mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Malleys Ltd v JW Tomlin Pty Ltd [1961-62] 35 ALJR 352
Outcome: applied
The High Court in Malleys Ltd v JW Tomlin Pty Limited [1961 62] 35 ALJR 352 (' Malleys ') at p 352 said: 'It is, of course, true that every shape is not a design; there must be "sufficient individuality of appearance" to distinguish it from what Russell-Clarke in Ch.2 of his book Copyright in Industrial Designs aptly describes as "the fundamental form" of an article. Furthermore, the existence of that sort of individuality is to be determined by the eye and not by measuring dimensions . It follows that a design need not have the precision of a working drawing; it concerns the shape or configuration of an article, as it appears to the eye. If a design applied by another has the features that are characteristic of the registered design and are so arranged that to the eye the resulting shape is substantially the same, there is infringement, whereas if the same features are arranged so that to the eye the resulting shape is different, there is, in the absence of fraudulent imitation, no infringement.' (Emphasis added.) 23 The applicant's written submissions set out the features of the Registered Design, correctly in my view. Those submissions recite: '15. The Registered Design depicts a surf mat which can be characterized as having the following individual design features or integers which, when combined, result in its distinctive appearance: (1) [viewed in plan (as from above or below)] a crescent or swallow shaped tail or end; (2) symmetrically curving towards a widest point approximately three quarters along its length; (3) which then curves to a flattened top; (4) from which two handles protrude; (5) [viewed in profile from either end] an ovaloid shape with slightly flattened top and bottom which at each side comes to a point; (6) [viewed in profile] an elliptical shape that is thicker at the front portion and which tapers to a narrower rear portion.' 24 I have inspected the inflated DMC product and compared it with the Registered Design. The inflated DMC product possesses each of the features identified in the applicant's written submissions, with the exception that the handles do not protrude from the top of the surfmat as depicted in the Registered Design. The handles on the Wavestar also do not protrude from the top of the surfmat, as depicted in the Registered Design. 27 For present purposes, being the interlocutory purposes, I am satisfied that, to the eye, the shape of the DMC product is substantially the same as that of the Registered Design. It is, in my opinion, strongly arguable that the design, which has been applied to the DMC product, is an obvious imitation of the Registered Design. That is, in the words of the test in Malleys , to be found at p 354 of the report: ''... not the same but a copy apparent to the eye notwithstanding slight differences ...'
Case: Polyaire Pty Ltd v K-Aire Pty Ltd and Others [2005] HCA 32 ; (2005) 221 CLR 287
Outcome: cited
Even if I am wrong in that view, it seems that the test for fraudulent imitation is also - and even more strongly arguable. The test for fraudulent imitation requires less objective similarity between the Registered Design and the impugned product. The High Court, in Polyaire and K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 ( 'Polyaire' ) was concerned with, amongst other things, the question of fraudulent imitation. At p 301 par 32 the High Court approved the passage in Edmunds and Bentwich, ' The Law of Copyright in Designs' : 'A "fraudulent imitation" is imitation with knowledge that the patent is a registered design, and without any sufficient invention on the part of the imitator.' 30 The High Court, in Polyaire, said, at p 295 par 17: '...the application of a "fraudulent imitation" requires that the application of the design be with knowledge of the existence of the registration and of the absence of consent to its use, or with reason to suspect those matters, and that the use of the design produces what is an "imitation" within the meaning of para (a) [of s 30(1) of the 1906 Act] . This, to apply the general principle recently exemplified in Macleod v The Queen [(2004) 214 CLR 242] , is the knowledge, belief or intent which renders the conduct fraudulent...' 31 I am satisfied that there is a strongly arguable case of fraudulent imitation. It seems inevitable that, if the Wavestar is an embodiment of the Registered Design, then the DMC product is a fraudulent imitation. The design of the Wavestar and the DMC product is almost identical. It could not have been independently created. It is now admitted that the DMC product is a copy of the Wavestar. That conclusion is the explanation, it seems to me, of the identical ribbing structure and the same construction materials. 32 So, also, is the embarrassing identity of the direct words of the warning label, including the imprinting of the words: 'The shape of this inflatable product is a Registered Design' .
Case: Koninklijke Philips Electronics NV &amp; Another v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167
Outcome: cited
The High Court approved the observations by Lehane J in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 at p 200, where Lehane J said: '...the essential questions are, first, whether the allegedly infringing design is based on or derived from the registered design and, then, whether the differences are so substantial that the result is not to be described as an imitation. Frequently, of course, probably usually, changes will have been introduced for the purpose of disguising copying or, perhaps, because of a conscious desire to come as close as possible to the registered design while avoiding infringement. But, as this case illustrates, particular changes may be introduced for other compelling reasons; and there is no obvious reason why that should defeat a claim of fraudulent infringement.'
Case: Tempo Services Limited (2005) 53 ACSR 523
Outcome: referred to
One of the matters raised by Mr Oakes' submission is what I can call the "credit risk issue" which arises from the necessary lead time before the payment of the cash consideration. I am satisfied that the scheme adopts a version of the model which was approved by Gyles J in Re Tempo Services Limited (2005) 53 ACSR 523. I note also that the evidence includes a letter from the Washington Post Company dated 10 March 2006 in which that company unconditionally undertakes to Kaplan to provide Kaplan with the scheme consideration. 10 One other matter which I raised with Mr Oakes is that the scheme provides for a takeover of the scheme company which could have proceeded under the provisions of Chapter 6 of the Act . 11 In Ford's Principles of Corporations Law at [24.060] the authors set out the authorities which have considered this question. The authors conclude that the effect of the cases is to preserve the availability of the Scheme of Arrangement procedure to achieve a friendly takeover offer notwithstanding s 411(17) as long as the scheme includes essential elements which could not be achieved under Chapter 6.
Case: Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246
Outcome: cited
weeks after I had reserved my decision the applicants' counsel submitted a memorandum drawing my attention to a recent decision of the House of Lords in Secretary of State for the Home Department v AF (No 3) [2009] 3 WLR 74. No leave was sought to file additional material, no prior notice was given to the respondent, and the respondent submits that I should not receive the memorandum. On many occasions the High Court has said that the hearing is the time and place to present arguments, and has explained why unauthorised post-hearing submissions will generally not be received. See for example Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 258, Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28 ; (2003) 214 CLR 318 at [27] - [31] and Re Chief Commissioner of Police (Vic) (2005) 214 ALR 522 at [22].
Case: Church of Scientology v Woodward [1982] HCA 78 ; (1980) 154 CLR 25
Outcome: applied
next question is whether the respondent's public interest immunity claims should be upheld. In Church of Scientology v Woodward [1982] HCA 78 ; (1980) 154 CLR 25 at 76 Brennan J said: Discovery would not be given against the Director-General [of Security] save in a most exceptional case. The secrecy of the work of an intelligence organization which is to counter espionage, sabotage, etc. is essential to national security, and the public interest in national security will seldom yield to the public interest in the administration of civil justice ... ... the veil of secrecy is not absolutely impenetrable ... But the veil is not penetrated merely by a plaintiff's deposition that he is not a security risk. That, after all, may be the very matter which is under investigation. See also Leghaei v Director-General of Security [2007] FCAFC at [52] and R v Khazaal [2006] NSWSC at [31]-[32]. In seeking to establish an exceptional case the applicants' point out that they may be unable to make out their cases if the claim to immunity is upheld. The authorities establish that this consequence of the outcome of the process of balancing public interest immunity against the public interest, upon which the applicants rely, of having conventional access to evidentiary material, is not exceptional. Thus in the Scientology case at 76-77 Brennan J referred to the obstacles in a plaintiff's path in judicial review proceedings against the Director-General arising out of the restrictions imposed upon discovery in aid of proving what is and is not relevant to security. In the same case at 61 Mason J noted that a successful claim for privilege may exclude from consideration the very material on which a plaintiff hopes to base his argument. These observations of Mason J were quoted with approval by Gummow, Hayne, Heydon and Keifel JJ in Gypsy Jokers Inc 234 CLR at [24]. In that case at [5] Gleeson CJ said that the consequence of success of a claim for public interest immunity against disclosure of information is that the information is not available as evidence to be taken into account in deciding the outcome of judicial review proceedings. The Court would not be able to have regard to some, or perhaps any, of the information on which a public official's belief was based.
Case: Conway v Rimmer [1968] UKHL 2 ; [1968] AC 910
Outcome: cited
contrast asserted by the applicants between Cabinet documents ('a clear class claim') and the respondent's description here (see [34]) is not helpful. That is because of the range of documents, with different levels of Cabinet connection, that may fall within the description but not necessarily qualify for immunity. At the top of the chain will be the Cabinet minutes considered in Northern Land Council [1993] HCA 24 ; 176 CLR 604. Lower down will be documents and communications between a Minster and the head of department relating to cabinet proceedings and material prepared for cabinet. Further down the chain are documents relating to the formation of government policy at a high level. Then will come other documents concerned with policy making including minutes by junior officials and correspondence with outside bodies. See S ankey v Whitlam [1978] HCA 43 ; (1978) 142 CLR 1 at 39. In Conway v Rimmer [1968] UKHL 2 ; [1968] AC 910 at 952 Lord Reid said of this last-mentioned category "I do not think that it is possible to limit such documents by any definition".
Case: Dodds v The Queen [2009] NSWCCA 78
Outcome: cited
more recent cases it appears to have become a matter of course for "confidential" affidavits supporting public interest immunity claims to be restricted to the judge. See, for example, R v Smith (1996) 86 A Crim R 308 at 310, Dodds v The Queen [2009] NSWCCA 78 at [55] and R v Meissner (1994) 76 A Crim R 81 at 85.
Case: Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28 ; (2003) 214 CLR 318
Outcome: cited
weeks after I had reserved my decision the applicants' counsel submitted a memorandum drawing my attention to a recent decision of the House of Lords in Secretary of State for the Home Department v AF (No 3) [2009] 3 WLR 74. No leave was sought to file additional material, no prior notice was given to the respondent, and the respondent submits that I should not receive the memorandum. On many occasions the High Court has said that the hearing is the time and place to present arguments, and has explained why unauthorised post-hearing submissions will generally not be received. See for example Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 258, Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28 ; (2003) 214 CLR 318 at [27] - [31] and Re Chief Commissioner of Police (Vic) (2005) 214 ALR 522 at [22].
Case: Haj-Ismail v Minister for Immigration Multicultural and Ethnic Affairs (No 2) (1982) 45 ALR 379
Outcome: followed
same approach was taken by Lockhart J in Haj-Ismail v Minister for Immigration Multicultural and Ethnic Affairs (No 2) (1982) 45 ALR 379 at 389 in relation to a statement of reasons signed by the Acting Attorney-General disclosing the grounds for his objection to the production of documents for national security reasons. His Honour said, following Bebic : Initially I had some doubt about the propriety of restricting the disclosure of the very grounds themselves in the way proposed by the Acting Attorney-General; but it is really only another facet of the established practice whereby the courts may themselves inspect documents where objection is taken to their production. See also R v Khazaal [2006] NSWSC 1061.
Case: Leghaei v Director-General of Security [2007] FCAFC 56
Outcome: followed
carefully studied the redacted parts of the respondent's affidavit I have concluded that they should not be made available to the applicants' legal advisers, even on the giving of appropriate undertakings. There are many cases that establish that courts should attach very considerable weight to the view of what national security requires as is expressed by the responsible officer. See for example Leghaei v Director-General of Security [2007] FCAFC 56 at [56] - [58] , [62]. Although usually expressed in connection with the inspection of protected documents themselves, those observations apply also to an affidavit, such as that sworn in this case, which supplies the reasons for the claim to privilege. In the open part of his affidavit the respondent says that the disclosure of the redacted portions of his affidavit would be likely to prejudice national security. In the balance of the affidavit, in particular the redacted parts, he explains the basis for his opinion. Having read those parts, I am satisfied that the opinion is soundly based. Accordingly, the respondent may rely on his affidavit in support of his public interest claim without providing to the applicants' legal representatives the redacted parts thereof. The next question is whether the respondent's public interest immunity claims should be upheld. In Church of Scientology v Woodward [1982] HCA 78 ; (1980) 154 CLR 25 at 76 Brennan J said: Discovery would not be given against the Director-General [of Security] save in a most exceptional case. The secrecy of the work of an intelligence organization which is to counter espionage, sabotage, etc. is essential to national security, and the public interest in national security will seldom yield to the public interest in the administration of civil justice ... ... the veil of secrecy is not absolutely impenetrable ... But the veil is not penetrated merely by a plaintiff's deposition that he is not a security risk. That, after all, may be the very matter which is under investigation. See also Leghaei v Director-General of Security [2007] FCAFC at [52] and R v Khazaal [2006] NSWSC at [31]-[32].
Case: R v Khazaal [2006] NSWSC 1061
Outcome: followed
same approach was taken by Lockhart J in Haj-Ismail v Minister for Immigration Multicultural and Ethnic Affairs (No 2) (1982) 45 ALR 379 at 389 in relation to a statement of reasons signed by the Acting Attorney-General disclosing the grounds for his objection to the production of documents for national security reasons. His Honour said, following Bebic : Initially I had some doubt about the propriety of restricting the disclosure of the very grounds themselves in the way proposed by the Acting Attorney-General; but it is really only another facet of the established practice whereby the courts may themselves inspect documents where objection is taken to their production. See also R v Khazaal [2006] NSWSC 1061. The next question is whether the respondent's public interest immunity claims should be upheld. In Church of Scientology v Woodward [1982] HCA 78 ; (1980) 154 CLR 25 at 76 Brennan J said: Discovery would not be given against the Director-General [of Security] save in a most exceptional case. The secrecy of the work of an intelligence organization which is to counter espionage, sabotage, etc. is essential to national security, and the public interest in national security will seldom yield to the public interest in the administration of civil justice ... ... the veil of secrecy is not absolutely impenetrable ... But the veil is not penetrated merely by a plaintiff's deposition that he is not a security risk. That, after all, may be the very matter which is under investigation. See also Leghaei v Director-General of Security [2007] FCAFC at [52] and R v Khazaal [2006] NSWSC at [31]-[32].
Case: R v Meissner (1994) 76 A Crim R 81
Outcome: cited
more recent cases it appears to have become a matter of course for "confidential" affidavits supporting public interest immunity claims to be restricted to the judge. See, for example, R v Smith (1996) 86 A Crim R 308 at 310, Dodds v The Queen [2009] NSWCCA 78 at [55] and R v Meissner (1994) 76 A Crim R 81 at 85.
Case: R v Smith (1996) 86 A Crim R 308
Outcome: cited
more recent cases it appears to have become a matter of course for "confidential" affidavits supporting public interest immunity claims to be restricted to the judge. See, for example, R v Smith (1996) 86 A Crim R 308 at 310, Dodds v The Queen [2009] NSWCCA 78 at [55] and R v Meissner (1994) 76 A Crim R 81 at 85.
Case: Re Chief Commissioner of Police (Vic) (2005) 214 ALR 522
Outcome: cited
weeks after I had reserved my decision the applicants' counsel submitted a memorandum drawing my attention to a recent decision of the House of Lords in Secretary of State for the Home Department v AF (No 3) [2009] 3 WLR 74. No leave was sought to file additional material, no prior notice was given to the respondent, and the respondent submits that I should not receive the memorandum. On many occasions the High Court has said that the hearing is the time and place to present arguments, and has explained why unauthorised post-hearing submissions will generally not be received. See for example Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 258, Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28 ; (2003) 214 CLR 318 at [27] - [31] and Re Chief Commissioner of Police (Vic) (2005) 214 ALR 522 at [22].
Case: Sankey v Whitlam [1978] HCA 43 ; (1978) 142 CLR 1
Outcome: cited
contrast asserted by the applicants between Cabinet documents ('a clear class claim') and the respondent's description here (see [34]) is not helpful. That is because of the range of documents, with different levels of Cabinet connection, that may fall within the description but not necessarily qualify for immunity. At the top of the chain will be the Cabinet minutes considered in Northern Land Council [1993] HCA 24 ; 176 CLR 604. Lower down will be documents and communications between a Minster and the head of department relating to cabinet proceedings and material prepared for cabinet. Further down the chain are documents relating to the formation of government policy at a high level. Then will come other documents concerned with policy making including minutes by junior officials and correspondence with outside bodies. See S ankey v Whitlam [1978] HCA 43 ; (1978) 142 CLR 1 at 39. In Conway v Rimmer [1968] UKHL 2 ; [1968] AC 910 at 952 Lord Reid said of this last-mentioned category "I do not think that it is possible to limit such documents by any definition".
Case: Secretary of State for the Home Department v AF [2009] UKHL 29
Outcome: cited
weeks after I had reserved my decision the applicants' counsel submitted a memorandum drawing my attention to a recent decision of the House of Lords in Secretary of State for the Home Department v AF (No 3) [2009] 3 WLR 74. No leave was sought to file additional material, no prior notice was given to the respondent, and the respondent submits that I should not receive the memorandum. On many occasions the High Court has said that the hearing is the time and place to present arguments, and has explained why unauthorised post-hearing submissions will generally not be received. See for example Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 258, Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28 ; (2003) 214 CLR 318 at [27] - [31] and Re Chief Commissioner of Police (Vic) (2005) 214 ALR 522 at [22].
Case: The Queen v Bebic (unreported, 27 May 1982) the Court of Criminal Appeal of New South Wales
Outcome: followed
Land Council and Alister concerned inspection by the court of the documents over which privilege was claimed. In Gypsy Jokers Crennan J spoke more broadly of "information in documents", "certain material relied on for determination of a proceeding" and "confidential material before a court", which was not revealed to a party seeking it. In The Queen v Bebic (unreported, 27 May 1982) the Court of Criminal Appeal of New South Wales dealt specifically with the disclosure of the contents of an affidavit tendered in support of a public interest immunity claim. There Samuels JA, Nagle CJ at CL and Cantor J said at 4: Mr Mason tendered an affidavit in support of his claim for privilege. He submitted, however, that the affidavit should not be placed on the file, that is to say that it should be read only by the Court and not disclosed to the party calling, on the footing that the contents of the affidavit would or might themselves compromise the claims for privilege. We had and still have some doubts about the propriety of restricting the affidavit in the way proposed. However, it may well be that that course is, in certain cases, of which this is one, no more than a logical extension of the established practice of the Courts inspecting the allegedly privileged documents itself. Later at 5, after saying that the Court had read both documents in question and the affidavit in support of the claim for privilege, their Honours said: It seems to us that granted that it is now commonplace for judges to make a private inspection of documents in order to resolve a claim for privilege ..., it follows that in a proper case the judge may similarly keep to himself the affidavit by which the claim is supported. The Court then ordered that the affidavit remain sealed up with the papers on the ground that to disclose its contents might prejudice the claim for privilege. The same approach was taken by Lockhart J in Haj-Ismail v Minister for Immigration Multicultural and Ethnic Affairs (No 2) (1982) 45 ALR 379 at 389 in relation to a statement of reasons signed by the Acting Attorney-General disclosing the grounds for his objection to the production of documents for national security reasons. His Honour said, following Bebic : Initially I had some doubt about the propriety of restricting the disclosure of the very grounds themselves in the way proposed by the Acting Attorney-General; but it is really only another facet of the established practice whereby the courts may themselves inspect documents where objection is taken to their production. See also R v Khazaal [2006] NSWSC 1061.