FEDERAL COURT OF AUSTRALIA

Sky Channel Pty Ltd v Palmer [2003] FCA 1246

SKY CHANNEL PTY LIMITED & ANOR v

NEIL ROBERT WILLIAM PALMER

N 1712 of 2003

LINDGREN J

31 OCTOBER 2003

SYDNEY

THE COURT ORDERS THAT:

Upon the applicants by counsel undertaking to the court:

(a)        to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the orders made on 31 October 2003; and

(b)        to pay the compensation referred to in (a) to the person there referred to,

and noting the undertaking to the court of elizabeth grinston, solicitor for the applicants, the court orders that:

Preservation

1.         The Respondent personally, and by his servants and agents and otherwise, be restrained from using, moving, changing, removing, altering, concealing, tampering with or destroying, all and any smartcards, set top boxes and converters (collectively Decoder Devices) in the custody, control or possession of the Respondent, otherwise than in compliance with these Orders.

Delivery Up

2.         The Respondent deliver up by 1.00 pm on Tuesday 4 November 2003 to the Applicants’ Agent, Blake Dawson Waldron Solicitors, of Level 11, 12 Moore Street, Canberra, Australian Capital Territory (for the attention of Matthew Roser), (the Applicants’ Agent), each and any smartcard and each and any set top box in the custody, control or possession of the Respondent (the Delivered Devices), for delivery by the Applicants’ Agent to the Applicants’ solicitors, Gilbert + Tobin.

3.         That until further order the Delivered Devices are to remain in the possession and safe keeping of the Applicants’ solicitors, Gilbert + Tobin.

4.         That until further order the Applicants by themselves, their servants and agents be permitted to non-destructively inspect, examine and test (including with the use of facilities to examine, decode or restore data) the Delivered Devices.

Norwich Pharmacal Relief

5.         Subject to Order 10 below, the Respondent make, file and serve within fourteen (14) days of the making of this order, an affidavit that discloses with particularity:

(a)        the identity of each supplier to that Respondent of any and all Decoder Devices and associated cabling relating to the display of subscription television (Associated Cabling) and of any documents relating to a Decoder Device or Associated Cabling (Decoder Documents) which are or have been in the possession, custody or control of the Respondent (or his servant, agent or associate);

(b)        the identity of each person who installed or assisted in the installation of the said Decoder Devices and Associated Cabling at the premises known as the Kippax Tavern, 84 Hardwick Crescent, Holt, Australian Capital Territory (the Premises);

(c)        the timing of, price paid, and the person paid, for each supply and installation of the said Decoder Devices and Associated Cabling;

(d)        the identity of any person to whom the Respondent (or his servant or agent or any person associated with the Respondent) gave possession of, or supplied, any item of any Decoder Devices, Associated Cabling or Decoder Documents;

(e)        if any Decoder Devices, Associated Cabling or Decoder Documents have been removed from the Premises at any time subsequent to the service on the Respondent of the letter of demand dated 10 October 2003 from Gilbert + Tobin, Solicitors on behalf of the Applicants (the Letter of Demand), the whereabouts of each and any such Decoder Devices, Associated Cabling and Decoder Documents:

(i)         as at the date of these Orders;

(ii)        as at the date of service of the Letter of Demand on the Respondent; and

(iii)       in the period between the date of service of the Letter of Demand and the date of these Orders;

(f)         the identity of any person who has removed any Decoder Devices, Associated Cabling or Decoder Documents from the Premises at any time subsequent to the service on the Respondent of the Letter of Demand;

(g)        the circumstances, including the date and approximate time, of any removal of any Decoder Devices, Associated Cabling or Decoder Documents from the Premises at any time subsequent to the service on the Respondent of the Letter of Demand; and

(h)        if any of the matters referred to in paragraphs (a) to (f) above are not known to the person swearing the affidavit, the best information known to that person which might lead to ascertaining those matters,

such affidavit to annex or exhibit all documents disclosing the matters referred to in paragraphs (a), (b), (c), (d), (e) and (f) above and to verify that all such documents have been so annexed or exhibited.

Further Orders

6.         The Respondent whether personally, or by his servants, agents or otherwise, be restrained until further order from displaying in the Premises the First Applicant’s subscription pay television service or any encoded broadcast made by the First Applicant unless such display is authorised in writing by the First Applicant.

7.         The Respondent whether personally, or by his servants, agents or otherwise, be restrained until further order from displaying in the Premises the Second Applicant’s subscription pay television service or any encoded broadcast made by the Second Applicant unless such display is authorised in writing by the Second Applicant.

Procedural matters

8.         That service on the Respondent of this Notice of Motion, the Application, the Orders and supporting affidavits be effected by the Applicants’ Agent serving a sealed copy of those documents on the Respondent or on any person apparently in charge of the Premises at the time of service.

9.         That service be effected by 5.00pm on 3 November 2003.

10.       That the Respondent have liberty to apply on twelve hours’ notice generally, including liberty to apply on the return date referred to in par 14 below, for an order setting aside Order 5 above.

11.       That until further order the Respondent may make any application to the Court to the Duty Judge by telephone during business hours on telephone number (02) 9230 8025.

12.       That the Respondent be granted liberty to appear at the return of the Notice of Motion by telephone in a manner to be arranged with the Court.

13.       That the Applicants have liberty to apply on forty-eight (48) hours’ notice.

14.       That the Application be made returnable before the Duty Judge at 9.30 am on 6 November 2003.

15.       That entry of these orders be expedited.

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

REASONS FOR JUDGMENT

1                     The applicants allege that the respondent has been using, or authorising the use of, a ‘broadcast decoding device’ for the purpose of, or in connection with, a trade or business carried on by, or in association with, the respondent, in contravention of s 135ANA of the Copyright Act 1968 (Cth).  The business is allegedly carried on at the ‘Kippax Tavern’, 84 Hardwick Crescent, Holt, in the Australian Capital Territory.

2                     The applicants seek, ex parte, interlocutory relief in the form of injunctive relief until further order, a preservation order, an order for delivery up, and ‘Norwich Pharmacal’ relief (cf Norwich Pharmacal Co v Customs and Excise Commissioner [1974] AC 133).

3                     The following affidavits on which the applicants rely establish that there is a serious question to be tried as to whether the respondent has contravened s 135ANA:

Deponent                                                                    Date

Mark Anthony Mulready                                              31 October 2003

Peter Lindsay Brown                                                    31 October 2003

Elise Elizabeth Ball                                                        30 October 2003

Chantal Imogen Savage                                                30 October 2003

Elizabeth Grinston                                                         30 October 2003

Deponent                                                                    Date

Michael Kerry McNamara                                            29 October 2003

Matthew Roser                                                 29 October 2003

Kate Harrison                                                               31 October 2003

4                     The applicants have proffered the usual undertaking to the Court.

5                     I will make orders generally in the form submitted by Mr Cobden of counsel for the applicants.

Associate:

Dated:                          10 November 2003