FEDERAL COURT OF AUSTRALIA Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd [2001] FCA 34 ARISTOCRAT LEISURE INDUSTRIES PTY LIMITED v PACIFIC GAMING PTY LIMITED NG 1049 OF 1998 TAMBERLIN J SYDNEY 2 FEBRUARY 2001 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1049 OF 1998 BETWEEN: ARISTOCRAT LEISURE INDUSTRIES PTY LIMITED APPLICANT AND: PACIFIC GAMING PTY LIMITED RESPONDENT JUDGE: TAMBERLIN J DATE OF ORDER: 2 FEBRUARY 2001 WHERE MADE: SYDNEY THE COURT ORDERS THAT: The Respondent pay eighty-five percent (85%) of the applicant's costs as taxed or as agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1049 OF 1998 BETWEEN: ARISTOCRAT LEISURE INDUSTRIES PTY LIMITED APPLICANT AND: PACIFIC GAMING PTY LIMITED RESPONDENT JUDGE: TAMBERLIN J DATE: 2 FEBRUARY 2001 PLACE: SYDNEY REASONS FOR JUDGMENT 1 In this matter the applicant was successful in its application and the only remaining question concerns the issue of costs. On 26 October 2000 I invited the parties to prepare written submissions on costs which they have done. 2 The applicant contends that it ought to have either all its costs or at least ninety-five percent of its costs. The respondent contends that there are special circumstances in the present case which make it appropriate for a reduction of up to twenty-five percent in respect of the applicant's costs. 3 The Court has an unfettered discretion as to costs but it is well settled that costs ought normally follow the event. This approach will not normally be departed from unless there are important reasons for doing so. In the present case the respondent relies on two matters. The first is that the applicant abandoned at the last moment its claim in respect of one particular set of games. Broadly speaking this case concerned a breach of copyright in poker machines games. As originally framed there were five games produced by the respondent alleged to have given rise to breaches of copyright in five corresponding games produced by the applicant. The respondent contends that the claims in respect of each of the five games effectively represented a separate case and that for each game the elements of subsistence and infringement had to be separately proved. It says that the last minute abandonment was equivalent to the abandonment of one fifth of the subject matter of the application. 4 The applicant concedes that the respondent is entitled to its costs thrown away as a result of defending allegations in respect of the breach which was not pursued and that it is not entitled to its costs in relation to the allegations made in respect of that game. However, the applicant asserts that only a small part of the pre-trial work or preparation was dedicated to the abandoned game and enumerate a number of paragraphs in various affidavits which are said to be numerically insignificant to establish that work done in relation in abandoned game was minimal. In my view, the importance and the quantity of work done in relation to the abandoned game cannot be measured, in any useful way, by attempting some quantitative comparison as to the number of clauses in an affidavit which are referable to a particular subject matter. Much depends on the quality, importance and inter-relationship of the evidence with evidence of other claims and the overall picture which is made out as a result of all the evidence. The amount of the affidavit and documentary evidence relating to the abandoned claim is substantial and no doubt important additional work was done in relation to discovery as a consequence of the abandoned claim. 5 The second matter relied on by the respondent for seeking a special costs order is that in relation to the classification of the copyright subsisting in the game specifications the applicant did not succeed in its contention that the respondent's games each embody a cinematograph film. 6 In relation to the first matter I am satisfied that the last minute abandonment does warrant a special order as to costs and that the time and work expended in relation to the abandoned claim was significant. 7 While it is not possible on this material before me to be precise as to the specific amount of costs thrown away I consider that the figure of fifteen percent is reasonable taking everything relating to the abandonment into account. I also consider it appropriate not to require a detailed examination of costs thrown away because that would lead to further substantial expense and unproductive expenditure of time. Having regard to the fact that I heard the case over a number of days I consider I can make an appropriate apportionment. 8 In relation to the failure of the applicant to make good its claims in relation to the nature of the copyright I am of the view that no adjustment is required because this question is closely intertwined with the overall result, which was that the applicant was successful in its claim for breach. I do not think it is feasible or appropriate to separate the costs attributable to the applicant's failure in these respects. 9 Accordingly, in my view the appropriate order as to costs is that an apportionment should be made by me and that the applicant should recover eighty-five percent of its costs and I so order. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate: Dated: 2 February 2001 Counsel for the Applicant: A Franklin R Cobden Solicitor for the Applicant: Clayton Utz Counsel for the Respondent: J M Ireland QC R J Webb Solicitor for the Respondent: McCabes Written Submissions received on: 22 November 2000 and 18 January 2001 Date of Judgment: 2 February 2001