GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd (No 2) (Costs)

• Jurisdiction: Australia Federal only
• Court: Federal Court (Australia)
• Judge: BURLEY J
• Judgment Date: 06 November 2019
• Neutral Citation: [2019] FCA 1813
• Date: 06 November 2019

FEDERAL COURT OF AUSTRALIA

GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd

(No 2) (Costs) [2019] FCA 1813

File number:	VID 394 of 2015
Judge:	BURLEY J
Date of judgment:	6 November 2019
Catchwords:	COSTS – exercise of discretion – whether costs should be split between claim and cross-claim – costs of claim and cross-claim to be determined separately – applicant awarded 20% of its costs of the claim – cross-claimants awarded 30% of their costs of the cross-claim
Legislation:	Copyright Act 1968 (Cth) s 202 Designs Act 2003 (Cth) ss 71 – 72, 77 Federal Court Rules 2011 (Cth) rr 40.02(b), 40.08
Cases cited:	ACN 074 971 109 (as Trustee for the Argot Unit Trust) v National Mutual Life Association of Australasia Ltd (No 2) [2013] VSCA 241; 41 VR 476 Eat Media Pty Ltd v Mulready Media Pty Ltd [2009] FCA 1058 GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (No 2) [2018] FCAFC 100 GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97; 371 ALR 1 Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (No 2) [2017] FCAFC 158 Shahid v Australasian College of Dermatologists (No 2) [2008] FCAFC 98
Date of last submissions:	7 August 2019
Registry:
Division:	General Division
National Practice Area:	Delete these rows - not required
Sub-area:	Delete these rows - not required
Category:	Catchwords
Number of paragraphs:	28
Counsel for the Applicant and Cross-Respondents:	Mr T. Cordiner QC
Solicitor for the Applicant and Cross-Respondents:	K & L Gates
Counsel for the Respondents and Cross-Claimants:	Mr R. Cobden SC with Ms N.J. Hickey
Solicitor for the Respondents and Cross-Claimants:	Benjamin Lawyers

ORDERS

		VID 394 of 2015
BETWEEN:	GM GLOBAL TECHNOLOGY OPERATIONS LLC Applicant
AND:	S. S. S. AUTO PARTS PTY LTD ACN 006 784 354 First Respondent ; S. S. S. AUTO PARTS (SYDNEY) PTY LTD ACN 067 136 789 Second Respondent ; S.S.S. AUTO PARTS (QLD) PTY LTD ACN 064 885 767 Fourth Respondent
AND BETWEEN:	S. S. S. AUTO PARTS PTY LTD ACN 006 784 354 First Cross-Claimant ; S. S. S. AUTO PARTS (SYDNEY) PTY LTD ACN 067 136 789 Second Cross-Claimant ; S. S. S. AUTO PARTS (ADELAIDE) PTY LTD ACN 098 312 399 Third Cross-Claimant ; S.S.S. AUTO PARTS (QLD) PTY LTD ACN 064 885 767 Fourth Cross-Claimant
AND:	GM HOLDEN ACN 006 893 232 First Cross-Respondent ; GM GLOBAL TECHNOLOGY OPERATIONS LLC Second Cross-Respondent ; PREMOSO PTY LTD ACN 006 802 053 Third Cross-Respondent

JUDGE:	BURLEY J
DATE OF ORDER:	6 November 2019

THE COURT ORDERS THAT:

1. All prior costs orders in the proceedings be vacated.

2. The respondents are to pay 20% of the applicant’s costs of the claim, including the costs incurred after delivery of GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97, on an ordinary basis.

3. The cross-respondents are to pay 30% of the cross-claimants’ costs of the cross-claim on an ordinary basis.

4. The parties are to confer and within 14 days notify the Court whether they agree that costs are to be awarded on a lump sum basis. If so then orders (a) – (d) below will be made:

   1. The applicant be awarded a lump sum for its costs instead of any taxed costs in an amount to be determined by a Registrar of the Court.

   2. The cross-respondents be awarded a lump sum for its costs instead of any taxed costs in an amount to be determined by a Registrar of the Court.

   3. The Registrar is directed, pursuant to r 1.37 of the Federal Court Rules 2011 (Cth), to determine the quantum of the costs in (a) – (b) in such a manner as she or he deems fit including, if thought appropriate, on the papers.

   4. The Registrar is directed at the conclusion of the process to order the parties liable, as identified in (2) and (3), to pay whatever sums have been determined within 28 days.

5. If the parties do not agree that costs should be awarded on a lump sum basis, then they are to within 21 days provide short minutes of order setting out a timetable for the resolution of the remaining issues. If the parties do agree that costs are to be awarded on a lump sum basis, they are to supply short minutes of order to the Court within 21 days in accordance with 4(a) – (d) above, together with orders for the disposition of the balance of the proceedings.

AND THE COURT DECLARES THAT:

6. The respondents knew or ought reasonably to have known that the sales of the products listed in the Annexure to these orders were not for the purpose of repair within the meaning of s 72 of the Designs Act 2003 (Cth) (Designs Act) and thereby infringed the registered designs listed in the Annexure within the meaning of section 71 of the Designs Act.

7. The threats of design infringement made by the second cross-respondent, insofar as the threats related to Australian Registered Design numbers 333685 and 316380, contained in letters to the spare part suppliers A.P. International (QLD) Pty Ltd trading as Panel House dated 4 September 2014, Hunter Projects Pty Ltd trading as CarParts2U dated 1 September 2014 and Torq Industries Pty Ltd trading as Torq Parts dated 1 September 2014 were unjustified within the meaning of s 77 of the Designs Act by reason of the fact that the relevant designs were never certified.

8. The threats of copyright infringement made by the second cross-respondent contained in letters to the spare part supplier Holmart Pty Ltd trading as Holmart dated 20 September 2013, 31 October 2013 and 16 December 2013 were unjustified within the meaning of s 202 of the Copyright Act 1968 (Cth).

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

Annexure

Respondent	Customer	Date of sale	Invoice no.	SSS SKU (product code)	Qty	Description	Australian Registered Design no.
S.S.S Auto Parts Pty Ltd	Motor Sport...