mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Pollock v J C Williamson Ltd [1923] VLR 225
Outcome: referred to
In my opinion, the infringements of copyright in this case were flagrant. Before 29 September 2006 the second respondent was employed by the applicant and he knew Ms W Hung, who was also an employee of the applicant, and he knew that she had produced the artworks on behalf of the applicant. He left the employ of the applicant and on 4 October 2006 he became an employee of the first respondent. He was responsible for producing the brochure on behalf of the first respondent and he knew the artworks on the brochure belonged to the applicant. Despite this knowledge, he went ahead and used them in a brochure designed to promote the first respondent's products. Whether he actually knew that the use of the applicant's artworks was an infringement of copyright is immaterial ( Pollock v J C Williamson Ltd [1923] VLR 225) ; the important point is that he knew the artworks were the applicant's artworks or, put a different way, that they belonged to the applicant. Although he attempted to say that he did not know he could not use the applicant's artworks because he was a "bit vague as to how all this worked" and that he had used samples with the brands of third parties before, I think he knew that he should not be using the artworks or, at least, was wilfully blind to that fact. As I said in my liability reasons there were unsatisfactory features of the second respondent's evidence (at [51]). As to what was said to be a practice in the printing industry of using other people's brands as illustrative of the work which can be done, it seems to me that it is one thing to use a sample showing a brand which announces itself as a brand of a well-known business; it is quite another for a previous employee of the applicant so shortly after he left the applicant's employ to use the artworks, which in no way announce themselves as belonging to the applicant, to promote his new employer's business. 21 It appears that the principals of the first respondent were prepared to leave, or largely leave, the production of the brochure to the second respondent. Mr Tallent was not able to shed any light on the production of the brochure with the applicant's artworks on it and the change to the second brochure, which it seems had taken place by 16 October 2006. He said that the second respondent would have been engaged "in most of that work and driving that". Mr Taylor said that the brochure was changed to remove the applicant's artworks and replace them with other artworks after he had received a telephone call from Mr Chojna complaining about the use of the applicant's artworks without its permission. He said that the second respondent probably made the change. 22 The respondents submitted that the infringements were few in number and that the evidence was that the first respondent did not intend to produce skins with the artworks on them for sale to customers. I accept the evidence that the first respondent did not intend to use the artworks on skins to be sold to customers.
Case: Prior v Lansdowne Press Pty Ltd [1977] VR 65
Outcome: referred to
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.
Case: Prior v Sheldon (2000) 48 IPR 301
Outcome: considered
As far as loss of reputation is concerned the applicant sought to overcome the difficulties it faced by referring to cases in which damages have been allowed for injury to reputation and by submitting that this was such a case. In particular, reference was made to the decision of Wilcox J in Prior v Sheldon (2000) 48 IPR 301. At issue in that case was the damages to be awarded for the infringement of copyright in two original musical works used in connection with a popular television series. One joint owner had claimed sole authorship of the two original musical works. The other joint owner sued for infringement of copyright. Wilcox J referred to the significance of the recognition of authorship in terms of possible future commissions from film and television producers and directors. The infringement of copyright had meant that the innocent party had been unable to enhance her reputation and enhancement of her reputation may have led to future engagements. That loss, said Wilcox J, should be reflected in the award of damages although he said the amount was difficult to calculate. He awarded a sum of $40,000. 14 It seems to me that this case is quite a different one. There is no evidence that any of the three parties who received the brochure placed orders for skins with the first respondent, or were dissuaded from placing orders for skins with the applicant by reason of the distribution of the brochure. For completeness I also note that there was no evidence in this case of damage to reputation caused by the production and distribution of inferior or substandard copies of the artworks.
Case: Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88
Outcome: referred to
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.
Case: Ravenscroft v Herbert and New English Library Limited [1980] RPC 193
Outcome: referred to
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. 33 The fifth matter I must have regard to is "any benefit shown to have accrued to the [respondents] by reason of the infringement". In Ravenscroft v Herbert [1980] RPC 193 Brightman J said that in his view "benefit" in the English section implied "that the defendant has reaped a pecuniary advantage in excess of the damages he would otherwise have to pay (see also Polygram 38 IPR at 462 per Lockhart J). There is no evidence that the respondents secured any financial benefit in this case by reason of the distribution of the brochure to the three named parties. 34 I do not think there are any other relevant matters apart from those I have already mentioned. 35 In my opinion, having regard to the matters I have identified, an award of additional damages should be made. It should be a modest award and I award a sum of $10,000.
Case: Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 215 ALR 788
Outcome: considered
The second matter I must have regard to is the need to deter similar infringements of copyright. It seems to me considering authorities such as Universal Music Australia Pty Ltd v Miyamoto (aka DJ Moto ) (2004) 62 IPR 605 and Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 215 ALR 788 that the circumstances may call for an award of additional damages, or a larger award of additional damages, if there is a real need to deter similar infringements of copyright. In Universal Music Australia Pty Ltd the infringers were disc jockeys who were likely to be regarded as role models for others and the infringements were deliberate and in flagrant disregard of the innocent party's rights, and in Sony Entertainment (Australia) Ltd the respondents had, to use Jacobson J's words in that case (at 41 [175]) "shown utter contempt for the applicants and for the court". This case does not exhibit those features and I think that in this case the need to deter similar infringements of copyright is a somewhat neutral factor. The second respondent's conduct was fairly blatant, but at the same time, upon complaint the respondents changed the brochure and gave undertakings not to use the artworks.
Case: Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] 1 Ch 323
Outcome: referred to
Various methods of measuring damages for an infringement of copyright have been described in the cases. In Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] 1 Ch 323 at 336, Lord Wright MR said that the measure of damages in a copyright case "is the depreciation caused by the infringement to the value of the copyright as a chose in action". However, the authorities make it clear that is only one method of measuring damages: Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69 ; Bailey 53 FCR at 111-112; Milpurrurru v Indofurn Pty Ltd (1994) 54 FCR 240. Another method is to determine the licence fee or royalty the infringing party would have to pay to use the work lawfully. There are difficulties in applying that approach in circumstances where it cannot be inferred that the infringing party would pay a licence fee rather than not use the work ( Autodesk 17 IPR at 75). The applicant did not contend that either of the aforesaid methods was appropriate in this case. It submitted that this was a case in which it was appropriate to treat the damages as being at large and to approach the assessment of damages as a jury would ( Fenning Film Service Ltd v Wolverhampton, Walsall and District Cinemas Ltd [1914] 3 KB 1171 at 1174 per Horridge J). I think that is the proper approach in the circumstances of this case.
Case: Universal Music Australia Pty Ltd v Miyamoto (aka DJ Moto) (2004) 62 IPR 605
Outcome: considered
The second matter I must have regard to is the need to deter similar infringements of copyright. It seems to me considering authorities such as Universal Music Australia Pty Ltd v Miyamoto (aka DJ Moto ) (2004) 62 IPR 605 and Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 215 ALR 788 that the circumstances may call for an award of additional damages, or a larger award of additional damages, if there is a real need to deter similar infringements of copyright. In Universal Music Australia Pty Ltd the infringers were disc jockeys who were likely to be regarded as role models for others and the infringements were deliberate and in flagrant disregard of the innocent party's rights, and in Sony Entertainment (Australia) Ltd the respondents had, to use Jacobson J's words in that case (at 41 [175]) "shown utter contempt for the applicants and for the court". This case does not exhibit those features and I think that in this case the need to deter similar infringements of copyright is a somewhat neutral factor. The second respondent's conduct was fairly blatant, but at the same time, upon complaint the respondents changed the brochure and gave undertakings not to use the artworks.
Case: Gallo v Dawson [1990] HCA 30 ; (1990) 93 ALR 479
Outcome: applied
Gallo v Dawson [1990] HCA 30 ; (1990) 93 ALR 479 , McHugh J was concerned with the application of O 60 r 6 of the High Court Rules in respect of the applicant's application for an extension of time. McHugh J said, at 480: [Order 60 rule 6] provides that a court or a justice may enlarge the time appointed by the Rules for doing an act upon such terms, if any, as the justice of the case may require and that the enlargement may be ordered although the application is not made until after the expiration of the time appointed or fixed for doing the act. The grant of an extention of time under this rule is not automatic. The object of the rule is to ensure that those Rules which fix times for doing acts do not become instruments of injustice. The discretion to extend time is given for the sole purpose of enabling the court or justice to do justice between the parties: see Hughes v National Trustees Executors &amp; Agency Co of Australasia Ltd [1978] VR 257 at 262. This means that the discretion can only be exercised in favour of an applicant upon proof that strict compliance with the rules will work an injustice upon the applicant. There are two relevant matters concerning whether the Court should exercise its discretion to extend time. The first is whether a sufficient explanation for the delay has been forthcoming; the second is whether the proposed appeal would enjoy any prospect of success, such that it ought be allowed to proceed. The applicant, on the first issue, says that the delay was occasioned by an application which she made to the Australian Human Rights Commission after the dismissal of a Federal Magistrates Court proceedings. The evidence establishes that the Commission said on 17 October 2008 that it was not the appropriate body for reviewing the applicant's case. On 20 October 2008, the applicant filed her application for an extension of time in the Federal Court. This application was filed promptly after the applicant was advised by the Australian Human Rights Commission determined that it was not the appropriate body to review the applicant's case.
Case: Mentyn v Westpac Banking Corporation [2004] FCAFC 149
Outcome: cited
Mentyn v Westpac Banking Corporation [2004] FCAFC 149 at [3] , Kiefel, Weinberg, and Stone JJ held that an order dismissing an application for want of jurisdiction was interlocutory in character, at least where it does not finally dispose of the parties' rights. Whether the judgment of Jarrett FM is final or interlocutory, the application for extension of time to file a Notice of Appeal, which was filed 20 October 2008, is either 34 days late if it was an interlocutory judgment, or 20 days late if it was a final judgment. It is unnecessary to determine that question. Order 52 r 5(3) of the Federal Court Rules provides: (3) Where an application is not filed within the time limited by subrule (2), an order shall be sought in the application that compliance with subrule (2) be dispensed with.
Case: Allanson v Midland Credit Ltd and Another [1977] 16 ALR 43
Outcome: followed
The circumstances arising in these proceedings appear to be similar to those considered by the Full Federal Court in Allanson v Midland Credit Ltd and Another [1977] 16 ALR 43. In that matter a creditor had brought proceedings in the Supreme Court of New South Wales claiming monetary sums from the defendants. While the case was pending, a sequestration order was made against one of the defendants to those proceedings. The litigation involved complex issues including those raised under defences and cross-claims and leave was sought under s 58(3)(b) of the Act to continue the proceedings. At 48 their Honours observed: It would seem that all of these issues would be better and more comprehensively dealt with by a contested trial of the action in the Supreme Court than could possibly be the case if Midland Credit were required to lodge a proof of debt in respect of its claim against Mr Allanson alone. 19 Similar considerations arise in this instance. The determination of the rights of Westpac will resolve any issue of ownership and of the existence of charges in respect of the identified properly.
Case: Coleman v Lazy Days Investments Pty Ltd (1994) 55 FCR 297
Outcome: cited
The grant of the stay pursuant to s 52(3) of the Act made by Smith FM on 27 July 2007 does not alter the status of Mr Ollis as a bankrupt: see Coleman v Lazy Days Investments Pty Ltd (1994) 55 FCR 297 at 301. The sequestration order, having been made, remains in force. Accordingly s 58(3)(b) of the Act continues to apply rendering the current application for leave necessary. 21 A further issue raised is the effect of the orders sought if the restraining orders obtained by the New South Wales Crime Commission are set aside by the Court of Appeal. It is apparent that by virtue of the operation of s 58A of the Act, the property subject to the restraining orders does not form part of Mr Ollis' bankrupt estate whilst the restraining orders are in force. If the orders are set aside, the provisions of s 58(1) apply so that his property then becomes vested in the trustee. It is only at this point that Westpac would seek to join Mr Condon as a defendant in the proceedings. The Court does not need to consider this issue further as Mr Dibb has submitted that Mr Ollis has not in fact appealed against the making of the restraining order but only in respect of the making of a proceedings assessment order. 22 The Court is satisfied from the evidence before it that leave under s 58(3)(b)of the Act is required to enable Westpac to proceed with the adjudication of its claim against Mr Ollis and others and that the grant of leave would not be contrary to the purpose of the Act. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cowdroy . Associate: Dated: 8 August 2007 Counsel for the Applicant: D A McLure Solicitor for the Applicant: Henry Davis York Counsel for the Respondent: C J Dibb Solicitor for Trustee of Respondent: Gordon &amp; Johnstone Date of Hearing: 8 August 2007 Date of Judgment: 8 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1194.html
Case: Re McMaster; Ex parte McMaster (1991) 33 FCR 70
Outcome: followed
The term 'in respect of' as it appears in s 58(3)(b) of the Act has been considered in Re McMaster; Ex parte McMaster (1991) 33 FCR 70 at 72 and in Trustees Executors &amp; Agency Co Ltd v Reilly [1941] VLR 110 at 111. Each of those authorities referred to the wide construction which is to be given to such words ' in respect of' as contained in s 58(3)(b) of the Act. 15 In Re McMaster 33 FCR 72-73, Heerey J referred to the considerations which must be addressed by the Court when considering such an application. He stated: The modern bankruptcy law serves three purposes. The first is to ensure that the assets of the bankrupt are distributed rateably among creditors. The second, which is interrelated with the first, is to ensure that one creditor does not obtain an undue advantage over other creditors. The third is to bring about the discharge of the debtor from future liability for his existing debts, so that the debtor may start afresh: see Storey v Lane (supra) (at 556). 16 Counsel for Mr Ollis submitted that the continuation of the proceedings would place Westpac in a more advantageous position relative to other creditors, because Westpac sought declarations that Mr Ollis held certain property or interest in property on trust for Westpac and alternatively a declaration that property and interests in property were subject to a charge in favour of Westpac. 17 Despite such circumstances, the Court considers that the proceedings would merely determine the rights of the parties in relation to the property or property interests and determine ownership thereof. The determination would not provide Westpac with any privilege or preference. Accordingly, the submission is rejected.
Case: Trustees Executors &amp; Agency Co Ltd v Reilly [1941] VLR 110
Outcome: cited
The term 'in respect of' as it appears in s 58(3)(b) of the Act has been considered in Re McMaster; Ex parte McMaster (1991) 33 FCR 70 at 72 and in Trustees Executors &amp; Agency Co Ltd v Reilly [1941] VLR 110 at 111. Each of those authorities referred to the wide construction which is to be given to such words ' in respect of' as contained in s 58(3)(b) of the Act.
Case: Agar v Hyde [2000] HCA 41 ; (2000) 201 CLR 552
Outcome: cited
Traditionally, the test applied under O 20 r 1 has been that stated by Barwick CJ in General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 (" General Steel ") at 129-130. The nature and scope of the relevant principles have been discussed by the High Court in recent decisions: Agar v Hyde [2000] HCA 41 ; (2000) 201 CLR 552; Batistatos v Roads and Traffic Authority of New South Wales ; Batistatos v Newcastle City Council [2006] HCA 27 ; (2006) 80 ALJR 1100.
Case: Batistatos v Roads and Traffic Authority of New South Wales ; Batistatos v Newcastle City Council [2006] HCA 27 ; (2006) 80 ALJR 1100
Outcome: cited
Traditionally, the test applied under O 20 r 1 has been that stated by Barwick CJ in General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 (" General Steel ") at 129-130. The nature and scope of the relevant principles have been discussed by the High Court in recent decisions: Agar v Hyde [2000] HCA 41 ; (2000) 201 CLR 552; Batistatos v Roads and Traffic Authority of New South Wales ; Batistatos v Newcastle City Council [2006] HCA 27 ; (2006) 80 ALJR 1100.
Case: Duncan v Lipscombe Child Care Services Inc [2006] FCA 458 
Outcome: cited
The extent to which s 31A of the Federal Court of Australia Act relaxes the test formulated in General Steel has been the subject of observations in recent decisions of this Court: Duncan v Lipscombe Child Care Services Inc [2006] FCA 458 ; Garrett v Macks [2006] FCA 601 per Lander J at [21]-[22]; Jewiss v Deputy Commissioner of Taxation [2006] FCA 1688 per Mansfield J at [26]-[29]; Hicks v Ruddock [2007] FCA 299 per Tamberlin J at [12].
Case: Garrett v Macks [2006] FCA 601 
Outcome: cited
The extent to which s 31A of the Federal Court of Australia Act relaxes the test formulated in General Steel has been the subject of observations in recent decisions of this Court: Duncan v Lipscombe Child Care Services Inc [2006] FCA 458 ; Garrett v Macks [2006] FCA 601 per Lander J at [21]-[22]; Jewiss v Deputy Commissioner of Taxation [2006] FCA 1688 per Mansfield J at [26]-[29]; Hicks v Ruddock [2007] FCA 299 per Tamberlin J at [12].