On 5 May 2009 the Federal Court delivered Australia’s first judgment on the attempt by a patent owner to bring a representative action against a class of alleged infringers.
A patentee, Stacey Brothers Plumbing Pty Ltd, purported to sue a single member of a franchise network both in the capacity of an alleged infringer and as a representative of a class of persons who met a description defined by the patentee. Whilst representative actions are often brought by a group of plaintiffs in relation to shareholders rights, or for negligence and personal injury, in this case a single applicant attempted to commence this action by selecting a particular respondent, and having them “represent” a group of people it thought might potentially be infringers.
This went well beyond the concept of representative proceedings in the form of ‘John Doe’ type orders that have been granted in the past to stop unidentified persons selling unauthorised merchandise outside rock concerts, on the basis that the merchandise infringed an intellectual property right.
DibbsBarker acted for the company that had been selected by the applicant as the representative, and contended that Stacey Brothers had no right to bring a representative action in the circumstances. The Federal Court agreed, finding that the persons in the group that the applicant wanted to have caught as “represented persons” did not have the “same interest” in the proceedings. In particular the Court found that:
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the conduct of the members of the represented group differed in significant respects;
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the various group members were likely to rely on different defences; and
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the group was open ended – new persons could enter the group during the case if they undertook certain conduct.
Partner Scott Sloan said “We are delighted with this result. Although this is not the end of the case as a whole, it is an important statement of principle: that cases such as these often involve parties with different defences, and they must have the right to put those defences and argue them in the way they want to”.
The case continues.
