Vaysman v Deckers Outdoor Corporation Inc [2014] FCAFC 60
| IN THE FEDERAL COURT OF AUSTRALIA | |
| Appellant | |
| AND: | DECKERS OUTDOOR CORPORATION INC Respondent |
| dowsett, siopis and besanko jj | |
| DATE OF ORDER: | |
| WHERE MADE: | Brisbane (via videolink to Melbourne) |
THE COURT ORDERS THAT:
1. The appellant be granted an extension of time within which to file and serve a notice of appeal in terms of the draft amended notice of appeal dated 12 September 2013 within seven days of the making of this order.
2. The appeal be allowed and the orders made on 24 June 2010 be set aside to the following extent:
2.1 in paragraph 6(c), the words, “three years” be deleted and the words, “two years” be substituted; and
2.2 paragraph 7 be deleted and the following be substituted for that paragraph:
3. “7. A warrant issue for the committal of the Fifth Respondent to prison for the period of two years”.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
| VICTORIA DISTRICT REGISTRY | |
| GENERAL DIVISION | VID 835 of 2013 |
| ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
| BETWEEN: | VLADIMIR VAYSMAN Appellant |
| AND: | DECKERS OUTDOOR CORPORATION INC Respondent |
| JUDGE: | dowsett, siopis and besanko jj |
| DATE: | 22 MAY 2014 |
| PLACE: | BRISBANE via videolink to melbourne |
REASONS FOR JUDGMENT
DOWSETT J:
1 I have read the reasons to be published by Besanko J and am in general agreement with his Honour’s outline of the facts of the case. Unless I indicate to the contrary, to the extent that his Honour makes specific findings, I adopt those findings.
BACKGROUND
2 This matter has a lengthy and complex history. In proceedings numbered V1114 of 2003 (the “2003 proceedings”), the present respondent (“Deckers”) sought relief in connection with alleged trademark and copyright infringements, conduct allegedly in breach of the Trade Practices Act 1974 (Cth) (the “Trade Practices Act”) and/or the Fair Trading Act 1999 (Vic) (the “Fair Trading Act”) and alleged passing off. One of the respondents was the present applicant (Mr Vaysman”). Deckers obtained interlocutory relief in the form of restraining orders. In the course of the 2003 proceedings Deckers sought to have Mr Vaysman dealt with for contempt, alleging breach by him of those interlocutory orders. On 12 March 2004, Mr Vaysman consented to permanent injunctive relief in terms of the interlocutory relief previously granted. In Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391 (“Judgment 6”) at [13], Tracey J observed that the 2003 proceedings were resolved pursuant to terms of settlement signed on 11 March 2004, and that the proceedings were discontinued. His Honour noted that there had been no “formal order” of discontinuance. The proceedings were presumably discontinued by consent pursuant to O 22 r 2(1)(c) of the previous Rules of Court.
3 At some later time, Deckers filed application VID 1129 of 2004 (the “2004 proceedings”), alleging breaches of the terms of settlement in the 2003 proceedings. The 2004 proceedings were settled on 10 June 2005 and presumably discontinued.
4 On 9 November 2007 Deckers commenced proceedings numbered 1022 of 2007 (the “2007 proceedings”). In these proceedings it again alleged trademark infringement, copyright infringement, breaches of the Trade Practices Act and the Fair Trading Act and passing off. On 27 November 2007, the applicant gave undertakings pending trial. At some stage in these proceedings, Tracey J granted summary judgment against Mr Vaysman and another party in the amount of $150,000, apparently pursuant to the terms of settlement in the 2004 proceedings. Interlocutory orders were also made. On 4 December 2007 his Honour re-instated the 2003 proceedings in order to enable Deckers further to prosecute the contempt proceedings which had been commenced prior to the discontinuation of those proceedings. At some stage other contempt proceedings were commenced, alleging further breaches of orders made in the 2003 proceedings and breaches of orders made, and undertakings given in the 2007 proceedings.
5 The contempt proceedings were heard on 8, 9 and 10 April, 2, 3, 5, 11 and 12 June and 10 July 2008. On 8, 9 and 10 April Mr Vaysman appeared by counsel. He did not appear thereafter. As far as I can see, he took no objection to the form of the proceedings. The evidence indicates that he went abroad on or about 28 November 2008, and returned to Australia on or about 28 June 2013.
6 On 24 September 2009, that is after the hearing of the contempt charges, and before delivery of the judgment and reasons, Mr Vaysman consented to judgment in the amount of $3 million as general compensatory damages, and in the further amount of $3 million as additional damages for breach of copyright. These orders were made in the 2007 proceedings. Shortly afterwards, he went into voluntary bankruptcy. On 23 April 2010 Tracey J published Judgment 6, finding that ten counts of contempt of court had been proven as against Mr Vaysman. On 7 and 18 June 2010, his Honour heard submissions as to penalties and other orders as against him. On 24 June 2010 Tracey J published his final reasons (“Judgment 8”), fixing penalties and making other orders. Besanko J has set out the penalties imposed.
7 There are a number of unusual features about this case. They include:
that the Court effectively revived proceedings for contempt after those proceedings had been discontinued;
that Mr Vaysman had, prior to his being sentenced for contempt, been ordered to pay substantial amounts by way of compensatory damages and additional damages in connection with at least some of the conduct which was the subject of the contempt proceedings;
the possible perception that, at least to some extent, the applicant has been imprisoned because he became bankrupt, not having satisfied the awards of damages.
possible concerns about “double jeopardy”; and
the significant delay in dealing with the proceedings for contempt.
Many, perhaps all of these features may tend to undermine public confidence in the administration of justice. The revival of the 2003 proceedings and the overall delay were, in fact, the result of Mr Vaysman’s persistence in refusing to comply with the Court’s orders and undertakings given to the Court. The delay was further extended by Mr Vaysman’s conduct of the proceedings, coupled with his departure from the country. I need say nothing more about these matters. In the reasons which follow I shall try to deal with the other matters of concern to which I have referred.
the purpose of contempt proceedings
8 Where contempt takes the form of disobedience to a court order, the cases establish that punishment may serve a number of distinct purposes. In Australian Consolidated Press Ltd v Morgan (1964-1965) 112 CLR 483 at 488 – 9, Barwick CJ identified such purposes as at least including compensation to the party in whose favour the order was made, coercion to secure future compliance with the order and demonstration of the Court’s disapproval of the disobedience. In Australasian Meat Industry Employees’ Union v Mudginberri Station Pty Ltd (1986) 161 CLR 98 the majority said at 106:
Punishment for contempt serves two functions: (a) enforcement of the process and orders of the Court, disobedience to which has been described as “civil contempt”, and (b) punishment of other acts which impede the administration of justice, such as obstructing proceedings in court while it is sitting or publishing comments on a pending case, which have both been described as “criminal contempt” ... As Lord Diplock said … criminal contempts “… all share a common characteristic: they involve an interference with the due administration of justice either in a particular case or more generally as a continuing process.”
… The principal theoretical basis of the distinction is that disobedience to the process and orders of the court in civil proceedings is said to be a civil wrong, a matter between party and party, enforcement being for the private benefit or interest of the party seeking enforcement, whereas impeding the administration of justice is a public wrong. A secondary basis for the distinction is that the main purpose of sanctions for disobedience in civil proceedings is coercive rather than punitive … .
At 107 their Honours continued:
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. Although the primary purpose in committing a defendant who disobeys an injunction is to enforce the injunction for the benefit of the plaintiff, another purpose is to protect the effective administrative of justice by demonstrating that the court’s orders will be enforced.
After referring to a number of areas in which the distinction between civil and criminal contempt had been observed, their Honours said at 108:
A rather similar notion lies behind the cases in which disobedience to an order which is wilful or contumacious amounts to criminal contempt … . The point in these cases is that wilful disobedience to a court’s order, especially if it occurs in circumstances where the conduct amounts to public defiance, involves a public injury and this calls into play a penal or disciplinary jurisdiction to deal with criminal contempt … .
Their Honours continued at 108 - 09:
… 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 is both complex and artificial. Salmon LJ was right when he said … , speaking with reference to the enforcement of an injunction generally, that “[t]he two objectives are, in my view, inextricably intermixed”. When the defendant’s disobedience is casual it may readily appear that the primary purpose of exercising the power is to vindicate the plaintiff’s rights. On the other hand, when the disobedience is accompanied by public defiance it may as readily be seen that the primary purpose of exercising the power is vindication of the court’s authority. But the classification in terms of primary purpose is a more complex and artificial undertaking when the punishment is for wilful disobedience unaccompanied by defiance. There is, accordingly, much to be said for the view that all contempts should be punished as if they are quasi-criminal in character, notwithstanding the adoption of the contrary view by some members of this Court in the decisions to which we have already referred.
9 The High Court again considered the matter in Witham v Holloway (1995) 183 CLR 525. After referring to the decisions in Australian Consolidated Press and in Mudginberri the majority said at 531:
The basis of the distinction between civil and criminal contempt is said to lie in the difference between proceedings which are remedial or coercive in the interest of the private individual and proceedings in the public interest to vindicate judicial authority or maintain the integrity of the judicial process… . Thus, in [Australian Consolidated Press], Windeyer J described proceedings for civil contempt as being “used primarily to compel obedience rather than to punish disobedience” … .
Their Honours continued at 532 – 3:
One problem is that there is not a true dichotomy between proceedings in the public interest and proceedings in the interest of the individual. Even when proceedings are taken by the individual to secure the benefit of an order or undertaking that has not been complied with, there is also a public interest aspect in the sense that the proceedings also vindicate the court’s authority. Moreover, the public interest in the administration of justice requires compliance with all orders and undertakings, whether or not compliance also serves individual or private interests.
Nor can the dichotomy between proceedings in the public interest and proceedings in the interest of the individual be maintained on the basis that some cases involve an interference with the administration of justice and others merely involve an interference with individual rights. All orders, whether they be Mareva injunctions, injunctions relating to the subject matter of the suit, or simply, procedural orders, are made in the interests of justice. Non-compliance necessarily constitutes an interference with the administration of justice even if the position can be remedied as between the parties.
Moreover, there is considerable difficulty with the notion that, in some cases, the purpose or object of the proceedings is punitive and, in others, the purpose or object is remedial or coercive. It should at once be noted that the purpose of the proceedings is not the same as the purpose or object of the individual bringing the proceedings and it is well recognised that, notwithstanding that proceedings are brought by an individual to secure the benefit of an order or undertaking, a “penal or disciplinary jurisdiction” … may also be called into play. It has been held that the “penal or disciplinary” jurisdiction may be exercised even when the parties have settled their differences and do not wish to proceed further. Thus in Canadian Transport v Alsbury … , Sidney-Smith JA rejected the submission that settlement precluded further proceedings saying … :
“Are we to hold that after a party has defied a court, the court can still do nothing because the other party is willing to swallow the contempt? Nothing short of the clearest authority would convince me that that is the law; and there is no such authority and no such law.”
And as already indicated, proceedings for breach of an order or undertaking have the effect of vindicating judicial authority as well as a remedial or coercive effect. Indeed, if the person in breach refuses to remedy the position, as is not unknown … , their only effect will be the vindication of judicial authority. Given that purpose or object cannot readily be disentangled from the effect and given, also, that a penal or disciplinary jurisdiction may be called into play in proceedings alleging breach of an order or undertaking, it is necessary to acknowledge, as it was in Mudginberri … , that punitive and remedial objects are, in the words of Salmon LJ “inextricably intermixed … .
PUBLIC AND PRIVATE INTERESTS
10 The distinction between “public” and “private” interests in contempt proceedings poses a question as to the entitlement to, and/or the responsibility for commencing and prosecuting such proceedings. Logically, proceedings brought to coerce compliance, or to compensate for injury suffered as the result of conduct in breach of an order or undertaking, should be brought by the affected party. On the other hand, proceedings brought to uphold the integrity of the administration of justice ought be commenced and prosecuted by the relevant court or by some public officeholder. However, as appears from the majority’s reasons in Witham, proceedings may be commenced in order to vindicate a private interest, which purpose may be achieved by agreement between the parties. In such cases vindication of the public interest may only be achieved by continuation of the proceedings. Barwick CJ said in Australian Consolidated Press at 489:
A contempt in procedure by disobedience of an order of the Court or by breach of an undertaking given to it may be accompanied by such contumacy or defiance on the part of the party against whom the contempt proceedings are brought as evidences a criminal as well as a civil contempt. There is no reason in such a case why the same proceedings taken at the instance of the aggrieved suitor may not result in orders which are coercive of compliance with the Court’s order or of an undertaking given to it and at the same time punitive of the criminal contempt: but this is not such a case.
The distinction between the public and private aspects of contempt proceedings may cause problems where such proceedings arise in the context of ongoing litigation. Concerning that matter Barwick CJ said at 489 - 90:
I would not wish to say that it is never appropriate to hear and to determine before the hearing of a suit a motion for an order for committal or sequestration for contempt by breach of an order or of an undertaking where it is necessary in order to determine the matter to decide one or more of the major issues arising in the suit. Circumstances may arise in which this must be done if the plaintiff’s rights, or the public interest in the maintenance of the Court’s own prestige, are to be safeguarded. But, in my opinion, those circumstances must be somewhat special. In the ordinary course, the Court ought not, in my opinion, to attempt to resolve in the proceedings for contempt the question or questions which is or are to be litigated before it, no doubt at greater length and with greater attention to detail, at the hearing of the suit. The proper course, except in special circumstances, in my opinion, in such a case is for the Court to adjourn the contempt proceedings which cannot be determined without resolving a major question in the suit until the hearing of the suit itself.
11 Thus it seems that the public interest may not necessarily dictate the immediate resolution of the contempt proceedings, where such resolution will involve the resolution of substantial issues which arise in the substantive litigation in which the alleged contempt has occurred. Nonetheless, given the criminal nature of contempt proceedings, and the wider public interest to be served by such proceedings, it will generally be inappropriate that their resolution, and the accompanying defence of the integrity of the administration of justice be unduly delayed by the narrower, private interests of the parties.
12 Another consideration in connection with the distinction between proceedings brought to vindicate individual rights and proceedings brought to vindicate the administration of justice was identified by Wells J in Adriatic Terrazzo & Foundations Pty Ltd v Robinson & Ors (1972) 4 SASR 294. His Honour observed at 296 - 97:
Where, however, the proceedings are more of a civil character, and are commenced in aid of a private person’s rights as a party to a particular cause, then it seems to me quite clear, and it has been long established in authority, that it is not the practice of Her Majesty or Her Majesty’s representative, to interfere in any order for committal that may be made.
His Honour was there referring to the possibility of intervention by way of exercise of the prerogative of mercy.
13 The previous distinction between civil and criminal contempt was, to some extent, the product of the different interests to be served by contempt proceedings – vindication of individual rights and defence of the integrity of the administration of justice. As I have observed, in the case of disobedience to a court order, it may generally be appropriate that enforcement proceedings be initiated and conducted by the party in whose favour the order was made. However the House of Lords, in Attorney-General v Times Newspaper Ltd [1974] AC 273 at 293 G – H, 311 D – F, 321D and 326E – F, held that the Attorney-General might bring proceedings for contempt arising in private litigation, in order to protect the public interest in the administration of justice .
14 In Australian Design Council v Borello (1989) 17 IPR 389, French J (as his Honour then was) imposed a fine upon a contemnor where the other party to the litigation had initially commenced proceedings for contempt but did not make submissions in support of the imposition of a fine. At 395 - 6 his Honour said:
It has been said that the underlying rationale of the contempt power is the necessity to protect the effective administration of justice and that there is a public interest in the exercise of that power in the case of disobedience to an order. On the other hand, it is also said that no public interest is served by punishing the offender if the only person for whose benefit the order was made chooses not to insist on its enforcement. …
The present case, however, is not simply a private dispute. There is a clear and obvious public interest in maintaining honesty in advertising at all times and in particular, so far as it relates to the endorsement or approval of an independent body such as the Australian Design Council. In my opinion, therefore, a fine should be imposed to underline the importance of prompt compliance with the orders of the court and the public interest element in this case.
THE RISK OF DOUBLE PUNISHMENT
15 I have discussed these matters at length in order to demonstrate the purposes which must be kept in mind in imposing a penalty for contempt of court, and the complications caused by overlapping private and public interests. The distinction between private and public interests may arise where, as here, the offended private party has, in effect, obtained relief quite apart from the contempt proceedings. Such relief may have the effect of compensating that party for any loss. It may also satisfy its desire to coerce the contemnor into future compliance with the order. Further, if the relief takes some public form, such as a court order, it may also serve the public interest which is usually upheld by contempt proceedings. However it does not follow that the innocent party’s agreement as to the disposition of contempt proceedings will always satisfy the relevant public interest in those proceedings. Nonetheless there may be a risk that any subsequent proceedings to protect that interest will, or will appear to constitute double punishment, a situation which has long been held in disfavour by the courts.
16 In Gray v Motor Accident Commission (1998) 196 CLR 1, the High Court considered the availability of exemplary damages where the wrongdoer had previously been subjected to criminal sanctions for substantially the same conduct. At [40] - [44] their Honours said:
40. Where, as here, the criminal law has been brought to bear upon the wrongdoer and substantial punishment inflicted, we consider that exemplary damages may not be awarded. We say “may not” because we consider that the infliction of substantial punishment for what is substantially the same conduct as the conduct which is the subject of the civil proceeding is a bar to the award; the decision is not one that is reached as a matter of discretion dependent upon the facts and circumstances in each particular case.
41. There are at least two reasons in principle why that is so.
42. First, the purposes for the awarding of exemplary damages have been wholly met if substantial punishment is exacted by the criminal law. The offender is punished; others are deterred. There is, then, no occasion for their award.
43. Secondly, considerations of double punishment would otherwise arise. In R v Hoar … , Gibbs CJ, Mason, Aickin and Brennan JJ said that there is a “practice, if not a rule of law, that a person should not be twice punished for what is substantially the same act” … . That practice or rule would be breached by an award of exemplary damages in the circumstances described.
44. Because, in this case, substantial punishment was imposed on the tortfeasor for the conduct which was an issue in the civil proceedings, it is not necessary to decide whether the bar arises only where the punishment is “substantial” or how close must be the similarity between the conduct that is the subject of the two proceedings.
17 At [48] the majority recognised the problem posed where civil proceedings were to be resolved notwithstanding the possibility or probability of future criminal proceedings arising out of the same conduct. However their Honours did not otherwise deal with that problem. See also the decision of the Court of Appeal in Harris v Digital Pulse Pty Ltd (2003) 56 NSWLR 298.
18 Not infrequently the conduct which comprises contempt will involve other legal liability, leading to there being more than one basis upon which such conduct is impugned and possibly, more than one set of proceedings. Such a problem was, to some extent addressed in England by the Court of Appeal in Hale v Tanner [2000] 1 WLR 2377 at 2381 where Hale LJ said:
In many cases the court will have to bear in mind that there are concurrent proceedings in another court based on either the same facts, or some of the same facts, which are before the court on the contempt proceedings. The court cannot ignore those parallel proceedings. It may have to take into account their outcome in considering what the practical effect is upon the contempt proceedings. They do have different purposes and often the overlap is not exact, but nevertheless the court will not want, in effect, the contemnor to suffer punishment twice for the same events.
19 In Slade v Slade [2010] 1 WLR 1262 the Court of Appeal again considered the matter. At [17] Wilson LJ adopted the remarks of Hale LJ in Hale v Tanner. His Lordship then addressed three other earlier decisions in which the question had been considered, concluding at [21]:
… the second court should not so much reflect “the prior sentence” in its judgment as decline to sentence for such of the conduct as has already been the subject of punishment in the criminal court. It follows that, even if a civil judge were to regard the punishment given by the criminal court for certain conduct as too lenient, it would be improper for him to use his power of committal in respect of that selfsame conduct in order to top up the punishment to what he regards as a proper level. What he must do is sentence for such conduct as was not the subject of the criminal proceedings.
20 In Slade, at [34]-[38] Wall LJ identified three “guiding principles” flowing from the decision in Hale v Tanner as follows:
• … the court is not sentencing for the criminal equivalent of what the contemnor has done. … “Great care must be taken, if there are concurrent criminal or civil proceedings, to ensure that sentences in two or more courts do not punish twice for the same thing.
As Hale LJ pointed out in Hale v Tanner … , it needs always to be remembered that the court is sentencing in order both to demonstrate its disapproval for the fact that the contemnor has breached its order, and to ensure future compliance.
• … the court should know – indeed should have as much information as possible – about the parties and any concurrent criminal proceedings relating to the same or similar facts.
• … sentences for contempt should not be “manifestly discrepant” with sentences passed in criminal proceedings for comparable offences.
21 His Lordship considered that these principles were all “sub-divisions of the principle of proportionality”.
ADDITIONAL DAMAGES, EXEMPLARY DAMAGES AND AGGRAVATED DAMAGES
22 In Gray, the High Court was concerned with prior criminal proceedings and a subsequent application for the award of exemplary damages. In the English cases to which I have referred, the Court of Appeal was dealing with contempt proceedings and other criminal proceedings. Presently, I am considering the relevance of an award of additional damages (pursuant to the Copyright Act 1968 (Cth) (the “Copyright Act”)) to the penalty to be imposed subsequently for conduct in contempt of court, such conduct comprising at least some of the conduct in respect of which the additional damages were awarded. The present position differs from that in Gray in two respects:
in Gray, the award which was sought was of exemplary damages whilst here, the award was of additional damages; and
in Gray, the criminal penalty was imposed before the question of damages was considered whilst here, the award of damages occurred before the penalty for contempt was considered.
The first distinction must be considered, having regard to the nature of additional damages under the Copyright Act, and the nature of exemplary damages as explained in the cases. The second distinction may involve an examination of the general policy against double punishment, the extent to which additional damages punish breaches of the Copyright Act, and the extent to which, in this case, there is any overlap between the punishment effected by the award of additional damages and the punishment for contempt. The last-mentioned issue may involve a consideration of conflicting public interests in avoiding double punishment and upholding the integrity of the administration of justice. Although the majority in Gray considered that the prior criminal punishment was a bar to the award of exemplary damages, there appears to be no clear authority for the proposition that a prior award of additional (or exemplary) damages will bar later punishment for contempt arising out of substantially the same conduct.
23 Section 115 of the Copyright Act relevantly provides:
…
(2) Subject to this Act, the relief that a court may grant in an action for an infringement of copyright includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits.
(3) …
(4) Where, in an action under this section:
(a) an infringement of copyright is established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i) the flagrancy of the infringement; and
(ia) the need to deter similar infringements of copyright; and
(ib) the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and
(ii) whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analogue form into a digital or other electronic machine-readable form; and
(iii) any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv) all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
24 In Facton Ltd v Rifai Fashions Pty Ltd (2012) 199 FCR 569, Lander and Gordon JJ said at [33]:
As we have already said, s 115(2) damages are designed to be purely compensatory. Section 115(4) damages must be damages other than compensatory damages. The damages contemplated in s 115(4) are of a punitive kind. Damages are only awarded under s 115(4) where, after an infringement of copyright is established, the Court is satisfied of the relevant matters in s 115(4)(b). Those matters are of a kind which are taken into account in determining whether a party is entitled to aggravated or exemplary damages at common law.
25 As to the difference between aggravated and exemplary damages, their Honours referred to the following statement by Windeyer J in Uren v John Fairfax & Sons Pty Ltd (1966) 117 CLR 118 at 149:
The formal distinction is, I take it, that aggravated damages are given to compensate the plaintiff when the harm done to him by a wrongful act was aggravated by the manner in which the act was done: exemplary damages, on the other hand, are intended to punish the defendant, and presumably to serve one or more of the objects of punishment – moral retribution or deterrence.
26 However, in Gray, at [15] the majority, also referring to Uren said:
In considering whether to award exemplary damages, the first, if not the principal, focus of the inquiry is upon the wrongdoer, not upon the party who was wronged. (The reaction of the party who is wronged to high-handed or deliberate conduct may well be a reason for awarding aggravated damages in further compensation for the wrong done. But it is not ordinarily relevant to whether exemplary damages should be allowed.) The party wronged is entitled to whatever compensatory damages the law allows (including, if appropriate, aggravated damages). By hypothesis then, the party wronged will receive just compensation for the wrong that is suffered. If exemplary damages are awarded, they will be paid in addition to compensatory damages and, in that sense, will be a windfall in the hands of the party who was wronged. Nevertheless, they are awarded at the suit of that party and, although awarded to punish the wrongdoer and deter others from like conduct, they are not exacted by the State or paid to it.
27 In this passage, the High Court treats aggravated damages as compensating the wronged party for the “reaction of [that] party … to high-handed or deliberate conduct”. At [100] Kirby J drew attention to the risk of “double counting” where damages other than compensatory damages are awarded and said at [101]:
Aggravated damages are given for conduct which shocks the plaintiff and hurts his or her feelings. Exemplary damages are awarded for conduct which shocks the tribunal of fact, representing the community … .
28 There are two apparent inconsistencies between the approach taken by Lander and Gordon JJ in Facton and that taken by the majority in Gray. First, in Facton their Honours seem to have said (at [35]) that aggravated damages are attracted by the manner in which the relevant infringement occurs. In Gray, the majority (and Kirby J) considered that aggravated damages were attracted by the impugned party’s reaction to the offender’s conduct. This distinction leads to the second point of distinction. Lander and Gordon JJ identified aggravated damages as “punitive”, whilst the majority in Gray characterized them as “compensatory”.
29 These discrepancies are only presently relevant because in Gray, the majority seem to have considered that exemplary, but not aggravated damages are punitive in nature so that the award of exemplary damages, but not aggravated damages, might raise the possibility of double punishment. Thus, to the extent that the award of additional damages against Mr Vaysman involved damages otherwise properly characterized as aggravated (and therefore compensatory), the imposition of any subsequent penalty for contempt would not constitute double punishment.
30 One must accept that in this case, the award of additional damages reflected the matters identified in s 115(4) of the Copyright Act. None of the matters mentioned in ss 115(4)(b)(i) – (iii) seems to involve the effect on Deckers of Mr Vaysman’s conduct. Rather, they appear to be circumstances of aggravation which might be taken into account in imposing punitive measures. The reference in s 115(4)(b)(iv) to “other relevant matters” may be wide enough to include considerations which would, in connection with other causes of action, justify an award of aggravated damages. That provision may have been the basis of the view expressed by Lander and Gordon JJ in Facton that damages contemplated by s 115(4) included damages which might otherwise have been characterized as “aggravated”. Nonetheless, in this case, it is difficult to see how a corporation could be so affected by Mr Vaysman’s conduct as to lead to such an award, particularly having regard to the substantial award of compensatory damages, and the need to avoid double counting. I should add, however, that there is authority (other than Facton) which establishes that damages which would otherwise be characterized as “aggravated” may be awarded pursuant to s 115(4). See Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 157 FCR 442 at [114] and Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 at [42].
31 Nonetheless, in the present case, the better view is that the award of additional damages was for the purpose of punishing Mr Vaysman, and deterring him and others from conduct in breach of the Copyright Act. The substantial award of additional damages suggests to me that the copyright infringements were treated as the major cause of Deckers’ loss, although I confess that this view may be intuitive rather than strictly logical.
THE PRIMARY JUDGE’S REASONS
32 At [7] – [8] in Judgment 8, Tracey J recognized that imposition of a penalty for contempt might protect both the injured party and the administration of justice, and then listed numerous relevant considerations as follows:
• the contemnor's personal circumstances;
• the nature and circumstances of the contempt;
• the effect of the contempt on the administration of justice;
• the contemnor's culpability;
• the need to deter the contemnor and others from repeating contempt;
• the absence or presence of a prior conviction for contempt;
• the contemnor's financial means;
• whether the contemnor has demonstrated genuine contrition and made a full and ample apology;
• whether the conduct falls within the most serious category of criminal contempt cases such as to warrant the imposition of a term of imprisonment; and
• whether or not imprisonment is a “last resort” penalty in the circumstances of the case.
33 His Honour then identified the ten offences and observed that Mr Vaysman had been in overall control of a “significant commercial operation”. His Honour noted that, in the course of the various proceedings, Mr Vaysman had, on numerous occasions, consented to restraining orders and then ignored them. His Honour also noted the relatively large amounts of money involved, and Mr Vaysman’s dishonest attempts to conceal the extent of his activities. Tracey J then referred to Mr Vaysman’s failure to participate in the contempt proceedings. In this regard his Honour’s observation may not be entirely correct. I understand from Judgment 6 at [35] that on 8, 9 and 10 April 2008, Mr Vaysman appeared by counsel, but not thereafter. It may be that on those days Mr Vaysman did not attend in person, and that his Honour was referring to that fact. In any event, Mr Vaysman takes no point in this regard. His Honour also noted the absence of any explanation, acknowledgment of wrongdoing, apology or other evidence of contrition. Tracey J considered that Mr Vaysman had “treated the curial process with disdain”. His Honour also referred to the order that Mr Vaysman pay to Deckers the sum of $150,000, the subsequent awards of general and additional damages and his bankruptcy and inferred that Mr Vaysman would not be able to pay any fine imposed in the contempt proceedings. His Honour then observed at [18]:
This is one of the worst cases of contempt to have come before the Court. Mr Vaysman has deliberately and repeatedly contravened undertakings given by him to the Court and orders of the Court over a four year period. The need for both personal and general deterrence ranks highly in the sentencing process. Not only have the Applicant’s rights been seriously infringed, the authority of the Court has been severely undermined. Mr Vaysman’s conduct falls within the most serious category of criminal contempt cases. Although a sentence of imprisonment is a last resort, nothing less would be appropriate in the circumstances of the present case.
34 Tracey J then identified count 18 as being the most serious and, in respect of it, sentenced Mr Vaysman to three years’ imprisonment. On the other counts, he imposed periods of imprisonment of between seven days and six months, all sentences to be served concurrently.
PROPOSED GROUNDS OF APPEAL
35 Apart from grounds 1, 5 and 6 of the draft notice of appeal, I agree with the conclusions reached by Besanko J and with his Honour’s reasons. Proposed grounds 1, 5 and 6 are as follows:
1. In sentencing the appellant on the contempt charges, the learned sentencing judge failed to take into account the earlier award of additional damages made pursuant to s.115(4) of the Copyright Act 1968 (Cth) thereby doubly punishing the appellant.
5. The individual sentences and the total effective sentence are manifestly excessive.
6. The Learned Sentencing Judge erred in finding that the contempt is one of the worst to come before the Court.
36 Mr Vaysman seeks to appeal against the exercise of a discretion. Such an appeal must be determined in accordance with the settled principles established by the High Court in House v The King (1936) 55 CLR 499. In that decision Dixon, Evatt and McTiernan JJ said at 504 - 5:
But the judgment complained of, namely, sentence to a term of imprisonment, depends upon the exercise of a judicial discretion by the court imposing it. The manner in which an appeal against an exercise of discretion should be determined is governed by established principles. It is not enough that the judges composing the appellate court consider that, if they had been in the position of the primary judge, they would have taken a different course. It must appear that some error has been made in exercising the discretion. If the judge acts upon a wrong principle, if he allows extraneous or irrelevant matters to guide or affect him, if he mistakes the facts, if he does not take into account some material consideration, then his determination should be reviewed and the appellate court may exercise its own discretion in substitution for his if it has the materials for doing so. It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is unreasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred.
Proposed Ground 1
37 As to proposed ground 1, Mr Vaysman effectively submits that Tracey J failed adequately to recognize the award of additional damages as a punishment for a substantial part of the conduct which also comprised the alleged acts of contempt. His Honour certainly referred to the award. However it seems that Tracey J addressed the matter in connection with Mr Vaysman’s capacity to pay a fine, rather than in recognizing the possibility of double punishment. No doubt such oversight was largely the result of the absence of any submissions made on Mr Vaysman’s behalf.
38 I do not consider that Mr Vaysman’s bankruptcy necessarily deprives the award of additional damages of its punitive nature. One cannot simply infer that it led to no loss of property or damaging limitations upon Mr Vaysman’s capacity to carry on legitimate business on his own account. I do not mean to express sympathy for his plight, but rather to acknowledge that the consequences of bankruptcy are not inconsiderable. An award of damages which leads to bankruptcy may be as much a deterrent as an award which is paid. Further, at least as concerns Deckers’ interests in the contempt proceedings, it might well be said that it chose to proceed by way of civil remedy, and that Mr Vaysman’s bankruptcy cannot have been a surprise.
Proposed Ground 5
39 As I have concluded that the primary Judge failed to take account of a relevant consideration, I shall have to consider the sentences which should be passed. In so doing, I may make some comments concerning the appropriateness of the sentences imposed by Tracey J. However I need not, at this stage consider whether they were so excessive as to bespeak a miscarriage of the sentencing discretion.
Proposed Ground 6
40 In the course of argument counsel for Mr Vaysman all but abandoned this ground. It appears to have been based on certain observations made by two members of this Court in an appeal against sentence by one of Mr Vaysman’s co-respondents in the substantive proceedings. In Josef Vaysman v Deckers Outdoor Corporation Inc [2011] FCAFC 17, the Court allowed an appeal against sentence. At [51], Gray J appears to have considered that the orders with which the appellant had not complied “had none of the element of public benefit found in Siminton or of public protection in either of the Reid cases.” The two cases referred to involved disobedience to injunctive relief granted on the application of statutory regulators. At [189] Bromberg J observed that a case involving disobedience to an injunction restraining “racial offence … raised the public interest in a manner that the appellant’s conduct does not.” With all respect to their Honours, such an approach, if taken at face value, seems completely to disregard the substantial public interest in maintenance of confidence in the administration of justice. Further, again if taken at face value, these remarks would suggest that the public has no interest in the statutory and common law regimes established to protect consumers against misleading or deceptive conduct, and to protect copyright and trademarks.
41 In my view Mr Vaysman’s conduct amounted to a very serious contempt. I have little difficulty with the primary Judge’s view that this is one of the worst cases to have come before the Court. However it is not necessary that I speculate about worse cases or worst possible cases. If such conduct were to become common, then the Court would have failed in its mission which, as with all courts, is to resolve disputes justly and according to law, thus avoiding the alternative to such resolution which is self-help. That way anarchy lies.
42 Although his Honour did not expressly describe Mr Vaysman’s contempt as being contumacious, it is clear that he so considered it. The contempt continued over four years. Thereafter, Mr Vaysman did little or nothing which might demonstrate remorse for, or even insight into his misconduct. It is difficult to avoid the conclusion that he left the country for the purpose of avoiding the consequences of his actions, perhaps hoping that all would be forgotten. However the law has a long memory.
43 It is also difficult to avoid the conclusion that his conduct in the various proceedings was designed to deal with the inconvenience of judicial proceedings. He must have thought that Deckers would simply give up on achieving its purpose through such proceedings. If persons in business and the public believe that international corporations can be induced to abandon the judicial system, then people like Mr Vaysman will treat with disdain private citizens who seek to enforce their rights through the courts.
44 In my view Mr Vaysman’s conduct constituted a serious and sustained attack upon the legitimacy of the administration of justice in this country. Such conduct called for condign punishment.
PENALTIES
45 I should first deal with Mr Vaysman’s submission that the sentence imposed was manifestly excessive. Effectively, the submission is based upon two propositions: first, that the Court should be guided by earlier sentences; and second, that a consideration of such sentences indicates that the period of imprisonment in this case should have been substantially less than three years. The starting point for this argument is said to be the decision of the High Court in Hili v The Queen (2010) 242 CLR 520 at [54] – [55] where the majority said:
54. In Director of Public Prosecutions (Cth) v De La Rosa … , Simpson J accurately identified the proper use of information about sentences that have been passed in other cases. As her Honour pointed out … , a history of sentencing can establish a range of sentences that have in fact been imposed. That history does not establish that the range is the correct range, or that the upper or lower limits to the range are the correct upper and lower limits. As her Honour said … : “Sentencing patterns are, of course, of considerable significance in that they result from the application of the accumulated experience and wisdom of first instance judges and of appellate courts.” But the range of sentences that have been imposed in the past does not fix “the boundaries within which future judges must, or even ought, to sentence” … . Past sentences “are no more than historical statements of what has happened in the past. They can, and should, provide guidance to sentencing judges, and to appellate courts, and stand as a yardstick against which to examine a proposed sentence” … (emphasis added). When considering past sentences, “it is only by examination of the whole of the circumstances that have given rise to the sentence that ‘unifying principles’ may be discerned” … .
55. As the plurality said in Wong … :
“[R]ecording what sentences have been imposed in other cases is useful if, but only if, it is accompanied by an articulation of what are to be seen as the unifying principles which those disparate sentences may reveal. The production of bare statistics about sentences that have been passed tells the judge who is about to pass sentence on an offender very little that is useful if the sentencing judge is not also told why those sentences were fixed as they were.”
Their Honours also said at [59] – [60]:
59. As was said in Dinsdale v The Queen … , “[m]anifest inadequacy of sentence, like manifest excess, is a conclusion”. And, as the plurality pointed out … in Wong, appellate intervention on the ground that a sentence is manifestly excessive or manifestly inadequate “is not justified simply because the result arrived at below is markedly different from other sentences that have been imposed in other cases”. Rather, as the plurality went on to say … in Wong, “[i]ntervention is warranted only where the difference is such that, in all the circumstances, the appellate court concludes that there must have been some misapplication of principle, even though where and how is not apparent from the statement of reasons”. But, by its very nature, that is a conclusion that does not admit of lengthy exposition. And, in the present matters, the Court of Criminal Appeal, having described the circumstances of the offending and the personal circumstances of the offenders, said … that “the sentence imposed in these matters is so far outside the range of sentences available that there must have been error”.
60. The Court of Criminal Appeal also said … that “manifest error is fundamentally intuitive”. That is not right. No doubt, as the Court went on to say … , manifest error “arises because the sentence imposed is out of the range of sentences that could have been imposed and therefore there must have been error, even though it is impossible to identify it”. But what reveals manifest excess, or inadequacy, of sentence is consideration of all of the matters that are relevant to fixing the sentence. The references made by the Court of Criminal Appeal to the circumstances of the offending and the personal circumstances of each offender were, therefore, important elements in the reasons of the Court of Criminal Appeal.
Heydon J dealt with this issue in rather more detail at [77] – [79] as follows:
77. Sentences must be reasonably consistent. But it does not follow that disparities between them may not exist. Within the boundaries of reason, and leaving aside the special instance of co-offenders, where marked disparity renders sentences vulnerable on appeal … , it cannot be said that any particular disparate sentence is necessarily wrong merely because it is disparate. Indeed, even within a single jurisdiction, one court, while bound by whatever this Court or the intermediate appellate court for that jurisdiction has held to be the correct legal principles (statutory or common law), may arrive at sentencing results in particular cases which are different from those reached by earlier courts in that jurisdiction without being open to appellate reversal or criticism for “error” merely because of those differences.
78. Thus two courts may arrive at different sentences because the later court considers the first to have erred, not in relation to the identification of legal principle, but in relation to factual reasoning or in relation to the exercise of discretionary judgment. It is open to a later court (whether an intermediate appellate court or a trial court) to depart from the sentencing conclusion of an earlier intermediate appellate court or trial court even though the circumstances seem indistinguishable. It is open for the later court to do this simply because the later court thinks that the earlier court erred in fact: in that event the circumstances become distinguishable. It is also open for the later court to do this merely because it thinks the earlier court erred in the exercise of discretionary judgment – that is, arrived at a sentence which the later court, accepting the correctness of the legal principles stated, the facts found and the considerations taken or not taken into account by the earlier court, considers nonetheless to be too high or too low. The later court's liberty to differ from the sentencing conclusion reached by the earlier court does not exist only where it thinks the earlier court to be plainly wrong. It exists where the later court thinks the earlier court's conclusion to be merely wrong. Indeed it exists even where the later court does not think the earlier court's conclusion to be “wrong”, but just disagrees with it. The liberty of the later court continues even if more than one earlier court has reached a conclusion with which the later court disagrees. Even after a court carrying out the difficult obligation of sentencing has identified the correct legal principles, found the facts correctly, taken into account all relevant considerations and excluded all irrelevant considerations, the court is left with a field in which to exercise a discretionary judgment. It is no doubt right for a sentencing court to examine what has happened in cases similar to the one under consideration. And it is no doubt reasonable for a sentencing court to behave with humility in reading the opinions of other judges in earlier cases who may be abler, better qualified, more learned, or more experienced. But in exercising its discretionary judgment, the primary duty of a sentencing court is to be true to its own perception of what degree of severity or leniency is appropriate.
79. If the position were otherwise, a later court would be compelled to impose sentences on offenders which it thought to be too harsh or too lenient merely because earlier courts had followed that path, even though the question whether a sentence should be heavy or light is not a question of law. This would be a novel application of the doctrine of precedent. For a “sentence itself gives rise to no binding precedent. What may give rise to precedent is a statement of principles which affect how the sentencing discretion should be exercised” … .
46 At the sentencing hearing, counsel for Deckers provided Tracey J with a schedule containing 25 cases. However very few of them involved sustained contempt over a lengthy period, which is the most troubling feature of Mr Vaysman’s conduct. Many of the cases involved failure to take action in accordance with a court order rather than involvement in conduct which was proscribed by a relevant order. To act is not necessarily more serious than to fail to act, but action frequently bespeaks deliberate defiance, whereas failure to act may only bespeak neglect or insouciance. Of the cases to which Tracey J was referred, the following may offer some assistance.
ASIC v Reid (No 2) [2006] FCA 700;
APRA v Siminton (No 10) [2007] FCA 1814; on appeal Siminton v APRA [2008] FCAFC 90;
ACCC v Levi (No 3) [2008] FCA 1586; and
Jones v Toben (No 2) [2009] FCA 477.
Each involved conduct which was both in contempt and otherwise contrary to statute. Each involved repeated misconduct over a relatively long period of time.
47 The conduct in Reid involved managing a corporation whilst prohibited from doing so by a court order. In 1992, Jenkinson J had ordered that Reid be so prohibited until 10 August 2036. At first blush one might wonder about the utility of such an order, but I assume that the relevant conduct justified it. In June 2006, Lander J dealt with Reid for contempt of that order. It was the third occasion on which he had been dealt with for contempt of the order. In 2002 Kenny J had imposed a fully suspended term of imprisonment for 12 months. His subsequent contempt occurred during the period of suspension. Lander J considered his contempt to be contumelious and sentenced him to imprisonment for nine months. He had already been in prison for a period of between two and three months, so that the effective sentence was one year.
48 A person who manages a corporation whilst disqualified from doing so, commits an offence against the Corporations Act 2001 (Cth) (the “Corporations Act”). In 2003, the maximum penalty prescribed by s 206A of the Corporations Act for that offence was one year’s imprisonment.
49 Reid’s conduct reflected a degree of persistence in offending over some years, but, as far as the evidence went, it occurred in relatively short bursts. That may have been because his conduct was detected and action taken against him. There is no suggestion that others suffered as the result of his conduct. He had previously been imprisoned, probably for serious fraud. The previous suspended sentence imposed by Kenny J was obviously a serious aggravating factor.
50 In Siminton, Tracey J dealt with contempt of interlocutory orders restraining Siminton from operating on certain bank accounts. The principal proceedings appear to have alleged breaches of s 7 of the Banking Act 1959 (Cth). That section forbade any person from carrying on the business of banking without the relevant statutory authority. The interlocutory relief appears to have been designed to protect the subject matter of the proceedings rather than to prevent further breaches of the statute. The relevant breaches occurred over a five month period. Siminton had previously been sentenced to 10 weeks’ imprisonment for similar misconduct. He was, at the time of the contempt, an undischarged bankrupt. Tracey J concluded that Siminton’s conduct was contumacious and aggravated by the fact that he had been previously dealt with for similar contemptuous conduct. His Honour sentenced Siminton to 12 months’ imprisonment. In Siminton v APRA [2008] FCAFC 90, the Full Court upheld the finding of contempt. There appears to have been no appeal against the sentence.
51 In ACCC v Levi (No 3) [2008] FCA 1586 McKerracher J dealt with multiple counts of contempt constituted by conduct in breach of final orders of the Court made in proceedings alleging breaches of ss 51A and 52 of the Trade Practices Act. The conduct in those proceedings involved misleading or deceptive conduct in the sale of businesses. On 28 February 2005, Keifel J made orders, by consent, restraining Levi from seeking to sell businesses other than in certain prescribed circumstances, obviously designed to bring his previous misconduct to the notice of any potential purchaser. In breach of those orders, between 5 March 2005 and 27 May 2005, he advertised six different businesses for sale. Between May 2005 and October 2006 he placed at least 126 advertisements for the sale of businesses. The contempt proceedings were confined to transactions with five people who had responded to his advertisements. Levi had responded to prior warnings from ACCC in a belligerent, aggressive and arrogant way. He subsequently pleaded “guilty” to the contempt charges. It seems that each “purchaser” lost a significant sum of money.
52 Levi had a criminal history for fraud offences and had served a number of periods of imprisonment. On three occasions he sought, unsuccessfully, to delay the hearing of the contempt proceedings. On 30 May 2008, he indicated that he would plead “guilty”. The motion for committal had been filed on 13 June 2007. Levi’s indication of his intention to plead was given 10 days before the scheduled trial date. Until that time he had indicated that he would require all witnesses for cross-examination. The matter was substantially ready for trial. Further, as late as 7 May 2008, Levi was still seeking to sell businesses. He expressed no contrition or remorse and made no reparation.
53 McKerracher J gave “reasonable, not negligible” weight to an apology offered at the hearing, and his “submission to the jurisdiction of the Court”, presumably by his plea. There was psychological evidence which suggested that Levi suffered from depression.
54 ACCC suggested a range of two to three years’ imprisonment. His Honour adopted the lower end of the range as his starting point, and then made deductions to recognize the late plea, Levi’s age and his medical condition. In the result he was sentenced to 10 months’ imprisonment to be released upon his having served four months, the balance being suspended for five years on conditions.
55 The decision in Toben is presently relevant by virtue of the fact that the contemptuous conduct occurred over a period of seven months, and on numerous occasions. Further, the relevant complainant conceded that the public interest in punishment exceeded his personal interest, leaving the question of penalty to the Court. Numerous circumstances of aggravation arose out of Toben’s conduct after the commencement of the contempt proceedings, and in connection with those proceedings.
56 One significant difference between the present case and Toben is that Toben appears to have had no commercial motive. His conduct appears to have been based on a perverse refusal to accept either community standards of behaviour, or the jurisdiction of the Court, at least to the extent that either limited his capacity to advance his plainly silly views. In describing those views as “silly”, I do not mean to detract from the seriousness of his misconduct, either to the extent that it was contrary to the Racial Discrimination Act 1975 (Cth) or in contempt of this Court. Having said that, however, and notwithstanding the offensive nature of his conduct, it is a mark of a liberal democracy that the expression of a wide range of views is tolerated. Where there are statutory limits upon the right to express such views the Court may err on the side of caution in fixing a custodial sentence. It may seek to avoid imposing a sentence which might unduly deter expressions of unpopular opinions. The Court may also seek to avoid any risk that the offender will be seen as a political martyr.
57 In the course of the hearing of the appeal, the Court referred to three more recent cases. The first was the decision of Martin CJ in Corruption and Crime Commission v Allbeury (No 2) [2011] WASC 26. In that decision his Honour dealt with a number of persons for contempt of the Corruption and Crime Commission. Each had refused repeatedly to be sworn or affirmed as a witness. In previous cases sentences of imprisonment for one to two years had been imposed in connection with contempt involving refusal to answer questions. His Honour considered it relevant that the contempt occurred in the context of an investigation into organized crime. Martin CJ considered that the seriousness of the offences dictated that he should commence his consideration of penalty at the upper end of the “range” demonstrated by the cases. His Honour passed sentences ranging from two years to two years and three months.
58 The second case is the decision of Pembroke J in Ronowska v Kus (No 2) [2012] NSWSC 817. In the course of proceedings for equitable compensation, it was ordered that Ronowska pay certain moneys into a solicitor’s trust account, presumably pending the outcome of the proceedings. In breach of that order he disbursed the money and misled the Court in order to conceal such breach. His Honour referred to other cases (including Allbeury) which cases, his Honour considered, indicated imprisonment for a period within the range of six months to two years and three months. His Honour imposed a penalty of 18 months’ imprisonment. In R v Mahir El Kholed [2009] QSC 335 Wilson J imposed a sentence of 14 months’ imprisonment recommending release on parole after two months. The offence was failing to appear in answer to a subpoena in a murder trial. Both the sentence and the non-parole period were reduced to reflect the fact that El Kholed had been on remand for 118 days.
59 In his written submissions counsel suggested that the sentence imposed on Mr Vaysman was three times greater than any earlier sentence for contempt of this Court. If that be so, then the cases to which I have referred suggest that this Court’s punishments are out of step with those in other jurisdictions. If so, then we should take this opportunity to correct the discrepancy.
60 Section 132AD of the Copyright Act provides that a person who manufactures an article in breach of a copyright is, if convicted on indictment, liable to imprisonment for up to five years. The current proceedings are not on indictment, but that matter is irrelevant for present purposes. Quite apart from anything else, contempt of court is not an offence against a law of the Commonwealth for the purposes of s 80 of the Constitution. See Re Colina; ex parte Torney (1999) 200 CLR 386 at [16], per Gleeson CJ and Gummow J, Hayne J concurring. To the extent that it is otherwise appropriate to take into account the maximum sentence for an offence against the Copyright Act, there is no reason to refrain from doing so simply because the relevant offence is to be tried on indictment.
61 As to the relevance of such a penalty to proceedings for contempt, in Slade (supra) Wall LJ considered that in punishing for contempt, a court does not punish for the “criminal equivalent of what the contemnor has done”. However his Lordship also considered that any sentence for contempt should not be “manifestly discrepant” with sentences passed in criminal proceedings for comparable offences. Although one might read these propositions as being mutually inconsistent, it seems unlikely that his Lordship considered them to be so. It seems probable that Wall LJ meant that, although the court was to sentence for contempt rather than any criminal offence involving the same conduct, the criminal penalty might still give some guidance as to the appropriate penalty for the contempt.
62 It may well be difficult, in sentencing for contempt, to justify a sentence longer than the maximum sentence fixed for similar conduct which also breaches some other law. As Martin CJ observed in Allbeury, contempt occurs in the context of court proceedings, or similar proceedings in other tribunals. Some such proceedings are more important to the public than are others. His Honour considered it relevant that the contempt in question occurred in the context of an investigation into organized crime Where, apart from contempt proceedings, the conduct attracts a prescribed penalty, that penalty may indicate Parliament’s view as to the extent of the public interest in preventing the conduct in question. At the very least such a maximum penalty may suggest a maximum level of sentence for contempt, absent special circumstances. As Wall LJ suggested it is a matter of proportionality.
63 Mr Vaysman’s persistent and blatant contempt for Deckers’ rights and the Court’s authority must not be under-estimated. There seems to have been virtually no break in Mr Vaysman’s activities between the resolution of the 2003 proceedings and the end of 2007. His business undertaking was no cottage industry. He maintained both factory and warehouse premises. He set up a distribution network and sought to maintain distribution, notwithstanding the 2007 proceedings. There can be no doubt that his motivation was commercial, as was the scale of his operation. Neither the Court’s orders, nor Decker’s demonstrated determination to protect its intellectual property and common law rights deterred him from pursuing his self-interest. There is also little doubt that large amounts of money flowed into, and out of the business undertaking.
64 His lack of co-operation in the conduct of these proceedings demonstrates an absence of remorse. Even at the hearing of this appeal, only the most perfunctory of apologies was offered through counsel. There can be little doubt that Mr Vaysman left Australia to avoid the consequences of the contempt proceedings, thus extending the duration of Deckers’, and the Court’s involvement in this matter until the present time, more than 10 years after the commencement of the 2003 proceedings.
65 In my view these factors make this contempt much more serious than those which were dealt with in the cases to which I have referred. Were it not for the complication raised by the award of additional damages, I would have upheld the primary Judge’s sentence of three years’ imprisonment. In so doing I would have recognized the apparently higher levels of sentencing in New South Wales, Queensland and Western Australia as compared to those identified in previous decisions of this Court. In both the Queensland case and the Western Australia case, the principal consideration was the public interest in the administration of justice. However neither case involved the blatant persistence in contemptuous conduct and the commercial motivation for such conduct which are evident in this case.
66 Besanko J left the sentences, other than that for count 18, intact, and to be served concurrently with any sentence on that count. I propose to adopt the same approach. Thus the length of the sentence on count 18 will determine the actual period of imprisonment. The primary issue is the extent to which the award of additional damages should be reflected in the sentence on count 18. Mr Vaysman does not submit that such award raises a bar to any further punishment. He submits only that it should be taken into account in fixing any further punishment.
67 It seems likely that some part of the award of additional damages related to copyright infringements which occurred prior to commencement of the 2003 proceedings. Such infringements would not have been in contempt of any order or undertaking. Some aspects of Mr Vaysman’s contemptuous conduct constituted causes of action other than for copyright infringement. The award of additional damages did not relate to those aspects. Punishment for contempt is partly designed to vindicate private interests. In this case, that purpose has, at least in part, been satisfied by the award of additional damages. As I have pointed out, neither the decision in Allbeury nor that in El Kholed involved any significant private interest. In my view the more serious aspects of this case, as compared to Allbeury may reasonably be set off against the need to recognize the punishment inherent in the award of additional damages. On count 18, I would impose a sentence of imprisonment for two years and three months.
EARLY RELEASE
68 As to the question of early release, I am attracted by the observations made by McKerracher J in Levi at [139] – [142]. Much may be achieved in breaking Mr Vaysman’s habit of re-offending if he is offered early release upon condition that he not again infringe any of the relevant orders and undertakings, such conditional release being for a period of five years. As I understand it, he commenced to serve his sentence upon his return to Australia on or about 28 June 2013. In those circumstances, no issue arises as to time spent in custody prior to sentence.
ORDERS
69 I would order that:
time in which to appeal against the orders of Tracey J made on 24 June 2010 be extended until a date seven days after the delivery of these reasons, provided that, in that time, the applicant files a notice of appeal in the form of the draft notice of appeal filed with the application herein;
the appeal be allowed;
the sentence on count 18 be set aside;
in lieu thereof, the applicant be sentenced to a period of imprisonment of two years and three months to be served concurrently with all other sentences imposed by the said orders;
upon the completion of 18 months’ imprisonment, the balance of the sentence be suspended for a period of five years, conditional upon the applicant’s complying, during that period, with all current orders and undertakings made or given in proceedings numbered V1114 of 2003 and V1022 of 2007;
subject to compliance with the said condition, the balance of the sentence be remitted; and
the appeal otherwise be dismissed.
I would receive submissions as to costs.
| I certify that the preceding sixty-nine (69) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. |
Associate:
Dated: 22 May 2014
| IN THE FEDERAL COURT OF AUSTRALIA | |
| VICTORIA DISTRICT REGISTRY | |
| GENERAL DIVISION | VID 835 of 2013 |
| ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
| BETWEEN: | VLADIMIR VAYSMAN Appellant |
| AND: | DECKERS OUTDOOR CORPORATION INC Respondent |
| JUDGES: | DOWSETT, SIOPIS AND BESANKO JJ |
| DATE: | 22 may 2014 |
| PLACE: | Brisbane (via videolink to Melbourne) |
REASONS FOR JUDGMENT
siopis J:
70 I agree with the reasons for judgment of Besanko J and with the orders which he proposes.
| I certify that the preceding one (1) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Siopis. |
Associate:
| IN THE FEDERAL COURT OF AUSTRALIA | |
| VICTORIA DISTRICT REGISTRY | |
| GENERAL DIVISION | VID 835 of 2013 |
| ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA |
| BETWEEN: | VLADIMIR VAYSMAN Appellant |
| AND: | DECKERS OUTDOOR CORPORATION INC Respondent |
| JUDGES: | DOWSETT, SIOPIS AND BESANKO JJ |
| DATE: | 22 MAY 2014 |
| PLACE: | Brisbane (via videolink to Melbourne) |
REASONS FOR JUDGMENT
BESANKO j:
INTRODUCTION
71 This is an application dated 16 August 2013 for an extension of time within which to appeal from orders made by a judge of the Court on 24 June 2010. The application is made over three years after the period of 21 days prescribed in O 52, r 15(1) of the former Federal Court Rules 1979 (Cth) (see also r 36.03 of the Federal Court Rules 2011 (Cth)). The applicant was the fifth respondent to a proceeding commenced in the Victorian District Registry in 2007 (VID 1022 of 2007). He was found guilty of ten charges of contempt of court (Deckers Outdoor Corporation Inc v Farley (No 6) [2010] FCA 391 (“Deckers (No 6)”). He does not seek to appeal against those findings. Subsequent to those findings, the primary judge conducted a hearing on penalty and then made the following orders against the applicant (then the fifth respondent) in relation to the charges:
6. The Fifth Respondent be imprisoned for the following periods:
(a) In respect of Charge 8 – three months;
(b) In respect of Charge 9 – seven days;
(c) In respect of Charge 18 – three years;
(d) In respect of Charge 19 – six months;
(e) In respect of Charge 20 – one month;
(f) In respect of Charge 22 – one month;
(g) In respect of Charge 32 – six months;
(h) In respect of Charge 33 – six months;
(i) In respect of Charge 34 – six months; and
(j) In respect of Charge 48 – one month –
each sentence to be served concurrently with each other sentence.
7. A warrant issue for the committal of the Fifth Respondent to prison for the period of three years.
72 The primary judge delivered detailed reasons for making those orders (Deckers Outdoor Corporation Inc v Farley (No 8) [2010] FCA 657 (“Deckers (No 8)”). The applicant seeks an extension of time within which to appeal against those orders. He submits that the sentencing process miscarried on various grounds and that the effective overall sentence of three years imprisonment was manifestly excessive.
73 The trial of the contempt charges against the applicant and others proceeded over a number of days in April, June and July 2008 and then again in April and May 2009 (Deckers (No 6)). The applicant appeared by counsel on the first three days of the trial, but not thereafter. He did not appear at the penalty hearing in June 2010 (Deckers (No 8)). In fact, the applicant had left Australia in November 2008.
The application for an extension of time
74 Mr Avi Furstenberg is the applicant’s solicitor and a member of the firm, Lewenberg and Lewenberg. He swore two affidavits in support of the applicant’s application for an extension of time. In his first affidavit, Mr Furstenberg said that he was advised by the applicant and verily believed that, at the time of the trial of the contempt charges, he was unable to afford legal representation beyond the first few days. Mr Furstenberg said that he was advised by the applicant that, on or about 28 November 2008, the applicant left Australia and travelled to the Philippines. He was advised by the applicant that he went overseas, initially at least, to investigate a possible business opportunity. He was advised by the applicant that, after some time overseas, he was unable to face his dire financial situation in Australia and was fearful of being imprisoned as a result of the contempt proceeding. He was advised by the applicant that, when in 2010 he learned that he had been sentenced to a term of three years imprisonment in his absence, he was again psychologically unable to face the prospect of a lengthy term of imprisonment and remained overseas. Mr Furstenberg said that he was advised by the applicant and verily believed that life overseas was difficult for the applicant in the absence of his family and those he cared about. Mr Furstenberg was advised by the applicant that he returned to Australia on 28 June 2013. Mr Furstenberg said that prior to that time, he advised the applicant that, should he return to Australia, he would be arrested at Customs on the warrant to imprison him that was issued in 2010, and, from that point, he would commence to serve his sentence. Mr Furstenberg said that he advised the applicant that, upon his return and upon being instructed to do so, an application for leave to appeal against his sentence out of time would be pursued. Mr Furstenberg said that the applicant returned in the full knowledge of the consequences that he faced. Mr Furstenberg said that, since his return, the applicant has been in custody.
75 Although an affidavit from the applicant supporting Mr Furstenberg’s statement of his instructions was foreshadowed, none was ever filed.
76 The applicant also filed a draft notice of appeal which contains the following grounds:
1. In sentencing the Appellant on the contempt charges, the learned sentencing judge failed to take into account the earlier award of additional damages made pursuant to s.115(4) of the Copyright Act 1968 (Cth) thereby doubly punishing the Appellant.
2. The learned sentencing judge erred in treating the absence of an apology and contrition as an aggravating feature for the purpose of sentencing
3. The learned sentencing judge erred in treating the Appellant’s absence from the proceeding as an aggravating feature for the purpose of sentencing
4. The learned sentencing judge erred in imposing sentence on charge 18 on the basis that the Roper Street factory was used to sell 30,000 pairs of boots
5. The individual sentences and the total effective sentence are manifestly excessive.
6. The Learned Sentencing Judge erred in finding that the contempt is one of the worst to come before the Court.
77 On 29 August 2013, a judge of this Court made an order that the applicant’s application for an extension of time to file a notice of appeal be heard and determined by a Full Court and that, subject to any order of the Full Court, the application for an extension of time be heard concurrently with the appeal lodged pursuant to any extension of time that might be granted.
78 Mr Furstenberg swore a second affidavit just prior to the hearing of the application and he annexed to that affidavit a report from a Mr Jeffrey Elwood Cummins.
79 Mr Cummins practices in “Consulting Clinical and Forensic Psychology” and he is a member of the Australian Psychological Society (“APS”) College of Forensic Psychologists. Mr Cummins formed his opinions about the applicant based on one interview or examination by video-link on 9 October 2013. I will need to return to Mr Cummins’ report in a different context, but, for present purposes, I will identify those matters said to be directly relevant to the applicant’s application for an extension of time. Mr Cummins is of the opinion that the applicant is currently severely depressed. He notes that the applicant has never sought the prescription of an anti-depressant or any mental health treatment. Mr Cummins is of the opinion that the applicant’s depressive symptomology has been so severe and so insidious that he has been blinded to acknowledging the extent to which the depressive symptomology has adversely impacted upon his perception, judgment and problem-solving ability. Mr Cummins is of the opinion that the applicant has been suffering from and is still suffering from a persistent depressive disorder with mood congruent psychotic features. As part of his encapsulated delusional thinking, the applicant has often behaved in an avoidant manner and in a manner which did not reflect a positive or constructive approach to problem-solving. Mr Cummins is of the opinion that this provides some explanation for the fact that the applicant could not face his legal issues in Australia and remained overseas for some three years after being sentenced. Mr Cummins is of the opinion that the applicant’s judgment has been compromised over many years and he expresses the view that this is “highly relevant to the contempt of court charges”.
80 Mr Cummins is of the opinion that the applicant should be receiving psychotherapy provided by a psychologist and/or a psychiatrist, and that he should be trialled on anti-depressant medication. Mr Cummins believes that there is a very significant risk that the longer the applicant remains incarcerated, the more entrenched his depressive symptomology, including the mood congruent psychotic thinking, will become. Mr Cummins states that the applicant reports symptoms which inevitably will become more entrenched the longer the applicant spends in custody, particularly if he does not receive appropriate mental health treatment whilst in custody.
81 At the time the primary judge made his order for a warrant of commitment, the now repealed Federal Court Rules 1979 (Cth) applied. Order 52, r 15 provided:
15 Time for filing and serving notice of appeal
(1) The notice of appeal shall be filed and served:
(a) within 21 days after:
(i) the date when the judgment appealed from was pronounced;
(ii) the date when leave to appeal was granted; or
(iii) any later date fixed for that purpose by the court appealed from; or
(b) within such further time as is allowed by the Court or a Judge upon application made by motion upon notice filed within the period of 21 days referred to in the last preceding paragraph.
(2) Notwithstanding anything in the preceding subrule, the Court or a Judge for special reasons may at any time give leave to file and serve a notice of appeal.
82 The Rules in force from 1 August 2011 (Federal Court Rules 2011 (Cth)) provide as follows:
36.03 Time for filing and serving notice of appeal
An appellant must file a notice of appeal:
(a) within 21 days after:
(i) the date on which the judgment appealed from was pronounced or the order was made; or
(ii) the date on which leave to appeal was granted; or
(b) on or before a date fixed for that purpose by the court appealed from.
36.05 Extension of time to file notice of appeal
(1) A party who wants to apply for an extension of time within which to file a notice of appeal must file an application, in accordance with Form 67.
(2) The application may be made during or after the period mentioned in rule 36.03.
(3) The application must be accompanied by the following:
(a) the judgment or orders from which the appeal is to be brought;
(b) the reasons for the judgment or orders, if published;
(c) an affidavit stating:
(i) briefly but specifically, the facts on which the application relies; and
(ii) why the notice of appeal was not filed within time;
(d) a draft notice of appeal that complies with rules 36.01(1) and (2).
83 Rule 1.04 of the Federal Court Rules 2011 (Cth) provides as follows:
(1) These Rules apply to a proceeding started in the Court on or after 1 August 2011.
(2) These Rules apply to a step in a proceeding that was started before 1 August 2011, if the step is taken on or after 1 August 2011.
(3) However, the Court may order that the Federal Court Rules as in force immediately before 1 August 2011 apply, with or without modification, to a step mentioned in subrule (2).
84 By operation of r 1.04(2), the present Rules apply to the application for an extension of time within which to appeal unless the Court makes an order under r 1.04(3) because the issuing of the application for an extension of time is a step taken after 1 August 2011. I think that the result in this particular case is the same whether the application is made under the former Rules or the present Rules. In those circumstances, I see no reason to make an order under r 1.04(3).
85 The Court was referred to a number of authorities which have considered the principles relevant to an application for an extension of time. Relevant matters are the length of the delay, the explanation for the delay, prejudice to the applicant if time is not extended, including the merits of the applicant’s proposed appeal, and prejudice to the respondent if it is extended. In some cases, the public interest in not disturbing Court orders which have stood for some time will be important (Parker v The Queen [2002] FCAFC 133 at [6] (“Parker”)).
86 In this case, the delay by the applicant is very substantial. Furthermore, in my opinion, in this case the applicant’s explanation for the delay is far from satisfactory. There is no evidence from the applicant himself. In my opinion, Mr Cummins’ report can be given only limited weight bearing in mind his limited opportunity to assess the applicant and the generality of many of his observations. The first two factors weigh against an extension of time.
87 As far as prejudice to the applicant is concerned, for reasons I will give, I think the sentencing process miscarried and that, in relative terms, this resulted in a substantially longer term of imprisonment than was warranted. This is a significant matter when a term of imprisonment is in question (see, for example, Parker at [16]-[19]) and favours the grant of an extension of time.
88 As far as prejudice to the respondent is concerned, counsel for the respondent had only limited instructions on the application and they were to assist the Court to the extent it required assistance. Otherwise, the respondent took no position on the application. I am not aware of any prejudice to the respondent if the time to appeal is extended and the sentence of imprisonment ultimately reduced.
89 In this case, the correct decision on the application for an extension of time is finely balanced. The delay is very substantial and, as I have said, the explanation for it, far from satisfactory. Nevertheless, I agree with the approach taken by the Court of Appeal of the Supreme Court of Victoria in Jopar v The Queen (2013) 275 FLR 454; [2013] VSCA 83 at [60]:
Scrutiny is thus invited of the reasons for the delay and the merits of the proposed appeal. These two considerations are not necessarily in equipoise. Where the merits of the proposed appeal are very poor, even a satisfactory explanation for the delay might not justify an extension. On the other hand, where the merits of the putative appeal are very good, but the explanation for the delay is poor, the court may incline towards granting an extension. The discretion reposed in the court must be exercised according to the individual facts of each case.
90 I would grant an extension of time within which to appeal, primarily because I think the proposed appeal has substantial merit (and, in fact, should be allowed).
the merits of the appeal
The Conduct Constituting the Contempt
91 The disputes between Deckers Outdoor Corporation Inc (“Deckers”) and the applicant and others have a long history which is described in a number of judgments of the primary judge, including Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256, Deckers Outdoor Corporation Inc Farley (No 5) [2009] FCA 1298 (“Deckers (No 5)”), Deckers (No 6) and Deckers (No 8). In broad terms, the applicant, members of his family, and various companies, are said to have infringed, over a long period, various rights of Deckers, or its predecessor, under the Trade Marks Act 1995 (Cth), the Copyright Act 1968 (Cth), the Trade Practices Act 1974 (Cth), the Fair Trading Act 1999 (Vic), and the law of passing off, by the manufacture and sale of counterfeit footwear. Three proceedings were issued by Deckers or its predecessor in the Victorian Registry of this Court, one in 2003 (VID 1114 of 2003), which was settled, a second in 2004 (VID 1129 of 2004) to enforce the settlement agreement, which was also settled, and then, in 2007, the proceeding in which the orders that are the subject of the application for an extension of time within which to appeal, were made (VID 1022 of 2007). From time to time, various orders were made by the Court and undertakings given to the Court by one or other of the parties, including the applicant.
92 The primary judge summarised the charges of which he found the applicant guilty in the following way (Deckers (No 8) at [9]):
• Charge 8 – Between 22 December 2003 and 10 February 2004 Mr Vaysman sold numerous pairs of counterfeit Ugg boots contrary to orders made by the Court on 23 December 2003 which restrained him from selling such products.
• Charge 9 – On or about 27 December 2003 Mr Vaysman sold a pair of counterfeit boots to a purchaser. Those boots bore the Ugg logo and were accompanied by printed material such as care instructions which was copied from the material which the Applicant provided with its Ugg boots. This sale also contravened the orders made on 23 December 2003.
• Charge 18 – Between December 2005 and (at least) November 2007 Mr Vaysman caused and encouraged the use of a factory in Roper Street Moorabbin for manufacturing and selling counterfeit footwear. He did so contrary to consent orders to which he was a party which were made by the Court on 12 March 2004. During this period, as I found in Deckers Outdoor Corporation Inc. Farley (No 5) [2009] FCA 1298 (“Deckers (No 5)”) at [84]-[92], over 30,000 pairs of counterfeit boots were sold with the profit on those sales amounting to over $3 million.
• Charge 19 – Between December 2005 and November 2007 Mr Vaysman procured the services of five persons to act as his agents in offering for sale and selling counterfeit footwear. He then assisted them in carrying out their marketing and selling activities. This also was a contravention of the orders made on 12 March 2004.
• Charge 20 – Mr Vaysman represented to at least one of the persons whom he recruited to sell the counterfeit footwear that the products were manufactured, advertised and/or promoted with the sponsorship or approval of the Applicant. He did so in contravention of the orders made in March 2004.
• Charge 22 – Mr Vaysman caused a warehouse in Braeside to be used for importing, exporting, manufacturing, distributing and selling counterfeit footwear in contravention of the orders made in March 2004.
• Charge 32 – Between 27 November 2007 and 12 December 2007 Mr Vaysman permitted and caused the factory in Roper Street Moorabbin to be used for importing, exporting, manufacturing, distributing and selling counterfeit footwear. He did so in breach of an undertaking which he gave to the Court on 27 November 2007.
• Charge 33 – Between 27 November 2007 and 12 December 2007 Mr Vaysman permitted and caused the Braeside warehouse to be used for importing, exporting, manufacturing, distributing and selling counterfeit footwear. This also constituted a contravention of the undertaken given to the Court on 27 November 2007.
• Charge 34 – Between 27 November 2007 and 12 December 2007 Mr Vaysman attempted to procure further agents to promote, advertise, offer for sale and sell counterfeit footwear on the internet in contravention of the undertaking given to the Court on 27 November 2007.
• Charge 48 – Mr Vaysman failed to comply with an order of the Court, made on 12 November 2007 which required him to provide information as to the persons to whom he supplied counterfeit products.
93 The orders and undertakings referred to in these charges are as follows.
94 On 23 December 2003, in VID 1114 of 2003, the Court ordered by consent:
1 Until the trial of the proceeding or further order the First, Second, Third and Fourth Respondents, whether by themselves, their directors, or servants or agents or howsoever otherwise be restrained from:
(a) manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public, whether on the internet, to retailers, wholesalers, consumers or otherwise:
(i) any sheepskin footwear or any other products which feature or which have printed or embossed upon them on any hang tags or care tags or sewn on labels or any printed material accompanying such products:
(A) the name “Ugg Australia”; and/or
(B) the name “Original Ugg Company”; and/or
(C) the Ugg Logo as defined in the Statement of Claim; and/or
(D) the Sun Device as defined in the Statement of Claim; and/or
(E) the names “Ugg”, “Ug”, “Uggs” or “Ugh” and/or
(F) any of the Copyright Works or any substantial reproduction of the Copyright Works as defined in the Statement of Claim;
(b) reproducing, or substantially reproducing, the Copyright Works as defined in the Statement of Claim filed herein or authorising such conduct;
(d) representing that the Respondents’ sheepskin footwear products are manufactured, advertised and/or promoted with the sponsorship or approval of the Applicant;
(e) representing that any of the Respondents’ sheepskin footwear products are the Ugg Products (as defined in paragraph 6 of the Statement of Claim);
(e) representing that any of the Respondents’ sheepskin footwear products emanate from the same trade source as the Ugg Products.
(f) representing that any of the Respondents’ sheepskin footwear products are made by the Applicant;
(g) passing off and/or enabling to be passed off their business and/or goods for the business and/or goods of the Applicant;
(h) passing off and/or enabling to be passed off their business and/or goods as having the endorsement or approval of the Applicant;
(i) registering or otherwise reserving any domain names that incorporate UG, UGG, or UGH or any word that is substantially identical or deceptively similar to those words.
2. Until the trial of the proceeding or further order the First, Second, Third and/or Fourth Respondents, whether by themselves, their servants, employees or agents howsoever, be restrained from disposing or parting with possession of the Infringing Materials as defined in paragraph 17 of the Statement of Claim or any products which feature:
(a) the name “Ugg Australia”; and/or
(b) the name “Original Ugg Company”; and/or
(c) the Ugg Logo as defined in the Statement of Claim; and/or
(d) the Sun Device as defined in the Statement of Claim; and/or
(e) the names “Ugg”, “Ugs” or “Ugh” and/or
(f) any of the Copyright Works or any substantial reproduction of the Copyright Works as defined in the Statement of Claim.
95 On 12 March 2004, the interlocutory injunction which formed part of the orders made on 23 December 2003 was, by consent, made permanent.
96 On 12 November 2007, the Court below made an order requiring the applicant to inform Deckers of certain matters and to file and serve on Deckers an affidavit setting out the relevant information.
97 On 27 November 2007, the applicant and another respondent by their counsel gave the following undertakings to the Court without admission of liability:
… that they and each of them will refrain from, whether by themselves, their directors, officers, partners, employees, agents, spouses, family members or others acting on their behalf or on their instructions or with their encouragement or in any other way from, until trial or further order:
i. importing, exporting, manufacturing, promoting, advertising, distributing, offering for sale, selling or exhibiting in public, sheepskin footwear or any other products which feature or which have printed or embossed on them or on any hang tags, care tags, sewn in labels or any printed products:
1. the name "Ugg";
2. the name "Ugg Australia";
3. the Ugg Logo (as defined in paragraph 7(c) of the Statement of Claim filed in this proceeding);
4. the Sun Device (as defined in paragraph 10(a) of the Statement of Claim filed in this proceeding)
5. the Trade Marks (as defined in paragraph 9 of the Statement of Claim filed in this proceeding); and/or
6. the Copyright Works (as defined in paragraph 10 of the Statement of Claim filed in this proceeding)
(collectively the Enjoined Products):
ii. disposing or dealing with the Enjoined Products;
iii. authorising, procuring or inducing any person to do any act which would be an infringement of the injunction referred to in paragraph (a) above;
iv. representing that the Enjoined Products are imported, exported, manufactured, advertised, promoted, offered for sale and/or sold with the sponsorship or approval of the Applicant;
v. representing that the Enjoined Products are the Ugg Products (as defined in paragraph 7 of the Statement of Claim);
vi. representing the Enjoined Products emanate from the same trade source as the Ugg Products;
vii. representing that the Enjoined Products are made by the Applicant;
viii. representing that the businesses of the Respondents are licensed, authorised, sponsored, approved or endorsed by the Applicant;
ix. representing that the Enjoined Products are worth AUD$50; and/or
x. representing that the Enjoined Products are "gifts" and/or "of no commercial value" if exported.
The Primary Judge’s Reasons
98 In his sentencing remarks in Deckers (No 8), the primary judge referred to the fact that he had made findings in Deckers (No 5) at [46]-[53] that Deckers had a well-established reputation in the getup of its Ugg Australia branded footwear and that the applicant sought to persuade potential purchasers of counterfeit boots that the products he sold were “genuine Ugg Australia” footwear. The primary judge referred to the fact that other members of the applicant’s family were involved in varying roles and to varying degrees in the production, sale and distribution of counterfeit footwear. However, the applicant was the person who exercised overall control over what was a significant commercial operation. The primary judge said that the operation had its origins in the ability of the applicant’s father to manufacture what he considered to be a genre of footwear, namely Ugg boots. The applicant’s father made these boots and sold them at public markets. Sometime earlier than 2003, the applicant came to appreciate the market potential for sales of this footwear more widely in Australia and overseas. The primary judge said that the applicant appeared to have come to the view that this marketing potential would be enhanced if the footwear was presented using established getup of Deckers.
99 The primary judge referred to the fact that Deckers commenced a proceeding in the Court towards the end of 2003. The applicant’s reaction was to agree to the making of restraining orders without admitting liability and then to resume the production and marketing of counterfeit Ugg boots. The primary judge said that when, a few months later, the applicant’s unlawful activities were again discovered, he consented to further restraining orders which he appeared to have obeyed for a relatively short period before resuming the manufacture and sale of counterfeit products.
100 The primary judge said that the applicant’s business grew between 2005 and 2007 and was generating millions of dollars in sales revenue. As the business grew, the applicant recruited a team of people to market the boots using the e-Bay facilities on the internet and attracting customers in Europe and North America. The applicant established a number of corporate structures to facilitate the conduct of various aspects of the business and, in some cases, he installed his compliant father as director and shareholder of the companies. The companies opened bank accounts through which millions of dollars in turnover passed. The applicant used some of the companies that he had set up to lease premises in which counterfeit footwear was manufactured and from which this footwear was distributed. The applicant benefited financially from the trade in counterfeit products. The primary judge referred to his finding in Deckers (No 6) at [66] that, in a four month period between July and October 2006, payments exceeding $1.7 million were credited to four accounts held in the applicant’s name. Cheques relating to those accounts disclosed that, in the period between October 2005 and March 2007, 98 cheques for amounts totalling about $450,000 were drawn made out to cash.
101 The primary judge said that when the applicant’s activities were discovered for a third time in November 2007, the applicant’s response was again to give undertakings to the Court without admitting liability and then to proceed with business as usual as if nothing had happened. The primary judge noted that, on the day before the applicant gave the undertakings, he falsely swore an affidavit that neither he nor Hepbourne Pty Ltd (one of the operating companies) had, since 2005, had possession of, supplied or offered to supply any person with, counterfeit footwear.
102 The primary judge referred to the following findings and observations which he made in Deckers (No 5):
[106] During 2005, 2006 and 2007 the manufacture at and the distribution from Hepbourne’s Moorabbin factory continued apace. Additional people were recruited to sell the boots on e-Bay. Once sales were made the persons who had made the sales advised Vladimir Vaysman and he (or someone on his behalf) delivered the boots to the salesperson’s residence ready for despatch to the purchasers. Business became more brisk and the salespersons were asked to attend the Moorabbin factory to collect the products they needed to fill the orders which they had received. This they did. The arrangements are described in more detail in Deckers (No 2) at [30]-[35]: see above at [21].
[107] Late in 2007, Deckers had cause to believe that infringing conduct was again occurring. The present proceeding was commenced. On 12 November 2007 Deckers was granted a further search order in respect of the Moorabbin factory. The order was executed the following day and the search yielded evidence of the manufacture and distribution of infringing products on a substantial scale.
[108] Not long after the search had commenced Vladimir Vaysman telephoned Ms Farley and asked her whether a search order had also been executed at her home. When she answered “yes” he advised her not to give those present her e-mail address. He rang again later in the afternoon while lawyers were still present in her house. He asked her if they were still there. When advised that they were, he told Ms Farley to get them to leave. After they had left he again telephoned her. Ms Farley asked him what was going on and told him that she thought she was in serious trouble and might go to gaol. Vladimir Vaysman told her that she would not go to gaol but she could expect to pay a lot of legal fees. Vladimir Vaysman asked Ms Farley whether she was still prepared to sell the UGG branded boots. He also told her that he would not pay Deckers any money.
[109] Vladimir Vaysman also spoke to Ms Sommer on the afternoon of 13 November 2007. He told her that everything would quieten down over the next two weeks. He asked her whether she was prepared to continue selling the footwear once everything had blown over.
[110] About a week later Vladimir Vaysman contacted Ms Ezzat and told her that he wanted her to list UGG branded footwear on e-Bay UK. She was not aware, at that time, that a Court-sanctioned search had taken place at the Moorabbin factory. Vladimir Vaysman told her that he would no longer be providing footwear to his other e-Bay sellers and that he wanted her to sell more stock and at a quicker pace. She questioned him about why he was no longer using the services of the other sellers and he told her that it was better that she did not ask what had happened.
[111] On 27 November 2007 Hepbourne and Vladimir Vaysman gave undertakings to the Court that they would refrain until trial from manufacturing or distributing footwear bearing Deckers’ get-up. In breach of this undertaking, counterfeit footwear continued to be produced at and distributed from the Moorabbin factory. This continued at least until 12 December 2007 when a further search order was executed.
[112] It is clear, and I find, that Hepbourne, acting through Vladimir Vaysman, was intent on manufacturing and marketing counterfeit footwear, totally disregarding Deckers’ rights and Court orders. The commencement of legal proceedings, the execution of search orders and the making of restraining orders were simply treated as inconvenient interruptions to what was intended to be, and was, for over four years, a calculated and successful attempt to make money through selling footwear which purported to have been manufactured by Deckers.
[113] This case must be adjudged as one of the worst of its kind to come before the Court. It is probably too generous to describe it as “flagrant”. General deterrence must be a significant consideration. Most of the damage complained of occurred after Hepbourne was well aware that it was engaged in infringing conduct. Although the monetary benefits which flowed to Hepbourne as a result of the activities of Vladimir Vaysman cannot be determined with precision, it amounted to many millions of dollars.
(Emphasis added).
103 The primary judge said that the applicant had chosen not to defend himself against any of the contempt charges which had been preferred against him. He said that the applicant had not appeared at any of the hearings at which the charges were considered. That is not strictly correct because, as I have said, the applicant appeared by counsel at the first three days of the hearing of the contempt charges. However, this inaccuracy is not of any consequence in terms of the issues on the application on appeal. The primary judge said that the applicant had not filed any affidavits explaining his conduct. He had not made any attempt to acknowledge his wrong-doing and apologise for it. He had not demonstrated the slightest contrition for what he had done. The primary judge said that, on the contrary, the applicant had continued to treat curial processes with distain.
104 The primary judge said that he had virtually no information as to the applicant’s financial circumstances. He noted that in Deckers Outdoor Corporation Inc v Farley (No 4) [2009] FCA 369, the applicant and Hepbourne Pty Ltd were jointly and severally judged liable to pay Deckers $150,000 pursuant to terms of settlement that had been entered into between them and Deckers on 10 June 2005. He noted that on 24 September 2009, the applicant consented to orders being made against him for $3 million for general compensatory damages and a further $3 million for additional damages for copyright infringement. Shortly after that date, the applicant entered voluntary bankruptcy. The primary judge said that, in those circumstances, it may reasonably be assumed that the applicant would not be in a position to pay any fine which the Court might impose as punishment for his contempt.
105 The primary judge said (at [18]):
This is one of the worst cases of contempt to have come before the Court. Mr Vaysman has deliberately and repeatedly contravened undertakings given by him to the Court and orders of the Court over a four year period. The need for both personal and general deterrence ranks highly in the sentencing process. Not only have the Applicant’s rights been seriously infringed, the authority of the Court has been severely undermined. Mr Vaysman’s conduct falls within the most serious category of criminal contempt cases. Although a sentence of imprisonment is a last resort, nothing less would be appropriate in the circumstances of the present case.
106 The primary judge said that the charges of which the applicant stood guilty varied in severity and, in some cases, overlapped. By far the most serious offence was that covered by charge 18 and that warranted, in his Honour’s view, a sentence of imprisonment of three years. The primary judge ordered that each sentence be served concurrently with each other sentence, including that imposed in relation to charge 18.
The Grounds of Appeal
The alleged error with respect to double punishment (Ground 1)
107 The applicant submitted that in sentencing him the primary judge failed to take into account as a relevant consideration the fact that a punishment had already been imposed on him in respect of at least part of the conduct for which he was sentenced. The punishment already imposed on the applicant was said to be the order made by consent on 24 September 2009 that he pay Deckers additional damages of $3 million under s 115(4) of the Copyright Act 1968 (Cth). Such an order was said to involve punishment because s 115(4) requires a court to consider, among other matters, matters which would ground an award of exemplary damages (see Facton Ltd and Others v Rifai Fashion Pty Ltd (2012) 199 FCR 569; [2012] FCAFC 9 at [35] per Lander and Gordon JJ).
108 There are a number of steps in this argument.
109 First, the applicant must establish that the order that he pay additional damages to Deckers had a punitive element and that, in making the order, the primary judge took into account conduct for which the applicant was subsequently sentenced. An immediate problem for the applicant is that the order that the applicant pay additional damages was made by consent. The applicant seeks to overcome that problem by relying on the fact that an order for the payment of additional damages of $3.5 million was made against one of the other respondents, Hepbourne Pty Ltd, after a hearing. In Deckers (No 5), the primary judge found that, at all relevant times, the applicant was the sole shareholder and director of Hepbourne Pty Ltd. The sentencing judge said (at [6]):
On 24 September 2009 Vladimir Vaysman consented to orders being made against him. As he was, at relevant times, the sole shareholder and director of Hepbourne, the terms of those orders are significant in relation to the claims made against Hepbourne. Vladimir Vaysman consented to orders being made against him for $3,000,000 for general compensatory damages and a further $3,000,000 for additional damages for copyright infringement. No further relief is sought against Vladimir Vaysman.
110 A little later his Honour said (at [102]):
Hepbourne, for over four years, engaged in the deliberate and flagrant infringement of Deckers’ intellectual property rights. It did so to the significant financial benefit of its sole director and shareholder and his associates. It did so well-knowing that the infringing conduct in which it engaged was proscribed by orders of this Court. Those orders were simply ignored because the pursuit of financial gain operated as a stronger imperative than did compliance with legal duty.
111 I think it is reasonable to conclude that, in awarding additional damages of $3.5 million under s 115(4) of the Copyright Act 1968 (Cth) against Hepbourne Pty Ltd (Deckers (No 5)), the sentencing judge took into account the infringements of orders of the Court and that it was the applicant’s knowledge which was attributed to the company. The applicant asks this Court to characterise the order made against him – albeit made earlier and by consent – in a similar way. I am prepared to proceed on that basis, although I do not think it can be inferred that all of the conduct for which the applicant was sentenced was included in the additional damages awarded against him.
112 Secondly, assuming the first step is taken, the applicant must show that an award of additional damages is a matter which should have been taken into account in sentencing him. Subject to what I say below, I think that it was a matter to be taken into account (Gray v Motor Accident Commission (1998) 196 CLR 1; Harris v Digital Pulse Pty Ltd (2003) 56 NSWLR 298).
113 Thirdly, the applicant must show that the primary judge failed to take the matter into account and that that was an error in the sentencing process. In my opinion, the applicant’s argument breaks down at this point because the matter was an insubstantial matter in the particular circumstances of this case. Those circumstances are as follows. The applicant’s evidence before this Court is that he left Australia and went to the Philippines on 28 November 2008. He returned to Australia on 28 June 2013. Subject to what I have said above (at [103]), he did not appear at any of the hearings of the contempt charges against him and he did not file any evidence explaining his conduct. Furthermore, it seems that the applicant did not provide details of the destination of the substantial monies generated by his conduct. All the primary judge knew of the applicant’s financial circumstances when he came to sentence him on 28 June 2010 was that he had consented to an order for an award of additional damages on 24 September 2009 and that he had gone into voluntary bankruptcy shortly afterwards. Nor was this Court any better informed on the subject. In the circumstances, I do not think that it could be concluded that the order to pay additional damages was any form of effective punishment for the failure to comply with the Court orders (see Gallagher v Durack (1982) 68 FLR 210 at 223 per Bowen CJ and Fitzgerald J; Gallagher v Durack (1983) 152 CLR 238 at 245 per Gibbs CJ, Mason, Wilson and Brennan JJ). I reject the applicant’s argument that there is an analogy to be drawn with the fact that an award of exemplary damages may be made even though the defendant will not pay those damages (Lamb v Cotogno (1987) 164 CLR 1).
114 The first ground of appeal must be rejected.
The alleged errors in treating the absence of an apology and the applicant’s absence from the proceeding as aggravating features (Grounds 2 & 3)
115 In the course of his reasons the primary judge said (at [16]):
Mr Vaysman has chosen not to seek to defend himself against any of the contempt charges which have been preferred against him by the Applicant. He has not appeared at any of the hearings at which the charges were considered. He has not filed any affidavits explaining his conduct. He has not made any attempt to acknowledge his wrong doing and apologise for it. He has not demonstrated the slightest contrition for what he has done. On the contrary, he has continued to treat the curial processes with distain.
116 Leaving aside the inaccuracy which is not said to be material (see [103]), it seems to me that these matters were plainly relevant, particularly in a context where the very charges against the applicant related to his attitude to orders of the Court and undertakings he had given the Court, and that the primary judge did not err in mentioning them. I do not think he treated those matters as aggravating features as the applicant submitted.
117 The second and third grounds of appeal must be rejected.
The alleged error in relation to the number of pairs of boots sold from the factory at Roper Street (Ground 4)
118 The applicant submitted that in relation to charge 18, he had been sentenced on the basis that 30,000 pairs of counterfeit boots had been sold from the factory in Roper Street, whereas, the evidence was that although those boots might have been manufactured at the factory, a large proportion were sold by third parties using the e-Bay facilities on the internet. It is true that in Deckers (No 5) at [84]-[92] and Deckers (No 6) at [67]-[90], the primary judge found that a large number of boots were sold by third parties using the e-Bay facilities on the internet.
119 The applicant’s submission must be rejected because I do not think the primary judge sentenced the applicant in relation to charge 18 on the basis that 30,000 pairs of counterfeit boots were sold from the factory in Roper Street. As his reference to Deckers (No 5) makes clear, he was aware of how the boots were sold and I think the reference to 30,000 pairs of counterfeit boots in his summary of charge 18 was designed to given an indication of the size of the operation. He was not saying 30,000 pairs of counterfeit boots had been sold from the factory in Roper Street.
The alleged errors with respect to the individual sentences and total effective sentence being manifestly excessive and the primary judge’s finding that the contempt was one of the worst to come before the Court (Grounds 5 and 6)
120 The primary judge imposed a sentence of three years imprisonment in relation to charge 18. The next longest sentence imposed was six months imprisonment in relation to each of charges 19, 32, 33 and 34. The sentences were ordered to be served concurrently. In those circumstances, the applicant focussed on the longest of the sentences and submitted that that sentence was manifestly excessive, rather than presenting detailed argument as to the lesser sentences.
121 In considering this ground, it is not sufficient for this Court to conclude that it would have imposed a different sentence. Error in the sentencing process must be shown before this Court will interfere with the sentence. For the reasons I have given, the applicant has failed to show that insofar as he has attempted to identify specific errors. However, he also submitted that there is an inferred error in the sentencing process of the type identified in House v The King (1936) 55 CLR 499 at 505. I take the liberty of repeating what Gordon J and I said in Stuart v Construction, Forestry, Mining and Energy Union and Another (2010) 185 FCR 308 at 324-325, [46]:
The principles to be applied in a sentencing appeal are described in House v The King (1936) 55 CLR 499 at 505. That this is so was most recently restated by the High Court in Carroll v The Queen (2009) 83 ALJR 579; 254 ALR 379 at [7]-[8] citing Dinsdale v The Queen (2000) 202 CLR 321. A number of principles are worth restating:
1. inadequacy of sentence is not satisfied by a mere disagreement by the appellate Court with the sentence actually imposed: Whittaker v The King (1928) 41 CLR 230 at 248-249; Griffiths v The Queen (1977) 137 CLR 293 at 310; Malvaso v The Queen (1989) 168 CLR 227 at 234; Everett v The Queen (1994) 181 CLR 295 at 299-300, 306; Dinsdale v The Queen 202 CLR 321 at [6]; Carroll 83 ALJR 579; 254 ALR 379 at [7]. Error must first be identified by the appellate Court: Carroll 83 ALJR 579; 254 ALR 379 at [7] citing Dinsdale 202 CLR 321 at [6]-[9], [24], [57]-[61];
2. an appeal against sentence is an appeal against an exercise of discretion – the sentencing discretion – and is governed by established principles or categories of cases: Carroll 83 ALJR; 254 ALR 379 at [7] citing House 55 CLR at 505; see also Dinsdale 202 CLR 321 at [3]-[4];
3. the categories reflect particular kinds of error – that the trial judge had acted upon a wrong principle, allowed extraneous or irrelevant matters to guide or affect them, had mistaken the facts or had not taken into account some material consideration. If a case of specific error of any of those kinds is made, it is necessary to identify the asserted error in the grounds of appeal;
4. another category of error is where no case of specific error is alleged except that the sentence was manifestly inadequate or excessive. That category arises where (House 55 CLR at 505 cited in Carroll 83 ALJR 579; 254 ALR 379 at [8]):
It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is unreasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred.
122 This ground of appeal concerns the type of error identified in paragraph 4 of the above passage.
123 The applicant submitted that the sentence of three years imprisonment was so much longer than the sentence imposed in any comparable case that error should be inferred. The Court was referred to a number of cases which were said to be broadly comparable and it was submitted that, at the time the applicant was sentenced, a substantial penalty for a serious contempt was a term of imprisonment in the order of one year. The submission was that the penalty in this case was three times that amount and, therefore, manifestly excessive.
124 The Court was given the respondent’s written submissions on sentence before the primary judge and the respondent provided the Court with a book of the authorities it had relied on before the primary judge. I have considered those authorities and other authorities I will mention.
125 All contempts must realistically be seen as criminal in nature and must, whether criminal or civil, be proved beyond reasonable doubt. Breach of an undertaking, although ordinarily viewed as a civil contempt, may be viewed as a criminal contempt if carried out contumaciously (Witham v Holloway (1995) 183 CLR 525 at 530 and 534 per Brennan, Deane, Toohey and Gaudron JJ).
126 There is no maximum penalty for contempt and the circumstances surrounding contempts of court may vary considerably. Nevertheless, I think it is appropriate to consider comparable cases because they constitute or may constitute a yardstick against which to examine a proposed sentence (Hili v The Queen (2010) 242 CLR 520 (“Hili”) at 537, [54]), although, in doing that, it is necessary to bear in in mind two factors. First, that it is likely to be difficult to find a truly comparable case, and secondly, that it is always open to a court on appeal to reset what might until then have been considered the prevailing tariff.
127 I turn now to the cases which I consider to be the most relevant.
128 In Australian Competition and Consumer Commission v Levi (No 3) [2008] FCA 1586, McKerracher J found the first respondent guilty of contempt of court in acting in breach of Court orders prohibiting the sale of businesses without, among other things, producing certain documents to the purchaser. McKerracher J imposed a sentence of ten months imprisonment, with the first four months to be served in any event and the last six months suspended on certain conditions. Features of the case were a late plea of guilty, prior offending of a significant nature, an attitude on the part of the first respondent of belligerence, aggression and arrogance, serious contempts over a lengthy period, no reparation to the victims and an apology.
129 In Australian Competition and Consumer Commission v Goldstar Corporation Pty Ltd [1999] FCA 585, Kiefel J found that a company and its principal director had breached restraining orders made by the Court. The company and the director had been found guilty of contempt previously. Features of the case were that the director turned his face against the requirements of the orders in a way that could hardly be explained even by gross negligence. Her Honour’s conclusions were as follows (at [79] and [80]):
This is the second set of charges brought on account of the respondents breaches of undertakings or Orders. The term of imprisonment of two months ordered by Drummond J, but stayed, was doubtless intended to give Mr Hudson an opportunity to rectify the operations of Goldstar and himself to comply with the terms of the Orders. He has failed to take advantage of that opportunity. The sheer number of breaches and their occurrence during these proceedings reflect his lack of willingness to ensure compliance to such an extent that one infers he could not have taken the Orders seriously. It needs hardly be said that penalties must reflect the Court’s determination that its Orders be complied with and to deter further such conduct. In the case of each respondent, substantial penalties are in my view therefore demanded.
The first respondent will be fined $30,000. Mr Hudson will be committed to prison for a period of six months. The respondents will be ordered to pay the Australian Competition and Consumer Commission’s costs of these proceedings.
130 In Australian Prudential Regulation Authority v Siminton (No 10) [2007] FCA 1814, Tracey J found the respondent guilty of eight charges of contempt and imposed a penalty of 12 months imprisonment with respect to each charge with the sentences to be served concurrently. The contempts involved the withdrawal of monies from various accounts in breach of court orders. Features of the case were a prior sentence of imprisonment for contempt, conduct which was deliberate, calculated and disguised, no information about the respondent’s personal or financial circumstances, no apology, and contempts falling into the most serious category.
131 In Australian Securities and Investments Commission v Reid (No 2) [2006] FCA 700, Lander J imposed a sentence of nine months imprisonment for breaches of a court order and an undertaking given to the Court that the respondent would not be involved in the management of a corporation. Features of the matter included previous findings of contempt and the imposition of a suspended sentence of imprisonment, undertakings given to the Court, wilful disobedience, the third occasion of a breach of the order of the Court, no remorse or contrition, no insight by the respondent into his conduct or the seriousness of it, and a period of two to three months already spent in prison.
132 In Jones v Toben (No 2) [2009] FCA 477, Lander J imposed a sentence of three months imprisonment on a respondent who had committed a wilful and contumacious contempt of court on 24 occasions by publishing on the World Wide Web material in breach of court orders and of an undertaking given to the Court. Features of the case were no explanation by the respondent for his conduct, continuing breaches of the orders and of the undertaking after the hearing of the contempt charges but before judgment, a lack of remorse and contrition, and, because of the circumstances, a particular need to emphasise personal deterrence.
133 Most of the other cases to which the Court’s attention was drawn involved periods of imprisonment (to be served or suspended) substantially less than 12 months.
134 I have also had regard to other authorities dealing with the penalty for contempt which were decided before the primary judge’s decision: Australian Securities and Investments Commission v Michalik and Ors (2004) 52 ACSR 115 (contempt of court by breaching court orders restraining dealing in assets – sentences of imprisonment of 18 months); Law Institute of Victoria Ltd v Nagle [2005] VSC 47 (contempt of court by breaching undertaking given to the Court – 22 weeks imprisonment suspended on conditions); R v Mahir El Kholed [2009] QSC 335 (contempt of court for failing to attend the trial of a serious criminal offence – 14 months imprisonment with a two month non-parole period).
135 I have also had regard to other cases after the primary judge’s decision: Corruption and Crime Commission v Allbeury, Silvestro, Chikonga, Smith [No 2] [2011] WASC 26 (contempt of commission by failing to take oath or affirmation and failing to answer questions – sentences of two years imprisonment (appeal dismissed Allbeury v Corruption and Crime Commission [2012] WASCA 84)); Ronowska v Kus (No 2) [2012] NSWSC 817 (contempt of court of a serious and flagrant nature by failing to comply with a court order – 18 months imprisonment).
136 The applicant at one point suggested that assistance could be obtained from sentences imposed for criminal offences under the Copyright Act 1968 (Cth). Whether that is so or not, I think the one case to which he referred (Le v The Queen [2007] FCA 1463) does not provide assistance in this case.
137 The many and varied circumstances which may give rise to a contempt of court means that it is difficult to identify a range of appropriate sentences for contempt or a standard sentence for a serious contempt (Hili at 537, [54]). I do not think it possible to say that, in 2010, the standard or prevailing sentence for a serious contempt of court was 12 months imprisonment. That said, the sentence imposed by the primary judge in this case was three times as long, or at least twice as long, as the sentences previously imposed. This was no doubt a most serious contempt of court, but beyond that the primary judge did not identify any factors which would justify a sentence which was so out of the ordinary. With respect to the primary judge, I think the sentence of three years imprisonment was manifestly excessive (Wong v The Queen (2001) 207 CLR 584 at 591 [6] per Gleeson CJ; Hili at 534-538 [45]-[57]).
Resentencing the Applicant
138 It is appropriate for this Court to resentence the applicant and he did not suggest otherwise. The additional material he relies on is Mr Cummins’ report and an affidavit he filed (with leave) after the hearing containing an apology by him.
139 The matters to be taken into account when determining the penalty for a contempt of court are well-known and need not be set out (Australian Competition and Consumer Commission v World Netsafe Pty Ltd (2003) 133 FCR 279 at [16] per Spender J; Australian Securities and Investments Commission v Michalik (2004) 52 ACSR 115 at [29] per Palmer J). Nor is it necessary to go through each of the matters. The primary judge’s findings stand and form the basis for sentence, subject to any conclusions drawn from the additional material.
140 Mr Cummins’ report establishes the following. The applicant is 50 years old. He was born in Russia and was educated until he was 17 years old. He was an average student. He came to Australia with his parents and sister in 1980. When he left Australia in November 2008, he went to Hong Kong for two to three months and then to the Philippines. After a time, he claims he was living on the poverty line in the Philippines. He does not speak to his wife. He has two children, a son aged 19 years and a daughter aged 14 years. He managed the sheepskin footwear business in Moorabbin and he eventually assumed sole responsibility for the operation of the business and its related entities. Mr Cummins considered that the applicant had obsessive and distorted thought processes about the Court proceedings and outcome. As I mentioned earlier, Mr Cummins considers that the applicant is and has been severely depressed with delusional thinking and avoidant behaviour. He considers that the applicant’s avoidant behaviour may explain his decision to stay overseas for about three years.
141 I make two points about Mr Cummins’ report. First, although it is understandable bearing in mind his limited opportunity to examine or interview the applicant, many of Mr Cummins’ comments are very general. I would not be prepared to conclude from his report that the applicant was depressed at the time of his offending conduct or that he had any other mental condition. In any event, that would be difficult to accept bearing in mind that he conducted a significant business operation for a substantial period. Secondly, I accept that the applicant is now depressed.
142 The applicant swore an affidavit after the appeal in which he apologised for his conduct. This apology, bearing in mind when it was proffered, can be given only very slight weight.
143 There was a suggestion by the applicant during submissions that his contempt was less serious because the orders he breached and the undertakings he failed to observe were not designed to protect the public interest as distinct from the private rights and interests of Deckers. Reference was made to observations of Gray J and of Bromberg J in Vaysman v Deckers Outdoor Corporation Inc (2011) 276 ALR 596; [2011] FCAFC 17 at [62] and [189]. This was not a ground of appeal and I took the applicant to abandon it during his submissions after questions from the Court. I would add that, in any event, I am not satisfied that there is such a distinction or that it is relevant to penalty on a finding of contempt of court constituted of breaches of orders of the Court and undertakings given to the Court.
144 The conduct in this case was deliberate, serious and carried out over a substantial period of time. Millions of dollars in turnover was involved and the applicant exercised overall control over what was a significant commercial operation. The natural conclusion is that the applicant was motivated by sheer greed and had no respect for the rights of others or the authority and orders of the Court. This was a very serious contempt and I think it warrants a sentence of two years imprisonment in relation to charge 18.
145 The orders I would make are as follows:
1. The appellant be granted an extension of time within which to file and serve a notice of appeal in terms of the draft amended notice of appeal dated 12 September 2013 within seven days of the making of this order.
2. The appeal be allowed and the orders made on 24 June 2010 be set aside to the following extent:
2.1 in paragraph 6(c), the words, “three years” be deleted and the words, “two years” be substituted; and
2.2 paragraph 7 be deleted and the following be substituted for that paragraph:
3. “7. A warrant issue for the committal of the Fifth Respondent to prison for the period of two years”.
146 In all the circumstances, I do not think it appropriate to make any order as to costs.
| I certify that the preceding seventy-six (76) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. |
Associate:
Dated: 22 May 2014
