Australasian Performing Right Association Limited v K Illusion Pty Ltd
[2024] FedCFamC2G 928
•19 September 2024
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Australasian Performing Right Association Limited v K Illusion Pty Ltd [2024] FedCFamC2G 928
File number(s): SYG 942 of 2023 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 19 September 2024 Catchwords: INTELLECTUAL PROPERTY – practice and procedure - application for default judgment based on statement of claim alleging infringement of copyright in musical works – whether on the face of the statement of claim the applicant has established an entitlement to relief for infringement of copyright – whether it is appropriate to grant declaratory and injunctive relief – whether it is appropriate to assess damages on the basis of the licence fee that would have been paid to applicant – whether additional damages should be ordered – relief granted. Legislation: Copyright Act 1968 (Cth) ss 115, 126
Federal Circuit and Family Court of Australia Act 2021 (Cth) s 211
Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 13.04, 13.05, 13.06
Cases cited: Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2016] FCAFC 22
Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690
Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3) [2014] FCA 909
Division: General Number of paragraphs: 30 Date of hearing: 5 September 2023 Place: Sydney Solicitor for the Applicant: Mr B John of Banki Haddock Fiora Lawyers Solicitor for the Respondents: No appearance by, or on behalf of, the respondents ORDERS
SYG 942 of 2023 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: AUSTRALASIAN PERFORMING RIGHT ASSOCIATION LIMITED (ACN 000 016 099)
Applicant
AND: K ILLUSION PTY LTD (ACN 154 460 732)
First Respondent
LIU CHIEN YANG
Second Respondent
ORDER MADE BY:
JUDGE MANOUSARIDIS
DATE OF ORDER:
19 SEPTEMBER 2024
THE COURT DECLARES THAT:
1.The first and second respondents infringed the applicant’s copyright in the following musical and literary works (Works):
(a)Give Me Everything (music and lyrics) written by, among others, Nick L Van de Wall;
(b)In My Feelings (music and lyrics) written by, among others, Aubrey Drake Graham and Noah James Shebib;
(c)Tempted To Touch (music and lyrics) written by Rupert Antonio Clarke and Darron Sean Grant;
(d)Turn Me On (music and lyrics) written by, among others, Raeon Karlon Karva Primus;
(e)Watch Out For This (music and lyrics) written by, among others, Anthony Cornelius Cameron; and
(f)Work (music and lyrics) written by, among others, Jahron Anthony Brathwaite, Aubrey Drake Graham and Rupert Thomas Jr.
by:
(g)between 10:27 pm and 11:38 pm on 2 April 2022, at 82-86 Hindley Street, Adelaide, South Australia, 5000 (Premises), performing the Works by means of DJ performance; and
(h)on various dates from on or about 1 January 2021 to 8 June 2023 performing at the Premises by means of DJ performance other works referred to or included in the schedule to these orders (APRA Repertoire Works).
THE COURT ORDERS THAT:
2.The first and second respondents, and each of them, be restrained from:
(a)performing the Works in public without the licence of the applicant;
(b)performing in public without the licence of the applicant the musical and literary works that are included in the APRA Repertoire Works; and
(c)authorising the performance in public of any of the Works or any of the works included in the APRA Repertoire Works.
3.Judgment against the first and second respondents in the sum of $56,071.75.
4.Pursuant to s 115(4) of the Copyright Act 1968 (Cth), judgment against the first respondent in the sum of $35,000.
5.Pursuant to s 115(4) of the Copyright Act 1968 (Cth), judgment against the second respondent in the sum of $35,000.
6.The first and second respondents pay the applicant’s costs set in the amount of $10,007.70.
THE COURT NOTES THAT:
7.The liability of the first and second respondents under the judgment ordered in paragraph 3 of these orders, and under the order for costs referred to in paragraph 6 of these orders, is joint and several.
8.The liability of each of the first and second respondents under the judgments ordered in paragraphs 5 and 6 of these orders is separate from each other’s liability with the intent that the satisfaction of one judgment is not to be taken to be satisfaction of the other judgment and vice versa.
SCHEDULE
APRA REPERTOIRE
The applicant:
(a)owns the copyright in respect of its application to the performance in public; and/or
(b)has the power to grant licences for the performance in public,
of practically all musical and literary works performed throughout Australia. The repertoire comprises the works written by members of the Applicant – who constitute more than 110,000 composers, authors and publishers of music – and members of affiliated societies in countries throughout the world.
The Applicant has carried on business as an association of composers, authors and publishers of music for the purpose of licensing the public performance of musical and literary works since 1926.
The Applicant maintains a catalogue of its repertoire. The catalogue lists the works in which the Applicant owns the right of performance of the works in public. At present there are more than 10 million works listed in the catalogue. The items in the catalogue may be inspected by arrangement with the Applicant.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
The applicant (APRA) applies under r 13.05(2)(c) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules) for default judgment against the respondents on causes of action under the Copyright Act 1968 (Cth) (CopyrightAct).
APRA’S CLAIMS AND PROCEDURAL HISTORY
APRA commenced this proceeding by application filed on 8 June 2023. The application was supported by a statement of claim in which APRA alleges as follows:
(a)Copyright subsists in the musical and literary works identified in the statement of claim (Works).[1] Particulars to that allegation identify each of the Works, and the author or authors of the Works as follows:
(i)Give Me Everything (music and lyrics) written by, among others, Nick L Van de Wall;
(ii)In My Feelings (music and lyrics) written by, among others, Aubrey Drake Graham and Noah James Shebib;
(iii)Tempted To Touch (music and lyrics) written by Rupert Antonio Clarke and Darron Sean Grant;
(iv)Turn Me On (music and lyrics) written by, among others, Raeon Karlon Karva Primus;
(v)Watch Out For This (music and lyrics) work written by, among others, Anthony Cornelius Cameron; and
(vi)Work (music and lyrics) written by, among others, Jahron Anthony Brathwaite, Aubrey Drake Graham and Rupert Thomas Jr.
[1] Statement of Claim, [4]
(b)Copyright subsists in each of the works in the “APRA Repertoire” (APRA Repertoire Works).[2]The expression “APRA Repertoire” is not defined in the schedule to the application as follows:
[2] Statement of Claim, [5]
APRA REPERTOIRE
The Applicant:
(a)owns the copyright in respect of its application to the performance in public; and/or
(b) has the power to grant licences for the performance in public,
of practically all musical and literary works performed throughout Australia. The repertoire comprises the works written by members of the Applicant – who constitute more than 110,000 composers, authors and publishers of music – and members of affiliated societies in countries throughout the world.
The Applicant has carried on the business as an association of composers, authors and publishers of music for the purpose of licensing the public performance of musical and literary works since 1926.
The Applicant maintains a catalogue of its repertoire. The catalogue lists the works in which the Applicant owns the right of performance of the works in public. At present there are more than 10 million works listed in the catalogue. The items in the catalogue may be inspected by arrangement with the Applicant.
(c)APRA is the owner of the copyright in each of the Works in relation to the performance in public of the Works.[3]
[3] Statement of Claim, [6]
(d)APRA is the owner, or the representative of the owner, of the copyright in the works that comprise the APRA Repertoire Works in relation to its application to the performance of each of the APRA Repertoire Works in public.[4]
[4] Statement of Claim, [7]
(e)The first respondent (K Illusion) is the proprietor of the business known as “K Illusion Karaoke Lounge and Kandy Shop Nightclub” located at 82-86 Hindley Street, Adelaide, South Australia, 5000 (Premises).[5]
[5] Statement of Claim, [2]
(f)The second respondent, Mr Yang, is, and was at all material times, the director of K Illusion and personally responsible for its day-to-day management.[6]
[6] Statement of Claim, [3]
(g)The respondents have infringed APRA’s copyright by, without the licence of APRA, performing the Works and the APRA Repertoire Works in public, or by authorising the performance in public of the Works and the APRA Repertoire Works.[7] In particular:
[7] Statement of Claim, [8]
(i)Between 10:27 pm and 11:38 pm on 2 April 2022, at the Premises, the Works and the APRA Repertoire Works were performed by means of DJ performance.
(ii)On various dates from, on or about 1 January 2021, to the date of the application, namely, 8 June 2023, the respondents have performed or authorised the performance in public of the APRA Repertoire Works by way of karaoke and DJ performances, as applicable.
(h)APRA has asked the respondents to desist from infringing its copyright in the Works and the APRA Repertoire Works, but the respondents have not ceased the infringing acts and intend to infringe the copyright of APRA in the Works and the APRA Repertoire Works.[8]
[8] Statement of Claim, [8]; particulars [iv]
(i)The respondents did the acts referred to in (g):[9]
[9] Statement of Claim, [9]
(i)knowing that they did not have the licence of APRA to do those acts;
(ii)knowing that to do those acts without the licence of the owner of the copyright in the Works constituted an infringement of the copyright in the Works;
(iii)in circumstances where, while avoiding the payment of licence fees to APRA, a substantial benefit accrued to the respondents; and
(iv)wilfully persisting in doing those acts despite notice to the effect of (i) and (ii).
(j)APRA relies on the following matters in support of the allegations referred to in (i):[10]
(i)APRA informed the respondents in writing by emails dated 11 and 25 January, and 1 and 31 August 2021, of the matters referred to in (h)(i) and (h)(ii) above.
(ii)APRA informed the respondents in writing by emails dated 14 and 28 October 2021, and 6 April 2022, of the matters referred to in (h)(i) and (h)(ii) above and further notified the respondents in writing that the matter would be referred to APRA’s lawyers if a licence agreement between APRA and K Illusion was not entered into.
(iii)APRA’s lawyers informed the respondents in writing by letters dated 26 September and 9 December 2022, and emails dated 18 October 2022, 23 January and 22 March 2023 of the matters referred to in (h)(i) and (h)(ii) above.
(k)The respondents’ acts are such as to make an award of damages under s 115(4) of the Copyright Act.
(l)As a result of the respondents’ acts referred to above, APRA has suffered loss and damage, and will, unless such acts are restrained, continue to suffer loss and damage.
[10] Statement of Claim, [9]; particulars [i]-[iii]
Mr Yang was served personally with the application and statement of claim on 13 June 2023.[11]
[11] Affidavit of service H Klavins 20.06.2023
The proceeding was listed for a first court date before me at 9:30 am on 28 June 2023. By email sent on 13 June 2023, my Associate provided the lawyers for APRA with dial-in details for joining the first court date by telephone, and requested that APRA’s lawyers provide a copy of the email to the respondents. APRA’s lawyers did so by email sent to the email address to and from which APRA and its lawyers had been communicating with the respondents.[12]
[12] Affidavit B B John 29.08.2023; annexure “BBJ-6”
On 27 June 2023 a lawyer filed a notice of address for service for the respondents.
On 27 June 2023 I made orders, by consent, that the respondents file and serve any defence by 26 July 2023, and that the proceeding be listed for a directions hearing at 9:30 am on 2 August 2023.
The respondents did not appear at the directions hearing on 2 August 2023 and they did not file and serve any defence. On that day I listed the proceeding at 10:15 am on 5 September 2023 for the hearing of an application for default judgment, and ordered that the APRA file any evidence and submissions in support of its application for default judgment.
I heard APRA’s application for default judgment on 5 September 2023. The respondents did not appear at the hearing.
RELEVANT RULES
Paragraph (c) of r 13.05(2) of the GFL Rules applies to a respondent who “is in default”. Under r 13.04(2) of the GFL Rules, a respondent is in default if the respondent has not satisfied an applicant’s claims, and the respondent has failed to do any one or more of the things identified in r 13.04(2)(b) of the GFL Rules. The things identified in r 13.04(2)(b) that are the failure to file a response or defence before the time for doing so has expired, and the failure to defend the proceedings with due diligence. Also relevant is r 13.06(2) of the GFL Rules, which provides that the Court may, among other things, make an order of the kind mentioned in r 13.05(1), (2) or (4), if a party to a proceeding is absent from a hearing.
When a respondent is in default, or when a respondent is absent from a hearing, the Court may make one of the orders set out in r 13.05(2) of the GFL Rules. Relevant to the application before me is r 13.05(2)(c), which provides that the Court may:
if the proceeding was started by an application supported by a statement of claim or the Court has ordered that the proceeding continue on pleadings – give judgment against the respondent for the relief that:
(i) the applicant appears entitled to on the statement of claim; and
(ii) the Court is satisfied it has power to grant . . .
APRA submits the respondents are in default and, because it commenced the proceeding by an application supported by a statement of claim, APRA applies under r 13.05(2)(c) of the GFL Rules for a declaration that the respondents infringed APRA’s copyright, an injunction restraining the respondents from future infringements of copyright, compensatory damages under s 115(2) of the Copyright Act, and additional damages under s 115(4) of the Copyright Act. APRA also claims interest and costs.
I have set out elsewhere the principles that govern the exercise of the power to make orders pursuant to r 13.05(2)(c) of the GFL Rules, and also the elements of a cause of action for infringement of copyright (Earlier APRA Judgment).[13]
[13] Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690, at [13]-[30]. I there considered the equivalent rules of the Federal Circuit Court Rules 2001 (Cth).
ARE THE RESPONDENTS “IN DEFAULT”?
The respondents are “in default” within the meaning of r 13.04(2) of the GFL Rules because they have not filed a defence. It is therefore open to me to give judgment pursuant to r 13.05(2)(c) of the GFL Rules for the relief to which APRA appears to be entitled on its statement of claim, and which I am satisfied I have power to grant.
DOES THE STATEMENT OF CLAIM PLEAD CAUSES OF ACTION?
The statement of claim filed in this proceeding is similar to the statement of claim I considered in the Earlier APRA Judgment.[14] For the reasons I gave in concluding that the statement of claim in the Earlier APRA Judgment pleaded the essential elements of a cause of action for infringement of copyright,[15] I am satisfied that, on the face of the statement of claim APRA filed in this proceeding:
(a)copyright subsists in the Works and in the APRA Repertoire Works;
(b)given APRA alleges it is the owner of the performing rights in the Works, and in the APRA Repertoire Works, and the respondents have not put in issue these allegations, the presumption provided for by s 126 of the Copyright Act applies and, therefore, APRA is the owner of the performing rights in the Works and in the APRA Repertoire Works;
(c)on 2 April 2022, at the Premises, the Works and the APRA Repertoire Works were performed by means of DJ performance;
(d)on various dates from on or about 1 January 2021 to 8 June 2023, the respondents have performed or authorised the performance in public of the APRA Repertoire Works by way of karaoke and DJ performances;
(e)because of (a)-(d), the respondents have infringed APRA’s performing rights in the Works, or have otherwise authorised the acts referred to in (c) and (d).
[14] Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690, at [31]-[34]
[15] Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690, at [36]-[41]
Given these findings, the preconditions for giving judgment pursuant to r 13.05(2)(c) of the GFL Rules are satisfied.
RELIEF
Declaration
I have set out in the Earlier APRA Judgment principles relevant to the granting of declaratory relief on applications for default judgment.[16] On the basis of those principles, I am satisfied there would be utility in granting a declaration that the respondents have infringed APRA’s copyright in the Works, provided the declaration, as framed in APRA’s application, is limited by particulars of the date, time, and place at which, and the means by which, the respondent infringed APRA’s copyright in the Works. That will identify more clearly the respondents’ acts that constituted the infringement of copyright; it will communicate to the public the kinds of acts that constitute infringement of copyright of musical and literary works and deter persons from engaging in such acts; and it will communicate the Court’s disapproval of the respondents’ acts. I propose, therefore, to grant a declaration that is limited by such particulars.
[16] Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690, at [46]
Compensatory damages
APRA has elected to claim damages rather than an account of profits. I have set out in the Earlier APRA Judgment principles relevant to assessing damages under s 115(2) of the Copyright Act for infringement of copyright.[17]
[17] Australasian Performing Right Association Limited v Escape Bar & Night Club Pty Limited & Anor [2017] FCCA 2690, at [51]-[54]
APRA claims as damages the licence fees APRA would have charged the respondents had the respondents taken the licence APRA offered to persons who wished to use the performing rights APRA has in the APRA Repertoire Works. APRA relies on the affidavit of Ms Giuliano, an employee of APRA and the Director of OneMusic Australia (OMA), to establish the licence APRA would have granted to the respondents, and the fees it would have charged the respondents. To that end, Ms Giuliano, whose evidence I accept, deposes to a number of matters, including the following:
(a)On or about 1 July 2019, APRA, AMCOS (that is, Australasian Mechanical Copyright Owners Society Limited), and PPCA (that is, Phonographic Performance Company of Australia Limited) launched a joint initiative under the trading name of OMA to grant and administer licences on behalf of those entities.
(b)APRA is the collecting society in Australia in relation to the performing rights of composers and music publishers. AMCOS is the exclusive licensee in Australia in relation to certain reproduction rights of Australian and international music publishers and songwriters. PPCA is the collecting society representing, among other things, the performing rights and limited reproduction rights in protected sound recordings and music videos owned or controlled by a vast number of record companies, record labels and Australian recording artists.
(c)The fee paid to OMA by its licensees varies according to the licence scheme that applies to the particular licensee’s activities. Fees are based on criteria such as venue capacity, number of persons admitted to a performance, or calculated on a specified rate according to the nature of the activity and the type of music.
(d)Unless a business has a licence from an APRA AMCOS member or a PPCA licensor a business requires a licence from OMA if it performs in public music controlled by APRA, AMCOS or PPCA and it conducts any of the activities that fit within the description of the relevant public performance as described in each OMA licence application form.
(e)One of the licence schemes offered by OMA is the Hotels, Pubs, Taverns, Bars and Casinos licence (HPTBC licence). This licence scheme applies to the performance in public of music by a business operating a hotel, pub, tavern, bar, casino or similar venue.
(f)A HPTBC licence application requires a potential licensee to provide information about the proposed music use, such as: the types of music used; the number of attendees at the premises; the size of any dining area; and the devices used to perform music. That information is used to calculate the licence fee.
(g)According to APRA’s books and records, the respondents have never held any licence with APRA for the public performance of music at the Premises.
(h)To estimate the amounts payable by the respondents for the Premises under a HPTBC licence, it is necessary to estimate the karaoke component, the featured recorded music component, and the recorded music for dance use component.
(i)The total fee that would have been payable by the respondents for the Premises under a HPTBC licence from 1 January 2021 to 30 August 2023 is $46,667.91, being the sum of $7,897.73 (for the karaoke component), $1,391.50 (for the featured recorded music component), and $36,378.68 (for the recorded music for dance use component).
On 23 and 24 August 2023 Mr John, the lawyer for APRA, accessed the Facebook and Instagram pages for the Premises, and caused to be created a number of screenshots and videos.[18] Further, on 29 August 2023 Mr John accessed the Facebook page and website for the Premises and caused to be created a number of screenshots.
[18] I have marked in chambers as exhibit A an email from APRA’s lawyers sent to my Associate on 29 August 2023 which contains a link to the videos.
I am satisfied that the $46,667.91 Ms Giuliano estimated to be the licence fees APRA would have charged the respondents for the period 1 January 2021 to 30 August 2023 fairly reflects the loss APRA has suffered because of the respondents’ infringement of APRA’s performing rights in the APRA Repertoire Works, including the Works.
Injunction
The granting of an injunction under s 115(2) of the Copyright Act is discretionary. Matters that are relevant to the exercise of that discretion include the period over which the infringing conduct has taken place, the flagrancy of the infringement, and other matters that prevent the Court from being satisfied there is no substantial risk the respondents will engage in infringing conduct.[19]
[19] See, for example, Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2016] FCAFC 22, at [178]-[181]
The evidence shows, and I find, that music has continued to be performed on the Premises; and the evidence to which I will shortly refer shows that the respondents have been flagrant in their infringement of APRA’s performing rights in the music that has been performed at the Premises. Unless restrained the respondents will continue to perform or authorise others to perform on the Premises music in infringement of APRA’s performing rights in that music. I therefore propose to grant an injunction in the form APRA claims in its application.
Additional damages under s 115(4) of the Copyright Act
Subsection 115(4) of the Copyright Act provides as follows:
Where, in an action under this section:
(a) an infringement of copyright is established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i)the flagrancy of the infringement; and
(ia)the need to deter similar infringements of copyright; and
(ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff's copyright; and
(ii)whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analog form into a digital or other electronic machine-readable form; and
(iii)any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv)all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
The principles concerning the assessment of additional damages under s 115(4) of the Copyright Act are conveniently set out by Yates J in Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3).[20]
[20] Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3) [2014] FCA 909, at [37]-[53]
Allegations made in the statement of claim (which in the absence of a defence are taken to be admitted), and the evidence reveal the following:
(a)K Illusion is the proprietor of a business known as “K Illusion Karaoke Lounge and Kandy Shop Nightclub” located at the Premises.
(b)The respondents have never held any licence with APRA for the public performance of music at the Premises.[21]
[21] Affidavit C Giuliano 29.08.2023, [21]
(c)APRA corresponded with the respondents 7 times between 11 January 2021 and 6 April 2022. Such correspondence included:
(i)an email dated 11 January 2021 in which APRA (through OMA) informed the respondents that use of copyright music requires a licence, and directed the respondents to a link through which they could apply for a licence;[22]
[22] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-3”
(ii)an email dated 25 January 2021 in which APRA again informed the respondents that they have an obligation to properly licence use of copyright music, and that to secure a licence they needed to complete “the enclosed licence agreement” and return it to APRA “immediately”;[23]
[23] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-3”
(iii)an email dated 1 August 2021 in which APRA again informed the respondents that if they want to continue to play and enjoy using copyright music at the Premises they should “immediately” enter into a licence, otherwise, using copyright music without a licence may lead to legal action;[24] and
[24] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-3”
(iv)an email dated 28 October 2021 in which APRA noted that K Illusion had not entered into a licence agreement, and as a result, the matter had been passed onto APRA’s internal legal team, and if K Illusion fails “within 7 days of the date of this correspondence” to enter into a licence agreement, APRA will have no option but to refer the matter to their “external lawyers”.[25]
[25] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-3”
(d)In an email dated 26 September 2022 APRA’s lawyers referred Mr Yang to the email dated 28 October 2021, and noted, among other things, that music in the APRA Repertoire Works had been performed at the Premises in public, but K Illusion had not entered into a licence with APRA. APRA’s lawyers offered K Illusion a HPTBC licence and demanded that K Illusion return an “accurately completed” HPTBC licence application which was attached to the email.[26]
[26] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-4”
(e)In an email dated 18 October 2022 APRA’s lawyers again demanded that Mr Yang accurately complete and return the licence application attached to the email.[27]
[27] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-4”
(f)In an email dated 9 December 2022 APRA’s lawyers referred Mr Yang to their letter dated 26 September 2022 and email dated 18 October 2022, and noted that APRA had not received any response. After APRA’s lawyers listed the “musical works” that had been performed at the Premises on 2 April 2022, APRA’s lawyers said they remained willing to offer K Illusion a HPTBC licence, however, if APRA did not receive a response, and it “becomes necessary”, they will commence proceedings.[28]
[28] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-4”
(g)In an email dated 23 January 2023 APRA’s lawyers informed Mr Yang that APRA remained willing to offer K Illusion a HPTBC licence.[29]
[29] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-4”
(h)In an email dated 22 March 2023 APRA’s lawyers informed Mr Yang that, unless Mr Yang responded within 14 days to their correspondence, APRA would commence proceedings in this Court.[30]
[30] Affidavit B B John 29.08.2023, [5]; annexure “BBJ-4”
(i)Mr Yang emailed APRA on 13 June 2023. Mr Yang said (errors in original):
My name is Liuchien Yang and I’m the director of K-illusion karaoke lounge. I tried calling you this morning at 11:33am Adelaide time.
I received a Notice of filing and hearing from your company APRA today, and I’m here to get in touch with you.
Over the past years, I have received multiple music license requests just like yours. In the end I was advised to ignore them because we simply don’t know who’s the genuine company that actually protects the artists of the music we play in our venue.
I also question those companies, which artists are they protecting, where would the license fee go if I have agreed to pay them.
There're companies claiming they own Hong Kong artists, one that protects Taiwan artists, and one protecting Chinese artists.
If my company was to pay them all, we would not have business.
Our karaoke machines are cloud based, and everytime we play music, we get charged a subscription fee on their server, it’s not a once off fee. I was told that'll cover all my licensing fees for those artists that're on their karaoke server, because they pay forward to those artists.
There have been occasions of people coming into our venue claiming they own certain song rights on our karaoke machines, and demanding payments on the spot.
This is why I’ve been ignoring companies similar to APRA, CCPA, One Music.
However, today I’ve received a court document from your company, I thought it's time I get in contact with you and learn about your licensing rights.
We’re an Adelaide based karaoke business, Kandy Shop operates under one liquor license, Kandy Shop is in the process of being demolished and returned to the landlord, we currently host only Bollywood nights that bring us hardly any liquor revenue whatsoever, and they don't play any English songs, we do not charge entry fee, the Indian organisers charges an entry fee via purchasing online tickets.
I'm negotiating with Polites (our landlord) about exiting the existing lease because it just doesn't work anymore after everything we've tried.
K Illusion karaoke consists of 11 rooms at the moment.
Please let me know if there's anyone I can get in contact with in Adelaide, and withdraw the court proceedings.
I accept APRA’s submissions that the respondents’ conduct has been flagrant, sustained, and continuing; that the respondents could have taken a licence at any time, but elected not to and, moreover, have ignored APRA’s demands. APRA further submits that, in those circumstances, additional damages in the range of $35,000 to $40,000 against each respondent would be a proportionate response to the scale of the infringements when keeping in mind awards made in other cases, and that the award against each respondent should be separate to mark the Court’s disapproval of each of the respondents’ conduct.
I consider it is appropriate that the respondents be ordered to pay additional damages in the amount of $35,000, and that each respondent be separately liable to pay the additional damages.
Interest and costs
APRA claims interest pursuant to s 211 of the Federal Circuit and Family Court of Australia Act 2021 (Cth) on the amount of compensatory damages of $46,667.91 I propose to order. APRA submits that the Court should be guided by the rate in the Federal Court Practice Note GPN-INT being 4% above the cash rate for each 6 month period. I have calculated interest on this basis from 1 January 2021 to 19 September 2024. The amount of interest is $9,403.84.
APRA seeks an order for costs in the sum of $10,007.70. That sum has been calculated by reference to the amounts set out in Schedule 2 to the GFL Rules. I am satisfied it is appropriate to make an order for costs against the respondents, and that those costs be set in the amount of $10,007.70.
DISPOSITION
I will:
(a)make a declaration in the form I have discussed earlier in these reasons;
(b)grant an injunction in terms of the injunction APRA seeks;
(c)order there be judgment for APRA in the amount of $56,071.75, being the sum of the compensatory damages of $46,667.91 I have assessed, and interest of $9,403.84;
(d)order pursuant to s 115(4) of the Copyright Act that there be judgment for APRA against each of the respondents in the amount of $35,000;
(e)order that the respondent pay APRA’s costs set in the amount of $10,007.70; and
(f)note that the liability of the respondents on the judgment against them for $56,071.75 and on the order that they pay APRA’s costs in the amount of $10,007.70 is joint and several, and that each of the respondents is separately liable for the judgments for $35,000 I will order pursuant to s 115(4) of the Act.
I certify that the preceding thirty (30) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 19 September 2024
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