Top Plus Pty Ltd v Yi Star Pty Ltd (No 2) - [2023] FedCFamC2G 348

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Top Plus Pty Ltd v Yi Star Pty Ltd (No 2) [2023] FedCFamC2G 348

File number(s): BRG 1005 of 2019

Judgment of: JUDGE BAIRD

Date of judgment: 10 May 2023

Catchwords: PRACTICE AND PROCEDURE – COSTS – discretion as to costs - whether costs under the Federal Court scale are appropriate – whether circumstances justifying and indemnity costs order against all respondents – whether letters constituted Calderbank offers – as against first and third respondents indemnity costs appropriate from date of a second offer – applicants unsuccessful in claims against second and fourth respondents – costs follow event – pre‑judgment interest

Legislation:
Copyright Act 1968 (Cth) s 115

Federal Circuit and Family Court of Australia Act 2021 (Cth) ss 190, 191, 211, 214

Federal Circuit Court of Australia Act1999 (Cth) s 76

Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 15.02, 22.02, 22.09, Schedule 2

Federal Court Rules2011 (Cth) r 25.14, Part 40

Cases cited:
Calderbank v Calderbank (1975) 3 All ER 333

Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848

Henley Arch Pty Ltd v Del Monaco (No. 2) [2020] FCCA 1911

Mann Travel Pty Ltd v Skyscanner Ltd [2021] FedCFamC2G 263

Mann Travel Pty Ltd v Skyscanner Ltd (No 2) [2022] FedFamC2G 33

Otter Products v Peter Hayden [2021] FedCFamC2G 13

Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FedCFamC2G 981

Top Plus Pty Ltd v Yi Star Pty Ltd [2023] FedCFamC2G 189

Division: Division 2 General Federal Law

Number of paragraphs: 61

Date of last submission/s: 5 May 2023

Date of hearing: Heard on the papers

Place: Sydney

Counsel for the Applicants: Mr G Tsang

Solicitor for the Applicants: Thomson Geer

Solicitor for the Respondents: CJM Lawyers
ORDERS

BRG 1005 of 2019

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
TOP PLUS PTY LTD

First Applicant

UNIVERSAL MUSIC LIMITED

Second Applicant

AND:
YI STAR PTY LTD

First Respondent

ZHANG WIEN

Second Respondent

CUI ZHOYI (and another named in the Schedule)

Third Respondent

order made by:

JUDGE BAIRD

DATE OF ORDER:

10 March 2023

THE COURT ORDERS THAT:
1.Pursuant to s 211(3)(d) of the Federal Circuit and Family Court of Australia Act 2021 (Cth), the first and third respondents pay to the first applicant the sum of $24,000 in lieu of pre‑judgment interest.
2.Pursuant to r 22.02 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law Rules)2021 (GFL Rules), the first and third respondents pay the applicants’ costs of the proceeding against the first and third respondents:
(a)on a party and party basis up to and including 11am on 6 December 2020; and
(b)thereafter on an indemnity costs basis,

as agreed or in the absence of agreement, taxed in accordance with Part 40 of the Federal Court Rules.
3.Pursuant to r 22.02 of the GFL Rules, the applicants pay the second and fourth…

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: [2023] FedCFamC2G 348
Decision Date

CaseChat Overview and Summary

In the Federal Circuit Court of Australia, Top Plus Pty Ltd, the plaintiff, is pursuing a claim against Yi Star Pty Ltd, the defendant. The case revolves around allegations of copyright infringement and the calculation of pre-judgment interest under the Federal Circuit and Family Court of Australia Act 1999. The dispute began with the plaintiff asserting that the defendant had infringed upon its copyright by selling products that were similar to the plaintiff’s trademarked goods. The plaintiff sought damages and an injunction against the defendant. Additionally, the plaintiff applied for pre-judgment interest on the awarded damages.

The primary legal issues before the court were the calculation of pre-judgment interest and the appropriate rate to apply over the relevant period. The court had to determine whether to award interest at the Federal Court scale rate of 5.5% as claimed by the plaintiff or to apply the varying interest rates that were applicable over the period in question. The court was also required to decide whether there was good cause to deviate from the statutory requirement to award interest as per the Federal Circuit and Family Court of Australia Act.

The court found that while the statutory provisions required the award of pre-judgment interest, it was not bound to accept the plaintiff's proposed rate of 5.5% for the entire period. Instead, the court considered the varying interest rates that were in effect during the relevant period and concluded that a lump sum award of interest was appropriate. The court acknowledged the benefit of finality in litigation and the need to avoid further expense and delay by resolving the interest calculation at that time. Consequently, the court ordered pre-judgment interest at the applicable rates over the relevant period, as per the Federal Court scale rate applicable at certain intervals, thereby awarding a lump sum in lieu of detailed interest calculations.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

The applicants are silent as to any other orders necessary to conclude the proceeding. I assume this omission is inadvertent, as self‑evidently, the proceeding must be dismissed as against Ms Zhang and Ms Wang. Pre-judgment interest It is convenient to deal with the matter of pre-judgment interest first. The relevant statutory provisions pursuant to which the applicants seek interest are ss 211(2) and (3) of the FCFCOA Act. In their Amended Application the applicants seek interest to judgment pursuant to s 76 of the Federal Circuit Court of Australia Act1999 (Cth), the predecessor and equivalent provision to s 211(2) and (3), FCFCOA Act. I am satisfied that the applicants thereby have made an application for an order for the award of interest under s 211(2) of the FCFCOA Act. Pursuant to s 211(3) FCFCOA Act, if I am not satisfied that good cause has been shown for not making an order under the section, the Court must either include in the sum for which judgment is given an amount of interest calculated at such rate as the Court thinks fit, or order a lump sum in lieu of such interest without proceeding to calculate interest. The applicants submit the Court should order pre‑judgment interest on the sum of $113,538.34. The respondents do not make any submissions against an award of pre‑judgment interest. There is no good cause shown why an amount for pre‑judgment interest in respect of the sum of $113,538.34 awarded under s 115(2) of the Copyright Act should not be ordered. The applicants submit the Court should apply the same approach to determining the amount of pre‑judgment interest that I took in Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FedCFamC2G 981 at [113]-[117], there adapting what I said earlier in Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848 at [96]-[97]. In each of those two instances, pursuant to s 211(3) FCFCOA Act, I awarded pre‑judgment interest in a lump sum, applying the Federal Court scale rate of interest applicable for some of the relevant period, but not the interest rates as they varied over the whole of the relevant period. As I have said at [12], in this proceeding the applicants have nominated as the applicable rate of interest the Federal Court scale rate of 5.5% which was the rate applicable at 28 January 2019. For most of the period for which interest is sought in this proceeding, however, the Federal Court scale rate of interest was below 5.5% per annum. Specifically, from 1 July 2019 the rate of interest was 5.25%, from 1 January 2020 it was 4.75%, from 1 July 2020 it was 4.25%, and for the 18 months from 1 January 2021 through to 30 June 2022 it was at 4.10%. For the period 1 July 2022 to 31 December 2022 the rate was 4.85%. Since 1 January 2023 the scale rate has been 7.10%. Whilst the respondents do not make any submissions on interest, I do not consider that it follows that I should uncritically accept the applicants’ claim in circumstances where for most of the period for which interest is sought the applicable Federal Court scale rate was considerably less than 5.5%. Nonetheless, I consider that there is an interest in finality of litigation, and a benefit to minimising further time and expense by now awarding a lump sum pursuant to s 211(3) of the FCFCOA Act.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

File number(s):	BRG 1005 of 2019
Judgment of:	JUDGE BAIRD
Date of judgment:	10 May 2023
Catchwords:	PRACTICE AND PROCEDURE – COSTS – discretion as to costs - whether costs under the Federal Court scale are appropriate – whether circumstances justifying and indemnity costs order against all respondents – whether letters constituted Calderbank offers – as against first and third respondents indemnity costs appropriate from date of a second offer – applicants unsuccessful in claims against second and fourth respondents – costs follow event – pre‑judgment interest
Legislation:	Copyright Act 1968 (Cth) s 115 Federal Circuit and Family Court of Australia Act 2021 (Cth) ss 190, 191, 211, 214 Federal Circuit Court of Australia Act1999 (Cth) s 76 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 15.02, 22.02, 22.09, Schedule 2 Federal Court Rules2011 (Cth) r 25.14, Part 40
Cases cited:	Calderbank v Calderbank (1975) 3 All ER 333 Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848 Henley Arch Pty Ltd v Del Monaco (No. 2) [2020] FCCA 1911 Mann Travel Pty Ltd v Skyscanner Ltd [2021] FedCFamC2G 263 Mann Travel Pty Ltd v Skyscanner Ltd (No 2) [2022] FedFamC2G 33 Otter Products v Peter Hayden [2021] FedCFamC2G 13 Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FedCFamC2G 981 Top Plus Pty Ltd v Yi Star Pty Ltd [2023] FedCFamC2G 189
Division:	Division 2 General Federal Law
Number of paragraphs:	61
Date of last submission/s:	5 May 2023
Date of hearing:	Heard on the papers
Place:	Sydney
Counsel for the Applicants:	Mr G Tsang
Solicitor for the Applicants:	Thomson Geer
Solicitor for the Respondents:	CJM Lawyers

BRG 1005 of 2019
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:	TOP PLUS PTY LTD First Applicant UNIVERSAL MUSIC LIMITED Second Applicant
AND:	YI STAR PTY LTD First Respondent ZHANG WIEN Second Respondent CUI ZHOYI (and another named in the Schedule) Third Respondent

order made by:	JUDGE BAIRD
DATE OF ORDER:	10 March 2023