Tony Blain P/L trading as Acme Merchandising & Ors. v Jamison, M.

[1993] FCA 229

TONY BLAIN PTY LIMITED trading as ACME MERCHANDISING; BCL FINANCE (IRELAND)
LIMITED; LARS ULRICH; KIRK HAMMETT; JAMES HETFIELD; JASON NEWSTED trading as
METALLICA v. MICHAEL JAMISON; MICHAEL MURPHY; ADRIAN BERNARD WILLIAMS (Also
known as Adrian Bernard Clark and Glenn Bernard Burgess); COLIN HARRISON; PAUL
BLAST and OTHERS
No. NG172 of 1993
FED No. 229
Number of pages - 4
Practice and Procedure Representative Order
(1993) AIPC 90-990
(1993) 41 FCR 414

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Burchett J(1)

CATCHWORDS

Practice and Procedure Representative Order - ex parte representative order made granting interlocutory injunction against a named person sued on his own behalf and as representing all persons selling certain merchandise in breach of the applicants' intellectual property rights - circumstances in which such an order may be made - order analogous to Anton Piller order - safeguards required, including the provision of independent legal advice at the time of service of the order.

Federal Court Rules, Order 6 r. 13

EMI Records Limited v. Kudhail (1983) 11 FSR 36

Universal Thermosensors Ltd v. Hibben (1992) 1 WLR 840

HEARING

SYDNEY, 26 March 1993

#DATE 26:3:1993

Counsel for the Applicants: Mr J.V. Nicholas

Solicitors for the Applicants: Messrs Tress Cocks and Maddox

ORDER

THE COURT ORDERS:

1. ORDER that the Applicants have leave to file an Application in the form of the document initialled by me and placed with the papers.

2. ORDER that the time within which the Application is to be served be abridged to 1 am, 9 April 1993.

3. ORDER that up to and including 14 April 1993 the Respondents and each of them whether by their servants, agents or otherwise be restrained from, in trade or commerce, offering for sale or selling merchandise (including t-shirts, head-bands, badges, caps and programmes) which depict or make reference to the name or image of the Third Applicants without the licence of the Applicants or any other person or company authorised to give any such licence on their behalf.

4. ORDER that up to and including 14 April 1993 the Respondents and each of them whether by their servants, agents or otherwise, be restrained from, in trade or commerce, representing (whether expressly or impliedly) that any merchandise (including t-shirts, head-bands, badges, caps and programmes) which depict or make reference to the name or image of the Third Applicants offered for sale or sold by any of them is manufactured, offered for sale or sold by or with the licence or approval of the Applicants or any person or company authorised to give any such licence or approval on their behalf.

5. ORDER that up to and including 14 April 1993 the Respondents and each of them whether by their servants, agents or otherwise, be restrained from doing or authorising the doing of (whether by themselves, their servants or agents or any of them or otherwise howsoever) the following acts or any of them:

(a) advertising or offering for sale;

(b) selling, supplying or distributing

any articles which bear copies of any artwork in which the Applicants claim copyright, representations of which appear in Annexure "A" to the Affidavit of Lars Ulrich, Kirk Hammett, James Hetfield and Jason Newsted sworn and filed herein.

6. An order that upon service of a sealed copy of these Orders upon any of the Respondents to these proceedings, the Respondent so served shall forthwith if requested by the solicitor for the Applicants so to do:

(a) truthfully state his or her full name and current place of abode;

(b) show to the solicitor for the Applicant any document or instrument evidencing his or her name and/or place of abode in his or her possession;

(c) deliver up to the solicitor for the Applicant all merchandise (including all t-shirts, head-bands, badges, caps and programmes) which depict or refer to the Third Applicant's name or image in his or her possession or control.

For the purpose of this order "the solicitor for the Applicant" shall mean any one or more of the following persons:

(a) Alistair Little;

(b) Rosalind Persaud;

(c) Maria Gerace;

(d) Scott Chapman;

(e) Paul Farrell;

(f) Rohan Bray;

(g) Wendy Jacobs;

(h) Clare Mirabello;

(i) David Sachs; and

(j) Joanne Court.

7. An order that within 7 days of the service of a sealed copy of these Orders upon any of the Respondents he or she shall make, file and serve an Affidavit which discloses:

(a) his or her full name and current place of abode;

(b) the number of items of merchandise (including all t-shirts, head-bands, badges, caps and programmes) in his or her possession or control;

(c) the whereabouts of any items of merchandise (including all t-shirts, head-bands, badges, caps and programmes) in his or her possession or control at the time of service of this order;

(d) the identity and place of business of the person or company by whom any such merchandise was supplied;

(e) the names and current place of abode of any other person who to the best of his or her knowledge, information and belief has engaged in manufacturing, offering for sale or selling any items of merchandise (including any t-shirts, head-bands, badges, caps and programmes) which depict or make reference to the name or image of the Third Applicants.

8. An order pursuant to Order 6 Rule 13 appointing Michael Jamison to represent in these proceedings all persons other than the second to nineteenth respondents who will engage in the business of selling or offering for sale to the public merchandise which depicts or makes reference to the name or image of the Third Applicants or which bear copies of any artwork in which the Applicants claim copyright in or in the vicinity of the following venues on the following dates:

(i) Brisbane Entertainment Centre - 29 March 1993;

(ii) Sydney Entertainment Centre - 27 March 1993, 31 March 1993 and 1 April 1993;

(iii) Melbourne Tennis Centre - 3 April 1993 and 4 April 1993;

(iv) Adelaide Entertainment Centre - 5 April 1993;

(v) Perth Entertainment Centre - 7 April 1993 and 8 April 1993.

without the licence or consent of the Applicants or any other person or company duly authorised to give any such licence on their behalf.

9. Order that the proceeding stand over for directions and the hearing of the Applicant's claim for interlocutory relief to 9.30 am on 14 April 1993.

10. Liberty reserved to any party to apply on 24 hours notice.

JUDGE1

BURCHETT J Order 6, rule 13 of the Rules of the Court provides for the representation of concurrent interests in litigation in the Court. It authorizes the Court to appoint a particular respondent to represent other persons against whom orders are sought in a proceeding. Under the equivalent rule in England, the Court of Appeal, in a judgment delivered by Sir John Donaldson MR, made an Anton Piller order against a represented class of defendants: EMI Records Limited v. Kudhail (1983) 11 FSR 36. Sir John Donaldson said (at 37):

"The only problem which has concerned us is the second ground which concerned the learned judge, namely whether, if he was entitled to grant an injunction in a representative action, there was sufficient identity of interest amongst those who were engaged in the trade of selling cassette tapes bearing the trade name 'Oak Records'."

I interpolate that the case was concerned with the sale of what might be called pirate cassettes. The Master of the Rolls, a little later, went on to say, at the same page:

"The evidence also discloses that there is a link between all those who are dealing in these cassettes in the sense that they have a common interest in preventing anybody finding out where the cassettes come from and each must know some of the other members of the group otherwise they would not be able to obtain the cassettes. The secrecy of the organisation has been such that the plaintiffs have been quite unable to find out the source of the goods or, indeed, anything about the group. But prima facie there is here a group, and prima facie there is a sufficient common interest between the members of the group at least to justify the grant of ex parte relief. It will of course be open for any member of the group to come forward and ask for the order to be modified if he can provide evidence which would justify that course."

1. The present case is not identical with that. However, the evidence shows, prima facie, that a group of persons, apparently acting within at least fairly close ties of co-ordination, have been selling at a series of concerts articles of merchandise involving the unauthorized use of trade marks and other intellectual property of the applicants. These concerts, which featured a well known figure in popular music, a Mr Paul McCartney, share a generic likeness with a further series of concerts, to take place very shortly, expected to feature a band known as Metallica. An individual has been identified with the group, who is known as Michael Jamison.

2. I propose to make a representative order. There would plainly be, in the nature of open-air selling activities at and in the vicinity of concerts of this kind, a great difficulty in identifying and naming all respondents.

3. The orders which are sought are not Anton Piller orders in the normal sense; they do not involve requiring a defendant to consent to entry upon his real estate. But they do have features which make them analogous to Anton Piller orders; they do involve orders requiring persons selling merchandise bearing the trade marks, for instance, of an applicant to deliver up such merchandise upon service of the order, and the making of a demand for compliance with it. That being so, I think that some of the observations, at least, made by Sir Donald Nicholls VC, as his Lordship then was, in Universal Thermosensors Ltd v. Hibben (1992) 1 WLR 840 at 860-861 are applicable. I have, accordingly, required the applicants to give an undertaking designed to ensure that independent legal advice will be available, on the spot, to persons required by the terms of the order to deliver up what may be, at least in some sense, their own property.

4. Other undertakings, of the kind which are common in matters of this nature, have been offered, and are relevant to my decision that a sufficient case has been made out, upon the well known principles which govern the grant of ex parte interlocutory injunctions, to justify the making of the orders which I propose to make in this case. In particular, the undertakings will include an undertaking to provide a receipt for all merchandise which is handed over pursuant to the orders, and to provide safe custody for all such merchandise, and there will be liberty to apply on twenty-four hours notice. Accordingly, I propose to make the orders for ex parte relief.

5. I note the undertakings as to damages, as to an explanation in plain language of the orders, and to provide an answer to any bona fide inquiry. I note, in particular, an undertaking to make available the services of three independently instructed solicitors, with experience in intellectual property matters, to provide independent advice and assistance to any respondent served with a copy of the orders, at or about the time of service, and to arrange for those solicitors to provide a written report to the Court concerning the manner and circumstances of the service and execution of the orders. I note also an undertaking to provide to any respondent served with a copy of the orders, who delivers up merchandise, a signed receipt in respect of it; to ensure that all such merchandise is properly and securely stored, packed and labelled, and delivered up to the Court on the next return date - I note that I would not expect actual delivery up to the Court, but rather that the merchandise should be held available for delivery up if required or otherwise to be disposed of as the Court may order; and, finally, to have their solicitor make and file an affidavit in the nature of a report concerning the manner and circumstances of the service and execution of the orders. I make the orders contained in the document submitted, on the grounds appearing in the affidavit accompanying the applicant's claim.