Being beastly to Berna

Berna Collier is not travelling well at the Federal Court ... A full court bollocking is the latest in a lengthing list of unhappinesses ... Is it fair? ... Sir Terence O'Rort reports

On July 14 Justice Jeffrey Spender of the Federal Court in Brisbane was honoured at a retirement ceremony held in the newly constructed Ceremonial Court.

Spender was on the court for more than 26 years and is one of its great survivors.

The court was packed to the rafters as Chief Justice Pat Keane led the tributes.

There was one notable absence.

Justice Berna Collier was nowhere to be seen and was not mentioned in the apologies read out at the ceremony.

All other current Brisbane-based Federal Court judges were sitting on the bench, except Collier.

There could be many explanations for Justice Collier absence, but the fact is that ever since her appointment to the court relations between her and Spender have been difficult, to put it mildly.

Justinian understands that the relationship reached a low point over Collier's involvement in the Planning & Environment Court litigation we reported in June last year.

See: "High on Hamilton Hill".

Let's not forget the saga of Knuckles, the wonder dog, whose credit Border Collier preferred to that of surgeon Professor Shaughan Terry in Forest v Queensland Health.

See my report, "Berna's poolside splash".
 
Justice Collier: getting stickBerna found that Queensland Health had discriminated against Mr Forest because it wouldn't let Knuckles into the operating theatre during a liver biopsy.

Unfortunately, Chief Justice Michael Black (as he was), Arthur Emmett and Jeff Spender were waiting in the full court to dish out some discipline, both to Forrest and Collier, upholding the sanctity of Queensland's health system by a score of three-nil.

The Federal Court operates a docket system and as its web-site tells us:

"Cases in some areas of law requiring particular expertise (including intellectual property, taxation and admiralty) are allocated to a judge who is a member of a specialist panel. Such cases are randomly allocated to members of the particular panel. This system replaces the former specialists lists."

In Brisbane there are now five Federal Court judges in order of seniority: Dowsett, Greenwood, Collier, Logan and Reeves. 

Dowsett and Greenwood are on the corporations panel, the copyright, trademarks and design panel, the patent panel, the trade practices and competition panel, and are convening judges for the admiralty list.

Dowsett is also a convening judge for the tax list and the arbitration list.

All Brisbane Federal Court judges, other than Justice Collier, are corporations duty judges.

Berna does not hear Corporations Act matters ostensibly because she was a former ASIC commissioner.

She is on a single panel the copyright, trademarks and designs panel.

That experiment has not been entirely successful, according to the full court in Food Channel Network Pty Ltd v Television Food Network GP.

Keane CJ: pointing our Berna's mistakesPat Keane, with Justices Stone and Jagot, cast their eyes over Berna's handiwork in the trade mark case, upholding all six grounds of appeal against her decision.

It's very difficult to provide a concise report as to what Berna got wrong, but easy to describe what she got right. Nothing.

First, she thought that the party seeking the registration of a trade mark bore the evidentiary onus to negative grounds of opposition to the registration, rather than the party opposing its registration.

The full court started its discussion with the surprising conclusion (to Berna anyway) that:

"A consideration of where the onus of establishing the grounds of opposition lies must begin (and end) with the Act."

The appeal judges went on to gently point out that at least four sections of the Trade Marks Act were, "an insuperable obstacle to acceptance of Television's principal argument".

(It's the sort of mistake anyone could make.)

Secondly, Collier J incorrectly decided the issue of who was the owner of the trade mark.

She thought that because there was a lack of clear evidence of prior use of the mark, this meant that the applicant for registration had failed to prove that it was the owner.

Keane et al tried to put it kindly:

"In this state of confusion, the incidence of the onus of proof means that the lack of clear evidence as to prior use is a fatal deficit in the opponent's case, not in the applicant's."

There's more.

Berna found that the applicant for registration of the trade mark had no intention of using it and that the opponent had succeeded in establishing valid grounds of opposition to its registration.

The full court dealt with this briefly:

"There was thus some evidence not found to be unreliable of use of the mark by Network in respect of Class 16 goods..."

(Don't these people know how boring trade mark cases are? Is Berna expected to remember all the details?)

Further, she went on to find that the trademark sought to be registered was "deceptively similar" to the respondent's existing trademark, but the full court pointed out that in reaching a decision on whether two marks were deceptively similar she should have allowed a comparison of the whole of both trade marks ...

"Because of the nature of that exercise, this court may intervene only if it is first shown that her Honour's assessment was affected by error of fact or law. In our respectful opinion, the judge erred in principle in two respects. First, her Honour expressly declined to consider the comparison of the marks as a whole.

Secondly, her Honour failed to appreciate that the necessary comparison was of marks used in different trades and that the evidence of Mr Allen was directed to the 'Australian Television industry and the media generally' rather than the general public who may not be acculturated to equate the terms 'Channel' and 'Network'.

Counsel for Television did not seek to argue that her Honour did not err on the first point. While Television disputed the significance of the second point, the error of principle on the first point means that it falls to this court to make its own evaluation on this issue of deceptive similarity."

(That's only two errors of principle. Talk about a counsel of perfection.)

Amusingly, Collier also rejected the affidavit evidence of the applicant for registration, because she assumed that the witness would be cross-examined about the same matters that she had just rejected and would therefore have an opportunity to make the points set out in his affidavit in re-examination.

Imagine her dismay when the opposing counsel did not touch the topic in cross-examination, preventing any evidence being adduced about the contents of the affidavit in re-examination.

As Pat Keane & Co pointed out:

"In the event, the cross-examination of Mr Lawrence by counsel for Television did not touch on these issues. We mention this, not by way of criticism of Television's counsel, but to make the point that the primary judge's decision to decline to admit the affidavit into evidence was based upon an unsound expectation that Network would not be denied the opportunity to make the points made in the affidavit: the comprehensive presentation of Network's case could not reasonably have been left to the mercy of its adversary."

Lastly, Collier's order awarding indemnity costs against one of the parties was set aside with the full court commenting:

"In particular, it is difficult to see that Network breached the order of 30 November 2007 at all..."

Anyway, Collier's talents are completely wasted on trial work and appeals are what she should be handling.

Since her appointment in early 2006 Justice Collier has been listed as part of a full court on only seven occasions: three times in 2006; once in 2007; twice in 2008; once in 2009.

She has not been a member of any full court that has delivered judgment in 2010.

She has not delivered an individual judgment in any appeal upon which she has sat other than a judgment on the costs of an appeal in 2006.

All other Federal Court judges in Brisbane are listed frequently to sit on the full court.

Maybe it was a boys club run by Spender and that old grump Michael Black.

(Ever since Black offered her Brisbane or Darwin on her appointment things were rocky between Collier and the chief.)

The problem with so-called black-letter lawyers like former Black is that they don't appreciate that law reform is an essential part of any judge's skill set and Collier's contributions are simply insufficiently recognised.

Reference to the 2008-2009 annual report for the Australian Law Reform Commission records that Collier J attended two meeting during the reporting period in question.

My fear is that the dinosaurs at the Federal Court have not appreciated Berna's talents. Let's hope that Pat Keane runs a more "Berna-friendly" place in the future.

She is a warm and charming woman and just because she doesn't have a grip on some of her judgments is no reason to be beastly to her.

I trust that Pat and the boys attended Berna's latest soiree at QUT Law School on August 4, entitled "Making Decisions in the Federal Court: A Personal Perspective".

Who needs the Latham diaries?

*   *   *

Spender (left) with polliesBack to the farewell bash for the Big Spender.

In a parting swipe at the Commonwealth government the departing judge railed at the superannuation charge levied on Federal Court judges appointed between 2005 and 2009:

"I don't propose to practise as a mediator or an arbitrator in my retirement, and I'll not offer any parting observations about the current state of the law or of the judiciary, except to make one genuine and deeply felt observation.  

It is a disgrace, in my opinion, that there is a small cohort of judges on the Federal Court who, even now, are subjected to the discriminatory superannuation surcharge.

I'm not in that group, but that charge was imposed without any rational justification for its application to judges and, when it was cancelled for appointees, after the date of cancellation it was not cancelled or abolished retrospectively.

Two of our best judges on the court left the court to avoid the impost of that charge.

There are many judges who were appointed before it was imposed, and many judges who have been appointed subsequent to its cancellation.

For those small remaining number, however, it is a continuing grievance. Sound policy demands that it be repealed. For the government not prepared to act because of the screams of outrage contemplated from The Daily Telegraph and other like media, can I say that the surcharge law was aimed to claw back some of the tax deductions wealthy payers had in respect of their payments into super.  

Judges never had that deduction so the imposition of the tax on them was unfair.

The High Court struck down the tax in its application to State judges. The government should acknowledge the unfair and unjustified tax on a small and seemingly forgotten group of judges, and repeal the imposition of the tax. Sound government trumps the braying of the ignorant, even if there are those who are caught by the tax who include politicians and some public servants.

I would be very grateful if you, Ms Playford, could convey to the Treasurer and to the Attorney General my sentiments that fear of misplaced criticism is no reason not to amend a wrong and unjust impost.  The unfairness of it is magnified by the fact that, notwithstanding the tax has been imposed, it can't be paid until the judge on whom it is imposed retires, and it accumulates interest, but can't be repaid.  While it is a tiny thing in the grand scheme of things, its unfairness positively rankles, particularly to those few still caught by it. It should be repealed."

Now I know what you're thinking. When was Berna appointed?

Sir Terence O'Rort reporting