Supreme Court New South Wales Medium Neutral Citation: The City of Sydney v Streetscape Projects (Australia) Pty Limited & Anor [2011] NSWSC 452 Hearing dates: 11 May 2011 Decision date: 13 May 2011 Jurisdiction: Equity Division - Commercial List Before: Einstein J Decision: (1) The plaintiff be released from its undertakings given to the Court on 11 June 2010 effective from 3 May 2011. (2) The first defendant pay the costs of the plaintiff's motion dated 18 April 2011. (3) The first defendant pay the plaintiff's costs of the first defendant's motion filed on 16 March 2010. (4) The costs the subject of orders 2 and 3 above and the costs the subject of order 2 made on 11 June 2010 and entered 15 June 2010 be enforceable immediately. (5) Costs concerning the subpoena to the Commonwealth Bank of Australia are reserved and to be treated with following the determination of the whole of the proceedings. Catchwords: Costs Cases Cited: Baulderstone Hornibrook v HBO & DC and Ors [2001] NSWSC 821 Kieran Leslie Wezel & Anor v Stephen Paul Francis (2010) NSWSC 75 Category: Procedural and other rulings Parties: The City of Sydney (Plaintiff) Streetscape Projects (Australia) Pty Limited (First Defendant) Moses Edward Obeid (Second Defendant) Representation: Mr T Jucovic SC, Mr S Climpson, Mr C Bova (Plaintiff) Ms J Baird SC, Mr J Gooley (Defendants) Holding Redlich (Plaintiff) Colin Biggers & Paisley (Defendants) File Number(s): 2009/00298673 & 2010/0085353 Judgment 1There are before the court submissions by the respective parties in respect of costs following recent developments. 2The plaintiff seeks orders that the first defendant pay the plaintiffs costs in relation to : (1)The plaintiffs notice of motion dated 18 April 2011 (seeking to be released from undertakings given to the court on 11 June 2010 in relation to the sale of intellectual property in the smart pole (the April 2011 motion); (2)The first defendant's notice of motion filed 16 March 2010 (seeking interlocutory injunctions against the plaintiff in relation to the sale of intellectual property in the smart pole, the manufacture and supply of the smart poles to the plaintiff and the servicing and maintenance of those polls) (the March 2010 motion). 3The plaintiff also seeks an order that the above costs and the costs ordered in relation to the plaintiff's notice of motion dated 1 June 2010 and the first defendant's counter motion for interlocutory injunctions (the June 2010 motion) be enforceable immediately. 4The plaintiff, having succeeded in its April 2011 motion, should be awarded the costs of that motion. 5The first defendant having now completely failed in its March 2010 motion, the plaintiff should pay the plaintiff's costs of that motion as well. 6In accordance with the commercial list practice note, it is appropriate that there be an order that the costs of the March 2010 motion, the June 2010 motions and the April 2011 motions be enforceable immediately. The circumstances 7The circumstances relating to the three notices of motion referred to above are set out in paragraph 3 of the 3 May 2011 judgment ( The City of Sydney v Streetscape Projects (Australia) Pty Limited & Anor [2011] NSWSC 363) ('the judgment'). 8Overall, the circumstances relevant to the orders for costs which are sought by the plaintiff are as follows: (1)The March 2010 Motion (referred to in paragraph 3(3) and (4) of the judgment) sought interim injunctions to restrain the plaintiff from: (a)selling the intellectual property in the Smartpole poles; (b)procuring the manufacture or supply of Smartpole poles from any person other than the first defendant; (c)obtaining services and maintenance in relation to the plaintiff's Smartpole poles from any person other than the first defendant. (2)As stated in paragraph 3(4) of the judgment, on the return date of the March 2010 Motion, the parties agreed on a regime which included undertakings in relation to each of the restraints sought in the March 2010 Motion (sale of the intellectual property, manufacture and supply, and service and maintenance). (3)The March 2010 Motion was subsumed within the undertakings and other orders that were made on 29 March 2010. No order was made at that time in relation to costs. (4)By motion dated 1 June 2010, the plaintiff sought to be released from its undertakings concerning manufacture and supply and service and maintenance. On 11 June 2010 the court ordered that that the plaintiff be released from those undertakings. Undertakings concerning the sale of the intellectual property remained in place. The plaintiff was awarded costs of the June 2010 Motions. (5)After the relief for specific performance was abandoned by the first defendant on 5 April 2011, the plaintiff filed the April 2011 Motion to have the remaining undertakings relating to the sale of intellectual property discharged. (6)In the judgment handed down 3 May 2011, the Court ordered that the plaintiff be released of the remaining undertakings. 9The principled exercise of the relevant discretion dictates that having succeeded in the April 2011 Motion, the plaintiff should be awarded costs of that motion. The relief sought in the March 2010 Motion now having totally failed, the plaintiff should have its costs of that motion. The plaintiff has already been awarded the costs of the June 2010 Motions. Costs to be enforceable immediately 10Consistent with the Practice Note SCEQ 3, the plaintiff seeks and is entitled to an order that costs in relation to the March 2010 Motion, the June 2010 Motions and the April 2011 Motion be enforceable immediately. 11Practice Note SCEQ 3 includes the following provision: "Costs 57. Unless otherwise ordered, a party in whose favour an order for costs is made may proceed to assessment of such costs forthwith." 12The status of that Practice Note was considered in Kieran Leslie Wezel & Anor v Stephen Paul Francis (2010) NSWSC 75. In that decision, the Court held that UCPR 42.7 has primacy over Practice Note 57. In this respect, the Court referred to the decision of the New South Wales Court of Appeal in Metropolitan Petar where the Court of Appeal observed that: "A specific order that costs be immediately enforceable would need to be made to displace the operation of r42.7". 13In paragraph 10 of the above decision, the Court referred to the observations of Bergin J (as her Honour then was) in Baulderstone Hornibrook v HBO & DC and Ors [2001] NSWSC 821 where her Honour relevantly said: "A Practice Note governs or guides the way in which the proceedings are expected to be administered. Practitioners, and thus parties, should be aware of the requirements of the Practice Note, and it is to be expected that orders and/or directions would be made consistently with the Practice Note which governs a particular list". 14In relation to the cost order made on 11 June 2010, the principled exercise of the relevant discretion is that an enforceability order should now be made having regard to: (1)the circumstances where the whole of the relief sought in the March 2010 Motion has now failed; and (2)the purpose and intent of the Practice Note. The subpoena issue 15Finally, the parties differed in relation to what order, if any, should be made concerning it (the first defendant's) motion to set aside a subpoena produced by a third party. In my view the question of costs concerning the subpoena should be reserved on the basis that there may be some further movement during the final hearing. That matter can be treated with following the determination of the whole of the proceedings. Orders 16The Court makes the following orders: (1)The plaintiff be released from its undertakings given to the Court on 11 June 2010 effective from 3 May 2011. (2)The first defendant pay the costs of the plaintiff's motion dated 18 April 2011. (3)The first defendant pay the plaintiff's costs of the first defendant's motion filed on 16 March 2010. (4)The costs the subject of orders 2 and 3 above and the costs the subject of order 2 made on 11 June 2010 and entered 15 June 2010 be enforceable immediately. (5)Costs concerning the subpoena to the Commonwealth Bank of Australia are reserved and to be treated with following the determination of the whole of the proceedings. . ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 19 May 2011