Case: Concrete Pty Ltd v Parramatta Design &amp; Developments Pty Ltd [2004] FCA 1312
Outcome: applied
principles concerning whether a letter contravenes this section were discussed by Conti J in Concrete Pty Ltd v Parramatta Design &amp; Developments Pty Ltd [2004] FCA 1312. It was not suggested in the judgment in the High Court in Concrete Pty Ltd v Parramatta Design &amp; Developments Pty Ltd [2006] HCA 55 ; (2006) 231 ALR 663 was wrong. Indeed it must have been approved having regard to the orders the High Court made. At [43] Conti J said: ... the authoritative dictum of Mansfield J in Australian Consulting &amp; Training Pty Ltd v Tiltform Pty Ltd [2001] FCA 1072 , made in the context of the analogous provisions of the Australian patents legislation, and also of Cooper J in U &amp; I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 32 IPR 494 , albeit again in the context of the same analogous provisions. In Australian Consulting &amp; Training , his Honour said at [9]: 'That decision [whether conduct constituted a threat] must be made in the light of the circumstances in which the impugned conduct took place... and from the perspective of a reasonable recipient of the communication in those circumstances... It may not be necessary for there to be an explicit reference to enforcement proceedings.' Further, in I &amp; U Global , his Honour said at 500-501: 'The test is whether the language would convey to any reasonable person that the author of the letter in the present case intended to bring proceedings for infringement against the person said to be threatened. It is not necessary that there be direct words that action would be taken... It is a threat to sue for infringement if the Respondent is so minded on a future occasion. It is no less a threat that the Respondent may not be so minded...' Mr Vardanian, who admitted he had seen the letter prior to authorising its dispatch from his solicitors, gave evidence in his affidavit of 19 December 2008 that "[i]n about September 2008, I became aware that customers of Intelmail (and previously The Mailmachine] were being asked to sign a licence agreement and were being charged a substantial software licensing fee. I have never discussed these arrangements with Mr Dilanchian or Mr Malouf". Mr Vardanian later gave oral evidence that he intended for the letter to be a catalyst to "start negotiations". In his cross-examination, he said that his position in the negotiations he envisaged was that he had "no problem" with the fact the machines were being sold with the installed software: He simply wanted royalties from the licensing fee income that the applicants were charging customers. However, counsel for the applicants correctly, in my opinion, submitted that neither the letter nor any of the subsequent correspondence from the respondents' solicitors said that. Indeed, far from wishing to negotiate, during the course of the subsequent correspondence, Mr Vardanian's solicitors sent a letter on 8 December 2008 which actually said "[p]oints one to three are not open for negotiation". It was the applicants who volunteered to amicably resolve the matter in the letter sent on 10 November 2008 by their representatives Blake Dawson. The letter relevantly stated: "[f]inally, we are instructed to note that Mr Dilanchian continues to have respect and affection for Mr Vardanian and therefore wishes for this matter to be amicably resolved".