FEDERAL COURT OF AUSTRALIA
Boyapati v Rockefeller Management Corporation (No 2) [2008] FCA 1375
COPYRIGHT – copyright material uploaded onto website – infringement and conversion – damages – entitlement to conversion damages – entitlement to additional damages – Copyright Act 1968 (Cth) ss 115(2), 115(4), 116
COSTS – principles relevant to an award of costs – whether Court should depart from ordinary rule – groundless contentions – indemnity costs awarded
COSTS – time for taxation and payment of costs – departure from general rule in O 62 r 3(3) of the Federal Court Rules (Cth) – costs to be taxed and paid forthwith
COSTS – liberty to apply for costs to be fixed in gross sum – O 62 r 4(2)(c) of the Federal Court Rules (Cth)
Copyright Act 1968 (Cth) ss 115, 116
Federal Court of Australia Act 1976 (Cth) s 43.
Federal Court Rules (Cth) O 62 r 3(3), O 62 r 4(2)(c)Sutherland Publishing Company v Caxton Publishing Company Limited [1936] All ER 177 referred to
Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 referred to
TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444 cited
Prior v Sheldon (2000) 48 IPR 301 cited
Sony Entertainment (Australia) Ltd v Smith (2005) 64 IPR 18 cited
Ravenscroft v Herbertand New English Library [1980] RPC 193 referred to
Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 referred to
Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 referred to
Re Wilcox: Ex parte Venture Industries Pty Ltd (No 2) (1996) 72 FCR 151 referred to
Abbott vRandom House Australia Pty Ltd [1999] FCA 1540 referred to
Hamod v New South Wales (2002) 188 ALR 659 referred to
Barrett Property Group Limited v Metricon Homes Pty Ltd (No 2) [2007] FCA 1823 referred to
Xat Ky v Australvic Property Management Pty Ltd (No 2) [2007] FCA 1785 cited
Access for All Alliance (Hervey Bay) Inc v Hervey Bay City Council [2007] FCA 974 cited
Jainshe Southern Pty Ltd v Turnbull Cooktown Pty Ltd (No 2) [2007] FCA 903 citedCirillo v Consolidated Press Property Ltd (No 2) [2007] FCA 179 cited
RAY BOYAPATI, ANN BOYAPATI and EDWARD BOYAPATI v ROCKEFELLER MANAGEMENT CORPORATION and DALLAS GIBSON; ROCKEFELLER MANAGEMENT CORPORATION (A CORPORATION IN THE STATE OF ILLINOIS, UNITED STATES OF AMERICA) and DALLAS GIBSON; MEDENTRY (A PARTNERSHIP), ANN BOYAPATI, EDWARD BOYAPATI, RAY BOYAPATI, NIMI BOYAPATI, ACE UMAT (A PARTNERSHIP) and ANZIE PTY LTD (ACN 116 643 308)
VID 1289 OF 2004
KENNY J
9 SEPTEMBER 2008
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 1289 OF 2004
BETWEEN:
AND:
BETWEEN:
RAY BOYAPATI
First ApplicantANN BOYAPATI
Second ApplicantEDWARD BOYAPATI
Third ApplicantROCKEFELLER MANAGEMENT CORPORATION
First RespondentDALLAS GIVSON
Second RespondentROCKEFELLER MANAGEMENT CORPORATION(A CORPORATION IN THE STATE OF ILLINOIS, UNITED STATES OF AMERICA)
First Cross-ClaimantDALLAS GIBSON
Second Cross-ClaimantAND:
MEDENTRY (A PARTNERSHIP)
First Cross-RespondentANN BOYAPATI
Second Cross-RespondentEDWARD BOYAPATI
Third…
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- Case
- [2008] FCA 1375
- Decision Date
CaseChat Overview and Summary
The court found that the respondents had infringed the applicants' copyright by creating and distributing infringing copies of the copyrighted material. The court also held that the applicants were entitled to damages for both copyright infringement and conversion. The court clarified that damages for copyright infringement and conversion are not alternative but cumulative remedies, aligning with the decision in Sutherland Publishing Company Limited v Caxton Publishing Company Limited. However, the court must consider whether the relief under copyright infringement is sufficient to avoid double compensation. In this case, the court found that the relief under copyright infringement was not sufficient, and therefore, damages for conversion could also be awarded. The court then ordered the respondents to pay damages for copyright infringement and conversion, interest on those damages, and restrained them from further infringement. Additionally, the court ordered the respondents to pay costs and make specific disclosures.
Orders
Orders of the court
1. (a) In respect of the said infringements of copyright, the respondents are liable to pay to the applicants damages under subsection 115(2) of the Copyright Act 1968 (Cth) (“the Copyright Act”) and additional damages under subsection 115(4) of the Copyright Act, each to be assessed.
(b) In respect of the said conversions, subject to subsection 116(1C), the respondents are liable to pay to the applicants damages to be assessed under subsection 116(1A) of the Copyright Act.
(c) In respect of the respondents’ liability to pay the applicants damages under subsections 115 (2) and 116(1A) of the Copyright Act, the respondents are liable to pay to the applicants interest up to judgment or a sum in lieu of interest pursuant to section 51A of the Federal Court of Australia Act 1976 (Cth).
(d) The respondents be restrained from, whether by themselves or their servants or agents or howsoever otherwise, infringing copyright in the works in suit.
(e) The respondents pay to the applicants and cross-respondents their costs of the proceeding to date, such costs to be taxed and paid forthwith and 50% of such costs be paid on an indemnity basis.
(f) On or before 16 September 2008, the respondents make discovery of all documents relevant to identifying the number of infringing copies of the works in suit downloaded by students from the Icarus College website or otherwise made available to students via the website or by any other means.
(g) The cross-claims be dismissed.
(h) There be a directions hearing fixed at 9:30 am on 29 September 2008.
(i) The applicants have liberty to apply for an order that the costs in their favour be fixed in a gross sum in accordance with O 62 r 4(2)(c) of the Federal Court Rules (Cth); and the parties otherwise have liberty to apply on reasonable notice.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Established by: KENNY J
The respondents further submitted that, though “within the letter of the law”, the applicants had used their webpage to deter prospective students from using the respondents’ services. They added that “[b]y comparing the gross income from sales of both parties from the commencement of these proceedings no apparent loss of revenue by the applicants appears but rather a substantial increase”.CONSIDERATION Much of the respondents’ submissions are relevant, if at all, to the assessment of damages that is to come. I have, however, borne them in mind (without necessarily referring to them) in what follows.(a) Conversion damages Section 116 of the Copyright Act treats a copyright owner as if the copyright owner were the owner of the infringing article, with the consequence that the copyright owner is entitled to sue for conversion in relation to an infringing copy. In reasons for judgment delivered on 2 July 2008, I found that the applicants owned the copyright in the works in suit and that, by virtue of s 116, the infringing copies created by the respondents were to be treated as the property of the applicants. An action for conversion lay against the respondents. I held that a defence based on s 116(2) of the Copyright Act was unavailable in the circumstances. Any relief that the court grants in an action for conversion is in addition to any relief that the court may grant under s 115 (see s 116(1B)). This entitlement is, however, subject to s 116(1C), which provides that the Court may not grant relief in an action in conversion if the relief that the Court proposes to grant under s 115 is, in the Court’s opinion, a sufficient remedy. Subject to s 116(1C), the Copyright Act contemplates that the Court may grant damages in respect of copyright infringement and in respect of conversion. In Sutherland Publishing Company Limited v Caxton Publishing Company Limited [1936] All ER 177, the English Court of Appeal decided that the remedies given by ss 6 (for breach of copyright) and 7 (for conversion) of the English Copyright Act, 1911 were cumulative, not alternative remedies. Lord Wright, MR, explained (at 180-81) that:Both are claims for a wrong, each wrong being different from the other. The former is for a wrong done to an incorporeal right, copyright, the latter is for conversion of particular chattels, the infringing copies. The measure of damages is different. In the latter case the measure is the value of the copies, which by force of the statute are deemed to be the property of the plaintiff, from the mere fact of being brought into existence; whereas in the other case, the measure of damage is the depreciation caused by the infringement to the value of the copyright, as a chose in action. It was strenuously contended that where the infringement consisted in the multiplication and sale of copies of a work, the damages under the two sections would overlap and the injustice of giving double compensation would be committed. It may be true that in some cases there may be an overlapping of the damages under the two sections, but, as I have already explained, there are two separate and diverse causes of action, each of which must receive appropriate consideration when it comes to the question of damages. … It must be left to the good sense of the tribunal which assesses the damages to avoid giving excessive damages.Subsection 116(1C) addresses the considerations raised in this second paragraph, requiring the Court to form an opinion as to the sufficiency of the relief to be granted under s 115 of the Copyright Act. (The formulation of the measure of damages for copyright infringement in the first paragraph of the above passage may be misleading in some circumstances: see, e.g., Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 (“Autodesk”) at 475 per Wilcox J.)