Australasian Performing Right Association Ltd v Munday, C.P

[1991] FCA 733

Re: AUSTRALASIAN PERFORMING RIGHT ASSOCIATION LTD.
And: CHRISTOPHER PAUL MUNDAY and CEE JAY HOLDINGS PTY. LTD.
No. T G18 of 1990
FED No. 733
Copyright and Designs

COURT

IN THE FEDERAL COURT OF AUSTRALIA

TASMANIA DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)

CATCHWORDS

Copyright and Designs - authorization of public performance of work - whether infringement by playing recordings - whether respondent had "reasonable grounds for suspecting" infringement - width of injunction.

Copyright Act 1968, ss.27, 31, 36, 39, 115

HEARING

BRISBANE

#DATE 27:11:1991

Counsel for the Applicant: Mr J.M. Ireland QC with Mr R.J. Webb

Solicitors for the Applicant: Mallesons Stephen Jaques

In person for the Respondents: Mr C.P. Munday

ORDER

The first and second respondents be restrained and an injunction is issued restraining them and each of them by themselves, their servants or agents from performing in public any of the following musical works:

the works entitled "White Wedding", "Eagle Rock", "Choir Girl", "I'll Make You Happy", "Goodbye Astrid" and "Ruby Tuesday".

The respondents pay the applicant the sum of $1,000.

The respondents pay the costs of the applicant of and incidental to these proceedings, to be taxed.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This is an application for injunctions and damages in a copyright case. Pleadings have been exchanged and affidavits filed on both sides and mutual discovery has been given. The case came on for hearing, it appears, pursuant to an application for judgment on the basis that the respondents have no defence, but evidence was led (including oral evidence from the first respondent) and the matter was fully argued; the hearing was treated as the trial.

1. The first respondent controls the second respondent, which carried on business at relevant times at a place called the Errol Flynn Tavern in Liverpool Street, Hobart. The first respondent has also, on the evidence, performed as a member of a band which has played live music at those premises; the band is called "DC Tenz".

2. In brief, the applicant's case is that it is the proprietor of the copyright in many musical works and that the respondents have performed some of them at the Errol Flynn Tavern without any right to do so. The respondents argued, through the first respondent, that they did not know that the works in question were the subject of copyright owned by the applicant and that the applicant had behaved unreasonably in its demands for fees as the price of a licence.

3. Evidence was given by the applicant's national licensing manager, Ms Lovell, that on 19 October 1990, she went to the tavern at Liverpool Street and there were played during her visit certain works which are, according to the applicant's case, the subject of copyright vested in it. Some of the works were performed by the band I have mentioned, "DC Tenz", in which, according to Ms Lovell, the respondent was the lead singer, guitarist and director. Other pieces were played either on the background music system or on a juke box.

4. Ms Lovell also said that she spoke to the first respondent about the music at the tavern and was told (in substance) that he did not want to speak to Ms Lovell. Later in the conversation, the first respondent invited Ms Lovell to send a list of the songs under the control of the applicant, but she declined to do so.

5. There is evidence from Mr A.J. Stern, the applicant's distribution manager, that what the applicant describes as its "repertoire" consists of works in excess of two million titles. They are recorded in a computer system and also a card index system. Mr Stern has sworn, in effect, that a printout of all the works giving their details would be extremely voluminous.

6. Evidence has also been given on behalf of the applicant to establish its copyright in the works which, according to Ms Lovell's evidence, were performed on the occasion I have mentioned. That evidence includes deeds of assignment, either from the author of the works directly to the applicant, or deeds of assignment to the Performing Right Society Limited (a United Kingdom entity) which has, in turn, executed an assignment in favour of the applicant. There appears to be no need to set out the effect of the evidence of ownership of copyright in more detail than I have done.

7. The first respondent has made an affidavit stating that in 1984 he spoke to a Mr Nigel Sweeting, an employee of the applicant and asked for a list of the works to which the applicant claimed to be entitled. He also offered, according to this evidence, to provide Mr Sweeting with a list of musical items to be played to ascertain if any of them were copyright. Mr Sweeting rejected these offers. He made a similar offer in 1991 to Ms Lovell. The affidavit also said that the first respondent was willing to send the applicant a written request "detailing works which I intend to play in the future ...".

8. In his oral evidence, the first respondent continued to assert that he did not believe that any of the works in question "was copyrighted by APRA at any stage". He also referred to the evidence which was given on behalf of the applicant that nearly all musical works played in Australia had a copyright owned by it and pointed out (as I understood the matter) that he had no means of knowing which works were not in that group.

9. The primary contention advanced by Mr Ireland QC, who led Mr R.J. Webb for the applicant, was that there was an infringement under s.36 of the Copyright Act 1968 ("the Act"), which section reads in part as follows:
   "(1) Subject to this Act, the copyright in a literary, dramatic,
   

musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in

Australia of, any act comprised in the copyright".

Under s.31 of the Act:

"For the purposes of this Act, unless the contrary intention appears,

copyright, in relation to a work, is the exclusive right:

(a) in the case of a literary, dramatic or musical work, to do all or

any of the following acts:

...

(iii) to perform the work in public;

..."

1. Mr Ireland argued that on the evidence both the works played live and those of which recordings were played were caught by this provision. He argued that to play a recording of a work is to perform it and relied upon the decision in Australasian Performing Right Association Ltd. v 3DB Broadcasting Co. Pty. Ltd. (1929) VLR 107. That case was decided under the Copyright Act 1912 and in it an injunction was granted to restrain the broadcasting of musical works reproduced from gramophone records and pianola rolls. The case certainly supports the proposition that to broadcast a reproduction obtained from a gramophone record is to perform it: see p 110. It seems to me, however, that a simpler answer to the problem is to be found in s.27 of the present Act which defines "performance" so as to include aural presentation "by the use of a record or by any other means" and gives a corresponding meaning to a reference in the Act to performing a work. The word "record" is broadly defined: see s.10.

2. Reference was made to s.39 of the Act which deals with infringement by permitting a place of public entertainment "to be used for the performance in public" of a work. Under s.39(2), knowledge is relevant. The question was discussed at the hearing whether s.39 has any bearing on the facts of this case.

3. In my opinion, it has not. There was no dispute that the respondents authorised the performances which took place. In my opinion, insofar as the first respondent relied upon s.39 and gave evidence concerning the state of his knowledge as bearing upon a s.39 defence, he pursued a futile contention. The state of mind of the respondents appears to be relevant only under s.115(3) which reads as follows:
   

"Where, in an action for infringement of copyright, it is established that an infringement was committed but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the

infringement was an infringement of the copyright, the plaintiff is not entitled under this section to any damages against the defendant in

respect of the infringement, but is entitled to an account of profits in respect of the infringement whether any other relief is granted under this section or not".

1. It will be noted that it is not enough that it be shown that the defendant was unaware that the act complained of was an infringement of copyright; the action can succeed if it merely appears that the alleged infringer had reasonable grounds for suspecting that the act was an infringement of copyright. Here, I must say it seems very plain that there were grounds for suspicion. At relevant times, the respondents understood that the applicant claimed copyright in practically all the works which were likely to be performed in the tavern. It is true that, as the first respondent pointed out, he had no means of knowing precisely which works were not the subject of such a claim and it is also true that, so far as the evidence shows, he had never had the proofs of the claim presented to him. Nevertheless, it is impossible to hold on this evidence that the respondents had no reasonable grounds for suspecting the matter mentioned in s.115(3) and that defence must fail.

2. A number of questions remain as to the nature of the relief which should be granted. The applicant asked for injunctions in respect of certain specific works which had been played at the tavern and "all other musical works the sole right to perform in public of which for Australia is vested in the applicant ...". It appears that injunctions have been granted in a similar form: see for example Australasian Performing Right Association Ltd. v Miles (1961) 79 WN (N.S.W.) 385 at 388. The evidence discloses, however, that there are some difficulties inherent in granting such an order. For perfectly good practical reasons, the applicant does not wish to undertake the heavy burden of informing persons such as the respondents of the identity of all the works of which it claims copyright at any particular time. If the respondents play any musical record at all, it is likely, but not certain, that doing so would be a breach of an injunction in the form the applicant desires. The question whether there was an infringement in relation to a particular performance could, however, only be ascertained by searching the applicant's records. But the injunction could not properly restrain the playing of any music claimed by the applicant as being subject to copyright vested in the applicant; the applicant's claim might be mistaken.

3. The practical answer to this is, of course, for the second respondent to obtain a licence from the applicant covering all the works in which the applicant is interested.

4. Generalising the proposition put forward on behalf of the applicant, if a respondent is shown to have infringed its copyright over a substantial period of time, then by obtaining an injunction the applicant may convert what might otherwise be merely a civil matter into an act bringing a risk of imprisonment for contempt. Here, the applicant would say that the respondents have a bad record of flouting the applicant's copyright but, on the other hand, there is evidence of conflicting demands upon them. Further, it appears to me that the costs which, in my view, must go against the respondents will constitute such a substantial penalty as to make a recurrence of breaches of the applicant's copyrights by the respondents less likely. It is no doubt possible to obtain an injunction relating to millions of works in a collection of changing composition, of which no list can be published. But in the circumstances of this case, in which the respondents have now for the first time had a determination of the applicant's rights against them, I am disinclined to include in the injunction all the works in the "repertoire".

5. As I have mentioned, the applicant also seeks damages or an account. The evidence is exiguous, but it appears to me that, as Mr Ireland submitted, it is better to try to fix a sum and that will be done; the damages will be $1,000. The orders of the Court will therefore be:
   

That the first and second respondents be restrained and

an injunction is issued restraining them and each of

them by themselves, their servants or agents from

performing in public any of the following musical works:

the works entitled "White Wedding", "Eagle Rock", "Choir

Girl", "I'll Make You Happy", "Goodbye Astrid" and "Ruby

Tuesday".

That the respondents pay the applicant the sum of $1,000.

That the respondents pay the costs of the applicant of

and incidental to these proceedings, to be taxed.