Australasian Performing Rights Association Ltd v Hardware Lane Pty Ltd

[2016] FCCA 3007

FEDERAL CIRCUIT COURT OF AUSTRALIA

AUSTRALASIAN PERFORMING RIGHTS ASSOCIATION LTD v HARDWARE LANE PTY LTD & ORS [2016] FCCA 3007

Catchwords:
COPYRIGHT – Infringement of copyright – whether the infringements by the respondents were deliberate – compensatory damages to cover the licensing fees – permanent injunction to restrain the respondents – costs fixed – damages awarded.

Legislation:

Copyright Act 1968, ss.31, 36, 115, 126.

Federal Circuit Court Rules 2001, r.13.03C(1)(e).
Federal Circuit Court Act 1999, s.76.

Applicant: AUSTRALASIAN PERFORMING RIGHTS ASSOCIATION LTD

First Respondent:

HARDWARE LANE PTY LTD

ACN 601 030 620

Second Respondent:

THE JAMES HOTEL PTY LTD

ACN 160 074 519

Third Respondent: DAVID WILLIAM JAMES

File Number: SYG 1599 of 2016

Judgment of: Judge Street

Hearing date: 22 November 2016

Date of Last Submission: 22 November 2016

Delivered at: Sydney

Delivered on: 22 November 2016

REPRESENTATION

Solicitors for the Applicant:

Mr A Doctor

Banki Haddock Fiora

ORDERS

1. Pursuant to r.13.03C(1)(e) of the Federal Circuit Court Rules 2001 the proceedings be heard on all issues except s.115(4) of the Copyright Act 1968 (Cth).

2. A declaration that the First and Third Respondents have infringed the Applicant’s copyright in the following musical and literary works (First Works):

   (a) Do You Remember music;

   (b) Do You Remember lyrics;

   (c) How Bad Do You Want It music;

   (d) How Bad Do You Want It lyrics;

   (e) Rave After Rave music;

   (f) Rave After Rave lyrics;

   (g) Rock Your Body music;

   (h) Rock Your Body lyrics;

   (i) Turn Down For What music;

   (j) Turn Down For What lyrics.

3. A declaration that the Second and Third Respondents have infringed the Applicant’s copyright in the following musical and literary works (Second Works):

   (a) I Ran music;

   (b) I Ran lyrics;

   (c) Black Velvet music;

   (d) Black Velvet lyrics;

   (e) Call Me (Anytime) music;

   (f) Call Me (Anytime) lyrics;

   (g) You Spin Me Round (Like a Record) music;

   (h) You Spin Me Round (Like a Record) lyrics;

   (i) Pump Up the Jam music;

   (j) Pump Up the Jam lyrics;

   (k) We Built This City music;

   (l) We Built This City lyrics;

   (m) All I See music;

   (n) All I See lyrics;

   (o) Lovefool music;

   (p) Lovefool lyrics.

4. An order that the First and Third Respondents be restrained from:

   (a) performing the First Works in public;

   (b) performing in public the musical and literary works referred to in the Schedule APRA Repertoire annexed and marked “A”; and

   (c) authorising the performance in public of the First Works or any work contained in the APRA Repertoire.

5. An order that the Second and Third Respondents be restrained from:

   (a) performing the Second Works in public;

   (b) performing in public the musical and literary works referred in the APRA Repertoire;

   and

   (c) authorising the performance in public of the Second Works or any work contained in the APRA Repertoire.

6. Damages against the First and Third respondents pursuant to s.155(2) of the Copyright Act 1968 (Cth) awarded in the amount of $708.04.

7. Damages against the Second and Third respondents pursuant to s.155(2) of the Copyright Act 1968 (Cth) awarded in the amount of $7,968.58.

8. Respondents to pay the Applicants costs to date fixed in the sum of $8,541.00.

9. Fix the hearing of additional damages of s.115(4) of the Copyright Act 1968 (Cth) on Monday 12 December at 2:15pm.

10. I direct the Respondents to file and serve any evidence in which they wish to rely in respect of the additional damages hearing on or before 5 December 2016 together with any submissions.

11. Applicant file and serve any affidavit in response by 8 December 2016.

12. Liberty to apply on 2 days’ notice.

Annexure “A”

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 80,000 Australian 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 copyright in respect of their applications to the performance of the works in public. At present there are about 10 million works listed in the catalogue. The items in the catalogue may be inspected by arrangement with the Applicant.

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SYDNEY

SYG 1599 of 2016

AUSTRALASIAN PERFORMING RIGHTS ASSOCIATION LTD

Applicant

And

HARDWARE LANE PTY LTD

ACN 601 030 620

First Respondent

THE JAMES HOTEL PTY LTD

ACN 160 074 519

Second Respondent

DAVID WILLIAM JAMES

Third Respondent

REASONS FOR JUDGMENT

Background

1. This is a matter within the Court’s jurisdiction under s.131D of the Copyright Act 1968 (Cth) (“the Act”). The applicant commenced proceedings on 23 June 2016 seeking declaratory relief, injunctive relief, compensation or inquiry as to damages as well as additional damages against two corporate entities, joined as the first and second respondents, and a third respondent, David William James.

2. On the first return date, being 14 July 2016, there was no appearance by the respondents, despite evidence of service provided by the applicant.

3. The Court made orders fixing the matter for hearing on 3 October 2016 and for the filing of evidence and submissions by the applicant. The orders also included liberty to apply on two days’ notice.

4. On 8 September 2016, the Court made orders vacating the hearing date on 3 October 2016 and listed the matter for hearing at 9.30am on 22 November 2016. Evidence has been filed in relation to notifying the first and second respondents via their registered office of the hearing date, as well as service upon the third respondent.

5. The matter has been called outside the Court and the respondents have failed to appear. At 11.17 pm on 21 November 2016, an email was sent by the third respondent to the Court’s associate which was not copied to the applicant. That email relevantly provided:-

   To whom it may concern

   I will not be able to attend the hearing and wish for the matter to be rescheduled – currently scheduled for 22nd November at 9:30 am.

   I do apologise for the inconvenience but I have had urgent family matters which have stopped me from being able to attend.

   I live in Victoria and my mother of 85 years has terminal cancer (a tumour that extends from her lower back & wrapped along her spine and is inoperable) and the family have been called to her bedside 4 times in the past week, as she was expected to pass away. While she is still with us, we have been advised to be ready as she could pass at any time.

   I do intend to defend this claim fully and seek an adjournment to a suitable date in the new year if possible.

   Sincerely

   David James

Consideration of the request for an adjournment

1. In light of the email, the Court is satisfied that the respondents were well aware of the hearing date and there has been a failure by the respondents to participate in any meaningful way in the hearing to date.

2. The request for an adjournment is not supported by any evidence and the Court raised with the applicant whether the matter should proceed in whole or in part or be adjourned. The applicant opposed an adjournment and sought to have the matter proceed on all issues except s.115(4) of the Act.

3. The failure of the respondents to engage in the Court process to date significantly undermines and diminishes the substance of the alleged grounds for an adjournment identified in the email dated 21 November 2016.

4. The Court is not satisfied that an adjournment is warranted in the interests of the administration of justice and accepts the submission of the applicant that proceeding on all issues other than s.115(4) is an appropriate course.

The issue of additional damages

1. The Court takes into account that the additional damages under section 115(4) of the Act, that might be ordered in the present case, have a substantial deterrent function and that the respondents will have a further opportunity if they wish to engage in relation to the hearing of the additional damages.

2. The participation by the respondents in that further hearing under s.115(4) of the Act or their failure to do so and the compliance by the respondents with the orders made by the Court today will be relevant considerations in relation to the additional damages.

Application of r.13.03C(1)(e) of the Federal Court Rules 2001

1. It is in those circumstances, the Court made an order under rule 13.03C(1)(e) of the Federal Court Rules 2001 (“the Rules”), to proceed with the hearing on all issues except s.115(4) of the Act.

Consideration

Subsistence

1. The applicant owns the copyright in 13 musical and associated literary works listed in the application. The applicant also owns or controls the copyright in the APRA Repertoire which was defined in the Schedule. The Court notes the presumption in relation to copyright under s.126 of the Act.

2. There has been no meaningful engagement by the respondents and they have not put in issue the subsistence of copyright and have not disputed APRA’s ownership of that copyright. Accordingly, both presumptions under s.126 of the Act apply to each of the individual literary and musical works and the APRA repertoire.

3. The Court accepts that copyright subsists in each of the works in each of those categories and that APRA is the owner of that copyright for the purpose of authorising public performance of those musical works in Australia. The Court accepts that the applicant has copyright in the 10 musical works or lyrics identified as the first works in the statement of claim. 

4. The Court finds that the applicant has copyright in the musical and literary works in the 16 literary and musical works described as the second works in respect of which an assignment has been made between the author and the performing rights society in that author’s country of residence and that there is a reciprocal agreement assigning the licensing rights between that society and APRA. 

5. The Court is satisfied that the applicant has demonstrated that copyright subsists in each of the works, being the primary and secondary works, and that APRA is the owner of the copyright in each of those works as it applies to authorising the public performances in Australia. 

Infringement of Copyright

1. The Court finds that there has been infringement of the applicant’s copyright by public performance of the said works at two venues, being The Mill Restaurant and Charlie’s Bar at 71 Hardware Lane, Melbourne, Victoria and also at the James Hotel at 16/439 Docklands Drive, Docklands, Victoria.

2. The right to authorise the public performance of musical works is one of exclusive rights enjoyed by the owner of the copyright under s.31(1)(a)(iii) of the Act. Evidence has been adduced by the applicant of attendance at those sites establishing the live performance taking place at those sites.

Infringement – First Works

1. The Court finds that the first works were performed in public at The Mill Restaurant and Charlie’s Bar by means of background music. The Court finds the public performances occurred between 8.45 pm and 9.45 pm on 4 September 2015. The Court finds that other works in the APRA repertoire were also performed and all performances were done without the licence of APRA. The Court finds that at the time of the performances the business of The Mill Restaurant and Charlie’s Bar was owned by the first respondent. 

Declaratory and injunctive relief against first and third respondents

1. The Court finds that the third respondent was the sole director of the first respondent and the beneficial owner of all shares in the first respondent as such, the corporate mind of the first respondent. The Court finds that the third respondent authorised together with the first respondent the performances in Australia of the said musical and literary works. The Court finds that the first and third respondent infringed the applicant’s copyright contrary to s.36(1) of the Act.

2. The Court finds that the applicant is entitled to the declaratory and injunctive relief sought against the first and third respondents, having infringed the copyright of the applicant.

Infringement – Second Works

1. The Court also finds that the second works were performed in public at the James Hotel by means of live artist performance and background music. The Court finds this occurred between 8.38 pm and 9.40 pm on 25 May 2014. The Court also finds that other works in the APRA repertoire were also performed and all performances were done without a licence of APRA. 

2. The Court finds that at the time of the relevant performance, the business of the James Hotel was conducted by the second respondent.  The Court finds that the third respondent was the sole director and beneficial owner of all shares in the second respondent and was at the relevant time the corporate mind of the second respondent. The Court finds that the third respondent together with the first respondent authorised the doing in Australia of the acts that comprised the infringement of the applicant’s copyright at the James Hotel. 

3. The Court finds that the second and third respondent infringed the copyright of the applicant of the second works contrary to s.36(1) of the Act. The Court finds that the applicant is entitled to the declaratory and injunctive relief in respect of the second and third respondent’s infringement of the copyright in the second works.

Declaratory and injunctive relief against the second and third respondents

1. The Court is satisfied that this is an appropriate case in relation to which there should be the grant of a permanent injunction against the respondents in respect of the said infringements. 

2. The Court finds that the acts of the respective respondents in the said infringement were done knowing that the respective respondents did not have a licence from the applicant to do those acts, and knowing that to do those acts without a licence of the owner of the copyright in the relevant works in the respective musical and literary works constituted an infringement of copyright on the works. 

3. The Court finds that in the circumstances the respondents did those acts so as to avoid the payment of licence fees to the applicant and for the purpose of the respondents obtaining financial benefit. The Court finds that the infringements in the present case by the respective respondents were deliberate. The Court accepts the evidence adduced on behalf of the applicant in relation to the calculation of the licensing fees payable in relation to the musical and literary works.

Compensatory Damages  

1. The applicant decided to seek compensation rather than an inquiry. The Court finds that the licensing fees should be the subject of compensatory damages under s.115(2) of the Act in respect of the first and third respondents amounts to $649.37.

2. The Court finds that the first and third respondents have caused the applicant damages in the sum of $649.37 by reason of the said infringement of the applicant’s copyright and the damages should be awarded in that sum under s.115(2) of the Act.

3. The Court accepts the evidence advanced by the applicant in relation to the licensing fees that should have been paid by the second and third respondent in respect of the performance of the literary and musical works amounting to $6,902.94.

4. The Court finds that the applicant has suffered damages within s.115(2) of the Act by reason of the second and third respondents’ infringement of the applicant’s copyright in the sum of $6,902.94.

5. The Court finds that the second and third respondents are liable to pay the applicant damages for the infringement of the applicants copyright under s.115(2) of the Act in the sum of $6,902.94.

6. The Court finds that interest should be awarded pursuant to s.76 of the Federal Circuit Court of Australia Act1999 on the said damages under s.115(2) of the Act. The Court finds that the interest payable to date with respect of the first and third respondents amounts to $58.67 and interest in respect of the second and third respondents amounts to $1,065.64.

Fixed Costs

1. The Court also accepts that professional fees and disbursements have been incurred by the applicant.

2. The Court accepts that this is an appropriate case in which to fix costs. The Court fixes the applicants costs to date in the sum of $8,541.00.

I certify that the preceding thirty-six (36) paragraphs are a true copy of the reasons for judgment of Judge Street

Date: 1 December 2016