Ginos Engineers Pty Ltd v Autodesk Australia Pty Ltd

6 (iii) Quite apart from any question as to whether a proceeding against Autodesk Australia alone as the alleged exclusive licensee could be said to be properly constituted: see Copyright Act s 120; the claim itself was - and should have been seen by Ginos' lawyers to have been - wholly misconceived. The Copyright Act gave no such cause of action as alleged. And the relief sought was not itself an appropriate subject of declaratory relief. 7 (iv) Some time after the Adelaide proceedings were instituted proceedings were brought in New South Wales by Autodesk Australia, Autodesk Inc and Autodesk Asia Pte Ltd (for the need for these three parties, see Copyright Act, s 120) against Ginos and its director alleging breaches of copyright for which appropriate relief was sought. 8 (v) On 17 August 2007 the solicitors for Autodesk Australia in the Adelaide proceedings wrote to the applicant's solicitors indicating that the proceedings not only was brought without notice, but also was "improperly constituted and hopelessly flawed". It alleged that the proceedings disclosed no cause of action under the Copyright Act and had been filed against the wrong respondent as Autodesk Inc was the copyright owner and Autodesk Asia was the exclusive licensee of that copyright in Australia. It went on to note: Had your client given our client proper notice of the proposed application our client could have pointed out why the claim should not be filed and saved the parties and the court unnecessary time and expense. In the circumstances, our client intends to file an application to dismiss your client's claim and to seek payment of its costs. Autodesk Australia was later to concede that it had discovered that, for a period, it had been an exclusive licensee of Autodesk Inc and for that reason would be a proper party to infringement proceedings. 9 (vi) On 27 August 2007 Autodesk Australia filed a response in the Adelaide proceedings in which it sought orders under r 13.10 of the FMC Rules that the proceedings be stayed or dismissed as disclosing no reasonable cause of action and as being an abuse of process. Costs were sought. On 14 September 2007 orders were made setting down the dismissal application for hearing on 19 October 2007. 10 (vii) On 17 October 2007, Ginos responded to the respondent's solicitor's letter of 17 August. It disputed both whether the Adelaide proceedings failed to disclose a cause of action and whether it was improperly constituted. 11 (viii) At the hearing on 19 October 2007, Ginos' counsel was asked what his client intended to do with the Adelaide proceedings. He responded that: "my client's offer is that they be dismissed without costs". Shortly thereafter he indicated that the only argument was "a costs argument". These exchanges occurred after more than two hours of argument in relation to the summary judgment application. A short adjournment was given to allow counsel for Ginos to contact his client after which Ginos' counsel told the Court: My client's position is that he consents to the proceedings being dismissed and seeks an order as to costs in its favour, and the reason it seeks an order for costs is that the proceedings were properly and appropriately constituted. Unsurprisingly, Ginos' arresting costs proposal was opposed by the respondent. Further legal argument ensued for some time. It was devoted in part to a request for confidentiality by Autodesk Australia of an affidavit relating to its costs. I will return to this below. 12 (ix) Orders were then made dismissing Ginos' claim and adjourning the matter for further argument until a later date. 13 (x) The costs affidavit to which I referred above was sworn by Michael Williams, an intellectual property partner in Autodesk Australia's solicitor's firm. A confidentiality order was sought for an exhibit to it which contained a copy of invoices from the solicitors detailing all the legal work that had been carried out by the firm and its charges for that work. While Autodesk Australia indicated on 19 October 2007 that it was prepared to have it shown to Ginos' counsel, it did not want it to be shown to anyone else. Counsel refused to accept the exhibit on that basis. At the 4 December 2007 costs hearing after some argument, counsel for Autodesk Australia indicated his client would not oppose counsel for Ginos showing his client the exhibit and discussing it provided the client gave a confidentiality undertaking in relation to it. A further adjournment was reluctantly given until 6 December 2007 essentially for procedural fairness reasons, to enable counsel to discuss the exhibit with Ginos. 14 (xi) On 6 December 2007 his Honour rejected Ginos' application for costs and had "no hesitation": Ginos Engineers Pty Ltd v Autodesk Australia Pty Ltd [2007] FMCA 2156 at [30]; in acceding to Autodesk Australia's request for costs. In the event he awarded costs in a lump sum in the figure of $22,500. The appeal is against that order. There is no appeal against the Federal Magistrate's order rejecting Ginos' application for costs.

The Federal Magistrate's costs decision 15 I preface my consideration of this matter with the observations that, for present purposes, the award of costs was in his Honour's discretion: FM Act s 79; and that under r 21.02(2)(a) of the FMC Rules an order could be made setting the amount of the costs to be awarded. I would also note, as did the Federal Magistrate, that r 1.03 (insofar as presently relevant) provides: 1.03 Objects (1) The object of these Rules is to assist the just, efficient and economical resolution of proceedings. (2) … the Rules aim to help the Federal Magistrates Court: · to operate as informally as possible · to use streamlined processes · to encourage the use of appropriate dispute resolution procedures. … (4) To assist the Court, the parties must: · avoid undue delay, expense and technicality · consider options for primary dispute resolution as early as possible. In quoting the above, his Honour highlighted the word "economical" in r 1.03(1). For reasons I give below, I quite understand why he did. 16 Having quoted the above provisions (at [32]-[34]), the Federal Magistrate went on to say (at [35]): Given the objects to the rules and costs r.21.02, I have no hesitation in deciding to award costs here and calculated on a lump sum basis. Importantly, I would note in passing, his Honour had put the parties on notice at the 4 December 2007 hearing that he was predisposed to fix the costs himself and he indicated his reasons for so doing as the following exchange with the appellants' counsel illustrates: HIS HONOUR: Mr Scragg, this matter has come to an end. MR SCRAGG: Yes, I know, your Honour. The simple way is the usual order, that costs be taxed. That's a simple way - be agreed or taxed. HIS HONOUR: Mr Scragg, you've addressed me on that and I've also heard from Mr Hennessy about that. Given the way that this matter has progressed since it was commenced, the amount of time that has been spent at every step, I'm not disposed at the moment to make an order that the costs be taxed. Because I can see that it's simply going to result in one or other of the parties - or perhaps more accurately both - incurring considerable extra expense in sorting out the question of costs. I will return to this matter. 17 The Federal Magistrate then indicated in his reasons that he was assisted in determining the appropriate costs order by the affidavit of Mr Williams whom, he noted, had given similar evidence which was accepted in "other similar intellectual property cases". Mr Williams had been involved in numerous copyright infringement cases in this Court and in the Federal Magistrates Court. It is unnecessary for me to comment on the degree of similarity between the case before his Honour and those to which he referred. The case before him clearly was an appropriate one for a lump sum order irrespective of whether it could be said to be a complex one. The discretion given in r 21.02(2)(a) is not circumscribed. I would emphasise that no ground of appeal challenged directly the decision to make a lump sum order as such although ground 7 (which must fail as I will indicate) might be said to do so obliquely. Mr Williams' evidence was that in his experience costs are assessed for between 50 per cent and 70 per cent of the professional costs and disbursements expended on a matter. He was familiar with the work undertaken on the file and the accounts rendered in respect of this work; he provided an estimate of the costs that in his view were likely to be recoverable by the respondent in an assessment process, having regard to his experience of costs awards made in complex cases in the Federal Magistrates Court; he listed the items of work that had been undertaken; and, in the exhibit to his affidavit, he provided an itemised invoice of professional costs. He concluded that the total professional costs and disbursements that had been incurred or made (whether or not billed) totalled $24,558. He applied a 60 per cent recovery figure to that sum to produce a "taxed amount" of approximately $14,734.80. When account was taken of professional costs incurred after the date of Mr Williams' affidavit the total of professional costs became $45,136.39. A reduction of $380 was made to this figure (it represented work in the New South Wales proceeding) as were other minor reductions so reducing the total to $44,693.64. 18 His Honour went on to indicate that he had "studied the schedules". It is not clear whether this is a reference to the confidential exhibit (cf [44] of the reasons) or, perhaps more probably, to the schedule of costs referred to in r 21.10 of the FMC Rules (which schedule specifies lump sum orders for designated events but from which a federal magistrate could depart: r 21.10). In light of that he indicated he "would feel more comfortable with a reduction of 50% rather than the 60% that Mr Williams mentioned". He reduced the amount (rounded off) to $22,500 and ordered accordingly.

The Appeal 19 It is necessary to set out the grounds of appeal in full. They are: 1. The assessment was based on a rate of solicitor's charges of $632.50 and $687.50 per hour for senior practitioners, $319 per hour for a junior practitioners and $220 and $242 per hour for law clerks; such rates are significantly higher than the Adelaide rate which should have been applied and are unreasonable; 2(a). The assessment made no allowance in favour of the applicant for costs associated with a claim by the respondent that the applicant had sued the wrong party; the claim was not sustained; 2(b). The assessment made no allowance in favour of the applicant for costs awarded for the refusal by the respondent to consent to the production of the exhibit "MJW1" to the affidavit of Mr Williams, a director of the applicant, which refusal it eventually abandoned; 3. The assessment made no allowance in favour of the applicant for steps which duplicated work already done so as to make the further work unnecessary; 4. The assessment included costs incurred by the respondent in relation to another matter; 5. In making the assessment, the learned Judge should have used the scale of fees set out in rule 21 and should not have in the circumstances departed from that scale; 6. That a proper charge for the work in question, if taxed in accordance with the scale or otherwise, would have been approximately $5000 to $8000. 7. Contrary to the view of the Magistrate, it would not have imposed significant additional costs upon the parties to tax the respondent's costs on an item by item basis.

20 I would note immediately that the challenges made to the lump sum costs order in Grounds 1 to 5 relate to the manner in which the assessment was made. Ground 6 simply makes an assertion as to what the award might have been if they had been taxed. Whatever Ground 7's purpose was meant to be, it must fail for reasons I will later give. 21 Having noted the grounds I should emphasise they do not include: (i) an allegation of a denial of procedural fairness in the adjournment given from 4 December to 6 December; (ii) a challenge to Mr Williams' expertise and to the reception of his opinion evidence that was said to be inadmissible; or (iii) an allegation of inadequacy of reasons. Counsel for the appellant sought to raise these on the appeal. I refused to allow it. I should also indicate that at the hearing before the Federal Magistrate, Mr Williams was available for cross-examination. Counsel refrained from availing of this. Nonetheless, he proceeded to contend before his Honour that the invoice annexed to Mr Williams' affidavit disclosed unnecessary services being rendered, excessive charges being made and charges made for matters on which the respondent was unsuccessful. Additionally, he contended before me, surprisingly, that his submissions to the Federal Magistrate by way of criticism of Mr Williams' evidence were evidence before his Honour notwithstanding that no ruling or agreement to that effect was made. While his Honour invited counsel to put on evidence on the issue of costs and in relation to Mr Williams' evidence, again he refrained from so doing.

Lump sum awards 22 Rules of Court such as r 21.02(2)(a) of the FMC Rules and O 62 r 4(2)(c) of the Federal Court Rules, which empower a court to order a gross amount in costs instead of an amount determined after taxation, are well accepted as being directed to the avoidance of expense, delay and the protraction of litigation, whether the case be a complex or a simple one: see Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 119 at 120; Australasian Performing Rights Association Ltd v Marlin [1999] FCA 1006; Nine Films & Television Pty Ltd v Ninox Television Ltd [2006] FCA 1046; see generally on fixing of costs by courts, Dal Pont, Law of Costs (2003) at [15.14] ff and Quick on Costs at [6.20]. 23 It is inconsistent both with the terms of r 21.02(2)(a) and to the clear objective in making a lump sum order that the costs in issue be subjected to the detailed scrutiny often applied in taxations: Leary v Leary [1987] 1 All ER 261 at 265; Dal Pont at [15.17] and [15.19]. In specifying a lump sum, it is well accepted that it is appropriate to apply a "much broader brush" than would be applied on a taxation: see Sony Entertainment (Australia) Ltd v Smith (2005) 215 ALR 788 at [196]-[200]. Nonetheless, the discretion to make a lump sum order, no less than the general discretion to order costs, must be exercised judicially and in accordance with principle. In particular in making a lump sum estimate the approach of the court should be "logical, fair and reasonable": Beach Petroleum NL at 123; Nine Films & Television Pty Ltd at [8]. 24 It is not uncommon, particularly, but not only, in intellectual property cases, for the court to take as its starting point the evidence of the charges for professional costs incurred and disbursements made by the lawyers of the party awarded costs - and this irrespective of whether the costs are to be estimated on an indemnity basis: cf Beach Petroleum NL at 120; or on a party and party basis: cf Universal Music Australia Pty Ltd v Miyamoto [2003] FCA 812 at [29] ff. That figure is then characteristically adjusted to take account of the acceptability of the charges made, the conduct of the proceeding, the measure of success on issues etc, to produce a sum which as a matter of judgment is neither overcompensatory nor prejudicial to the successful party. Consistent with the broad brush approach, that adjustment ordinarily is effected through the application of a discount to the figure accepted by the court on the available evidence as appropriately reflecting actual professional costs charged and disbursements made. The case law evidences wide variations in the percentages of discount sought and/or applied to reflect the exigencies of the matter in question: cf Sony Entertainment (Australia), 60%; Beach Petroleum NL, 39%, Nine Films & Television, 23%. What is clear is that a lump sum award may be in an amount that is greater or smaller than would have been the taxed costs payable: see Dal Pont at [15.20].

Consideration 25 As best I understand it, the appellant's case, though multipronged in its detail, was in essence that the Federal Magistrate in effect engaged in a taxation of costs in his treatment of Mr Williams' invoice. If he had engaged in a proper taxation in accordance with r 21.11 of the FMC Rules, it is contended, his Honour would have arrived at a far smaller sum for costs, hence the reference in ground 6 of the grounds of the appeal that a proper charge for work done, whether taxed or otherwise, would have been approximately $5,000 to $8,000. In essence, and considered in light of the oral submissions of the appellant's counsel, the complaint appears to be that the sum ordered was not just. The various grounds of appeal are, in a sense, illustrative of the central proposition. 26 The respondent's case, put shortly, is that the appeal is against an exercise of a "judicial discretion": cf House v The King (1936) 55 CLR 499 at 504; but neither the grounds of appeal nor the appellant's submissions disclose an appellable error in the circumstances. 27 Before dealing with the appellant's grounds, four general and/or contextual matters should be mentioned. First, it is clear from his Honour's reasons and from the transcript of the costs hearings on 4 and 6 December 2007 that the Federal Magistrate made plain to the parties that he was disposed to make a lump sum award to bring to an end what already had been a protracted litigation. As I earlier indicated, the appellant has not challenged his Honour's decision to make such an award, although it has been impugned obliquely by the repeated assertions that taxation should have been ordered and, if it had, a much lesser sum would have been payable by way of costs. 28 Secondly, I have referred above to the common practice of the use of evidence of the actual costs and disbursements charged to a successful party as providing the starting point for an estimation of an appropriate lump sum award. As again is clear from his Honour's reasons (at [36]), he was both aware of this practice (and, for that matter, of Mr Williams' prior involvement in giving such evidence in intellectual property cases) and how it might assist in arriving at an appropriate estimate of costs. It is, in my view, quite erroneous to assert that the Federal Magistrate engaged, or considered he was engaging, in a form of taxation, notwithstanding that Mr Williams gave evidence of what he expected would be the taxed amount payable on the sum billed. His Honour rightly chaffed at being asked to engage in a defacto taxation. At the 6 December costs hearing, he observed: HIS HONOUR: Could I interrupt you, Mr Hennessy. This matter seems to be proceeding pretty much like a taxation at this stage. It seems to me that what we're trying to do is avoid a taxation, so that you have to justify every particular item. In fact doesn't Mr Williams say that the discount really takes into account all of these arguments that might be presented about this taking too long or that not being completely on point or an issue has been won here or an issue lost there. Is that the case, or am I misunderstanding Mr Williams' evidence? MR HENNESSEY: With respect, both Mr Williams' evidence and what has just fallen from your Honour are precisely right.

29 Thirdly, both before his Honour, and again before me, counsel for the appellant engaged in a detailed dissection of the invoices exhibited to Mr Williams' affidavit descending into matters such as alleged excessive charging and services, account not being taken of "victories", the scales of costs for disbursements and lawyer's fees of various jurisdictions, the incidence of GST, etc. While it, doubtless, was open to him to comment upon the invoice and upon Mr Williams' evidence, he neither cross-examined Mr Williams nor put on evidence (expert or otherwise) on costs. Much in his submissions was in consequence devoid of any evidentiary foundation. It clearly was open to his Honour to accept Mr Williams' evidence as he did: see reasons [37]. I earlier indicated there is no ground of appeal challenging Mr Williams' evidence or the Federal Magistrate's reliance upon it. It is difficult to resist the conclusion either that counsel did not understand the function performed by the 50% discount in his Honour's estimation of the appropriate sum, or that he simply disputes the percentage chosen. The latter of these, though, is not reflected in any ground of appeal. 30 Fourthly, it again is clear from the transcript that the issues relating to the assessment agitated before me were raised before his Honour. It also is clear that considerable latitude was given to counsel for the appellant in raising issues before his Honour. As the Federal Magistrate said at the 6 December costs hearing: HIS HONOUR: … I wanted to give Mr Scragg every opportunity to put everything that he has, and he certainly has taken every point, as you say. It could never be said that he hasn't closely examined it all and brought up every possible argument, but really, I approach it somewhat differently, I think. I think I'm entitled to approach it somewhat differently.

31 In making this observation his Honour clearly was adverting to the objective in making a lump sum award and to the function of the discount rate to be applied in estimating an appropriate sum of costs. On the appeal, counsel for the appellant has sought to turn the latitude given him in raising "every possible argument" into a means of attack on the decision under appeal. It is said that, as the reasons did not disclose that the Federal Magistrate expressly addressed his arguments, his Honour has not taken them into account. It is perfectly clear that, as on the appeal, counsel raised a range of "arguments" which clearly were not relevant given his Honour's decision not to order costs to be taxed, or which necessarily were rejected given his Honour's acceptance of Mr Williams' evidence. Equally, when one has regard to the function performed by the discount rate chosen by his Honour, it is obvious, in my view, that account was taken of matters raised by Mr Scragg to the extent that they were relevant, or were not inconsistent with the evidence accepted by his Honour. Again I would note that there is no ground of appeal based on inadequacy of the Federal Magistrate's reasons though this appears to inform the above challenge to the reasons. 32 Turning briefly to the grounds of appeal, almost all of which have been implicitly rejected in what I have already said, I will merely note the following. 33 The ground 1 challenge to the practitioner's charge out rates "allowed" (which it is complained were higher than Adelaide rates) was the major matter raised by the Federal Magistrate with counsel for Autodesk Australia. Having regard to the facts that negotiations over the copyright were being held in Sydney prior to the institution of the Adelaide proceeding and that an advantage in those negotiations was being sought in initiating a proceedings in Adelaide (albeit one doomed to failure), it is unsurprising that Sydney lawyers were engaged for the purposes of the proceedings and that, in selecting the starting point for the lump sum estimates, the Sydney rates (being the actual rates charged the respondent) were employed but were then discounted. In short, the appellant misapprehends the process employed by the Federal Magistrate. It was not a taxation. The same comment can be made of grounds 2(a) and 2(b), but with the additional emphasis that a function of the discount is to avoid the necessity for engaging in detailed examination of the "allowances" referred to in those grounds. For my own part, given that the application was dismissed at the appellant's request and was in any event doomed, I do not consider that an "issues based" approach to costs, even if a taxation had been made, would have been appropriate in this matter. I need not enlarge upon this. Grounds 3 and 4 appear to relate to costs incurred in the New South Wales proceedings. It is to be noted that the invoice exhibited to Mr Williams' affidavit erroneously included a minor amount from those proceedings which amount was removed from the process of calculation at the 6 December hearing. A related allegation that an identical affidavit was used in both proceedings was conceded by Autodesk Australia, but the evidence is that it was prepared for the Adelaide proceedings. It was in consequence properly included in the costs incurred in that proceeding, howsoever it may be dealt with for costs purposes in the other proceedings. Ground 5 is simply misconceived. Ground 6 is at best a challenge to the fairness of the award made and, on the material before his Honour, I am not satisfied that the alleged unfairness has been made out. As to ground 7, I merely say in light of the matter's history, there was ample justification for his Honour taking the course he did. The course of this appeal is further testament to the need for finality and economy perceived by his Honour.

Conclusion 34 I will order that the appeal be dismissed with costs. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn.

Associate: Dated: 16 July 2008 Counsel for the Appellant: Mr P Scragg

Solicitor for the Appellant: Peter Scragg and Associates

Solicitor for the Respondent: Gilbert + Tobin Lawyers