FEDERAL COURT OF AUSTRALIA Boomerang Investments Pty Ltd v Padgett (Reasons Revision Application) [2020] FCA 882 File number: NSD 1738 of 2017 Judge: PERRAM J Date of judgment: 25 June 2020 Catchwords: PRACTICE AND PROCEDURE – application to revise reasons for judgment before orders entered – re-opening application Cases cited: Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535 Colgate-Palmolive Company v Cussons Pty Ltd [1993] FCA 801; 46 FCR 225 Davis v Insolvency and Trustee Service Australia (No 2) [2011] FCAFC 9; 190 FCR 437 Date of hearing: 11 June 2020 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 13 Counsel for the Applicants: Mr M R Hall SC with Ms J M Beaumont Solicitor for the Applicants: Banki Haddock Fiora Counsel for the First and Second Respondents: Mr R Cobden SC with Mr W H Wu Solicitor for the First and Second Respondents: Gilbert + Tobin Counsel for the Third Respondent: Mr P Flynn SC Solicitor for the Third Respondent: Simpsons Solicitors Counsel for the Fourth Respondent: Mr C Dimitriadis SC with Ms E E Whitby Solicitor for the Fourth Respondent: HWL Ebsworth Lawyers ORDERS NSD 1738 of 2017 BETWEEN: BOOMERANG INVESTMENTS PTY LTD ACN 009 670 919 First Applicant JOHANNES VAN DEN BERG Second Applicant ALEXSANDRA MILLER MALCOLM YOUNG Third Applicant AUSTRALASIAN PERFORMING RIGHT ASSOCIATION LTD ACN 000 016 099 Fourth Applicant AUSTRALASIAN MECHANICAL COPYRIGHT OWNERS SOCIETY LTD Fifth Applicant AND: JOHN PADGETT First Respondent LORI MONAHAN Second Respondent KOBALT MUSIC PUBLISHING AUSTRALIA PTY LTD ACN 144 996 609 Third Respondent SOCIÉTÉ AIR FRANCE, SA Fourth Respondent JUDGE: PERRAM J DATE OF ORDER: 25 JUNE 2020 THE COURT ORDERS THAT: 1. The application for the Court to revise its reasons and to re-open the case be refused. 2. The Applicants pay the Respondents' costs of the application unless one or more of them inform my chambers of their desire to seek some other costs order within seven days of the date of these orders in which case this order will stand revoked and arrangements will be made to hear arguments on costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT PERRAM J: Introduction 1 I delivered judgment in this matter on 24 April 2020: Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535. The parties were directed to bring in short minutes of order giving effect to the reasons for judgment within 14 days and the matter was stood over for further directions on 8 May 2020. At that hearing, the Applicants foreshadowed that they would bring an application to vary the Court's reasons to rectify a misapprehension of fact said to be disclosed in the Court's reasons. Timetabling directions were made. That application was heard on 11 June 2020. At that time the application was broadened so that if the Applicants' request to revise the Court's reasons was rejected, the application alternatively sought to re-open the Applicants' case. The application, in both respects, should be refused for the reasons which follow. The Revision Application 2 These reasons assume an understanding of the licensing issues discussed in the trial reasons. The infringement case operated at five factual levels: (1) the streaming and downloading of Warm by Glass Candy; (2) the downloading of Warm from the IDIB and Big Cartel websites; (3) the streaming and downloading of Warm from music service providers such as Spotify, iTunes, YouTube and Google Play; (4) the streaming of France from the Air France YouTube channel; and (5) the playing of France as Air France's telephone hold music. 3 The present debate concerns only the third and fourth of these and the others may be disregarded. The Applicants' case about the streaming and downloading of Warm from music service providers such as Spotify was that Glass Candy and Kobalt had authorised those providers to do so. The case about the streaming of France from YouTube was that Air France had authorised YouTube to do so. I concluded that a case based on authorisation could not succeed for several reasons. One of these reasons was that each of the music service providers held an APRA and AMCOS licence which authorised them to stream and make available for downloading Love and, therefore, a substantial part of Love. Since the infringement I found was that Warm contained a substantial part of Love (the sung line with instrumentation 'love is in the air'), it followed that the music providers had been authorised by APRA and AMCOS to make available Warm for streaming and downloading to the extent that it infringed Love. Consequently, the music service providers could not have been held liable to the Applicants for infringement by streaming Warm or making it available for downloading. Since they could not be primarily liable for that conduct, Glass Candy and Kobalt could not be liable for authorising them to engage in that conduct. The same reasoning was applied to the streaming of France by YouTube, i.e., Air France could not be liable for authorising YouTube to do something it was legally entitled to do. 4 The Applicants now submit that I overlooked the fact that the APRA and AMCOS licences that each of the music service providers held contained exclusions. The Applicants claim these exclusions were to the effect that the licences did not extend to a reproduction or communication of a substantial part of Love (which I held the relevant portions of Warm and France to be) 'with words that [were] not approved or normally associated with' Love or which were 'in association with new or substituted lyrics…unless the making of the new or substituted lyrics [was] authorised by the copyright owner'. 5 It is true that I did not consider the argument now advanced by the Applicants. This was, however, because no such argument was put to me. The licence clauses now relied upon by the Applicants were referred to in the Applicants' written submissions but in relation to a different topic entirely and not as any part of a response to the proposition that the music service providers could not be liable for primary infringement. 6 At trial what the Applicants said about these clauses was that they were relevant to the proper construction of a deed of assignment by which part of the copyright in Love had been transferred between various parties. The contention was that the deed of assignment had been ineffective to assign the right to sue in relation to copies of Love which infringed the copyright (which Warm was said to be). If this was true Boomerang was the owner of the right to sue in relation to Warm, not APRA. It was in the course of that argument that the Applicants pointed out that the APRA and AMCOS licences contained the above exclusions. It had nothing to do with the argument now being advanced. It was in this context that I referred to the exclusions in the trial reasons at [320]. 7 There is no question that Glass Candy explicitly submitted at trial in writing that the effect of the APRA and AMCOS licences held by the music service providers meant there could be no primary infringement by them and hence no secondary infringement by Glass Candy. That submission was expressly picked up and adopted by Kobalt and Air France. The time to respond to that argument was in the Applicants' written submissions in reply or in oral argument. No such submission was made. I do not accept that the point was sufficiently flagged by the fact that the Applicants denied the existence of the licences at §3 of their reply to the defences. 8 The jurisdiction of the Court to revisit its reasons before the Court's orders are entered is undoubted. It may be exercised where the Court 'has apparently proceeded according to some misapprehension of the facts or the relevant law and that this misapprehension cannot be attributed solely to the neglect or default of the party seeking the rehearing': Davis v Insolvency and Trustee Service Australia (No 2) [2011] FCAFC 9; 190 FCR 437 at [6] citing Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 303 per Mason CJ. The Court did not proceed on a misapprehension of the facts or the relevant law in not dealing with an argument which was not put to it. There was no fact put to me by the Applicants which was said to be a relevant answer to Glass Candy's submissions about this and there was no misapprehension by the Court about any legal proposition on this topic put by the Applicants simply because they did not put any. 9 To have dealt with the argument now sought to be raised by the Applicants would have involved the Court in (a) formulating an argument for the Applicants which they had not formulated for themselves; and (b) reaching my own views about that argument without hearing from the Respondents (with the ever-present risk of self-persuasion). The first step would have involved a departure from the adversarial mode of trial which is foundational to civil procedure. The second would have involved me in a breach of the rules of procedural fairness. 10 I refuse to grant the application to revise my reasons so as to consider an argument not put to me. 11 In the alternative the Applicants sought to re-open their case. I do not think that leave to re-open the case should be permitted. This is for two reasons. First, if I permitted the case to be re-opened I would need to afford the Respondents an opportunity to be heard on that case. At the present hearing, they foreshadowed that they did not accept the Applicants' construction of the APRA and AMCOS licences and that they would wish to demonstrate that extrinsic materials supported their position. Whilst I am to some extent sceptical that such extrinsic materials would be useful, nevertheless, over the Respondents' objection I permitted just such an escapade to the Applicants in their construction of the deed of assignment during the trial. Indeed, it was in the pursuit of that enterprise that the Applicants came to put before me the terms of the APRA and AMCOS licences in the first place. 12 Secondly, there is no doubt that the present issue was live before the Court during the hearing. Glass Candy explicitly submitted that the Applicants' case on secondary infringement was defeated because of the APRA and AMCOS licences. The Applicants did not seek to explain why the matter had not been explored during the trial. I am prepared to infer that under the weight of submissions prepared by the parties the issue was simply overlooked and I think it unlikely that it reflected a deliberate forensic choice. Be that as it may, the case has been heard and the parties afforded an opportunity to address each other's arguments. Procedural fairness also requires an end to argument and there is a public interest in the finality of litigation. Glass Candy put this argument; it was not rebutted by the Applicants; I accepted it. It would be unfair if I were now to permit the matter to be agitated a second time. 13 The application for the Court to revise its reasons and to re-open the case is refused. The parties indicated they wished to be heard on costs. I will do so if they wish and if they be so advised. My preliminary view, however, is that it will suffice that the Applicants should pay the Respondents' costs. The present application does not resemble, at first blush, the kinds of matters that Sheppard J was discussing in Colgate-Palmolive Company v Cussons Pty Ltd [1993] FCA 801; 46 FCR 225. In particular, it does not have the appearance of litigation misbehaviour. I will order the Applicants to pay the Respondents' costs unless they contact my chambers within seven days of the making of the orders. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate: Dated: 25 June