Manufacturing Action Group Inc v Polar Heights Pty Ltd

[1996] FCA 114

IN THE FEDERAL COURT OF AUSTRALIA )

)

VICTORIA DISTRICT REGISTRY       )        VG 46 of 1996

)

GENERAL DIVISION                 )

BETWEEN:  MANUFACTURING ACTION GROUP, INC

(Applicant)

AND:     POLAR HEIGHTS PTY LTD

(ACN 007 296 729)

(First Respondent)

AND:     DAVID JOHN BLUNDELL

(Second Respondent)

AND:     PATRICK FRANCIS BRADY

(Third Respondent)

AND:     RAYLEE ANNE MULCAHY

(Fourth Respondent)

CORAM:    Ryan J

DATE:     13 February 1996

PLACE:    Melbourne

REASONS FOR JUDGMENT

RYAN J:   In this matter it has been conceded that there is a serious question to be tried, at least as to the allegations of infringement of copyright in both the computer programs and what have been called the ancillary literary works. I am not persuaded that the delay which has occurred since these issues were first raised between the parties should be a bar at this stage to the grant of injunctive relief.  That delay is largely explained by negotiations which extended over some weeks in November 1995 but have apparently not resulted in an agreement which is accepted as binding on both sides.

On the balance of convenience I consider that any special needs of past customers of the respondent, if they cannot be met without contravention of the injunction which I propose to grant, can be accommodated by recourse to the liberty to apply which I shall reserve.

I accept that the injunction sought is likely to have an adverse effect on the income of the second and fourth respondents who are presently looking forward to the birth of their first child.  However, to allow those respondents to continue without restraint to deal with the arguably infringing material may well expose them to financial adversity of a much higher order in the long run.

I consider that having regard to the fact that the applicant is a United States Corporation not apparently carrying on any significant business in this country, and being engaged in its own country in a notoriously volatile industry, it should be required to give security for the undertaking as to damages which has been proffered on its behalf.  I also consider that security should be provided in a preliminary way for the respondents' costs of the application.  For present interlocutory purposes, I shall not differentiate in the order that I make between the two elements of that security.

Whether the two elements involved in the provision of security should be preserved to trial, and in what amount, can be considered on proper material pursuant to the liberty to apply or otherwise in the course of the preparation of this action for
trial.  I also consider it appropriate in all the circumstances before there is undue expenditure of time or money that there be an early pre-trial and mediation conference before a Registrar of the Court.

Accordingly, the order of the Court is that upon the applicant, by its Counsel, giving the usual undertaking as to damages and upon the applicant within seven days of this date providing in a form acceptable to the Victoria District Registrar of the Court security in the sum of A$100,000 for its undertaking as to damages and for the respondent's costs of this application:

1.That the first, second and third respondents be restrained by themselves, their servants or agents or otherwise from reproducing in any material form, publishing, distributing, selling or offering for sale the computer copyright works referred to in paragraph 9 of the statement of claim, and the literary copyright works referred to in paragraphs 10, 11, 12 and 13 of the statement of claim.

2.That the respondents file and serve by 27 February 1996 their respective defences to the statement of claim.

3.That the application be referred to a Registrar of the Court for a pre-trial and mediation conference to be conducted as directed by the Registrar not before 1 March 1996.

4.That the costs of all parties of this day be costs in the cause.

5.That the respondent's motion on notice, dated 12 February 1996, be adjourned to a date to be fixed.

6.That liberty be reserved to any party to apply on not less than 72 hours notice in writing to the other parties.

I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment of his Honour Justice Ryan.

Associate:

Date:

Counsel for the Applicant        :    Mr M. Goldblatt

Solicitors for the Applicant   :  Davies Ryan De Boos

Counsel for the First, Second  :  Mr B.J. Hess

andThird Respondents

Solicitors for the First,        :    Kalus Kenny

Second and Third Respondents

Date of Hearing                  :    13 February 1996

Date of Judgment              :  13 February 1996