Passport International Productions Inc v Caisley [2006] FCA 226

FEDERAL COURT OF AUSTRALIA

Passport International Productions Inc v Caisley [2006] FCA 226 PASSPORT INTERNATIONAL PRODUCTIONS INC v ROBERT CAISLEY t/as RBC ENTERTAINMENT NSD387 OF 2005 EMMETT J 3 MARCH 2006 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD387 OF 2005

BETWEEN: PASSPORT INTERNATIONAL PRODUCTIONS INC

APPLICANT

AND: ROBERT CAISLEY T/AS RBC ENTERTAINMENT

RESPONDENT

JUDGE: EMMETT J

DATE OF ORDER: 3 MARCH 2006

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Leave be granted to the applicant to discontinue the proceeding so far as concerns the claims for relief in prayers 4 to 7 inclusive, 11, 12, 13, 15 and 16 of the application 2. The respondent pay the applicant's costs up to and including today, being all costs reasonably incurred by the applicant in the litigation to date. 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 NSD387 OF 2005

BETWEEN: PASSPORT INTERNATIONAL PRODUCTIONS INC

APPLICANT

AND: ROBERT CAISLEY T/AS RBC ENTERTAINMENT

RESPONDENT

JUDGE: EMMETT J

DATE: 3 MARCH 2006

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 The applicant in this proceeding claims relief in respect of infringement of copyright in a documentary cinematograph film entitled 'Madonna - the Name of the Game' ('the Film'). By the application filed on 15 March 2005, the applicant claimed an order that the respondent be restrained from making a copy of the Film and other orders intended to protect the copyright from infringement. In addition, the applicant claimed damages, delivery of infringing copies, orders under the Trade Practices Act 1974 (Cth), an account of profits and costs. 2 On 28 June 2005, when the respondent was represented by a solicitor, he consented to orders in accordance with prayers 1, 2, 3, 8, 9 and 10 of the application. They are, in effect, the prayers restraining conduct that would constitute infringement of the copyright in the Film. Those orders were entered on 4 July 2005. 3 On 29 July 2005, the solicitors for the respondent informed the Court that the respondent did not intend to file a defence in the proceeding. On 12 August 2005, I ordered that the respondent give discovery of documents in specified categories. The respondent has not complied with that order. 4 On or about 31 August 2005, the then solicitor for the respondent informed the applicant's solicitor that the respondent had left Australia. On 8 September 2005, the solicitor for the respondent ceased to act. The respondent has filed no alternative address for service and has not since appeared in directions hearings or taken any further step in the proceeding. In particular, the respondent has never provided a satisfactory explanation to the Court for his conduct in infringing copyright or ignoring the orders of the Court. 5 The applicant has decided not to throw more good money after bad and has decided not to pursue the further claims for relief in the proceeding. However, the applicant wants its costs of the proceeding to date. By application made on 27 February 2005, the applicant seeks an order under Order 22 rule 2(1)(d) of the Federal Court Rules granting leave to discontinue the proceeding so far as the claims for relief that have not already been granted are concerned. The applicant also asks for an order for costs on an indemnity basis or on solicitor and own client basis. 6 The Court will normally allow a plaintiff or applicant to discontinue if the plaintiff or applicant wishes to, provided no injustice is caused to the defendant or respondent. An applicant or plaintiff should not be compelled to litigate against its will and the Court would ordinarily therefore grant leave if it can do so without causing any injustice to the respondent or defendant. In particular, the Court should be careful to ensure that a respondent or defendant is not deprived of some advantage that has been gained in the course of the litigation to date. There can be no suggestion of present respondent's being deprived of any advantage in this litigation. He has played no part in it whatsoever other than to submit to substantive orders restraining him from infringing copyright in the Film. He has not sought to defend the allegation of the existence of copyright or the infringement. 7 The only question is whether the respondent should be ordered to pay the applicant's costs that have been incurred, following the making of the orders by consent and the basis upon which those costs should be ordered. The power to award costs is unfettered, subject to the power being exercised judicially; it is not arbitrary. 8 Ordinarily, where an applicant chooses to discontinue a proceeding one might expect the respondent to recover costs incurred. However, the only reason why the applicant is discontinuing in this case is because of the total failure by the respondent to respond to orders made by the Court. Costs have been incurred unnecessarily up to the present time by reason of the respondent's failure to comply with orders of the Court. 9 Whether or not the applicant wishes to pursue the matter any further, it is appropriate that the respondent bear the applicant's costs up to the present time. There can be no suggestion on the material before me that the respondent has incurred costs that will be thrown away by reason of the applicant's decision not to prosecute the proceeding any further. 10 As I have said, the respondent has filed no new address for service following the withdrawal of his solicitor. The applicant, however, has arranged for service of the notice of motion and affidavit in support at the address last known to the applicant. That address is Unit 1, 15-17 Beresford Avenue, Greenacre. The applicant has obtained that address from records kept by Australian Securities and Investments Commission which show that address as both a business address and a residential address of the respondent. 11 The notice of motion and the affidavit were served by being left in a letterbox at that address. I am satisfied that the applicant has taken all steps reasonably available to it to bring its application to the notice of the respondent. To the extent that personal service is required by the Rules, that service should be waived. 12 In all of the circumstances I consider that it is appropriate to give leave to the applicant to discontinue the proceeding so far as concerns the claims for relief in prayers 4 to 7 inclusive, 11, 12, 13, 15 and 16 of the application and to order the respondent to pay all costs reasonably incurred by the applicant in relation to the proceeding. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.