GLEESON CJ, GAUDRON, McHUGH, GUMMOW, KIRBY, HAYNE AND CALLINAN JJ
THE GRAIN POOL OF WESTERN AUSTRALIA PLAINTIFF
AND
THE COMMONWEALTH OF AUSTRALIA & ANOR DEFENDANTS
The Grain Pool of WA v The Commonwealth [2000] HCA 14 23 March 2000 P34/1998
ORDER
The questions reserved on 18 June 1999 are answered as follows:
(a)Is the Plant Variety Rights Act 1987 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?
Answer:No, it was supported by s 51(xviii) of the Constitution. It is unnecessary to decide whether it was supported by any other head of Commonwealth power.
(b)Is the Plant Breeder's Rights Act 1994 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?
Answer:No, it is supported by s 51(xviii) of the Constitution. It is unnecessary to decide whether it is supported by any other head of Commonwealth power.
Costs of the questions reserved to be dealt with by the Justice disposing of the action.
2.
Representation:
G Griffith QC with W Harris for the plaintiff (instructed by Mallesons Stephen Jaques)
D M Bennett QC, Solicitor-General of the Commonwealth with K J Howard and A R Beech for the first defendant (instructed by Australian Government Solicitor)
T A Gray QC with R A Cameron and M A Perry for the second defendant (instructed by Corsers)
Interveners:
W C R Bale QC, Solicitor-General of the State of Tasmania with S B Kaye intervening on behalf of the Attorney-General of the State of Tasmania (instructed by Crown Solicitor for Tasmania)
R J Meadows QC, Solicitor-General for the State of Western Australia with R M Mitchell intervening on behalf of the Attorney-General for the State of Western Australia (instructed by Crown Solicitor for Western Australia)
Notice: This copy of the Court’s Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.
CATCHWORDS
The Grain Pool of WA v The Commonwealth
Intellectual Property – Plant Variety Rights – Whether Plant Variety Rights Act 1987 (Cth) was valid – Whether s 82 of Plant Breeder's Rights Act 1994 (Cth) is valid – Scope of s 51(xviii) of the Constitution – Patents of inventions – Nature of varieties of intellectual property – Whether s 51(xviii) requires novelty or inventiveness.
Constitutional Law – Commonwealth Constitution – Legislative powers of the Parliament – Meaning of – Relevance of meaning of words in 1900.
Words and Phrases – "patents of inventions", "origination", "breeding", "intellectual effort", "inventiveness", "novelty", "process", "product", "patent".
GLEESON CJ, GAUDRON, McHUGH, GUMMOW, HAYNE AND CALLINAN JJ.
The issues
The plaintiff is a statutory authority established under the Grain Marketing Act 1975 (WA). In an action instituted in this Court, the plaintiff claims various relief including a…
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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AGLC
Grain Pool of Western Australia v The Commonwealth [2000] HCA 14
Case
[2000] HCA 14
Decision Date
CaseChat Overview and Summary
The High Court of Australia considered the constitutional validity of the *Plant Variety Rights Act 1987* (Cth) and the *Plant Breeder's Rights Act 1994* (Cth). The Grain Pool of Western Australia, the plaintiff, challenged these federal Acts, arguing they were not supported by any head of Commonwealth legislative power. The defendants, the Commonwealth and Cultivaust Pty Ltd, defended the validity of the Acts. The dispute arose in circumstances where Cultivaust claimed rights under the federal legislation to sell and produce reproductive material of a specific barley cultivar, which the plaintiff contended would contravene Western Australian state legislation governing grain marketing.
The central legal issue before the Court was whether the *Plant Variety Rights Act 1987* and the *Plant Breeder's Rights Act 1994* were validly enacted laws of the Commonwealth Parliament. Specifically, the Court was asked to determine if these Acts were supported by section 51(xviii) of the Constitution, which grants the Parliament power to legislate with respect to "copyrights, patents of inventions and designs, and trade marks," or any other available head of Commonwealth power.
The Court reasoned that the power conferred by section 51(xviii) of the Constitution is broad and its scope is not confined to the understanding of those terms as they existed in 1900. Applying this broad interpretation, the Court found that both the *Plant Variety Rights Act 1987* and the *Plant Breeder's Rights Act 1994* were supported by section 51(xviii). The Court concluded that it was unnecessary to consider whether the Acts were supported by other heads of Commonwealth power, such as external affairs under section 51(xxix).
The questions reserved for the Court's opinion were answered in the negative, confirming the constitutional validity of both the *Plant Variety Rights Act 1987* and the *Plant Breeder's Rights Act 1994* on the basis that they were supported by section 51(xviii) of the Constitution. The Court ordered that the costs of the questions reserved be dealt with by the Justice disposing of the action.
Orders
Orders of the court
1.
The questions reserved on 18 June 1999 are answered as follows:
(a) Is the Plant Variety Rights Act 1987 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?
Answer: No, it was supported by s 51(xviii) of the Constitution. It is unnecessary to decide whether it was supported by any other head of Commonwealth power.
(b) Is the Plant Breeder's Rights Act 1994 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?
Answer: No, it is supported by s 51(xviii) of the Constitution. It is unnecessary to decide whether it is supported by any other head of Commonwealth power.
2.
Costs of the questions reserved to be dealt with by the Justice disposing of the action.
2.
Background
Background to the litigation
The power conferred by s 51(xviii) is a very broad one. The metes and bounds of the power are not to be ascertained in my respectful view, by an understanding of what fell within the class of "copyrights, patents of inventions and designs, and trade marks" in 1900. Because, in part of the joint reasons[110] the other members of this Court have repeatedly referred to the consideration of the ambit of "patents of invention" in 1900 – lest that consideration be thought to control, or even significantly to influence, the contemporary meaning of the constitutional words, I am bound to express my different viewpoint.[110]Joint reasons at [15-16], [19], [21], [23], [26], [33], [40-41], [78].Facts, issues and common ground The facts necessary to the resolution of the two questions reserved for the opinion of the Full Court[111] are set out in the joint reasons. So are the relevant provisions of the Plant Variety Rights Act 1987 (Cth) ("the Varieties Act") and the Plant Breeder's Rights Act 1994 (Cth) ("the Breeder's Rights Act"). So too are the issues before this Court and the substance of the arguments for the Grain Pool of Western Australia[112] (the plaintiff) which challenges the constitutional validity of the foregoing federal Acts. [111]Pursuant to the Judiciary Act 1903 (Cth), s 18.[112]An authority established under the Grain Marketing Act 1975 (WA), s 6. The Commonwealth and Cultivaust Pty Ltd ("Cultivaust") appeared as defendants to defend the validity of the two Acts. Cultivaust is a company incorporated in South Australia. It is a grain merchant and trader which has been licensed by the State of Tasmania with the exclusive right to sell and produce the reproductive material of Franklin Barley (hordeum vulgare) (described in the licence as the "Cultivar") and to grant rights to others to sell and produce such reproductive material. Pursuant to the Varieties Act, in January 1990, the State of Tasmania which had developed this variety of barley was entered on the register of the Varieties Act[113] as the grantee of "plant variety rights" in respect of Franklin Barley. In November 1994 the State of Tasmania was also entered on the register kept under the Breeder's Rights Act[114] as the holder of the plant breeder's rights specified in that Act[115]. Notwithstanding the rights acquired by Cultivaust under the licence, the plaintiff asserted that Cultivaust's intended action to run a grain pool of Franklin Barley in Western Australia and to deliver and market that produce as proposed, would contravene the Grain Marketing Act 1975 (WA)[116]. Cultivaust argued that, to the extent that the lastmentioned State Act purported to restrict the exercise by it of rights derived under the Varieties Act and the Breeder's Rights Act of the Commonwealth, the Western Australian law was invalid by reason of inconsistency with the federal laws[117]. It was in these circumstances that the question of the validity of the federal laws was raised. That question was excised from proceedings commenced in this Court on the inconsistency question for the opinion of the Court as now constituted.[113]Pursuant to s 9.[114]Pursuant to s 61.[115]s 11.[116]s 22.[117]Constitution, s 109.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
KIRBY J
(dissent)
It was with a monopoly identified in this way that the patent law was concerned, not with the conferral of "positive authority" in the sense referred to by the Attorney-General for the State of Western Australia. Both the Varieties Act and the Breeder's Rights Act are consistent with the expositions of principle given in Steers v Rogers and American Bell Telephone Company.Conclusion It is unnecessary to consider the application of the power of the Parliament in s 51(xxix) of the Constitution with respect to "external affairs". The questions reserved should be answered to the effect that the two statutes are not invalid for want of support by s 51(xviii) of the Constitution. The costs of the questions reserved should be dealt with by the Justice disposing of the action. In concluding his reasons in the Union Label Case[105], Higgins J expressed the opinion that, even if the characteristics of the label in that case did not "bring it strictly within the class 'trade marks' as understood in 1900", there was nothing in the Act[106], the constitutional validity of which was in question, which transgressed the power conferred on the Federal Parliament by s 51(xviii) of the Constitution to make laws (relevantly) with respect to trade marks. He went on[107]:"This opinion may not be quite necessary for the purpose of my judgment, inasmuch as I hold the view that the workers' trade mark does contain all the essential characteristics of a trade mark; but it is my duty not to let the narrow view of the nature of the federal powers pass without protest and by silence into unquestioned law."[105]Attorney-General for NSW v Brewery Employés Union of NSW (1908) 6 CLR 469 at 616.[106]Trade Marks Act 1905 (Cth), Pt VII.[107]Union Label Case (1908) 6 CLR 469 at 616. It was accepted by those in this case who supported the narrow view of the power conferred by s 51(xviii), that the correctness of the approach taken by the majority in the Union Label Case might now be open to question[108]. I agree. Because I agree, I would adopt the same approach as Higgins J did (and also Isaacs J[109]). I will therefore express my own opinion for concurring in the orders proposed by the other members of the Court (whose opinion I will call the "joint reasons"). Whilst I agree with much of their Honours' reasoning and in their ultimate conclusions, there is a difference in the way that I come to my conclusions.[108]Submission of the Attorney-General for the State of Western Australia (intervening).[109]Union Label Case (1908) 6 CLR 469 at 553. The power conferred by s 51(xviii) is a very broad one. The metes and bounds of the power are not to be ascertained in my respectful view, by an understanding of what fell within the class of "copyrights, patents of inventions and designs, and trade marks" in 1900. Because, in part of the joint reasons[110] the other members of this Court have repeatedly referred to the consideration of the ambit of "patents of invention" in 1900 – lest that consideration be thought to control, or even significantly to influence, the contemporary meaning of the constitutional words, I am bound to express my different viewpoint.[110]Joint reasons at [15-16], [19], [21], [23], [26], [33], [40-41], [78].Facts, issues and common ground