Ly v The Queen [2014] FCAFC 175
FEDERAL
COURT OF AUSTRALIA
KENNY, BENNETT AND WIGNEY JJ
1
On 5 August 2014, the applicant, Mr Phong Ly, entered
pleas of guilty, in the County Court of Victoria, to two Commonwealth offences.
The first offence was an offence under s 132AJ(1) of the Copyright Act
1968 (Cth) (Copyright Act) of possessing articles, namely digital
versatile discs (DVDs), which were infringing copies of subject matter in which
copyright subsisted at the time of possession, with the intention of selling
the articles. The second offence was under s 148(1) of the Trade Marks Act
1995 (Cth) (Trade Marks Act) of exposing goods for sale, namely
quantities of DVDs of cinematograph files and optical discs of computer games,
on which goods there were registered trade marks which were applied without the
permission of the registered owners of the trade marks. A plea hearing took
place before his Honour Judge Maidment on 5 August 2014 and on 13 August 2014
his Honour imposed a total effective sentence of 12 months imprisonment, with
the applicant to be released pursuant to a recognizance release order after 8
months.
2
The applicant then filed an application for
leave to appeal against the sentence in the Court of Appeal of the Supreme
Court of Victoria. Regrettably, it appears that little attention was given by
the parties to whether the Court of Appeal had jurisdiction to entertain the
appeal. Ultimately, after some prevarication on the part of the parties, the
Court of Appeal application was adjourned, the Crown (in the right of the
Commonwealth Director of Public Prosecutions) formed the view that this Court
had jurisdiction to hear an appeal in respect of the sentences imposed on the
applicant and the applicant filed in this Court an application for extension of
time and leave to appeal and an application for an extension of time to file a
notice of appeal.
3
Having regard to the above circumstances and for
the reasons that follow, there should be an extension of time to file the
application for leave to appeal (this not being opposed by the Crown); leave to
appeal should be granted; the draft notice of appeal received (though not
treated as filed) by the Court should stand as the notice of appeal; but the
appeal should be dismissed.
4
At the plea hearing, the Crown provided the learned
sentencing judge with a document headed “Prosecution Opening” (Prosecution
Opening) which summarised the evidence contained in the Crown’s brief of
evidence. There was no objection to the tender of this document. Indeed,
counsel for the applicant indicated that “the general thrust of the opening is
agreed with”. Counsel for the applicant did, however, refer to two areas
of disagreement in relation to the facts. Save for these two matters, which
will be considered in context later in these reasons, the facts upon which the
applicant was to be sentenced were not in dispute.
5
The following is a summary of the relevant facts
derived from the Prosecution Opening.
6
The applicant is the sole director and
shareholder of Quoc Phong DVD World Pty Ltd (DVD World), a business
operating at Shop 5-6, 792-806 Heatherton Road, Springvale South (the DVD
World Shop).
7
In September 2013, the Australian Federal Police
(AFP) received an allegation that DVD World was selling Asian DVDs that
infringed the copyright and trade mark of Television Broadcasts Ltd (TVB),
a group of companies based in Hong Kong that produce Asian film products. Subsequent
investigations by the AFP indicated that DVD World was also selling English
language DVDs that infringed the copyright and trade marks of several American
movie companies.
8
On 7 November 2013, the AFP executed search
warrants at three locations: the DVD World Shop, a shop at 100 Lightwood Road,
Noble Park occupied by the applicant (the Noble Park Shop) and the
applicant’s home. At the DVD World Shop, the executing officers from the AFP
observed thousands of predominantly Asian DVDs displayed on tables and shelves
for sale. The officers located two catalogues. These catalogues were arranged
in a way that appeared to be designed to avoid detection by anti-piracy
investigators and law enforcement agencies. Each catalogue consisted of a
number of soft DVD sleeves held together by a cable tie. An Asian DVD was
inserted in the front sleeve, and inside many of the remaining sleeves were
numbered copies of printed, western-titled, paper DVD covers. The numbers
corresponded to packs of English language movie DVDs located on the shelves. The
front sleeve of each pack contained an Asian DVD and a handwritten number, and
the remaining sleeves contained unmarked DVDs that were copies of the English
language movies listed in the catalogues. Also located in the shop were 216
counterfeit Nintendo Wii game discs that were concealed in a similar way. These
discs were typically in packs of six to eight discs and were disguised by a
single Asian titled DVD at the front of the pack.
9
The AFP seized the 216 counterfeit Nintendo Wii
game discs and approximately 55,000 DVDs. The Prosecution Opening stated that
the 55,000 DVDs were counterfeit. As will be seen, however, this is one of the
areas in respect of which counsel for the applicant expressed some
disagreement.
10
The AFP also seized two computer towers, seven
DVD burner towers, five printers and an external hard drive. Also located under
a desk towards the rear of the DVD World Shop was a book containing handwritten
dates and dollar amounts. The Crown alleged that this was a record of takings
from the shop. This allegation was another point of disagreement, though
ultimately nothing turned on this issue. The sentencing judge did not find that
this book related to the business conducted out of the shop.
11
At the Noble Park Shop, the AFP seized
approximately 4,000 DVDs. The Prosecution Opening stated that these DVDs were
counterfeit, though again the applicant’s counsel took issue with whether all
these DVDs were counterfeit.
12
The police also seized more than 2,300 DVDs
which were said to be counterfeit and a number of DVD burners from the applicant’s
home.
13
The DVDs seized from all three premises were
examined and catalogued by the AFP with assistance from industry experts. They
counted more than 61,000 discs, the vast majority of which were movie DVDs, but
some of which were computer games and music recordings. The result of the
examination was that a small number of discs found at the Noble Park Shop were
found to be genuine, but the overwhelming majority of discs seized from the
three addresses bore the indicia of counterfeits. The indicia of counterfeit
DVDs included the use of recordable discs (DVD-Rs and CD-Rs), poor quality
packaging and printing on the insert in the plastic case and on the disc
itself. The Crown tendered a spreadsheet that summarised the results of the
examination of the 61,000 discs. There was no objection to this spreadsheet. Indeed,
counsel for the applicant agreed that the discs seized from the three premises
showed the indicia of counterfeit discs.
14
After the discs had been catalogued, an industry
representative associated with TVB selected a number of sample discs at random.
From those samples, 15 titles that infringed copyright were selected for the
purpose of prosecution. Each of those DVDs had been seized from the items on
display for sale at DVD World.
15
The Director of Operations for the Australian
Screen Association (ASA) also examined a selection of the seized English
language DVDs and concluded that they were all copies of cinematograph films
that infringed copyright held by member companies.
16
The discs selected and examined in respect of
copyright infringement by the TVB and ASA representatives became the subject
matter of Charge 1. The discs the subject of this charge involved 30 movie
titles and a total of 1,040 discs (there being multiple copies of most of the
titles). These 1,040 discs were listed in a schedule to Charge 1.
17
In respect of trade mark infringement, five DVDs
that displayed TVB’s registered trade mark were selected by the TVB
representative for the purposes of prosecution and a sample of DVDs that
displayed the registered trademarks of ASA member companies were selected by
the ASA representative. A representative
of Nintendo Australia Pty Ltd also examined the 216 Wii discs that had been
seized from DVD World and concluded, based on visual indicia, that they too were
were counterfeit copies bearing at least one Nintendo registered trade mark. The discs selected by the TVB, ASA and Nintendo representatives
involving trade mark infringements became the subject matter of Charge 2. The
discs the subject of this charge involved 10 DVD movie titles and 5 computer
game titles and a total of 175 discs (there again being multiple copies of most
of the titles). These 175 discs were listed in a schedule to Charge 2.
18
An AFP forensic expert also examined the
computer equipment seized from the DVD World Shop. The examination revealed that
the computer towers contained multiple applications for burning, copying and
editing DVDs and other discs and that the hard disc drives contained 2,018
files of movies and 1,032 picture files of DVD covers corresponding with the
movies.
19
The applicant was interviewed by AFP officers on
7 November 2013 and admitted that he copied some DVD movies using the copying
machines at the DVD World Shop. He said that he had paid a man named Dat in
Springvale $25,000 per year since opening his shop in 2009 for DVDs that he
copied. He also said that he obtained DVDs from other sources and downloaded
films using Torrent. When asked whether he knew that it was illegal to copy and
sell DVDs without a licence, he said at one point that he was allowed to do it
“because the guy he obtained them from had a licence, this meant he was allowed
to do it”. He ultimately admitted that he knew that what he was doing was wrong
and said he told his partner that it was not the right way to continue and that
he wanted to close the DVD World Shop and start a new shop selling other
things. The applicant said that he sold between 20 and 50 DVDs a day but that
he did not keep a record. He stated that it was hard to say how much the
business earned, sometimes $2,000, sometimes $3,000 a week of which about 50%
was profit.
20
The applicant was arrested on 7 November 2013
and granted bail pending the determination of the charges.
21
At the plea hearing the applicant admitted prior
convictions for three offences: first, an offence of making a threat to kill
and causing injury intentionally for which the applicant was sentenced on 13
December 2007 and placed on a community-based order for a period of six months;
second, charges involving a number of breaches of the Copyright Act and Trade
Marks Act and related dealing in property suspected of being the proceeds of
crime for which the applicant was sentenced on 23 September 2009 to a term of
imprisonment of three months, but was released forthwith upon entering into a
recognizance to be of good behaviour for 12 months; and third, charges of
possessing infringing copies of copyright works with the intention of selling
and possessing a device intended to be used for making infringing copies of
copyright works in respect of which he was convicted and sentenced on 30 August
2011 to pay an aggregate fine of $8,000.
22
The applicant did not give evidence and did not
call evidence from any witness at the plea hearing. The only evidence tendered
by the applicant was a report of a psychologist.
23
The relevant offence and penalty provisions
which are the subject of this appeal are contained in ss 132AJ(1) and (2) of the
Copyright Act and s 148(1) of the Trade Marks Act.
24
Subsections 132AJ(1) and (2) of the Copyright
Act provide as follows:
132AJ Possessing infringing copy for commerce
Indictable
offence
(1) A
person commits an offence if:
(a) the person possesses an article, with the intention
of doing any of the following with the article:
(i) selling it;
(ii) letting it for hire;
(iii) by way of trade offering or exposing it for sale or
hire;
(iv) offering or exposing it for sale or hire to obtain a
commercial advantage or profit;
(v) distributing it for trade;
(vi) distributing it to obtain a commercial advantage or
profit;
(vii) distributing it to an extent that will affect
prejudicially the owner of the copyright in the work or other subject‑matter
of which the article is an infringing copy;
(viii) by way of trade exhibiting it in public;
(ix) exhibiting it in public to obtain a commercial
advantage or profit; and
(b) the article is an infringing copy of a work or other
subject‑matter; and
(c) copyright subsists in the work or other subject‑matter
at the time of the possession.
(2) An offence against subsection (1) is
punishable on conviction by a fine of not more than 550 penalty units or
imprisonment for not more than 5 years, or both.
Note
1: A corporation may be fined up to 5 times the amount of the maximum fine
(see subsection 4B(3) of the Crimes Act 1914).
Note
2: If the infringing copy was made by converting the work or other subject‑matter
from a hard copy or analog form into a digital or other electronic machine‑readable
form, there is an aggravated offence with a higher maximum penalty under
section 132AK.
25
Subsection 148(1) of the Trade Marks Act
provides:
148 Goods with false trade marks
Indictable
offence
(1) A
person commits an offence if:
(a) the
person:
(i) sells
goods; or
(ii) exposes
goods for sale; or
(iii) possesses
goods for the purpose of trade or manufacture; or
(iv) imports goods into Australia for the purpose of trade
or manufacture; and
(b) any of
the following applies:
(i) there
is a registered trade mark on the goods;
(ii) there is a mark or sign on the goods that is
substantially identical to a registered trade mark;
(iii) a registered trade mark on the goods has been
altered, defaced, added to, wholly or partly removed, erased or obliterated;
and
(c) the registered trade mark, or mark or sign, was
applied, altered, defaced, added to, wholly or partly removed, erased or
obliterated, as the case requires, without:
(i) the permission of the registered owner, or an
authorised user, of the trade mark; or
(ii) the application being required or authorised by this
Act, a direction of the Registrar or an order of a court.
Penalty Imprisonment
for 5 years or 550 penalty units, or both.
26
The effect of s 132AJ(2) of the Copyright Act,
when read with s 4AA(1) of the Crimes Act 1914 (Cth) (Crimes Act),
is that the maximum penalty for possession with the intention of selling
infringing copies of an article in which copyright subsists is a fine of not
more than 550 penalty units ($93,500) or imprisonment for not more than 5
years, or both. The maximum penalty for the exposure of goods for sale without
permission of the registered owner of trademarks, contrary to s 148(1) of
the Trade Marks Act, is also a fine of not more than 550 penalty units
($93,500) or imprisonment for not more than 5 years, or both.
27
The two charges against the applicant were
particularised as follows in the Particulars and Statement of Offence provided
to the sentencing judge:
Charge 1 The Director
of Public Prosecutions who prosecutes in this behalf for Her Majesty the Queen,
charges that PHONG QUOC LY at Springvale South in Victoria on the 7th
day of November 2013 possessed quantities of various digital versatile discs (DVDs)
of cinematograph films (listed in Schedule 1) with the intention of selling
those DVDs and the DVDs were infringing copies of subject matter other than
works and copyright subsisted in that subject matter at the time of the
possession.
Statement of
Offence – Possession
with the intention of selling infringing copies of subject matter in which
copyright subsisted contrary to subsection 132AJ(1) of the Copyright Act
1968 (Cth).
Charge 2 And the said
Director of Public Prosecutions further charges that PHONG QUOC LY at
Springvale South in Victoria on the 7th day of November 2013 exposed
for sale quantities of various digital versatile discs of cinematograph films
and optical discs of computer games (discs) (listed in Schedule 2) and
there were registered trade marks on the discs and the registered trade marks
were applied without the permission of the registered owners of the trade
marks.
Statement of
Offence
– Exposure of goods for sale without the permission of the registered owner of
the trade marks applied to the goods contrary to subsection 148(1) of the Trade
Marks Act 1995 (Cth).
28
Schedule 1 and schedule 2 to the Particulars and
Statement of Offence listed the 1,040 and 175 discs the subject of Charges 1
and 2 respectively.
29
It was made clear in both the Prosecution
Opening and in the Crown’s oral opening and submissions that the charges were
both “rolled up” and “representative.” They were rolled up because, whilst a
separate charge under both s 132AJ(1) of the Copyright Act and s 148(1) of the
Trade Marks Act could have been laid in respect of each single infringing disc,
Charge 1 was rolled up to so as to relate to 1,040 discs and Charge 2 was
rolled up so as to relate to 175 discs. The applicant did not object to the
rolled up nature of the charges: see R v Jones [2004] VSCA 68 at [13].
30
The charges were said to be representative because
the facts upon which the applicant was to be sentenced included other instances
of offending conduct of the same type in respect of which the applicant was not
charged. In this respect, the two charges were said to be representative of the
other uncharged acts. At the plea hearing, counsel for the applicant agreed
that there was other conduct that could have been the subject of charges and
took no issue with the two charges being considered to be representative
charges to the extent that this precluded any finding that the two charges were
isolated offences.
31
In respect of Charge 1 (s 132AJ(1) of the
Copyright Act), the sentencing judge sentenced the applicant to 12 months
imprisonment. In respect of Charge 2, the applicant was sentenced to
imprisonment for eight months. The terms of imprisonment were to be served
concurrently and to commence on the day of sentence. There was no pre-sentence
detention. His Honour made a recognizance release order under s 19AC of the
Crimes Act, the effect of which was that the applicant was to be released from
imprisonment on his own recognizance of $1,500 to be of good behaviour after
serving eight months of imprisonment.
32
In sentencing the applicant, his Honour noted
that s 16A(1) of the Crimes Act required him to impose a sentence that was
of a severity appropriate in all the circumstances of the offence and that he had
regard to the matters listed in s 16A(2) of the Crimes Act to the extent that
they were relevant: Remarks at [14]. A fair reading of his Honour’s remarks on
sentence reveals that his Honour considered that the following matters were
particularly relevant to arriving at the sentence imposed.
33
First, his Honour had regard to the importance
of general deterrence in sentencing for such offences: Hamm v Middleton (1999)
44 IPR 656 (Hamm v Middleton) at [18]; Remarks at [15]. His
Honour also had regard to the importance of specific deterrence, particularly
in light of the prior offences under the Copyright Act and Trade Marks Act:
Remarks at [19], [25].
34
Second, the offences were to be seen in the
context of a wider commercial enterprise that was substantial. The offences
were part of a course of conduct in running that enterprise: Remarks at [16].
35
Third, the sentencing judge found that there was
no evidence from which he could find on the balance of probabilities that the
applicant was genuinely remorseful: Remarks at [17]. In this respect, his Honour
had particular regard to the applicant’s prior offences under the Copyright Act
and Trade Marks Act. His Honour found, having regard to the prior convictions,
that the applicant committed the offences with his “eyes open”, that he failed
to heed the warning that should have arisen from his previous court appearances
and that his conduct was “deliberate, flagrant, calculated offending motivated
by the prospect of substantial profits”: Remarks at [18]. His Honour noted that
there was no evidence before him of any financial pressure and that he was
driven to the conclusion that the applicant was “driven by greed, not need”:
Remarks at [18]. In relation to this finding, the sentencing judge referred to
statements in the psychologist’s report that the applicant’s prior offences
were borne out of the need to make ends meet to support his children and pay
his rent, but found that there was no evidence “of any financial distress or
pressure that would justify” the offences for which he was being sentenced.
36
Fourth, the applicant pleaded guilty and
indicated his plea of guilty at an early stage. His Honour found that the
applicant was entitled to substantial credit for his early plea: Remarks at
[19].
37
Fifth, the sentencing judge had regard to the
character, age, means and physical and mental condition of the applicant. In
this respect, his Honour noted that he was greatly assisted by the psychologist
report: Remarks at [19]-[22]. His Honour took into account the applicant’s
prospects of rehabilitation: Remarks at [24].
38
As set out below, the Court has jurisdiction to
hear this appeal.
39
The two sentences under appeal were imposed by a
Judge of the County Court of Victoria under s 132AJ(2) of the Copyright Act
and under s 148(1) of the Trade Marks Act, respectively. As explained
below, the Court has jurisdiction to hear the appeal in respect of Charge 1 in
exercise of a direct statutory conferral of appellate jurisdiction, whilst its
jurisdiction to hear the appeal in respect of Charge 2 is in exercise of the
statutory conferral of jurisdiction in associated matters.
40
Section 132AJ of the Copyright Act is found in
Part V of that Act, headed “Remedies and offences”. Section 131B(2)(a) of the
Copyright Act expressly provides that an appeal lies from a decision of a court
of a State or Territory under Part V to this Court. A “decision” in
s 131B(2) includes a sentence: see further Lai-Ha v McCusker (2000)
101 FCR 460 at 462 [6]-[9].
41
The Federal Court of Australia Act 1976
(Cth) (Federal Court Act) also provides for the Court’s appellate
jurisdiction in criminal matters. This jurisdiction is no longer to be found in
Division 2 of Part III of the Federal Court Act (which includes s 24 upon
which earlier authorities relied: see, for example, Le v R (2007) 74 IPR
1 (Le v R) at 4 [9]). This is made clear by s 23P, which was
introduced by the Federal Court of Australia Amendment (Criminal
Jurisdiction) Act 2009 (Cth) (2009 Amending Act). The 2009 Amending
Act was part of a legislative package that was designed to confer indictable
criminal jurisdiction on the Court with respect to serious cartel offences (as
to which, see ss 44ZZRF and 44ZZRG of the Competition and Consumer Act
2010 (Cth)). As will be seen, however, the 2009 Amending Act also made
consequential changes to the existing, though limited, criminal appellate
jurisdiction of the Court. Section 23P provides that Division 2 of Part III
“applies to the Court’s appellate jurisdiction in relation to civil matters”. The
2009 Amending Act introduced a new Division 2A, headed “Appellate and related
jurisdiction (criminal proceedings)” to govern criminal appeals. The
Explanatory Memorandum for the Federal Court of Australia Amendment
(Criminal Jurisdiction) Bill 2008, which became the 2009 Amending Act,
confirms that Division 2 of Part III was intended to apply only to civil
appeals, whilst Division 2A was intended to govern criminal appeals. The
Explanatory Memorandum for the 2009 Amending Act stated (at paragraph [315]):
The Federal
Court Act is amended under items 58 and 59 to limit Division 2 of the Act so
that it only applies to appeals in civil proceedings. The Court had some
limited powers to hear appeals in criminal proceedings under Division 2. Those
powers have been moved to Division 2A which will contain all the provisions
dealing with appeals in criminal cases.
42
It is sufficient to note here that item 58
related to the new s 23P. In relation to this provision, the
Explanatory Memorandum further
stated:
Item 58
Before section 24
619. This
amendment adds a new section to Division 2 of Part III to provide that the
Division only applies to the Court’s appellate jurisdiction in relation to
civil matters.
43
Subdivision A of Division 2A concerns the
bringing of criminal appeals. Section 30AA, which begins Subdivision A in
Division 2A, sets out the circumstances in which the Court has jurisdiction to
hear and determine an appeal “about” an indictable offence. Section 30AA relevantly
provides:
Appeals
about indictable offences
(1) The
Court has jurisdiction to hear and determine an appeal from a judgment of an
eligible primary court to the extent the judgment:
(a) convicts
the accused of a count in an indictment; or
(b) sentences
the accused in relation to a count in an indictment; or
(c) acquits
the accused of a count in an indictment as a result of the court (rather than a
jury) finding that the accused had no case to answer; or
(d) acquits
the accused because of mental illness in relation to a count in an indictment;
or
(e) in
the case of a judgment of the Court constituted by a single Judge—consists of
one or more orders, determinations or findings under Division 6 or 9 of
Part IB of the Crimes Act 1914.
Relationship to other Acts
(5) This section has effect subject to any
other Act, whether passed before or after the commencement of this Act
(including an Act by virtue of which any judgments referred to in this section
are made final and conclusive or not subject to appeal).
44
Section 4 of the Federal Court Act states that:
eligible
primary court means:
(a) the
Court constituted by a single Judge in indictable primary proceedings; or
(b) the
Supreme Court of a Territory (other than the Australian Capital Territory or
the Northern Territory); or
(c) in
such cases as are provided by any other Act, a court (other than a Full Court
of the Supreme Court) of a State, the Australian Capital Territory or the
Northern Territory, exercising federal jurisdiction.
45
Section 30AA(1)(b) purports to confer
jurisdiction on the Court to hear and determine a sentencing appeal in respect
of an indictable offence from a judgment of an eligible primary court. As we
have seen, s 131B(2)(a) of the Copyright Act provides for an appeal to
this Court from a sentence imposed by the County Court of Victoria for an
offence in breach of s 132AJ(1). On its proper construction, this is a
case for which provision is made by “any other Act” within the meaning of paragraph
(c) of the definition of “eligible primary court”.
46
We reach this conclusion, notwithstanding that
the Explanatory Memorandum to the 2009 Amending Act stated (at paragraph [316])
that the term “eligible primary court” “includes a court nominated in another
Act (other than a Full Court of a Supreme Court)” and that “[t]here are no such
nominations at this time”. The significance of this latter comment is not
entirely clear; and it may simply have been stating that no “nominations” had
been made within the legislative package of which the 2009 Amending Act was a
part. Be that as it may, we would not give the comment any great weight. As the
High Court said in FCT v Consolidated Media Holdings Ltd (2012) 250 CLR
503 at 519 [39], “[l]egislative history and extrinsic materials cannot displace
the meaning of the statutory text”. It was clearly not the legislative
intention to deprive the Court of its existing limited criminal appellate
jurisdiction, as is evident from the text of the 2009 Amending Act, the Explanatory
Memorandum to the 2009 Amending Act, and the Attorney-General’s Second Reading
Speech (cited at paragraph [59] below). Rather, the legislative intention was
that criminal appellate jurisdiction should henceforth be governed by Division
2A, not Division 2, of Part III of the Federal Court Act. The ordinary meaning
of the text of s 30AA achieves this outcome and the provision should not
be construed so as to defeat this legislative purpose.
47
Accordingly, pursuant to s 131B(2)(a) of
the Copyright Act and s 30AA(1)(b) of the Federal Court Act, this Court
has jurisdiction to hear the appeal from the sentence imposed in respect of
Charge 1.
48
The Trade Marks Act does not confer jurisdiction
on this Court to hear an appeal against a sentence imposed under s 148 of
that Act by the County Court of Victoria, because the County Court is not a
prescribed court as set out in s 190 and this proceeding is not a civil
action for a trade mark infringement under Part 12, as identified in
s 195(1): see Trade Marks Act, ss 190 and 195. Nonetheless, we consider
that this Court has jurisdiction to hear the appeal from the sentence imposed
in respect of Charge 2, being a sentence imposed under s 148(1) of
the Trade Marks Act, as part of the Court’s jurisdiction in associated matters,
conferred by s 32 of the Federal Court Act.
49
Section 32 of the Federal Court Act now provides
as follows:
Jurisdiction
in associated matters
Associated
matters—civil proceedings
(1)
To
the extent that the Constitution permits, jurisdiction is conferred on the
Court in respect of matters not otherwise within its jurisdiction that are
associated with matters (the core matters) in which the
jurisdiction of the Court is invoked.
(2)
The
jurisdiction conferred by subsection (1) extends to jurisdiction to hear
and determine an appeal from a judgment of a court so far as it relates to a
matter that is associated with a matter (the core matter) in
respect of which an appeal from that judgment, or another judgment of that
court, is brought.
(3)
Subsections (1)
and (2) do not apply in relation to a core matter that is an indictable offence
matter.
Associated
matters—indictable offences
(4) To
the extent that the Constitution permits, jurisdiction is conferred on the
Court in respect of matters (the related matters) that:
(a) arise under any laws made by the Parliament; and
(b) are not otherwise within the Court’s jurisdiction;
and
(c) relate to one or more indictable offences;
that are
associated with an indictable offence matter in which the jurisdiction of the
Court is invoked.
(5) The jurisdiction conferred by
subsection (4) extends to jurisdiction to hear and determine an appeal
from a judgment of a court so far as it relates to a related matter that is
associated with an indictable offence matter in respect of which an appeal from
that judgment, or another judgment of that court, is brought.
(6) For the purposes of this Act, a matter is an
indictable offence matter if a proceeding in relation to the matter would be an
indictable primary proceeding.
50
In Le v R at 4-5 [7]-[13], which also
involved an appeal against sentences imposed under the Copyright Act and the
Trade Marks Act, Edmonds J held that the Federal Court not only had
jurisdiction under s 131B(2)(a) of the Copyright Act with respect to an appeal
against sentence under that Act, but also had associated jurisdiction under
ss 32(1) and (2) of the Federal Court Act with respect to an appeal
against sentence under the Trade Marks Act because the court’s appellate
jurisdiction had been invoked in the related Copyright Act appeal. For the
reasons that follow, we consider that this remains the correct approach.
51
We note that in the earlier decision of Bell
v Queensland (2006) 71 IPR 139 at 139-140 [2], which concerned an appeal
against sentence for breaches of s 132 of the Copyright Act, Kiefel J
expressed the view, obiter dictum and without the issue being argued, that the
Court would not have had jurisdiction to hear an appeal against other penalties
imposed under the Trade Marks Act by the Magistrates Court of Queensland. It
must also be borne in mind, however, that the only matter before her Honour was
an appeal against sentence for those Copyright Act breaches; that her Honour
did not elucidate the basis for her opinion; and that her Honour did not refer
to s 32 of the Federal Court Act.
52
The amendments made to the Federal Court Act by
the 2009 Amending Act, which were made after Le v R, introduced
ss 32(3)-(6) and the current subheadings. At first glance, these new
provisions might be thought to have relevantly altered the analysis that should
be made of the Court’s associated jurisdiction in cases such as the present
appeal.
53
Closer examination shows, however, that
ss 32(3)-(5) are inapplicable here. This is because an appeal against a
sentence imposed under the Copyright Act, which is the core matter for
s 32 purposes, is not an “indictable offence matter” and these provisions
only apply where the core matter is an “indictable offence matter”.
54
An “indictable offence matter” is defined in
s 32(6) as such a matter “if a proceeding in relation to the matter would
be an indictable primary proceeding”. Section 4 of the Federal Court Act
provides that the expression “indictable primary proceedings” has the meaning
given by s 23AB(2).
55
Section 23AB concerns the application of
Division 1A of Part 111 of the Federal Court Act. Division 1A is headed
“Original jurisdiction (indictable offences)”. Section 23AB(2) provides:
This
Division applies in relation to the following proceedings (the indictable
primary proceedings):
(a) proceedings
in the Court that are commenced by, or that include, an event mentioned in
subsection (1);
(b) proceedings
in the Court for sentencing the accused if the Court, in proceedings covered by
paragraph (a), has accepted a plea of guilty, or a verdict of guilty, for
a count in the indictment in relation to the accused;
(c) proceedings
in the Court that are ancillary to proceedings covered by paragraph (a) or
(b).
56
Section 23AB(1), to which s 23AB(2) refers,
relevantly provides:
This
Division applies in relation to a person (the accused) if any of the
following events happen:
(a) either
the accused, the prosecutor or both appear before the Court in accordance with
an order committing the accused for trial on indictment, or sentencing, before
the Court for an indictable offence;
(b) the
prosecutor files in the Court an indictment against the accused for an indictable
offence (whether or not the accused has been examined and committed for trial
on indictment);
…
“Court” is
defined in s 4 of the Federal Court Act to mean the Federal Court.
57
To understand these provisions better, it is
also necessary to note s 23AB(4), which states:
Offences to
which this Division applies
(4) A
reference in this Division to an offence is a reference to any of the following:
(a) an
offence against either of the following sections of the Competition and
Consumer Act 2010:
(i) section 44ZZRF
(making a contract etc. containing a cartel provision);
(ii) section 44ZZRG
(giving effect to a cartel provision);
(b) if
jurisdiction is conferred on the Court under subsection 32(4) in respect
of a matter—an indictable offence to which the matter relates.
Note: Paragraph (b) covers any Commonwealth
indictable offence associated with a particular prosecution of a cartel offence
mentioned in paragraph (a).
58
None of ss 32(3)-(5) of the Federal Court
Act apply to the appeal so far as it is an appeal against sentence imposed
under the Trade Marks Act and s 32(3) does not preclude the application of
ss 32(1) and 32(2). This is because the appeal against the sentence
imposed under the Copyright Act is not “an indictable offence matter”. This is because
a proceeding in relation to that matter would not be an indictable primary
proceeding because it does not fall within s 23AB(2), since it was not
commenced by, and did not include, an event described in s 23AB(1). No
event of the kind mentioned in ss 23AB(1)(a) or (b) occurred in this
Court.
59
This conclusion is consistent with the note to
s 23AB(4) and with the Explanatory Memorandum for the 2009 Amending Act. The
Explanatory Memorandum stated that, as already indicated, the purpose of the 2009
Amending Act was to provide a “procedural framework” for the Federal Court to
exercise indictable criminal jurisdiction over serious cartel matters. See also
the Second Reading Speech of the then Attorney-General, Mr Robert
McClelland, in Commonwealth, Parliamentary Debates, House of
Representatives, 3 December 2008, 12294-5.
60
Save for the subheading “Associated matters –
civil proceedings” and the definitional expression “(the core matter)”, which
were inserted by the 2009 Amending Act, ss 32(1) and (2) have not been
amended since the Federal Court Act was first enacted. In the Second Reading
Speech, for the Federal Court of Australia Bill 1976, the then
Attorney-General, Mr Robert Ellicott, described the purpose of the
proposed “associated jurisdiction” provision in the following terms:
Clause 32 of
the Bill would confer on the new Court, so far as the Constitution permits,
jurisdiction in matters that are associated with matters of federal
jurisdiction before the Court. The intention is to confer jurisdiction on the
Court in matters which, if they arose in isolation, might not be matters of
federal jurisdiction but which, arising in association with a matter of federal
jurisdiction, must be disposed of at the same time as that matter in order that
the rights of the parties may be finally determined.
See
Commonwealth, Parliamentary Debates, House of Representatives, 21
October 1976, 3.
61
In PCS Operations Pty Ltd v Maritime Union of
Australia (1998) 155 ALR 520 at 523 [6], Gaudron J observed:
In Philip
Morris Inc v Adam P Brown Male Fashions Pty Ltd [(1981) 148 CLR 457 at 476]
Barwick CJ expressed the view that “the word ‘associated’ [in s 32]
embraces matters which may be disparate from each other, a view which
is implicit in other judgments in that case.
(Citation
added; original citations omitted)
62
As her Honour subsequently said (at 524-5
[10]-[13]) after citing the majority judgment in Fencott v Muller (1983)
152 CLR 570 at 608, the question whether a federal matter is associated with
another federal matter for the purposes of s 32(1) of the Federal Court
Act is primarily a question of “practical judgment”.
63
The sentences imposed under the Copyright Act
and under the Trade Marks Act arise out of the same circumstances and the
sentencing judge imposed them concurrently. The parties rightly accepted that
it was practically desirable that the appeals in respect of Charge 1 and Charge
2 be heard together. The matter of the appeal against the sentence imposed
under the Trade Marks Act is clearly, in our view, associated with the matter
of the appeal against the sentence imposed under the Copyright Act in which the
jurisdiction of the Court has been invoked; and, accordingly, ss 32(1) and
(2) of the Federal Court Act operate to confer jurisdiction on the Court to
hear and determine the sentence imposed under the Trade Marks Act.
64
We consider that this construction of ss 32(1)
and (2) best promotes the statutory purpose of these provisions.
65
There is only one factor that militates against
the application of these provisions in the present case. This is the subheading
introduced by the 2009 Amending Act, which refers only to “civil proceedings”;
and which might be thought to signify that ss 32(1) and (2) were not intended
to apply to a criminal appeal. There is, however, no indication in the text of
s 32 or in the extrinsic material to which we were referred (the Explanatory
Memorandum for the 2009 Amending Act and the Attorney-General’s Second Reading
Speech) that there was any legislative intention to curtail the existing
operation of ss 32(1) and (2). As we have previously noted, the purpose of the 2009
Amending Act was to provide a procedural framework for this Court to hear and
determine serious cartel offences. Section 32(3) indicates that the legislature
intended to limit the application of ss 32(1) and (2) only as specifically
provided in s 32(3) – which as discussed above does not apply to this appeal.
66
It should, moreover, be borne in mind that
s 13(2)(d) of the Acts Interpretation Act 1901 (Cth) provides only
that a heading to “a Chapter, Part, Division or Subdivision appearing before
the first section of the Act” is part of an Act and would not apply to the
subheading appearing before ss 32(1) and (2). At the same time, s 13(1), which
provides that “all material from and including the first section of an Act to
the end …” is part of the Act, would cover the subheading to these sections. We
therefore recognise that the subheading tends against the conclusion that ss
32(1) and (2) operate with respect to a criminal appeal, but we do not consider
that this factor should prevail over the ordinary meaning and previously
accepted operation of the text of these provisions, and the consideration to
which we have already referred, namely, that the 2009 Amending Act was not
intended to curtail the operation of ss 32(1) and (2) other than as stated
in s 32(3).
67
Furthermore, the mode in which the amendments to
ss 32(1) and (2) were made tends to confirm that there was no legislative
intention to limit the operation of these provisions other than as set out in s
32(3). That is, the 2009 Amending Act introduced the new subheading “Associated
matters – civil proceedings” only by way of a note to a clause introducing the
definition “(the core matters)” to s 32(1). Thus, clauses 70 and 71 to
Part 2 of Schedule 1 to the 2009 Amending Act read as follows:
70
Subsection 32(1)
After “with
matters”, insert “(the core matters)”.
Note: The
following heading to subsection 32(1) is inserted “Associated matters—civil
proceedings”.
71
Subsection 32(2)
After
“matter” (second occurring), insert “(the core matter)”.
68
All amendments to ss 32(1) and (2) were,
moreover, made in Part 2 of the Schedule to the 2009 Amending Act, being that
Part entitled “Consequential and other amendments”. Part 1 to that Schedule
was, in contrast, called “Main Amendments”. The legislature cannot have
intended to effect a significant limitation on the operation of ss 32(1) and
(2) by an amendment listed in that Part of the Schedule of amendments dealing
with merely “consequential” amendments to the Federal Court Act.
69
For these reasons, we do not consider that the
insertion of a new subheading was intended to have any effect on the operation
of ss 32(1) and (2), other than as set out in s 32(3). The subheading
expressed no more than an understanding that these provisions would most
commonly operate with respect to civil proceedings, bearing in mind that the
Federal Court was and remains a Court mostly concerned with civil matters, and
that the purpose of the 2009 Act was to introduce a framework for the Court to
hear a specific kind of criminal offence.
70
We would, for these reasons, conclude that the
Court has jurisdiction to hear and determine this appeal in so far as it
relates to the sentence imposed not only under the Copyright Act but also
imposed under the Trade Marks Act.
71
As a result of the amendments to the Federal
Court Act effected by the 2009 Amending Act, the appeal gave rise to the
further issue as to whether or not leave to appeal was required pursuant to
s 30AB(1) of the Federal Court Act. Section 30AB(1) provides that:
An appeal
under section 30AA cannot be brought from a judgment referred to in subsection
30AA(1) or (2) unless:
(a) the
Court or a Judge gives leave to appeal; or
(b) the
appeal involves a question of law alone.
72
We have already stated that in our view this was
an appeal under s 30AA(1)(b) in so far as it concerned an appeal against
sentence imposed under s 132AJ(1) of the Copyright Act. The appeal did not
involve a question of law alone. We therefore conclude that it is necessary for
this Court to grant leave, which as indicated already, we would do.
73
The applicant’s eight grounds of appeal are as
follows:
(1)
The
learned sentencing judge erred in finding that the applicant possessed more
than 61,000 counterfeit discs, and in taking that finding into account in
considering the circumstantial context in which the offences were to be
assessed.
(2)
The
learned sentencing judge erred in finding that the Noble Park Shop was being
set up to sell counterfeit DVDs.
(3)
The
learned sentencing judge breached the principle in The Queen v De Simoni
(1981) 147 CLR 383 by taking into account the fact that:
(a)
Devices
for the burning, copying and editing of CDs, DVDs and Blue-Ray discs, were
found at DVD World and at the applicant's home;
(b)
The
applicant had copied and downloaded films onto DVD; and/or
(c)
The
applicant had sold such DVDs.
(4)
The
learned sentencing judge denied the applicant procedural fairness in finding
that the applicant's offending was motivated by "greed, not need".
(5)
The
learned sentencing judge erred in finding that the applicant's offending was
motivated by "greed, not need".
(6)
The
learned sentencing judge erred in failing to take into account the applicant's
co-operation in consenting to the destruction order.
(7)
The
learned sentencing judge erred in finding that there was no evidence of
remorse.
(8)
The
individual sentences and the period before which the applicant is to be
released on his own recognizance are manifestly excessive.
74
In support of ground one, the applicant
submitted that the sentencing judge erred in sentencing the applicant on the
basis that all of the non-indictment DVDs with indicia of being counterfeit
were indeed counterfeit and in taking that finding into account in placing the
offending in its “full circumstantial context”. In this respect, the applicant
seizes on parts of the remarks on sentence where the sentencing judge recites
the facts in accordance with the Prosecution Opening, including that the AFP
seized 55,000 counterfeit DVDs and 216 counterfeit Nintendo Wii game discs from
the DVD World Shop (Remarks at [4]), as well as 4,000 counterfeit DVDs and 2,300
counterfeit DVDs from the Noble Park Shop and the applicant’s home respectively
(Remarks at [6]). The applicant drew attention to the fact that, at the plea
hearing his counsel disputed the fact that all the seized DVDs were counterfeit
and the prosecution did not adduce evidence to the contrary.
75
When his Honour’s sentencing remarks are read as
a whole, however, it is clear that his Honour did not, as contended by the
applicant, sentence the applicant on the basis that all 61,000 discs were
counterfeit, or take that finding into account in determining the full
circumstantial context. His Honour’s finding concerning the circumstantial
context was that the two offences were committed in the course of the conduct
of a substantial commercial enterprise: Remarks at [16]. That enterprise
unquestionably involved counterfeit DVDs. This finding concerning the wider
context was not based on a finding that all 61,000 DVDs were counterfeit,
despite the passages from the remarks relied on by the applicant where his
Honour recites the facts as set out in the Prosecution Opening. The finding
concerning the nature of the enterprise was open and supported by the evidence
even if, as contended by the applicant, the evidence established only that the
seized DVDs (beyond those the subject of the charges) bore the indicia of being
counterfeit, not that they were in fact counterfeit.
76
It is apparent from the transcript of the plea hearing
that the applicant’s counsel did not dispute that all, or at least a
substantial number, of the seized DVDs not the subject of the charges bore the
indicia of being counterfeit. To the extent that the applicant flagged any
disagreement in relation to the facts concerning the number of DVDs that were
in fact counterfeit, counsel for the applicant accepted that any disagreement
probably did not matter so long as the use to which that fact was put was
limited to establishing the wider circumstantial context and demonstrating that
the two charges were not isolated offences. This is demonstrated by the
following exchanges during the plea hearing:
[at T5]
MR DICKINSON
[Counsel for the applicant]: So there were a large number of DVDs taken.
Probably some controversy about how many, but it doesn’t really matter because
of – and samples were taken. And samples were taken which I won’t trouble Your
Honour with what follows from that, but really we concede that in respect of
each of the counts there are other matters that could have been charged.
They’re representative, they’re not charged but they do point to the Crown’s
contention that we don’t argue with, that they’re not isolated offences. It’s
not a one-off, we’re not saying – we’ve only done it once, so whatever follows
from that, we’re not saying that and we won’t say it.
[at T16]
Mr DICKINSON
…
Now we don’t
know how many DVDs in fact were seized, but we will accept that 55,000-odd were
taken from the three premises. We don’t accept that there were 55 counterfeit
DVDs on the Crown evidence. We accept that there were 55,000 DVDs that showed
indicia of that. The subsequent investigation, the detailed investigation
throws up the Charges 1 and 2, but we concede, as I said sometime earlier, Your
Honour, that there may well be others, perhaps many others that were
counterfeit in either copyright or trademark, so …
HIS HONOUR: I
mean, really it’s clear I can’t possibly sentence on the basis that there is a
number certain in relation to any of the balance of the DVDs that were seized
and had indicia of being counterfeit, can I?
MR
DICKINSON: That’s the only point I’m making your Honour.
HIS HONOUR: Yes,
I’m restricted to what’s in the indictment, and the proposition that these were
not isolated examples of the conduct alleged.
Mr DICKINSON:
Yes. I take it no further, Your Honour. That’s the very point I was seeking to
make.
77
There is accordingly no substance in the
applicant’s contention that the sentencing judge based his finding in relation
to the wider circumstantial context on a finding that a specific number of the
DVDs outside those the subject of the charges were in fact counterfeit.
78
At the plea hearing, counsel for the applicant
submitted that the uncharged conduct, in particular the possession of the DVDs
not the subject of the charges, should be approached in accordance with the
principles concerning representative charges as set out in the judgment of Batt
JA in R v SBL [1999] 1 VR 706 (SBL). In SBL, Batt
JA said (at [69]) that the “better view” was that “the fact that a count is agreed
to be a representative, specimen or sample count is an aggravating circumstance”.
His Honour continued (at [70]):
Not only
does the fact that a count is agreed to be representative preclude its being
said in mitigation that the offence was isolated, it affirmatively enables the
offence to be seen in its full circumstantial context. The offender is not, by
a loading of the sentence, to be punished for the represented offences, but the
sentence for the representative offence may reflect the fact that it, the
offence counted, occurred in the wider context. Consistently with the view
which I have expressed about agreed representative counts, regard may in the
present case be had to the adverse effect upon the victims of the whole of the
conduct, which effect might not have been produced, or produced to the same
extent, by the offences counted alone.
79
Phillips CJ and Ormiston JA in SBL did
not expressly decide the issue concerning the representative nature of the
charges, but their Honours dealt with the matter on the basis that the parties
had agreed that, in the case of agreed representative counts, the sentencing
judge is entitled to have regard to the whole of the circumstances. See SBL
at [20], [65].
80
There appears to be some level of disagreement
between the Court of Appeal of the Supreme Court of Victoria and the Court of
Criminal Appeal of the Supreme Court of New South Wales in relation to the
degree of particularisation that is required before regard can be had to the
representative nature of the charges and whether, even where the uncharged
conduct is particularised and agreed, it can be taken into account not only to
reject any claim to mitigation, but also as an aggravating circumstance: see R
v JCW (2000) 112 A Crim R 466; Fisher v R [2008] NSWCCA 129 at [19];
R v CJK (2009) 22 VR 104 at [59]-[60] (Warren CJ) (CJK); Giles
v Director of Public Prosecutions (NSW) (2009) 198 A Crim R 395 (Giles).
The position in Victoria is clear. In CJK, Warren CJ expressed the view (at
[58]) that the sentencing judge was entitled to look at the whole of the
conduct and continued:
If those
circumstances render the offence more serious and lead to a higher sentence
than would otherwise have been imposed in the absence of the representative
nature, then it is not unreasonable or erroneous to observe it as an
aggravating feature, even if only ‘colloquially’.
81
The position is not so clear in New South Wales.
In Giles, a case involving sexual offences which were said to be
representative, Basten JA accepted that it was appropriate to take a course of
conduct (including other uncharged offences) into account, to the extent it has
been admitted, in order to place the individual offences in a higher range of
objective seriousness than would otherwise be the case. His Honour said (at
[67]):
The fact,
which is not in dispute, that the applicant committed numerous additional
offences, similar to those charged, is relevant to his state of mind in
committing the offences charged, his motive, his sense (or absence of sense) of
wrongdoing at the time, his willingness to control inappropriate urges for
sexual gratification, the effects on the complainant of his conduct and by way
of explanation of the fact that the conduct went undetected for a significant
period.
82
RS Hulme J disagreed with Basten JA on this
point and expressed the view that uncharged conduct cannot inspire a higher
sentence. Johnson J declined to join with Basten JA’s analysis because the
issue was not fully argued.
83
It is unnecessary to resolve this apparent
difference of opinion in this matter. That is not only because there could be
no doubt that the representative nature of the charges was agreed and
sufficiently particularised, but also because the sentencing judge did not
treat the uncharged conduct as an aggravating circumstance that warranted the
imposition of a harsher sentence. His Honour said (Remarks at [11]):
In essence
the representative nature of the charges is to be taken into account in the
sense that the other materials may be looked at to give a more complete picture
and a full circumstantial context in which the offences themselves are to be
assessed. I am bound only to sentence you for the offences to which you have
pleaded guilty but I may take into account that they occurred in a wider
context and that they are not to be seen as isolated.
84
It was open to the sentencing judge to have
regard to the evidence of the uncharged conduct, including the possession of a
large number of counterfeit DVDs (or DVDs bearing the indicia of being
counterfeit) which were not the subject of the charges, in this way. His Honour
did not err in any way in his treatment of the representative nature of the
charges and the evidence concerning the DVDs not the subject of the charges.
85
Under this ground, the applicant submitted that it
was not open to his Honour to be satisfied beyond reasonable doubt that the Noble
Park Shop was being set up to sell counterfeit DVDs in circumstances where:
(1)
The
prosecution did not make such an assertion;
(2)
The
DVDs at the new shop were located in a back room, whilst the front room was
partially stocked with toiletries, household and electrical goods;
(3)
Neither
of the charges related to DVDs seized from the new shop;
(4)
Defence
counsel did not accept that all of the non-indictment DVDs were counterfeit;
and
(5)
Although
many of the 4,000 DVDs seized from the new shop had “indicia” of being
counterfeits, they were not the subject of any detailed investigation providing
them to be so.
86
We reject this submission. In R v Storey [1998]
1 VR 359 at 371, the Court of Appeal of the Supreme Court of Victoria held that
the sentencing judge “may not take facts into account in a way that is adverse
to the interests of the accused unless those facts have been established beyond
reasonable doubt but if there are circumstances which the judge proposes to
take into account in favour of the accused, it is enough if those circumstances
are proved on the balance of probabilities”. In the circumstances to which we
are about to refer, we consider that it was in fact open to his Honour to be
satisfied beyond reasonable doubt that the Noble Park Shop was being set up to
sell counterfeit DVDs.
87
The applicant did not dispute or challenge the
facts relating to the execution of the search warrants at the Noble Park Shop. Those
facts revealed that the shop was in the process of being set up and that it
consisted of a front room partially stocked with toiletries, household and
electrical goods and a back room partially stocked with DVDs. Photographs taken
by the police during the execution of the warrant, which were before the
sentencing judge, clearly show that the back room was being set up for the
purposes of selling the DVDs. The DVDs found in the back room were seized and
examined and found, at the very least, to bear the indicia of being
counterfeit. The indicia were the same as the indicia of the DVDs seized from
the DVD World Shop and the DVDs the subject of the two charges.
88
In these circumstances, it was open to his
Honour to find that the Noble Park Shop was “clearly being set up to sell
substantial numbers of DVDs as well as other items and had something in the
order of 4,000 counterfeit DVDs within the shop already”: Remarks at [19]. This
finding was not precluded by any of the matters relied on by the applicant. For
the reasons already given, the fact that the evidence may have established no
more than that the 4,000 DVDs seized from these premises bore the indicia of
being counterfeit, as opposed to being in fact counterfeit, is, in all the
circumstances, immaterial.
Ground three
89
Under ground three, the applicant submitted
that, in accordance with The Queen v De Simoni (1981) 147 CLR 383
(De Simoni), the applicant’s sentence could not be aggravated by the
fact that:
(1)
Devices
for the burning, copying and editing of CDs, DVDs and Blu-Ray discs were
present at DVD World and at the applicant’s home;
(2)
the
applicant had (by his own admission) copied and downloaded films onto DVDs;
and/or
(3)
the
applicant had (by his own admission) sold such DVDs and earned a profit from so
doing.
90
The applicant contended that his Honour’s
sentencing remarks and the severity of the sentence showed that he did in fact
aggravate the applicant’s sentence on account of these matters and in so doing
his Honour erred.
91
We reject the applicant’s contention that his
Honour breached the principle in De Simoni in this regard.
92
In De Simoni the offender had pleaded
guilty to a robbery in the course of which he struck his victim a heavy blow on
the back of the head inflicting a wound at the rear of the skull. He was
charged with robbery with actual violence, but not with the aggravated offence
of robbery involving wounding, which would have increased the maximum penalty
from 14 years to life imprisonment. The High Court held that “if the actual
violence used resulted in wounding, the trial judge should not take the
wounding into account unless it has been charged in the indictment, for the
wounding is purely a circumstance of aggravation and not an element of robbery
simpliciter” at 394 (Gibbs CJ, Mason and Murphy JJ agreeing). Gibbs CJ said (at
389):
However, the
general principle that the sentence imposed on an offender should take account of
all the circumstances of the offence is subject to a more fundamental and
important principle, that no one should be punished for an offence of which he
has not been convicted. Section 582 reflects this principle. The combined
effect of the two principles, so far as it is relevant for present purposes, is
that a judge, in imposing sentence, is entitled to consider all the conduct of
the accused, including that which would aggravate the offence, but cannot take
into account circumstances of aggravation which would have warranted a
conviction for a more serious offence.
93
The sentencing judge did not punish the
applicant for any offence in respect of which he was not charged. In
particular, the sentencing judge did not punish the applicant for offences
under ss 132AL or 132AD of the Copyright Act, or s 148(1)(a)(i) of the Trade
Marks Act. Nor did his Honour have regard to conduct that may have constituted
these offences as circumstances of aggravation. The passages from the
sentencing remarks relied on by the applicant simply recite facts that were
contained in the Prosecution Opening that were not the subject of objection. These
facts were relevant for reasons unrelated to the fact that they may also have
amounted to other uncharged offences. For example, the fact that the applicant
possessed copying equipment and the fact that he admitted having sold DVDs were
facts relevant to put the offending conduct in its proper context, namely that
it was part of a commercial enterprise. That is so particularly given the
element of intention to sell in the s 132AJ(1) offence. That is not to say that
the sentencing judge treated these facts as aggravating circumstances. Nowhere
in the remarks on sentence does the sentencing judge say that he considered
that the possession of the burning or copying devices or the applicant’s
admissions about copying or selling DVDs were aggravating circumstances that
warranted a harsher sentence. For the reasons already given in the context of
ground 1, it is clear that his Honour was well aware that he was constrained to
sentence the applicant only in respect of the offences to which he had pleaded
guilty and regard was to be had to other represented offending conduct only to
the extent that it precluded other potentially mitigating circumstances (such
as a claim that the offences were isolated) and revealed the wider
circumstantial context.
94
Nothing said in De Simoni precludes
uncharged conduct being taken into account in that way. In Einfeld v R
(2010) 266 ALR 598 (Einfeld) at [143]-[146], Basten JA considered
the principle in De Simoni in the context of an argument similar to that
advanced by the applicant here. His Honour observed (at [145]) that there was
nothing in the judgments in De Simoni which suggested that the High
Court was seeking to vary the approach to sentencing for representative
charges. His Honour said (at [146]):
To read the
principle established by De Simoni beyond its immediate context would
give rise to consequences which were not addressed and which would involve an
extrapolation of the principle beyond that which is necessary to give effect to
its purpose. For example, a course of unlawful conduct may well give rise to a
number of possible charges. If the prosecution proceeds on one count only, it
does not follow that the surrounding conduct cannot be taken into account in
sentencing. The surrounding conduct cannot give rise to a more serious offence,
but it can demonstrate the degree of seriousness with which the charged offence
should be viewed.
95
Whilst Basten JA was in dissent in Einfeld,
the point of dissent did not relate to the De Simoni ground. Nothing
said by Hulme and Latham JJ suggested that their Honours disagreed with Basten
JA’s analysis of the De Simoni ground.
96
Before this Court, but not before the sentencing
judge, counsel for the applicant sought to draw a distinction between the use
that could be made of uncharged conduct that was relevant to the representative
nature of the charges, and uncharged conduct in respect of which there is no
representative count. It was submitted that in the latter case, the uncharged
conduct can only be used to preclude it being said in mitigation that the
offence was isolated. It cannot be used as evidence of the broader
circumstantial context. Reliance was placed on the decision of the Court of
Appeal of the Supreme Court of Victoria in Director of Public Prosecutions v
McMaster (2008) 19 VR 191 (McMaster). The applicant’s
submission was that the uncharged conduct relating to the possession of the
copying equipment (and the admissions of copying and downloading) was conduct
in respect of which there was no representative count and therefore it could
not be used as evidence of the broader circumstantial context.
97
We reject the applicant’s submissions based on McMaster
for a number of reasons. First, the uncharged conduct in McMaster (and
the earlier decision of R v Parfitt [2006] VSCA 91 (Parfitt)
which is referred to and relied on in McMaster) was significantly
different to the uncharged conduct under consideration here. The uncharged
conduct in both McMaster and Parfitt involved acts committed
against the victim of a charged offence that was removed in time from the
circumstances of the charged offence. One can readily understand why such
uncharged conduct would not be considered to be contextually relevant in the
same way as uncharged represented conduct. Here, the uncharged conduct is not
removed in time from the circumstances of the charged conduct. We therefore doubt
that the distinction drawn in McMaster and Parfitt has any
relevance to the circumstances of this case.
98
Second, and more significantly, the distinction
only has relevance if, in the case of uncharged conduct that is not reflected
in any representative count, the uncharged conduct is treated as an aggravating
circumstance: see in particular Parfitt at [14], [18]. Here, for the
reasons already given, it is clear that his Honour did not treat the uncharged
conduct relating to the possession of the equipment as an aggravating circumstance.
99
Third, it is not even clear from the remarks on
sentence that the sentencing judge had regard to the facts relating to the possession
of the equipment (and the admissions) as evidence of the wider commercial
enterprise. As already indicated, the passages from the remarks relied on by
the applicant in relation to this ground comprise nothing more than a
recitation of the unchallenged facts in the Prosecution Opening. The applicant
did not put to the sentencing judge that he could not have regard to these
facts in considering the wider context and made no submissions based on the
distinction referred to in McMaster and Parfitt. In these
circumstances, it is not surprising that the remarks on sentence do not spell
out precisely how his Honour had regard to these facts. But even if his Honour
did have regard to these facts in arriving at his findings concerning the wider
context, for the reasons we have already given he was not in error in doing so.
Nothing said in McMaster and Parfitt suggests otherwise. The
finding concerning the commercial nature of the applicant’s enterprise would
have been available irrespective of these facts and, as in Parfitt, the
mere fact that the sentencing judge referred to the wider context does not mean
that any impermissible use was made of the facts.
100
The remarks of the sentencing judge indicate
that his Honour was properly cognisant of the fact that he was bound only to
sentence the applicant for the offences to which he had pleaded guilty. Although
the sentencing judge referred to the applicant’s possession of copying devices
and his admissions to copying, downloading and sale of DVDs, he did not err in
doing. To the extent that his Honour had regard to these facts in order to
place the charges in their wider context, he was entitled to do so. In doing so
he did not treat these uncharged acts as an aggravating circumstance or
otherwise punish the applicant in respect of any uncharged acts.
101
In his sentencing remarks, the sentencing judge
stated that there was no evidence of any financial pressure which might explain
the offending and that he was “driven to the conclusion that the applicant was
driven by greed, not need”: Remarks at [18]. Under appeal ground four, the applicant
submitted that his Honour denied the applicant procedural fairness by
not informing his counsel at the plea hearing that he did not accept the
submission that the offences were motivated by perceived economic necessity, particularly
given the prosecution had made no submission to the contrary.
102
We reject the submission that the applicant was
denied procedural fairness in respect of this finding. The sentencing judge was
correct to find that there was no evidence that the applicant was driven to
commit the offences by financial need. The applicant did not give or call any
evidence about his financial circumstances at the time he committed the
offences. There was evidence concerning statements made by the applicant to the
psychologist in relation to the earlier offences. His Honour was not, however,
obliged to accept, or give any weight to this evidence. Nor was his Honour
obliged, as a matter of procedural fairness, to put the applicant on notice
that he might reject his counsel’s submissions, such as they were, relating to
the applicant’s motivation for committing the offences. None of the authorities
relied on by the applicant establish otherwise. Nor do the authorities relied
on by the applicant support the broad proposition that procedural fairness
requires that prior to finding an aggravating factor, a sentencing judge must
raise that matter with counsel.
103
The applicant was on notice that his motivation
for committing the offences may have been a relevant consideration in the
sentencing process. His counsel was given the opportunity to make, and in fact
made, submissions on this point. The applicant also had the opportunity to lead
evidence on this issue. He chose not to do so. In the circumstances, fairness
did not require the sentencing judge to reveal that he may not accept the applicant’s
submissions on this issue. Whilst a decision-maker is required to advise of any
adverse conclusion which has been arrived at which would not obviously be open
on the known material, there is no obligation for the decision-maker to expose
mental processes or provisional views: Commissioner of ACT Revenue v
Alphaone Pty Ltd (1994) 49 FCR 576 at 592.
104
Counsel for the applicant submitted that the
authorities clearly establish that, prior to finding an aggravating factor,
procedural fairness requires a sentencing judge to raise the matter with
counsel. Thus, so it was submitted, the sentencing judge was required to raise
with the applicant’s counsel at the plea hearing that he might find that the
applicant was motivated by “greed, not need”. There are two answers to this
submission.
105
First, the authorities relied on by the
applicant do not support the broad proposition advanced. In R v Taddrosse
(2005) 65 NSWLR 740 Howie J (Grove and Hall JJ agreeing) observed (at [19])
that, given the specific provisions of the Crimes (Sentencing Procedure) Act
1999 (NSW) concerning aggravating factors, it might be “prudent” for the
sentencing judge to raise with the parties during addresses whether any of the
listed aggravating factors applied to the sentencing and that, “in fairness to
the offender and as a matter of good common sense”, the sentencing judge should
indicate to an offender’s legal representative that a particular matter may be
taken into account as an aggravating factor. His Honour did not, however,
suggest that any failure to adopt this practice would necessarily amount to a
denial of procedural fairness. In R v Li [1998] 1 VR 637, Winneke P
(with whom Charles JA and Hedigan AJA agreed) held that there would be a denial
of procedural fairness if a sentencing judge aggravated a sentence by reference
to facts which were peculiar to the knowledge of the sentencing judge (and not
a matter of notoriety) without first giving the accused the opportunity to meet
and counter those facts.
106
Plainly the question whether there has been a
denial of procedural fairness where a sentencing judge has found an aggravating
factor without first raising it with counsel will depend on the facts of any
given case. There is no blanket rule. Here the applicant’s motivation for
committing the offence and whether it arose from any financial hardship was the
subject of submissions and exchange between the applicant’s counsel and the
sentencing judge. The applicant had every opportunity to put his case on this
issue. It was not necessary for the sentencing judge to put counsel on notice
that he may reject his submissions.
107
Second, it is at least doubtful that the “greed,
not need” finding was considered by the sentencing judge to amount to an
aggravating factor. His Honour’s observation that he was “driven to the
conclusion that [the applicant was] driven by greed, not need” is the final
sentence in that part of the remarks where his Honour considered the context of
a “wider commercial enterprise” in which the applicant was engaged and then
considered, in context, the extent to which the applicant had shown contrition.
His Honour referred to the matters said to support contrition and financial
hardship. His Honour set out the countervailing matters, including the repeated
conduct resulting in two previous convictions. His Honour concluded that,
taking into account all of the facts, including assertions of “naiveté around
copyright and trademark laws in Australia and needing to support yourself”, the
offending was:
….deliberate,
flagrant, calculated offending motivated by the prospect of financial profits.
There is no evidence before me of any financial pressure of a kind which might
explain your running the risk of getting caught for the third time for offences
which you must have realised when you were committing them were serious
offences which carried terms of imprisonment.
108
In context, the reference to “greed, not” was in
the nature of a colloquial characterisation summing up his Honour’s rejection
of the applicant’s assertions of mitigating circumstances. It was not a finding
that, in a positive sense, was taken into account as an aggravating factor in
sentencing.
109
In support of ground five, the applicant
submitted that, even if he had not been denied procedural fairness, it was not
open to his Honour to find beyond reasonable doubt that the applicant’s
offending was motivated “by greed, not need” in circumstances where:
(1)
Defence
counsel had made extensive submissions regarding the financial pressures facing
the applicant and their connection to the current and previous offending;
(2)
Mr
Ball’s report also referred to such pressures; and
(3)
There
was no evidence or submission by the prosecution that the applicant enjoyed a
lavish lifestyle.
110
There is no merit in this ground. It was plainly
enough open to the sentencing judge to find on the uncontested evidence that
the offences were motivated by greed, not need, particularly in the absence of
any contrary evidence from the applicant. To the extent that the applicant
relied on the report of Mr Ball (the psychologist), the understanding of Mr
Ball and the hearsay assertions made to him were of very questionable
significance.
111
In support of this ground, the applicant
submitted that his Honour erred by failing to take into account as evidence of
remorse that the applicant did not oppose the prosecution’s application
for a destruction order in respect of the discs and computer equipment seized
by police. The applicant relies on an apparent concession by the Crown at the
plea hearing that the applicant was entitled to have his cooperation in not
opposing the destruction order taken into account in mitigation.
112
There is also no merit in this ground. Whilst the
Crown did concede that the applicant was entitled to have this cooperation
taken into account, it submitted that it should be given little weight as a
mitigating factor given that the DVDs that were to be destroyed were the objects
of the offences themselves. In all the circumstances, and given the breadth of
the power in, and evident purpose of, s 133 of the Copyright Act to order
the destruction of infringing copies and equipment used in making infringing
copies, a destruction order was essentially a foregone conclusion, whether it
was opposed or not. The submission that the consent or non-opposition to the
order should be given little weight was and is compelling. It is also difficult
to see how consent or non-opposition to the destruction order could in all the
circumstances be considered to be evidence of remorse on the part of the
applicant.
113
In these circumstances, it is not surprising
that his Honour did not refer to this matter in his remarks on sentence. That
is the case particularly given that his Honour gave the applicant “substantial
credit” for his early plea of guilty: Remarks at [19]. It is likely that any
credit for cooperation in relation to the destruction order was encompassed in
or subsumed by this more significant finding.
114
We do not consider that the fact that his Honour
did not specifically refer to this matter suggests any error on the part of the
sentencing judge.
115
Under ground seven, the applicant took issue
with his Honour’s statement in his sentencing remarks that the applicant’s
early guilty plea and his co-operation with police in answering questions in
his interview were “consistent with remorse”, but that he did “not see any
evidence of” remorse, and noted that the applicant “did not choose to call any
evidence of remorse, from him or from anybody else”. The applicant points to a
number of matters as being evidence of remorse: the applicant’s early plea; his
participation in a recorded interview with the police; his consent to the
destruction order; the fact that the DVD World Shop had now closed and that it
was intended to convert it into a laundromat.
116
It was open to the sentencing judge to find that
these matters did not amount to evidence of genuine remorse. His Honour’s reasoning
(Remarks at 17) was as follows:
I am also
bound to take into account the extent to which you have shown contrition. Your
counsel submitted that there were a number of indicia of remorse including your
early plea of guilty and your cooperation with the police in answering
questions in the interview and I indicated to him that I thought that those
matters were consistent with remorse but I do not see any evidence of it and
note that he did not choose to call any evidence of remorse, either from you or
from anybody else. I do not see any evidence from which I can find on the
balance of probabilities that you are genuinely remorseful. I do not regard the
answers you gave in your interview with police as entirely frank. I think the
reality of the situation is that you endeavoured to downplay your culpability
in the course of your interview and I certainly do not accept that it
demonstrates that you are genuinely remorseful. I have to balance what is
sought to be relied upon as evidence of remorse against the fact that this is
your third offence of its kind within a relatively short period of time.
117
We detect no error in his Honour’s consideration
of the significance of remorse as a mitigating factor in the applicant’s case. In
Barbaro v R; Zirilli v R (2012) 226 A Crim R 354 at [38] the Victorian
Court of Appeal (Maxwell P, Harper JA and T Forrest AJA) said:
It follows,
in our view, that a person wishing to rely on remorse as a mitigating factor
needs to satisfy the court that there is genuine penitence and contrition and a
desire to atone. In many instances, the most compelling evidence of this will
come from testimony by the offender. A judge is certainly not bound to accept
second-hand evidence of what the offender said to a psychiatrist or psychologist
or other professional, let alone testimonials from family or friends, or
statements from the Bar table.
118
Even if the matters relied on by the applicant
could be said to be evidence of remorse, they certainly did not compel a
finding of genuine remorse on the part of the applicant. There was also other
evidence, including statements in the psychologist report tendered by the
applicant, which at the very least cast significant doubt on the suggestion
that the applicant was remorseful. This ground of appeal has no merit.
Ground eight
119
The applicant submitted that that the
individual sentences and the recognizance release period are manifestly
excessive in light of the following:
(1)
The
applicant had not been sentenced to a term of immediate imprisonment in respect
of his prior convictions. Specific deterrence could have been effected by
sentencing the applicant to a short term of imprisonment; the very clang of the
prison door would operate to deter him.
(2)
The
maximum penalty for each offence is 5 years imprisonment and/or 550 penalty
units.
(3)
Although
the charges were “representative” of similar conduct, an offender is not to be
punished for the “represented offences”, and Charge 1 related to just 1,040
discs, while Charge 2 related to just 175 discs.
(4)
The
applicant appears to be the first person in Victoria to be sentenced on these
offences to a term of immediate imprisonment.
(5)
Only
one of the three New South Wales cases referred to by the respondent on the
plea was determined on appeal (and that by a single judge), all three related
to more numerous and/or serious charges than in the present case, and only one
resulted in a term of immediate imprisonment.
(6)
The
applicant pleaded guilty at a very early stage, and as the prosecution conceded
this was a significant factor.
(7)
The
applicant co-operated with the authorities by consenting to the destruction
order, even though it did not relate directly to the charges on the indictment;
and
(8)
His
Honour was “moderately optimistic” about the applicant’s prospects for
rehabilitation in light of the positive influence of his partner Rosie Tran (Remarks
at [24]).
120
To make out this ground, the applicant must
demonstrate that the sentence is “wholly outside the range of sentencing
options available” to the sentence judge: R v Boaza [1999] VSCA 126 at
[42]; DPP v Karazisis (2010) 31 VR 634 (Karazisis) at
[127]. It must be established that it was not reasonably open to the sentencing
judge to come to the sentencing conclusion arrived at if proper weight had been
given to all the relevant circumstances of the offending and of the offender: Karazisis
at [127]. It is a stringent ground, which is difficult to make good, given that
the “discretion which the law commits to sentencing judges is of vital
importance in the administration of our system of criminal justice”: Lowndes
v R (1999) 195 CLR 665 at 672; Karazisis at [128].
121
We are not persuaded that the sentences
imposed fall wholly outside the range of sentences reasonably available to the
sentencing judge taking into account all the relevant circumstances of the
offending and the offender.
122
There could be little doubt that offences of
this sort under the Copyright Act and Trade Marks Act are objectively serious
offences. That is reflected in the fact that the legislature has seen fit to
provide for a penalty of up to five years in prison for the offences. In Vu
v New South Wales Police Service (2007) 73 IPR 531 at [38]-[40] Rares J
referred to the fact that a number of jurisdictions have regarded the conduct
of those who manufacture, sell or hire counterfeit works such as DVDs as
meriting imprisonment. Such offences are in effect offences of dishonesty and
amount to the stealing of the property of others: R v Carter (1992) 13
Cr App R (S) 576; R v Kemp (1995) 16 Cr App R (S) 941 (R v Kemp)
at 943; R v Duckett [1998] 2 Cr App R (S) 59 at 60. In R v Kemp,
Russell LJ, Turner and Hooper JJ said:
Offences of
counterfeiting are offences which normally attract at least a short sentence of
imprisonment. They are difficult, time consuming and expensive to detect. The
owners of copyrights are entitled to be protected against their unlawful
exploitation. They are entitled to have their commercial reputation protected
against those who would seek unlawfully to damage it.
123
The need for general deterrence is particularly
acute in respect of offences, such as these, which are, as pointed out in R
v Kemp, difficult, time consuming and expensive to detect: Hamm v
Middleton at [18].
124
A particularly important, if not critical,
consideration in the applicant’s case was that he had prior convictions for
essentially the same offending conduct. This pointed to the need for a sentence
reflecting special deterrence and condign punishment. As the sentencing judge
found, the fact that the applicant had been convicted of the prior offences,
considered along with the evidence of the offending conduct generally,
supported the conclusion that the applicant’s conduct was deliberate, flagrant,
calculated and motivated by the prospect of substantial profits.
125
Having regard to the representative nature of
the charges, the sentencing judge was also entitled to have regard to the fact
that the offences were not isolated and were to be viewed in the context of a
substantial commercial enterprise being conducted by the applicant: SBL
at [70]. Coupled with the fact that each charge was a rolled up charge
involving many infringing DVDs, it is open to consider the applicant’s offences
as falling within the more serious end of the spectrum of offences of this
type.
126
Whilst the applicant pleaded guilty at an early
stage and consented to a destruction order, this was in the face of an
overwhelming Crown case and was not demonstrative of any genuine remorse. The
applicant did not advance any particularly compelling subjective matters in
mitigation.
127
In all the circumstances the sentences imposed
on the applicant were well within the available range of sentences. None of the
matters relied on by the applicant compel a contrary conclusion.
128
The applicant has failed to make out any of his
grounds of appeal. It has not been shown that the sentencing judge made any
specific error of the kind referred to in House v The King (1936) 55 CLR
499 or that the sentence imposed was manifestly excessive: cf. AB v The
Queen (1999) 198 CLR 111 at [130] (Hayne J). There is no basis for the
Court to intervene and allow the appeal: s 30AJ(3) of the Federal Court Act; Kentwell
v The Queen (2014) 313 ALR 451 at [35].
129 For the foregoing reasons, we would grant leave to appeal but dismiss the appeal.
I certify that the preceding one hundred and twenty-nine (129) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Kenny, Bennett and Wigney. |
Associate:
Dated: 17 December 2014