Fasold, D. v Roberts, A

[1993] FCA 916

IN THE FEDERAL COURT OF AUSTRALIA	)
)
NEW SOUTH WALES DISTRICT REGISTRY )	NO NG 942 of 1992
GENERAL DIVISION

BETWEEN:  DAVID FASOLD

First Applicant

IAN RUTHERFORD PLIMER

Second Applicant

m:  ALLEN ROBERTS

First Respondent

ARK SEARCH ASSOCIATION

INCORPORATED

Second Respondent

ALLEN ROBERTS

First Cross-Claimant

ARK SEARCH ASSOCIATION

INCORPORATED

13 D E C 1993 Second Cross-Claimant

FEDERAL COURT OF

AUSTRALIA

PRINCIPAL	DAVID FASOLD
REGISTRY	First Cross-Respondent

IAN RUTHERFORD PLIMER

Second Cross-Respondent

CORAM :	HILL J
PLACE :	SYDNEY

DATED : 8 NOVEMBER 1993

EX TEMPORE REASONS FOR JUDGMENT

work in respect of which copyright is claimed. The allegation

Mr Fasold alleges reproduces at least a substantial part of the

of publication, sale or distribution is made also against Ark
Search Association Incorporated, the second respondent.

Professor Plimer, the second applicant, is a resident of Australia and a Professor of Earth Sciences at a university in Australia. Both he and Mr Fasold claim that Mr Roberts, the second respondent, or both of them, have engaged in conduct which is misleading and deceptive in trade or commerce in breach of either s.52 of the Trade Practices Act 1974 or s.42 of the Fair Tradina Act 1987 (NSW), by virtue of the making of certain representations which are alleged to be misleading and deceptive. Among the representations said to be false are representations that a drawlng in Mr Roberts' brochure substantially reproduces a drawing made by Mr Fasold and that the text and illustrations in the brochure are the property of Mr Roberts.

It is in these circumstances that three motions have
been brought before the Court on behalf of Mr Roberts and Ark

motions application is made that Mr Fasold provide security for Search Association Incorporated. Under the first of these

the costs of so much of the statement of claim as relates to a claim for breach of copyright. A clam that security should be provided in respect of the conduct alleged to be misleading and deceptive is eschewed.

The second motion before the Court is an application
that the copyright claim be heard separately from the claim under

the Fair Tradina Act or the Trade Practices Act, on the grounds that there is an urgency about the making of that claim, having regard to what are alleged to be threats contained in correspondence alleging that certain publications constitute contempt of Court. The final motion seeks answers to certain particulars. This third motion can conveniently be dealt with first because there was ultimately little real dispute between the partles about it.

Three matters of particulars were in issue. The first concerned the allegations of misleading and deceptive conduct. As I understand it, the applicants, following argument, have now agreed to answer a reformulated request for particulars of what it is alleged constitutes the conduct which is misleading and deceptive. I will, in due course, make orders in respect of the giving of those particulars.

The second matter concerned what is referred to in the also now been resolved between the parties on the understanding amended statement of claim as "the third work". Thls matter has that the only matter in respect to which copyright is said to exist, so far as the written report to the Republic of Turkey is concerned, is that part of the publication which is referred to in the amended statement of claim as "Attachment 8".

The third matter concerns particulars of damage, general and special. So far as special damage is concerned, the applicants have sought to avoid providingthose particulars until after discovery has been given, on the grounds that it may be that the material discovered provides a further or different basls upon which damages may be calculated. The second matter is said to be that particulars are not ordinarily supplied in respect of general damages. It seems to me that there is no particular reason in the present case why the giving of particulars should be deferred until discovery is given in the unlikely event that any material produced on discovery provides a foundation for a different claim for damages. That can be dealt with by an amendment to the particulars.

Further, it is important in many cases where a foundation could exist to transfer a Trade Practices claim to another court that the court have an idea as to the damages which are alleged to have been suffered. In any event it will ultimately become incumbent upon the applicants to indicate what they claim their damages are and how they are to be calculated

and there is no real reason why that cannot be done at this stage in the proceedings, subject always to a right to amend in the

event that other information becomes available. In these circumstances, I will in due course order that the applicants provide the particulars of damages sought.

That then leaves the other two applications which, to some extent, are related. I should mention that in their cross- claim, Mr Roberts and Ark Search Association Incorporated raise s.202 of the Copyright Act 1968 claiming that Mr Fasold and Professor Plimer have u n j u s t i f i a b l y t h r e a t e n e d M r Roberts and Ark Search Association Incorporated with an action or proceeding in respect of infringement of copyright. If it be proven in due course that threats have been made then it will be incumbent upon Mr Fasold, as the owner of the copyright, to show that he did in fact have copyright in the material.

So it is said, in partial answer to the question of security for costs, that the issue of copyright raised solely by Mr Fasold as a non-resident arises, or may arise as well, for decision in the cross-claim under s.202. In these circumstances it is said to be inappropriate for security for costs to be awarded. That argument is then extended by virtue of the fact that there is some overlap between the copyright on the one hand and the claim under s.52 of the Trade Practices Act, or s.42 of the Falr Tradina Act, as the case may be.

I do not find much difficulty in concluding that it is in the interests of all parties, ultimately, that the whole of the issues between them be litigated on the one occasion. I do so notwithstanding submissions pressed upon me that there is an urgency about the determination of the copyright proceedings having regard to the alleged threats. If that urgency exists then application can be made for expedition and in an appropriate case it can be given. In any event, it does not seem to me that the case is one of such complexity that the parties should take long in bringing it to trial, although I do note that almost 12 months have gone by since the matter commenced. Perhaps if the parties spent more time bringing the matter on for trial and less time in interlocutory proceedings, the matter could be progressed rather more quickly.

The problem I see of separate trials is first, that there is some commonality of issue between the Trade Practices Act and the Fair Tradina Act claims on the one hand and the copyright claim on the other. Second, in any event, a trial on the copyright issue would not bring to an end the litigation, whatever its outcome. That then might lead to the unfortunate spectre of appeals against the copyright issue, or at least leave to appeal if it be interlocutory proceeding, separately from the trial on the issues relatingto misleading and deceptive conduct.

At the end of the day the separation of these issues
might well bring about the result that a great deal more time and

expense is caused to the partles than would be caused if all issues were heard together and resolved as expeditiously as

possible.

The question of security for costs is more difficult. There is little doubt that the power of the Court to order security for costs is discretionary and its exercise will have regard to all the circumstances of the case. One of the circumstances in which security for costs will often be awarded, indeed one might say ordinarily would be awarded, is where the plaintiff in the proceedings is not a resident within the

jurisdiction and has no assets within the jurisdiction. This is

because if such a plamtiff's application be unsuccessful, the respondent might be unable to have an order for costs against that plaintiff satisfied.

The matter is, however, more complicated where, as here, the non-resident applicant is joined by a resident applicant. That complication becomes greater where there are different claims, albeit overlapping, brought on the one hand by the non-resident and on the other by both the non-resident and the resident. A further complication arising in this case is the fact that the cross-claim has thrown upon both the resident and the non-resident the burden of, in any event, showing the existence of copyright and an infringement.

While taking each of those matters into account, it does seem to me that consideration must be given to what would happen if the copyright application were unsuccessful, whatever

the outcome might be in the Trade Practices proceedings or those brought under the Fair Tradina Act. I do not think that the bringlng of the cross-claim, raising as it does the copyright matter, is sufficient to absolve the non-resident applicant from providing security for costs. That matter might well be resolved by a finding that there was no threat and thereby eliminate altogether the copyright issue.

There is no dispute between the parties that there is a real matter to be tried and that the claim by the applicants is not one that is trivial, frivolous or vexatious. None of the parties have urged me to consider the chances of success of any party in the proceedings and I do not propose to enter into a consideration of that matter. In the circumstances it seems to me not inappropriate that Mr Fasold be required to provide security, but only in respect of that part of the claim which relates to the copyright proceeding. The parties have agreed, following discussions before me, that an appropriate sum for me to award for security, if security were to be awarded, would be $10,000 and that security in this amount and in a form to be agreed upon between the parties, or failing agreement, as directed by the Court, would be provided in one month if required.

Accordingly, I would propose to make orders in respect
of the particulars as already indicated, to dismiss the motion

Mr Fasold to provide within a month an appropriate security in relating to a separate trial of the copyright issue and to order

the sum of $10,000 to cover the costs of the copyright proceeding including a hearing as to damages, that amount being an estimate of what costs may be incurred in the copyright proceeding as distinct from the costs relating to the allegations of misleading and deceptive conduct not depending upon the copyright issues.

I would direct counsel for Mr Roberts to prepare short minutes of order, or draft short minutes of order, and bring those in at a date to be agreed.

In respect of each of the motions the costs will be
costs in the proceedings so the short minutes can reflect that.

I certify that this and the
preceding eight (8) pages

are a true copy of the Reasons
for .Judgment herein of his Honour
Mr Justice Hill.

~ssociate: T.f 1,. h

Date : 1 ~ ? ~ ( E M ~ I ? K 19q.3

Counsel and Solicitors	Mr R Cobden instructed by
for Applicants:	Clayton Utz
Counsel and Solicitors	Mr B Connell instructed by
for Respondents:	Bush Burke & Company
Date of Hearlng:	8 November 1993

The first applicant, Mr Fasold, is a citizen of the United States of America. He claims to be the author and owner of copyright in three works which, inter alia, contain drawings of what some claim to be the remains of Noah's Ark found in Turkey. Mr Roberts, the first respondent, is alleged to have published, sold or distributed a brochure and a newsletter which