Makucha v Sovereign Capital Limited ACN 084 821 218

[2004] FCA 1784

FEDERAL COURT OF AUSTRALIA

Makucha v Sovereign Capital Limited ACN 084 821 218 [2004] FCA 1784

PAUL MAKUCHA v SOVEREIGN CAPITAL LIMITED ACN 084 821 218 & ORS

N 1653 OF 2004

EMMETT J
23 NOVEMBER 2004
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1653 OF 2004

BETWEEN:

PAUL MAKUCHA
APPLICANT

AND:

SOVEREIGN CAPITAL LIMITED ACN 084 821 218
FIRST RESPONDENT

PRESLANDS FINANCE PTY LIMITED ACN 069 851 449
SECOND RESPONDENT

NOTHINTOOHARD PTY LIMITED ACN 080 711 897
(IN LIQUIDATION) (RECEIVER APPOINTED)
THIRD RESPONDENT

ADAM SHEPARD
FOURTH RESPONDENT

RONALD JOHN DEAN-WILLCOCKS
FIFTH RESPONDENT

COLLIERS INTERNATIONAL (NSW) PTY LIMITED
ACN 001 401 681
SIXTH RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

23 NOVEMBER 2004

WHERE MADE:

SYDNEY

THE COURT NOTES THAT :

1.        The applicant gives the usual undertaking as to damages:

2.The sixth respondent, by its solicitor, undertakes to the Court that it will not, until further order, copy, reproduce or adapt any part of:

1. the plans and drawings comprising Annexure X to the Valuation report of Auspac International Valuers Pty Limited dated 9 March 2004;
2. the 9 architectural plans and drawings contained in Exhibit M1A in the proceeding;
3. Exhibit M2A;

(together referred to as ‘the Copyright Material’).

THE COURT ORDERS THAT:

3.Until further order, the first respondent be restrained from copying, reproducing or adapting any part of the Copyright Material.

4.The costs of today be reserved.

5.        The notice of motion dated 22 November 2004 be otherwise dismissed.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1653 OF 2004

BETWEEN:

PAUL MAKUCHA
APPLICANT

AND:

SOVEREIGN CAPITAL LIMITED ACN 084 821 218
FIRST RESPONDENT

PRESLANDS FINANCE PTY LIMITED ACN 069 851 449
SECOND RESPONDENT

NOTHINTOOHARD PTY LIMITED ACN 080 711 897
(IN LIQUIDATION) (RECEIVER APPOINTED)
THIRD RESPONDENT

ADAM SHEPARD
FOURTH RESPONDENT

RONALD JOHN DEAN-WILLCOCKS
FIFTH RESPONDENT

COLLIERS INTERNATIONAL (NSW) PTY LIMITED
ACN 001 401 681
SIXTH RESPONDENT

JUDGE:	EMMETT J
DATE:	23 NOVEMBER 2004
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The applicant claims to be the owner of copyright in a number of plans and drawings relating to proposals for the development of a site at Mascot.  For the purposes of the present application it is common ground that copyright in respect of those plans and drawings subsists in the applicant.  The applicant has commenced a proceeding against six respondents.  The third respondent is the owner of the land in respect of which the plans and drawings were developed.  The third respondent is in liquidation and has had receivers appointed to the land in question.  The receivers were appointed by the second respondent, pursuant to a legal mortgage in favour of the first respondent. 

2. The first respondent has entered into possession as mortgagee of the property and proposes to exercise power of sale.  An auction has been fixed for tomorrow.  The sixth respondent is the agent for sale of the land on behalf of the first respondent.  The sixth respondent has, in connection with the sale, circulated a draft contract for sale and has also circulated a brochure describing the property.  Included in the brochure are copies of three plans, which it is common ground for the purposes of this application, are copies of plans in respect of which copyright subsists in favour of the applicant.  Prima facie, therefore, there has been an infringement of copyright by the sixth respondent acting as agent for the first respondent. 

3. In the motion that came before me today, the applicant seeks relief far beyond the protection of copyright.  Apart from seeking orders restraining infringement of copyright, he also seeks orders restraining proceeding further with the auction or sale or transfer of the property at Mascot, although those claims, as I understand it, have gradually been abandoned during the course of the day.  An alternative claim was that the sale be restrained until the respondents have obtained an assignment in writing from the applicant of any copyright and other intellectual property in the plans and drawings relating to the approved development of the land. 

4. The approved development of the land is a reference to the development consent that has been given in respect of the land by the City of Botany Bay.  It appears that development consent has been given in respect of three different applications.  Copies of the consents are attached to and form part of the draft contract for sale of land.  They do so by way of disclosure to a prospective purchaser on the basis that the purchaser is to accept the matters disclosed and must not make any requisition or claim or delay completion of the contract, or rescind or terminate the contract by reason of anything so disclosed.  There is no representation contained in that clause other than a statement that the copies of the development consents are authentic documents of the City of Botany Bay.

5. The sixth respondent has indicated that it is prepared to proffer an undertaking to the Court that it will not copy, reproduce or adapt any of the plans and drawings in evidence in respect of which copyright subsists.  However, the first respondent is not prepared to proffer any such undertaking and relies on the undertaking given by its agent.  There is, however, no evidence of the relationship between the first and sixth respondents other than the fact that the sixth respondent has done what it has in relation to the sale of the property as agent for the first respondent.

6. In the light of the circumstance that on the material before me there has already been an infringement of the applicant’s copyright, there is a risk, in my view, that absent any assurance from the first respondent to the contrary or any assurance from the first respondent to the applicant that there will be no further infringement, that there may be an infringement in the future.  As I have said, there is no indication that the sixth respondent is an exclusive agent in relation to the property.  It may well be that the auction tomorrow is unsuccessful and further steps will be taken in relation to the sale of the property.  In the absence of any assurance from the first respondent, there must be a risk, in my view, of possible infringement. 

7. I consider in the circumstances that it is appropriate to make an order restraining the first respondent from copying, reproducing or adapting any of the plans or drawings in evidence before me, in respect of which it is common ground that copyright subsists in favour of the applicant.  When counsel for the applicant first opened for the applicant, there was some suggestion that the sale of the property in some way carried with it an entitlement to copyright in respect of plans and drawings relating to the property.  I do not understand how that could be so, and certain of the relief claimed in the notice of motion filed today, appears to me to be misconceived.  Be that as it may, as the matter developed, the applicant through his counsel limited the claim to one of restraining infringement of copyright.  I propose to make orders as indicated.  The notice of motion should be otherwise dismissed.

I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:            9 February 2005

Counsel for the Applicant:	P King
Counsel for the First Respondent:	C Carroll
Solicitor for the First Respondent:	Bransgroves Solicitors
Solicitor for the Second Respondent	S Woodland, Minter Ellison
Counsel for the Fourth and Fifth Respondents	M J Stevens
Solicitor for the Fourth and Fifth Respondents	Abbott Tout
Solicitor for the Sixth Respondent	R L Wall
Date of Hearing:	23 November 2004
Date of Judgment:	23 November 2004