Eagle Rock Entertainment Limited v Caisley - [2005] FCA 1238

FEDERAL COURT OF AUSTRALIA
Eagle Rock Entertainment Limited v Caisley [2005] FCA 1238
INTELLECTUAL PROPERTY – copyright – assessment of damages under s 115 of the Copyright Act 1968 (Cth) – making of master copies of infringing DVD in Australia – authorisation of Australian and foreign licensees to make copies of the infringing DVD for sale – “licence fee” approach to damages inappropriate – compensatory damages assessed by estimate of losses caused to copyright owner by the competition posed by the respondent’s sale of infringing DVDs – additional damages awarded for flagrant, deliberate and serious infringement of copyright
Copyright Act 1968 (Cth) s 115
Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] 1 Ch 323 referred to
Microsoft Corp v Atifo Pty Ltd (1997) 38 IPR 643 referred to
Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 referred to
Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 111 ALR 269 applied
Columbia Pictures Industries Inc & Tri-Star Pictures Inc v Luckins (1996) 34 IPR 504 cited
Microsoft Corporation v TYN Electronics Pty Ltd (in liq) (2004) 63 IPR 137 cited
Raben Footwear Pty Limited v Polygram Records Inc (1997) 75 FCR 88 referred to
Sullivan v FNH Investments (2003) 57 IPR 63 referred to
EAGLE ROCK ENTERTAINMENT LIMITED AND MARSHBROOK LIMITED v ROBERT CAISLEY (T/AS RBC ENTERTAINMENT)
NSD 834 OF 2004
TAMBERLIN J
SYDNEY
5 SEPTEMBER 2005

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 834 OF 2004

BETWEEN:

EAGLE ROCK ENTERTAINMENT LIMITED
FIRST APPLICANT

MARSHBROOK LIMITED
SECOND APPLICANT

AND:

ROBERT CAISLEY (T/AS RBC ENTERTAINMENT)
RESPONDENT

JUDGE:

TAMBERLIN J

DATE OF ORDER:

5 SEPTEMBER 2005

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The respondent is to pay damages in the amount of $365,000.00 to the applicants.
2.The respondent is to pay the applicants’ costs on this application for assessment of damages.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 834 OF 2004

BETWEEN:

EAGLE ROCK ENTERTAINMENT LIMITED
FIRST APPLICANT

MARSHBROOK LIMITED
SECOND APPLICANT

AND:

ROBERT CAISLEY (T/AS RBC ENTERTAINMENT)
RESPONDENT

JUDGE:

TAMBERLIN J

DATE:

5 SEPTEMBER 2005

PLACE:

SYDNEY

REASONS FOR JUDGMENT

These reasons relate to the assessment of damages for copyright infringement of a cinematograph film made from live performances of Eric Clapton and his band on 14 and 15 July 1986 (“the film”).
BACKGROUND
On 21 May 2004, proceedings were commenced by Eagle Rock Entertainment Limited (“Eagle”) and Marshbrook Limited, which were respectively the exclusive licensee and the owner of the copyright in the film. The respondent, Robert Caisley (“Caisley”), has not opposed the application nor proffered any explanation as to his non-appearance on this hearing.
On 30 June 2004, Beaumont J made consent orders restraining Caisley from infringing copyright by doing any of the following acts without the licence of the applicants:
(a)making, or authorising the making of, a copy of the film;
(b)communicating, or authorising…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] FCA 1238
Decision Date: 5 SEPTEMBER 2005

CaseChat Overview and Summary

Eagle Rock Entertainment Limited and Marshbrook Limited, the copyright holders of a film of live performances by Eric Clapton and his band, sought damages from Robert Caisley for copyright infringement. Caisley had breached court orders by continuing to sell and distribute copies of the film. The matter came before the court to assess the damages owed to the applicants. The court had to determine whether the infringement was flagrant and whether additional damages were appropriate, considering the factors outlined in section 115(4) of the Copyright Act 1968 (Cth). The court noted Caisley's failure to comply with discovery orders and his withholding of information about licensing the DVD in other territories, which supported the applicants' claim for additional damages. After considering all relevant matters, the court ordered Caisley to pay damages of $365,000.00 to the applicants and to cover their costs on the application for assessment of damages.

Orders

Orders of the court

1. The respondent is to pay damages in the amount of $365,000.00 to the applicants.

2. The respondent is to pay the applicants’ costs on this application for assessment of damages.

Background

Background to the litigation

These reasons relate to the assessment of damages for copyright infringement of a cinematograph film made from live performances of Eric Clapton and his band on 14 and 15 July 1986 (“the film”).BACKGROUND On 21 May 2004, proceedings were commenced by Eagle Rock Entertainment Limited (“Eagle”) and Marshbrook Limited, which were respectively the exclusive licensee and the owner of the copyright in the film. The respondent, Robert Caisley (“Caisley”), has not opposed the application nor proffered any explanation as to his non-appearance on this hearing. On 30 June 2004, Beaumont J made consent orders restraining Caisley from infringing copyright by doing any of the following acts without the licence of the applicants:(a)making, or authorising the making of, a copy of the film;(b)communicating, or authorising the communication of, the film to the public;(c)importing the film for sale, hire or dealing (including licensing);(d)selling, letting for hire or, by way of trade, offering for sale or hire or distributing the film; and,(e)by way of trade, exhibiting the film in public.In addition, Beaumont J ordered Caisley to deliver up all copies of unauthorised DVDs, advertising and promotional material. Discovery was ordered in respect of all documents regarding the quantum of damages or compensation for the purpose of assessing the extent of the infringements. Caisley was also restrained from making certain representations, in trade or commence, including that the unauthorised DVDs did not infringe copyright. Section 115 of the Copyright Act 1968 (Cth) relevantly provides as follows: “(2)Subject to this Act, the relief that a court may grant in an action for an infringement of copyright includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits.…(4)Where, in an action under this section:(a)an infringement of copyright is established; and(b)the court is satisfied that it is proper to do so, having regard to:(i) the flagrancy of the infringement; and(ia)the need to deter similar infringements of copyright; and(ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and(ii)whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analog form into a digital or other electronic machine-readable form; and(iii)any benefit shown to have accrued to the defendant by reason of the infringement; and(iv) all other relevant matters;the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.” (Emphasis added) Caisley has repeatedly failed to comply with the orders for discovery and has withheld information about his licensing of the DVD in territories outside Australia. These matters go to the applicants’ claim for additional damages under subssec 115(4).

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

TAMBERLIN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 834 OF 2004

BETWEEN:	EAGLE ROCK ENTERTAINMENT LIMITED FIRST APPLICANT MARSHBROOK LIMITED SECOND APPLICANT
AND:	ROBERT CAISLEY (T/AS RBC ENTERTAINMENT) RESPONDENT
JUDGE:	TAMBERLIN J
DATE OF ORDER:	5 SEPTEMBER 2005
WHERE MADE:	SYDNEY

JUDGE:	TAMBERLIN J
DATE:	5 SEPTEMBER 2005
PLACE:	SYDNEY