Copyright Tribunal of Australia

DLA Group Pty Limited v Western Australia (Costs of Joinder Application) [2022] ACopyT 6

COMMONWEALTH OF AUSTRALIA

COPYRIGHT ACT 1968

THE TRIBUNAL ORDERS THAT:

1.    There be no order as to costs on the interlocutory application.

REASONS FOR DETERMINATION

PERRAM J (ACTING PRESIDENT):

1    This is an application for costs. The Applicant is The DLA Group Pty Ltd (‘DLA Group’), the Respondent is the State of Western Australia (‘the State’) and there are two third parties, Civica Pty Ltd and Civica Education Pty Ltd (together, the ‘Civica Entities’). DLA Group and the State seek an order that the Civica Entities pay the costs they incurred in meeting an application by the Civica Entities to be joined to the proceeding. That application is no longer pressed and as a result of an order made on 11 November 2022 is being treated as if it had been discontinued.

2    There are two issues: does the Tribunal have the power to order the Civica Entities to pay costs; and if it does, how should that power be exercised?

Does the Tribunal have power to order the Civica Entities to pay costs?

3    The power to order costs is found in s 174(1) of the Copyright Act 1968 (Cth) (‘the Act’):

174    Costs of proceedings

(1)    The Tribunal may order that the costs of any proceedings before it incurred by any party, or a part of those costs, shall be paid by any other party and may tax or settle the amount of the costs to be so paid, or specify the manner in which they are to be taxed.

4    The first question which arises is whether the Tribunal has power to order a non-party to the proceeding before it who has filed an interlocutory application to pay the costs of one of the other parties to that interlocutory application. The substantive proceeding before the Tribunal is a proceeding under s 183(5) of the Act, that is to say, a Crown copyright matter. The parties to such a proceeding are specified in s 153E(1) of the Act:

153E    Applications to Tribunal under subsection 183(5)

(1)    The parties to an application to the Tribunal under subsection 183(5) for the fixing of the terms for the doing of an act comprised in a copyright where the act is done for the services of the Commonwealth or a State are:

(a)    the Commonwealth or the State, as the case may be; and

(b)    the owner of the copyright.

5    The Tribunal has no power to order the Civica Entities to pay the costs of the proceeding under s 183(5) because the Civica Entities are not parties to that proceeding. In my view, however, they are parties to the proceeding which arose on the filing of their interlocutory application seeking joinder. As parties to that proceeding, a power exists to order them to pay the costs of any other party to that proceeding. The other parties to that proceeding were DLA Group and the State in their capacities as respondents. Consequently, I accept that the Tribunal has power to order the Civica Entities to pay the costs of DLA Group and the State under s 174(1) in relation to the interlocutory application.

How should the power be exercised?

6    There were difficulties with the Civica Entities’ application to be joined to the proceeding, however, it was not hopeless. They have now, in effect, withdrawn their application to be joined. As a result it has not been determined. A Court (or as here a Tribunal) may order costs even where there has been no determination on the merits and where the moving party no longer wishes to pursue its proceeding, but it does not have to do so. The relevant approach was set out by McHugh J in Re Minister for Immigration and Ethnic Affairs; Ex parte Lai Qin (1997) 186 CLR 622 at 624-625:

In an appropriate case, a court will make an order for costs even when there has been no hearing on the merits and the moving party no longer wishes to proceed with the action. The court cannot try a hypothetical action between the parties. To do so would burden the parties with the costs of a litigated action which by settlement or extracurial action they had avoided. In some cases, however, the court may be able to conclude that one of the parties has acted so unreasonably that the other party should obtain the costs of the action. In administrative law matters, for example, it may appear that the defendant has acted unreasonably in exercising or refusing to exercise a power and that the plaintiff had no reasonable alternative but to commence a litigation. Thus, for example, in R v Gold Coast City Council; Ex parte Raysun Pty Ltd, the Full Court of the Supreme Court of Queensland gave a prosecutor seeking mandamus the costs of the proceedings up to the date when the respondent Council notified the prosecutor that it would give the prosecutor the relief that it sought. The Full Court said that the prosecutor had reasonable ground for complaint in respect of the attitude taken by the respondent in failing to consider the application by the prosecutor for approval of road and drainage plans.

Moreover, in some cases a judge may feel confident that, although both parties have acted reasonably, one party was almost certain to have succeeded if the matter had been fully tried. This is perhaps the best explanation of the unreported decision of Pincus J in South East Queensland Electricity Board v Australian Telecommunications Commission where his Honour ordered the respondent to pay 80 per cent of the applicant's taxed costs even though his Honour found that both parties had acted reasonably in respect of the litigation. But such cases are likely to be rare.

If it appears that both parties have acted reasonably in commencing and defending the proceedings and the conduct of the parties continued to be reasonable until the litigation was settled or its further prosecution became futile, the proper exercise of the cost discretion will usually mean that the court will make no order as to the cost of the proceedings. This approach has been adopted in a large number of cases.

(Citations omitted).

7    Here all sides have behaved reasonably. Whilst the application had its difficulties, I would not say that it was bound to fail. In that circumstance, the appropriate order is that there be no order.

Associate:

Dated:    17 November 2022