Case: Lamb v Hog's Breath Company Pty Ltd (No 2) [2007] FCA 201
Outcome: cited
On 26 February 2007 I made orders in the following terms: 1. The applicant is to file and serve a substituted statement of claim on or before 26 March 2007. 2. The respondents are at liberty to provide to the applicant on or before 12 March 2007 information by way of letter or disclosure of documents or by an affidavit sworn by their solicitor upon instructions, setting out: (i) their respective functions as members of the Hog's Breath group of companies in Australia; (ii) their respective roles in the use of the Hog's Breath Works as defined in the statement of claim and/or the registered trade marks referred to in the statement of claim; (iii) the ways in which the Hog's Breath Works and/or the registered trade marks have been used by them in respect of the classes of goods and services to which they relate. I also made orders relating to the costs of the respondents' strike out motion and adjourned the directions hearing to 11 April 2007: Lamb v Hog's Breath Company Pty Ltd (No 2) [2007] FCA 201. 4 In argument prior to the delivery of that judgment counsel for Mr Lamb said that he did not have a clear picture of the respective functions of the respondent companies within the Hog's Breath group. In the original statement of claim it was said that HB Investments Pty Limited (HB Investments) held registered trade marks and that the principal case against it was that it had authorised infringement of Mr Lamb's copyright in the Wave Hog Work by licensing to the other corporate respondents the right to use those trade marks. What trade marks were licensed to which respondents did not appear. A significant obstacle in the way of a more precise pleading on Mr Lamb's part was the absence of information about which of the companies took that role within the Hog's Breath group and which was responsible for the production and marketing of the various articles said to bear infringing productions of the work or of a substantial part thereof. As noted in that judgment want of knowledge does not of itself excuse a pleading which does not identify which cause of action is raised against which respondent or which fails to identify the material facts constituting each such cause of action. Although O 15A of the Federal Court Rules may well have been available to enable Mr Lamb to identify the persons against which he might have a cause of action, or the causes of action he might have, it was not availed of. 5 A substituted statement of claim was filed on 10 April 2007. It was a much more substantial document than its predecessor and was settled by senior counsel. It identifies Hog's Breath Company Pty Ltd (Hog's Breath Company) as the master franchisor, since 24 October 2006, of a franchised chain of restaurants around the world known as "Hog's Breath Cafes". A list of Australian franchisees is scheduled to the statement of claim. Hog's Breath Cafe (Australia) Pty Ltd (Hog's Breath Cafe (Australia)), the second respondent, is identified as the master franchisee of the Australian franchisees since at least 24 October 2006. HB Investments is said to be the registered owner of Australian registered trade mark numbers 701388 and 1013512, both of which involve the image described, inter alia, as "Hog, cartoon wears sunglasses &amp; crossed bandages, adhesive on body". Hog's Breath Clothing Co Pty Ltd (Hog's Breath Clothing) is said to be the owner and operator of a business selling merchandise under the name "Hog's Breath Clothing" through a website and through the Australian franchisees. The fifth respondent, Mr Algie, is said to be a director, secretary and majority shareholder of Hog's Breath Company and to have been a director of Hog's Breath Cafe (Australia) between September 1995 and April 2000. He is also said to be a director, secretary and majority shareholder of HB Investments and a director, secretary and majority shareholder of Hog's Breath Clothing. 6 Paragraphs 7 to 12 assert subsistence and ownership of copyright in the Wave Hog Work by Mr Lamb. Paragraphs 13 and 14 plead and particularise Mr Algie's access and exposure to the Wave Hog Work and his knowledge that the respondents are not, and have not, been the owners of copyright in that work. It is alleged that the work depicted in Schedule B to the application is a reproduction of the whole or a substantial part of the Wave Hog Work ([15]). Paragraphs 16 to 21 deal with the conduct of the Australian franchisees asserting, inter alia, that they have displayed the infringing work on restaurant signage and on banners and have distributed or offered for sale or exhibited to the public various items depicting that work. These items are set out in a schedule to the substituted statement of claim. 7 The substituted statement of claim then sets out the bases of Mr Lamb's copyright claim against Hog's Breath Company ([22]-[38]), Hog's Breath Cafe (Australia) ([39]-[54] inclusive), HB Investments ([55]-[66] inclusive), Hog's Breath Clothing ([67]-[83] inclusive) and Mr Algie ([84]-[103] inclusive). There are allegations of a common design entered into by the various respondents ([104]) and pleading of facts relied upon to support a claim for additional damages under s 115(4) of the Copyright Act 1968 (Cth) and conversion damages under s 116(1) of that Act ([105]-[106]). Moral rights claims are also raised against the respondents ([107]-[175]). The substituted statement of claim concludes with allegations that the registration by HB Investments of the Australian registered trade marks was and remains unlawful.