FEDERAL COURT OF AUSTRALIA

Young v Wyllie [2010] FCA 1098

THE COURT ORDERS THAT:

1.                  The application for leave to appeal is refused.

2.                  The applicant pay the first, second, seventh, eighth and ninth respondents’ costs of the application on a party and party basis.  

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

Introduction

1                                             The applicant seeks leave to appeal from judgments of a single judge of this Court given on 30 March 2010 and 17 June 2010.    

2                                             On 30 March 2010 the primary judge gave judgment and published reasons for judgment in relation to an application for summary judgment made under s 31A of the Federal Court of Australia Act 1976 (Cth) (the Federal Court Act) brought by the applicant against 13 respondents: Young v Wyllie [2010] FCA 283 (Reasons No 1).  The relief sought included declarations referrable to s 103 of the Copyright Act 1968 (Cth) (the Copyright Act) and ss 52 and 53 of the Trade Practices Act 1974 (Cth) (the Trade Practices Act).  In Reasons No 1 the primary judge concluded that the applicant had failed to establish any basis for summary judgment against any respondent on any of the claims he had made.  On that date the primary judge made the following orders:

1.                  The matter be listed for further directions at 9.30 am on Tuesday 18 May 2010.

2.                  Any respondent wishing to make further submissions on the question of costs is to do so within 14 days of the date of this judgment.

3.                  The applicant is to file any further submissions on the question of costs within 28 days of the date of this judgment.

3                                             On 17 June 2010 the primary judge gave judgment and published reasons for judgment dealing with the question of costs of the unsuccessful application for summary judgment: Young v Wyllie (No 2) [2010] FCA 616 (Reasons No 2).  On that occasion, his Honour made the following orders:

1.      The applicant's notice of motion of 26 August 2009 for summary judgment be dismissed.

2.      The applicant to pay the respondents' costs (other than the third, fourth and fifteenth respondents) of the notice of motion on a party and party basis.

3.      Subject to further order, the costs to be taxed and payable 7 days after the application for leave to appeal is determined or otherwise resolved.

4                                             On 16 April 2010 the applicant filed a notice of motion seeking leave to appeal from the judgment of 30 March 2010.  On 24 June 2010 the applicant filed an “amended notice of leave to appeal” seeking leave to appeal from the judgment of 30 March 2010 and the judgment of 17 June 2010.

5                                             The orders made on 30 March 2010 were clearly interlocutory as they did not determine any substantive rights as between the parties: Cubillo v The Commonwealth of Australia (2001) 112 FCR 455 at 503; Computer Edge Pty Ltd v Apple Computer Inc (1984) 54 ALR 767 at 768.  Order 1 made on 17 June 2010 is deemed to be interlocutory by operation of s 24(1D)(b) of the Federal Court Act.  Orders 2 and 3 made on 17 June 2010 should be considered together.  They are plainly interlocutory in legal effect, particularly having regard to the prefatory words of order 3: see also Merit Protection Commissioner v Nonnenmacher (1999) 86 FCR 112 at [19]-[20].  Accordingly, the applicant requires leave to appeal pursuant to s 24(1A) of the Federal Court Act.

6                                             On 25 June 2010 I made directions providing for the filing of written submissions with respect to the application for leave to appeal, and directed that the application be determined on the papers.  I should record that the applicant has discontinued this proceeding against Pitstop Bookshop Pty Ltd, Barbara Elizabeth Lyster, Stomp Pty Ltd, Andrew Miles Jorgenson, Sanity Music Pty Ltd and Greg Milne, who were the fifth, sixth, tenth, eleventh, twelfth and fourteenth respondents respectively. 

Law applicable to applications for leave to appeal

7                                             Leave to appeal will generally only be granted where the applicant is able to establish that the decision of the primary judge is attended by sufficient doubt to warrant its reconsideration and that a refusal to grant leave will cause substantial prejudice to the applicant: Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-400; Cement Australia Pty Ltd v Australian Competition and Consumer Commission [2010] FCAFC 101 at [20].  These considerations are not to be regarded as rigid or exhaustive criteria, but rather provide guidance for the exercise of the discretion conferred by s 24(1A): Décor at 399.

8                                             The circumstances in which leave to appeal from the exercise of a discretionary power will be granted are constrained by the principles in House v The King (1936) 55 CLR 499 at 505 per Dixon, Evatt and McTiernan JJ.   In such cases it must be shown that the primary judge’s exercise of discretion has miscarried, because he or she has acted upon a wrong principle, been guided by extraneous or irrelevant matters, ignored relevant matters or made mistakes of fact.  A failure to properly exercise a discretion may be inferred in appropriate cases where the primary judge’s decision is, upon the facts, unreasonable or plainly unjust.

Background

9                                             The facts giving rise to the primary proceeding were addressed by the primary judge.  In Reasons No 1 at [2] his Honour stated:

 The applicant was the producer and director of two cinematograph films, "COSY COOL" and "WHEELS ON FIRE", sometimes called "WHEELS ON FIRE 30 years with the Weekend Warriors", produced in the 1970s on 35mm film and recut and modernised for DVD release. The copyright in the films initially vested in Lugen Pty Ltd ("Lugen"). On 26 May 2005 licence agreements between Lugen, "by and through its agent Gary Young", and ostensibly with Duke Video Pty Ltd ("Duke"), were signed by Gregory John Wyllie, the first respondent.  There was a separate agreement for each film.  On 24 July 2008, in consideration of the sum of $1000, the copyright was assigned by Lugen to the applicant.  It is not an issue that the applicant now owns the copyright in the two cinematograph films.

10                                          The primary judge referred in detail to affidavit evidence and evidence of email correspondence between the applicant and the first respondent made in the lead up to the signing of the licence agreements: Reasons No 1 at [5]-[10].  The primary judge also referred in detail to evidence concerning the identities and business activities of the various respondents and the sale of the DVDs on the Internet by the respondents: Reasons No 1 at [11] – [24].  For present purposes, it is sufficient to note the following points: the licence agreements were drafted by the applicant; the first respondent deposed that he did not notice the reference to Duke Video Pty Limited below his signature because he did not intend to sign agreements on behalf of such a company; and the first respondent deposed that he thought the references to “Duke Video” and “Duke” throughout the agreements were references to the business names of the second respondent, of which he is the sole director and secretary.  There was evidence before the primary judge that, from June 2000, the wholesale business of the second respondent was conducted under the name of Duke Video Distribution and that, in January 2005, the second respondent registered the business name Duke DVD Distribution to replace Duke Video Distribution because the primary products being distributed were DVDs not videos.

11                                          In Reasons No 1 the primary judge noted at [31] that the applicant’s case is articulated in a number of documents and consists of allegations of contravention of ss 52 and 53 of the Trade Practices Act and of infringement of copyright under s 103 of the Copyright Act.  His Honour expressed a preparedness to look beyond the pleadings and proceeded to consider the applicant’s claims accordingly.

12                                          The primary judge stated that the claims of the applicant are “many and varied,” and comprise three core complaints: at [31]-[32].  The first core complaint is that the licence agreements with the second respondent expressly or impliedly required certain things to be done which were not done, concerning the creation and marketing of DVDs, and the financial reporting obligations of the second respondent pursuant to the agreements.  The second core complaint is that the licence agreements with the second respondent authorised the “release” of the films on DVD by the second respondent on the Australian and New Zealand markets only, but, in fact, DVDs of the films were sold, or at least were offered for sale, by the second respondent on the Internet to customers in regions outside Australia and New Zealand.  The third core complaint is that all the other respondents (or at least the corporate respondents) also sold, or at least offered for sale, DVDs of the films on the Internet to customers in regions outside Australia and New Zealand.

13                                          The primary judge (at [33]-[35]) detailed other variants of the applicant’s claims which can be summarised as follows:

(a)                The first respondent made “misleading and deceptive promises” in email correspondence with the applicant which led the applicant to believe the first respondent was a “competent distributor” and would market the DVDs for Father’s Day 2005.   This conduct induced the applicant to sign the licence agreements.

(b)               The first respondent engaged in misleading or deceptive conduct by using the name Duke Video Pty Ltd “while knowing full well that there was no such company registered”.  Other misleading representations are also alleged.

(c)                DVDs were being sold from “a tent and/or mobile sales platforms at motor sport events” and no accounting was provided by the respondents.

(d)               The respondents were acting in concert together, were copying each others business tactics, or were involved in an active conspiracy.

(e)                The first respondent failed to supervise the actions of the second respondent, and is personally liable to the applicant.  Similarly, the fourth, ninth, eleventh and fourteenth respondents failed to supervise the actions of their companies and should be personally liable for the “unlawful acts.”

14                                          The primary judge referred to various other orders sought by the applicant including an order under s 115 of the Copyright Act for damages, and for the appointment of a forensic accountant to examine the respondents’ books; an order voiding the licence agreements; an order that the first and second respondents hand over all copies of the DVDs in their possession and master copies; an order that all other respondents be restrained from selling the DVDs in any other place except Australia and New Zealand; an order that all respondents deal directly with the applicant for the supplies of the DVDs; an order that all retail sales of the DVDs be paid in full to the applicant; an order that $4 million be paid for the destruction of “overseas territory rights” to the DVDs; an order for exemplary damages for $2 million for “bad faith breach of contract, the DELIBERATE fraudulent, wilful and vexatious ACTS of selling or offering for sale DVDs in violation of Copyright licence/ Trade practices legislation and the destruction of the overseas territory rights of the DVD’s” and an order for costs.

Approach of the primary judge

15                                          In Reasons No 1 the primary judge outlined the approach to be taken on an application for summary judgment as follows:

59        Before considering the particular issues in this matter, it is convenient to mention how the exercise of the power conferred by s 31A should be approached.  In the present case, the question is whether any of the respondents have no reasonable prospect of defending the proceedings or any part of the proceedings.  How this question should be answered was recently discussed by Foster J in Wang v Anying Group Pty Ltd [2009] FCA 1500 at [43]:

The critical words of s 31A(1), when applied to the present case, require me to be satisfied that the respondents have “… no reasonable prospect of successfully defending the proceeding …”.  The following principles may be extracted from the authorities:

(a)          The moving party does not have to demonstrate that the defence is hopeless or unarguable;

(b)          The Court must consider the pleadings and the evidence with a “critical eye” in order to see whether the respondent party has evidence of sufficient quality and weight to be able to succeed at trial (Jefferson Ford Pty Ltd v Ford Motor Company of Australia Ltd (2008) 167 FCR 372 at [23] (p 382) (per Finkelstein J));

(c)          The respondent party is not obliged to present its whole case in order to defeat the summary judgment applicant but must at least present a sufficient outline of the evidence in order to enable the Court to come to a preliminary view about the merits for the purpose of considering the statutory test in s 31A(1)(b) (Jefferson Ford Pty Ltd 167 FCR 372 at [22] (p 382) (per Finkelstein J)); and

(d)          The test may require greater scrutiny of the pleadings and evidence in some cases than in others.  In my judgment, the words of s 31A(1) compel a flexible approach.  The real question in every case is not so much whether there is any issue that could arguably go to trial but rather whether there is any issue that should be permitted to go to trial.  This seems to be the approach of Finkelstein J in Jefferson Ford Pty Ltd 167 FCR 372 and of Gordon J in the same case (as to which see [123]–[134] (pp 406–409)), although Rares J in that case at [73]–[74] (p 394) and in Boston Commercial Services Pty Ltd v GE Capital Finance Australasia Pty Ltd (2006) 236 ALR 720 esp at [45] (p 731) favoured a test which is much closer to the older test articulated in authorities decided under Rules of Court expressed in terms different from the language of s 31A(1)).

60        I am content to adopt broadly the same approach.  Foster J went on to indicate that he agreed with the summary of the relevant principles given by Gilmour J in Dandaven v Harbeth Holdings Pty Ltd [2008] FCA 955. Generally, I also agree.  However it was submitted in this matter that before a point was reached where the prospects of a respondent successfully defending the proceedings was considered, it was necessary to consider whether there was a case of substance advanced by the applicant to which a sustainable (in the sense of having reasonable prospects of success) defence would have to be raised.  I think, in this particular case, there is much to commend such an approach though in most cases where the prospects of a respondent successfully defending the proceeding was raised, the assumed starting point would be that the applicant did have a case of substance though that, in turn, may depend on the extent to which the applicant's asserted case was admitted or denied in the defence.

16                                          The first claim for which the applicant sought summary judgment against the first and second respondents was based on s 52 of the Trade Practices Act.  The applicant claimed that the first respondent, in signing the licence agreement on behalf of “Duke Video Pty Ltd” engaged in misleading or deceptive conduct because the licensee was, in truth, Video Sports Pty Ltd.  This conduct was also claimed to be attributable to the second respondent.  The primary judge concluded that there should not be summary judgment for the applicant on this aspect of his case.  First, the primary judge noted that the claim as against the first respondent is misconceived, as s 52 concerns the conduct of corporations not individuals.  The primary judge noted that Houghton v Arms (2006) 225 CLR 553 was of no assistance to the applicant in this regard, as it concerned the liability of individuals under the Fair Trading Act 1999 (Vic),  and not the Trade Practices Act.  Secondly, the primary judge noted that the document containing the name “Duke Video Pty Ltd” which the first respondent signed was prepared by the applicant, and that it was difficult to see how the signing of the document involved misleading or deceptive conduct at all, let alone on the part of the second respondent.

17                                          The primary judge then went on to consider three additional claims for which the applicant sought summary judgment against the first and second respondents, which all related to the terms of the licence agreements.  The first claim, made pursuant to s 52 of the Trade Practices Act, concerned clause 4 of the licence agreements, whereby the licensee agreed to produce a minimum of 3000 copies of the films on DVD within one month of signing the agreements.  It was common ground that, in fact, only approximately 2500 copies of each film were produced.  The second claim concerned clause 5 of the agreements, which dealt with requirements to notify the applicant every three months of the amounts of sales and royalties.  The third claim was that the first respondent represented that the second respondent would market the DVDs competently.  The primary judge stated that so far as these claims were maintainable under the Trade Practices Act, they concerned representations about future matters and would attract s 51A of that Act.  His Honour concluded that the question of whether there were reasonable grounds for making the representations would involve a factual investigation and, accordingly, summary judgment was not appropriate with respect to those claims. 

18                                          The primary judge observed that at some points in the material before him, the applicant seemed to suggest these claims were based in contract.  His Honour noted that a more fundamental legal issue would have to be resolved at trial concerning the interaction between the Trade Practices Act and the contractual promises relied upon by the applicant: see Coles Supermarkets Australia Pty Ltd v FKP Limited [2008] FCA 1915 at [67]-[69].  Insofar as the claims were contractual, his Honour concluded that it would be inappropriate to give summary judgment, as any breach  of the licence agreements would sound in damages if the applicant suffered loss.  His Honour concluded that “(m)aking a declaration of breach, even if breach was now established, would be a barren exercise.”

19                                          The applicant also sought summary judgment against all respondents for alleged infringement of copyright under s 103(1) of the Copyright Act (which relates to the sale etc of infringing reproductions of copyright films).  The primary judge considered this claim to be based on a construction of s 103(1) which was untenable or, at least, not so obvious as to warrant summary judgment. The primary judge considered the applicant’s submission that, even accepting that his construction of s 103(1) may be wrong, there was infringement by all respondents because the making of the DVDs which were sold or offered for sale by the respondents constituted an infringement.  His Honour considered the evidence before him on this point and concluded that, on the evidence then adduced, the making of the DVDs did not constitute an infringement of copyright. 

20                                          The primary judge (at [66]) acknowledged one possible argument concerning the application of s 103 of the Copyright Act as follows:

However, it is conceivable that one of the elements necessary to engage the section is satisfied if a licensee makes copies under a licence agreement but did so for a purpose not authorised by the agreement and, indeed, for a purpose contrary to the terms of the agreement.  On this approach, the making of the copies for an unauthorised purpose might constitute an infringement and any person who knew or ought reasonably to have known this and sold or offered for sale the article infringed copyright because of s 103.

21                                          However, the primary judge found that there was no evidence of substance to suggest that copies of the two films were made other than to enable the second respondent as licensee to sell copies in accordance with the licence.  He said that, at the very best for the applicant, there was an unresolved factual question about whether circumstances existed in which the copies made were infringing copies for the purposes of s 103. Additionally, his Honour noted that, on the state of the present evidence regarding the respondents other than the first and second respondents, it was highly improbable that the applicant could prove the level of knowledge or imputed knowledge required to establish contravention of s 103.  His Honour declined to give summary judgment on these claims.

22                                          The primary judge considered a submission by the applicant to the effect that by selling the DVDs online, the respondents were communicating the film to the public in derogation of the rights of the copyright owner defined in s 86(c) of the Copyright Act.  His Honour gave consideration to case law on this point and expressed the preliminary view that the expression “to communicate the film to the public” in s 86(c) did not encompass selling or offering for sale a DVD (as a chattel) on the Internet.

23                                          The applicant also sought summary judgment against all respondents for various claims based on s 53 of the Trade Practices Act.  The primary judge found that claims based on ss 53 (d) and (g) seemed to depend on the applicant’s construction of s 103.  His Honour noted that the factual question of whether the representations relied upon by the applicant in this connection were made would need to be investigated at trial and declined to give summary judgment on these claims.  Alleged contraventions of ss 53 (bb), (d) and (f) by the first and second respondents were found to concern representations as to future matters and his Honour, once again, declined to give summary judgment on those matters.

24                                          In this application the applicant did not take issue with the primary judge’s identification of the claims the subject of the application for summary judgment.  As will become apparent, the primary arguments advanced in support of granting leave to appeal concerned (what the applicant argued to be) the primary judge’s erroneous construction of ss 103 and 86(c) of the Copyright Act and how this flowed through to claims of contravention of ss 52 and 53 of the Trade Practices Act.

25                                          In Reasons No 2 the primary judge considered the issue of costs of the application for summary judgment.  After considering relevant authorities, his Honour determined that the respondents should have the benefit of a costs order under O 62 r 2, and that those costs should be payable forthwith.  In reaching this conclusion, his Honour noted that the application for summary judgment was misconceived and was pursued by the applicant “against a background in which, in the proceedings more generally, the nature of his case has emerged only incrementally with the attendant delays and costs.”  His Honour noted that the costs order may place considerable burden on the applicant.

26                                          The primary judge declined to grant indemnity costs as sought by some of the respondents, concluding (at [26]) that the actions of the applicant “have not been so unreasonable as to warrant departure from the usual rule.”

27                                          The primary judge considered a submission by the applicant that the fees and costs of the proceedings should be capped.  In support of this submission, the applicant relied on his interpretation of the relevance of the “US/Australia Free Trade Agreement Treaty” (USAFTA) to ss 103 and 86 of the Copyright Act, and his understanding of the International Covenant on Civil and Political Rights and the impact of international law, United States law and English law on Australian legislation. The primary judge addressed these submissions as follows:

33        It is well established that the provisions of an international treaty to which Australia is a party do not form part of Australian law unless those provisions have been legislatively implemented and embodied in Australian law.  Treaties are not self-executing under Australian law.  The US Free Trade Agreement Implementation Act 2004 (Cth) (USFTAIA) received Royal Assent on 16 August 2004.  Schedule 9 of this Act contains the major changes to copyright law as a result of the agreement and includes the extension of the term of protection by 20 years, new rights in relation to performers in sound recordings, a scheme for the limitation of remedies against carriage service providers and broader criminal provisions.  Section 103 of the Copyright Act, on which the applicant relies, was not amended by the USFTAIA.  The most recent amendment to s 103 was made by the Copyright Amendment Act 2006 (Cth).  This amendment added subsection (3) as follows:

article includes a reproduction or copy of a work or other subject-matter, being a reproduction or copy in electronic form.

According to the Explanatory Memorandum, the amendment was made to extend the definition to electronic reproduction and electronic copies, to ensure digital files and the downloading of digital files over the internet was protected.  It adds nothing to the applicant's argument about the relevance of this section to the AUSFTA.

His Honour referred to the terms of O 62A of the Federal Court Rules and relevant Australian authorities and concluded that a cost capping order was not appropriate in the circumstances.

Submissions

28                                          The applicant has sworn two affidavits, on 16 April 2010 and 23 June 2010, which advance submissions in support of his application for leave to appeal.  The applicant has placed two further documents before the Court in relation to this application.  The first is entitled “Applicant’s Proposed Notice of APPEAL” and is dated 9 July 2010.  The second is entitled “Applicant’s Detailed Grounds of APPEAL” and is dated 23 July 2010.  I have considered the entirety of the material put forward by the applicant in determining this application.  Answering submissions were filed by the first and second respondents, the seventh respondent, and the eighth and ninth respondents.

29                                          The applicant’s submissions, in language and concept, are difficult to comprehend.  The issues he seeks to agitate on appeal, should leave be granted, are best discerned from the document entitled “Applicant’s Detailed Grounds of APPEAL”.   This document identifies, not always coherently, the core issues put forward by the applicant in support of this application, to which it is possible to relate his submissions.   Proceeding on this basis, his submissions can be summarised as follows:

(a)                Reasons No 1 contain a number of issues of “first impression” interpretation of law that are “final” in a number of respects so far as concerns the applicant.

(b)               The primary judge interpreted ss 103 and 86 of the Copyright Act contrary to legislative intent and the plain language of those provisions. The primary judge’s interpretation of those provisions was also contrary to the views of the Department of Foreign Affairs and Trade.

(c)                The primary judge interpreted ss 103 and 86 of the Copyright Act  and ss 52 and 53 of the Trade Practices Act in a manner inconsistent with and contradicted by the USAFTA.  The primary judge effectively foreclosed the applicant’s and other film producers’ intellectual property rights under those provisions, and various rights under the USAFTA.

(d)               Australia, unlike the United States of America, does not have a “first sale doctrine” but instead has a “market segregation policy” imposed by the USAFTA which gives a film producer the “right” to decide where and when a motion picture is to be released.  The primary judge erroneously adopted the “first sale doctrine” in commercial terms.

(e)                The primary judge misconstrued the exclusive right of the copyright owner in s 86(c) of the Copyright Act “to communicate the film to the public” by excluding from the ambit of that right offers made to the public, by medium of the Internet, to sell or otherwise supply films.

(f)                  The primary judge used the “wrong test” with respect to how a website is viewed in respect of contraventions of ss 86 and 103 of the Copyright Act and ss 52 and 53 of the Trade Practices Act.  The primary judge should have adopted an approach where the onus is on the respondents, who are required to ensure they do not violate these laws.  The primary judge should have used a “reasonable person” test.

(g)                The primary judge ignored evidence of “unconscionable actions” by the respondents and ignored the concept in the “Covenant of Good Faith and Fair Dealing” within every contract and the Trade Practices Act. Further, the primary judge failed to take into account some principles relating to unconscionability.  

(h)                The primary judge applied the wrong test in deciding some of the issues on summary judgment relating to promises made by, and acts of, respondents to the applicant which were misleading statements, and the interpretation of the Trade Practices Act. 

(i)                  The primary judge wrongly distinguished Houghton v Arms.

(j)                 On the question of costs, the primary judge was prejudiced against the applicant as an unrepresented litigant and demonstrated favouritism towards the respondents.

(k)               The primary judge wrongly awarded interim costs against the applicant.  The award of interim costs contravened the applicant’s rights under the International Covenant on Civil and Political Rights.

Consideration

30                                          Apart from the difficulties of comprehension they present, the applicant’s submissions do not engage squarely the nature of the present application for leave or the nature of the application for summary judgment that was before the primary judge. 

31                                          The issue before the primary judge was whether, on the material before him, he was satisfied that the respondents had no reasonable prospect of successfully defending the proceeding or that part of the proceeding in respect of which summary judgment was sought, and whether, in all the circumstances, it was appropriate, as a matter of discretion, to give judgment under s 31A without the need for a trial. 

32                                          As I have recorded above, the primary judge was not satisfied on the material before him that the respondents had no reasonable prospect of successfully defending the proceeding or that part of the proceeding in respect of which summary judgment was sought.  In that connection the primary judge identified a number of issues of fact that required investigation and resolution at a trial, as well as a number of issues of law concerning the proper construction of the licence agreements and the construction of various provision of the Copyright Act, most notably s 103.  It is plain on reading Reasons No 1 that the primary judge considered that the applicant’s application fell far short of what would be required to justify the granting of summary judgment. 

33                                          The applicant’s submissions seem to have proceeded on the misunderstanding that the preliminary or provisional views expressed by the primary judge for the purposes of dealing with the summary judgment application, on matters of fact and law, were final views binding on the parties for the purposes of a trial.  It is clear from the applicant’s submissions on this application that he is of the view that the primary judge’s conclusions on these matters were incorrect.  However, save in one respect (to which I shall come presently), the applicant has not addressed the issues that I must consider in coming to a view as to whether leave to appeal should be granted.  Those issues are: (a) Is the correctness of the decision of the primary judge not to grant summary judgment attended by sufficient doubt so as to warrant its reconsideration by an appeal court?  (b) Will substantial prejudice be caused if leave is refused? 

34                                          Many of the applicant’s submissions were encapsulated in generalised statements or argumentative assertions about legislative policy or legal principles as he perceived them to be, often expressed in highly emphatic terms, that did not identify in any clear and precise way where and why the primary judge was said to have erred in his identification or application of the relevant principles relating to the granting or withholding of summary judgment in the context of s 31A of the Federal Court Act.

35                                          Having said that, it seems to me that the gravamen of the applicant’s present application lies in the asserted correctness of his construction of s 103 of the Copyright Act. As I have noted, the primary arguments advanced in support of granting leave to appeal concerned (what the applicant argued to be) the primary judge’s erroneous construction of ss 103 and 86(c) of the Copyright Act and how this flowed through to claims of contravention of ss 52 and 53 of the Trade Practices Act. The submissions identified in paragraphs 29(a)-(f) above were directed to this issue. 

36                                          The applicant’s proffered construction of s 103(1), if accepted, would lead to the result that it is an infringement of copyright to sell, let for hire, or by way of trade offer or expose for sale or hire an article (being a cinematograph film in the form of a DVD), without the licence of the owner of the copyright.  This construction was advanced before the primary judge, who correctly identified that it ignored the following words of s 103(1):  “if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of the copyright or, in the case of an imported article, would, if the article had been made in Australia by the importer, have constituted an infringement of the copyright”.  The primary judge reasoned that the applicant’s construction proceeded upon a misconception of what s 103(1) actually says.  The primary judge also observed that the requirement in s 103(1) to prove knowledge in terms of the passage I have quoted, opened up areas of factual investigation that were unresolved on the material before him and that this alone provided a reason why summary judgment should not be given.

37                                          In my view the construction of s 103(1) of the Copyright Act proffered by the applicant is not tenable.  The primary judge was of the same view.  However, as I have noted above, for the purpose of dealing with the application before him, the primary judge observed that, at the very least, the construction for which the applicant contended was not so obvious as to warrant summary judgment against the respondents based on it. 

38                                          It follows from the view that I have expressed about the applicant’s construction of s 103(1) that I am not satisfied that the correctness of the primary judge’s decision to refuse summary judgment (in so far as it is based on the proper construction of s 103(1)) is attended with sufficient doubt as to warrant leave to appeal from that decision being granted.  Moreover, I am not satisfied in any event that, by refusing leave to appeal in this regard, substantial prejudice will be caused to the applicant.  Contrary to the mistaken view that seems to underlie his submissions, the applicant will continue to have the opportunity to advance the correctness of his proffered construction of s 103(1) at trial.  If that question is then decided adversely to him, he will have a right of appeal at that time.  However, the correctness of the primary judge’s preliminary views on that issue does not warrant appellate reconsideration now.

39                                          The applicant’s submissions directed to the scope of the right granted by s 86(c) of the Copyright Act (assuming s 103(1) to be enlivened) proceeded on the basis that the definition of “communicate” in s 10 of the Act comprehends the delivery of an article (a film) by mail provided the article is ordered by medium of the Internet.  This is a novel construction of the word “communicate” as it is defined by and used in the Copyright Act.  The primary judge expressed the preliminary view that the right “to communicate the film in public” does not encompass merely selling or offering for sale, on the Internet, an article in the form of a DVD version of the film. I am not satisfied (to say the least) that the correctness of the primary judge’s preliminary views in this regard are attended with sufficient doubt as to warrant leave to appeal from his decision to refuse summary judgment.  Once again, the applicant’s proffered construction of “communicate” is a matter that he can advance at trial.  He is not precluded from doing so.  Once again, however, the correctness of the primary judge’s preliminary views on that issue does not warrant appellate reconsideration now. 

40                                          The submissions identified in paragraphs 29(g) and (h) were not articulated beyond the apparent generality reflected in my summary of them.  I am not satisfied that the applicant has identified any arguable error on the part of the primary judge in this regard.  Certainly, by these submissions, the applicant has not demonstrated a sufficient reason to reconsider the correctness of the decision of the primary judge to refuse summary judgment.

41                                          As to the submission summarised in paragraph 29(i), the primary judge had remarked that Houghton v Arms (2006) 225 CLR 553 was of no assistance to the applicant, given that his claims were based on the Trade Practices Act.  The applicant’s submissions seemed to accept that his claims were so based (and, it would follow, limited accordingly), but the applicant submitted that the primary judge “should have looked to the meaning of” that case and “recognised [the applicant’s] argument that the Trade Practices Act grants the same rights and obligations …”  The latter submission is undoubtedly wrong, although there are similarities between the legislation there under consideration (the Fair Trading Act 1999 (Vic)) and the Trade Practices Act.  In my view the correctness of the primary judge’s remark, such as it was, is not in doubt. 

42                                          As to the submissions summarised in 29(j) and (k), in my view the applicant has not demonstrated that the primary judge’s discretion miscarried by making an order for costs against the applicant in respect of an application on which he (the applicant) was wholly unsuccessful.  The primary judge’s costs order in this regard simply reflects the general but not inflexible practice of costs following the event. 

43                                          As to the question of payment forthwith, the primary judge instructed himself on the relevant authorities and exercised a discretion which, in light of those authorities, was open to his Honour to exercise. 

44                                          It is clear on the applicant’s submissions that he disagrees strongly with the decision to which his Honour came on the question of costs.  In his submissions on this application the applicant extensively canvassed the merits of that decision.  Indeed, it would seem that the applicant, for the purposes of this application, has reagitated many of the submissions advanced by him before the primary judge, most notably (but not exclusively) on the question of cost-capping.  His submissions also included a submission to the effect that, if two or more meanings of a statutory provision were open, then the drafting of that provision was “defective” or “negligently done”, such that the Commonwealth should be ordered to appear and should pay the costs of the parties seeking to determine the “correct” meaning of the provision.  Regardless of the merits of that submission (and it is completely lacking in merit), the Commonwealth is not a party to this proceeding.  He also submitted that an award of costs against him would deny him “equality before the law”, contrary to a requirement imposed by the International Covenant on Civil and Political Rights.  I reject that submission.

45                                          I have considered all the matters advanced by the applicant in this regard but, in my view, he has not demonstrated any proper basis for the granting of leave to appeal now from the orders that the primary judge made in respect of the question of costs so as to permit appellate reconsideration at the present time of his Honour’s judgment in that regard. 

46                                          Finally, I should add that, on the material before me, I can see no substance to the applicant’s submission that the primary judge was prejudiced towards the applicant as a litigant in person, in making the costs order that he did, or, indeed, in making any other order or acting in any other way that is apparent on the record, as the applicant’s submissions seem to suggest.  The applicant relied on the tone and language of the judgment in Reasons No 2 as illustrating the alleged prejudice.  However, there is nothing in the tone or language of the reasons, or in the substance of any of the orders that were made, which shows, in my view, any such prejudice or which could give rise, in my view, to any reasonably held apprehension by a fair-minded observer that the primary judge was or might be prejudiced against the applicant because he was a litigant in person, or for any other reason.  Accordingly, the applicant’s submissions in this regard should be rejected.

DISPOSITION

47                                          In all the circumstances, leave to appeal from the judgment given on 17 June 2010 should be refused. 

48                                          I have not specifically addressed the application for leave to appeal from the judgment given on 30 March 2010.  It is plain that those orders were simply procedural in nature and were made to facilitate the argument on the appropriate costs orders to be (then) made.  Leaving aside highly unusual circumstances (which are not present in this case), it would not usually be appropriate to grant leave to appeal from purely procedural orders of that kind.  It is to be noted that the relevant steps have now been completed, as ordered.  In the circumstances, it would be futile to grant leave to appeal from those orders (even if, contrary to my view, it were otherwise appropriate to grant such leave).

49                                          The first and second respondents, the seventh respondent and the eighth and ninth respondents seek costs.  The eighth and ninth respondents seek costs on an indemnity basis.

50                                          In my view it is appropriate that an order for costs should be made against the applicant in favour of those respondents.  However, those costs should be awarded on a party and party basis.

Associate:

Dated:         11 October 2010