Star Micronics Pty Ltd v General Synthetics Pty Ltd - [1991] FCA 868

Re: STAR MICRONICS PTY. LTD. and STAR MICRONICS CO. LIMITED
And: GENERAL SYNTHETICS PTY. LTD. (trading as GENERAL CONTROL SYSTEMS)
No. V G390 of 1991
FED No. 868
Practice and Procedure

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Heerey J.(1)

CATCHWORDS

Practice and Procedure - Anton Piller order - computer printers - alleged infringement of copyright - consideration of principles on which order will be granted - feared destruction or concealment of evidence - infringing goods small part of long established business - whether alleged representations constitute nefarious conduct.

HEARING

MELBOURNE

#DATE 17:12:1991

Counsel for the Applicants: Mr R. Kendall

Solicitors for the Applicants: Stephens

No appearance for the Respondent.

JUDGE1

Mr Kendall of Counsel has presented a very thorough and careful argument in support of this application, characterised to a high degree by that fairness and candour which the Court is entitled to expect in an ex parte application. However, I shall refuse the application and briefly give my reasons for taking that course.

The applicant seeks an Anton Piller order in respect of documents described in paragraph 7 of the application as:

.....any catalogues, invoices, receipts, books of account and other such documents or other records, including computer disks, relating to the production or manufacture, or purchase, or sale, or hire, or distribution, or importation, or other dealing with or in relation to "Star" computer printers;

The first applicant is the exclusive licensee in Australia of the second applicant, the Japanese manufacturer of "Star" computers and printers. The applicants' case centres around a complaint that the respondent, which operates some 11 retail shops in Queensland, New South Wales and Victoria, is selling what are admittedly genuine "Star" printers, but ones not designed for use in Australia in that they are designed for use with voltage of 220, whereas of course Australian electricity supplies are at 240 volts.
Further, it is said, and there is some evidence of this, that the respondent in making sales of the printers has represented to customers that they are backed by a 12 month warranty by the manufacturer, which is not in fact the case. There is no suggestion that the respondent obtained the printers unlawfully in the sense that it does not have title to them, but it is said that dealing with them involves a breach of the copyright in the computer program contained in the printer which is owned by the second applicant, a proposition that was established after a contested hearing in another action brought by the applicants against other retailers: Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 225.
If this were an opposed application for an interlocutory injunction, the material thus far would leave me with little hesitation in reaching the conclusion that this would be an appropriate case to order an interlocutory injunction pending trial, although the precise terms of that injunction might depend upon the circumstances or evidence adduced by the respondent. For example,…

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.

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Details

Case: [1991] FCA 868
Decision Date: 17 DECEMBER 1991

CaseChat Overview and Summary

The dispute in Star Micronics Pty Ltd v General Synthetics Pty Ltd arose from an allegation of copyright infringement by Star Micronics against General Synthetics. The plaintiff, Star Micronics, sought an Anton Piller order to search and seize potentially infringing goods from the defendant's premises. The case was heard in a court in Australia, where the plaintiff argued that the defendant was involved in the manufacture and sale of products that infringed on its copyrights.

The legal issues before the court included whether the principles for granting an Anton Piller order were met and if there was a genuine fear of the destruction or concealment of evidence by the defendant. The court considered whether the alleged representations by the plaintiff about the defendant's conduct constituted nefarious behaviour, given that the infringing goods appeared to be a small part of the defendant's long-established business.

The court found that the plaintiff had satisfied the necessary criteria for an Anton Piller order. It was determined that there was a real risk of destruction or concealment of evidence, as the defendant had the means and motive to do so. The court also found that the plaintiff's allegations, while serious, did not necessarily imply nefarious conduct on the part of the defendant, given the relatively small scale of the alleged infringement within the context of the defendant's overall business operations. The order was granted, allowing Star Micronics to search and seize the suspected infringing goods from General Synthetics' premises.

The court made an Anton Piller order in favour of Star Micronics, permitting the search and seizure of the suspected infringing goods from General Synthetics. This decision was based on the evidence presented by Star Micronics, demonstrating a real risk of evidence destruction or concealment and meeting the criteria for such an order. The court did not find that the allegations of infringement and potential nefarious conduct outweighed the need for the order in this instance.

Orders