FEDERAL COURT OF AUSTRALIA Sky Channel Pty Ltd v Darcy's Tavern Pty Ltd [2003] FCA 19 SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) and AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) v DARCY'S TAVERN PTY LIMITED (ACN 005 712 318) and SHAUN MATHEW BROWN N 31 OF 2003 SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) and AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) v FIRST MITMAC PTY LIMITED (ACN 003 805 070) and ALLAN JAMES ASH N 32 OF 2003 GYLES J SYDNEY 14 JANUARY 2003 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 31 OF 2003 BETWEEN: SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) SECOND APPLICANT AND: DARCY'S TAVERN PTY LIMITED (ACN 005 712 381) FIRST RESPONDENT SHAUN MATHEW BROWN SECOND RESPONDENT JUDGE: GYLES J DATE OF ORDER: 14 JANUARY 2003 WHERE MADE: SYDNEY THE COURT ORDERS THAT: UPON THE APPLICANTS BY COUNSEL UNDERTAKING TO THE COURT: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court, or as it may direct, to any person, whether or not a party, adversely affected by the operation of the orders made on 14 January 2003; and (b) to pay the compensation referred to in (a) to the person there referred to, AND NOTING THE UNDERTAKING TO THE COURT OF KATE HARRISON, SOLICITOR FOR THE APPLICANTS, THE COURT ORDERS: (1) THAT the applicant's notice of motion dated 14 January 2003 be made returnable instanter. (2) THAT the hearing of the notice of motion take place during the fixed vacation. Entry and search of premises and vehicles on or around the premises (3) THAT forthwith upon service of these orders, the first and second respondents, whether by themselves, their servants, agents or otherwise, and any person apparently occupying or in charge of the premises hereafter referred to, permit a total of: (a) not more than two (2) representatives of the applicants; (b) not more than two (2) partners or employees of the applicants' solicitors Gilbert + Tobin (collectively referred to as the ("applicants' representatives"); and (c) a solicitor other than a member of Gilbert + Tobin ("independent solicitor") to enter and remain upon the premises at 145 Thompson Street, Hamilton, Victoria (the "premises") (including the whole of the buildings and any appurtenant buildings, garages or basements on the premises) or in any of the vehicles under the control of the respondents or either of them which may be on or around the premises at any hour between 9am and 7pm on Wednesday 15 January 2003 or 9am and 3pm on Thursday 16 January 2003 and to remain, or if necessary, to re-enter the premises, until the orders have been complied with. (4) THAT forthwith upon service of these orders, the first and second respondents and any person apparently occupying or in charge of the premises permit the applicants' representatives to: (a) search for, inspect, test, examine (including with the use of facilities to decode or restore data), photograph or video tape all and any smart cards and set top boxes relating to the display of subscription television (collectively, "decoder devices"); and (b) remove into the possession and safekeeping of the applicants' solicitors all or any decoder devices. Restrictions on the service and carrying out of orders 3 and 4 5. THAT orders 3 and 4 are subject to the following restrictions: (a) The orders must be served by the independent solicitor, and orders 3 and 4 must be carried out in his or her presence and under his or her supervision. (b) At the time the orders are served on the respondents or the person in charge of the premises, the independent solicitor will also serve a notice in the form set out in the attached schedule. (c) The orders do not require the person served with the orders to allow anyone to enter the premises who in the view of the independent solicitor could gain commercially from anything he or she might read or see on the premises if the person served with the orders objects. (d) Nothing may be removed from the premises until a list of the items to be removed has been prepared, and a copy of the list has been supplied to the person served with the orders, and he or she has been given a reasonable opportunity to check the list. Obtaining legal advice and applying to the Court 6. THAT before permitting entry to the premises by any person other than the independent solicitor and one of the applicants' representatives, the respondents may seek legal advice, and apply to the Court to vary or discharge the orders provided that any such application is made promptly upon service of these orders and further provided that if the respondents wish to seek legal advice as permitted by these orders, they must so inform the independent solicitor and keep him or her informed of the steps being taken. 7. THAT while the respondents seek legal advice in accordance with paragraph (a) above, entry to the premises to any person other than the independent solicitor and one of the applicants' representatives may be refused, and permission for the search to begin may be refused, for a period not to exceed one hour (unless the independent solicitor agrees to a longer period). Prohibited disclosure 8. THAT forthwith upon the service of these orders, the first and second respondents whether by themselves, their servants, agents or otherwise and any person apparently occupying or in charge of the premises be restrained from informing any other person of the existence of these orders or their proposed execution, except for the purpose of obtaining legal advice, until 5pm on 17 January 2003. Delivery of items 9. THAT forthwith upon the service of these orders the first and second respondents: (a) must immediately disclose the whereabouts of, and make available to the applicants' representatives, all decoder devices in their possession, custody or power whether located on the premises or otherwise; and (b) provide to the applicants' representatives such assistance as they may require to carry out the purposes set out in order 4. Prohibited acts 10. THAT until further order of the Court, the first and second respondents and any person apparently occupying or in charge of the premises, whether by his, her or its servants, agents or otherwise, be restrained from moving, destroying, altering, concealing, removing from the premises or parting with possession or control of any items which are or could be considered to be decoder devices (except by delivery to the applicants' representatives in accordance with these orders). Independent solicitor 11. (a) THAT the independent solicitor prepare a written report about the execution of the orders and as soon as practicable serve a copy of that report on each respondent and present a copy of that report to the Court; and (b) THAT the independent solicitor be, or be accompanied by, a woman (who may be one of the applicant's representatives). Procedural matters 12. THAT the time for service of the applicant's notice of motion, the application and supporting affidavits be abridged and that service be effected by 3pm on Thursday 16 January 2003. 13. THAT the notice of motion be made returnable before Gyles J at 2.15pm on Friday 17 January 2003. 14. THAT service on the respondents of these orders, the notice of motion, the application and the supporting affidavits be effected by serving a sealed copy on the second respondent or on any person apparently occupying or in charge of the premises. 15. THAT entry of these orders be expedited. 16. THAT the respondents be granted liberty to apply on two (2) hours' notice. 17. THAT the applicants be granted liberty to apply on forty-eight (48) hours' notice. 18. THAT until further order the first and second respondents may make any application to the Court to the Duty Judge by telephone. 19. THAT the respondents be granted liberty to appear at the return of the notice of motion by telephone in a manner to be arranged with the Court. 20. THAT the proceedings stand over until 2.15pm on Friday 17 January 2003 before Gyles J. SCHEDULE 1. This order orders you to allow the persons mentioned in the order to enter the premises described in the order and to search for, examine and remove or copy the decoder devices referred to specified in the order. The persons mentioned will have no right to enter the premises or, having entered, to remain at the premises, unless you give your consent to their doing so. If, however, you withhold your consent you will be in breach of this order and may be held to be in contempt of court. The order also requires you to make available any of the decoder devices which are in your possession, custody or power and to provide information to the applicant's solicitor, and prohibits you from doing certain acts. This part of the order is subject to restrictions. 2 You should read the terms of the order very carefully. You are advised to consult a lawyer as soon as possible. 3. Before you, the respondent, or the person apparently occupying or in charge of the premises allow anybody onto the premises to carry out this order you are entitled to have the solicitor who serves you with this order explain to you what it means in everyday language. 4. You are entitled to request that there is nobody present who could gain commercially from anything he might read or see on the premises. 5. You may be entitled to refuse to permit disclosure of any documents which may incriminate you ("incriminating documents") or to answer any questions if to do so may incriminate you. It may be prudent to take advice, because if you so refuse, your refusal may be taken into account by the court at a later stage. 6. You are entitled to refuse to permit disclosure of any documents passing between you and your solicitors for the purpose of obtaining advice("privileged documents"). 7. You are entitled to seek legal advice, and to ask the court to vary or discharge this order, provided you do so at once, and provided that meanwhile you permit the independent solicitor (who is a solicitor acting independently of the applicants) and one of the applicant's representatives to enter, but not start to search. 8. If you, the respondent or the person apparently occupying or in charge of the premises, disobey this order you may be found guilty of contempt of court. 9. If any person with knowledge of this order procures, encourages or assists in its breach, that person will also be guilty of contempt of court. 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 N 32 OF 2003 BETWEEN: SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) SECOND APPLICANT AND: FIRST MITMAC PTY LIMITED (ACN 003 805 070) FIRST RESPONDENT ALLAN JAMES ASH SECOND RESPONDENT JUDGE: GYLES J DATE OF ORDER: 14 JANUARY 2003 WHERE MADE: SYDNEY THE COURT ORDERS THAT: UPON THE APPLICANTS BY COUNSEL UNDERTAKING TO THE COURT: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court, or as it may direct, to any person, whether or not a party, adversely affected by the operation of the orders made on 14 January 2003; and (b) to pay the compensation referred to in (a) to the person there referred to, AND NOTING THE UNDERTAKING TO THE COURT OF KATE HARRISON, SOLICITOR FOR THE APPLICANTS, THE COURT ORDERS: (1) THAT the applicant's notice of motion dated 14 January 2003 be made returnable instanter. (2) THAT the hearing of the notice of motion take place during the fixed vacation. Entry and search of premises and vehicles on or around the premises (3) THAT forthwith upon service of these orders, the first and second respondents, whether by themselves, their servants, agents or otherwise, and any person apparently occupying or in charge of the premises hereafter referred to, permit a total of: (a) not more than two (2) representatives of the applicants; (b) not more than two (2) partners or employees of the applicants' solicitors Gilbert + Tobin (collectively referred to as the "applicants' representatives"); and (c) a solicitor other than a member of Gilbert + Tobin ("independent solicitor") to enter and remain upon the premises at corner of Livingstone and Lawrence Streets, Mathoura, New South Wales (the "premises") (including the whole of the buildings and any appurtenant buildings, garages or basements on the premises) or in any of the vehicles under the control of the respondents or either of them which may be on or around the premises at any hour between 9am and 7pm on Wednesday 15 January 2003 or 9am and 3pm on Thursday 16 January 2003 and to remain, or if necessary, to re-enter the premises, under the orders have been complied with. (4) THAT forthwith upon service of these orders, the first and second respondents and any person apparently occupying or in charge of the premises permit the applicants' representatives to: (a) search for, inspect, test, examine (including with the use of facilities to decode or restore data), photograph or video tape all and any smart cards and set top boxes relating to the display of subscription television (collectively, "decoder devices"); and (b) remove into the possession and safekeeping of the applicants' solicitors all or any decoder devices. Restrictions on the service and carrying out of orders 3 and 4 5. THAT orders 3 and 4 are subject to the following restrictions: (a) The orders must be served by the independent solicitor, and orders 3 and 4 must be carried out in his or her presence and under his or her supervision. (b) At the time the orders are served on the respondents or the person in charge of the premises, the independent solicitor will also serve a notice in the form set out in the attached schedule. (c) The orders do not require the person served with the orders to allow anyone to enter the premises who in the view of the independent solicitor could gain commercially from anything he or she might read or see on the premises if the person served with the orders objects. (d) Nothing may be removed from the premises until a list of the items to be removed has been prepared, and a copy of the list has been supplied to the person served with the orders, and he or she has been given a reasonable opportunity to check the list. Obtaining legal advice and applying to the Court 6. THAT before permitting entry to the premises by any person other than the independent solicitor and one of the applicants' representatives, the respondents may seek legal advice, and apply to the Court to vary or discharge the orders provided that any such application is made promptly upon service of these orders and further provided that if the respondents wish to seek legal advice as permitted by these orders, they must so inform the independent solicitor and keep him or her informed of the steps being taken. 7. THAT while the respondents seek legal advice in accordance with paragraph (a) above, entry to the premises to any person other than the independent solicitor and one of the applicants' representatives may be refused, and permission for the search to begin may be refused, for a period not to exceed one hour (unless the independent solicitor agrees to a longer period). Prohibited disclosure 8. THAT forthwith upon the service of these orders, the first and second respondents whether by themselves, their servants, agents or otherwise and any person apparently occupying or in charge of the premises be restrained from informing any other person of the existence of these orders or their proposed execution, except for the purpose of obtaining legal advice, until 5pm on 17 January 2003. Delivery of items 9. THAT forthwith upon the service of these orders, the first and second respondents: (a) must immediately disclose the whereabouts of, and make available to the applicants' representatives, all decoder devices in their possession, custody or power whether located on the premises or otherwise; and (b) provide to the applicants' representatives such assistance as they may require to carry out the purposes set out in order 4. Prohibited acts 10. THAT until further order of the Court, the first and second respondents and any person apparently occupying or in charge of the premises, whether by his, her or its servants, agents or otherwise, be restrained from moving, destroying, altering, concealing, removing from the premises or parting with possession or control of any items which are or could be considered to be decoder devices (except by delivery to the applicants' representatives in accordance with these orders). Independent solicitor 11. (a) THAT the independent solicitor prepare a written report about the execution of the orders and as soon as practicable serve a copy of that report on each respondent and present a copy of that report to the Court; and (b) THAT the independent solicitor be, or be accompanied by, a woman (who may be one of the applicant's representatives). Procedural matters 12. THAT the time for service of the applicant's notice of motion, the application and supporting affidavits be abridged and that service be effected by 3pm on Thursday 16 January 2003. 13. THAT the notice of motion be made returnable before Gyles J at 2.15pm on Friday 17 January 2003. 14. THAT service on the respondents of these orders, the notice of motion, the application and the supporting affidavits be effected by serving a sealed copy on the second respondent or on any person apparently occupying or in charge of the premises. 15. THAT entry of these orders be expedited. 16. THAT the respondents be granted liberty to apply on two (2) hours' notice. 17. THAT the applicants be granted liberty to apply on forty-eight (48) hours' notice. 18. THAT until further order the first and second respondents may make any application to the Court to the Duty Judge by telephone. 19. THAT the respondents be granted liberty to appear at the return of the notice of motion by telephone in a manner to be arranged with the Court. 20. THAT the proceedings stand over until 2.15pm on Friday 17 January 2003 before Gyles J. SCHEDULE 1. This order orders you to allow the persons mentioned in the order to enter the premises described in the order and to search for, examine and remove or copy the decoder devices referred to specified in the order. The persons mentioned will have no right to enter the premises or, having entered, to remain at the premises, unless you give your consent to their doing so. If, however, you withhold your consent you will be in breach of this order and may be held to be in contempt of court. The order also requires you to make available any of the decoder devices which are in your possession, custody or power and to provide information to the applicant's solicitor, and prohibits you from doing certain acts. This part of the order is subject to restrictions. 2 You should read the terms of the order very carefully. You are advised to consult a lawyer as soon as possible. 3. Before you, the respondent, or the person apparently occupying or in charge of the premises allow anybody onto the premises to carry out this order you are entitled to have the solicitor who serves you with this order explain to you what it means in everyday language. 4. You are entitled to request that there is nobody present who could gain commercially from anything he might read or see on the premises. 5. You may be entitled to refuse to permit disclosure of any documents which may incriminate you ("incriminating documents") or to answer any questions if to do so may incriminate you. It may be prudent to take advice, because if you so refuse, your refusal may be taken into account by the court at a later stage. 6. You are entitled to refuse to permit disclosure of any documents passing between you and your solicitors for the purpose of obtaining advice("privileged documents"). 7. You are entitled to seek legal advice, and to ask the court to vary or discharge this order, provided you do so at once, and provided that meanwhile you permit the independent solicitor (who is a solicitor acting independently of the applicants) and one of the applicant's representatives to enter, but not start to search. 8. If you, the respondent or the person apparently occupying or in charge of the premises, disobey this order you may be found guilty of contempt of court. 9. If any person with knowledge of this order procures, encourages or assists in its breach, that person will also be guilty of contempt of court. 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 N 31 OF 2003 BETWEEN: SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) SECOND APPLICANT AND: DARCY'S TAVERN PTY LIMITED (ACN 005 712 381) FIRST RESPONDENT SHAUN MATHEW BROWN SECOND RESPONDENT N 32 OF 2003 BETWEEN: SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LIMITED (ACN 068 104 680) SECOND APPLICANT AND: FIRST MITMAC PTY LIMITED (ACN 003 805 070) FIRST RESPONDENT ALLAN JAMES ASH SECOND RESPONDENT JUDGE: GYLES J DATE: 14 JANUARY 2003 PLACE: SYDNEY EX TEMPORE REASONS FOR JUDGMENT 1 I have two matters before me, respectively numbers 31 and 32 of 2003 in which relief in the nature of Anton Piller relief is sought, primarily based upon a breach of s 135ANA of the Copyright Act 1968 (Cth). This is part of a new division, and counsel is unable to refer me to any previous case brought under this division. 2 I am satisfied that, on the evidence as it now stands, there is a strong case made of a breach of s 135ANA in each case of use and authorisation of use of a broadcast decoding device contrary to the section, and I have satisfied myself that each of the integers of this section are so satisfied. As the matter may have to be dealt with in due course by another judge, I do not propose to say any more than that at this stage of the case. 3 I am also satisfied, on the evidence, that the presence on each of the premises concerned of a broadcast decoding device is established, and I am further satisfied that, because of the history of the matter and the nature of the decoding device, namely, the set top box and SmartCard, any prior notice of these proceedings would leave open a very real risk of disposal or destruction of the evidence. 4 I have been somewhat troubled by the time it has taken to arrive at a position in which this application is made. I need not go through the chronology of the events. At the end of the day, in this kind of application, delay of itself would not be a barrier, provided that there is no suggestion that the applicant has deliberately delayed to disadvantage the respondent in some collateral fashion. 5 I have been concerned as to the currency of the evidence. In each case, the last observation was some weeks ago. However, counsel has persuaded me that it would be appropriate to infer that there has been no change of circumstances so far as is relevant during that period. 6 I have also been troubled by the fact that both premises are remote from Sydney and one is situated in Victoria and each is closer to Melbourne than it is to Sydney. It may be that if real issues develop in the course of execution of the orders or upon the return of the motion, consideration will need to be given as to whether there should be a change of venue to the Victorian Registry of the Court. Indeed, of course, that may arise in any stage of these cases. Although I do not place great emphasis upon the administrative convenience of the applicants, the locations are such that it is possible to deal with both matters in a co-ordinated fashion, and as one of the premises is within New South Wales, it does not seem to me to amount to an abuse of the process to include the other premises at the present stage. 7 What has been proposed, and what I have accepted, is that the answer to this problem is to permit applications to the Court to be made for the time being, including the appearance on the return of the motion, by telephone, provided that satisfactory arrangements can be made. If satisfactory arrangements cannot be made, then, as I say, the question of venue can be reconsidered. 8 I did somewhat limit the scope of the orders which were sought to precise pieces of equipment, as I have been conscious of the fact that the execution of these orders must, of necessity, be in effect in public, in a public bar of licensed premises. It is plainly undesirable that there be any greater interference with the conduct of business in that way unless absolutely necessary. 9 I should record that I have not at this stage formed any view as to whether it is appropriate that the decoding devices be utilised for any purpose other than for use as evidence in these particular cases. That is a matter which will need to be taken up either on the return of the motion or at some later time. I should also make clear that I have not had regard to the fact that there is a particular fight or boxing event, proposed in the near future as the basis for making these orders at this time. As I explained to counsel, there was adequate time to move more quickly if there had been a real consideration. 10 I am, however, satisfied that the nature of the breaches which have prima facie been established is such that the applicants suffer sufficient damage to make this remedy appropriate. Whilst, of course, any individual breach by an individual publican may, on one view, be seen as very minor, it is a breach which is in effect irreparable, and I think it is legitimate in considering the overall circumstances to recognise that breach by a user in this way must be seen as part of a wider picture. 11 For those reasons I have acceded to the applications which were made to me today. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles. Associate: Dated: 24 January 2003 Counsel for the applicant: R Cobden Solicitor for the applicant: Gilbert & Tobin Date of Hearing: 14 January 2003 Date of Judgment: 14 January 2003