engage in meaningful discussions with the respondent, justified a departure from the normal approach to costs. The court allowed the appeal in part, setting aside certain declarations and orders and substituting new ones that reflected a more balanced approach to costs.
The court's orders included setting aside specific paragraphs of the earlier declarations and orders and substituting new ones. The court declared that the appellant had indeed infringed the respondent's copyright in the Pivot Arms Drawing. It also ordered the appellant to pay the respondent $100.00 in damages for the infringement. The court further ordered the parties to pay each other's costs under specific conditions, reflecting the court's view of the parties' conduct. Additionally, the respondent was ordered to refund certain monies paid to the respondent by the appellant, along with interest on those monies. The court's orders aimed to balance the equities between the parties while addressing the issues of copyright infringement and the appropriate remedies.
Orders
Orders of the court
1. The appeal be allowed in part.
2. Paragraph (b) of the declarations made on 25 May 2007 be set aside and in lieu thereof the Court declares that the appellant infringed the respondent’s copyright subsisting in the respondent’s drawings for a pivot mechanism (Applicant’s Drawing No. BC41-D015) (“the Pivot Arms Drawing”) by making a two-dimensional reproduction of the Pivot Arms Drawing in the period from 2 December 2003 to 17 June 2004.
3. Paragraphs 1, 2, 3(b) and 4 of the Orders made on 25 May 2007 be set aside and in lieu thereof the Court orders that the appellant pay the respondent $100.00 damages on or before 22 June 2008 to the respondent pursuant to s 115(2) of the Copyright Act 1968 (Cth) for infringement of the respondent’s copyright in the Pivot Arms Drawing (as identified in the declaration in para 2 above) between 2 December 2003 and 17 June 2004.
4. Paragraphs 1, 6 and 7 of the Orders made on 26 June 2007 be set aside and in lieu thereof the Court orders that:
(a) The appellant pay the respondent’s costs of the proceeding incurred before 11 am on 2 December 2005, save for those costs which have been the subject of earlier orders, taxed on a party and party basis; and
(b) The respondent pay the appellant’s costs of the proceeding incurred after 11 am on 2 December 2005, taxed on an indemnity basis.
5. The respondent pay the appellant’s costs of the appeal, taxed on an indemnity basis.
6. The respondent refund to the appellant all monies paid to the respondent by the appellant on account of damages pursuant to paras 3(b) and 4 of the Orders made on 25 May 2007 and interest pursuant to para 7 of the Orders of 26 June 2007.
7. The respondent pay to the appellant interest calculated at the rate of 10% per annum on the monies to be refunded pursuant to para 6 of these Orders from the date of the receipt of those monies by the respondent to the date of the refund of those monies to the appellant.
8. Upon payment by the respondent of the appellant’s costs pursuant to para 4 of these Orders, the monies which were paid to the Trust Account of Le Mass Solicitors pursuant to the Order made on 13 October 2005, together with any interest thereon, be paid to the trust account of the solicitors for the respondent to be held by them on behalf of the respondent.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
Established by: LINDGREN, BENNETT AND LOGAN JJ
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