Christodoulou v Disney Enterprises Inc

REASONS FOR JUDGMENT 1 Mr Christodoulou sued the respondents (collectively, Disney) for infringement of his Australian Registered Trade Mark No. 631891 consisting of the words THE HUNCHBACK OF NOTRE DAME. Crennan J dismissed the claim, holding that Disney's use of the words was not use as a trade mark: Christodoulou v Disney Enterprises Inc [2005] FCA 1401. 2 Mr Christodoulou appealed. On Disney's application, Merkel J made an order for security for costs in the amount of $10,000: Christodoulou v Disney Enterprises Inc [2006] FCA 38. Mr Christodoulou duly paid that amount into court. 3 On 30 May 2006 Mr Christodoulou filed a notice of motion (the first motion) seeking orders that he "be permitted to discontinue" the appeal and that the $10,000 be returned to him. On the same day he filed a document headed "Notice of Discontinuance Order 22 rule 2" which stated that he "pursuant to the leave of the Court granted on 31 May 2006 [the return date of the first motion] (if leave is obtained) discontinues" the appeal. 4 If a notice of discontinuance is filed by an appellant before the hearing of the appeal, no leave is needed. The appeal is taken to be abandoned and the appellant becomes liable to pay the respondent's costs: Federal Court Rules O 52 r 19 (O 22 r 2 referred to in Mr Christodoulou's document applies to discontinuance of proceedings at first instance, not appeals). However, the Court would have a broad discretion, arising from s 43(2) of the Federal Court of Australia Act 1976 (Cth), to make some other order as to costs. 5 On 6 July 2006, the day before the adjourned return of the first motion, Mr Christodoulou filed another notice of motion (the second motion) seeking orders that he "be permitted to withdraw the 'Notice of Discontinuance' and notice for return of Security of Costs" and that he be "permitted to continue" the appeal. 6 I raised with Mr Christodoulou, who appeared in person, as he did at the trial, and Mr Bova of counsel for Disney, whether a single judge had jurisdiction to deal with either motion. Having further considered the matter, I am satisfied that I do not have such jurisdiction. 7 Section 24(1) of the Act confers jurisdiction on the Federal Court to hear and determine certain appeals including, by par (a), appeals from judgments of the Court constituted by a single judge. 8 Section 25(1) provides that the appellate jurisdiction of the Court shall, subject to that section and to the provisions of any other Act, be exercised by a Full Court, that is to say three or more (or, in certain limited circumstances, two) judges, sitting together: s 14. 9 Subsections (1A), (1AA) and (1B) of s 25 make certain provisions, not relevant here, for appeals from the Federal Magistrates Court. Subsections (2), (2A), (2B) and (2C) deal with the circumstances in which a single judge may deal with matters relating to appeals. These are the exceptions, contemplated by subs (1), to the rule that the appellate jurisdiction must be exercised by a Full Court. They provide: "(2) Applications: (a) for leave or special leave to appeal to the Court; or (b) for an extension of time within which to institute an appeal to the Court; or (c) for leave to amend the grounds of an appeal to the Court; or (d) to stay an order of a Full Court; may be heard and determined by a single Judge or by a Full Court. (2A) The Rules of Court may make provision enabling applications of the kind mentioned in subsection (2) to be dealt with, subject to conditions prescribed by the Rules, without an oral hearing. (2B) A single Judge or a Full Court may: (a) join or remove a party to an appeal to the Court; or (aa) give summary judgment; or (b) make an order by consent disposing of an appeal to the Court (including an order for costs); or (ba) make an order that an appeal to the Court be dismissed for want of prosecution; or (bb) make an order that an appeal to the Court be dismissed for: (i) failure to comply with a direction of the Court; or (ii) failure of the appellant to attend a hearing relating to the appeal; or (bc) vary or set aside an order under paragraph (ba) or (bb); or (c) give directions about the conduct of an appeal to the Court, including directions about: (i) the use of written submissions; and (ii) limiting the time for oral argument. (2C) The Rules of Court may make provision enabling matters of the kind mentioned in subsection (2B) to be dealt with, subject to conditions prescribed by the Rules, without an oral hearing." 10 It is clear that neither of the present motions come within any of the defined conferrals of appellate jurisdiction on single judges. Mr Bova suggested that subs (2)(b) might be relevant since if Mr Christodoulou obtained leave to withdraw his notice of discontinuance he would presumably need leave to file a fresh notice of appeal out of time. But that is not one of the orders sought by the motions in question. Any question of extension of time would not arise unless and until Mr Christodoulou obtained the orders sought in the second motion. 11 Mr Bova also submitted that I should conclude that the Court had no power to set aside the notice of discontinuance because Mr Christodoulou had not satisfied either of the two possibly applicable criteria. The first requires it to be shown that the withdrawal is a nullity; the Court needs to be satisfied the discontinuance was not the result of a deliberate and informed decision such as where (to take some non-exhaustive examples) it is the result of fraud or mistake: R v Medway [1976] 1 All ER 527 at 543. The second, more liberal, view is that the Court has power to set aside the discontinuance as part of its inherent power to prevent injustice: Applicant NACT of 2001 v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 316 at [4], Applicant A26 of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 1050 at [5]. 12 Mr Bova says that Mr Christodoulou's failure to satisfy either test means there is no jurisdiction, appellate or otherwise, to exercise. 13 The problem with this argument is that it would require me to embark on a consideration of the substance of Mr Christodoulou's applications. While it is true that no circumstances are raised by him which would suggest that the discontinuance was a nullity, he vigorously asserted that it would be unjust, and indeed contrary to the public interest, were he not allowed to resume his appeal. To decide on the merits or otherwise of his arguments I would be exercising the very jurisdiction which s 25 seems to say I do not have. 14 The question has been touched on in two decisions of judges of this Court. In NACT (supra) Jacobson J, as already mentioned, held that there was power in the Court to set aside the notice of discontinuance, but dismissed the application. However, the question whether the jurisdiction could be exercised by a single judge was not raised before his Honour and was not mentioned. 15 In NACU v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 1444 the appellant was the wife of the appellant in NACT. In the husband's case an application for special leave to appeal to the High Court had taken the point that the application should have been heard by a Full Court. In NACU Hill J at [8] expressed "some misgivings" about jurisdiction, but apparently on the basis that following a discontinuance the proceedings were at an end and there is nothing that could go before a Full Court. If there was power to set aside a discontinuance, to his Honour it was "not immediately apparent how the application (was) one that really resides in the Full Court". If it did, his Honour did not think that s 25 would permit the Full Court jurisdiction to be exercised by a single judge. In any event, his Honour decided to follow Jacobson J, partly because the husband was seeking special leave from the High Court and that the two cases "should be kept together" (at [10]). 16 As identified by Hill J, there are really two questions: · Once a notice of discontinuance of an appeal has been filed and served, does the Court have any jurisdiction at all? · If yes, can that jurisdiction be exercised by a single judge? 17 As to the first question, there is strong authority to the effect that non-compliance with an order that an appeal be dismissed in default of some procedural step being taken by the appellant is terminal; in the event of non-compliance the appeal cannot be revived: Goodwin v Southern Tablelands Finance Co Pty Ltd (1968) 42 ALJR 309n, Bailey v Marinoff (1971) 125 CLR 529; see the discussion by Wilson J, with whom Brennan, Deane and Dawson JJ agreed, in FAI Insurance Co Ltd v Southern Cross Exploration NL (1988) 165 CLR 268 at 278-286. However, as FAI Insurance shows, particular rules of court may produce a different result. 18 In the present case what terminates the appeal is not non-compliance with a particular order, but the operation of O 52 r 19(1A), which provides that upon filing and service of the notice of discontinuance "the appeal is abandoned". Whether this makes any difference is, in my view, a matter that should be considered by a Full Court. One matter to be considered is whether Mr Christodoulou's "Notice of Discontinuance", which purports to be under the wrong rule and which is expressed to be conditional on the (unnecessary) permission of the Court, is a notice of discontinuance within the meaning of O 52 r 19(1). But the jurisdiction, if it exists, is a matter for exercise by a Full Court, since it is not within the statutory exceptions to s 25(1). If there is jurisdiction to allow withdrawal of a (valid) notice of discontinuance of an appeal, that is part of the appellate jurisdiction of the Court. It concerns the interlocutory management of appeals, just like the matters dealt with in subss (2) and (2B). It is not a matter within the original jurisdiction. 19 I will therefore order that the two motions be referred for hearing by a Full Court. To the extent that I have power to do so, I will reserve the costs. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.