Copyright—Infringement—Copyright article—Literary and artistic work—Exclusive right to publish work—Publish—Infringement of copyright by importation for purpose of sale or trade without licence of owner of copyright—Onus of proof—Threat of action for infringement—Proceedings for declaration that threat unjustifiable—Counterclaim for infringement—Relevance to claim that plaintiff's conduct infringed third party's copyright—Copyright Act 1968 (Cth), ss. 29(1)(a), 31, 37, 38, 202.
Decisions
MASON C.J., DEANE AND GAUDRON JJ. The detailed facts and the relevant provisions of the Copyright Act 1968 (Cth) ("the Act") and of the distribution agreement between Avel Pty. Ltd. ("the distributor") and Williams Electronics Games, Inc. ("Williams") are set out in the judgment of McHugh J. We shall avoid unnecessary repetition of them.
2. We agree with McHugh J.'s identification of the questions involved in the appeal. Those questions fall generally into three distinct groups. First, there are some questions concerning the construction and effect of the distribution agreement. Secondly, there are questions concerning the construction and effect of provisions of the Act. Thirdly, there are questions of admissibility of particular evidence and of the effect of the overall evidence in so far as entitlement to relief is concerned. On the first two groups of questions, which are interrelated and are best dealt with in logical order rather than as separate groups, we are in general agreement with the reasons of McHugh J. That being so, we can express the conclusions which we have reached in relation to those questions in summary form.
3. Those conclusions are: (i) The preferable construction of the distribution agreement is to
read the expression "the Games" as referring not to individual identified machines but to particular models or types of machine;
(ii) The provision of s.29(1)(a) defining when a work "shall be
deemed to have been published" (emphasis added) for the purposes of the Act does not operate as a definition of what is encompassed by the words "to publish" for the purposes of s.31(1). The words "to publish" in s.31(1) should be read as meaning to make public that which has not previously been made public in the copyright territory. We are, of course, conscious of the fact that there is an element of artificiality involved in a literalistic confinement of s.29(1)(a) to defining when a work "has been published" (e.g. for the purposes of determining the subsistence of copyright: see s.32) as distinct from what constitutes the act of publishing (e.g. for infringement purposes: see s.31). That confinement of s.29(1)(a) is, however, dictated by the content of other provisions of the Act (see, in particular, ss.36, 37 and 38), by general concepts of copyright law and by considerations of policy (cf. Infabrics Ltd. v. Jaytex Ltd. (1982) AC 1, at pp 15-17, 22-25; Lahore, Copyright Law, pp 3563-3564; but note Ricketson, The Law of Intellectual Property, (1984), pp 221-222);
(iii) The distribution agreement did…
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
Continue reading Avel Pty Ltd v Multicoin Amusements Pty Ltd
Avel Pty Ltd (the appellant) appealed to the High Court of Australia against the decision of the Full Court of the Supreme Court of South Australia, which had affirmed a judgment in favour of Multicoin Amusements Pty Ltd (the respondent). The dispute concerned the interpretation of a lease agreement and the appellant's entitlement to recover certain payments made to the respondent.
The High Court was required to determine whether the appellant was entitled to recover payments made under a lease agreement for amusement machines, which had been declared illegal and void ab initio by a prior court decision. Specifically, the court had to consider the application of the principle of *ex turpi causa non oritur actio* (no action arises from a dishonourable cause) and whether the appellant's claim for restitution was barred by this principle, given its involvement in the illegal transaction.
The High Court held that the principle of *ex turpi causa* did not preclude the appellant from recovering the payments. The majority reasoned that the appellant's claim was not founded on the illegality of the lease but rather on the respondent's unjust enrichment. They distinguished the present case from situations where a party seeks to enforce an illegal contract or recover damages for breach of an illegal contract. The court applied principles of restitution and unjust enrichment, focusing on whether the respondent had received a benefit at the appellant's expense which it would be unconscionable to retain. The court found that the appellant's participation in the illegal transaction did not prevent it from seeking to recover money paid under a mistake of law or under circumstances where the respondent had been unjustly enriched.
The appeal was allowed, and the judgment of the Full Court of the Supreme Court of South Australia was set aside. The High Court ordered that the appellant was entitled to recover the payments made to the respondent.