Bell Sports Inc v R & R Speedsports Pty Ltd
[1995] FCA 1073
•21 Dec 1995
IN THE FEDERAL COURT OF AUSTRALIA )
VICTORIA DISTRICT REGISTRY ) No. VG874 of 1995
GENERAL DIVISION )
BETWEEN: BELL SPORTS INC.
Firstnamed Applicant
AND: REVOLUTION RACE GEAR PTY LTD
Secondnamed Applicant
AND: R & R SPEEDSPORTS PTY LTD
Firstnamed Respondent
AND: AUTOSPORT PTY LTD
Secondnamed Respondent
CORAM: Jenkinson J.
PLACE: Melbourne
DATE: 21 December, 1995
MINUTES OF ORDER
Until further order the respondent R. & R. Speedsports Pty. Ltd. make and keep records of the purchase or other acquisition by it of each new helmet of a description specified in paragraph (i) of the particulars under paragraph 5 of the statement of claim of which it has or shall hereafter take possession and records of each sale by it of such a helmet including in respect of each purchase or acquisition a record of the identity of the person from whom the helmet was purchased or acquired and the terms of the agreement under which it was purchased or acquired and the date on which the agreement was made and including in respect of each sale of such a helmet the date of sale and the price for which the sale was made and including in respect of each agreement by it for sale of more than 3 helmets the identity of the purchaser and the terms of the agreement and the date on which the agreement was made.
The applicants' application for interlocutory relief be otherwise dismissed.
Consideration of the question of costs be adjourned to a date to be fixed.
(Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules)
IN THE FEDERAL COURT OF AUSTRALIA )
VICTORIA DISTRICT REGISTRY ) No. VG874 of 1995
GENERAL DIVISION )
BETWEEN:BELL SPORTS INC.
Firstnamed Applicant
AND:REVOLUTION RACE GEAR PTY LTD
Secondnamed Applicant
AND:R & R SPEEDSPORTS PTY LTD
Firstnamed Respondent
AND: AUTOSPORT PTY LTD
Secondnamed Respondent
CORAM: Jenkinson J.
PLACE; Melbourne
DATE: 21 December, 1995
REASONS FOR JUDGMENT
Application for interlocutory injunctive relief against the first-named respondent.
The first-named applicant ("Bell") claims to own copyright in relation to writing on helmets which it manufactures in the United States of America and on packaging for the helmets and on documents concerning the helmets, which are known as "Bell helmets". The first-named respondent ("R & R") is proved to have purchased in the United States of America from an entity called "Pro Racers", and to have imported into this country, at least 116 Bell helmets, and to have exhibited some of them in public and to have sold some of them. Bell claims in this proceeding relief under s.115 of the Copyright Act 1968 ("the Act") for infringements of the copyright specified in ss. 37 and 38 of the Act. It is not suggested that the helmets imported are not genuine Bell helmets. There are serious questions to be tried in Bell's claim, but the balance of convenience is against the grant of interlocutory injunctive relief. I will order that until further order R. & R. make and keep records of the purchase or other acquisition by it of each new Bell helmet of which it has or shall hereafter take possession and records of each sale by it of a Bell helmet including in respect of each purchase or acquisition a record of the identity of the person from whom the helmet was purchased or acquired, the terms of the agreement under which it was purchased or acquired and the date on which the agreement was made and including in respect of each sale the date of sale and the price for which the sale was made and including in respect of each agreement for sale by it of more than 3 helmets the identity of the purchaser and the terms of the agreement and the date on which the agreement was made.
The second-named applicant "Revolution" claims to be the exclusive licensee in respect of the copyright by reason of the grant to it of a licence in writing, signed by Bell's general manager and addressed to Revolution's managing director, in these terms:
"Dear Mr. Santana
Thank you for your continued interest in Bell Auto Racing Helmets. I have reviewed your recent request to be considered the exclusive distributor of Bell Auto Racing Helmets in Australia.
Based on your request, we have reviewed your account activity for the past nine months. At the present, our records indicate you have made total purchases of $80,571.05 for this period. We would consider purchases of this magnitude to be good, considering that you are trying to develop a new market for Bell. We would however, like to see this number continue to grow given the potential market in Australia.
With this in mind, Bell Auto Racing is willing to grant to you an exclusive distributorship for the Bell Auto Racing Helmets in Australia, on a trial basis. The period of time for which exclusivity is granted, is from April 1, 1994 through December 31, 1995. At which point the account will be reviewed for consideration of extending exclusivity.
Exclusivity, is contingent upon your continuing to meet our present Terms and conditions as a distributor, and by maintaining your Bell Auto Racing product purchases at or above your present level. In addition such rights of exclusivity are not transferable or re-assignable.
We look forward to the continued development of our relationship. If you have any questions or comments please feel free to contact me directly."
It was proved that the licence is to extend beyond 31 December 1995. The definition of "exclusive licence" in the Copyright Act 1968 reads:
"`exclusive licence' means a licence in writing, signed by or on behalf of the owner or prospective owner of copyright, authorizing the licensee, to the exclusion of all other persons, to do an act that, by virtue of this Act, the owner of the copyright would, but for the licence, have the exclusive right to do, and `exclusive licensee' has a corresponding meaning."
The relevant "act" here in question is the act of publishing the copyright works on the Bell helmets offered for sale by Revolution and on packaging and documents associated with the Bell helmets. But it is established that in s.31(1)(a)(ii) of the Copyright Act 1968 the words "to publish the work" mean "to publish the work for the first time" : see Avel Pty. Ltd. v. Multicoin Amusements Pty. Ltd. (1990) 171 C.L.R. 88 at 92, 103-104, 116-118. That is not an act Revolution is alleged to have done. There is no need to imply any other right of copyright into the agreement which the licence in writing evidences to give that agreement commercial efficacy, as there was in the agreement under consideration in Kervan Trading Pty. Ltd. v. Aktas (1987) 8 I.P.R. 584, upon which counsel for the applicants sought to rely. Revolution has not in my opinion made out a prima facie case of infringement because it has not been shown to be an exclusive licensee.
Each party's costs of the application for interlocutory relief will be reserved.
I certify that this and the 3 preceding pages are a true copy of the Reasons for Judgment of the Honourable Justice Jenkinson.
Associate
Dated: 21 December, 1995
VG874 of 1995
Counsel for Applicants : Ms. S. Sparke
Counsel for Firstnamed : Mr. A. Morris Q.C.
Respondent
Solicitors for Applicants : Rosendorff & Associates
Solicitors for Firstnamed : Watkins Stokes Templeton
Respondent
Date of Hearing : 12 December, 1995
Date of Judgment : 21 December, 1995
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