Federal Court of Australia

AgBoss Group Pty Ltd v Bainbridge Pty Ltd [2020] FCA 1200

ORDERS

THE COURT ORDERS THAT:

1.    The applicants have leave to file and serve an amended Statement of Claim in the form of Annexure A provided on 6 July 2020 and an amended Originating Application in the form of Annexure B provided on 6 July 2020 by 4:00pm on 21 August 2020.

2.    The respondent file and serve an amended Defence by 4:00pm on 4 September 2020.

3.    By 4:00pm on 20 September 2020:

(a)    the applicants are to make discovery of documents within their control in accordance with the categories set out in Annexure C provided on 6 July 2020, in accordance with rule 20.17 of the Federal Court Rules 2011; and

(b)    the respondent is to make discovery of documents within its control in accordance with the categories set out in Annexure D provided on 6 July 2020, in accordance with rule 20.17 of the Federal Court Rules 2011.

4.    Paragraphs 6 to 9 of the Court's Order dated 14 May 2020 be vacated.

5.    The applicants file and serve summaries of the evidence in chief of any lay witness they intend to call at trial by 4:00 pm on 22 November 2020.

6.    The respondent file and serve summaries of the evidence in chief of any lay witness it proposes to call at trial by 4:00 pm on 24 January 2021.

7.    The applicants file and serve any summaries of the evidence of lay witnesses in reply by 4:00pm on 22 February 2021.

8.    No witness shall be cross examined on their summary of evidence except with leave of the Court.

9.    The proceeding be listed for a further case management hearing on a date to be fixed.

10.    The applicants pay the respondent’s costs thrown away by reason of the amendment of the Statement of Claim.

11.    Costs otherwise be reserved in the proceeding.

12.    Liberty to apply.

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

REASONS FOR JUDGMENT

ANASTASSIOU J

1    The applicants seek:

(a)    leave to file an Amended Statement of Claim and an Amended Originating Application; and

(b)    timetabling orders in respect of discovery by categories and preparation of written summaries of evidence.

2    I am satisfied that it is appropriate to make those orders for the reasons set out below.

Amended Statement of Claim and Originating Application

3    The applicants, by their proposed Amended Statement of Claim, seek leave to include:

(a)    allegations that the respondent infringed the copyright owned by the second applicant, contrary to s 36 of the Copyright Act 1968 (Cth); and

(b)    a claim for exemplary damages for passing off, in addition to the claim for additional damages under s 115(4) of the Act.

4    The amendments proposed to the Originating Application are consequential upon these amendments.

5    The applicants submit that those amendments are necessary and legitimate, and that there would be no prejudice to the respondent if those amendments were made. The applicants advance the following submissions in support of their application:

(a)    the alleged contravention of s 36 of the Act is a separate and independent act of infringement, not addressed by existing claims under ss 37 or 38 of the Act;

(b)    the material facts and particulars in paragraphs 55A – 55D, 56A – 56D and 57A are relevant to the question of whether there has been a contravention of s 36; and

(c)    the proceeding has not yet advanced beyond the pleading stage and the acts alleged to constitute a contravention of s 36 by the respondent are within the limitation period for infringement actions.

6    The respondent opposes the amendments, at least to the extent they relate to the recently formulated s 36 claim, on the basis that they are ‘completely unnecessary’. In overview, the respondent submits that:

(a)    the relevant issue in the proceedings is whether copyright subsists in measurement markings on a plastic jug, a 15 litre bucket or the instructions on how to mount a rain gauge to a fencepost;

(b)    the respondent has admitted it imports and sells the products which the applicant alleges constitute a breach of copyright;

(c)    the proposed amendments to the Statement of Claim make an alternative claim that the respondent breached the applicant’s copyright by designing or causing the respondent’s products to be designed;

(d)    however, the design of the respondent’s products (if there ever was a design) is simply a step in the process of producing and selling its products which either constitutes a breach of copyright or not; and

(e)    it follows that the design of the relevant products is not an element of any cause of action pleaded by the applicants nor necessary for any of the relief claimed.

7    The respondent further submits that the proposed amendments seem to have arisen from the respondent’s refusal to include documents relating to the design and development of its products (which are alleged to have breached copyright) in the categories of documents it is to discover.

8    The respondent’s solicitors also raised in correspondence with the applicants’ solicitors a number of specific objections in relation to the pleadings. Those objections include that the amended pleadings should be struck out under r 16.21(1) of the Federal Court Rules 2011 (Cth) because the Amended Statement of Claim would be in breach of:

(a)    Rule 16.02(1)(b), for being unnecessarily more otiose than the nature of the case permits;

(b)    Rule 16.02(2)(d), for including immaterial allegations that are likely to cause prejudice, embarrassment or delay in the proceeding;

(c)    Rule 16.02(2)(e), for failing to disclose a reasonable cause of action appropriate to the nature of the pleading; and

(d)    Rule 16.02(2)(f), having been pleaded for the sole purpose of attempting to obtain orders for discovery of documents and thus an abuse of process.

9    The present application does not require any detailed consideration as to the manner in which r 16.21 is to be interpreted or applied. It is sufficient to note that this Court has previously observed that the power is to be exercised with caution and it is not to be exercised lightly: see e.g. Takemoto v Moodys Investors Service Pty Ltd [2014] FCA 1081 and cases cited therein at [20] (Flick J).

10    Taking into account the respective positions, I am satisfied that the amendments are appropriate and necessary. The applicant submits that the amendments relate to a separate and independent cause of action under s 36 of the Act, being the allegation that the respondent reproduced, or authorised the reproduction of, the whole or a substantial part of the copyright owned by the second applicant. I accept the applicant’s submissions in this respect.

11    I do not accept that, based on the material available to me, that the proposed amendments arise simply for the purpose of obtaining documents relating to the design and development of the respondent’s products. I also do not consider that the amended pleadings suffer from any defects which render the allegations embarrassing.

12    Further, in their submissions, the respondent does not raise specific objections to the amendments to incorporate a claim for exemplary damages. In the absence of any specific argument to the contrary, I consider those amendments are suitable. This is particularly so given that it is well established that exemplary damages may be awarded for passing off, typically in circumstances corresponding to those where additional damages would be awarded for copyright or trade mark infringement: Taleb v GM Holden Ltd [2011] FCAFC 168; 286 ALR 309 at [41] (Finn and Bennett JJ).

Timetabling orders for discovery and evidence preparation

13    Briefly, it appears that the applicants and respondent have been unable to agree on discovery orders relating to the design and development of the Bainbridge Products and the Bainbridge RG Packaging (categories 10 and 11 of Annexure D provided on 6 July 2020).

14    I consider that both categories of documents are relevant to the matters already pleaded, as well as the new allegation of infringement contrary to s 36, and therefore make orders that include the proposed discovery categories.

15    I otherwise make the timetabling orders proposed by the applicants, with appropriate adjustments for timing.

Associate:

Dated:    19 August 2020