Digga Australia Pty Ltd v Norm Engineering Pty Ltd (No 2) [2008] FCAFC 76

FEDERAL COURT OF AUSTRALIA

Digga Australia Pty Ltd v Norm Engineering Pty Ltd (No 2) [2008] FCAFC 76 PRACTICE AND PROCEDURE – offer of compromise made by respondent under O 23 of Federal Court Rules (Cth) – applicant suing for infringement of copyright in its drawings for 4 in 1 bucket – offer of undertaking to Court not to manufacture and sell 4 in 1 buckets to applicant's design, and of payment of $5,000 – value of undertaking proffered – result obtained by applicant following respondent's appeal less favourable to applicant than terms of offer. Held: applicant ordered to pay respondent's costs on indemnity basis.

Federal Court Rules (Cth) O 23 r 11(5) DIGGA AUSTRALIA PTY LTD (ACN 010 443 875) v NORM ENGINEERING PTY LTD (ACN 010 799 943)

QUD 175/2007

LINDGREN, BENNETT AND LOGAN JJ

14 MAY 2008

BRISBANE IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY QUD 175/2007

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: DIGGA AUSTRALIA PTY LTD (ACN 010 443 875)

Appellant

AND: NORM ENGINEERING PTY LTD (NO 2) (ACN 010 799 943)

Respondent

JUDGES: LINDGREN, BENNETT AND LOGAN JJ DATE OF ORDER: 14 MAY 2008

WHERE MADE: BRISBANE

THE COURT ORDERS THAT:

1. The appeal be allowed in part. 2. Paragraph (b) of the declarations made on 25 May 2007 be set aside and in lieu thereof the Court declares that the appellant infringed the respondent's copyright subsisting in the respondent's drawings for a pivot mechanism (Applicant's Drawing No. BC41-D015) ("the Pivot Arms Drawing") by making a two-dimensional reproduction of the Pivot Arms Drawing in the period from 2 December 2003 to 17 June 2004. 3. Paragraphs 1, 2, 3(b) and 4 of the Orders made on 25 May 2007 be set aside and in lieu thereof the Court orders that the appellant pay the respondent $100.00 damages on or before 22 June 2008 to the respondent pursuant to s 115(2) of the Copyright Act 1968 (Cth) for infringement of the respondent's copyright in the Pivot Arms Drawing (as identified in the declaration in para 2 above) between 2 December 2003 and 17 June 2004. 4. Paragraphs 1, 6 and 7 of the Orders made on 26 June 2007 be set aside and in lieu thereof the Court orders that: (a) The appellant pay the respondent's costs of the proceeding incurred before 11 am on 2 December 2005, save for those costs which have been the subject of earlier orders, taxed on a party and party basis; and (b) The respondent pay the appellant's costs of the proceeding incurred after 11 am on 2 December 2005, taxed on an indemnity basis. 5. The respondent pay the appellant's costs of the appeal, taxed on an indemnity basis. 6. The respondent refund to the appellant all monies paid to the respondent by the appellant on account of damages pursuant to paras 3(b) and 4 of the Orders made on 25 May 2007 and interest pursuant to para 7 of the Orders of 26 June 2007. 7. The respondent pay to the appellant interest calculated at the rate of 10% per annum on the monies to be refunded pursuant to para 6 of these Orders from the date of the receipt of those monies by the respondent to the date of the refund of those monies to the appellant. 8. Upon payment by the respondent of the appellant's costs pursuant to para 4 of these Orders, the monies which were paid to the Trust Account of Le Mass Solicitors pursuant to the Order made on 13 October 2005, together with any interest thereon, be paid to the trust account of the solicitors for the respondent to be held by them on behalf of the respondent. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA