Disney Enterprises, Inc v Australian Exim Company Pty Ltd (No. 2)

[2009] FCA 720

FEDERAL COURT OF AUSTRALIA

Disney Enterprises, Inc v Australian Exim Company Pty Ltd (No. 2) [2009] FCA 720

DISNEY ENTERPRISES, INC. and THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029) v AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072), RAJESH JAVERI and NELIA SERRANO

NSD 574 of 2009

GRAHAM J
3 JULY 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 574 of 2009

BETWEEN:

DISNEY ENTERPRISES, INC.
First Applicant

THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029)
Second Applicant

AND:

AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072)
First Respondent

RAJESH JAVERI
Second Respondent

NELIA SERRANO
Third Respondent

JUDGE:	GRAHAM J
DATE OF ORDER:	3 JULY 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.Pursuant to s 135AF(3)(b) of the Copyright Act 1968 (Cth) that the 100 pillow cases, 20 quilt covers, 126 blankets, 85 paper inserts and 80 doona’s described as “Hannah Montana” items and 100 pillow cases, 20 quilt covers, 250 blankets, 90 advertising paper inserts and 80 doonas described as “High School Musical” items seized by the Australian Customs Service on 15 May 2009, not be released by the Chief Executive Officers of the Australian Customs Service to the first respondent.

2.That the applicants notify the respondents of these orders and the reasons for judgment delivered on 3 July 2009 by sending a copy of the orders as entered and a transcript of the reasons for judgment by prepaid post to each of the respondents at the addresses given in the application filed 16 June 2009.

3.That the applicants notify the Chief Executive Officer of the Australian Customs Service of these orders by facsimile or other electronic means no later than 5 July 2009 and subsequently provide a copy of the transcript of the reasons for judgment delivered on 3 July 2009 and the orders as entered as soon as those documents become available to the applicants’ solicitors.

4.That no order as to costs of the application of 3 July 2009 be made.

5.That the matter stand over to 29 July 2009 at 9:30 am before the Docket Judge..

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 574 of 2009

BETWEEN:

DISNEY ENTERPRISES, INC.
First Applicant

THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029)
Second Applicant

AND:

AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072)
First Respondent

RAJESH JAVERI
Second Respondent

NELIA SERRANO
Third Respondent

JUDGE:	GRAHAM J
DATE:	3 JULY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. On 2 July 2009 an application was made by the applicants for orders that certain goods seized by the Australian Customs Service not be released to the first respondent. On 2 July 2009 orders were made pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (‘the Trade Marks Act’) in respect of goods seized on 27 May 2009 and pursuant to s 135AF(3)(b) of the Copyright Act 1968 (Cth) (‘the Copyright Act’) in respect of goods seized on the same day, namely 27 May 2009. A like order was sought in respect of pillow cases, quilt covers, blankets, doonas and advertising paper inserts in respect of goods seized on 15 May 2009.

2. No order was made in respect of the goods seized on 15 May 2009 pursuant to s 135AF(3)(b) of the Copyright Act for the reason that the application for an extension of the time limited in that notice for the bringing of an application was not apparently made within the time permitted by the notice. As it transpires, the form of notice, which referred to a 10-day retention period, failed to make reference to the fact that, under Regulation 22 of the Copyright Regulations 1969, the specified period was 10 working days and not simply 10 days. 

3. By way of contrast in the ‘NOTIFICATION OF SEIZURE’ issued by the Australian Customs Service in respect of goods seized under the Trade Marks Act, the relevant time period was clearly expressed to be 10 ‘working’ days after the notice was given. When one has regard to the terms of Regulation 22 in relation to the notification of seizure of goods on 15 May 2009, it is apparent that the application for extension of the 10 working-day period, which was made on 1 June 2009 was, in fact, within time and not out of time.

4. Accordingly, the grant of an extension contained in the Australian Customs and Border Protection Service’s letter of 1 June 2009 extending the period of time in which proceedings were to be commenced up to and including 16 June 2009, was not beyond power.  The time was duly extended and, accordingly, the Application filed on 16 June 2009 was one pursuant to which it was open to the Court to make an order that goods not be released by the Chief Executive Officer of the Australian Customs Service as sought.  In my opinion, it would be appropriate for an order to be made preventing the goods the subject of the 15 May 2009 Notification of seizure from being released.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.

Associate:

Dated:        6 July 2009

Solicitor for the First and Second Applicants: L J King of Shelston IP Lawyers

Date of Hearing:	3 July 2009
Date of Judgment:	3 July 2009