Universal Press Pty Ltd v Robb, G.M

[1989] FCA 522

Re: UNIVERSAL PRESS PTY LIMITED
And: GWENNETH MARIE ROBB
No. G1351 of 1988
FED No. 522
Contract - Copyright - Solicitors - Practice and Procedure

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Gummow J.(1)

CATCHWORDS

Contract - compromise of suit for injunctive relief, delivery up and pecuniary remedies - whether compromise to be set aside on equitable grounds - mistake - sharp practice.

Copyright - infringement - reproduction of substantial part - compilation.

Solicitors - actual, implied and ostensible authority of solicitors to compromise legal proceedings.

Practice and Procedure - final and interlocutory orders - distinction between - provisions of Rules providing for setting aside - variation of such orders - Rules 0. 35 R. 7 (2) (c) (d); 0. 37 R. 6.

Copyright Act 1968

Federal Court of Australia Act 1976

Hansen v Marco Engineering (Aust.) Pty. Ltd. (1948) VLR 198

General Credits Ltd. v Ebsworth (1986) 2 Qd R 162

R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1988) 80 ALR 134

Huddersfield Banking Co. Ltd. v Henry Lister & Son Ltd. (1895) 2 Ch 273

Harvey v Phillips (1956) 95 CLR 235

Harvey v Phillips (1956) SR (NSW) 161

Ainsworth v Wilding (1896) 1 Ch 673

TJM Products Pty. Ltd. v A. & P. Tyres Pty. Ltd. (1987) 17 FCR 390

Darling Downs Investments Pty. Ltd. v Ellwood (1988) 18 FCR 510

Slee v Warke (1949) 86 CLR 271

Taylor v Johnson (1983) 151 CLR 422 at 432

Air Canada v The Queen in right of British Columbia (Supreme Court of Canada, 4/5/1989, unrep )

Mullins v Howell (1879) 11 Ch D 763

Blackie & Sons Ltd. v The Lothian Book Publishing Co. Pty. Ltd. (1921) 29 CLR 396

Ainsworth Nominees Pty. Ltd. v Andclar Pty. Ltd. (1989) AIPC 90-550

Castlemaine Tooheys Ltd. v Carlton & United Breweries Ltd. (1987) 10 NSWLR 468

Codelfa Construction Pty. Ltd. v State Rail Authority of NSW (1982) 149 CLR 337

Taylor v Taylor (1979) 143 CLR 1

Apple Computer Inc. v Popiolek (1984) VR 156

Computer Edge Pty. Ltd. v Apple Computer Inc. (1984) 54 ALR 767

Hogan v Pacific Dunlop Ltd. (1988) 83 ALR 403

Carr v Finance Corporation of Australia Ltd. (No. 1) (1981) 147 CLR 246

Trade Practices Commission v Milreis Pty. Ltd. (No. 2) (1978) 32 FLR 234

Permewan Wright Consolidated Pty. Ltd. v The Attorney-General; Ex rel. Franklins' Stores Pty. Ltd. (NSW Court of Appeal, 11/12/78, unrep )

Chanel Ltd. v F.W. Woolworth & Co. Ltd. (1981) FSR 196

Paino v Hofbauer (1988) 13 NSWLR 193

Gamser v The Nominal Defendant (1977) 136 CLR 145

W.H. Brine Co. v Whitton (1981) 37 ALR 190

Ravenscroft v Herbert (1980) RPC 193

Colbeam Palmer Ltd. v Stock Affiliates Pty. Ltd. (1968) 122 CLR 25

HEARING

SYDNEY

#DATE 8:9:1989

Counsel and Solicitors for A.J.L. Bannon Esq.
the Applicant: instructed by Messrs.

Clayton Utz.

Counsel and Solicitors for D.K. Catterns Esq.
the Respondent: and Miss A.H. Bowne

instructed by Messrs. Kenny & Loel, 500 Queen Street, Brisbane.

ORDER

The respondent's motion be dismissed.

The respondent pay the applicant's costs of the motion.

Stand the proceedings over for directions to a date to be fixed.

Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.

JUDGE1

The Nature of the Proceedings

By Amended Notice of Motion filed 26 June 1989, the respondent seeks an order setting aside certain orders made by a Judge of this Court on 13 March 1989. Those orders were made in proceedings which had been commenced by Application and Statement of Claim filed 11 November 1988. The Application was amended pursuant to Order 13 Rule 3 (1) by a document filed 20 February 1989.

1. In the Statement of Claim, the applicant pleaded that it carried on the business of a publisher and was the publisher of a pictorial geographical directory of the streets of Brisbane, entitled "The UBD Refidex Directory - Brisbane" ("the UBD directory") The applicant alleged that copyright subsisted in the directory, and in each of the maps in the directory, and that the applicant was the owner of those copyrights.

2. It was then alleged that the respondent was a publisher carrying on business under the name "Superguide", and that without the licence, consent or permission of the applicant, she had reproduced and procured and authorised the reproduction of certain of the maps in the UBD directory. The applicant further alleged that without its licence, consent or permission, the respondent had compiled, published, offered and exposed for sale and sold by way of trade those reproductions, and had authorised and procured others to do so. The reproductions in question were said to be contained in the respondent's publication entitled "Superguide Street Directory and Commercial Guide" ("the Superguide"), being a pictorial geographical directory of the streets of Brisbane. This alleged activity by the respondent was said to infringe the applicant's copyrights.

3. By its Amended Application, filed 20 February 1989, the applicant sought interlocutory and final injunctions to restrain further copyright infringement. Orders also were sought requiring the respondent to recover and withdraw from sale all copies of the Superguide presently distributed for sale and unsold. In addition, a mandatory injunction was sought requiring the respondent to serve an affidavit disclosing information upon such matters as the number of copies of the Superguide which had been printed, the names and addresses of those to whom the publication had been supplied, the number of copies supplied, the cost price and the sale price. Finally, orders were sought for (i) delivery up, (ii) at the election of the applicant, damages or an account of profits, (iii) "Damages for conversion and wrongful detention (apparently a reference to the remedy given by s. 116 of the Copyright Act 1968 ("the Copyright Act")), and (iv) "Damages pursuant to Section 115 (4) of the Copyright Act" (which provides for "additional damages" in certain circumstances). In the original Application filed 11 November 1988, only (i) and (iii) of the above were specified.

4. On 2 December 1988, an appearance for the respondent was filed by Messrs. Crossin Power Haslem, solicitors, of Canberra. Mr. Walker of that firm had the carriage of the matter. The matter first came before the Court on 24 November 1988. Both parties appeared by their legal representatives. Directions were given for the filing of affidavits. The hearing of the application for interlocutory relief was stood over to 8 December 1988. On that day, further directions were given, including directions for discovery and return of subpoenas; the matter was fixed for final hearing on 13, 14, 15 and 16 March 1989, but with a directions hearing on 2 March 1989, to ascertain the matter was indeed then ready. On 8 December 1988, the only appearance was by Miss Forster, the solicitor for the applicant, but the Court was informed that the directions in question were given by consent.

5. On 2 March 1989, the matter came before me for the first time. Again, the only appearance was by the solicitor for the applicant who appeared by prior arrangement with the solicitors for the respondent. I was informed that whilst the matter should remain in the List for a hearing to commence on 13 March 1989, the matter should by then be settled. On 13 March 1989, the matter came before another Judge of the Court for hearing. The applicant was represented by counsel and the respondent by a solicitor from the office of the Sydney agents for Messrs. Crossin Power Haslem. By consent, the Court made certain orders in accordance with the terms of Short Minutes, signed by the representatives of the parties, and by the Judge. The proceedings were stood over to 14 April for further directions. The orders were entered on 11 April 1989, and are in the following terms:
   

"By consent the Court Orders that:

1. The Respondent be restrained whether by herself her servants or agents from infringing the copyright of the Applicant in the artistic and/or literary works in the street directory known as UBD Refidex Street Directory, Brisbane.

2. The Respondent be restrained from by herself, her servants and agents selling or by way of trade offering or exposing for sale or exhibiting for sale in public and from causing or procuring any other person to sell, offer for sale, expose for sale or exhibit in public copies of the street directory entitled Superguide Street Directory and Commercial Guide (the 'Superguide Directory').

3. The Respondent by herself, her servants and agents recover and withdraw from sale all copies of the Superguide Directory presently distributed for sale by way of retail and unsold.

4. The Respondent serve on the Applicant within seven days of the date of these Orders an Affidavit disclosing:

(a) The number of copies of the Superguide Directory printed, distributed and/or held in store as the case may be;

(b) The names and addresses of those to whom the Respondent has supplied or delivered copies of the Superguide Directory and the number of copies supplied or distributed to each such person;

(c) The cost price of each of the Superguide Directories and the sale price.

5. The Respondent deliver up and/or destroy upon oath all copies of the Superguide Directory and of all plates of or for the Superguide Directory.

6. As to damages and/or an account of profit

(sic) the proceedings be stood over to 14 April, 1989 for directions.

7. The Respondent pay the Applicant's costs of the proceedings."

It will be observed that the orders in the nature of injunctions (orders 1, 2, 3 and 4) are expressed as final, not interlocutory injunctions. Order 4 has been compiled with. The others remain on foot. No directions, as contemplated by order 6 have yet been given. The present motion by the respondent has intervened. The terms of order 6 may be compared with the more extensive claims in the Amended Application, filed 20 February 1989, to which I have referred earlier in these reasons.

1. On 14 April 1989, the matter came before another Judge of the Court and was stood over for further directions to 28 April 1989. The only appearance was by the solicitor for the applicant. On 28 April 1989, the matter again came before the Court. The applicant was represented by its solicitor, and the respondent appeared in person. The respondent filed in Court a notice that she had terminated the authority of her solicitors to act on her behalf. They filed a notice on 1 May 1989 to the effect that they had ceased to act. The matter came before me for the second time on 5 May 1989. The applicant appeared by its solicitor, and the respondent appeared in person. She indicated that since the orders had been made, she had received fresh advice as to her position. I granted leave to the respondent to file in Court the Notice of Motion, which, in its amended form, provides the subject matter of the application the subject of these reasons for judgment. I gave directions for the filing of evidence dealing with issues including the circumstances in which consent was given to the orders made on 13 March 1989, and the nature of the evidence establishing any defences to the alleged copyright infringement.

2. The respondent subsequently retained a further firm of solicitors, and on the hearing of the present motion appeared by counsel.
   The Dealings between the Solicitors

3. The evidence includes a body of correspondence passing between the solicitors for the applicant and the former solicitors for the respondent.

4. On 27 February 1989, Messrs. Crossin Power Haslem wrote to Messrs. Clayton Utz, the solicitors for the applicant, for the attention of Miss Forster, confirming that they had received instructions from their client that "she does not wish to proceed to oppose the orders sought in the pending copyright litigation in the Federal Court". The letter concluded by stating that if the applicant wished Messrs. Crossin Power Haslem to sign any consent orders, they should be pleased to receive them. By another letter from her solicitors of the same date, a "without prejudice" offer was made on behalf of the respondent to the applicant. The letter stated that the applicant was contractually bound to continue to distribute the Superguide for one year to fulfil her commitment to advertisers, and that the injunction sought in the proceedings against her could see her faced with a considerable number of actions for failing to honour those obligations. The letter went on to state that the respondent was prepared to assign the business assets and liabilities relating to the Superguide publication to the applicant for no additional consideration if the applicant was prepared to grant her a release from all liability, including liability for damages and costs arising out of the pending Federal Court action.

5. The matter was before the Court for directions on 2 March 1989. On 7 March 1989, Messrs. Clayton Utz by letter notified the solicitors for the respondent that the applicant was not prepared to take an assignment of the business assets and liabilities of the Superguide business. They said that the applicant "wished to proceed to recover damages and/or an account of profits in the usual way". On 8 March 1989, a copy of draft Short Minutes of Order was sent by Messrs. Clayton Utz to Mr. Walker; he was asked whether he wished to change any part of them. On 10 March 1989, Mr. Walker wrote to Messrs. Clayton Utz a letter containing the following:
   

"We refer to the telephone conversation of the 10th March 1989 between the writer and Jane Forster and confirm that we now have instructions to agree to the draft Consent Orders forwarded to us on the 8th March 1989.

We have instructed our agents, Messrs Shaw McDonald, to attend at the Federal Court on the 13th March 1989 to hand up those orders. A copy of those orders signed by us is enclosed for your records."

As I have indicated, on 13 March 1989 both parties were represented before the Court. Short Minutes in the form discussed in this correspondence were handed up and orders were made. As I have said, the orders were entered on 11 April 1989.

1. Mr. Walker had the apparent or implied authority (if not the actual authority) of the respondent to write on her behalf the letter of 10 March 1989, and to make and carry into effect the agreement evidenced by that letter: Hansen v Marco Engineering (Aust.) Pty. Ltd. (1948) VLR 198 at 201-202. I consider later in these reasons whether Mr. Walker acted within his actual authority. It was submitted by counsel for the respondent, that the agreement was one which lacked consideration moving to the respondent. But, as counsel for the applicant pointed out, the respondent by making this agreement was saved the cost to her of a final hearing; and even if she was successful at that final hearing, she could not ordinarily expect to recover the whole of her outlays. It was not suggested (and it could not properly have been suggested) that consideration was lacking because the applicant had no honest belief that its claim was well founded or because the claim was frivolous or vexatious, in the sense of the authorities discussed by de Jersey J. in General Credits Ltd. v Ebsworth (1986) 2 Qd R 162 at 166-167.

2. The orders made by the Court on 13 March 1989 therefore represented the performance of the agreement that had been reached between the legal representatives of the parties, as appears from the letter of 10 March 1989. This is not a case where a consent order is made by the Court where the parties have not previously entered into consensual arrangement, a term of which calls for the giving of consent to certain orders; see the discussion in R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1988) 80 ALR 134 at 137-138. Here, as Vaughan Williams J. put it (in Huddersfield Banking Co. Ltd. v Henry Lister & Son Ltd. (1895) 2 Ch 273 at 276), the orders are "a mere creature of the agreement".
   The Status of the Agreement

3. Where a compromise is made with the actual as well as the apparent authority of counsel, the question of whether the compromise is to be set aside depends upon the existence of a ground which would suffice to render a simple contract void or voidable, or entitle the party to equitable relief against it. The High Court instanced grounds, for example, such as illegality, misrepresentation, non-disclosure of a material fact where disclosure is required, duress, mistake, undue influence, abuse of confidence or the like: Harvey v Phillips (1956) 95 CLR 235 at 243-244. The application to set aside the agreement should not be brought by way of appeal in the primary proceedings (but cf. Harvey v Phillips (1956) SR (NSW) 161; General Credits Ltd. v Ebsworth, supra) and there is English authority that separate proceedings should be commenced rather than a motion filed in the original proceedings if the jurisdiction of the Court in those proceedings is spent (Ainsworth v Wilding (1896) 1 Ch 673); in this Court, it seems the application may be by motion in the original proceedings on the footing that it falls within the ambit of the "matter" in respect of which this Court has jurisdiction (cf. TJM Products Pty. Ltd. v A & P Tyres Pty. Ltd. (1987) 17 FCR 390; Darling Downs Investments Pty. Ltd. v Ellwood (1988) 18 FCR 510).

4. Whatever be the correct procedure, in these cases the question is whether the agreement on which the consent order was based can be invalidated; if the agreement cannot be invalidated, then the consent order remains good. (If the agreement were set aside, then the relief granted might include a requirement that the other party join in an application to the Court to have set aside the earlier orders in the principal proceedings.)

5. Harvey v Phillips (1956) 95 CLR 235 also indicates that (pp 242-243) where the assistance of the Court is sought or invoked to carry into effect a compromise which otherwise could not be enforced by the party relying upon it, that assistance may be refused on grounds not necessarily sufficient to invalidate a simple contract. This I take to be a reference to the reasoning in cases such as Slee v Warke (1949) 86 CLR 271 where, whilst there are lacking the grounds to set aside a contract in equity, the other party is denied specific relief in equity and is left to his remedy at law for breach of contract; see also Hansen v Marco Engineering (Aust.) Pty. Ltd. (1948) VLR 198 at 201.

6. Further, where a compromise has been agreed upon by a legal representative acting only in pursuance of his apparent or implied authority from his client, and, owing to a mistake or misapprehension, in opposition to the client's instructions or in excess of some limitation expressly placed upon the authority of the legal representative, then the Court may refuse to give effect to or act upon the compromise: Harvey v Phillips, supra at 243. (In a case such as the present, this would mean that the Court might, for example, refuse any further assistance in conducting an inquiry as to damages or for an account of profits; as order 6 itself indicates, further directions by the Court are necessary if either of these remedies is to be pursued; the same may be true of the order for delivery up or destruction of copies of the Superguide and of plates.) In addition to refusing in such cases to give effect to the compromise, the Court also may perhaps set the compromise aside, at least until the judgment or order embodying the compromise has been perfected. This power is to be exercised by the Court as a matter of discretion when in the circumstances of the case it would involve injustice, in view of the restriction of the authority of the legal representative, to allow the compromise to stand. Harvey v Phillips, supra, is authority also for these propositions. See also, generally, Halsbury's Laws of England, 4th Ed., Vol 26, ss562.

1. In the present case, as I have said, the agreement was reached within the apparent or implied authority of the solicitors for the respondent. However, in essence, her complaint is (a) that her solicitor exceeded some restriction placed on his authority, or (b) in any event, she was acting on a mistake of sufficient quality to render the agreement liable to be set aside, because she was wrongly told she had no defence to the case against her. The situation then would appear to be that if the agreement reached between the solicitors bound the respondent because it was reached with her actual authority, the question is whether there are grounds rendering the contract void or liable to be set aside. If Mr. Walker had only apparent or implied authority, and he exceeded his client's instructions, then the Court might refuse to act upon the compromise and perhaps set it aside, as indicated in Harvey v Phillips.

2. The respondent does not bring proceedings to have the contract set aside. Notwithstanding any procedural deficiencies in the applicant's case, I should in all the circumstances consider it on the merits. I turn therefore to consider the evidence upon which she relies to make good these propositions.
   The Evidence

3. The respondent has been in business for some years and describes herself as a businesswoman. Between 1977 and 1984, with the assistance of various relations, she published a local newspaper "The Gold Coast Hinterlander". When the newspaper was sold in 1984, the circulation was 53,000, a great increase over the 500 in 1977. In 1983, the respondent printed a street directory to the Gold Coast, using material reproduced with permission of the Royal Automobile Club of Queensland. The Superguide was designed to combine a street directory with local advertising. The respondent says what she did was to produce a compilation of all available information as to the location and names of streets, including the contents of the UBD directory. Production of the Superguide commenced in January 1988.

4. The Superguide was published in October 1988, and on 25 October 1988, Messrs. Clayton Utz wrote to the respondent stating that the firm acted for the applicant, referring to the Superguide, and alleging copyright infringement. Undertakings were sought. The respondent instructed her solicitors in Canberra to respond to the letter which they did on 17 November 1988, denying liability. Meanwhile, on 15 November 1988, the respondent had been served with the Application and Statement of Claim initiating the present proceedings.

5. The applicant has filed various affidavits. Of importance are three affidavits, two by Mr. Scuglia (sworn 23 November 1988 and 20 January 1989) and one by Miss Anici (sworn 20 January 1989). In his affidavit sworn 23 November 1988, Mr. Scuglia, the Publishing Manager of the applicant, stated that the applicant was the publisher of the 31st Edition of the UBD directory. He said that in all directories published by his company, there were included a number of deliberate errors known as "copyright traps" and that a number of copyright traps in the UBD directory had been reproduced in the Superguide. The traps included such things as representations of streets which did not exist and the attachment of names to streets which did exist but which lacked an official designation. In addition, the affidavit evidence claimed that a comparison of the two directories showed that various inadvertent errors in the applicant's directory had been reproduced in the respondent's directory.

6. In his affidavit of 20 January 1989, Mr. Scuglia deposed that the applicant is publisher not only of the UBD directory, but also of the 21st Edition of the Gregory's Directory. He asserts that the applicant owns copyright in the UBD directory and in the Gregory's Brisbane Street Directory and all previous editions thereof.

7. Between November 1988 and March 1989, the respondent provided Mr. Walker, both by telephone and in conference, with detailed instructions as to how the Superguide had been compiled. On 31 January 1989, she attended a conference with Mr. Walker. On 2 February 1989, he wrote to her confirming his advice that the affidavits filed by the applicant indicated a total of 91 deliberate and non-deliberate errors in the UBD maps which were reproduced in the Superguide, and that this included all six of the "deliberate copyright traps". He went on to say that this evidence would be used to base an inference that either the Superguide maps were straight copies of the UBD maps, or alternatively that the UBD Guide was referred to and used extensively in the course of the compilation of the Superguide. Mr. Walker advised that either explanation would be likely to lead to the inference that copyright had been infringed. The letter contained the following paragraph:
   

"We confirm your instructions that compilation of the Superguide involved extensive reference to cadastrals obtained from the Queensland Government which were subject to copyright themselves. We confirm your advice that the Queensland Government had refused permission to you to use the maps in the preparation of your own and clearly this of itself would amount to a breach of copyright even though it is not one on which UBD can rely in the present action. We further confirm that during the course of the preparation of the maps, particularly when older cadastrals or aerial photography was used as the basis of the mapping, road checkers were employed by Superguide to go on site to the various areas to check street names etc. We further confirm that these road checkers used the UBD Superguide as their point of comparison and that it is probably at this stage of the process that, due to incomplete physical checking, the copyright traps and other errors in the Superguide had been reproduced from the UBD originals. We confirm in addition that in many instances mistakes in the UBD Directory were not reproduced in the Superguide as the road checkers were able to discover them.

In the light of the overview of the evidence which we could lead given by you to the writer, we are of the opinion that UBD are more likely to than not (sic) to be successful in establishing a breach of copyright in relation to the preparation of the Brisbane Superguide Directory. We confirm our advice that in the circumstances of the matter you might wish to obtain Counsel's advice on this point to be absolutely certain in relation to the question of your prospects of success in the litigation however, we confirm your instructions that you did not wish the writer to obtain that advice. We further confirm your instructions to take steps to ascertain whether there is a possibility of a negotiated settlement in the matter and to this end the writer is proposing to attend at the offices of UBD's solicitors in Sydney within the next couple of days to view and note the exhibits to the Affidavits filed by them in the course of which the writer will raise the question of negotiated settlement of the action."

1. The respondent says that she had a lot of difficulty in accepting the advice thus given her because her case is that reference to the applicant's directory was restricted to the verification of information obtained from other maps and aerial photographs and to use as a reference source in the event of conflict between information found in other maps and in photographs. In cross-examination before me, the respondent agreed that she had regarded as a matter of some concern or embarrassment the possible disclosure in the Court proceedings of her use of government cadastral maps.

2. In para. 11 of her affidavit sworn 22 June 1989, and read on the present motion, the respondent listed in nine sub-paragraphs what she described as "resource material" used in the preparation of the Superguide. In addition to the cadastral maps to which Mr. Walker referred in the correspondence I have set out, these included Shell service station road maps, BP service station road maps, maps produced by local shires, maps prepared by real estate agents and certain aerial maps. The last entry in the list set out in para. 11 is "UBD and Gregory's Street Directories".

3. In the course of the respondent's cross-examination, there was the following exchange as to the methods adopted in the preparation of the Superguide.
   

"And it is your position, is it not, that in circumstances where there was an item which appeared in the UBD Directory in most instances you followed the UBD Directory, notwithstanding what other sources you may have had available to you indicated? - No, it was only if there were two, Gregory's and UBD had them both in, that was two sources against a lot of people. They were often right over a lot of people.

So you relied on that over a government map? - Yes.

And even over information you received from your road checkers? - No, there were mistakes in there, but road checkers put in their corrections as well. But even when road checkers told you something different to UBD and Gregory's you often presumed that the road checker had simply missed the relevant item? - They usually had.

So you relied on UBD and Gregory's? - A lot."

She also agreed that these two directories had been the most detailed of all the resource material.

1. The letter of 2 February 1989 was followed by letters of advice on 10 February 1989 and 21 February 1989. In the letter of 21 February 1989, the writer stressed the importance of having a conference with the respondent no later than 22 February to enable him to have some material filed by 24 February 1989. In previous correspondence, the importance of adhering to the timetable laid down by the Court for the filing of affidavits by the respondent had been emphasised. There also had been reference to the difficulty in obtaining satisfactory material for the preparation of affidavits.

2. On 23 February 1989, the respondent spent some five hours in conference with Mr. Walker. Mr. Walker advised her that she had infringed copyright and that the filing of affidavits setting out the means by which the Superguide had been created was more likely to assist the case of the other side than to establish a defence. She says she was told that it would cost her around $25,000 to fight the applicant and that this would be a waste of money because she would lose. She says that she had not previously had experience of dealing with solicitors, and whilst extremely frustrated and upset with the advice, she accepted it. Mr. Walker told her that if she was not happy with the advice, she could obtain another opinion from counsel, but that this would cost $3,000, and do nothing more than confirm what he had told her. The respondent says that she instructed Mr. Walker not to brief counsel to verify his advice. Mr. Walker then advised her that she should attempt to get the applicant to purchase the business of Superguide; she instructed him accordingly and I have referred to the correspondence which ensued between the solicitors.

3. On 24 February 1989, the respondent signed written instructions authorising her solicitors to discontinue any further activity in relation to the preparation for the defence of the action presently pending against her, and instructing them to notify the solicitors for the applicant that she did not wish to proceed to oppose the orders sought.

4. The respondent says that in early March 1989, in conference with Mr. Walker, he told her that there was no point in opposing the orders sought by the applicant in its application, and that the applicant had rejected the attempt to have it acquire her business. She says she instructed Mr. Walker that nevertheless she wished to oppose the application, because no agreement had been reached on acquisition of the business. Later, on 9 March 1989, Mr. Walker told her that he could see no worthwhile point in opposing the making of the orders sought, because opposition would be likely only to have the effect of increasing costs which she would be liable ultimately to pay.

5. On 9 March 1989, Mr. Walker wrote to the respondent confirming instructions to indicate to the solicitors for the applicant that the orders sought in the Statement of Claim would not be opposed. The letter referred to the respondent's instructions that she wished to appear in the matter in person to oppose the making of the orders sought, as the effect of making those orders, if there was no possibility of negotiating a disposal of the business to the applicant, would be to result in her bankruptcy. The letter continued:
   

"Whilst we sympathise with your attitude, we can honestly say that we see no worthwhile point in opposing the making of the Orders sought which would only be likely to have the effect of increasing the costs which you would ultimately be liable to pay. We appreciate that in a context where bankruptcy is a real possibility this may not make much material difference, by the same token, it could be material in the following context:-

(1) It might make Universal Press much less likely to sympathetically consider any proposal you may have for a negotiated resolution.

(2) It is a relevant consideration in determining the question and timing of a discharge from bankruptcy that the bankrupt may have unduly prolonged legal proceedings brought against him or her in circumstances where there was no realistic possibility of success.

We trust that the foregoing is of some assistance to you in making what, we appreciate, is a very difficult decision. We confirm our advice to you that in the event that you wish now to proceed to oppose the Orders sought, it would not be possible for us to act on your behalf having previously, on instructions, indicated to the solicitors for Universal Press that the Orders would not be opposed and of course having advised you that there is no realistic point in doing so. In addition of course, it would appear unlikely that you would be able to cover the costs of our representation in obtaining the services of Counsel to conduct the matter. Should you wish to clarify any of the foregoing, do not hesitate to contact the writer."

1. The respondent says that after due consideration, she accepted Mr. Walker's advice and agreed to the Short Minutes of Order then proposed which were implemented before the Court on 13 March 1989. In cross-examination, she said that she appreciated that if the proceedings were heard and determined, and she were unsuccessful, the amount of the applicant's costs which would have to be paid would be increased, and that her costs obviously would be larger.

2. Pursuant to order 4 of the orders made on 13 March 1989, the respondent swore an affidavit on 26 April 1989. In the affidavit, she discloses that 68,700 copies of the Superguide had been printed, of which 2,430 had been sold to date, and 18,500 had been distributed free to advertisers who had purchased advertising space in the directory. 47,700 copies of the directory were presently held in store, and 7 copies used by the business on "an in house basis". Of the 2,430 copies of the Superguide sold to date, 1,164 had been sold at a price of $6.50, and 1,266 copies had been sold at a price of $5 each. The recommended retail price was $10.95.
   Conclusions from the Evidence

3. I conclude from the evidence which I have set out that Mr. Walker had the actual authority of the respondent to write on her behalf the letter of 10 March 1989, to make the agreement evidenced by that letter and to carry it into effect by the medium of the consent orders made on 13 March 1989. This is not therefore a case in which the Court may refuse to give effect to or act upon the agreement in the manner explained in Harvey v Phillips (supra) at 243. Nor is it a case where any ground has been made out whereby the agreement would be set aside. This is not a case where the respondent entered into a contract under a serious mistake about its contents and where the applicant was aware that circumstances existed which indicated that she was induced to enter the contract under some serious mistake or misapprehension about the content or the subject matter of that term and the applicant deliberately set out to ensure that she did not become aware of the existence of her mistake or misapprehension: Taylor v Johnson (1983) 151 CLR 422 at 432; General Credits Ltd. v Ebsworth (1986) 2 Qd R 162 at 165. Nor is it a case of sharp practice by the applicant, of the kind described in Slee v Warke (supra). (I have assumed in the respondent's favour that, if she were otherwise entitled to succeed, she would not fall foul of any distinction between errors of fact and those of law; the distinction has never been favoured in equity and in its application in Australian law to recovery at common law of mistaken payments, it may require reconsideration in view of what was said by La Forest J. and Wilson J. in Air Canada v The Queen in right of British Columbia (Supreme Court of Canada, 4/5/1989, unrep )).

4. Counsel for the respondent pointed to what was said by Jessel M.R. in Mullins v Howell (1879) 11 Ch D 763 at 766. The Master of the Rolls there said that the Court might discharge an order made on a motion by consent when it is proved to have been made under a mistake, although that mistake was on one side only. The reason given was that the court had a general control over orders made on interlocutory applications. I put to the one side the question whether the orders here were interlocutory. The respondent contends that her mistake was that she accepted the advice given her as to the weakness of her case and that, in truth, she did have good defences to the suit brought against her.

5. A draft Defence dated 22 June 1989 seeks to put in issue both the subsistence of copyright and infringement. There is nothing before me to persuade me that there is any real case upon the issue of subsistence of copyright. As the evidence presently stands, it is not possible to indicate with any certainty what the outcome would be of a trial on the issue of infringement. However, plainly there is material which indicates the existence of a serious question to be tried. The central issue would be whether the respondent had reproduced a substantial part of the UBD directory in the Superguide (within the sense of ss. 36, 31, 13 and 14 of the Copyright Act), a subject upon which there is authority indicating the concept of substantiality has qualitative as well as quantitative elements. In a given case, the former may be more significant than the latter. The surrounding circumstances may be considered. See Laddie, Prescott & Vitoria, "The Modern Law of Copyright", ss2.81, Blackie & Sons Ltd. v The Lothian Book Publishing Co. Pty. Ltd. (1921) 29 CLR 396; Ainsworth Nominees Pty. Ltd. v Andclar Pty. Ltd. (1989) AIPC 90-550.

6. Further, the evidence indicates that the respondent's decision to accept the advice given her and to agree to the proposed Short Minutes involved more than a consideration of the likely prospects of success at a final hearing. There was the question of the amount that would be required to defend the action, and the bringing out into the open the use of the government cadastral maps. Then there was the proposal that the applicant purchase the respondent's business. Thus, there was involved a process of evaluation of a number of factors and in my view it would not be correct to characterise what happened as action by the respondent by reason of mistakenly pessimistic advice as to chances of success in the litigation.
   Inherent Powers and The Rules of Court

7. It was then submitted that even if the agreement between the parties were not to be set aside, nevertheless the orders which were made pursuant to that agreement should be set aside or varied by the Court. Various sources were suggested for the existence of the necessary authority.

1. I should note that the applicant, as I understood its case, did not contend that if the respondent could bring her case within any head of power under the Rules or within any inherent power of the Court, that jurisdiction was ousted by any implied term of the agreement between the parties. It was not submitted that there was an implied promise by the respondent not to invoke any curial power of this kind to set aside or vary the consent orders; cf. R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1988) 80 ALR 134 at 145. The reason for the applicant not seeking to pursue such a submission may not be hard to find. It is difficult to see how a term of this character would be one implied by law into contracts of this type, regardless of the intention of the parties (as discussed by Hope JA. in Castlemaine Tooheys Ltd. v Carlton & United Breweries Ltd. (1987) 10 NSWLR 468 at 486-490) or how it would be necessary in the circumstances of this case to give business efficacy to the contract (as explained by Mason J. in Codelfa Construction Pty. Ltd. v State Rail Authority of NSW (1982) 149 CLR 337 at 347).

2. As a general proposition, the due administration of the law militates against any general power to set aside final orders that have been entered. There are qualifications to this denial of inherent power. On the footing that the orders involved here include final orders (to which I will return in these reasons), none of those qualifications apply to them and thus it becomes a question of whether the respondent can point to any specific power conferred by the Rules.

3. There is authority in this Court that the entry and sealing of an order, even a final order, may be struck out where the entry and sealing of the order amounted to an abuse of the process of the Court: TJM Products Pty. Ltd. v A & P Tyres Pty. Ltd. (1987) 17 FCR 390. There is nothing revealed by the evidence in the present case as to the conduct of the applicant which would provide any footing for a submission that there was an abuse of process in the entry on 11 April 1989 of the orders in question. I refer in particular to the chronology of the significant events in this litigation as set out earlier in these reasons.

4. Nor is this a case where that which it is sought to set aside is an order obtained without service or notice to a party, or a default or ex parte order obtained when the absence of the party is due to no fault on his part: see Taylor v Taylor (1979) 143 CLR 1 at 6, 16, 20, 22.

5. On the other hand, the overriding inherent power of this Court to control its own proceedings extends to the variation of interlocutory orders even where they have been made, as in the present case, as a result of a binding contract between the parties: R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd., supra. In the joint judgment of Woodward and Foster JJ. in that case, the following appears (80 ALR at 138):
   

"The court has an overriding power to control its own proceedings. The existence of that inherent power of courts has long been recognised and acted upon. The power to fix and extend times within which interlocutory steps are to be taken is a most common manifestation of the general power. It is now made explicit in rules of court to be found in all relevant jurisdictions. The power is discretionary and is exercised with due regard to all relevant circumstances. If it be legally open to the parties to oust this jurisdiction by agreement, then such ouster could be effected only by clear and express terms in the agreement and court order."

The manifestation of that general authority which is first relied upon here is that in Order 35 Rule 7. Order 35 Rule 7 (2) (c) provides that the Court, except in circumstances not here relevant, may if it thinks fit vary or set aside a judgment or order after the order has been entered where the order is interlocutory. The term "judgment" is defined in s. 4 in the Federal Court of Australia Act 1976 as meaning, in that statute, and unless the contrary intention appears, "a judgment, decree or order, whether final or interlocutory, or a sentence".

1. The first question that arises is which, if any, of the consent orders made on 13 March 1989 were interlocutory within the meaning of Rule 7 (2). In my view, as I have indicated, orders 1, 2 and 3 of the consent orders are final injunctions which remain on foot. Order 5 is in the following terms:
   

"5. The respondent deliver up and/or destroy upon oath all copies of the Superguide Directory and of all plates of or for the Superguide Directory."

On its face, this is a final order but one which in my view is to be regarded as lacking compulsive effect until it has been refined by further directions as to the exercise of the election given the respondent, and the time and manner of delivery up or destruction upon oath. Order 6, dealing with further directions as to damages or an account of profits, plainly is an interlocutory order. Order 7 is an order for payment of costs.

1. The respondent submitted that because there was an admixture of interlocutory and final orders in the consent orders, all of the orders were to be treated as interlocutory for the purposes of the application of Order 35 Rule 7 (2) (c). Plainly enough, the Rule contemplates that there may be a number of orders extant, some of which are interlocutory and others not interlocutory. An order made in proceedings may be final, notwithstanding that other issues remain for final decision and that orders in respect of those other issues remain interlocutory: Apple Computer Inc. v Popiolek (1984) VR 156 at 159.

2. It is true that where some orders are final in character and others interlocutory the result as a whole may be that for the purposes of legislation governing rights of appeal, there is no final judgment: see Computer Edge Pty. Ltd. v Apple Computer Inc. (1984) 54 ALR 767; Hogan v Pacific Dunlop Ltd. (1988) 83 ALR 403 at 432. As counsel for the applicant pointed out, the question of whether a judgment is final or interlocutory for the purposes of legislation relating to appeals, has been said to be one productive of much difficulty: Carr v Finance Corporation of Australia Ltd. (No. 1) (1981) 147 CLR 246 at 248. However, I accept the submission by the applicant that within the meaning of Order 35 Rule 7 (2) (c), the injunctive relief contained in orders 1, 2 and 3 of the consent orders is final not interlocutory, and so beyond the scope of para. (c). The same is true of the order for costs.

3. The respondent then relied upon Order 35 Rule 7 (2) (d). This empowers the Court, if it thinks fit, to vary or set aside a judgment or order after the order has been entered where "the order is an injunction or for the appointment of a receiver . . .". The respondent submitted that even if orders 1, 2 and 3 of the consent orders were orders for final injunctions, they nevertheless were injunctions within the meaning of para. (d). The submission thus made is a significant one. If accepted, it would mean that the Court might if it thought fit vary or set aside a final injunction, in circumstances where under the law and practice as previously understood this would not have been possible.

4. Counsel for the applicant accepted that para. (d) did permit the setting aside or variation of final injunctions, but only in particular classes of case, in none of which the present proceedings fall.

5. The Court should not grant an injunction in respect of acts no longer proscribed by law, even if they were wrongful at the time the proceedings were instituted: Trade Practices Commission v Milreis Pty Ltd (No. 2) (1978) 32 FLR 234 at 241. Further, an injunction may be discharged or stayed upon application where the injunction was granted to enjoin the commission of conduct rendered unlawful by statute and the statute is amended or repealed so that the conduct ceases to be unlawful: Permewan Wright Consolidated Pty. Ltd. v The Attorney-General; Ex rel. Franklins' Stores Pty. Ltd. (NSW Court of Appeal, 11/12/78, unrep). Where private rights and duties are involved, events occurring after the grant of a final injunction may provide a good ground for seeking a discharge or stay of the order; cf. Chanel Ltd. v F.W. Woolworth & Co. Ltd. (1981) FSR 196 at 202. Confidential information may become public by the action of the plaintiff who has earlier had the defendant enjoined, a common law trade mark may become generic or may be abandoned, a patent may be revoked in proceedings instituted by a third party; other examples will be readily apparent. It is unnecessary in the present proceedings to express any concluded view as to whether para. (d) has any further reach. It is sufficient to say that in my view it is not a source of power for the Court to vary or set aside a final injunction based on a contract between the parties where the underlying contract is not successfully impugned: cf. Paino v Hofbauer (1988) 13 NSWLR 193 at 198; R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. supra.

6. The respondent next relied upon Order 37 Rule 6. This provides:
   

"6. (1) A person bound by a judgment may move the Court for a stay of execution of the judgment, or for some other order, on the ground of matters occurring after the date on which the judgment takes effect and the Court may make such order as the nature of the case requires.

(2) Sub-rule (1) does not affect the powers of the Court to stay execution under rule 10."

Rule 10 provides that the Court may stay execution of a judgment or order. In Gamser v The Nominal Defendant (1977) 136 CLR 145 at 153, when speaking of a provision of the Rules of the Supreme Court of New South Wales, which is relevantly indistinguishable from sub-rule (1) of Rule 6 of Order 37, Aickin J. stated that the kinds of order contemplated did not include one setting aside a judgment regularly entered. In my view, Order 37 Rule 6 has no application to the present case.

Discretion

1. The applicant accepts, as it must accept in the light of the decision of the Full Court in R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd., supra, and the provisions of Order 35 Rule 7 (2) (c), that as to those of the consent orders which are truly interlocutory in character, there is a discretion to vary or set them aside even though those orders had been entered. However, the applicant submits that, in its discretion, the Court should not accede to such an application. Further, it submits that even if any of the provisions of the Rules referred to earlier are, contrary to what I have decided, applicable to any of the other orders, the Court should exercise its discretion under those Rules adversely to the respondent. I accept those submissions.

2. In support of its submissions, the applicant points to the following aspects of the evidence. The respondent had legal advice. She did not seek a second opinion. There were some advantages to her (or at least avoidance of further detriment) in consenting to the orders because she would not be required to disclose use of the government cadastral maps, she would avoid the costs of a final hearing and there might be a better prospect of reaching an agreement with the applicant in relation to a possible sale of the business. In that regard, in cross-examination, the respondent agreed that whilst she did not believe she stood a greater chance of doing a deal with the applicant after the orders were made, her solicitor did and that was his advice given to her. In that cross-examination, the respondent also agreed with the suggestion that she understood that when the consent orders were made, they would dispose of the question of injunctive relief restraining her from continuing her activities so that the only outstanding matter was a question of possible damages or an account of profits. The applicant points to the agreement that the orders be made by consent, and submits that the circumstance that a person in the position of the respondent subsequently forms the view, on other advice, that in truth there is a good defence, is insufficient ground for setting aside a consent order.

3. Further, it was said that the respondent was under no misapprehension as to the effect of giving her consent to the orders; any error alleged was one as to the inadequacy of the advice given her as to her prospects of success at a final hearing. The applicant submitted that it would be extraordinary if the giving of allegedly incorrect legal advice could be a ground for overturning an order made in consequence of that advice, particularly where, as is often the case in copyright litigation, the matter is one of complexity and difficulty and the advice, as it turns out, was not entirely correct. It was submitted that this was an every day occurrence in litigation. Then it was said that the decision of the respondent to accept the advice of Mr. Walker involved more than a consideration of the likely prospects of success at the hearing; I have found this to have been so.

4. Finally, the respondent submitted that there was, on the materials presently available, no strong prospect of success with the defence denying infringement. In relation to this, it was also submitted that the respondent, in the conduct of her present application, had not exhibited frankness; no explanation had been given or attempted as to how the 91 errors and copyright traps had been reproduced in the Superguide. In cross-examination, the respondent agreed that she relied on UBD and Gregory's a lot; elsewhere in her cross-examination, she agreed that these two directories were the most detailed of her resource materials. The applicant points to the failure of the respondent to indicate in her affidavit that which only became clear in cross-examination.

5. On the other hand, it was submitted for the respondent that it is clear from the material placed by the respondent before the Court that she did not copy the works in which the applicant has copyright, and that there has been no substantial reproduction. As to this, I have already expressed my view that there would be a serious question to be tried on the issue of infringement and in particular as to whether the respondent reproduced a substantial part of the UBD directory in the Superguide, bearing in mind the concept of substantiality has qualitative as well as quantitative elements. I do not regard the case as one in which it is clear from the material placed by the respondent before the Court that there was no copying, and that there has been no substantial reproduction.

6. In all the circumstances, my conclusion is that as to those of the orders which are interlocutory in character, I should not accede to the application by the respondent to set them aside, and that if it be the case, contrary to my conclusion, that all of the orders are to be considered interlocutory in character, I would not exercise the discretion that would then exist favourably to the respondent on her motion. I would not set the orders aside, nor, as regards orders 1, 2 and 3, would I (as the respondent submitted I should) vary those orders so as to make them merely interlocutory injunctions.
   Pecuniary Remedies

7. I should say something further concerning order 6. This is in the following terms:
   

"6. As to damages and/or an account of profit

(sic) the proceedings be stood over to 14 April, 1989 for directions."

As to pecuniary relief, the agreement reflected in the consent orders goes no further. On 14 April 1989, the matter was stood over for further directions to 28 April 1989, and since that time the giving of further directions has been awaiting the outcome of the present motion by the respondent. On the hearing of the motion, I was informed by counsel for the applicant that the applicant had not yet decided whether to proceed any further with directions as contemplated by order 6.

1. However, the following matters should be borne in mind in considering the further conduct of these proceedings:
   

(i) I regard the agreement between the parties and the consent orders which implement that agreement as foreclosing the issue of liability such as to attract final injunctive relief and an order for delivery up; but in my view that agreement does not, upon its proper construction, extend so as to foreclose the further issues that arise in administration of the pecuniary remedies for damages and an account of profits.

(ii) Order 6, unlike the claims for relief in the Amended Application, does not distinguish between what one might call general damages for infringement within the meaning of sub-s. 115 (2) of the Copyright Act, additional damages as provided for in sub-s. 115 (4) of the Copyright Act, and damages for conversion or detention pursuant to s. 116 of the Copyright Act.

(iii) In order to make out a case under sub-ss. 115 (4) or 116 of the Act, it would be necessary for the Court to be satisfied as to certain additional matters spelled out in those provisions; as I have said, I would not treat the agreement between the parties, consumated by consent to the orders that were entered on 11 April 1989, as extending to shut out the respondent from disputing that the applicant had made out its case for the application in its favour of these provisions, whether as to matters of fact or law (as to which see, in particular, W.H. Brine Co. v Whitton (1981) 37 ALR 190).

(iv) As to "general damages", difficult problems with assessment may arise with the evaluation of the contribution made to the Superguide by the reproduction therein of a substantial part of the UBD directory; see Ravenscroft v Herbert (1980) RPC 193 at 210.

(v) Again, if an election were to be made to pursue an account of profits, a similar difficulty in apportionment could arise; see Colbeam Palmer Ltd. v Stock Affiliates Pty. Ltd. (1986) 122 CLR 25 at 43-46.

(vi) Finally, I refer to the comparatively small numbers of the Superguide which were sold, and to the obvious point that further pursuit of pecuniary remedies would be at the risk of the applicant as to costs incurred by complex proceedings pursued to recover comparatively small sums of money.

Conclusion

1. The respondent's motion is dismissed. The respondent must pay the costs of the applicant of the motion. The matter will be stood over to a date convenient to the parties for the making of any application for further directions as to delivery up, and as to any pursuit of pecuniary remedies.