Re: ACORN COMPUTERS LIMITED and BARSON COMPUTERS PTY. LTD.
And: M.C.S. MICRO-COMPUTER SYSTEMS PTY. LTD. and JOHN SPEED
VG No. 226 OF 1984
Copyright
(1984) AIPC para 90 - 146 / 57 ALR 389 / 4 IPR 214 / 6 FCR 277
COURT
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Smithers J.
CATCHWORDS
Copyright - motion by applicants to amend statement of claim - motion by repondents to strike out statement of claim - assignment pleaded not an assignment in writing - requirements of writing in s.196(3) of Copyright Act 1968 - equitable ownership arising out of agreement for value to assign - source of applicants' title rendered uncertain by affidavits filed by the applicants - validity of assignment of copyright by one joint owner - whether joint ownership has characteristics of tenancy in common.
Copyright Act 1968 s.196(3)
Copyright - Infringement - Copyright in various works relating to computers - Author employed by assignor for value - Assignment not in writing - Whether the acquisition of the equitable interest by the assignee subject to s 196(3) of the Copyright Act 1968 (Cth) - Written deed of assignment executed after action commenced - Need to join legal owner - Assignment by a joint author - Need to identify co-author's contribution and the nature and extent of the works - Copyright Act 1968, ss 10, 196(3) - Property Law Act 1958 (Vic), s 53(1)(c).
HEADNOTE
Held: (1) The first applicant acquired an equitable interest in various copyrights by virtue of its agreement or arrangement with the legal owner of such copyright whereby that owner transferred to the applicant all its assets and undertakings relating to the developing and production of a certain microcomputer and the intellectual and industrial property rights relating thereto and, even though that agreement at the date of commencement of the action was not in writing signed by or on behalf of the assignor, neither s 196(3) of the Copyright Act 1968 nor s 53(1)(c) of the Property Law Act 1958 (Vic) applied so as to render the applicant's interest in the copyright unenforceable because that equitable interest arose not by transfer or transmission but by estate created by trust by means of the activation in equity of the conscience of the receiver of valuable consideration. By relating the acquisition of the equitable interest to the transaction for value, the claim to the equitable interest was clearly pleaded even though the plea characterised the process of obtaining the equitable interest as an equitable assignment rather than the creation of a trust.
Roban Jig Tool Co Ltd and Elkadort Ltd v. Taylor (1979) FSR 130, distinguished.
Central Trust and Safe Deposit Co v. Snider (1916) 1 AC 266; Fairweather v. Fairweather (1944) 69 CLR 121; DKLR Holding Co (No 2) Pty Ltd v. Commissioner of Stamp Duties (NSW) (1982) 149 CLR 431, referred to with approval.
(2) An applicant who is owner of an equitable interest in copyright need not join the…
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- AGLC
- Acorn Computers Ltd & anor v MCS Microcomputer Systems Pty ltd & anor [1984] FCA 399 (57 ALR 389; 4 IPR 214; 6 FCR 277)
- Case
- [1984] FCA 399
- Decision Date
CaseChat Overview and Summary
The legal issues before the Court were whether the assignment of copyright by one joint owner was valid and whether the joint ownership had the characteristics of a tenancy in common. The Court examined the requirements of writing under section 196(3) of the Copyright Act 1968, and whether the assignment was in writing. The Court also considered the effect of the affidavits filed by Acorn on the source of their title. The Court found that the assignment was not in writing and that the joint ownership had the characteristics of a tenancy in common.
The Court granted Acorn leave to amend their statement of claim and to provide further particulars of the copyrighted works. The Court also ordered that the respondents have liberty to apply should any question arise as to the sufficiency of the particulars delivered by Acorn. The Court further ordered that either party have liberty to apply generally and that costs be reserved.
The Court's decision provided some clarity to the legal issues surrounding the ownership of copyright in joint works and the requirements for a valid assignment of copyright. The outcome of the case will have implications for parties who are involved in joint ownership of copyright and seek to assign their interests to others.
Orders
Orders of the court
1.
The applicants have leave to amend the statement of claim in the terms of the amended statement of claim already delivered and to make amendments thereto as it may consider necessary in the light of the comments in the reasons for judgment delivered this day concerning paras. 27 and 27A of the amended statement of claim.
2.
The applicants deliver to the respondents further particulars of each work in which copyright is claimed stating the nature and extent thereof and the extent to which it was included in any ROM or other item of equipment comprised in the relevant BBC microcomputer, within 21 days of the date hereof.
3.
The respondents have liberty to apply should any question arise as to the sufficiency of the particulars delivered by the applicants.
4.
Either party have liberty to apply generally.
5.
Costs be reserved.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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