Bulurru Australia v Oliver

[2000] NSWSC 580

Reported Decision: [2000] 49 IPR 384
[2000] AIPC 91-574

New South Wales

Supreme Court

CITATION:	Bulurru Australia v Oliver [2000] NSWSC 580
CURRENT JURISDICTION:	Equity Division
FILE NUMBER(S):	SC 4495/95
HEARING DATE(S):	22-23 May 2000
JUDGMENT DATE:	28 June 2000
PARTIES :	Bulurru Australia Pty Limited (Plaintiff/Cross Defendant) v Dale James Oliver (Defendant/Cross Claimant)
JUDGMENT OF:	Davies AJ

COUNSEL :	P/XD: Mr R W V Gray, Ms S D Ocampo D/XC: Mr C Evatt, Mr M K Rollinson
SOLICITORS:	P/XD: Denes Ebner D/XC: Friend & Hazard
CATCHWORDS:	Copyright - Aboriginal designs - whether reproduced - whether claim precluded by the principles of Res Judicata and issue estoppel.
LEGISLATION CITED:	Copyright Act 1968 (Cth), ss 14, 31, 36
CASES CITED:	King Features Syndicate Incorp v O and M Kleeman Ltd [1941] AC 417 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 55 SR(NSW) 162 Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601; 1B IPR 186 In re South American and Mexican Co; Ex parte Bank of England [1895] 1 Ch 37 Chamberlain v Deputy Commissioner of Taxation (1988) 164 CLR 502 Rogers v The Queen (1994) 181 CLR 251 Turner v London Transport [1977] ICR 952 Henderson v Henderson (1843) 3 Hare 100; 67 ER 313 Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589
DECISION:	See paragraph 46.

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION

DAVIES AJ

28 JUNE 2000

4495/95 - BULURRU AUSTRALIA PTY LIMITED v Dale James OLIVER
JUDGMENT

1    HIS HONOUR: In these proceedings, Dale Oliver claims, by way of cross-claim filed on 29 January 1998, an order that Bulurru Australia Pty Limited ("Bulurru") be restrained from infringing his copyright in certain designs. Mr Oliver seeks also, inter alia, an injunction, damages and/or an account of profits. The claim as stated in the cross-claim, and as argued, is whether Bulurru breached Mr Oliver's copyright. It is not contended that Bulurru passed off the offending designs as designs of Mr Oliver.

2    At the hearing, Mr C Evatt of counsel, with him Mr M K Rollinson of counsel, appeared for Mr Oliver. Mr R W V Gray of counsel, with him Ms S D Ocampo of counsel, appeared for Bulurru.

Introduction

3    Mr Oliver is an artist of Aboriginal descent, belonging to the Kukuyalanji people of Northern Queensland. In addition to creating works of art, Mr Oliver has produced designs to be applied to goods such as T-shirts and art panels. The designs which are the subject of the present proceedings are five such designs. Each of the designs depicts fauna in association with small human or spirit figures. The drawing in each case is enclosed within a border which has dots, circles and lines reflective of the technique used by artists of the central desert to depict land, waterholes and tracks. The five designs are named: Barramundi Hunting, Kangaroo Tracking, Goanna and Echidna, Jabiru and Dancers, and Dolphins.

4    It is not in dispute that Mr Oliver is an artist with a substantial reputation. The subject designs are pleasing and attractive. They have an air of originality and competence. In part this comes from the use of colours. The drawings segment the fauna by lines filled in by dots, semicircles, zigzags and so on. Different colours are used throughout the segments. The strength of the designs is enhanced by the fact that the fauna and the human figures are given a character consistent with spirit-like beings. The whole effect is sophisticated.

5    Vivien Johnson, the author of a number of books on Aboriginal art, explained the nature of Mr Oliver's work by saying that art in the area of Cairns, where Mr Oliver was born and brought up, reflected the cultures of both the original indigenous people and of later arrivals, and that the motifs in the designs were an expression of the Aboriginal history of the Cairns region. Ms Johnson said that Mr Oliver's use of the border incorporating the central desert techniques was unusual and that such other works, as replicated this border, were likely to have been adapted from Mr Oliver's works. Mrs Bronwyn Bancroft, an Aboriginal artist who is well known in the field of indigenous art, spoke favourably of Mr Oliver's works saying that it had a distinct integrity. I agree with those views.

6    It is not in dispute that Mr Oliver's designs are original and that he has copyright in them.

7    Bulurru is a manufacturer of goods such as T-shirts and art panels, which it sells by wholesale and which are then sold by retail, principally to the tourist trade. In 1992, Bulurru entered into a written agreement with Mr Oliver whereby Bulurru was licensed to produce goods carrying five of Mr Oliver's designs. Those designs included four of the subject designs but not the Dolphins design, which presumably was created later. Since then, Bulurru has produced goods bearing Mr Oliver's designs. The evidence shows that the subject designs have been successful in the marketplace.

8    In 1994, there were disagreements between Bulurru and Mr Oliver and, on 16 August 1994, Mr Oliver sought to reject a purported renewal by Bulurru of its licence agreement for a further three years. On 19 December 1994, Bulurru (then called Jemrose Pty Ltd) commenced proceedings in this Court seeking a declaration that its option to renew had been validly exercised.

Bulurru's Designs

9    On a date which is unknown but which appears to have been about the time of the dispute between Bulurru and Mr Oliver, Bulurru sought designs from a graphic design firm called "Think Positive". Five designs were produced. They were or are now called: Barramundi Australia, Kangaroo Australia, Goanna Australia, Brolga Australia and Dolphin Australia. Aspects of these designs reflect aspects of Mr Oliver's designs. There is such a similarity between the new designs, which I shall call "Bulurru's designs", and Mr Oliver's designs, that I have no doubt that the designer of Bulurru's designs had before him or her either copies of Mr Oliver's designs or photographs thereof. The number of similarities between the designs and the fact that the subject matter of each of Mr Oliver's five designs was replicated makes this conclusion inevitable.

10    Vivien Johnson said, in her evidence, that Bulurru's designs were "substantially derived or adapted from" Mr Oliver's designs and that "I find it inexplicable that they are so similar unless one was copied from the other". Bronwyn Bancroft said, in her evidence, that "Dale Oliver's work is original" and "I would say the other one is wholly derivative and adapted from Dale's work". I agree with that evidence insofar as I am satisfied that the designer of Bulurru's designs had Mr Oliver's works before him or her and sought to produce designs that could be used in lieu of Mr Oliver's designs.

11    The only affidavit filed on behalf of Bulurru which dealt with this issue was one sworn by Mr Sam Piller, a director of Bulurru. He deposed that Bulurru's designs were created in 1994 by a person known as Vicky, who was in partnership with Penny McIntyre in the firm "Think Positive". Mr Piller deposed that he was informed by Penny McIntyre that the whereabouts of Vicky Barbosis was unknown to her. However, that was not the end of the matter. The legal representatives for Mr Oliver located Vicky Barbosis, now Vicky Murray, and gave her address to the solicitors for Bulurru. Vicky Murray was called by counsel for Bulurru. She said that Bulurru's designs were not hers, that she had never seen them before and that she had not been involved in their production. Accordingly, this evidence threw no light upon the reason why the designs were created or what instructions were given to the designer. Bulurru's case was closed with the evidence in this state.

12    In the course of Mr Gray's address, I pointed out the state of the evidence on this issue. Mr Gray then sought leave to call oral evidence about the matter. His application was not opposed. I granted leave. Mr Gray first recalled Mr Piller. Mr Piller was asked why Bulurru had given instructions for the preparation of Bulurru's designs. Mr Piller gave this evidence in chief:

"Q. Why were the panels produced?
A. We had problems with Mr Oliver at some stage and the company decided that we should have other designs like kangaroos and barramundi, which we have in any case, other designs than the kangaroo design in our range and other ranges in the marketplace which depict Australian animals such as kangaroos, koalas, barramundi and other animals, we decided to have another range of animals produced for the company."

In further cross-examination, Mr Piller, at first, gave this evidence:

"Q. At that stage you were having problems with Mr Oliver, is that right?
A. That's correct."

However, later in the cross-examination, Mr Piller denied that the new designs had been sought as a substitute for Mr Oliver's designs, should the licence be cancelled. Mr Piller gave this evidence:

"Q. Didn't you say in evidence to my friend just a moment ago the reason you made the five designs was to continue with animals?
A. That's correct, but not as a fall back situation because we do produce new designs all the time."

13    It is difficult to determine what Mr Piller intended to convey by this evidence. Clearly, the planning of the new designs was related in some way to problems which Bulurru was having with Mr Oliver. Perhaps, when Mr Piller said that Bulurru did not seek the new designs as a fall back situation, he meant that the company intended to use the designs whether or not the licence to use Mr Oliver's work continued in force. In fact, Bulurru did produce both the new designs and Mr Oliver's designs at times thereafter. It was said by Mr Piller that Mr Oliver's designs were more popular. This view was also expressed by a retailer, Mr Anthony Stokes, who said that he purchased Bulurru's products with Mr Oliver's designs but would not purchase those with Bulurru's designs.

14    Mrs Anita Russell, a director of Bulurru, was also called in the reopening of the plaintiff's case. She said that she had given instructions for the production of Bulurru's designs. She said her recollection was that she gave the instructions to Vicky. Mrs Russell gave this evidence:

"Q. … can you tell us what instructions you gave for the preparation of the panels, and to whom, the panels B1 to 5 in these proceedings?
A. Yes. My instructions were given to Think Positive, which is a company we used to create designs for Bulurru. As a commercial company that we are we create a lot of different ranges over a long period of time and my instructions to Think Positive at the time was that we wanted another range with animals in it which is quite common to the tourist industry.
…
Q. Is it possible for you to tell us, if you remember, what the instructions were that you gave for these panels in terms of what animals were to be depicted, what form they were to take, what form did the instructions take?
A. The brief was fairly - fairly wide, it was just a general range of animals that are popular for tourists to buy that appeal to the tourist industry because that's the industry we're in."

15    Mrs Russell said that, when giving instructions, she did not mention Mr Oliver, that she did not provide Mr Oliver's designs to Think Positive and did not specify the particular matter which was to be the subject of the designs. In my opinion, this evidence should be rejected. It is highly improbable that a firm asked to produce designs for Bulurru would, unless it had been specifically requested to do so, have produced designs similar to the designs of Mr Oliver which Bulurru already marketed.

Infringement of Copyright

16    Relevant provisions of the Copyright Act, 1968 (Cth) read as follows:

14 (1) In this Act, unless the contrary intention appears:

(a) a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter; and

(b) a reference to a reproduction, adaptation or copy of a work, shall be read as including a reference to a reproduction, adaptation or copy of a substantial part of the work, as the case may be.
(2) This section does not affect the interpretation of any reference in sections 32, 177, 180, 187 and 198 to the publication, or absence of publication, of a work.

…

31 (1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right:
…
(b) in the case of an artistic work, to do all or any of the following acts:

(i) to reproduce the work in a material form;

…

36 (1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright.

17    Thus, the issue is whether Bulurru's designs reproduced Mr Oliver's designs, or a substantial part thereof.

18    The words of Viscount Maugham in King Features Syndicate Incorporated v O and M Kleeman Limited [1941] AC 417, to which Mr Evatt has referred, provide a general guide to the test of infringement. At 424, his Lordship said:

"The question is one of fact. When, as in this case, the copy or the reproduction is not exact the court must examine the degree of resemblance. It is impossible to lay down any useful test of what constitutes a copy or a colourable imitation of such a work. I think, as Lord Watson seems to have thought in the not very different case of Hanfstaengl v Baines & Co [1895] AC 20, 27, that the language of Bayley J in West v Francis (1822) 5 B & Ald 737, 743, though not always applicable, gives some assistance in determining what resemblance constitutes copying. Bayley J said … [at] 743 : 'A copy is that which comes so near to the original as to give to every person seeing it the idea created by the original.' Lord Shand, in Hanfstaengl v Baines & Co [1895] AC 31, remarked that, in comparing the works and keeping in view the idea and general effect created by the original, there was 'such a degree of similarity as would lead one to say that the alleged infringement is a copy or reproduction of the original or the design - having adopted its essential features and substance.' "

19    Whether a person has reproduced a substantial part of a work depends more on the quality than on the quantity of what has been taken: see Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276, 283-293; Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 at 495; Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 at 669. In each case, the importance of the alleged substantial part in relation to the work as a whole must be considered: Dixon Investments Pty Ltd v Hall at 494; Collier Constructions Pty Ltd v Foskett Pty Ltd at 669. In Ladbroke (Football) Ltd v William Hill (Football) Ltd, Lord Pearce expressed the point in this way, at 293:

"Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that 'there is no copyright' in some unoriginal part of a whole that is copyright. They afford no justification, in my view, for holding that one starts the inquiry as to whether copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own."

20    The elements of "reproduction", for the purposes of copyright law, were summarised by Gibbs CJ in S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, when his Honour said, at 472:

"The notion of reproduction, for the purposes of copyright law, involves two elements - resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron [1963] Ch 587, at p 614, 'a sufficient degree of objective similarity between the two works' and 'some causal connection between the plaintiffs' and the defendants' work'. Lord Reid said in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at p 276:
'Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.'
(See also [1964] 1 WLR at pp 283, 288 and 293 …) In the same case, Lord Evershed said … at p 283, 'that what amounts in any case to substantial reproduction … cannot be defined in precise terms but must be a matter of fact and degree'."

21    The two elements are the objective element of form and the subjective element of causal connection. Both are necessary elements of infringement and each may have an impact on the other. An author or artist who produces work which is substantially similar to the work in which another has copyright, but does so independently without any input direct or indirect from the work which is the subject of copyright, does not infringe: see Ladbroke (Football) Ltd v William Hill (Football) Ltd at 276. Substantial similarity between two works, or "probative similarity" as it is sometimes called, is, however, prima facie evidence of copying which may be counteracted by evidence that, in fact, there was no copying but independent creation: Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 55 SR(NSW) 162 at 177; Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at [84]. Furthermore, proof of actual use of the protected work provides some proof that a substantial part of the work was copied. In Eagle Homes Pty Ltd v Austec Homes Pty Ltd, Lindgren J, with whom Finkelstein and Weinberg JJ agreed, said at [102]-[103]:

"In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601; 1B IPR 186, the defendant reproduced certain examination papers in mathematics and published answers to some of the questions and made some criticisms of the way in which the papers had been set. Accordingly, copying was not in issue. There was, however, an issue whether copyright subsisted in the papers. In this context, Peterson J, after rejecting the defendant's submissions as to why the papers were not 'original literary works', uttered the famous aphorism (at Ch 610; IPR 192), 'and, after all, there remains the rough practical test that what is worth copying is prima facie worth protecting'. The basis of this 'rough practical test' (it is only that) is that a person copies because the work contains something not readily available to him or her otherwise, and that this is likely to be something 'original' to the work in question. It is perhaps understandable that the aphorism should also have been applied in the context of infringement to the qualitative test of 'substantial part', that is, to the question whether what has been copied constitutes a 'substantial part' of the copyright work: cf Ladbroke (Football) Ltd v William Hill (Football) Ltd , … at 279 (Lord Reid), 293-4 (Lord Pearce).
However, Peterson J's 'rough practical test' should not be taken too far. It is the function of the trier of fact to determine, on the evidence, not only whether there has been actual copying, but whether what has been taken is a 'substantial part' of the protected work. Resort to maxims or brief or pithy statements of the law may mislead. There is a danger that too ready an application of Peterson J's 'test' will result in the judge or jury finding the existence of a prima facie case when a proper reading of the evidence does not justify it."

22    I do not propose to discuss the designs in great detail. The overall impression gained by a viewer is more important than precise details. I assume that the first design made by the Think Positive designer was that of Barramundi Australia. That is the closest to the relevant design of Mr Oliver. In each of the two designs there is a border, which in Mr Oliver's case is rectangular and in Bulurru's case is also rectangular but with curves. The majority of the space is taken up with the drawing of a barramundi with an open mouth. Each design includes a net which surrounds or adjoins the barramundi and in each drawing there are three human figures.

23    In my opinion, the drawings are so similar that an unobservant purchaser who did not examine the designs in detail would be likely to confuse one with the other. In his evidence, Mr Piller denied this. Mr Piller gave this evidence:

"As a lay person you could tell straight away these designs are completely different, you can see the only resemblance is really the background colour, otherwise it is completely different. My opinion, border design and colour background. I am not expert."

I reject that evidence. I think that any person looking at the two designs would regard them as very similar and that an unobservant person could be confused. Mr Anthony Wallis, an arts consultant who gave evidence for Bulurru, said in his affidavit that he concluded that the Bulurru designs were not derived from or taken from Mr Oliver's designs. When pressed in cross-examination, however, Mr Wallis conceded that the designs were similar, although there were differences. In my opinion, the Bulurru design of Barramundi Australia took a very substantial part of Mr Oliver's design of Barramundi Hunting . The similarities are very striking. As I have said, I am satisfied that the designer had Mr Oliver's design before him or her when the Bulurru design was created.

24    I have come to the same conclusion with respect to the designs of Jabiru and Dancers and Brolga Australia although, because of different colouring, it is not likely that the one would be confused with the other. In each case, the bird is standing with one leg straight and the other bent. The general impression given by the bird and the artistic composition in each case are similar. The figure of the bird takes up the major part of the design. There is a rectangular border around each with the Bulurru border being slightly different but giving an overall similar effect. The Bulurru design does not contain the two spirit figures or the hand paintings which appear in Mr Oliver's design. However, the substance of Mr Oliver's design has been taken. It is also worth noting that the speckled background used in Bulurru's design appears to follow the speckled technique used by Mr Oliver in his design of Barramundi Hunting. In my opinion, taking into account the fact of actual copying, Bulurru's design reproduced a substantial part of Mr Oliver's design.

25    I should mention that Mr Oliver's bird gives the impression of a mystical bird. It does not have the colours of any specific species. The Bulurru bird, called a brolga in the art panel which is in evidence, while reflecting the outline and stance of Mr Oliver's bird, has the black neck and beak of a jabiru, which is a black-necked stork. The colouring is inappropriate for a brolga. A Bulurru catalogue (Exhibit G), gives the name Jabiru Australia to this particular design. Accordingly, the deliberate depiction of a jabiru is an indication that Mr Oliver's work was in mind when the design was created.

26    By contrast to the Barramundi Australia and Brolga Australia designs, Bulurru's design of Dolphin Australia, while derivative, portrays a different picture from that of Mr Oliver's Dolphins. Mr Oliver's design has three dolphins with three spirit figures holding fish. Bulurru's design has two dolphins and a school of fish. The borders are similar to those I have mentioned. As I have also mentioned, Vivien Johnson said of the Bulurru works that they were "substantially derived or adapted from" Mr Oliver's designs. Mrs Bancroft said that they were "wholly derivative and adapted from" Mr Oliver's works. I agree that Bulurru's design was derivative. It appears to me that Bulurru's design reflects Mr Oliver's ideas and concepts and many of his techniques. However, it seems to me that the resulting picture is different from Mr Oliver's design. The Bulurru dolphins are two dolphins swimming in a school of fish. Mr Oliver's three dolphins are differently positioned and accompanied by the drawings of three persons. The drawings of Bulurru's dolphins are not replicas of any of Mr Oliver's dolphins. The Bulurru Dolphin Australia design does not adopt the essence of Mr Oliver's design and is not a reproduction thereof. It is a different composition.

27    The same position applies with respect to the goanna designs. Bulurru's design, Goanna Australia, has two goannas in a green environment. The design is greater in width than in height. Mr Oliver's design of Goanna and Echidna has the two animals in a design which is greater in height than in width. The picture of the echidna is above that of the goanna and, because of its bulk, tends to dominate. The colours used are predominantly different from those in Bulurru's design. In my opinion, the two designs are plainly different in their appearance, their composition and their artistic effect. Mr Oliver's drawing of a goanna is not replicated in Bulurru's design which has been separately drawn, although it is drawn using Mr Oliver's technique of segmentation. I do not regard Mr Oliver's border as being a matter of great substance. It is not a design of which Mr Oliver could claim a monopoly. It is a technique which he uses and it must be taken into account. But it is not as important as artistic composition.

28    Accordingly, I think that the two designs, Dolphin Australia and Goanna Australia did not breach Mr Oliver's copyright, notwithstanding that the designer used Mr Oliver's works in the preparation of Bulurru's designs.

29    The design which has given me the most difficulty is Bulurru's design, Kangaroo Australia. Mr Oliver's design of Kangaroo Tracking is greater in height than width. It contains two kangaroos, the kangaroo on the top being upside down. Unlike Mr Oliver's design, Bulurru's design is greater in width than in height, in an oval shaped border. It has only one kangaroo represented with its legs in a forward position. Mr Oliver's kangaroos have their legs extended backwards. The colouring of the two designs is materially different.

30    However, if one compares Bulurru's design with the bottom half of Mr Oliver's design, the differences are not so great. In each, there is a picture of a kangaroo in motion. Above the kangaroo in each case there are the figures of two spirit persons. Mr Oliver's design has a third person below the animal. Bulurru's design has an Aboriginal hand drawing underneath the kangaroo, another in front of the kangaroo and a third above it. These hand drawings come from rock art, but are figured in Mr Oliver's design of Jabiru and Dancers. No doubt, the idea was taken from that design. The Bulurru kangaroo is segmented using the technique adopted by Mr Oliver in all his drawings and the segments are filled in using the techniques which appear in Mr Oliver's fauna. Mr Oliver's design and Bulurru's design each have a border which uses the circles, dots and lines found in central desert art. Overall, I am satisfied that there has been deliberate copying, not merely of Mr Oliver's ideas but of the essence of the design which appears in the bottom half of Mr Oliver's Kangaroo Tracking, and that a substantial part of Mr Oliver's work has been reproduced. It is worth noting that Bulurru's catalogue shows that the bottom half of Mr Oliver's design was, at one time, adapted for use on children's T-shirts.

Res Judicata and Issue Estoppel

31    There is a further issue as to whether Mr Oliver's cross-claim is precluded by the principles of res judicata or issue estoppel. I need not set out the general principles applicable to these issues. They are not in dispute. Vaughan Williams J said in In re South American and Mexican Company; Ex parte Bank of England [1895] 1 Ch 37 at 45:

"It has always been the law that a judgment by consent or by default raises an estoppel just in the same way as a judgment after the Court has exercised a judicial discretion in the matter. The basis of the estoppel is that, when parties have once litigated a matter, it is in the interest of the estate that litigation should come to an end; and if they agree upon a result, or upon a verdict, or upon a judgment, or upon a verdict and judgment, as the case may be, an estoppel is raised as to all the matters in respect of which an estoppel would have been raised by judgment if the case had been fought out to the bitter end."

An example of res judicata arising from a consent judgment may be seen in Chamberlain v Deputy Commissioner of Taxation (1988) 164 CLR 502.

32    In order to determine what was decided by a judgment or order, a court may examine not merely the terms of the decision but other relevant material which bears upon the point. Thus, when a case is contested, it is common to look at the reasons for judgment and the pleadings, or if there were no pleadings, at the claims and the evidence. In Rogers v The Queen (1994) 181 CLR 251 at 263, Brennan J said that, when issue estoppel is raised, a court could examine, "any material that shows what issues were raised and decided" but that, when res judicata is raised, a court is confined to the record. However, paragraph 204 of Spencer Bower, Turner and Handley on Res Judicata takes the view that the same approach applies in relation to both principles of law. I agree with that view.

33    Bulurru and Mr Oliver first entered into a licence agreement in September 1992. In August 1994, Bulurru purported to renew the agreement for a further three years. When Mr Oliver rejected the renewal, Bulurru (then Jemrose Pty Ltd) commenced proceedings 4875 of 1994 seeking a declaration that the option to renew had been validly exercised. On 9 June 1995, Mr Oliver filed a cross-claim which claimed, inter alia, that Bulurru had reproduced five of Mr Oliver's designs including Kangaroo Tracking, Barramundi Hunting, Jabiru and Dancers and Goanna and Echidna.

34    Paragraph 2 of the cross-claim sought a declaration that Bulurru had infringed Mr Oliver's copyright by producing articles reproducing the designs. This general claim was presumably based upon Mr Oliver's contention that the licence had ceased. In para 3 of the cross-claim, Mr Oliver sought a declaration that Bulurru had infringed his copyright by producing designs entitled Kangaroo Hunting, Barramundi and Jabiru. These titles are not the titles which appear on Bulurru's works which are now in issue or which appear in the illustrations in Bulurru's catalogue, Exhibit G, which carries the date November 1995. The titles of the corresponding Bulurru works with which we are now concerned are Kangaroo Australia, Barramundi Australia and Brolga Australia. In the catalogue, the lastmentioned design was called Jabiru Australia. The name Kangaroo Hunting appears only in the title of the design on a T-shirt which is in evidence. This design was one of the designs in issue in proceedings 4875 of 1994 but it is not one of Bulurru's designs.

35    As the judgment and cross-claim did not make it clear what was the subject of the cross-claim and as counsel appeared to be taking the issue too lightly, I examined the affidavits filed in proceedings 4875 of 1994 to see if they threw light upon the issues in the proceedings. An affidavit by Mr Oliver sworn 30 June 1995 complained in respect of his design of Kangaroo Tracking that it had been modified for use on a child's T-shirt to depict only the bottom half of his design and that he had not given his consent to alter or adapt his design. In a further affidavit of 26 July 1995, Mr Oliver complained that some watches carried an adaptation of his design Kangaroo Tracking and that he had not consented to the modification of his design which had occurred. Mr Oliver also complained that there had been a reproduction of his design Barramundi Hunting on a panel which had been produced by Bulurru and that the panel did not bear any attribution that he was the author of the design. An affidavit by Vivien Johnson of 22 June 1995 dealt with a T-shirt which had a design entitled Kangaroo Hunting in association with the name Malkorda. An affidavit by Bronwyn Bancroft also dealt with this design. This was not one of Bulurru's designs in issue in the present proceedings. Indeed, Bulurru filed an affidavit by Mrs Russell which said that the article which bore this name was not manufactured by or for Bulurru. The affidavit also dealt with issues relating to the children's T-shirt design and with the watches. I need not discuss the points which she made.

36    There were no affidavits filed in proceedings 4875 of 1994 which dealt with Bulurru's designs now in issue. No affidavit was filed dealing with a design entitled Jabiru.

37    The judgment given on 8 August 1995 declared that Bulurru had duly exercised its option of renewal of the licence and otherwise dismissed the claim and the cross-claim. The Court noted the agreement between the parties to enter into what was described as Heads of Agreement. This document, in substance, defined more clearly the rights and the obligations of the parties with respect to the licence to produce Mr Oliver's works. Under cl 9 of the Heads of Agreement, Bulurru agreed not to produce children's T-shirts bearing a modified design of Kangaroo Tracking or watches bearing a design being an altered version of Kangaroo Tracking. These were matters which had been dealt with in the affidavits. The Heads of Agreement did not mention the T-shirt carrying the name Kangaroo Hunting, presumably because it was accepted that it was not Bulurru's product.

38    Having inspected the file in proceedings 4875 of 1994, I invited counsel to do likewise and to let me have their comments. In his submissions, Mr Rollinson, junior counsel for Mr Oliver, appears to have agreed with the matters that I have just stated, but submitted that the point was not significant. In his submissions, at one stage, Mr Rollinson said, "This does not matter". In my opinion, the point is both significant and important. Mr Gray, counsel for Bulurru, accepted that the affidavits filed in proceedings 4875 of 1994 did not refer to the designs now in issue. However, Mr Gray sought to tie up the cross-claim in proceedings 4875 of 1994 with the present three Bulurru designs Barramundi Australia, Brolga Australia and Kangaroo Australia by reliance upon this evidence, which Mr Oliver gave in his cross-examination in the present proceedings:

"Q. Is it the case that in the 1995 proceedings, you complained that Bulurru had infringed your copyright by producing the panels that you have in front of you, those three?
A. This here (indicated). I can't remember if this one was actually involved in it, but I did make a complaint. But at what time, whether I did it in '95, I'm not too sure.
Q. What about the other two?
A. Yes. There's also another design 'Kangaroo Rock Art' which was included; and the dolphins was another one I made a complaint about. So five I made complaint about.
Q. You are definite about those?
A. These two here, yes.
Q. Those two Jabiru and the Barramundi?
A. That's right.
Q. And you're not quite so sure about the kangaroo?
A. No.
…
Q. When you have been referring to a kangaroo which infringed your copyright, not the one that I previously showed you, was it that one shown on the T-shirt that you had in mind?
A. Yes, that's (indicated).
Q. So that that one shown on the T-shirt was the one that was going to be the subject of other Court proceedings against somebody else?
A. Yes, at the time, yeah."

The last two questions and answers referred to the product which Mrs Russell denied was a Bulurru product.

39    In my opinion, this oral evidence is too vague to constitute an adequate basis for a plea of res judicata or issue estoppel. Mr Oliver, who is not a lawyer, was merely giving his recollection of events in past years. That recollection is clearly not a reliable description of the complaints that were actually made in proceedings 4875 of 1994.

40    In my opinion, the plea of issue estoppel must fail because it does not appear from the Court's file in proceedings 4875 of 1994, or from any other reliable evidence which is before the Court, that any of the designs that are presently alleged to infringe were in issue in those proceedings. Indeed, the fact that the Heads of Agreement expressly dealt with the infringements by Bulurru mentioned in the affidavits and that it was apparently accepted that the other infringing design was not a Bulurru product is a clear indication that the designs now in question were not then in issue. Mr Oliver's evidence in cross-examination is too fragile a basis to establish a plea of issue estoppel. An estoppel will not arise unless the issue was clearly raised in the proceedings: see Turner v London Transport [1977] ICR 952.

41    However, the plea of res judicata should succeed to the extent that any infringement by Bulurru of Mr Oliver's designs Kangaroo Tracking, Barramundi Hunting, Jabiru and Dancers and Goanna and Echidna occurred prior to the judgment in proceedings 4875 of 1994. Although the issue of Bulurru's designs was not expressly raised in those proceedings, the issue was raised that Bulurru had infringed Mr Oliver's copyright in those four designs. The issue of infringement was put on a number of bases and, as Mr Oliver had seen one or more of Bulurru's designs in May 1995, he ought to have raised the issue in those proceedings, if he wished to complain about it.

42    As Sir James Wigram VC said in Henderson v Henderson (1843) 3 Hare 100 at 115 [67 ER 313 at 319], "The plea of res judicata applies, except in special cases, not only to points upon which the Court was actually required by the parties to form an opinion and pronounce a judgment, but to every point which properly belonged to the subject of litigation, and which the parties, exercising reasonable diligence, might have brought forward at the time". This principle was approved and applied by the High Court of Australia in Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589. An example of its application may be seen in Chamberlain v Deputy Commissioner of Taxation.

43    In my opinion, the cause of action for any infringement prior to the date of judgment merged in the consent judgment of 8 August 1995. Mr Oliver is thus precluded from relying upon any infringement of the four designs I have mentioned up to the date of that judgment.

44    Action taken by Bulurru after the date of the judgment is, however, in a different category, for any cause of action in respect of that did not merge in the judgment of 8 August 1995. In proceedings in respect of action taken by Bulurru after the date of the judgment, reliance must be placed upon the principle of issue estoppel. It must be shown that the issue of infringement which the subject conduct gives rise to was raised in earlier proceedings and was determined by the judgment therein. It is not sufficient to say that the issue is one which Mr Oliver, exercising reasonable diligence, ought to have brought forward in the previous proceedings.

45    If I were wrong in that reasoning, I would nevertheless hold that the judgment given on 8 August 1995 did not estop Mr Oliver from alleging that Bulurru infringed his copyright thereafter by reproducing his designs. In my opinion, although the Heads of Agreement did not contain an express term to the effect, it was clearly in mind by both parties that, by accepting a licence to reproduce designs in which Mr Oliver had copyright, Bulurru undertook that it would not reproduce other designs which were an infringement of the copyright of the designs which were the subject of its licence. The nature of the relationship between licensor and licensee was such as impliedly to require Bulurru not to infringe the copyright in the designs licensed to it. As this was inherent in the Heads of Agreement referred to in the judgment, I do not read the judgment as creating an estoppel to the contrary.

Conclusion

46    For these reasons, I find that Bulurru has infringed Mr Oliver's copyright in his designs Barramundi Hunting, Kangaroo Tracking and Jabiru and Dancers. Counsel for Mr Oliver should, within seven days, bring in short minutes of the orders proposed which should deal, inter alia, with the issue of damages or an account of profits and costs. Counsel for Bulurru should respond within a further seven days. The short minutes should deal with the return of the exhibits.

**********

Last Modified: 09/26/2000