Case: Polygram Pty Ltd v Golden Editions Pty Ltd (No 2) (1997) 38 IPR 451 
Outcome: cited
The applicants also relied on s 116 of the Copyright Act . This provision treats a copyright owner as if the copyright owner were also the owner of the infringing articles: see Polygram Pty Ltd v Golden Editions Pty Ltd (No 2) (1997) 38 IPR 451 (" Polygram ") per Lockhart J. Section 116 is in the following terms: (1) The owner of the copyright in a work or other subject-matter may bring an action for conversion or detention in relation to: (a) an infringing copy; or (b) a device (including a circumvention device) used or intended to be used for making infringing copies. (1A) In an action for conversion or detention, a court may grant to the owner of the copyright all or any of the remedies that are available in such an action as if: (a) the owner of the copyright had been the owner of the infringing copy since the time the copy was made; or (b) the owner of the copyright had been the owner of the device since the time when it was used or intended to be used for making infringing copies. (1B) Any relief granted by a court in an action for conversion or detention is in addition to any relief that the court may grant under section 115. (1C) A court is not to grant any relief to the owner of the copyright in an action for conversion or detention if the relief that the court has granted or proposes to grant under section 115 is, in the opinion of the court, a sufficient remedy. (1D) In deciding whether to grant relief in an action for conversion or detention and in assessing the amount of damages payable, the court may have regard to the following: (a) the expenses incurred by the defendant, being a person who marketed or otherwise dealt with the infringing copy, in manufacturing or acquiring the infringing copy; (b) whether the expenses were incurred before or after the infringing copy was sold or otherwise disposed of by the defendant; (c) any other matter that the court considers relevant. (1E) If the infringing copy is an article of which only part consists of material that infringes copyright, the court, in deciding whether to grant relief and in assessing the amount of damages payable, may also have regard to the following: (a) the importance to the market value of the article of the material that infringes the copyright; (b) the proportion the material that infringes copyright bears to the article; (c) the extent to which the material that infringes copyright may be separated from the article. (2) A plaintiff is not entitled by virtue of this section to any damages or to any other pecuniary remedy, other than costs, if it is established that, at the time of the conversion or detention: (a) the defendant was not aware, and had no reasonable grounds for suspecting, that copyright subsisted in the work or other subject-matter to which the action relates; (b) where the articles converted or detained were infringing copies the defendant believed, and had reasonable grounds for believing, that they were not infringing copies; or (c) where an article converted or detained was a device used or intended to be used for making articles the defendant believed, and had reasonable grounds for believing, that the articles so made or intended to be made were not or would not be, as the case may be, infringing copies. 56 Section 116(1B) provides that the relief that the court grants for conversion is in addition to any relief that the court may grant under s 115 of the Copyright Act . The grant of relief for conversion is, however, subject to the proviso in 116(1C) that the "court is not to grant any relief to the owner of the copyright in an action for conversion ... if the relief that the court ... proposes to grant under section 115 is, in the opinion of the court, a sufficient remedy". In deciding whether to grant relief for conversion and in assessing the amount of damages payable, the court's attention is directed to the factors in s 116(1D) of the Copyright Act , to which it may have regard: see generally Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18 at 34 per Jacobson J and Polygram (1997) 38 IPR 451 at 453-454 per Lockhart J. 57 As indicated above, the applicants have made out their case respecting the conversion of infringing copies by the respondents. Neither the applicants nor the respondents have yet made submissions, however, concerning the application of ss 116(1C) and (1D) of the Copyright Act . This may be on account of the Court's order of 10 July 2006, which deferred any questions concerning quantum of damages to a later stage in the proceeding. Accordingly, I propose to invite the parties to make such submissions as they consider appropriate on the application of ss 116(1C) and (1D) of the Copyright Act. 58 The respondents rely on ss 115(3) and 116(2), or what is sometimes referred to as the "innocent infringement" defence. In the present context, both provisions raise essentially the same issues.