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Henley Arch Pty Ltd v del Monaco (No. 2)

Henley Arch Pty Ltd v del Monaco (No. 2)

Case [2020] FCCA 1911 15 July 2020

Intellectual Property

Civil Procedure

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FEDERAL CIRCUIT COURT OF AUSTRALIA

HENLEY ARCH PTY LTD v DEL MONACO (No.2)

[2020] FCCA 1911

Catchwords:
COPYRIGHT – Costs – whether costs should be awarded on an indemnity basis – whether costs should be awarded in a lump sum – whether costs under the Federal Court scale are appropriate – whether justifying circumstances to make an indemnity costs order – notice of offer to compromise – whether unreasonably refused by unsuccessful applicant.

Legislation:

Federal Circuit Court of Australia Act 1999 (Cth), sub-s.79(3)

Federal Circuit Court Rules 2001 (Cth), Sch.1, rr.1.03, 1.05, 21.02

Federal Court of Australia Act 1976 (Cth), s.37N

Federal Court Rules 2011 (Cth), rr.21.01, 25.01 - 06, 25.10 – 12, 25.14, 40.02(b)

Cases cited:

Beach Petroleum ML v Johnson (No 2) [1995] FCA 350; (1995) 57 FCR 119
Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd (No 5) [2017] FCA 63; (2017) 122 IPR 279
Ginos Engineers Pty Ltd v Autodesk Australia Pty Ltd [2008] FCA 1051; (2008) 249 ALR 371

Hislop v Paltar Petroleum (No 4) [2017] FCA 1632
Hudson v Sigalla (No 2) [2017] FCA 339

Keen v Telstra Corp Ltd (No 2) [2006] FCA 930

LFDB v SM (No 2) [2017] FCAFC 207
Nine Films and Television Pty Ltd v Ninox Television Ltd [2006] FCA 1046
Paciocco v Australia and New Zealand Banking Group (No 2) [2017] FCAFC 146; (2017) 253 FCR 403
Seafolly Pty Ltd v Maddern (No 6) [2015] FCA 1369
Seven Network Limited v News Limited [2007] FCA 2059
Sony Entertainment (Australia) Limited v Smith [2005] FCA 228; (2005) 215 ALR 788
TSG Franchise Management Pty Ltd v Cigarette & Gift Warehouse (Franchising) Pty Ltd (No. 3) [2016] FCA 828
Washington v Qantas Airways Limited [2014] FCCA 1413; (2014) 107 IPR 144

Applicant:

HENLEY ARCH PTY LTD

Respondent:

DORIANO MICHAEL DEL MONACO

File Number:

MLG 3588 of 2018

Judgment of:

Judge Baird

Hearing date:

Determined on the papers

Date of Last Submission:

5 December 2019

Delivered at:

Sydney

Delivered on:

15 July 2020

REPRESENTATION

Counsel for the Applicant:

Mr T Cordiner QC and Mr M Fleming

Solicitors for the Applicant:

Ashurst Australia

The Respondent appeared for himself

THE COURT ORDERS THAT:

The respondent pay the applicant’s cost of the proceeding, including this costs application, on a party and party basis up to and including 29 July 2019, and on and from 30 July 2019 on an indemnity basis, fixed as a lump sum pursuant to r.21 of the Federal Circuit Court Rules 2001 (Cth) in the total amount of $166,202.
The amount in paragraph (1) be payable by 15 October 2020.

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SYDNEY

MLG 3588 of 2018

HENLEY ARCH PTY LTD

Applicant

And

DORIANO MICHAEL DEL MONACO

Respondent

REASONS FOR JUDGMENT

Introduction

On 13 November 2019 I delivered Reasons for judgment in Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848 in which the Applicant, Henley Arch Pty Ltd, was successful in its suit against Mr Doriano Del…

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.

Continue reading Henley Arch Pty Ltd v del Monaco (No. 2)

Details

AGLC: Henley Arch Pty Ltd v Del Monaco (No.2) [2020] FCCA 1911
Case: [2020] FCCA 1911
Decision Date: 15 July 2020

CaseChat Overview and Summary

In *Henley Arch Pty Ltd v del Monaco (No. 2)*, the Federal Court of Australia was asked to determine the appropriate costs orders following a copyright infringement proceeding. The applicant, Henley Arch Pty Ltd, had been unsuccessful in its claim against the respondent, del Monaco.

The primary legal issues before the Court were whether costs should be awarded on an indemnity basis, whether costs should be ordered as a lump sum, and whether the Federal Court scale of costs was appropriate. Central to these questions was whether there were justifying circumstances to depart from the usual order for costs on a party and party basis, particularly in light of an offer to compromise made by the respondent which the applicant had allegedly unreasonably refused.

Justice Baird considered the principles governing indemnity costs orders, noting that they are exceptional and require demonstrating "justifying circumstances." His Honour found that the respondent's offer to compromise, which was significantly more favourable than the outcome ultimately achieved by the applicant, constituted such a circumstance. The applicant's refusal of this offer was deemed unreasonable, leading the Court to conclude that an indemnity costs order was warranted. The Court also determined that a lump sum order for costs was appropriate in the circumstances.

The Court ordered that the applicant pay the respondent's costs of the proceeding on an indemnity basis, to be assessed as a lump sum.

Orders