Oakley Incorporated v Sunglass World Pty Ltd

[1992] FCA 158

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JUDGMENT No.	..	-....... 7	t-
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IN THE FEDEF~ATJ	COURT OF AUSTRALIA	)
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VICTORIA DISTRICT REGISTRY	)	No VG 382 of 1991
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GENERAL DIVISION	1

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BETWEEN:	OAKLEY	INCORPORATED	i
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(Applicant)	j '
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AND :	SUNGLASS WORLD PTY LTD	, .
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(Respondent)

Corm:	Ryan J
Date:	13 March 1992
Place:	Melbourne

EX TEMPORE REASONS FOR JODGM~NT 1 :

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Rvan J: The substantive application i'ii-	this matter is brought	j
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by a United States company against e company incorporate6 in

New South Wales for breach of copyright in the artistic work	I
in the "Oakley" logo affixed to sunglasses and related	1.
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products. It has also been pleaded in the statement of claim
that the applicant is the owner of two Australian registered
trademarks in respect of the "Oakley" logo. Another breach is	C
said to have occurred of the copyright alleged to inhere in the original literary works, being the words appearing on the packaging for four separate types of sunglasses, and on a warranty card included with sunglasses manufactured by the applicant. Infringement of the various copyrights is alleged to have been constituted by the importation into Australia and the exposure for sale at various locations in New South Wales,
Western Australia and Queensland of sunglasses and packaging	therefor respectively bearing the "Oakley" logo and
reproducing the words appearing on the applicant's warranty card.
The respondents have applied by motion on notice, dated 20 February 1992, for an order that this proceeding, including any further interlocutory steps, be transferred to the New South Wales District Registry, and that the trial of the proceeding be held in Sydney.
I consider the approach to be taken by the court to a motion
of this kind to be that indicated in the following passage from the judgment of a Full Court of this Court in National Mutual Holdinus Ptv Ltd v Sentrv Corporation (1988) 19 FCR 155 at 162:

"The power conferred on the Court or a judge by s.48 is in terms wholly unfettered. It should be exercised flexibly havrng regard to the circumstances of the particular case. It would be regrettable and unwise if the Court were to carcumscribe the genezal power conferred by 6.48 with inflexible rules or impose inelastic constraants upon its exercise. As the power may be exercased subject to conditions, the Court or a judge is in a position to mould orders under the section to take account of the many and varied circumstances that arise in particular cases.

The power conferred by 8.48 recognrses the national character of this

Court. The factors which the Court is entitled to take into account in consadering whether one city is more appropriate than another for interlocutory hearings or for the trial itself are numerous. The Court must weigh those factors in each case. Residence of partres and of witnesses, expense to parties, the place where the cause of action arose and the convenience of the Court itself are some of the factors that may be relevant in particular carcumstances.

The balance of convenience will generally be a relevant consideration but not necessarily determinative of each case. A party commences a proceeding by filing an applrcation in a particular registry of the Court. If that party or another party wishes to have the proceeding conducted or continued in another place he may apply to the Court for an order under 6.48 or 0.10 r.l(Z)(f) or 0.30, r.6 as the case may be. There is no onus of proof in the strict sense to be discharged by the party seeking to conduct or to continue the proceedings elsewhere. It should be noted that the Court may exercise its powers under 0.30, r.6 either on the application of a party or of its own motion. The Court must, however, be satisfred, 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? On the one hand, if the party who commenced the proceeding chose that place capriciously the Court would be justified in giving no weight to the choice of place. At the other end of the scale, a proceeding may have continued for some time at the place of commencement with many steps having been taken there, for example, filing of pleadings and affidavits, discovery and inspection. Due weight would be given by the Court to such matters before directing that the proceeding should continue at a different place.

The balance of convenience is important, but its weight must vary from case to came. Ultimately the test is: where can the case be conducted or continued most surtably bearrng m mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most eff~cient administration of the Court. It cannot and should not, in our opinion, be defined more closely or precisely."

There has been considerable debate before me as to how many witnesses may need to be called at the trial of this action, and to what issues their evidence is to be directed. Reference has also been made to the place of residence of some of those potential witnesses. However, I consider it unnecessary to resolve that debate because this Court, as a national court, has the facility to take evidence in any state of the Commonwealth as the need arises.

In my view, considerable weight should be given to the balance
of convenience in favour of Sydney as the place at which the
proceedings should be continued. It is the place of residence

of the respondents, the sole place of practice of their solicitor, and the place where their discoverable documents are located. As pleaded, the action has no particular connection with Melbourne. However, I have been told that the applicant's principal distributor is in Torquay in Victoria.

The applicant, as already noted, is a United States resident, and has retained solicitors who practice nationally and have a substantial office and presence in Sydney. Although Melbourne-based Counsel have been retained on both sides for certain interlocutory proceedings, there is no evidence to suggest that any substantial inconvenience would be occasioned to the applicant as a result of its retainer of Counsel so far if the proceedings were transferred to Sydney.

Being thus principally directed, as I have indicated, by the balance of convenience, I consider it to be a proper exercise of discretion, having regard to the other matters indicated by the Full Court in National Mutual Holdinas Ptv Ltd v Sent-

Corporation, to order that the proceedings be transferred to
Sydney. Accordingly, I make the following orders:

1.   That each party file and serve by 3 April 1992 a list of discoverable documents verified by affidavit.

1. That this proceeding, including any further interlocutory

Registry and that, subject to any further or other steps, be transferred to the New South Wales District

direction of the trial judge, the trial of the proceeding
be held in Sydney.

3.    That the directions hearing be adjourned to a date after 3 April 1992 to be fixed by the New South Wales District Registrar.

1. That the costs of the motion on notice dated 20 February 1992 be costs in the cause, and that the costs of both parties of the directions hearing this day be reserved.

   I certify that this and
   the preceding four (4)
   pages are a true copy
   of his Honour
   Mr Justice Ryan's

   reasons for judgment.

Associate: ~6 Date: \3\?\Cfl.-

Counsel for the Applicant:  MI G McGowan

Solicitor for the Applicant: Corrs Chambers Westgarth

Counsel for the Respondent:  MS EA Strong

Solicitor for the Respondent: Mourice Wermut & CO