! GN THE FEDERAL COURT OF AUSTEALIA NEW SCUTH WALES DISTRICT RESTSTRY No. 394 of 1985 w~erevw GENERAL DIVISION BETWEEN : DIRE STRAITS OVERSEAS LIMITED & ANOR. Applicant SOUTH SEAS BUBBLE COMPANY PTY. LIMITED & ORS. Respondents EX-TEMPORE REASONS FOR JUDGMENT BORCHETT J- Wilcox J. on 24 December 1985 made ex parte orders: ""€1) That the re s - that is, the fa) third respondents - and each of them by themselves, their servants or aaents be restrained from -~ (a) advertising, promoting, displaying, offering for sale, selling or otherwise in trade or commerce dealing with any t-shirts cr cther garments which bear or embody ( desi.on of a quitar which i son the cover of the record album Brothers in Arms, being the document marked exhibit CLS 1 to the affidavit of Colin Laird Seeger sworn 23 December 1585 oc (ii) the words "dire Straits"; (b) from passing off as and for t-shirts of the first and second applicants any t-shirts not of the manufactur2 cf the first or second applicant. . pio. Sl (2) Within a period of fourteen jays from the date of service of notice of these orders the respondents - that to say, the first, second and third rzspondents -~ and each of them make, fiie sand serve an affidavit setting out:_ cer hoe (a) the number of garments bearing the Design sold by or on behalf of the respondents whether by wholesale or by retail; (b) the number of such garments presently in the possession or control of the respondents; {c) the name and address of all persons including any company or companies from which the . respondents have acquired such garments and the date and quantities and price of such suppliers; (d) the name and address of all ' persons including any company or companies to whom the respondents - «shave supplied such garments and the date and quantities and price of such supplies." In the context of those orders, Mr. Ellicott, I take it "the design" refers to the design in the first order, that is the design of a guitar which is illustrated on the cover of a record album which is marked as an exhibit to an affidavit; is that correct? MR. ELLICOTT: Yes, your Honour. Sorry, your Honour... HIS HONOUR: It may be there is some other definition; there may be some incompleteness. MR. ELLICOTT: Yes. His Honour Mr. Justice Wilcox made an order restraining the use of the words "Dire Straits" and that was in relation to a T-shirt which bears the words "Dire Straits World Tour" and that was originally worded as part HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: Hits HONOUR: > MR. ELLICOTT: -HIS HONOUR: Pasta * 107 gh nee MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: 3. of the design in the order. We are seeking to include that T-shirt within the embrace of... But you can see the point I am raising 1s whether the order as it presently stands is in fact sufficiently unambiguous because what 1t says is - and I confess I had not noticed until reading it out then, and no argument has been addressed on the point - "an affidavit setting out the number of garments bearing the Design" with a capital D. I. think in your application there is a particular design referred to which is then described as "the Design" is 1t not? It is "the Design". At the time the order was made the application was not the amended application. No, your Honour. Yes, the amended application I notice in order 1 refers to "the design". Now that refers to an affidavit of Garry van Egmond. The only affidavit actually identified in Mr. Justice Wilcox's order seems to be the affidavit of Colin Laird Seeger. Yes, and the annexure is the Brothers in Arms cover. I do not know whether that is the same or a different design. design No, it is a different design. It may be that will need some ameniment to this order anyway, will it not? - Ido not know how - or some clarification? Yes, we would seek to embrace within it what appears in the application in paragrash l(ay(i). The original application is that? In the current application, the amended application rather. His Honour's order could only refer to the application that was before him, could it not? Yes. ere eng eee er SA gn ee clay abe HIS HONOUR: The application before him did use the expression "the design". MR. ELLICOTT: And I think it embraced within it both of the designs. HIS HONOUR: Yes, you are quice right. MR. ELLICOTT: I think that is how it was worded. It may have been this Anton Pillerish order was meant to follow on from the first order but his Honour did not make an order in those terms. HIS HONOUR: I presume the original application would have been served with the affidavits, would it? MR. ELLICOTT: Yes, it was served on the solicitor that appeared on the thirtieth. HIS HONOUR: I will deal with the matter on the footing of the order that was made at the moment. It may well be properly construed in the way you are saying, but you may want to have something done about that in due course to clarify it. . MISS GRAY: We are in the position where we do not have any annexures to affidavits, we have not seen exhibits, and we were not present on the occasion when these designs were shown or discussed, so we are in difficulty as to what it is that we... HIS HONOUR: There is clearly a difficulty verbally in the wording of the order. On the other hand, your clients have twice been represented. It is aifgicult to believe that they actually did not understand. - 3 om et ante HIS HONOUR: MISS GRAY: The «ifficulty 1s now ain knowing what "eh information is required. It 12s not a difficulty that you raised with me in argument: it 1s 4 difficulty that I had raised of construction of the order. As I say, 2t is difficult to believe that your people had any real misunderstanding in view of those facts. But I think I will at the moment deal with the arguments that have heen advanced and the order as it is presently framed, and if either of you have some further application then to make, we can deal with it then. I think that is probably the most appropriate course. Se epi = SE AY taney ae mettre um fre ry ars rae Retwingyipennenme party came we erm Ae mp nenn + A at On 30 and 31 December 1285 the first, second and third respondents appeared and the mattsr was stood over till today by Mr. Justice Beaumont on 31 December, particularly to enable instructions to be obtained by the representatives of the first, second and third respondents. At that time the first order was vacated by consent and an undertaking in the same terms, but limited until and including today, was accepted in lieu of the order by the applicants. Today an undertaking as to damages has been again given by Mr. Ellicott on behalf of his clients to the Court, and undertakings have been given to the Court by Miss Gray of counsel for the first, second and third respondents on their hehalf, without 'admissions, to continue the undertaking given to the Court on 30 December and renewed on 31 December in the terms of the first order made by Mr. Justice Wilcox, which I have already read out. ror An undertaking has further been given by Miss Gray on behalf of the first, second and third respondents to continue the undertaking given on 31 December to preserve confidentiality in certain respects which are set out in the undertaking. Both of those undertakings are now given to and including the next day when this matter is before the Court. But the first, second and third respondents asked me to discharge or vary the second order Siren aene Sao ee ae ted oe | ee ee RISD * 4 6. made by Mr. Justice Wilcox. It is first submitted that the purpose of the order is the calculation of damages, and that this purpose does not justify the order in the circumstances of this case. That submission is contrary to what 1s stated to be the law in Simpson, Bailey and Evans on Discovery and Interrogatories (1984), at page 224, where the learned authors suggest that such orders have often been made in order to enable an applicant to identify persons who might otherwise be infringing his rights. Trade in articles which unlawfully take advantage of some well known identity or emblem often takes the.form of an octopus, many of whose tentacles may be difficult to get at without some such order. Then it was said that liability is denied and the order might gravely embarrass the respondents. No evidence was put on to show any particular difficulty in compliance, or to cast any doubt on the applicanct's prima facie case; but it was said that _the' respondents have agreements with other people, and that if they reveal the information which the order would require them to reveal, they would be in breach of those agreements and of the trust placed in them by those other persons with whom they have entered into those agreements." It was further said that if the information is revealed, the businesses of the other people concerned could be jeopardized. It was further said that the information would reveal matters of a sensitive nature from the - ves point of view of competition between the applicants and the first, second and third respondents. It seems to me that if there are such agreements, as this submission asserted, this 1s the very sort of thing that Anton Piller orders were designed to enable an applicant to ascertain and to seek to overcome. There was no suggestion that the Court lacks jurisdiction to make an order of this kind, nor I think could any such suggestion be upheld if 1t were to be made, particularly having regard to the provisions of s.87(1A) of the Trade Practices Act 1974 and s.23 of the Federal Court of Australia Act 1976. I think that the legitimate inferences which may be drawn from the evidence, which led Mr. Justice Wilcox to make the order, are strengthened now by the fact that the first, second and third respondents, having been served and having appeared three times before the court, have not chosen to put any evidence on in answer to the evidence filed by the applicants and upon which the order was made. As Mr. Justice Rich said in a famous passage in Joyce's Case (77 CLR 39 at 49): a Where a party "prefers the well of the court . to the witness box, a court is entitled to he - bold." I do not think I should vacate or vary the order, except that there are two respects in which it seems to me it may he Clarified, or some protection given in respect of it. 8. Firstly, I think the respondents are entitled to reasonable orctection against any unnecessary risk of its abuse for purposés alien to the purposes of the order and after some discussion with counsel, I have received from them a form of undertaking which, I am informed, the applicants are prepared to give. Miss Gray, while maintaining her application, has indicated that in the event that I reject her application, as I now do, she would accept this undertaking as covering that particular matter. The undertaking which I will therefore ask Mr. Ellicott to give in a moment, and will accept, is: - "The solicitor for the applicants undertakes to the court in relation to any names and addresses supplied pursuant to orders 2(c) and (d), that such names and addresses will not be divulged to any person other than the applicants or their officers for the purposes of obtaining instructions in relation to legal proceedings instituted or to be instituted on their behalf or their respective behalfs and the applicants and each of them undertake to the court that they or either of them in relation to any names and addresses supplied pursuant tc orders 2(c' and (d) will not divulge such names and addresses to any person other than a person retained to give legal advice in relation to legal proceedings." Bo you give those undertakings? MR. ELLICOTT: Yes, I am instructed to give those undertakings. HIS HONOUR: Is there anything 'to be said about costs, Miss Gray? te in eee tn a cme nn me EUS Pe GERD mene ee meee ee et car tp ee ee rete MISS GRAY: HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: RTS HONOUR: MR, ELLICOTT: His HONOUR: MR. ELLICOIT: HIS HONOUR: MR. ELLICOTT: I would seek that costs be reserved, your Honour. What do you say, Mr. Ellicott? We say that the respondents have confronted us head-on and we have been prepared to meet it. It is an interlocutory matter which is contained within itself and we would ask for the costs of today on that basis. The order I will make is that the costs be the applicants' costs in the proceedings. I think that is probably the fairest order. You have succeeded, and on the other hand we have not heard the proceedings yet. I will hand you back this form. Tt has now been noted. The only remaining matter is whether you do seek any further clarification of that order? I do, your Honour. It clearly refers to a... A design; it does not within itself contain a definition of what design it is referring to. No, it refers to a defined term, the use of the capital. That was an order that was lifted from the original application and the original application in paragraph l(a) described the designs and gave examples of them. It did not say "hereinafter referred to as the design", but it was material which was placed before the Court when this order was made and I can only say that it was the clear intention of the parties - it may have been a slip that we did not correctly describe it. You would ask me to add to it something like this: "in this order the expression 'the design' means" - and take in the definition? From the original applicaticn. How is it in the original apolication? Are GLS 1 to the affidavit of Seegar and W to the affidavit of Egmond identical? No, your Honour. Could I approach and get the exhibits? Yes. It would be CLS 1. I think that was noted before Mr. Justice Wilcox. Annexure W to the affidavit ree re nen etn ene ce ait See mR gm a eee HIS HONOUR: MR. ELLICOTT: HIS HGNOUR: MR. ELLICOTT: HIS HONOUR: MR. ELLICOTT: HIS HONOUR: MISS GRAY: HIS HONOUR: MISS GRAY: HIS HONOUR: 10. of Garry van Egmond, there is the record -csver and the annexure to the affidavit which nas a logo in those terms. Your Honour will have Chat. That has been served? Yes, So annexure W to the affidavit of Garry van Egmond... Sworn 22 December 1985... So you want something like this: In this order the expression "the design" means the design appearing in annexure W to the affidavit of Garry van Egmond sworn 22 December 1985 and filed herein and also the design appearing in exhibit CLS 1 to the affidavit of Colin Laird Seeger sworn 23 December 1985. That is all so far. Maybe if one could follow Mr. Justice Wilcox's wording to make it entirely clear: Being the design of a guitar which is illustrated on the cover of the record album "Brothers in Arms". That we would submit is an appropriate definition. What do you say about that Miss Gray? Those two designs are the desiqns whith understand to be in issue and we accep. 'tha definition. cto There 15 no problem about the amendments? No problem. Then I will make an order, on Mr. Ellicott's application which is not in this respect onposed, following the second order of Wilcox J. to the effect that there shall be added at the end of it il. om. ~~ 7m the following: "In this order the expression "the Design" means the design appearing in Annexure W to the affidavit of Garry van Eqmond sworn 22 December 1985 and filed herein, also the design appearing in exhibit CLS 1 to the affidavit of Colin Laird Seeger sworn 23 December 1985 and filed herein, being the desian of a guitar which is illustrated on the cover of the record album Brothers in Arms." I certify that this and the preceding ten (10) pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Burchett. 0. t. 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