Hardingham v RP Data Pty Limited

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FEDERAL COURT OF AUSTRALIA

Hardingham v RP Data Pty Limited [2019] FCA 2075

File number: NSD 1266 of 2018
Judge: THAWLEY J
Date of judgment: 9 December 2019
Catchwords: INTELLECTUAL PROPERTY – Copyright – Action under s 115 of the Copyright Act1968 (Cth) – copyright in photographs and floor plans – whether third party infringed copyright in the works – whether licence between photographer and real estate agencies to be inferred from conduct of the parties – whether licence implied in fact into an informal agreement – scope of inferred or implied licence to real estate agencies
Legislation:

Copyright Act 1968 (Cth) ss 10(1), 13(1), 15, 31(1) 32(1), 32(2), 32(4), 35, 35(3), 35(5), 35(6), 36, 115

Federal Court Rules 2011 (Cth) s 15.13(b)

Cases cited:

Acohs Pty Ltd v RA Bashford Consulting Pty Ltd (1997) 37 IPR 542

Acohs Pty Ltd v Ucorp Pty Ltd (2012) 201 FCR 173

Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 4 IPR 214

Avel Proprietary Limited v Multicoin Amusements Proprietary Limited (1990) 171 CLR 88

Beck v Montana Constructions Pty [1964-5] NSWR 229

Blair v Osborne & Tompkins [1971] 2 QB 78

BP Refinery (Westernport) Pty Limited v Hastings Shire Council (1977) 180 CLR 266

Brambles Holdings Ltd v Bathurst City Council (2001) 53 NSWLR 153

Byrne & Frew v Australian Airlines Limited (1995) 185 CLR 410

Carlton & United Breweries Ltd v Tooth & Co Ltd (11 June 1985, unreported)

Carlton & United Breweries Ltd v Tooth & Co Ltd (1985) 6 IPR 319

Codelfa Construction Pty Ltd v State Rail Authority of New South Wales (1982) 149 CLR 337

Commonwealth Bank of Australia v Barker (2014) 253 CLR 169

Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46

Copyright Agency Ltd v NSW (2008) 233 CLR 279

Gold Peg InternationalPty Ltd v Kovan Engineering (Aust) Pty Ltd [2005] 225 ALR 57

Hawkins v Clayton (1988) 164 CLR 539

Hospital Products Ltd v United States Surgical Corporation (1984) 156 CLR 41

Integrated Computer Services Pty Ltd v Digital Equipment Corp(Aust) Pty Ltd (1988) 5 BPR 97,326

Marks & Spencer plc v BNP Paribas Securities Services Trust Co (Jersey) Ltd [2016] AC 742

R Griggs Group Ltd v Evans [2004] 31 FSR 673

Ray v Classic FM Plc (1998) 41 IPR 235

Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 32 IPR 339

Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) (2011) 196 FCR 1

Torpey Vander Have Pty Ltd v Mass Constructions Pty Ltd (2002) 55 IPR 542

Date of hearing: 4-5 December 2019
Registry: New South Wales
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Copyright and Industrial Designs
Category: Catchwords
Number of paragraphs: 86
Counsel for the Applicant: Mr R Cobden SC and Mr J Sleight
Solicitor for the Applicant: Neville Hourn and Borg Legal
Counsel for the Respondent/Cross Claimant: Mr M D Martin QC and Mr A Messina
Solicitor for…
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Details
Case
[2019] FCA 2075
Decision Date

CaseChat Overview and Summary

The case of Hardingham v RP Data Pty Limited involved the applicants, Hardingham, contesting whether RP Data Pty Limited infringed copyright in relation to photographs and floor plans. The applicants argued that RP Data, through its subsidiary REA, had uploaded their copyrighted works to the realestate.com.au platform without their permission. This case was heard in the Federal Court of Australia. The central legal issues revolved around the interpretation and scope of the licence that the applicants had granted to the real estate agencies and whether this licence extended to RP Data's use of the copyrighted works on the realestate.com.au platform.

The court examined whether the applicants had established that RP Data infringed copyright in the works. The applicants argued that the licence granted to the agencies was limited to marketing purposes and did not extend to allowing the agencies to sub-licence the works to RP Data for uploading to the realestate.com.au platform. In contrast, RP Data and REA argued that the licence was broader and included the right to sub-licence the works. The court found that it was not established that the agencies needed more than a licence to use the works, and therefore, an assignment of copyright was not necessary. Furthermore, the court concluded that the applicants had not proven that RP Data's use of the works on the realestate.com.au platform constituted an infringement of copyright.

The court's reasoning was based on the lack of evidence to support the applicants' claims that the agencies needed the right to exclude the applicants from using the work or the ability to enforce the copyright against third parties. Additionally, the court noted that the applicants did not dispute that they had granted a licence to the agencies, and the dispute was over the scope of that licence. The court concluded that the applicants had not discharged the burden of proving that RP Data had infringed copyright in relation to the works.

The court ordered that by 4.00pm on 13 December 2019, the parties file agreed minutes of order reflecting these reasons for judgment or, in the absence of agreement, competing minutes of order. In the event of failure to agree, the matter would be listed at 9.00am on 17 December 2019 for argument including as to costs.

Orders

Orders of the court

1. By 4.00pm on 13 December 2019, the parties file agreed minutes of order reflecting these reasons for judgment or, in the absence of agreement, competing minutes of order.

2. In the event orders cannot be agreed, the matter be listed at 9.00am on 17 December 2019 for argument including as to costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

For the reasons which follow, the applicants have not established that RP Data infringed copyright in respect of any of the works the subject of the separate question. BACKGROUND FACTSThe applicants and the real estate agents The evidence adduced in respect of the arrangements between the applicants and the agencies was minimal, consisting primarily of Mr Hardingham’s affidavit evidence and invoices issued by REMA. REMA was usually engaged to supply photographs and floor plans to agencies by a telephone call from a real estate agent. An agent, on behalf of the agency, would typically request that Mr Hardingham attend a particular property and take photographs to be used in a marketing campaign. Mr Hardingham said that, generally, he would be told that a property had been listed and when the campaign was due to start. He would be asked if he could visit the property and take photos for the campaign and, if relevant, prepare a floor plan. The parties proceeded on the basis that Mr Hardingham took the photographs and prepared the floor plans. The agencies received photographs and floor plans from REMA in an editable digital form. The agencies paid invoices issued by REMA. The agencies uploaded the photographs and floor plans to the realestate.com.au platform. The applicants knew that one of the purposes for which the photographs and floor plans had been commissioned from REMA was to upload them to that platform. The photographs were also published on the relevant websites of at least some of the agencies the subject of the relevant twenty properties and, I infer, probably on each of the relevant websites. Although there was no direct evidence to this effect, it is likely that the works were also published in brochures, magazines and general advertising material. The realestate.com.au platform REA sells listing subscriptions to real estate agencies (typically a company), rather than franchise groups or individual agents. To list a residential property on the realestate.com.au platform, a real estate agency must hold a registered real estate licence and enter into a subscription agreement of which there are different levels. Each subscription agreement included an express acknowledgement by the real estate agency that the:… terms stipulated in this form and in the Terms and Conditions contained on our website ( form part of this Agreement… The terms and conditions on the realestate.com.au website included an express licence from the real estate agents to REA in the following terms:5. Your acknowledgementsYou acknowledge and agree that at all times during the Term of this Agreement:(a) in consideration for us granting a right to upload listings to the Platform and the other services we provide, you grant us an irrevocable, perpetual, world-wide, royalty free licence to publish, copy, licence to other persons, use and adapt for any purpose related to our business any content you provide to us during the Term, and this licence survives termination of this Agreement by you or us; … (c) you are solely responsible for the content of your listings and any errors or omissions in your listings - our role is one of publisher; …

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

It was not established that the agencies were equitable owners of copyright in the works or that an assignment of copyright, as opposed to the granting of a licence, was necessary to give business efficacy in the circumstances. It was not established, for example, that the agencies needed, in addition to the right to use the copyright works by uploading them onto the realestate.com.au platform, the right to exclude the applicants from using the work or that the agencies required the ability to enforce the copyright against third parties. RP Data was not able to identify any interest or right on the part of the agencies which would be insufficiently recognised by a licence as opposed to an assignment of copyright.CONCLUSION The applicants have not discharged the onus of establishing that RP Data has infringed copyright in relation to the works the subject of the separate question.

Ratio Decidendi

Legal Principle Established

It follows from these provisions that, in order for there to have been an infringement of copyright, the conduct engaged in by RP Data must have been without the licence of the owner: s 36(1). In answering that question, s 15 might operate to deem the conduct of RP Data to have occurred with the licence of the owner if the relevant act was authorised by a licence binding on the owner, for example, by a licence held by the agencies or REA.CONSIDERATION As mentioned, the applicants did not dispute that they granted a licence to the agencies. Indeed, their case was that they did grant a licence to the agencies and that the licence so granted permitted the agencies to grant a sub-licence. Nor did the applicants submit that a sub-licence granted by the agencies to REA could not have authorised REA, in turn, to grant a sub-licence. The applicants were correct not to submit that the admitted sub-licence granted to the agencies did not extend to authorising the grant of further sub-licences. For example, the agencies could have granted a sub-licence to a newspaper company for the marketing of the properties and that newspaper company could in turn have sub-licensed the copyright to a series of affiliated or associated entities to expand the marketing campaign. The question of what such a sub-licence could authorise, and in particular whether it could have expanded upon the sub-licence admittedly given by the applicants to the agencies, is a different matter. As mentioned, the parties were in dispute as to the scope of the licence granted by the applicants to the agencies. The applicants submitted that the licence was implied, that it was a “limited licence to use the photographs and floor plans for the limited purpose of marketing for sale or lease” and that it ended on completion of the relevant sale or lease transaction the subject of the marketing campaign. RP Data and REA contended the licence was express or implied and that it was, in substance, equivalent to the express licence the agencies purported to grant to REA when uploading the photographs to the realestate.com.au platform:·RP Data contended that the licence was “a licence to use, reproduce, modify, adapt, translate, distribute, publish, create derivative works from and display the photographs and/or floor plans in marketing for sale or lease of the properties depicted therein”. This licence was said to be “perpetual, irrevocable, world-wide, royalty-free and include[d] the right to sub-licence”. ·REA contended that the applicants “granted the real estate agents who commissioned and paid for the production of the artistic works a licence to use the artistic works for marketing in relation to the sale or lease of the properties depicted in the artistic works”. REA adopted a broad meaning of the word “marketing” in this context, which included publication of the works for historical information and research purposes. REA contended that the licence was “perpetual, irrevocable, world-wide, royalty-free and include[d] the right to sub-license”.