Fensom v Jake Ryan Media Group Pty Ltd (No 2)
[2024] FCA 470
•6 May 2024
FEDERAL COURT OF AUSTRALIA
Fensom v Jake Ryan Media Group Pty Ltd (No 2) [2024] FCA 470
File number: VID 780 of 2021 Judgment of: ROFE J Date of judgment: 6 May 2024 Catchwords: PRACTICE AND PROCEDURE – self-executing order dismissing the proceeding – continued non-compliance with Court timetabling orders by the applicants – where the Court is satisfied in the circumstances that a self-executing order is appropriate Legislation: Federal Court of Australia Act 1976 (Cth)
Federal Court Rules 2011
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 31 Date of hearing: Determined on the papers Solicitor for the Applicants: Walters & Associates Solicitor for the Respondents: The respondents were self-represented by the second respondent ORDERS
VID 780 of 2021 BETWEEN: MAXINE ELIZABETH FENSOM
First Applicant
FORTYFIFTH SHERLOCK PTY LTD (ACN 006 559 931)
Second Applicant
AND: JAKE RYAN MEDIA PTY LTD (ACN 640 980 712)
First Respondent
GEOFFREY KENNETH WILLIAMS
Second Respondent
ORDER MADE BY:
ROFE J
DATE OF ORDER:
6 MAY 2024
THE COURT ORDERS THAT:
1.The applicants to pay the respondents’ costs of this proceeding, to be taxed by a Registrar if not agreed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
ROFE J:
On 5 April 2024, I made the following orders:
THE COURT NOTES THAT:
A.Evidence in this matter will be by affidavit in an admissible form.
THE COURT ORDERS THAT:
1.The time for compliance with order 2 of the Court’s orders made on 14 March 2024 [requiring the applicants to file their evidence] be extended to 4.00 pm on 3 May 2024.
2.In the event the applicants fail strictly to comply with order 1 above in the time specified by these orders then, pursuant to s 37P of the Federal Court of Australia Act 1976 (Cth) and r 5.21 of the Federal Court Rules 2011 (Cth), the proceeding be dismissed.
3.Order 10 of the Court’s orders made on 21 November 2023 be vacated.
4.This matter be listed for a further case management hearing at 9.30 am on 10 May 2024, to be conducted by Microsoft Teams.
The applicants failed to comply with order 1 requiring that the applicants file their evidence by affidavit in an admissible form by 4.00 pm on 3 May 2024. Accordingly, pursuant to the self-executing order in order 2, the proceeding was dismissed at 4.01 pm on 3 May 2024.
These are my reasons to explain why I consider that making the self-executing order was appropriate.
BACKGROUND
The applicants commenced this proceeding on 24 December 2021. The originating application alleged that, by using the sign “AAIA” as a trademark, the respondents had infringed the applicants’ registered trademarks pursuant to s 120(1) of the Trade Marks Act 1995 (Cth) and engaged in misleading and deceptive conduct in contravention of s 18(1) of the Australian Consumer Law as contained in Sch 2 of the Competition and Consumer Act 2010 (Cth). The applicants sought injunctions, damages and declarations. “AAIA” refers to the Australian Adult Industry Awards.
The originating application and statement of claim filed by the applicants were prepared by counsel. The applicants were also represented by solicitors when the proceeding was filed. The applicants changed solicitors at least three times during the course of the proceeding and have also been self-represented at various times (with the first applicant, Ms Fensom, representing both applicants).
The second respondent, Mr Williams, is the sole shareholder and director of the first respondent. On 14 March 2024, I granted leave for the first respondent to be represented by the second respondent. The second respondent has been self-represented for the entirety of the proceeding.
The proceeding was originally allocated to Colvin J. It was allocated to my docket on 22 March 2023. It is unnecessary to describe what occurred in this case prior to that time, suffice to say that there had been an unsuccessful mediation, and the respondents had made an unsuccessful application for security for their costs.
FAILURE TO COMPLY WITH ORDERS
The first case management hearing before me took place on 21 November 2023. Ms Fensom and Mr Williams attended the hearing and were self-represented. By this time, the proceeding had been dragging on for almost two years and no evidence had been filed or a date set for trial.
At the case management hearing, I set down the matter for trial on 13 and 14 June 2024 and made timetabling orders for the filing of evidence and submissions (November Orders). Order 2 of those orders required the applicants to file and serve any evidence they intended to rely upon at the hearing by 29 February 2024 at 4.00 pm.
On 29 February 2024 at 1.50 pm, my Chambers received an email from Mr Stephen Walters from Walters & Associates that stated he had been “been approached by the applicants to act on their behalf” and requested an extension of time to file the applicants’ evidence. Mr Walters had not filed a notice of acting pursuant to r 4.03 of the Federal Court Rules 2011.
The applicants did not file any proposed orders seeking an extension of time to file their evidence. No evidence was filed by the deadline. Therefore, the applicants failed to comply with order 2 of the November Orders. Neither the applicants, nor Mr Walters on their behalf, provided any explanation for why they had failed to comply with the November Orders.
I listed the matter for a case management hearing on 14 March 2024 on Microsoft Teams. The respondents were represented by Mr Williams. The applicants were represented by Mr Walters (who, by this time, had filed a notice of acting) who arrived 10 minutes late to the online hearing.
At that hearing, I made orders granting an extension of time to the applicants to file their evidence by 25 March 2024 at 4.00 pm (March Orders).
On 23 March 2024, Mr Walters emailed a Dropbox link to my Chambers and the Registry labelled “Applicant’s Evidence”. The material primarily consisted of screenshots of Twitter posts and websites. It also included some emails and trade mark registrations. No accompanying affidavit was filed, and the material was not accepted for filing by the Registry. It was impossible to discern the case put by the applicants from the material provided and how each document was relevant to their case. No further material was filed by the applicants by 25 March 2024. The applicants therefore failed to comply with order 2 of the March Orders.
On 27 March 2024, Mr Williams submitted an interlocutory application seeking, in substance, that the proceeding be dismissed because the applicants were in default pursuant to r 5.22 and r 5.23 of the Rules. The interlocutory application was not in the proper form and was not accepted for filing. Mr Williams also made an oral application to the same effect during the 14 March 2024 case management hearing.
On 4 April 2024, the applicants filed an affidavit made by Ms Fensom. The affidavit was two paragraphs in total as set out below:
1. I am the First Applicant and the Director of the second Applicant and I am authorised to make this affidavit on the second defendant's behalf.
2. Shown to me now and marked "MEF 1" is a bundle of documents constituting the evidence on behalf of the Applicants.
The bundle of documents marked “MEF 1” were the same documents emailed to my Chambers on 25 March 2024 referred to above.
A further case management hearing was held on 5 April 2024. I made orders which, among other things, granted the applicants a further extension of time to file their evidence until 4.00 pm on 3 May 2024 (April Orders). I also made a self-executing order pursuant to s 37P of the Federal Court of Australia Act 1976 (Cth) and r 5.21 of the Rules that the proceeding be dismissed if the applicants were in default by failing to comply with order 1 of the April Orders. By this time, the applicants had already failed to comply with order 2 of the November Orders and order 2 of the March Orders.
I informed Mr Walters during the case management hearing that the material provided by the applicants so far was not admissible evidence. As such, the April Orders noted that any evidence filed in the proceeding must be by affidavit in an admissible form. I also communicated this requirement to Mr Walters at the hearing.
On 2 May 2024 at 1.59 pm, my Chambers received an email from Ms Fensom which noted that her solicitor was unwell and asked for a copy of the Court’s most recent orders.
On 3 May 2024 at 12.28 pm, my Chambers received an email from Mr Walters stating:
As my client advised, I have come down with a condition over the previous weekend that I thought would recover but persists. I am seeing my doctor again and may need to have further investigation of my nasal and respiratory systems and I am completely incapacitated.
The orders made in early April require filing of an affidavit by 4pm today and is in the nature of a self executing order allowing for the proceedings to be dismissed. I had set aside this entire week to finalise the applicant's submission but have been prevented from doing so by my illness.
I am not in a position to prepare an application and affidavit in relation to these matters today. The case is next listed for 10 May 2024 although it was contemplated that the date would not be required if the case stood dismissed.
I ask that the case be left in the list for that day by which time I hope to bring a proper application to this court seeking variation of the orders.
At around 2.44 pm, my Chambers responded to Mr Walters that I would not vary the April Orders.
Later that day at 3.07 pm, my Chambers received an email from Ms Fensom attaching a word document. The Word document was perhaps an attempt to file the applicants’ evidence in the form of an affidavit. However, the document filed was not in Form 59 or otherwise compliant with the requirements for an affidavit as set out in r 29.02 of the Rules. The first few pages of the document are extracted below:
The Australian Adult Industry Awards™ - A.A.I.A.®, now in its 24th year, is a glamorous annual black-tie event, complete with a red-carpet entrance and a 3-course meal. It’s the only event where the public can rub shoulders with the movers and shakers from the adult industry, while enjoying the very best entertainment the industry has to offer; it’s just like the Logie Awards, only very different.
social media accounts are:
Account created on or about 14/9/21, with first post on 14/9/21. (#519)
Created November 2021. (#520)
Created December 21, 2021. (#521)
Federal Court of Australia District Registry: Victoria Division: General Maxine Elizabeth Fensom and another Applicants Jake Ryan Media Group Pty Ltd (ACN 640 980 712) and Another Respondents.
I am the sole director and 100% shareholder of Forty Fifth Sherlock Pty. Ltd. (#504)
I am the sole director and 100% shareholder of Australian Adult Industry Awards Pty. Ltd. (#556)
Forty Fifth Sherlock Pty. Ltd. owns (list trademarks names, numbers, and certificates. (#505)
Twitter: @adultawardsau - impugned Twitter account:
1.This account was created in in August 2018 (#553), well before the Adult Industry Choice Awards (AICA) was launched, and was originally the AAIA page, although was hijacked and is now used to promote AICA events. A link to remains at (#506)
…
Around 3.30 pm that day, an associate of Ms Fensom sought to file a USB in-person at the Victorian Registry of the Federal Court. He also sought to file that material by email. The USB contained largely the same bundle of documents that the applicants had previously sought to file. The USB was not accepted for filing by the Registry as it was not accompanied by an affidavit.
Nothing further was sought to be filed by the applicants on 3 May 2024.
Accordingly, the applicants failed to file any evidence by way of affidavit in an admissible form by 4.00 pm on 3 May 2024 and therefore failed to comply with order 1 of the April Orders.
CONCLUSION
The applicants have failed to comply with three orders of the Court. I gave the applicants several chances, but they have failed to prosecute this proceeding reasonably or with any due diligence. It is therefore appropriate that the proceeding be dismissed.
To describe this proceeding as a “trainwreck” is an understatement. It has dragged on for almost two and a half years without any meaningful progress. The parties could not resolve this dispute at mediation in February 2023 before Senior National Judicial Registrar Legge and have since refused to conduct a further mediation. That is unsurprising — there is certainly no love lost between Ms Fensom and Mr Williams. Their personal animus was apparent when both appeared in person at the November case management hearing.
The applicants have continued to prosecute this proceeding but refused to comply with the Court’s orders or take their obligations seriously. In these circumstances, it is a waste of the Court’s resources and the respondents’ time and resources for this proceeding to continue.
The self-executing order in order 2 of the April Orders has the effect that the proceeding was dismissed on 3 May 2024. I do not need to make a further order to dismiss the proceeding.
However, I will make an order that the applicants pay the respondents’ costs of the proceeding, to be taxed by a Registrar if not agreed. Although Mr Williams has been self-represented for the entirety of the proceeding and the first respondent has been represented by Mr Williams, Mr Williams claims that he has incurred around $38,000 of legal costs from Macpherson Kelly at some stage during this proceeding. I have not seen any evidence to that effect, but if those costs were in fact incurred, the respondents should be entitled to recover those costs. Any issues as to costs can be dealt with by a Registrar.
I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe. Associate:
Dated: 6 May 2024
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