FEDERAL COURT OF AUSTRALIA Bella Products Pty Ltd v Creative Designs International Ltd [2009] FCA 868 PRACTICE AND PROCEDURE – stay of proceedings – similar proceedings pending in United States – test to be applied for temporary stay on forum non conveniens grounds – relevant considerations Foreign Evidence Act 1994 (Cth) Trade Practices Act 1974 (Cth), ss 51AC, 52 New York Civil Practice Law and Rules, s 4511(b) Ackermann v Levine 788 F2d 830 (1986) Ash v Baltimore 19 A 643 (1890) Dennick v Railroad Company 103 US 11 (1880) De Herrera v Texas Mexican National Railroad Company 154 SW 594 (Tex Civ App 1913) Hausman v Buckley 299 F2d 696 (1962) Henry v Henry (1986) 185 CLR 571 Loucks et al v Standard Oil Co of New York 224 NY 99 (1918) Matter of Walker 64 NY 2d 354 (1985) Oceanic Sun Line Special Shipping Company Inc v Fay (1988) 165 CLR 197 Schultz v Boy Scouts of America Inc 480 NE 2d 679 (NY 1985) Slater v Mexican National Railroad Company 194 US 120 (1904) Shannon v Irving Trust Co 275 NY 95 (1937) Spilada Maritime Corporation v Cansulex Ltd [1987] AC 460 St Louis & SFR Co v Sizemore 116 SW 403 (Tex Civ App 1909) Sterling Pharmaceuticals Pty v The Boots Company (1992) 34 FCR 287 TS Production LLC v Drew Pictures Pty Ltd (2008) 172 FCR 433 Voth v Minaldra Flour Mills Pty Ltd (1990) 171 CLR 538 BELLA PRODUCTS PTY LTD (ACN 104 531 491) v CREATIVE DESIGNS INTERNATIONAL LTD VID 254 of 2009 FINKELSTEIN J 12 AUGUST 2009 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VID 254 of 2009 GENERAL DIVISION BETWEEN: BELLA PRODUCTS PTY LTD (ACN 104 531 491) Applicant AND: CREATIVE DESIGNS INTERNATIONAL LTD Respondent JUDGE: FINKELSTEIN J DATE: 12 AUGUST 2009 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 This dispute is between an Australian company, Bella Products Pty Ltd (BP), and a corporation established in Delaware, in the United States of America, Creative Designs International Ltd (CDI). The dispute is whether CDI agreed to distribute in North America a range of toys known as the "Get Up 'N Move" (GUNM) range, which BP manufactures. The procedural problem which has arisen is that each party wants the courts of its own jurisdiction to resolve the dispute. To that end, on 17 April 2009, BP brought this action in the Fast Track List of the Federal Court of Australia seeking a declaration that CDI is in breach of the alleged agreement and has engaged in conduct in contravention of s 52 and/or s 51AC of the Trade Practices Act 1974 (Cth), asking for damages and other relief. By that time, CDI had already filed a Summons and Complaint in the Supreme Court of New York seeking a declaratory judgment that the dealings between it and BP "did not give rise to any legally enforceable contractual rights" and, in the alternative, if an agreement did exist, "BP's inability and failure [to perform its obligations] excused CDI of any obligation it may otherwise have had to continue to do business with BP" and, in particular, that "CDI is not liable to BP for damages in any amount". CDI now moves to stay the Federal Court action on the basis that it is more appropriate that the New York court resolve the parties' dispute. 2 The background can be sketched briefly. BP was established in 2003 by Mary Toniolo and her husband Paul. The company operates out of an office in Melbourne. It designs and manufactures several ranges of toy products. In a relatively short period the business has become successful, with products being sold in Australia and other countries. 3 In February 2008 Ms Toniolo met Geoffrey Greenberg, the then President of CDI, in New York to discuss a distribution arrangement. At the time BP was in the process of developing the GUNM range. Ms Toniolo contends that during their discussion they agreed that CDI would be the exclusive distributor of the GUNM range in North America on terms that CDI would pay for the production of a television commercial, make an advance payment of $US200,000 to BP, purchase GUNM at free on board (FOB) prices, pay a royalty on further GUNM products and be granted an option to distribute any further GUNM products developed by BP into other international markets. 4 Correspondence passed between BP and CDI about the development and marketing of the GUNM range. Then, on 3 September 2008, Ms Toniolo sent an email to Mr Greenberg which attached a document entitled "Proposal for the Get Up'N Move brand for North America". The proposal sets out the basis upon which BP would enter into an agreement with CDI to market the new brand. Ms Toniolo says she sent the proposal because she "wanted a more formal agreement in writing" with CDI. 5 In October 2008 Mr Greenberg informed Ms Toniolo that, effective from December 2008, Mr Rinzler would take over his position as President. Shortly thereafter, Ms Toniolo was told that discussions about the GUNM distributorship were to be put on hold until Mr Rinzler "gets back in the office on 10 November". A week later Mr Rinzler sent an email to Ms Toniolo advising her of the terms upon which CDI would take on the GUNM distributorship. The terms differed from those Ms Toniolo says had previously been agreed. 6 BP immediately retained Messrs Middletons to act on its behalf. On 15 January Middletons wrote a letter of demand to CDI. The letter asserted the existence of the distributorship agreement. It alleged that CDI had breached that agreement, causing BP to suffer loss. It also alleged that CDI had breached s 51AC of the Trade Practices Actwhich proscribes unconscionable conduct and s 52 which provides that a corporation shall not in trade or commerce engage in conduct which is deceptive or misleading. The letter demanded payment of damages of around $US11 million. In default of payment the letter threatened legal proceedings. 7 CDI requested time within which to provide a response. Further time was allowed. But, instead of providing a reply, on 6 February 2009 CDI commenced its New York action, which it served on BP two weeks or so later. 8 It was open to BP to apply to have the New York action dismissed on grounds of forum non conveniens. But BP did not move to dismiss. Instead, it sought to remove the Complaint to the United States District Court. That application was made out of time so the parties agreed (and in due course the Court ordered) that the Complaint be remanded to the Supreme Court of New York and that "defendant [BP] will not move to dismiss the complaint or assert a defence on lack of personal jurisdiction". 9 Mr Watson of Messrs Middletons says that the order of remand does not represent a consent by BP to the jurisdiction of the New York court as BP and CDI did not enter into a forum selection agreement. As I read the order, BP concedes that the New York court has personal jurisdiction over it but does not accept that it is the appropriate court to deal with the dispute. 10 However that may be, BP filed an answer, affirmative defence and counterclaim on 24 April 2009. The counterclaim asserts, as BP asserts in the Federal Court action, that BP and CDI entered into a distributorship agreement. BP alleges that CDI breached the agreement, resulting in BP suffering loss and damage. Importantly, BP pleads a cause of action based on a contravention of s 51 and s 52 of the Trade Practices Act. 11 There is no doubt that the New York Supreme Court has jurisdiction to entertain a claim which involves the breach of a foreign statute. The position in the United States appears to be that a court will recognise and enforce a right of action in tort (including an action on a statute) created by the law of the place where the defendant's conduct took place. Thus, according to the US Supreme Court, a foreign statute "gives rise to an obligation, which, if transitory, 'follows the person and may be enforced wherever the person may be found'", unless to do so would violate the public policy of the state in which the action is pursued; Loucks et al v Standard Oil Co of New York 224 NY 99 (1918) at 109, citing Slater v Mexican National Railroad Company 194 US 120 (1904). See also Dennick v Railroad Company 103 US 11 (1880) at 15: "A personal liability created by the statute of another State will, as other personal obligations, be enforced according to the course of procedure in the place where the defendant is found." 12 The court will apply the public policy exception if to enforce the foreign law "would violate some fundamental principle of justice, some prevalent conception of good morals, some deep-rooted tradition of the common weal"; Loucks et al v Standard Oil Co of New York 224 NY 99 (1918) at 111. See also Schultz v Boy Scouts of America Inc 480 NE 2d 679 (NY 1985) at [6]; Matter of Walker 64 NY 2d 354 (1985); Shannon v Irving Trust Co 275 NY 95 (1937). 13 Generally speaking, the fact that the forum state has no statute on the subject, or that the law of the forum differs from that of the foreign jurisdiction, does not establish that to enforce the foreign statute is contrary to the public policy of the forum. This is the approach taken by both state and federal courts in the majority of states, including New York: see Hausman v Buckley 299 F2d 696 (1962); Ackermann v Levine 788 F2d 830 (1986). 14 There are two states – Maryland and Texas – which have taken exception to the general rule and have declined to follow Dennick. The courts in Maryland follow Ash v Baltimore 19 A 643 (1890) where the Maryland Court of Appeal held that "the right of action given by statute for the death of an individual is not transitory, like the common-law right of action for personal injuries, but the operation and force of such a statute must be confined to the state enacting it, except where it can be extended by comity". It will only be extended if the forum state has a similar statute in force. Similarly, in Texas the courts look to whether there is a similar statute or, conversely, whether the statutes are so dissimilar as to prevent the court from exercising jurisdiction for breach of a foreign statute: see eg St Louis & SFR Co v Sizemore 116 SW 403 (Tex Civ App 1909); De Herrera v Texas Mexican National Railroad Company 154 SW 594 (Tex Civ App 1913). 15 Each party has tendered evidence from a practicing US attorney dealing with the jurisdiction of the New York Supreme Court. I regret to have to say I found their evidence only partially instructive. Each attorney refers to the New York Civil Practice Law and Rules (CPLR), s 4511(b), which provides that "Every court may take judicial notice without request of… the laws of foreign countries and their political subdivisions. Judicial notice shall be taken… if a party requests it, furnishes the court sufficient information to enable it to comply with the request, and has given each adverse party notice of his intention to request it." The attorneys appear to treat this provision as bearing upon the court's jurisdiction to deal with an action for the breach of a foreign statute. My own, but admittedly untutored, view is that s 4511(b) concerns the means by which foreign law may be established and says nothing about jurisdiction. For this reason I examined for myself the issue raised. 16 Returning to the narrative, prior to BP filing its answer, affirmative defence and counterclaim in the New York action, BP had instituted this action in the Federal Court. CDI was served on 13 May 2009. 17 On 21 May 2009 CDI applied in the New York court for an anti-suit injunction to restrain BP from continuing to prosecute the Federal Court action pending resolution of the New York action. The New York court refused the application on 28 May 2009, indicating that CDI should seek a dismissal or stay of the Federal Court action. 18 During the course of the hearing on 28 May 2009 BP told the New York court that its counterclaim in the New York action was based on a mistaken belief that the counterclaim was necessary to avoid an assertion of waiver. BP indicated that it would withdraw its counterclaim and has since taken steps to do so. 19 On the same day the New York court made consent orders to prepare the action for trial. Those orders required the parties to take the following steps: · Serve interrogatories by 14 August 2009; · Serve answers to interrogatories by 25 September 2009; · Serve demands for discovery and inspection by 18 September 2009; · Attend a compliance conference on 8 October 2009; · Serve responses to demands for discovery and inspection by 30 October 2009; · Conduct depositions by 24 January 2010; · Provide expert disclosure by 26 February 2010 (plaintiff) and 26 March 2010 (defendant); · Conclude disclosure by 21 May 2010; and · File note of issue by 28 May 2010 (the end date for all discovery and conference dates). 20 Turning to the stay application proper, it is necessary to determine the basis upon which an action may be stayed on forum non conveniens grounds. Generally speaking, the test for a stay is whether the forum the plaintiff selected is the "clearly inappropriate forum"; Voth v Minaldra Flour Mills Pty Ltd (1990) 171 CLR 538; Oceanic Sun Line Special Shipping Company Inc v Fay (1988) 165 CLR 197. By way of contrast, the test in England requires the court to decide which of two competing courts is the "more appropriate" forum; Spilada Maritime Corporation v Cansulex Ltd [1987] AC 460. 21 In TS Production LLC v Drew Pictures Pty Ltd (2008) 172 FCR 433, both at trial and on appeal, the Federal Court applied the Voth and Oceanic Sun Liner test in respect of an application for a temporary stay of an action pending in an Australian court when there was a similar action pending in a United States court. Regrettably (all the more so because I was on the appellate bench) that approach was wrong. The correct test is that stated in Sterling Pharmaceuticals Pty v The Boots Company (1992) 34 FCR 287, a decision affirmed by the High Court in Henry v Henry (1986) 185 CLR 571 at 590 and CSR Ltd v Signa Insurance Australia Ltd (1997) 189 CLR 345 at 390–398. 22 In Sterling Pharmaceuticals (at 290) Lockhart J said there is a substantial difference between a motion for a permanent stay or dismissal of a proceeding for forum non conveniens and a motion for a temporary stay or an adjournment. He said that when the court was moved for a temporary stay or an adjournment the "clearly inappropriate forum" test was not the applicable test. Lockhart J said that in such a case the court's general power to control its own proceedings enabled it to order a temporary stay "where proceedings are pending in another court and it is desirable that those proceedings should proceed to their conclusion first." He said to reach that decision the following considerations were relevant (at 291): · Which proceeding was commenced first. · Whether the termination of one proceeding is likely to have a material effect on the other. · The public interest. · The undesirability of two courts competing to see which of them determines common facts first. · Consideration of circumstances relating to witnesses. · Whether work done on pleadings, particulars, discovery, interrogatories and preparation might be wasted. · The undesirability of substantial waste of time and effort if it becomes a common practice to bring actions in two courts involving substantially the same issues. · How far advanced the proceedings are in each court. · The law should strive against permitting multiplicity of proceedings in relation to the similar issues. · Generally balancing the advantages and disadvantages to each party. 23 The following propositions may be drawn from this list. First, for obvious reasons it is undesirable that two courts should determine the same dispute. Second, practical considerations based on common sense and fairness should dictate which action should proceed first. 24 Putting the two actions side by side, there are only a few pointers that suggest which should go ahead. Nothing can be made of the fact the New York action was filed before the Federal Court action. That happened because BP was tricked into delaying the commencement of its action. Nor has an action proceeded so far in its preparation to suggest that it should be allowed to go first. 25 There is an advantage to be gained in allowing the Federal Court action to go ahead. It is an action in the Fast Track List and so will be tried within six months of issue with judgment delivered within six weeks of the trial. The timetable in the New York action suggests that the action will not come on for hearing prior to June 2010. 26 CDI contends that any advantage of a speedy trial is outweighed by the disadvantage it would suffer if required to litigate in Australia. The disadvantage concerns witnesses. CDI's chief witness will be Mr Greenberg. He has told CDI's US attorneys that he is not willing to travel to Australia to give evidence. This does not mean his evidence would be unavailable to an Australian judge. There are two available avenues. First, Mr Greenberg's evidence could be taken on commission in the United States and the transcript tendered at the trial. Alternatively, his evidence could be received via video conferencing facilities pursuant to the Foreign Evidence Act 1994 (Cth). 27 But Mr Greenberg is not the only problem. CDI will call five or six other witnesses, all of whom reside in the United States. By contrast, BP has only one witness, Ms Toniolo, and she spends a significant amount of time in the United States. 28 In this case, where the evidence the witnesses will give is likely to be very influential, a party will be disadvantaged if its evidence is provided by transcript or video link. Not only is there this disadvantage, there is also the considerable expense involved in having a large number of witnesses travel to Australia for a trial. These burdens can be avoided if the Federal Court action is temporarily stayed and the trial takes places in New York. 29 For the foregoing reasons I will order a temporary stay of the proceedings pending resolution of the New York action. I would make this order conditional upon an undertaking from CDI that it will not object should BP wish to reinstate its counterclaim in the New York action. BP should pay CDI's costs. I certify that the preceding twenty-nine (29) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein . Associate: Dated: 12 August 2009 Counsel for the Applicant: C Golvan SC Solicitor for the Applicant: Middletons Counsel for the Respondent: PJ Jopling QC DC Morgan Solicitor for the Respondent: Mallesons Stephen Jaques Date of Hearing: 24 June 2009 Date of Judgment: 12 August 2009