Gold Peg International P/L v Kovan Engineering (Aust) Ltd - [2004] FCA 1601

FEDERAL COURT OF AUSTRALIA
Gold Peg International P/L v Kovan Engineering (Aust) Ltd [2004] FCA 1601
PRACTICE AND PROCEDURE – applicant seeks leave to amend statement of claim – respondents seek leave to amend defence and to add a cross‑claim – whether it was just to grant leave as sought.
Copyright Act 1968 (Cth)
Federal Court Rules O 13 r 2
Trade Practices Act 1974 (Cth)
Amatek v Botman (1995) 13 ACLC 1729 referred to
BP Refinery (Westernport) Pty Ltd v Hastings Shire Council (1977) 180 CLR 266 referred to
Burnham v The City of Mordialloc (1956) VLR 239 distinguished
Codelfa Construction Pty Ltd v State Rail Authority of New South Wales (1982) 149 CLR 337 referred to
Cohen v McWilliam (1995) 38 NSWLR 476 referred to
Cropper v Smith (1884) 26 Ch D 700 referred to
Dare v Pulham (1982) 148 CLR 658 referred to
Empirnall Holdings Pty Ltd v McMahon Paull Partners Pty Ltd (1988) 14 NSWLR 523 refered to
Gordon v MacGregor (1909) 8 CLR 316 distinguished
Howarth v Adey [1996] 2 VR 535 referred to
National Australia Bank Limited v Nobile and Another (1991) 100 ALR 227 referred to
Patrick v Capital Finance Pty Ltd [2003] FCA 206 distinguished
The Commonwealth v Verwayen (1990) 170 CLR 394 referred to
The State of Queensland & Another v J L Holdings Pty Limited (1996-1997) 189 CLR 146 followed
GOLD PEG INTERNATIONAL P/L v KOVAN ENGINEERING (AUST) LTD & ORS
V429 of 2002
CRENNAN J
8 DECEMBER 2004
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V429 OF 2002

BETWEEN:

GOLD PEG INTERNATIONAL PTY LTD
APPLICANT

AND:

KOVAN ENGINEERING (AUST) LTD & ORS
RESPONDENT

JUDGE:

CRENNAN J

DATE:

8 DECEMBER 2004

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The applicant has brought proceedings alleging conduct in breach of ss 52 and 53(c) and (d) of the Trade Practices Act 1974 (Cth), breaches of an agreement governing copyright ownership in certain drawings, as between the applicant and the first respondent, and infringement of copyright in certain drawings being artistic works under s 10(1) of the Copyright Act 1968 (Cth).
The drawings are of a cooker. The applicant sought leave to amend its pleadings on the eighth day of the proceeding. Two of the applicant’s four witnesses have completed their evidence and an expert witness whom the applicant has called has commenced, but not completed, his evidence. The amendments sought include amendments to particulars of an agreement alleged to have been made in 1992, amendments to particulars of copyright infringement and a further allegation of breach of the agreement, being a breach which only came to light during the course of the proceedings.
The respondents oppose the application on the grounds that the proposed amendments are late and that there has already been opportunity to plead the case which the applicant seeks to advance. The respondents particularly point to the fact that there have been four prior versions of the statement of claim. Furthermore, the respondents complain that conversations now…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] FCA 1601
Decision Date: 8 DECEMBER 2004

CaseChat Overview and Summary

Gold Peg International P/L has brought proceedings against Kovan Engineering (Aust) Ltd and others, alleging breaches of the Trade Practices Act 1974 (Cth) and the Copyright Act 1968 (Cth), as well as breaches of an agreement governing copyright ownership in certain drawings. The applicant sought leave to amend its pleadings on the eighth day of the proceeding, proposing changes to particulars of an alleged agreement, amendments to particulars of copyright infringement and a further allegation of breach of the agreement. The respondents opposed the application on the grounds that the proposed amendments were late and that there had already been opportunity to plead the case which the applicant seeks to advance. The respondents also sought leave to amend their defence and to add a cross-claim, seeking declarations and injunctions in respect of the “Kovan Drawings”.

The legal issues the court was required to decide included whether it was just to grant leave as sought for the applicant to amend its pleadings, and whether it was just to grant leave for the respondents to amend their defence and to add a cross-claim. The court had to weigh the competing factors in relation to exercising the discretion to grant leave to amend, in accordance with established principles.

The court accepted the respondents' argument that the applicant had had many opportunities to plead its case in relation to the specific particulars of conversations constituting the agreement. Further late change in those particulars had the capacity to cause prejudice to the respondents which could not be assuaged by costs or an adjournment, having regard to strategic decisions taken during the course of the hearing to date. However, in relation to the balance of the amendments in relation to paragraph 11 of the statement of claim, the court accepted the applicant's submissions and regarded the proposed amendments as governed by established principles. Any prejudice to the respondents could be assuaged by costs and any necessary directions and/or adjournment.

In relation to the proposed amended defence and cross-claim, the court found that the amendments proposed would be allowed by applying the principles to which reference had been made, on the basis that prejudice to the applicant could be obviated by separate hearing of allegations of any actual (as distinct from threatened) infringement of the “Kovan Drawings” and postponement of any interlocutory steps in respect of such a hearing.

Leave will be granted to the applicant to amend the statement of claim in accordance with its proposed statement of claim except for the addition of the words “in the period from about 1989 until early 1992” to the particulars to paragraph 11. To the extent that it is sought to further cross-examine any witness as a result of the permitted amendments, the leave would be conditional on the recall of witnesses for those purposes. To the extent that the applicant has already agreed to further particularise the proposed amended particulars of infringement, the grant of leave is conditional on the provision of those further particulars. To the extent that either party requires time in order to undertake further interlocutory steps as a result of the amendments in respect of which leave is granted, the leave will be conditional on adjournment of the further hearing as reasonably required. The parties are directed to bring in proposed minutes of order in accordance with these reasons for judgment, such minutes to cover all directions as necessary, including a direction for a further case management conference. At that time the parties will be given the opportunity to make submissions on costs.

Orders