Holder, Raymond v Searle, Bradley William (No 2)

[1997] FCA 1158

FEDERAL COURT OF AUSTRALIA

PRACTICE AND PROCEDURE - whether informations for offences based on s 132 of the Copyright Act 1968 (‘the Act’) are bad for duplicity - whether offence alleging the existence of infringing articles based on one copyright work, if joined with an allegation involving infringing copies of another and discreet copyright work, is duplicitous - prosecutor can competently allege a contravention of s 132 of the Act which asserts the importation of a number of infringing copies of a work or different works.

Copyright Act 1968 ss 132, 133

Walsh v Tattersall (1996) 139 ALR 27
Johnson v Miller (1937) 59 CLR 467
Ronald Wilson (1979) 69 Cr App R 83
The Queen v Ballysingh (1953) 37 Cr App R

RAYMOND HOLDER v BRADLEY WILLIAM SEARLE
QG 187 of 1996, QG 188 of 1996 and QG 189 of 1996

SPENDER J
BRISBANE
23 SEPTEMBER 1997

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

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

JUDGE:	SPENDER J
DATE OF ORDER:	23 SEPTEMBER 1997
WHERE MADE:	BRISBANE

THE COURT RULES THAT the information in QG 187 of 1996 is not bad for duplicity.

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 188 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

JUDGE:	SPENDER J
DATE OF ORDER:	23 SEPTEMBER 1997
WHERE MADE:	BRISBANE

THE COURT RULES THAT the amended information in QG 188 of 1996 is not bad for duplicity.

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 189 of 1996

BETWEEN:	RAYMOND HOLDER Prosecutor
AND:	BRADLEY WILLIAM SEARLE Defendant

JUDGE:	SPENDER J
DATE OF ORDER:	23 SEPTEMBER 1997
WHERE MADE:	BRISBANE

THE COURT RULES THAT the information in QG 189 of 1996 is not bad for duplicity.

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 SEPTEMBER 1997
PLACE:	BRISBANE

EX TEMPORE REASONS FOR JUDGMENT  (No 2)

I am presently dealing with a submission on behalf of the defendant that, in respect of each of the three offences which the amended informations specify and which are detailed and particularised in the summonses, the informations are bad for duplicity. The essential submission can be shortly stated. It is that, having regard to the terms of s 132 of the Copyright Act 1968 (Cth) (‘the Act’), an offence which alleges infringing articles or an infringing article based on one copyright work, if joined with an allegation involving infringing copies of another and different copyright work, is duplicitous.

Section 132 of the Act provides:

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

(a)make an article for sale or hire;

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

(c)by way of trade exhibit an article in public; or

(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.

(2)  A person shall not, at a time when copyright subsists in  a work, distribute:

(a)for the purpose of trade; or

(b)for any other purpose to an extent that affects prejudicially the owner of the copyright,

an article that the person knows, or ought reasonably to know, 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)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

(c)by way of trade exhibiting the article in public;

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

(3)  A person shall not, at a time when copyright subsists in  a work, make or have in his or her possession a plate that the person knows, or ought reasonably to know, is to be used for making infringing copies of the work.

(4)  The preceding provisions of this section apply in relation to copyright subsisting in any subject-matter by virtue of Part IV in like manner as they apply in relation to copyright subsisting in a work by virtue of Part III.

(5)  A person shall not cause a literary, dramatic or musical work to be performed in public at a place of public entertainment, if the person knows, or ought reasonably to know, that copyright subsists in the work and that the performance constitutes an infringement of the copyright.

(5AA)   A person shall not cause:

(a)a sound recording to be heard in public at a place of public entertainment; or

(b)a cinematograph film, in so far as it consists of visual images, to be seen in public at a place of public entertainment or, in so far as it consists of sounds, to be heard in public at such a place;

if the person knows, or ought reasonably to know, that copyright subsists in the sound recording or the cinematograph film and that the copyright will thereby be infringed.

(5A) ...

(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.

(9)  In this section, “place of public entertainment” includes any premises that are occupied principally for purposes other than public entertainment but are from time to time made available for hire for purposes of public entertainment.

It is not contended that where there are multiple copies (each of which is an alleged infringing work of the same copyright work) an information alleging contravention of s 132 of the Act based on all of those infringing copies would be duplicitous. This position, no doubt, is adopted in the light of s 133 which contemplates that there can be a number of articles the subject of an offence constituting a contravention of s 132 of the Act.

In my opinion, the distinction is not able to be maintained. It is the case either that in relation to s 132 there can be an offence which is constituted only in respect of a single infringing article or it is possible to have an offence which contemplates conduct in respect of multiple articles.

The correctness of the second possibility involves questions of some difficulty.  The courts have not been particularly successful in grappling with the circumstances in which an information is duplicitous.  In Ronald Wilson (1979) 69 Cr App R 83 at 85, Browne LJ said:

“The word duplicity is used in a rather ambiguous sense, it seems to us, in the authorities and text books.  First there is a case where it appears on the face of the indictment, or particulars of the indictment, that a count is charging more than one offence.  It may sometimes be legitimate to look at the depositions in this context.  (See GREENFIELD (1973) 57 Cr App R. 849; [1973] 1 WLR. 1151).  That has been referred to in the course of the argument as true duplicity.  Secondly, there is a case where, although the indictment is good on its face, it appears at the close of the prosecution case that the evidence establishes that more than one offence was committed on the occasion to which a particular count relates.  Perhaps that is best described as divergence or departure, but it often seems to be called duplicity.  In our judgment, in whatever sense one uses the word duplicity, it is confined to those two situations.”

The Court of Appeal in that case referred to the decisions in The Queen v Ballysingh (1953) 37 Cr App R, Ware v Fox [1967] 1 WLR 379 and Jemmison v Priddle (1971) 56 Cr App R 229, [1972] 1 QB 489. The conclusion of the Court of Appeal appears at 87, where Browne LJ said:

“Those statements of Lord Widgery CJ [in Priddle] have been approved by two Members of the House of Lords in the case of DPP v. MERRIMAN [1972] 56 Cr App R 766; [1973] AC 584.  Lord Morris of Borth-Y-Gest said, at p. 775 and p. 593 of the respective reports:  ‘The question arises - what is an offence?  If A attacks B and, in doing so, stabs B five times with a knife, has A committed one offence or five?  If A in the dwelling-house of B steals ten different chattels, some perhaps from one room and some from others, has he committed one offence or several?  In many different situations comparable questions could be asked.  In my view, such questions when they arise are best answered by applying common sense and by deciding what is fair in the circumstances.  No precise formula can usefully be laid down, but I consider that clear and helpful guidance was given by Lord Widgery in a case where it was being considered whether an information was bad for duplicity (see JEMMISON v. PRIDDLE (1972) 56 Cr App R 229, 234; [1972] 1 QB 489, 495). I agree respectfully with Lord Widgery that it will often be legitimate to bring a single charge in respect of what he called one activity even though that activity may involve more than one act. It must of course depend upon the circumstances.’”

The Court seemed to distinguish Ballysingh (supra) at 88:

“It seems to us that in view of the later authorities the question of whether there is one or more offence disclosed is really a question of fact and degree.  The facts in Ballysingh are not clear at all.  In any case, it must be read in the light of the later authorities.  Applying the test laid down in Jemmison v Priddle (supra) and DPP v Merriman (supra) and Jones (supra), Mr Parish (in spite of his attractive argument), has entirely failed to satisfy us that the evidence in this case on count one and count three disclosed more than one offence”.

The appeal was dismissed.

It is plain, of course, that it is impermissible for the prosecution to allege more than one offence.  Johnson v Miller (1937) 59 CLR 467 is an old and clear authority for that proposition. There are two passages in that judgment which have a particular present relevance. The first appears at 483 where, Dixon J (as he then was), said of the statutory provision there in question:

“The provision appears to me to impose upon the licensee for each person found upon or seen leaving the premises a distinct liability as for a separate offence.  Perhaps the generality of this statement needs qualifying by one exception.  For, possibly, if a number of persons is found upon or coming out of the premises at one time and they are acting in combination, their presence does not constitute more than one offence.  As they are jointly there, they may be regarded as together satisfying the condition which constitutes that particular element in the offence and not as providing separate instances of that element.  But I am unable to agree in the view that the presence on the premises, or the departure from the premises, on distinct occasions, however close in point of time of several persons acting independently may be treated as constituting or evidencing but one offence.  They are repetitions, not continuations, of the state of facts which exposes the licensee to penal liability if he fails to prove one or other of the three matters of exculpation.”

Later, at 489, his Honour said:

“Where an information or complaint is so drawn as to disclose more than one offence and one set of facts amounts to each of the various offences covered by the charge, as the case in Johnson v Needham [1909] I KB 626, the proper course is to put the complainant to his election.  In such a case, to wait to the end of his evidence before doing so may be convenient and may cause no injustice.  But it is the converse of the present case, where the question is whether the prosecutor should not be required to identify one of a number of sets of acts each amounting to the commission of the same offence as that on which the charge is based.  In my opinion he clearly should be required to identify the transaction on which he relies, and he should be so required as soon as it appears that his complaint, in spite of its apparent particularity, is equally capable of referring to a number of occurrences each of which constitutes the offence the legal nature of which is described in the complaint.”

It is clear from these two passages that if there is "a number of occurrences" or if there are "distinct occasions", there is more than one offence and it is necessary to put the prosecution to its election.

It is also relevant in the present context to refer to the division of opinion in Walsh v Tattersall (1996) 139 ALR 27. Gaudron, Gummow and Kirby JJ (with Dawson and Toohey JJ dissenting) held that where a person had been charged in respect of a contravention of s 120(1) of the Workers Rehabilitation and Compensation Act 1986 (SA) (‘the Compensation Act’) by adding up a number of compensation payments and benefits obtained by him over a period of time and joined in one count, the charge was bad for duplicity.

The relevant section provided:

“A person who

(a)obtains by dishonest means any payment or other benefit under this Act;

…
is guilty of an offence.”

The majority opinion was that each obtaining of a payment or benefit constituted an offence, and it was duplicitous to lump the various payments into one offence. The view of Gordon and Gummow JJ was not whether, in a single count, the appellant was charged with more than one offence but rather with the anterior question, whether the appellant was charged with any offence created by the Compensation Act. Their Honours’ view was that the appellant was not so charged and it was on that basis that the appeal succeeded. The ratio of the majority was that the Compensation Act taken as a whole displayed an intention to create an offence in the direct terms used by the section and not otherwise.

As Gaudron and Gummow JJ said, at 35:

“A discrete offence is completed upon the receipt of any one payment or benefit, whereas count 1 spoke of ‘payments or benefits’ which were made under the Act and obtained by dishonest means.”

The other member of the majority, Kirby J, said at 48:

“For the foregoing reasons of history, good prosecution practice and fair conduct of criminal trials, the general rule of our legal system is still this:  that a prosecutor may not ordinarily charge in one count of an indictment, information or complaint two or more separate offences provided by law.”

At 49, his Honour said:

“Judges themselves have acknowledged that judicial views in particular cases are not always easy to reconcile:  see for example, Stanton v Abernethy (1990) 19 NSWLR 656 at 666. Ultimately, what is presented is a question of fact and degree for a decision in each case: Eadies (1991) 57 A Crim R 151 at 156.

Various indicia are proposed to sustain a single count against the charge of duplicity, notwithstanding that it may permit evidence to be adduced of events which, taken individually, could constitute separate offences.  The indicia include (a) the connection of the events in point of time; (b) the similarity of the acts; (c) the physical proximity of the place where the events happened; and (d) the intention of the accused throughout the conduct: Weinel v Fedcheshen (1995) 65 SASR 156 at 170 per Perry J. Perhaps an indication of the considerable difficulty of the task to be found is in the fact that, in many of the leading cases there is (as in this case) a division of judicial opinion. For instance, Latham CJ dissented in Johnson v Miller [supra]; Kitto J dissented in Montgomery v Stewart (1967) 116 CLR 220 at 225; and Brennan J (as he then was) dissented in S v R (1989) 168 CLR 266 at 267.”

In my opinion, it is competent for a prosecutor to allege a contravention of s 132 of the Act which asserts, for instance, the importation of a number of infringing copies of a work.

Further, it is also competent for the prosecutor to allege the importation of a number of articles, some of which are infringing copies of one work and some of which are infringing copies of another work, or other works.  The same conclusion applies to the sale or the other types of conduct proscribed by the section.

I accept that where there are different works in which copyright subsists, there may be different elements which are relevant and it may be that the prosecution will succeed in respect of some of the alleged infringing copies and fail in respect of others.  However, it may also be that the prosecutor will succeed in respect of some alleged infringing copies of a particular work and fail in respect of other alleged infringing copies of the same work. 

The penalty provisions contained in s 133 of the Act can be given their proper effect by having regard only to those articles to which the alleged contravention relates. Therefore, if the prosecutor has failed in respect of some alleged infringing articles, the conviction relates only to those on which the prosecutor has not so failed and the penalty can be assessed accordingly (or at least the range of penalty to which the convicted person is exposed can be properly assessed).

It is perhaps useful to consider what consequences would be if a contrary conclusion were reached. 

If there was a single importation of say 100,000 copies alleged to be infringing copies of copyright works (and it may be of 100,000 different copyright works), it seems to me that a defendant could legitimately assert that the laying of 100,000 informations for separate offences was oppressive and an abuse of process. Particularly is this the case when one has regard to the penalty capping provisions contained in s 133(2) of the Act. 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.  However, at the end of the day, the substance of the contravention must be considered and that substance is best ascertained by looking at the matter from a transactional viewpoint, rather than on a discrete infringing copy basis, article by article.

For these reasons I reject the contention that the three offences alleged are duplicitous.

I certify that this and the preceding seven (7) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Spender.

Associate:
Dated:            23 September 1997

Counsel for the Applicant:	Mr J Jerrard, QC and Mr D Boddice
Solicitor for the Applicant:	Director of Public Prosecutions
Counsel for the Respondent:	Mr S Couper QC
Solicitor for the Respondent:	McLaughlins
Date of Hearing:	23 September 1997
Date of Judgment:	23 September 1997