Vaysman v Deckers Outdoor Corporation Inc.

The primary judge's reasons 85 The primary judge referred to an affidavit filed by the appellant shortly before the hearing on penalty. He referred to a number of medical reports tendered and relied upon by the appellant. He did that in the context of considering the significance of the appellant's age and general health problems. 86 The appellant is 74 years old. His general practitioner, Dr G Belkin, referred to the appellant's "main problems" as atrial fibrillation (heart rhythm disorder), prostatomegaly (benign age-related enlargement of the prostate gland), gastritis/duodenitis, impaired feeling [sic] of smell, impaired hearing which had worsened after a motor car accident in 2008, tinnitus, reactive anxiety/depression and incidental acute respiratory, macular and skin problems. Dr Belkin stated that apart from the appellant's tinnitus condition, his other conditions had improved under treatment. 87 Dr P O'Brien investigated complaints by the appellant that he had a poor memory. He referred the appellant to a neuropsychologist for further testing and diagnosis. The neuropsychologist reported that the testing did not disclose any evidence of a neurodegenerative disease. There was evidence of stress and some variability of cognitive performance when the appellant was anxious. Dr O'Brien suggested that supportive measures to assist the appellant to deal with his distractibility and stress, his sleep disturbance and tinnitus would be likely to improve his condition. 88 Dr B Goloub is a psychologist. He examined the appellant and found that he suffered from anxiety and stress and that he also suffered from panic attacks. The appellant made various statements to Dr Goloub about his understanding of the court proceedings. 89 Mr J Cummins is a consulting clinical and forensic psychologist. He examined the appellant. The appellant made various statements to him about the court proceedings. Mr Cummins was not persuaded that the appellant was being truthful about his claims of memory loss. He considered that the appellant presented "as being of normal and average intellectual ability" and he considered that the appellant was "in a state of denial concerning his legal situation …". Mr Cummins expressed the opinion that the appellant had developed a chronic adjustment disorder with mixed disturbance of emotions and conduct. 90 The primary judge considered a submission made by the appellant's counsel that the appellant would find it more difficult to serve a sentence of imprisonment than a younger person because of his age and his medical and psychological problems. In addition, the appellant's counsel submitted that there would be no interpreter to assist the appellant to communicate in prison and he would be separated from his wife of 50 years. 91 The primary judge referred to four decisions of the Victorian Court of Criminal Appeal dealing with the significance in sentencing of an offender's age and state of health. He said that there was no doubt that the appellant suffered from a number of medical conditions. However, apart from the tinnitus, those conditions had responded to treatment. The primary judge noted that Dr O'Brien considered that the tinnitus was also manageable if the appellant were to adopt various supportive measures which he had suggested. The primary judge noted that none of the medical reports offered an opinion as to the likely effect of incarceration on any of the conditions from which the appellant suffered. In particular, Mr Cummins did not suggest that a chronic adjustment disorder would have any adverse impact on the appellant should he be imprisoned. The primary judge noted that none of the appellant's medical problems prevented him from working between 2007 and 2009, and he considered that had the appellant's activities at the Christensen Street factory not been discovered, he would probably still be working on the premises producing footwear. 92 The primary judge found that the appellant was agitated and anxious as a result of being found guilty of a number of charges of contempt of court and that he was naturally apprehensive about the prospect of a term of imprisonment being imposed. The primary judge found that there was no evidence that he was seriously ill or any evidence to support the proposition that ill health would make any period of incarceration imposed on him "particularly onerous". Furthermore, the primary judge said that the case was not one in which the appellant would be expected to spend most of his remaining years in custody. 93 The primary judge concluded his analysis of the significance of the appellant's age and ill health with the following observations (at [27]): On the other hand it is necessary, in sentencing Mr Vaysman, to take into account his age, his infirmity and the language and cultural issues which will be likely to have an adverse impact on him if he is imprisoned. While these considerations do not, in my opinion, justify a wholly suspended sentence, they may warrant a partially suspended sentence. 94 The primary judge then turned to consider a submission by the appellant that his previous good character should be taken into account. The primary judge said that it was proper to take into account in the appellant's favour the fact that he had no prior convictions and that he had come to Australia in difficult circumstances as a refugee immigrant and had, by dint of hard work, been able to live a good and productive life. He had raised a small family and been a good provider for them. 95 However, the primary judge said that those matters had to be balanced against other aspects of the appellant's conduct in the course of the present litigation. He noted that the appellant had given a considerable amount of untruthful evidence to the Court relating to his involvement in the manufacturing business conducted by his son and in relation to his financial circumstances. The appellant had claimed, for example, to be impecunious when he had accumulated pension payments standing to his credit in a bank account which had not been drawn on for many years. He had assisted his son by acting as the sole director of a number of companies which served as vehicles for the conduct of various aspects of the business and he had operated bank accounts for some of these companies. Hundreds of thousands of dollars passed through these accounts. The appellant had personally made and sold counterfeit footwear. The primary judge said that such conduct "clearly undermines his claim to be of character". 96 The primary judge then turned to consider whether delay was a mitigating factor in favour of the appellant. The primary judge said that it was to be acknowledged that the contempt proceedings had been hanging over the appellant for some time. He referred to the factors which had led to the delay in bringing the proceedings to a conclusion. In the result, the primary judge placed little weight on the appellant's complaints relating to delay. Nor was he persuaded that the appellant had personally been deterred from misconduct by reason of the charges being preferred against him. On the other hand, he took into account in the appellant's favour the absence of any contraventions of the Court's orders since the second set of charges were laid. 97 The primary judge then turned to consider the financial effect of the proceedings on the appellant and his family. The primary judge noted that unpaid judgment debts arising from the orders made in the principal proceeding had led to the appellant being declared bankrupt. The appellant had lost the equity in his family home. 98 On the other hand, the primary judge noted that some hundreds of thousands of dollars had flowed through accounts over which the appellant had control as the registered signatory and that the appellant had failed to account for any of this money. The primary judge noted that on 13 March 2009 he had explicitly invited the appellant to explain how he had come by such large sums and what he had done with them. No explanation had been forthcoming. The primary judge noted that the appellant had repeatedly failed to comply with orders which required him to make full disclosure of his personal financial situation and that of companies associated with him. The primary judge considered that in the absence of such disclosure the appellant was not entitled to any allowance being made for the financial position in which he found himself. 99 The primary judge then turned to consider the question of parity. The submission put to him was that he had sentenced the appellant's daughter, Victoria Vaysman, to be imprisoned for a period of 12 months for contempt of court (Deckers (No 8) at [20]-[49]). He had decided that the first two months were to be served and the balance suspended on condition that she refrain from further contraventions of the Court's orders for a period of two years. The appellant submitted that considerations of parity required that the appellant be treated more leniently than his daughter. 100 The primary judge did not accept that the appellant's offending was less serious than his daughter. The primary judge said (at [40]): The most egregious breaches of the Court's orders which led to the laying of Charges 4, 5 and 12 against Mr Vaysman in 2009, were far more serious than any of the conduct engaged in by Victoria Vaysman. After the manufacturing operations at the Roper Street factory had been discovered at the end of 2007 and the production process was effectively closed down, Mr Vaysman wished to continue manufacturing counterfeit footwear. He sought and obtained the assistance of Vladimir to establish a new factory at Christensen Street Moorabbin. The premises were leased by Sanauria Pty Ltd ("Sanauria'), a company of which Mr Vaysman was the sole director. He entered into the lease on behalf of Sanauria on 28 February 2008. Machinery was installed and production of counterfeit footwear soon resumed. Mr Vaysman purchased the machinery for use at Christensen Street. He continued to operate the business at Christensen Street until he was discovered in January 2009. He did so despite having been served with an amended statement of charges in respect of his earlier conduct at Roper Street. The amended charges were laid on 14 March 2008. The gravity of his offending was compounded when, on 5 July 2008, he instructed senior counsel who then appeared on his behalf to advise the Court that he and his wife had "never intended to break the [November 2007] orders and certainly intend to abide by the orders of the Court in the future … They are completely prepared to make further undertakings to abide by Court orders": see Deckers (No 7) at [11]. Despite these assurances he continued to produce counterfeit products at Christensen Street. 101 The primary judge then turned to consider other considerations. He said that he was far from satisfied that the appellant acknowledged and accepted that he had contravened orders made by the Court. He referred to evidence before him in which the appellant sought to place the blame on others. 102 The primary judge said that the appellant had, since November 2007, consistently chosen to ignore orders made by the Court. In November and December 2007, he had blatantly continued manufacturing counterfeit footwear at the Roper Street factory until his activities were discovered and he was no longer able to work at that factory. He then contrived to resume manufacturing at the Christensen Street premises and was able to do so for a year before he was discovered producing fake Ugg products. The primary judge said (at [43]): While I accept that Vladimir Vaysman oversaw the operations at Roper Street and Christensen Street and was the main offender, Mr Vaysman played a central role in the illicit business by applying his skills to the manufacture of counterfeit products. 103 The primary judge considered that as was the case with Vladimir Vaysman, the need for both personal and general deterrence ranked highly as considerations in the sentencing of the appellant. 104 The primary judge set out the sentences which he imposed. He considered that Charge 4 was the most serious offence and that it warranted a sentence of imprisonment of 18 months. He ordered that the other penalties be served concurrently with each other sentence, including that imposed in relation to Charge 4. He said (at [48]): Having regard to Mr Vaysman's age and his indifferent health I will require that he serve six months' imprisonment and will suspend from execution the remaining period of the sentence.

Issues on the appeal 105 There are six grounds in the Amended Notice of Appeal. In the first five grounds the appellant seeks to identify specific errors by the primary judge and in the sixth ground of appeal the appellant raises a general ground that the individual sentences, total effective sentence and period of sentence not held in suspense were manifestly excessive. 106 The appellant accepted that in order to succeed he must show that the primary judge made an error of the type identified in House v The King (1936) 55 CLR 499 at 505 (see Dinsdale v The Queen (2000) 202 CLR 321). 107 The appellant's first ground of appeal is that the primary judge erred "in his application of the sentencing principle of parity". 108 There was no dispute between the parties as to the role parity may play in the sentencing process: see Lowe v The Queen (1984) 154 CLR 606 ("Lowe"). 109 The appellant did not challenge the primary judge's conclusions concerning the significance of the sentence passed in relation to Ms Victoria Vaysman (see [100] above). He sought to raise what appeared to be a new argument to the effect that there was an unjustified disparity between the sentence imposed on Mr Vladimir Vaysman and the sentence imposed on Mr Mykhalovskyi on the one hand and the sentence imposed on the appellant on the other. The need for the primary judge to have regard to the sentences imposed on Mr Vladimir Vaysman and Mr Mykhalovskyi does not appear to have been raised before him. 110 In response to this argument the respondent referred to Suttor v Gundowda Pty Ltd (1950) 81 CLR 418 at 438 per Latham CJ, Williams and Fullagar JJ, O'Brien v Komesaroff (1982) 150 CLR 310 at 319 per Mason J (as his Honour then was) and Coulton v Holcombe (1986) 162 CLR 1 at 7-8 per Gibbs CJ, Wilson, Brennan and Dawson JJ. However, those cases are not directly relevant because this is not a claim, defence or new argument in a civil case which is raised for the first time on appeal. The primary judge sentenced Mr Vladimir Vaysman and Mr Mykhalovskyi. There is no suggestion of evidence not being called that might otherwise have been given. In the circumstances, I would allow the appellant to raise the argument. 111 The appellant's argument relates to Charge 37, in respect of which the primary judge imposed a sentence of nine months' imprisonment. 112 In Deckers (No 8), the primary judge summarised Charge 32 against Mr Vladimir Vaysman as follows (at [9]) : Between 27 November 2007 and 12 December 2007 Mr Vaysman permitted and caused the factory in Roper Street Moorabbin to be used for importing, exporting, manufacturing, distributing and selling counterfeit footwear. He did so in breach of an undertaking which he gave to the Court on 27 November 2007. The primary judge found this charge proved and imposed a sentence of six months' imprisonment. 113 In Deckers (No 8) (at [50]), Charge 41 against Mr Mykhalovskyi was summarised by the primary judge as follows: Between 27 November 2007 and 12 December 2007 Mr Mykhalovskyi manufactured counterfeit footwear at the Roper Street factory in Moorabbin in contravention of the orders made by the Court on 27 November 2007. The primary judge found this charge proved and imposed a sentence of three months' imprisonment. 114 In my opinion, the appellant's argument, in so far as it is based on a comparison between the sentence imposed on him and the sentence imposed on Mr Mykhalovskyi, fails. The primary judge found that Mr Mykhalovskyi's contribution to the Vaysman "family business" involved no more than the contribution of his labour at the factory and, possibly, the transportation on occasion of counterfeit products to the Queen Victoria Market where the footwear was sold. There was nothing to suggest that Mr Mykhalovskyi exercised any form of supervision or control over the activities carried out at the factory in Roper Street. I do not think there is a relevant comparison between the sentence imposed on the appellant in relation to Charge 37 and that imposed on Mr Mykhalovskyi in relation to Charge 41 or that any such comparison suggests that the sentence imposed on the appellant was manifestly excessive. 115 The sentence imposed on Mr Vladimir Vaysman in relation to Charge 32 stands in a different position. I think that in imposing a sentence on the appellant in relation to Charge 37 the primary judge should have had regard to the sentence imposed on Mr Vladimir Vaysman in relation to Charge 32. It is true, as the respondent points out, that the charge against Mr Vladimir Vaysman relates to permitting and causing the factory to be used for importing, exporting, manufacturing and distributing, and selling counterfeit footwear whereas the charge against the appellant relates to the manufacturing of counterfeit footwear at the Moorabbin factory in contravention of the orders made by the Court on 27 November 2007. Nevertheless, each charge relates to the same period of time, the same place and, although indirectly in the case of Mr Vladimir Vaysman, the same activity, namely the manufacturing of counterfeit footwear. In my opinion, a Court passing sentence on Charge 37 against the appellant ought to have regard to the sentence imposed on Mr Vladimir Vaysman with respect to Charge 32. 116 In Deckers (No 8), the primary judge found that Vladimir Vaysman was the person who exercised overall control of what was a significant commercial operation. He noted that other members of his family were involved in varying roles and to varying degrees in the production, sale and distribution of counterfeit footwear. The primary judge made the following findings (at [11]): The operation had its origins in Mr Vaysman's father, Josef Vaysman's, ability to manufacture what he considered to be a genre of footwear, namely, Ugg Boots. He made these boots and sold them at public markets. Sometime earlier than 2003 Vladimir Vaysman came to appreciate the market potential for sales of this footwear more widely in Australia and overseas. He also appears to have come to the view that this marketing potential would be enhanced if the footwear was presented using the Applicant's established getup. 117 The primary judge went on to say with respect to Vladimir Vaysman (at [18]): This is one of the worst cases of contempt to have come before the Court. Mr Vaysman has deliberately and repeatedly contravened undertakings given by him to the Court and orders of the Court over a four year period. The need for both personal and general deterrence ranks highly in the sentencing process. Not only have the Applicant's rights been seriously infringed, the authority of the Court has been severely undermined. Mr Vaysman's conduct falls within the most serious category of criminal contempt cases. Although a sentence of imprisonment is a last resort, nothing less would be appropriate in the circumstances of the present case. 118 Furthermore, in the judgment under appeal (Deckers (No 9)), the primary judge said (at [43]): While I accept that Vladimir Vaysman oversaw the operations at Roper Street and Christensen Street and was the main offender, Mr Vaysman [ie, the appellant] played a central role in the illicit business by applying his skills to the manufacture of counterfeit products. (Emphasis added.) 119 In my opinion, proper considerations of parity required that the sentence imposed on the appellant in relation to Charge 37 be no greater than the sentence imposed on Mr Vladimir Vaysman in relation to Charge 32. I think that as they presently stand there is what Mason J (as his Honour then was) referred to in Lowe (at 611) as a marked disparity between the sentences. 120 The respondent submitted that even if the primary judge erred with respect to the sentence he imposed in relation to Charge 37, that did not affect the sentence of imprisonment of 18 months he imposed with respect to Charge 4. All other penalties, including that imposed in relation to Charge 37, were to be served concurrently with each other sentence. On the face of it, that submission seems to be correct. However, it is not clear that the primary judge did not take all the sentences into account in deciding that the appellant should serve six months' imprisonment. In those circumstances, there has been an error in the sentencing process. I do not need to consider whether the error affects the period of 18 months' imprisonment because there was another error in the sentencing process. The decision in Duncan v The Queen [2010] VSCA 92 suggests that in the circumstances as I have found them to be the appellant must be re-sentenced. 121 The second ground of appeal is that the primary judge erred "by failing properly to take into account the age and ill health of the appellant". 122 The appellant is 74 years of age. He has a number of health problems and I have referred to the medical evidence summarised by the primary judge (at [86]-[89]). 123 In R v Smith (1987) 44 SASR 587, King CJ (with whom Cox and O'Loughlin JJ agreed) said (at 589): The state of health of an offender is always relevant to the consideration of the appropriate sentence for the offender. The Courts, however, must be cautious as to the influence which they allow this factor to have upon the sentencing process. Ill health cannot be allowed to become a licence to commit crime, nor can offenders generally expect to escape punishment because of the condition of their health. It is the responsibility of the Correctional Services authorities to provide appropriate care and treatment for sick prisoners. Generally speaking ill health will be a factor tending to mitigate punishment only when it appears that imprisonment will be a greater burden on the offender by reason of his state of health or when there is a serious risk of imprisonment having a gravely adverse effect on the offender's health. See R v Van Boxtel (2005) 11 VR 258; Bailey v Director of Public Prosecutions (1988) 78 ALR 116; 34 A Crim R 154. 124 As to the second matter identified by King CJ (that is, the risk of imprisonment having a gravely adverse effect on the offender's health) the primary judge found that there was no evidence to support any conclusion about the likely effect of incarceration on any of the conditions from which the appellant suffers. It seems to me that having regard to the evidence that finding must stand. 125 However, in relation to the first matter identified by King CJ (that is, whether imprisonment will be a greater burden on the offender by reason of his state of health) I think, with respect, that the primary judge erred. 126 First, I do not think that the burden must be "particularly onerous" (see [92] above) before ill health becomes relevant. It may be of less significance if it is not particularly onerous, but it is still relevant if it would impose a greater burden on the appellant. 127 Secondly, the appellant's age and state of health were relevant to the sentence of imprisonment and not just the determination of the period he should spend in prison. That may not be so in some cases but it seems to me that this is a case where it was relevant to both issues. It is not clear whether the primary judge took the appellant's age and state of health into account in fixing a sentence of imprisonment of 18 months on Charge 4. He certainly took those matters into account in determining the period the appellant should spend in prison (see [104] above). 128 Thirdly, even if the primary judge did take the appellant's age and state of health into account in fixing the sentence of 18 months' imprisonment, I think, with respect, he erred because such a sentence is manifestly excessive. Before the primary judge the respondent put forward a schedule showing the penalties imposed by this Court in other contempt cases. I append to these reasons a list of those cases. I accept of course that no two cases are alike and that this case is a serious case of contempt of court. The schedule shows that in no case has a penalty in excess of 12 months been imposed. Of course a particular case may warrant a penalty well in excess of that period (as did the case of Mr Vladimir Vaysman), but I cannot but reach the conclusion that, in the case of a 74-year-old man with some health problems, a sentence of 18 months' imprisonment is manifestly excessive. 129 The third ground of appeal is that the primary judge erred "by failing properly to take into account the appellant's past good character". The primary judge clearly took into account the appellant's previous good character. However, the appellant submitted that the primary judge impermissibly allowed the circumstances of the offending to negate the appellant's previous good character. He referred to McHugh J's identification of a two-stage process in Ryan v The Queen (2001) 206 CLR 267 at 278-9 [36]. In considering a prisoner's good character when sentencing, the Court must distinguish two logically distinct stages. First, it must determine whether the prisoner is of otherwise good character. In making this assessment, the sentencing judge must not consider the offences for which the prisoner is being sentenced. Secondly, if a prisoner is of otherwise good character, the sentencing judge must take that fact into account. However, the weight that must be given to the prisoner's otherwise good character will vary according to all of the circumstances of the case. 130 The appellant submitted that the primary judge erred because in determining whether the appellant was otherwise of good character he took into account the "offences" with which the appellant had been charged. 131 I have considered carefully the primary judge's reasons and on one view he did take into account the circumstances of the breaches of the Court orders in determining whether the appellant was otherwise of good character. On another view, he took the appellant's good character into account and weighed it against other aspects of the appellant's conduct and character. I am disposed to think that if there was an error it was an insignificant one. 132 The fourth ground of appeal is that the primary judge erred "by doubly punishing the appellant". The appellant submitted that to punish him separately for acts of manufacture and acts of sale was, in the circumstances, to punish him twice. This had occurred, so it was submitted, in the case of Charges 36 and 37 and in the case of Charges 4 and 5. The appellant submitted that the respondent suffered damage only upon the sale of the goods. Goods must be manufactured before they are sold. In the circumstances, the appellant should not have been the subject of two significant penalties for what was in effect one activity. 133 There is force in the appellant's submission, and it may be that other judges may have imposed lesser sentences having regard to the consideration identified by the appellant. However, that is not the test. The acts of manufacture and sale are separate acts and the primary judge was entitled to take the approach he did. 134 The fifth ground of appeal is that the primary judge erred: … by failing properly to take into account the facts that when the appellant committed the acts forming Charge 4, (a) he had already been served with amended charges relating to his having earlier offended at the Roper Street factory, and, (b) had assured the Court through his counsel that he had never intended to breach Court orders and would abide by orders of the Court into the future. 135 The submission of the appellant with respect to this ground of appeal was that the primary judge placed too much weight on the fact that at the time of committing the acts constituting Charge 4, the appellant was facing charges relating to his earlier conduct and on the statements his pro bono senior counsel made to the Court on 5 July 2008. As I understood the submission it was that the appellant may not have understood or appreciated to the full extent the unlawfulness of his conduct at the time he committed the acts comprising Charge 4. It was pointed out that at that time of the conduct constituting Charge 4 the appellant had not been found guilty of the earlier charges. Furthermore, it was submitted that there was some support for the view that the appellant did not fully appreciate the unlawfulness of his conduct in the primary judge's statement that he was far from satisfied that the appellant acknowledged and accepted that he had contravened orders made by the Court (see [101] above). 136 I reject this ground of appeal. The primary judge clearly found that the appellant was aware of the orders which had been made and that his conduct was deliberate. Those were his findings in Deckers (No 7) at [11] and [20]-[21]. There is no basis upon which this Court can or should interfere with those findings. 137 The final ground of appeal is that "the individual sentences, total effective sentence and period of sentence not held in suspense are manifestly excessive". I do not need to deal with this ground of appeal in light of my earlier conclusion that there have been errors in the sentencing process and the appellant must be re-sentenced.

Re-sentencing the appellant 138 I see no reason why this Court should not re-sentence the appellant. Neither party suggested that there was any further evidence they wished to call. 139 The conduct comprising Charge 4 is very serious contempt of court. The appellant continued manufacturing counterfeit footwear after becoming aware of the orders and of charges involving earlier breaches of the orders. In fact, there was a trial in relation to those earlier charges over nine days in April and May 2008 (Deckers (No 6)). 140 I agree with the primary judge that the need for personal and general deterrence ranks highly as a consideration in the sentencing of the appellant. In addition, I have taken into account the appellant's age and state of health, the appellant's previous good character, considerations of parity and the other matters referred to by the primary judge and in respect of which there was no complaint. I have also taken into account the sentences imposed in other cases to which the Court was referred. 141 Having regard to these considerations and, in particular, to the appellant's age and health, I would impose a sentence of twelve months' imprisonment in relation to Charge 4. I would impose a sentence of six months' imprisonment in relation to Charge 37. I see no reason to interfere with the terms of imprisonment in relation to the other charges. I would make an order with respect to all charges other than Charge 4 that each sentence be served concurrently with each other sentence, including that imposed in relation to Charge 4. I would require the appellant to serve four months' imprisonment and I would suspend from execution the remaining period of the sentence. 142 I would not disturb the costs order made in the Court below. I would not make any order as to the costs of the appeal particularly as the appellant has succeeded, in part at least, by reference to an argument which was not put in the Court below. I certify that the preceding seventy-six (76) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko.

Associate: Dated: 15 February 2011 Appendix: List of Cases Re Norman Leslie Gallagher v The Honourable Peter Durack (1982) 68 FLR 210 Robert James Macleod v Australian Securities Commission [1993] FCA 553 Australian Securities Commission v Macleod (No 3) (1993) 40 FCR 475 Albert Langer v Australian Electoral Commission (1996) 59 FCR 463 Australian Securities Commission v Errol John White [1998] FCA 850 Australian Competition and Consumer Commission v Goldstar Corp Pty Ltd [1998] FCA 1441 Australian Competition and Consumer Commission v Goldstar Corp Pty Ltd [1999] FCA 585 Australian Securities & Investments Commission v Matthews [1999] FCA 803; (1999) 32 ACSR 404 Australian Competition and Consumer Commission v Hughes [2001] FCA 38; [2001] ATPR 41-807 Australian Securities & Investments Commission v Reid [2002] FCA 84 Australian Securities & Investments Commission v Eagle Inter-Link Pty Ltd [2002] FCA 1524 Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487; 196 ALR 576 Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 4) [2003] FCA 49 Australian Competition and Consumer Commission v World Netsafe Pty Ltd [2003] FCA 1501; 133 FCR 279 Rip Curl International Pty Ltd v Phone Lab Pty Ltd [2004] FCA 1215; (2004) 63 IPR 496 Buchanan Turf Supplies Pty Ltd v Premier Turf Supplies Pty Ltd [2004] FCA 1694 Australian Prudential Regulation Authority v Siminton (No 3) (2006) 230 ALR 528; [2006] FCA 397 Siminton v APRA (2006) 152 FCR 129; [2006] FCAFC 118 Australian Securities & Investments Commission v Reid (No 2) [2006] FCA 700 Pattinson (Trustee), In the matter of Bell (Bankrupt) v Bell [2007] FCA 137 Bauer v Power Pacific International Media Pty Ltd [2007] FCA 349 Universal City Studios LLLP v Hoey t/as DVD Kingdom [2007] FCA 806; 73 IPR 45 Australian Prudential Regulation Authority v Siminton (No 10) [2007] FCA 1814 Siminton v Australian Prudential Regulation Authority [2008] FCAFC 90 Australian Prudential Regulation Authority v Siminton (No 11) [2007] FCA 1815 Ambrose (Trustee), In the matter of Peter Athanasas (Bankrupt) (No 2) [2008] FCA 1016 Australian Competition & Consumer Commission v Levi (No 3) [2008] FCA 1586; [2008] ATPR 42-257 Jones v Toben (No 2) [2009] FCA 477 IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 858 of 2010

JUDGES: GRAY, BESANKO AND BROMBERG JJ DATE: 16 FEBRUARY 2011 PLACE: MELBOURNE

REASONS FOR JUDGMENT BROMBERG J 143 For the reasons expressed by Gray and Besanko JJ I agree that the appellant's application for an extension of time within which to file and serve a notice of appeal should be granted. I would also give leave to the appellant to rely on his amended notice of appeal filed on 1 November 2010. 144 For the reasons that follow, I would allow the appeal and set aside orders 3, 4 and 5 of the orders made by the primary judge on 15 September 2010. I would substitute for those orders the orders I have proposed at [54] and [56] below. These reasons for judgment also serve to explain why I joined in the order made by the Court at the conclusion of the hearing of the appeal that the appellant be released from custody.

the facts and the reasons of the primary judge 145 The nature and history of the proceeding, the relevant facts (including the allegations made against the appellant in the statements of charge) and a summary of the primary judge's reasons are set out in the reasons for judgment of each of Gray J and Besanko J. To the extent that I need to refer to any further facts or to emphasise aspects of the primary judge's reasons not already dealt with, I will do so.

parity 146 The first ground of appeal raised by the appellant's amended notice of appeal is that the primary judge erred in his application of the sentencing principle of parity. For the reasons set out by Besanko J, I would allow the appellant to raise parity in relation to the sentence imposed on Vladimir Vaysman and the sentence imposed on Leonid Mykhalovskyi, despite those arguments not having been raised in the Court below. 147 The appellant's argument relates to charge 37, in respect of which the primary judge imposed a sentence of nine months' imprisonment on the appellant. In Deckers Outdoor Corporation Inc v Farley (No 8) [2010] FCA 657 the primary judge imposed a sentence of six months' imprisonment in relation to charge 32 against Vladimir Vaysman. For the reasons explained by Besanko J, the comparison sought to be made between the sentence of nine months imposed on the appellant and the sentence of six months imposed on Vladimir Vaysman is relevant. In my view, in imposing the sentence on the appellant which was imposed in relation to charge 37, the primary judge should have had regard to the sentence imposed on Vladimir Vaysman in relation to charge 32. A proper consideration of parity required that the sentence imposed on the appellant in relation to charge 37 be no greater than the sentence imposed on Vladimir Vaysman in relation to charge 32. I have come to that view for the reasons given by Besanko J. 148 The comparison sought to be made with the sentence of three months' imprisonment imposed on Leonid Mykhalovskyi is, for the reasons explained by Besanko J, not a valid comparison and I find no error in the primary judge's approach in relation to that comparison. 149 Given that the primary judge erred with respect to the sentence he imposed in relation to charge 37, I agree with Besanko J that there has been an error in the sentencing process and that accordingly the appellant must be re-sentenced.

age and ill health 150 The appellant's second ground of appeal is that the primary judge erred by failing properly to take into account the age and ill-health of the appellant. 151 The appellant is 74 years of age. The nature of his ill-health was described in the reasons of the primary judge and recounted in the reasons of Besanko J. As that evidence shows, the ailments suffered by the appellant are serious and particularly significant given the appellant's age. The appellant relied on his age and ill-health together with his lack of English and that he would be separated from his wife of 50 years as factors that would make it more difficult than would ordinarily be the case for the appellant to serve a sentence of imprisonment. 152 The reasons of the primary judge suggest that those factors were not taken into account in determining the sentence of imprisonment, but were only taken into account in relation to whether and to what extent the appellant's sentence should be suspended. I think, with respect, that the primary judge erred by failing to take into account those mitigating factors in determining the appropriate sentences of imprisonment to be imposed. 153 These mitigating factors were important and should have been taken into account. The evidence relied on by the appellant was sufficient to substantiate the contention that it would be more difficult for him to serve a sentence of imprisonment. For the reasons given by Besanko J, the appellant's age and ill-health should have been taken into account as factors which would impose a greater burden on the appellant. 154 In my view, the failure of his Honour to take age and ill-health into account in imposing the sentence, and the failure to give those factors sufficient weight, is reflected in what I consider to be the manifestly excessive sentences of imprisonment imposed on the appellant and in particular the 18 month sentence on charge 4. As both Gray J and Besanko J have explained, the respondent put forward a schedule, showing the penalties imposed by this Court in other contempt cases. The list of cases is appended to the reasons for judgment of Besanko J. Accepting that all cases are different and that care must be taken in comparisons of this kind, it seems surprising that in circumstances where a penalty in excess of 12 months has never been imposed, a 74 year old man with significant health problems should be sentenced to imprisonment for 18 months. 155 I shall return to give further consideration to the ground of appeal which contends that each of the sentences was manifestly excessive, but for the purposes of dealing with the question of age and ill-health, the extent of the sentences imposed confirms my view that age and ill-health were not sufficiently taken into account in circumstances where significant weight should have been given to them as mitigating factors.

failing to properly take into account past good character 156 The appellant has no prior convictions. He had come to Australia in difficult circumstances as a refugee and had, by dint of hard work, been able to live a good and productive life. He has raised and provided for his family. These matters were relied upon as supporting the appellant's previous good character. 157 The appellant contended that the primary judge erred because, in determining whether the appellant was of good character, the primary judge took into account the appellant's conduct in the course of the litigation before the primary judge. The appellant relied upon and referred to McHugh J's identification of a two-stage process in relation to good character in Ryan v The Queen (2001) 206 CLR 267 at [36]. In considering a prisoner's good character when sentencing, the court must distinguish two logically distinct stages. First, it must determine whether the prisoner is of otherwise good character. In making this assessment, the sentencing judge must not consider the offences for which the prisoner is being sentenced. Secondly, if a prisoner is of otherwise good character, the sentencing judge must take that fact into account. However, the weight that must be given to the prisoner's otherwise good character will vary according to all of the circumstances of the case. 158 With respect to the primary judge, it seems to me that in determining whether the appellant was of otherwise good character, he did take into account the offences for which the appellant was being sentenced. At [29] of the primary judge's reasons for judgment (Deckers Outdoors Corporation Inc v Farley (No 9) [2010] FCA 1007), his Honour set out aspects of the appellant's conduct "in the course of the present litigation" which he thought ought to be "balanced against" the evidence of the appellant's previous good character. The primary judge concluded that "such conduct clearly undermines his claim to have been of good character". 159 This conclusion makes clear that the primary judge was addressing the appellant's claim to have previously been of good character, and impermissibly regarded that claim to have been undermined by his conduct in the litigation. I do not, however, regard the error as significant and would not for that reason alone have set aside the orders made by the primary judge.

Double punishment 160 The fourth ground of appeal argued by the appellant is that the primary judge erred "by doubly punishing the appellant". It was submitted that that had occurred in relation to charges 36 and 37 and in relation to charges 4 and 5. The reasons of Gray J and Besanko J demonstrate, and I am satisfied, that there is no merit in this ground of appeal.

the fifth ground of appeal 161 The fifth ground of appeal relies on what the primary judge said at [40] of his reasons for judgment: The gravity of his offending was compounded when, on 5 July 2008, he instructed senior counsel who then appeared on his behalf to advise the Court that he and his wife had "never intended to break the [November 2007] orders and certainly intend to abide by the orders of the Court in the future … They are completely prepared to make further undertakings to abide by Court orders": see Deckers (No 7) at [11]. Despite these assurances he continued to produce counterfeit products at Christensen Street. 162 What Senior Counsel said on behalf of the appellant is somewhat truncated in the primary judge's reasons for judgment. What was said is as follows: We dispute that the evidence relied on by the applicant is sufficient to warrant the orders that are sought, so we would contest that there is enough evidence to indicate there is a breach of the orders by my clients. That's the first point. But in any event, to short-circuit all matters, I have been instructed to inform the court that my clients have never intended to breach the orders and certainly intend to abide by the orders of the court in the future; that they have suffered under the disadvantage of not fully understanding what the previous orders were. Although they deny there has been a breach, they say they have never really been properly explained to them and they are completely prepared to make further undertakings to abide by court orders. 163 It is apparent from what Counsel said that the appellant was disputing a breach of the orders. That was Counsel's first point. Counsel's further comments were made in an attempt "to short-circuit all matters". It seems to me that Counsel was suggesting that the proceedings not be continued and be resolved on the basis that the appellant (and his wife) give undertakings to abide by the orders sought by the respondent. He was indicating the preparedness of the appellant to give undertakings as to future conduct with a denial of any past breaches. The primary judge characterised what was said as the giving of "assurances". The breach of such assurances was regarded by the primary judge as compounding the gravity of the appellant's offending. That observation, together with the attention given to this issue, suggests to me that the primary judge gave this matter significant weight. 164 With respect, I think that the primary judge erred in characterising what was said by Counsel as the giving of assurances. The only relevance of what was said by Counsel is the comment that the November 2007 orders had been explained to the appellant at least on or before 5 June 2008 (not 5 July 2008 as suggested in the primary judge's reasons). The primary judge would have been entitled to take that matter into account in assessing the gravity of contraventions that occurred thereafter. However, in my view the primary judge erred in placing what I regard to have been significant weight on what he wrongly characterised to be a breach by the appellant of assurances given to the Court. That error is of some significance and helps to explain, at least in part, why the primary judge was motivated to impose the sentences that he did.

manifestly excessive 165 The sixth and final ground of appeal is that "the individual sentences, total effective sentence and period of sentence not held in suspense are manifestly excessive". Having already arrived at the view that there were errors in the sentencing process and that the appellant must be re-sentenced, it is not strictly necessary for me to deal with this ground of appeal. However I propose to do so, including for the purpose of explaining why, in re-sentencing the appellant, I have taken the view that I have. 166 A manifest error in sentencing arises because the sentence imposed is out of the range of sentences that could have been imposed: Hili v The Queen [2010] HCA 45 at [60]. Manifest error, as Heydon J said in Hili, is made out where the order is unreasonable or plainly unjust. By reference to House v The King (1936) 55 CLR 499, Heydon J explained: It is not surprising that the leading case in this Court on the power of appellate courts to intervene in discretionary judgments, House v The King, is a sentencing case. Nor is it surprising that in House v The King the Court divided appellable errors in discretionary judgments like sentencing judgments into two categories. The first was stated thus: "If the judge acts upon a wrong principle, if he allows extraneous or irrelevant matters to guide or affect him, if he mistakes the facts, if he does not take into account some material consideration, then his determination should be reviewed and the appellate court may exercise its own discretion in substitution for his if it has the materials for doing so." The second existed where the order was unreasonable or plainly unjust. "It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is unreasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred." In the second category, appellate intervention takes place because the character of the order indicates that some underlying error within the first category has taken place, even though it is not possible to identify it. 167 Manifest excess, or inadequacy, of sentence maybe revealed by consideration of all of the matters that are relevant to fixing a sentence: Hili at [60]. Bearing in mind all of the relevant factors, there is nevertheless one particular factor which is of paramount significance in explaining why, in my view, each of the sentences of imprisonment imposed upon the appellant were excessive. 168 In Louis Vuitton Malletier SA v Design Elegance Pty Ltd [2006] FCA 83 at [25], Merkel J set out the factors which he accepted were relevant to penalty. The primary judge adopted that analysis, but it is not apparent to me that he applied it, at least in one important respect. Relevantly, Merkel J identified the following in relation to the question of imprisonment: Imprisonment 1.8 It is widely accepted that the court should only impose a term of imprisonment in the most serious criminal contempt cases: Keeley v Justice Brooking (1979) 143 CLR 162 at 179; Gallagher v Durack (1983) 152 CLR 238. 1.9 In Deputy Commissioner of Taxation v Hickey [1999] FCA 259 [(1999) 42 ATR 229], Carr J held that imprisonment is a "last resort": see also R v Vasin (1985) 39 SASR 45; James (1985) 14 A Crim R 364; Skipper (1992) 64 A Crim R 260. 169 The consideration at 1.9 that imprisonment is a "last resort" has, in the context of contempt proceedings, been restated by a number of judges of this Court including by Sackville J in Australian Securities and Investment Commission v Matthews [1999] FCA 803 at [30]. 170 In James (to which Merkel J referred) Burt CJ stated that it is now accepted everywhere that imprisonment is a sentence of last resort: at 364. His Honour referred to the Law Reform Commission's Interim Report on Sentencing of Federal Offenders and its recommendation that courts should not resort to the use of imprisonment as a punishment unless no other sanction can achieve the objectives contemplated by law. As his Honour observed, that recommendation was accepted and acted upon by Parliament enacting s 17A(1) of the Crimes Act 1914 (Cth) ("the Crimes Act") which provides: s 17A(1) A court shall not pass a sentence of imprisonment on any person for a federal offence, or for an offence against the law of an external Territory that is prescribed for the purposes of this section, unless the court, after having considered all other available sentences, is satisfied that no other sentence is appropriate in all the circumstances of the case. 171 Whilst a contempt is not a federal offence for the purposes of s 17A of the Crimes Act (Pattison (Trustee), in the matter of Bell (Bankrupt) v Bell [2007] FCA 137 at [47]), I see no reason why the same approach ought not be taken in relation to the punishment of a contempt. Indeed, that approach is implicit in the notion that imprisonment is a "last resort". 172 Burt CJ in James referred to the criteria put forward by the Law Reform Commission in its report which lead to the enactment of s 17A(1) of the Crimes Act. The criteria recommended were as follows: For the purposes of determining whether some sentence other than imprisonment should be imposed on a person convicted of an offence against a law of the Commonwealth, the Court shall have regard to one or more of the following - (a) whether the person has endangered the life or personal security of others; or (b) whether the offence is of such a nature that no punishment other than imprisonment would be sufficiently severe, having regard to the harm done; (c) whether a sentence other than imprisonment would be inadequate having regard to the seriousness of the offence; (d) whether the person has been convicted, whether in the State or Territory in which he is convicted or not, of an offence similar to that in respect of which he is to be sentenced. 173 Burt CJ adopted those criteria as indicating the correct approach, but emphasised that in the application of the criteria "one must always have regard to the character and physical and mental condition of the person to be sentenced and, indeed, to all things personal to him": at 366. His Honour emphasised that the appropriate question is not whether the person to be sentenced has committed an offence which is deserving of imprisonment; the question is whether in all of the circumstances no other sentence is appropriate: at 366. The authority of a court will be undermined rather than enhanced if courts are seen to be punishing more severely in relation to contempts of court than for other matters. 174 On that basis and in the context of punishment for contempt, the question is whether by reference to the harm done, the seriousness of the contempt, any prior relevant misconduct and the physical, mental and other personal conditions of the person to be sentenced, no sentence other than imprisonment is (in all the circumstances) appropriate. 175 The extent of the harm done and the seriousness of the contempt are obviously interrelated. Traditionally, sanctions for contempt reflected the purpose or object of the particular kind of contempt in question. The distinction between civil and criminal contempt was explained by Brennan, Deane, Toohey and Gaudron JJ in Witham v Holloway (1995) 183 CLR 525 at 530: In general terms, the distinction between civil and criminal contempt is that a civil contempt involves disobedience to a court order or breach of an undertaking in civil proceedings, whereas a criminal contempt is committed either when there is a contempt in the face of the court or there is an interference with the course of justice. However, disobedience or breach of an undertaking amounts to a criminal contempt if it involves deliberate defiance or, as it is sometimes said, if it is contumacious. 176 As the majority went on to recognise (at 531), the basis of the distinction "is said to lie in the difference between proceedings which are remedial or coercive in the interests of the private individual and proceedings in the public interest to vindicate judicial authority or maintain the integrity of the judicial process". However as the majority went on to emphasise (at 533), non-compliance with court orders necessarily constitutes an interference with the administration of justice and thus the public interest of vindicating judicial authority is raised in relation to both civil and criminal contempts. It is for that reason that in a civil contempt a "penal or disciplinary jurisdiction" may also be called into play: Witham at 533. 177 The vindication of judicial authority must necessarily reflect the nature of the challenge to that authority inflicted by the conduct in contempt in question. Not all contempts involve an intention to disobey the order of the court let alone contumacy and public defiance. In terms of degree of gravity there is a broad spectrum. A civil contempt does not require an intention to breach the court's order and may result from casual, accidental or unintentional disobedience. If, however, the act or omission is wilful, a court will have the capacity to fine or imprison the contemnor. A wilful breach is to be distinguished from the more serious contumacious breach required as a necessary element of establishing a criminal contempt. As McHugh J pointed out in Witham (at 542) by reference to Lord Wilberforce speaking on behalf of the House of Lords in Heatons Transport (St Helens) v Transport and General Workers' Union [1973] AC 15 at 108-109, wilful breach is not the same as "contumacious or insulting behaviour or interference with the administration of justice". The seriousness of contumacious conduct will also depend upon whether the disobedience was constituted by private resistance or public defiance. 178 The use of imprisonment (or the threat thereof) in order to coerce compliance with court orders is a necessary tool in dealing with contempt of court and will be justifiably utilised from time to time. Imprisonment, as a disciplinary sanction for contempt, ought to be confined to the most serious of contempts. If, as Merkel J in Louis Vuitton identified, imprisonment should be reserved "for the most serious criminal contempt cases", it follows that in the absence of serious contumacious disobedience, imprisonment should rarely be imposed as a disciplinary sanction. As Keane CJ, Dowsett and Reeves JJ recently observed in Jones v Australian Competition and Consumer Commission [2010] FCAFC 136 at [36], there would be a serious question of the propriety of a sentence of imprisonment if the charges raised only a case of civil contempt; that is, a case where contumacious conduct was not contended for. 179 There was no allegation of contumacious conduct in the statement of charges made against the appellant. Indeed, there was not even an allegation of wilful disobedience. What the primary judge was dealing with is properly to be characterised as charges of civil contempt: Microsoft Corporation v Marks (No 1) (1996) 69 FCR 117 at 137. 180 The charges laid against the appellant are set out in the reasons for judgment of Gray J. The appellant is alleged either to have failed to comply with the orders for the provision of affidavits, or to have "deliberately and voluntarily" manufactured, distributed or otherwise dealt with the "Enjoined Products". There is also a charge (charge 12) that the appellant "deliberately and voluntarily" approached within 100 metres of the Moorabbin factory. In Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391 the primary judge found that the appellant "deliberately" engaged in the conduct alleged in each of charges 36, 37, 52, 55, 57, 61 and 67. In Deckers Outdoor Corporation Inc. v Farley (No 7) [2010] FCA 560, the primary judge made the same findings in relation to charges 4, 5 and 12 although he wavered in description between "deliberately and voluntarily" and "consciously and voluntarily". 181 The phrase "deliberately and voluntarily" which was utilised in the charges and which was adopted by the primary judge appears to have been taken from the decision of Gillard J in Advan Investments Pty Ltd v Dean Gleeson Motor Sales Pty Ltd [2003] VSC 201 at [32]. The primary judge identified the elements necessary to make good a charge of civil contempt by reference to the elements identified by Gillard J in Advan Investments: see Deckers (No 6) at [130] and Deckers (No 7) at [7]. 182 In Advan Investments, Gillard J explained what he meant by the phrase "deliberately and voluntarily" at [32]-[51]. His Honour explained that a "deliberate and voluntary" act or omission did not need to be accompanied by an intent to deliberately breach the order of the court: at [51]. A "deliberate and voluntary" act or omission does not require wilfulness and can be constituted by casual, accidental or unintentional conduct: Advan Investments at [43]-[45]. 183 Neither the reasons for judgment of the primary judge in Deckers (No 6) nor those in Deckers (No 7) contain a finding that the appellant breached the orders in question with intent to deliberately breach those orders. There is no express finding of wilfulness. There is no finding of contumacy or defiance. The charges laid against the appellant did not call for such findings to be made. 184 The primary judge's reasons for judgment in sentencing the appellant (Deckers No 9) do not describe the appellant's conduct as either wilful or contumacious. The primary judge did say of the appellant that he had "since November 2007, consistently chosen to ignore orders made by the Court" and referred to what the primary judge called "his dismissive attitude to compliance with court orders". I think that by those observations the primary judge was adverting to the presence of wilfulness. But the difficulty I have is that (unlike the position in relation to Vladimir Vaysman where findings of "contumelious disregard" were made: see Deckers (No 8) at [15]) there are no findings made of contumacious conduct on the part of the appellant. 185 When an analysis is made of the findings that the primary judge made on each of the charges, as Gray J has done, it is not obvious that the conduct of the appellant was contumacious. As Gray J has observed in relation to those charges dealing with the failure of the appellant to comply with orders requiring affidavits, the findings appear to have been made on the basis of a failure to do what the appellant ought reasonably to have done, rather than on the formation of an intention not to comply with the Court's orders: compare Maff Investments Pty Ltd (in Liquidation) v Fuller (1991) 3 WAR 546. 186 Nor is it apparent from the reasons for judgment why the primary judge determined that the appellant's conduct "warrants nothing less than a sentence of imprisonment": at [45]. It seems to me that the primary judge was clearly of the view that the appellant's conduct was deserving of imprisonment, but for the reasons I have already alluded to, the appropriate question is whether in all of the circumstances no other sentence was appropriate. There is no consideration in the primary judge's reasons as to why punishment by way of substantial fines would not have been appropriate in the circumstances. If the appellant's impecuniosity was the reason, as Lander J said in Jones v Toben (No 2) [2009] FCA 477 at [83]: Impecuniosity could not be a reason to imprison a person when the appropriate penalty would otherwise be a fine. 187 In the end, the absence of express findings of contumacious conduct, the doubt I have that the findings actually made as to the appellant's conduct clearly warrant a finding of contumacy, together with a consideration of the appellant's age, health and the absence of prior convictions, lead me to the conclusion that the sentences of imprisonment imposed were manifestly excessive. 188 In reaching that conclusion I have also had regard to the schedule of cases put before the primary judge which show the penalties imposed by this Court in other contempt cases. As I have already said, every case is different and regard must be given to the particular circumstances of the case at hand. Nevertheless, when a comparison is made with sentences of imprisonment imposed in other cases, the manifestly excessive nature of the sentences imposed upon the appellant is apparent. 189 Whilst I have had regard to all of the cases in the schedule, particular regard may be had to Jones v Toben (No 2). Dr Toben was found guilty of wilful and contumacious contempt of court on 24 occasions between 7 December 2007 and 25 June 2008. Dr Toben published material in disobedience of orders made by the Court on 17 September 2002 and in breach of undertakings given to the Court on 27 November 2007. The 24 counts of contempt were committed on 13 different occasions over several years. After the hearing of the contempt charges, Dr Toben continued his public defiance of the Court's authority. Lander J found that Dr Toben's conduct evinced a calculated intention to disobey orders of the Court and undertakings given to the Court for the purpose of bringing the Court into disrepute: at [73]. Dr Toben continued to disobey the September 2002 orders and breached the November 2007 undertakings throughout the period that contempt proceedings were being organised to be heard between November 2007 and August 2008. He continued to disobey the September 2002 orders and breached the November 2007 undertakings after the hearing of the contempt charges and up until the time of the hearing for costs and penalty. Dr Toben made provocative statements calculated to scandalise the Court in documents published on the day of the hearing for costs and penalty. His public defiance of orders of the Court had continued over a number of years. His conduct in defiance of court orders involved racial offence and thus raised the public interest in a manner that the appellant's conduct does not. Dr Toben was 64 years of old when sentenced and had a medical condition which affected his legs. Whilst an apology was proffered, it was regarded by the Court as given only for the purpose of influencing the penalty to be imposed. Dr Toben was sentenced to 3 months imprisonment.

re-sentencing 190 I agree with both Gray J and Besanko J that this Court should re-sentence the appellant. 191 Charges 52, 55, 57, 61 and 67 relate to non compliance or lateness in compliance with the filing of affidavits by the appellant and companies of which the appellant was a director. Non-compliance with each of the orders upon which those charges are based would have been excused if the appellant had objected to compliance on the grounds that the information sought would tend to incriminate him or make him liable to civil penalty. The offences specified by Part 14 of the Trades Mark Act 1995 make it apparent that the appellant could have taken that objection. It appears to me that the appellant's failure had more to do with foolishness than wilfulness. In circumstances where the primary judge did not make a finding of wilfulness and where the findings made do not make it clear that wilfulness was involved, I am not satisfied that the Court has the power to punish these contempts by the imposition of a fine: Australasian Meat Industry Employees' Union v Mudginberri Station Pty Ltd (1986) 161 CLR 98. 192 Charges 4 and 5 are separate but relate to the same period - March 2008 to 23 January 2009. The first relates essentially to manufacturing Enjoined Products whilst the other relates to selling the goods manufactured. I am satisfied on the basis of the findings that were made by the primary judge that the orders of the Court specified by these charges were knowingly breached. Whilst there is no express finding of wilful conduct, there is sufficient evidence that the appellant's conduct was not simply casual, accidental or unintentional. The findings made do not sufficiently identify the quantity of goods produced or distributed but I am nevertheless satisfied that the orders were infringed on numerous occasions over a period of at least a number of months. The conduct comprising charges 4 and 5 is serious and particularly so because the appellant continued manufacturing and distributing Enjoined Products after becoming aware that charges involving earlier breaches of orders were pending and where a hearing took place in April and May of 2008. 193 For reasons that I have already explained, I do not consider that no sentence other than imprisonment is appropriate. 194 Charges 36 and 37 relate to the distribution and manufacture of Enjoined Products over a shorter and earlier period from 27 November 2007 to 12 December 2007. Again, on the findings made, the extent of manufacture and sale is not clear. Nevertheless, I am satisfied that the conduct involved was wilful, but I am not satisfied that no sentence other than imprisonment is appropriate. 195 Charge 12 relates to the appellant approaching and entering, (on one occasion) the Moorabbin factory in breach of the 21 January 2009 order. The explanation given by the appellant for entering the premises was held by the primary judge to be unconvincing. I am satisfied on that basis that the conduct was wilful. Again, for reasons I have already explained, I am not satisfied that no sentence other than imprisonment is appropriate. 196 I am of the view that the requirement to vindicate the Court's authority can be satisfied by the imposition of fines. In respect of charge 4, I would impose a fine of $30,000. In respect of charge 5, I would impose a fine of $20,000. In respect of charge 12, I would impose a fine of $5,000. In respect of charge 36 I would impose a fine of $10,000. I would impose a fine of $15,000 in respect of charge 37. These fines total $80,000. Given that the conduct the subject of these charges was related, I would apply the totality principle and would reduce the total fine to $50,000. As the appellant has already served approximately 50 days in prison, in circumstances where I regard imprisonment as having been inappropriate, I would add an order that the appellant be excused from the payment of the fines I would impose by reason of the term of imprisonment already served. 197 The primary judge was not satisfied that the appellant either acknowledged or accepted that he had contravened orders made by the Court. On the basis of the findings made by the primary judge, it appears to me that at the time the appellant was sentenced, it was both open and would have been appropriate for the Court to have made coercive (as distinct from punitive) orders designed to facilitate future compliance with the orders that were previously breached. For that purpose alone, if I had been sentencing the appellant at that time, I would have made an order that the appellant be sentenced to one month's imprisonment in relation to charge 4, but that the sentence be wholly suspended for 12 months calculated from 15 September 2010, on the basis that if the appellant thereafter breached any of the orders of Tracey J made on 27 November 2007 binding upon him, the appellant would, if a judge so directed, serve all or such part of the sentence as the judge directed. The Court has power to impose conditional orders of that kind: Hughes v Australian Competition and Consumer Commission [2004] FCAFC 319 at [56] and [58]. However, the sentence of imprisonment already served by the appellant militates against the need for a coercive order of that kind to now be made. 198 I would not disturb the costs order made in the Court below. Despite the fact that the respondent conceded that it should pay costs should the appeal be allowed, I would not make any order as to the costs of the appeal. As a contemnor, the appellant is not well placed to seek relief from this Court for the payment of his own costs. I certify that the preceding fifty-six (56) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bromberg.