MLL406 Lecture Notes - Lecture 5: Susan Crennan, Ampicillin, Estoppel
1 Jul 2018
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Topic 5: Equitable Remedies - Injunctions and Specific Performance
Injunction v Specific performance:
•Injunction
•Court order requiring someone to do a thing or not do a thing.
•‘Quintessential’ equitable remedy.
•Common law writ system
•Introduction of Equity
•Specific performance
•An order to have someone fulfil a contractual promise.
•In fact, the remedy of specific performance is sometimes referred to as a kind
of injunction.
Classification of injunctions:
1. Interim and interlocutory injunctions
2. Mareva orders (a specific type of interlocutory order – technically not an injunction)
3. Anton Piller orders (a specific type of interlocutory injunction)
4. Permanent (or ‘perpetual’ or ‘final’) injunction
•Quia timet injunctions (these can be interim, interlocutory or permanent)
•Mandatory v prohibitory
•Ex parte v inter partes.
Interim v Interlocutory injunctions:
•Essentially the same – except for duration
•Interim – urgent – usually granted on an interim basis (and often ex parte) until an
application for an interlocutory injunction can be heard inter parties
•Interlocutory – last until final determination
•The terms ‘interim’ and ‘interlocutory’ have been used interchangeably – incorrect to
do so.
Purpose:
•The purpose of interim and interlocutory injunctions is to maintain the status quo
•Note – it is not a cause of action – it is simply a mechanism by which the status quo is
preserved until the cause of action finally determined.
Interim injunctions:
•Same requirements as interlocutory injunctions
•Usually in circumstances of urgency
•Usually ex parte
•Requirement for full and fair disclosure of material facts
•What if you don’t?
•Injunction can be dissolved
•Unethical
•Cost order against practitioner
Requirements for interim and interlocutory injunctions:
1. Prima facie case
2. Balance of convenience favours the application
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3. Likely to suffer injury for which damages would not be an adequate remedy (query
whether separate consideration)
4. Undertaking of damages.
Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) TB 20.2.6:
•The Australian High Court (Kitto, Taylor, Menzies and Owen JJ) considered an
application for an interlocutory injunction in a patent infringement dispute. The
patented invention concerned therapeutically active antibiotic ampicillin and the alleged
infringement (advertising, offering for sale, selling and supplying) of that patent by the
temporary and transient production of ampicillin in the process of obtaining hetacillin,
and the breakdown of hetacillin upon ingestion into ampicillin. The High Court
accepted that there were substantive questions of fact and law to be determined by the
court, and considered the basis upon which it might exercise its discretion in patent and
other cases.
•Test set out at 622-623:
•(i) The first is whether the plaintiff has made out a prima facie case, in the sense that if
the evidence remains as it is there is a probability that at the trial of the action the
plaintiff will be held entitled to relief … How strong the probability needs to be
depends, no doubt, upon the nature of the rights he asserts and the practical
consequences likely to flow from the order he seeks.
•(ii) The second inquiry … is whether the inconvenience or injury which the plaintiff
would be likely to suffer if an injunction were refused outweighs or is outweighed by
the injury which the defendant would suffer if an injunction were granted.
•(iii) If an injunction be granted it will be upon terms of the plaintiff submitting, in the
event of his ultimately failing, to such order as to damages as the Court may make in
order to compensate the defendant for any injury caused by the injunction; if the
injunction be refused the defendant may be required to keep an account of the profits …
so that, if he loses the case and the plaintiff elects … to recover the amount of those
profits rather than damages, the quantum will be readily ascertainable.
•In assessing the first consideration the High Court held that in patent cases the prima
facie case should be a "strong one" (at 623). Refused "unless either the patent has
already been judicially held to be valid or it has stood unchallenged for a long period [at
least six years]" (at 624), and "that the defendant shows by evidence 'some ground' for
supposing that he has a chance of successfully disputing the validity of the patent at the
trial" (at 624):
•Three classes of patent cases: (1) cases where the patent is an old one and the patentee
has been in long and undisturbed enjoyment of it; (2) cases where its validity has been
established elsewhere and the court sees no reason to doubt the propriety of the result;
and (3) cases where the conduct of the defendant is such as to enable the court to say
that, as against the defendant himself, there is no reason to doubt the validity of the
patent
•Held: On the evidence, the High Court ordered an interlocutory injunction as other
courts in other jurisdictions assessing the same dispute had made such orders, the
patents had been granted at least six years before the application to the court, and the
dispute concerned only infringement without a challenge to validity, and so the plaintiff
was very likely to establish the patent's validity at trial. A further relevant factor appears
to have been that the plaintiff had an existing market for ampicillin that the defendant
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sought to overturn with hetacillin, despite warnings from the plaintiff of infringement
proceedings to protect its statutory exclusivity.
•See also ABC v O’Neill (free speech rights).
ABC v O’Neill (2006) 229 ALR 457 TB 20.2.6:
•In November 1975, Mr O’Neill was convicted of the murder in Tasmania in February
1975 of a nine-year-old boy. In May 1975, he signed a confession to the murder of
another boy, also aged nine, a month before. After his conviction for the first murder
and sentencing to life imprisonment, Tasmanian prosecutors decided not to proceed
with charges in relation to the April 1975 murder. The documentary alleges Mr O’Neill
is linked with the disappearance of a number of other children, including the Beaumont
children – Jane, aged nine, Arnna, aged seven, and Grant, aged four – at or near Glenelg
beach in Adelaide on Australia Day 1966. Allegations that Mr O’Neill had murdered
other children were widely reported by Tasmanian media. Former Victorian detective
Gordon Davie and Roar Film Pty Ltd produced “The Fisherman”, which the ABC was
to screen on 28 April 2005. On 15 April 2005, Mr O’Neill commenced action for
defamation against the ABC, Mr Davie and Roar Film following the showing of the
film at the Hobart Summer Film Festival in January 2005. He also applied for an
interlocutory injunction against the ABC to prevent the televising of the documentary
pending the defamation trial.
•Held: In the Tasmanian Supreme Court, Justice Ewan Crawford granted the application.
The ABC conceded the film was capable of conveying imputations that Mr O’Neill is a
suspect in the disappearance and murder of the Beaumont children and that he is a
multiple killer of children. Tasmania’s new Defamation Act took effect on 1 January
2006, but the 1957 Defamation Act applied to the proceedings for the injunction.
•The ABC relied on the statutory defence that the film was both true and for the public
benefit. Justice Crawford accepted that the ABC could probably show the imputations
were true but held that it would be difficult to establish that publication was for the
public benefit.
•The Full Court of the Supreme Court, by majority, dismissed an appeal by the ABC. The
ABC appealed to the High Court.
•The High Court, by a 4-2 majority, allowed the appeal. The majority held there was a
strong case against the granting of the interlocutory injunction. It held that Justice
Crawford and the Full Court majority erred by failing to give enough weight to the
significance of free speech in considering prior restraint of publication and to the
consideration that only nominal damages may be awarded if the showing of ‘The
Fisherman’ were found to be defamatory.
•High Court reinforced the importance of the test set out in Beecham.
ABC v Lenah Game Meats (2001) 208 CLR 199 TB 20.2.6:
•Held: No Serious Question to be Tried – No interlocutory injunction.
•Not a breach of confidence: The High Court found that the activities of Lenah Games
Meats could not be regarded as relevantly confidential even though the premises upon
which the information was obtained was private property. The High Court held that the
fact that the operations were required to be licensed by a public authority suggested that
the information about the nature of those operations was not confidential.
•It was not unconscionable: Majority of the High Court found that the mere fact that
footage was obtained improperly in the first place did not taint the use and publication
of the film for every other person into whose hands the film may fall. (Kirby J dissent: a
party innocent of any trespass itself may nevertheless be restrained from publishing or
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Document Summary
Topic 5: equitable remedies - injunctions and specific performance. Injunction: court order requiring someone to do a thing or not do a thing. Quintessential" equitable remedy: common law writ system. Specific performance: an order to have someone fulfil a contractual promise. In fact, the remedy of specific performance is sometimes referred to as a kind of injunction. Interim v interlocutory injunctions: essentially the same except for duration. Interim urgent usually granted on an interim basis (and often ex parte) until an application for an interlocutory injunction can be heard inter parties. Interlocutory last until final determination: the terms interim" and interlocutory" have been used interchangeably incorrect to do so. Injunction can be dissolved: unethical, cost order against practitioner. Requirements for interim and interlocutory injunctions: prima facie case, balance of convenience favours the application, likely to suffer injury for which damages would not be an adequate remedy (query whether separate consideration, undertaking of damages.
