Case: Raben Footwear Pty Ltd v Polygram Records Inc and Another (1997) 75 FCR 88
Outcome: referred to
Court observes that no particular factor within s 115(4)(b) of the Copyright Act should be prioritised in the Court's consideration of whether additional damages should be awarded: see Raben Footwear Pty Ltd v Polygram Records Inc and Another (1997) 75 FCR 88 at 93, 103. The discretion conferred on the Court in s 115(4) is broad (see Raben at 103; Microsoft Corporation and Others v Goodview Electronics Pty Ltd and Others (2000) 49 IPR 578 at [64]), and if the Court is satisfied that 'any one or more of the circumstances' listed in s 115(4)(b) are present, the Court has a discretion to award additional damages as it considers appropriate: see Raben at 103. In Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746 Besanko J said at [19]: The meaning of "the flagrancy of the infringement" has been described in various ways. In Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 Brightman J referred to it as "scandalous conduct, deceit and such like; it includes deliberate and calculated copyright infringement"; in Prior v Lansdowne Press Pty Ltd [1977] VR 65 at 70, Gowans J (at 70) referred to it as a "calculated disregard of the plaintiff's rights, or cynical pursuit of benefit"; and in Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88 at 103 flagrancy was said to connote conduct which could probably be described as "glaring, notorious, scandalous" or "blatant". In Polygram at 461-462 Lockhart J said that flagrancy did not include mere mistakes or carelessness and that if the infringer mistakenly believed that he or she owned the relevant copyright, or acted in the bona fide belief that no copyright subsisted in the plaintiff's work then the conduct was not flagrant. Although s 115(4)(b)(iii) of the Copyright Act provides that any benefit shown to have accrued to the infringer is one of the factors the Court is to take into account in considering whether to award additional damages, the Court observes that the absence of that factor does not prohibit an award under that subsection. As discussed above, the Court's discretion to award additional damages under s 115(4) is not dependent upon all the factors set out in s 115(4)(b) being satisfied; rather, such discretion may be exercised if only one of the factors set out in s 115(4)(b) is present: see Raben at 103. Accordingly, the absence of one of those factors, in this instance, the lack of benefit accruing to Technicon as a result of its infringement of Caroma's copyright, does not preclude the Court from exercising its discretion under s 115(4). Technicon's submission is rejected. Technicon also submits that any copying of the Caroma drawing resulted from a 'lack of attention' . Technicon submits that such carelessness is not sufficient to render Technicon's conduct flagrant. The Court is satisfied that the infringement of copyright has resulted from more than mere carelessness by Mr McCallum, an astute businessman. Mr McCallum's email dated 7 April 2004 (see above) reveals Mr McCallum's intention to utilise the Caroma drawing in the creation of the Technicon drawing.