FEDERAL COURT OF AUSTRALIA

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637

THE COURT DECLARES THAT:

(1)    The first respondent is guilty of contempt by reason of the matters set out in Charge 2 in the Statement of Charge filed on 3 February 2014.

(2)    The second respondent is guilty of contempt by reason of the matters set out in Charge 3, paragraph 3.1(a) of the Statement of Charge filed on 3 February 2014.

(3)    The second respondent is guilty of contempt by reason of the matters set out in Charge 3, paragraph 3.1(b) of the Statement of Charge filed on 3 February 2014.

(4)    The fourth respondent is guilty of contempt by reason of the matters set out in Charge 4, paragraph 4.1(a) of the Statement of Charge filed on 3 February 2014.

(5)    The fourth respondent is guilty of contempt by reason of the matters set out in Charge 4, paragraph 4.1(b) of the Statement of Charge filed on 3 February 2014.

(6)    The sixth respondent is guilty of contempt by reason of the matters set out in Charge 5, paragraph 5.1(a) of the Statement of Charge filed on 3 February 2014.

(7)    The sixth respondent is guilty of contempt by reason of the matters set out in Charge 5, paragraph 5.1(b) of the Statement of Charge filed on 3 February 2014.

(8)    The sixth respondent is guilty of contempt by reason of the matters set out in Charge 5, paragraph 5.1(c) of the Statement of Charge filed on 3 February 2014.

(9)    The seventh respondent is guilty of contempt by reason of the matters set out in Charge 6 of the Statement of Charge filed on 3 February 2014.

THE COURT ORDERS THAT:

(10)    The first respondent be fined $2,000 for the contempt referred to in paragraph (1) above.

(11)    The first respondent pay a fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(12)    The second respondent be fined $2,000 for the contempt referred to in paragraph (2) above.

(13)    The second respondent pay a fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(14)    The second respondent be fined $20,000 for the contempt referred to in paragraph (3) above.

(15)    The fourth respondent be fined $15,000 for the contempt referred to in paragraph (4) above.

(16)    The fourth respondent pay a fine of $500 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(17)    The fourth respondent be fined $25,000 for the contempt referred to in paragraph (5) above.

(18)    The sixth respondent be fined $2,000 for the contempt referred to in paragraph (6) above.

(19)    The sixth respondent pay a daily fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(20)    The sixth respondent be fined $20,000 for the contempt referred to in paragraph (7) above.

(21)    The sixth respondent be fined $15,000 for the contempt referred to in paragraph (8) above.

(22)    The seventh respondent be fined $2,000 for the contempt referred to in paragraph (9) above.

(23)    The seventh respondent pay a daily fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(24)    The fines referred to in the above orders be paid to the Registrar of this Court within 28 days in the case of the corporate respondents, and within 3 months in the case of the fourth respondent, save and except that the daily fines referred to in paragraphs (11), (13), (16), (19) and (23) above, be paid to the Registrar within forty-eight (48) hours of the fine being incurred.

(25)    If any of the first, second, sixth and seventh respondents fail to comply with the orders requiring it to pay a fine for its contempt of court, then its property shall be sequestered.

(26)    The first, second, fourth, sixth and seventh respondents pay 80% of the applicant’s costs assessed on an indemnity basis.

(27)    The parties be heard as to the following matters:

(i)    the penalty to be imposed on the fourth respondent in the event that he does not pay the fines imposed by these orders; and

(ii)    whether any other orders, and if so, what orders should be imposed in relation to any continuing non-compliance with the orders made by the Court on 26 November 2013, other than paragraph 7 of those orders.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

introduction

1    By an Interlocutory Application and a Statement of Charge filed in the Court on 3 February 2014, the applicant brought charges of contempt of court against each of the first, second, fourth, sixth and seventh respondents to this proceeding. The charges were based on the failure by each respondent to comply with orders made by the Court on 26 November 2013. The applicant seeks a declaration of guilt with respect to each alleged contempt and the imposition of a fine in relation to each contempt.

2    The charges were heard on 4 and 7 March 2014. The first, second, fourth and seventh respondents were represented by Goldsmiths Lawyers, who had filed a Notice of Acting on 3 March 2014. The sixth respondent, Bob Jane Global Tyre Corporation (Hong Kong) Limited, did not appear at the hearing. It is a company incorporated in Hong Kong and, earlier in the proceeding, it submitted to the jurisdiction of the Court.

3    The hearing on 4 and 7 March 2014 proceeded as a hearing on both the guilt of each respondent of the charge(s) of contempt brought against it and the determination of the appropriate penalty in relation to those charges established on the evidence.

4    The fourth respondent, Mr Bob Jane, controls the other respondents. He admitted in the proceeding that he was the controlling mind of the first, second and sixth respondents. I think he was also the controlling mind of the seventh respondent. He filed two affidavits in response to the contempt charges in which he purported to speak, not only on his own behalf, but also on behalf of the first, second and seventh respondents. Although no-one appeared for the sixth respondent on the hearing of the contempt charges, the evidence establishes that it was the fourth respondent who initiated and has control of the change of name procedure undertaken by the sixth respondent (the details of which are set out below). There is no reason not to proceed on the basis of the previous admission that the fourth respondent is the controlling mind of the sixth respondent.

THE ORDERS AND THE CHARGES

5    The orders made on 26 November 2013 followed a hearing at which none of the respondents appeared. I delivered reasons for making the orders: Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 (“earlier reasons”). The relevant paragraphs of the orders for the purposes of the Statement of Charge are as follows:

3.    The respondents (and each of them) be restrained, whether by themselves or by their servants or agents or howsoever otherwise, from trading as a business under any name that is (or includes) JANE or a name that is substantially identical with or deceptively similar to the respondents’ marks or the respondents’ JANE marks, or under or by reference to any other trade mark that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.

4.    The second respondent and sixth respondent forthwith change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant’s trade marks or the applicant’s JANE FLEET trade marks.

…

7.    The respondents forthwith deliver up on oath to the applicant all of the respondents’ goods and advertising and promotional material bearing the respondents’ marks or the respondents’ JANE marks or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to applicant’s trade marks or the applicant’s JANE FLEET trade marks.

8.    The respondents forthwith transfer to the applicant registration of the:

(a)    bobjaneglobal.com domain name; and

(b)    janetyres.com domain name,

    …

6    The relevant paragraphs in the Statement of Charge are as follows:

2.    First Respondent

2.1    Knowing of the November Orders, and in breach of those orders, the first respondent has failed to deliver up on oath to the applicant any or all of the Relevant Goods and Materials.

Particulars

On 9 January 2014 the applicant by its solicitors wrote to the fourth respondent in his own capacity and as the director of each of the first, second, third, sixth and seventh respondents (9 January 2014 letter) seeking, among other things, delivery up of the Relevant Goods and Materials.

On 15 January 2014 the fourth respondent responded to the 9 January 2014 letter and asserted that: “These are matters included and being investigated as part of Family Court Matter MLF 3444 of 2006 which was reinstated on 3rd September 2013 and is a current proceeding in the Family Court. As such they can no longer be dealt with unless done so through the Family Court”, but did not otherwise respond to the substantive matters set out in the 9 January 2014 letter.

Notwithstanding the November Orders and the applicant's demands, neither the applicant nor its solicitors has received from any of the respondents (whether on oath or at all) any of the Relevant Goods and Materials.

2.2    The first respondent committed the conduct referred to in paragraph 2.1 above in wilful and contumacious disregard for the November Orders.

3.    Second Respondent

3.1    Knowing of the November Orders, and in breach of those orders, the second respondent has:

(a)    failed to deliver up on oath to the applicant any or all of the Relevant Goods and Materials;

(b)    failed to change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant’s trade marks or the applicant’s JANE FLEET trade marks.

Particulars

In relation to subparagraph (a), the applicant refers to the particulars subjoined to paragraph 2.1 above.

In relation to subparagraph (b), the 9 January 2014 letter also required that the respondents make arrangements for the necessary changes to be made to the corporate names of the second and sixth respondents. Notwithstanding the November Orders and the applicant’s demands, the registered corporate name of the second respondent remains BOB JANE SOUTHERN MOTORS PTY LTD.

3.2    The second respondent committed the conduct referred to in paragraph 3.1 above in wilful and contumacious disregard for the November Orders.

4.    Fourth Respondent

4.1    Knowing of the November Orders, and in breach of those orders, the fourth respondent has:

(a)    failed to deliver up on oath to the applicant any or all of the Relevant Goods and Materials;

(b)    failed to transfer to the applicant registration of the bobjaneglobal.com and janetyres.com domain names (Domain Names);

(c)    commenced trading as a business under a name, specifically BOB JANE T MARTS PTY LTD or BOB JANE T MARTS, that includes JANE, and thereby under or by reference to any other trade mark that is substantially identical with or deceptively similar to the applicant's trade marks.

Particulars

In relation to subparagraph (a), the applicant refers to the particulars subjoined to paragraph 2.1 above.

In relation to subparagraph (b), the 9 January 2014 letter also required that the respondents make arrangements for the transfer of the Domain Names to the applicant. The fourth respondent is the relevant contact in respect of the Domain Names and possesses the relevant passwords required to instruct the transfer of their registrations. Notwithstanding the November Orders and the applicant’s demands, the sixth respondent remains the registrant of the Domain Names.

In relation to subparagraph (c), on 6 January 2014, a company called BOB JANE T MARTS PTY LTD (ACN 167 419 516) was incorporated. The fourth respondent is the sole director and sole shareholder of that company. The applicant is aware of at least two letters, dated 8 January 2014 and 9 January 2014, that have been sent by the fourth respondent on letterhead bearing that company name and details. The applicant’s 9 January 2014 letter required that the fourth respondent change the name of that company to a name that complies with the November Orders. Notwithstanding the November Orders and the applicant’s demands, the registered corporate name of that company remains BOB JANE T MARTS PTY LTD.

4.2    The fourth respondent committed the conduct referred to in paragraph 3.1 [sic] above in wilful and contumacious disregard for the November Orders.

5.    Sixth Respondent

5.1    Knowing of the November Orders, and in breach of those orders, the sixth respondent has:

(a)    failed to deliver up on oath to the applicant any or all of the Relevant Goods and Materials;

(b)    failed to change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant's trade marks or the applicant’s JANE FLEET trade marks; and

(c)    failed to transfer to the applicant registration of the Domain Names.

Particulars

In relation to subparagraph (a), the applicant refers to the particulars subjoined to paragraph 2.1 above.

In relation to subparagraph (b), the 9 January 2014 letter also required that the respondents make arrangements for the necessary changes to be made to the corporate names of the second and sixth respondents. Notwithstanding the November Orders and the applicant’s demands, the registered corporate name of the sixth respondent remains BOB JANE GLOBAL TYRE CORPORATION (HONG KONG) LIMITED.

In relation to subparagraph (c), since around June 2011 the sixth respondent has been the registrant of the Domain Names. The 9 January 2014 letter also required that the respondents make arrangements for the transfer of the Domain Names to the applicant. Notwithstanding the November Orders and the applicant’s demands, the sixth respondent remains the registrant of the Domain Names.

4.2    [sic] The sixth respondent committed the conduct referred to in paragraph 4.1 [sic] above in wilful and contumacious disregard for the November Orders.

6.    Seventh Respondent

5.1    [sic] Knowing of the November Orders, and in breach of those orders, the seventh respondent has failed to deliver up on oath to the applicant any or all of the Relevant Goods and Materials.

Particulars

The applicant refers to the particulars subjoined to paragraph 2.1 above.

5.2     [sic] The seventh respondent committed the conduct referred to in paragraph 5.1 [sic] above in wilful and contumacious disregard for the November Orders.

7    A summary of the charges by reference to the paragraphs in the orders is as follows. The fourth respondent is charged with a failure to comply with paragraph 3, prohibiting him from trading as a business under any of the names identified in the paragraph. The second and sixth respondents are charged with a failure to comply with paragraph 4, which required them to change their respective names. The first, second, fourth, sixth and seventh respondents are each charged with a failure to comply with paragraph 7, which required them to deliver up on oath the goods and materials identified in the paragraph. The fourth and sixth respondents are charged with a failure to comply with paragraph 8, which required them to transfer the two domain names identified in the paragraph.

jurisdiction and standard of proof

8    The power of this Court to punish contempts of its power and authority is the same as that possessed by the High Court in respect of contempts of that court: s 31(1) of the Federal Court of Australia Act 1976 (Cth). The High Court has the same power to punish contempts of its power and authority as was possessed at the commencement of the Judiciary Act 1903 (Cth) by the Supreme Court of Judicature in England: s 24 of the Judiciary Act 1903 (Cth). Contempt of court is dealt with in the Federal Court Rules 2011 (Cth), in Part 42.

9    Historically, there were important differences between contempts of court which were classified as criminal and those which were classified as civil. The former involved acts which constituted a wrongful interference with the due administration of justice. The latter were constituted by failures to comply with court orders and the like: O’Shea v O’Shea and Parnell (1890) 15 PD 59, at 62-63 per Cotton LJ. The distinction between the two types of contempt is less important in modern times as courts have come to recognise that the theoretical distinction between the two classes “overlooks the underlying rationale of every exercise of the contempt power, namely that it is necessary to uphold and protect the effective administration of justice”: Australasian Meat Industry Employees’ Union and Others v Mudginberri Station Proprietary Limited (1986) 161 CLR 98 (“Mudginberri”), at 107 per Gibbs CJ, Mason, Wilson and Deane JJ. There is a public interest in the exercise of the contempt power in the case of disobedience of a court order.

10    The plurality in Mudginberri noted the difficulties in maintaining a clear and rational distinction between criminal contempts and civil contempts. For example, their Honour’s noted that wilful disobedience with a court order amounted to a criminal contempt. Their Honours described as complex and artificial the concept that disobedience to an order becomes criminal when the primary purpose of exercising the power changes from vindication of the rights of the plaintiff to vindication of the authority of the court. Their Honours said that there was much to be said for the view that all contempts should be punished as if they are quasi-criminal in character. They decided that there was the power to impose a fine to punish a failure to comply with court orders where the defendant’s conduct was wilful, that is to say, other than casual, accidental or unintentional. Their Honours went on to say that, in addition to a fine for conduct to date, there was power to impose a daily fine where the contempt was a continuing one. Their Honours adopted the description of contempt of court as a distinctive offence attracting remedies which are sui generis. The wide and flexible range of remedies is illustrated by the cases discussed by their Honours (at 113-115).

11    The historical distinction between contempts of court which were classified as criminal and those which were classified as civil was considered by the High Court again in Witham v Holloway (1995) 183 CLR 525. Brennan, Deane, Toohey and Gaudron JJ said that the differences upon which the distinction between criminal and civil contempt is based were, in significant respects, illusory. Their Honours considered that all proceedings for contempt must realistically be seen as criminal in nature and that one consequence of that is that all charges of contempt must be proved beyond reasonable doubt.

12    The matters which an applicant must establish in order to make out a contempt of court were summarised by Gillard J in Advan Investments Pty Ltd v Dean Gleeson Motor Sales Pty Ltd and Ors [2003] VSC 201 in the following terms (at [31]):

In order to prove a civil contempt of court involving a breach of an order of the court, the plaintiff has to prove the following:

(i)    that an order was made by the court;

(ii)    that the terms of the order are clear, unambiguous and capable of compliance;

(iii)    that the order was served on the alleged contemnor or excused in the circumstances, or service dispensed with pursuant to the Rules of Court;

(iv)    that the alleged contemnor has knowledge of the terms of the order;

(v)    that the alleged contemnor has breached the terms of the order.

13    Subject to the issue of breach, the above requirements are satisfied in this case.

FINDINGS IN RELATION TO EACH CHARGE

14    Before dealing with each charge, there are some general matters to be noted. First, I am satisfied beyond reasonable doubt that the orders made on 26 November 2013 were served on the respondents shortly after they were made.

15    Secondly, I am satisfied beyond reasonable doubt that, on or about 9 January 2014, the applicant’s solicitors wrote to the respondents and advised them that the applicant considered that the respondents had not complied with the orders and that, unless remedied, contempt proceedings would be brought.

16    Thirdly, as I have already noted, the fourth respondent swore two affidavits which were tendered at the hearing. In addition, he was cross-examined by counsel for the applicant. Although by the time all the evidence was in there were not many factual disputes between the parties, I did not find the fourth respondent’s evidence particularly convincing. I say that because in a number of areas I thought I was given only half of the story, and some of the explanations were not wholly convincing. By way of example, I refer to the following. First, there was a suggestion that the respondents decided to comply with the orders once they received legal advice. In a sense, that might well be true, but it is not because they did not previously understand the orders. I think the orders are clear and, to the extent that they may have given rise to the need for legal advice, the fourth respondent had Goldsmiths Lawyers acting for him in other matters. The fourth respondent’s acts and correspondence in January 2014, which are discussed below, suggest that he considered at that time that he was free to ignore the orders made by this Court. It seems to me likely that something happened in February 2014 that caused the fourth respondent to reconsider his position and to appreciate the significance of the contempt charges. Secondly, I found the fourth respondent’s explanation for his failure to take any action to transfer the two domain names – that he thought others were attending to it – unconvincing. It is more likely that he considered that he could ignore the orders or “bluff” his way through by asserting that the matters in this Court were, in some way never explained, now the subject of the Family Court proceedings. Finally, I mention a matter which, on the face of it, appears to be quite a minor matter, but which nevertheless affected my confidence in the reliability of the fourth respondent’s evidence. In his first affidavit sworn on 4 March 2014, the fourth respondent said that he had forwarded the resolution changing the second respondent’s name to the Australian Securities and Investments Commission (“ASIC”), whereas in his second affidavit sworn on 6 March 2014, he said that he did that between swearing his affidavit of 4 March 2014 and his affidavit of 6 March 2014. If in fact that is to be explained by a distinction between the resolution and the Notification of Resolution, then that should have been made clear in the fourth respondent’s affidavit.

Paragraph 3 of the orders

17    The fourth respondent is charged with a failure to comply with paragraph 3 of the orders made on 26 November 2013. The evidence establishes the following matters beyond reasonable doubt.

18    On 6 January 2014, the fourth respondent registered, or caused to be registered, in Victoria a company called Bob Jane T Marts Pty Ltd. The fourth respondent is the sole director and the sole shareholder of the company and the registered office of the company is the same address as the address of the registered office of the first, second and seventh respondents.

19    On 8 January 2014, the fourth respondent, as director of Bob Jane T Marts Pty Ltd and under the letterhead of that company, wrote to Mr Rodney Jane of the applicant. Copies of the letter were apparently sent to 16 persons or organisations. The letter set out certain matters of history and contained allegations of misconduct by Mr Rodney Jane.

20    On 9 January 2014, the fourth respondent, as director of Bob Jane Properties Pty Ltd and Calder Park Raceway Pty Ltd, but under the letterhead of Bob Jane T Marts Pty Ltd, wrote to Mr Rodney Jane of Bob Jane Properties Pty Ltd. Copies of the letter were apparently sent to 22 persons or organisations. The letter contains allegations of financial misconduct by Mr Rodney Jane.

21    On or about 10 January 2014, the fourth respondent wrote to a Mr Robbie Bonnet who operates the Bob Jane T-Marts franchise in Drummoyne, New South Wales. The subject matter of the letter was Bob Jane T Marts Pty Ltd. In the letter, the fourth respondent said the following:

… Bob Jane T Marts has not been protected by Company Registration for some 11 years, from 2003, so it is now owned by Bob Jane and alive again …

This is step number one of my strategy for recovery of the Bob Jane business.

The name is protected by Trade Mark within my Company Bob Jane Corporation Pty Ltd; soon, I predict I will get back.

22    I do not think the particulars to the charge alleging a failure to comply with paragraph 3 prevent the applicant from relying on the letter dated 10 January 2014. I say that because the particulars do not purport to be exhaustive as they refer to “at least two letters”.

23    On 15 January 2014, the fourth respondent, under the letterhead of “Bob Jane Tyre King for 52 Years. The Most Trusted Name in Business”, wrote to the applicant’s solicitors in response to their letter dated 9 January 2014. Copies of the letter were apparently sent to a number of persons or organisations. Again, the letter contained serious allegations against Mr Rodney Jane. The fourth respondent asserted that the matters raised by the applicant’s solicitors concerning the failure to comply with the orders made by this Court on 26 November 2013 could now be dealt with only through the Family Court, or were now matters “of the Family Court”.

24    On 20 January 2014, a letter under the same letterhead as that of the letter of 15 January 2014 was sent by the fourth respondent to Mr Rodney Jane of the applicant.

25    “Bob Jane Tyre King” is not one of the names referred to in the charge. In those circumstances, the letters dated 15 January 2014 and 20 January 2014 respectively are not part of the conduct of the fourth respondent which is said to be in breach of paragraph 3.

26    At the time that the charge was laid, the applicant appears not to have known of any conduct constituting (on its case) a breach of paragraph 3 other than the incorporation of the company and the writing of the two letters. Subject to the addition of the letter to the franchisee dated 10 January 2014, that remained the position at the hearing. Although I have reservations about the fourth respondent’s evidence, it was not established in cross-examination or otherwise that he had engaged in any commercial transactions under the name, “Bob Jane T-Marts Pty Ltd” or “Bob Jane T-Marts”. By commercial transactions, I mean the buying and selling of goods or services, or offering to do so.

27    At the hearing, the fourth respondent made a submission of no case to answer in relation to the charge that he had breached paragraph 3. I rejected the submission on the ground that it was arguable that the fourth respondent had breached paragraph 3.

28    I have considered the issue carefully. I do not think that there is any doubt that the fourth respondent established Bob Jane T Marts Pty Ltd with a view to conducting a business that would, in fact, involve him in a breach of paragraph 3. That, no doubt, was the whole point of registering the company. It seems that the fourth respondent had a change of heart, or, at least, the evidence does not extend beyond the registering of the company and the despatch of the three letters referred to above.

29    The applicant referred to the observations of Deane J sitting as a judge of this Court in Re Ku Ring Gai Co Operative Building Society (No 12) Ltd (1978) 22 ALR 621 to the effect that the words “trade or commerce” in s 47 of the Trade Practices Act 1974 (Cth) were words of the widest import. I note also that Mason J (as his Honour then was) considered the meaning of the word “business” in the Local Government Act 1919 (NSW) in Hope v The City Council of Bathurst (1980) 144 CLR 1. His Honour identified the characteristics of a business as an enterprise undertaking transactions on a continuous and repetitive basis for the purpose of making a profit. In the case before him, his Honour referred to the permanent character of the activities, the fact that the operator sought customers by advertising and had kept appropriate financial records, and the fact that the primary asset of the business, being land, was being put to its best potential use.

30    I do not think the authorities help a great deal. Even giving the expression in paragraph 3, “trade as a business”, a wide meaning, I think that some act relevant to a transaction or potential transaction is necessary. I do not think a concluded transaction must be shown, and an offer to supply goods or services, or even contact with a potential supplier, would be sufficient. However, nothing of that nature is present here. I do not think a breach of paragraph 3 by the fourth respondent is made out on the evidence.

31    I would not wish my conclusion to be misunderstood. The question is whether the fourth respondent’s conduct reached the point of contravening paragraph 3. I do not think that it did, although I think that, in early January 2014, the fourth respondent intended to engage in conduct that would do so. Furthermore, the present application does not require me to address whether the fourth respondent’s conduct infringed other rights that the applicant may have.

Paragraph 4 of the orders

32    The second and sixth respondents are charged with a failure to comply with paragraph 4 of the orders made on 26 November 2013. As at 30 January 2014, the second respondent, Bob Jane Southern Motors Pty Ltd, had not changed its name. The fourth respondent was the sole director, the secretary and the sole shareholder of the company.

33    The fourth respondent put forward evidence to the effect that he had approved a resolution under s 249A of the Corporations Act 2001 (Cth) changing the name of the company to Southern Cross Films Australia Pty Ltd and that notification of the change was sent to ASIC sometime between 4 March 2014 and 6 March 2014. Nothing from ASIC in response to that notification was put before the Court. A change of name takes effect when ASIC alters the details of the company’s registration (s 157(3) of the Corporations Act).

34     As far as the second respondent is concerned, the charge of failing to comply with paragraph 4 before 4 March 2014 has been established beyond reasonable doubt.

35    As at 28 January 2014, the sixth respondent, Bob Jane Global Tyre Corporation (Hong Kong) Limited, had not changed its name.

36    The fourth respondent put forward evidence to the effect that, in the week before 4 March 2014, he received from Hong Kong such documents as were necessary to effect a change of the name of the company. As at 4 March 2014, he, as one of three directors of the company, had signed the necessary resolution to change the name of the company to 1549766 Limited. By 6 March 2014, a second director had signed the resolution and the form had been sent to London for execution by the third director. By the time of the hearing on 7 March 2014, the third director had signed the resolution.

37    As far as the sixth respondent is concerned, the charge of failing to comply with paragraph 4 has been established beyond reasonable doubt.

Paragraph 7 of the orders

38    The first, second, fourth, sixth and seventh respondents are each charged with a failure to comply with paragraph 7 of the orders made on 26 November 2013. Before 4 March 2014, no goods or materials had been delivered up on oath to the applicant.

39    In his first affidavit sworn on 4 March 2014, the fourth respondent said that there were no goods or materials to be delivered up and he made reference to what had happened to materials associated with the business at 509 King Street, West Melbourne (see earlier reasons at [78]).

40    In his second affidavit sworn on 6 March 2014, the fourth respondent said that he had a box of business cards of the second respondent which he had instructed his solicitors to send to the applicant’s solicitors. He said that, as a result of legal advice, he realised the obligation in paragraph 7 was a continuing one and that he had been “carrying out additional inquiries in an endeavour to ensure that all such goods and material [had] been located”. The box of business cards was, he said, inadvertently overlooked at the time he swore his first affidavit.

41    All the respondents are charged with a failure to comply with paragraph 7. Delivery up on oath means that an affidavit is sworn detailing the searches carried out for the goods and materials specified in the order and the results of the searches. If the searches disclose goods or materials within the terms of the order, then they are to be delivered up. The obligation to deliver up on oath was, by the terms of the order, to be performed forthwith. None of the respondents complied with the order forthwith, or before 4 March 2014. As far as the first, second, fourth, sixth and seventh respondents are concerned, a failure to comply with paragraph 7 has been established beyond reasonable doubt.

42    I am not satisfied that the respondents have complied with paragraph 7 when the two affidavits of the fourth respondent are read together. Whilst the obligation imposed by the terms of the order is probably a continuing one, that does not authorise piecemeal searches. A thorough and complete search must be carried out and the results of that search must be identified in an affidavit. It may be that, in fact, the respondents are not required to do a great deal more, but I do not think the order has as yet been complied with.

Paragraph 8 of the orders

43    The fourth and sixth respondents are charged with a failure to comply with paragraph 8 of the orders made on 26 November 2013. It is necessary to summarise the correspondence that was exchanged with respect to this issue.

44    The applicant’s solicitors wrote to the fourth and fifth respondents on 9 January 2014 pointing out to them that the two domain names remained in the name of the sixth respondent despite the fact that the order of the Court required a transfer forthwith of the names.

45    The fifth respondent, Mr Dennis Rigon, makes an appearance at this stage, although he is not the subject of any charges. A summary of aspects of the fifth respondent’s role is set out in my earlier reasons (at [148], [151]).

46    The fifth respondent wrote to the applicant’s solicitors by email on 10 January 2014 stating that he had no access to the domain sites to effect the transfer required by the orders made by the Court on 26 November 2013. He said that on or about 20 November 2012, just prior to his departure from the fourth respondent’s company, the usernames and passwords were provided to the fourth respondent.

47    Netregistry is the registrar of the domain name “jaynetyres.com”. The fifth respondent sent an email to Mr Joshua Comroc of Netregistry on 13 January 2014 and he enclosed the orders made by the Court on 26 November 2013. A copy of this email was sent to the applicant’s solicitors and to the fourth respondent.

48    The fifth respondent sent an email to the applicant’s solicitors dated 14 January 2014 with a copy to the fourth respondent. The email attached an email from Ms Chantel Green of Netregistry, which was in the following terms:

Thank you for contacting Domain Escalations.

We would like to confirm the Admin contact email address and full name has been updated to the following details bobjane88@hotmail.com & Mr. Robert Jane (Bob Jane) as per the court order supplied.

49    On 20 January 2014, the applicant’s solicitors wrote back to Ms Green in the following terms:

We refer to order 8 of the attached orders of Justice Besanko in Federal Court of Australia proceeding no. VID 418 of 2011.

We act for Bob Jane Corporation Pty Ltd, the successful applicant in that proceeding.

There appears to have been some confusion as to the Court’s orders. In your email below to Mr Denis Rigon concerning the domain name janetyres.com, you confirmed that “the Admin contact email address and full name has been updated to the following details bobjane88@hotmail.com & Mr. Robert Jane (Bob Jane) as per the court order supplied”.

The Court’s orders in fact require that the registration for the janetyres.com domain name be transferred to “the applicant”, being Bob Jane Corporation Pty Ltd. This company is not associated with Mr Robert Jane (Bob Jane), who was one of the respondents in the proceeding.

We would be grateful if you would correct this by transferring the registration for the janetyres.com domain name to Bob Jane Corporation Pty Ltd as soon as possible, with the following details …

Copies of this email were sent to the fourth respondent and to the fifth respondent.

50    On 20 January 2014, the applicant’s solicitors sent a similar email to Network Solutions, which is the registrar of the domain name “bobjaneglobal.com”.

51    The applicant’s solicitors have had no response from either Netregistry or Network Solutions.

52    As at 29 January 2014, there had been no change in the ownership of the domain names and they were both still in the name of the sixth respondent.

53    At the hearing, the fourth respondent acknowledged in cross-examination that “in recent days” he had taken steps to assist in the transfer of the domain names, although it was never made clear to the Court what those steps were.

54    On all the evidence, I am prepared to infer that, had the fourth and sixth respondents contacted the registrars of the respective domain names and provided them with the necessary authorisations, then the domain names would have been transferred promptly in accordance with the order of the Court.

55    As far as each of the fourth and sixth respondents is concerned, I find that a failure to comply with paragraph 8 has been established beyond reasonable doubt.

Wilful and Contumacious Breach

56    Before leaving the findings I have made as to each of the contempts, I should record the fact that I think each breach was wilful and in contumacious disregard for the orders made on 26 November 2013 (see TiVo Inc v Vivo International Corporation Pty Ltd [2013] FCA 1340, at [8] per Pagone J). The fourth respondent was aware of the content of the orders and he made no effort to comply, or cause the other respondents to comply, until shortly prior to the hearing. He sought to deflect responsibility to comply with the orders by suggesting that in some way they fell within proceedings in the Family Court.

penalty

57    In Louis Vuitton Malletier SA v Design Elegance Pty Ltd and Another (2006) 149 FCR 494, at 501-502, Merkel J identified a number of matters which are relevant to the determination of the appropriate penalty for a contempt of court. In Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 4) [2013] FCA 393, at [25], Tracey J referred to the matters identified by Merkel J with approval. The applicant submitted that the appropriate penalty for the various breaches and failures in this case is a fine. The appropriate penalty is a matter for the Court, and I think the appropriate penalty in this case is a fine. I will identify my conclusions with respect to each of the matters which are relevant to a case where the appropriate penalty is a fine.

The contemnor’s personal circumstances

58    All of the respondents, except for the fourth respondent, are corporations.

59    The fourth respondent is an 84 year old man. He was a well-known racing car driver who established a successful business involving the sale of automotive accessories, principally tyres. In the earlier reasons, I set out the history of the dispute between the applicant and the fourth respondent (at [2]-[13]). I will not repeat what I said in those reasons.

60    The fourth respondent suffers from a number of serious medical conditions. He has been hospitalised on a number of occasions. Among other conditions, the medical reports reveal that the fourth respondent has been diagnosed with prostate cancer and type 2 diabetes, and that he has suffered two strokes. I do not propose to set out all of the details of the fourth respondent’s medical condition for two reasons. First, the medical reports are part of the Court record and can be examined if necessary. It is not necessary for me to set out what are highly private matters in these reasons. Secondly, the fourth respondent’s medical conditions are of limited relevance. At this stage at least, I am not considering the possible imprisonment of the fourth respondent. Furthermore, the fourth respondent’s medical conditions did not prevent him from undertaking the activities he did in January this year, or the efforts he made to remedy the situation in late February and early March this year.

The nature and circumstances of the contempt

61    The failure of the second and sixth respondents to change their respective names was a serious contempt. They were required to change their names forthwith, and yet, they did nothing for almost three months. When they did act, they only did so, I infer, to alleviate as far as possible the consequences of their contempt. The exercise in complying with the order was a relatively simple one capable of being accomplished within a short time as subsequent events have shown. Furthermore, rather than comply with the order, the fourth respondent, who controlled both the second and sixth respondents, registered another company with Bob Jane in its name.

62    The failure of all the respondents to deliver up on oath all the goods and materials within paragraph 7 was also serious. Again, the order provided that the obligation was to be performed forthwith. I am not satisfied that, prior to late February or early March 2014, anyone on the respondents’ side turned their mind to compliance with the order, let alone conducted a proper search. In fact, as I have said, I am not satisfied that even now the order has been complied with.

63    The failure of the fourth and sixth respondents to transfer to the applicant registration of the domain names is also serious. This obligation was also to be performed forthwith. As I have said, I reject the suggestion that the orders were not obeyed because the fourth respondent thought others were attending to the matter. To my mind, that is an attempted rationalisation after the event. The fourth respondent showed no disposition in January 2014 to otherwise comply with the court orders.

The effect of the contempt on the administration of justice

64    As I have already said, the failure to comply with the orders by each respondent was wilful. I think the context in which the orders were made is also important. It is set out in the earlier reasons. The proceeding was commenced in 2011 and did not result in final orders until November 2013. As I said in the earlier reasons (at [153]), the respondents did very little to defend the proceeding after February 2012.

The need to deter the contemnor and others from repeating the contempt

65    The fourth respondent states that, because of his age and health, neither he, nor any company of which he is a director, is conducting any business of a similar nature to that conducted by the applicant. That might suggest that specific deterrence is not as significant as it might otherwise be. However, because of the history of this proceeding, I do not exclude specific deterrence altogether as a relevant consideration. General deterrence is important, particularly as the breaches were wilful.

The absence or presence of a prior conviction for contempt

66    None of the respondents have a prior conviction for contempt.

The contemnor’s financial circumstances

67    The first, second and seventh respondents did not put forward any evidence of their financial circumstances. There was no evidence of the sixth respondent’s financial circumstances.

68    The fourth respondent put forward evidence of his financial circumstances, although it is difficult to discern a clear picture. The Australian Taxation Office claims approximately $67 million from the fourth respondent, although he disputes liability to pay this amount. The applicant has a freezing order against the fourth respondent in the amount of $1.2 million, which sum is said to relate to various costs orders made against the fourth respondent. The fourth respondent states that he has substantial liabilities to his solicitors of approximately $350,000.

69    The fourth respondent owns a farming property at 1 Holden Road, Diggers Rest (“the property”). His former wife has lodged a caveat over the property claiming a resulting or constructive trust over the property. That caveat was lodged in February of this year. She has also instituted proceedings in the Family Court of Australia to set aside a settlement in 2009.

70    Part of the property was the subject of a compulsory acquisition under the Public Transport Development Authority Act 2011 (Vic) for the purpose of a railway stabling yard. The fourth respondent has received an advance payment of compensation of $4,050,000, but he states that these monies have been spent in meeting expenses, including the discharge of the mortgage over the property. The fourth respondent does not know when the compensation claim will be finalised. He states that he will have no resources to pay a fine “until I receive the settlement funds from the compulsory acquisition from part of the Diggers Rest property or are able to sell the remainder of the property”. Even then, there will be other claims on his resources.

Whether the contemnor has exhibited general contrition and made a full and ample apology

71    As I have said, the breaches of the various orders were wilful. The respondents had no intention of complying with the orders until sometime in February 2014, probably late in that month.

72    Such apologies as there were, they were provided by the fourth respondent on his own behalf, and on behalf of the first, second and seventh respondents. The fourth respondent provided an unreserved apology in relation to the failures to comply with paragraph 4, and an unreserved apology in relation to the failures to comply with paragraphs 7 and 8 if the Court found that those paragraphs had not been complied with.

The appropriate fines

73    I have had regard to the fines imposed in a number of authorities, including Australian Competition and Consumer Commissioner v Info4PC.com Pty Ltd and Anor (2002) 121 FCR 24; Construction, Forestry, Mining and Energy Union v BHP Steel (AIS) Pty Ltd (2003) 196 ALR 350; [2003] FCAFC 13; Bovis Lend Lease Pty Ltd v Construction Forestry Mining and Energy Union (No 2) [2009] FCA 650; Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 4) [2013] FCA 393; Pennicott Wilderness Journeys Pty Ltd v Tasmanian Cruises and Charters Pty Ltd (in liquidation) [2013] FCA 966; Brookfield Multiplex FSH Contractor Pty Ltd v McDonald [2013] FCA 1380.

74    Having regard to the matters which I have identified, I impose the following fines.

75    With respect to the failures to comply with paragraph 4, I impose a fine of $20,000 on each of the second and sixth respondents.

76    With respect to the failure to comply with paragraph 7, although I think that each corporate respondent, being a separate legal entity, should be fined, the fact that the fourth respondent is the controlling mind of each of the corporate respondents should also be reflected in the fines imposed. I impose a fine of $15,000 on the fourth respondent and a fine of $2,000 on each of the corporate respondents. I will also make an order for the payment of a daily fine for the reasons set out below (at [85]).

77    With respect to the failure to comply with paragraph 8, again, the sixth respondent, being a separate legal entity, should be fined, but the fact that the fourth respondent is the controlling mind of the sixth respondent should be reflected in the fines imposed. I impose a fine of $25,000 on the fourth respondent and a fine of $15,000 on the sixth respondent.

78    I add that in fixing the appropriate fines, I have borne in mind the fact that, for the reasons set out below, I will order that the respondents pay 80% of the applicant’s costs to be assessed on an indemnity basis. It is appropriate that I do so, although the consideration cannot be pushed to the point of justifying minimal penalties: Construction, Forestry, Mining and Energy Union v BHP Steel (AIS) Pty Ltd (2003) 196 ALR 350, at 360, [53] per Tamberlin and Goldberg JJ. I have also taken into account the principle of totality. I do not think the fines I impose offend that principle.

79    On the evidence, I am unable to make any precise judgment as to time to pay, particularly in the case of the fourth respondent. I will allow 28 days in the case of the corporate respondents, and three months in the case of the fourth respondent.

costs

80    As far as costs are concerned, the authorities establish that it is common to award indemnity costs in successful contempt proceedings: Plastic Australia Pty Ltd v Plumbing Solutions and Services Pty Ltd (No 4) [2012] FCA 657; Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 4) [2013] FCA 393; Pennicott Wilderness Journeys Pty Ltd v Tasmanian Cruises and Charters Pty Ltd (in liquidation) [2013] FCA 966. However, there is no rule to the effect that that must be done and it is necessary to examine the circumstances in each particular case (see, for example, Universal City Studios LLLP v Hoey t/as DVD Kingdom [2007] FCA 806).

81    I think that, subject to one matter, this is an appropriate case for indemnity costs. The respondents’ breaches of the orders were wilful and they only took steps to comply with the orders when facing actual proceedings for punishment for contempt.

82    The one qualification is the fact that the applicant has failed to establish that the fourth respondent breached paragraph 3 of the orders. That should be reflected in the order for costs. Having said that, I think the evidence relating to the charge of a breach of paragraph 3 was also relevant to the other charges and the penalties in relation to those charges. In my opinion, the applicant’s costs should be reduced rather than that there should be an award of costs in favour of the fourth respondent with respect to the charge he successfully defended. I think the applicant’s costs should be assessed on an indemnity basis and that the respondents should pay 80% of those costs.

conclusions

83    I will make declarations of contempt and impose fines in accordance with these reasons. However, before making final orders, I require the assistance of the parties on two further matters.

84    The first matter is whether it is necessary at this stage to impose a penalty on the fourth respondent should he fail to pay the fines imposed on him, or whether that can be left to be dealt with if and when he fails to pay the fines. If the matter must be dealt with now, then I require assistance on the appropriate order.

85    The second matter is whether a further order, perhaps imposing a daily fine, is necessary with respect to any ongoing failure to comply with paragraphs 4 and 8. As I have said, I do not think paragraph 7 has been complied with. This Court has the power to order the payment of a daily fine until an order is complied with: Mudginberri, at 113-115 per Gibbs CJ, Mason, Wilson and Deane JJ; Australian Competition and Consumer Commissioner v Info4PC.com Pty Ltd and Anor (2002) 121 FCR 24, at 54, [138] per RD Nicholson J. I will order that, after the expiration of 21 days from the date of these orders, the fourth respondent pay a fine of $500 per day, and each of the first, second, sixth and seventh respondents pay a fine of $66 per day, for so long as the failure to comply with paragraph 7 continues. I will delay the imposition of the daily fine for 21 days because it may be that the fourth respondent is under the misapprehension that by filing his two affidavits he has complied with paragraph 7. I will hear the parties as to whether orders for the payment of a daily fine should be made in the case of any other orders which have not been complied with at the date of these orders.

Associate:

Dated:    19 June 2014