Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd (No 2) [2009] FCAFC 5 (2 February 2009)

Last Updated: 2 February 2009

FEDERAL COURT OF AUSTRALIA

Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd (No 2) [2009] FCAFC 5

COSTS – whether trial judge’s original order that the appellant pay the respondent’s cost be set aside – effect of obiter dicta on costs – procedural deficiency in application – absence of special circumstances


Fisse v Secretary, Department of Treasury (No 2) [2008] FCAFC 200 cited
Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 cited, followed





















THE POLO/LAUREN COMPANY L.P. v ZILIANI HOLDINGS PTY LIMITED and ADAM ZILIANI
NSD 240 of 2008

BLACK CJ, JACOBSON & PERRAM JJ
2 FEBRUARY 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 240 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

THE POLO/LAUREN COMPANY L.P. Appellant

AND:	ZILIANI HOLDINGS PTY LIMITED First Respondent ADAM ZILIANI Second Respondent

JUDGES:	BLACK CJ, JACOBSON & PERRAM JJ
DATE OF ORDER:	2 FEBRUARY 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The application for the variation of the orders of 18 December 2008 be refused.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 240 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

THE POLO/LAUREN COMPANY L.P. Appellant

AND:	ZILIANI HOLDINGS PTY LIMITED First Respondent ADAM ZILIANI Second Respondent

JUDGES:	BLACK CJ, JACOBSON & PERRAM JJ
DATE:	2 FEBRUARY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1 On 18 December 2008 we dismissed the appeal with no order as to costs. When the judgment was delivered the appellant sought, and was granted, leave to put on further submissions on the question of costs. Those submissions were received on 19 December 2008. Submissions on behalf of the second respondent were received on 6 January 2009. Generally, it is undesirable that parties seek to raise questions of costs in this way: Fisse v Secretary, Department of Treasury (No 2) [2008] FCAFC 200 at [4].

2 The primary judge found, as we did, that the appellant’s allegation that its copyright had been infringed could not be sustained. His Honour did so because he concluded that the Logo was a label. If it had been necessary he would have concluded that the first respondent was entitled to rely upon the defence afforded by s 77 of the Copyright Act 1968 (Cth), that is, the design/copyright overlap defence.

3 In the event, the trial judge dismissed the appellant’s application with costs. Since we also concluded that the Logo was a label we dismissed the appeal. It was not necessary, strictly, for us to express a view on the design/copyright overlap issue, but we nevertheless made detailed observations about it, all of which were, however, obiter dicta. We concluded, contrary to the trial judge, that the first respondent would not have been entitled to rely upon that defence if it had otherwise failed on the label defence. The second respondent was represented by counsel acting pro bono and did not seek his costs of the appeal. The first respondent did not take part in the appeal. In the circumstances, we made no order as to costs.

4 The appellant does not seek to disturb that conclusion. Rather, it seeks to have the Court set aside the trial judge’s original order that the appellant pay the respondent’s costs and to order, in lieu thereof, that each party pay its own costs. This should be, so the argument ran, because each party had succeeded on one of the two issues. Of course, this is not a true costs question in this Court but rather an appeal from the trial judge’s discretionary costs order. No such order is sought in the amended notice of appeal; nor is there any ground for such an order suggested therein. Strictly, therefore, there is nothing before this Court but the bare application made in open court.

5 That would be sufficient to dispose of the matter. However, even apart from such a procedural deficiency we would reach the same conclusion. This is because, as a matter of formality, the design/copyright overlap was not determined either by the trial judge or by us. All of the remarks which were made both at first instance and on appeal on this issue were obiter dicta. No orders were made as a result of those conclusions. In that circumstance, we do not think that the premise upon which the present application rests is sound for there was no "success" on the second issue.

6 Quite apart from that consideration we would decline to interfere with the trial judge’s costs order for two other reasons. First, the design/copyright issue was itself divided into two further issues viz the question of the applicability of the s 77 defence to secondary infringement and the issue as to the proper construction of s 77. The appellant only succeeded on the second of these issues. Its victory was, therefore, less than full. Secondly, costs ordinarily follow the event in the absence of special circumstances: Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 at 234-235. We do not think that the current proceedings disclose the presence of any such circumstances. The application is refused.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Black and Justices Jacobson and Perram.

Associate:

Dated: 2 February 2009

Counsel for the Appellant:	Mr J S Cooke
Solicitor for the Appellant:	Davies Collinson Cave Solicitors
Counsel for the Second Respondent:	Mr R Cobden SC

Date of Appellant’s Written Submissions: Date of the Second Respondent’s Written Submissions:	19 December 2008 6 January 2009
Date of Judgment:	2 February 2009