FEDERAL COURT OF AUSTRALIA

Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd

[2001] FCA 814

INTELLECTUAL PROPERTY – trial on issues of liability – declarations – whether interlocutory

Australian Builders’ Labourers’ Federated Union of Workers – Western Australian Branch v J-Corp Pty Ltd (1993) 42 FCR 452 - cited

Burns v Lipman (1975) 132 CLR 157 - cited

Caboche v Ramsay  (1993) 119 ALR 215 - cited

Clarke v Chadburn [1985] 1 WLR 78 - cited

Electricity Commission of New South Wales v Lapthorne (1971) 124 CLR 177 - cited

Fisher & Paykel Healthcare Pty Ltd  v Avion Engineering Pty Ltd (1991) 103 ALR 239 - cited

Fraser v NRMA Holdings Limited (1995) 55 FCR 452 - cited

Hahn v Conley (1971) 126 CLR 276 - cited

Hall v Busst (1960) 104 CLR 206 - cited

International General Electric Co of New York Ltd v Commissioners of Custom and Excise [1962] Ch 784 - cited

National Australia Bank Ltd v Maher (No 2) [1999] 3 VR 589 - cited

NZI Securities Australia Ltd v Poignand (1994) 51 FCR 584 - cited

R v Inland Revenue Commissioners; ex parte Rossminster Ltd [1980] AC 952 - cited

Yotvin Engineers and Constructors Ltd v State of Israel  (1980) 34 P.D. (2) 344 - cited

TELSTRA CORPORATION LIMITED  v  DESKTOP MARKETING SYSTEMS PTY LTD and ANDRZEJ SCIBOR-KAMINSKI

V 25 of 1999

FINKELSTEIN J

29 JUNE 2001

MELBOURNE

THE COURT DECLARES THAT:

1.         Copyright subsists in Australia in the following original literary works referred to in the applicant’s further amended statement of claim:

            (a)        the White Pages directories referred to in Annexure A thereto;

            (b)        the Yellow Pages directories referred to in Annexure B thereto; and

            (c)        the Headings Books referred to in Annexure C thereto.

2.         The applicant is, and at all material times was, the owner of the copyright referred to in paragraph 1 hereof.

3.         By producing the following products, Marketing Pro CD-rom, Australian National Phone Directory CD-rom (later renamed CD Phone Directory CD-rom) and Australian Phone Disc CD-rom (“the CD-rom products”), as mentioned in Annexure D of the further amended statement of claim, without the licence of the applicant, the first respondent has infringed the applicant’s copyright in the White Pages directories, Yellow Pages directories and Headings Books in the manner set out in the said Annexure.

4.         By possessing the CD-rom products, the first respondent has wrongfully converted the CD-rom products to its own use.

AND THE COURT FURTHER ORDERS AND DIRECTS THAT:

5.         If and insofar as necessary the firstnamed respondent be granted leave to appeal the declarations herein made by filing and serving a notice of appeal on or before 6 July 2001.

And upon the firstnamed respondent by its solicitor undertaking to prosecute such appeal with all due diligence:

THE COURT FURTHER ORDERS THAT:

8.         All further interlocutory steps in this proceeding and the determination of all remaining issues in this proceeding be stayed pending the hearing and determination of the said appeal.

9.         Costs of all parties be reserved.

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

REASONS FOR JUDGMENT

1                     The parties do not agree on the appropriate orders that should be made to give effect to my reasons that were handed down on 25 May 2001:  [2001] FCA 612.  It is therefore necessary for me to resolve the matter.

2                     The principal issues in dispute, which were resolved in favour of Telstra, were, first, whether copyright subsisted in Telstra’s white pages directories, yellow pages directories and headings books, and second, if there was copyright, whether DtMS infringed that copyright by producing the three CD-rom products known as Marketing Pro, Australian Phone Disk and CD Phone Directory.  It is accepted that declarations should be made that give effect to these findings.  In addition, Telstra seeks a declaration that by producing the CD-rom products, DtMS is guilty of conversion:  see Copyright Act 1968 (Cth), s 116.  The finding that DtMS’ products infringe copyright, establish Telstra’s right to such a declaration.

3                     By its further amended statement of claim, Telstra also claims infringement by sale of the CD-roms (para 7) and infringement by authorising the production of documents which contain material from the CD-roms (para 9).  Telstra asks for declarations of infringement in respect of those claims.  DtMS opposes that course, contending that declarations cannot be made because they would not be supported by findings of fact.  As it has turned out, I did not make sufficient findings to make the declarations sought.  I had erroneously assumed that if the principal issues went against DtMS, it would not contest Telstra’s claim that there had been infringement by sale and infringement by authorising the production of material from the CD-roms.  DtMS now wishes to contest its liability on those issues.  Accordingly, it will be necessary for me to consider the evidence to see whether Telstra’s claim can succeed.  However, I do not propose to embark upon that course at present.  DtMS has said it proposes to appeal from the declarations I will grant.  It has asked for leave to appeal, in case leave be necessary.  I have indicated that if leave be required, it will be granted, for the issues raised by this piece of litigation are important and warrant consideration by a Full Court.  On the other hand, it is not necessary to resolve the outstanding claims for the purpose of the appeal.  Further, the outstanding matters do not raise any issue of principle, such as would make it desirable that they be dealt with to enable the unsuccessful party to refer them to the Full Court.  Accordingly, I will defer considering Telstra’s additional claims for infringement until the outcome of the appeal is known. 

4                     I wish to add a word about the declaratory orders.  I intend the declarations to dispose finally of the issues to which they relate.  Yet, I have not disposed of the whole of the claim against the respondents.  On one view of the authorities, any order that I make in such circumstances will only be interlocutory.  Most of the important cases are collected by Callaway JA in National Australia Bank Ltd v Maher (No 2) [1999] 3 VR 589.  On the other hand, as I understand the position, it is not possible to grant such a thing as an interlocutory declaration:  International General Electric Co of New York Ltd v Commissioners of Custom and Excise [1962] Ch 784; Clarke v Chadburn [1985] 1 WLR 78; R v Inland Revenue Commissioners; ex parte Rossminster Ltd [1980] AC 952; but compare Yotvin Engineers and Constructors Ltd v State of Israel (1980) 34 P.D. (2) 344, a translation of which appears in the appendix in Zamir & Woolf, The Declaratory Judgment 2nd ed. 1993.  A number of decisions of the Full Federal Court are relevant to this topic.  The cases include Fisher & Paykel Healthcare Pty Ltd  v Avion Engineering Pty Ltd (1991) 103 ALR 239, where the Full Court comprised Black CJ, Lockhart and Gummow JJ, and Australian Builders’ Labourers’ Federated Union of Workers – Western Australian Branch v J-Corp Pty Ltd (1993) 42 FCR 452, where the Full Court was constituted by Lockhart, Spender and Gummow JJ.  In both cases, the trial was limited to questions of liability.  In both cases, the trial judge granted declaratory relief.  On each appeal, the Full Court said that the declarations were “interlocutory” and therefore leave to appeal to the Full Court was required:  Fisher & Paykel at 242; Australian Builders’ Labourers’ at 454.  Neither Full Court suggested that the trial judge lacked jurisdiction to grant a declaration though it was only interlocutory in character.  (See also Caboche v Ramsay  (1993) 119 ALR 215, NZI Securities Australia Ltd v Poignand (1994) 51 FCR 584 and Fraser v NRMA Holdings Limited (1995) 55 FCR 452). But if each Full Court was correct in holding the declaration to be interlocutory, the logical consequence would be that the trial court did not have jurisdiction to grant that remedy.  For my own part, I doubt that the declarations that I will grant are interlocutory, and refer to Hall v Busst (1960) 104 CLR 206 at 218 as an authority in support of my view.  By the same token, I cannot deny the possibility that on this point Hall v Busst has been overruled, sub silentio, by Hahn v Conley (1971) 126 CLR 276 or Burns v Lipman (1975) 132 CLR 157.  It was distinguished in Electricity Commission of New South Wales v Lapthorne (1971) 124 CLR 177.  I note, however, that in none of those cases was the High Court dealing with the grant of a declaration.  In each case, the order that was said to be interlocutory was the judgment for damages to be assessed. 

Associate:

Dated:              29 June 2001