Brodel v Telstra Corporation Ltd

1 The applicant seeks leave to appeal from the decision of the primary judge dismissing his proceeding pursuant to Order 20 rule 2 of the Rules of Court. See Order 52 rule 10(2)(b). He also seeks an extension of time to file and serve a notice of appeal. The document seeking this extension is headed "Order 52 rule 15(5)". It states that an extension is required because a notice of appeal was not filed and served within the time limited by Order 52 rule 15. 2 Order 52 rule 10(2)(b) requires an application for leave to appeal from an interlocutory judgment to be made within seven days from the pronouncement of the judgment or within such further time as the Court allows. Judgment was given on 26 April 2004. The application for leave to appeal was filed on 12 July. The material filed in support of the application does not explain why it was not made until ten weeks after judgment.. 3 The primary judge examined each of the applicant's causes of action: infringement of trade mark, infringement of copyright and passing off. As to the first, her Honour noted that registration of the applicant's trade mark was deemed to have taken effect on 11 May 2001, whereas the infringement is alleged to have occurred in July 1994. On this basis there was no tenable basis for the infringement claim. 4 As to infringement of copyright, after examining the authorities on what constitutes an original literary work, the primary judge concluded that there was no tenable claim that "Smartflex" was such a work. Her Honour said that even if the word were an original literary work, the claim would fail because it was statute barred by s 134 of the Copyright Act 1968, which requires proceedings to be commenced within six years from the date when infringement took place. The alleged infringement took place in 1994, and the proceeding was commenced on 6 August 2003. Accordingly, the claim was bound to fail. 5 After examining the case law on the elements of the tort of passing off, the primary judge concluded that this claim was untenable. The applicant could not establish that he had an established reputation or goodwill in the Smartflex product as at July 1994 or later. Further, her Honour said that any such claim was barred by s 5(1) of the Limitation of Actions Act 1958 (Vic). The conduct complained of took place prior to August 1997. 6 The primary judge thus concluded that the applicant's case was "plainly untenable" and dismissed it under Order 20 rule 2. 7 In my view Kenny J's decision is not attended by sufficient doubt to warrant it being reconsidered by a Full Court. I agree with her Honour's description of the applicant's case as "plainly untenable". It is a case that invited dismissal under Order 20 rule 2. 8 In determining whether to grant leave it is also necessary to consider whether substantial injustice would result if leave were refused, supposing the decision to be wrong. As was said in Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397, the "doubt" and "injustice" questions bear upon each other. See also Applicant M189 of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 131. In view of the absence of any prospect of success on an appeal, if leave were granted, it is artificial to suppose the decision below is wrong. In these circumstances, I am not satisfied that substantial injustice would result from a refusal of leave. 9 The application for leave is out of time, and no application for an extension of time has been filed. However I will treat the applicant as applying for such an extension. I will dismiss that application for two reasons. The first is that he has offered no explanation for failing to apply within time. See Deighton v Telstra Corporation (unreported decision of the Full Court, 17 October 1997). The second is because, in view of what I have said about his prospects of success on an appeal, there is no point in extending time in which to seek that leave. 10 The applicant has submitted that the primary judge erred in holding that some of the claims were statute barred. He handed up a piece of paper in which he says that he has been in contact with the Law Institute, the Supreme Court and the High Court, and has been told by officers of those bodies that there is "no rule, act or law in existence that interprets the term 'statute barred' in any law court tabloids". Whatever that is intended to convey, two things must be said. The first is that there is no doubt as to the applicability of the time provision in s 134 of the Copyright Act or that in s 5(1) of the Limitation of Actions Act. The second is that the primary judge relied on the limitation provisions as an additional reason for holding the relevant claims to be untenable. Quite apart from those provisions, her Honour would have made the same order that is now the subject of the application for leave to appeal.