A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd
[1996] FCA 225
•27 MARCH 1996
CATCHWORDS
COPYRIGHT - "original literary work" - trade catalogue of motor cycle parts - compilation consisting of existing material, correction to that material and some new material - originality - whether selection involves sufficient skill, judgment and labour.
COPYRIGHT - originality - whether compilation of pirated and original material, can be an original work, even though copyright in the pirated material infringed - necessity for qualitatively significant changes to the copied material.
COPYRIGHT - originality - new edition of compilation - need for more than a trivial difference between new edition and previous one.
COPYRIGHT - originality - compilation - look at compilation as an entity, not at individual parts.
COPYRIGHT - authorship - directors of company - whether company is beneficial owner of copyright in work prepared by directors - directors as trustees for company of copyright in their work.
COPYRIGHT - infringement - compilation - including original and non-original work - copying only non-original elements does not infringe copyright in the whole - but copying entire sections, including original and non-original work, constitutes infringement.
Copyright Act 1968 (Cth) - ss 10, 14, 32, 32(1), 35, 35(2), 35(6), 36, 196
Corporations Law - s 576
Cases Considered
Antocks Lairn Ltd v I Bloohn Ltd [1971] FSR 490
Blackie & Sons Ltd v The Lothian Book Publishing Company Pty Ltd (1921) 29 CLR 396
Collis v Cater, Stoffell & Fortt Ltd (1898) 78 LT 613
Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490
Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637
H Blacklock & Co Limited v C Arthur Pearson Limited [1915] 2 Ch 376
Interlego A.G. v Tyco Industries Inc [1989] 1 AC 217
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
Macmillan & Co Ltd v K & J Cooper (1924) 130 LT 675
Macmillan v Suresh Chunder Deb (1900) 1 Ind LR, 17 C 951
Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955) 72 RPC 89
Real Estate Institute of New South Wales v Wood (1923) 23 SR(NSW) 349
Redwood Music Ltd v Chappell & Co Ltd [1982] RPC 109
University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601
Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508
A-One Accessory Imports Pty Ltd & Ors
v Off Road Imports Pty Ltd & Ors
QG 111 of 1993
Drummond J
Brisbane
27 March 1996
IN THE FEDERAL COURT OF AUSTRALIA ) No. QG 111 of 1993
QUEENSLAND DISTRICT REGISTRY )
GENERAL DIVISION )
BETWEEN: A-ONE ACCESSORY IMPORTS PTY. LTD.
ACN 010 612 870
First Applicant
AND:NOEL BRUCE ROGERS and STEPHEN ARTHUR BENNETT
Second Applicants
AND: OFF ROAD IMPORTS PTY. LTD.
ACN 002 341 531
First Respondent
AND:ROSS BARTLEY KING and JULIE ROBYN KING
Second Respondents
MINUTES OF ORDERS
JUDGE MAKING ORDER: Drummond J
DATE OF ORDER: 27 March, 1996
WHERE MADE: Brisbane
THE COURT ANSWERS the following questions:
Is the first applicant's 1991 catalogue an original work capable of protection under the Copyright Act 1968 (Cth)? Yes
Who is the author or authors of the catalogue? The second applicants.
Does the first applicant own the copyright in the catalogue? Yes
If the answers to questions (1) and (3) above are in the affirmative and the answer to question (2) is either the first applicant or the second applicants, have the first and/or second respondents infringed the copyright of the first applicant? The first respondent and Mr. R.B. King, one of the second respondents, have infringed the copyright of the first applicant by producing the first respondent's 1993 catalogue.
THE COURT ORDERS THAT:
The costs of and incidental to the hearing of the questions for separate determination be reserved.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA ) No. QG 111 of 1993
QUEENSLAND DISTRICT REGISTRY )
GENERAL DIVISION )
BETWEEN: A-ONE ACCESSORY IMPORTS PTY. LTD.
ACN 010 612 870
First Applicant
AND:NOEL BRUCE ROGERS and STEPHEN ARTHUR BENNETT
Second Applicants
AND: OFF ROAD IMPORTS PTY. LTD.
ACN 002 341 531
First Respondent
AND:ROSS BARTLEY KING and JULIE ROBYN KING
Second Respondents
Coram: Drummond J
Date: 27 March, 1996
Place: Brisbane
REASONS FOR JUDGMENT
The first applicant, in its statement of claim alleges that it is the owner of the copyright in a literary work comprising its 1991 motorcycle parts catalogue known as "A-One Parts", and that the respondents have infringed that copyright by producing the first respondent's 1993 parts catalogue. A major issue for my decision is whether the applicants' 1991 catalogue is the product of copying of other catalogues, viz., the 1984 Phoenix Imports and the 1991 Link International catalogues and so cannot be an original work the subject of copyright.
The second applicants, the second respondents and various of the witnesses have long been involved in the sale of imported motorcycle parts and, in particular, motorcycle chain sprockets: they know each other, often having worked, at different times, with or for each other. These sprockets are, in general, produced not by the makers of the motorcycles on which they are intended to be used, but by independent manufacturers outside Australia. Their attraction to consumers is that they can be substituted for the original manufacturer's sprockets, but are substantially cheaper than the authentic parts. The sale of these substitute parts is a very lucrative area of business activity in Australia.
Capricorn Imports was in the early 1980s a major wholesaler of motorcycle sprockets. Mr. Sakane was associated with it. Capricorn Imports ceased trading in mid-1983, owing substantial amounts of money. Sakane then approached two former employees of Capricorn Imports, Messrs. Rogers and Bennett, the second applicants, to invest in a new company. This company, Brylyn No. 2 Pty. Ltd., traded under the name of Phoenix Imports. Another person named Ward was also involved in Phoenix. It operated as an importer and wholesaler in Australia of the parts. In September 1985 a dispute arose between Ward and Sakane on the one hand, and Rogers and Bennett on the other. A settlement was agreed in December 1985. It was this dispute which led to the formation of the first applicant.
A-One Accessory Imports Pty. Ltd. was incorporated in December 1985. Rogers and Bennett became directors on 27 March, 1986. Rogers, who ceased to work with Phoenix in early January 1986, says he started work from his home on what became A-One's first, i.e., its 1986 catalogue, in January 1986. Bennett, who remained in Phoenix's employ until about the time he became a director of A-One, assisted Rogers in this work, as did Mr. Tierney, once he was in A-One's employ. Tierney worked for Phoenix from about 1983 until early to mid March 1986, when he started work for A-One; he too became a director of A-One on 27 March, 1986. A-One appears to have commenced business in about the second quarter of 1986, selling some parts and accessories by wholesale. Although it was intended that its main business would consist of the importing and the sale to retailers of motorcycle sprockets, it was not until about July 1986 that it was able to procure sprockets from Tachiki Industries, a Japanese manufacturer. While it sells other motorcycle parts and accessories, the sale of sprockets and sprocket and chain sets to retailers accounts for approximately three quarters of A-One's business. A-One first marketed sprockets only in Queensland and New South Wales. It has since expanded into all States and the Northern Territory. It supplies approximately 700 retailers nationally.
Sakane continued to operate Phoenix until October 1987, when it went into liquidation. He then set up Rancourt Pty. Ltd., which trades as Link International. He says Link purchased equipment and stock from Phoenix. A-One also bought part of Phoenix's stock from the liquidators. Link imports motorcycle sprockets and other parts and accessories from MC International, Jonthai Industries and Chiaravalli, which it sells by wholesale.
A-One and Link are in direct competition, being the two leading sprocket distributors in the Australian market.
The first respondent, Off Road Imports Pty. Ltd., was incorporated by Mr. King, one of the second respondents, in 1982. It began importing motorcycle sprockets in January 1984. Chiaravalli, an Italian manufacturer, was its supplier from January 1984 to July 1992. From November 1992 its supplier has been PBR, another Italian company. King says he worked from early December 1992 to late February 1993 on the production of the Off Road catalogue that is the subject of A-One's copyright infringement claim.
Initially, it was the first applicant's claim to an interlocutory injunction that came on for hearing. After considerable evidence was given, the first applicant abandoned this claim and the parties agreed on certain questions to be finally determined before the other issues in the litigation. The agreed questions are as follows:
(1)Whether the first applicant's 1991 catalogue is an original work capable of protection under the Copyright Act 1968 (Cth);
(2)Who is the author or authors of the catalogue;
(3)Does the first applicant own the copyright in the catalogue;
(4)If the answers to questions (1) and (3) above are in the affirmative and the answer to question (2) is "the applicant", have the first and/or second respondents infringed the copyright of the first applicant.
Although neither Sakane nor his company, Link International, is a party to the litigation, Sakane has taken a prominent part in it, actively supporting the respondents' case. An issue at the hearing was whether A-One's first catalogue published in 1986 was copied from the then-current catalogue published by Sakane's old company, Phoenix. It is a major issue because the 1991 A-One catalogue, the subject of the applicants' infringement proceedings against the respondents, was the last of a series of A-One catalogues produced by Rogers and Bennett by intermittently updating A-One's 1986 catalogue. The different versions of the A-One catalogue were described as the 1986, the 1987, the 1990 and the 1991 A-One catalogues (although the 1991 A-One catalogue is sometimes referred to in the evidence as the "1992 A-One catalogue"). The respondents disputed the applicants' contentions that its 1986 catalogue was an original work and that this updating work involved original work by Rogers and Bennett. The respondents asserted that the latter, in producing all A-One's subsequent catalogues, simply amended the 1986 A-One catalogue, which they had copied from a Phoenix catalogue, by copying from the various Link catalogues prepared by Sakane from 1987 to 1991. The respondents thus contended that the 1991 A-One catalogue was not an "original" work within the meaning of that term in s. 32 the Copyright Act 1968 (Cth) ("the Act") and because it was therefore not the subject of copyright, there could be no question of infringement. They also contended that neither Bennett nor Rogers was the "author" within the meaning of that term in s. 35 of the Act of any of the A-One catalogues, for the same reasons. Questions (1) and (2) thus overlap.
Question (3), which was formulated before Bennett and Rogers were joined as parties in the action, raised for determination whether A-One could be the owner of any copyright that might subsist in A-One's 1991 catalogue, even if Rogers and Bennett were the authors of that work, in view of the nature of the association between each of them and A-One in the period between its incorporation in December 1985 and their becoming directors at the end of March 1986: by then, a lot of the work said by Bennett and Rogers to have been involved in compiling the first A-One catalogue had been done. It was to meet the possibility that I might hold that Rogers and Bennett, rather than the applicant, owned the copyright in the first A-One catalogue that they were joined as parties in the course of the hearing.
The fourth question is that of infringement: the issue here is whether, if A-One does have copyright in its 1991 catalogue, Off Road produced its 1993 catalogue by copying that 1991 catalogue. Most of the hearing, however, was occupied with the question whether the 1991 A-One catalogue was an "original" work. Hence Sakane's close interest and involvement in the case.
THE 1986 A-ONE CATALOGUE
Rogers said he and Bennett started compiling the original A-One catalogue in January 1986. He described an exhaustive exercise that involved, firstly, compiling a list of the sprockets which A-One planned to sell: Rogers said that he and Bennett obtained information from a large number of retailers and from perusing several hundred microfiches published by Japanese motorcycle manufacturers. Detailed notes were made in the course of gathering all this information. In these ways, Rogers said they got the information relating to year models of motorcycles and genuine sprocket part numbers relating to each of those year models which they needed for their catalogue. This first step involved many weeks of work. Rogers said he then looked through a number of Japanese trade journals, made enquiries and so located Tachiki Industries, which was prepared to manufacture the sprockets required by A-One. Next, he provided the genuine sprocket part numbers to Tachiki so it could determine whether those parts were within its existing manufacturing range. If not, either a sample of the part or the dimensions of the part was sent to Tachiki to enable it to be manufactured. There was considerable correspondence between A-One and Tachiki before the indexing system and master list of sprockets could be finalised.
Bennett gave a broadly similar account of how the first catalogue was prepared, although he was not involved in this task to the same extent as Rogers.
Rogers and Bennett say that the first A-One catalogue was all their own work and made without reference to either the 1984 or 1986 Phoenix catalogue. Attention at the hearing was concentrated on whether A-One copied the 1984 Phoenix catalogue (which was updated by the issue of replacement pages in 1985 and 1986): the 1986 Phoenix catalogue, in a quite different format from its 1984 catalogue, was produced by Sakane at about the same time as A-One's 1986 catalogue. I accept what Rogers says to the effect that the format of the 1986 Phoenix catalogue reduced its usefulness because it was compiled by reference to motorcycle engine capacities rather than to sprocket types; it was not popular with retail outlets. When he prepared the first Link catalogue in 1987, Sakane reverted to the format of the 1984 Phoenix catalogue.
Both Rogers and Bennett claim that neither had access to a copy of the 1984 Phoenix catalogue at the time the first A-One catalogue was compiled. Each gave mutually inconsistent explanations for why he did not take a Phoenix catalogue with him when he left Phoenix. They say that while they cannot recall when A-One acquired copies of the 1984 and 1986 Phoenix catalogues, it was sometime well after the preparation of the first A-One catalogue. The position adopted by Bennett and Rogers is summarised in evidence Bennett gave to the effect that, while the first A-One catalogue recorded some information from the Phoenix catalogue with which he and Rogers were familiar and which they had retained in their respective memories, their catalogue was one which they "created from scratch", from the genuine part numbers which they obtained in various ways I have mentioned.
I do not accept their claim. I think they made extensive use of the 1984 Phoenix catalogue in compiling the first A-One catalogue. For reasons later appearing, I am not prepared to accept their evidence unless it is supported by other independent evidence. As will also appear, I have formed the same view of King's and Sakane's creditworthiness. The other witnesses, including those who are still associated with A-One and Link, I consider to be generally reliable.
The 1986 A-One and the 1984 Phoenix catalogues are very similar to look at. The format of both is a five column table. In his initial evidence, before he was aware of Sakane's support for the respondents, and when the only issue that had arisen was whether Off Road had copied A-One's 1991 catalogue, Rogers said that when he and Bennett started up A-One they wanted it to have its own indexing system for the A-One parts range; he also said that it was he who devised the indexing system to identify sprockets that was the basis of the 1986 and subsequent A-One catalogues. He claimed this system was unique to A-One. A typical entry (from the 1991 catalogue) reads as follows:
10-045-12 23801-045-671 12T (STD 12T) Z50 $4.40
The first column contains the number devised by A-One that identifies a sprocket stocked by it. "10" indicates a front sprocket ("11" indicates a rear sprocket). "045" is the key part of the original manufacturer's catalogue number for the authentic part. "12" refers to the number of teeth on the sprocket. In the second column, "23801-045-671" is the part number for the authentic spare part (devised in this case by Honda). Rogers said that he decided to take the key element of the original part number ("045") and incorporate it in A-One's own reference number. In the third column, "12T" is another reference to the number of teeth on the particular sprocket. In the fourth column, "STD 12T" refers to the number of teeth on the original manufacturer's (i.e., Honda's) standard sprocket and "Z50" identifies Honda's motorcycle model to which that Honda sprocket is fitted and to which the A-One sprocket can also be fitted. "$4.40" is A-One's price for the sprocket that can be substituted for the authentic part. Rogers said the most important part of the indexing system is the first column and that A-One's suppliers have incorporated these numbers in their own record systems, as have many of A-One's retailers. He said it enables these retailers to identify the A-One sprockets that will meet the needs of the retailers' customers, who are, between them, the owners of a wide range of motorcycle models. By using only this group of numbers, A-One can order sprockets from its suppliers, who invoice A-One by reference to those same numbers, and A-One's retailers can similarly order their requirements from A-One by reference only to these same numbers. Each organisation engaged in the sale of sprockets needs some such indexing system. The catalogue is described by Rogers as A-One's "bible".
Despite what Rogers initially said, it became obvious as the evidence unfolded that he did not "devise" this layout or what he describes as the "indexing system". The features initially claimed by Rogers to be distinctive in A-One's original catalogue, and which are found in Off Roads' allegedly infringing catalogue, are also found in Phoenix's 1984 catalogue and in the catalogues of other traders involved in the sale of motorcycle sprockets: see, for example, the sprocket catalogue issued in March 1979 by London Trading, which wholesaled motorbike sprockets in Australia from 1964 to 1990, which is typical of its catalogues in use at about that time. Although there is no suggestion that A-One copied anything from London Trading's catalogues, its catalogue adopts a classification system that is not materially different from A-One's. Moreover, the first column of London Trading's catalogue contains the same information in similar form to that in the first column of A-One's catalogues, which Rogers, in his first affidavit, said was "the most important part of the whole indexing system" devised by A-One. Although a little different from A-One's catalogue in the order in which the information is displayed, the catalogue of another trader, Western Motorcycle Accessories, in use at least in the period November 1983 to July 1985, contains much the same information as that contained in A-One's catalogue and precisely the same information in the first column of the sprocket catalogue that Rogers claimed in his first affidavit was such a significant part of A-One's catalogue.
The only difference between the 1984 Phoenix catalogue and the 1986 A-One catalogue, in terms of layout, is the use of a double broken line instead of "do", representing "ditto", in the fourth column. The only significant difference in the form in which the information is presented is that, in the Phoenix catalogue, in the first column, the numeral "31" designates a front sprocket and the numeral "32" designates a rear sprocket, while A-One uses instead the numerals "10" and "11". Rogers denies that he adopted the double broken line and these designations for front and rear sprockets to make the A-One catalogue appear different to the Phoenix catalogue. The witness Williams, however, says that in a conversation which he had with Rogers at the time he left Phoenix in mid 1986 to work for A-One, he asked Rogers how the A-One catalogue was going to be different from the Phoenix catalogue. Rogers replied that the designations for the front and rear sprockets would be different.
There is nothing distinctive about the form (as opposed to the detailed contents) of the indexing system adopted by A-One in its first catalogue and which it has used since then. It is a system that was adopted by a number of traders before (and after) A-One produced its first catalogue because it is an obvious and convenient one for assembling, in a readily accessible way, the information required if a catalogue of motorcycle parts is to be useful to suppliers, retailers and consumers. Sakane was as unjustified in his claim, in his early evidence, that it was he who devised this layout and indexing system while he was with Phoenix, as was Rogers in making a similar claim.
It is understandable that, in his later evidence, Rogers abandoned what he had first said about the allegedly significant features of A-One's catalogue and then focused on other matters. In his later evidence, he said that the most important part of the first A-One catalogue was the extent of the interchangeability which he and Bennett had identified and recorded in that catalogue: a sprocket is interchangeable with another sprocket if one sprocket bearing the original manufacturer's identification number and intended by the manufacturer to be fitted to a particular model of motorcycle produced by that manufacturer can also be fitted to other models of motorcycle. Where two or more are interchangeable, it is necessary to stock only one of those sprockets. The reduction in the trader's inventory that interchangeabilities permit is of advantage to both traders such as A-One and to their retailers. Counsel for the respondents pointed out that Rogers' emphasis on interchangeability only arose late in the proceedings; in Rogers' first affidavit, interchangeability was not mentioned at all. The fact that A-One initially relied on a case apparently destructive of Off Road's denial of any infringement of A-One's copyright in its 1991 catalogue but which, in major part, was revealed as never having any substance, does not enhance the credibility of Rogers or Bennett.
Mr. Tierney was an employee of Phoenix from early 1983 to March 1986, when he went to work for A-One. Initially, he was employed by A-One as a storeman and warehouse manager. He was a director of A-One from 27 March, 1986 to 29 December, 1989. He gave oral evidence only, under subpoena issued by Off Road. I regard him as a reliable witness. He was, I think, independent of both sides; no attempt was made by A-One to attack his credit, although it was suggested that his recollections were, in some important respects, mistaken. Although he was not dogmatic in his evidence, I accept it as establishing that, contrary to the evidence of Rogers and Bennett, in producing the first A-One catalogue, they did make fairly extensive use of the 1984 Phoenix catalogue. While Tierney says that "we had to start from scratch to make" the first A-One catalogue, he also said it was common practice in the motorcycle industry for everyone to have everyone else's catalogues. I accept this. Although they denied using other catalogues in the course of preparing the 1986 A-One catalogue, Bennett and Rogers acknowledged that, subsequent to preparation of this first catalogue, they did acquire copies of other traders' catalogues, including the Phoenix ones. It is essential for a dealer in motorcycle parts to have its competitors' catalogues to be able to deal with queries from, for example, a retailer who may want parts from that dealer, but who refers to those parts by reference to a competitor's catalogue. Tierney said that at the time Bennett, Rogers and he were working on A-One's first catalogue, there were lots of other traders' catalogues in A-One's office, although he does not recall actually seeing Rogers, who seems to have done most of the work, with another's catalogue open in front of him while he was actually working on preparing the first A-One catalogue.
Tierney said that in helping to produce the first A-One catalogue, he worked from some typewritten pages, some handwritten pages and photocopies of some other printed pages, which Rogers gave him. He had what I think is a clear impression that the photocopies were of pages of the 1984 Phoenix catalogue. He had worked for Phoenix for three years. He was very familiar with that catalogue. He used it in the course of his employment on a daily basis. He also became familiar with other dealers' catalogues when working at Phoenix; he did not think the photocopies were from other dealers' catalogues. Tierney also says the photocopied pages had handwritten amendments on them, which he thought were in Rogers' handwriting. These handwritten amendments took the form of additions of motorcycle models and sprockets not listed in the photocopied pages, and of deletions of sprockets listed in those pages which A-One was not going to carry.
Quite apart from Tierney's evidence, it is, in my opinion, probable that Bennett and Rogers would have used the current version of the 1984 Phoenix catalogue available to them as the basis upon which they prepared the first A-One catalogue. They had assisted in the preparation of this catalogue when they were working for Phoenix and were familiar with it. It contained a convenient list of many of the sprockets they were interested in selling and the original manufacturers' parts numbers, together with an extensive list of the various models of motorcycle on which each sprocket could be used. It is unlikely that Bennett and Rogers would, as they claimed, have begun entirely afresh when such an extensive compilation of useful information with which they were familiar was available to them.
I find that Rogers and Bennett had available to them a version of the 1984 Phoenix catalogue from which they copied extensively in preparing the first A-One catalogue.
Rogers compared the entries in the 1986 A-One catalogue with those in the 1984 Phoenix catalogue to identify the differences between the two. Mr. King carried out a similar comparison to show the similarities, although he compared the first A-One catalogue and the 1984 Phoenix catalogue in which the updates issued at the end of April/early May 1986 were incorporated. Both comparisons present essentially the same picture. They show that there is a lot of information common to both catalogues, presented in the same format in each, and thus support the proposition that Bennett and Rogers copied a substantial part of the 1984 Phoenix catalogue. They also confirm that the 1986 A-One catalogue is a more complete one than either version of the 1984 Phoenix catalogue in that the A-One catalogue covers a wider range of sprockets and motorcycle models. The extent to which the A-One catalogue contains information additional to either version of the 1984 Phoenix catalogue also confirms that Bennett, but particularly I think Rogers, did perform a significant amount of original work which they incorporated, along with the material copied from the Phoenix catalogue, into the first A-One catalogue.
I accept what Bennett and Rogers have to say about making extensive use of the manufacturer's microfiches: I think they used this information, both for checking the information in the Phoenix catalogue from which they were working, and for identifying the new information recorded in the A-One catalogue concerning those sprockets which were not mentioned in the Phoenix catalogue. Tierney corroborates their evidence here. I also accept Bennett's evidence that there were mistakes in the Phoenix catalogue, particularly in the notations of motorcycle model numbers, corroborated as it is by Tierney's evidence. I accept that such mistakes were corrected in the first A-One catalogue. Rogers also says the 1986 A-One catalogue eradicated some "duplication" of identical sprockets listed in the 1984 Phoenix catalogue. I accept his unchallenged evidence here, including his evidence that some of those "duplications" were later picked up by Sakane and do not appear in the 1986 Phoenix catalogue or in the Link catalogues. I also accept that Rogers and Bennett identified a small but still significant number of interchangeabilities which they recorded in the A-One catalogue, but which are not identified in any version of the 1984 Phoenix catalogue. In addition to copying extensively from the 1984 Phoenix catalogue in producing the 1986 A-One catalogue, Rogers and his associates therefore carried out a considerable amount of work of their own that involved real skill and judgment and a large amount of labour.
But for the fact that Rogers and Bennett, in producing the first A-One catalogue, copied a substantial part of the 1984 Phoenix catalogue, there could, I think, be no doubt that the skill, judgment and labour expended by them in selecting the information about the sprockets A-One would sell and in giving written expression to that work of selection would be sufficient to qualify the 1986 A-One catalogue as an original compilation which is subject to copyright.
Copyright subsists in an "original literary work": s. 32 of the Act. The expression "literary work" is defined in s. 10 to include: "a table, or compilation, expressed in words, figures or symbols ..." Trade catalogues are capable of constituting original literary works: University of London Press Ltd. v University Tutorial Press Ltd. [1916] 2 Ch. 601 at 608; Purefoy Engineering Co. Ltd. v Sykes Boxall & Co. Ltd. (1955) 72 R.P.C. 89 at 95.
The cases repeatedly say that whether a compilation has sufficient originality to attract copyright protection depends on the degree of skill, judgment or labour which has been involved in producing it. See Ladbroke (Football) Ltd. v William Hill (Football) Ltd. [1964] 1 W.L.R. 273; Football League Ltd. v Littlewoods Pools Ltd. [1959] Ch. 637 at 650-1; Blackie & Sons Ltd. v The Lothian Book Publishing Company Pty. Ltd. (1921) 29 C.L.R. 396 at 398-399; Real Estate Institute of New South Wales v Wood (1923) 23 S.R.(N.S.W.) 349 at 352.
So far as compilations that consist entirely of existing material, i.e., material not created by the compiler, are concerned, Ladbroke (Football) Ltd., supra, is authority that originality may be found, and a claim of copyright may therefore subsist, by virtue of selection alone. See 277-278, per Lord Reid; 286-287, per Lord Hodson; 289-290, per Lord Devlin; and 292, 293, per Lord Pearce. In Collis v Cater, Stoffell & Fortt Ltd. (1898) 78 L.T. 613, a decision that has "never been doubted" (Ladbroke (Football) Ltd., supra, at 290) copyright was held to exist in a chemist's catalogue "although it contained `nothing whatever but a simple list' of drugs, etc. with names and prices which the plaintiff kept in stock or could obtain to order": Ladbroke (Football) Ltd., supra, at 278. That copyright can exist in such a mundane compilation of information readily available to all shows why the skill, judgment and labour in selecting what to include in a trade catalogue will be as relevant as the often very limited skill, judgment and labour involved in putting that selection into written form, in determining whether the compilation has sufficient "originality" to attract copyright.
In considering whether a compilation that wholly consists of or that includes existing material is itself an original work, the question is whether the compilation, looked at as an entity, is original: it is not proper to dissect the work into its parts, and by determining that the individual parts lack originality, to deny originality to the whole work. This issue is dealt with fully in Ladbroke (Football) Ltd., supra. The reason is that by s. 32 of the Act, "copyright is a statutory right which ... would appear to subsist, if at all, in the literary or other work as one entity", per Lord Hodson at 285. See also Ladbroke (Football) Ltd., supra, at 276-277, 290 and 291. Copyright in a work will be infringed by the unauthorised reproduction of a substantial part of the work - see ss. 36(1) and 14(1) of the Act. In determining whether that has occurred, it is sometimes said that the question is whether the part taken could by itself be the subject of copyright. But as Lord Reid said, at 277, when both the questions whether copyright subsists in a work and, if so, whether it has been infringed are in issue:
"... that is only a shortcut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is `original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial."
The correctness of this approach is manifest here: it is clear that the effort expended by Rogers and Bennett in selecting the information to be used was directed to the preparation of a self-contained catalogue for use by A-One in its business, i.e., an up-to-date, complete listing of information about sprockets for a wide range of motorcycles in service in Australia. Cf. Ladbroke (Football) Ltd., supra, at 290 and 293.
Skill, judgment or labour expended in the process of copying a particular work or portion of a particular work, as distinct from selecting material to be copied into a compilation, cannot confer originality; but even if the effort involved in producing a compilation is mostly devoted to copying another work or works, a relatively small alteration or addition quantitatively may suffice to convert that which is copied from an earlier work into a new and original work in which copyright will subsist. Whether it does or not is a question of degree having regard to the quality, rather than the quantity of the addition: Interlego A.G. v Tyco Industries Inc. [1989] 1 A.C. 217 at 263.
The effort expended by Rogers and Bennett in selecting the material that is contained in the 1986 A-One catalogue from manufacturers' microfiches and other sources is quantitatively substantial when compared with the material in the A-One catalogue copied from the Phoenix catalogue. That additional material also has substantial qualitative significance by enhancing the accuracy and completeness of the A-One catalogue. Prima facie, A-One therefore has copyright in the whole of its 1986 catalogue. But if the extent to which Rogers and Bennett copied material from the Phoenix catalogue makes the A-One catalogue an infringement of the Phoenix work, does this prevent A-One having copyright in its catalogue?
I think the 1986 A-One catalogue is an infringement of the copyright in the 1984 Phoenix catalogue. If the later compiler copies the whole or a substantial part of the earlier list, he will have infringed any copyright that exists in that earlier list. Whether a substantial part of the copyright material has been copied depends "not merely on the physical amount of the reproduction, but on the substantial significance of that which is taken." Ladbroke (Football) Ltd., supra, at 283, 288, 293. That is, it depends on the quality of the portions copied. In this context, "quality" means that if the portion copied is a "vital or material" part in relation to the work as a whole, the part copied can involve substantial reproduction, even though it is only a small part of the whole work in terms of quantity. See Dixon Investments Pty. Ltd. v Hall (1990) 18 I.P.R. 490 at 494-495. Because they compiled the A-One catalogue by reproducing in it extensive portions of the 1984 Phoenix catalogue, the production of the 1986 A-One catalogue infringed the copyright in the 1984 Phoenix catalogue.
It is unnecessary to reach a conclusion on the ownership of the copyright in the 1984 Phoenix catalogue (assuming it does have copyright protection). The evidence of Tierney, Young and Williams lends more support to the evidence of Sakane that he was responsible for the preparation of this catalogue than it does to the evidence of Bennett and Rogers that they had an extensive involvement in the production of that catalogue. Sakane is not a party to these proceedings. However, even if Sakane was, to a very substantial extent, the author of the 1984 Phoenix catalogue and even if he performed this work only in his capacity as a director of Phoenix and not in the course of his employment under a contract of service with Phoenix, it is likely that Phoenix or rather Brylyn No. 2 Pty. Ltd., which went into liquidation long ago and has probably now been dissolved, would be the beneficial owner of the copyright in the catalogue. Cf. Antocks Lairn Ltd. v I. Bloohn Ltd. [1971] F.S.R. 490. It may well be that any copyright that may exist in the Phoenix catalogue is vested, by force of s. 576 the Corporations Law, in the Australian Securities Commission.
But, in my opinion, the fact that the 1986 A-One catalogue may be an infringement of the copyright in the 1984 Phoenix catalogue does not prevent A-One having copyright in its own 1986 catalogue.
I do not read Ladbroke (Football) Ltd., supra, as limiting the proposition that, so far as compilations that consist of or include existing material are concerned, originality for the purposes of copyright can be found in the work of selection, to compilations consisting only of material that is not the subject of copyright. In that case, Lord Pearce, in the course of dealing with the question whether the defendants had infringed the plaintiff's copyright in their football coupon by reproducing a substantial part of it, said, at 293:
"The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that `there is no copyright' in some unoriginal part of a whole that is copyright. They afford no justification, in my view, for holding that one starts the inquiry as to whether copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own."
Although Lord Pearce was dealing with the question of infringement where the copyright work was composed of non-original and original material, His Lordship, in the latter part of this statement, in my opinion, clearly accepted that copyright can exist in a compilation even though the compilation consists of partly pirated material and partly non-pirated material. This would seem to follow logically from what the House of Lords had to say in Ladbroke (Football) Ltd. to the effect that, so far as compilations of existing material are concerned, originality sufficient to attract copyright in a compilation can be found entirely in the work of selecting the material to be included in the compilation, as opposed to the work of reducing those selections to written form.
In Macmillan v Suresh Chunder Deb (1900) 1 Ind. L.R., 17 C 951, a decision universally approved, the work of selecting poems, which included a group the subject of copyright (see Macmillan & Co. Ltd. v K. & J. Cooper (1924) 130 L.T. 675 at 680 RHC) for compilation into an anthology was held sufficient to confer originality and so copyright on the anthology: see 130 L.T. at 680 LHC. The compiler had the consent of the owners of the copyright in the group of copyright poems to include them in his compilation (see 130 L.T. at 680 RHC). Consent is obviously relevant to the question: does the compilation infringe the copyright that may exist in any of the material included in it? But the presence or absence of such consent cannot be relevant to whether the work of selecting from existing material, including existing copyright material, to make a compilation, is sufficient in the particular case to confer originality on the compilation. Consent cannot turn material in which someone else has copyright and which material is selected by the compiler into his original material.
In Redwood Music Ltd. v Chappell & Co. Ltd. [1982] R.P.C. 109, one of the issues was whether the owner of copyright in an original musical work could claim ownership of copyright in an arrangement of the original work because it was an adaptation of the original work made in breach of copyright in the original. Goff J held that the answer depended upon whether the infringing arrangement itself constituted an "original" work. He pointed out that the relevant section of the Copyright Act (UK), like s. 32(1) of the Act, provided that copyright subsists in every original literary, dramatic, musical or artistic work and that this cannot be read as limited to lawful or non-plagiarised original works. So long as the arrangement involved sufficient originality to qualify it as an original work within the meaning of that term in the Act, it would not therefore matter that the arrangement was, in part, an infringing reproduction of an earlier piece. While the author of the arrangement would be liable to the owner of copyright in the earlier piece for its infringement, he would himself own copyright in the infringing arrangement, given that the arrangement satisfied the test of originality. As Goff J observed at 120, to hold that copyright cannot subsist in a version of a work made in infringement of the copyright in the original work would mean that the original copyright owner would, in addition to his undoubted entitlement to restrain publication of an infringing work, be entitled to reap the benefit of the infringer's original work by exploiting it for his own benefit, however extensive such original work might be.
In Warwick Film Productions Ltd. v Eisinger [1969] 1 Ch. 508, the question was whether the defendant had infringed the copyright in what was called the "Hyde book", an account of the trials of Oscar Wilde, by copying extensive passages appearing in the Hyde book. Those same passages, however, had been copied by the author of the Hyde book from an earlier book. The plaintiff, who had copyright in the Hyde book, failed to prove that it also had copyright in the earlier book. Plowman J held that even though the Hyde book may have infringed the copyright in the earlier book because of the copying it included, it was itself an original literary work in which copyright subsisted, saying, at 524-525:
"Although Hyde's account of the proceedings of the trials was substantially copied from the account in `Three Times Tried', he himself did a good deal of editing. Certain portions of his account printed in square brackets were his own contribution, and he added material, omitted material, made verbal alterations, rearranged material, transposed material and abbreviated material. ... Moreover, Hyde frequently put into oratio recta speeches which are reported in `Three Times Tried' in oration obliqua.
Again, I take the view, after reading it, that the [Hyde] book as a whole is a literary work entitled to copyright in its own right."
Ladbroke (Football) Ltd., supra, Redwood Music, supra, and Eisinger, supra, proceed on the basis that a composite work made up of pirated material and original material produced by the compiler can itself be an original work possessing copyright, even though it may also infringe the copyright in the pirated material included in it.
In my opinion, a work can be an original work in which copyright will subsist, even though it is itself an infringement of the copyright in an earlier work because it is, in part, a copy of a substantial part of that copyright work. This will be the position provided the later work includes qualitatively significant changes to the copied material.
The 1986 A-One catalogue is an infringement of the copyright that may exist in the 1984 Phoenix catalogue, because of the substantial amount of material the A-One catalogue contains which was copied from the Phoenix catalogue. But that A-One catalogue is also in its entirety an original compilation in which copyright subsists because of the skill, judgment and effort that Rogers and his assistants expended in making the additions to and deletions from the information recorded in the Phoenix catalogue to which I have referred. In my opinion, it is also relevant to take into account, in assessing the originality of the 1986 A-One catalogue, that Rogers and Bennett corrected errors in the Phoenix catalogue, particularly in its recording of motorcycle model numbers. While the correction of, e.g., spelling errors in a literary script could not be relevant to the question of the originality of the corrected script, the object of a sprocket catalogue is to provide an accurate compilation of information as to the various sprockets that can be used on a wide range of motorcycles. Work done to enhance the accuracy of an existing compilation of that sort, intended to be put to such a use, involves skill and labour just as much as does the effort expended in selecting new material for inclusion in the compilation and can therefore be relevant in determining whether the corrected compilation is itself an original work. Because of this expenditure of effort on deciding upon and then making these changes, and on making the corrections to the Phoenix catalogue, the whole 1986 A-One catalogue is an original work within s. 32 of the Act and is therefore copyright. It is therefore unnecessary, in order to dispose of the present case, to decide whether copyright can subsist in a compilation made up entirely of extracts pirated from a range of copyright works or to decide whether the effort Rogers expended in selecting the extensive portions of the Phoenix catalogue for copying into the A-One catalogue, in infringement of the copyright in the Phoenix catalogue, can also be relied on by A-One in support of the contention that the A-One catalogue is itself protected by copyright.
THE AUTHORSHIP OF THE 1986 A-ONE CATALOGUE
The author of an original work is the first owner of copyright in the work: s. 35(2) of the Act. The only contenders for authorship of each of the A-One catalogues in this case are the first and second applicants and Tierney. While it is not possible to date precisely when in the first half of 1986 the first A-One catalogue was complete, it is clear from Mr. Williams' evidence that, soon after he commenced work for A-One in June 1986, the catalogue was published in multiple copies. By the beginning of July, he was distributing them to dealers. It is likely, having regard particularly to the evidence of Tierney, that what Rogers said in cross-examination, to the effect that the work of compiling the information for the catalogue was largely complete by the latter part of April, is correct. The correct view of the evidence may be that all the essential work that resulted in the publication of A-One's 1986 catalogue had been done prior to 27 March, 1986 when Bennett and Rogers became directors of the company and prior to A-One commencing trading and that the legal relationship between each of them and A-One, prior to that date, did not amount to a relationship of employer and employee. A-One would not therefore be able to establish its ownership of copyright in the catalogue in reliance on s. 35(6). Even so, I think the inference to be drawn from all the circumstances is that, in doing the work of compilation of the catalogue prior to 27 March, 1986, Rogers and Bennett intended that the company, whose business they were in the process of setting up, was to be the beneficial owner of the product of the work they put into compiling the catalogue. I therefore think that Bennett and Rogers made themselves trustees for the company of copyright in their work done prior to 27 March, 1986. An equitable interest of the kind I think was created by Bennett and Rogers here, can be created (as distinct from being assigned, something permitted by s. 196) without writing. See generally Copinger and Skone James on Copyright, 13th Ed., para. 4-67. If, however, I am wrong in saying that the first applicant owns the copyright in the 1986 A-One catalogue, Rogers and Bennett, as the authors of the catalogue, are the joint owners of the copyright in it.
I doubt that Tierney was sufficiently involved in the creation of the A-One catalogue to be its joint author with Rogers and Bennett. He commenced to work with Rogers and Bennett in early to mid March 1986 as a storeman and warehouse manager on a weekly salary and, at the direction of Bennett and Rogers, assisted them in compiling the catalogue. His evidence was that his own input was very much less than that of Rogers'. I have already explained why I consider that Bennett and Rogers did not retain any beneficial interest for themselves in the copyright in the 1986 A-One catalogue they produced, even if they were not then employees of A-One. What Tierney did was done under direction by way of assisting them in their task of compiling the catalogue for the company. Tierney so acted in the course of his duties as an employee. There is no suggestion that he purported to reserve for himself any interest in or rights to the work he produced in connection with the catalogue. Even if, for the reason contained in Copinger and Skone James, supra, at para. 7-5, copyright in any work of which Tierney could be said to be joint author with Rogers and Bennett did not vest in A-One as Tierney's employer pursuant to s. 35(6) of the Act, the circumstances are such as to show, in my opinion, that Tierney acquired no beneficial interest in the copyright in anything that he produced, but the entire beneficial interest in any such copyright vested in A-One. See Copinger and Skone James, ibid.
THE 1987 A-ONE CATALOGUE
Rogers said that A-One has used essentially the same catalogue since late 1986 when the first edition of the catalogue was produced. A-One issued its first updated version of its 1986 catalogue in 1987. The gathering of new information is a continuous activity. Each subsequent edition was only issued when a sufficient amount of updated information had been accumulated to justify a new issue. Rogers said that updated information is obtained from various sources: from Tachiki Industries, pursuant to arrangements made on A-One's first visit to Tachiki Industries to ensure the exchange of information when new motorcycle models are released; by A-One's staff gathering information about new models and about possible interchangeabilities when visiting A-One dealers (e.g., by measuring hub sizes and sprockets); by Rogers reading manufacturers' microfiches as they are published and from customer responses.
Mr. Neilson, who worked with A-One from about July 1986 until about November 1990 and who was at one stage a director of the company, has worked for Sakane since early 1991. He said that, while with A-One, he did a lot of work compiling updated information for use in future editions of the A-One catalogue. Initially, Rogers said that Bennett and himself were mainly responsible for the updating process, although Tierney also assisted. Later, Rogers acknowledged that Neilson was extensively involved in updating the A-One catalogue. Neilson confirmed what Rogers had to say about the updating information being obtained from manufacturers' microfiches and customers. However, he also said that he used the catalogues of all A-One's competitors as an additional source of such information. While Rogers admits that A-One did keep copies of competitors' catalogues, he denies using them to obtain updated information for inclusion in new editions of A-One's catalogues. I accept, however, what Neilson says in preference to Rogers' evidence.
The work of updating involved the incorporation of information relating to new releases of existing models of motorcycle and new models not previously included in A-One's existing catalogue; the incorporation of new sprockets not offered by the original manufacturer; the deletion of superseded, discontinued or low-demand sprockets and motorcycle models; the rectification of mistakes; the inclusion of newly identified interchangeabilities; and the addition of super-sprockets. There appear to be five entries in the 1987 catalogue referring to super-sprockets. Rogers does not claim that he was the first person to develop super-sprockets: that appears to have been done by the "Mr. T" organisation. But he said that at some time in 1987, he and Bennett decided to introduce a range of super-sprockets into the A-One catalogue. A-One had made super-sprockets that had a large number of holes drilled in them so that a small number of super-sprockets could be fitted to a wide range of motorcycles. They enable a dealer to reduce the number of sprockets it has to stock. Rogers said A-One got its first shipment of super-sprockets in late 1987/early 1988. They first appeared in the 1987 A-One catalogue. However, Rogers agreed in cross-examination that the great majority of additions to the 1987 A-One catalogue related to new model motorcycles released after the issue of the Phoenix catalogue, a point made by Sakane. But, Sakane acknowledged the obvious, i.e., that it was important to include such information.
It is clear that most of the differences between the 1986 A-One catalogue and its 1987 catalogue are due to the inclusion in the second catalogue of information relating to new motorcycle models released after the issue of its 1986 catalogue. There is no evidence suggesting that A-One produced this information by simply copying material from its competitors' catalogues, including the one Phoenix catalogue which was issued soon after the issue of A-One's first catalogue: it is unlikely that this 1986 Phoenix issue would have contained much information on the few new models likely to have been released only after publication of the 1986 A-One catalogue but before the 1986 Phoenix catalogue was issued. Given this and given that Neilson confirms what Rogers says about obtaining this sort of updating information from manufacturers' microfiches and discussions with customers, I think it likely that the updating of A-One's 1986 catalogue, reflected in its 1987 one, was due, in large part, to Neilson and to other A-One employees working from the microfiche material.
If it were necessary to reach a conclusion on the point, I would hold that A-One had copyright in its 1987 catalogue, as well as having copyright separately in its 1986 catalogue, even though the changes made to the second catalogue were relatively minor. A new edition of a compilation of information relating to a constantly changing subject matter that provides up-to-date information about that subject matter is, I think, an original work, so long as there is more than a trivial difference between the new edition and its predecessor. See H. Blacklock & Co. Limited v C. Arthur Pearson Limited [1915] 2 Ch. 376 at 384 and Interlego A.G. v Tyco Industries Inc., supra, at 263. The position may well be different in relation to a new edition of a work of higher literary quality than a compilation of readily available information, as to which see Lahore, Copyright Law, para. 2.5.115. The relatively small amount of new material in the 1987 A-One catalogue compared with the 1986 catalogue was more than trivial, since it made the later catalogue an up-to-date listing, a feature of special interest not only to A-One but also to its retailers.
THE 1990 A-ONE CATALOGUE
The 1987 A-One catalogue was updated to produce the 1990 A-One catalogue. It is in the same slightly different format to the A-One 1986 and 1987 catalogues that was also used in the 1991 A-One catalogue. There is in evidence a copy of the 1990 A-One catalogue highlighted by Rogers to show the changes to the 1987 catalogue by way of additions, deletions and the inclusion of super-sprockets, which changes were made for similar reasons to the changes to the 1986 catalogue that are reflected in the 1987 catalogue.
Link catalogues had been produced by Sakane in 1988 and 1989, before the release of the 1990 A-One catalogue. Sakane asserts that A-One copied these Link catalogues. He says A-One copied Link because Link was the market leader; that he was the best in Australia at cataloguing and that Rogers' and Bennett's cataloguing work was very poor. Sakane's evidence is an exaggeration.
The first, i.e., the 1988, Link catalogue was derived from the 1984 Phoenix catalogue. It seems that this catalogue was merely a print-out of the 1984 Phoenix catalogue with a name change. Sakane agreed that the catalogue was well out of date when issued and that he received complaints because of that. Neilson said that the 1988 Link catalogue would not have been up-to-date at the time when he was involved in updating the A-One catalogue and it would have been of little assistance to him in that work.
The respondents did not urge that A-One had copied from the 1988 Link catalogue in producing its 1990 catalogue. However, on the basis of Sakane's evidence, they did contend that most of the updating by A-One to its 1987 catalogue, to produce its 1990 catalogue, was copied by it from the Link 1989 catalogue. Comparisons made by Rogers of A-One's 1987 and 1990 catalogues to show the extent of updating reflected in the latter catalogue, and a comparison by Sakane of the 1989 Link catalogue (but not its 1988 one) with the updated information reflected in the 1990 A-One catalogue, indicate that approximately 250 of the changes made in the A-One 1990 catalogue to its 1987 catalogue also appear in the 1989 Link catalogue, while there are a further 100 or so changes in the 1990 A-One catalogue, compared with the 1987 catalogue, that do not appear in the 1989 Link catalogue.
Rogers denied all allegations of "surreptitious and illegal" copying of any of the Link catalogues. The 1989 Link catalogue was produced in about September 1989. Despite some prevarication, Rogers ultimately admitted that the A-One 1990 catalogue came out in very late 1990 or early 1991, a conclusion supported by Neilson's evidence as to the work he had done in preparation for what became that 1990 catalogue before he left A-One in November 1990. Rogers ultimately conceded that he may have had the 1989 Link catalogue before the A-One 1990 catalogue was released. The final position that Rogers adopted was that he acknowledged that the updated information he identified as included in the A-One 1990 catalogue was, to the extent indicated by Sakane in his comparison, copied with Link's consent from the 1988, but not the 1989 Link catalogue. He said that the information he copied from the 1988 Link catalogue was all repeated in the 1989 Link catalogue. Sakane did not contradict what Rogers had to say here and the respondents did not challenge Rogers on this point, submitting instead that it was irrelevant that A-One may have copied information into its 1990 catalogue from any Link catalogue with Link's consent: the issue is not whether A-One has, in this way, infringed the copyright in either of the 1988 or 1989 Link catalogues, but simply one of originality and that, in respect of the 250 or so entries so copied, there could be no originality.
I have held that A-One has copyright in each of its catalogues, including its 1991 catalogue. The 1986 catalogue was produced as a result of Rogers and Bennett copying extensively from the 1984 Phoenix catalogue. The 1991 catalogue was produced, in large part, as a result of the work done by Rogers and Bennett and others within A-One to update the 1986 catalogue to include both new and newly discovered information and, in significant part, it also involved the reproduction of material from the 1991 Link catalogue. No attempt was made by King to analyse the source of the information recorded in the 1991 A-One catalogue, which was copied by Off Road, to identify which particular entries in the A-One catalogue had in turn been copied by A-One from material in the 1984 Phoenix catalogue and the 1991 Link catalogue. In my opinion, given the catholicity Off Road displayed in its copying from the A-One catalogue and given the nature of the information copied, viz., identification numbers for sprockets and motorcycle models to which they can be fitted and similar information, such an analysis would not have assisted Off Road. Lord Pearce's judgment in Ladbroke (Football) Ltd., supra, and the judgment in Warwick Film Productions Ltd v Eisinger, supra, is authority that where an original work comprises non-original material, whether pirated or not, and new material, the non-original material in the work attracts copyright protection only because of its collocation with the new material, so that, if the only part of such a composite work which is copied is the non-original component, once that is robbed of its collocation with the new material, it cannot be regarded as forming a substantial part of the entire work in which copyright subsists. Taking only such non-original work cannot therefore be an infringement of the copyright that exists in the whole work.
But King did not copy just the non-original elements in the 1991 A-One catalogue, i.e., the material that may have been copied by A-One from the Phoenix and Link catalogues: he copied many entire entries, some of which, it can be assumed, consisted of material selected by the application of skill, judgment and labour by A-One's people, which was combined with material copied by A-One from Phoenix and Link. In so far as King himself may have copied material in the 1991 A-One catalogue that was pirated by A-One from Phoenix and Link, King only copied that in its collocation with original material. It is clear why he took entire entries in the A-One catalogue, and in large numbers. What gives the 1991 A-One catalogue its utility and value is that it comprises what King, in effect, acknowledged was the most complete and up-to-date compilation available to him that accurately identified many sprockets and the motorcycles from the wide range of models available in Australia to which each of those sprockets could be fitted. No one entry or group of entries in the A-One catalogue, considered in isolation from the rest of the catalogue, has much utility or value. Wholesalers and retailers of motorcycle sprockets are not interested in having information about one or a number of parts, rather are they interested in having in one publication comprehensive, up-to-date information about a wide range of such parts. It is for this reason that neither the A-One catalogue itself nor individual entries in that catalogue can sensibly be separated into two components, viz., original A-One work and work pirated by A-One, when the question is: has Off Road reproduced a part of the A-One catalogue that is a substantial part of the latter? Unlike the position of the alleged infringer in Eisinger, Off Road did not attempt to copy only portions of the information relating to individual sprockets. There was no point in doing that. It was only by taking the whole of the information, original and pirated, in which it was interested that Off Road could get an accurate, up-to-date and complete set of information.
In my opinion, the production by Off Road of its 1993 catalogue constitutes a clear infringement of the copyright owned by A-One that subsists in its 1991 catalogue. This is the position even if the A-One catalogue is itself an infringement in the copyright in each of the 1984 Phoenix and the 1991 Link catalogues. While Mr. King was involved in this infringement, there is no evidence that Mrs. King, the other second respondent, participated in it.
I therefore answer the questions raised as follows:
(1)Is the first applicant's 1991 catalogue an original work capable of protection under the Copyright Act 1968 (Cth)? Yes
(2)Who is the author or authors of the catalogue? The second applicants.
(3)Does the first applicant own the copyright in the catalogue? Yes
(4)If the answers to questions (1) and (3) above are in the affirmative and the answer to question (2) is either the first applicant or the second applicants, have the first and/or second respondents infringed the copyright of the first applicant? The first respondent and Mr. R.B. King, one of the second respondents, have infringed the copyright of the first applicant by producing the first respondent's 1993 catalogue.
I certify that this and the preceding
56 pages are a true copy of the
reasons for judgment herein of the
Honourable Justice Drummond.
Associate:
Date: 27 March, 1996
Counsel for the applicant: P D T Applegarth
Solicitors for the applicant: Bennett & Philp
Counsel for the respondents: A B Crowe
Solicitors for the respondents: Lane & Lane
Date of Hearing: 9 and 10 March 1994
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