Sky Channel Pty Ltd v Intertwine Pty Ltd [2003] FCA 67 (11 February 2003)

Last Updated: 12 February 2003

FEDERAL COURT OF AUSTRALIA

Sky Channel Pty Ltd v Intertwine Pty Ltd [2003] FCA 67

SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) & ANOR v

INTER-TWINE PTY LIMITED (ACN 007 204 908) & ANOR

N 93 of 2003

LINDGREN J

11 FEBRUARY 2003

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 93 OF 2003

BETWEEN:	SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LTD (ACN 068 104 680) SECOND APPLICANT
AND:	INTER-TWINE PTY LIMITED (ACN 007 204 908) FIRST RESPONDENT TREVOR ERNEST CURTIS RICHARDS SECOND RESPONDENT
JUDGE:	LINDGREN J
DATE OF ORDER:	7 FEBRUARY 2003
WHERE MADE:	SYDNEY

BY CONSENT:

The applicants undertake:

(a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the orders made on 7 February 2003; and

(b) to pay the compensation referred to in (a) to the person there referred to,

and noting the undertaking to the court of Kate Harrison, solicitor for the applicant:

THE COURT ORDERS THAT:

1. The Applicants' Notice of Motion dated 7 February 2003 be made returnable instanter.

Entry and search of premises and vehicles on or around the premises

2. That forthwith upon service of these orders, the First and Second Respondents, whether by themselves, their servants, agents or otherwise, and any person apparently occupying or in charge of the premises hereafter referred to, permit a total of:

(a) not more than two (2) representatives of the Applicants;

(b) not more that two (2) partners or employees of the Applicants' solicitors Gilbert + Tobin

(collectively referred to as the Applicants' Representatives); and

(c) a solicitor other than a member of Gilbert + Tobin (Independent Solicitor)

to enter and remain upon the premises of the Royal Mail Hotel at Melbourne Street, Mulwala, NSW (the Premises) (including the whole of the buildings and any appurtenant buildings, garages or basements on the Premises) or in any of the vehicles under the control of the Respondents or either of them which may be on or around the Premises at any hour between 9am and 7pm from Monday, 10 February 2003 to Tuesday 11 February 2003 inclusive and to remain, or if necessary, to re-enter the Premises, until the Orders have been complied with.

3. That forthwith upon service of these orders, the First and Second Respondents and any person apparently occupying or in charge of the Premises permit the Applicants' Representatives to:

(a) search for, inspect, test, examine (including with the use of facilities examine, to decode or restore data), photograph or video tape all and any smartcards, set top boxes, converters (collectively Decoder Devices), and associated cabling relating to the display of subscription television (Associated Cabling); and

(b) remove into the possession and safekeeping of the Applicants' solicitors all or any Decoder Devices.

Restrictions on the Service and Carrying out of Orders 2 and 3

4. That Orders 2 and 3 are subject to the following restrictions:

(a) The Orders must be served by the Independent Solicitor, and Orders 1 and 2 must be carried out in his or her presence and under his or her supervision.

(b) At the time the Orders are served on the Respondents or the person in charge of the Premises, the Independent Solicitor will also serve a notice in the form set out in Schedule 2 to this Application.

(c) The Orders do not require the person served with the Orders to allow anyone to enter the Premises who in the view of the Independent Solicitor could gain commercially from anything he or she might read or see on the Premises if the person served with the Orders objects.

(d) Nothing may be removed from the Premises until a list of the items to be removed has been prepared, and a copy of the list has been supplied to the person served with the Orders, and he or she has been given a reasonable opportunity to check the list.

Obtaining Legal Advice and Applying to the Court

5. That before permitting entry to the Premises by any person other than the Independent Solicitor and one of the Applicants' Representatives, the Respondents may seek legal advice, and apply to the Court to vary or discharge the orders, provided that any such application is made promptly upon service of these orders and further provided that if the Respondents wish to seek legal advice as permitted by these orders, they must first inform the Independent Solicitor and keep him or her informed of the steps being taken.

6. That while the Respondents seek legal advice in accordance with paragraph (a) above, entry to the Premises to any person other than the Independent Solicitor and one of the Applicants' Representatives may be refused, and permission for the search to begin may be refused, for a period not to exceed one hour (unless the Independent Solicitor agrees to a longer period).

Prohibited Disclosure

7. That forthwith upon the service of these orders, the First and Second Respondents, whether by themselves, their servants, agents or otherwise, and any person apparently occupying or in charge of the Premises be restrained from informing any other person of the existence of these orders or their proposed execution, except for the purpose of obtaining legal advice, until 96 hours after the service of the orders.

Delivery of Items

8. That forthwith upon the service of these orders, the First and Second Respondents:

(a) must immediately disclose the whereabouts of, and make available to the Applicants' Representatives, all Decoder Devices and Associated Cabling in their possession, custody or power whether located on the Premises or otherwise; and

(b) provide to the Applicants' Representatives such assistance as they may require to carry out the purposes set out in order 3.

Prohibited Acts

9. That until further order of the Court, the First and Second Respondents and any person apparently occupying or in charge of the Premises, whether by his, her or its servants, agents or otherwise, be restrained from moving, destroying, altering, concealing, removing from the Premises or parting with possession or control of any items which are or could be considered to be Decoder Devices, Associated Cabling or documents relating to the supply and installation of Decoder Devices (Decoder Documents) (except by delivery of the Decoder Devices to the Applicants' Representatives in accordance with these orders).

Independent Solicitor

10. (a) That the Independent Solicitor prepare a written report about the execution of the orders and as soon as practicable serve a copy of that report on each Respondent and present a copy of that report to the Court; and

(b) the Independent Solicitor be, or be accompanied by, a woman (who may be one of the Applicant's Representatives).

Relief

11. That each of the First and Second Respondents make, file and serve within fourteen (14) days of the making of this order, an affidavit that discloses with particularity:

(a) the identity of each supplier to the First or Second Respondent (as the case may be) of any and all items of Decoder Devices, Associated Cabling and Decoder Documents which are or have been in the possession, custody or control of the Respondents or either of them;

(b) the identity of each person who installed or assisted in the installation of the said Decoder Devices and Associated Cabling at the Premises;

(c) the identity of any person to whom the Respondents or either of them gave possession of, or supplied, any item of any Decoder Devices, Associated Cabling or Decoder Documents;

(d) the timing of, price paid, and the person paid, for each supply and installation of the said Decoder Devices and Associated Cabling;

(e) if any of the matters referred to in paragraphs (a) to (d) above are not known to the person swearing the affidavit, the best information known to that person which might lead to ascertaining those matters,

such affidavit to annex or exhibit all documents disclosing the matters referred to in paragraphs (a), (b), (c) and (d) above and to verify that all such documents have been so annexed or exhibited.

12. That the First and Second Respondents whether by their servants, agents or otherwise, be restrained until further order from displaying in the Premises the First Applicant's commercial subscription pay television service or any encoded broadcast made by the First Applicant unless such display is authorised in writing by the First Applicant.

13. That the First and Second Respondents whether by their servants, agents or otherwise, be restrained until further order from displaying in the Premises the Second Applicant's commercial subscription pay television service or any encoded broadcast made by the Second Applicant unless such display is authorised in writing by the Second Applicant.

Procedural matters

14. That the time for service of this Notice of Motion, the Application and supporting affidavits be abridged and that service be effected by 5.00pm on Tuesday, 11 February 2003.

15. That the Notice of Motion be made returnable before the Duty Judge at 10.15 am on Thursday, 13 February 2003.

16. That service on the Respondents of these orders, the Application and the supporting affidavits be effected by serving a sealed copy on the Second Respondent or on any person apparently occupying or in charge of the Premises.

17. That entry of these orders be expedited.

18. That the Respondents be granted liberty to apply on twelve (12) hours' notice.

19. That the Applicants to be granted liberty to apply on forty-eight (48) hours' notice.

20. That until further order the First and Second Respondents may make any application to the Court to the Duty Judge by telephone.

21. That the Respondents be granted liberty to appear at the return of the Notice of Motion by telephone in a manner to be arranged with the Court.

22. That the proceedings stand over until 10.15 am Thursday, 13 February 2003 before the Duty Judge.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 93 OF 2003

BETWEEN:	SKY CHANNEL PTY LIMITED (ABN 77 009 136 010) FIRST APPLICANT AUSTAR ENTERTAINMENT PTY LTD (ACN 068 104 680) SECOND APPLICANT
AND:	INTER-TWINE PTY LIMITED (ACN 007 204 908) FIRST RESPONDENT TREVOR ERNEST CURTIS RICHARDS SECOND RESPONDENT

JUDGE:	LINDGREN J
DATE:	11 FEBRUARY 2003
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1 Subsection 135ANA(4) of the Copyright Act 1968 (Cth) provides for the granting of injunctive relief and either damages or an account of profits in an action under s 135ANA. The section is a relatively recent one, having been introduced into the Act by the Copyright Amendment (Digital Agenda) Act 2000 (Cth) (No 110 of 2000). The conduct which gives rise to the action under the section is defined in subsection 135ANA(1). Some of the terms used in that subsection are defined in section 135AN.

2 The applicants seek Anton Piller relief (see Anton Piller KG v Manufacturing Processes Ltd [1975] EWCA Civ 12; [1976] Ch 55) as well, of course, as an abridgment of the time for service.

3 I am satisfied that a prima facie case is established. The Anton Piller relief sought relates only to `any smart cards, set top boxes, converters ... and associated cabling relating to the display of subscription television'. The Anton Piller relief does not relate to documents, although another order sought seeks to restrain the respondents from removing or disposing of documents.

4 On the return date it is conceivable that the respondents may seek a transfer of the proceeding to another Registry of the Court, but I say nothing about the prospects of success of any such application. I propose to make the orders sought in the motion.

5 I grant leave to the applicants to file in Court the application, notice of motion, solicitor's undertaking and eight affidavits in support. I will note the undertakings and make the orders numbered 1-22 referred to in the form of orders initialled by me, dated today and placed with the papers.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.

Associate:

Dated: 11 February 2003

Counsel for the Applicant:	Mr R Cobden
Solicitor for the Applicant:	Gilbert & Tobin
The application was heard ex parte
Date of Hearing:	7 February 2003
Date of Judgment:	11 February 2003