Granger v Murdoch Books Pty Ltd
[2012] FCA 909
•24 August 2012
FEDERAL COURT OF AUSTRALIA
Granger v Murdoch Books Pty Ltd [2012] FCA 909
Citation: Granger v Murdoch Books Pty Ltd [2012] FCA 909 Parties: WILLIAM RONALD GRANGER, BILLS LICENSING PTY LTD (ACN 115 442 656) and BILLS RESTAURANTS PTY LTD (ACN 002 116 298) v MURDOCH BOOKS PTY LTD (ACN 087 351 273) File number: NSD 752 of 2012 Judge: KATZMANN J Date of judgment: 24 August 2012 Legislation: Federal Court Rules 2011 rr 25.01, 25.04, 25.08, 25.10 Date of hearing: 22 August 2012 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 14 Counsel for the Applicants: Mr J Knackstredt Solicitor for the Applicants: M+K Lawyers Counsel for the Respondent: Mr G Ng Solicitor for the Respondent: Simpsons Solicitors
IN THE FEDERAL COURT OF AUSTRALIA
NSW DISTRICT REGISTRY
GENERAL DIVISION
NSD 752 of 2012
BETWEEN: WILLIAM RONALD GRANGER
First ApplicantBILLS LICENSING PTY LTD (ACN 115 442 656)
Second ApplicantBILLS RESTAURANTS PTY LTD (ACN 002 116 298)
Third ApplicantAND: MURDOCH BOOKS PTY LTD (ACN 087 351 273)
Respondent
JUDGE:
KATZMANN J
DATE OF ORDER:
24 AUGUST 2012
WHERE MADE:
SYDNEY
THE COURT NOTES:
1.The agreement between the parties that the respondent pay to the applicants:
(a)a sum in relation to the exploitation by the respondent of the compilation cookbooks entitled ‘Best of Bill’ and ‘Bill Cooks for Kids’, both in paper and electronic form (together, the Compilation Cookbooks), which is to be paid to the applicants by 4 September 2012 and otherwise in accordance with the payment terms contained in clause 14(a) of the agreement between the first and second applicants and the respondent dated 14 December 2005, and calculated in the following manner:
(i)18.5% of all sums received by the respondent (excluding any GST) up to and including 3 September 2012 in relation to its exploitation of the Compilation Cookbooks in paper form; and
(ii)25% of all sums received by the respondent (excluding any GST) up to and including 3 September 2012 in relation to its exploitation of the Compilation Cookbooks in electronic form;
less the sum of $60,363.24 (which has already been paid to the Applicants by the Respondent); and
(b)such further sums on an ongoing basis in relation to the exploitation by the Respondent of the Compilation Cookbooks, which sums are to be paid to the Applicants and otherwise in accordance with the payment terms contained in clause 14(a) of the agreement between the First and Second Applicants and the Respondent dated 14 December 2005, and calculated in the following manner:
(i)18.5% of all sums received by the Respondent (excluding any GST) on and from 4 September 2012 in relation to its exploitation of the Compilation Cookbooks in paper form; and
(ii)25% of all sums received by the Respondent (excluding any GST) on and from 4 September 2012 in relation to its exploitation of the Compilation Cookbooks in electronic form.
THE COURT ORDERS:
2.Subject to the entitlement of the applicants to apply to the Court for an order pursuant to r 25.10 of the Federal Court Rules 2011 in the event of non-compliance with the terms of the above agreement, the proceedings be otherwise dismissed.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NSW DISTRICT REGISTRY
GENERAL DIVISION
NSD 752 of 2012
BETWEEN: WILLIAM RONALD GRANGER
First ApplicantBILLS LICENSING PTY LTD (ACN 115 442 656)
Second ApplicantBILLS RESTAURANTS PTY LTD (ACN 002 116 298)
Third ApplicantAND: MURDOCH BOOKS PTY LTD (ACN 087 351 273)
Respondent
JUDGE:
KATZMANN J
DATE:
24 AUGUST 2012
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The first applicant, Bill Granger, is a well-known Australian chef and restaurateur and the author of several cookbooks. Murdoch Books Pty Ltd is a company with whom the three applicants have publishing agreements.
On 30 May 2012 the applicants filed proceedings in this Court against Murdoch Books alleging infringement of copyright, misleading or deceptive conduct and infringement of moral rights arising out of the publication by Murdoch Books of a number of cookbooks in hard copy and electronic form. They claimed damages and, with respect to the infringements of copyright, an account of profits. They also sought declaratory and injunctive relief, orders for the delivery up of all copies of the cookbooks in the company’s possession, custody or power and their destruction, certain public acknowledgments of its misleading conduct and a public apology.
After a preliminary skirmish about whether the proceedings should be referred to arbitration under s 8(1) of the Commercial Arbitration Act 2010 (NSW), which was ultimately not pursued, Murdoch Books filed a defence denying any wrongdoing.
The defence was filed on 18 July 2012. Two days later Murdoch Books served a notice of offer to compromise under r 25.01 of the Federal Court Rules 2011 and on 6 August 2012, after an exchange of correspondence designed to clarify the meaning of its terms, the applicants accepted the offer by serving a notice of acceptance pursuant to r 25.08(3). The notice was accompanied by a letter addressed to the solicitors for Murdoch Books advising of the applicants’ intention to have the matter relisted so that appropriate declarations, injunctions and orders could be made by the Court to give effect to the offer of compromise. There then followed correspondence attaching draft orders. There was some disagreement about the terms of the draft orders. Most of the disagreement fell away. On 22 August 2012 I made a number of declarations and other orders by consent. There were minor disagreements about two matters upon which I ruled at the time. The remaining issue relates to one proposed order.
The disputed order is a variation of paragraph 2 of the offer to compromise. It reads:
The Respondent is to pay to the Applicants:
(a)a sum in relation to the exploitation by the Respondent of the compilation cookbooks entitled ‘Best of Bill’ and ‘Bill Cooks for Kids’, both in paper and electronic form (together, the Compilation Cookbooks), which is to be paid to the Applicants by 4 September 2012 and otherwise in accordance with the payment terms contained in clause 14(a) of the agreement between the First and Second Applicants and the Respondent dated 14 December 2005, and calculated in the following manner:
(i)18.5% of all sums received by the Respondent (excluding any GST) up to and including 3 September 2012 in relation to its exploitation of the Compilation Cookbooks in paper form; and
(ii)25% of all sums received by the Respondent (excluding any GST) up to and including 3 September 2012 in relation to its exploitation of the Compilation Cookbooks in electronic form;
less the sum of $60,363.24 (which has already been paid to the Applicants by the Respondent); and
(b)such further sums on an ongoing basis in relation to the exploitation by the Respondent of the Compilation Cookbooks, which sums are to be paid to the Applicants and otherwise in accordance with the payment terms contained in clause 14(a) of the agreement between the First and Second Applicants and the Respondent dated 14 December 2005, and calculated in the following manner:
(i) 18.5% of all sums received by the Respondent (excluding any GST) on and from 4 September 2012 in relation to its exploitation of the Compilation Cookbooks in paper form; and
(ii) 25% of all sums received by the Respondent (excluding any GST) on and from 4 September 2012 in relation to its exploitation of the Compilation Cookbooks in electronic form.
There is no disagreement about the terms. The dispute concerns whether Murdoch Books actually agreed to an order to this effect, whether in any event the Court should make such an order and, indeed, whether the Court has power to make it. As it transpires, it is unnecessary to answer the third question because I am not persuaded that the order should be made.
On the day the offer was accepted and, I infer, before it was accepted, the solicitors for Murdoch Books wrote to the solicitors for the applicants. The letter referred to a number of aspects of the offer. The applicants draw attention to two passages in it:
Of course, the Offer also relates to currently unknown future sales incapable of being expressed at this point in dollar terms …
The wording of paragraphs 4 – 6 makes it implicitly clear that our client’s consent to the prayers identified in the Offer will be formalised by way of Court enforceable undertakings embodied in consent orders.
The first passage is relevantly unhelpful. The second passage seems to me to put the dispute to rest. Murdoch Books did not consent to an order giving effect to the agreement. The prayers identified in the offer were 2–8 (inclusive), 14 and 18 of the originating application. None of those prayers has anything to do with the disputed order. Prayers 2–8 sought injunctions to restrain infringements of copyright. Prayer 14 sought an injunction to restrain continuing misleading or deceptive conduct. And prayer 18 sought an injunction to restrain Murdoch Books from infringing Mr Granger’s moral rights in the literary works contained in the cookbooks. Contrary to the submission made on behalf of the applicants, there is no ambiguity about the meaning of the offer.
A question arises, however, about whether, on the assumption that I have jurisdiction to do so, I should nonetheless make the orders.
The applicants submit that orders should be made for two reasons. First, they note that the notice of offer to compromise states:
The amount of the offer will be paid within 28 days after acceptance of this offer.
Mr Knackstredt, who appeared for the applicants, submitted that an order should be made because, as he correctly points out, this statement is meaningless in the context of the disputed order and the offer contains no provision as to the date by which the payments in para (b) would be made. There are two answers to the submission. The first is that the statement was obviously referring to the first paragraph of the offer to compromise, which was that the respondent pay the applicants the sum of $30,000 inclusive of interest. It reflects the terms of r 25.04. The second is that the making of an order would not cure the problem created by any uncertainty in the terms. That very uncertainty is a good reason not to make the order.
The second argument propounded in favour of the making of orders was that the agreement involved the proceedings being “otherwise dismissed” but if Murdoch Books fails to comply with its obligation to pay the sums contemplated by the disputed order and the proceedings have been dismissed, the applicants will not be able to apply for the type of relief contemplated by r 25.10 without first moving the Court to have the proceedings reinstated. The applicants submit that this potential outcome should be avoided.
Rule 25.10 relevantly provides:
If, after acceptance of an offer by an offeree, an offeror fails to comply with the offer’s terms, the offeree may apply to the Court for an order:
(a)giving effect to the accepted offer; or
…
It seems to me that the applicants’ concerns can be met if I simply note the agreement but make an order that, subject to the entitlement of the applicants to apply to the Court for an order pursuant to r 25.10 in the event of non-compliance with the terms of the agreement, the proceedings be otherwise dismissed and that is what I will do.
I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Katzmann. Associate:
Dated:: 24 August 2012
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