Metricon Homes Pty Ltd v Vista Design Architects Pty Limited
[2011] FMCA 788
•22 September 2011
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| METRICON HOMES PTY LTD v VISTA DESIGN ARCHITECTS PTY LIMITED & ORS | [2011] FMCA 788 |
| COPYRIGHT – Application by respondents to transfer proceedings to Sydney Registry – consideration of competing considerations. |
| Copyright Act 1968 (Cth) |
| National Mutual Holdings Proprietary Limited v The Sentry Corporation (1988) 83 ALR 434 |
| Applicant: | METRICON HOMES PTY LTD |
| First Respondent: | VISTA DESIGN ARCHITECTS PTY LIMITED |
| Second Respondent: | FARAH MADON |
| Third Respondent: | MARK WOJCIECHOWSKI |
| Fourth Respondent: | KYLIE WOJCIECHOWSKI |
| File Number: | MLG 827 of 2011 |
| Judgment of: | Burchardt FM |
| Hearing date: | 14 September 2011 |
| Date of Last Submission: | 14 September 2011 |
| Delivered at: | Melbourne |
| Delivered on: | 22 September 2011 |
REPRESENTATION
| Counsel for the Applicant: | Mr Pascarl |
| Solicitors for the Applicant: | Davies Collison Cave Law Pty Ltd |
| Counsel for the First & Second Respondents: | Mr Veeriah |
| Solicitors for the First & Second Respondent: | Moray & Agnew |
| The Third & Fourth Respondents: | No appearance |
ORDERS
The hearing of the trial of this proceeding commencing 16 April 2012 at 10.15 am with a trial estimate of five days take place in Melbourne.
Costs be in the cause.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT MELBOURNE |
MLG 827 of 2011
| METRICON HOMES PTY LTD |
Applicant
And
| VISTA DESIGN ARCHITECTS PTY LIMITED |
First Respondent
| FARAH MADON |
Second Respondent
| MARK WOJCIECHOWSKI |
Third Respondent
| KYLIE WOJCIECHOWSKI |
Fourth Respondent
REASONS FOR JUDGMENT
(Revised from transcript)
In this matter, the application and statement of claim were filed on
15 June 2011. Taken together, they allege that the applicant has copyright in a house design known as Laguna 36 and further allege infringement of that copyright by the respondents. The applicant seeks damages or an account of profits or an inquiry as to damages. The response of the first and second respondents does not admit copyright and denies infringement in any event. The defence of the third and fourth respondents does not plead to copyright but denies infringement. It is clear, therefore, first that the applicant will have to prove copyright and second, will have to prove damages, unless the case were to be split. I can indicate that the case will not be split, not least because nobody has applied to do so, nor, at least as a matter of preliminary impression, would it be an appropriate case in which to do so.
On 3 August 2011, the first and second respondents filed an application in a case seeking that the proceeding be transferred to the Sydney Registry. It is clear, once again, first that this application was made in a timely way and second, that the proceeding had not been significantly conducted at the time of the application in a case being filed. So far as the relevant law is concerned, both sides refer to the decision of the Full Court of the Federal Court in National Mutual Holdings Proprietary Limited v The Sentry Corporation (1988) 83 ALR 434. There are two passages from the Full Court’s judgment at page 442 to which I would make specific reference, although of course I have had regard to the whole of the decision.
First, and I quote:
“There is no onus of proof in the strict sense to be discharged by the parties seeking to conduct or continue the proceedings elsewhere. It should be noted that the court may exercise its powers under O 30, r 6 either on the application of a party or of its own motion. The court must, however, be satisfied after considering all relevant matters that there is sound reason to direct that the proceeding be conducted or continued elsewhere. Its starting point is that the proceeding has been commenced at a particular place. Why should it be changed?”
The second quotation on the same page is in these terms:
“The balance of convenience is important, but its weight must vary from case to case. Ultimately the test is where can the case be conducted or continued most suitably, bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the court. It cannot and should not, in our opinion, be defined more closely or precisely”
I would point out that a party has the right to issue where they choose and that factor deserves weight unless the choice is clearly capricious or done to obtain an unfair advantage, but that is only one factor. Here, there are a number of points to be made. The law with which we are concerned is the Copyright Act 1968 (Cth). It is a federal law, contrary to a submission advanced by the respondents, and the matter can be therefore heard equally conveniently, so far as that is concerned, either in Melbourne or in Sydney.
Next, the claim is for infringement of copyright. As I said, the applicant has to prove both the copyright and the infringement. The applicant is registered in Victoria and its head office is in Melbourne. Three witnesses who the applicant will call to establish copyright live in Melbourne. Two witnesses the applicant would call as to loss and damage are in Melbourne. One witness of the applicant is in
New South Wales. The applicant’s lawyers, who have the advantage of detailed knowledge of the applicant’s affairs, are also in Melbourne. Those factors all favour retaining the matter here.
Against this, the property that has given rise to the dispute is in
New South Wales. The question of a view has not been raised in terms but may yet arise. All the respondents are in New South Wales. Not surprisingly, therefore, the respondents’ lawyers are in New South Wales. The applicant has one or two possible witnesses from New South Wales in any event. The respondents say that the cause of action arose in New South Wales but in substance, this only really means that infringing conduct, if such it was, took place in New South Wales. It adds little to the fact that the respondents live and work in New South Wales.
There will be hardship to Ms Madon, the second respondent, if the matter is heard in Melbourne. I accept that this is so, if Ms Madon were to be required to attend Melbourne, for the reasons set out in her affidavit. The respondents say the costs of witnesses, expert reports and any possible view would be lower if the trial were held in New South Wales. If all four respondents give evidence, then there are likely to be five to six or so New South Wales’ witnesses, as best one can say at the moment. Obviously, those figures may be augmented if there are experts and the like. It is likely there are at least five in Melbourne. So the matter is evenly balanced and the situation, so to speak, of any experts is as yet unknown. As I have said, no-one has yet asked for a view. The additional costs of a view are hard to estimate even if it occurs. I should emphasise, no party has put on evidence of impecuniosity. Ms Madon has said a hearing in Melbourne would cause significant prejudice and hardship. Ms Madon does not detail any particular anticipated financial losses. The trial will doubtless interrupt the professional and personal lives of all concerned, but that will happen whether the trial is held in Melbourne or in Sydney. As I have indicated in the earlier passage, the discretion is at large but must be exercised judicially. In all the circumstances, bearing in mind the matters I have described, the most suitable conduct of the proceeding will be in Melbourne, with Ms Madon to give evidence by video link and, if needs be, the taking of evidence in Sydney from Ms Madon.
I should say that in saying that, when the pattern of the evidence, so to speak, becomes clear – when all the witness statements are filed – I would be prepared to review the matter if the total of witnesses in Sydney turns out to be very substantial. What I would be minded to do were that the case, is to hear quite simply the Melbourne witnesses in Melbourne and hear the Sydney witnesses in Sydney but at the moment, the trial will stay in Melbourne. The costs of the application are costs in the cause.
I certify that the preceding nine (9) paragraphs are a true copy of the reasons for judgment of Burchardt FM
Date: 22 September 2011
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