FEDERAL COURT OF AUSTRALIA

Magi Enterprises Pty Ltd v Luvalot Clothing Pty Ltd (No 2) [2017] FCA 1143

ORDERS

THE COURT ORDERS THAT:

1.    The Respondent’s application for the Court to hear testimony from Ms Huang Bi Zi by video link is dismissed.

2.    The Respondent pay the Applicant’s costs of the application on an indemnity basis, on a lump sum basis to be taxed if not agreed, doing so forthwith.

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

REASONS FOR JUDGMENT

MURPHY J:

1    In this matter the respondent/cross-claimant, Luvalot Clothing Pty Ltd (Luvalot) sought orders for the Court to hear testimony by video link from Mr Huang Wei Dong and Ms Huang Bi Zi, both residents of China. The application was opposed by the applicant/cross-respondent, Magi Enterprises Pty Ltd (Magi). In the alternative Luvalot renewed an earlier unsuccessful application it had made to adjourn the trial of the proceeding.

2    For the reasons I explain, I earlier refused to take Mr Wei Dong’s evidence by video link and I allowed the adjournment of the trial. I now also make orders to refuse the application to hear Ms Bi Zi’s testimony by video link.

The FACTUAL AND PROCEDURAL BACKGROUND

3    Magi designs, manufactures and sells fashion garments in Australia and New Zealand under the brand “Kookai”. Luvalot is a designer, manufacturer and wholesaler of garments and operates in China and Australia. Magi alleges that Luvalot infringed its registered design in a garment called the “Macy Tie Top”. Luvalot denies that it did so, on the basis that the design was not validly registered because an image of a garment in that design was published on a Chinese website prior to the priority date for registration. Luvalot therefore challenges the validity of the registered design but concedes that if the design was validly registered Luvalot has engaged in infringing conduct.

The first adjournment application

4    The trial in this proceeding was listed to be heard on 4 April 2017. By application dated 23 March 2017 Luvalot sought orders to adjourn the hearing because Mr Wei Dong and Ms Bi Zi were unable to come to Australia to give evidence because neither had Chinese passports nor visas to enter Australia, and Ms Bi Zi was heavily pregnant.

5    Their evidence is critical to Luvalot’s case because they are the only witnesses that provide first-hand evidence of having viewed the alleged prior publication of a garment in Magi’s registered design. At the relevant time Ms Bi Zi was employed by Luvalot as a production assistant in Guangzhou, China, but she has since left Luvalot’s employ. In Magi Enterprises Pty Ltd v Luvalot Clothing Pty Ltd [2017] FCA 340 at [18] (Magi v Luvalot No 1) I summarised the evidence which she proposed to give as follows:

…Ms Bi Zi says that she worked in Luvalot’s product development department in Guangzhou and was responsible for, amongst other things, sourcing designs and fabric from local shops, local websites and local markets. She says that on 11 June 2015 while browsing the Taobao website she saw three images of a garment and she made an online purchase of the garment, which garment was then delivered to her on 14 June 2015. She annexes a number of documents:

(a)    an (apparently) undated screenshot from the Taobao website showing the relevant garment;

(b)    a screenshot of her online chat with the garment vendor dated 11 June 2015;

(c)    a confirmation of the shipping of the garment dated 11 June 2015;

(d)    an invoice for the purchase of the garment dated 12 June 2015;

(e)    a copy of the consignment note for the garment from Hongrui to Luvalot showing delivery on 14 June; and

(f)    photographs of the garment that she stated she received on 14 June 2015.

6    At the relevant time Mr Wei Dong was the owner of a Chinese registered company which ran an online clothing distribution business. In Magi v Luvalot No 1 at [19] I summarised his proposed evidence as follows:

… Mr Wei Dong says that he is the owner of Hongrui, a clothing distribution business which trades through the Taobao website. He says that he is responsible for ensuring that the orders received from the Taobao website are followed up and sent out. He says that Ms Bucoy [the sole director of Luvalot] had provided him with a copy of a document which appeared to be a copy of a screenshot taken from the Taobao website showing a garment for sale. He annexed that document (which appears to be the same as the screenshot which Ms Bi Zi said she took on 11 June 2015). He confirms that the copy screenshot is from an online advertisement published on the Taobao website by his company, and said that based on his review of his business records, the copy screenshot was an accurate representation of the advertisement as it existed on 11 June 2015. He says that the shipping confirmation, invoice and consignment note annexed to Ms Bi Zi’s affidavit were consistent with the business records of his company relating to the shipment, invoicing and delivery of the garment referred to.

7    The application came on for hearing on 29 March 2017, less than a week before the trial. I made orders that day to dismiss the application for adjournment. In summary I did so because:

(a)    the application was advanced on the principal basis that Ms Bi Zi’s advanced pregnancy meant that she was unable to travel to Australia give evidence, but it became clear shortly prior to the hearing that she was unwilling to travel to Australia at any stage, regardless of when the trial was heard. At that stage there was no application for the testimony of either Ms Bi ZI or Mr Wei Dong to be taken by video link; and

(b)    there were critical gaps in the evidence in relation to:

(i)    when Luvalot or its lawyers, Actuate IP knew about Ms Bi Zi’s pregnancy and the possibility or likelihood that it would affect her ability to give evidence in the trial;

(ii)    the steps taken by Luvalot and Actuate to arrange or secure the evidence of both Ms Bi Zi and Mr Wei Dong for the hearing; and

(iii)    when Luvalot first knew that neither Ms Bi Zi nor Mr Wei Dong had a passport or a visa for travel to Australia.

8    Luvalot immediately foreshadowed an application for the Court to hear Mr Wei Dong’s testimony by video link. That application was listed for hearing on 3 April 2017.

THE AMENDED APPLICATION

9    On 1 April 2017 Luvalot filed an amended interlocutory application which sought orders that:

(a)    leave be granted under r 5.04(3) and r 1.40 of the Federal Court Rules 2011 (Cth) (the Rules) for Mr Wei Dong to be available for cross examination in accordance with r 29.09 by way of video link with facilities located in Guangzhou, China;

(b)    in the alternative, if orders to hear Mr Wei Dong’s testimony by video link were refused:

(i)    for the vacation of the trial date and for the trial to be relisted on the first available date after 4 October 2017; and

(ii)    on the adjourned hearing date, for leave to be granted under r 5.04(3) and r 1.40 of the Rules for Ms Bi Zi to be available for cross examination in accordance with r 29.09 by way of video link with facilities located in Guangzhou, China.

The application was listed for hearing on 3 April 2017.

THE EVIDENCE

10    Luvalot filed the following affidavits in support of the application:

(a)    an affidavit of Louis Lao, a solicitor with Actuate IP, affirmed 30 March 2017, which went to the technical arrangements for taking the witness’s testimony by video link from a facility in Guangzhou;

(b)    an affidavit of Andrew Petale, a solicitor formerly with Actuate IP, affirmed 31 March 2017, which filled in gaps in the evidence as to when Actuate IP knew about Ms Bi Zi’s pregnancy and as to the steps he took in relation to arranging Mr Wei Dong and Ms Bi Zi’s attendance at Court for the hearing;

(c)    an affidavit of Ms Hian Luan Khor (Cecilia) Bucoy, the director of Luvalot, affirmed 31 March 2017 (the First Bucoy Affidavit). This filled in some further gaps in the evidence in relation to Luvalot’s knowledge of Ms Bi Zi’s pregnancy and as to the steps she took in relation to arranging Mr Wei Dong and Ms Bi Zi’s attendance at Court for the hearing;

(d)    an affidavit of Mr Lao affirmed 31 March 2017 stating that Mr Wei Dong had informed him that he is prepared to travel to Australia to testify in person (but only if the hearing was adjourned as he had no passport or visa);

(e)    an affidavit of Mr Wei Dong sworn 30 March 2017 supporting his witness statement as to a garment in the relevant design being on the Taobao website before the priority date; and

(f)    an affidavit of Ms Bucoy affirmed 2 April 2017 (the Second Bucoy Affidavit), stating that Ms Bi Zi had informed her that she is prepared to travel to Guangzhou to testify by video link on an adjourned hearing date (but not until her child is at least five months old).

THE APPLICATION TO HEAR MR WEI DONG’S TESTIMONY BY VIDEO LINK

The legislative framework and relevant principles

11    Section 47A(1) of the Federal Court of Australia Act 1976 (Cth) (the Act) provides a broad power to the Court to “direct or allow testimony to be given by video link, audio link or other appropriate means.” The exercise of the power is in the Court’s discretion. Section 47A(2) expressly contemplates that a witness in a foreign country may give testimony by one of these means.

12    Section 47C(1) precludes the exercise of the power conferred by s 47A(1) unless certain technical requirements are met. On the evidence of Mr Lao’s first affidavit I am broadly satisfied as to the suitability of the facility in Guangzhou. However, had I been minded to order that the testimony of either Mr Wei Dong or Ms Bi Zi be heard by video link, I would also have made orders for a test run of those facilities to be conducted in order to ensure that the requirements of s 47C(1) were met.

13    Luvalot did not contest that oral testimony should generally be given directly to and in the presence of the Court. It applied for orders for testimony by video link on the basis that a departure from the usual practice was appropriate in the interests of justice in the present case because, if it was not permitted, Luvalot would be denied an opportunity to call witnesses essential to its defence of Magi’s claim and Luvalot’s pursuit of its cross-claim.

14    Over the years there has been some divergence in judicial approaches to the exercise of the discretion to permit testimony to be taken by video link.

15    In Tetra Pak Marketing Pty Ltd v Musashi Pty Ltd [2000] FCA 1261 Katz J permitted cross-examination of an expert in Switzerland to take place over the opposition of the cross-examining party. His Honour said (at [25]) that there was “a strong current of authority” in favour of permitting testimony by video link “in the absence of some considerable impediment telling against its use in a particular case.” In Versace v Monte [2001] FCA 1454 at [16] Tamberlin J approved Katz J’s remarks and said “a substantial case” needed to be made out before a Court will decline to make an order for testimony by video link.

16    In Australian Medical Imaging Pty Ltd v Marconi Medical Systems Australia Pty Ltd (2001) 53 NSWLR 1; [2001] NSWSC 651 at [3] Palmer J referred to a developing line of authority that “almost as a matter of course, the evidence of overseas witnesses should be taken by video link” but his Honour rejected that approach. His Honour concluded (at [29]) that evidence by video link should only be allowed upon the applicant showing good reason for the witness’s non-attendance. Palmer J’s approach was endorsed by Conti J in Moyette Pty Ltd v Foundation Healthcare Ltd [2003] FCA 116 at [10].

17    In Dorajay Pty Ltd v Aristocrat Leisure Ltd [2007] FCA 1502 at [7] Stone J referred to some of the difficulties that attend the taking of testimony by video link, particularly in relation to cross examination, and refused to permit evidence to be taken from an overseas witness. Her Honour observed:

In my experience, however, those difficulties are considerable and markedly interfere with the giving of the evidence and, particularly, with cross-examination.  They include technical problems such as difficulties with hearing, in presenting documents to the witness, in maintaining transmission over an extended period of time and those arising from time differences.  More importantly, even if those difficulties can be overcome or minimised, there are the problems in maintaining a line of cross-examination and the difficulty of assessing a witness where evidence is given by video link.  As a matter of justice to both parties these problems are critical.  It is perhaps more workable where one is dealing with an expert witness who is generally well-prepared, has written a detailed report and has an expertise and familiarity with the subject that may not be the case with a lay witness.

18    In Campaign Master (UK) Ltd v Forty Two International Pty Ltd (No 3) (2009) 181 FCR 152; [2009] FCA 1306 (Campaign Master) at [77], Buchanan J said that, notwithstanding the efficiency that might be obtained in an appropriate case, the trend of authority emphasised the need for a persuasive case to be made out to hear testimony by video link, particularly when it is to be imposed on an unwilling cross-examining party. His Honour said (at [78]), and I respectfully agree:

I share the concerns expressed by Spender J in World Netscape and by Stone J in Dorajay about the limitation on the effectiveness of video link arrangements as a means of taking oral evidence. I am particularly troubled by the prospect (or possibility) that the cross-examination of an important witness might be rendered less effective by the limitations of video link technology or the absence of the witness from the courtroom. Although the days are gone when witnesses are expected to feel any sense of intimidation as an aid to telling the truth, there is no doubt in my mind that the requirement to give evidence on oath or affirmation in the (generally) solemn atmosphere of a courtroom in the presence of a judge, and to answer questions in cross-examination in the presence also of cross-examining counsel, has at least three potential benefits. It enhances the prospect that the witness will remain conscious of the nature and solemnity of the occasion and of his or her obligations. It affords the cross-examiner some reassurance that the gravity and immediacy of the moment, and of the supervising presence of the judge, are not lost on the witness and the cross-examination is not thereby rendered any less effective, to the possible prejudice of the cross-examining party. It provides the Court with a more satisfactory environment in which to assess the nature, quality and reliability of responses by a witness, both to questions and to the overall situation presented by the necessity to give evidence in court. To my mind there remains, even in the modern context, a certain “chemistry” in oral interchanges in a courtroom, whether between a judge and counsel (or other representative) or between cross-examiner and witness. I would not wish too lightly to deprive a cross-examiner of that traditional forensic element in the exchange although, as the cases universally make clear, the Court must now, if asked to do so, balance the interests of a cross-examining party against claimed inconvenience both in individual cases and with respect to individual witnesses. Notwithstanding the increased availability and use of video link technology, in my view, a case must be made out for the use of video link evidence if it is opposed by an affected party. I do not share the view expressed by Katz J. My own view and, I think, the weight of authority, is to the contrary.

19    His Honour said (at [76]) that any tension between the differing judicial approaches could readily be reconciled by reference to the facts of each particular case. That observation was echoed by Gordon J in Kirby v Centro Properties Ltd (2012) 288 ALR 601; [2012] FCA 60 at [11] where her Honour said:

In the end, each case will turn on its own facts and circumstances and the exercise of discretion as to what is appropriate in a particular case will involve a balancing exercise as to what will best serve the administration of justice consistently with maintaining justice between the parties. All modern courts seek to limit the costs of litigation. One cost is in requiring a witness, especially a witness who is not a party, to travel to Australia to give viva voce evidence. Whether that cost can be minimised by giving that evidence by video link, as has been said, will need to be assessed not just on a case by case basis but also on a witness by witness basis.

20    I prefer the approach taken in Campaign Master to the approach in the earlier decisions cited. That decision has been expressly or implicitly endorsed in numerous cases: see for example Blackrock Asset Management Australia Services Ltd v Waked (No 2) [2011] FCA 479 at [45]-[46] (Perram J); Traxys Europe SA v Balaji Coke Industry Pvt Ltd (No 4) [2012] FCA 1416 at [17] (Foster J); Unilever Australia Ltd v Revlon Australia Pty Ltd (No 4) [2014] FCA 1074 at [14] (Gleeson J); Stuke v ROST Capital Group Pty Ltd (2012) 207 FCR 86; [2012] FCA 1097 (Stuke) at [32] (Katzmann J); Seymour v Commissioner of Taxation (2016) 241 FCR 361; [2016] FCAFC 18 at [41] (Griffiths J); Jones v Treasury Wine Estates (No 3) [2017] FCA 961 at [32]-[33] (Foster J). There have, however, also been cases going the other way, some of which are usefully listed by Flick J in Australian Competition and Consumer Commission v Pirovic [2014] FCA 544 (Pirovic) at [10]. In the finish, whether an order to hear testimony by video link is appropriate will depend on the facts and circumstances surrounding the application.

21    In Pirovic (at [11]) Flick J set out a non-exhaustive list of considerations which may assume relevance in a particular case, as follows:

•    the extent to which the proposed witness seeks to give evidence of facts relevant to the dispute as opposed to opinions founded upon, or largely founded upon, agreed facts or assumptions;

•    whether the parties are in agreement as to the utility in allowing evidence to be given by way of video link;

•    whether the proposed evidence is centrally relevant to the issues to be resolved or more tangential to those matters of real dispute;

•    the extent to which any cross-examination may be inhibited by the absence of the witness being present;

•    the relevance of the evidence the subject of any cross-examination – the more limited the cross-examination and the more questionable the relevance of the evidence the more limited may be the prejudice to the cross-examiner;

•    the reasons proffered by the witness as to the inability to come to Australia; and

•    the practical impediments that a refusal to allow cross-examination to proceed by way of video link upon the ability of a party to present its case.

Considerations in any particular case could also include:

•    factors peculiar to the proposed witness, including ill-health or an inability to freely travel to and depart from Australia; and

•    the extent to which the Court itself may consider that it would be assisted by evidence being given in person.

The overriding consideration must, however, forever remain what is considered by the Court to be in the best interests in the administration of justice, including the need to ensure that justice is done as between the parties.

I respectfully agree.

Consideration

22    In summary Luvalot submitted that:

(a)    Mr Lao’s first affidavit established that there were appropriate arrangements in place to show that the requirements of s 47C of the Act had been met, such that an order under s 47A could be made for Mr Wei Dong (and/or Ms Bi Zi) to give their testimony by video link;

(b)    there was little force in Magi’s contention that if Mr Wei Dong (or Ms Bi Zi) committed a contempt of court or perjury, he or she would be beyond the jurisdiction of the Court. Luvalot argued that they would be lay witnesses voluntarily giving evidence on a factual matter of small ambit, and that the inability of the Court to deal with such hypothetical difficulties was not a matter to be given much weight;

(c)    there were unlikely to be logistical problems in hearing Mr Wei Dong’s evidence by video link as Magi had informed Luvalot that the documents upon which it would cross-examine him were limited to those attached to his affidavit. Counsel for Magi did not, however, confirm this;

(d)    allowing Mr Wei Dong to give evidence by video link would not deny Magi the opportunity to cross-examine him effectively, and it would suffer no significant forensic disadvantage;

(e)    allowing Mr Wei Dong to give evidence by video link would not reduce the ability of the Court to closely observe him so as to assess his evidence, and in any event the importance of appearance and demeanour in an assessment of the credibility of a witness is marginal: State Rail Authority of New South Wales v Earthline Constructions Pty Ltd [1999] HCA 3 at [87]-[92] per Kirby J and;

(f)    refusal to allow Mr Wei Dong (and/or Ms Bi Zi) to give evidence by video link would mean Luvalot was denied the opportunity to defend the case and to prosecute its cross-claim - that is, unless the renewed application for an adjournment is allowed.

23    On 3 April 2017 I declined to make orders to permit Mr Wei Dong’s testimony to be heard by video link. I did so for a number of reasons:

(a)    first, Mr Wei Dong’s evidence goes to the critical issue in the claim and cross-claim - whether or not the disputed garment design was published on the Taobao website on a date before the priority date for registration. This publication is Luvalot’s only ground of revocation and only ground of defence to the infringement claim. It is critical for Magi that the effectiveness of cross-examination not be reduced;

(b)    second, Magi proposes to attack his credit. The requirement for him to take the oath or affirmation in the solemn atmosphere of a courtroom and to give evidence in the presence of a judge will enhance the prospect that he will remain conscious of his obligation to tell the truth;

(c)    third, because credit is in issue and the cross-examining party opposes the application. Magi is likely to be at a disadvantage (perhaps a significant one) in cross-examining Mr Wei Dong if he is permitted to testify by video link;

(d)    fourth, there are likely to be logistical difficulties in cross examination if Mr Wei Dong gives evidence by video link. Magi proposes to cross-examine on documents including images attached to his affidavit but it did not expressly agree that cross-examination would not extend to documents beyond those. It is difficult for documents to be put to a witness by way of video link. Further, Magi said that he may be cross-examined in relation to a sample garment which will require him to examine the garment in detail, and for the Court to do so as well. That cannot be done by video link;

(e)    fifth, the difficulties for Magi in cross examination are likely to be compounded by the fact that Mr Wei Dong cannot speak English and will give evidence through a Mandarin interpreter. I agree with Mansfield J in Mastipour v Secretary, Department of Immigration and Multicultural and Indigenous Affairs (2004) 140 FCR 137; [2004] FCA 1571 at [37], and Katzmann J in Stuke at [33], that giving evidence by video link through an interpreter is “a most unsatisfactory method of resolving contentious and critical issues of fact”;

(f)    sixth, I accept that demeanour may well be overrated as a tool for assessing the reliability of testimony (see for example, McClellan CJ at CL, Who is telling the truth? Psychology, common sense and the law, presentation to the Local Courts of NSW Annual Conference, 2-4 August 2006) and it is difficult to know how much weight to give to this consideration. Even so, I consider I will be assisted by hearing Mr Wei Dong’s evidence in Court. As Buchanan J said in Campaign Master (at [78]), it provides a more satisfactory environment in which to assess the nature, quality and reliability of Mr Wei Dong’s evidence; and

(g)    seventh, Luvalot did not assert that Mr Wei Dong suffered an inability or incapacity to attend Court to give his evidence. He is willing and able to come to Australia to give his evidence except for the fact that, through Luvalot’s failures, he did not have a Chinese passport or an Australian visa.

24    In the circumstance that the application to take Mr Wei Dong’s testimony by video link was refused Luvalot renewed its application to adjourn the trial.

THE RENEWED ADJOURNMENT APPLICATION

25    Magi strenuously opposed the renewed adjournment application. It submitted that:

(a)    Luvalot was aware from the time that the cross-claim was filed that Mr Wei Dong and Ms Bi Zi would need to attend Court in Australia to give evidence and was reminded of this on numerous occasions;

(b)    Luvalot was aware for some months before Ms Bi Zi put on her witness statement that she was pregnant and must have known that she would be unable to attend Court on the hearing date, but did not mention this to Actuate IP until February 2017;

(c)    Luvalot made no attempt to make any arrangements for Mr Wei Dong and Ms Bi Zi to travel to Australia to give evidence. Luvalot did not ask them if they had passports and assumed they did not;

(d)    Actuate IP did not take steps to contact Mr Wei Dong or Ms Bi Zi directly, and did not make enquiries as to whether they held the necessary passports and visas until prompted by an email from Magi’s solicitors on 20 March 2017, and even then made no arrangements for them to travel to Australia;

(e)    Luvalot’s explanation for not taking any steps to arrange for Mr Wei Dong and Ms Bi Zi to travel to Australia to give evidence is “wholly unconvincing”. Ms Bucoy gave no reason for her alleged “misunderstanding” as to what was meant by attendance at Court or in relation to her belief that the two witnesses could give evidence by telephone or video; and

(f)    there is still no evidence from Ms Bucoy as to when she realised that Mr Wei Dong and Ms Bi Zi were required to attend Court in Australia to give their evidence.

26    Magi contended that Luvalot sought an indulgence from the Court but had been, and remained, less than frank in its explanations and reasons for seeking that indulgence. It said that the real reason for the adjournment application was that Luvalot did not make the necessary arrangements for its witnesses to travel to Australia to give evidence, and that any prejudice Luvalot suffered was of its own making.

27    Magi also argued that it was suffering reputational damage as there had been some comments on social media querying whether Magi (rather than Luvalot) had engaged in copying. Finally, Magi said (and I accept) that the lateness of the adjournment application meant that it was impossible to move another litigant’s case into the vacated period. That is an important consideration having regard to the requirement to take account of the efficient use of judicial resources, the efficient disposal of the Court’s overall caseload and the interests of other litigants before the Court: see s 37M(1) of the Act; Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175; [2009] HCA 27 at [5] per French CJ and at [111]-[112] per Gummow, Hayne, Crennan, Kiefel and Bell JJ.

28    Magi’s submissions had real force but, on balance, I concluded that it was appropriate to allow the adjournment. I concluded that Luvalot did enough to fill in the gaps in its evidence in the flurry of affidavits it filed after the refusal of the initial adjournment application. The failure to make proper arrangements for the attendance of its witnesses appeared to lie largely at the feet of Ms Bucoy rather than Actuate IP. Albeit with some hesitancy, I accepted Ms Bucoy’s evidence as to her misunderstanding.

29    If the adjournment is refused Luvalot will be shut out from defending Magi’s claim and from prosecuting its cross-claim. That would be a harsh result from the asserted “misunderstanding” when Mr Wei Dong, at least, who is said to be an independent witness, is prepared to travel from China to Australia to give evidence in support of Luvalot’s case.

30    There is also some dissonance between Magi’s position that Mr Wei Dong should not be allowed to give evidence by video link because it would disadvantage Magi in cross examining him, and its position that the trial should not be adjourned which would meant he cannot give evidence at all. I consider justice will best be served by allowing the adjournment. That will permit Mr Wei Dong to travel to Australia to give his evidence, as well as Ms Bi Zi, if her position changes, and the claim and cross-claim can be determined on their merits.

THE APPLICATION TO TAKE MS BI ZI’S EVIDENCE BY VIDEO LINK

31    Once it was decided that the trial was to be adjourned there was no urgency to deciding the application to hear Ms Bi Zi’s testimony by video link. I made orders for Luvalot to advise Magi of the details of the arrangements that it proposed for Ms Bi Zi to testify by video link, for the parties to file short written submissions in relation to that application, and for the question to be determined on the papers.

32    In this application Luvalot relied on the affidavits it filed in support of both interlocutory applications, on its submissions in the interlocutory hearing on 3 April 2017, and on its short written submissions. The written submissions largely reiterated the arguments Luvalot made in relation to Mr Wei Dong. In summary it submitted that:

(a)    Ms Bi Zi is an important witness in the proceeding. She proposes to give evidence that she viewed an image of the relevant design on the internet and that she purchased the garment shown in the publication on a date prior to the priority date. She is independent of the publisher of the image and her evidence is corroborative of Mr Wei Dong’s evidence as to the fact of prior publication;

(b)    she is a resident of China and it is not within Luvalot’s power to compel her to give evidence in any manner. She has indicated a strong preference not to travel internationally because she has an infant who is under 12 months old. Luvalot has no choice but to rely upon her voluntary cooperation, which presently only extends to making herself available to give evidence by video link from Guangzhou, but not in person in Australia;

(c)    Luvalot has put on evidence that is has located an appropriate video link facility in Guangzhou; and

(d)    weighing the detriment Luvalot would suffer if it were denied the benefit of Ms Bi Zi’s evidence against the disadvantage, if any, inherent in cross-examining her by video link rather than in person, justice is best done between the parties by the Court permitting her testimony to be given by video link.

33    There is an important difference between the application in relation to Mr Wei Dong’s testimony and the application in relation to Ms Bi Zi. Mr Wei Dong is willing and able to travel to Australia to give evidence and, if he is not permitted to testify by video link but an adjournment is allowed, Luvalot will not have lost the benefit of his evidence. For Ms Bi Zi, the evidence is that she is not willing to travel to Australia to give evidence even if the hearing is adjourned. If she is not permitted to testify by video link Luvalot said that it will have lost the benefit of her evidence.

34    For essentially the same reasons as I gave in relation to Mr Wei Dong I am not satisfied it is appropriate to order that Ms Bi Zi be allowed to testify by video link. As with Mr Wei Dong:

(a)    Ms Bi Zi’s evidence goes to the critical issue in the claim and cross-claim. It is important that the effectiveness of cross-examination not be reduced in any way;

(b)    Magi proposes to attack Ms Bi Zi’s credit and it is likely that her taking the oath or affirmation in Court and giving evidence in the presence of a judge will reinforce her obligation to tell the truth;

(c)    credit is in issue, Magi opposes the application and it will be at a disadvantage (possibly a significant one) if forced to cross-examine Ms Bi Zi by video link;

(d)    there are likely to be logistical difficulties in cross examination if Ms Bi Zi gives evidence by video link because Magi proposes to put a sample garment to her and to have her examine it in detail, as well as have the Court do so. That will be impossible if evidence is given by video link;

(e)    Ms Bi Zi will give evidence through an interpreter and it is most unsatisfactory to attempt to resolve contested factual issues by video link through an interpreter; and

(f)    I am likely to be assisted in assessing the reliability of Ms Bi Zi’s testimony if she gives evidence in Court.

35    I also take into account some shortcomings in the evidence as to Ms Bi Zi’s unwillingness to travel to Australia to give evidence. First, the evidence as to that unwillingness is either hearsay or double hearsay. Ms Bi Zi did not go on affidavit in that regard, the information as to her unwillingness only comes from Ms Bucoy on the basis of information and belief, and it appears that no lawyer from Actuate IP personally spoke to Ms Bi Zi regarding her alleged unwillingness. Second, the evidence as to Ms Bi Zi’s preparedness to give evidence in Australia materially changed over the course of six weeks. Third, although I do not give this much weight, there is a hint in Luvalot’s submissions that her position might change. The submissions spoke of her “strong preference” not to travel internationally rather than a refusal, they said that her voluntary cooperation “presently” only extended to making herself available to give evidence by video link, and that the “current” position is that Ms Bi Zi would not testify at all if she cannot do so by video link.

COSTS

36    An order for costs cannot repair the inconvenience and delay caused to Magi by Luvalot’s dilatory conduct, but the orders I have made at least ensure that Magi does not incur increased costs as a result of that conduct. On 3 April 2017 I made orders for Luvalot to pay Magi’s costs of both interlocutory applications and costs thrown away by reason of the adjournment on an indemnity basis, to be assessed on a lump sum basis if not agreed, and required those costs to be paid forthwith. I have now made further orders for Luvalot to pay costs, on the same basis, in relation to the application for Ms Bi Zi’s testimony to be taken by video link.

Associate:

Dated:    25 September 2017