Re Michael Kelland Hutchence, Andrew Charles Farriss, Timothy William Farriss, Jonathan James Farriss, Kirk Pengilly and Garry William Beers All T/As "Inxs"; Dustbarko Pty Limited T/As Mma Management; Starstruck Merchandising Pty Limited; Hariklia Herist [1986] FCA 79 (19 March 1986)

FEDERAL COURT OF AUSTRALIA

Re: MICHAEL KELLAND HUTCHENCE, ANDREW CHARLES FARRISS, TIMOTHY WILLIAM
FARRISS, JONATHAN JAMES FARRISS, KIRK PENGILLY and GARRY WILLIAM BEERS all
t/as "INXS"; DUSTBARKO PTY LIMITED t/as MMA MANAGEMENT; STARSTRUCK
MERCHANDISING PTY. LIMITED; HARIKLIA HERISTANIDIS; PHILIP MORTLOCK
And: SOUTH SEAS BUBBLE COMPANY PTY. LIMITED t/as BOOTLEG T-SHIRTS; DAPHNE VERA
PEARSON; DESMOND PEARSON; IVY PRINTING PTY. LIMITED
No. G18 of 1986
Practice and Procedure

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Morling J.

CATCHWORDS

Practice and Procedure - application for leave to appeal against interlocutory orders - application for stay of order pending determination of appeal - reluctance of appellate courts to review decisions pertaining to practice and procedure - whether the appeal would determine all the issues between the parties so as to end the litigation - application refused

Federal Court of Australia Act 1976 (Cth) s.24

HEARING

SYDNEY
19:3:1986

ORDER

Application dismissed.

Respondents to pay applicants' costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

DECISION

This is an application for leave to appeal against an interlocutory judgment given by Wilcox J on 28 February 1986. The application is made by the respondents to the proceedings in which the applicants sought to restrain the respondents from engaging in conduct which, so they alleged, was proscribed by s.52 of the Trade Practices Act 1974 (Cth). The applicants also claimed relief in respect of alleged passing off and breach of copyright. The facts giving rise to the application are dealt with extensively in his Honour's interlocutory judgment and there is no need for me to repeat them in these short reasons.

2. In substance, the interlocutory orders restrain the respondents from manufacturing, advertising, promoting and selling T-shirts or other garments bearing a design known as "The Swing" design or the "Listen Like Thieves" design or the "Flag" design. Since the amendments made in 1984 to s.24 of the Federal Court of Australia Act 1976 (Cth) an appeal against an interlocutory judgment may only be brought if the Court or a judge gives leave to appeal. In the present case the respondents not only seek leave to appeal against the interlocutory orders, they also seek a stay pending the determination of the appeal of an order made by Wilcox J on 6 March pursuant to which the respondents were required to file and serve affidavits setting out details of the sales made by them of T-shirts of the kind to which I have already referred.

3. An interlocutory order for an injunction is a matter of practice and procedure (see Adam P. Brown Male Fashions Pty. Limited v Philip Morris Inc. & Anor. (1981) 35 A.L.R. 625 at 629), and a decision to grant interlocutory relief is an exercise of discretion. The difficulty of persuading an appellate court to reverse the decision of a trial judge in such circumstances is well known. However, I agree with the submission made by counsel for the respondents that the principles applicable to the determination of appeals against discretionary interlocutory orders are not necessarily applicable to the determination of applications for leave to appeal against such decisions. This being so, cases such as Superstar Australia Pty Limited v Coonan and Denley Pty Limited & Anor. (1981) 40 ALR 183; Lloyd v Costigan (1986) 62 ALR 284 and Australian Coal and Shale Employees' Federation v The Commonwealth [1953] HCA 25; (1953) 94 C.L.R. 621 at 627 to which I was referred by counsel for the applicants are of little assistance in deciding an application for leave to appeal, unless it is contended that leave to appeal should be refused because the appeal is bound to fail. Cf. Reid v Nairn (Fisher J - 27/3/85, unreported).

4. The respondents submit that this is a proper case for the granting of leave to appeal. They argue that the decision of the trial judge seriously affects their rights and in support of that submission they refer to the following passage in his Honour's reasons:

"Although the current proceedings are merely an
application for the continuation of an interlocutory
injunction, it seems unlikely that the factual
position at any trial of the action would differ
significantly from that which appears at the present
time. In the (sic) practical terms, and having regard
to the market life of T-Shirts, the current
application is likely to be determinative of the
position of the parties, at least in relation to these
particular designs."

5. If I were confident that the appeal would determine all the issues between the parties and bring the litigation between them to an end, I would think this would be a proper case in which to grant leave to appeal. But counsel for the applicants does not concede that this is the case. He submits that there is further evidence which his clients desire to call at the final hearing of the proceedings, and that this evidence will take his clients' case further than it was taken at the interlocutory hearing. He says that he is prepared to co-operate in ensuring that the final hearing takes place as expeditiously as possible. He is not prepared to give up the right to call further evidence in support of his case at the final hearing. He says that he intends to call further evidence as to the quality of the garments which his clients manufacture and sell and that this evidence could be material in determining whether his clients are entitled to final relief.

6. In these circumstances I do not think that I can safely assume that, if leave to appeal were granted and the appeal were to succeed, the litigation would be at an end. The position might well be, if the appeal were to proceed, that the matter would go back to a single judge for final hearing, and that the evidence at the final hearing might differ significantly from the evidence which would have been considered on the hearing of the appeal by the full bench.

7. Counsel for the respondents argued that the applicants are adopting an unreasonable stance in their opposition to the present application. He submits that, on the one hand, the applicants wish to retain the benefit of the interlocutory injunction which they obtained by establishing only that there is a serious question to be tried at the final hearing, whilst at the same time refusing to co-operate in obtaining an early final hearing date. I do not think this submission is made out. It is not unreasonable for the applicants to refuse to go to a final hearing without the opportunity of supplementing the evidence tendered at the interlocutory hearing. The applicants also say that there will be difficult questions of damages to be decided at the final hearing, and that some time might be required to prepare for a final hearing on those questions. If the respondents are so advised, they can make an application for the question of liability to be determined in advance of any question of damages. I express no opinion about whether such an application might succeed, but if it can be shown to the trial judge that it is a matter of urgent necessity that the question of liability be determined as quickly as possible, he may be persuaded to defer deciding the question of damages.

8. The applicants' counsel drew attention to the fact that, at the interlocutory hearing, the respondents did not make any application that the hearing should be treated as a final hearing, and did not request the applicants to join in an application to the trial judge that he should, in effect, hear the matter as an application for final relief. In these circumstances, I think it is difficult for the respondents' counsel now to submit that the hearing of the appeal would be likely to finally determine the matters in dispute between the parties.

9. In the circumstances I do not think I should grant leave to appeal, unless I am persuaded by the respondents' further argument that if the interlocutory injunction is not discharged on appeal at the first opportunity they will suffer damage for which they cannot be compensated . The trial judge considered this matter when deciding where the balance of convenience lay. He also took into account the fact that, in his opinion, the quality of the applicants' T-shirts was superior to that of the respondents' shirts. He thought it might be a real disadvantage to the applicants if the respondents were permitted to trade in the relevant garments pending a final hearing. He considered whether the applicants' undertaking as to damages offered reasonable protection to the respondents against any loss which they might sustain by the granting of interlocutory relief. His Honour carefully considered this question and came to the view that if the respondents succeed at a final hearing they would be able without undue difficulty to establish a claim for damages. In this respect I should also note that his Honour was careful to reserve liberty to the respondents to apply for a dissolution of the injunction if they thought they could so alter their method of trading as to carry on business without infringing s.52 of the Trade Practices Act or the applicants' copyright.

10. For all these reasons I am of the opinion that the ultimate interests of the parties will be best served if the matter proceeds to a speedy final hearing, rather than by way of an appeal at this stage against the making of the interlocutory orders. I therefore dismiss the application with costs.

11. Since it is desirable that there should be a final hearing as soon as possible, I grant leave to all parties to restore the matter to the list for directions on two days notice. The parties should endeavour to agree upon an expeditious timetable which will enable the matter to be listed for final hearing at the earliest possible date.