The National Computing Centre Ltd v Woolworths Ltd - [1997] FCA 1329

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 249 of 1997

BETWEEN:

THE NATIONAL COMPUTING CENTRE LTD
Applicant

AND:

WOOLWORTHS LTD
Respondent

JUDGE(S):

LEHANE J

DATE:

17 NOVEMBER 1997

PLACE:

SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

HIS HONOUR: This is a motion by which the applicant seeks orders, relying on O 29 r 2 of the Federal Court Rules and on the inherent jurisdiction of the Court, that the issue of liability be tried separately to and before issues of quantum. It seeks, also, consequential orders as to the scope of discovery. The respondent opposes the motion.

The proceeding involves claims by the applicant for relief for breach of copyright in certain computer programs. The applicant claims damages and additional damages. The infringements alleged take the form of reproduction without the licence of the applicant. The respondent by its defence puts in issue subsistence and ownership of copyright, denies infringement and relies on the so-called defence of innocent infringement should its denial of infringement not be upheld.

There is evidence before me on the motion as to the amount of time and effort likely to be involved in discovery and the preparation of evidence on the question of damages. There is evidence also as to the likelihood, particularly on the part of the respondent, that witnesses whose evidence will be relevant to questions of damages will also be required to give evidence on the issue of liability and that at least some of those persons will be required to travel from interstate for the purpose of giving evidence.

It appears to be common ground that there will be no question of an election for an account of profits. The sole remedy sought will be damages, including additional damages. The case for the applicant on the motion is relatively straightforward. It is that the Court ought to find it just and convenient to separate issues of liability and damages on the footing that there is a clear demarcation between the two questions and between the evidence which is likely to be relevant to each and that a hearing on damages will be unnecessary if either the applicants fail on infringement or the respondent succeeds in its defence of innocent infringement: and the proceedings in relation to damages may well be protracted and may well require a good deal of disputed evidence, particularly because of the claim for additional damages, and will, at least in part because of that claim, require circumstances to be traversed that are unlikely to be relevant to the question of liability.

The applicant points by way of example to the recent decision of Lockhart J in Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 38 IPR 451, a case involving damages and additional damages for infringement of copyright the hearing of which extended over three days and involved matters of considerable complexity. That was a case in which, at an earlier stage of proceedings, an order had been made of the…

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.

Continue reading The National Computing Centre Ltd v Woolworths Ltd

Details

AGLC: The National Computing Centre Ltd v Woolworths Ltd [1997] FCA 1329
Case: [1997] FCA 1329
Decision Date: 17 NOVEMBER 1997

CaseChat Overview and Summary

The National Computing Centre Ltd (the applicant) filed a motion in the Federal Court of Australia, New South Wales District Registry, seeking orders to try the issue of liability separately from the issues of quantum. The respondent, Woolworths Ltd, opposed the motion. The dispute involved claims for relief by the applicant for breach of copyright in certain computer programs, with the applicant alleging infringements in the form of reproduction without the applicant's license. The respondent denied infringement and claimed innocent infringement if its denial was not upheld.

The legal issues the court had to decide included whether it was just and convenient to separate the issues of liability and damages, given the evidence suggesting a clear demarcation between the two questions and the potential for a lengthy trial on damages. The court also considered the respondent's opposition, which highlighted the speculative nature of predicting what would ultimately be just or convenient and the additional inconvenience and cost for witnesses to travel interstate twice if the issues were separated.

The court's reasoning concluded that this was a borderline case, with a disposition in the court to regard claims for separate trials of liability and damages with scepticism. However, the court found that in this particular case, the issues relevant to damages would overlap only slightly with those relevant to liability. The applicant had made a relatively straightforward case for the separation of issues, citing evidence and experience of the course of proceedings such as this. The court determined that the overlap between evidence on liability and damages would be slight and that proper management could reduce any significant overlap. The court also noted that if real inconvenience was caused, there were other means available to take evidence.

The court granted the applicant's motion and ordered that the respondent pay the applicant's costs of the motion, as the applicant had been successful on a discrete aspect of the matter. The court further amended the short minutes to cover the first two orders pronounced, along with directions for the future conduct of the proceeding.

Orders