THE COST OF PROLONGING THE INEVITABLE

A recent case in which Norman Waterhouse acted (SDS Digger Tools Pty Ltd v Rear [1999] FCA835) displays the need to carefully review the conduct of cases before a court.

The case involved an appeal against a decision of a delegate of the Commissioner of Patents in relation to a patent application. On the morning of the hearing, having recently reviewed the evidence prepared by the applicant, the respondent indicated an intention to amend the patent application in a way that would substantially alter the issues to be determined by the court. Argument then ensued concerning the change of focus of the case, and the hearing was adjourned for some months.

During the adjournment the respondent in fact amended the patent application. The applicant was not concerned to challenge the form of the patent application as amended, and discontinued its appeal. Costs to date were substantial, and a hearing on who should pay the costs then took place.

On behalf of the applicant, Norman Waterhouse argued that the matter had been unnecessarily prolonged, and costs thereby wasted, because the respondent should have promptly considered and reviewed evidentiary material of the applicant when it was filed, and not in the days leading up to the hearing. It was argued that had he done so the decision to amend should have been made at a much earlier time.

The Judge accepted the applicant's contentions and found that by reason of his experience and position in the market place, the respondent should have realised the significance of the applicant's evidence much sooner than he did, and, if well advised, should not have persisted with the patent application in the form that was contested by the applicant.

The basis of the Judge's ruling was that having found the proceedings to have been unnecessarily prolonged by the respondent, he saw good reason to ensure that the applicant did not bear the burden of the actions of the respondent. Costs of the applicant were ordered to be paid by the respondent so as to fully indemnify the applicant for all costs incurred after the time at which the respondent should properly have reviewed its case. The order had the effect of substantially increasing the costs that would otherwise have been recovered by the applicant.

For further information on this article, please contact Greg Tye, Partner, on (61 8) 8210 1224 or via E-mail: gtye@normans.com.au

CLASSIC FROSTED GLASS v WILHAND PTY LTD

In the recent Federal Court case of Classic Frosted Glass v Wilhand Pty Ltd, a dispute arose as to whether the applicant glass manufacturer was the owner of copyright in the various designs and drawings upon which it manufactured its ceramic glass panels as advertised in its marketing catalogue.

The dispute settled after the commencement of the court hearing on the basis that the respondent Wilhand consented to an order that the Court make a declaration that the applicant glass manufacturer was the owner of the copyright in the various designs and drawings referred to.

In making such a declaration, Sackville J confirmed that the terms of the declaration were only binding on those parties to the action before him and specifically noted that the declaration was not binding upon independent third parties who might, in due course, wish to argue a claim to copyright in the glass manufacturer's designs and drawings.

In other words, even if you win your claim to copyright as against the one party you allege has breached your copyright rights, do not be under the mis-apprehension that your copyright rights cannot be challenged by an independent third party at some later time. If they are challenged, you will have to set about the task of establishing that you are the true owner of the copyright as against any third party who challenges those claims as you cannot rely upon the existing declaration of the Court as to your ownership of the copyright.

For further information on this article, please contact Brendan Murray, Partner, on (61 8) 8210 1204 or via E-mail: brendan.murray@normans.com.au

THE SPATIAL INFORMATION INDUSTRY

Norman Waterhouse has been instrumental in the establishment of The International Spatial Information Foundation Inc and Spatial Australia.

Both of these entities reflect the emergence and world leadership of the spatial information industry in Adelaide.

Through the "Spatial Alliance" the State Government and Fujitsu Australia have supported the establishment of these two organisations.

The Spatial Foundation is a strategic body charged with the goals of promoting the development of spatial information technology and its applications throughout the world. Professor Graeme Hugo of Adelaide University chairs the Foundation.

Spatial Australia represents the interests of the emerging spatial information industry based in Adelaide. Spatial Australia will be working hard to procure projects for the industry from around the world.

Already projects in places as diverse as South Africa, the United Arab Emirates and Bulgaria are under consideration. Michael Kenneally of Coded Information chairs Spatial Australia.

For further information access www.spatial.org.au

For further information on this article, please contact Ted Byrt, Partner, on (61 8) 8210 1201 or via E-mail: ted.byrt@normans.com.au