Harpur v Lambourne
[1999] NSWSC 598
•22 April 1999
Reported Decision: [1999] 45 IPR 213
New South Wales
Supreme Court
CITATION: Harpur v Lambourne [1999] NSWSC 598 revised - 13/12/99 CURRENT JURISDICTION: Equity FILE NUMBER(S): 1015/98 HEARING DATE(S): 20/04/99 and 21/04/99 JUDGMENT DATE:
22 April 1999PARTIES :
David Matthew Harpur (Plaintiff)
William Lambourne (Defendant)JUDGMENT OF: Bergin J
COUNSEL : R. Cameron (Plaintiff)
W. Lambourne in person (Defendant)SOLICITORS: Sylvia Liddle & Associates (Plaintiff)
W. Lambourne in person (Defendant)CATCHWORDS: Application for restraining order against infringement of copyright; s32 of Copyright Act (Cth) 1968: Literary work. Originality in compilation of Boating Directory. ACTS CITED: Copyright Act (Cth) 1968 - s32, s10, s35(2), s115, s196 CASES CITED: Hollinrake v Truswell (1894) 3 Ch 420
Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396
Baillieu & Anor v Australian Electoral Commission & Anor (1996) 33 IPR 494
Ladbroke (Football) Ltd v William Hill (Football) Ltd (1964) 1 WLR 273
Warwick Film Productions Ltd v Eisinger (1969) 1 Ch 508
Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213
Frank Smythson Ltd v GA Cramp & Sons Ltd 59 TLR 223
MacMillan & Co Ltd v K & G Cooper (1923) 93 LJ PC 113
A-One Accessory Imports Pty Ltd & Ors v Off Road Imports Pty Ltd & Ors (1996) 37 AIPC 37258
Ogden Industries Pty Ltd & Ors v KIS (Australia) Pty Ltd (1982) 2 NSWLR 283
University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601
Australian Consolidated Press Ltd v Morgan (1965-66) 39 ALJR 32
Autodisk Inc v Dyson (1991) 173 CLR 330
O’Brien v Komesaroff (1981-82) 150 CLR 310DECISION: Infringement of copyright
THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISIONBERGIN J
THURSDAY 22 APRIL 1999
1015/98 - DAVID MATTHEW HARPUR v WILLIAM LAMBOURNE
EX TEMPORE JUDGMENT
1 This is an application brought by way of summons by the plaintiff, David Matthew Harpur against William Lambourne, the defendant.
2 The plaintiff claims an order that the defendant be restrained from infringing the plaintiff's copyright in a literary work entitled The Pittwater Hawkesbury Brisbane Water Boating Directory 1998.
3 An oral amendment has been sought during the course of argument by which it is intended that the order cover the documents contained in exhibits A1 to 3, it being therefore to include Pittwater Hawkesbury Brisbane Water Boating Directory 1997, 1998 and 1999.
4 The plaintiff further seeks relief at the plaintiff's election that an order be made that an account be taken of the profits made by the defendant by his conversion and reproduction of the directories and that an enquiry be held to determine the amount of such profits.
5 The plaintiff alleges that the defendant has breached copyright in each of those works.
6 The plaintiff, Mr Harpur, is a yacht broker. He in fact has had quite a deal of experience in the last 17 years in the boating industry. He told me during those 17 years he had worked at various tasks from a fuel marina attendant, working in marina management, yacht sales, motor boat sales, broker management and proprietorship of a brokerage, sail making, yacht rigging, boat hiring, new boat assembly, boat delivery and chandlery and marine parts sales, to name but a few of the areas in which Mr Harpur has worked over the past now really 19 years, or 18 and a half years at least.
7 The plaintiff said that during 1991 he conceived of an idea that a marine industry directory with details of all the various service providers involved in the industry would be something that might be worthwhile. His idea was that everything and everybody to do with the boating industry in Pittwater could be referenced and advertised in such a directory. He said that from 1991 until the middle of 1996 he researched and developed the idea by gathering and compiling necessary information and that he had completed that process by about June 1996.
8 The further detail of what he actually did is worthy of setting out in this case. Mr Harpur said that he was aware that to be of any use the directory had to include all the service providers in the relevant area and the existing directories that he had observed usually only listed businesses which paid to be included and he was of the view that resulted in a less than comprehensive service. He observed that those existing directories were mainly sold through news agencies at a premium. His idea was that any directory he would produce would be issued free of charge from all outlets visited by boat owners and so he had to set about working out how it could be that income could be made to pay for the work for the production of and distribution of the directory.
9 He spoke to many local boat owners and got feed back as to which would be the best outlets and his conclusion was from that work it would be through yacht and boating clubs, marinas and chandlers. He spoke to various people in the boating industry and his feed back, as he called it, was that the great majority of individuals supported the idea. He told me that in 1991 there was a slump in the boating industry and that he decided to, as he put it, shelve the idea until things got better on the economic front.
10 He spent some time in Queensland in 1991 and 1992 and he researched the prospects of a directory for that area. In late 1992 he moved to the Sunshine Coast and did some further research on the possibility of directories both in Queensland and giving some consideration to directories in New South Wales. He also gave evidence, via his affidavit and oral evidence, that for the purpose of preparing for the directory he purchased nearly every known boating magazine at one time or another and collected local publications from the areas in which he was interested.
11 He said he studied the advertisements and was soon able to identify patterns for different types of businesses. He then also made estimates for the number of businesses in different fields in each of the areas. He obtained some casual work in Manly in New South Wales which gave him access to a large number of boat owners as well as a good cross-section of the local marine industry personnel and by the end of 1994, beginning of 1995, he had decided that his first task in looking at that research he had done was to publish a directory for the Pittwater waterfront in the northern part of Sydney.
12 He returned to Sydney in January 1995 and on his arrival spent considerable time he said on the Pittwater waterfront observing the then changes since he had returned, or while he had been away in Queensland.
13 He then in March 1995 commenced to compile a list of service providers for the Pittwater directory. He said he had not done this before as that material becomes outdated by reason of change of businesses and closing down of businesses, changes in business names and the like.
14 He created what could be described as a card system and he put the names of these entities on cards and put their addresses on the cards and telephone numbers and he would then put them into alphabetical order. He told me that he took those names from advertisements in local newspapers and that some of them came from his visits to places where several marine businesses were located.
15 He then started a second card system whereby he put them in order under a heading so that headings were created by him. Such headings included upholstery and trimming, sail boarding, fuel supplies, charter and so on. He then placed the cards that he had created in alphabetical order into the system behind those headings. It was the case he said that sometimes one business might appear in two or three categories. For instance, a boat shed which had outlets for sale of fuel and or sale of boating items and also hired boats might appear under boat hire, fuel, equipment, et cetera. So that one business might appear a number of times in his card system.
16 He had to work out, he told me, the most efficient way of selling advertising space and that seemed to be the way in which he would make his income and have capacity to issue or distribute this book for free. To that end he said he drew up another list of businesses but due to their location and in some cases the type of business a sales person would be able to visit them and attempt to sell advertising space in the book. He had researched the costs of advertising in other directories and he set a scale of charges to be used.
17 All of this work he said was done by about April 1996. At that time he was in fact negotiating with an entity company known as Newport Anchorage Pty Ltd for office space in their marina at Newport.
18 For the purposes of people being included in the directory he told me that potential contributors were to be canvassed by sales persons and he needed to research how this could be done with reference to the lists that he had made.
19 In June 1996 he met the defendant, William Lambourne. Mr Lambourne told me that he was a publisher and he owns a small concern called Environmental Publications. He also told me he had been publishing various books and maps for the past 25 years and that he was well aware of and understood the Copyright Act. He said that in June 96 he was introduced to Mr Harpur and they had a discussion about this directory. It is clear that prior to June 1996, although Mr Lambourne might have heard what Mr Harpur was doing, neither man had been aware of the other personally.
20 Mr Lambourne in fact said that when he met Mr Harpur he, Mr Lambourne, proposed what he describes as a partnership. He said that the discussion that they had in June 1996 was such that he, Mr Lambourne, was to be responsible for layout, compilation, design and printing of the publication and that Mr Harpur would be responsible for the collation of a list of names and addresses of service providers. He also said that Mr Harpur said he would be responsible for selling advertising space and the financial accounting.
21 His oral evidence was that when they met and had this first discussion he said that, "We both have skills, lets combine them and produce a marine directory." (p 64) He told Mr Cameron in cross-examination that the first time he had ever talked to Mr Harpur about the directory was during the conversation in which he suggested they combine to produce the marine directory. He told me that he did know at that time that Mr Harpur was working on a marine directory and further that he did know that Mr Harpur was looking for somebody to publish it. He acknowledges that he, of course, was a publisher at the time.
22 He also told me that he said to Mr Harpur:
"We will produce a directory together, we will publish that directory, we will deduct the costs involved in producing the directory from our total revenue and we will split the revenue 50 /50."
23 He wasn't able to say how long the partnership was to endure. He did say that it ended in November or December 1996.
24 Mr Harpur, on the other hand, rejects any suggestion that what he agreed to do with Mr Lambourne was to go into partnership. He said that he was ready to have his directory provided to a publisher to assist him with publication but that the conversation that occurred in June 1996 with Mr Lambourne when they first met was quite different. He said that what was said by Mr Lambourne was as follows:
"Let me do the publishing, I'll foot all the expenses, I'll reimburse myself out of advertising income for what it costs me including printing costs, I'll guarantee my fees as a publisher will not exceed an amount equivalent to one half of the net profit."
25 Mr Harpur gave evidence that he told Mr Lambourne he would think about it and some four or five days later he informed Mr Lambourne that the offer was acceptable to him, that he had a few months more work to do and he was aiming to issue the directory before Christmas.26 Mr Lambourne denies this conversation occurred. Mr Harpur maintained that they were the terms of the conversation in his evidence and he also said he had a conversation with Mr Lambourne in which he said to him, "I would like the agreement to be in writing.", to which Mr Lambourne said, "There's no need to do that."
27 Mr Harpur said Mr Lambourne said, "It will not be necessary, I have done a lot of publishing and have never found the necessity for a written agreement." Mr Lambourne, on the other hand, says there was no discussion of that nature in respect of a written agreement.
28 So it is that the plaintiff alleges an arrangement whereby Mr Lambourne would assist Mr Harpur with publication for which he would be reimbursed his expenses and would be paid a fee no more than 50 per cent of the profits. If his fee was more than 50 per cent of the profits he would only receive 50 per cent or an amount equivalent to 50 per cent. If his fee was less than 50 per cent of the profits he would be paid the actual amount of the fee and not a flat 50 per cent of the profits.
29 Mr Harpur then provided to Mr Lambourne information that he had gathered, including his cards. Those cards are exhibit F in these proceedings.
30 So far as the procedure that was adopted in respect of preparation of the material for publication, Mr Lambourne agreed that what happened was that Mr Harpur would prepare a draft and give it to Mr Lambourne, Mr Lambourne, having entered it on to the computer disk, would print out a hard copy effectively and give it back to Mr Harpur. Mr Harpur would write on that draft and then give it back to Mr Lambourne and he, Mr Lambourne, would include the handwritten amendments into the computer generated document on his computer.
31 That process was followed between June, July 1996 and continued through to approximately November 1996.
32 Mr Lambourne had a different view about what the directory should cover. He told Mr Harpur he thought it should be a wider area than just Pittwater. Mr Harpur disagreed. His plan was one for Pittwater only and he wanted to maintain that plan.
33 It is apparent that a bank account was opened at the local branch of the Commonwealth Bank and Mr Lambourne and Mr Harpur attended upon the bank for that purpose. The name of the account was Coastal Marine Directories Publishing.
34 It is apparent that there was some dispute between Mr Harpur and Mr Lambourne about this business name. It seems that Mr Lambourne had it registered without first telling Mr Harpur. Although Mr Harpur suggested to Mr Lambourne that he was less than pleased about him doing that he proceeded to open the bank account in that name with both Mr Harpur and Mr Lambourne as joint signatories. The purpose of opening that bank account was, it seems, to deposit moneys from advertisers and prospective advertisers for the directory. There does not seem to be much issue about the fact that reimbursement for Mr Lambourne's expenses would come from that account.
35 In late 1996 the relationship between Mr Harpur and Mr Lambourne soured, the reason being that Mr Lambourne and Mr Harpur disagreed about the content of the directory and there were other personal matters, it seems, between the two men.
36 Mr Harpur said that he found that Mr Lambourne had been changing the directory to add material to it that he did not wish to be in it and he confronted Mr Lambourne with this fact. It was apparently after this confrontation that Mr Lambourne and Mr Harpur decided to have nothing much further to do with each other. However, there was some discussion between the two men and the evidence discloses that figures were discussed as to how much Mr Lambourne might pay Mr Harpur for Mr Lambourne to continue with the publication of the directory that was prepared up to that stage.
37 It is appropriate only at this stage to say that those discussions did not bare fruit by way of an agreement and Mr Lambourne notwithstanding that proceeded to publish what is entitled 1997 Pittwater Hawkesbury Brisbane Water Boating Directory. He published a similar directory in 1998 and in 1999, under the description The Little Red Book, published the Sydney Region Boating Directory. Each of the references in each year have within them on their front cover at least the reference to Pittwater.
38 There were further discussions and correspondence between the parties between late 1996 and throughout 1997 once again not reaching any agreement and on 7 January 1998 the summons in these proceedings was issued.
39 The hearing commenced on Tuesday, 20 April 1999 and continued through to today, 22 April 1999. Mr Cameron of counsel appeared for the plaintiff and Mr Lambourne appeared for himself.
40 The claim made by the plaintiff is that what Mr Lambourne has produced effectively is what Mr Harpur gave him, he has copied it. He has infringed, it is claimed, the copyright of the plaintiff.
41 The plaintiff claims that work consists of a compilation of information made by him and that s 32 of the Copyright Act (Cth) 1968 applies to his work. S 32 (1) provides:
"Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author:
(a) was a qualified person at the time when the work was made; or
(b) if the making of the work extended over a period - was a qualified person for a substantial part of that period ."
Subsection (2) provides:
"Subject to this Act, where an original literary, dramatic, musical or artistic work has been published:
(a) copyright subsists in the work; or
(b) if copyright in the work subsisted immediately before its first publication - copyright continues to subsist in the work;
if, but only if:(c) the first publication of the work took place in Australia;
(d) the author of the work was a qualified person at the time when the work was first published; or
(e) the author died before that time but was a qualified person immediately before his or her death."43 The plaintiff relies upon s 10 of the Act for the definition of literary work which includes:
42 The relevant reference to qualified person means that the person is an Australian citizen, an Australian protected person or person resident in Australia.
"(a) a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form)..."
44 It is clear on an observation of the compilation of material put together by Mr Harpur and with reference to what he did to compile that work and to compile the information, that he also had access to the Yellow Pages. Neither party has tendered any portion of that publication, however, both parties have made reference to it.
45 In Hollinrake v Truswell (1894) 3 Ch 420 Davey LJ said as follows:46 In Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 Starke J said of the author of the subject application in that case:
"...a literary work is intended to afford either information and instruction, or pleasure, in the form of literary enjoyment."
47 The plaintiff in this case claims that the compilation of the work fits comfortably within s 10 of the Copyright Act and further that the work is in fact original work.
"Undoubtedly the compilation of the plaintiff's book involved much independent labour and research."
48 Sundberg J in Baillieu & Anor v Australian Electoral Commission & Anor (1996) 33 IPR 494 summarises the case at page 505 wherein the matters of principle to be decided in this case are helpfully set out. Sundberg J refers firstly to Ladbroke (Football) Ltd v William Hill (Football) Ltd (1964) 1 WLR 273, in particular Reid LJ's judgment at 276/277 in which Reid LJ said:
Starke J in Blackie & Sons went on to say at 398:
"The literary expression of the matter so collected was in some cases that of (the professor) as in the general introduction to the play and the notes... whilst in other cases the expression was copied from other authors, as in many instances in the notes upon the play itself. The whole was combined in the form of a book. It is not a mere copy of written matter already published. Apart from the compilation, the work of (the professor), the book did not exist."
49 After referring then to Warwick Film Productions Ltd v Eisinger (1969) 1 Ch 508 and to Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213, Sundberg J then refers back to Thomas J's language in Kalamazoo and says:
"...the more correct approach is first to determine whether the plaintiff's work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial ."
Pearce LJ at 293 of that report cited by Sundberg J said:
"The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of copyright and therefore the courts will not hold its reproduction to be an infringement. It is this I think which is meant by one or two judicial observations that there is no copyright in some unoriginal parts of a whole that is copyright. "
50 The plaintiff in this case also referred me to Frank Smythson Ltd v GA Cramp and Sons Ltd 59 TLR 223. That was a case in which a diary and tables of a diary had been copied. In particular I was referred to Master of the Rolls Greene LJ's statement at page 225. After referring to Atkinson LJ's statement in MacMillan & Co Ltd v K & G Cooper (1923) 93 LJPC 113. Greene LJ said the following:
"Some degree of concentration, care, analysis and comparison went into the task. The author had to locate the relevant provisions and mould them into a readily digestible form. Care had to be taken to see that in rendering the grounds in simpler and shorter language, the meaning of the schedule was not altered."
51 In A-One Accessory Imports Pty Ltd & Ors v Off Road Imports Pty Ltd & Ors (1996) 37 AIPC 37258 at 91222, the Federal Court was there considering a claim of infringement of copyright in respect of a motoring magazine. It was a catalogue said to include various material relating to items of interest to the reader and Drummond J once again helpfully collected the relevant cases and summarised those touching upon the topic of originality. Drummond J said at page 37265:
"Why did Mr Eckford copy the defendant's diary in 1938? The inference seems to me to be clear. He copied that diary to save himself trouble. If he had to exercise independent judgment of his own and decide what were the tables which it would be useful to include, and had gone to the sources where that information was to be found, making abridgements where necessary and selections where necessary, he would have clearly, I think, been put to considerable labour, and would have had to exercise skill and judgment of his own.
...
It seems to me that, taking all these matters into consideration, it is established that there is a sufficient amount of skill, labour, judgment and so forth put into the selection of that group of tables to attract copyright."52 His honour went on to deal in more detail with examples such as chemists' catalogues of instructions and the like and then said:
"So far as compilations that consist entirely of existing material, i.e., material not created by the compiler, are concerned, Ladbroke (Football) is authority that originality may be found and a claim of copyright may therefore subsist, by virtue of selection alone."
53 In further reference to Ladbrokes his Honour said at page 37268:
"That copyright can exist in such a mundane compilation of information readily available to all shows why the skill, judgment and labour in selecting what to include in a trade catalogue will be as relevant as the often very limited skill, judgment and labour involved in putting that selection into written form, in determining whether the compilation has sufficient 'originality' to attract copyright."
54 Kearney J in Ogden Industries Pty Ltd & Ors v KIS (Australia) Pty Ltd (1982) 2 NSWLR 283 referred to the locus classicus on the meaning of the term original at page 288 of the report referring to University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601 which his Honour noted was quoted and applied by the House of Lords in Ladbroke at 469 as follows:
"Ladbroke (Football) Ltd, Redwood Music, (a reference to Redwood Music Ltd v Chappell and Co 1982 RPC 109) and Eisinger, proceed on the basis that a composite work made up of pirated material and original material produced by the compiler can itself be an original work posessing copyright, even though it may also infringe the copyright in the pirated material included in it."
55 In that case, which was a case about the copying of keys, Kearney J rejected the defendant's submission that it was ridiculous to apply originality to the copying of keys and he said:
"The word 'original' does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought and, in the case of 'literary work' with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author."
56 Final reference was made relevantly to Barwick CJ in Australian Consolidated Press Ltd v Morgan (1965-66) 39 ALJR 32 wherein it is said the Chief Justice took the matter one step further. His Honour said at page 34:
"First, it would seem to be directed rather towards the concept of novelty in the patent law sense than to originality in the copyright sense of a work emanating from the independent efforts of an author and not copied. Secondly, the argument cannot be sustained in the face of the amount of knowledge, labour, skill, judgment, time and expense shown by the undisputed evidence to have been applied to the production of the subject drawings."
"The law has gone a long way to protect the labours of a man in producing and tabulating information."
57 I am not sure that that particular case takes the matter a good deal further, having regard to the previous decisions to which I have made reference.
58 In any event, what the plaintiff claims in this case is that his was a literary work, his work was original and it was in a material form, that it was written and it was on a computer disk - see Autodisk Inc. v Dyson (1991) 173 CLR 330. He says pursuant to s 35 (2) of the Copyright Act he is the owner, he is the creator or author of the work.
59 Mr Lambourne, the defendant, submits that what Mr Harpur did effectively is not original. He put submissions to me today that Mr Harpur's work came in main from the Yellow Pages. Even accepting that for one moment to be the case, it is clear that what Mr Harpur did was create something different from that which was apparently in the Yellow Pages.
60 Although I have not had access to the Yellow Pages, as it is not exhibited before me, Mr Harpur said that he made categories for the names and addresses of the various entities that are included on his cards. Even if it be the case that Mr Lambourne was right, that the whole of what he did came from the Yellow Pages, then A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd seems to suggest that even if it is pirated, copyright may still attach and if it is put together in a different form than that which one finds in the Yellow Pages it seems that it would be a creation of original work rather than a mere transposition of information in the Yellow Pages.
61 Mr Lambourne submitted that 23 per cent came from the Yellow Pages. He makes that assessment because Mr Harpur gave evidence that he had in fact checked the Yellow Pages in respect of 50 of the entries in the cards and directory, it being remembered that there are approximately 200 odd entries to which Mr Harpur was referred.
62 In any event, Mr Lambourne submits that Mr Harpur could not have obtained this information from the individuals because he wasn't able to produce a proforma letter which he said he sent out to various entities in the area.
63 Although not pleaded in this case specifically, I should deal with one aspect of the Copyright Act in respect of Mr Lambourne's claims in his evidence and what seems to come from his submissions.
64 Mr Lambourne said on a number of occasions that he made no claim in respect of the lists of names that he had produced in the directories that he had published. He said that he understood the Copyright Act and that no copyright attaches to them. By reason of s 115 of the Copyright Act, where it is established that an infringement has been committed but it is also established that at the time of the infringement the defendant was not aware and had no reasonable grounds for suspecting that the act constituting the infringement was an infringement, the plaintiff is then not entitled to any damages against the defendant in respect of the infringement but is entitled to an account of profits in respect of it.
65 In this case the plaintiff has in fact elected in respect of the alternative relief but I should say that the statement by the defendant, Mr Lambourne, in respect of this aspect of the matter has troubled me, not the least because of his statements in his own publications.
66 In the publication in 1999, that is the Sydney Region Boating Directory the following appears on the second front page:67 It has been established that there is no reference to Mr Harpur or to his efforts in any of those publications. There has been no seeking of approval from Mr Harpur to use any information provided by him to Mr Lambourne and there has been no payment made to Mr Harpur in respect of the use of that material.
"This publication is published each year by Coastal Marine Directories. All rights reserved. The use of this directory and maps for any purpose other than as a reference guide, or reproduction of any part of this directory is expressly prohibited without written permission from the publisher. The publisher has taken every precaution to avoid errors and omissions in this directory. The advertisers assume complete responsibility to use any brand names and logos."
68 Mr Lambourne's case is that he did not infringe copyright. What he did was to create his own work. He criticised the documentation of the plaintiff, particularly in exhibit C, suggesting that various aspects of the work that he was supposed to have copied were "tucked away" in parts of the exhibit. He submitted that on the evidence I would be satisfied that Mr Harpur did not have the majority of names and addresses before the formation of the association by way of proformas but, as I say earlier, by way of just obtaining it from the Yellow Pages.
69 Mr Lambourne gave evidence and was cross-examined by Mr Cameron in respect of the evidence that he gave about what he did after the relationship soured. In his affidavit that he filed in 1998 Mr Lambourne said that he in fact produced the new publications as follows (para 14):
"14.1 Completely discarding the information Mr Harpur had compiled.
14.2 Writing to service providers to check correctness and determine the classification they would like to appear under...
14.3 Collating this information into a publishing format.
14.4 Selling advertising.
14.5 Layout and design.
14.6 Adding informational pages (knots, weather, fish etc.).
14.7 Map production.
14.8 Printing & distribution."70 So, on the affidavit evidence on reading 14.1 it appeared that Mr Lambourne had completely discarded Mr Harpur's information and set about preparing his own material and information for his own boating directory.
71 His oral evidence on this topic is significant. Mr Lambourne told me that he gave the cards that Mr Harpur had given him back to Mr Harpur in November 1996. Those documents are exhibit F. He said he gave them to him at that time because "when I walked out I gave him all his material back" (p 69 line 40).
72 He was then asked some questions about paragraph 14.1. The following evidence was given (p 70):73 Mr Lambourne then told me he kept those disks. He was then asked (p 71):
"Q. When you say in paragraph 14.1 that you completely discarded the information Mr Harpur had compiled, do you agree that at the point in time when you made that decision the information he had given you, that is to say all of it, had been transferred on to your computer and had actually been reproduced in draft form?
Q. When you used the words discarded the information that he had given you do you mean to say you threw away the disks on which the information was stored?
A. Yes, to a degree, yes.
A. No."
"Q. Did you go and compile all the information that is in the 1997 directory afresh without recourse at all to the information that you had stored on those disks?
Q. Can't you answer the question?
A. Can I explain how I did it?
A. To a degree."
74 Mr Lambourne then gave the following evidence:75 After telling me he in fact had contacted various entities on the waterfront area by writing letters to them (p 73):
"I have a computer with a list of names and addresses on which is the combined work of both Mr Harpur and myself, not just Mr Harpur's work but a combined effort between the both of us. I then took the complete list of names and addresses which I admit I took from the Yellow Pages and I wrote to each of the boat owners, boat services providers. I then checked those facts against the list I had on my computer, amended it, added to it, changed it.
...
Q. So, you had no reason at all to use or have access you say to any of the information that Mr Harpur had given you and which you had stored on disks on your computer?
Q. Stop there, that being the list of names compiled by Mr Harpur and given to you, is that right?
A. No, that's not what I said. I said I had a list of names and addresses on my computer.
A. Correct, that's right.
...
Q. Then you have got that, you then said you went to the Yellow Pages and got some more information out?
A. No, I said I got all my information, I got a second listing completely from the yellow pages....
Q. In what way did you use Mr Harpur's information when you were doing this exercise with the Yellow Pages book?
A. Well, basically all the names or the majority of the names were already on the computer. I then checked with each of those names to the correctness of their address, their name and the telephone number when I sent the proformas back and you can see copies of the proformas in my affidavit. I then looked at the list, if there was any difficulty I excluded them, if there were any changes I changed them....
Q. Did you use the Yellow Pages to see whether or not he had missed something out? (He being Mr Harpur)
A. I suppose generally I did, yes."
"Q. If they wanted to be included you added them to the listing that Mr Harpur had given you, is that right?
A. Yes correct."76 It seems to me that the evidence that Mr Lambourne gave in the various portions that I have just extracted clearly suggests that Mr Harpur's work remained on Mr Lambourne's computer and, as the last question and answer demonstrates, where the Yellow Pages indicated a change was necessary or alternatively where the proforma returns indicated a change was necessary, either by way of amendment, inclusion or exclusion, Mr Lambourne added or changed Mr Harpur's work.
77 In making an assessment of the submissions that Mr Lambourne has put to me in respect of the nature of Mr Harpur's work it has been necessary to analyse the documentary evidence in this case. That includes most importantly a comparison between the first portion of the document behind tab F in exhibit C and exhibit A3, the 1997 boating directory.
78 To assist in this regard Mr Lambourne tendered a chart or table that he had prepared, which is exhibit 3 in these proceedings, setting out the various categories and entries both in Mr Harpur's work and Mr Lambourne's book. There is no doubt that the vast majority of Mr Harpur's work is included in Mr Lambourne's book. Not only that, it is clear beyond doubt that the majority of the descriptions are almost identical. Where there appears a difference it is slight. For instance, Mr Harpur's work refers to boat brokers. Mr Lambourne's work refers to brokers, boat and yacht sales. Mr Harpur's work refers to boat builders and shipwrights. Mr Lambourne's work refers to builders, shipwrights and repairers. Mr Harpur's work refers to boat building supplies and exhibit A3, as I have been calling Mr Lambourne's work, refers to boat building materials. Other references such as covers, canopies in Mr Harpur's work and then in Mr Lambourne's exhibit A3, covers, canopies, upholstery, trim.
79 So far as the other documents in exhibit C are concerned there is a Marine Services Directory 1996-1997 at tab F of exhibit C and there is a Pittwater Marine Services Directory 1997 in tab D. Once again a comparison of those two documents result in a conclusion by me that the vast majority of Mr Harpur's work appears, both in style and under the same heading, or one so similar that it seems minor, in exhibit A3.
80 A further analysis is the cards, exhibit F, with exhibit A3. It is clear that the cards that Mr Harpur produced include categorisation of the various outlets and entities in the area. It is clear to me that quite a deal of energy and skill has been applied to the creation of the work by Mr Harpur. If one were to look at an entity such as Gonsalves Boat Shed in a book such as a telephone book, one can not know that it is in fact an outlet for various other aspects of boating interest. That boat shed appears in a number of categories. For instance, it appears in the Antifouling Services and it appears under the heading Boat Builders, Shipwrights and Repairers. Going through the book you find it under Boat Hire and various other headings.
81 One needs to know the industry and have some skill in categorising each of the entities in each of the categories. That does not come from a mere copying of details from a phone book on to a page. It comes from, as Mr Harpur swore to, his experience in the industry, his research of the area and his creation of his two card system. Exhibit F is evidence at least of some of this.
82 Although it is clear that the card entries are less than the entries in the 1997 book, exhibit A3, the step between the card entries is really the creation of the drafts that appear in tab F and tab D of exhibit C.
83 So it is that one can trace by independent evidence the energies that were expended by Mr Harpur on the creation of his work. True it is that Mr Lambourne provided assistance to Mr Harpur in creating the layout on the computer system but both drafts in exhibit C indicate that it was Mr Harpur that was authoring this material. He was the one who amended it. He was the one who gave it back to Mr Lambourne after amendment and checking. That much is clear from the evidence of both the plaintiff and the defendant.
84 I am satisfied that Mr Harpur satisfies the requirements of s 32 of the Copyright Act. I am satisfied that this is a literary work within the meaning of the Copyright Act having particular regard to s 10 and the reference to compilation. I am also satisfied that the reference made to the Yellow Pages by Mr Harpur was such that he was checking his work rather than using it as a source. However, if I were to be wrong in respect of that it seems to me, having regard to Drummond J's decision in the A-One case, that it may not be decisive in this case.85 In those circumstances it seems to me that it is unnecessary to proceed into the actual arrangements that were made between Mr Harpur and Mr Lambourne and the conflicts that they have had between each other about what the arrangements were. However, for more abundant caution in case it be suggested I am wrong in my finding in respect of the copyright matter I say the following.
86 I am not satisfied that this was an agreement for a partnership. On the one hand Mr Lambourne states that he agreed to that effect with Mr Harpur at the beginning of their relationship in June 1996. He stated in his affidavit at para 12, "I had probably invested about $10,000 cash in the project." When tested as to how that $10,000 was invested Mr Lambourne told me that he in fact had provided various pieces of furniture, computer, a programme, a fax, drafting material and a laser printer. He gave details of the cost of that being to the amount of $9,000 and yet he told Mr Cameron in cross-examination that he did not regard any of that as partnership property. He did not in fact pay the last telephone account of $1,000, although Telecom had phoned him in respect of the contribution to be made by him in respect of it. He did not actually ask Telecom for a copy apparently but rang Mr Harpur's solicitor to obtain a copy of that bill. He said that when he did not receive a response from Mr Harpur's solicitor he did not pay it. That last mentioned matter is not decisive because it is an aspect of the relationship that seemed, at the very least, a very woolly one to be suggesting it was a partnership.
87 It seems to me that Mr Harpur's rejection of the partnership suggestion is to be believed. He said effectively in his affidavit sworn in April 1998 that he would not have gone into a partnership with someone he did not know and if there was to be a partnership arrangement he would have involved the solicitors. Certainly from Mr Lambourne's point of view, he stating that he was well aware of the Copyright Act, it seems s 196 of that Act is relevant.
88 Mr Cameron referred me to O'Brien v Komesaroff (1981-82) 150 CLR 310 in which Mason J (as he then was) referred to that section and said at page 317 in effect it is necessary for there to be a transmission by assignment by will or by devolution by operation of law for any property in the copyright to become property of the partnership. So, even if I am wrong in finding that there is no partnership there does not seem to be any appropriate assignment of the copyright as property of the partnership.
89 It seems to me what happened between these two men was that Mr Harpur was very keen to have his work published, Mr Lambourne was willing to assist in that publishing role. For one reason or another the specific roles to be played by each of the parties became blurred over a period of time and the plaintiff and the defendant did things that perhaps the other might have thought was the responsibility of the other in the beginning of the relationship but at the end of 1996 it is clear that the correspondence between the parties puts it beyond doubt that Mr Lambourne understood that Mr Harpur did not wish him to proceed to publish the directory which contained his work unless a suitable agreement was reached prior to the end of that year. It is clear that Mr Lambourne made some offers of money to Mr Harpur but for various reasons, the detail of which is not necessary to go into, an agreement that could be reached.
90 One other aspect of this case with which I should deal is the use of money in the bank account by Mr Harpur in October 1996. Mr Lambourne cross-examined Mr Harpur about the writing of two cheques to clear out that bank account, the total in the bank account at the time being $324.48. Mr Harpur wrote a cheque for $135.95 and $150. He told me he used those moneys to pay personal bills as he was in need of the funds. Mr Lambourne maintains that he did not know that had occurred prior to it occurring. Mr Harpur says he told Mr Lambourne.
91 The correspondence that occurred between the two men suggests on one view of it that Mr Lambourne was alleging that Mr Harpur had misappropriated advertisers' money without his knowledge. It is clear that Mr Harpur by October 1996 understood that money in that account was to pay for Mr Lambourne's expenses. Consistently with that understanding he told me when I asked him why he told Mr Lambourne that he cleared the money out, he thought it was the right thing to do. It seems to me in the circumstances of this case it would have been the right thing to do. Whether or not it did occur, that is whether or not he told him, does not, it seems to me in all the circumstances of this case, have much relevance to the decisions I have already made.
92 In the circumstances therefore I find that the plaintiff did have the copyright in the original literary work which has now been infringed by Mr Lambourne's publication of that work as contained in tab F and tab D of exhibit C, emanating from, in part, exhibit F.
93 In those circumstances I will make an order consistent with par 1 of the summons filed in these proceedings as amended and I will make an order that an account be taken of the profits made by the defendant as contained in par 4 of the summons.
94 The defendant is to pay the plaintiff's costs of this application.
95 I will list the matter at 10am, Friday 30 April 1999 for short minutes.**********
1
1
0