Autodesk Inc v Yee

The case of Autodesk Inc v Yee is an important consideration of the application of s.116 of the Copyright Act 1968, which relates to the rights and remedies available to copyright owners in the event of infringement. The central issue before the court was whether damages for conversion, which are to be calculated on the basis of the value of the infringing copies, should be assessed using the price actually obtained for the infringing copies, or whether they should be assessed using an assumed price that would have been obtained had the copies been licensed. This issue arose because the respondent, Mr Yee, had sold unlicensed copies of computer software at a price far below the recommended retail price of licensed copies. The applicants argued that the value of the unlicensed copies should be assessed on the basis of the recommended retail price of licensed copies, while the respondent argued that the value should be assessed on the basis of the actual price obtained for the unlicensed copies.

The court considered the history and interpretation of s.116 of the Copyright Act 1968, which has been the subject of criticism for its potential to produce harsh and unjust results. The court noted that the provision does not confer upon the copyright owner a fictional ownership of the infringing copies for all purposes, but only for the purpose of conferring a right of action for conversion or detention. The court concluded that the provision does not require the attribution of any fictional value to the infringing copies, and that the ordinary principles by which damages are measured should apply. The court found that the measure of damages in conversion is generally the value of the infringing copies, and that the appropriate guide to market value is the price obtained for the copies in arm's length transactions. The court held that it would be inappropriate to make assumptions about the value of unlicensed copies of computer software on the basis of the price of licensed copies, as there was no legitimate market for such unlicensed copies. The court concluded that the applicants were entitled, on the conversion basis, to the sum of $23,530, which represented the price actually obtained for the unlicensed copies sold by the respondent.

The court's decision in Autodesk Inc v Yee provides important guidance on the application of s.116 of the Copyright Act 1968, and on the assessment of damages in conversion for the infringement of copyright. The decision highlights the limited nature of the fictional ownership conferred by the provision, and the importance of assessing damages on the basis of the actual value of the infringing copies. The decision also underscores the need for courts to avoid making assumptions about the value of unlicensed copies of intellectual property on the basis of the price of licensed copies, and to assess damages on the basis of the actual price obtained for the infringing copies.