Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 31 August 2021
• Neutral Citation: [2021] FCA 1053
• Court: Federal Court
• Date: 31 August 2021

FEDERAL COURT OF AUSTRALIA

Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd (No 2) [2021] FCA 1053

File number:	NSD 772 of 2017
Judgment of:	THAWLEY J
Date of judgment:	31 August 2021
Catchwords:	COPYRIGHT – orders made on delivery of judgment requiring parties to confer and agree to orders giving effect to judgment – parties unable to agree orders
Legislation:	Copyright Act 1968 (Cth) s 126
Cases cited:	Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd [2021] FCA 809 John Alexander’s Clubs Pty Limited v White City Tennis Club Limited (2010) 241 CLR 1 Smethurst v Commissioner of Police (2020) 376 ALR 575 Warramunda Village Inc v Pryde (2001) 105 FCR 437
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Number of paragraphs:	32
Date of hearing:	25 August 2021
Counsel for the Applicant:	Mr M Green SC with Mr WH Wu
Solicitor for the Applicant:	McLean & Associates
Counsel for the First, Second, Fourth, Fifth, Sixth and Seventh Respondents:	Mr HPT Bevan
Solicitor for the First, Second, Fourth, Fifth, Sixth and Seventh Respondents:	Mills Oakley
Counsel for the Third Respondent:	The third respondent appeared in person

ORDERS

		NSD 772 of 2017
BETWEEN:	CAMPAIGNTRACK PTY LTD (ACN 142 537 988) Applicant
AND:	REAL ESTATE TOOL BOX PTY LTD (ACN 614 827 379) First Respondent ; BIGGIN & SCOTT CORPORATE PTY LTD (ACN 072 450 689) Second Respondent ; DAVID SEMMENS (and others named in the Schedule) Third Respondent

order made by:	THAWLEY J
DATE OF ORDER:	31 August 2021

PENAL NOTICE TO MR DAVID SEMMENS: IF YOU: (1) REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR (2) DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU TO ABSTAIN FROM DOING, YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT. ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.

In these orders:

DreamDesk Source Code Works means the literary works in the source code of the DreamDesk system and includes the three PHP files named “src\Functions\edms.php”, “views.adhoc-edit.php” and “views\adhoc-edit2.php”;

DreamDesk Database and Table Works means the literary works in the DreamDesk database and 18 tables within the database;

PDF Works means the literary or artistic works in the PDF templates in the “client_data” folder in the DreamDesk system;

Toolbox system means the “Real Estate Tool Box” software system.

THE COURT DECLARES THAT:

1. The third respondent has infringed copyright:

(a) in the DreamDesk Source Code Works, by:

(i) reproducing the whole or a substantial part of the DreamDesk Source Code Works in material form in developing the Toolbox system;

(ii) authorising other developers and users of the Toolbox system to reproduce a substantial part of the DreamDesk Source Code Works in material form in developing the Toolbox system;

(iii) authorising users of the Toolbox system to reproduce a substantial part of the DreamDesk Source Code Works in material form in using the Toolbox system;

(b) in the DreamDesk Database and Table Works, by reproducing a substantial part of the structure of the DreamDesk Database and Table Works;

(c) in the PDF works, by reproducing the whole of the PDF Works in material form;

without the licence of the applicant or New Litho Pty Ltd.

2. The third respondent has, to the extent declared above, misused the confidential information of the applicant or New Litho Pty Ltd constituted in the DreamDesk Source Code Works, the DreamDesk Database and Table Works and the PDF Works.

THE COURT ORDERS THAT:

Injunctions and verified destruction

3. The third respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from:

(a) reproducing in material form or authorising the reproduction in material form; and

(b) communicating or authorising the communication to the public;

of the whole or a substantial part of the DreamDesk Source Code Works, the DreamDesk Database and Table Works and the PDF Works, without the licence of the copyright owner.

4. Within 28 days of the date of these orders, the third respondent permanently destroy or erase, on oath or affirmation, all reproductions of the DreamDesk Source Code Works, the DreamDesk Database and Table Works and the PDF Works in his possession, custody, power or control, such verification to set out steps undertaken to give effect to the destruction or erasure.

5. Until the third respondent fully complies with order 4 above, the third respondent be restrained from disposing of, or otherwise parting with his possession, custody, power or control of any of the reproductions referred to in order 4 which presently remain in existence.

Dismissal of unsuccessful claims

6. The proceeding against the first, second, fourth, fifth, sixth and seventh respondents be dismissed.

Costs

7. The third respondent pay the applicant’s costs of the proceeding up to and including the date of the making of these orders in a lump sum in an amount determined by the Registrar in accordance with GPN-COSTS and such directions as the Registrar considers appropriate.

8. The applicant pay the costs of each of the first, second, fourth, fifth, sixth and seventh respondents of the proceeding in a lump sum in an amount determined by the Registrar in accordance with GPN-COSTS and such directions as the Registrar considers appropriate.

Inquiry

9. There be an inquiry as to:

(a) damages or profits in respect of copyright infringement;

(b) equitable damages or compensation or profits in respect of misuse of confidential information, if the applicant contends such a pecuniary remedy should also be awarded;

such inquiry to be listed for case management before Justice Thawley at 9am on 5 October 2021.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THAWLEY J:

1 Reasons for judgment in these proceedings were delivered on 19 July 2021 and an order was made requiring the parties to confer with a view to providing agreed orders to give effect to the reasons for judgment: Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd [2021] FCA 809. Unfortunately, the parties were unable to agree the appropriate orders. Accordingly, orders were made for the filing of brief submissions and the proceedings were listed for argument.

2 These reasons address the principal issues which divided the parties and the reasons for making the orders now made. Familiarity with the reasons for judgment is assumed and I have adopted the abbreviations used in those reasons. A reference in these reasons to the “represented respondents” is a reference to the first, second and fourth to seventh respondents. The third respondent, Mr David Semmens, was self-represented at trial and remains self-represented.

3 The proceedings were commenced on 18 May 2017, with RETB (the first respondent), Biggin & Scott (the second respondent) and Mr Semmens as the respondents. Campaigntrack alleged infringement of Campaigntrack’s copyright in the source...