FEDERAL COURT OF AUSTRALIA

Dispute Resolution Associates Pty Ltd v Selth [2020] FCA 753

ORDERS

THE COURT ORDERS THAT:

1.    The interlocutory application filed on 23 May 2020 be dismissed.

2.    The parties bear their own costs of and incidental to the interlocutory application filed on 23 May 2020.

3.    There be liberty to apply.

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

REASONS FOR JUDGMENT

COLLIER J:

1    The interlocutory application before me was filed by the respondents on 23 May 2020. It arises following the recent death of Mr Philip Selth OAM, who I understand was, at material times, the Chief Executive Officer of the Australian Bar Association (as an unincorporated association) and subsequently ABA Australian Bar Association Limited (ABA Ltd) (following its incorporation on 20 May 2015). Relevantly, for the purposes of this litigation, Mr Selth was the first respondent to these proceedings in a representative capacity for the members of the Australian Bar Association. Determination of this interlocutory application is attended by some urgency because it is opposed by the applicants, whose own application comes before me on Thursday, 4 June 2020.

2    I note that Mr Minus was removed as an applicant to these proceedings by orders of the Court on 14 March 2019, however Mr Minus was granted leave to manage the second and third applicants pursuant to s 206G of the Corporations Act 2000 (Cth) on 5 September 2019. Mr Minus represented the second and third applicants at the hearing before me.

3    In their interlocutory application, the respondents sought the following orders:

1.    Mr Philip Selth be removed as the representative for the First Respondent.

2.    Mr Gregory John Tolhurst be substituted on the Court’s record as the representative for the First Respondent.

3.    Rule 9.11 of the Federal Court Rules 2011 (Rules) applies such that any thing done, or action taken, in the proceeding before the substitution has the same effect in relation to Mr Tolhurst as the representative for the members of the Australian Bar Association as it had in relation to Mr Selth as the representative for the members of the Australian Bar Association.

4.    The requirement in rule 9.11(b) of the Rules for the First Respondent to file a notice of address for service be dispensed with.

5.    Such further or other orders as the Court sees fit.

6.    Costs are reserved.

4    At the hearing of this interlocutory application on 29 May 2020, Mr O’Meara SC for the respondents sought leave to amend the interlocutory application and the orders sought. Following the amendment, proposed orders 1 and 2 in the interlocutory application read:

1.    Mr Philip Selth be removed as the representative for the First Respondent.

2.    Mr Gregory John Tolhurst be substituted on the Court’s record as the representative for the First Respondent.

5    In light of this amendment, I sought clarity from Mr O’Meara as to exactly how his clients sought the first respondent to be described in the proceedings. Mr O’Meara explained that the amendment to the proposed orders was to eliminate duplication of references to “representative”, and that he sought orders that the first respondent be described in the proceedings henceforth as:

Gregory John Tolhurst in a representative capacity for the members of the Australian Bar Association.

6    Although I consider the approach of the respondents in respect of this issue to be slightly confusing, I accept that this would be the effect of their proposed first and second orders and granted the leave sought by Mr O’Meara.

7    The first respondent incorporated in 2015, and it is unclear on the evidence before me whether an unincorporated association known as the “Australian Bar Association” actually continues to exist in any form. However, it is common ground between the parties that the cause of action of the first respondent continues, and that an appropriate person should be appointed as the representative of the first respondent following the death of Mr Selth.

8    In support of their interlocutory application, the respondents rely on the affidavit (filed on 23 May 2020) of Mr Tom Bridges, the solicitor on the record for the respondents. Relevantly Mr Bridges deposes:

4.    Mr Philip Alan Selth is currently listed as the representative of the members of the Australian Bar Association (an unincorporated association), the First Respondent in the proceeding.

5.    Mr Selth passed away on or around 3 May 2020.

6.    Mr Gregory John Tolhurst is currently the Acting Chief Executive Officer of the Australian Bar Association. Mr Tolhurst was appointed in this role by the Australian Bar Association Council.

7.    I am informed by Mr Tolhurst that, as the Acting Chief Executive Officer of the Australian Bar Association, he is the appropriate representative to be substituted as the representative for the First Respondent in this proceeding.

9    The respondents also rely on the decision of Justice Greenwood in Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649, in which his Honour considered an application for declarations and injunctions brought by the Australian Bar Association and ABA Ltd, referable to conduct of the applicants in respect of certain business names and trade marks. It is not controversial that the applicants in that case are the same as the respondents in the proceedings before me. Mr O’Meara particularly drew my attention to the following passages from Justice Greenwood’s judgment:

1.    These proceedings are concerned with two actions heard together. The first (NSD 975 of 2014) is a proceeding commenced by Mr Philip Selth in a representative capacity for the members of an unincorporated body (well-known amongst the relevant cohorts) described as The Australian Bar Association (the “ABA”). The inaugural general meeting of the ABA was held on 24 January 1963 at Theatre Royal, 29 Campbell Street, Hobart, Tasmania. It seems that the first draft of the Constitution for the ABA was prepared by the Hon Nigel Bowen QC and was settled at a meeting of representatives of the New South Wales Bar Association, the Victorian Bar Council and the Queensland Bar Association at the home of the Hon Nigel Bowen QC in Wahroonga in Sydney.

…

3.    A company limited by guarantee, ABA Australian Bar Association Limited (“ABA Ltd”) joined the proceeding as second applicant. That company was incorporated on 20 May 2015 for the purpose of assuming the role and function of the ABA. The origin of the ABA and the relationship between the ABA and ABA Ltd is described later in these reasons. It should be noted, however, that all references in these reasons to the “ABA” should be understood as a reference to the unincorporated body up to the point in time at which ABA Ltd assumed the role and function of the unincorporated body and thereafter a reference to ABA Ltd unless expressly otherwise indicated. Where a particular reference to the legal character of the earlier body is necessary, I describe it as “ABAU”.

…

38.    The principal evidence given on behalf of the applicants concerning the ABAU, its activities, the formation of ABA Ltd and the relationship between those bodies was given by Mr Philip Alan Selth (“Mr Selth”). Mr Selth is the Executive Director of the NSWBA and Chief Executive Officer (“CEO”) of the ABA. He has held these positions since 10 November 1997 and 2 February 2015 respectively. Mr Selth has been involved with the affairs of the ABA since his appointment as Executive Director of the NSWBA in 1997. He has, from 1997, to the best of his recollection, attended every meeting of the AB Council and has been responsible for a significant part of the administration of the business of the ABA including its financial management.

…

62.    On 10 September 2014, Mr Livesey QC, Ms McLeod SC, Mr Boulten SC, Mr Stretton SC, Mr Quinlan SC, Mr McTaggart SC, Mr O’Sullivan QC, Mr Lawrence SC, Mr Greenwood SC, Mr Alstergren QC and Mr Davis QC, as assignors, entered into an Assignment Deed with Mr Selth, as assignee, by which they assigned to Mr Selth TM 252, TM 902 and Application 1560119. By cl 2, Mr Selth acknowledges that he holds the legal title as trustee for the members of the ABA consistent with his agreement with the ABA to so hold each trade mark and the trade mark application.

63.    Mr Selth says that he became the registered owner of TM 252 and TM 902 by assignment pursuant to a resolution of the AB Council in September 2014. He says that he holds each trade mark registration on behalf of the members of the ABA “from time to time”. He says he is also now the applicant for the AUSTBAR application and also Application No. 1650033 for the word mark AUST BAR.

64.    As already mentioned, ABA Ltd was incorporated on 20 May 2015. In the President’s Report (Ms McLeod SC’s Report) of June 2015 to members, the President advised members of the incorporation of ABA Ltd and reported that the new entity would “assume the role and function of the ABA going forward”: affidavit Mr Andrew Christopher (“Mr Christopher”) sworn 27 July 2015, AJC3, Tab 3. The President also said this in that report:

The ABA Council also proposes to assign all rights and interests of the ABA to ABA Limited. It has been a long-held plan of the ABA to incorporate and this is a positive development for the future activities and governance of the ABA.

10    Mr Minus opposed proposed order 2 of the respondents’ interlocutory application. Mr Minus also submitted that proposed order 3 did not concern any thing not done or action not taken, that should have been. By written submissions Mr Minus contended, materially:

Order 1 [sic]

3.    The requirements to commence representative proceedings in the Federal Court are set out in section 33C of the Federal Court of Australia Act 1976 (FCA) which provides that there must be:

  a.    seven or more persons have claims against the same person; and

b.    the claims of all those persons are in respect of, or arise out of, the same, similar or related circumstances; and

c.    the claims of all those persons give rise to a substantial common issue of law or fact;

d.    a proceeding may be commenced by one or more of those persons as representing some or all of them.

4.    These proceedings were commenced solely by the First Respondent, an unincorporated association, as a representative action as follows:

“Representative action”

The Applicant is the current delegate of The Australian Bar Association (ABA) and brings this proceeding in a representative capacity on behalf of the members of ABA.

The members of ABA consist of practicing barristers who are members from time to time of the Australian Capital Territory Bar Association, the Bar Association of Queensland, the New South Wales Bar Association, the Northern Territory Bar Association, the South Australian Bar Association, the Tasmanian Bar, The Victorian Bar Incorporated and the Western Australian Bar Association, and such other practising barristers who may from time to time be admitted to membership of the ABA by The Australian Bar Council which controls and manages the business and the affairs of the ABA.”

5.    The action was on behalf of a class of people being:

  a.    Practising barristers who are,

  b.    Members of a state bar association and,

c.    Admitted to membership of The Australian Bar Association by The Australian Bar Council.

 6.    Mr Gregory Tolhurst is not a member of that class, as he is not a barrister.

7.    Mr Tolhurst cannot be a practising barrister as he is an employee of the NSW Bar Association.

8.    Mr Tolhurst does not have standing to be a representative as s 33D(1) of the FCA states that:

“A person referred to in paragraph 33C(1)(a) who has a sufficient interest to commence a proceeding on his or her own behalf against another person has a sufficient interest to commence a representative proceeding against that other person on behalf of other persons referred to in that paragraph.”

9.    Mr Philip Selth at one stage (although it was disputed) was the holder of the barristers collective trade mark application for the unincorporated association.

10.    Mr Selth gave sworn testimony in the Federal Court that upon the incorporation of the ABA Australian Bar Association the unincorporated Australian Bar Association ceased to exist (transcript NSD975/2014 142.2.16 at 35 on page 96):

MINUS: And to your mind there was only one ABA: it was either the ABA in existence at the time when this was drafted or the ABA that was in existence subsequent to the incorporation?

SELTH---The ABA at the time. Yes.

MINUS: So at the present time, is there – just the final question – is there an unincorporated body and an incorporated body in existence, or in your knowledge there is only one body, and which one is it?

SELTH---Incorporated body.

Order 3

11.    Consent of the individual barristers was not required on the commencement of these proceedings as under s 33E of the FCA the Representative proceedings were conducted on an opt-out basis.

12.    Although s 33J(1) of the FCA requires that the Court must fix a date before which a group member may opt out of a representative proceeding, at the time of the commencement of these proceedings, the Court did not fix a date as required.

13.    Although s 33X(1)(a) of the FCA requires that notice must be given to group members, notice was not given to barristers that were group members advising them that:

a. proceedings had commenced,

b. they had a right to opt out.

14.    Pursuant to s 33Y of the FCA the Court must, by order specify:

(a) who is to give the notice; and

(b) the way in which the notice is to be given.

11    As I noted earlier, all parties agreed that, notwithstanding that following the incorporation of ABA Ltd all rights and interests of the unincorporated association were assigned to that company, it is necessary for the first respondent to remain a party to the present proceedings. After hearing Mr O’Meara and Mr Minus, I asked them whether the key issue for my consideration was whether, in light of their submissions, the proceedings before me had actually been commenced pursuant to Pt IVA of the Federal Court of Australia Act 1976 (Cth) (the Federal Court Act) (as Mr Minus contended) or pursuant to r 9.23 of the Federal Court Rules 2011 (Cth) (the Federal Court Rules) (as Mr O’Meara contended). Mr O’Meara and Mr Minus agreed that this was the key issue. If, however, Mr O’Meara’s submissions are correct, the next question is whether a form of order in the terms proposed by the respondents in draft order 2 is appropriate. I now turn to these issues.

Are these representative proceedings within PT IVA of the Federal court act, or pursuant to r 9.23 of the rules?

12    The applicants’ application before me, to be heard on 4 June 2020, was filed on 9 August 2018. In that application the applicants have sought an extension of time and leave to appeal from the decision of Justice Logan in Minus v Selth (No 2) [2017] FCA 1233 delivered on 18 October 2017.

13    Justice Logan’s decision concerned costs estimates following orders of Justice Greenwood in [2017] FCA 649, and is one of a series of earlier applications and multiple judgments of the Federal Court relating to issues in dispute between these parties. In [2017] FCA 649 Justice Greenwood adjudicated intellectual property rights of the parties.

14    Insofar as I can ascertain, no reference was made in any of these decisions to the basis on which Mr Selth had standing to represent the unincorporated association (being the Australian Bar Association). In [2017] FCA 649 Justice Greenwood noted that the proceedings were commenced by Mr Philip Selth in a representative capacity for the members of an unincorporated body known as “The Australian Bar Association”. However, although the respondents before me submitted that Mr Selth acted for the members of the unincorporated association pursuant to r 9.23 of the Federal Court Rules, this rule does not appear to have been identified in the proceedings before Justice Greenwood, or the proceedings before Justice Logan, or any other relevant litigation, as the provision pursuant to which the respondents’ litigation was commenced, or as a basis for Mr Selth’s standing as a respondent.

15    Mr Minus submitted that the respondents’ proceedings are representative proceedings within the meaning of Pt IVA of the Federal Court Act. Such a proceeding must be commenced by an originating application in accordance with Form 19 of the Federal Court Rules: r 9.32. No proceedings in this litigation have been so commenced. Insofar as I can ascertain, neither these proceedings nor associated litigation have been conducted in accordance with, or by reference to, Pt IVA of the Federal Court Act or Div 9.3 of the Federal Court Rules.

16    The respondents’ claim in the present litigation is not a Pt IVA representative proceeding.

17    The respondents submit, in summary, that the proceedings were initiated by them pursuant to r 9.23 of the Federal Court Rules, which provides:

9.23 Representative party—beneficiaries

(1)     A proceeding dealing with property that is subject to a trust or included in a deceased estate may be started by or against a trustee or personal representative without joining as a party a person who has a beneficial interest in the trust or estate (a beneficiary).

(2)     However, a person may apply to the Court for an order that a beneficiary be joined as a party to the proceeding.

18    Specifically, the respondents submit that Mr Selth was named as a respondent because the proceedings dealt with property subject to a trust, and he was a trustee in relation to that property.

19    Rule 9.23 applies to proceedings dealing with trust property, and permits a trustee to bring or defend such a proceeding without the need for the beneficiary or beneficiaries to be joined as a party or parties (see Edwards v Commonwealth Superannuation Corporation [2017] FCA 375 at [191]).

20    I accept that the proceedings before me were commenced by the respondents pursuant to r 9.23 of the Federal Court Rules. Their submission to this effect is consistent with the evidence of Mr Selth in the proceedings before Justice Greenwood (to which his Honour referred in [2017] FCA 649 at [63]) that Mr Selth became the registered owner of relevant trademarks and held the registrations on behalf of the members of the ABA “from time to time”. This evidence, which was accepted by Justice Greenwood at [220] of [2017] FCA 649, supports the conclusion that Mr Selth held the interests in the trade marks in a fiduciary capacity for the members of the Australian Bar Association members.

Proposed order 2

21    The respondents rely on r 9.11 which provides:

9.11 Substitution of party

If a party (the new party) is substituted for another party (the old party):

(a)    any thing done, or action taken, in the proceeding before the substitution has the same effect in relation to the new party as it had in relation to the old party; and

(b)    the new party must file a notice of address for service.

22    Rule 9.11 is in Div 9.1 of the Federal Court Rules, headed “Parties, interveners and causes of action”. Earlier in Div 9.1 is r 9.09, which provides:

9.09 Death, bankruptcy or transmission of interest

(1)    If a party dies, or becomes bankrupt, during a proceeding but a cause of action in the proceeding survives, the proceeding is not dismissed only because of the party’s death or bankruptcy.

(2)    If the interest or liability of a party passes to another person during a proceeding, by assignment, transmission, devolution or by any other means, the party or the person may apply to the Court for an order for the joinder of the person as a party or for the removal of the party.

(3)    If a person is joined as a party under this rule, the start date of the proceeding for the person is the date on which the order is made.

Note: The Court may make an order for the future conduct of the proceeding.

23    Although the first respondent’s cause of action survived the death of Mr Selth, I have a number of concerns about the respondents’ interlocutory application seeking to nominate Mr Tolhurst in substitution for Mr Selth.

24    First, while insofar as I can ascertain there has been no objection to Mr Selth acting as the representative of the first respondent at any stage of this litigation (including Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649, Minus v Selth [2016] FCA 834 and Minus v Selth (No 2) [2017] FCA 1233), the applicants oppose the substitution of Mr Tolhurst for Mr Selth in terms of the respondents’ interlocutory application. It is incumbent on the respondents to substantiate the orders they now seek, to the Court’s satisfaction.

25    Second, accepting the respondents’ contention that the proceedings were instituted pursuant to r 9.23 of the Federal Court Rules and that Mr Selth was a “trustee”, no evidence has been put before the Court that Mr Tolhurst is a “trustee” for the purposes of that rule. The respondents simply rely on what could only be described as hearsay evidence of Mr Bridges, that he was told by Mr Tolhurst that Mr Tolhurst was the appropriate representative to be substituted as the representative for the first respondent in the proceeding. There is no direct evidence from Mr Tolhurst at all. The respondents’ evidence before the Court does not assist me in identifying whether Mr Tolhurst is a “trustee” for the purposes of r 9.23.

26    Third, it is unclear whether the respondents are asserting that Mr Tolhurst is, like Mr Selth was, the Chief Executive of the unincorporated Australian Bar Association for present purposes, such that he, like Mr Selth, could be its “trustee”, or alternatively whether they are simply asserting Mr Tolhurst’s suitability because he is the Acting Chief Executive Officer of ABA Ltd.

27    Fourth, although Mr Selth was at relevant times the Chief Executive Officer of the unincorporated Australian Bar Association, the more compelling reason why Mr Selth was a “trustee” within the meaning of r 9.23 for the purposes of this, and related, proceedings is plain from the decision of Justice Greenwood in [2017] FCA 649. Specifically, as Justice Greenwood found:

220.    …Thereafter, on 10 September 2014, the members of the AB Council recited at [62] of these reasons assigned their interest in each trade mark (and also particular trade mark applications) to Mr Selth who took and held title to each trade mark (and applications) for and on behalf of the members of the ABA. As described at [67] of these reasons, Mr Selth entered into a Deed of Assignment of 27 July 2015 assigning all rights and interests held by him to ABA Ltd. Thus, from September 2014 until 27 July 2015, Mr Selth was recorded as the registered owner of each trade mark.

(Emphasis added.)

28    Evidence that Mr Selth was actually the registered owner of the trade marks at a certain time, on behalf of the members of the unincorporated association, is indicative of a trust relationship between Mr Selth and the unincorporated Australian Bar Association, in respect of those trade marks. This relationship was in existence at the time of commencement of the litigation culminating in Justice Greenwood’s decision.

29    There is no evidence before me of any such relationship between the unincorporated Australian Bar Association and Mr Tolhurst. Indeed, it is difficult to see how there could be an equivalent trust relationship referable to the relevant trade marks in circumstances where, as Justice Greenwood found at [220], Mr Selth’s interests in the trade marks were assigned by him to ABA Ltd by Deed of Assignment dated 27 July 2015.

30    Fifth, and finally, I note that r 9.21 is a more general rule contemplating (inter alia) the commencement of proceedings by one or more persons who have the same interest in the proceeding, as representing all or some of the persons who have the same interest and could have been parties to the proceeding. As Professor Dal Pont observes, this rule (and equivalents in other jurisdictions) reflect a procedure developed in equity courts and require that membership have the “same” or “common” interest in the subject matter of the proceeding at the time it commences (Dal Pont G E, Law of Associations (LexisNexis Butterworths, 2018) at 3.33).

31    In this case, however, I understand it to be common ground that Mr Tolhurst is not a barrister and accordingly not a member of the unincorporated association, such as to be a person with the “same interest in the proceeding” who could be a representative in this litigation for the purposes of r 9.21. If Mr Tolhurst were a person with the “same interest in the proceeding” because he is the Chief Executive of the unincorporated association “Australian Bar Association”, the respondents have not argued this. In any event, I note that the respondents do not rely on this rule for the purposes of the present proceedings. It follows that there is no general principle supporting the appointment of Mr Tolhurst by reference to r 9.21.

conclusion

32    It is concerning that the position of the first respondent in the current proceedings is somewhat uncertain following the death of Mr Selth. The first respondent requires a representative; its cause of action continues. The responsibility lies, however, with the respondents to ensure that they present suitable material on the basis of which the Court can make appropriate orders to replace Mr Selth. It may be, as opined by Mr Tolhurst (as deposed by Mr Bridges) that Mr Tolhurst is the appropriate person to replace Mr Selth as the representative for the first respondent. The material provided by the respondents is, however, inadequate to substantiate this.

33    I will grant liberty to apply, noting that the applicants’ application is listed for hearing by me later this week.

34    In the circumstances the appropriate order is to dismiss the respondents’ interlocutory application.

35    Mr Minus represented the second and third applicants as the person managing them, rather than in the capacity of a lawyer. Notwithstanding that they have successfully opposed the respondents’ interlocutory application, the applicants are not entitled to an award of costs: Cachia v Hanes (1994) 179 CLR 403, Bell Lawyers Pty Ltd v Pentelow [2019] HCA 29. Clearly, however, the respondents are not entitled to claim costs in respect of the present matter, nor do I consider it appropriate to reserve costs. The proper order is that all parties bear their own costs of and incidental to the respondents’ interlocutory application.

Associate:

Dated:    2 June 2020