Potter v Broken Hill Proprietary Company Ltd
Encyclopedia
Potter v Broken Hill Proprietary Company Ltd (1906) 3 CLR 479, was a significant Australia
n court
case
, decided in the High Court of Australia
on 20 March 1906. The case was an influential decision in Australian Private International Law
which is generally regarded as based on an extension of the Moçambique rule
to actions for infringement of patent
s.
In a key statement affirming the application of the Moçambique rule, Griffith CJ stated:
He further went on to say:
'As already mentioned, the decision is generally regarded as based on the Moçambique rule. Although the Moçambique rule is one of the elements in the conclusion of the High Court, an examination of the way in which the case was argued, and of the reasoning of the High Court, shows that it is a decision extending the act of state doctrine to foreign patents.'
The 2011 United Kingdom Supreme Court
decision of Lucasfilm v Ainsworth
significantly eroded much of the underpinning of this case and of the Moçambique rule
, at least within the UK.
Australia
United Kingdom
Australia
Australia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
n court
Court
A court is a form of tribunal, often a governmental institution, with the authority to adjudicate legal disputes between parties and carry out the administration of justice in civil, criminal, and administrative matters in accordance with the rule of law...
case
Legal case
A legal case is a dispute between opposing parties resolved by a court, or by some equivalent legal process. A legal case may be either civil or criminal...
, decided in the High Court of Australia
High Court of Australia
The High Court of Australia is the supreme court in the Australian court hierarchy and the final court of appeal in Australia. It has both original and appellate jurisdiction, has the power of judicial review over laws passed by the Parliament of Australia and the parliaments of the States, and...
on 20 March 1906. The case was an influential decision in Australian Private International Law
Conflict of laws
Conflict of laws is a set of procedural rules that determines which legal system and which jurisdiction's applies to a given dispute...
which is generally regarded as based on an extension of the Moçambique rule
Mozambique rule
The Moçambique rule, or Mozambique rule, is a common law rule in private international law. The rule renders actions relating to title in foreign land, the right to possession of foreign land, and trespass to foreign land non-justiciable in common law jurisdictions...
to actions for infringement of patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
s.
Facts
'Potter obtained a patent in Victoria for the separation of metals from sulphide ores and a patent for the same process in New South Wales. Potter claimed that (as well as a threatened infringement of the Victorian patent in Victoria) the defendant company (now BHP Billiton) had infringed the New South Wales patent at its mine in New South Wales. Broken Hill denied novelty and utility, but also said that an action for the infringement in New South Wales of a New South Wales patent was not justiciable in the Victorian courts.'Judgement
'The question of justiciability was argued as a preliminary matter before the Full Court of the Supreme Court of Victoria, which decided by a majority that the claim was not justiciable, and an appeal to the High Court of Australia was dismissed.'In a key statement affirming the application of the Moçambique rule, Griffith CJ stated:
He further went on to say:
'As already mentioned, the decision is generally regarded as based on the Moçambique rule. Although the Moçambique rule is one of the elements in the conclusion of the High Court, an examination of the way in which the case was argued, and of the reasoning of the High Court, shows that it is a decision extending the act of state doctrine to foreign patents.'
Australia
In 2002 the High Court indicated that it would like to reconsider this authority:United Kingdom
'It received no attention in the English case-law until it was mentioned by Lord Wilberforce in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508, 536 as authority for the proposition that the Moçambique rule applied in Australia. It was only from the 1980s that it came to be regarded as a significant authority in the field of transnational intellectual property litigation: Def Lepp Music v Stuart-Brown [1986] RPC 273; Tyburn Productions Ltd v Conan Doyle [1991] Ch 75 (both copyright cases).'The 2011 United Kingdom Supreme Court
Supreme Court of the United Kingdom
The Supreme Court of the United Kingdom is the supreme court in all matters under English law, Northern Ireland law and Scottish civil law. It is the court of last resort and highest appellate court in the United Kingdom; however the High Court of Justiciary remains the supreme court for criminal...
decision of Lucasfilm v Ainsworth
Lucasfilm Limited v Ainsworth
Lucasfilm Limited v Ainsworth was a 2011 court ruling by the Supreme Court of the United Kingdom. The case concerned a copyright dispute over the production of Lucasfilm's Stormtrooper costumes by model maker Andrew Ainsworth...
significantly eroded much of the underpinning of this case and of the Moçambique rule
Mozambique rule
The Moçambique rule, or Mozambique rule, is a common law rule in private international law. The rule renders actions relating to title in foreign land, the right to possession of foreign land, and trespass to foreign land non-justiciable in common law jurisdictions...
, at least within the UK.
Cases Referring to this Case
Australia
- Petrotimor Companhia de Petroleos SARL v Commonwealth (2003) 197 ALR 461. (Followed)
- Regie Nationale des Usines Renault SA v Zhang (2002) 210 CLR 491. (Cited)
- Nudd v Taylor [2000] QSC 344.Nudd v TaylorNudd v Taylor [2000] QSC 344, was a court case, decided in the Supreme Court of Queensland on 30 August 2000. The case concerned Australian Private International Law, specifically giving a Queensland authority to the application of the Moçambique rule....
(Cited) As authority for the application of the Moçambique ruleMozambique ruleThe Moçambique rule, or Mozambique rule, is a common law rule in private international law. The rule renders actions relating to title in foreign land, the right to possession of foreign land, and trespass to foreign land non-justiciable in common law jurisdictions...
to foreign immovables being accepted into Australia. - Dagi v Broken Hill Proprietary Company Limited (No 2) [1997] 1 VR 428. (Applied)
- Inglis v Commonwealth Trading Bank (1972) 20 FLR 30. (Applied)
United Kingdom
- Lucasfilm v Ainsworth [2011] UKSC 39.Lucasfilm Limited v AinsworthLucasfilm Limited v Ainsworth was a 2011 court ruling by the Supreme Court of the United Kingdom. The case concerned a copyright dispute over the production of Lucasfilm's Stormtrooper costumes by model maker Andrew Ainsworth...
(Distinguished) - Hesperides Hotels Ltd v Muftizade [1979] AC 508. (Cited)
- Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1978] QB 205; [1978] 1 All ER 277.
Cases Considered by this Case
- British South Africa Co v Companhia de Moçambique [1893] AC 602.Mozambique ruleThe Moçambique rule, or Mozambique rule, is a common law rule in private international law. The rule renders actions relating to title in foreign land, the right to possession of foreign land, and trespass to foreign land non-justiciable in common law jurisdictions...
(Followed)