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To fight or not to fight

Malcolm Campbell ||

You have been served with an originating application and you don’t want to contest the litigation for whatever reason, is there anything else you can do but settle?

In Gardner Industries Pty Ltd as trustee for the S M Gardner Family Trust v Telstra Corporation Limited [2021] FCA 294 the court considered an application under s 115A of the Copyright Act 1968 (Cth) for orders requiring the respondent carriage service providers to take steps to disable access to online locations outside Australia. Specifically, the applicant sought orders to disable access to the domains angelbabes.com, chinamassagegirls.com and escorts24.com.

Section 115A allows the owner of a copyright to apply to the Federal Court to grant an injunction that requires a carriage service provider to take such steps as the Court considers reasonable to disable access to an online location outside Australia that:

(a)  infringes, or facilitates an infringement, of the copyright; and,

(b)  has the primary purpose or the primary effect of infringing, or facilitating an infringement, of copyright (whether or not in Australia).

Rather than contest the litigation, all respondents, including Telstra, TPG, Optus and Vodafone, filed a submitting notice as allowed by the Federal Court Rules 2011.

Specifically, rule 12.01 of the Federal Court Rules allows a party who has been served with an originating application (or a notice of appeal) and who does not want to contest the relief sought in the originating application (or the notice of appeal) to file a submitting notice, in accordance with the court form.

Subrule 2 requires the party to (amongst other things):

  • ‘state that the party submits to any order that the Court may make’; and,
  • asks the party to tell the court whether it wants to be heard on the question of costs.

So, a submitting notice is a cheap way of resolving the litigation?

Yes and no. In practice, it means there is minimal or no cost to the respondent for preparation of evidence but the applicant must still prove its case and if successful, the respondent will likely be ordered to pay the applicant’s cost of doing so.

Evidently, there are instances, such as in this case where the respondent party has little risk of an order being made by the court that is significantly adverse to its commercial interests and/or it has no commercial interest in contesting the application. In those circumstance a submitting notice may be the perfect strategic tool.

We are often asked whether a submitting notice could be utilised where general IP infringement is alleged and denied but the respondent cannot afford to run the litigation. Certainly, a submitting notice may be considered for that purpose but advice should be sought as to the risks of both adverse order and costs being awarded in circumstances where you do not defend the matter and the court typically has before it evidence that supports the applicant’s position.

If you have any questions about any of the information in the above blog, please do not hesitate to contact a highly skilled member of Coleman Greig’s Intellectual Property Team, who would be more than happy to assist you.

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