FEDERAL COURT OF AUSTRALIA

Read v Stevens Publishing Pty Ltd [2016] FCA 459

ORDERS

THE COURT ORDERS THAT:

1.    Leave be granted to the prospective applicant to discontinue her proceeding.

2.    The prospective respondent pay the prospective applicant’s costs of the proceeding.

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

REASONS FOR JUDGMENT

PERRAM J:

1    The question in this case is one of costs. It arises from an unpublished manuscript written by the late Mr Richard George Howard Joseland, entitled ‘An Angler’s Varied Creel’. A creel is a basket used to carry fish. Mr Joseland was also the author of several other works on fishing, including ‘Angling in Australia and Elsewhere’ which was first published by Art in Australia in 1921.

2    Mr Joseland died in 1930. The prospective applicant in the present proceeding, Ms Mary Read, is his great granddaughter. She has in her possession the manuscript of ‘An Angler’s Varied Creel’.

3    Mr Joseland was, by profession, an architect and it appears that he designed several significant homes in Sydney. However, he was also an avid fisherman, as a quick perusal of the manuscript shows. Indeed, there is a fishing book collectors’ organisation known as the Joseland Society which is named after him.

4    At some stage prior to 27 August 2015, the prospective respondent, a publisher, circularised the members of the Joseland Society. The circular filled two columns on a page and was accompanied by several illustrations, including one photograph taken of Mr Joseland in 1913 holding a fishing rod. The relevant parts of the circular were as follows:

‘Dear Joseland Member

I joined the Joseland Society in 1997, barely a year after it was founded in 1996 and I have a (sic) had a relationship with old Howard ever since.

In 2002 Stevens Publishing published a facsimile copy of Howard’s book Angling in Australia and Elsewhere. This is one of my favourite books, a beautiful production and one we are proud to have produced. It was done in a general version and a special edition for Joseland members. Both were leather bound. Perhaps you were a member then and lucky enough to have the special ‘Joselands’ edition.

The facsimile of Angling in Australia and Elsewhere was popular and quite a few of these went to Howard’s descendants, most of whom had never seen, nor been able to acquire an original. An original currently brings $1000 or more. I think it is every member’s goal to own an ‘original’.

But this was not the only angling book he wrote. Howard Joseland completed a manuscript An Angler’s Varied Creel around 1927. It was never published and Howard died in 1930.

Stevens Publishing has just completed the first edition of An Angler’s Varied Creel – some 88 years after it was written. It is 120 pages and is being printed now and available late September.

The Joseland family provided some of Howard’s original paintings and several have been included.

The production will be limited to 120 copies, plus some author/publisher proofs that will go the Joseland family.

…

This limited edition book will not be available in book shops, nor to the general public.

It is being offered exclusively to Joseland Society members first – you get one week to order, then the offer will go to our extensive book collectors list.

This is your chance to own a first edition ‘Joseland’.

Price is $275 + $20 post and packaging. You can pay by direct deposit, Paypal or Credit card. See page 2 for details. This is an exclusive Joseland Society offer for one week only. You will get the lowest numbers.’

5    Ms Read’s basic contention has been that she owns the copyright in the literary work ‘An Angler’s Varied Creel’, and that what the prospective respondent was proposing to do, as disclosed in the circular, was to infringe her copyright.

6    Beginning in September 2015, Ms Read and later, her lawyer Mr Banki, began correspondence with a Mr Stevens who is a director of the prospective respondent. Initially there was puzzlement as to where the prospective respondent had obtained the text of the book and this was linked to a further suspicion that it was possible that the prospective respondent’s copy was perhaps different to Ms Read’s. Mr Banki sought by correspondence access to the prospective respondent’s manuscript, so that a comparison between the two could be conducted to see if they were, indeed, the same. When pressed, the prospective respondent did indicate that the manuscript Mr Stevens had worked from had been obtained from another branch of the Joseland family, but declined to produce it.

7    By November 2015, the correspondence between the parties had reached an impasse. The dispute could, by then, be distilled down to two distinct controversies. The first of these was that just mentioned, and was whether the manuscript which the prospective respondent had used to produce the book was a different work or whether it was itself a copy of the manuscript held by Ms Read. The second was whether Ms Read was the owner of the copyright in the manuscript in her possession. In that regard, the prospective respondent had asked Ms Read to prove that she owned the copyright. She had responded to that question by pointing out her descent from the late Mr Joseland and her possession of the manuscript. Subsequently, various wills were also referred to.

8    The prospective respondent resisted production of the manuscript from which Mr Stevens had worked and, indeed, it eventually indicated that he had returned it to the other branch of the Joseland family. The prospective respondent was then asked to provide a copy of the book it proposed to publish, but this it also declined to do.

9    On 10 December 2015, Ms Read commenced a proceeding against the prospective respondent seeking preliminary discovery under Division 7.3 of the Federal Court Rules 2011 (Cth). The only order sought in her originating application was an order that a copy of the book be produced or that there be produced documents showing the creation of the book.

10    On 15 January 2016, which was before the first return date of the originating application, the prospective respondent provided a copy of the book to Ms Read, and on 29 January filed an affidavit. In the affidavit, Mr Stevens explained that the book had been prepared from a manuscript provided by the other branch of the Joseland family. He said that only 100 copies of the book had been printed, and that he had been informed that these were for distribution amongst family, friends and relatives. He swore that it was not for sale nor publicly available, and that the prospective respondent had not received any payment for it.

11    Of course, that account is at odds with the contents of the circular sent to the members of the Joseland Society which had indicated that the book was for sale, at least, to the members of that society (and then later to the persons on the prospective respondent’s ‘extensive’ book collectors list) and certainly for a price of $275.

12    Ms Read’s preliminary discovery proceeding has never been formally determined. This is because all that she sought was the book and this was provided to her on 15 January 2016. The proceeding no longer has any utility. Ms Read seeks leave, therefore, to discontinue it, which is plainly one way to bring the case to an end. I see no reason not to grant that leave.

13    Usually, under r 26.12, a party who discontinues a proceeding is liable to pay the costs of the other party unless the Court otherwise orders. When should an order of this kind be made? Mr Banki submits that there should be such an order because it was unreasonable for the prospective respondent not to produce a copy of the book when originally requested to do so. In doing so, Mr Banki draws by analogy upon a line of authority of which Re Minister for Immigration and Ethnic Affairs; ex parte Lai Qin (1997) 186 CLR 622 is perhaps the best known, which establishes that where a case does not proceed to a final hearing but the question of costs remains unresolved, the usual costs order should be that each party bears their own costs unless one party has acted so unreasonably that the other party should obtain their costs.

14    It is not self-evident to me, however, that this is necessarily the correct framework of analysis in the present case. There are authorities which indicate that the principles governing the award of costs in preliminary discovery applications differ markedly from those applying in ordinary cases: see, e.g., the remarks of Kenny J in J & A Vaughan Super Pty Ltd v Becton Property Group Ltd [2013] FCA 340 at [12]-[23]. In particular, there is some support for the proposition that a successful applicant can be ordered to pay the costs of an unsuccessful respondent. This is because there is ‘a sense in which a respondent is entitled to remain passive until the applicant makes out a case for preliminary discovery’: Procter v Kalivis (No 3) [2010] FCA 1194 at [17] per Besanko J. In both Procter and J & A Vaughan, the successful applicant was ordered to pay the costs of a prospective respondent who had not co-operated before the commencement of the proceeding. The idea underpinning these cases is that no-one has a right to inspect another person’s property per se, and that a person must be entitled to assert the right to deal with their own property as they see fit.

15    On the other hand, there are cases where the ordinary approach to costs described in Lai Qin has been applied in a preliminary discovery suit. For example, in Fisher v Houston [2013] FCA 1026 at [21] Tracey J adopted precisely the same approach as that for which Mr Banki now contends.

16    Mr Vrisakis, for the prospective respondent, did not seek to argue that the approach adopted in Fisher v Houston [2013] FCA 1026 was inconsistent with the particular approach to the question of costs adopted in preliminary discovery proceedings, and I have heard no argument about that issue. In that circumstance, I propose to approach the matter as Tracey J did, that is to say, on the Lai Qin basis that the basic issue concerns the reasonableness of the prospective respondent’s pre-litigation behaviour. I would reserve to another occasion whether this is, in fact, the correct approach although, for what it is worth, I would express some scepticism that it is.

17    Mr Vrisakas submitted that Ms Read had not shown that the prospective respondent’s conduct had been unreasonable because she had not succeeded in showing that she was the owner of the copyright in the work embodied in the manuscript. Particular reference was made to paragraphs 4-12 of Ms Read’s initial affidavit of 10 December 2015, which were in these terms:

‘Copyright in the Unpublished Manuscript

4.    I am the owner of the copyright in the Unpublished Manuscript.

5.    Howard Joseland died on 20 July 1930.

6.    By his will dated 27 March 1930, his daughter (my grandmother), Katherine Howard, inherited the Unpublished Manuscript.

7.    Katherine Howard died on 11 March 1980.

8.    By her will dated 14 November 1956, her son (my father), John Cecil Thomas Read, inherited the Unpublished Manuscript.

9.    John Cecil Thomas Read died on 7 December 2007.

10.    By his will dated 19 August 2007, I inherited the Unpublished Manuscript.

11.    I have the Unpublished Manuscript in my possession. It bears handwritten annotations that I verily believe to be by Howard Joseland.

12.    I also have in my possession the wills of Howard Joseland, Katherine Howard and John Cecil Thomas Read.’

18    This seems to say the opposite but it was submitted that it was inadmissible, and that in consequence Ms Read would have failed to have proved that she was the owner of the copyright at the hearing. This, however, is not the question which arises. Rather the question is, in terms of r 7.22(a), whether the prospective applicant shows that ‘there may be a right for the prospective applicant to obtain relief against a prospective respondent’.

19    I do not accept that Ms Read would have fallen short of showing that she might have been able to sue the prospective respondent for copyright infringement. There were wills, she had the actual manuscript and she was a descendant of Mr Joseland. Furthermore, there is a presumption in the case of an unpublished work that the copyright in a work embodied in a manuscript is conveyed with a bequest of that manuscript: Copyright Act 1968 (Cth) s 198. Maybe at trial some challenge to her standing might have been raised, but this would not have been to the point in a preliminary discovery application. I do not accept, therefore, that Ms Read would not have succeeded. To the contrary, to my mind it is plain that she would have obtained the order she sought. It follows that I accept Mr Banki’s submission that Ms Read would clearly have won her application had it proceeded.

20    Was it reasonable for the prospective respondent not to have handed the book over? There may be an argument that the prospective respondent was under no obligation – either at law, in equity or under statute – to do so. The corollary of this would be that it can hardly have acted unreasonably by acting within its rights. Similar reasoning informed the decisions in J & A Vaughan and Procter.

21    However, this argument was not advanced by Mr Vrisakis, who rested his argument upon the suggested inability of Ms Read to prove her ownership of the copyright. In that circumstance, I do not think it would be procedurally fair of me to decide the case on a basis upon which Mr Banki has not had the opportunity to address me.

22    I accept therefore that the prospective respondent acted so unreasonably in refusing to hand over a copy of the book that Ms Read should have her costs. She had the manuscript, the wills and s 198. It was only going to end one way, and much expense could have been saved by handing the book over when first requested. Applying Fisher v Houston, I conclude that the prospective respondent should bear Ms Read’s costs.

23    I will grant leave to Ms Read to discontinue her proceeding and I order the prospective respondent to pay her costs of that proceeding.

Associate:

Dated:    4 May 2016