Case: Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) 65 IPR 29
Outcome: considered
The respondents' counsel initially submitted that the Act appears not to make provision for joint copyright ownership in films. Later he became more positive, contending that joint authors of films are not known to Australian copyright law. It may well be correct that the joint authorship provisions in Div 9 of Pt III of the Act do not apply to films, though this question was not mentioned in argument. However, in Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) 65 IPR 29 Gyles J held that copyright in a film the product of a joint venture between two persons was "jointly held" by them. On appeal Lindgren J agreed with Gyles J on this point. He said at [20]: Although the circumstances may indicate otherwise, ordinarily co-owners of copyright hold as tenants in common, not as joint tenants .... In the absence of the consent of the other co-owner, one co-owner is neither entitled to do an act comprised in the copyright, nor to grant a licence to a third party to do such an act, and the non-consenting co-owner is entitled to an injunction against the infringing co-owner or putative licensee .... See Seven Network (Operations) Ltd v TCN Channel Nine [2005] FCAFC 144 ; (2005) 66 IPR 101 ( Seven Network ) Finkelstein J at [72] said Gyles J's finding that the two venturers were joint owners was not challenged, and his Honour referred to Prior v Landsowne Press Pty Ltd [1977] VR 65 at 68 as authority that co-owners hold copyright as tenants in common rather than as joint tenants. Edmonds J was of the view that the copyright was acquired by the venturers not as co-owners but separately in accordance with their respective contributions to the joint venture. The whole issue of joint ownership is conveniently summarised in Copinger and Skone James on Copyright 15 th ed (2005) vol 1 at 5 165-5 169. See also Ricketson and Creswell, Law of Intellectual Property: Copyright, Designs and Confidential Information at 14-140, where the significance of s 36(1) of the Act is elaborately discussed. 76 These ownership issues were not canvassed in argument, and TS Production did not contest the assertions at [74]. Nevertheless, in view of the observations of Gyles J and Lindgren J in Seven Network , I do not accept the submission that joint ownership of copyright in films is not known to Australian law. See also s 98(4) and the definition of "director" in s 98(7). 77 Given the first publication of the Film in the United States, the substantial exploitation of the Film in that country, that United States law clearly provides for joint ownership of copyright in motion pictures, that the declarations sought by the plaintiffs are available under United States law, and that that law governs ownership and infringement issues, the plaintiffs have in my view issued their proceeding in the most appropriate place. A United States court is the most obvious and natural form in which to litigate their claims. I attach great importance to the fact that United States law will apply to the ownership as well as the infringement and relief issues. 78 I do not accept TS Production's contention that the plaintiffs' purpose in instituting the Illinois proceeding was to prevent it from pursuing the Australian proceeding. I find that their dominant purpose in taking action in the United States was to obtain the relief they seek in the Complaint. 80 In coming to my conclusion, I have not taken into account any assertions of law made in the Complaint that were not proved by expert evidence. For example, there was no evidence that under United States law one co-owner of copyright can exploit the copyright independently of another. That appears not to be the position under Australian law: Powell v Head (1879) 12 Ch D 686 ; Seven Network at [20] and [74] above. 81 On the respondents' motion I will order that the proceeding be stayed pending the outcome of the Illinois proceeding. I will dismiss TS Production's motion. TS Production must pay the respondents' costs of both motions. 82 Since writing the foregoing, a decision of Judge Susan B Conlon in the Illinois proceeding dealing with, amongst other things, a forum non conveniens application by the defendants, has been handed down. Her Honour's reasons for decision are consistent with what I have written, but I have not taken them into account in reaching my own conclusion. I certify that the preceding eighty-one (81) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg. Associate: Dated: 30 July 2008 Counsel for the Applicant: AJ Myers QC and DJ Batt Solicitor for the Applicant: Arnold Bloch Leibler Counsel for the Respondents: WT Houghton QC and SM Rebikoff Solicitor for the Respondents: Mallesons Stephen Jaques Date of Hearing: 11 July 2008 Date of Judgment: 30 July 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1110.html