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[2008] FCA 13
Federal Court of Australia
2008-01-11
Spender J
Original judgment source is linked above.
(a) refuse or neglect to do any act within the time specified in the Order for the doing of the act; or
(b) disobey the Order by doing an act which the Order requires you to abstain from doing,
you will be liable to imprisonment, sequestration of property or other punishment.
Any other person who knows of this Order and does anything which helps or permits you to breach the terms of this Order may be similarly punished.
TO: INTERNET MARKETING PTY LTD ACN 124 105 611 DONALD REID MARY CUNNINGHAM
This is a 'search order' made against you on 11 January 2008 by Justice Spender at a hearing without notice to you after the Court was given the undertakings set out in Schedule B to this Order and after the Court read the affidavits listed in Schedule C to this Order and received into evidence the exhibits 1-6 listed in Schedule C on the application for a Search Order.
(b) the time for service of the application, supporting affidavits and originating process is abridged and service is to be effected by 4pm on 25 January 2008.
(a) 'applicant' means the person who applied for this Order.
(b) 'independent computer expert' means the person identified as the independent computer expert in the search party referred to in Schedule A to this Order.
(c) 'independent solicitor' means the person identified as the independent solicitor in the search party referred to in Schedule A to this Order.
(d) 'listed thing' means any thing referred to in Schedule A to this Order.
(e) 'premises' means the premises and any of the premises identified in Schedule A to this Order, including any vehicles and vessels that are under the respondents' control on or about the premises or that are otherwise identified in Schedule A.
(f) 'search party' means the persons identified or described as constituting the search party in Schedule A to this Order.
(h) 'you', where there is more than one of you, includes all of you and includes you if you are a corporation.
(i) any requirement that something be done in your present means:
(A) in the presence of you or of one of the persons described in (6) below; or
(B) if there is more than one of you, in the presence of each of you, or, in relation to each of you, in the presence of one of the persons described in (6) below.
(b) any director, officer, partner, employee or agent of yourself; or
(c) any other person having responsible control of the premises.
This Order must be served by, and be executed under the supervision of, the independent solicitor.
Subject to paragraphs 10 to 20 below, upon service of this Order, you must permit members of the search party to enter the premises so that they can carry out the search and other activities referred to in this Order.
Having permitted members of the search party to enter the premises, you must:
(a) permit them to leave and re-enter the premises on the same and the following day until the search and other activities referred to in this Order are complete;
(b) permit them to search for and inspect the listed things and to make or obtain a copy, photograph, film, sample, test or other record of the listed things;
(c) disclose to them the whereabouts of all the listed things in the respondent's possession, custody or power, whether at the premises or otherwise;
(d) disclose to them the whereabouts of all computers, computer disks and electronic information storage devices or systems at the premises in which any documents among the listed things are or may be stored, located or recorded and cause and permit those documents to be printed out;
(e) do all things necessary to enable them to access the listed things, including opening or providing keys to locks and enabling them to access and operate computers and providing them with all necessary passwords;
(f) permit the independent solicitor to remove from the premises into the independent solicitor's custody:
(i) the listed things or things which reasonably appear to the independent solicitor to be the listed things and any things the subject of dispute as to whether they are listed things; and
(ii) the copies, photographs, films, samples, tests, other records and printed out documents referred to above; and
(g) permit the independent computer expert to search any computer and make a copy or digital copy of any computer hard drive and permit the independent computer expert or the independent solicitor to remove any computer hard drive and computer from the premises as set out in paragraphs 20 and 21 below.
This Order may not be executed at the same time as a search warrant (or similar process) is executed by the Police or by a regulatory authority.
You are not required to permit anyone to enter the premises until:
(a) the independent solicitor serves you with copies of this Order and any affidavits referred to in Schedule C (confidential exhibits, if any, need not be served until further Order of the Court); and
(b) you are given an opportunity to read this Order and, if you so request, the independent solicitor explains the terms of this Order to you.
Before permitting entry to the premises by anyone other than the independent solicitor, you, for a time (not exceeding two hours from the time of service or such longer period as the independent solicitor may permit):
(b) may ask the Court to vary or discharge this Order;
(c) (provided you are not a corporation) may gather together any things which you believe may tend to incriminate you or make you liable to a civil penalty and hand them to the independent solicitor in (if you wish) a sealed envelope or container; and
(d) may gather together any documents that passed between you and your lawyers for the purpose of obtaining legal advice or that are otherwise subject to legal professional privilege or client legal privilege, and hand them to the independent solicitor in (if you wish) a sealed envelope or container.
Subject to paragraph 22 below, the independent solicitor must not inspect or permit to be inspected by anyone, including the applicant and the applicant's solicitors, any thing handed to the independent solicitor in accordance with subparagraphs 12(c) and (d) above and the independent solicitor must deliver it to the Court at or prior to the hearing on the Return Date.
During any period referred to in paragraph 12 above, you must:
(a) inform and keep the independent solicitor informed of the steps being taken;
(b) permit the independent solicitor to enter the premises but not to start the search;
(d) comply with the terms of paragraphs 25 and 26 below.
Any thing the subject of a dispute as to whether it is a listed thing must promptly be handed by you to the independent solicitor for safekeeping pending resolution of the dispute or further Order of the Court.
Before removing any listed things from the premises (other than things referred to in the immediately preceding paragraph), the independent solicitor must supply a list of them to you, give you a reasonable time to check the correctness of the list, and give you and the applicant's solicitors a copy of the list signed by the independent solicitor.
The premises must not be searched, and things must not be removed from the premises, except in the presence of you or of a person who appears to the independent solicitor to be your director, officer, partner, employee, agent or other person acting on your behalf or on your instructions.
If the independent solicitor is satisfied that full compliance with the immediately preceding paragraph is not reasonably practicable, the independent solicitor may permit the search to proceed and the listed things to be removed without full compliance.
The applicant's solicitors and the independent solicitor must now allow the applicant in person to inspect or have copies of any thing removed from the premises nor communicate to the applicant information about its contents or about anything observed at the premises until 4.30pm on the Return Date or other time fixed by further Order of the Court.
(a) If it is expected that a computer will be searched, the search party must include a computer expert who is independent of the applicant and of the applicant's solicitors ("the independent computer expert").
(b) Any search of a computer must be carried out only by the independent computer expert.
(c) The independent computer expert may make a copy or digital copy of the computer hard drive and remove that copy or digital copy from the premises.
(d) The independent computer expert may search the computer or the copy or digital copy of the computer hard drive at the premises and/or away from the premises for listed things and may copy the listed things electronically or in hard copy or both.
(e) The independent computer expert must as soon as practicable and, in any event, prior to the hearing on the Return Date, deliver the copy or digital copy of the computer hard drive and all electronic and hard copies of listed things to the independent solicitor, together with a report of what the independent computer expert has done including a list of such electronic and hard copies.
(f) The independent solicitor must, at or prior to the hearing on the Return Date, deliver to the Court all things received from the independent computer expert and serve a copy of the latter's report on the parties.
(g) If no independent computer expert has been appointed, but the independent solicitor considers it necessary to remove a computer from the premises for safekeeping or for the purpose of copying its contents electronically and printing out information in documentary form, the independent solicitor may remove the computer from the premises for that purpose and cause that purpose to be achieved.
(a) Unless you are a corporation, you are entitled to object to paragraphs 20(b) to (f) on the ground that they might tend to incriminate you or make you liable to a civil penalty.
(b) You are also entitled to object to paragraphs 20(b) to (f) on the ground that the computer contains material that is otherwise privileged.
(c) Upon communicating any objection under paragraph (a) or (b) to the independent solicitor, paragraphs 20(b) to (f) become inoperative to the extent that you have objected to them. In that event, if the applicant's solicitor communicates to the independent solicitor that the applicant proposes to contest the objection:
(i) the independent computer expert shall remove the computer hard drive (or, if that is not practicable, the computer) from the premises and deliver it into the custody of the independent solicitor who shall deliver it to the Court at or prior to the Return Date;
(ii) on the Return Date or on another date, the applicant may apply to the Court for Orders to similar effect as paragraphs 20(b) to (f) and if you object, the Court may adjudicate upon your objection.
Prior to the Return Date, you or your solicitor or representative shall be entitled, in the presence of the independent solicitor, to inspect any thing removed from the premises and to:
(b) provide the independent solicitor with a signed list of things which are claimed to be privileged or confidential and which you claim ought not to be inspected by the applicant.
(a) at or before the further hearing on the Return Date (or within such further time as the Court may allow) to the best of your ability inform the applicant in writing as to:
(ii) the name and address of everyone who has supplied you, or offered to supply you, with any listed thing;
(iii) the name and address of every person to whom you have supplied, or offered to supply, any listed thing; and
(iv) details of the dates and quantities of every such supply and offer;
(b) within 10 working days after being served with this Order, make and serve on the applicant an affidavit setting out the above information.
(b) This paragraph (24) also applies if you are a corporation and all of the persons who are able to comply with paragraph 23 on your behalf and with whom you have been able to communicate, wish to object that compliance may tend to incriminate them or make them liable to a civil penalty.
(c) You must, at or before the further hearing on the Return Date (or within such further time as the Court may allow), notify the applicant in writing that you or all the persons referred to in (b) wish to take such objection and identify the extent of the objection.
(d) If you give such notice, you need comply with paragraph 23 only to the extent, if any, that it is possible to do so without disclosure of the material in respect of which the objection is taken.
(e) If you give such notice, the Court may give directions as to the filing and service of affidavits setting out such matters as you or the persons referred to in (b) wish to place before the Court in support of the objection.
The premises located at Unit 89, 62 Cordelia Street, South Brisbane, QLD.
(i) any paper or other material on which there is writing; and
(ii) any paper or other material on which there are marks, figures, symbols or perforations having a meaning for a person qualified to interpret them; and
(iii) any disc, tape, computer or other article or any material from which sounds, images, writings or messages are capable of being produced or reproduced (with or without the aid of another article or device),
relating to the importation, supply, distribution and sale of the counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" whatsoever or which otherwise infringe the Trade Mark.
Search Party
Mr Luke Fox McInnes Wilson Lawyers Level 14, Central Plaza One 345 Queen Street BRISBANE Q 4000
(a) Mitchell Bezzina of Forensic Data, 9/100 Eagle Street Brisbane Qld 4000 in the capacity of independent computer expert.
(1) The applicant undertakes to submit to such Order (if any) as the Court may consider to be just for the payment of compensation (to be assessed by the Court or as it may direct) to any person (whether or not a party) affected by the operation of this Order.
(2) The applicant will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.
(3) The applicant will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4.30pm on the Return Date.
(4) If the applicant has not already done so, as soon as practicable, the applicant will file a Notice of Motion for hearing on the Return Date and an originating process.
(5) The applicant will insure the things removed from the premises against loss or damage for an amount that reasonably appears to the applicant to be their full value.
Undertakings given to the Court by the applicant's solicitor:
(1) The applicant's solicitor will pay the reasonable costs and disbursements of the independent solicitor and of any independent computer expert.
(2) The applicant's solicitor will provide to the independent solicitor for service on the respondent copies of the following documents:
(b) the Application for this Order for hearing on the Return Date;
(c) the following material insofar as it was relied on by the applicant at the hearing when the Order was made:
(ii) exhibits capable of being copied (other than confidential exhibits);
(iv) any other document that was provided to the Court;
(d) a transcript, or, if none is available, a note, of any exclusively oral allegation of fact that was made and of any exclusively oral submission that was put to the Court; and
(e) the originating process, or, if none was filed, any draft originating process produced to the Court.
(3) The applicant's solicitor will answer to the best of his or her ability any question as to whether a particular thing is a listed thing.
(4) The applicant's solicitor will use his or her best endeavours to act in conformity with the Order and to ensure that the Order is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents.
(5) The applicant's solicitor will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.
(6) The applicant's solicitor will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4.30pm on the Return Date.
(7) The applicant's solicitor will not disclose to the applicant any information that the solicitor acquires during or as a result of execution of the Search Order, without the leave of the Court.
(8) The applicant's solicitor will use best endeavours to follow all directions of the independent solicitor.
Undertakings given to the Court by the independent solicitor
(1) The independent solicitor will use his or her best endeavours to serve the respondents with this Order and the other documents referred to in undertaking (2) of the above undertakings by the applicant's solicitor or solicitors.
(2) Before entering the premises, the independent solicitor will:
(a) offer to explain the terms and effect of the Search Order to the person served with the Order and, if the offer is accepted, do so; and
(b) inform the respondents of their rights to take legal advice.
(3) Subject to undertaking (4) below, the independent solicitor will retain custody of all things removed from the premises by the independent solicitor pursuant to this Order until delivery to the Court or further Order of the Court.
(4) At or before the hearing on the Return Date, the independent solicitor will provide a written report on the carrying out of the Order to the Court and provide a copy to the applicant's solicitors and to the respondents or the respondents' solicitors. The report will attach a copy of any list made pursuant to the Order and a copy of any report received from an independent computer expert.
(5) The independent solicitor will use best endeavours to ensure that members of the search party act in conformity with the Order and that the Order is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents, and will give such reasonable directions to other members of the search party as are necessary or convenient for the execution of the Order.
(6) The independent solicitor will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.
(7) The independent solicitor will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4.30pm on the Return Date.
Undertakings given to the Court by the independent computer expert
(1) The independent computer expert will use his or her best endeavours to act in conformity with the Order and to ensure that the Order, so far as it concerns the independent computer expert, is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents.
(2) The independent computer expert will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.
(3) The independent computer expert will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4.30pm on the Return Date.
(4) The independent computer expert will use best endeavours to follow all directions of the independent solicitor.
Affidavit of Stephen Gregory Whatling 11 January 2008
3 Undertaking to the Court by the Applicant's solicitor
4 Undertaking to the Court by the Independent Solicitor
6 Undertaking to the Court by the Applicant concerning costs of the Independent Solicitor and the costs of the Computer Expert
NAME AND ADDRESS OF APPLICANT'S SOLICITORS: The Applicant's solicitors are: McInnes Wilson Lawyers Level 14, Central Plaza One 345 Queen Street BRISBANE Q 4000 GPO Box 1089 BRISBANE Q 4001 Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
BETWEEN: JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
AND: INTERNET MARKETING PTY LTD ACN 124 105 611
REASONS FOR JUDGMENT 1 Jemella Australia Pty Ltd (Jemella) has today filed by leave an application to the Court seeking, amongst other things: 1. A permanent injunction pursuant to s.126 of the Trade Marks Act 1995 (Cth) ("the TM Act") and/or s.87 of the Trade Practices Act 1974 (Cth) ("the TP Act") restraining the First Respondent, whether by itself, its directors, officers, servants, agents or otherwise howsoever, from distributing, advertising and offering for sale (including by way of the internet sites www.ghdhairstylingproducts.com and www-ghd.com), displaying or otherwise exploiting, counterfeit hairstyling product bearing the marking "GHD Hairstyling Iron" or "GHD" or otherwise infringing Registered Trade Mark No. 951 664, being the letters "GHD" ("The Trade Mark"). 2. A permanent injunction pursuant to s.126 of the TM Act and/or s.87 of the TP Act restraining the Second Respondent, whether by himself, his servants, agents or otherwise howsoever, from distributing, advertising and offering for sale (including by way of the internet sites www.ghdhairstylingproducts.com and www-ghd.com), displaying or otherwise exploiting, counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" or otherwise infringing the Trade Mark. 3. A permanent injunction pursuant to s.126 of the TM Act and/or s.87 of the TP Act restraining the Third Respondent, whether by herself, her servants, agents or otherwise howsoever, from distributing, advertising and offering for sale (including byway of the internet sites www.ghdhairstylingproducts.com and www-ghd.com), displaying or otherwise exploiting, counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" or otherwise infringing the Trade Mark. 4. An order pursuant to s.87 of the TP Act that the Respondents take all necessary steps to remove from the internet the websites www.ghdhairstylingproducts.com and www-ghd.com. 5. A permanent injunction pursuant to s.87 of the TP Act restraining the Respondents, whether by themselves, their directors, officers, servants, agents or otherwise howsoever, from publishing and maintaining any internet website which advertises for sale hairstyling products bearing the mark "GHD Hairstyling Iron" or "GHD" or which infringes the Trade Mark or which suggests any connection or association between the Applicant and Fourth Respondent and the Respondents. 6. Delivery up on oath to the Applicant or its nominated agent for destruction, all counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" whatsoever in the possession, power or control of the First Respondent. 7. Delivery up on oath to the Applicant or its nominated agent for destruction, all counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" whatsoever in the possession, power or control of the Second Respondent. 8. Delivery up on oath to the Applicant or its nominated agent for destruction, all counterfeit hairstyling products bearing the marking "GHD Hairstyling Iron" or "GHD" whatsoever in the possession, power or control of the Third Respondent. 9. Damages, or at the Applicant's election an account of profits, for trademark infringement pursuant to s.126 of the TM Act. 2 The application also seeks interlocutory relief. In relation to that, I simply note that the application for interlocutory relief seeks orders "pursuant to Order 15A rule 3 and/or rule 6 of the Federal Court Rules", and I query whether that is the appropriate way in which an order should be expressed. If the order is properly to be made, and if the source of the order is to be identified, it ought not to be identified in the alternative. 3 For present purposes, I am today concerned with the application for interim relief. The applicant seeks, as against the first, second and third respondents, search orders in the form of a draft order attached to the application, and also seeks a further order restraining the first three respondents from essentially distributing, advertising or offering for sale counterfeit hairstyling products bearing the mark "GHD Hairstyling Iron", or "GHD" or otherwise infringing the trademark, as well as from publishing and maintaining a website advertising hairstyling products which infringe the trademark of the fourth respondent. 4 The Court has power, pursuant to O 25B r 2 and 3 to make the orders sought by way of interim relief. Order 25B r 2 provides: RULE 2 SEARCH ORDER 2 The Court may make an order (a search order), in any proceeding or in anticipation of any proceeding in the Court, with or without notice to the respondent, for the purpose of securing or preserving evidence and requiring a respondent to permit persons to enter premises for the purpose of securing the preservation of evidence which is, or may be, relevant to an issue in the proceeding or anticipated proceeding. 5 And O 25B r 3 provides: RULE 3 REQUIREMENTS FOR GRANT OF SERACH ORDER 3 The Court may make a search order if the Court is satisfied that: (a) an applicant seeking the order has a strong prima facie case on an accrued cause of action; and (b) the potential or actual loss or damage to the applicant will be serious if the search order is not made; and (c) there is sufficient evidence in relation to a respondent that: (i) the respondent possesses important evidentiary material; and (ii) there is a real possibility that the respondent might destroy such material or cause it to be unavailable for use in evidence in a proceeding or anticipated proceeding before the Court. 6 The search order sought by the applicant is substantially in the form of Federal Court Practice Note Number 24, issued by the Chief Justice on 5 May 2006. 7 In support of the application, the applicant relies on three affidavits filed by leave: the affidavits of Stephen Gregory Whatling made on 11 January 2008, Luke William Fox, also made on 11 January 2008, and Kylie Thomson, also made on 11 January 2008. 8 On the application, Mr Damien O'Brien of counsel for the applicant tendered six exhibits. The first of them related to the results of an internet search concerning the Key Secure Code Authentication relevant to the products in dispute. The five further exhibits are the required undertakings by the applicant, the applicant's solicitor, the independent solicitor, the independent computer expert, and the undertaking by the applicant concerning the payment of costs of the independent solicitor, and the costs of the independent computer expert. 9 On the basis of that evidence, I am satisfied that there is a strong prima facie case that the damage, potential or actual, is very serious for the applicant, and I am satisfied that the evidence establishes that the first three respondents have in their possession incriminating documents or things, and there is a real possibility that they may destroy such material before any application of which they have notice can be made. 10 As long ago as 1985, I held in Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd (1985) 10 FCR 332 that the Federal Court had jurisdiction to make Anton Piller orders, and that in the circumstances in that case it was appropriate to exercise the jurisdiction of the Court to make those orders. 11 In that case, there were allegations of records being sold in breach of copyright, and I made orders for entry, search, and seizure of specified sound recordings, and that the defendant divulge certain information concerning the recordings, including the names and addresses of those who had supplied it with the copies. It is right to recognise, as later cases have maintained, that the making of an Anton Piller order is a matter to be approached with caution and the Court should be careful to avoid cases where the extraordinary jurisdiction of the Court to make an Anton Piller order is subverted to a mere investigatory tool for applicants. 12 In this case, however, there is a clear prima facie case for orders in respect of the publishing and maintaining of websites which advertise counterfeit GHD styling irons and which seek to imitate the official website of the applicant. I recognise that the material has been put before the court on an ex parte basis. There is evidence to suggest that the counterfeit styling irons are inferior in quality and pose a serious risk to the safety of users of those counterfeit irons. 13 The dishonesty indicated by the evidence before the Court permits the inference that there is a real risk that if Anton Piller orders are not made, evidence may be secreted or destroyed. The potential loss, actual loss, or damage to the applicant will be serious if the search order is not made. The inferior product sold under the brand name GHD is likely to adversely affect the reputation of the genuine product, the goodwill of the applicant, and the market for the genuine GHD styling iron. 14 It appears to me that, considering the deliberate actions of the first, second, and third respondents in offering for sale counterfeit GHD products, and the act of concealment of that conduct, there is a real possibility that the first three respondents will destroy the incriminating products and documents if the order is not made. 15 Accordingly, I make the search order substantially in the terms sought by the applicant, but with some amendments and additions. I adjourn the application to Monday 11 February 2008 at 10.15 am, and I grant liberty to apply on 24 hours notice. 16 I make orders in terms of the amended search order in the application, and I further order the first respondent, whether by themselves, their directors, officers, servants, agents or otherwise howsoever, and the second and third respondents, whether by themselves, their servants, agents or otherwise howsoever, be restrained from distributing, advertising and offering for sale (including by way of internet sites www.ghdhairstylingproducts.com and www-ghd.com), displaying or otherwise exploiting counterfeit hairstyling products bearing the mark "GHD Hairstyling Iron" or "GHD" or otherwise infringing the Trade Mark or from publishing and maintaining any internet website which advertises for sale hairstyling products bearing the mark "GHD Hairstyling Iron" or "GHD" or which infringe the Trade Mark of which suggests any connection or association between the applicant and the first, second or third respondents or the fourth respondent and the first, second or third respondents, including www.ghdhairstylingproducts.com and www-ghd.com, until 4:00pm on 11 February 2008. 17 The costs of the application for the interim relief, including the search order and the restraining order, are reserved. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Spender.
Solicitor for the Applicant: McInnes Wilson Lawyers
Jemella Australia Pty Ltd
Internet Marketing Pty Ltd
(1985) 10 FCR 332