' — he Fractice anu Frocedure - appricallon for directions as to commencement of proceeding - re-opening olf appeal - effect of provision in Federal Court Rules for aiving directions Appeal - claim for infringement of copyriaht - appeal to High Courl From decision of Full Court of Federal Court '(on appeal from State Supreme Court) successful - desire by unsuccessful party to re-open appeal to adduce further evidence - whether Federal Court has jurisdiction and power to entertain appeal ~- relevance of bill of review procedure - scope of s.24 of Federal Court Act Federal Court of Australia Act 1976 s.24 Federal Court Rules 0.1 r.9: 0.52 ¢.36 Copyright Act 1968 sub-s.39(2), s.71, s.131A, sub-s.131B(2) Judiciary Act 1903 sub-s.35(2) and 39(2) EDWARDS HOT WATER SYSTEMS (A FIRM) v. S.W. HART & CO. PTY. LID. No. WA G100 of 1985 TOOHEY J. PERTH 31 DECEMBER 1985 _ '. / . IN THR FEDERAG COURT 1 OF AUSTRALIA , WES'TERH AUSTRALIA ! No. WA G100 of 1985 DISTRICT REGISTRY ! GENERAL DIvISlON ' BETWEEN: EDWARDS HOT WATER SYSTEMS (A Firm) Applicant and S.W. HART & CO. PTY. LTD. Respondent MINUTE OF ORDER JUDGE MAKING ORDER: TOOHEY J. DATE OF ORDER: 31 December 1985 WHERE MADE: Perth THE COURT ORDERS THAT: The application be dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION No. WA G100 of 1985 ~~ re BETWEEN: EDWARDS HOT WATER SYSTEMS «A Firm) Applicant and S.W. HART & CO. PLY. LTD. Respondent CORAM: TOOHEY J. 31 December 1985 REASONS FOR JUDGMENT This is a novel application. In effect the applicant seeks to re-open litiqation that beqan in the Supreme Court of Western Australia in 1980. went on appeal to the Federal Court and was concluded by the High Court in September 1985. To understand the application, which as I shall explain is for directions only, 1t is necessary to say something of the nature and history of this litiqaation. In 1980 the respondent S.W. Hart & Co. Pty. Ltd. ("Hart") brought proceedings in the Supreme Court of Western Australia against Edwards Hot Water Systems i"Edwards") for anfringement of its copyright in drawings of parts of solar energy hot water systems which Hart manufactured. Brinsden J. found that the copyriqght in all three drawinas had been infrinaed. Edwards appealed to the Federal Cone avainset the tudument of the ourremeé Court. All three appellate iudues fuuna that tanks wanufactured tv Edwards were not reproductions of Hart's drawina. By a maioritv. the Full Court held that absorber units manufactured by Edwards were reproductions of certain of Hart's drawings but, by a different maiority, held that the units would not appear to persons who were not experts in relation to objects of that kind to be a reproduction of the drawings and accordingly that there had been no infrinaement of copyvriaht, having regard to the terms of s.71 of the Copyriqht Act 1968. Hart appealed to the High Court against the latter finding and, for all practical purposes, its appeal was successful. The formal order of the Hiaqh Court made 19 September 1985 was that the tudament and order of the Federal Court be set aside inso far as it related to artistic works specificed in para.3(a) and (b) of the statement of claim. Further it ordered that the iudament of the Supreme Court of Western Australia be restored in so far as it related to artistic works specified in those sub-paragraphs. In the ordinary course, that would be the end of the litigation. Indeed Hart has now set in train in the Supreme Court an inquiry as to damages and also committal proceedings against Edwards for alleged breach of injunctive relief oaranted against it. Edwards now wishes to re-open the litigation in order to call evidence from Tony Gordon Davies who had been employed by Hart and who, 1t 1S said. can rebut a finding by Brinsden J. that Edwards had access to certain drawinas and to rebut an assertion by Gibbs fay C.d. an Che High Court that "there are strona reasons to supwort the conclusion reached by Srinsden J. that che kKespondent CEdwards] had copied the drawings in making the absorber units". T am not concerned at this stage with the existence of evidence that bears on the findina of Brinsden J. and the assertion of Gibbs C.J.., or of the relevance of that evidence in the litigation or of the reasons why Davies was not called as a witness. These matters are the subject of affidavits filed in support of the application. But the application itself seeks only directions as to the procedure to be adopted "in order to further appeal on the qrounds of fresh evidence against that part of the yudament of the Honourable Mr. Justice Brinsden given on 7 October 1982 at Perth in Supreme Court Action Number 1398 of 1980 between S.W. Hart & Co. Pty. Ltd. as Plaintiff and Edwards Hot Water Svstems (A Firm) as Defendant which was restored by judgment of the High Court aiven on 19 September 1985". Hart has filed a motion askina that Edwards' application for directions be dismissed on the around that, the litigation havina proceeded to the High Court and having been disposed of by that court. the Federal Court has no jurisdiction to make any orders on what is essentially an originating application. Edwards seeks directions pursuant to 0.1 r.9 of the Federal Court Rules which reads: "(1) Where a person desires to commence a proceeding or take any step ina proceeding, and the manner or form of procedure is not prescribed by the Act or the Rules or by or under any other Act, or that person 15 an duubb as to the manner ot form of procedure, the Court may. on application bv that person, dive directions. (2; A proceeding commenced in accordance with the direclLions of the Court shall be well commenced. (3) A step taken in accordance with the directions of the Court shall be requlat and sufficient". Edwards did not contend that 0.1 r.9 was a source of power; it accepted that the rule was purely procedural and that. if power existed to re-open the litigation. it must be found elsewhere. Baually 0.52 £.36. which prescribes the procedure where it is souaht on appeal to receive additional evidence. cannot detract from any power there may be in the Federal Court to permit litaqgation to be re-ornened. The essential question of course is whether such power exists. The iurisdiction of the Supreme Court to deal with matters arising under the Copyright Act derives from sub-s.39(2) of the Judiciary Act 1903. Part V of the Copyright Act picks up sub-s.35(2) of the Judiciary Act by providing in s.131A that the jurisdiction of the Supreme Court in an action for infringement of copyright shall be exercised by a single judge of the court. The jurisdiction of the Federal Court to entertain an appeal froma decision of a Supreme Court in an action under Pt V is conferred by sub-s.131B:(2) of the Copyright Act. That sub-section is an exercise of the power conferred by s.24 of the Federal Court of Australia Act 1976, sub-s.(1) of which confers upon the Court jurisdiction to hear and determine inter alia: u (Cc? an such cases ab are provided bv anv vther Act, appeals from jJudaments of a court ot a State ... exyeércisina federal jurisdiction". although counsel referred from time to time to the Jurisdiction of the Federal Court to entertain the present application, the question is in mv view one of power rather than of jurisdiction. The latter term means "the authority which a court has to decide matters that are litigated before it or to take coanisance of matters presented in a formal way for its decision" (10 Halsburv 4th ed. para.715). See St. Justins Properties Pty. Ltd. v. Rule Holdings Pty. Ltd. (1980) 40 F.L.R. 282 at p.284. Edwards is seeking directions that will permit it to appeal once again against the decision of the Supreme Court. The jurisdiction of this court to entertain an appeal from the Supreme Court in matters relating to infringement of copyright exists by reason of the statutory provisions to which I have already referred. The issue rather is whether this Court is empowered to entertain an appeal from such a decision when an appeal has already been brought to it and has been determined by the High Court on appeal from the Federal Court. Counsel for Hart submitted that the Federal Court had no inherent power to deal further with a matter which had been determined by it, particularly where the matter had proceeded to and been the subject of a decision by the High Court. In support counsel relied upon the decision of the High Court in Bailey v. Marinoff (1971) 125 C.L.R. 529. The headnote to the report reads: "There is no inherent power in a court to deal further with an appeal which has already been dismissed bv os formal order, an conformity with an order pronounced, where the order was entered betore an application to varv it was made". Barwick C.J. put the matter this way atl p.530: "Once an order disposing of a proceedina has been perfected bv being drawn up as the record of a court. that proceedina apart from anv specific and relevant statutory provision 1s at an end in that court and is in its substance, in mv opinion. bevond recall by that court. It would, 1n my opinion, not promote the due administration of the law or the promotion of justice for a court to have a power to reinstate a proceeding of which it has finaliv disposed. In mv opinion. none of the decided cases lend support to the view that the Supreme Court in this case had any inherent power or jurisdiction to make the order it did make. its earlier order dismissing the appeal having been perfected by the processes of the Court". The order in question was a self-executing order made by the Court of Appeal Division of the Supreme Court of New South Wales that an appeal stand dismissed for want of prosecution if appeal books were not filed and served by a particular date. Subsequent to the date in question, the appellant soudaht an extension of time for filina and serving appeal books and an order that the appeal be restored to the list for hearing; and the Court of Appeal ordered that the filing and service of appeals books that had been effected should be deemed a sufficient compliance with its earlier order. An appeal against that order was upheld. In Gamser v. Nominal Defendant (1976-77) 136 C.L.R. 145, the Hiah Court held that the Supreme Court of New South Wales had no power under its enabling statute or by its rules of court or by virtue of its inherent jurisdiction to set aside a judaqment by reason of circumstances occurring after a case had been finally disposea Or, The appellant, whose awaru vf damages had been reduced on appeal, suffered a serious deterioration in condition after tiudamert had been delivered in Ehe Court of Appeal but before notice of appeal to the High Court. He sought leave to amend his notice of appeal in the High Court to contend that events which had occurred amounted to fresh evidence and falsified the basis upon which the Court of Appeal had allowed the respondents appeal. The High Court adiourned the matter to enable the appellant to approach the Court of Appeal which held that it had no power to re-open the appeal, a view which was confirmed by the High Court. The tudaments in the High Court say nothina about the power of that court to allow the appellant to araue, in support of his appeal, the deterioration in his condition which had occurred since judament was delivered in the Court of Appeal. The short answer made by counsel for Edwards to the submission concerning the inherent power of the Federal Court was that his client did not rely upon any such power. Nevertheless, having regard to the basis upon which Edwards sought to demonstrate the existence of a power in the Federal Court to qive the directions asked for, I think it is advisable to say something about the notion of inherent jurisdiction. It is necessary to say little more than was said by a Full Court of this Court in Parsons v. Martin (1984) 58 A.L.R. 395 at 400-401: "The expression 'inherent jurisdiction' has come to be used, not sq much to refer to the authority of the court to decide matters before it but rather to describe the power which a court mav have. independent of statutorv authority, express or implied. is im SAustealad, wet, ¢'03 Federabl svolem, there ows Lit rruch mo wauer oot urtliwrred Wrisdat clon Chuuuth the Cetin Cumlerues Ro ve tlaert. tee {fn our oOPinion @ COurT exercLoing lutssdiction Cumnierred by statute has wWuowers expresslv or bv rmplicautiun combetted by the Legislation which aeverns ak. This a5 a Matler ul statuturv cunstruction. We ate Of weiniorn aloo Fhat 1b has th audition such puwers 4&5 abe bLueidental and nevessarv Lo the exercise of Lhe Jurisdiction OF Lhe wowers 30 Cultrerred, [In view uf the wav in which Lhe phrase inherent fupisdaction ts used in many of the cases, tt seems advisable generally to avoid the use of 1t to refer to this incidental and necessary power of a statutorv court", In Farsons v. Martin, the court retected a submission that if a matter as not truly one of 'turisdiction it must be one of procedure and within the competence of a court to reaulate. The question was whether a court of petty sessions had power to issue letters of request to authorities in Hong Kona and Singapore in connection with criminal proceedings. At 401 the court said: "The relevant distinction for present purposes 1s not between lurisdiction on the one hand and procedure on the other but rather between matters of substantive law and adiectival law ...". Counsel for Edwards referred to the "bill of review" procedure that existed in the Court of Chancery. the purpose of which was to qet rid of the res judicata flowing from a judament already aiven. The procedure was explained in these terms by Brett M.R. in In re May 11885; 28 Ch.D. 516 at p.519: "But the Court of Chancery went somewhat further. and, when there had been a iudament. 1f. upon motion for leave to re-open the issue, in the opinion of the Court satistactorv reasons were shewn. thev aave leave: and therefore, if leave had been asked to present this new te petition, LF being suauested Chat there ils new evidence. of any other reason beina alleged whach would satisfy the court. the court might have aiven leave; but according to the course of practice of the Court of Chancery the parties never could themselves begin a new litigation where there had been a judgment before. of their own accord. The parties could only do it upon reasons shewn to the Court, satisfactory to the Court, and after the Court had aiven them leave". At p.521 Cotton L.J. said: "TF a jyudament was obtained in a suit against the plaintiff because he had not made out his case asa matter of evidence, he could not anv more relitiqate the question without coming to the Court and getting leave to file what was called a supplemental bill in the nature of a bill of review. That was to review the whole jiudament by supplemental evidence, brought forward in order to enable the Court or require the Court to come to a different decision". In Re Scott and Alvarez's Contract C18953 1 Ch. 596 is an example of the use of a bill of review, based upon further evidence not known to the defendant at the date of the order of the Court of Appeal, resulting ina declaration by a single judge that the order of the Court of Appeal was not binding on the defendant. In Falcke v. The Scottish Imperial Insurance Company (1887) 57 L.T. 39, Kay J. held that nothing in the Judicature Acts altered the law and practice of the Chancery Division in reqard to the bill of review procedure. However, in 16 Halsbury 4th ed. para.1534 fn.3 the comment is made that "there seems to be no instance of such an action succeeding on this ground since the Judicature Acts". Furthermore, the bill of review procedure was devetourd tn Che Contet 9) VWiencees becuse or the Limited scone LUE apeeal cm thakh wourr,. "Te as bmportant to remember tnat ain che Court of Chancerv, until comparatively modern times - that is toa sav. until the retum oar Charles If - there was no appeal from Che Lord Chancellor to anv hiaher tribunal. but an vevertunity was afforded of correcting decisions by means of a rehearing. which might be before the same Of anv other judge. This riaht of rehearing could, however, only be exercised betore a decree or order had been enrolled, up to which time it was not considered to be, in the full sense of the term. a record of the Court." <«Cozens-Hardy L.J3. in Charles Bright & Co. Limited v. Sellar C1904] 1K.B. 6 at p.1l>. I did not understand counsel for Edwards to submit that the bill of review procedure itself was available in the Federal Court. Whatever may be the position in the Supreme Courts of the States. as to which see In re Blackmore (1925] S.A.S.R. 112. I can find no basis for holding that the procedure is to be imported into a court. the jurisdiction. powers and procedure of which are to be found in the Federal Court of Australia Act and in the Federal Court Rules. Rather. I understood counsel s arqument to be that the bill of review procedure exemplified that a matter is not necessarilv disposed of with finality because there has been a judament. In counsel s submission, the question was whether the Federal Court Act was sufficiently expansive to permit an application by a party against whom judament had been given and who had appealed to the Federal Court to appeal again, on the basis that evidence was available which was not known to that party at the time of the hearing '(a term wide enough to include an appeal, and which could not have been known with reasonable diligence. al. In wv view counsel = Submissiun cannek succeed. As Lhis Court pointed vut in Fa St ons v. Martin, a court exercisina Jurisdiction conferred by statute has powers expresslv or bv implication conferred by the leaislation which uoverns it. It also has such wowers as are incidental and necessary to the exercise of the jurisdiction or the powers su conferred. I can find nothing in the Federal Court Act that expressly or by implication confers on the court power to set aside an order made after a hearing on appeal. except throuwh the prescribed machinery or an appeal to the High Court. The power of the Federal Court to receive further evidence on the hearing of an appeal is conferred expressly by s.27 of the Federal Court Act. To uphold Edwards' submission would be to run counter to the emphasis placed on finality by the High Court in Bailey v. Marinoff and Gamser v. Nominal Defendant. The jurisdiction of the Federal Court in copyright matters 1s to determine an appeal brought in accordance with the relevant statutory provisions and rules of court. Once it has determined such an appeal, it has exhausted its powers and, using the term "Jurisdiction" broadly. "it has no further jurisdiction" (Flower v. Llovd (1877) 6 Ch.D.297 at p.301). In all the circumstances. I am of the opinion that 0.1 r.9 of the Federal Court Rules may not be employed by an unsuccessful party to an appeal to that court as ameans of re-opening that appeal. If uit 1S possible to re-open the litigation, it cannot be at the instance of this court. I say nothing about the power of the High Court or of the Supreme Court in that reaard. And I say nothing about the power of a court to entertasn ap aveplicabiun to set asade a tudument ebtuined by traud; Lhat matter does not arise om the present case. The application will be dismissed with costs. In the circumstances it 1S unnecessary to make anv order on Hart's motion. I certify that this and the preceding eleven pages are a true copy of the reasons for judgment herein of his Honour Mr. Justice Toohey Associate Dated: 3/ Detegnber, ES ., ~