Dire Straits Overseas Ltd v South Seas Bubble Company Pty Ltd

DIRE STRAITS OVE2SEIS

LIMITED & ANOR.

Applicant

SOUTH SEAS BUBBLE

COMPANY F T Y .	LIMITED &
-	ORS .

Respondents

EX-TEMPORE REL\SONS FOR JUDGMENT

B U R C m L .

- ’

Wilcox J. on 24 December 1985 made ex parte orders:

“(l) That the respm+en ts - that is,

the

first, secorc and. ?hlrd respondents -

and each of ‘skx S:? themselves, their

servants OK ~ e g t z

Se restrained from

(a) advertlsxq, promoting, displaylng. offering for sal*, sslling or otherwise

in trade

or commerce dealing wlth any

t-shirts C T z 3 e r gzrxents which bear o r emDod7 (I> :?.S ,i.ec;li ,J: a quitar which is ~llcz:rzz4 ;n the cover of the record albvum %others in Arms, being the

document marked exhibit

CLS 1 to the

affidavit of Colin Laird Seeger sworn

December 1’385 oc (ii) the words “dire

Straits“; ( b ) frcm passing off

as .and

for t-shirts

the first and second

applicants 5n:r t-shlrts not of the rnanufactur2 e: the first or second applicant.

2 .

( 2 )

Within a

perlod of fourtee?

iays

from

the date of service of notzre of

these

orders the respondents

- that 15 to say,

the first, second and thlrd rospondents

- and each of them make, fii? x d serve

an affidavit setting out:-

(a)	the number of garments bearlng the Design sold by or on behalf of the respondents whether by wholesale

or by retail;

(b) the

number

such

garments

presently

the

possession

control of the respondents;

name

and

address

all

persons including any company or

companies

whlch

t e

from

respondents

have

acquired

such

garments

and

the

ate

and

quantities

and

price

such

suppliers;

( d )

the

name

and

address

all

persons including any company

companies to whom the respondents

.	-.have supplied such garments and

the date and quantities and price

of such supplies."

In the context of those orders, Mr. Ellicott,

I take It

"the design" refers to the design in the

f:rE

grser, that I s the

design of a guitar which is illustrated on the cover

of a record

album which is marked as an exhibit to an

affidavit; is that

correct?

MR.

ELLICOTT:

Yes, your Honour.

S O L - L - ~ ,

your Honour..

HIS HONOUR :

It may

be there is some

other

definition;

there may be some incompleteness.

MR. ELLICOTT:

Yes.

His

Honour

Mr.

2uctlce

Wilcox

made

.an

order restraining the

lrse of the words "Dire

Straits" and that was in reiation

to a T-shirt

which bears the words

"Lmlre

Straits World

Tour" and that was originally worded as part

of the deslgn in the

order. We are seeking to

Include that T-shirt

within the embrace of ...

HIS HONOUR:

But you can see the point

I am raising is

whether the order as

it presently stands 1 s in

fact sufflciently unambiguous because what	It
says is - and I confess I had not notlced

until readlng it out then,

and no argument has

been addressed on the pomt - "an affidavit setting out the number of garments bearing the Design" with a capital D. I think in your

application

there is a partlcular

design

referred to which	is then descrlbed as "the
Deslgn" 1s It not?

MR. ELLICOTT:

It is "the Design".

HIS HONOUR

At the time the order

was made the application

was not the amended applicacion.

MR. ELLICOTT:

No, your Honour.

H I S HONOUR:

Yes, the amended application

I notice in order

1 refers to "the design".

Now that refers to

an affidavit of Garry van Egmond.

The

only

affidavit actually identified in

Mr.

Justice

Wilcox's order seems to be the affidavit of

I < , _ -

Colin Laird Seeger.

MR. ELLICOTT:	Yes, and the annexure is	the Brothers in Arms
cover.

I do not know whether that

is the same design

.,. : .. I I ;

or a different design.

- ' MR. ELLICOTT:

No, it is a different design.

3 , ,

.HIS HONOUR:

It may be that will need some

anenhent

thls order anyway, will it not?

- I do not

know how

- or some clarification?

MR. ELLICOTT:

Yes, 7 . z would seek to embrace wlthifi

z h ~ t

appears

the

applicatlon

paira.gr-;t:

l ( a )

(i).

H I S HONOUR:

The original application is that?

MR. ELLICOTT:

the

current

application, the

amended

application rather.

HIS HONOUR

His Honour's order could only refer to the

application that was before

him, could it not?

MR. ELLICOTr:

Yes.

M S HONOUF.:

The

applicatlon

before

hlm did

use

the

expression "the deslgn".

MR. ELLIC'JTT:

And I think it embraced withn It both of the

designs.

HIS H(?NPJP,:

Yes, you are

*qulce

right.

MR. ELLICOTT:

I thmk that

is how it was worded. It may

have been this Anton Pillerlsh order was meant

to follow on from the flrst order but his

Honour did not make an order in those terms.

HIS HONOUR:

I presume the orlglnal appllcation would have

been served with the affidavits, would it?

MR. ELLIC'JTT:

Yes, it was

erved

the solicltor

that

appeared on the thlrtleth.

HIS HONOUR:

I will deal with the matter on the footing

the order that was made at the moment. It may

well be properly construed in the way

you are

saying, but

you may want to have something

done about that in due course to clarify it.

. MISS GRAY:

We are in the position where we do not have

any annexures to affidavits, we have not seen

exhibits, and

were not present on the

occasion when these designs were shown or dlscussed, so we are in difficulty as to what

it is that we...

HIS HONOUR:

There is clearly a difficulty verbally in the

wordin? of the order. On the other hand, your

clients have twice

been represented. It

alff'icult to believe that they actually did

not unaerstand.

?-?.e r1ific21ty 1 s now

knowing

what

information is required.

H I S HONOUR :

It 1 s qot a difficulty that you raised with me

z . r ~ ~ - m e n c :

it 1s

z d l f € i c - A t ; r

that I

had

ralied of constructlon of the order. As I

say. x t 1s dlfficult to belleve that your

people had any real misunderstandlng in view

of those facts. But

I think I

will at the

moment deal with the arguments that have been

advanced and

the

order as it is presently

framed, and if either of you have some further

applicatlon then

to make, we can deal with

then. I think

that

probably

the most

appropriate course.

On 30 and 31

Decembc- 1585 the first, second and third

respondents appeared and the mattsr was stood over till today by

l+.

Justlce Beaumont on

31 Ijecember, particularly to enable

Instructions to be obtained by khe representatives of the	first,
second and third respondents.

At that time the first order was vacated by consent and

an undertaking in the same terms, but limited until and including

today, was accepted in lieu of the order by the applicants.

Today an undertaking as to damages has been again given

by Mr.

Ellicott

on behalf of his clients to the Court, and

undertakings have been given to the Court by Miss Gray of counsel

. . I _

for the first, second and third respondents

on their behalf,

. .:

.'	.without 'admissions, to continue the undertaking given to the

Court on 30 December and renewed on 31 December in the terms

the first order made by

Mr. Justice Wilcor, which

I have already

read out.

. - --. -

,I,

An undertaking has further been given by Miss Gray on

hekalf of t:?e first, second and thlrd respondents to continue rhe

undertaking given on 31 Decernber to preserve confidentiality in

certaln respects which are set out in the undertaking. Both of

those undertakings are now glven to and including the next day

when this matter is before the Couit. But the first, second and

third respondents asked me to dlzcharge or vary the second order

made by

Mr. Justlce Wilcox.

It is first submitted that the

purpose of the order is the calculation of damages, and that this

purpose does not justify the order in the circumstances of this

case.

That submission is contrary to what

1 s stated to be the

law in Simpson, Bailey and Evans on Discoverv and Interrouatorles

11984). at page 224, where the learned authors suggest that such

orders have often been made in order to enable

an applicant to

identlfy persons who mlght otherwise be infringing his rights.

Trade in articles which unlawfully take advantage of some well

known identity or emblem often takes the.form of

an octopus, many

of whose tentacles may be difficult	to get at without some such
order.

Then it was said that liability

is denied and the order

might gravely embarrass the respondents. No evidence was put on

to shcw any particular difficulty in compliance, or to c3st any

doubt on the agplicanc’s prima facie case; but it was said that

. . the.-respondents h&ve agreements

with other people, and that

. .,. . ,,

. ,- ,

.<l

they reveal the informatlon which the order would require them to

reveal, !hey uould be 1

breach of those agrecflentz 3 ~ 5

3: the

’

trust placed. in them by those other persons wlth whom they have

entered into those agreements.’ It was further said that

if the

information is revealed, the businesses of the other people

concerned could be jeopardized. It was further said that the

information would reveal matters of a sensitive nature from the

point of view of competition between the applicants and	the
first, second and third respondents.

It seems to

me that

lf there are such agreements, as

this submission asserted, thls 1s the very sort

of thing that

Anton Piller orders were designed to enable an applicant to ascertain and to seek to overcome. There was no suggestion that the Court lacks Jurlsdiction to make an order of this kind, nor I

think could any such suggestion be upheld

lf lt were to be made,

particularly having regard

to the provisions of s.87(1A) of the

Trade Practices Act 1974 and

5 . 2 3

of the

Federal Court

Australia Act 1976.

I think that the legitimate inferences which

may be drawn

from the evidence, which led

Mr. Justice Wilcox to

make the order, are strengthened now by

the fact that the first,

second and third respondents, having been served and having

appeared three times before the court, have not chosen to put any

evidence on in answer to the evidence filed by the applicants and

upon which the order wits made.

As Mr. Justlce Rich said in

famous passage in Joyce's Case

(77 CLR 39 at 4 9 ) :

. , .

. > ,

.I	Where a party "prefers the well of the court to the witness box, a court is entitled to be bold.

. %

. ._

I do not think I should vacate

or vary the order, except

that there are

two respects in which it seems to me

it may be

clarified, or some protection given

in respect of it.

8 .

Firstly, I think

the

respondents

are

entitled

reasonable protection against any unnecessary risk of its abuse

for purposes allen to the purposes of the order and after some

discussion wlth

counsel, I have received froa them a farm

undertaking which, I am informed, the applicants	are prepared to
glve.

Miss indicated that in the event that I reject her application, as

Gray,

while

maintaining

her

appllcation,

has

now do,

she would accept this undertaklng as covering that

particular matter.

The undertaking which I will therefore ask Mr.

Ellicott

to give in a moment, and will accept, is:

"The solicitor for the applicants undertakes

to the court in relation to any names

and

I .

addresses supplied pursuant to orders 2(c) and (d), that such names and addresses will not be divulged to any person other than che

zpplicants or their officers for the purpozps

of obtaining

instructions

relation

legal Proceedings

instituted

instituted on their

behalf

h+ir

respective behalfs and the appllcants

and

1 ,.

each of them undertake to the court that they

or either of

them in relation to any names

and zddresses supplied pursuanr: tc order.

2(c' and (d) will not divulge such names and

addresses to any person other t3an a person

retalned to glve legal advice in relation to

le3al proceedings.

Do you give those undertakings?

MR. ELLICOTT:

Yes, I am instructed to give those undertakings.

H I S	HONOUR:	Is there anything to be said about costs,	Miss
Gray?

Ft I

S S

GR9y :

I would seek that costs be reserved, your Honour.

%IS

HONOUR :

What do you say, Mr. Ellicott?

MR. ELLICOTT:

We say that

the respondents have confronted

head-on and we have been prepared

to meet it. It

is an interlocutory matter whlch

is contained

within itself and we would ask for the costs of

today on that basls.

HIS HONOUR:

The order I

wlll make is that

the costs be the

applicants' costs in the proceedings.

think

that is probably the falrest order.

You

have

succeeded, and on

the other hand we have not

heard the proceedings yet. I will hand you

back

this

form.

has

now been

noted. The only

remaining matter

is whether you do seek any

further clarification

of that order?

MR. ELLICOTT:

I do, your Honour. It clearly refers to

a...

HIS HONOUR:

A design; it does not within Itself contain

definition of what design it is referring

to.

MR. ELLICOTr:

No, it refers to a defined term, the use of the

capital.

That was an order that was lifted from

the

original

application

and

the

original

application

paragraph

l(a)

described

the

designs and gave examples

of them.

It did not

say "hereinafter

referred to as the design", but

it was material

which was

placed before the Court

when this order was made and

I can only say that

it was the clear intention of the parties

may have been a slip that

we did not correctly

describe it.

You would ask me

t3 add to 15 scmething like

this:

"in thls orier the expression 'the design'

means" - and take in the deflnltion?

m . ELLICOTT:

From the oriqlnal appllcsticn.

%IS HONOUR

How is it m the or1ulnz.l application? Are C S 1

to the affidavit

of Seegar and

W to the aff idavlt

of Egmond identlcal?

MR. ELLICOTT:

No,

your Honour. Could I approach and get the

exhibits?

HIS HONOUR:

Yes.

MR. ELLICOTT:

It would be CLS

I think that was noted before

Mr. Justice Wilcox. Annexure W to the affidavit

10.

of Garry van Egmond, there is the record Tczwer and the annexure to the affidavit whic;? ?as a

logo in those terms. Your Honour will have

!!>at.

HIS HONOUR :

That has been served?

MR. ELLICOTT:

Yes.

HIS HGNOUR:

So annexure W to the affidavlt

of Garry van

Egmond . . .

MR. ELLICOTT:

Sworn 22 December 1985

...

HIS HONOUR

So you want something like thls:

In this order the expression

"the design" means the design

appearing in annexure

W to

the affidavit of Garry van

Egmond sworn

22 December 1985

and filed herein and also the

design appearing in exhibit

CLS 1

to the affidavit of

Colin Laird Seeger sworn	23
December 1985.

That is all

so far.

MR. ELLICOTT:

Maybe if one could

follow Mr. Justice Wilcox's

wording to make it entirely clear:

Being the design of a guitar which is illustrated on the

cover of the

record

album

"Brothers in

Arms".

That we would	submit	anppropriate	s
definitlon.

. .

H15 HDNOUR :

m a t do you say about that

Miss Gray?

Those

two

d?slgns

are

the

designs

w h i z ?

x t

understand to be in issue and we accep:	- h > -	__.___
definitlon.

HIS HONOUR :

There 1s no problem about the amendments?

MISS GRAY:

No problen.

HIS HONOUR:

Then I will make

an order, on Mr. Ellicott's

application which

1 s not in this respect opposed,

following the second order of

Wilcox J. to the

effect that there shall

be added at the end ~f It

11.

the following:

"In thls order the expression "the Design" means the deslgn appearmg In Annexure W to the affidavlt of Garry van Egmond sworn 22 December

1985 and flled hereln, also the

design appearing in exhiblt CLS 1

to the affidavit of Colin Laird

Seeger sworn 2 3 December 1585

and

filed herein, being

the design of

a guitar which is illustrated

the

cover

the

record

album

Brothers in Arms.

I certify that this and the preceding ten (10) pages are a

. true copy of the Reasons

for

Judgment herein of his Honour

Mr. Justice Burchett.

/&-c.fa.i -

Associate

Dated

: X L J-7

, (W

[1986] FCA 57

1 Jul 1986