GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd

The Arguments 6 GMH contends that this is not an appropriate case for costs to be apportioned between the parties on an issue-by-issue basis. It submits that costs should follow the event. GMH succeeded in establishing liability in its claim, and the extent that it failed on certain aspects of the claim should be reflected in a percentage reduction in the costs order. GMH submits that it succeeded in establishing liability in respect of 10 out of 13 SSS products and 7 out of 9 allegedly infringing designs. It submits that its success amounted to 54% of the value of the selling case presented at trial and its success will sound in declaratory relief. GMH submits that whilst it failed to establish liability in respect of the importation case, keeping case and offering for sale case, it succeeded in its selling case which was the more substantial of the four. Based on various metrics analysed in the affidavit of Mr Round, GMH concludes that 85% of the claim concerned the selling case and that GMGTO succeeded in approximately 50% of that case, having regard to the number of invoices, units sold and value of the sales. GMH arrives at a figure of 35% to represent its measure of success in the claim, to which should be added a 10% uplift to account for what GMH characterises as SSS' unreasonable conduct that led to additional costs. GMH further submits that the cross-claim was wholly unsuccessful as both a defensive measure, and in impeaching the conduct of GMH and its legal representatives to stifle their ability to rely on registered design rights to ever again send letters of demand. 7 SSS submits that the costs of the claim and of its cross-claim should be considered together. Its global submission is that it has had considerable success in defending the more substantial infringement claim advanced by GMGTO and its limited success in the cross-claim should be addressed by a reduction in the costs that GMH must pay SSS overall. SSS submits that an appropriate balance is that GMH pay 60% of its overall costs. In this regard, it contends that it was successful in the importing, keeping and offering for sale aspects of the claim and should have its costs of those. In respect of the selling case, SSS submits that GMGTO succeeded in respect of only a relatively small number of selected transactions, the value of which was minuscule relative to the total costs involved.

Consideration 8 The legal principles to be applied in the consideration of the making of costs orders are not in dispute. In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (No 2) [2018] FCAFC 100 the Full Court (Middleton, Nicholas and Burley JJ) said at [5] - [7]: [5] The discretion of the Court in relation to costs is well established. As the Full Court recently observed in Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7 (Idenix) at [3]: …Section 43 of the Federal Court of Australia Act 1976 (Cth) gives the Court a wide discretion in awarding costs. The exercise of the Court's discretion is not without principles or practices; it must be exercised judicially (Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61 at [305] per Bennett, Besanko and Beach JJ). The ordinary rule is that costs follow the event, although a successful party may be awarded less than its costs, or costs may be apportioned, based upon success on the issues (Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 327 ALR 192; [2015] HCA 53 at [6] per French CJ, Kiefel, Nettle and Gordon JJ; Les Laboratoires Servier at [297] to [298] and [303]). [6] Every case must be decided on its own facts. There is no doubt that this Court could address the costs of the appeals and the cross appeals compendiously. In Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 3) (Sanofi-Aventis) the Full Court addressed the costs of the appeal and cross-appeal together at [26], despite Apotex failing in its challenge to validity on various grounds (see at [8]). In Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) (Tramanco) the Full Court similarly dealt with costs compendiously (at [13]), and noted the difficulties with disentangling the costs of different issues (at [12]). [7] Further, a percentage reduction approach may also be appropriate in some cases. Such an approach was adopted in Idenix and in Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (No 2) [2017] FCAFC 158. 9 In some cases it is appropriate that a party, although successful, have costs awarded against it. As the Full Court held in Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 (Bennett, Besanko and Beach JJ): [301] ...Courts have been increasingly concerned, generally, to use all proper means to encourage parties to consider carefully what matters they will put in issue in their litigation. This has led to decisions whereby the successful party does not recover all of its costs where it has been unsuccessful on a discrete issue or in what is decided to be an unmeritorious objection. While it is acknowledged that, ordinarily, costs follow the event, the wide discretion in awarding costs has led to circumstances where a successful party who has failed on certain issues may be ordered to pay the other party's costs of them (as discussed in Hughes v Western Cricket Association (Inc) [1986] ATPR 40-748 per Toohey J), although warnings have been stated that care should be taken in such a course and consideration be given to whether the issues on which the successful party failed are clearly dominant or separable (Waters v PC Henderson (Australia) Pty Ltd (1994) 254 ALR 328 at 330 to 331 per Mahoney JA) and to whether the issues involved different factual enquiries in the one proceeding or multiple causes of action, even if based on a common substratum of fact. [302] Many of the authorities are discussed in Hockey v Fairfax Media Publications Pty Limited (No 2) [2015] FCA 750 per White J at [85] to [91]. In that case, his Honour found (at [100]) that the applicant failed on the 'principal focus at trial, and the parties' work which preceded it'. However, White J noted that the submissions concerning that subject matter were not wholly discrete from the claims on which he succeeded and that he had some success on matters having a common substratum of fact and law. His Honour did not order him to pay some of the respondents' costs, but instead reduced the costs to which he was entitled. 10 In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (No 2) [2017] FCAFC 158 the Full Court (Greenwood, Rares, Moshinsky JJ) said: [10] In Queensland North Australia Pty Ltd v Takeovers Panel (No 2) (2015) 236 FCR 370, Dowsett, Middleton and Gilmour JJ, after referring to Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 and State of Victoria v Sportsbet Pty Ltd (No 2) [2012] FCAFC 174, said at [11] that these decisions treat the success or failure of the relevant party as being the starting point in consideration of the question of costs, but contemplate at least three distinct categories of situation in which a successful party might be deprived of costs, or even ordered to pay the costs of the other side. These were identified as follows: One such category is where the applicant has been only partially successful in that it has not obtained all of the relief sought. The second category is where a party has succeeded in obtaining the relief sought, but has not succeeded on all bases (factual or legal) upon which it sought such relief. Of course, it is possible that a particular outcome will fall into both categories. A third category involves consideration of the successful party's conduct of the case. [11] After referring to the decision of Finkelstein and Gordon JJ in Bowen Investments Pty Ltd v Tabcorp Holdings Ltd (No 2) [2008] FCAFC 107, Dowsett, Middleton and Gilmour JJ in Queensland North Australia then said at [18]: [Section 43 of the Federal Court of Australia Act] does not mention costs following the event. In Ruddock, Bowen Investments and Sportsbet, the Court proceeded on the basis that ordinarily, the successful party may reasonably expect to receive its costs, whether that outcome be described as costs following the "event" or otherwise. The question of costs is within the Court's discretion. As we have said, relevant factors include the extent of a party's success, the extent of its success or failure on individual issues and its conduct of the proceedings. 11 In the present case, the Court is urged to make orders for costs based on the relative success of the parties in the claim and the cross-claim. The difference between them lies in their respective views as to who was successful in the litigation. In one aspect of its argument SSS contends that it was, in effect, the successful party in the GMGTO claim and as a consequence it should have a proportion of its costs of that. In my view this does not correctly characterise the result. Although SSS successfully fended off a substantial part of the GMGTO claim, GMGTO was nevertheless successful in establishing infringement in limited instances. 12 In my view the claim and cross-claim should be treated separately. Although both concerned the application of the repair defence as defined in s 72 of the Designs Act 2003 (Cth) to some degree, the contexts were quite different. In the claim, the question involved consideration of the repair defence in the context of the use and proposed use of the impugned products by SSS and its actual and prospective customers. That involved a significant body of evidence addressing the knowledge of the individuals within SSS alleged to have the requisite non-repair purpose, and the information available to them and also, in the context of the selling case, the factual matrix surrounding each transaction. In the cross-claim, the quite separate question arose as to whether certain correspondence sent on behalf of GMH amounted to wrongful threats under s 77 of the Designs Act; a related enquiry was the relevance and operation of s 72 in the context of an action for unjustified threats. Furthermore, the time spent and evidence required in relation to the claim was very much larger than required for the cross-claim. There would be an arbitrary and potentially unfair outcome if one were to apply discount factors arising from the costs of the cross-claim to the costs of the combined claim and cross-claim. 13 In relation to the claim, the essence of what was at issue concerned the construction of the statute and the application of s 72 of the Designs Act to the facts. GMH advanced its case in relation to four different categories of infringement being: (a) importing; (b) keeping; (c) offering for sale; and (d) selling. 14 Viewed in this manner, it is appropriate to treat the claim as a single event such that the failure on the part of GMH to establish infringement in relation to (a) - (c) does not of itself yield the result that it should pay the SSS costs of those aspects of the case. Rather, GMH is to be seen as having succeeded in a minority proportion of the case as a whole, with the consequence that SSS should be required to pay a portion of the costs. 15 In relation to the selling aspect of the claim, GMH, by reference to several metrics set out in the affidavit of Mr Round, concludes that its success is in the order of 42.5% of the overall value of the claim. It contends that this can be rounded down to 35% to account for any errors and to accommodate a costs order made in favour of SSS on the question of the provision of particulars, and the costs of the proceedings discontinued against Mr Ung and SSS Adelaide, but submits that there should be an upward adjustment of 10% to account for what it characterised as the unreasonable conduct by SSS in the proceedings, arriving at a total of 45% of the costs that it has incurred on the claim. Mr Benjamin's evidence does not respond to the estimates provided by Mr Round in relation to the claim. 16 In my view Mr Round's assessment of 42.5% somewhat overstates the success of GMGTO. In particular, it does not take into account the failure of the broad-ranging attack on the business methodology of SSS as being not for a repair purpose, having regard to the lengthy history of SSS in accommodating the various GMH demands over time to adjust its business practices. These matters are addressed in sections 5.2 - 5.4 of GM Global, and were directly material to the failure of the claims advanced in respect of the alleged importation, keeping and offering for sale of the impugned products that were addressed in sections 6, 7 and 8 of those reasons. They were also relevant to the selling aspect of the case. Furthermore, in my view the better metric of success of the selling aspect of the claim is by reference to the proportion of representative transactions found to infringe, because each representative transaction involved its own factual context. In this regard, GMGTO succeeded in 7 out of 26 of its pleaded representative transactions, which I will adjust upwards to representing about 30% of the representative transactions as a whole. 17 Taking these matters together, and adopting the broad brush or impressionistic approach that is encouraged both by the present parties and the authorities, in my view the overall success that GMGTO had in the proceedings sits at about 25% of the whole of the claim. That accounts for its failure in relation to each of the importing, keeping for sale and offering for sale cases and its limited success in relation to its selling case. I accept the submission advanced by GMH that it is appropriate for previous costs orders to be consolidated with the orders that I will make now (see paragraphs 3.6 - 3.9 of the Costs Practice Notice (GPN-COSTS)). It seems in that regard that a further reduction of 5% is appropriate, to take into account costs orders in favour of SSS arising from the discontinuance of proceedings against Mr Ung and SSS Adelaide and also the costs order in favour of SSS for the provision of particulars. This approximates to the allowance made for these costs by Mr Round. That brings GMGTO's entitlement to costs of its claim to 20%. 18 Two further factors were raised by the parties that require consideration. The first is the contention advanced on the part of GMH that a 10% upward adjustment should be made in its favour because SSS conducted the case in a manner that was unreasonable. In this regard it submits that SSS unreasonably refused to adopt a representative transaction approach, advanced arguments that were abandoned close to the trial, gave oppressive and largely irrelevant discovery, and failed to produce for inspection certain critical documents until two days before the trial. These matters were addressed at length in the affidavit of Mr Round. They are addressed at length in response in the affidavit of Mr Benjamin. After considering the detail of the various allegations, in my view they come to something of a tearful draw. The case concerned the construction of an untested and somewhat difficultly worded section of the Designs Act. Each party took a different view (consistent with its own interests) as to the correct approach. It was regrettable that the parties did not until trial take a more constructive and collaborative attitude to the question of representative examples. GMH first made proposals that were somewhat to its partisan benefit but then later put forward a statement of agreed facts that with development might have paved the way. SSS did not meaningfully respond to that proposal, but later invited GMH to indicate what examples it intended to proceed with for the conduct of the claim, to which there was no apparent response. There is really no good reason why the parties did not work this all out before the trial, but it is not apparent from the materials now available that any side was less reasonable than the other. The other matters to which GMH refers in its submissions do not materially affect the balance. 19 The second factor is the proportionality of the result to the costs of the proceedings. SSS submits that in the present case, the success of GMGTO was nominal, and that this supports an award of costs in its favour. In this regard the evidence indicates that: (a) the accumulated total costs for the claim of both parties are in excess of $3.5 million; (b) the total sale value of the 8 transactions (including one unpleaded transaction) in respect of which infringements have been found is $27,144; and (c) further agreed infringing transactions add an additional total sale value of $37,859. 20 Had damages been determined, and were damages the only aspect of the proceedings at play, it may be thought that r 40.08 of the FCR had some application: see Eat Media Pty Ltd v Mulready Media Pty Ltd [2009] FCA 1058 at [30] (Flick J); Shahid v Australasian College of Dermatologists (No 2) [2008] FCAFC 98 (Branson, Stone, Jessup JJ) at [14], [15]. However, having regard more broadly to the manner in which the parties have conducted the proceedings, the novelty of the s 72 repair defence, the issues of construction involved and declaratory relief sought, I do not presently consider that the rule has application. No party suggests otherwise. Moreover, GMH was entitled to test whether or not SSS' conduct infringed the Designs Act. Its success in establishing partial infringement was not nominal, in contrast to the position found in ACN 074 971 109 (as Trustee for the Argot Unit Trust) v National Mutual Life Association of Australasia Ltd (No 2) [2013] VSCA 241; 41 VR 476 at [203] - [204] (per Nettle JA, Neave JA and Robson AJA). Whilst it may be tempting to apply a discount to costs awarded in favour of GMH on the basis of the apparent disparity between the value of sales found to infringe and the apparent effort in terms of costs expended by both sides in achieving that result, the disparity is largely explained by the novelty of s 72 and the diametrically opposed views of the parties on the questions of constructions and its application to the facts. Accordingly, the temptation in the present case is resisted. 21 In relation to the cross-claim, SSS succeeded in establishing that GMH had made unjustified threats to bring design infringement proceedings in relation to the Panel House, Carparts and Torq suppliers. It also succeeded in establishing that wrongful threats of copyright infringement were made to Holmart. These amount to four of the 12 alleged breaches. Whilst SSS advanced additional arguments going to the breaches that were unsuccessful, the result is that SSS has been vindicated as to 33% of its cross-claim. Although GMH advances submissions to the effect that proportionately, more time was spent on unsuccessful arguments than those that succeeded, in my view that does not detract from the proposition that SSS achieved a measure of success in its cross-claim, and should have its costs as reflected in that measure. 22 GMH submits that SSS pursued various allegations in relation to the letters the subject of the unjustified threats claim that were abandoned. It also submits that there were numerous interlocutory actions initiated by SSS, including the application for leave to amend referred to below, a notice to produce, additional discovery requests, and subpoenas. It submits that those costs were wasted as SSS either lost the aspects of the cross-claim to which they related or abandoned them prior to the hearing. 23 GMH submits that on 5 December 2016 Murphy J heard an interlocutory application by SSS to amend its cross-claim to join General Motors LLC as a party. In its submissions, GMH contends that the Court ordered that the costs of the application be reserved and that GMH should now be awarded its costs of that application. Upon closer inspection, that submission is factually incorrect; his Honour ordered that the costs of and incidental to that application be costs in the cause. 24 Having regard to the evidence filed, and again taking an impressionistic view of the outcome of the proceedings, an award in favour of SSS, discounted by 70%, provides an appropriate apportionment of the costs of the cross-claim having regard to the success achieved by SSS. I am not satisfied that the additional matters to which GMH refers in its submissions warrant a greater discount of the costs, or an order that SSS pay GMH's costs of the cross-claim. The costs of the interlocutory application of 5 December 2016 should be included within the assessment of the 30% awarded in favour of SSS. 25 GMH wishes to oppose a lump sum costs order, or consider opposing such an order depending on the rulings made as to the apportionment of costs. It submits that the appropriate order is for the parties to have an opportunity to confer following the delivery of the reasons and if necessary make submissions as to the appropriateness of any lump sum costs order. In this regard it foreshadows resistance to a lump sum order being made in favour of SSS on its cross-claim on the basis that the amount of costs sought may be unreasonable and more appropriately the subject of taxation. Whilst I am reluctant to add yet further stages to this protracted litigation, this course will be adopted. 26 Finally, there was a debate between the parties as to who should pay the costs of steps taken since judgment was delivered. The affidavit evidence indicates that this involved discussion between the parties as to how the results of the example transactions considered in the judgment were to be applied to the remaining transactions, as well as the present submissions concerning costs. They should be costs in the cause of the GMGTO claim, discounted in the same measure.

Disposition 27 I am satisfied that it is appropriate to make the agreed declarations of infringement of the Designs Act and Copyright Act 1968 (Cth) by each of SSS and GMGTO. I will order that subject to the determination of any pecuniary relief, which has been reserved for separate determination (should that be necessary), the claim and the cross-claim be dismissed. 28 In relation to the question of costs, the orders will be that: (1) All prior costs orders in the proceedings be vacated. (2) The respondents are to pay 20% of the applicant's costs of the claim, including the costs incurred after delivery of GM Global, on an ordinary basis. (3) The cross-respondents are to pay 30% of the cross-claimants' costs of the cross-claim on an ordinary basis. (4) The parties are to confer and within 14 days notify the Court whether they agree that costs are to be awarded on a lump sum basis. If so then orders (a) - (d) below will be made: (a) The applicant be awarded a lump sum for its costs instead of any taxed costs in an amount to be determined by a Registrar of the Court. (b) The cross-respondents be awarded a lump sum for its costs instead of any taxed costs in an amount to be determined by a Registrar of the Court. (c) The Registrar is directed, pursuant to r 1.37 of the FCR, to determine the quantum of the costs in (a) - (b) in such a manner as she or he deems fit including, if thought appropriate, on the papers. (d) The Registrar is directed at the conclusion of the process to order the parties liable, as identified in (2) and (3), to pay whatever sums have been determined within 28 days. (5) If the parties do not agree that costs should be awarded on a lump sum basis, then they are to within 21 days provide short minutes of order setting out a timetable for the resolution of the remaining issues. If the parties do agree that costs are to be awarded on a lump sum basis, they are to supply short minutes of order to the Court within 21 days in accordance with 4(a) - (d) above, together with orders for the disposition of the balance of the proceedings. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Burley.