FEDERAL COURT OF AUSTRALIA

Bell v Steele [2011] FCA 1390

THE COURT ORDERS THAT:

The Applicant have leave to serve:

1.    The Originating Application and Statement of Claim dated 21 October 2011 and filed 24 October 2011;

2.    This Interlocutory Application dated 2 December 2011;

3.    The Affidavit of John Victor Swinson sworn on 2 December 2011;

by sending the documents by international registered post with return receipt to the address of the Respondent, Tanya Steele, at 552 Saint Marks Avenue, Apartment 8, Brooklyn NY 11238-7434.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    On 24 October 2011 the applicant, Mr Bell, filed an originating application in this Court dated 21 October 2011 wherein he sought declarations and damages against the respondent under the Copyright Act 1968 (Cth) (“the Copyright Act”) and arising from a contravention of s 202(1) of the Copyright Act. In previous appearances before this Court, the applicant’s lawyers have submitted that while the applicant is in Australia, the respondent currently resides in New York in the United States of America.

2    Rule 10.43 of the Federal Court Rules makes provision for applications for leave to serve originating applications outside Australia. In particular, r 10.43(1) provides that service of an originating application on a person in a foreign country is effective for the purpose of a proceeding only if, inter alia, the Court has given leave under r 10.43(2) before the application is served.

3    In Court this morning the applicant sought the following interlocutory orders ex parte:

1.    Pursuant to Rule 10.43 of the Federal Court Rules, the Applicant, Richard Kenneth Bell, have leave to serve:

a.    The Originating Application and Statement of Claim dated 21 October 2011 and filed 24 October 2011;

b.    This Interlocutory Application dated 2 December 2011

c.    The Affidavit of John Victor Swinson sworn on 2 December 2011; and

d.    Any orders made by the Court on hearing this application,

outside Australia by :

i.    sending the documents by international registered post with return receipt to the address of the Respondent, Tanya Steele, at 552 Saint Marks Avenue, Apartment 8, Brooklyn NY 11238-7434.

2.    Alternatively, pursuant to Rule 10.48 of the Federal Court Rules, an order that the Originating Application and Statement of Claim dated 21 October 2011 and filed 24 October 2011 are taken to have been served on the Respondent on 1 November 2011.

3.    Such further or other orders as the Court thinks fit.

4    An affidavit sworn by Mr John Swinson on 2 December 2011 was filed on that date in support of the interlocutory application. Mr Swinson deposes that he is a partner of Mallesons Stephen Jaques, the solicitors for the applicant.

5    The applicant submits that the requirements of r 10.43(2), (3) and (4) are satisfied in respect of its application. These rules provide:

…

(2) A party may apply to the Court for leave to serve an originating application on a person in a foreign country in accordance with a convention, the Hague Convention or the law of the foreign country.

(3) The application under subrule (2) must be accompanied by an affidavit stating:

(a) the name of the foreign country where the person to be served is or is likely to be; and

(b) the proposed method of service; and

(c) that the proposed method of service is permitted by:

(i) if a convention applies — the convention; or

(ii) if the Hague Convention applies — the Hague Convention; or

(iii) in any other case — the law of the foreign country.

(4) For subrule (2), the party must satisfy the Court that:

(a) the Court has jurisdiction in the proceeding; and

(b) the proceeding is of a kind mentioned in rule 10.42; and

(c) the party has a prima facie case for all or any of the relief claimed in the proceeding.

Rule 10.43(2)

6    In respect of r 10.43(2), the applicant submits that both Australia and the United States of America are member States of the Hague Convention, more formally known as the Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters. I accept that this is the case as of today’s date, by reference to the list of members of the organisation in the Status Table on the website of the Convention www.hcch.net.

7    I shall address below the issue of authorisation of mode of service “in accordance with” the Hague Convention for the purposes of r 10.43(2).

Rule 10.43(3)

8    In respect of r 10.43(3), Mr Swinson’s affidavit accompanies the interlocutory application.

9    In that affidavit, Mr Swinson deposes the address of the respondent’s address as being at 552 Saint Marks Avenue, Apartment 8, Brooklyn NY 11238-7434, in the United States of America. Mr Swinson deposes that his basis of his belief is a printout from the United States of America “White Pages” website www.whitepages.com which is annexed to his affidavit. While perhaps not the most authoritative of sources, for the purposes of r 10.43(3)(a) I am prepared to accept that the respondent is located in the United States of America at this address. I take this approach in light of further submissions of Mr Swinson from the bar table this morning to the effect that, from previous dealings, the address in Brooklyn New York is the address of the respondent last known to the applicant.

10    Mr Swinson also deposes in paragraph 10 of his affidavit that the proposed method of service of the originating application on the respondent in the United States of America is by international registered post with return receipt. I am satisfied that this statement complies with r 10.43(3)(b).

11    The question whether the proposed method of service is permitted by the Hague Convention for the purposes of r 10.43(3)(c) raises similar issues, but a different question, to whether service of the originating application on a person in a foreign country is in accordance with the Hague Convention for the purposes of r 10.43(2).

12    Article 10(a) of the Hague Convention states:

Provided the State of destination does not object, the present Convention shall not interfere with –

a) the freedom to send judicial documents, by postal channels, directly to persons abroad.

13    In his affidavit, Mr Swinson made reference to a search of the website www.hcch.net, and information there available, that the United States of America has not objected to Art 10(a) of the Hague Convention. For the purposes of this ex parte application I am prepared to accept that the United States of America has not opposed Art 10(a). Accordingly, I am also prepared to accept that service by post is available in the United States and thus “permitted” by the Hague Convention (cf observations of Gordon J in Australian Competition and Consumer Commission v Yellow Page Marketing BV [2010] FCA 1218 at [20]).

14    Further even if service by post is not “permitted” by the Hague Convention, Mr Swinson has deposed that service by post is permitted under the law of the United States of America, as contemplated by r 10.43(3)(c)(iii). I accept that this statement accurately represents the position in the United States: Fernandez v Univan Leasing 15 AD 3d 343, 790 NYS 2d 155 (2d Dept 2005); Cantara v Peeler 267 AD 2d 997, 701 NYS 2d 556 (4th Dept 1999); Ackermann v Levine 788 F2d 830, 839 (2d Cir 1988); In re Cinar Corp. Securities Litigation, 186 FSupp 2d 279 (SDNY 2002). I also note discussion of this issue in Ozer C, “How courts in New York view service of process abroad by mail” 17 Dec 2009 NYLJ p 4 col 1.

15    While it may be said that service by post is “permitted” by the Hague Convention, it is not so evident that service by post in the United States is “in accordance with” the Hague Convention for the purposes of r 10.43(2). However as the Full Court observed in a very different context in Boschetti v Crean (1993) 41 FCR 536 at [16], the expression “in accordance with” connotes a substantial measure of consistency, but beyond that their Honours did not consider it helpful to substitute for the statutory expression some other expression of closely similar meaning. The preamble to the Hague Convention recites that the signatory states to the Convention desire to:

•    create appropriate means to ensure that judicial and extrajudicial documents to be served abroad shall be brought to the notice of the addressee in sufficient time, and

•    improve the organisation of mutual judicial assistance for that purpose by simplifying and expediting the procedure.

16    Even taking into consideration general rules of interpretation relevant to international treaties (cf Commonwealth v Tasmania (1983) 158 CLR 1), the intention expressed in the preamble to the Hague Convention is that service of judicial documents be facilitated as between Convention signatories. It is consistent with this intention that the phrase “in accordance with” in r 10.43(2) be interpreted generously. For this reason, I am prepared to accept that postal service in the United States, which is permitted in that jurisdiction, is similarly “in accordance with” the Hague Convention in that jurisdiction.

Rule 10.43(4)

17    In respect of r 10.43(4)(a), I have already observed that, pursuant to an originating motion dated 21 October 2011 and filed 24 October 2011, the applicant seeks declarations and damages against the respondent arising under and from claimed contraventions of the Copyright Act. More precisely, the applicant alleges that he is the owner of copyright in raw film footage and a film trailer (“film footage”), and that the respondent wrongfully and contrary to the applicant’s rights claimed ownership of the film footage and made groundless threats of legal proceedings against the applicant for copyright infringement. The applicant alleges in paragraph 20 of the statement of claim that he has suffered loss and damage because of the respondent’s threats.

18    The applicant’s claim falls within the original jurisdiction of this Court pursuant to s 19 of the Federal Court of Australia Act 1976 (Cth) and s 131C of the Copyright Act.

19    In respect of r 10.43(4)(b), the applicant submits that this proceeding is of a kind mentioned in the following three items of the table in r 10.42 of the Federal Court Rules:

20    I accept this submission.

21    In respect of whether the applicant has established a prima facie case for the purposes of r 10.43(4)(c), the applicant’s threshold is relatively low. In considering a predecessor to this rule, the Full Court in Ho v Akai (in liq) [2006] FCAFC 159 observed:

…the prima facie case requirement has to be met at the outset, usually on an ex parte basis, and without the advantage of discovery and other procedural aids to the making out of a case: see e.g. Merpro Montassa Ltd v Conoco Specialty Products Inc [1991] FCA 70; (1991) 28 FCR 387 at 390. It “should not call for a substantial inquiry”: WSGAL Pty Ltd v Trade Practices Commission (1992) 39 FCR 472 at 476; see also Sydbank Soenderjylland A/S v Bannerton Holdings Pty Ltd (1996) 68 FCR 539 at 549. For present purposes it is sufficient to say that a prima facie case for relief is made out if, on the material before the court, inferences are open which, if translated into findings of fact, would support the relief claimed: Western Australia v Vetter Trittler Pty Ltd (in liq) (1991) 30 FCR 102 at 110. Or, to put the matter more prosaically as Lee J did in Century Insurance (in provisional liquidation) v New Zealand Guardian Trust [1996] FCA 376:

What the Court must determine is whether the case made out on the material presented shows that a controversy exists between the parties that warrants the use of the Court’s processes to resolve it and whether causing a proposed respondent to be involved in litigation in the Court in Australia is justified.

22    In this proceeding the applicant’s claim as found in the originating application can be summarised as follows:

    the applicant is the owner of a copyright registration in the United States of America for “The Blackfella’s Guide to New York” – Video Footage, Registration Number Pau 3-580-214;

    the applicant is the maker of the film footage pursuant to s 22(4)(b) of the Copyright Act;

    the applicant is, and was for the entirety of the period during which the relevant footage was made, an Australian citizen and thus a “qualified person” within the meaning of that term as defined in s 84 of the Copyright Act;

    copyright subsists in the film footage, and the applicant owns all that copyright;

    even if the respondent is considered to have made the film footage, the applicant entered into, for valuable consideration, an agreement and understanding with the respondent in respect of the making of the film footage such that the applicant was the owner of all copyright;

    the respondent wrongfully claims copyright ownership in the film footage and has made groundless threats of legal proceedings against the applicant;

    if the applicant accedes to the threats made by the respondent the applicant will not be able to display the film footage in Australia or continue to make a film, thus causing financial loss to the applicant.

23    Material in support of these claims is annexed to the affidavit of Mr Swinson.

24    I consider that this material supports a claim that a controversy exists between the parties, warranting the use of the Court’s processes to resolve it. In this respect, the applicant has established a prima facie case for relief claimed in this proceeding.

Conclusion

25    In my view the applicant is entitled to the orders sought.

Associate:

Dated:    6 December 2011