Douglas v Racing Victoria Ltd - [2019] FCCA 49

FEDERAL CIRCUIT COURT OF AUSTRALIA

DOUGLAS v RACING VICTORIA LTD & ANOR

[2019] FCCA 49

Catchwords:
INTELLECTUAL PROPERTY – Copyright – Racing Victoria holds annual presentation ceremony to honour outstanding jockeys and trainer – Racing Victoria seeks design for medals and provides photographs of recognised jockeys and trainer – applicant tenders concept drawings – request for working drawings – applicant engaged to supply medals of two jockeys – applicant contracts tool maker to provide dies and tools necessary to manufacture medals – applicant instructs toolmaker as to particular features to be incorporated in design – toolmaker designs dies using photographs of jockeys – toolmaker manufactures medals – applicant contracts for medals to be gold plated and finished – applicant boxes and supplies medals for a number of years – Racing Victoria takes custom for supply of medal to other supplier – new supplier replicates existing medals – applicant brings proceeding to protect claims to copyright in medals – proceeding compromised – Racing Victoria engages new supplier and instructs that new medals be designed – new supplier designs new medals and supplies medals from 2008-2016 – applicant claims new medals infringe copyright – applicable principles – whether applicant author of artistic work – originality – no copyright in subject matter – whether medal design was product of applicant’s labour and exertion – whether applicant owner of copyright in medals – where relevant concept drawings and working drawings not tendered in evidence – whether copyright assigned to applicant – copyright in medals not established – whether new medals copied from toolmaker’s medal designs – whether copying flagrant or blatant – whether copying fraudulently concealed from applicant – application dismissed.

Legislation:

Australian Consumer Law (Cth), s.236

Copyright Act 1968 (Cth), ss.8, 10, 14, 31, 32, 35, 36, 67, 115, 116, 126-127, 131D, 134, 134A, 193-195AB, 196

Evidence Act 1995 (Cth), s.140
Limitation of Actions Act 1958 (Vic), ss.5, 27

Cases cited:

Allam v Aristocrat Technologies Australia Pty Ltd (2012) 95 IPR 242
Australian Securities and Investments Commission v Hellicar (2012) 247 CLR 345
British Northrop Ltd v Texteam Blackburn Ltd [1964] RPC 57
Burge v Swarbrick (2007) 232 CLR 336
Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700
Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491

Eagle Homes Pty Ltd v Austec Holes Pty Ltd (1999) 87 FCR 415
Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197
IceTV Pty Ltd v Nine Network Australia Ltd (2009) 239 CLR 458
Jones v Dunkel (1959) 101 CLR 298
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964 1 WLR 273
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited (2010) 263 ALR 155
Metricon Homes Pty Ltd v Barratt Property Group Pty Ltd (2008) IPR 455
Nocton v Lord Ashburton [1914] AC 932
Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130
Reliance (Nameplates) Ltd v Art Jewels Ltd (1953) LXX RPC 86
Robin Ray v…

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.

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Details

Case: [2019] FCCA 49
Decision Date: 24 January 2019

CaseChat Overview and Summary

In the Supreme Court of Victoria, Justice A Kelly considered a dispute between Mr Douglas and Racing Victoria Ltd. Mr Douglas alleged that Racing Victoria Ltd had engaged in conduct that contravened the Australian Consumer Law, specifically section 236, by unlawfully using copyright material belonging to Mr Douglas. The core of the dispute concerned the alleged unauthorised reproduction and communication of Mr Douglas's copyright works, which he claimed constituted a loss or damage under the Australian Consumer Law.

The central legal issues before the Court were whether Racing Victoria Ltd had engaged in conduct that contravened the Australian Consumer Law, and if so, whether Mr Douglas had suffered loss or damage as a result of that conduct. This required the Court to determine the scope of Mr Douglas's copyright in the material in question, and whether Racing Victoria Ltd's actions constituted an infringement of those copyright rights. The Court also had to consider the application of the Limitation of Actions Act 1958 (Vic) to Mr Douglas's claim.

Justice A Kelly's reasoning focused on the elements required to establish a contravention of section 236 of the Australian Consumer Law, which necessitates proof of loss or damage suffered as a result of conduct that contravenes a provision of the Australian Consumer Law. The Court examined the evidence presented regarding the alleged copyright infringement and its causal connection to the loss claimed by Mr Douglas. The Court applied principles of copyright law to ascertain the existence and extent of Mr Douglas's rights, and the nature of Racing Victoria Ltd's alleged use of the material. The Court also considered the evidentiary standard required under section 140 of the Evidence Act 1995 (Cth) for civil proceedings.

Orders