TICA Default Tenancy Control Pty Ltd v Datakatch Pty Ltd

REASONS FOR JUDGMENT (Revised from transcript) 1 This is an application brought by the respondents pursuant to r 23.01 of the Federal Court Rules 2011 (Cth), that the Court appoint its own expert to assist in the resolution of the issues in this case. The question of expertise to which that witness' evidence would be directed concerns the allegations arising from infringement of copyright. The basic question between the parties is whether the first respondent's software infringes the copyright in the applicant's software. The idea is that the court-appointed expert would be able to provide a detached and potentially clear answer to that question and it is suggested that that process may engender an early resolution of the proceedings or perhaps even a clarification of what the issues between the parties are in relation to infringement. 2 At one time the idea of making an order to appoint the Court's own expert was regarded as something of a novelty. Cases in the 1960s suggested that such a process might be undertaken only in the most unusual circumstances: cf the remarks of Lord Denning MR in Re Saxton (decd) [1962] 1 WLR 968 at 972. Since that time, however, court rules in this country have been amended to make it quite clear that the court does have the power to make such appointments. The rule in this Court is r 23.01. As the Full Court of this Court pointed out in Tyler v Thomas (2006) 150 FCR 357, it would be inappropriate to approach the operation of that rule on the basis of the previous understanding about the topic. The rule provides that the Court may appoint an expert and there is no reason for the discretion thereby conferred to be crimped by earlier notions. 3 It seems to me in this case, however, that it would not necessarily be useful to make the order sought. If the Court were to appoint an expert and if the expert were to express an opinion on whether the two pieces of software were relevantly the same, or at least similar, it would still be possible, and, indeed, as I apprehended from the bar table, likely, that the party who ended up being on the wrong end of that determination would thereafter seek to lead their own expert evidence. One of the attractions about the idea of the Court appointing an expert is the likely decrease in costs, with delay and expense being averted by having the issue looked at by a single person. In this case it seems to me that that saving is not sufficiently likely to arise as to warrant the making of the order. 4 Whilst I should say that the proposal seemed to me to have some merit, on balance I think in this case it may not lead to the savings which are hoped for. In those circumstances I dismiss the application. Costs will be costs in the cause. I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.