Flags 2000 Pty Ltd v Smith

Case [2003] FCA 1067

FEDERAL COURT OF AUSTRALIA

Flags 2000 Pty Ltd v Smith [2003] FCA 1067

COPYRIGHT – infringement of copyright in the Aboriginal flag – earlier declaration of the Federal Court that applicant the author of the design of the Aboriginal flag and owner of the copyright therein – second applicant had exclusive license to reproduce, manufacture, sell and distribute flag – unauthorised display and sale of the flag by the respondent – sales of the flag after respondent made aware of applicants’ ownership of copyright and exclusive licence – authorship of design and ownership of copyright put in issue by respondent – whether additional damages should be awarded.

Flags Act 1953 (Cth): ss 5, 36, 38
Copyright Act 1968 (Cth): s 115

Thomas v Brown (1997) 37 IPR 207, applied
Cala Homes (South) Limited v Alfred McAlpine Homes East Limited (No 2) 23 [1996] FSR 36, referred to
Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 38 IPR 451, referred to
XL Petroleum (NSW) Pty Ltd v Caltex Oil (Australia) Pty Ltd (1985) 155 CLR 448, referred to
Raben Footwear Pty Ltd v Polygram Records Inc (1997) 37 IPR 417, applied
MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd (1999) 43 IPR 275, considered
Milpurrurru v Indofurn Pty Ltd (1995) 30 IPR 209, considered
Colgate‑Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225, referred to
Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397, referred to
J‑Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (WA Branch) (No 2) (1993) 46 IR 301, referred to
Ragata Developments Pty Ltd v Westpac Banking Corporation (unreported, Davies J, Federal Court of Australia, 5 March 1993), referred to
Carson v John Fairfax & Sons (1992) 178 CLR 44, referred to
Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578, referred to
Autodesk Inc v Yee (1996) 35 IPR 415, referred to
Bailey v Namol Pty Ltd (1995) 30 IPR 147, referred to

FLAGS 2000 PTY LTD (ACN 050 021 666) & ANOR v DAVID GEORGE ERROL SMITH (trading as “FLAGS AND POLES”)

V 1098 of 2001

GOLDBERG J
7 OCTOBER 2003
MELBOURNE


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 1098 of 2001

BETWEEN:

FLAGS 2000 PTY LTD
(ACN 050 021 666)
First Applicant

HAROLD JOSEPH THOMAS
Second Applicant

AND:

DAVID GEORGE ERROL SMITH
(trading as "FLAGS AND POLES")
Respondent

JUDGE:

GOLDBERG J

DATE OF ORDER:

7 OCTOBER 2003

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.The respondent, whether by himself, his servants, agents or otherwise howsoever, be restrained permanently from infringing the copyright of the second applicant in the artistic work being the design for the flag described in sch 1 to the proclamation dated 27 June 1995 under s 5 of the Flags Act 1953 (Cth) and published in the Commonwealth of Australia Gazette Number S259 of 14 July 1995,…

Continue reading Flags 2000 Pty Ltd v Smith

Sign in free to access the full text

Details
AGLC
Flags 2000 Pty Ltd v Smith [2003] FCA 1067
Case
[2003] FCA 1067
Decision Date

CaseChat Overview and Summary

Flags 2000 Pty Ltd, the holder of a licence to manufacture and distribute the Aboriginal flag, brought an action against Smith, who was selling the Aboriginal flag without authorisation. Smith had been informed of the copyright infringement through a letter sent by Flags 2000. The Federal Court of Australia was tasked with deciding whether Smith had infringed the copyright held by Thomas, the author of the Aboriginal flag design, and whether Flags 2000 was entitled to an injunction and damages.

The primary legal issues were whether Smith's actions constituted copyright infringement and whether Flags 2000, as the licensee, had the right to enforce the copyright against Smith. The court needed to determine if Smith was aware of the copyright in the Aboriginal flag and whether he intentionally or negligently infringed it by selling the flag without a licence. The court also needed to decide the appropriate relief for the infringement, including whether an injunction and damages were warranted.

The court found that Smith was indeed aware of the copyright in the Aboriginal flag and had intentionally infringed it by selling the flag. Despite the letter not reaching him, the court held that Smith should have been aware of the copyright due to the public nature of the licence and the prior communication with Flags 2000. The court granted Flags 2000 an injunction to prevent further infringement and awarded damages for the infringement. The court also ordered Smith to deliver up all infringing copies of the Aboriginal flag and pay costs to Flags 2000.

In summary, the court ruled in favour of Flags 2000, permanently restraining Smith from infringing the copyright in the Aboriginal flag design. Smith was ordered to surrender all infringing flags, pay damages, and cover Flags 2000’s costs.

Orders

Orders of the court

1. The respondent, whether by himself, his servants, agents or otherwise howsoever, be restrained permanently from infringing the copyright of the second applicant in the artistic work being the design for the flag described in sch 1 to the proclamation dated 27 June 1995 under s 5 of the Flags Act 1953 (Cth) and published in the Commonwealth of Australia Gazette Number S259 of 14 July 1995, such flag being known as “the Aboriginal flag”.

2. The respondent deliver up within twenty‑eight days of the date of the service of a copy of this order on the respondent all infringing copies of the Aboriginal flag in the possession, power, custody or control of the respondent.

3. The respondent pay to the applicants damages pursuant to s 115(2) of the Copyright Act 1968 (Cth) in the sum of $320.

4. The respondent pay the applicants additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth) in the sum of $1,000.

5. The respondent pay the applicants’ costs of and incidental to the proceeding:

(a) on a party and party basis up to and including the directions hearing on 5 June 2003;

(b) the costs incurred after 5 June 2003 are to include all costs incurred by the applicants, except insofar as they are of an unreasonable amount or have been unreasonably incurred, so that, subject to the above exceptions, the applicants will be completely indemnified by the respondent for their costs incurred after 5 June 2003.

Background

Background to the litigation

On 9 April 1997 the Federal Court of Australia declared that Mr Thomas was the author of the artistic work being the design of the Aboriginal flag and that he was the owner of the copyright subsisting in the Aboriginal flag. That declaration was made by Sheppard J in Thomas v Brown (1997) 37 IPR 207. Mr Thomas’ authorship was contested in that case by two persons not parties to the present proceeding. Mr Smith was not a party in that proceeding.Background Flags 2000 manufactures, distributes and sells flags within Australia. It holds a licence from Mr Thomas to reproduce the Aboriginal flag and the copyright therein until 19 April 2023. In or about April 1998 Flags 2000 became concerned at the extent of complaints which had been raised by Mr Thomas in relation to the unauthorised use of the Aboriginal flag design on a number of items, including flags, by parties who had not been licensed to reproduce the Aboriginal flag. On or about 29 April 1998 Flags 2000 sent a circular letter to all flag operating and manufacturing companies within Australia drawing attention to the fact that the copyright in the Aboriginal flag was held by Mr Thomas. The recipients of the circular letter were told that any reproduction of the design of the Aboriginal flag on flags, banners, pennants or bunting was an infringement of Mr Thomas’ copyright and Flags 2000’s exclusive licence. Flags 2000 noted that it would make available its flags, banners, pennants or bunting at wholesale prices to any company involved in the manufacture, distribution, hire or sale of such items. The circular letter was sent to the respondent, amongst others. The letter was not received by the respondent because he had changed his address. On 12 July 1999 a search of the website of Flags and Poles by Mr James Richardson, the Managing Director of Flags 2000, disclosed that a number of flags were depicted as available for sale. The flags included two sizes of the Aboriginal flag. On the same day Mr Richardson telephoned Flags and Poles and spoke to Mr Smith. Mr Richardson offered to buy an Aboriginal flag which he had seen on the firm’s website and Mr Smith said he had the flag available for sale. Mr Richardson then identified himself and told Mr Smith of Mr Thomas’ copyright and Flags 2000’s exclusive licence in relation to the Aboriginal flag. Mr Richardson told Mr Smith that he was obliged to provide Flags 2000 with details of sales of the Aboriginal flag and asked him to surrender his stock of Aboriginal flags. On the same day he wrote to Mr Smith enclosing a copy of the earlier letter of 29 April 1998 and informing him that the display of the Aboriginal flag on the website and his offer to sell the flag to him was an infringement of Mr Thomas’ copyright. In the letter Mr Richardson required Mr Smith to remove all advertising concerning the Aboriginal flag from the website and to provide details of any sales of the Aboriginal flag and to surrender all Aboriginal flags in his possession.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

GOLDBERG J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: GOLDBERG J

Full text does not contain this section.