Keshi Pty Ltd v Firefly Press

Federal Court of Australia|2008-04-02|Before: McKerracher J

REASONS FOR JUDGMENT 1 On 1 November 2007 the applicants filed an application alleging against the respondents breaches of the Copyright Act 1968 (Cth) and the Trade Practices Act 1974 (Cth). The application had been preceded by pre-action discovery orders: see Keshi Pty Ltd v Firefly Press (Australia) Pty Ltd [2007] FCA 982. The subject matter of the dispute is most conveniently taken from the opening paragraphs of that decision: 1. There are forty‑four individual speech sounds in the English language. The individual speech sounds are referred to as "phonemes". A phoneme may be represented by a letter, or one or more combinations of letters of the alphabet, which are referred to as "graphemes". For example, the words "moon", "screw" and "glue" contain a common phoneme represented by the combination of the letters "oo", "ew" and "ue". 2. Ms Denyse Ritchie, a retired teacher and director of the applicant, developed a chart to be used in literacy teaching which depicted words and pictures incorporating the phonemes and graphemes on a chart. The chart is known as the "THRASS Picturechart" and is published in two formats, as a wall chart and "tumble turn" desk chart. These charts were first published in 1996 and released for sale in both the United Kingdom and Australia that year. In 2005, Ms Ritchie became aware of a chart published by the respondent which also depicted words and pictures incorporating phonemes and graphemes. The respondent's chart is called the "Sound Waves Sound Chart".

PARTICULARS 16 On 28 November 2007 orders were made for further and better particulars of the pleading to be sought if required, and provided if sought. Certain particulars were requested. Some were supplied. Others were not. 17 The respondents now complain that in the absence of specific particulars which have been sought of the applicants, it is not possible for the respondents to provide discovery defined by the pleaded issues. These reasons deal with those areas of dispute which remain after certain particulars have been given. 18 Despite additional particulars being supplied since oral argument, the respondents seek further particulars in five main areas of the pleaded statement of claim: · acting in concert (par 6) · infringement (par 7 and par 10) · knowledge (par 13) · damages (par 15) · misrepresentations (par 16) 19 The respondents have filed a defence (in which the pleaded case is denied) but the parties wish to mediate. For that to be a worthwhile exercise the respondents contend that they need a better understanding of the case against them both as to liability and quantum. Further the respondents contend that they cannot identify the ambit of discovery without particulars first being given. No discovery at least in any formal sense has yet been given. As presently framed, the case is somewhat inferential in relation to some aspects of liability and at large in relation to quantum. 20 The respondents press for particulars of facts central to the case as pleaded. Some of those facts would appear to be known only to the respondents. There is a tension between compelling a party to reveal information relied upon to support the pleaded case and effectively shutting that party out of its chosen case when the particulars lie only within the knowledge of the opponent. One consideration in that regard may be whether the chosen form of pleading is the only way for the applicant to advance its case.

PARTICULARS - PRINCIPLES 21 The nature of the requests sought raise a number of considerations in the context of the particular case. 22 The fundamental proposition concerning particulars is that a party is entitled to be informed about the opponent's case with sufficient clarity to allow that party a fair opportunity to meet the case: Dare v Pulham (1982) 148 CLR 658 at 664. It has been said in Fieldturf Inc v Balsam Pacific Pty Ltd [2003] FCA 809 at [11] that in modern practice the court will intervene if the parties do not identify precisely just what is and what is not in dispute, and the earlier the court acts the better it will be for the parties. The purpose of particulars is to concentrate and define the issues of fact and to prevent surprise and consequence delay: Bailey v Federal Commissioner of Taxation (1977) 136 CLR 214 at 221. 23 Gleeson CJ in Goldsmith v Sandilands (2002) 190 ALR 370 at 371 adopted the observations of Scott LJ in Bruce v Odhams Press Ltd [1936] 1 KB 697 at 712 that particulars fill in the picture of the plaintiff's cause of action with information sufficiently detailed to put the defendant on his guard as to the case he has to meet and to enable him to prepare for trial. However a party is not entitled to be told, by way of particulars, the mode by which the case is to be proved against him: R v Associated Northern Collieries (1910) 11 CLR 738 at 741 per Isaacs J. As much detail should be provided as is necessary having regard to the nature of the allegations and to meet the abovementioned purposes: O 12 r 1(1). However, it is important to maintain a sense of balance in the details of particulars sought or ordered: Police & Nurses Credit Society Ltd v Burgess Rawson (WA) Pty Ltd [2006] FCA 1395. 24 The provision of providing very detailed particulars is not necessarily the only means by which the objects referred to above can be achieved. The parties being required to settle a list of issues in complex litigation may also be a functional approach: Murchison Zinc Company Pty Ltd v Thiess Contractors Pty Ltd [2000] WASCA 167 at [18], [28]. Another option in a complex case where the burden of providing them outweighs the benefit of receiving them is to provide a statement as to the nature of the case. 25 A significant function of particulars in cases which are tried on pleadings in the ordinary way is that they limit and define the issues for the purposes of discovery: Mann v Board of Health (ACT) (1996) 67 FCR 383 at 391. On the other hand it has been said 'it is good practice and good sense that where the defendant knows the facts and the plaintiff's do not, the defendant should give discovery before the plaintiff delivers particulars': Millar v Harper (1888) 39 Ch D 110 at 112; see also Egg & Egg Pulp Marketing Board v KH Korp Tocumal Trading Co Pty Ltd (1963) VR 378 at 382; Castlemaine Perkins Ltd v Queen Street Hotels Pty Ltd (1968) Qd R 501. 26 Counsel for the applicants submits that the following four principles apply to the requests that have been made in these proceedings: 1. The general object of particulars is to inform the opponent of the nature of the case it has to meet as distinguished from the way in which such case will be proved: Duke v Wisden (1897) 77 LT 67 at 68; G W Young & Co Ltd v Scottish Union & National Institute Insurance Co (1907) 24 TLR 73 at 74; R v Associated Northern Collieries (1910) 11 CLR 738; Aga Khan v Times Publishing Co [1924] 1 KB 675; McAndrew v Gray (1920) 20 SR (NSW) 635; Philliponi v Leithead (1959) 76 WN (NSW) 150. 2. Furthermore, whilst a party should be required to provide the best particulars it can (having regard to the object of particulars), an order will not be made for particulars which the Court is satisfied the party cannot give: Higgins v Weekes (1889) 5 TLR 238; Marshall v Inter Oceanic Steam Yachting Co (1885) 1 TLR 394; Cyril Leonard & Co v Simo Securities Trust Ltd [1972] 1 WLR 80. 3. In appropriate circumstances the Court can decline to order a party to provide particulars until after discovery and/or interrogatories, for example where the particulars are solely within the knowledge of the other party: Jingellic Minerals NL v Abigrouop Ltd (1992) 7 WAR 566 at 570, 575 (FC). 4. Substantial reproduction is a matter for the Court to determine, and it may be assisted by expert evidence: Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd [2007] FCA 1509; Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd [2001] FCA 1636; Bulurru Australia Pty Ltd v Oliver [2000] NSWSC 0580.

The requests 27 The first particulars sought pertain to the pleading that the applicants acted in concert and as agents for each other in certain acts. Particulars are sought of the allegations that any one respondent was the agent of the other or both of the other two and any one respondent had the authority to bind either or both of the other two. In response to that, the applicants answered they were presently unable to provide any further particulars to those set out in the statement of claim but may do so on discovery and on obtaining answers to interrogatories. 28 The applicants have already purported to provide some particulars of these acts of acting in concert or as mutual agents under particulars to par 6 of the statement of claim. Those particulars incorporated reference to pars 3, 4, 5 and 7 of the statement of claim. I have already summarised those paragraphs. Nowhere in those pleadings, in my view, are there any particulars of the manner in which the respondents either acted in concert or as mutual agents to or for each other. The respondents contend it is clear that if there is no proper basis for par 6, it should be removed from the pleadings. 29 Following oral submissions for the respondents, the applicants provided particulars to the effect that the respondents swore certain affidavits in other proceedings in which they confirmed they had collaborated and worked closely together in producing the Sound Wave Charts. This information is not helpful. Both the Court and each respondent needs to know what detail, if any, arises from those or any of those affidavits on which the applicants rely in order to present their case. 30 In relation to the argument that the respondents know the answer to the particulars sought it has been held that it is no objection to an application for particulars that the applicant must know the true facts of the case better than his opponent. He is entitled to know the outline of the case that his adversary will try to make against him, which may be something very different from the true facts of the case: Palmos v Georgeson [1961] Qd R 186 at 193; see also Turner v Dalgety & Co Ltd (1952) 69 WN (NSW) 228 at 229. On the other hand it has also been held that particulars will not be ordered where 'the matters in respect of which the party who seeks particulars already knows the matters on which the other party is relying': Lawson v Perpetual Trustee Co (Ltd) (1959) 76 WN (NSW) 367 at 368; see also Harbord v Monk (1878) 38 LT 411; Keogh v Incorporated Dental Hospital of Ireland (1910) 2 Ir R 577. 31 The Court will not order particulars where it would be oppressive to do so, for example, where the information can only be obtained with considerable difficulty. In cases such as these, the Court may order a party to give the best particulars he can with liberty to supplement them after discovery - see Marshall v The Inter-Oceanic Steam Yachting Co (1885) 1 TLR 394; Higgins v Weekes (1889) 5 TLR 238; Cyril Leonard & Co v Simo Securities Trust Ltd (1972) 1 WLR 80; Harbord v Monk 38 LT 411. 32 Where omission to give particulars makes the pleading itself defective and embarrassing, an application to strike out or compel amendment of the pleading may be made either alone or together with an alternative application for particulars: Rubenstein v Truth & Sportsman Ltd [1960] VR 473. 33 It has not been suggested for the applicants that this aspect of the pleading or this approach to the applicants' case in which there is specific reliance on acting in concert or agency, is the only way in which the applicants' case can be advanced. In my view, if the pleading in its present form relying on acting in concert and/or agency is to be maintained, further and better particulars of par 6 of the statement of claim must be provided. 34 There is a request for particulars in relation to par 7 of the statement of claim. As Mr Howard for the respondents observed, this is at the heart of the statement of claim dealing with the infringement of copyright. On the other hand there has already been some particularisation. The following particulars have been given: 9.1 (a) The features, structure, layout, and appearance of the THRASS Copyright Works have been reproduced in the Sound Waves Charts and Support Material including (but not limited to) in the following respects: (i) separate sound boxes for each sound; (ii) the sound boxes are displayed against a free flowing background; (iii) the sound boxes are of regular height but not length; (iv) the sound boxes are arranged in horizontal rows in a "brick wall" format with open spaces between the boxes; (v) the vowel sounds and the consonant sounds are shown separately; (vi) the selection of graphemes (that is combinations of alphabetical letters representing sounds); (vii) each sound box contains graphemes; (viii) each grapheme is separated from other graphemes in the same sound box; (ix) the selection of words illustrating the use of graphemes; (x) the bolding of graphemes; (xi) the use of lower case print; (xii) the use of drawings to illustrate the words used; (xiii) the selection of drawings; (xiv) the colours used including that of the print and drawings; (xv) the order/sequence used; (xvi) the size, shape and format of the charts and the sound boxes. (b) The drawings illustrating the following words in the THRASS Copyright Works have been reproduced in the Sound Wave Charts and Support Material: Egg, watch, snail, me, baby, fly, boat, bird, fern, horse, ball, sauce, book, screw, glue, coin, deer, ear, chair, square, ladder, doctor, dolphin, kite, car, queen, duck, swan, fish, house, bridge, bell, moon, hammer, thumb, net, mouse, tiger, sleeve, zebra, cheese, treasure, chef, station, feather, fern, fur, rain, wrist, king, hand, moor, hair, garden (flower only), door, fizz, (c) The applicants otherwise object to providing the further particulars requested as they are matters of evidence and law. 9.2 The applicants are presently unable to provide any further particulars to those set out in the statement of claim, but may do so following discovery and inspection and/or administration and answering of interrogatories in the within proceedings. 9.3 The Sound Waves Charts and Support Material have been published. The applicants repeat answer 9.1 above and otherwise object to providing the particulars requested as they are matters of evidence and law. 9.4 (sic)The Sound Wave Charts and Support Material have been published since at least 2005. The applicants are presently unable to provide any further particulars to those set out in the statement of claim, but may do so following discovery and inspection and/or administration and answering of interrogatories in the within proceedings. 9.5 The first respondent has testified in Federal Court Application No. WAD 258 of 2006 that the Sound Waves Charts have been publicly available for sale since 1995, including from Wooldridges book store in Western Australia. The applicants will refer to the affidavit of Ann Christine Smales sworn 30 November 2006 at trial for its full terms and effect (in particular, but not limited to, paragraphs 5 and 6). The applicants are presently unable to provide further particulars, but may do so following discovery and inspection and/or administration and answering of interrogatories in the within proceedings. 35 I consider that further particulars of par 7 of the statement of claim should be provided in due course after discovery. I do not consider that additional particulars are necessary at this stage. 36 There is a request for particulars of par 13 of the statement of claim which, in my view, goes to knowledge of the alleged breach. The request is as follows (which mirrors the language of the pleading). As to paragraph 13, provide the usual details but not the evidence, by reason which it is said that the first, second and/or third respondent, and each of them: (a) did not believe; and/or (b) has no reasonable grounds for believing, alleged copies and other reproduction material, or further copies printed therewith, were not or not be infringing copies of the THRASS Copyright Works. 37 The current particulars which have been provided are: (a) The THRASS Copyright Works at all material times bore a copyright notice indicating that the said works were subject to copyright and that Alan Davies and the second applicant were the owners of the said copyright. (b) The THRASS Copyright Works were at all material times marketed throughout Australia including in the State of Queensland. (c) The THRASS Copyright Works were at all material times purchased by and used at Cooroy State School. (d) The second and third respondents were at all material times teachers at Cooroy State School. (e) In April 1999 the second respondent attended a workshop at Cooroy State School conducted by a speech pathologist, Chris Lukin, at which notes on THRASS and THRASS material were distributed. (e) (sic) On 22 and 23 May 1999 the third respondent attended a THRASS course at Cooroy State School on the THRASS methodology and THRASS charts and how to use them. (f) The second respondent was enrolled to attend the THRASS course at Cooroy State School but did not do so. (g) The applicants repeat answer 8 above. (h) The applicants are presently unable to provide any further particulars, but may do so following discovery and inspection and/or administration and answering of interrogatories in the within proceedings. 38 Pursuant to O 12 r 3 of the Federal Court Rules: (1) A party pleading any condition of mind shall give particulars of the facts on which he relies. (2) In subrule (1) condition of mind includes any disorder or disability of mind, any malice and any fraudulent intention, but does not include knowledge. 39 The effect of this rule is that if belief may be equated with knowledge then particulars are not required. However when it is alleged that a party ought to have known of a particular matter, particulars are required: Fox v H Wood (Harrow) Ltd [1963] 2 QB 601 at 604; Smith v Littlemore (1996) 15 WAR 289 at 300. 2 APRIL 2008

WESTERN AUSTRALIA DISTRICT REGISTRY WAD 212 OF 2007

The applicants to provide further and better particulars of paragraphs 6 and 16 of the statement of claim within 28 days.
The applicants to pay the first respondents' costs of the motion to be taxed or agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY WAD 212 OF 2007

STATEMENT OF CLAIM 2 The application was accompanied by a statement of claim. There has been a dispute in relation to the provision of certain particulars in support of the statement of claim. The respondents have filed and served a defence denying any breaches. 3 It is common ground as pleaded that the first applicant carries on a business of advertising, promoting, selling and supplying educational aids for the use of children. In conducting that business and pursuant to the terms of a licence agreement, it uses certain charts which collectively are described as being the THRASS Copyright Works. The second applicant is a joint author and owner of the THRASS Copyright Works. 4 The first respondent promotes and sells educational literary aids for children in the form of a chart described as a Sound Waves Chart and student work books incorporating the Sound Waves Chart. 5 The second respondent is a retired school teacher and the third respondent is, according to the pleading, currently a school teacher. 6 Paragraph 6 pleads that the respondents acted in concert or as agents for each other in the acts pleaded in the statement of claim. 7 Paragraph 7 asserts the infringement of the applicants' copyright by the respondents. 8 Paragraph 8 sets out a claim in detinue and conversion in respect of the same works and by the same respondents. 9 By paragraph 9, it is pleaded the second and third respondents have transmitted and distributed or caused to be authorised the transmission and distribution to the first respondent of the alleged infringing copies together with other reproduction material, thereby further infringing the applicants' copyright. Paragraph 10 sets out a similar plea. 10 Paragraph 11 sets out relevant knowledge of the respondents. 11 Paragraph 12 pleads the receipt by the respondents of remuneration to which they are not entitled. 12 Paragraph 13 pleads that the respondents did not believe they were entitled to the copyright works. 13 By paragraph 14, a pleading of a constructive trust is set out. 14 Paragraph 15 deals with loss and damage for the copyright plea. 15 Paragraphs 16-20 rely on Pt V of the Trade Practices Act in relation to similar conduct, particularly representations and par 21 pleads loss and damage for the Trade Practices Act plea. A plea for restraint concludes the statement of claim in par 23.

Solicitor for the Respondent: DLA Phillips Fox

Date of Last Written Submissions: 20 February 2008

Trade Practices Act 1974(Cth)

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