Douglas v Racing Victoria Ltd
[2019] FCCA 49
•24 January 2019
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 |
| Cases cited: Allam v Aristocrat Technologies Australia Pty Ltd (2012) 95 IPR 242 Eagle Homes Pty Ltd v Austec Holes Pty Ltd (1999) 87 FCR 415 |
| Other texts cited: Ricketson & Creswell, The Law of Intellectual Property, Copyright, Designs and Confidential Information. Handford, Laws of Australia, Limitation of Actions, 4th Ed’n. |
| Applicant: | WILLIAM RODERICK DOUGLAS |
| First Respondent: | RACING VICTORIA LIMITED |
| Second Respondent: | DESIGN AWARDS PTY lTD |
| File Number: | MLG 913 of 2017 |
| Judgment of: | Judge A Kelly |
| Hearing date: | 10 May 2018 |
| Date of Last Submission: | 10 May 2018 |
| Delivered at: | Melbourne |
| Delivered on: | 24 January 2019 |
REPRESENTATION
| Counsel for the Applicant: | Mr D.J. Connell and Mr J.P. Siggins |
| Solicitors for the Applicant: | Skerrett Legal |
| Counsel for the Respondent: | Mr A.M. Bell |
| Solicitors for the Respondent: | Maddocks Lawyers |
ORDERS
The application filed on 4 May 2017 be dismissed.
By 4.00pm on 7 February 2019, the respondents file and serve any submissions in relation to the costs of this proceeding (not exceeding 3 pages, annexing a list of any costs and disbursements that are sought).
By 4.00pm on 21 February 2019, the applicant file and serve any submissions in relation to the respondents’ costs of this proceeding (not exceeding 6 pages) including submissions as to whether he agrees or disagrees with any item of costs and disbursements that are sought.
The question of costs be determined on the papers.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT melbourne |
No. MLG 913 of 2017
| WILLIAM RODERICK DOUGLAS |
Applicant
And
| VICTORIA RACING LIMITED |
First Respondent
And
| DESIGN AWARDS pty ltd |
Second Respondent
REASONS FOR JUDGMENT
Introduction
These are my reasons for judgment upon claims for breach of copyright, breach of contract, misleading and deceptive conduct and fraudulent concealment. The claims have a history dating to 1996.
The claims relate to images reflected in medals of three celebrated racing identities. The first and second medals depict Scobie Breasley, a flat racing jockey who triumphed in Australia and the United Kingdom, and Tom Corrigan, a celebrated jumps jockey, respectively. The third medal depicts Fred Hoysted, a singularly outstanding racing trainer.
The applicant (Mr Douglas) claimed copyright in the images depicted in medals that were ordered from him by the first respondent (Racing Victoria). For the reasons which follow, I have determined that the applicant did not own copyright in those images.
I have concluded that Mr Douglas was not the person whose labour and exertions were applied to the creation of the images embodied in those medals. He was not the author of the artistic works comprised in those medals. The person who created those images was a contractor engaged by Mr Douglas. Mr Douglas is neither the owner, nor the assignee, nor licensee of the copyright in those images. He has no title to enforce any claim for infringement of copyright in those medals.
If I am wrong in those conclusions, I have found that the respondents did not copy, either substantially or at all, from the images depicted in those medals. Claims that any such copying was blatant, flagrant or that it was fraudulently concealed from Mr Douglas are not substantiated. The claims for infringement of copyright and breach of contract are statute barred. Subsidiary claims for breach of a deed of compromise and misleading and deceptive conduct also fail.
Background
Arthur ‘Scobie’ Breasley was a champion jockey who raced in Australia and in the United Kingdom. Thomas ‘Tom’ Corrigan is widely regarded as one of Australia’s greatest ever jumps jockeys. Fred Hoysted is regarded as one of Australia’s greatest trainers.
Scobie Breasley was honoured by Racing Victoria in 1996 when the Scobie Breasley medal was first awarded. The medal is awarded to the jockey who is voted as the best jockey over the racing season at metropolitan racetracks. The Tom Corrigan medal is awarded to the leading jumps jockey across races each season for the States of Victoria and South Australia. The Fred Hoysted medal is awarded to the most outstanding single training performance by a Victorian trainer.
Racing Victoria is a not-for-profit organisation which is the peak body for thoroughbred racing in Victoria.
The first Scobie Breasley and Tom Corrigan medals were supplied by Mr Douglas who had, at times, supplied horse racing themed jewellery to Mittys of Melbourne. Mr Douglas is a jeweller who has conducted his practice in Melbourne since 1969. He is known in the jewellery industry for the supply of horse racing and other sporting jewellery.
The medals were supplied to Racing Victoria, in the period:
a)1996 – 2003, by Mr Douglas;
b)2004 – 2006, by Winning Edge Presentations Pty Ltd (Winning Edge);
c)2007 – 2016, by the second respondent (Design Awards).
In mid-2008, Mr Douglas and Racing Victoria executed a deed pursuant to which they compromised all matters in dispute in a proceeding in which Mr Douglas alleged the breach of copyright in the medals supplied in the period 2004 – 2007 (deed). The proceeding was settled with no admissions of liability. Racing Victoria did not dispute that the original medals had been copied – what was in issue was whether the copying had been unlawful. Racing Victoria adduced evidence that the impugned copying was honestly believed to be permissible since it had paid for the subject medals.
During Mr Douglas’ litigation, Racing Victoria engaged Design Awards to design new medals different from those which had been acquired from Mr Douglas until 2003. New medals were designed in mid-2008.
Design Awards continued to produce medals for Racing Victoria.
In 2016, Mr Douglas alleged that the respondents had again infringed his copyright in the medals supplied by him until 2003. He has brought this proceeding to vindicate that claim. The respondents deny unintentional copying and say that the medals produced since 2008 are differently designed from those supplied by Mr Douglas. As concerns intentional copying they contend, in effect, that it defies reason that they would intentionally infringe copyright in circumstances where the deed was about to be executed and so, the detection of any further infringement would be near certain given the purpose for which the medals were awarded annually from 2008 to the present and the publicity which the announcement of those awards generated.
Those matters notwithstanding, Mr Douglas pursues historical claims which date to 2008. The respondents dispute that Mr Douglas is the copyright owner and contend further that the subject medals are not copies of the original medals and are different in overall appearance.
Procedural history
On 4 May 2017, Mr Douglas filed an application and statement of claim. By his application, Mr Douglas claimed various injunctive relief together with orders for delivery up on oath of all medals containing any reproduction or adaptation of any artistic works in which he held copyright, damages including additional damages pursuant to ss 115(4) and 116 of the Copyright Act 1968 (Cth), or alternatively an account of profits together with an order for the conduct of accounts and inquiries, and damages pursuant to s 236 of the Australian Consumer Law for misleading and deceptive conduct.
Racing Victoria and Design Awards opposed all of the relief claimed in the proceeding and sought dismissal of the proceeding with costs.
Pleadings and particulars were exchanged.
It was common ground that Racing Victoria is a company incorporated and engaged in the functions and responsibilities of the authority governing thoroughbred racing in the State of Victoria. The parties were likewise in agreement that Design Awards was a duly incorporated company and engaged, relevantly, in the business of the design, manufacture and sale of medals and similar items.
Mr Douglas contends that he is the owner of copyright subsisting in Australia in the artistic works comprised in the Scobie Breasley medal and the Tom Corrigan medal respectively designed in about April 1996.
Racing Victoria denied those allegations contending that in about 1996, it had commissioned Mr Douglas to produce the medals and that in doing so it had provided Mr Douglas with photographs of Scobie Breasley and Tom Corrigan, so that an accurate likeness of the jockeys could be incorporated in the design of their medals. By way of particulars to the defence, Racing Victoria incorporated a reproduction of a photograph of Scobie Breasley and stated that the respondents were unable to locate the photograph of Tom Corrigan, a copy of which had been provided to Mr Douglas in 1996.
While denying the applicant’s claim to copyright as alleged, there was no dispute that in around April 1996, Mr Douglas had entered into an agreement with Racing Victoria to design and produce each year the medals to be awarded to the Champion Flat Racing Jockey and Jumps Jockey (agreement).
While admitting that in about 1996, Racing Victoria had commissioned Mr Douglas to produce the medals, it was otherwise denied that Mr Douglas had been engaged to design such medals. By way of particulars of their defence, the respondents incorporated images of each of the Scobie Breasley medal and Tom Corrigan medal that had been supplied by Mr Douglas as Figures 3 and 4 of the defence.
The parties were not in dispute as to the terms of the agreement, save that Racing Victoria was to pay Mr Douglas the sum of $1,100 per medal delivered. Mr Douglas alleged, and it was in contest, that a term of the agreement was that copyright subsisting in the artwork and design would continue to be owned by the applicant.
As concerned performance of the agreement, the parties were agreed that Mr Douglas had supplied the Scobie Breasley medal and the Tom Corrigan medal for Racing Victoria in each of the years 1996 to 2003. Otherwise, the parties were in dispute that Mr Douglas had supplied “the artwork and medals” in any of those years.
It was common ground that the agreement was terminated in about June 2004.
Mr Douglas alleged, and the respondents denied, that in the period 2004-2007 Racing Victoria and/or Design Awards had “reproduced the Scobie Breasley medal and the Tom Corrigan medal on a number of occasions”. Likewise, the parties were in dispute whether the alleged reproductions made in the period 2004-2007 had been made without the proper license or authority of the applicant.
The parties were agreed on the fact of the institution of Mr Douglas’ proceeding in 2007, entry into and execution of the deed and that a term of the deed was that, from 27 July 2008, the respondents would refrain from producing or causing to be reproduced, without the license of Mr Douglas, any medals which reproduced the medals that he had provided to Racing Victoria or a substantial part of either of them.
In addition, the respondents pleaded the following terms of the deed:
a)Mr Douglas released the respondents from (amongst other matters) all claims in any way related to the 2007 proceeding, the deed, the Scobie Breasley medal, the Tom Corrigan medal or the circumstances that were recited in the deed itself;
b)Mr Douglas indemnified and agreed to keep the respondents indemnified against any loss arising out of, relating to or in any connection with, the 2007 proceeding or the matters the subject of the release embodied in the deed;
c)the deed was a full and complete defence by any party to any proceeding commenced, continued or taken by another party in relation to any of the matters referred to in that deed.
Mr Douglas alleged, and the respondents denied, there had been any breach of the terms of the deed by either of them in failing to deliver up all medals in their possession and/or ceasing producing or causing to be produced without the license of Mr Douglas any such medals.
Mr Douglas alleged that from a date unknown to him but prior to 2008, Design Awards had produced and supplied medals, being the Fred Hoysted medal, and had done so using the original design of Mr Douglas or reproducing a substantial part of the artistic works of Mr Douglas in that medal and that it had done so without his license or authority. Mr Douglas alleged that Racing Victoria had authorised, endorsed and/or sanctioned the production of the Fred Hoysted medal by Design Awards in the manner alleged. It was admitted that in about 2007, Racing Victoria had commissioned Design Awards to produce and supply a medal to be known as the Fred Hoysted medal but otherwise denied the matters alleged. The respondents contended that the matters alleged by Mr Douglas were embarrassing in that they failed to identify the “reproduction or alleged substantial reproduction or the artistic works” of Mr Douglas, providing by way of particulars an image of the Fred Hoysted medal as produced by Design Awards and incorporated a copy of this image as Figure 5 of the defence.
Mr Douglas further alleged breach by the respondents in the period 2008-2016 of his copyright in the Scobie Breasley medal, drawings for which he had originally supplied. Again, the respondents pleaded that following execution of the deed, Racing Victoria had commissioned Design Awards to design, produce and supply a new Scobie Breasley medal. The respondents provided an image of the Scobie Breasley medal as designed, produced and supplied by Design Awards and incorporated a copy of this image as Figure 6 of the defence.
Mirror allegations were made respecting an alleged breach of copyright of the Tom Corrigan medal in the period 2008-2016. The respondents denied those allegations, contending them to be embarrassing. An image of the Tom Corrigan medal was incorporated as Figure 7.
Mr Douglas further alleged that in the period 2008 until at least 2016, the respondents breached his copyright in a modified design of the Fred Hoysted medal. The respondents joined issue with those allegations, and incorporated a copy of this image as Figure 8 of the defence.
It was common ground that in the period 2008 to 2016, Racing Victoria had conferred awards at the Victorian Thoroughbred Racing Awards including a Scobie Breasley medal, a Tom Corrigan medal and a Fred Hoysted medal to their respective recipients, but were otherwise in dispute whether this constituted any breach of the alleged copyright.
So too, the parties were in agreement that on 10 August 2016 a documentary, The Scobie Breasley Story, produced by Centaur Films in 1999 had been re-broadcast by Racing.com on Channel 78 so as to commemorate the 20th anniversary of the first awarding of the Scobie Breasley medal but were otherwise in dispute that this constituted any breach of copyright. The parties were further in dispute that the said television production and broadcast entailed any prominent use of the Scobie Breasley medal supplied by Mr Douglas. The parties were also in dispute that the use of the image of the Scobie Breasley medal in the commemorative broadcast entailed any breach of license or copyright.
The aforesaid matters were alleged to constitute infringement of copyright, misleading and deceptive conduct and breach of the deed.
Mr Douglas further alleged that he had sustained loss and damage, that the respondents had made profits by their conduct and that the alleged infringements constituted “flagrant breaches within the meaning of sub s 115(4) of the [Act]” such as to entitle him to ‘additional’ damages.
The respondents pleaded that any infringement of any copyright held by Mr Douglas, as concerned any breach which relied on conduct occurring prior to 4 May 2011, was statute barred by operation of s 134 of the Copyright Act. The respondents also relied upon limitation period defences in respect of any alleged misleading conduct or breach of the deed and further pleaded reliance upon each of the release and the bar to further proceedings, as contained in the deed.
Some refinements of the statement of claim were made by further and better particulars dated 11 August and 16 October 2017. Relevantly, these documents, together with the applicant’s reply, contended that the breaches of the deed had been fraudulently concealed within the meaning of s 27 of the Limitation of Actions Act 1958 (Vic) by reason of which the applicable limitation period did not begin to run until Mr Douglas became aware of the alleged breaches in August 2016.
When the matter was listed for directions on 1 June 2017, orders were made, by consent, providing Mr Douglas with an opportunity to file and serve any amended statement of claim and requiring the respondents to file and serve a response and defence. No amended statement of claim was filed pursuant to that order.
Counsel who appeared at the trial appeared at a further directions hearing that was held on 21 August 2017. Orders were made fixing the matter for trial on 9-10 May 2018 and providing for the filing and service of witness statements and submissions together with further particulars. The matter was referred to mediation before a registrar of the court. Orders were also made for the discovery of documents limited to quantifying loss or damage or an account of profits. No list of documents was filed by Mr Douglas.
On 24 April 2018, an affidavit was prepared by the applicant’s former solicitor. The affidavit recounted various difficulties which, it was claimed, had been encountered in relation to discovery. As a consequence of the filing of that affidavit, I listed the matter for a directions hearing which was held on 3 May 2018. Whatever doubts I may have entertained about the veracity of the complaints which were being raised on the eve of the trial, I determined that the trial should proceed and that the matter might be most efficiently advanced if issues of liability were determined in advance and separately from any questions of quantum or other relief. Although no witness statements had been filed in compliance with the consent orders, the parties were encouraged to redress that issue. In the event, each of Mr Douglas and Racing Victoria then filed an affidavit to which were exhibited the documents upon which they relied.
The deponents were cross-examined. In closing address, Mr Connell, counsel for the applicant submitted that the witness for Racing Victoria Ms Nicole Coughlan, had been a reliable, honest, straight-forward witness of truth. I accept that submission. Subject to some aspects of his evidence, Mr Douglas otherwise impressed me as a candid and forthright witness. My findings on the evidence are as follows.
Invitation to provide medals
In March 1996, Mr Douglas was invited by Hardy Brothers Jewellers (Hardy Bros) to provide designs of the Scobie Breasley, Tom Corrigan and Fred Hoysted medals. To that end, Hardy Bros supplied Mr Douglas with photographs, and Mr Douglas in turn supplied Hardy Bros with concept drawings of each of the jockeys and trainer respectively. Copies of two photographs were annexed to Mr Douglas’ affidavit and the particulars to the respondents’ defence was that the third could not be located. Mr Douglas gave evidence that he had been given a photograph of Scobie Breasley which he had returned to Racing Victoria in 1996, confirming that the photograph reproduced in the defence was the same as that which he had been given.
Mr Douglas also said that he had been given ‘some sort of photograph of Tom Corrigan’ but recalled that it was ‘more like a postcard’ with distinctive blue edging which had given him the idea of a similar form of edging for the concept design of that medal. He copied that idea.
Mr Douglas’ evidence did not descend to any detail of how his concept drawings had been prepared. Eight concept drawings were exhibited. The drawings representing various iterations of an intended end product of one or other of the medal designs. Various concept drawings were exhibited as annexures A-D to Mr Douglas’ affidavit. Mr Douglas provided concept drawings for the medal later to be known as the Fred Hoysted medal but was not retained to produce that medal.
Medal design
Mr Douglas’ evidence-in-chief was that it was he who had created the tools and dies for pressed medal designs of the Scobie Breasley and Tom Corrigan medals. He deposed, in part, that:
I supplied concept drawings and created tools and dies for two pressed medals designs and produced medals now known as the [Scobie Breasley and Tom Corrigan medals] and the concept drawings for the [Fred Hoysted medal]. (emphasis added)
Mr Douglas also exhibited an affidavit which he had sworn in the 2007 proceeding and in which he had deposed as follows:
I initially produced three (3) each of the [Scobie Breasley and Tom Corrigan medals] (in case of a three-way tie) in gold plated sterling silver and supplied them to Hardy Brothers Jewellers.
Mr Douglas was challenged comprehensively upon that evidence.
The sequence of events leading to the production of the medals was recorded in a series of letters and facsimiles. A curiosity of the evidence was that Mr Douglas’ case involved, in many instances, the reproduction of faxes or letters from the 1990’s which had faded to the point of being practically illegible. Mr Douglas had reproduced each of those faxes and letters by writing them out in long-hand.
In early April 1996, Mr Douglas was asked to progress the production of the Scobie Breasley and Tom Corrigan medals by preparing working drawings and dies. By letter dated 9 April 1986, Mr Douglas wrote to Mr Leonard Stokes of Hardy Bros as follows:
Thank you for your telephone conversation of the 9th April instructing me to go ahead with the working drawings and making of dies for the Scobie Breasley and Tom Corrigan medalions (sic).
A payment of $200-00 for working drawings and $3,000 for tooling costs is required before proceeding further.
In May-June 1996, Mr Douglas pursued the question of payment. An employee who worked in Mr Douglas’ jewellery business, Ms Annette Mason, used a journal to record matters pertinent to that business. In particular, Ms Mason utilised the journal to record particular events which she wished to draw to Mr Douglas’ attention. Ms Mason’s journal contained the following two entries:
13.5.96 2-30
Rang Leonard to find out result of meeting. He is to return call.
21.6.96
Leonard instructed AM to proceed with Scobie Breasley medal as per attached drawing ASAP.
Will send progress payment advice.
No evidence was adduced in chief concerning the ‘attached drawing’ of the Scobie Breasley medal as referred to in Ms Mason’s journal entry.
The dies which were required for the production of the medals were not made by Mr Douglas who said that he was not a toolmaker.
Mr Douglas retained Mr Bill Forwood of Forwood Badges & Castings to produce the dies from which the Scobie Breasley medal would be cast. An invoice and statement from Forwood Badges & Castings indicates that he is engaged in the business of manufacturing badges, castings, medallions, plaques, photo-etchings, souvenirs and like items.
Mr Douglas described Mr Forwood as a toolmaker.
On 21 June 1996, Mr Douglas sent a fax to Mr Forwood as follows:
Please proceed with second medallion “Scobie Breasley” as per sketch
This is of major emergency and as with “Tom Corrigan”, we require a lead pressing and finished weight in gold (estimate)
If you could forward an account with estimated costs etc As soon as possible.
Mr Douglas confirmed in cross-examination that he had instructed Mr Forwood to proceed with the Scobie Breasley medal as per his ‘sketch’. In re-examination it emerged that any ‘sketches’ which had been prepared had been prepared by Mr Douglas with Ms Mason. Mr Douglas stated that he had produced many concept drawings.
Mr Douglas stated in cross-examination that he had not provided the eight concept drawings tendered in evidence to Mr Forwood but that “The two concept drawings were supplied to Forwoods, of which produce (sic) the tools. They were the only ones”. Mr Douglas was clear in his cross-examination that the two drawings which he supplied to Mr Forwood were not amongst the eight drawings produced in the proceeding but were later iterations of those drawings. He confirmed that all of the eight concept drawings which he had tendered had been supplied to Hardy Bros for the purposes of obtaining approval to proceed with an order for the manufacture and supply of the medals.
When pressed as to whether he had supplied Mr Forwood with a copy of a concept drawing, Mr Douglas’ attention was drawn to the fax which he had sent Mr Forwood on 21 June 1996 instructing him to proceed with the Scobie Breasley medal “as per sketch.” The sketch referred to by Mr Douglas was not tendered in evidence.
It was suggested that Mr Douglas had supplied Mr Forwood with concept drawings from amongst the eight which had been provided to Hardy Bros for approval:
And I suggest to you it’s most likely that one of those sketches was one of the eight concept drawings which we were looking at the start in annexures A to D of your 2007 affidavit. That’s correct isn’t it? - - - Those - those concept drawings were done at a different time to the sketches that I did for Bill Forwood. . .
. . .
And in not one of those affidavits have you ever provided an explanation like the one your providing now? - - - Correct.
Mr Douglas confirmed that the concept drawings of the eight medals comprised in Annexures A-D to his affidavit were not provided to Mr Forwood.
Mr Douglas agreed in cross-examination that in all of his affidavits he had only ever referred to concept drawings being produced by him. Mr Douglas also agreed that never once in those affidavits had he sworn that he had drawn the final form image exactly as it appeared in the medals. Mr Douglas agreed that that was so because he had not drawn the final image as had appeared in those medals:
And that’s because you never did that; isn’t that correct? - - - Not in the detail that come (sic) out in the – the dies, no.
Bill Forwood of Forwood produced the images that’s on the medals, didn’t he? - - - Yes, he did.
The concept drawings supplied to Mr Forwood were also not tendered in evidence. Mr Douglas gave evidence that he had also given oral instructions to Mr Forwood respecting the preparation of the medals.
Mr Douglas was not totally clear as to whether photographs had been given to Mr Forwood. At one point Mr Douglas said that “not the entirety of the photograph” had been supplied but was later insistent that no photographs had been supplied to Mr Forwood. Pressed on the issue of whether a photograph had been supplied, Mr Douglas was equivocal but then agreed that ideally, Mr Forwood would have desired the best image available for the purposes of making the medal dies. He was initially certain that he had not supplied a photograph of Mr Corrigan because he did not have one. However, in re-examination, Mr Douglas said that he did not recall a photograph of Mr Corrigan but did recall that a postcard with blue edging had been supplied.
Mr Douglas’ fax of 21 June 1996 stated that manufacture of the Scobie Breasley medal was considered to be a major emergency. Mr Douglas gave evidence that the request to treat the preparation of a die for the Scobie Breasley medal as a major emergency was because of the lateness of the order that had been placed by Hardy Bros upon him. The lateness was no doubt a reference to the proximity of the order to the date of the Racing Victoria’s annual awards presentation in August.
Mr Douglas gave evidence that he had given Mr Forwood instructions as to particular features which he wanted to be emphasised in the medal including: a strong jawline, for the image to be rotated so that the eye socket would not appear as a hollow, for the full ear to be shown, with hair below the collar and that the clothing should be in a style of dress that was appropriate to the period. At least as to this medal, it was clear that Mr Douglas had also instructed Mr Forwood verbally. It seemed probable that the instructions given by Mr Douglas were to be understood as referring to features of the image of Scobie Breasley in the photograph that had been supplied to him.
Medal manufacture
On 28 June 1996, Mr Douglas sent an invoice to Hardy Bros relating to the tooling costs, blanking tools and drawings required for the medal which, relevantly, stated as follows:
Description: Price:
1. Tom Corrigan medallion $. . .
Tooling Costs – 1 x Die and blanking tool $. . .
2. Scobie Breasley medallion $. . .
Tooling Costs – 2 x Dies & 2 blanking tools $. . .
Plus 22% Tax $. . .
Drawings as per instructions . . . $. . .
The invoiced total cost of the works was $4,600 of which $1,700 had been paid on 24 March 1996, leaving a balance due of $2,900.
On 15 July 1996, Forwood Badges & Castings issued an invoice to Mr Douglas for the preparation of the dies and blanking tools as ordered by Mr Douglas. Mr Forwood’s invoice claimed a sum of $3,916 for the manufacture and supply of one Tom Corrigan and two Scobie Breasley dies and blanking tools respectively.
It appears that some concern had been expressed by Mr Forwood of the need for adequate assurances as to the payment for his services. In turn, Mr Douglas sought and obtained an undertaking from Racing Victoria that it would pay all tooling and die costs associated with manufacture of the Scobie Breasley and Tom Corrigan medals. Mr Forwood’s concern was well-founded. Mr Douglas tendered as an exhibit to his affidavit some notes apparently prepared for the purpose of furnishing further and better particulars of his claim. Within the text of those notes it emerged that on 17 July 1996, he had been told by the managing director of Hardy Bros that the person with whom he had been dealing, Mr Stokes, had not had been authorised to place an order for the supply of 9ct gold medals and that “they were not going ahead.” Mr Douglas’ notes disclose that the result of the ensuing exchange with Racing Victoria was as follows:
Rang Racing Victoria and told them what was happening and that if I couldn’t get guaranteed payments of tooling costs I would not be proceeding any further.
Received fax from Racing Victoria guaranteeing payment.
On 19 July 1996, Hardy Bros wrote to Mr Douglas as follows:
Dear William
In reference to your conversation with Mr Daryl Eames on 19 July 1996 regarding production of the Scobie Breasley and Tom Corrigan medals.
This letter is to state that Racing Victoria guarantees to pay all the associated tooling and die costs together with the production cost of two of each medals (two x Scobie Breasley and two x Tom Corrigan). It is understood that the estimated cost for all this work is approximately $8,500.
Please contact Mr D Eames or Ms Kerri Combes when the medals have been completed.
On 23 and 24 July 1996, Hardy Bros issued orders for the supply of Scobie Breasley and Tom Corrigan medals respectively. In lieu of the proposed order for 9ct gold medals, the final order was for the supply of gold plated sterling silver medals together with presentation boxes.
Mr Douglas gave evidence, without objection, describing the process by which the medals were produced by Mr Forwood. It will be recalled that Mr Douglas had requested a lead pressing of the medals. He said that a piece of lead plate, the approximate size of the medal, was cut and that the die was used to cast the end product.
Mr Douglas produced examples of the dies which had been made by Mr Forwood and described a die as being a negative of the image that would be pressed. He explained that the medal was cast from the die by kneeling the lead plate into the die – a process by which the lead was progressively softened – until the casting process had been fully completed. Once this was done, the blanking tool was used to cut away the excess lead that had extruded at the edges of the die.
One of the two dies was tendered in evidence and is reproduced below:
The medals were finished by Mr Forwood in sterling silver as required. Little evidence was given as to the process by which the lead pressed medals were enamelled with sterling silver. Mr Douglas said that the medals were gold plated by another contractor and were then finished by being polished. The colouring was also applied in the process of gold-plating the medals. The medals were supplied to Mr Douglas who in turn supplied them, duly boxed, to Hardy Bros for re-delivery to Racing Victoria (and before 2001, its precursor).
In cross-examination, Mr Douglas confirmed that the medals which he had supplied had been cast from the die which had been made by Mr Forwood and that this had been the case in all of the years that he had supplied medals to Racing Victoria. As he described the process:
That die was made by? - - - Bill Forwood. Forwood Badges.
And Forwood supplied what I perhaps call unfinished medals to you at least in ’96, ’97, ’98 and ’99? - - - In all the years that I - - -
In all of the years? - - - produced the medal. I would supply him the sterling silver . . . they would come back in the cut from the blanking tool, which then they had to be then polished on the outer and trimmed up, and took off all the burrs and all that, and then the final plating and finishing was done by another contractor.
The effect of Mr Douglas’ evidence was that once the medals had been pressed and enamelled with sterling silver by Mr Forwood, they were delivered to him “in the cut” and that he trimmed the medals using the blanking tool and polished them before sending them to another contractor for gold plating and finishing. It can be seen that the process entailed concept design, working drawings, design and creation of die and blanking tools, through to manufacture and gold-plating.
On-going orders
The medals were supplied by Mr Douglas in 1996 and repeat orders for their supply were issued in 1997 until 2003.
Mr Douglas said that he received a purchase order for a Scobie Breasley medal and a Tom Corrigan medal on 16 April 1997 from Kerion Associates on behalf of Racing Victoria. Mr Douglas gave evidence that a Ms Combes of Kerion Associates had also undertaken a research program for the purposes of the production of a documentary on Scobie Breasley.
On 4 June 1997, Forwood Badges & Castings issued an invoice to Mr Douglas for the supply of two Scobie Breasley and two Tom Corrigan medals respectively. On the same date, Mr Douglas issued a purchase order to Kerion & Associates confirming the placing of an order for the supply of Scobie Breasley and Tom Corrigan medals.
The following year, on 22 June 1998, Forwood Badges & Castings issued an invoice to Mr Douglas for the supply of Tom Corrigan and Scobie Breasley medals. On 1 July 1998, Mr Douglas issued a further purchase order to Racing Victoria for the supply of those medals.
On 20 April 1999, Ms Nicole Coughlan of Racing Victoria, sent a fax to Mr Douglas as follows:
Thank you for your quote on the Scobie Breasley and Tom Corrigan medals.
Racing Victoria would like to order
1 x Scobie Breasley medal with presentation box and green ribbon
1 x Tommy Corrigan medal with presentation box and blue ribbon
Cost of each being $1,100.00.
Last year the ribbon was not supplied. Please ensure it is supplied this year.
We are needing both medals delivered to Racing Victoria by Monday 5 July 1999. Please confirm by fax . . .
On 6 July 1999, Racing Victoria issued an order with Mr Douglas for the supply of the Scobie Breasley and Tom Corrigan medals. On 30 June 1999, Forwood Badges & Castings issued an invoice to Mr Douglas for the supply of certain quantities of the Tom Corrigan and Scobie Breasley medals.
Mr Douglas’ evidence was that from about 1996 until 2003 he had produced pressed Scobie Breasley medals and Tom Corrigan medals in the numbers that were required by Racing Victoria for the presentation of such medals at the annual Racing Victoria Awards.
Mr Douglas last filled an order for the supply of medals in 2003.
Mr Douglas said it was his usual practice to contact Racing Victoria annually for the purpose of soliciting an order for the further supply of the Scobie Breasley and Tom Corrigan medals. In 2004, he contacted Ms Coughlan, whom he described as the senior events coordinator at Racing Victoria, and was informed that Racing Victoria no longer sought the supply of those medals from him.
Medal award ceremonies
Evidence was given by Ms Coughlan, marketing manager of Racing Victoria, who deposed that the company was formed in 2001 and was the principal racing authority for the Victorian Thoroughbred Racing industry. She stated that Racing Victoria was a not-for-profit company limited by guarantee whose shareholders consisted of a variety of racing clubs throughout Victoria.
Ms Coughlan deposed that one of Racing Victoria’s responsibilities was to celebrate outstanding participants in the racing industry, including by the awarding of honours to jockeys and trainers annually. She said that Racing Victoria conducted an awards ceremony in about August each year at which the Scobie Breasley, Tom Corrigan and Fred Hoysted medals were awarded to the successful jockeys and trainer respectively. Ms Coughlan said that the conduct of the annual ceremony was, in fact, loss making but considered as important to recognising the achievements of successful racing participants.
Change in supplier
Ms Coughlan’s evidence was that in around 2004, Racing Victoria was undertaking a fairly wide ranging cost culling exercise in the course of which Racing Victoria engaged Winning Edge to make the Scobie Breasley and Tom Corrigan medals.
Ms Coughlan could not now recall exactly when Winning Edge was engaged, but candidly acknowledged that it was asked to replicate the medals as closely as possible and that the medals supplied by Winning Edge were replicated from earlier medals which had been supplied by Mr Douglas. Ms Coughlan had not considered there was any problem in copying the medals because:
In my mind, [Racing Victoria] had paid for the design and production of the Original medals produced by Mr Douglas.
Ms Coughlan’s view may be seen as reflective of a common misunderstanding of the position respecting copyright.
Ms Coughlan’s gave evidence that in around 2006, Racing Victoria engaged Design Awards to create a custom designed, hand-crafted sculpture for the 2006 Australian Racehorse of the Year Awards. Ms Coughlan formed the view shortly afterwards that the products and service being provided by Design Awards were of superior quality to those being provided to Racing Victoria by Winning Edge. She decided that Racing Victoria should engage Design Awards to produce all awards for the 2007 ceremony, including both the Scobie Breasley medal and the Tom Corrigan medal. Ms Coughlan deposed that:
Design Awards was also asked to produce a new medal to be called the “Fred Hoysted medal”.
While Ms Coughlan was not entirely certain, she believed that she gave Design Awards a photograph of Fred Hoysted so as to assist it in producing the Fred Hoysted medal. She grounded her belief on the fact that her usual practice was to supply such a photograph when briefing a supplier to prepare and supply an award. Ms Coughlan’s evidence was that the Fred Hoysted medal was produced in the same style as the Scobie Breasley and Tom Corrigan medals. Ms Coughlan was not cross-examined as to her usual practice or this topic in her evidence.
Ms Coughlan also asked Design Awards to make a copy of the Scobie Breasley and Tom Corrigan medals and affirmed her belief that she thought there was no problem with copying those medals; doing so on the stated basis that, having paid for the design and production of the medals, Racing Victoria was entitled to do so.
Following the institution of the 2007 proceeding, Ms Coughlan was told to make new medals for presentation to the jockeys and trainer for presentation at Racing Victoria’s annual awards ceremony in 2008.
On 22 May 2008, Design Awards sent a quotation to Racing Victoria for the supply of a series of some nine awards including the following:
medals – new designs – approx. cost
· Scobie Breasley
· Tommy Corrigan
· Fred Hoysted. $ . . .
The quotation was for the supply of new designs of each of the medals.
First Copyright Proceedings
In about early August 2007, Mr Douglas noticed a picture in the Sun Herald newspaper which referred to the presentation of the Scobie Breasley award that year. Mr Douglas deposed that the picture “clearly showed a copy of the Scobie Breasley and Tom Corrigan medals” that he had provided to Racing Victoria. The following day, Mr Douglas rang Racing Victoria to make inquiries in relation to the source of those medals. He said that he was told by a woman on the switchboard that Racing Victoria had a new supplier and that the medals were being produced by Design Awards. Mr Douglas volunteered that the switchboard operator had said that the medals were “the same medal designs” as the medals which he had provided to Racing Victoria.
Following that telephone call, Mr Douglas called Design Awards and was told that Racing Victoria had authorised Design Awards to copy and produce his medals. Mr Douglas said that he was told that “all other inquiries should be referred to [Racing Victoria] as they provided the medals to copy.” Mr Douglas was also told that Design Awards had made more than one of those medals and held copies of each of them.
On 13 August 2007, Mr Douglas met with representatives of Racing Victoria and their in-house lawyer and was told that Racing Victoria had in their possession only one example of the Scobie Breasley and Tom Corrigan medals that had been supplied by Mr Douglas. Mr Douglas said he trusted the assurance of Racing Victoria’s representatives that they only had one of each such medal; however, he rejected an offer which was made to settle the claim, instead offering to assign the copyright which he claimed in those medals for $40,000, or alternatively, to licence Racing Victoria to use the medals which he had supplied for a term expiring in 2007 for the sum of $20,000.
Mr Douglas received no reply to his proposal and in due course was told by Racing Victoria’s in-house legal counsel that Racing Victoria would not reply to his demand. Accordingly, Mr Douglas retained lawyers and, on 20 December 2007, commenced a proceeding in the Federal Magistrates Court naming Racing Victoria and Design Awards as respondents to that proceeding.
Then ensued a period of negotiation in 2008 which culminated in the entry into and execution of the deed of settlement and release. The deed was executed by the parties over the period June – July 2008. Mr Douglas was paid an agreed sum in compensation. He deposed that pursuant to the terms of the deed, Racing Victoria gave undertakings that it would deliver up all Scobie Breasley and Tom Corrigan medals that had been copied or used, or which used a substantial part of the medals that had been provided by Mr Douglas and that it would cease producing or using a substantial part of the designs of those medals. By his affidavit, Mr Douglas deposed that at no stage in the negotiations held in 2008 which culminated in the entry into the deed had Racing Victoria disclosed that it had also awarded the Fred Hoysted medal and had produced “many variants of the Scobie Breasley medal and Tommy Corrigan medal and images of the medals in and on the major event awards night held in August 2007.”
Following execution of the deed, on 8 July 2008, Mr Douglas received a letter from the lawyers acting for Racing Victoria and Design Awards asking him to collect 10 Scobie Breasley medals and 12 Tom Corrigan medals. Mr Douglas collected those medals.
The present proceeding
Mr Douglas deposed that he had no further interest in either the Scobie Breasley or Tom Corrigan medals in the period July 2008 until August 2016 and that he did not observe any media or newspaper articles, or watch the award nights held annually by Racing Victoria.
Notwithstanding his apparent longstanding disinterest in the event, Mr Douglas said that he was watching a television racing channel on 10 August 2016 when he observed that the 20th anniversary of the Scobie Breasley award was being advertised by Racing Victoria. In the course of this advertisement, Mr Douglas said that he saw what he considered to be an instantly recognisable Scobie Breasley medal. Mr Douglas’ evidence was that the medal which he observed during this advertisement:
. . . contains substantial design elements from the [Scobie Breasley] medal, in breach of the 2007 settlement.
Ms Coughlan deposed to being aware of the making of a documentary entitled “The Story of Scobie Breasley”, which had been produced by Centaur Films in 1999. Ms Coughlan said that the documentary included a brief image of a Scobie Breasley medal being presented at the 1999 Victorian Thoroughbred Racing awards. Ms Coughlan produced as an exhibit to her affidavit, a copy of the coversheet for a VHS video cassette recording of the documentary. Ms Coughlan deposed that in 2016, she received a request from Racing.com (channel 78) to broadcast the documentary so as to commemorate the 20th anniversary of the Scobie Breasley medal. Ms Coughlan said that she gave permission for the documentary to be broadcast and understood Racing.com had made the broadcast in August 2016.
Mr Douglas took exception to the use, without his permission, of the Scobie Breasley medal that had been supplied by him, in the documentary, The Scobie Breasley Story, and in the broadcasting of that documentary by Racing.com in August 2016 on the 20th anniversary of the first presentation of the Scobie Breasley Award.
Having seen the documentary being broadcast in 2016, Mr Douglas instructed lawyers to send Racing Victoria a letter of demand. By letter dated 18 August 2016, Racing Victoria replied in an email denying any breach of the deed or any breach of copyright.
Following the receipt of the denial of liability by Racing Victoria, Mr Douglas said that he retained counsel, Mr Connell, who, he said sent an email to Racing Victoria outlining his views. By letter dated 6 September 2016, Racing Victoria replied to this email maintaining that, amongst other things, it: (a) disagreed the colours of the medals in dispute were the same or very similar; (b) agreed that the middle of each medal were similarly gold, but that any medal rewarding success and achievement would contain the colour gold and the suggestion that the use of that colour contravened the deed would be strongly defended. Further, as concerned the use of Scobie Breasley’s image in each medal, Racing Victoria reiterated the view it had stated in earlier correspondence as follows:
In our view, the only similarity in the above pictures seems to be the image of Scobie Breasley. I’m instructed that Mr Douglas does not own the copyright in that image. Accordingly, Mr Douglas is not able to use that similarity as a basis for his claim against Racing Victoria.
Racing Victoria’s letter addressed in significant detail the basis on which it denied any liability for the claims now made by Mr Douglas.
In addition, Racing Victoria made an open offer to meet with Mr Douglas to allow him to inspect each of the 2016 Scobie Breasley medal, 2016 Tom Corrigan medal and 2016 Fred Hoysted medal. In addition, Racing Victoria invited Mr Douglas to contact the Australian Racing Museum which had a copy of the Scobie Breasley medal that was said to incorporate the alleged Douglas design. No evidence was given that Mr Douglas accepted either of those invitations. However, Mr Douglas was squarely on notice that any proceeding brought against Racing Victoria would be rigorously defended and that it would rely upon its correspondence on the question of costs.
Mr Douglas contended that Racing Victoria’s use of the Fred Hoysted medal was substantially copied from the Tom Corrigan medal which he had supplied and in breach of copyright also of the Scobie Breasley medal. He contended that the Fred Hoysted medal should also have been delivered up in accordance with the terms of the settlement deed. In addition, Mr Douglas contended that the Fred Hoysted medal supplied for Racing Victoria had been based on the concept drawing which he had provided as part of the design options presented in 1996. One of the drawings for the medals that was produced by Mr Douglas in evidence bore the annotation “Not Yet”.
Mr Douglas deposed that on 15 January 2018, the solicitors for the respondents had provided further documents which he then examined. In the course of doing so he said that he noticed an image of certain awards and medals in an attachment comprising schedule 7 to the deed. Mr Douglas contended that the images comprised in schedule 7 contained “images of further variants and uses of [the medals and designs and a raw finish of a ribbon and trophy which, he contended he “instantly recognised” as being a substantial part of the Scobie Breasley medal and Tom Corrigan medal which he had produced.” Mr Douglas exhibited a copy of the schedules to the deed.
Applicable principles
It is convenient to address the principles relating to copyright, the law of which is governed by the Copyright Act 1968 (Cth) (Act). By s 131D, jurisdiction is conferred on this court for an action for infringement of copyright.
Subject to an exception which is not material, copyright does not subsist otherwise than by virtue of the Act.[1] Copyright subsists in, amongst other things, ‘work’, a term that is defined by the Act.
[1] The Act, s 8.
One form of work protected by the Act is ‘artistic work’, an expression which includes a ‘sculpture’ and ‘a work of artistic craftsmanship.’[2] Artistic work has the distinct meaning of “productions that comprise visual images which are intended to be comprehended by the human eye in a graphic sense, rather than read.”[3] For the purposes of the Act, the definition of artistic work is considered to be exhaustive.[4] To be an artistic work which attracts copyright protection under the Act, the work must be shown to be original in the sense that it has “emanated from an author who has applied a sufficient degree of skill and labour to its production.”[5]
[2] The Act, s 10.
[3]Ricketson & Creswell, The Law of Intellectual Property, Copyright, Designs and Confidential Information. (Ricketson), Vol 1, [7.320].
[4] Ibid.
[5] Ricketson, [7.325] and cases cited.
A ‘sculpture’ includes a cast that is made for the purposes of sculpture.[6] A medal is considered to be a sculpture: Reliance (Nameplates) Ltd v Art Jewels Ltd.[7] In Art Jewels, the defendants admitted to having made an exact copy of a medallion commemorating Her Majesty’s coronation and to having done so by making a die that had been cast using one of the plaintiffs’ medallions. Vaisey LJ had little doubt that, for the purposes of granting an interlocutory injunction, the medal was a sculpture as to be afforded protection against copyright infringement. The views that a medal is a sculpture for the purposes of the Act and that the definition of sculpture extends to the mould, which is made for the purposes of its manufacture, have been endorsed in Australia.[8]
[6] The Act, s 10.
[7] (1953) LXX RPC 86 (Vaisey J).
[8] Ricketson, [7.335]; see also, Burge v Swarbrick (2007) 232 CLR 336, [91]-[92].
Part III of the Act, which is arranged in 11 Divisions, is comprised of ss 31-83 and addresses copyright in, amongst other things, original artistic works. The nature of copyright in original works is addressed by s 31 which provides, by para 31(1)(b)(i), that for the purposes of the Act (subject to a contrary intention), copyright in relation to an artistic work is the exclusive right to reproduce the work in material form.[9]
[9] Other exclusive rights in relation to the work are conferred by paras 31(1)(b)(ii)-(iii).
In general, the author of a work is the first owner of the copyright in that work.[10] Copyright is personal property.[11]
[10] The Act, s 35(2).
[11] The Act, s 196(1).
Where an artistic work is made by a person in pursuance of their employment under a contract of service, the employer is the owner of the copyright in the work of that employee.[12] The position of an employee stands in contrast with that of a contactor. The mere fact that an independent contractor has been commissioned to produce a work is insufficient to entitle the client to copyright: Robin Ray v Classic FM.[13] There Lightman LJ held that the contractor was entitled to retain copyright in a work, absent an express or implied term to the contrary.
[12] The Act, s 35(6).
[13] (1998) 41 IPR 235
By reason that copyright is personal property, it is transmissible by way of assignment.[14] As noted above, copyright does not subsist otherwise than by virtue of the Act. A legal assignment of copyright is not effective unless it is in writing signed by or on behalf of the assignor.[15]
[14] The Act, s 35(6).
[15] The Act, s 196(3).
By Div. 2 of Part III, the Act affords protection against infringement of copyright in relation to works. It is an infringement of copyright in a work (relevantly, in an artistic work), to do or authorise the doing in Australia of any act in copyright of the work without the authority of the owner. In particular, copyright in an artistic work is infringed by reproducing the owner’s work in material form,[16] without the licence of the owner.[17] In short, copyright in an artistic work is infringed by a person, other than the owner, who reproduces the work and does so without authority. The protection afforded by the Act extends to the doing of any act in relation to a substantial part of the subject work.[18]
[16] The Act, s 31.
[17] The Act, s 36(1)
[18] The Act, s 14(1)(a).
While copyright confers exclusive rights on an owner in relation to a work, it is not a monopoly: Seafolly Pty Ltd v Fewstone Pty Ltd.[19] The Act strikes a balance of competing interests between rewarding authors of original artistic works and promoting useful arts.[20]
[19] (2014) 313 ALR 41, [234].
[20] IceTV Pty Ltd v Nine Network Australia Ltd (2009) 239 CLR 458, [24], [28], [46], [68], [70].
For copyright to subsist in a work it must be original.[21] In the context of the Act, originality, at its simplest, connotes that the work was not copied by, but originated with, the author.[22] In Wildash v Klein,[23] Angel J held that for the purposes of copyright, originality in the sense of an author’s skill and labour lay in the detail with which the basic idea had been presented.
[21] The Act, s 32.
[22]Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 313 ALR 41, [239] (Dodds-Streeton J); citing IceTV Pty Ltd v Nine Network Australia Ltd (2009) 239 CLR 458.
[23] [2004] NTSC 17, [6], [15] (Angel J).
It is intrinsic to the concept of a ‘work’ and thus the right to claim the rights of protection from infringement which are conferred by the Act, that it has been the original product of a person’s exertion, labour or activity: Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd.[24] In IceTV Pty Ltd v Nine Network Australia Ltd,[25] the Court considered that identification of the author and the work to be protected remained critical issues to be determined in a claim for copyright infringement. There, French CJ, Crennan and Kiefel JJ considered the degree of originality in the expression of the work which had been reproduced and recognised that in some respects, an author may have little, if any, choice in a particular form of expression adopted as that may have been dictated by the subject matter and would for that reason lack the requisite of originality.[26]
[24] (2002) 119 FCR 491 (Lindgren J).
[25] (2009) 239 CLR 458.
[26] (2009) 239 CLR 458, [40], [42].
Copyright does not protect subject matter: Seafolly.[27] For that reason, the subject matter – for example, as depicted in a photograph – is not of itself protected by copyright. Originality is a precondition to the subsistence of copyright and is also relevant to infringement as it will inform the question whether a substantial part has been copied. [28]
[27] (2014) 313 ALR, 41, [235].
[28] Seafolly, (2014) 313 ALR, 41, [238].
In Seafolly, Dodds-Streeton J held,[29] that:
. . . it will not infringe copyright in a work to take aspects that did not originate with the author but only attracted copyright protection when incorporated into a collocation assembled by the exercise of skill and judgment. The author of the collocation would not have copyright in the part or parts of the work which, standing alone, did not originate with him or her: IceTV at [37] per French CJ, Crennan and Kiefel JJ.
[29] (2014) 313 ALR, 41, [250].
Copyright subsists in a material form. There is no copyright in an idea and so there will be no infringement by a person who uses the same idea as another. It follows that the existence of demonstrable similarities in two or more works will not, in or of itself, constitute an infringement of copyright. It is entirely possible that there may be many separately original yet similar works.
Across the spectrum of ‘works’, copyright law is less likely to afford protection in cases where the subject matter is elementary, commonplace or one of essential simplicity. Consequently, in Wildash, Angel J held that in cases of that kind, “the more commonplace and simple the work, the more closely must it be copied for any infringement to occur.”[30] Earlier, in Roland Corporation v Lorenzo and Sons Pty Ltd,[31] Pincus J had held that, as concerned relatively simple works:
. . . their simplicity will produce the result that only an exact or fairly exact copy will infringe. (emphasis added)
In Wildash, Angel J endorsed that reasoning.[32]
[30]Ibid, citing British Northrop Ltd v Texteam Blackburn Ltd [1964] RPC 57, 68; Halsbury’s Laws of Australia, Vol 15, [240.1577], fn 11 and cases cited.
[31] (1991) 33 FCR 111, 114.
[32] [2004] NTSC 17, [17].
In a similar vein, the Full Court has held that in the context of simple drawings of the commonplace and without marked originality, a very close resemblance would be required: cf Eagle Homes Pty Ltd v Austec Holes Pty Ltd.[33] There Lindgren J, (Finkelstein and Weinberg JJ agreeing) held that the law of copyright would not prevent anyone who wished to express the idea of a thing which was objectively already in existence from doing so:
To safeguard against the danger that such copyright might be thought to protect the idea, courts have emphasised that the resemblance must be very close.
As Lindgren J observed, it is important to give due recognition to the subject matter of the work. An important distinction may therefore be drawn between the drawing of subject (eg, a hand or a bridge), which had a prior independent existence, from the drawing of a subject which had no prior existence (eg, a unique set of architectural plans). The same distinction was drawn in Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd.[34]
[33] (1999) 87 FCR 415, [87]-[88].
[34][2008] FCAFC 197, [48]-[50] (Lindgren, Goldberg and Bennett JJ).
In Wildash v Klein,[35] Angel J identified the distinguishing feature of a complaint of infringement of copyright as being that:
It is not concerned with the appearance of the defendant’s work but with its derivation. The copyright owner does not complain that the defendant’s work resembles his. His complaint is that the defendant has copied all or a substantial part of the copyright.
His Honour emphasised that each party had been free to express their idea of an existing subject, but that the common feature of the works was “more evidence of the individual expression of a concept taken from the other than copying a protected element of the other’s work.”[36]
[35] [2004] NTSC 17, [6] (Angel J).
[36] (2004) 16 NTLR 66, [18].
In Eagle Homes, Lindgren J stated:[37]
The two elements of copyright infringement, subjective copying and sufficient similarity are distinct matters that the copyright owner must prove, although there may be overlap between them.
[37] (1999) 87 FCR 415, [101].
In Seafolly,[38] Dodds-Streeton J stated:
. . . in order to infringe the exclusive right of the copyright owner, there must be a causal connection between the copyright work and the respondent’s work, as the latter must be derived from the former, whether directly, indirectly, consciously or unconsciously.
[38] (2014) 313 ALR 41, [234].
Part V of the Act, Remedies and Offences, which is arranged in 10 Divisions, is comprised of ss 114-135AK. Section 115 confers a right of action for infringement of copyright. In general, title to the cause of action for infringement lies in the owner, assignee or licensee of the copyright.[39] In an action for infringement of copyright, the court may award additional damages, including in circumstances where it is shown that the infringement was flagrant: s 115(4).[40]
[39]Ricketson, Vol 1, [13.110].
[40] Ricketson, [13.900]; see Seafolly, (2014) 313 ALR, 41, [624]-[633].
The approach to be taken in a claim for infringement of copyright was confirmed in Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd.[41] There Lindgren, Goldberg and Bennett JJ held that the three phases to be addressed were:
[41][2008] FCAFC 197, [41]-[42]; confirming Metricon Homes Pty Ltd v Barratt Property Group Pty Ltd (2008) IPR 455, [23].
(1) to identify the work in suit in which copyright subsists;
(2) to identify in the alleged infringing work the part taken (ie derived or copied) from the work in suit; and
(3) to determine whether the part taken constitutes a substantial part of the work in suit.
As to the identification of the copyright work, their Honours held:
There must be a work that is . . . [an] artistic work, and that is in this respect original. There must also be the requisite connection with Australia that is identified in the section.
The Court was satisfied that there was a single artistic work.[42]
[42] [2008] FCAFC 197, [57], [62].
Concerning identification of the allegedly infringing work, it was held:
The second task directs attention to the putative infringing work. What does it reproduce from the copyright work? As is well known, reproduction necessitates both sufficient objective similarity between the copyright work and the work said to infringe, and a causal link between the two.
On the facts, the respondent had admitted to a blatant copying of an integer of the copyright work.[43]
[43] [2008] FCAFC 197, [63].
As to the third phase of analysis, the Full Court stated:
The third task raises “the substantial part” issue – a qualitative, not a quantitative question. Were the parts of the Designs that were reproduced by Cotton On substantial parts of the Designs regarded as artistic works? Did Cotton On reproduce that which made the Designs original artistic works? It is at this point that it may be appropriate to explain that it has not done so because it has taken only an underlying idea or concept. (emphasis added)
The court acknowledged that distinctions may be drawn between the subject works, but that the question was whether the respondent had reproduced, or reproduced a substantial part of, the original artistic work.[44] In stating that principle, their Honours endorsed the statement by Lord Hoffman in Designer’s Guild Ltd v Russell Williams (Textiles) Ltd[45] that, since the question was whether the features (which had been found to have been copied in that case) formed a substantial part of the allegedly infringing work, it was not relevant to ask whether the works looked alike.[46] The Court held:
. . . what is a “substantial part” for present purposes is not identified quantitatively, but qualitatively.[47] More particularly, it is identified by reference to what elements made the copyright work an original artistic work. In Autodesk Inc v Dyason (No 2),[48] Mason CJ (in dissent) observed that in determining whether the quality of what is taken makes it a “substantial part”, it is important to consider whether the taken portion is an “essential” or “material” part of the work. His Honour stated, further, that “the essential or material features of a work should be ascertained by considering the originality of the part allegedly taken” (at 305). This statement was approved in Data Access Corporation v Powerflex Services Pty Ltd.[49] . . .
[44] [2008] FCAFC 197, [63].
[45] [2000] WLR 2416, 2420-2421.
[46]Similar observations were made by Gibbs CJ in SW Hart & Co (1985) 159 CLR 466, 474 (Mason and Brennan JJ agreeing).
[47]Citing S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 474 per Gibbs CJ; Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 per Mason CJ (in dissent) at 305; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 277 per Lord Pearce at 293.
[48] (1993) 176 CLR 300.
[49] (1999) 202 CLR 1 at [83]‑[84].
Counsel for the applicant drew attention to the statement in Seafolly that opinions not infrequently differed as to whether in a particular case the line had been crossed.[50] This statement was made by her Honour in the context of whether there had been a substantial copying of a work. What is a substantial part of a work is a qualitative evaluation.[51] Such an evaluation involves matters of impression and degree.[52] The question is whether the impugned work is a reproduction of the work in which copyright is claimed or of a substantial part of it.[53]
[50] (2014) 313 ALR, 41, [257].
[51]SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, 474 (Gibbs CJ, Mason and Brennan J agreeing), cf 480 (Wilson J), 502-503 (Deane J); Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197, [66] (Lindgren, Goldberg and Bennett JJ).
[52]Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130, [25], [30], [113] (Cowdroy, Middleton and Jagot JJ).
[53] Optical 88 Ltd, supra [2011] FCAFC 130, [113]-[114].
In Optical 88 Ltd v Optical 88 Pty Ltd, Cowdroy, Middleton and Jagot JJ endorsed the approach taken by the trial judge that the question was to be answered by “the formation of a judgment based on the eye as to the degree of resemblance between the two” and that “[t]he degree of resemblance must be such that, to the eye, the first [work] reproduces, or reproduces to a substantial part of, the [second].”[54] Reproduction does not include cases where a person produces a substantially similar result by independent work without copying.[55]
[54] See also Allam v Aristocrat Technologies Australia Pty Ltd (2012) 95 IPR 242, [163];
[55]SW Hart & Co, supra (1985) 159 CLR 466, 472 (Gibbs CJ) citing Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964 1 WLR 273, 276 (Lord Reid); see also Optical 88, supra [2011] FCAFC 130, [112].
Counsel for the applicant further submitted that an important distinction was to be drawn between cases in which there had been actual and intentional copying (animus furandi) and those in which the copying had been unconscious.[56] Notably, it was important to the result in Seafolly that the respondent was found to have intentionally copied the subject designs.[57]
[56] (2014) 313 ALR, 41, [251]-[255], [284]-[285]; see also s 115(3).
[57] (2014) 313 ALR, 41, [189], [354], [423]; cf Ice TV, supra, (2009) 239 CLR 458, [171].
Consideration
By his Statement of Claim and affidavit, Mr Douglas claimed to be the author and copyright owner of the artistic works subsisting in the Scobie Breasley and Tom Corrigan medals.[58] Although any authorship or copyright ownership of artistic works subsisting in the Fred Hoysted medal was not distinctly pleaded, a claim for infringement of copyright in that medal, together with the Scobie Breasley and Tom Corrigan medals was made.[59] Mr Douglas deposed that he had not assigned, licenced or sold the copyright in the artistic works comprised in those medals to Racing Victoria, Design Awards or any other party.
[58] Statement of Claim, [1].
[59] Statement of Claim, [14]-[23].
It was for Mr Douglas to establish on the balance of probabilities that he was the author and copyright owner of the artistic works subsisting in the medals: Evidence Act 1995 (Cth), s 140. Further, I accept the respondents’ submission that serious allegations were raised in this proceeding. Mr Douglas bore the onus of proof on the civil standard but having regard to the gravity of the allegations that were made.[60] In particular, Mr Douglas alleged that the infringement of copyright was fraudulently concealed, that the impugned conduct was calculated to mislead and deceive and that the infringements were flagrant.
[60] Evidence Act 1995 (Cth), s 140(2)(c).
At the commencement of the hearing, I enquired of counsel whether the fraud allegation was being pressed and was told that the issue would be considered with his instructor and further, that if the affidavit filed by Racing Victoria (which was said to have mentioned the topic several times), was considered not to establish fraud then it would not be pressed. Nothing was said thereafter to indicate that the claim of fraudulent concealment was not pressed. Closing submissions were made which advanced the claim of fraudulent concealment.
These issues bore particular relevance to the nature of the claim being made. It was submitted that the claim of flagrant concealment stood in marked contrast to one of unconscious infringement and that it was clear no such claim was being made. On the pleadings and evidence, Mr Douglas was advancing a claim that the respondents’ copyright infringement was both flagrant and that it had been fraudulently concealed. Those matters denied a conclusion that the alleged infringements were either innocent or unconscious.
Mr Douglas was not author and did not own copyright
The authorship and subsistence of ownership of copyright was put in issue both before the commencement of and in this proceeding.[61] While Mr Douglas was able to give evidence upon the issue, the determination of whether he had been author of an original work was to be determined objectively.[62]
[61]The Act provides a series of presumptions in favour of subsistence and ownership of copyright, ownership and authorship respectively which in general apply unless those matters are put in issue: see Div. 4, ss 126, 126A, 126B, 127.
[62] Burge v Swarbrick (2007) 232 CLR 336, [63]-[64], [73] (The Court).
Mr Douglas had no copyright in the idea of creating medals depicting the jockeys or trainer. Nor did he have copyright in them as subject matter; the pre-existing images, photographs and postcard of each of Messrs Breasley, Corrigan and Hoysted were not owned by him. The images of those persons were in the public domain.
I accept that the medals the subject of the proceeding should be considered as sculptures or artistic works of craftsmanship within the meaning of the Act. An essential element of Mr Douglas’ claim was that he was the author and thus owner of copyright in the medals and he was put to his proof on those issues.
Mr Douglas first prepared a series of concept drawings. Insofar as those drawings merely copied the images in the photographs that he was supplied, the drawings were not original work. However, such original artistic work as was undertaken by Mr Douglas and Ms Mason and was their authorship. In Elwood Clothing,[63] the Full Court stated that copyright law did not protect concepts. However, it is a separate question whether there was original artistic work in the eight concept drawings such that Mr Douglas was the author and copyright owner. Ultimately, Mr Douglas was clear that the eight concept drawings had never been provided to Mr Forwood. Those concept drawings were supplied to Hardy Bros and not Mr Forwood who had no access to whatever original artistic work inhered in them.
[63] [2008] FCAFC 197, [80].
There was real contest as to what drawings Mr Forwood had been supplied with. Mr Douglas said that later iterations of the eight concept drawings were prepared and provided to Mr Forwood. Those later drawings were not tendered in evidence.
No submissions were made whether any concept or working drawing bore a quality that was sufficient in the circumstances to support a conclusion that the design of the medals as embodied in those drawings was sufficiently finished to be in material form and so attract the protection afforded by the Act.[64] The absence of such submissions may well be explained by the absence of this evidence.
[64] Cf Ricketson, [7.20] and cases cited at fn 1.
Mr Douglas’ evidence was also equivocal as to which sketch, concept drawings or working drawings he had supplied to Mr Forwood. At the least, it became clear that Mr Douglas had provided a series of oral instructions as to the particular features which he wanted to be included in the design for the Scobie Breasley medal.
As the evidence unfolded, it was beyond argument that Mr Douglas had not produced the actual dies from which the medals had been cast. Consideration of the detail of the evidence confirms that the idea for the making of the medals had been an initiative of Racing Victoria, or more precisely, its predecessor. Mr Douglas had been invited by Hardy Bros to furnish some designs and to that end had been provided some photographs and a postcard of the jockeys and trainer.
I find that Mr Douglas had supplied Mr Forwood with the photographs of the jockeys. The instructions given by Mr Douglas as to the features that he wanted to be incorporated in the design took their context from the photographs, the postcard and perhaps any sketch with which he had been supplied. Mr Douglas had no copyright in the subject matter of the images contained in those photographs or postcard.
On no view had Mr Douglas prepared the final design embodied in the medals. He agreed both that he had not drawn the final images as had appeared in those medals and that they had been Mr Forwood’s work. Contrary to Mr Douglas’ evidence-in-chief, he was not the person who had created the tools and dies for the pressed medal designs. He had in fact contracted that work to Mr Forwood.[65] On the facts of this case, the final expression of the idea comprised in the dies from which the medals were cast had been Mr Forwood’s and the designs embodied in those dies had been the product of his exertion, labour and activity. The final designs of those medals were embodied in the dies which had been cast by Mr Forwood. Those dies could not have been the work of Mr Douglas – he was not a tool maker. Mr Douglas had not provided final drawings to Mr Fowood with instructions to replicate them.
[65]The parties raised but made no issue as to whether Mr Forwood was a sole trader or conducted his business though a company.
Viewed more broadly, Mr Douglas had the role of a facilitator, or middleman, who had prepared concept drawings, obtained the order, supplied the sterling silver, collected the enamelled sterling silver medals that Mr Forwood had cast, finished the medals with the blanking tools, arranged for the medals to be gold plated, coloured and finished, then had the medals boxed and delivered to Hardy Bros.
There was no evidence as to the express terms of the agreement pursuant to which Mr Douglas had retained Mr Forwood to produce the dies and blanking tools or to manufacture the medals. What is clear is that Mr Forward was a contractor.
There was scant evidence as to the terms of any agreement between Mr Douglas and Hardy Bros or Racing Victoria for the supply of the medals. While I entertain no doubt that Mr Douglas had made a series of agreements for the supply of medals in 1996 – 2003, there was no evidence or submission to support a conclusion that a term of the agreement was that copyright subsisting in the artwork and design of the medals was or would continue to be owned by Mr Douglas.
Mr Douglas was clear that Mr Forwood had manufactured the medals for him in each of the years that he had been retained as the supplier.
While I am satisfied that the work comprised in the medals was manufactured in Australia, Mr Douglas has not persuaded me to the requisite standard as to what, if any, work was original artistic work or that he was the author of those works. I am further not satisfied that Mr Douglas was the copyright owner in the medals and thus, did not have the exclusive right to reproduce any of those works. As he was neither author nor owner of the copyright in the medals, Mr Douglas had no title to an action for infringement of copyright.
Reliance was placed on Seafolly. A principal point of distinction between Seafolly and the present case is that it was common ground that Seafolly owned the copyright in two of the subject works and the court held that Seafolly was owner of the third work.[66] In the present case, both authorship in the works and ownership in the copyright were determinative issues.
[66] (2014) 313 ALR 41, [16], [415].
No copying
It was for Mr Douglas to establish on the balance of probabilities that the circumstances gave rise to a reasonable and definite inference of infringement: Allam v Aristocrat Technologies Australia Pty Ltd.[67] The court is required to feel an actual sense of persuasion of infringement.[68]
[67] (2012) 95 IPR 242, [115]-[116] (Bennett, Middleton and Yates JJ).
[68] Ibid.
Each of Mr Douglas, Ms Mason and Mr Forwood respectively began with common subjects – images of the jockeys and trainer. Each of them sought to give artistic expression to the idea of creating an image of the subject jockeys and trainer. So too did the authors of the Corrigan postcard and the medals produced by Design Awards in 2008. The common features of the images of each of the subject jockeys and trainer were not a protected element of the works. What was entitled to copyright protection was ownership of the original work comprised in the author’s individual design. Mr Douglas could not legitimately complain that other persons may have brought their own respective artistic expression, labour and exertion to the creation of a medal depicting either of the jockeys or the trainer.
The question of identifying in the allegedly infringing work that which had been taken, derived or copied, was complicated by reason that no real attempt was made to identify those parts of the artistic works to which exception was taken. This objection was made clear on the respondents’ defence. While the task of determining infringement may not be assisted by assessing the dissimilarities and similarities of the competing works, beyond references in the case of one jockey to ideas concerning the jawline, hair length, eye socket, ear and style of dress the court was not assisted by submissions as to how or why the post 2008 medals resembled or closely resembled the medals supplied by Mr Douglas up to 2003.[69]
[69] Cf SW Hart & Co, (1985) 159 CLR 466, 474 (Gibbs CJ).
I have been equally challenged in the qualitative determination whether parts of the allegedly infringing works contained reproductions of any original artistic works in the pre-2003 medals.
I have examined the medals in issue. I accept the respondents’ submissions that it has not been established that the post-2008 medals resembled or closely resembled the medals supplied up to 2003. It will be recalled that none of the concept drawings in annexures A-D to Mr Douglas’ affidavit were supplied to Mr Forwood and none of the other concept or working drawings or any sketches were in evidence. A qualitative evaluation of the concept drawings with the medals produced from 2008 is made very difficult by the poor quality of the images contained in annexures A-D. Of the eight concept drawings supplied by Mr Douglas to Hardy Bros in annexures A-D:
a)neither of the concept drawings of Scobie Breasley bears any resemblance to any medal since produced. In Mr Douglas’ concept drawing of Scobie Breasley there is the use of a horse shoe the originality of which may be questioned. The new Scobie Breasley and all new other medals did not use a horse shoe;
b)Mr Douglas’ concept drawings of Tom Corrigan are not the same as the Tom Corrigan medal that was cast from Mr Forwood’s die and many of them bear no resemblance to the final medal at all;
c)It is impossible to discern from Mr Douglas’ concept drawings whether the drawing marked ‘Not Yet’ is of Fred Hoysted.
As is further apparent from the images incorporated in the respondents’ defence, there are marked differences in the pre and post 2003 medals.
On an assumption that they contained some original artistic work, I have been unable to identify in the alleged infringing works any original part which was taken from the pre-2003 medals.
I am not satisfied that there was actual copying of the medals. No attempt was made in cross-examination to establish that this occurred.
As the subject matter in each of the works was pre-existing and in the public domain, had I concluded that there had been unconscious copying of the original work embodied in the medals, it would have been necessary that Mr Douglas to establish a very close degree of copying of that work or a substantial part of it.
As none of the concept drawings that were tendered by Mr Douglas in chief were supplied to Mr Forwood he had no access to those works. As the sketch and other drawings supplied to Mr Forwood were not tendered in evidence, I cannot be satisfied that any of the post-2008 medals replicated or substantively copied any original work that may have been contained in those sketches or concept drawings.
Mr Douglas’ agreed that in no case had there been reference to a final drawing that actually corresponded with any medal that was cast by Mr Forwood. And as the evidence demonstrated, the reason why that was so was that Mr Douglas had not produced such a drawing. He accepted that they had been made, not by him, but by Mr Forwood.
While Mr Douglas issued instructions to Mr Forwood of his ideas as to particular features which he wanted to have incorporated in the designs of the medals, copyright did not inhere in those ideas or concepts.
I also accept that photographs of each of the subjects were available. Those photographs were provided, whether by Racing Victoria or Hardy Bros, to Mr Douglas to provide him with images of the subjects in order that he could prepare concept drawings. The evident purpose of doing so was to enable a likeness to be rendered in the medals that were to be awarded. In this context, it would seem to be inimical to the purchaser’s objects of awarding such medals at an annual presentation, that they bore no likeness to their subject. Had it been considered appropriate to provide such photographs or postcards to Mr Douglas it made as much, if not more, sense that they would be provided to the person who was being asked to design the image from which the die was to be cast and in turn from which the medals were to be manufactured. As I have found, the available photographs and postcard were provided by Mr Douglas to Mr Forwood.
The claim was advanced on the basis that the copying had been both flagrant and fraudulently concealed. Such allegations were wholly inconsistent with an allegation that there had been any unconscious copying of the design embodied in the pre-2004 medals.[70]
[70]Cf Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2010) 263 ALR 155.
No case was sought to be made that, in the period after 2008, the respondents had made an exact replica of the subject medals using one of the Forwood medals and had simply appropriated the artistic work embodied in the die which Mr Forwood had created. While replication is not the touchstone of copyright,[71] the present case is to be distinguished from the facts in Art Jewels, Allam and Elwood Clothing.
[71] Cf SW Hart & Co (1985) 159 CLR 466, 482 (Deane J).
Counsel submitted that a feature of the designs in Mr Douglas’ concept and working drawings was that a distinctive coloured border had been assigned to the medals: Scobie Breasley (green), Tom Corrigan (blue) and Fred Hoysted (red). Difficulties in the submission included that: (1) the genesis of this idea had been taken by Mr Douglas from the blue border which had been used on the postcard of Tom Corrigan; (2) no such border appeared in any concept drawing in annexures A-D; (3) quite different colouring was employed post-2008. To my mind, there was nothing inherently or at least sufficiently original in this aspect of a design. In and of itself, the use of a coloured border was not sufficient to establish reproduction.
A fundamental difficulty in relation to substantial reproduction was that the subject drawings were not tendered in evidence. Mr Douglas’ evidence was that the eight concept drawings which he had supplied to Hardy Bros had not been given to Mr Forwood and that some other later sketch and drawings had been supplied to him. Insofar as counsel placed reliance upon Mr Douglas’ instructions for the design of the Scobie Breasley medal, it is clear that he had provided instructions to Mr Forwood concerning particular features of the design which he desired Mr Forwood to incorporate in the preparation of the die. He did so given the lateness of the order. No actual copying had occurred because the work had been done based on verbal instructions.
I reject the submission that any intention to steal the image created by Mr Forwood occurred in the manner alleged in closing submissions. On that issue, this was not a matter about which opinions might differ. There was no evidence of animus furandi.
Insofar as it was submitted in Mr Douglas’ closing address that Nocton v Lord Ashburton[72] remained good law, I accept that submission; however, the immediate relevance to this case of the principles stated by the House of Lords in that appeal was not articulated.
[72] [1914] AC 932.
I am not satisfied on the whole of the evidence, that the circumstances give rise to a reasonable and definite inference of infringement. Nor do I have a sense of actual persuasion that infringing conduct has occurred.[73] For those reasons the copyright claim should be dismissed.
[73] Allam, supra (2012) 95 IPR 242, [115]-[116], [164]-[165].
No fraudulent concealment
No submissions were made in relation to the legal principles to be applied respecting the suspension of limitation periods.
Section 134 of the Act sets a six year limitation period for the bringing of an action for infringement of copyright. Six and fifteen year periods of limitation for the commencement of a proceeding on a cause of action in contract and upon a specialty respectively are prescribed by ss 5(1)(a) and 5(3) of the Limitations of Actions Act 1958 (Vic).
As noted, Mr Douglas’ relied upon s 27 of the Limitations of Actions Act 1958 (Vic) as suspending the commencement of the limitation period for the commencement of the proceeding in respect of a breach of contract. By s 27(b), where a period of limitation is prescribed by that Act, and a right of action is concealed by fraud, a period of limitation shall not begin to run until the plaintiff has discovered the fraud. For the purposes of limitation periods, the meaning of fraud and concealment have been construed as being of wide ambit.[74]
[74] Limitation Periods, McGee 8th Ed [20.015]-[20.016].
It may be accepted that s 27 could be pleaded in aid of the cause of action for breach of contract, but otherwise it is not immediately obvious why s 27 of the Limitations of Actions Act had operative effect in relation to the limitation period fixed by s 134 of the Act for the commencement of an action for copyright infringement.[75]
[75]Cf Laws of Australia, Limitation of Actions, 4th Ed (Handford), [5.10.480], [5.10.2390] and cases cited. In some jurisdictions, the copyright legislation affords protection in cases of fraudulent concealment: Limitation Periods, McGee 8th Ed [27.041].
A principal reason for the enactment of limitation periods is the protection of persons against claims relating to events which occurred many years earlier and in relation to which they and their witnesses may have little recall and for which relevant documentary records may no longer be possible.[76] This reason was of particular relevance where the present claim related to issues occurring as long ago as 1996.
[76] Handford, [5.10.120] and cases cited.
I accept the submission that on the evidence in this case it seemed nonsensical to suggest that there had been either a flagrant or fraudulent concealment of any copying. Mr Douglas bore the onus of proof on this serious allegation. Mr Douglas’ evidence was that his usual practice had been to contact Racing Victoria each year with a view to procuring a further order for the supply of the medals. He had done so from 1997 – 2003 and in 2004 was told that Racing Victoria had taken its custom elsewhere.
When, in 2007, he discovered via a newspaper an image of a medal, Mr Douglas immediately took action to vindicate his rights. By the time that he had instituted a proceeding, Design Awards had produced the first series of medals upon Ms Coughlan’s instructions. The litigation was resolved upon the terms embodied in the deed with no admission of liability. An undertaking was given and Racing Victoria promptly delivered up all of the medals then held.
The evidence by Ms Coughlan, which I accept, and which I was asked to accept, was that Racing Victoria decided to make new medals because of the litigation which Mr Douglas had initiated in late 2007 and that Design Awards were retained to and did design new medals that were awarded in August 2008 to the winner of the Scobie Breasley, Tom Corrigan and Fred Hoysted Awards respectively.
In May 2008, Design Awards charged Racing Victoria costs of $2,500 per medal for the tooling of new designs, dies and I assume, blanking tools. Ms Coughlan’s evidence was that new medals were produced by Design Awards, supplied to Racing Victoria and awarded to their recipients in August 2008. All of those events occurred in the context of Mr Douglas’ pending litigation and the negotiations which resulted in execution of the deed in the period June – July 2008.
Contextually, Mr Douglas’ evidence had been that the manufacture of the Scobie Breasley medal had become a major emergency by July 1996. Similarly, the design of the new medals was a task that had to be well underway by May 2008 – that is, before execution of the deed – so that they were ready for the annual presentation in August 2008.
Racing Victoria obtained the supply of those medals in 2009 – 2016. As was put in the course of closing submissions, the conduct which Mr Douglas sought to impugn occurred annually and in ‘broad daylight.’ The prospect that it would go undetected in 2008 or from 2008 – 2016 was not explained.
Mr Douglas now submits that the respondents continued to replicate the Forwood medals in the period 2008 – 2016, that they did so flagrantly and at the same time did so in a manner fraudulently calculated to conceal such copying from being discovered.
I reject the Jones v Dunkel[77] submission that was made on behalf of the applicant. The failure to call evidence from Design Awards could not be called in aid to fill a gap in the evidence. It was not for the respondents to lead evidence in answer to a case that was not put. There was force in the submission that the most that could be inferred from a failure to call evidence from Design Awards was that the persons having involvement in 2008 in the implementation of the instructions from Racing Victoria to design new medals now had no independent recollection of what had occurred: cf Australian Securities and Investments Commission v Hellicar.[78]
[77] (1959) 101 CLR 298.
[78](2012) 247 CLR 345, [168] (French CJ, Gummow, Hayne, Crennan, Kiefel and Bell JJ); [258] (Heydon J).
More tellingly, the respondents’ viva voce evidence could not have improved their case as proved by the tender of the invoice from Design Awards which expressly stated that Design Awards was charging Racing Victoria for the design and tooling costs associated with the design of new medals. It was not for the respondents to prove that those instructions had not been followed.
While Ms Coughlan was cross-examined, it was not put to her that either she or any other person on behalf of the respondents had, by act or omission, engaged in any fraudulent or malign conduct.
The highest that the submission of fraudulent concealment rose to was that in contrast, for example, with the Brownlow medal, very few people (apparently) attended Racing Victoria’s annual awards. It was accepted that the annual Racing Victoria ceremony was neither a covert event, nor held under cover of darkness. Exhibited to Ms Coughlan’s affidavit were media photographs of the successful jockeys which spoke loudly to the very real publicity which the presentation of those awards attracted. There is little reason to doubt that an express object of the timing of that event in August each year was to generate such publicity as a precursor to the Spring Carnival.
Mr Douglas advanced his case on the basis that he has been a supplier of jewellery in Melbourne since 1969 and that he is known in the jewellery industry for the supply of horse racing jewellery, including to Mittys. The case was presented as one in which Mr Douglas had supplied medals from 1996 – 2003 and had then brought proceedings in 2007 to enforce copyright claims in respect of those medal designs. The case then sought to be made was that, having executed the deed, Mr Douglas had no apparent interest in the awarding of those medals until 2016. The evidence adduced to that effect was unconvincing.
I accept the respondents’ submissions that there was no evidence capable of supporting conclusions that the medals designed by Mr Forwood had been flagrantly copied in the period 2008 – 2016 or that the fact of such flagrant copying had been fraudulently concealed.
Had it been necessary to do so I would have upheld the respondents’ limitation defences upon the claims for infringement of copyright, breach of contract and misleading or deceptive conduct which predated 4 May 2011.
Subsidiary claims
The parties made no oral or written submissions in relation to the subsidiary claims for contravention of the Australian Consumer Law or breach of the deed. The case was run on the implicit basis that the success or failure of those claims depended upon Mr Douglas being the author and owner of the copyright in the medals. As the question of authorship and ownership has been determined adversely to Mr Douglas it follows that those claims must fail.
As noted, the parties were in dispute that the television broadcast of The Scobie Breasley Story entailed any prominent use of the subject medal. No reference was made to the relevant provisions of the Act which conferred rights for attribution of authorship during such broadcasts.[79] No sufficient evidence was adduced, nor were any submissions made to support any claim that the broadcast on 10 August 2016 by Racing.com entailed any prominent use of the medal such as might constitute a breach of copyright. In particular, while questions of onus were not raised, no evidence was led to enable any assessment to be made whether the inclusion of any image of a Scobie Breasley medal was properly to be regarded as being more than incidental to the principal matters addressed in that documentary.[80]
[79] See Part IX, Div II, ss 193-195AB.
[80] The Act, s 67.
Insofar as a claim for the use of the Scobie Breasley medal in the broadcast of the 1999 documentary entailed any breach of license or copyright for want of attribution of authorship, it is dismissed.
Conclusion
For the foregoing reasons, the application must be dismissed.
I certify that the preceding two hundred (200) paragraphs are a true copy of the reasons for judgment of Judge A Kelly
Date: 24 January 2019
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