FEDERAL COURT OF AUSTRALIA

Douglas v Racing Victoria Limited [2019] FCA 1745

ORDERS

THE COURT ORDERS THAT:

1.    The time for filing the Notice of Appeal be extended to 18 March 2019.

2.    The matter be listed for mediation before a Registrar of the Court on a date to be fixed before 13 December 2019.

3.    The appeal be listed for a case management conference on a date to be fixed after 13 December 2019.

4.    The costs of this application be costs in the appeal.

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

REASONS FOR JUDGMENT

Delivered ex tempore

ANASTASSIOU J:

1    This is an application for an extension of time in which to file a Notice of Appeal from the decision of the Federal Circuit Court in Douglas v Racing Victoria Limited and Another [2019] FCCA 49. The applicant was unsuccessful in his claim against the respondents for infringement of copyright and for breach of a Deed of Settlement and Release.

2    The applicant's claims concern two medals awarded annually to the leading jockey in the field of flat racing and jumps racing. The background to the claims is set out in detail by the primary judge in paragraphs [6] to [109] of his Honour's reasons.

3    The applicant was 32 days late in filing his Notice of Appeal and accordingly seeks an extension of time in which to file his Notice of Appeal pursuant to rule 36.05 of the Federal Court Rules. The principles applicable to granting such extensions are well known and were essentially common ground between the parties. In short compass they are:

(1)    whether the applicant has provided an acceptable reason for the delay;

(2)    whether the respondents would suffer any prejudice should an extension of time be granted; and

(3)    whether the applicant has demonstrated that the grounds to be advanced on appeal have any demonstrated merit

(See, SZTUR v Minister for Immigration and Border Protection [2017] FCA 1570 at [13]; Gallo v Dawson [1992] HCA 44; 66 ALJR 859; 109 ALR 319).

4    The most important consideration is the last mentioned, the Court's priority is and must be to uphold the administration of justice. If an appeal is futile or hopeless, granting and extension of time wastes the Court's resources, the parties' time and costs, and therefore is not in the interests of the administration of justice.

5    Conversely, if upon a preliminary evaluation it is demonstrated that there is potential merit to the appeal, there would need to be substantive prejudice to the respondent arising from the delay in order to deny the applicant the opportunity to ventilate the appeal. I shall refer to the merits of the appeal shortly.

6    On the question of delay, the first relevant matter is the length of the delay. In this case, the delay is relatively short and accordingly the explanation for it is less difficult than may be the case if the delay had been much longer. The applicant swore several affidavits explaining his delay and identified a number of reasons which included his shock at the outcome in the court below and the consequent distress that caused. He also suffered some health conditions, including a heart condition and gastroenteritis.

7    In addition, the applicant explained that following the judgment delivered below, he was not represented at the relevant time and he had formed an opinion that the judgment was made without the benefit of all relevant information. In order to address this issue, he took some steps to gain access to the relevant court file and this, in turn, compounded the delay as he encountered some difficulties in obtaining access to the court file.

8    The applicant's explanation for the delay, being in total 32 days, is credible and to my mind describes the vicissitudes of life with which we are all familiar. The fact that the applicant was not represented at the relevant time further explains the difficulties he encountered.

9    As to prejudice, save for costs, the respondents did not identify any specific prejudice that might result from allowing the application. The applicant has not yet paid what he was ordered to pay by way of costs below, but I consider that this is a matter for a separate application if the respondent is so advised.

10    Turning to the merits of the appeal, Ms Barker, who appeared with Mr Bird for the applicant, contended in substance that the primary judge erred in the conclusions he reached, in particular in paragraphs [196] and [197] of his Honour’s reasons. The gravamen of the applicant's contention centres upon paragraph [197] of the Reasons. Ms Barker submitted that at the trial below the applicant had not abandoned his claim founded upon the Deed of Settlement, and in particular his reliance upon clause 3(b). That clause provides:

The Respondents each undertake not to produce or cause to be produced after the date of this deed without a licence from the Applicant the medals which reproduce the Medals or a substantial part of the Medals.

11    The Deed of Settlement and release was entered into in settlement of earlier proceedings against the first respondent and second respondent to this proceeding.

12    Put shortly, the applicant contends that the claim for contravention of clause 3(b) was not dependent upon it being established that the medals designed by him had been copied by the respondents, or at the behest of the first respondent, and that the primary judge erred in holding as such.

13    A further ground of appeal to be relied upon by the applicant concerns the application of s 35(5) of the Copyright Act 1968 (Cth) in relation to a part of the medal, being the centre part produced by use of a dye. Ms Barker submits that there was evidence at trial that the dye was commissioned by the applicant and accordingly, pursuant to s 35(5) he is the owner of the copyright. Section 35(5) was not pleaded nor addressed in terms at the hearing below. However, the proposed Notice of Appeal raises s 35(5) and the Applicant proposes to advance a ground of appeal in reliance on it.

14    Mr Bell, who appeared on behalf of the first respondent, submitted that neither of the above grounds were relied upon before the primary judge. Regarding the proposed reliance upon s 35(5) of the Copyright Act, Mr Bell submitted that if the applicant were now entitled to rely upon it further evidence would be required on appeal and the that the first respondent would have conducted the proceeding below very differently.. Further, Mr Bell submitted that the proposed reliance upon s 35(5) is contrary to evidence that was given by the applicant below.

15    The matters raised by Mr Bell cannot be lightly discarded.

16    It may be that upon proper consideration of the way in which the trial was conducted below, it would be unfairly prejudicial to the respondent to allow the applicant to change course in the way he proposes, if that be the correct characterisation of the events as they unfolded at the trial below. It is conceivable that the respondent may give evidence on appeal concerning its reliance on the way the case was put and detriment it would suffer if the applicant was permitted on appeal to conduct his case differently. However, these are matters, in my opinion, to be addressed by the Full Court. On the evidence before me I am not in a position, nor do I think it would be proper on an application of this kind, to make an assessment of the strength of the respondent's contentions; notwithstanding that those contentions are plainly relevant to the merits of the appeal and accordingly relevant to this application. As I have said, in my view these are questions that should be determined by the Full Court with the benefit of such further evidence and submissions as the parties may be advised to put before the Court.

17    I am satisfied that the applicant has demonstrated sufficient merit in the proposed grounds of appeal, and having regard to the relatively short delay, it is appropriate to allow the application for an extension of time until 18 March 2019.

18    The Court orders:

(1)    The time for filing the Notice of Appeal be extended to 18 March 2019.

(2)    The matter be listed for mediation before a Registrar of the Court on a date to be fixed before 13 December 2019.

(3)    The appeal be listed for a case management conference on a date to be fixed after 13 December 2019.

(4)    The costs of this application be costs in the appeal.

Associate:

Dated:    23 October 2019