Financial Computing Services of Australia P/L v GCS P/L

[1993] FCA 642

JUDGES' CHAMBERS

FEDERAL COURT OF AUSTRALIA
450 LITTLE BOURKE STREET

AUSTRALIA L.

'&>>>\M<<~*C~ MELBOURNE, 3000

15 September, 1993

Ms.' Jan Costello,
Principal Registry,
Federal Court of Australia,
Level 16,
Law Courts Building,
Queens Square,

SYDNEY. N.S.W. 2000.

Dear Ms. Costello,

Re: Computerised Leaal Information Retrieval System

I enclose the follow~ng word processing disk (judgment included) for inclusion in the data base of Federal Court Judgments.

1.   Toyota Manufacturing Australia Ltd. v. Commissioner of Taxation - VG246 of 1989 - Single Judge - Jenkinson JJ - Melbourne - 15 September, 1993.

Please return the disk when finished with for further use.

Yours faithfully,

Lois Bendall
Secretary to Mr. Justice Jenkinson

64.2 ,93

JUDGMENT NO. ....m.eoo noem- 0-

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY )	NO. NG507 of 1992
GENERAL DIVISION	1

BETWEEN:  FINANCIAL COMPUTING SERVICES
OF AUSTRALIA PTY LTD

Applicant

AND :  GCS PTY LTD & ORS

Respondent

4 August 1993

REASONS FOR JUDGMENT

LOCKHART J.

I gave judgment in this matter on 7 June 1993 but stood the matter over for the purpose of hearing submissions as to the appropriate orders to be made to give effect to my reasons for judgment. There is a dispute between the parties as to the appropriate form of injunctive relief to be granted. The problem arises essentially because of what I said at page 29 of my reasons when dealing with the issue of substantial reproduction in the following passage:

" I am s a t i s f i e d t h a t a s u b s t a n t i a l p a r t o f

RELEASE 12 viewed a s a whole appears i n the produc t s o f GCS, namely FACTS and l a t e r

ECLIPSE.	I	am	a l s o	s a t i s f i e d	t h a t	a
s u b s t a n t i a l	p a r t	of	each	o f	the	v a r i o u s

i n d i v i d u a l programs set o u t i n RELEASE 12

h a s been reproduced i n FACTS and ECLIPSE; s o whichever the p o s i t i o n i s ( i .e . c o p y r i g h t

i n the t o t a l c o l l o c a t i o n o f works o r i n each

o f	the i n d i v i d u a l programs)	the answer i s
the same,	namely,	t h a t there h a s been a

s u b s t a n t i a l reproduc t ion ."

Counsel for the respondents has argued that the evidence demonstrates that in fact not all of the individual programs (which are numerous) set out in RELEASE 12 have been reproduced in FACTS or ECLIPSE. Therefore, any restraint should be limited to the particular programs which have, in fact, been substantially reproduced in FACTS or ECLIPSE. In my view, the case was conducted by both parties, if I may say so, very sensibly, not on the basis of analysis program by program but in a broader way. This is reflected in my reasons for judgment, particularly at the passage which I have just mentioned and also at earlier passages including page 26 in the second last

paragraph commencing with the words "The remaining question ...".

There were two competing views on the question of substantiality. I favoured the approach that the question was whether a substantial part of the individual programs in RELEASE 12 was reproduced in FACTS or ECLIPSE, rather than whether a substantial part of RELEASE 12, viewed as a whole, had been reproduced. It is, in my view, a case where it would go against the way the case was conducted both as to the leading of evidence

as to require an investigation program by program of the programs	and as to submissions on both sides, to limit the injunctions so
in RELEASE 12 when compared with the programs in FACTS and ECLIPSE.
In those circumstances, in my view, the injunctions that should go are of the more general kind for which counsel for the applicant contends. Whether on any subsequent inquiry as to damages or account of profits there will be a necessity for an analysis of the kind foreshadowed by counsel for the respondents to be conducted is a matter on which I say nothing at this stage.
Counsel for the respondents argue that no order for costs should be made today, but rather any order should abide the result of the taking of an account or an inquiry as to damages. The amount that may be ordered would have a bearing on the extent to which the applicant could recover costs fromthe respondents. Certainly, that will be so in relation to any subsequent costs that relate to an inquiry as to damages or an account of profits. But so far as the costs to date are concerned, the case has been conducted essentially on the issues which have led to injunctive relief, and in my view, the costs to date should follow the event. An order for costs of that kind should be made today.
The Court makes orders 1, 2, 3, 4 and 5 as set out in the short minutes as altered and initialled by me, dated today and placed with the papers.
Further, the Court orders that any election which the applicant may make as to damages or account of profits shall be made by written notice of election to be filed and served by 8 September 1993. ceding two ( 2 ) pages or judgment herein of

M: 4 August 1993

Counsel for the Applicant	D K Catterns QC
Solicitors for the Applicant :	Remedios h Martin

Counsel for the Respondents	:	J Burnside QC
Solicitors for the Respondents:	Corrs Chambers Westgarth
Date of Hearing	4 August 1993
Date of Judgment	:	4 August 1993