CONSIDERATION
28 Aristocrat's submissions focused upon the effect on both sets of proceedings of the documents comprised in Exhibit A and upon certain documents contained in Exhibit MJW3 to an affidavit of Mr Williams. I do not propose to set out the documents in my reasons. There is a useful schedule which records the salient passages in an annotated index to Exhibit MJW3 and Exhibit A that was handed up by counsel for Aristocrat. Some parts of the material in those exhibits are confidential.
29 I am satisfied that the documents in Exhibit MJW3 and Exhibit A establish that Aristocrat has an arguable case that the respondents in both sets of proceedings were involved in a joint enterprise that included making and supplying counterfeit Aristocrat electronic gaming machines and gaming machine components. The documents are replete with references to a partnership between Mr Andrews of Global and Mr Cragen of Impact. They refer to the operation of the business from Impact's premises at Botany. There are also sufficient references to the other respondents to give rise to their involvement in the venture.
30 It would be inappropriate for me to comment at this stage on the proceedings on the strength of the prime facie case established by the documents, not least because the respondents have yet to file evidence on any of the questions of fact which arise. It is sufficient for me to say that I am satisfied that there is an arguable case to go to trial on the causes of action pleaded in the draft consolidated statement of claim if I were to permit consolidation of the proceedings. The causes of action include copyright infringement, authorisation of copyright infringement, joint participation in copyright infringement through participation in a common design, accessorial liability and trademark infringement.
31 However, the contesting respondents point to a number of discretionary factors which they submit point strongly against the exercise of the power to order consolidation. They also rely upon the fact that as presently pleaded there are no common questions of law or fact in the Global proceeding and the Impact proceeding. Nor do the rights to relief claimed in the Global proceeding and the Impact proceeding arise out of the same transactions or series of transactions: see Payne v Young (1980) 145 CLR 609.
32 Moreover, as the contesting respondents submit, the ambit of the existing Global proceeding particularises 32 shipments to Peru in July 2002 whereas Impact was not incorporated until May 2004. Thus the Global proceeding involves entirely different allegations at different times involving different parties from those which are the subject of the Impact proceeding. Indeed, the draft particulars of the consolidated statement of claim allege only four transactions involving Global or Mr Andrews before May 2004, but there are 50 allegations against Impact, Tonita, Mr Cragen, Mr Allam, Global and Mr Andrews either individually or in a "joint enterprise" after May 2004.
33 Notwithstanding these difficulties, I am satisfied as I have already said that there are supportable allegations of joint enterprise involving Impact, Tonita, Mr Cragen, Mr Allam, Global and Mr Andrews during the period from May 2004 to the date of commencement of the Impact proceeding. Indeed, this is conceded in the submissions of the contesting respondents.
34 The solution proposed by the contesting respondents is that the Impact proceeding provides an adequate vehicle in which Aristocrat may pursue all of the allegations of joint enterprise from the period commencing May 2004. They suggest that the Global proceeding remains on foot, perhaps with the addition of the particulars of the three additional transactions said to have occurred before May 2004. They submit that this relatively confined Global proceeding could go to trial later in 2007, leaving the longer and more complex Impact proceeding to be heard next year.
35 It seems to me that whether I should adopt this course or order in the alternative consolidation as proposed by Aristocrat depends upon whether I consider it to be in the interests of justice having regard to all of the factors mentioned in the cases to which I have referred. The contesting respondents point in particular to the forensic decision taken by Aristocrat in January 2007 to launch the Impact proceeding rather than to seek to join those respondents to the Global proceeding. Ms Tropman conceded that this was a deliberate forensic decision taken so as to avoid a "tip off" to the parties in the Global proceeding.
36 Nevertheless, I do not consider that what was done amounted to an abuse of the processes of the Court. Indeed, confidentiality was required by the provisions of Practice Note 24. It is true that it would have been possible for a procedure to have been invoked which would have enabled Aristocrat to amend the claim in the Global proceeding to join the Impact respondents while at the same time maintaining confidentiality, but that procedure was more complicated and I do not consider that it was obligatory for Aristocrat to pursue that course.
37 In short, I do not consider that there was an abuse of process within the principles stated in authorities such as Williams v Spautz (1992) 174 CLR 509. Nor do I consider that Aristocrat's failure to take up the opportunity to exercise leave to amend the Global proceeding goes against the exercise of the discretion to consolidate. It is true that the time for exercise was extended, but new solicitors were engaged and it is plain that they cannot be criticised for seeking an extension of time so as to enable them to absorb the mass of material.
38 I accept that Aristocrat is bound by the course adopted by its previous solicitors, but the question which arises is whether any prejudice now flows from the change of course proposed by Aristocrat. I accept the submissions of the contesting respondents that what is proposed involves in essence a new case, but I reject their submission that it was entirely unexpected.
39 It was plain in my view that the very large categories of documents proposed for discovery by Aristocrat shortly before 5 April 2007 demonstrated that Aristocrat wished to greatly expand the scope of the Global proceeding beyond the shipments to Peru in 2002. Nor do I see any substantial prejudice sufficient to go against the grant of relief to Aristocrat on these motions in any of the other respects that have been submitted to me on behalf of the contesting respondents.
40 However, I do consider that Aristocrat may have to bear some cost liability for the change of course, at the very least costs thrown away by its adoption of a new case. Mr Bard effectively conceded in cross-examination that he could not point to prejudice from the failure to exercise leave to amend other than some additional costs and delay. But wasted costs can be compensated and I am not persuaded that there will be any real delay in the hearing as a result of a consolidation order.
41 Although the orders of 5 April 2007 were consented to by Mr Bard as a package, he did so on the basis that the Global case was relatively confined, whereas in my view that was not an assumption he could safely make. In any event, there was no guarantee that the timetable would have been adhered to and no hearing date was actually fixed.
42 The two most persuasive discretionary factors against consolidation seem to me to be first, the linking of the pre-May 2004 Global transactions to the wider joint enterprise case and second, the real possibility that the narrower allegations in those proceedings, upon which the Global respondents may have reasonable prospects of success, will be subsumed in the more complex joint enterprise case. There will also be evidentiary difficulties in a consolidated action because the claims are tantamount to conspiracy and questions will arise as to whether evidence against one of the respondents is admissible against the others.
43 However, ultimately I am of the view that all of this is outweighed by the fact that the same difficulties would arise in a reconstituted Impact proceeding and in any event I would be able to make special costs orders in favour of Global if it succeeds in resisting the allegations relating to the pre-May 2004 activities.
44 I have taken into account the fact that Mr Williams conceded that the decision to refrain from seeking an order that the Global respondents be joined in the Impact proceeding was deliberate. However, he explained at page 62 of the transcript that he was of the view that the orders sought sufficiently encompassed that possibility.
45 I am affirmatively satisfied that the contesting respondents will not be prejudiced by an order for consolidation. It is true that the existing Global proceeding are narrower than the Impact proceeding and narrower than the proceedings in consolidated form. It is also true that no claim of partnership between Global and Impact can be made in respect of the period before about May 2004.
46 Accordingly, it would appear that there is no common question of law or fact in relation to the pre-May 2004 allegations. However, the evidence in Exhibit A points to an inference of a continuation of Global's business in the form of the "joint enterprise" and this is sufficient to lead me to the view that there will be a saving of time and cost by dealing with all of the allegations in one proceeding.
47 Also, it seems to me that the substantial amounts expended by the contesting respondents in the Global proceeding have largely been incurred in dealing with the working out of the access regime pursuant to the search and seizure order initially made in the Global proceeding. Once that order was made the proceeding was not likely to be cheap, efficient or quick, but what is once again demonstrated is the draconian nature of the orders and the need for caution in the initial decision to unleash the full armoury of the Court's processes in the way that has been done.
48 What was produced in the search and seizure order in the Global proceeding led to the institution of the Impact proceeding with the inevitable consequence of protracted litigation. It may well be that the only sanction for the eventual loser in the proceedings will be a substantial costs order. But as I have said, Aristocrat may well have to meet an order for costs in any event as a result of the change of course that has been adopted.
49 As I said earlier, the contesting respondents submitted with some force that the relief sought by Aristocrat on the motions does not extend to joinder of the Global respondents to the Impact proceeding. Reliance was placed on the deliberate decision taken by Aristocrat and by Mr Williams, but that was explained in cross‑examination as I have already mentioned.
50 I can see no practical utility in allowing the Global proceeding to go to trial in the limited form proposed by the contesting respondents. I accept the evidence of Mr Williams that he considers that there will be time and costs savings in consolidation rather than the pursuit of separate actions. This seems to me to be correct even if Mr Williams' opinion was based upon a broader assumption as to the subject matter of the existing proceedings than is contained in the present pleadings.
51 In short, I am of the view that it is in the interests of justice that the proceedings be consolidated. Mr Ireland QC for the contesting respondents referred me to the decision of Hely J in Wilson v Minister for Land and Water Conservation (NSW) (2003) 198 ALR 238, in particular at [46], [48] -[49].
52 However, that was a very different case because the respondents in one of two separate proceedings contended that the applicant should consolidate them. His Honour considered that a relevant factor was whether the existence of two proceedings rather than one constituted an abuse of process; he held that they were not and declined to order consolidation.
53 I do not consider that the existence of different parties to the separate proceedings is a bar to the existence of the power to order consolidation. The observations of Hill J in Re Ling are to the effect that consolidation can be ordered in these circumstances, and that is also supported by the approach taken by Emmett J in Hi-Fert Pty Limited v United Shipping Adriatic Inc [1998] FCA 1671.