Holder, Raymond v Searle, Bradley William

[1998] FCA 1775

FEDERAL COURT OF AUSTRALIA

INTELLECTUAL PROPERTY - copyright - infringement - parallel importation - knowingly concerned in possession of copyright material - subsistence of copyright - ownership of copyright - relevance of Universal Copyright Convention symbol and claim to copyright on packaging in establishing ownership of copyright - whether ownership by legal entity - whether limited partnership constitutes legal entity - assignment of ownership of copyright - exclusive licence for distribution of copyright material - whether possession of copyright material by company or by directors of company personally - where copyright material cinematograph films stored in laser video disc format - where copyright owner resident of United States of America and Canada

Copyright Act 1968 (Cth) ss 132(1)(b), 132(1)(d)(i), 132(2A)(a) and 133.
Crimes Act 1914 (Cth) s 5
Evidence Act 1995 (Cth) ss 70 and 171
Copyright (International Protection) Regulations reg 4

RAYMOND HOLDER v BRADLEY WILLIAM SEARLE

QG 187 OF 1996

RAYMOND HOLDER v BRADLEY WILLIAM SEARLE

QG 188 OF 1996

RAYMOND HOLDER v BRADLEY WILLIAM SEARLE
QG 189 OF 1996

SPENDER J
23 OCTOBER 1998
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 187 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 188 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 189 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant
JUDGE:		SPENDER J
DATE:		23 OCTOBER 1998
PLACE:		BRISBANE

THE COURT ORDERS THAT:

1. The Information in QG 187 of 1996 is dismissed.

2. The Information in QG 188 of 1996 is dismissed.

3. The Information in QG 189 of 1996 be adjourned to 15 December 1998 for submissions in relation to what orders should be made, penalty, costs, and any outstanding matters arising from the three proceedings.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 187 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 188 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 189 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

JUDGE:	SPENDER J
DATE:	23 OCTOBER 1998
PLACE:	BRISBANE

REASONS FOR JUDGMENT

On 31 October 1996 three informations for offences against the Copyright Act 1968 (‘the Act’) were filed in the Federal Court, together with summonses based on each information. The information filed in proceedings QG 187 of 1996 alleged a breach of s 132(1)(d)(i) of the Act. The information in proceedings QG 188 of 1996 alleged a breach of s 132(1)(b) of the Act and QG 189 of 1996 alleged a breach of s 132(2A)(a) of the Act. Section 132 of the Act relevantly provided:

“132 (1)  A person shall not, at a time when copyright subsists in a work:

(a)…

(b)sell or let for hire, or by way of trade offer or expose for sale or hire, an article;

(c)…

(d)import an article into Australia for the purpose of:

(i)selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;

(ii)distributing the article for the purpose of trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or

(iii)by way of trade exhibition the article in public;

if the person knows, or ought reasonably to know, the article to be an infringing copy of the work.
…

(2A) A person shall not, at a time when copyright subsists in a work, have in his or her possession an article for the purpose of:

(a)selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;

(b)…

(c)…

if the person knows, or ought reasonably to know, the article to be an infringing copy of the work.

…

(6)   This section applies only in respect of acts done in Australia.

(7)   Prosecutions for offences against this section may be brought in the Federal Court of Australia or in any other court of competent jurisdiction.

(8)   Jurisdiction is conferred on the Federal Court of Australia to hear and determine prosecutions for offences against this section.

…”

Section 133 of the Act provides for penalties and relevantly it provides:

“133(1) A contravention by a person of subsection (1), (2) or (2A) of section 132 is an offence punishable on summary conviction by:

(a)…

(b)if it is the first conviction of the person of an offence by reason of a contravention of that section and the article or each article to which the contravention relates is an infringing copy of a cinematograph film:

(i)if the person is a natural person - a fine not exceeding $1,500 for the article, or for each article, to which the offence relates or imprisonment for a period not exceeding 2 years, or both; or

(ii)if the person is a body corporate - a fine not exceeding $7,500 for the article, or for each article, to which the offence relates;

(2)Where a fine is imposed upon a person by virtue of subsection (1) in relation to an offence committed by the person and there is more than one article to which the offence relates;

(a)where the person is prosecuted before the Federal Court of Australia - the fine imposed in respect of that offence shall not exceed:

(i)if the person is a natural person - $50,000; or

(ii)if the person is a body corporate - $250,000; and

(b)where the person is prosecuted before any other court - the fine imposed in respect of that offence shall not exceed:

(i)if the person is a natural person - $10,000; or

(ii)if the person is a body corporate - $50,000.”

The information in proceedings QG 187 of 1996 alleged:

“…that between the thirtieth day of August 1995 and the twenty-first day of September 1995 at Gold Coast in the State of Queensland BRADLEY WILLIAM SEARLE was knowingly concerned in the commission of an offence against a law of the Commonwealth namely, that between the thirtieth day of August 1995 and the twenty-first day of September 1995 B W SEARLE PTY LTD did contrary to section 132(1)(d)(i) of the Copyright Act 1968 as amended at a time when copyrights subsisted in cinematograph films entitled ‘Billy Madison’, ‘Major Payne’, ‘Milk Money’, ‘Forrest Gump’, ‘The Lion King’ and ‘A Little Princess’ import into Australia articles namely, laser video discs of the cinematograph films for the purpose of offering or exposing for sale or hire by way of trade when it knew, or ought reasonably to have known that the articles were infringing copies of the cinematograph films.”

The information in proceedings QG 188 of 1996 alleged:

“…that on or about the twenty-fifth day of May 1995 at Gold Coast in the State of Queensland BRADLEY WILLIAM SEARLE was knowingly concerned in the commission of an offence against a law of the Commonwealth namely, that on or about the twenty-fifth day of May 1995 B W SEARLE PTY LTD did contrary to section 132(1)(b) of the Copyright Act 1968 as amended at a time when copyrights subsisted in cinematograph films sell two articles namely a laser video disc of the cinematograph film entitled ‘Forrest Gump’ and a laser video disc of the cinematograph film entitled ‘Boyz N the Hood’ when it knew, or ought reasonably to have known that the articles were infringing copies of the cinematograph films.”

The information in proceedings QG 189 of 1996 alleged:

“…that on or about the twenty-second day of September 1995 at Gold Coast in the State of Queensland BRADLEY WILLIAM SEARLE was knowingly concerned in the commission of an offence against a law of the Commonwealth namely, that on or about the twenty-second day of September 1995 B W SEARLE PTY LTD did contrary to section 132(2A)(a) of the Copyright Act 1968 as amended at a time when copyrights subsisted in cinematograph films entitled [a large number of cinematograph films are identified] have in its possession articles namely, laser video discs of the cinematograph films for the purpose of offering or exposing for sale or hire by way of trade when it knew, or ought reasonably to have known that the articles were infringing copies of the cinematograph films.”

In the course of the hearing for each information I have given interlocutory judgments. On 23 September 1997 Mr Jerrard QC, who appeared with Mr D Boddice, for the prosecutor sought leave to amend one of the informations and each of the summonses in the three prosecutions. Objection to leave being granted was taken by counsel for the respondent, Mr Couper QC. For the reasons which I published I gave leave to amend the information in proceedings QG 188 of 1996, the prosecutor seeking to allege that Mr Searle as principal in fact sold the two articles mentioned in that amended information in contravention of s 132(1)(b) of the Act. I also granted leave to amend the summonses so as to conform to the informations.

On 23 September 1997 I rejected a contention by Mr Couper QC that the informations in QG 187, QG 188 and QG 189 of 1996 were bad for duplicity. The contention on behalf of the defendant was that, having regard to the terms of s 132 of the Copyright Act, an offence which alleges an infringing article based on one copyright work, if joined with an application involving infringing copies of another and different copyright work, is duplex. For the reasons which I then gave, particularly having regard to the penalty capping provisions contained in s 133(2) of the Act, I said:

“I think it was the intention of the Act to penalise conduct, measured by having regard to the transaction constituting the conduct rather than to a minute calculation of the particular articles the subject of that transaction.

Of course, for the purpose of imposing a penalty, it is necessary to establish with precision, what articles alleged to be infringing copies are, in fact, infringing copies.”

On 24 September 1997 I dealt with questions of the admissibility of the contents of affidavits of a considerable number of overseas witnesses.  I upheld objections where the deponents of the affidavits merely asserted access to the business records of the particular corporation, and then, only on the basis of inspection of those records, deposed to various matters, including who was the maker or producer of a particular cinematograph film, when that film was produced, when and where it was first screened, and when a laser disc format of that film was first sold in the United States.

On that same day I overruled objections to the admissibility of the contents of other overseas witnesses’ affidavits, in particular, a Mr Pertsch, who swore that he was the President of Universal Productions Canada, a division of Universal Studios Canada Ltd and that Universal Studios Canada Ltd produced a particular film, “Dark Man II: The Return of Durant” as an in-house production.  For reasons which I then gave, I ruled that Mr Pertsch was personally involved in aspects of the production of the film and was able to speak from personal knowledge and the contents of his information were not solely on the basis of the inspection of documents.

Before turning to the evidence, it is to be noted that the three informations are based on a provision of the Act which bans parallel importation. There is no suggestion in this case that the video laser discs the subject of the three informations are other than authentic, non-pirate products. Sections 132 and 133 give effect to the present legal position that it is competent for the owners of copyright overseas to control the price paid by Australian consumers or, more precisely, the system which bans parallel importation of genuine product has the clear potential of permitting the holder of copyright material to charge one price for consumers in one country, say the United States, or Hong Kong, or Britain, but the price paid by an Australian consumer for the same article is higher. Parallel importation will only occur, as a matter of commercial reality, if an Australian importer can source material overseas, pay freight and customs duty and still price the product competitively with the Australian licensee or distributor. The question of continuation of that legislative regime is a matter of current political contention. I am, however, not concerned with the merits of that debate, but have to consider the evidence in the light of the law as it stood in September 1996.

On 25 September 1997 Mr Jerrard QC on behalf of the prosecutor, in the light of the rulings as to admissibility of documents going to the establishment of copyright in the various laser discs sought an adjournment of the proceedings so as to enable deficiencies in the proof of the prosecution case to be remedied or at least an attempt made to remedy the deficiencies.  Having regard to a letter from the Commonwealth Director of Public Prosecutions dated 22 April 1997 and a letter from Messrs McLaughlins the solicitor for the defendant, of 8 May 1997 concerning the question of proof of copyright and the direction made that the prosecutor file all affidavit material on which it wished to rely by July, 1997, the application for adjournment was refused.

Mr Searle was then charged with the charges contained in the informations in proceedings QG 187 and QG 189, and with the charge contained in the amended information in proceedings QG 188, to which charges he pleaded not guilty.

It was then conceded on behalf of the prosecutor that the prosecution was not able to establish all the necessary elements of the information dealing with the importation charge and in relation to the sale charge. I found the defendant not guilty on each of those charges and reserved the question of costs. In relation to the remaining charge dealing with possession, I permitted further evidence by way of affidavit to be given from one Maria Angeletti, one Daphne Gronich, and one Eric Pertsch, the effect of which affidavits was that each of those witnesses were shown to be within s 171 of the Evidence Act in respect of the business records of the companies for whom they worked.

In consequence of the rulings that I had made, the proceedings were then confined to the assertion that on or about 22 September 1996 Mr Searle was knowingly concerned in the possession by B W Searle Pty Ltd of copies of various numbers of discs of a total of 11 films, the films being:

Disclosure
Just Cause
A Little Princess
Love Affair
Maverick
Outbreak
Wyatt Earp

Interview with a Vampire
Bye Bye Love
Dark Man II: The Return of Durant
Speechless

The prosecution further had to establish that, contrary to s 132(2A)(a) of the Act, at the time of possession by the company, copyright subsisted in those films; the laser video discs were laser video discs of those cinematograph films; and that the company then had the purpose of offering or exposing for sale or hire by way of trade the laser video discs and that it then knew or ought reasonably to have known that the laser video discs were infringing copies of the cinematograph films.

Section 10 of the Act relevantly provided:

“ ‘cinematograph film’ means the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing;

(a)of being shown as a moving picture; or

(b)of being embodied in another article or thing by the use of which it can be so shown;

and includes the aggregate of the sounds embodied in a sound-track associated with such visual images;
…

‘infringing copy’ means:

…

(a)in relation to a cinematograph film - a copy of the film;

being an article the making of which constituted an infringement of the copyright in the…film,…or, in the case of an article imported without the licence of the owner of the copyright, would have constituted an infringement of that copyright if the article had been made in Australia by the importer…”

Section 22(4) of the Act provided:

“For the purposes of this Act:

(b)a reference to the making of a cinematograph film shall be read as a reference to the doing of the things necessary for the production of the first copy of the film; and

(c)the maker of the cinematograph film is the person by whom the arrangements necessary for the making of the film were undertaken.”

Section 29(1)(b) of the Act provided:

“(b)a cinematograph film shall be deemed to have been published if, but only if, copies of the film have been sold, let on hire, or offered or exposed for sale or hire, to the public; …”

Regulation 4 of the Copyright (International Protection) Regulations relevantly provided:

“(1) Subject to these Regulations, the provisions of the Act apply in relation to …cinematograph films made or first published in a country…specified in Part I…of Schedule 1 in like manner as those provisions apply in relation to…cinematograph films made or first published, in Australia.”

Regulation 4(3) provided:

(3) Subject to these Regulations, the provisions of the Act relating to works and subject-matter other than a work apply in relation to persons who, at a material time, are citizens or nationals of a Country specified in Part I, Part II or Part III of Schedule 1 in like manner as those provisions apply in relation to persons who, at a material time, are Australian citizens.”

Regulation 4(5) provided:

“(5) Subject to these Regulations, the provisions of the Act apply in relation to bodies incorporated under the law of a country that constitutes, or forms part of, the territory of a Country specified in Part I…of Schedule 1 in like manner as those provisions apply in relation to bodies incorporated under a law of the Commonwealth or of a State.”

The United States of America and Canada appear in Part I of Schedule 1 to those regulations.

In respect of the information in proceedings QG 189 of 1996, as reduced in its breadth of allegation as earlier indicated, it is asserted on behalf of the defendant that the prosecution had failed to establish beyond reasonable doubt that the possession of the nominated laser discs was in the possession of the company, as opposed to being in the possession of Mr Searle.  It was further asserted that neither the company nor Mr Searle knew that those discs were imported or knew that any importation was without the licence of the copyright owner.  It is further said that the prosecution has failed to establish that regardless of who was the possessor of the discs at the relevant time, the possession was not at that time for sale or hire by way of trade.

It was submitted that the prosecution had failed to establish the subsistence of copyright in any of the alleged infringing discs.  Objection was taken that the discs which were seized have not been proved to be copies of the articles about which the American deponents give evidence.  Further, in relation to copyright, it is said that ownership of copyright in any particular cinematograph film which is relevant has not been proved.

Proof of copyright in the eleven presently relevant films is an essential element of the offence, but is one of the most difficult issues in this case having regard to the evidence which the prosecution have been able to lead.  I turn now to that evidence.

The informant, Mr Holder, is an officer of the Australian Federal Police holding the rank of Detective Sergeant. At about 5 pm on Thursday, 21 September 1995, he, in the company of other police officers and Mr Barrie O’Brien of the Australasian Film and Video Security Office, executed a s 3E Crimes Act 1914 search warrant at premises of Laser Video Vision at Suite 3, 2098 Gold Coast Highway, Miami. A video of events on that afternoon is in evidence. Mr Searle was present when Mr Holder and the other persons entered the premises. A large number of laser video discs were seized on that occasion, all items being seized being recorded as to its description, when and where it was located and by whom.

Mr Holder at about 12.30 pm on Friday 22 September 1995, with other police officers and Mr O’Brien, again executed a s 3E Crimes Act 1914 search warrant at the Laser Video Vision premises. On that occasion Mr Holder observed that some video laser discs that had been in the store the previous day had been removed. Further items were seized from the premises at Suite 3 on that occasion, being the premises at which the business Laser Video Vision was conducted. At 3.10 pm on 22 September 1995, a further search warrant was executed on Suite 7, another shop in the complex, and further video laser discs were located in that shop.

There is a total of 90 discs in respect of the eleven films earlier referred to; some copies of each of those films were located in Suite 3 and some others in Suite 7, save that both discs of the film “Maverick” and both discs of the film ‘Disclosure” were located in Suite 3.

The evidence shows that after the first search warrant was executed on 21 September, Mr Searle obtained legal advice and at about 10.10 on the morning of 22 September was seen moving discs from Suite 3 to Suite 7.

The question of the operation of the business by the company B W Searle Pty Ltd is a live issue in this case; in that context, the evidence establishes that the premises in which the businesses were conducted were leased by Mr Searle personally and that he personally had permission from the landlord to use Suite 7 for storage purposes but paid no rental in respect of that use.

When I express satisfaction about a particular matter, or make a finding on the evidence, that is to be understood as indicating my conclusion that the criminal onus of proof beyond reasonable doubt has been discharged.

The first search warrant contained an allegation “That on the 21 September 1995 at Brisbane in the State of Queensland you Bradley William SEARLE, did import into Australia a quantity of Video Laser Discs for the purpose of selling and letting for hire, and the said Video Laser Discs you reasonably knew to be an infringing copy of the work”.  The boxes containing the discs the subject of that importation were located, unopened, on the floor of the premises at the time of execution of the first warrant.

On the occasion of the execution of the second warrant, Detective Sergeant Holder asked Mr Searle:

“Do you have a licence to import any of this stuff or to sell or hire any of this stuff?”

to which Mr Searle answered:

“No.”

Mr Searle arranged for his solicitor to speak to Detective Sergeant Holder by telephone.  In the course of a conversation with the solicitor, Detective Sergeant Holder said:

“…I have received further advice on that and it would appear that without a licence you cannot sell or hire any of the videos that came from the major studios.  That is what they call parallel trading and it is a breach of copyright.  Again I’m only going on my advice.  I have received complaints from the studios through the Australian Film and Video Security Office, who have gone and approached my Director of Public Prosecutions in Brisbane who have sent the job down to me…”

Later in the conversation with Mr Searle, Detective Sergeant Holder asked where “the stuff from here is”.  Mr Searle said:

“Because of what happened yesterday I moved it.  Obviously there’s a problem.”

Mr Searle asked whether he had to say anything, to which Detective Sergeant Holder said:

“You don’t have to say anything if you don’t want to, but I’ll just say that I have a warrant here for Unit 7 upstairs as well.  So if it’s there I’m going to do that as well, okay?”

There was a suggestion by Mr Searle that Unit 9 is the place to which he had moved the discs but in fact, as the search later in the afternoon of 22 September revealed, a number of discs were located in Unit 7.

The evidence does not permit a conclusion as to whether the business was open for business on 22 September 1995, although employees were in attendance when the police officers arrived.

Mr James Maxwell Slater is a licensed private inquiry agent retained by the Australasian Film and Video Security Office, who has been involved in the investigation relating to claimed infringement of copyright and trade marks concerning cinematograph films owned or distributed by members of the Motion Picture Association and various Australian distributors of cinematograph films.

Mr Barrie Cornelius O’Brien is also a licensed private inquiry agent retained by the Australasian Film and Video Security Office.  An affidavit from him was filed by the prosecution in these proceedings and he was not the subject of cross-examination.  In the affidavit he deposes that on 1 April 1993 he visited Laser Video Vision at Suite 3 and had a conversation with Mr Searle, who said he was the owner of the business which sold and hired out laser video discs and video games.  Mr O’Brien deposes that he saw about 300 titles of NTSC formatted laser video discs on display.  His affidavit continues:

“Mr Searle said that he obtained these directly from 01 Laser Video, Los Angeles, USA. He said that he faxed orders to the supplier and that the product was usually dispatched by return mail. He said that he knew his actions were in breach of the Copyright Act.”

On that occasion Mr O’Brien says that he gave to Mr Searle a three page “AFVSO warning letter relating to ‘parallel importing of video cassette films and video laser discs’”.  Mr O’Brien says that he appeared to read the letter and said that he understood it.  That letter gives some indication of the Australasian Film and Video Security Office structure and purpose and some parts of the letter have a distinct relevance to the present charge.  The letter is headed "RE: PARALLEL IMPORTING OF VIDEO CASSETTE FILMS AND VIDEO LASER DISCS” and then commences:

“The Australasian Film and Video Security Office (AFVSO), is retained by the Motion Picture Export Association of America Inc., (MPEAA), to monitor film and video piracy in Australia.

The following companies are members of MPEAA:

CAROLCO PICTURES INC
MGM/UA COMMUNICATIONS CO
ORION PICTURES INTERNATIONAL
PARAMOUNT COMMUNICATIONS INC
SONY PICTURES ENTERTAINMENT INC
TWENTIETH CENTURY FOX INTERNATIONAL CORP
UNIVERSAL INTERNATIONAL FILMS INC
WALT DISNEY/BUENA VISTA INTERNATIONAL

WARNER BROS. INTERNATIONAL

The members are engaged in the manufacture, distribution, sale and/or rental worldwide including Australia, of cinematograph films and they are the owners of the copyright or the exclusive licensees of the copyright in many cinematograph films which are distributed in the form of video cassettes and video laser discs.  In turn members have exclusively licensed certain distributors in Australia to reproduce and/or distribute films on video cassette and laser disc for sale or hire for home use only.

The AFVSO also acts on behalf of the following Australian Video Distributors:

AUSTRALIAN FILM INSTITUTE
FOXVIDEO (SOUTH PACIFIC) PTY LTD
CIC VIDEO
COMMUNICATIONS AND ENTERTAINMENT LTD
PALACE ENTERTAINMENT CORPORATION
RCA/COLUMBIA PICTURES/HOYTS VIDEO PTY LTD
ROADSHOW HOME VIDEO
WALT DISNEY HOME VIDEO
WARNER HOME VIDEO PTY LTD

COPYRIGHT ACT 1968

The making of copies of films without the licence of the copyright owner, is an infringement of copyright under the Copyright Act 1968 (the Act).

The Act also contains provisions under which an indirect infringement of copyright can occur.

Section 102 - provides, in summary that copyright is infringed by a person who without the licence of the owner of the copyright, imports a cinematograph film into Australia for the purpose of selling it or dealing with it by any of the methods specified in the Section, where to his knowledge the making of the film would, if the film had been made in Australia by the importer, have constituted an infringement of copyright.

Section 103 of the Act similarly provides that the sale of, or any dealing specified in the Section with the imported article is also an infringement of copyright. Further, a video cassette or video laser disc imported without the licence of the owner of the copyright is an infringing copy for the purpose of the Act.

I wish to draw your attention to the civil and criminal remedies which are available to the members and licensees for infringement of copyright.
…”

The letter then contains a reference to ss 115 and 116 under the heading “CIVIL REMEDIES” and to ss 132 and 133 under the heading “CRIMINAL PENALTIES”.  The letter concludes under the heading “WARNING” as follows:

“I therefore formally notify you, that importing members’ or distributors’ films on video cassette or video laser disc without the licence of the member or distributor, or dealing with unauthorised imports, infringes the rights of the members and/or licensees. Moreover, AFVSO proposes to rely on this letter as evidence of your ‘knowledge’ within the meaning of the Act.

If it comes to the AFVSO’s attention that you are infringing the rights of members or distributors, the AFVSO is instructed to take such action as may be considered necessary in the circumstances, to protect their position without further notice to you.”

The letter is signed “Stephen H. Howes” who says he is a Director.  The letterhead of that letter is:

“AUSTRALASIAN FILM AND VIDEO SECURITY OFFICE

A DIVISION OF OCEANIC INVESTIGATIONS PTY. LIMITED
A.C.N. 002 136 361
RETAINED BY THE MOTION PICTURE EXPORT ASSOCIATION OF AMERICA INC.”

with its post office address and telephone and fax information.

A video laser disc uses a laser beam reading optical information contained in indentations mechanically imprinted into a surface in a plastic disc, producing a much higher picture quality than any domestic video cassette format.  Mr Slater, who was not cross-examined, deposed that there was no video laser disc production in Australia, all video laser discs emanate from overseas and come in two configurations - those in the PAL standard and those in the NTSC standard.  The PAL (for ‘Phase Alternate Line’) standard is a technical configuration used in television in the United Kingdom and Australia and some other countries, whereas the NTSC (for ‘National Television Standard Committee’) standard is used in the Americas and Asia.  Most video players and television monitors in Australia are in the PAL standard only.

Mr Slater, in October 1995, visited the offices of the Australian Federal Police at Miami and examined approximately 2,200 cinematograph films on video laser discs which had been seized from the premises at Laser Video Vision and in Suite 7 in the same shopping complex.

Mr Ian Mackenzie, the Managing Director of a consulting engineering company specialising in television broadcasting and video production and post-production and video cassette duplication, investigated some of the laser video discs seized from Laser Video Vision, including a disc of each of the eleven films earlier referred to.  He said that each disc on inspection revealed that the packaging and labelling contained FBI warnings and statements as to the product being only for use in the United States of America and Canada.  Mr Mackenzie said:

“In my experience only discs manufactured for use in America and Canada carry FBI warnings.”

Mr Mackenzie’s conclusion was that the image produced when each disc was played was of moving images and the title of each movie shown on each individual disc was identical to the title of the package from which that disc had been taken prior to its being inserted into the disc player.

I accept the evidence of Mr Slater and Mr Mackenzie and am satisfied that each of the video laser discs seized as a result of the execution of the three warrants on the premises of Laser Video Vision were recorded in the NTSC standard and that the program on each disc was the film described on the packaging.

I am satisfied on the evidence that each of the discs the subject of the present information was imported into Australia from the United States.  The question of whether the importation was by B W Searle Pty Ltd or Mr Searle personally is considered later.  I am further satisfied that each of the discs is a substantial reproduction of the film identified on the packaging containing the discs. The discs in relation to the eleven films in respect of the “possession” information contained the following markings on the label, on the box and on the disc:

Name	Label	Box	Disc	Distribution
Bye Bye, Love	$80.00 LVV Barcode T01552	© 1994 Twentieth Century Fox Film Corporation All Rights Reserved	© 1994 Twentieth Century Fox Film Corporation All Rights Reserved	For distribution only in the United States, its possessions and Canada
Darkman II: The Return of Durant	$70.00 LVV Barcodes T01480, T01481	©  1994 Universal Productions Canada	For distribution and sale only in the USA and Canada
Disclosure	LVV Barcodes T01432, T01433	© 1994 Warner Bros	© 1994 Warner Bros	For sale or rental for private home use in the USA and Canada only
Interview with the Vampire	$80.00 LVV Barcodes T01420, T01422, T01425	Copyright 1994 Geffen Pictures All Rights Reserved	Copyright © 1994 Geffen Pictures
Just Cause	$70.00 LVV Barcode T01506	© 1995 Warner Bros	© 1995 Warner Bros	For sale or rental for private home use in the USA and Canada only
A Little Princess	$70.00 LVV Barcode T015666	© 1995 Warner Bros	© 1995 Warner Bros	For sale or rental for private home use in the USA and Canada only
Love Affair	$70.00 LVV Barcode T013355	© 1994 Warner Bros	© 1994 Warner Bros	For sale or rental for private home use in the USA and Canada only
Maverick	LVV T01193, T01194	© 1994 Warner Bros and Icon Distribution Inc	© 1994 Warner Bros and Icon Distribution Inc	For sale or rental for private home use in the USA and Canada only
Outbreak	$80.00	© 1995 Warner Bros	© 1995 Warner Bros	For sale or rental for private home use in the USA and Canada only
Speechless	$70.00 LVV Barcode T01400	© 1994 Metro Goldwyn Mayer Inc All Rights Reserved	© 1994 Metro Goldwyn Mayer Inc All Rights Reserved
Wyatt Earp	$265.00 $90.00 LVV Barcode T01169	© 1994 Warner Bros	© 1994 Warner Bros	For sale or rental for private home use in the USA and Canada only

Natalie Margaret Ginn deposes that she was that she was “employed by Bradley Searle” as an Accounts Manageress with Laser Video Vision situated at Suite 3, 2098 Gold Coast Highway, Miami.  She was so employed from 21 March 1994 to 29 September 1995.  She says of that business:

“Laser Video Vision is a business trading name for the company B W Searle Pty Ltd, dealing as a laser disc and hi-fi equipment retail outlet.  To the best of my knowledge Bradley Searle is the director of the company and the manager of this business.  Laser video discs are ordered through the business and are imported from the United States of America through different suppliers.  Laser Video Vision also hire laser discs in a similar way to a video store hiring videos.  All laser video discs at the premises were either for sale or hire.”

Further, she said:

“Part of my duties as Accounts manageress included, under instruction from Mr Searle, the day to day running of the business, maintenance of accounts, overseeing the stock, dealing with suppliers and customers, group tax preparation and wages.  I am familiar with the computer system operated at the business and I had access to and am familiar with most of the documentation associated with the business.  All decisions in relation to the running of the business were made by Mr Searle.”

Lara Barnshaw says that she was “employed by Bradley Searle” as a sales consultant with Laser Video Vision situated at Suite 3, 2098 Gold Coast Highway, Miami for approximately ten months beginning in January 1995 and finishing in October 1995.  Her affidavit continues:

“Laser Video Vision is a business trading name for the company B W Searle Pty Ltd, dealing as a laser disc and hi fi equipment retail outlet.  To the best of my knowledge Bradley Searle is the director of the company and the manager of this business…”

Both employees inconsistently say that they were employed by Bradley Searle, but that Laser Video Vision is the trading name for the company B W Searle Pty Ltd.  I think that this lack of precision or perhaps misunderstanding of the precise legal position might also have been shared by Mr Searle.

The business records of Laser Video Vision contain an invoice dated 15 September 1995 which indicate an order date of 30 August 1995 to KC Enterprises at an address in Anaheim, California from Laser Video Vision, as well as a copy of a telegraphic transfer to Norwalk Distributors, at a different address in Anaheim, for an amount of $6,717.54.  The invoice refers to the boxes of discs in the shipment of laser discs seized by the Australian Federal Police on 21 September 1995.  The signature on the requisition for the telegraphic transfer is that of Mr Searle.

In a file of the business records of Laser Video Vision is a two page application for credit/company check faxed to Norwalk Record Distributors.  The business is described as Laser Video Vision.  Under the description “business”, the box marked “Corporation” has been crossed; the boxes “Proprietorship” or “Partnership” being left vacant; against the words “Date Established” is written “March 93”; under the passage marked “Proprietors/Officers” the name “Brad Searle” appears with the title “Director” as well as the name “Evelynne Searle”, also with the title “Director”; the bank reference is given as “The Bank of Queensland account number 11324232”; the credit line amount requested was $20,000 and the applicant was said to be Laser Video Vision above the printed words on the form “(Full firm name)” and then was signed by Mr Searle under the heading “By authorised Agent” with the word “Director” printed over the typed word “(Title)”.  The date of the application is 13 September 1995.

Also in the records seized from the premises of Laser Video Vision is a photocopy of an Australian Customs entry for home consumption computer printout prepared 19 September 1995.  The entry indicates the owner is B W Searle Pty Ltd t/a Laser Video Vision.  The loading point is indicated as Los Angeles and the destination port Brisbane Airport.  The USA is shown as the origin of the goods which are described as laser discs.  There is a letter to Norwalk Distributors Inc dated 30 August 1995 signed by Mr Searle as Managing Director, Laser Video Vision, requesting information about future importation of discs.

The account records with the Bank of Queensland Ltd show that a cheque account number 10-324232 was operated in the name “Queensland Laser Video Vision - Bradley William Searle trading as”.  The bank statements for that account commence on 18 March 1994 and page 41 of the statements for that account indicated that the account was reduced to a zero balance as at 12 July 1995.  Bank of Queensland Limited statements show that a cheque account whose number is 11-324232 in the account name of “Qld Laser Video Vision - B W Searle Pty Ltd trading as” was being used from 10 July 1995 onwards.  The first page of the statements for the account so styled is not in the material seized, but pages 2-6 of that account covering the period from 10 July 1995 to 21 August 1995 are in evidence.

B W Searle Pty Ltd was incorporated in Queensland on 22 May 1995, with Mr Searle and his wife as directors.  In my opinion, the business of Laser Video Vision was conducted up until early July 1995 by Mr Searle personally and that from about 10 July 1995 onwards, B W Searle Pty Ltd conducted the business.

Having regard to the documents in relation to the placing of orders, bank documents, the invoice of September 1995 as well as the entry for home consumption, I am satisfied and I find that on 21 and 22 September 1995 the business of Laser Video Vision was the business of B W Searle Pty Ltd. I am satisfied that as at 21 and 22 September 1995 the laser video discs the subject of the information in proceedings QG 189 of 1996 were in the possession of B W Searle Pty Ltd. I am satisfied that those discs were on 21 September 1995, at least, in the possession of the company for sale or hire in the way of trade, and that Mr Searle was knowingly concerned in that possession. For accessorial liability under s 5 of the Crimes Act 1914 it is necessary that the person said to be knowingly concerned in an offence committed by another must know all the essential facts which make what was done an offence; Yorke v  Lucas (1983-1984) 158 CLR 661 and Giorgianni v The Queen (1985) 156 CLR 473 at 487-488. If the elements of the offence by the company are made out, I am quite satisfied that Mr Searle was knowingly concerned in that offence because I am satisfied that he knew what the company knew, and he was concerned in all the company’s acts and conduct.

It was submitted by Mr S Couper SC on behalf of the defendant, that the evidence did not establish that there existed an intention to sell or hire the relevant discs on 22 September 1995; the removal of some of those discs to Unit 7 being consistent with an intention no longer to offer the discs for sale or hire, and in the absence of evidence that the business was in fact trading on 22 September 1995, it was not possible to conclude that there was the requisite intention to sell or hire in trade on 22 September 1995.  In my opinion, it is unnecessary to consider this aspect of the matter further, because I have no doubt that the offending discs were in the possession of the company on 21 September 1995 with the requisite purpose, and that such possession is within the description in the charge of ‘on or about 22 September 1995”.

It is therefore necessary to consider whether in respect of each of the eleven films, discs of which were seized, the discs were discs of the named cinematograph film; whether copyright subsists in that film; whether that film was first published in the United States of America; whether the articles were imported into Australia; whether they were so imported without the licence of the copyright owner, and that if the articles had been made in Australia by the importer they would have constituted an infringement of the copyright in the particular film. 

I am satisfied from the evidence of Mr Slater and Mr Mackenzie that each of the discs presently relevant were a reproduction of the film named on the packaging of the disc; that each of the eleven titles was the title of the cinematograph film formatted in the disc; and that each of the discs was imported into Australia.  I am further satisfied that the visual images and sounds in the format of the laser video disc in each case is substantially the same as the visual images and sounds embodied in the film for cinema release.  Further, I am satisfied that if the articles had been made in Australia by the importer, each of them would have constituted an infringement of the copyright in the specified cinematograph film.

The prosecution alleges that the owner of the copyright in the film “Interview with the Vampire” is “Geffen Pictures”; the film “Bye Bye, Love” Twentieth Century Fox Film Corporation; the film “Dark Man II: The Return of Durant” Universal Productions Canada; and in respect of the film ‘Speechless” Metro-Goldwyn-Mayer Inc.  The owner of the copyright of the remaining seven films is alleged to be Warner Bros., a division of Time Warner Entertainment Company, LP.

In the circumstances of this case, to establish subsistence of copyright under Australian law, the first publication of each of the eleven films has to be shown by the prosecutor to be in the United States.  I am satisfied that, where there has been a cinema release, that release precedes the production of a video laser disc.  For the purpose of cinema release, films are hired out to the cinemas showing the films.

Before dealing with the particular copyright questions relating to each film, I should deal with the submission for the prosecutor that the symbol required by the Universal Copyright Convention and the claim to copyright on the packaging and disc under the Convention attract the provisions of s 70 of the Evidence Act, and establish, or assist in establishing, the owner of the copyright in the film.

Section 70 provides:

“(1) The hearsay rule does not apply to a tag or label attached to, or writing placed on, an object (including a document) if the tag or label or writing may reasonably be supposed to have been so attached or placed:

(a)in the course of a business; and

(b)for the purpose of describing or stating the identity, nature, ownership, destination, origin or weight of the object, or of the contents (if any) of the object.

(2) This section, and any provision of a law of a State or Territory that permits the use in evidence of such a tag, label or writing as an exception to a rule of law restricting the admissibility or use of hearsay evidence, does not apply to:

(a)a Customs prosecution within the meaning of Part XIV of the Customs Act 1901; or

(b)an Excise prosecution within the meaning of Part XI of the Excise Act 1901.

It is submitted that the printing on the box or sleeve may reasonably be supposed to have been so attached or placed in the course of business and for the purpose of stating the ownership of the contents of the object.  The object is said to be the box or sleeve in which the disc is found.  It is said that the copyright claim is a statement placed in the course of business stating the ownership of the contents of the object.  The short answer, in my opinion, is that the contents of the object is the video laser disc.  Even if the contents be the moving images embodied in the disc, that does not assist the prosecution.  Ownership of the moving images embodied in the disc is not ownership of the copyright in the film.  Further, in my opinion, the copyright claim is not placed on the box or sleeve to state the ownership of the contents of that box or sleeve.

Copyright in the films “Disclosure”, “Just Cause”, “A Little Princess”, “Love Affair”, “Maverick”, “Outbreak”, “Wyatt Earp”

The evidence directed to establishing copyright in the seven Warner Bros. films and the absence of a licence to import those discs, being reproductions of those films, into Australia, has to be obtained from the evidence of Nils Victor Montan.  He says that he is the Assistant Secretary of Time Warner Entertainment Company, LP and Vice-President, Senior Intellectual Property Council of Warner Bros., a division of Time Warner Entertainment Company, LP.

It is necessary to go to the corporate arrangements deposed to by Mr Montan, but in my opinion the owner of the copyright in a cinematograph film has to be a legal person or entity and Warner Bros., a division of Time Warner Entertainment Company, LP is not such a legal person or entity.  Further, in my opinion, the allegation by the prosecutor is not established if the evidence shows that the copyright owner is Time Warner Entertainment Company, LP.

The evidence shows that Time Warner Entertainment Company, LP is a limited partnership under the Delaware Revised Uniform Limited Partnership Act.  The sole general partner of the partnership is Warner Entertainment Inc.  By a Bill of Sale and Assignment dated June 30 1992, the grantors named in that document assigned to Time Warner Entertainment Company, LP all of the assets, rights and businesses primarily relating to the businesses to be conducted by the partnership.  Clause 2 of that Bill of Sale and Assignment says:

“Nothing in this instrument, express or implied, is intended or shall be construed to confer upon, or give to, any person, firm or corporation other than the Partnership and its successors and assigns, any remedy or claim under or by reason of this instrument…”

The grantors include Warner Cable Communications Inc, Warner Cable Communications Company, Warner Bros Inc, Warner Cable of New York Inc, Warner Communications Inc, Time Warner Cable Inc, as well as a number of other grantors.  By a document headed ‘Second Restated Assignment” corrections were made to the assignment agreement by excluding those entities which had been inadvertently included, and included those entities which had been inadvertently excluded.  A certificate of amendment to the limited partnership of Time Warner Entertainment Company, LP was filed on 30 June 1992.  That document recited that:

“Effective as of June 30, 1992, the names of the general partners of the partnership are as follows:…”

And there follows a number of corporations, including Warner Bros Inc..

Each of the general partners consented to the adoption of resolutions contained in a further document as at 30 June 1992.  That document contained the following resolution:

“RESOLVED, that the following divisions of the Filmed Entertainment Division, Programming Division and Cable Division of TWE be and they hereby are established:

Filmed Entertainment Division:
         Warner Bros
         Warner Bros Pictures
         International Theatrical Enterprises
         …”

There is a list of more than thirty names, and none is indicated to be a corporation or other legal entity.

On 15 August 1992, all of the general partners at Time Warner Entertainment Company, LP consented to the adoption of this resolution:

“RESOLVED, that the officers of the Divisions of TWE be, and each of them hereby is, authorized to take such action as any such officer shall deem necessary or appropriate to facilitate the operations of such division of TWE, including without limitation, executing contracts, agreements, leases, guarantees, powers of attorney and other documents and instruments in the name of such division on behalf of TWE.”

All the general partners of Time Warner Entertainment Company, LP consented to the adoption of a resolution as at 20 September 1993, which resolution said that “Nils Victor Montan be, and he hereby is, elected Assistant Secretary of TWE” …and “RESOLVED, that the following persons be, and each of them hereby is, elected an officer of the Filmed Entertainment Division, Programming Division or Cable Division of TWE, as indicated in the following list, to hold the office…”

and then under the “Filmed Entertainment Division”:

“OfficeOfficer

Warner Bros

Sr. Vice President & Deputy
General Council  Gary Meisel

Vice President, Senior Intellectual
Property Council  Nils Victor Montan

…  …

Warner Bros Pictures

Sr. Vice President - Theatrical
Production  Robert Brassal

…  …

Warner Bros Distributing

Vice President - Southern Division
 Manager  Jackie Stanley”

I have set out this material at length because it seems to me it does not establish that Warner Bros. or Warner Bros., a division of Time Warner Entertainment Company, LP is a legal person or entity capable of owning copyright or capable of making film.  The fact that the limited partnership has organised itself in a corporate divisional structure does not confer legal status or create a legal entity of any such division so organised.  Mr Montan says in his affidavit:

“Warner Bros. and Warner Home Video are divisions of Time Warner Entertainment Company, LP…On 26 June, 1992, Warner Home Video Inc., a Delaware Corporation, merged with and into Warner Bros. Inc., predecessor-in-interest to Warner Bros.  On 30 June, 1992, Warner Bros. Inc contributed any and all of its film related assets to Time Warner Entertainment Company, LP (Warner Bros., Warner Home Video and Time Warner Entertainment Company, LP are hereinafter collectively referred to as ‘Warner Bros.’).”

[emphasis added]

Having made that unhelpful compendium, Mr Montan’s affidavit continued:

“The business records of Warner Bros. include the storing of information in computer systems and written records.  Details such as the maker (producer of a film), production dates, registration of US copyright, first publication dates, first sale date of video cassette recordings, first sale date of laser video disc recordings and license information are stored in the business records.”

Mr Montan is one of the persons primarily responsible for maintaining the business records of Warner Bros. in relation to copyright ownership of cinematograph films.  If the division of Time Warner Entertainment Company, LP, which is called the Warner Bros. Division, makes a film, in my opinion the maker is Time Warner Entertainment Company, LP.  I am prepared to infer that a Limited Partnership under the Delaware Revised Uniform Limited Partnership Act is a legal entity capable of owning copyright.  The Partnership is the owner of the copyright in the film.  I infer that the limited partnership makes motion pictures: the fact that for administrative purposes the employees of the partnerships which are involved in the making of motion pictures are in a division called Warner Bros. does not alter the legal position.

I do not think the allegation that the owner of the copyright is Warner Bros., a division of Time Warner Entertainment Company, LP is an allegation that the owner is the partnership.  The prosecution has alleged ownership of copyright as a necessary part of its case and, in my opinion, in respect of the seven Warner Bros. films, its allegation as to the ownership of copyright has not been made out.

There are other matters in respect of this aspect of copyright in the Warner Bros. films to which brief mention should be made. It was submitted that the business records of Time Warner Entertainment Company, LP cannot be relied upon to establish that the particular film was first published at a particular date and in the United States and Canada. This was said to be so because it had not been shown that the requirements to the exception to the hearsay rule for business records that exists by virtue of s 69 of the Evidence Act 1995 has been met. Section 69(2) provides:

“(2) The hearsay rule does not apply to the document (so far as it contains the representation) if the representation was made:

(a)by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact; or

(b)on the basis of information directly or indirectly supplied by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact.”

In relation to the film “Disclosure”, the certificate of registration is part of the business records of the partnership.  I have already found that the prosecution alleges the copyright in that film to reside in a non-existent person.  The certificate, however, under the heading “NAME OF AUTHOR”, says ‘Warner Bros.”.  Under the heading “DATE AND NATION OF FIRST PUBLICATION OF THIS PARTICULAR WORK” appears the date December 9, 1994 and USA and Canada.  The copyright claimant is said to be Warner Bros., a division of Time Warner Entertainment Company, LP.  The work is said to be a derivative work based on the novel ‘Disclosure” by Michael Crichton.  The application is signed by “Irene Slade - Warner Bros.” and contains a statement:

‘The work identified in this application and the statements made herein this application are correct to the best of my knowledge.”

Similar documents are in evidence in relation to other Warner Bros. films. I am prepared to find that Irene Slade is a person within s 69(2) of the Evidence Act and that the various certificates and other business records are sufficient to prove a production of the picture by Time Warner Entertainment Company, LP and the first publication of the picture in the United States.

“Maverick” has further difficulties.  The author of the film “Maverick” is said to be Icon Distribution Inc.  There is a Memorandum of Foreign Distribution Agreement and a Memorandum of Domestic Distribution Agreement which evidence the grant in respect of a motion picture entitled “Maverick” by Icon Distribution Inc to Warner Bros., a division of Time Warner Entertainment Company, LP of the distribution, exhibition and exploitation rights in that picture, including all media rights including home video and ancillary rights.  Those agreements do not assign copyright to Time Warner Entertainment Company, LP and there is no evidence of any such assignment.

“Interview with the Vampire”

There is a rather different difficulty in relation to the film “Interview with the Vampire”.  The prosecutor alleges that the owner of the copyright in that film was Geffen Pictures.  Both the box sleeve containing the disc and the disc assert copyright in Geffen Pictures.  The business records exhibited by Mr Montan suggest that Lorimar Productions Inc on Nov 24 1987 acquired the rights in and to the published book “Interview with the Vampire” including all theatrical motion picture rights.  A letter dated August 17, 1989, evidences an assignment by Lorimar Productions, Inc to the Geffen Film Company.  The certificate of registration in respect of the motion picture ‘Interview with the Vampire” claims the author as Geffen Pictures, says that the date and nation of first publication of that work was November 11, 1994 in the USA and Canada and that the copyright claimant was Geffen Pictures (aka the Geffen Film Company).

The difficulty is that by an agreement of 31 May 1995, The David Geffen Company, a California corporation (“DGC”) and Time Warner Entertainment Company, LP, a Delaware limited partnership (“TWE”) recited that TWE and DGC are the sole general partners of Geffen Pictures, a Californian general partnership, the venture created pursuant to the Geffen Film Company Joint Venture Agreement as of February 1, 1982 as amended.  It further recited that DGC and TWE wish to wind up the affairs of the venture.  The first clause of that agreement indicates that for good and valuable consideration:

“DGC hereby sells, transfers and assigns to TWE, and TWE hereby purchases from DGC, all of DGC’s right, title and interest in and to the Venture…”

Clause 2 says:

“DGC hereby sells, transfers and assigns to TWE, and TWE hereby purchases from DGC, all of DGC’s right, title and interest in and to DGC’s right to receive any amounts whatsoever pursuant to this Agreement or any Subject Agreement in respect of that certain motion picture entitled ‘Interview with the Vampire’…”

This suggests, contrary to the allegation by the prosecution and the labelling on the box and disc, that the copyright in the film “Interview with the Vampire” is in Time Warner Entertainment Company, LP.  I am not satisfied that the owner of the copyright in that film is Geffen Pictures.

“Speechless”

Mr Montan says in his affidavit:

“Pursuant to an agreement dated 1 November, 1990, as amended, Warner Home Video was granted the exclusive right to sell MGM’s cinematograph films, including the film ‘Speechless’, for their home video market (including the laser disc format) throughout the world.”

That agreement is made between what might be described as a number of MGM related companies on the one hand and Warner Home Video Inc on the other.  One of the signatories to that agreement is Metro-Goldwyn-Mayer, Inc.  That agreement in my opinion does not assign copyright in any films covered by the agreement, but confers rights of distribution and sale of video cassettes and laser discs world wide for twelve and a half years.  There is no evidence to indicate that ‘Speechless” was a film covered by that agreement, particularly having regard to the evidence that suggests that the film entitled “Speechless” was a 1994 film.

It was conceded by Mr Jerrard QC that the agreement of 1990 in respect of Warner Home Video Inc and various MGM companies cannot include “Speechless”.  He accepted “That part of Mr Montan’s affidavit must be wrong”.

However, the evidence of Maria C Angeletti, the Vice-President Corporate Affairs and Assistant Secretary of Metro-Goldwyn-Mayer Inc, and of its wholly owned subsidiaries, Metro-Goldwyn-Mayer Pictures Inc and Metro-Goldwyn-Mayer Distribution Co, and the business records exhibited to her affidavit, satisfies me that the owner of the copyright in the film “Speechless” is Metro-Goldwyn-Mayer Inc, and that it was first published in the United States of America on 16 December 1994.

Mrs Angeletti’s affidavit of 2 July 1997 does not establish that the film “Speechless” and the laser disc format of “Speechless” grant the exclusive right covered by the agreement of November 1, 1990.  Mrs Angeletti says that:

“MGM has not authorised any other person or corporation in Australia or elsewhere to manufacture, import, sell or hire laser video discs of ‘Speechless’ in the NTSC format in Australia.”

I am satisfied that the five copies of the discs “Speechless” were infringing copies, which Mr Searle and the company knew, or ought reasonably to have known, were infringing copies.

“Bye Bye, Love”

In relation to the film “Bye Bye, Love” the business records of Twentieth Century Fox Film Corporation satisfy me that Twentieth Century Fox Film Corporation was the author of that film.  The Certificate of Registration says that in respect of the date and nation of first publication it was first published on 28 February 1995 in the United States.  A document described as a copyright database printout for “Bye Bye, Love” including production dates and first release date suggests that the film was produced in Los Angeles from 23 May 1994 to 4 August 1994, but was released on 17 March 1995, the publication occurring in Dallas, Texas.  A further inter-office memorandum of February 22, 1995 and which was received on 10 March 1995 indicates that the date the first release print of the final version of the film “Bye Bye, Love” was shipped to a Fox branch office for distribution was 28 February 1995, the destination city being Dallas, Texas.  The evidence satisfies me that Twentieth Century Fox Film Corporation is and was the owner of the copyright in the film “Bye Bye, Love” which was first screened to the general public on March 17, 1995 in the United States of America.  I am further satisfied that there was no licence granted by Twentieth Century Fox Film Corporation to any person or corporation anywhere in the world to import laser video discs in the NTSC format into Australia.  The importation of the laser video discs of the film ‘Bye Bye, Love” was without the licence of the copyright owner.  I am satisfied the four laser video discs labelled “Bye Bye, Love” were infringing copies of the cinematograph film “Bye Bye, Love” and that the company and Mr Searle knew they were infringing copies.

“Dark Man II: The Return of Durant”

In relation to the film “Dark Man II: The Return of Durant”, Mr Eric Pertsch describes himself as President of Universal Productions Canada, a division of Universal Studios Canada Ltd (‘Universal Canada’).  The documentation and the business records of Universal Studios Canada Ltd indicates that Universal Productions Canada is a business or identification name and that the activity carried on under the “business or identification name” is the development and promotion of motion pictures and television films.  A further affidavit explains that MCA Canada Ltd changed its name to Universal Studios Canada Ltd effective December 12, 1996.

There is the difficulty that ownership of copyright in the film “Dark Man II: The Return of Durant” is alleged to be in Universal Productions Canada, a business name.  However, the errors in the evidence of Mr Pertsch makes his evidence unreliable and affords an insufficient basis for satisfaction as to copyright in the film.  He says that Universal Canada was the maker and producer of the film, yet annexes what he says is a true copy of the Performer Agreement in relation to that film to his affidavit.  That document, however, relates to a film tentatively entitled “Dark Man 3”.  “Dark Man 3”, it appears, is not simply a pseudonym for “Dark Man II: The Return of Durant”, because in another of the annexures to Mr Pertsch’s affidavit, both “Dark Man II: The Return of Durant” and “Dark Man 3” appear as films as of 1 June 1997.  Secondly, he says that the film was produced as a direct-to-video production and that the date of release of the video cassette was 11 July 1995.  There is no indication as to where that occurred.  He says that the laser video disc NTSC format of the film “Dark Man II: Return of Durant” was first sold in the United States, the date of such sale being 11 July 1995.  The business records which are said to evidence this sale relate to “Dark Man 2: Return of Dura [sic]” which may be a shorthand for the particular film, but the release date is recorded as 18 July 1995.  Annexure F to his affidavit provides no support for the claim in paragraph 8.3 of his affidavit.  The document is in fact for the week ending 28 June 1997.  On the material I am simply unable to say when and where the date of first publication of this film occurred.  As a consequence of this and the difficulty with the allegation concerning the owner of copyright in the film, I am not prepared to hold that it has been proved that the discs of the film “Dark Man II: The Return of Durant” were infringing copies.

In summary, the prosecutor has proved beyond reasonable doubt all the elements of the charge in proceedings QG 189/96, but only in respect of the five laser video discs of the film “Speechless”, and the four laser video discs of the film “Bye Bye, Love”.

I will hear the parties as to penalty, as to what orders I should make, and as to any other matters.

I certify that this and the preceding twenty-eight (28) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Spender

Associate:

Dated:             23 October 1998

Counsel for the Applicant:	Mr J A Jerrard QC
Solicitor for the Applicant:	Director of Public Prosecutions
Counsel for the Respondent:	Mr S S W Couper QC
Solicitor for the Respondent:	McLaughlins
Date of Hearing:	23, 24, 25 September 1997
Date of Judgment:	23 October 1998