FEDERAL COURT OF AUSTRALIA

Ly v Jenkins [2001] FCA 1640

JURISDICTION – Conferral of jurisdiction on State courts to hear and determine summary offences created by a Commonwealth Law– whether New South Wales Local Court has jurisdiction to convict and impose penalties for an offence under s 132(2A) of the Copyright Act 1968 (Cth) – whether ss  39(2) and 68(2) of the Judiciary Act 1903 (Cth) only confer jurisdiction on State courts which have an existing and like jurisdiction in respect of summary offences under State law – whether the maximum term of imprisonment for breach of the section is 5 years – whether statutory limit on the jurisdiction of New South Wales Local Court to sentence offenders to terms of imprisonment.

CONSTITUTIONAL LAW - Whether s 80 of the Constitution provides a guarantee that a ‘serious’ offence against a law of the Commonwealth will be tried before a jury – whether trial upon indictment was not specified in the Copyright Act 1968 (Cth)-whether the appellants pleaded guilty to the offence charged.

COSTS - scope of power to order costs under s 81 of the Justices Act 1902 (NSW) – whether costs can be awarded to a legally unqualified police prosecutor –whether costs can be awarded for the investigation or proof of the case – whether a costs order can only be made in respect of costs incurred by the prosecuting authority - whether costs incurred “in – house” by a corporation are professional costs - whether costs order can be made in US dollars – whether statutory test that costs be just and reasonable applied.

WORDS AND PHRASES – “within the limits of their several jurisdictions”; “the like jurisdiction”

WORDS AND PHRASES – “costs”

Statutes

Acts Interpretation Act 1901 (Cth) s 15C

Bail Act 1978 (NSW) s 51

Constitution s 80

Copyright Act 1968 (Cth) ss 131B(2)(a), 132(2A)(a), 132(6A), 133

Courts Legislation Amendment Act (NSW)

Crimes Act 1900 (NSW) ss 440, 444(4)

Crimes (Sentencing Procedure) Act 1999 (NSW) s 58

Criminal Procedure Act 1986 (NSW) s 33J

Crimes Act 1900 (Cth) ss 4AA, 4J(1)

Judiciary Act 1903 (Cth) ss 39(2), 68(2), 78A, 78B

Justices Act 1850 (SA) s 10

Justices Act 1902 (NSW) ss 52 & 81

Justices Act 1928 (Vic) s 210

Local Courts Act (NSW) ss 4 & 7

Public Service Act 1922 (Cth) s 64

Punishment of Offenders Act 1901 (Cth) ss 2, 3

Supreme Court (Summary Jurisdiction) Act 1967 (NSW) s 3

Quick J & Garran RR The Annotated Constitution of the Australian Commonwealth (1901)

Cowen Z & Zines L Federal Jurisdiction in Australia (1978)

Cases

Adams v Chas S Watson Pty Ltd (1938) 60 CLR 545 Referred to

Adams v Cleeve (1935) 53 CLR 185 Referred to

Associated Octel Ltd [1997] 1 Cr App R (S) 435 Referred to

Australia and New Zealand Banking Group Ltd v Cawood [1987] 1 Qd R 131 Referred to

Bank of New South Wales v Withers (1981) 35 ALR 21 Referred to

Bank of Western Australia v O’Neill (White J, WASC, 22 January 1999, unreported) Considered

Barwick v Barwick (1938) 33 Tas LR 1 Referred to

Buckland v Watts [1970] 1 QB 27 Applied

Burford v Allen (Doyle CJ, SASC, 26 May 1998, unreported) Referred to

Cachia v Hanes (1994) 179 CLR 403 Referred to

Caltex Refining Co Pty Ltd v Maritime Services Board of New South Wales (1995) 36 NSWLR 552 Considered

Cheng v The Queen (2000) 74 ALJR 1482 Applied

Commonwealth v Dalton (1924) 33 CLR 452 Referred to

Commonwealth v The District Court of the Metropolitan District (1954) 90 CLR 13 Referred to

Commonwealth Bank of Australia v Hattersley [2001] NSWSC 60 Approved

Cook v Head and Arneman [1976]1 NSWLR 176 Referred to

Director of Public Prosecutions v Shirvanian (1998) 44 NSWLR 129 Referred to

Ex parte Cusack; Re Searson (1935) 52 WN (NSW) 214 Referred to

Ex parte Graves (1891) 8 WN(NSW) 44 Referred to

Federated Sawmill Timberyard and General Wood workers' Employees' Association (Adelaide Branch) v Alexander (1912) 15 CLR 308 Referred to

Harris v Caladine (1991) 172 CLR 84 Referred to

Hudgson v Endrust (Aust) Pty Ltd (1986) 11 FCR 152 Referred to

Kable v Director of Public Prosecutions for New South Wales (1996) 189 CLR 51 Referred to

Kelly v Noumenon Pty Ltd (1988) 47 SASR 182 Discussed

Kingswell v The Queen (1985) 159 CLR 264 Applied

Le Mesurier v Connor (1929) 42 CLR 481 Referred to

Manthorpe v Bache (1980) 25 SASR 316 Referred to

McLaurin v Hall (1913) 13 SR(NSW) 114 Referred to

Miliangos v George Frank (Textiles) Ltd [1976] AC 443 Referred to

Moore - McQuillan v SA Police (No 2) [2000] SASC 69 Referred to

Munday v Gill (1930) 44 CLR 38 Referred to

Neville v Gardner-Merchant Ltd (1983) 5 Cr App R (S) 349 Discussed

Peacock v Newtown Marrickville General Co-Operative Building Society No 4 Ltd (1943) 67 CLR 25 Referred to

R v Burt; Ex parte Presburg [1960] 1 QB 625 Discussed

R v Federal Court of Bankruptcy; Ex parte Lowenstein (1938) 59 CLR 556 Applied

Re Caffrey's Application for Judicial Review [2000] NI 17 Referred to

Re Colina; Ex parte Torney (1999) 200 CLR 386 Applied

Re Eastwood (deceased); Lloyds Bank Ltd v Eastwood [1974] 3 All ER 603 Applied

Re JJT; Ex parte Victoria Legal Aid (1998) 195 CLR 184 Referred to

Re Stuart; Ex parte Cathcart [1893] 2 QB 201 Referred to

Robins v Incentive Dynamics Pty Ltd (1999) 91 FCR 423 Referred to

The Appeal of Thompson (1949) 66 WN(NSW) 185 Referred to

The King v Archdall & Roskruge; Ex parte Carrigan and Brown (1928) 41 CLR 128 Applied

The King v Bernasconi (1915) 19 CLR 629 Referred to

The Queen v Murphy (1985) 158 CLR 596 Referred to

The Queen v Ward (1978) 140 CLR Referred to

W A Gilbey Ltd v Continental Liqueurs Pty Ltd (1963 - 1964) 81 WN (Pt1) Referred to

Westpac Banking Corporation v “Stone Gemini” [1999] FCA 917 Referred to

Williams v The King (No 1) (1933) 50 CLR 536 Referred to

Zarb v Kennedy (1968) 121 CLR 283 Considered

Ah Yick v Lehmert (1905) 2 CLR 593 Referred to

Australian Securities and Investments Commission v Edensor Nominees Pty Ltd (2001) 177 ALR 329 Referred to

Kodak (Australia) Pty Ltd v The Commonwealth (1990) 22 FCR 197 Referred to

Parisienne Basket Shoes Pty Ltd v Whyte (1938) 59 CLR 369 Referred to

R v Doan (2000) 50 NSWLR 115 Referred to

R v Hall [1891] 1 QB 747 Referred to

Rhode v DPP (1986) 161 CLR 119 Referred to

Ridley v Whipp (1916) 22 CLR 381 Referred to

Russell v Russell (1976) 134 CLR 495 Referred to

Williams v The King (No 2) (1934) 50 CLR 551 Referred to

THANH HAO LY v GLENN JENKINS, GRANT RAPER AND JENNIFER BETTS, A LOCAL COURT MAGISTRATE

N230 OF 2001

THANH DAI LY V GLENN JENKINS, GRANT RAPER AND JENNIFER BETTS, A LOCAL COURT MAGISTRATE

N231 OF 2001

MOORE, SACKVILLE AND KIEFEL JJ

26 NOVEMBER 2001

SYDNEY

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

THE COURT ORDERS THAT:

1.      The costs orders made by the Local Court at Burwood on 19 July 2000 against each of the appellants be set aside.

2.      The proceedings be remitted to the learned Magistrate for the purposes of determining consistently with the reasons of the Court, what, if any, orders for costs should be made against the appellants.

3.      The appeal be otherwise dismissed.

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

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

MOORE J:

1                     I have had the benefit of reading the reasons for judgment of Sackville and Kiefel JJ in a draft form. I agree with what their Honours have said about the constitutional issue and whether the Local Court of New South Wales is a court of competent jurisdiction for the purposes of s 132(7) of the Copyright Act 1968 (Cth).

2                     There remains for consideration the appellants' challenge to the orders for costs made by the learned Magistrate. I generally agree with the reasons of Sackville and Kiefel JJ concerning the obligation of the learned Magistrate to consider whether any costs ordered were just and reasonable and her Worship’s failure to do so and agree with what Kiefel J has said about the way the order was expressed. I agree with the orders they propose, but wish to add a few observations on other matters. It is unnecessary to repeat Kiefel J' s summary of the relevant facts.

3                     In their notices of appeal, the appellants challenged the costs orders on the following ground:

“3(d) If the offence of which the Appellant was convicted was valid, and the Magistrate/Local Court had jurisdiction to hear and determine the matters preferred against the Appellant, the penalties imposed were too severe in all the circumstances (sic) had no jurisdiction or alternatively exceeded her jurisdiction in purporting to make a costs order under s 81 of the Justices Act 1902 (NSW) on 19 July, 2000.”

4                     The written submissions of counsel for the appellants were:

“27. It is submitted that s 81 of the Justices Act 1902 (NSW) did not confer power on the Magistrate to make the aforementioned costs orders and there was no proper basis for the award of such costs.

28. Section 81(1) authorises the awarding of professional costs against a person convicted of a criminal offence. Professional costs are defined in s 81(7) as follows:

‘professional costs mean costs (other than court costs) relating to professional expenses and disbursements (including witnesses’ expenses) in respect of proceedings before a Justice or Justices.’

29. The prosecution of these matters was conducted by a police prosecutor. It is submitted that professional costs can only be awarded to a prosecutor who is a ‘professional’ in the sense referred to in s 81(1), that is a legally qualified practitioner – cf. Kelly v Noumenon [1988] 47 SASR 182 at 184-5. There was no evidence that the prosecutor was a legally qualified practitioner nor was there any basis for the Magistrate to assume that he was. Under s 81 of the Justices Act, witness expenses can only be awarded when they are disbursements incurred as part of professional costs. Since there was no basis for the award of professional costs there was also no basis for the award of witness expenses.

30. Further, witness expenses could only have been awarded for expenses incurred by witnesses in respect of proceedings before the Magistrate. The material tendered in support of the award of costs demonstrated that if any expenses were incurred by the persons nominated they were incurred before the proceedings commenced. Section 81(1) does not permit a Magistrate to award costs (expenses) in relation to time taken by a person to provide a statement for use in future criminal proceedings – Kelly v Noumenon, supra.

31. Further, the power to award professional costs under s 81 of the Justices Act is one that can only properly be exercised by the making of an order in Australian dollars. It is not permissible to award costs in a foreign currency, if for no other reason than to ensure certainty.”

5                     The written submissions were formulated by reference to s 81 as amended (by schedule 9 of the Courts Legislation Amendment Act 2000 (NSW)) after the costs orders were made on 19 July 2000. At that time the section relevantly provided:

“(1) The Justice or Justices making any conviction or order may in and by such conviction or order adjudge that the defendant shall pay to the clerk of the court, to be by him paid to the prosecutor or complainant, or, in the case of an order of dismissal, that the prosecutor or complainant shall pay to the clerk of the court, to be by him paid to the defendant (or, if the prosecutor or complainant so elects, directly to the defendant) such costs as to such Justice or Justices seem just and reasonable.”

6                     During the hearing of the appeal the following emerged as the issues raised by the appellants on the question of costs:

(1)                   Section 81 conferred power on a magistrate to award professional costs only. Professional costs cannot be awarded to a police prosecutor: see Kelly v Noumenon Pty Ltd (1988) 47 SASR 182. The amendments to s 81 made in September 2000 making express reference to "professional costs" can be called in aid in construing the section prior to the amendments: see Allina Pty Ltd v Federal Commissioner of Taxation (1991) 99 ALR 295.

(2)                   Even accepting that disbursements incurred for witnesses’ expenses can be comprehended in an order for professional costs, costs cannot be awarded for investigation or proof of the case. A variant of this submission was that the informants were under no obligation to satisfy the charges deposed to in the two American affidavits as disbursements. Those charges were simply charge-out rates of the relevant corporations and their advisers.

(3)                   The learned magistrate had no power to make an order in, or referable to, US dollars.

(4)                   In exercising the discretionary power to award costs, the learned magistrate failed to address the question of whether the costs awarded were proportional to the offence or the fines or both: see Kelly v Noumenon Pty Ltd (supra).

7                     In the proceedings before the learned magistrate heard in May and June 2000, a Sergeant Harrison appeared for the informants. Some police prosecutors in New South Wales are legally qualified. During submissions on the issue of costs the legal representatives of the defendants (the representation changed), made no submission that the power to award costs under s 81 was not enlivened because the prosecutor was not legally qualified and the power under that section was relevantly limited to awarding professional costs. The learned magistrate was entitled to proceed on the basis that the prosecutor was legally qualified or at least on the basis that whether he was qualified was not relevant.

8                     In this matter it is unnecessary to determine the reach of s 81 as it might have applied to ordering costs relating to the attendance of a legally unqualified prosecutor before the amendment made by schedule 9 of the Courts Legislation Amendment Act 2000 (NSW). No order was made concerning the attendance of the prosecutor whether qualified or not. However even if the prosecutor in the present matter was not legally qualified, it is at least arguable, having regard to the width of the language then used in s 81 (as I explain shortly), that an order for costs could have been made relating to the attendance of the prosecutor. In Moore-McQuillan v SA Police (No 2) [2000] SASC 69 Debelle J said:

“It is well established that, where a prosecution is conducted on behalf of the prosecuting authority by a legally unqualified officer of that authority, the authority through its officer is entitled to recover only the costs which would be recoverable by any legally unqualified complainant appearing in person: Kelly v Noumenon Pty Ltd (1988) 47 SASR 182. Those costs are limited to out-of-pocket expenses including disbursements, travelling expenses to and from the court on the occasion of necessary appearances, the cost of sustenance if the witness is forced to stay away from home, and some allowance for the time actually occupied in appearing before the court while it is sitting: Willing v Hollobone (1972) 3 SASR 532; Kelly v Noumenon at 187-188. Those expenses do not include time spent in preparing the case for trial but the prosecuting authority is entitled to recover the costs incurred in the attendance of the prosecutor at court, the cost of that time to have regard to other matters on which the prosecutor attends: Kelly v Noumenon at 188.

These principles are daily applied in Magistrates’ Courts in respect of police prosecutions when magistrates make orders allowing a reasonable fee for the costs incurred by the Police Department in prosecuting summary and other offences.” (emphasis added)

9                     In that matter, his Honour went on to conclude that the magistrate had power to award costs representing a fee of $220 per day to be paid for the attendance of the prosecutor representing the original complainant in an application to revoke a restraining order.

10                  In issue in this appeal is the order concerning the costs associated with both the Australian investigators and the affidavit evidence prepared in the United States of America. Section 81 empowered the learned magistrate to award “costs” to be paid to the prosecutor or complainant by initial payment to the clerk of the court. What “costs” might comprehend was considered by the High Court in Cachia v Hanes (1994) 179 CLR 403. A helpful summary of the High Court's decision is found in the judgment of Doyle CJ in Burford v Allen (unreported, Supreme Court of South Australia, 26 May 1998). The Chief Justice said:

“The approach of the majority (Mason CJ, Brennan J, Deane J, Dawson J and McHugh J) was that the outcome of the case was governed by the meaning of ‘costs’. They said (at 409):

‘The 'costs' provided for in the Rules do not include time spent by a litigant who is not a lawyer in preparing and conducting his case. They are confined to moneys paid or liabilities incurred for professional legal services. It is only in that sense that the Rules speak of 'costs'.’

Although the focus of this passage is upon the claim advanced by the litigant in person, the reasoning rests upon the conception that "costs" are limited to expenses incurred for professional legal services. Those expenses, of course, will include the expenses that might be incurred by the practitioner. The majority made this clear a little later when they said (at 410-411):

‘To use the Rules to compensate a litigant in person for time lost would cut across their clear intent. Costs, within the meaning of the Rules, are reimbursement for work done or expenses incurred by a practitioner or practitioner's employee. Compensation for the loss of time of a litigant in person cannot be said to constitute costs within the meaning of the Rules.

This is hardly surprising. It has not been doubted since 1278, when the Statute of Gloucester 1278 (UK) 6 Edw. I c 1 introduced the notion of costs to the common law, that costs are awarded by way of indemnity (or, more accurately, partial indemnity) for professional legal costs actually incurred in the conduct of litigation. They were never intended to be comprehensive compensation for any loss suffered by a litigant.’

In my opinion these passages have a twofold significance. First, the emphasis upon ‘costs’ being professional legal costs, that is reimbursement to a practitioner for work done or expenses incurred by the practitioner. Secondly, the emphasis upon the fact that the award of costs is not intended to be complete compensation for losses suffered by a litigant.”

In that matter the contentious costs claimed were interest on a loan to fund the litigation.

11                  The issue of what is comprehended by the word "costs" was considered again by the High Court in Re JJT; Ex parte Victoria Legal Aid (1998) 195 CLR 184. In that matter, Hayne J said at [91] (Gaudron J generally agreeing):

“On its face, then, the reference in s 117 to "costs" is a reference to "costs" as that word is ordinarily understood in the law: the amount which the person to whom the order is directed must pay to some party to the litigation as partial indemnity for the professional legal fees and expenses incurred by the party in the course of the litigation.”

12                  For a comparatively recent detailed discussion on what a power to award “costs” comprehends see Walton v McBride (1995) 36 NSWLR 440.

13                  In the present matter the power to award costs conferred by s 81 included, in my opinion, power to award an amount for disbursements and expenses reasonably incurred in the preparation of the prosecution even if not directly incurred by the prosecutor. Such costs could be awarded apart from whether or not there was also power to award an amount for the services of the prosecutor or the attendance of the prosecutor in court.

14                  Section 81 was expressed in general terms and provided that “costs” could be ordered “to be … paid to the prosecutor or complainant.” Of relevance also is s 70(2) which provided that “the prosecutor or complainant may himself or herself or by his or her counsel or attorney, conduct his or her case … .” The legislative predecessor of s 81 was s 18 of one of Jervis’ Acts (11 & 12 Vic. c. 43) adopted in New South Wales by the Justices Act of 1850 (14 Vic. 43). In Ex Parte Graves (1891) 8 WN(NSW) 44, the Supreme Court of New South Wales decided that s 18 did not confer jurisdiction on a Justice to award professional costs to a defendant who had been represented by an articled clerk and not counsel or an attorney. Sir G. Innes J said:

“The only persons entitled to professional costs are counsel and attorneys, and in our opinion the Justices exceeded their jurisdiction in making the order they did. It is not merely a question of procedure but one of jurisdiction. There is no authority for the course the Justices pursued. An articled clerk is in no different position from any ordinary layman. A Justice might permit any person to conduct the case for one of the parties, as, for instance, if the party in the case had an impediment in his speech; but there could be no award of professional costs in such a case.”

15                  That judgment was given at a time when the courts were taking a comparatively strict view of who might appear, as solicitor, for a party at the hearing. It could not be a managing clerk of the solicitor on the record even if the clerk was a solicitor himself: see Ex parte Browne (1913) 13 SR(NSW) 593.

16                  However in McLaurin v Hall (1913) 13 SR(NSW) 114 the Court concluded that a Justice had not erred in ordering a defendant to pay the informant’s costs (in the sum of £320). The information was laid by the secretary of a Royal Commission who alleged the defendant had failed to comply with a summons to attend the Commission. The defendant was convicted. The complainant was represented by counsel before the Justice. The defendant appealed and argued that the complainant had not, by his own admission, retained counsel or a solicitor. Pring J said at 124:

“Of course his award as to costs is somewhat large, but the case for some reason or other, simple as it is, took a long time – 25 days – and counsel of some eminence was briefed for the complainant. The magistrate considered that circumstance, and awarded an amount which I think is by no means extravagant. The magistrate clearly had power under the section to award costs, and the amount allowed is not a matter we should interfere with. If he were to award a grossly extravagant sum there might be a remedy by prohibition, though I do not say there would be, to correct that injustice. In cases where police officers lay information, it is the everyday practice for magistrates to award costs, but, of course, constables do not receive costs or pay them. Everybody knows that the proceedings are taken on the part of the Crown, just as this was. The magistrate, realising and knowing that costs had been incurred, could order a reasonable sum to be paid by the appellant. Then it is said that there was no power to award costs because the Crown could not have costs awarded against it. With regard to that, it is only necessary to refer to the case of Alexander v. Donohoe (4 C.L.R. 781). That was a prosecution by a customs officer, and Mr. Tighe, for the appellant, argued that the magistrate had no jurisdiction to award costs when exercising Federal jurisdiction. Griffith, C.J., says: ‘all the State Courts are invested with Federal jurisdiction. And surely in every case where a party is entitled to have recourse to a State Court, under a Federal Act, costs may be awarded him in the same way as if the Court were exercising its ordinary jurisdiction.’ There is no question that if the magistrate had been exercising his ordinary jurisdiction he would have power to make an order for costs. For these reasons, I think the question submitted in the special case must be answered in the negative, and the appeal dismissed with costs.”

17                  In The Appeal of Thompson (1949) 66 WN(NSW) 185, an issue arose about the power to order costs under s 81 when an information alleging breach of price control regulations by an officer of a Government department had been laid and the informant had been represented at the hearing by a salaried solicitor in the State Crown Solicitor’s department. The defendant was convicted and ordered to pay £2 12s 0d costs. In an appeal the defendant successfully argued that the salaried solicitor had no right of audience and, accordingly the magistrate had no power to award costs under s 81. Curlewis J noted that “(i)f the informant is successful in his application to the court he is entitled to be recouped his just and reasonable costs for employing a solicitor”. However as the salaried solicitor was not the informant’s solicitor, he had no right of audience and, for that reason, the magistrate had no power to award costs. Substantially the same issue arose again later the same year in Ex parte W.A. Grubb Pty Ltd; Re Johnston (1949) 66 WN(NSW) 224. Herron J took a different view and concluded that the salaried solicitor did have a right of audience.

18                  The approach of Herron J was approved in Cook v Head and Arneman [1976] 1 NSWLR 176. Glass JA (Moffitt P agreeing) said at 182:

“The answer to the last question is controlled by the decision of this Court in Ex parte W.A. Grubb Pty Ltd; Re Johnston (1949) 66 WN(NSW) 224 and a decision to the same effect of the Supreme Court of Victoria in Blackall v. Trotter (No. 1) [1969] VR 939. These judgments, in my opinion, establish that where a party appears in proceedings as the nominal representative of the Crown he is entitled to recover costs in circumstances where an ordinary party would be so entitled, and that it is no objection to such an order in his favour that he did not personally incur expense in connection with the litigation.” (emphasis added)

19                  It is to be noted that the power to award costs arises even if the complainant did not personally incur the expenses to which the costs order related.

20                  The authorities considered to this point have concerned the power of a magistrate to award costs under s 81 when a legally qualified person appeared for the informant but there was an issue about the status of the person as a practitioner. More generally, however, they reveal that a broad view emerged about the scope of the power conferred by s 81.

21                  The issue of whether witnesses’ expenses could be ordered as costs in circumstances where there was a police prosecution with no legally qualified representative appearing for the informant arose in R v Burt; Ex parte Presburg [1960] 1 QB 625. An individual had been charged with crossing a traffic light when the lights were against him. When the matter came before the stipendiary magistrate, the defendant appeared represented by a solicitor though there was no appearance by or on behalf of the informant. Nonetheless a police officer gave evidence and the defendant was convicted. The stipendiary magistrate ordered that the defendant pay £2 2s costs to cover the attendance of the police officer to give evidence. The power of the stipendiary magistrate to award costs was conferred by Costs in Criminal Cases Act 1952 (UK) which was in similar terms to s 81. Section 6 of that Act provided:

“(1) On the summary trial of an information a magistrates’ court shall have the power to make such orders as to costs

(a) on conviction, to be paid by the accused to the prosecutor;

(b) on dismissal of the information to be paid by the prosecutor to the accused,

as it thinks just and reasonable.”

22                  The leading judgment was given by Lord Parker CJ who considered that the issue was resolved by reference to Attorney-General v Shillibeer (1849) 19 LJ (NS) Ex 115. In Shillibeer the Crown had been awarded costs in circumstances where the informant had been represented by a salaried employee of the Crown Solicitor. His Lordship said at 634:

“In my judgment, there is no distinction between that case and the case of the salary paid to a police officer, or any other salary which a prosecutor has to pay to a person whose activities are necessary in and about a prosecution. It matters not that, unlike the case of Shillibeer, the person to whom a salary is paid is not a solicitor or a professional man.”

23                  and later at 635:

“It has been conceded that, although the information was laid by a particular police constable, he must be taken in laying that information to be acting on behalf of the Metropolitan Police; it would be quite artificial to treat him as a private individual and to say that as a private individual he had been put to no expense or loss or trouble because he himself was being paid all the time. Not only would that be an artificial approach, but if one looks at section 17(1) of the Act of 1952, it is expressly provided: ‘“Prosecutor” includes any person who appears to the court to be a person at whose instance the prosecution has been instituted, or under whose conduct the prosecution is at any time carried on.’ Accordingly, Mr. Miskin, quite rightly, has conceded that the prosecutor here and the person entitled to costs, if costs be payable, is the Commissioner of Metropolitan Police or the Metropolitan Police Force.”

The challenge to the power of the stipendiary magistrate to make the costs order was dismissed.

24                  In a note on this case in (1960) The Australian Law Journal, vol 34 p 56 it was said:

“The reasoning underlying the case appears to justify the granting of costs to police prosecutors in some cases in magistrates’ courts in Australia, see for example ss 81 and 147 of the Justices Act 1902-1957 (NSW)”.

25                  I have been unable to find any Australian authority (and particularly one in New South Wales) applying R v Burt (supra). However in Kelly v Noumenon Pty Ltd (supra) King CJ addressed the position where the complainant was represented by a legally unqualified officer of the Corporate Affairs Commission. His Honour said at 185:

“I think that it follows that where a legally unqualified officer of the Commission is permitted to prosecute the question of costs is to be approached as though the matter was conducted by the complainant in person notwithstanding that the prosecuting officer is not the complainant on the record. The Commission should be entitled to recover such costs as are, but no further costs than, would be recoverable by any legally unqualified complainant appearing in person.”

26                  It is relatively clear from the judgments of the High Court in Cachia v Hanes (supra) that while a legally unqualified litigant is not entitled to costs for representing himself or herself, witnesses’ expenses and appropriate disbursements are recoverable by the litigant: see also Secretary, Department of Foreign Affairs and Trade v Boswell (1992) 39 FCR 288.

27                  Traditionally, disbursements have been either payments made or liabilities incurred by the practitioner (representing the party in whose favour the costs order is made) which the practitioner is bound to pay or payments which, by established custom and practice of the profession, the practitioner is bound to pay: see Re Remnant (1849) 11 Beav 603 and Browne v Barber [1913] 2 KB 553. Such disbursements can include witnesses’ expenses: see Re Felton (1942) 60 WN(NSW) 16. While the proceedings before the learned magistrate were criminal proceedings, principles concerning the awarding of costs and what they might comprehend in civil proceedings have relevance: see Norton v Morphett (1995) 83 A Crim R 90.

28                  The learned magistrate ordered that the defendant pay the costs occasioned by the preparation of the affidavits in the United States and of the Australian investigators on the basis, seemingly, that they were either witnesses’ expenses (though that expression may have been used fairly loosely in the course of the submissions by the parties to the learned magistrate) or expenses necessarily incurred in the preparation of the prosecution.

29                  The entitlement of a subpoenaed witness to expenses and what those expenses might comprehend was considered by Sheppard J in Bank of New South Wales v Withers (1981) 35 ALR 21. His Honour extracted several principles from the authorities which included (at 37):

“The principles which, in my opinion, the authorities to which I have referred establish are:-

(1) …

(2) …

(3) A person upon whom a subpoena, whether to produce documents or otherwise, is served is entitled at common law (but originally probably because of the terms of the statue 5 Eliz c 9, s 12) and now under rules of court to an adequate indemnity for his expenses of coming to and from court and for his sustenance during the time he is required to remain there. …

(4) Professional witnesses, especially doctors and attorneys, and seafaring witnesses were also entitled at common law to recover an amount to indemnify them for loss of time whilst they were detained at court as a result of the service of a subpoena. No other person was so entitled.

(5) That position changed in England and Australia from about the time of the passing of the Common Law Procedure Act 1852, pursuant to which scales of fees for witnesses were promulgated. Thereafter witnesses have been entitled, according to the appropriate scale, to payment for loss of time as well as for payment of expenses of travelling to and from, and remaining at court. Whether the right to recover is based upon an implied contract or upon a statutory entitlement arising by reason of the provisions of the rules, it is unnecessary to decide.

(6) …” (emphasis added)

30                  A more recent consideration of the expenses that may be ordered in relation to witnesses is found in Pyramid Building Society (in liq) & Ors v Farrow Finance Corporation (in liq); Ex parte Farrow, Clarke and Lawson [1995] 1 VR 464 at 465-468.

31                  However an order requiring the payment of witnesses’ expenses may, in appropriate circumstances and subject to the terms in which the power to award costs is conferred, also include a “qualifying fee”. That is, an amount to meet the expenses of witnesses incurred in preparing to give evidence about the facts of a particular case: see e.g. Robinson v Malcolm & Co Ltd (1899) 5 ALR 204 at 206 (surveyor) and McLaughlin v City Bank of Sydney (1916) 16 SR(NSW) 491 at 496 (accountant). It is not necessary for a witness be an expert to receive a qualifying fee: see e.g. Attorney-General v Birmingham Drainage Board (1908) 52 Sol J 855 (non-expert witness employed by plaintiff to watch the sewage discharged into a river by the defendant, in a proceeding for an injunction restraining the defendant from discharging sewage) and Barwick v Barwick (1938) 33 Tas LR 1 (private detective employed to gather evidence in a divorce proceeding). Nor is it necessary that the witness be called to give the evidence in court: Clark, Tait & Co v Federal Commissioner of Taxation (1931) 47 CLR 142 at 146 (stock and station agent and valuer became qualified to give evidence but was not called as a witness) though compare Holden v Architectural Finishes Ltd [1997] 3 NZLR 143 at 157 (valuer prepared a report which was admitted into evidence but did not swear an affidavit or give evidence – no expenses were awarded).

32                  An example of where witnesses’ expenses were ordered in a case bearing some similarities to the present is W A Gilbey Ltd v Continental Liqueurs Pty Ltd (1963 -1964) 81 WN(NSW) (Pt1) 1, though they were civil proceedings. In that matter the defendant company, in a suit for passing-off, called a witness from the United States to give evidence in Sydney. The witness’ evidence was led to prove the assignment to the defendant company from an American company of rights to use certain words in connection with its products in New South Wales, and to prove the reputation abroad of those words. The defendant company failed on both these issues at first instance, but the High Court allowed an appeal and ordered that the suit be dismissed with costs. In doing so, the High Court observed that the relevant reputation was established beyond dispute by the documentary evidence, and that it did not depend on oral evidence. The High Court did not need to consider whether the assignment contended for by the defendant was proved. In a taxation of costs, a Registrar disallowed the disbursements incurred in calling the American witness, on the basis that they were not necessarily incurred to establish the defendant’s case. In a review of the taxation, Asprey J allowed the costs of calling the American witness, on that basis that they were necessarily and properly incurred in procuring the attendance of a witness whose evidence was intended to prevent the plaintiff establishing that the relevant words had come to designate the product of the plaintiff in New South Wales. However, Asprey J referred the question of quantum to the registrar, so it did not emerge whether the American witness’ claimed expenses included a qualifying fee.

33                  In my opinion, it would be consistent with these authorities to view some of the costs of the preparation of the affidavits in the United States as a “qualifying fee” and comprehended by the expression “costs” in s 81, if the learned magistrate was satisfied the costs directly related to preparing to give evidence or giving evidence in the proceedings and the other elements of s 81 were made out. I am satisfied the learned magistrate had power to make an order concerning the preparation of affidavits in the United States to prove the existence of the intellectual property rights to which the proceedings related. However any consideration by the learned magistrate of what order, if any, should be made in relation to the preparation of the affidavits in the United States must be subject to the statutory injunction that the costs “seem just and reasonable”. For the reasons given by Sackville and Kiefel JJ, the costs claimed for the preparation of the American affidavits will have to be considered with some care if, as a matter of discretion, the learned magistrate decides to make a further order in relation to them.

34                  The costs ordered in relation to the Australian investigators (each of whom gave evidence) appear to have included their professional fees for conducting the initial investigation concerning whether the defendants had contravened the Copyright Act 1968 (Cth). So much is apparent from the letter dated 11 May 2000 from the Australian Film and Video Security Office to Sergeant Harrison.

35                  There appears to be no settled approach to whether the investigation of an offence leading to proceedings and summary conviction can, as a matter of power, be the subject of a costs order. In Kelly v Noumenon Pty Ltd (supra) King CJ said at 184:

“It is clear from the authorities that the indemnity which a party to litigation receives in consequence of an order for costs is an indemnity in respect of his liability to his solicitor for professional charges for work reasonably and properly done in connection with the litigation and for out-of-pocket expenses reasonably so incurred. In a prosecution to which s 77 applies, this indemnity no doubt includes the initiation of proceedings by complaint and summons and the conduct of the proceedings thereafter, but it does not extend to the cost of detecting or investigating the offence nor to any share of the administrative costs of the prosecuting department or agency, either generally or in connection with the detection and investigation of the particular offence: Manthorpe v Bache (1980) 25 SASR 316.”

36                  Manthorpe v Bache (1980) 25 SASR 316 concerned summary proceedings leading to the conviction of the defendant for driving a motor vehicle with more than the prescribed concentration of alcohol. The defendant was convicted and the special magistrate ordered that he “contribute the sum of $100 towards the cost of the prosecution”. The order was made in purported exercise of a power conferred by s 77 of the Justices Act 1921-1979 (SA) which, for present purposes, was in substantially the same terms as s 81. That is, the magistrate had power to order “such costs as the Court thinks just and reasonable”. However that Act also contained s 200a which enabled a certificate of compensation to be granted by the magistrate “for any expense, trouble or loss of time reasonably incurred by ‘a person’ in connection with the proceedings.” Any such compensation was payable out of monies provided by Parliament: see s 200a(5). White J concluded that in the face of an express legislative mechanism for the payment of compensation, no order could have been made under s 77 dealing, indirectly, with the same matter. There is no corresponding provision in New South Wales of which I am aware which limits, as a matter of construction, the scope of s 81. In addition, his Honour took the view that an order of the type made could impose a manifestly oppressive burden on an individual defendant (effectively underwriting the costs of the administration of a police department) and might lead to detention in default of payment.

37                  Reference has already been made to Barwick v Barwick (supra) which was a civil matter. In that matter Clarke J determined a review of a decision of the Registrar disallowing certain items in the taxation of a bill of costs. In issue were the fees paid to a private inquiry agent for services rendered in the discovery of evidence of adultery in proceedings brought under the Matrimonial Causes Act 1860 (Tas). The inquiries were made before the action was commenced. The relevant rules (made under the Civil Procedure Act 1932 (Tas)) provided that just and reasonable charges and expenses as appear to have been properly incurred in procuring evidence, and the attendance of witnesses, are to be allowed and also that the taxing officer should allow all such costs, charges, and expenses as shall appear to him to have been necessary or proper for the attainment of justice or for maintaining or defending the rights of any party. Clarke J concluded that the fees were allowable under that latter provision. His Honour also concluded that the fees were allowable under a rule authorising qualifying fees for witnesses and said:

“A private detective is certainly not an expert, but a qualifying fee may be allowed to a witness who is not an expert, and the fact that the work was done in qualifying the witness before the petition was filed does not dispose of the matter.”

38                  In the United Kingdom costs associated with the investigation of a matter leading to summary conviction have been ordered in exercise of a power to order “costs”. In Neville v Gardner-Merchant Ltd (1983) 5 Cr App R (S) 349 an issue arose about the power of magistrates to order costs covering the expenses of investigating the offence. The respondent company had pleaded guilty to a number of summary offences under regulations concerning food hygiene. The magistrates ordered the respondent company to pay the costs of the prosecutor, including preparatory work carried out by the prosecutor’s senior legal officer but disallowed any amount in respect of the time spent by the prosecutor’s senior environmental officer, who had carried out the inspections which led to the proceedings. The prosecution was maintained by the Westminster City Council. In an appeal Kerr LJ and Webster J concluded that the justices had misdirected themselves in holding that they had no discretion to award such investigation costs on the basis they were not comprehended by the terms of s 2(2) of the Costs in Criminal Cases Act 1973 (UK) which provided:

“On the summary trial of an information a magistrates’ court shall, on conviction, have power to make such order as to costs to be paid by the accused to the prosecutor as it thinks just and reasonable …”.

The magistrates had stated a case involving two questions:

“(1) Did we misdirect ourselves in law in refusing to order costs in favour of the prosecutor to reimburse the cost of time extended by a senior environmental health officer in investigating the case on the ground that our discretion was not wide enough to embrace such costs? or

(2) In the alternative, did we misdirect ourselves in law in refusing to 0award investigation as well as legal costs in that since the investigating officer is paid from public funds and since it is her job to investigate such contravention on behalf of the local authority such costs were not properly payable to a prosecutor?”

On these questions Kerr LJ (who gave the leading judgment) said:

“Since it seems to me that question (1) seeks to raise the issue whether the justices had a discretion to award these costs in the present case, I would conclude that they misdirected themselves in reaching the conclusion that they had no such discretion. The authorities to which I have referred are in the contrary sense: not only did they have a discretion to award these costs, but prima facie, costs of this kind should be awarded. So far as question (2) is concerned, if I am right in reading it as directed to the question whether such costs should nevertheless be disallowed because they relate to the time of an investigating officer paid out of public funds whose job it was to investigate such alleged offences; again, the answer is that there is nothing in the authorities which precludes an award of costs in these circumstances. Again, the authorities are to the contrary, since it is clear from them that the fact that the person in question is salaried and only doing his or her job makes no difference to the issue of costs.”

39                  However this decision was distinguished in Re Caffrey’s Application for Judicial Review [2000] NI 17, an unreported judgment of the Queen’s Bench Division of the High Court. In that matter a magistrate had ordered a defendant convicted of offences under the Merchant Shipping Act 1995 (UK) to pay costs of investigation (of, it appears, the seaworthiness of the vessel to which the proceedings related). Section 2 of the Costs in Criminal Cases Act (Northern Ireland) (1968) empowered a magistrate to order the whole or any part of the costs of the prosecution (including any costs incurred in connection with any matter preliminary or incidental to the trial). Their Lordships said:

“In our opinion the words ‘preliminary or incidental to the trial’ in s 2(1) are intended to refer to the costs of remands, adjournments and interlocutory proceedings, not investigation of the incident out of which the prosecution arose. The resident magistrate was accordingly in error in including investigation costs in the award of costs against the applicant.”

40                  However the approach in Neville v Gardner-Merchant Ltd (supra) appears to continue to reflect the accepted approach to the awarding of costs in summary prosecutions. In Associated Octel Ltd [1997] 1 Cr App R (S) 435 an issue arose in the Court of Appeal about the scope of a magistrate’s power to order costs for the investigation leading to the prosecution. In that matter, the defendant company had been convicted of offences under health and safety legislation. The magistrate ordered the defendant company to pay £142,655-33. A significant element of this sum reflected the costs of inspection and investigation following a fire at the defendant’s plant. The Prosecution of Offences Act 1985 (UK) conferred a power on the magistrate to “make such order as to costs to be paid by the accused to the prosecutor as it considers just and reasonable”. The Court of Appeal was referred to the leading judgment of Stocker LJ in Seymour [1987] 9 Cr App R (S) 395 who had taken the view that the costs of investigating an offence (involving the destruction of an unknown quantity of Roman remains by a farmer ploughing his field) should not be ordered to be paid by the defendant. The Court of Appeal in Associated Octel Ltd (supra) indicated a preference for the approach of the Court in Neville v Gardner-Merchant (supra).

41                  I am satisfied that s 81 was cast in sufficiently wide terms to have conferred power on a magistrate to order a defendant convicted of an offence of the type presently under consideration under the Copyright Act 1968 (Cth) to pay, as costs, the costs associated with the investigation of the offence. However notwithstanding the existence of the power it is necessary for the magistrate to be satisfied that such costs are just and reasonable.

42                  In the present matter, any such determination will be made against a background in which there has not been, in New South Wales, a practice of awarding costs against an unsuccessful defendant in police prosecutions let alone ordering the unsuccessful defendant to pay the costs of the investigation. It is in that context that the learned magistrate will be required to consider whether the costs of investigation, or any part of them, should be viewed as just and reasonable.

Associate:

Dated: 26 November 2001

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

SACKVILLE J:

The grounds of appeal

43                  The appellants are brother and sister. On 13 October 1999, each was separately charged, by way of information and summons, with a number of contraventions of s 132(2A)(a) of the Copyright Act 1968 (Cth) (“Copyright Act”). The informations were laid in the Local Court of New South Wales at Burwood by the first and second respondents, members of the New South Wales Police Service. The third respondent is the Magistrate of the Local Court at Burwood who heard and determined the criminal proceedings. She has filed a submitting appearance, save as to costs.

44                  On 9 May 2000, the second day of the hearing before the Local Court, each appellant pleaded guilty to the charges. The offences to which they pleaded guilty involved possession, for the purposes of sale, of a large quantity of pirated video compact discs (“VCD’s”) and digital video discs (“DVD’s”).

45                  On 10 May 2000, the learned Magistrate recorded convictions against each appellant. The male appellant was fined ten thousand dollars in respect of each of four offences, while the female appellant was fined eight thousand dollars in respect of each of five offences. In imposing these penalties, her Worship acted pursuant to s 132(6A) of the Copyright Act, as in force at the date of the convictions. Section 132(6A) provided, inter alia, that a person contravening s 132(2A) was guilty of an offence punishable on summary conviction by a fine of not more than 550 penalty units and/or imprisonment for not more than five years. (Each “penalty unit” was $110, so that the maximum fine for each offence was $60,500: Crimes Act 1900 (Cth), s 4AA(1).) The Magistrate also made orders, pursuant to s 133 of the Copyright Act, for the infringing copies to be delivered up to the copyright owners.

46                  On 19 July 2000, her Worship dealt with an application by the prosecutor pursuant to s 81 of the Justices Act 1900 (NSW) (“Justices Act”) for an order that the appellants pay witnesses’ expenses and other costs incurred in obtaining evidence for the proceedings. In her ex tempore reasons for judgment, the learned Magistrate stated that she proposed to order each appellant to pay $7,300 in respect of expenses incurred in Australia (that is, a total of $14,600), together with the Australian dollar equivalent of $US25,904.35 in respect of expenses incurred in the United States (a total of $US51,808.70). The sums in US dollars referred to in the reasons were to be converted into Australian dollars on the date the convictions had been recorded (10 May 2000). As is explained in the judgment of Kiefel J, the notices of penalty subsequently issued by the Local Court do not accurately reflect her Worship’s apparent intentions.

47                  The appellants have each appealed against the convictions, penalties and costs orders. The appeals are brought pursuant to s 131B(2)(a) of the Copyright Act. The appellants rely on three grounds:

(i)                  Section 132(6A) of the Copyright Act contravenes s 80 of the Constitution and is therefore invalid. According to the appellants, s 80 of the Constitution is to be read as a guarantee that serious offences against a law of the Commonwealth must be tried by a jury. They submit that any offence carrying a maximum penalty of five years imprisonment is a serious offence requiring trial by jury.

(ii)                The Local Court lacked jurisdiction to hear and determine prosecutions for offences against s 132(2A) of the Copyright Act. It is said that ss 39(2) and 68(2) of the Judiciary Act 1903 (Cth) (“Judiciary Act”), on their correct construction, do not confer federal jurisdiction on the Local Court to hear and determine a prosecution for an offence carrying a maximum term of imprisonment of five years.

(iii)               The orders in respect of costs and expenses were not authorised by s 81 of the Justices Act or, in the alternative, her Worship’s exercise of the discretion conferred by s 81 had miscarried.

48                  Notices as required by s 78B of the Judiciary Act were duly served on the Attorneys-General of the Commonwealth, States and Territories in relation to the constitutional argument raised by the appellants.

the course of the appeal

49                  Mr Roberts SC appeared on behalf of the appellants, and Mr Hill on behalf of the first and second respondents. The Attorney-General of the Commonwealth intervened in the proceedings pursuant to s 78A of the Judiciary Act. Mr Hill and Mr Orr QC, who appeared for the Attorney-General, argued that

·        s 132(6A) of the Copyright Act does not offend s 80 of the Constitution; and

·        the Local Court had jurisdiction to hear and determine the proceedings pursuant to s 39(2) or s 68(2) of the Judiciary Act.

50                  In accordance with directions of the Court, the parties and the intervener filed written submissions in advance of the hearing. The appellants’ written submissions in support of their second ground relied upon certain New South Wales provisions that had not been enacted until after the Local Court recorded the conviction and made the orders in the present proceedings. In oral argument both the appellants and the intervener referred to statutory provisions that appear not to have been in force at the relevant time.

51                  The parties and the intervener were subsequently invited by the Court to make further written submissions by reference to legislation that was in force at the relevant time. The parties’ attention was also directed to certain provisions, such as s 51 of the Bail Act 1978 (NSW), that had not been adverted to in argument, but which seemed to be relevant to the jurisdictional issue. Further written submissions were duly filed.

legislative framework: The copyright act and judiciary act

52                  At the time the prosecutions in the Local Court were instituted and determined, s 132(2A) of the Copyright Act provided as follows:

“(2A) A person shall not, at a time when copyright subsists in a work, have in his or her possession an article for the purposes of:

(a) selling…or by way of trade offering or exposing for sale…the article;

…

if the person knows, or ought reasonably to know, the article to be an infringing copy of the work.”

As I have noted, s 132(6A) of the Copyright Act provided that a person who contravened s 132(2A) was guilty of an offence punishable on summary conviction by a fine of not more than 550 penalty units and/or imprisonment for not more than five years.

53                  Section 132(6A) was inserted into the Copyright Act by the Copyright Amendment Act (No 2) 1998 (Cth), which commenced on 30 July 1998. Prior to the 1998 amendments, the penalties for infringing s 132(2A) of the Copyright Act were specified by s 133 as enacted in 1986. Section 133 had provided for a maximum period of imprisonment for a natural person convicted of an offence relating to infringing copies of films of two years (s 133(1)((b)(i)) or five years for a second or subsequent conviction (s 133(1)(d)).

54                  Section 132(6A) has now been further amended by the Copyright Amendment (Digital Agenda) Act 2000 (Cth), Sch #[101]. The amendment removes the reference to penalties for a contravention of s 132(2A) of the Copyright Act. The penalties for such contraventions are now specified in sub-ss 132(6AA) and (6AB) of the Copyright Act, but the maximum sentence of imprisonment remains five years. In the present appeal, however, the Court is concerned with s 132(6A) in its form prior to the most recent amendments.

55                  Section 132(7) of the Copyright Act provides that prosecutions for offences under s 132 may be brought in the Federal Court “or in any other court of competent jurisdiction”. It was common ground on the appeal that s 132(7) is not itself an independent grant of jurisdiction. To use the language of the High Court in The Queen v Ward (1978) 140 CLR 584, at 588-589:

“the expression ‘court of competent jurisdiction’ is apt to signify a court which is otherwise endowed with jurisdiction, as for example by the provisions of the Judiciary Act”.

See also Kodak (Australia) Pty Ltd v The Commonwealth (1990) 22 FCR 197, at 201-202, per Lockhart J.

56                  Section 132(8) of the Copyright Act confers jurisdiction on the Federal Court to hear and determine prosecutions for offences against s 132. In the case of State courts, the possible sources of jurisdiction to hear and determine prosecutions for an offence under s 132(2A) of the Copyright Act are ss 39(2) and 68(2) of the Judiciary Act. Sections 39(2) and 68(1), (2) and (3) of the Judiciary Act provide as follows:

“39(2)The several Courts of the States shall within the limits of their several jurisdictions, whether such limits are as to locality, subject-matter, or otherwise, be invested with federal jurisdiction, in all matters in which the High Court has original jurisdiction or in which original jurisdiction can be conferred upon it, except as provided in section 38, and subject to the following conditions and restrictions:

…

(c)               The High Court may grant special leave to appeal to the High Court from any decision of any Court or Judge of a State notwithstanding that the law of the State may prohibit any appeal from such Court or Judge.

(d)               The federal jurisdiction of a Court of summary jurisdiction of a State shall not be judicially exercised except by a Stipendiary or Police or Special Magistrate, or some Magistrate of the State who is specially authorised by the Governor-General to exercise such jurisdiction….

68(1) The laws of a State or Territory respecting the arrest and custody of offenders or persons charged with offences, and the procedure for-

(a) their summary conviction; and

…

shall, subject to this section, apply and be applied so far as they are applicable to persons who are charged with offences against the laws of the Commonwealth in respect of whom jurisdiction is conferred on the several courts of that State or Territory by this section.

68(2) The several Courts of a State or Territory exercising jurisdiction with respect to-

(a) the summary conviction; or

(b) …;

(c) the trial and conviction on indictment;

of offenders or persons charged with offences against the laws of the State or Territory, and with respect to the hearing and determination of appeals arising out of any such trial or conviction or out of any proceedings connected therewith, shall, subject to this section and to section 80 of the Constitution, have the like jurisdiction with respect to persons who are charged with offences against the laws of the Commonwealth.

68(3) Provided that such jurisdiction shall not be judicially exercised with respect to the summary conviction…of any person except by a Judge, a Stipendiary or Police or Special Magistrate, or some Magistrate of the State or Territory who is specially authorized by the Governor-General to exercise such jurisdiction.” (Emphasis added.)

57                  A decision of a court of a State under Part V of the Copyright Act (which includes s 132) is final and conclusive: s 131B(1). This, however, is subject to s 131B(2), which provides that an appeal lies from a decision of a State court to the Federal Court or, by special leave of the High Court, to the High Court: s 131B(2). The Federal Court has jurisdiction with respect to actions under Part V of the Copyright Act: s 131C.

58                  It was accepted on the appeal that the Federal Court has jurisdiction under ss 131B and 131C to entertain an appeal on the ground that the court of a State purporting to exercise jurisdiction to deal with prosecutions under Part V of the Copyright Act in truth lacked jurisdiction: see Robins v Incentive Dynamics Pty Ltd (1999) 91 FCR 423, at 429-430. It was also common ground that the fact that the appellants pleaded guilty could not overcome any want of jurisdiction in the Local Court to hear and determine the prosecutions: Ridley v Whipp (1916) 22 CLR 381, at 386, per Griffith CJ.

the prosecutions in the local court

59                  It appears that the prosecutions against the appellants were commenced by informations laid by the first and second respondents at the Local Court at Burwood. Although the appeal book did not include copies of the informations, it was common ground that they had been laid pursuant to s 52 of the Justices Act.

60                  Summonses were issued on 13 October 1999 to the appellants under Part IV, Div 2 of the Justices Act. The summons required their appearance for mention on 8 November 1999. Although the precise date on which the informations were laid was not identified, the parties proceeded on the basis that they had been laid on the same day as the summonses were issued, namely 13 October 1999.

61                  The summonses were mentioned in the Local Court on 8 November 1999 and were set down for trial on 8, 9 and 10 May 2000. On 8 May 2000, pleas of not guilty were entered by the appellants and the hearing commenced. On the following day, the appellants each pleaded guilty to the offences under s 132(2A) of the Copyright Act. As already noted, the learned Magistrate imposed sentences on each of the appellants on 10 May 2000 and made costs orders on 19 July 2000.

62                  The appellants were represented by counsel in the proceedings determined by the Local Court (not counsel appearing on the appeal). No jurisdictional or constitutional point was taken at the hearing in that Court.

the trial by jury issue

63                  For the reasons explained by Kiefel J, the appellants’ argument founded on s 80 of the Constitution cannot succeed in this Court. That argument is available to the appellants only if the High Court can be persuaded to overturn decisions that bind this Court.

the jurisdictional issue

the appellants’ submissions

64                  The appellants submitted that ss 39(2) and 68(2) of the Judiciary Act confer jurisdiction on State courts to hear and determine summary offences created by Commonwealth law only if the State courts have an existing and like jurisdiction in respect of summary offences under State law. Local Courts in New South Wales are inferior courts of limited jurisdiction. While Local Courts have jurisdiction to deal with summary offences, the criminal jurisdiction of courts of summary jurisdiction is and has been confined, so it was argued, by the maximum punishment that, by statute, they are permitted to impose.

65                  Mr Roberts submitted that under New South Wales law, subject to one minor exception, the maximum period of imprisonment a Local Court could impose at the time the criminal proceedings were determined by the Local Court was two years. That maximum was to be regarded as a limitation on the jurisdiction of the Local Court. That being so, neither s 39(2) nor s 68(2) of the Judiciary Act conferred federal jurisdiction on the Local Court to determine a summary prosecution for an offence under Commonwealth law carrying a maximum term of imprisonment of five years. It followed, so Mr Roberts argued, that the Local Court at Burwood was not a “court of competent jurisdiction” for the purposes of s 132(7) of the Copyright Act and that it lacked jurisdiction to convict and impose penalties on the appellants for breaches of s 132(2A) of the Copyright Act.

66                  When pressed in oral argument to identify the source or sources of the limit on the jurisdiction of the Local Court to impose sentences of imprisonment in relation to summary offences generally, Mr Roberts identified three possibilities:

·        First, he relied on the Criminal Procedure Act 1986 (NSW) (“Criminal Procedure Act”), s 27(2). Mr Roberts contended that s 27(2) prevents the Local Court imposing a term of imprisonment greater than two years in respect of any summary offence. Section 27 of the Criminal Procedure Act in its present form was introduced by the Crimes Legislation Amendment (Sentencing) Act 1999 (NSW) (“Sentencing Act 1999”), Sch 2 [14] which came into force on 1 January 2000. However, s 27 is in substantially the same terms as the previous s 33J of the Criminal Procedure Act, the Sentencing Act 1999 in essence merely renumbering the provisions. Section 33J of the Criminal Procedure Act is set out later (see [105] below).

·        Secondly, Mr Roberts pointed to what he described as the historical fact that there have always been limits on the jurisdiction of Local Courts or their predecessors to impose sentence of imprisonment in respect of offences triable summarily. Mr Roberts noted that Deane J, in his dissenting judgment in Kingswell v The Queen (1985) 159 CLR 264, at 309, observed that, at the time of Federation, the less serious offences punishable summarily before justices or magistrates were generally restricted to those for which the maximum punishment was no more than one year’s imprisonment. More recently, according to Mr Roberts, the summary jurisdiction has been exercisable by magistrates in relation to offences carrying a maximum penalty of up to two years’ imprisonment. Nonetheless, so he argued, the historical concept of a jurisdictional limit on the exercise of the summary jurisdiction remains intact. An offence punishable by five years imprisonment has never been capable of being dealt with summarily by a magistrate in New South Wales.

·        Mr Roberts identified the third source of a limitation on jurisdiction as s 58 of the Crimes (Sentencing Procedure) Act 1999 (NSW) (“Sentencing Procedure Act”). Section 58 provides, inter alia, that a Local Court may not impose a sentence of imprisonment to be served consecutively with another sentence of imprisonment if the date on which the new sentence would end is more than three years after the date on which the old sentence began. According to Mr Roberts, s 58 of the Sentencing Procedure Act demonstrates that the Local Court could not have been intended to exercise a jurisdiction to sentence an offender to five years’ gaol. Section 58 came into force on 3 April 2000, after the prosecutions against the appellants in the Local Court had commenced, but its predecessor, s 444(4) of the Crimes Act 1900 (NSW) (“Crimes Act”), was in force when the proceedings against the appellants were heard and determined.

67                  Mr Roberts submitted, in the alternative, that the statutory scheme for summary offences triable by Local Courts in New South Wales, created an implied limit on the jurisdiction of those Courts. The limit applicable at the time the prosecutions took place, so he submitted at the hearing, was that the Local Courts could not impose a sentence of imprisonment greater than two years.

68                  Mr Roberts emphasised what he said would be the extreme anomaly that would result if a Local Court could convict a person of an offence under s 132(2A) of the Copyright Act and sentence the offender to five years imprisonment. He pointed out that s 4J(1) of the Crimes Act 1914 (Cth) provides that an indictable offence against a law of the Commonwealth, punishable by imprisonment for a term not exceeding ten years, may be heard and determined with the consent of the prosecutor and defendant by a court of summary jurisdiction. In such a case the maximum term of imprisonment that may be imposed by the court of summary jurisdiction is two years: s 4J(3)(b). Yet if ss 39(2) or 68(2) of the Judiciary Act confer jurisdiction on a Local Court to determine a prosecution for an offence under s 132(2A) of the Copyright Act, the Court is able to sentence an offender to five years’ imprisonment. According to Mr Roberts, if the prosecutions under s 132(2A) of the Copyright Act are to be instituted in a State court, that court must be the Supreme Court of New South Wales in its summary jurisdiction, since there are no relevant limits on its jurisdiction: see Supreme Court (Summary Jurisdiction) Act 1967 (NSW), s 3.

the constitutional background

69                  Section 77(iii) of the Constitution provides that the Parliament may make laws with respect to any of the nine matters mentioned in ss 75 and 76 of the Constitution

“Investing any court of a State with federal jurisdiction”.

The nine matters in ss 75 and 76 include matters arising under any law made by the Parliament: s 76(ii). The conventional view is that ss 39(2) and 68(2) of the Judiciary Act are supported by s 77(iii) and the incidental power conferred by s 51(xxxix) of the Constitution: The Commonwealth v The District Court of the Metropolitan District (1954) 90 CLR 13, at 22, per curiam; Williams v The King (No 2) (1934) 50 CLR 551, at 558-559, per Dixon J. (It should be noted, however, that according to the joint judgment in Byrnes v The Queen (1999) 164 ALR 520, at 541, the investment of State courts with federal jurisdiction by s 68(2) of the Judiciary Act is supported by s 76(ii) and s 77(iii) of the Constitution).

70                  It is “accepted constitutional doctrine” that the Commonwealth, when it invests the judicial power of the Commonwealth in a State court, must take that court constituted and organised from time to time: Kable v Director of Public Prosecutions for New South Wales (1996) 189 CLR 51, at 67, per Brennan CJ. The doctrine was stated by Knox CJ, Rich and Dixon J in Le Mesurier v Connor (1929) 42 CLR 481, at 496, as follows:

“[T]he power is to confer additional judicial authority upon a Court fully established by or under another legislature. Such a power is exercised and its purpose is achieved when the Parliament has chosen an existing Court and has bestowed upon it part of the judicial power belonging to the Commonwealth. To affect or alter the constitution of the Court itself or of the organization through which its jurisdiction and powers are exercised is to go outside the limits of the power conferred and to seek to achieve a further object, namely, the regulation or establishment of the instrument or organ of Government in which judicial power is invested, an object for which the Constitution provides another means, the creation of Federal courts.”

71                  Mr Roberts, in his oral submissions, seemed to suggest that this doctrine renders the Commonwealth constitutionally incapable of altering the jurisdictional limits of a State court by investing that court with federal jurisdiction. This is not so. The position was explained by Latham CJ in Peacock v Newtown Marrickville General Co-Operative Building Society No 4 Ltd (1943) 67 CLR 25, at 37:

“This is a power to give new, additional, jurisdiction to State courts. The Parliament may select such State courts as it pleases. It may give them much or little new jurisdiction. It may make the jurisdiction as wide or as narrow as it pleases with respect to persons, localities or amounts involved; or, as in the Judiciary Act 1903-1940, sec 39, it may allow the State law to operate in respect of such matters. But the State court must be taken as it exists. The constitution or structure of the court cannot be changed by the Federal Parliament.” (Emphasis added.)

Parliament may therefore affect the functions of a State court, but the “court’s organization and constitution are inviolate”: Russell v Russell (1976) 134 CLR 495, at 531, per Stephen J; Adams v Chas S Watson Pty Ltd (1938) 60 CLR 545, at 554-555, per Latham CJ; at 559, per Starke J; at 560, per Dixon J.

72                  An illustration of the power of Parliament to affect the functions of a State court is provided by s 68(5) of the Judiciary Act, which states that the jurisdiction conferred on a court of a State by s 68(2) is conferred “notwithstanding any limits as to locality of the jurisdiction of that court under the law of that State”: see The Queen v Bull (1974) 131 CLR 203, at 275, per Mason J. Another illustration is s 15C of the Acts Interpretation Act 1901 (Cth), which provides as follows:

“Where a provision of an Act, whether expressly or by implication, authorizes a civil or criminal proceeding to be instituted in a particular court in relation to a matter:

(a) that provision shall be deemed to vest that court with jurisdiction in that matter;

(b) except so far as the contrary intention appears, the jurisdiction so vested is not limited by any limits to which any other jurisdiction of the court may be subject;

…”. (Emphasis added.)

Section 15C appears not to apply to ss 39(2) or 68(2) of the Judiciary Act, since neither provision authorises proceedings to be instituted in a “particular court”. If, however, a Commonwealth law does authorise proceedings to be instituted in a particular court, s 15C makes it clear that the law, subject to any contrary intention, will vest jurisdiction in that court regardless of the limits of its jurisdiction under State law.

73                  It follows that the Commonwealth (subject to s 80 of the Constitution) has constitutional power to invest a Local Court with federal jurisdiction in respect of a summary offence created by Commonwealth law, even if the maximum sentence provided by that law exceeds the maximum permitted under State law and even if the latter is to be regarded as a limit on the jurisdiction of the State court. The question in the present case is whether the “self-inflicted limitation on the investment of federal jurisdiction” (The Queen v Bull, at 275, per Mason J), found in the language of ss 39(2) and 68(2) of the Judiciary Act, precludes the Local Court exercising jurisdiction to hear and determine prosecutions for offences under s 132(2A) of the Copyright Act.

the relationship between s 39(2) and s 68(2) of the judiciary act

74                  None of the parties, including the intervener, sought to distinguish between the operation of ss 39(2) and 68(2) of the Judiciary Act so far as the investment of federal jurisdiction in the Local Court is concerned. Section 39(2) invests “the several Courts of the States” with federal jurisdiction in all matters in ss 75 and 76 of the Constitution

“within the limits of their several jurisdictions, whether such limits are as to locality, subject-matter or otherwise”.

The grant of jurisdiction in s 68(2) is to the several courts of a State exercising jurisdiction with respect to the “summary conviction” of offenders or persons charged with the offences against the laws of the State. Such courts are to have the “like jurisdiction with respect to persons who are charged with offences against the laws of the Commonwealth”. The submissions assumed that the reference to “like jurisdiction” in s 68(2) has the same effect as the reference to the “limits of their respective jurisdictions” in s 39(2). Indeed, Mr Orr expressly accepted that this is the case.

75                  Section 68 of the Judiciary Act has its origins in the Punishment of Offenders Act 1901 (Cth) (the “1901 Act”), which was expressed to be a temporary measure operative only until the High Court was established. The measure was necessary to provide for the administration of federal criminal laws, including appeals (dealt with in s 4), pending the establishment of the High Court: Z Cowen and L Zines, Federal Jurisdiction in Australia (2^nd ed 1978), at 214-215. Sections 2 and 3 of the 1901 Act were in terms similar to s 68(1) and (2) of the Judiciary Act.

76                  The 1901 Act was replaced by s 68 of the Judiciary Act following the establishment of the High Court, although s 68 as originally enacted did not provide for appeals from State courts exercising federal jurisdiction: see Ah Yick v Lehmert (1905) 2 CLR 593, at 606-607, per Griffith CJ; The Queen v Murphy (1985) 158 CLR 596, at 617, per curiam. Since then, as the High Court remarked in Murphy (at 617):

“[s 68s] has stood…as a central provision in the administration and enforcement of federal criminal law. What is more, s 68 fulfils an important role in ensuring that federal criminal law is administered in each State upon the same footing as State law, and avoids the establishment of two independent systems of justice, this being the object which lies behind the grant by the Constitution of power to invest State courts with federal jurisdiction. The importance of s 68 in this respect has been expressly recognized in the judgments of this Court: Williams v The King [No 2] (1934) 50 CLR 551, at 560; Reg v Loewenthal; Ex parte Blacklock (1974) 131 CLR 338, at 345.”

77                  Section 39(2) of the Judiciary Act has a more general operation than s 68(2). Section 39(2) applies, except as provided in s 38 (which specifies matters in respect of which the jurisdiction of the High Court is exclusive), to all matters referred to in ss 75 and 76 of the Constitution. These matters, of course, include both civil and criminal proceedings. Questions obviously arise as to the relationship between s 39(2) and s 68(2) of the Judiciary Act.

78                  These questions were addressed soon after the Judiciary Act was enacted. In Ah Yick v Lehmert, in 1905, the High Court held that s 68(2) of the Judiciary Act should not be understood as limiting the operation of s 39(2). It wasdecided in that case that, despite the fact that s 68(2) of the Judiciary Act as originally drafted did not invest State courts with appellate federal jurisdiction in criminal matters, s 39(2) did invest State courts with such jurisdiction. In Adams v Cleeve (1935) 53 CLR 185, the High Court observed that s 68(2) of the Judiciary Act discloses no intention of excluding the operation of s 39 which was said to be “expressed in terms of perfectly general application”. Accordingly, under s 39(2)(b) of the Judiciary Act (since repealed), an appeal lay directly from a Court of Petty Sessions exercising federal criminal jurisdiction to the High Court.

79                  In the light of these authorities, it is settled that ss 39(2) and 68(2) of the Judiciary Act each independently confers federal jurisdiction in criminal matters arising under Commonwealth laws on State courts: The Queen v Bull, at 258, per Gibbs J; at 275, per Mason J. As I have explained, the scope of the two provisions is different, although there is considerable overlap. Indeed, in certain respects the jurisdiction conferred by s 68(2) is wider than that conferred by s 39(2), even though the latter is the more general provision. For example, s 68(2)(b), the constitutional validity of which was upheld in The Queen v Murphy, specifically confers jurisdiction on State courts in committal proceedings in respect of offences against the laws of the Commonwealth.

80                  It is also settled that when s 68(2) of the Judiciary Act speaks of the “like jurisdiction with respect to persons who are charged with offences against the laws of the Commonwealth” it recognises that the adoption of State law must proceed by analogy: Williams v The King (No 2), at 562, per Dixon J, whose views were adopted by a majority in Peel v The Queen (1971) 125 CLR 447. As Starke J said in Williams v The King (No 1) (1933) 50 CLR 536, at 543:

“A ‘like jurisdiction’ is, I apprehend, a jurisdiction analogous, similar or corresponding to that of the State court in respect of offences against the laws of the State”.

See also Rohde v Director of Public Prosecutions (1986) 161 CLR 119, at 124-125, per Gibbs CJ, Mason and Wilson JJ.

81                  The cases on s 68(2) have generally concerned questions of appellate jurisdiction (Adams v Cleeve; Williams v The King (No 2); Peel v The Queen) or committal proceedings (The Queen v Murphy). Perhaps for this reason, they have not considered whether the conferral by s 68(2) of federal jurisdiction on State courts with respect to the summary conviction or trial on indictment of offenders is subject to the same limitation as is imposed by the words “the limits of their several jurisdictions” in s 39(2) of the Judiciary Act. Having regard to the way the present case was argued, however, I shall assume that the language of s 68(2) of the Judiciary Act is intended to incorporate a limitation to the same effect as that found in s 39(2) of the Judiciary Act. Accordingly, I shall address the appellants’ contentions by reference to that limitation.

the authorities

82                  Several decisions of the High Court have addressed the scope of the “self-imposed” limitation on the conferral of jurisdiction on State courts under s 39(2) of the Judiciary Act. The first was Federated Sawmill Timberyard and General Woodworkers’ Employees’ Association (Adelaide Branch) v Alexander (1912) 15 CLR 308. A Commonwealth law provided that dues payable to a union could be sued for and recovered in any court of summary jurisdiction. In proceedings instituted in a court of summary jurisdiction in New South Wales, the defendant relied on s 10 of the Justices Act 1850 (SA), which required a complaint to be made within six months from the time the matter arose. The complaint had been laid by the union outside the six month period.

83                  Griffith CJ, with whom Barton J agreed, said (at 312) that s 39(2):

“must be construed as relating to matters arising under federal Statutes, and being of a nature analogous to those over which such Courts respectively have jurisdiction under State laws, and as also including any other matters in respect of which jurisdiction is conferred by a federal Statute, but so that in all respects other than subject matter the provisions of the State law as to Courts of summary jurisdiction shall prevail.”

84                  The Chief Justice held that the time limitation had always been treated as a jurisdictional limitation and thus the New South Wales court lacked jurisdiction to deal with the proceedings.

85                  Isaacs J, who reached the same conclusion, gave illustrations of the ways in which the jurisdiction of courts of summary jurisdiction are limited. He said this (at 322):

“One limitation is locality, and that may be as to the area within which the Court may sit, or the magistrate may act, or as to subject matter, as for instance, where the cause of action arises, or as to parties, as, for instance, having reference to the residence of the defendant.

Other limitations include amount, and time, the latter exemplified by sec 10 of the State Act.”

86                  In Adams v Chas S Watson Pty Ltd, decided in 1938, the High Court was concerned with s 210 of the Justices Act 1928 (Vic), which imposed a time limit for the laying of an information in language similar to that used in s 10 of the Justices Act 1902 (SA). Two members of the Court expressed the view that s 210 of the Victorian Act did not limit the jurisdiction of the Court of Petty Sessions in Victoria. Their Honours reasoned, on the authority of Parisienne Basket Shoes Pty Ltd v Whyte (1938) 59 CLR 369, that s 210 did not deprive the Court of Petty Sessions of jurisdiction, but merely provided a defendant with a defence to an information which was out of time: at 553, per Latham CJ; at 559, per Starke J. Although Starke J referred to Federated Sawmill v Alexander, his Honour gave no explicit reason for apparently regarding that decision as distinguishable. The comments by Latham CJ and Starke J on this issue were obiter, however, since each held (as did other members of the Court) that the relevant Commonwealth enactment validly removed any time limitation otherwise applicable under State law. It follows that, so far as this Court is concerned, the authority of Federated Sawmill v Alexander has not been affected by Adams v Chas Watson.

87                  In Commonwealth v Dalton (1924) 33 CLR 452, the question was whether the Tasmanian Court of Requests had jurisdiction to make a garnishee order against the Commonwealth. Section 64 of the Public Service Act 1922 (Cth) provided that a garnishee order could be made in respect of a public servant by a “court of competent jurisdiction”. Isaacs and Rich JJ identified s 39(2) of the Judiciary Act as the relevant source of jurisdiction of the Court of Requests. Their Honours addressed (at 456) the significance of the words “within the limits of their several jurisdictions” in s 39(2):

“To find the limits of the jurisdiction of a State Court, we have to examine its constitution, which determines its character, the subject matter with which it is authorized to deal, the locality within which it may act or in respect of which it may adjudicate, the persons over whom its authority extends, and any other prescribed regulations limiting its exercise of judicial power. The totality of these provisions mark out the area of curial jurisdiction, and therefore define the limits of the jurisdiction as adopted by the Federal Parliament for the purposes of Federal jurisdiction. The Federal jurisdiction conferred by sec 39(2) automatically covers the area occupied by State jurisdiction so adopted, and does not exceed those limits.”

The Court rejected the contention that a Tasmanian law restricting the making of a garnishee order to a case where the garnishee was “within the jurisdiction of the Court” prevented the Court of Requests making an order against the Commonwealth. Their Honours found no difficulty in regarding the Commonwealth as “within the jurisdiction of the Court” for the purposes of the State law.

88                  In Commonwealth v The District Court of the Metropolitan District (1954) 90 CLR 13, it was held that s 39(2) of the Judiciary Act is an ambulatory provision. The Court (Dixon CJ, Kitto and Taylor JJ) observed (at 20) that s 39(2) had always been

“regarded as ambulatory and consequently as operating upon State courts whether constituted before or after the commencement of the Judiciary Act 1903 and upon State jurisdiction according to the definition thereof under State law in force from time to time. The view that has been tacitly accepted is that the expression ‘within the limits of their several jurisdictions’ refers to the limits imposed by the relevant State law in operation from time to time whether enacted before or after the commencement of the Judiciary Act 1903.”

89                  Since under State law the jurisdiction of the District Court was limited to claims not exceeding £400, s 39(2) of the Judiciary Act did not confer jurisdiction on the Court to entertain a claim by the Commonwealth for recovery of a debt alleged to exceed £500.

90                  The cases to which I have referred suggest that the qualifying words in s 39(2) of the Judiciary Act (“within the limits of their several jurisdictions…”) are not to be construed narrowly. The qualification extends at least to monetary and territorial limits on the jurisdiction of State courts and (subject to the possible effect of the dicta in Adams v Chas S Watson Pty Ltd) to time limits governing the institution of criminal proceedings in such courts. In addition, as Isaacs J in Federated Sawmill v Alexander pointed out, the qualification may extend to other limitations such as those imposing residence requirements on the parties to any proceedings.

91                  The question of whether any relevant limitations in jurisdiction exist is to be determined by reference to State law. The authorities proceed on the basis that there must be an affirmative limitation on the jurisdiction of the relevant court. In each of the cases to which I have referred, the limitation relied on to conclude that the State court had not been invested with federal jurisdiction was found in a specific statutory provision, such as that imposing a time limit for summary prosecutions or specifying a monetary limit to the jurisdiction of the State court. By the same token, none of the cases considered whether limits on the jurisdiction of State courts can be imposed or come into existence otherwise than by means of an express enactment.

the jurisdiction of local courts

92                  As I have explained, the argument on the appeal proceeded on the basis that the words “the like jurisdiction” in s 68(2) of the Judiciary Act have the same effect as the expression “within the limits of their respective jurisdictions” in s 39(2). The starting point must be to ascertain the nature and scope of the jurisdiction of the Local Court in New South Wales to hear and determine prosecutions for summary offences. In particular, it is necessary to consider whether the law of New South Wales imposes any limits on the jurisdiction of Local Courts to hear and determine such prosecutions.

93                  In Munday v Gill (1930) 44 CLR 38, at 86, Dixon J pointed to the “great distinction in history, in substance and in present practice” between summary proceedings and trial upon indictment. It is useful to recall the distinction as explained by Dixon J (at 86):

“Proceedings upon indictment, presentment, or ex officio information are pleas of the Crown. A prosecution for an offence punishable summarily is a proceeding between subject and subject. The former are solemnly determined according to a procedure considered appropriate to the highest crimes by which the State may be affected and the gravest liabilities to which a subject may be exposed. The latter are disposed of in a manner adopted by the Legislature as expedient for the efficient enforcement of certain statutory regulations with respect to the maintenance of the quiet and good order of society. In the one the prisoner is brought to the bar of the Court ‘in his own proper person and being demanded concerning the premises in the indictment specified and charged upon him how he will acquit himself thereof he saith that he is not guilty thereof and thereof for good and evil he puts himself upon the Country and he who prosecutes for our Lord the King doth the like.’ In the other the defendant is given a sufficient opportunity to appear which (unless he be in custody because it is considered that he will abscond) he may exercise or not at his choice, and, whether he avails himself or not of his right to be present, he is dealt with by those assigned to keep the peace, who judge both law and fact. “There is’, says Blackstone, ‘no intervention of a jury, but the party accused is acquitted or condemned by the suffrage of such person only, as the statute has appointed for his judge. An institution designed professedly for the greater ease of the subject, by doing him speedy justice’ (4 Comm. 280).”

94                  On the hearing of the present appeal, Mr Roberts identified ss 8 and 9 of the Criminal Procedure Act as the source of the Local Court’s jurisdiction under the law of New South Wales to hear and determine prosecutions for offences punishable summarily. Section 8 of the Criminal Procedure Act provides, inter alia, that any offence described as a summary offence, or that is required by any Act to be dealt with summarily, must be dealt with summarily. Section 9(1) provides that an offence that is permitted or required to be dealt with summarily is to be dealt with by a Local Court constituted by a Magistrate sitting alone.

95                  The difficulty with this approach in the present case is that ss 8 and 9 were introduced into the Criminal Procedure Act by the Sentencing Act 1999, the relevant provisions of which came into force on 1 January 2000 (see [66] above). As I have noted, the prosecutions against the appellants were instituted no later than 13 October 1999. Sections 8 and 9 of the Criminal Procedure Act therefore could not have conferred jurisdiction on the Local Court to hear and determine prosecutions for summary offences at the time the prosecutions against the appellants were instituted.

96                  In October 1999, jurisdiction was conferred (although not necessarily exclusively conferred) on Local Courts to hear and determine summary prosecutions by s 7 of the Local Courts Act. Section 7, which remains in force, provides as follows:

“(1) Every Court shall have the same jurisdiction, civil and criminal, as Courts of Petty Sessions possessed in New South Wales immediately before the appointed day.

(2) Courts shall have the jurisdiction conferred or imposed on them by or under any Act or other law.”

97                  The “appointed day” is 1 January 1985: Local Courts Act ss 2(2), 4(1). Section 4(3) of the Local Courts Act provides that a reference in the Act to

“(a) an Act, other than a reference to this Act, includes a reference to an Act of the Commonwealth.”

It should also be noted that s 9 of the Local Courts Act abolishes Courts of Petty Sessions.

98                  It will be seen that s 7(1) of the Local Courts Act simply provides that Local Courts are to have the same jurisdiction as Courts of Petty Sessions possessed immediately before 1 January 1985. Curiously enough, the legislation in force immediately before 1 January 1985 followed a similar approach to that taken by s 7(1) of the Local Courts Act itself. Section 5(3) of the Justices Act, which formed part of the Justices Act from its enactment in 1902 until the repeal of s 5(3) on 1 January 1985 (by the Justices (Local Courts) Amendment Act 1982 (NSW)), was in these terms:

“[e]very Court of Petty Sessions shall have the same jurisdiction, civil and criminal, as Courts of Petty Sessions now possess in New South Wales.”

Section 5(3) itself followed the pattern of even earlier legislation: Criminal Law Amendment Act 1883 (46 Vic No 17), s 459.

99                  Section 7(2) of the Local Courts Act recognises that Local Courts, in addition to the jurisdiction possessed by Courts of Petty Sessions immediately before the appointed day, also have the jurisdiction conferred or imposed upon them by any other Act or law. Section 7(2), having regard to the terms of s 4(3) of the Local Courts Act, specifically contemplates that jurisdiction may be conferred on Local Courts not only by State law but by Commonwealth enactments. In other words, the New South Wales Parliament has recognised that the Commonwealth Parliament, in the exercise of its constitutional powers, may confer jurisdiction on Local Courts in relation to summary offences created by Commonwealth law.

100               The somewhat oblique approach taken historically by the New South Wales Parliament to the jurisdiction of Courts of Petty Sessions and Local Courts to deal with prosecutions for summary offences appears to reflect a consistent practice, whereby jurisdiction has been conferred on those courts by the enactment creating a particular summary offence. The usual formulation has been that employed in Part 14, Chapter 3 of the Crimes Act 1900 (NSW). Chapter 3 (which was retitled Division 3 by the Statute Law (Miscellaneous Provisions) Act 1999 (NSW), Sch 5.27[4]) created a large number of offences punishable summarily. For instance, s 493 of the Crimes Act (which was repealed by the Crimes (Amendment) Act 1988 (NSW), Sch 4.3), provided as follows:

“whosoever assaults any person shall on summary conviction be liable to imprisonment for six months or, to a fine of $500 or both”. (Emphasis added.)

The provisions in Chapter 3 creating summary offences ordinarily adopted a formulation comprising the bolded words in s 493, often with the addition of the words “before two Justices”.

101               Such authority as exists suggests that the formulation adopted in Chapter 3 of the Crimes Act conferred jurisdiction on Courts of Petty Sessions or Local Courts to hear and determine a summary prosecution for the particular offence, independently of any conferral of jurisdiction effected by the Justices Act itself. In Ex parte Cusack; Re Searson (1935) 52 WN (NSW) 214, Bavin J held that s 501 of the Crimes Act, which created the offence of simple larceny in the customary form, conferred jurisdiction on a Court of Petty Sessions to hear and determine a summary prosecution for the offence. Since jurisdiction was conferred independently of the Justices Act, the prosecution could be instituted more than six months after the relevant events had occurred, notwithstanding that the Justices Act contained a time limit of six months for the laying of an information: see Justices Act, s 56. Similarly, in Director of Public Prosecutions v Shirvanian (1998) 44 NSWLR 129, Mason P (with whom Beazley JA agreed) noted (at 132) that s 527C of the Crimes Act, which created the summary offence of unlawful possession of property, conferred jurisdiction on the Local Court “to impose a penalty by summary prosecution, at the same time as it define[d] the offence in question”.

102               This is not to say that the Justices Act did not itself contain provisions conferring jurisdiction on Local Courts to hear and determine summary prosecutions. Section 4 of the Justices Act, which was in force until repealed on 3 April 2000 by the Sentencing Act 1999, provided as follows:

“(1) Where by any Act…any person is made liable to imprisonment or other punishment…upon the conviction or order of a Justice or Justices, it shall be deemed to be provided that the matter shall be heard and determined by a Justice or by two or more Justices…in a summary manner, according to the provisions of the Act or Acts for the time being regulating proceedings before Justices…and the matter shall be so heard and determined accordingly.

(2) Where by any Act…any person is made liable as aforesaid, and no provision is made for the trial of such person, and such offence, act, or omission is not by the Act declared to be treason, felony, or misdemeanour, the matter shall be heard and determined in a summary manner as aforesaid by two or more Justices or by a Magistrate”.

Bavin J in Ex parte Cusack seemed to regard s 4 as an additional source of jurisdiction for Courts of Petty Sessions in prosecutions for summary offences. Mr Orr, in his supplementary written submissions suggested that s 4 did not confer jurisdiction on Local Courts, but merely reversed the common law rule that where legislation creates an offence but does not provide a means for proceeding against the offender, the offence is indictable: cf R v Hall [1891] 1 QB 747. In my view, the language of s 4 suggests that it was intended to confer jurisdiction on Local Courts to hear and determine prosecutions for offences where the legislation creating those offences took a particular form. It may well be true that s 4 was designed to reverse the common law rule identified by Mr Orr, but a provision may both confer jurisdiction and also perform other functions.

103               Section 52 of the Justices Act was referred to in argument as a possible source of jurisdiction for Local Courts to hear and determine prosecutions for summary offences. It forms part of Part IV, Div 2 of the Justices Act, which lays down the procedure for instituting proceedings for summary offences in New South Wales. Section 52, which is still in force, provides as follows:

“52. An information may be laid before a Justice in any case where any person has committed or is suspected to have committed an offence or act in New South Wales for which he is liable upon summary conviction before a Justice or Justices to be punished by fine, imprisonment, or otherwise.”

While nothing turns on the question for the purpose of the present case, the better view seems to be that s 52 presupposes jurisdiction and merely provides the procedure by which a prosecution for an offence punishable summarily is to be instituted. In summary proceedings it is the function of the information to found jurisdiction to deal with an alleged offence: John L Pty Ltd v Attorney-General (NSW) (1987) 163 CLR 508, at 519, per Mason CJ, Deane and Dawson JJ.

104               This survey of the jurisdiction of Local Courts to deal with summary offences under New South Wales law indicates that none of the jurisdictional provisions expressly imposes a general limit on the jurisdiction of Local Courts to sentence offenders to terms of imprisonment. Indeed, s 7(2) of the Local Courts Act specifically contemplates that Commonwealth and State legislation can confer additional jurisdiction on Local Courts to hear and determine summary offences. There is nothing in the provisions to which I have referred so far suggesting that Local Courts are limited to imposing a particular maximum term of imprisonment. The question, then, is whether, for the purposes of ss 39(2) and 68(2) of the Judiciary Act, any relevant limits on the jurisdiction of Local Courts can be derived from other legislation.

constraints on the sentencing powers of local courts

Criminal Procedure Act

105               Section 33J of the Criminal Procedure Act, which was in force at the time the prosecutions against the appellants were instituted, relevantly provided as follows:

“(1) This section prescribes the maximum penalty that may be imposed for an indictable offence listed in Table 1 to this Part dealt with summarily under this Part in any case where the maximum penalty (when the offence is dealt with summarily) is not provided by law.

(2) The maximum term of imprisonment that a Local Court may impose for an offence is, subject to this section, 2 years or the maximum term of imprisonment provided by law for the offence, whichever is the shorter term.”

Mr Roberts submitted that s 33J(2) should be read literally, as a general limitation on the jurisdiction of Local Courts to impose sentences of imprisonment, in respect of summary offences in excess of two years.

106               Section 33J(1) of the Criminal Procedure Act, however, makes it quite clear that s 33J(2) is intended to prescribe a maximum term of imprisonment in respect of indictable offences listed in Table 1 which are dealt with summarily under Part 9A of the Act. Table 1 lists indictable offences that are to be dealt with summarily unless the prosecuting authority or the person charged elects otherwise. In my view, it is impossible to read s 33J(2) in isolation from s 33J(1) so as to specify a maximum term of imprisonment applicable to all summary offences.

107               It is true that at the time the prosecutions against the appellants were instituted, a Local Court could not impose a term of imprisonment longer than two years in respect of an indictable offence triable summarily: see, in addition to s 33J of the Criminal Procedure Act, s 33K of the Criminal Procedure Act and s 476(7) of the Crimes Act. But that limitation did not extend to offences punishable summarily.

Other Provisions

108               In his oral argument, Mr Roberts submitted that, with one exception, Local Courts in New South Wales, or their predecessors, have never been able to sentence offenders convicted of summary offences to terms of imprisonment longer than two years. He identified the exception as s 33J(7A) of the Criminal Procedure Act (now s 27(7A)), which provides that nothing in the Criminal Procedure Act prevents a Local Court imposing the maximum sentence of imprisonment specified in s 33AA(2)(a) of the Drug Misuse and Trafficking Act 1985 (NSW), that is, two years and six months. Section 33AA of that Act, however, is in Part 2, Div 2, which deals with indictable offences. The “exception” identified by Mr Roberts is not therefore one that relates to a summary offence.

109               Nonetheless, there does seem to be at least one exception to the general proposition advanced by Mr Roberts. Section 51(1) of the Bail Act provides that a person who fails without reasonable excuse to appear before a court in accordance with the person’s bail undertaking is, on summary conviction, guilty of an offence. Section 51(2) is as follows:

“(2) A person convicted of an offence against this section is liable to the same penalties as are by law provided for the offence in respect of which the person failed to appear, but no sentence of imprisonment imposed pursuant to this section shall exceed 3 years and no fine so imposed shall exceed 30 penalty units.”

Proceedings for an offence against s 51 of the Bail Act are to be determined by the court dealing with the offence in respect of which the person failed to appear, or by a Local Court in accordance with the Justices Act: s 51(3), (5)(a).

110               It would seem that a Local Court may impose a sentence of up to three years imprisonment for an offence under s 51(1) of the Bail Act, at least in a case where the offender was originally charged with an indictable offence triable summarily the maximum penalty for which offence exceeded three years. It is true that a Local Court cannot impose a sentence exceeding two years imprisonment in respect of an indictable offence triable summarily. But s 51(2) of the Bail Act provides that the offender is liable on summary conviction, to the same penalties as one by law provided for the offence in respect of which the person failed to appear. That language appears to contemplate that where the maximum penalty for the original offence is greater than three years imprisonment, the Local Court can impose a penalty of up to three years imprisonment for a failure to appear in accordance with a bail undertaking. The appellants’ supplementary written submissions asserted that “arguably” the Local Court could impose a maximum sentence of only two years imprisonment under s 51 of the Bail Act, but gave no reason for this assertion. In my opinion, the interpretation I have advanced is preferable.

111               As I have noted, Mr Roberts also relied on s 58 of the Sentencing Procedure Act to support the appellants’ jurisdictional argument. Section 58 was not, however, in force when the prosecutions against the appellants were instituted. The predecessor to s 58 of the Sentencing Procedure Act was s 444(4) of the Crimes Act, which provided as follows:

“Notwithstanding anything in this section, except subsection (5), a magistrate, whether dealing with an offence or offences under section 476 [which deals with indictable offences triable summarily with the consent of the accused] or otherwise, shall not impose, or make an order having the effect of imposing, on any offender

(a) any more than one sentence of imprisonment or penal servitude to be served consecutively on any other sentence of imprisonment or penal servitude then imposed on, or being served by, the offender; or

(b) sentences of imprisonment or penal servitude, to be served consecutively, totalling more than three years.”

Section 444(5) permitted a magistrate, where the offender was already serving a sentence of imprisonment and was convicted of offence involving an assault on a prison officer, to impose a sentence commencing at the expiration of the sentence being served. (Section 58 of the Sentencing Procedure Act incorporates amendments to s 444(4) of the Crimes Act immaterial for the present case, recommended by the New South Wales Law Reform Commission, Sentencing (Report No 79, 1996), pars [8.58]-[8.64].)

112               Section 444(1) of the Crimes Act empowered a Judge or a magistrate to impose a cumulative sentence on an offender who, at the time of passing sentence, was already subject to an unexpired term of imprisonment. Section 444(4) therefore qualified the power to impose cumulative sentences conferred on a magistrate by s 444(1). It will also be seen that the qualification in s 444(4) is itself subject to s 444(5). The latter provision deals with the case of an offender who is already serving a sentence of imprisonment imposed by a Judge and who is convicted of an offence involving an assault on a prison officer. In such a case the magistrate may direct that the sentence for the later offence commence at the expiration of the sentence being served.

113               Finally reference should be made to s 440 of the Crime Act. It provided (until its repeal on 3 April 2000 by the Sentencing Procedure Act) as follows:

“Whosoever is convicted of an offence not punishable with death, shall be punished in the manner prescribed by the statute relating thereto, and where no punishment is specially provided, shall be liable to penal servitude for five years.”

The Second Schedule to the Crimes Act provided that a number of sections, including s 440, were in force:

“…so far as their provisions are applicable, with respect to all offences and courts”.

114               Mr Roberts’ supplementary written submissions contended that s 440 of the Crimes Act was irrelevant to the summary jurisdiction of Local Courts, since it merely imposed a maximum penalty for statutory offences where no punishment was specifically provided. I am by no means convinced that s 440 has no bearing on jurisdictional issues. The section contemplated, inter alia, that a statute could create an offence punishable summarily (that is, “in the manner prescribed by the statute”), yet not specify a penalty. In such a case, the maximum penalty was to be penal servitude for five years. Section 440 therefore contemplated the possibility that the New South Wales Parliament might create an offence punishable summarily which carried a maximum sentence of five years imprisonment. It follows that if the offence were created in the usual terms (see [55-56] above), a Local Court would have jurisdiction to hear and determine a summary prosecution for an offence carrying five years imprisonment.

Was the Conferral of Jurisdiction under the Judiciary Act within the limits of Jurisdiction of the Local Court?

115               The question that must be answered is whether s 68(2) of the Judiciary Act confers federal jurisdiction on a Local Court to hear and determine a summary prosecution for an offence under the Copyright Act, carrying a maximum penalty of five years imprisonment. In view of the way the appeal was argued, the answer to this question turns on whether, at the time that the prosecutions against the appellants were heard and determined by the Local Court at Burwood, the Court could be said to be acting within the limits of its jurisdiction if it imposed a sentence of imprisonment of up to five years on a person convicted of a summary offence under the Copyright Act.

116               The first and second respondents and the Attorney-General argued that even if New South Wales law expressly provided that Local Courts could not impose a sentence of imprisonment exceeding two years in respect of summary offences, such a provision could not be said to impose limits on the jurisdiction of Local Courts for the purposes of ss 39(2) or 68(2) of the Judiciary Act. Mr Orr, in particular, submitted that provisions such as s 33J(2) of the Criminal Procedure Act (assuming they applied to summary offences generally) merely limit the powers of the Local Court. Although the point was not developed by detailed reference to the authorities, Mr Orr presumably had in mind the distinction between jurisdiction and power explained by Toohey J in Harris v Caladine (1991) 172 CLR 84, at 136:

“The distinction between jurisdiction and power is often blurred, particularly in the context of ‘inherent jurisdiction’. But the distinction may at times be important. Jurisdiction is the authority which a court has to decide the range of matters that can be litigated before it; in the exercise of that jurisdiction a court has powers expressly or impliedly conferred by the legislation governing the court and ‘such powers as are incidental and necessary to the exercise of the jurisdiction or the powers so conferred’: Parsons v Martin…(1984) 5 FCR 235, at 241.”

The distinction has been applied in recent decisions of the High Court: see, for example, Australian Securities and Investments Commission v Edensor Nominees Pty Ltd (2001) 177 ALR 329, at 347-348, per Gleeson CJ, Gaudron and Gummow JJ, with whom Hayne and Callinan JJ agreed.

117               On this approach, ss 39(2) and 68(2) of the Judiciary Act confer jurisdiction on Local Courts to hear and determine prosecutions for Commonwealth offences punishable summarily regardless of whether the law of New South Wales provides a maximum period of imprisonment for summary offences which is less than the maximum provided by Commonwealth law in respect of the Commonwealth offences. In other words, even if New South Wales law expressly stated that Local Courts could not impose a sentence greater than two years imprisonment in respect of offences punishable summarily, such Courts would nonetheless have jurisdiction, pursuant to ss 39(2) and 68(2) of the Judiciary Act, to hear and determine summary prosecutions within Commonwealth law for offences carrying a maximum term of imprisonment of, say, five years. According to Mr Orr, any general maximum prescribed by State law would go only to the power exercisable by Local Courts and would not constitute a limit on their jurisdiction. Mr Orr submitted that ss 39(2) and 68(2) of the Judiciary Act focus on the “broad categories of criminal offences”. If a State court has jurisdiction in respect of the summary conviction of offenders under State law, it will be invested with “the like” federal jurisdiction in respect of summary offenders under Commonwealth law. It is irrelevant, so he argued, whether the offences and the maximum penalties under State and Commonwealth law are similar.

118               This argument has force, but I am not convinced that it is correct. The expression used in s 39(2) of the Judiciary Act is “within the limits of their several jurisdictions, whether such limits are as to locality, subject matter or otherwise”. As I have already indicated, the High Court appears to have taken a broad approach to this statutory expression, although no exhaustive definition has yet been formulated. It may well be that a prescription by State law of the maximum sentence of imprisonment that an inferior court can impose on a person convicted of any summary offence can be regarded as defining the limits of the jurisdiction of that inferior court. If so, ss 39(2) and 68(2) of the Judiciary Act do not confer jurisdiction on Local Courts in relation to prosecutions for summary offences under Commonwealth law carrying penalties greater than the maximum that Local Courts can impose when exercising summary jurisdiction in criminal matters under State law. This view is supported by the fact that s 27(2) of the Criminal Procedure Act (the successor to s 33J(2)) has been held by the New South Wales Court of Criminal Appeal to impose a “jurisdictional maximum and not a maximum penalty for any offence triable within the jurisdiction”: R v Doan (2000) 50 NSWLR 115, at 123, per Grove J, with whom Spigelman CJ and Kirby J agreed. It may also be supported by the rationale underlying the scheme of the Judiciary Act, namely that Federal criminal law is to be administered in each State upon the same footing as State law: The Queen v Murphy, at 617.

119               But even if provisions imposing a general limitation on the maximum sentences that Local Courts can impose in respect of offences punishable summarily are to be regarded as jurisdictional limits for the purposes of ss 39(2) and 68(2) of the Judiciary Act, the appellants’ argument in the present case seems to me to encounter an insuperable obstacle. The obstacle is the difficulty in identifying any New South Wales law or laws which can be said expressly or even impliedly to mark out the limits of the jurisdiction of a Local Court to impose a sentence of imprisonment on a person convicted of a summary offence.

120               For reasons I have explained, at the time the prosecutions against the appellants were heard and determined by the Local Court at Burwood, there was no provision of general application in New South Wales specifying the maximum period of imprisonment that Local Courts could impose on persons convicted of summary offences. The maximum available sentences of imprisonment were specified by the particular provisions creating specific offences. If a particular provision did not specify the maximum period of imprisonment that could be imposed, s 440 of the Crimes Act provided for a maximum of five years imprisonment.

121               I am prepared to assume, without deciding, that State law can implicitly mark out the limits of the jurisdiction of a Local Court to impose a sentence of imprisonment on a person convicted of a summary offence for the purpose of ss 39(2) and 68(2) of the Judiciary Act. Nonetheless, in my opinion, the New South Wales legislation I have described cannot be read as implicitly imposing limits on the maximum sentence of imprisonment that a Local Court can impose in respect of summary offences. As I have explained:

·        The only general provisions relating to the maximum term of imprisonment that Local Courts can impose are those relating to indictable offences punishable summarily. Those provisions (and their predecessors) do not purport to apply to offenders convicted of summary offences. Prosecutions for summary offences have historically been regarded as quite distinct from prosecutions for indictable offences punishable summarily.

·        Section 7(2) of the Local Courts Act contemplates that Local Courts will exercise the jurisdiction conferred on them by any other Act or law, including a Commonwealth law. For many years, it has been the practice in New South Wales for jurisdiction to be conferred on Local Courts to hear and determine summary prosecutions by the particular enactments creating the offences. It is true that none of these enactments has provided for a sentence of imprisonment longer than three years. At all times, however, the New South Wales Parliament could have enacted legislation providing for the summary prosecution of an offence carrying a maximum sentence of imprisonment longer than that provided by any previous law. Moreover, it could have done so without repealing, expressly or impliedly, any existing legislation. Indeed, s 51 of the Bail Act is precisely such a law.

·        For reasons I have endeavoured to explain, it seems to me that s 7(2) of the Local Courts Act contemplates that both the State and Commonwealth Parliaments may choose to enact legislation conferring jurisdiction on Local Courts to hear and determine prosecutions for summary offences carrying a maximum penalty exceeding the maximum previously specified for any summary offence. So, too, in my opinion, does s 440 of the Crimes Act.

·        None of the other provisions relied upon by the appellants can be read as impliedly creating a general limit on the maximum period of imprisonment that a Local Court can impose in respect of summary offences.

122               In essence, the appellants’ argument comes down to a contention that the limits of jurisdiction of a Local Court to hear and determine prosecutions for summary offences are defined by the maximum penalties that the Court may impose from time to time in respect of such offences under State law. This is said to be so regardless of whether a State law of general application expressly or impliedly specifies the maximum penalties that can be imposed by the Court in relation to summary offences. In my opinion, the argument goes too far. I have assumed, without deciding, that a State law of general application specifying the maximum period of imprisonment that a Local Court may impose in respect of summary offences can be said to mark out the limits of jurisdiction of the Court for the purposes of ss 39(2) and 68(2) of the Judiciary Act. But the mere fact that no current State law provides for a maximum period of imprisonment in respect of summary offences greater than, say three years, does not transform that maximum into a limit of jurisdiction of the Local Court for the purposes of ss 39(2) and 68(2) of the Judiciary Act.

123               I should add that there is some force to Mr Roberts’ contention that it is anomalous that a Local Court in New South Wales can impose a sentence of imprisonment of up to five years in respect of a Commonwealth summary offence, but (subject to one exception) can impose a sentence of no more than two years imprisonment in respect of any State summary offence. The criticism gains force in view of the fact that Local Courts are limited to sentencing persons convicted of indictable offences triable summarily to terms of imprisonment not exceeding two years. It may well be, as Mr Roberts implied, that insufficient thought was given to the jurisdictional question when the Copyright Act was amended so as to provide for penalties for up to five years imprisonment for summary offences under that Act.

124               In my opinion, any anomaly in the jurisdictional arrangements brought about by the interaction between the Copyright Act and the Judiciary Act is not to be corrected by expanding the concept of “limits of …jurisdiction” for the purposes of the Judiciary Act in the manner suggested by the appellants. It is, of course, open to the Commonwealth to legislate so as to correct any anomaly. For the reasons I have given, it is also likely that the Parliament of New South Wales can correct the anomaly, subject to the possibility of the Commonwealth enacting overriding legislation. If the approach I have referred to is correct, the New South Wales Parliament could, for example, expressly impose jurisdictional limits on Local Courts by specifying the maximum sentence of imprisonment that they may impose in respect of any summary offence.

125               In my opinion, the Local Court at Burwood had jurisdiction to hear and determine the prosecutions against the appellants for contravening s 132(2A) of the Copyright Act. It follows that the appellants’ second ground of appeal fails.

the costs issue

126               Moore and Kiefel JJ have dealt with the costs issue and, accordingly, I shall state my conclusions briefly. Two preliminary points should be made.

127               First, as Moore J has pointed out, the appellants’ written submissions were framed by reference to the Justices Act, s 81, as amended by the Courts Legislation Amendment Act 2000 (NSW). The amending legislation did not, however, come into force until 25 September 2000, that is after the costs orders in the present case were made. Perhaps for this reason, the argument did not fully canvass the issues of construction to which s 81 in its earlier form gives rise.

128               Secondly, most of the costs awarded by the learned magistrate related to affidavits intended to prove copyright in certain films said to have been infringed by the appellants’ actions. It appears that the affidavits were never read in the proceedings before the Local Court because the appellants pleaded guilty on the second day of the hearing. The basis on which the affidavits could have been received in evidence is not made clear in her Worship’s reasons for judgment on the costs question. The appellants’ argument on the appeal did not, however, challenge the admissibility of the affidavits in the Local Court proceedings.

129               I leave to one side the question of whether the prosecutor can be awarded costs pursuant to s 81(1) of the Justices Act in respect of the preparation of evidentiary material by persons who are not parties to the criminal proceedings. I also leave to one side the question of whether, if costs can be awarded, they may be assessed, at least in the first instance, in United States dollars. On the assumption that these questions should be answered in favour of the first and second respondents, in my opinion the learned Magistrate’s exercise of discretion in relation to costs nonetheless miscarried.

130               As Kiefel J has pointed out, s 81(1) of the Justices Act required her Worship to form a view as to whether the costs claimed by the prosecutor were “just and reasonable”. Although her Worship referred to the statutory criterion, she made no finding as to whether the costs sought in respect of the affidavits were either just or reasonable. In particular, she did not consider whether the apparently extraordinarily high costs claimed (and awarded) were reasonably incurred by the four United States corporations whose copyright was infringed by the appellants.

131               The affidavit on costs prepared on behalf of Twentieth Century Fox Corporation (“Fox”) illustrates the difficulty. This affidavit states that Fox incurred costs of $US17,375 in respect of the preparation of two copyright affidavits. Only one of these affidavits was included in the appeal papers. It, however, seems to be a fairly straightforward document, five pages in length, setting out the documentary basis for Fox’s claim to copyright in films recorded on the relevant VCDs and DVDs. Presumably, this material was readily available to Fox. The costs affidavit does not address why it was necessary or appropriate, for example, for a paralegal to spend (as the affidavit asserts) 100 hours, at a claimed $US100 per hour, in “research, drafting, preparation of annexures”, or for a Vice President to spend 19 hours, at a claimed $US225 per hour, on “research, drafting, review with counsel”. Similarly, the affidavit does not explain why it was thought appropriate to claim $US500 per hour for the time of the senior Vice-President who swore the copyright affidavit, beyond asserting that the “hourly rates provided represent comparable firm billing rates for the work performed”. (The costs affidavits reveal quite startling variations in the hourly rates attributed to persons involved in preparing the copyright affidavits. For example, the maximum applicable hourly rate by corporations other than Fox was $US300 per hour, while the notional charges for paralegals varied from $US165 per hour to $US50 per hour for a “Paralegal/Admin Assistant”.)

132               A second basis for setting aside the costs orders, at least in part, may be that the major portion of the sum of $14,600 included in the costs award related to the cost incurred by commercial organisations in detecting or investigating the offences to which the appellants ultimately pleaded guilty. In Australia, provisions similar to s 81(1) of the Justices Act have been construed as not extending to “the cost of detecting or investigating the offence”: Kelly v Noumenon Pty Ltd (1988) 47 SASR 182, at 184, per King CJ. Moore J has identified authorities in the United Kingdom which suggest that provisions of this kind might be read as permitting costs to be awarded in respect of expenses incurred in investigating an offence, although I think that much will depend upon precise language of the statute and the legislative context.

133               In the absence of full argument on these questions, I prefer to express no concluded view on the question, although I am inclined to think that Kelly v Noumenon correctly states the position in this country. But as Moore J points out, even if the Local Court has power to make an award in respect of investigative expenses, it can do so only if the magistrate is satisfied that the award of costs is “just and reasonable”. No finding to that effect was made in the present case and, indeed, there seems to have been no evidence before the magistrate that would have allowed her Worship to make a finding that it was just and reasonable to include in the costs award the investigative expenses claimed. In these circumstances, I think it is likely to be very difficult for the prosecutor to persuade her Worship that the costs award should include the claimed investigative expenses.

134               In the absence of full argument, I also prefer not to express a final view as to the scope of s 81(1) of the Justices Act in relation to expenses actually or notionally incurred by persons other than the prosecutor in preparing evidence required for a summary prosecution. My tentative opinion, however, is that s 81(1) (in the form it took before 25 September 2000) permits an award of costs, expressed in Australian dollars, in respect of such expenses, provided the Court considers it just and reasonable to do so. A costs award in a summary prosecution is not limited to expenses or liability incurred by the prosecutor himself or herself: Kelly v Noumenon, at 184. If expenses are incurred by a third party for work reasonably and properly done solely for the purposes of the prosecution, I am inclined to think that s 81(1) would authorise a costs order in respect of those expenses even where they had not been incurred by a public authority, but by a corporation or individual. In this respect my tentative views coincide with those expressed by Moore J.

135               At the very least, however, I think that great caution would need to be exercised before calculating those costs by reference to the charge-out rates prevailing in a foreign country. Ordinarily, it would be expected that the preparation of evidence for a summary prosecution in New South Wales would be undertaken by solicitors in Australia and that any costs incurred could therefore readily be calculated in Australian dollars. If it is established by evidence that the task could not reasonably have been carried out in Australia (there seems to have been no such evidence in the present case), it may be that an award could be made in respect of costs necessarily incurred in another country for the purposes of the prosecution. But if the work is done by a foreign corporation “in-house”, I doubt whether it would be generally appropriate to assess costs under s 81(1) of the Justices Act by reference to notional charge-out rates for private practitioners in the foreign country, even if adequate proof were provided of the rates in fact charged by private practitioners. In any event, the evidence before the magistrate in the present case, in my opinion, fell well short of establishing the reasonableness of the notional charge out rates.

ORDERS

136               The orders I propose are as follows:

1. The costs orders made by the Local Court at Burwood on 19 July 2000 against each of the appellants be set aside.

2. The proceedings be remitted to the learned Magistrate for the purposes of determining consistently with the reasons of the Court, what, if any, orders for costs should be made against the appellants.

3. The appeal be otherwise dismissed.

137               As the appellants and the first and second respondents have enjoyed some success, as between them there should be no order as to costs. The Attorney-General does not seek any costs order in respect of his intervention in the appeal.

Associate:

Dated: 26 November 2001

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

KIEFEL J:

138               The background to this appeal and the questions raised in it are set out in the judgment of Sackville J. So far as concerns the principal question on the appeal I am in respectful agreement with Sackville J, that the jurisdiction conferred with respect to offences against s 132(2A)(a) Copyright Act 1968 (Cth)was within the limits of the jurisdiction of the Local Court of New South Wales, as s 39(2) Judiciary Act 1903 (Cth)requires. It remains to consider the two additional arguments raised by the appellants: that s 132(6A) Copyright Act is invalid for contravention of s 80 of the Constitution; and that concerning orders for costs made in favour of the corporations having copyright title.

Section 80 of the Constitution

139               Section 68(2) Judiciary Act is expressed to be subject to s 80 of the Constitution, which provides as follows:

“The trial on indictment of any offence against any law of the Commonwealth shall be by jury…”

The appellants contended that s 80 provides a guarantee that any offence against a law of the Commonwealth which might be characterised as “serious” is to be tried before a jury. The contention may be dealt with shortly. The present state of authority is clear that the section provides no such guarantee. Its operation is limited to trials which proceed by way of indictment and it is for Parliament to determine what is to be tried in that way.

140               This view of the meaning of the words of the section was early expressed by Isaacs J in The King v Bernasconi (1915) 19 CLR 629, 637, by way of obiter. A line of authority is to the same effect. In The King v Archdall & Roskruge; Ex parte Carrigan and Brown (1928) 41 CLR 128, the question whether the Parliament, by reason of s 80, could not validly make a particular offence punishable summarily was raised and rejected (at 136 per Knox CJ, Isaacs, Gavan, Duffy and Powers JJ; 139-140 per Higgins J). To like effect were R v Federal Court of Bankruptcy; Ex parte Lowenstein (1938) 59 CLR 556, 570 and Zarb v Kennedy (1968) 121 CLR 283. In Kingswell v The Queen (1985) 159 CLR 264, further consideration was given to s 80. Gibbs CJ, Wilson and Dawson JJ said (at 276-7):

“… Section 80 says nothing as to the manner in which an offence is to be defined. Since an offence against the law of the Commonwealth is a creature of that law, it is the law alone which defines the elements of the offence. The fact that s. 80 has been given an interpretation which deprives it of so much substantial effect provides a reason for refusing to import into the section restrictions on the legislative power which it does not express. It has been held that s 80 does not mean that the trial of all serious offences shall be by jury; the section applies if there is a trial on indictment, but leaves it to the Parliament to determine whether any particular offence shall be tried on indictment or summarily. This result has been criticized, but the Court has consistently refused to reopen the question and the construction of the section should be regarded as settled …”

141               As Gleeson CJ and Gummow J pointed out in Re Colina; Ex parte Torney (1999) 200 CLR 386at [24], that interpretation has not commanded universal assent. In Lowenstein, Dixon and Evatt JJ dissented and in Kingswell Deane J also dissented, but for different reasons. In Re Colina the Court was asked to reconsider the question. Their Honours did not consider it to be an appropriate case for that purpose, even if the Court were minded to do so. Kirby J alone proceeded to deal with the question and expressed approval of Deane J’s dissenting opinion in Kingswell, that to construe s 80 literally would allow Parliament to avoid the operation of the section.

142               Kirby J in Re Colina observed that the idea for s 80 could be traced to the United States’ Constitution, Article III, s 2 and that it had been suggested that Inglis Clark, the Chair of the Judiciary Committee of the 1891 Australasian Constitutional Convention, had knowledge of the problems which had arisen there from attempts to define “serious offences”. Quick & Garran in their Annotated Constitution of the Australian Commonwealth (1901) at 808, reported:

“As was pointed out by Mr Isaacs (Conv. Deb., Melb., p. 1894), ‘it is within the powers of the Parliament to say what shall be an indictable offence and what shall not. The Parliament could, if it chose, say that murder was not an indictable offence, and therefore the right to try a person accused of murder would necessarily be by jury’.”

Isaacs J clearly remained of that view when later deciding Bernasconi’s case. Kirby J did not consider that giving effect to the “opinions, expectations, beliefs and hopes of the founders of the Commonwealth” could now be regarded as a proper approach to the interpretation of the Constitution (Re Colina, [95] - [96]).

143               In Cheng v The Queen (2000) 74 ALJR 1482reliance was also placed upon the dissenting judgment of Deane J in Kingswell in an endeavour to have the Court revisit the question and the majority judgment in that case. Gleeson CJ, Gummow and Hayne JJ did not consider that course appropriate on the facts of the case. Their Honours added (at [57]) that it had not been suggested that there had been developments since Federation which threw new light on the meaning of s 80, or which altered the context in which it operates, so as to require a fresh approach by the Court. Indeed, their Honours observed that, if anything, recent developments tended in the other direction.

144               Their Honours made another observation relevant to the present case. In Cheng, the applicants for special leave, like the appellants in this case, pleaded guilty to the offences with which they had been charged. Their Honours point out (at [41]) that:

“In the ordinary case, if, instead of contesting a change, an accused person, by a plea of guilty, enters a formal admission of the elements of the offence, no jury will be empanelled, for there will be no issue for the jury to try.”

They also said (at [43]):

“If s 80 were to be re-interpreted as a constitutional requirement for trial by jury in the case of all serious Commonwealth offences, the occasion for doing so will be in a case, unlike the present, where there was a legislative denial of trial by jury and there arose in the conduct of the prosecution issues susceptible of trial by jury.”

145               Two other members of the Court, McHugh and Callinan JJ considered the question of construction and concluded that the established interpretation of s 80 of the Constitution was correct: at 370 per McHugh J; 410 per Callinan J (although his Honour expressed “disquiet” about the result).

146               Gaudron J, in Cheng, whilst accepting that the Court had consistently held that s 80 allows for Parliament to decide what offences are, and what offences are not, to be tried on indictment, considered that the observations of the majority in Kingswell did not determine the question as to how Parliament was to define an offence (at [86] and [89]). Kirby J was of a similar view.

147               It might be said that there have been some strong dissenting opinions expressed with respect to the literal interpretation of s 80 and the possibility that the decision of the majority in Kingswell might be reconsidered cannot be foreclosed. Until that time however the decision binds this Court. Trial upon indictment was not specified by the Copyright Act and s 80 of the Constitution is not brought into operation.

The order for costs

148               The appellants’ pleas of guilty were made on the second day of the hearing before the Stipendiary Magistrate. The “costs” sought were those of the copyright owners, and were said to include their legal expenses in proving that they held copyright. Expenses associated with investigations, the obtaining of evidence and liaising with police by the “Australasian Film and Video Security Office” (“the AFVSO”) were also sought. It was not clear whether the copyright owners might be liable for the expenses of the AFVSO, which totalled $A14,400.

149               Four affidavits, on behalf of Universal City Studios, Inc; Twentieth Century Fox Corporation; Columbia Pictures Industries, Inc; and Warner Bros Inc were put in evidence before the Stipendiary Magistrate in the course of proceedings. (I shall refer to them collectively as “the corporations”). They detailed the charges which were considered referable to proving their title and the preparation of affidavits in that connexion for use in Court. The total time taken by Universal’s officers or paralegals was some ninety-eight hours and the hourly rates of charge varied between $US50 and $US165 for paralegal/administrative assistants to $US275 for two Vice-Presidents and a Director of Copyright for “legal, factual research and drafting of affidavits”. There is a reference in the affidavit to the work of an “attorney” which is most likely a reference to the three lastmentioned officers. All those whose costs were sought to be recovered were employed “in-house”. It was asserted that the rates were those “in the community for comparable legal services”. Some disbursements, for the dispatch of material, were also claimed. The total of costs and disbursements was $US14,342.75.

150               Fox Corporation listed “Fox personnel” as having spent a total of 151 hours on similar work. The hourly rates varied from $US25 for a clerical assistant; between $US100 and $US150 for paralegal work; and $US225 and $US500 for senior officers who, again, might be lawyers. The rates were said to represent “comparable law firm billing rates for the work performed”. The total was $US18,184.86.

151               The total of Columbia Pictures’ costs and disbursements were $US16,883.75 and the costs were said to consist of twenty hours for an attorney at $US275 per hour and twenty-five hours for an administrative assistant at the rate of $US50. They were also said to represent prevailing rates for comparable legal services. Warner Bros’ affidavit did not make a similar assertion, although its claims might be compared with those listed in the other affidavits. It claimed twenty hours at $US100 per hour for a paralegal; and $US185 and $US300 respectively for forty-five minutes and one-half an hour of attorneys’ time. Its total costs, with some minor disbursements, were $US2,397.34.

152               The Stipendiary Magistrate, in the course of her ex tempore reasons, made reference to corporations such as these being obliged to bring their own proceedings for penalties, given the likely limits to the resources of state and federal authorities. It is also apparent that the Stipendiary Magistrate considered it of some importance that the costs were incurred because the corporations were required to prove every element of the offence, including their ownership of copyright. The Stipendiary Magistrate went on to determine:

“In my view s 81 of the Justices Act is applicable in relation to this matter. I reject the submission put on behalf of the defendant that any difficulty caused by any order, being third party being involved,[sic] would not cause the section not to be able to be used. What I propose to do is order, as I indicated initially, a 50 per cent split in relation to each defendant and split up the costs accordingly. In relation to the question of costs I make an order against both defendants under s 81 of the Justices Act. I am satisfied that the amounts claimed are just and reasonable in the circumstances of the prosecution and the investigation of the matter and will split up the costs accordingly in the sums as follows: In relation to the Australasian Film and Video Security Office claim as well as the claim of witness expenses for Joanne Wirth the total sum of $7,300 each defendant and the figure for the US entities being a total of $US25,000, $904.35 each. Whatever exchange rates should be applicable to that sum may well be, it is arguable whether it should be the exchange rate today, being 19 July, or the exchange rate on 10 May when the convictions were recorded against each defendant. In my own view it should be the rate argued - it should be applicable on the date the convictions were recorded…”

153               The “rate argued” was not identified in the reasons. The only discussion that appears to have been transcribed was as to whether the rate should be that prevailing at the date the order for costs was made. The Stipendiary Magistrate was of the view that the earlier date, 10 May 2000, when the convictions were recorded, was the more appropriate. The correctness of that view is not an issue on the appeal. The Magistrate ordered that payment be made to the AFVSO, to be distributed in accordance with the affidavits in which the claims were made.

154               The Stipendiary Magistrate clearly intended each defendant to pay one half of the AFVSO expenses of $7,300 (together with the expense of one witness) and one half of the corporations’ costs at $US25,904.35. The Notices of Penalty do not reflect this. They require costs to be paid only by the first-named appellant and in the sum of $45,231.97. Even assuming that figure to represent a conversion to Australian dollars as at 10 May 2000, it is not possible to discern how it was arrived at. However, whilst these errors may require correction by the Local Court of New South Wales, they are not issues on the appeal. The orders in question are those pronounced by the Stipendiary Magistrate.

155               The appellants contended that the Stipendiary Magistrate pronounced at least part of the costs order in an overseas currency and that that invalidates the order. There is no impediment to an Australian court giving judgment for an amount expressed in a foreign currency where it is considered necessary to do so - for example because the proper law of the contract was that of the foreign country, or there is some obligation to pay in that currency arising from the transactions in question: Miliangos v George Frank (Textiles) Ltd [1976] AC 443; Australia and New Zealand Banking Group Ltd v Cawood [1987] 1 Qd R 131; Westpac Banking Corporation v “Stone Gemini” [1999] FCA 917. In the present case however the Stipendiary Magistrate did not make such an order and plainly intended the order for costs to reflect a conversion to Australian currency at 10 May 2000. To the contrary of submissions made on the appeal, the quantum of the order was thereby ascertainable.

156               The appellants made a number of other challenges to the order: that costs orders under s 81(1) Justices Act 1902 (NSW)are concerned only with legal professional costs and do not extend to the costs of investigation or other disbursements; that expenses incurred “in-house” by corporations are not professional costs; and that the section does not permit an order to be made otherwise than in favour of the prosecuting authority. During submissions the question whether the discretion given under the subsection was properly exercised, was also raised.

157               At the time of these proceedings s 81(1) provided:

“(1) The Justice or Justices making any conviction or order may in and by such conviction or order adjudge that the defendant shall pay to the clerk of the court, to be by him paid to the prosecutor or complainant, or, in the case of an order of dismissal, that the prosecutor or complainant shall pay to the clerk of the court, to be by him paid to the defendant (or, if the prosecutor or complainant so elects, directly to the defendant) such costs as to such Justice or Justices seem just and reasonable.”

158               In its terms section 81(1) does permit an order for costs to be made in favour of a complainant as well as a prosecutor. The informations upon which the prosecutions proceeded were not produced on the appeal, and the term “complainant” is not defined in the Justices Act, but it is not difficult to accept that the corporations fell into this category.

159               An order for “costs” has long been taken to refer to professional legal costs actually incurred in the conduct of litigation: see Cachia v Hanes (1994) 179 CLR 403, 410-411. It was pointed out during the appeal that s 81(1) was subsequently amended by expressly limiting the costs to be awarded to “professional” costs (Courts Legislation Amendment Act(No 31 of 2000) Schedule 9). It may have been thought necessary to do so to remove any possible argument. In Cachia v Hanes (at 410-411) it was observed that “[awards of costs] were never intended to be comprehensive compensation for any loss suffered by a litigant.” Costs are not therefore referrable to disbursements paid to people such as witnesses and advisors: Buckland v Watts [1970] 1 QB 27. It follows that the Stipendiary Magistrate was in error in allowing disbursements paid by the corporations, the witness expenses and the costs associated with the AFVSO as “costs” within s 81(1).

160               So far as concerns claims for the reimbursement of the costs of actual legal services, the fact that they were provided by salaried legal staff of a corporation, and their assistants, does not prevent their recovery as costs in proceedings, although questions have arisen in the past as to how to assess such costs. The proper method is to treat the bill of costs as if it were the bill of an independent solicitor, and assess whether it is reasonable and fair: Re Eastwood (deceased); Lloyds Bank Ltd v Eastwood [1974] 3 All ER 603, 608. The assumption is made that, in an ordinary case, the indemnity principle will not be infringed by taking this approach: Commonwealth Bank of Australia v Hattersley [2001] NSWSC 60[11] per Davies AJ. See also Hudgson v Endrust (Aust) Pty Ltd (1986) 11 FCR 152, 155; and Bank of Western Australia v O’Neill (White J, WASC, 22 January 1999, unreported). There was some evidence before the Stipendiary Magistrate as to charges for legal services in the “community”, as discussed above. An assessment of the in-house costs could therefore be made, at least on rates applicable in a part of the United States, if that were considered appropriate. The question on this aspect of the appeal is what the Stipendiary Magistrate was required to consider before an order for costs was made.

161               Section 81(1) required that the Stipendiary Magistrate form an opinion that any costs to be the subject of an order were “just and reasonable”. This requires that it be just in the outcome and reasonable in its terms: see Caltex Refining Co Pty Ltd v Maritime Services Board of New South Wales (1995) 36 NSWLR 552, 561 and Re Stuart; Ex parte Cathcart [1893] 2 QB 201, 204, there referred to.

162               The factor which weighed heavily with the Stipendiary Magistrate, in making the order for costs, was that the copyright owners had been put to strict proof, as earlier mentioned. An order might then be “just” even if the evidence were not utilised because of the later pleas of guilty rendering proof of title unnecessary. There would then remain the question whether they were reasonable. Whilst the Stipendiary Magistrate’s reasons contain the statement that the costs were “just and reasonable” one is left to speculate as to what consideration was given to the latter enquiry.

163               It was pointed out to the Stipendiary Magistrate, by the then solicitor for the appellants, that the total claim for costs was of the order of $A103,000, when converted. The Stipendiary Magistrate expressed the view that the fact that the costs were “quite high” was not a relevant matter to take into account. It could hardly be doubted that, in the context of proceedings in a Local Court, the prosecution costs were somewhat high, but of itself that would not inhibit the making of an order where the charges were shown to be warranted. That is perhaps what the Stipendiary Magistrate had in mind. It does not appear to have been suggested that the rates of charge, being those applicable in that part of the United States, were themselves excessively high, judged by Australian standards. The submission was general. In any event it would seem that the corporations had to amass their evidence there and the Stipendiary Magistrate would have been conscious of this.

164               The rates of charge are not the only aspect to the question of the reasonableness or otherwise of an order for costs. There necessarily remains for consideration whether the extent of the work undertaken and the time taken were necessary so that the claims could be said to be reasonable. That is not a matter which the Stipendiary Magistrate addressed in any way. This is not a case where one could infer that the claims were not excessive. Here there was both a disparity in the time taken to research and document copyright title - in one case twenty-two hours and in another 151 hours - and the majority of the claims reflected a very substantial use of professional and administrative time. The affidavits proving title may have themselves provided the necessary explanation, or further evidence may have been necessary. Those affidavits were not before this Court. The question posed by the statute could not however be answered in this case without some such consideration by the Stipendiary Magistrate. It follows in my view that the costs order cannot stand.

165               In my view the appeal should be allowed in part, the orders for costs, expenses and disbursements set aside, and the issue as to any professional costs to be allowed remitted to the Stipendiary Magistrate for further consideration.

Associate:

Dated: 26 November 2001