JWR Productions Australia Pty Ltd v Duncan-Watt (No 2)
[2020] FCA 236
•5 March 2020
FEDERAL COURT OF AUSTRALIA
JWR Productions Australia Pty Ltd v Duncan-Watt (No 2) [2020] FCA 236
File numbers: NSD 266 of 2017
NSD 327 of 2017Judge: THAWLEY J Date of judgment: 5 March 2020 Catchwords: DEFAMATION – hybrid publication – Facebook Post providing a link to a newspaper article – whether imputations conveyed – one defamatory imputation conveyed
DEFAMATION – defences – justification – defence made out – where respondent pleaded four contextual imputations – whether the alleged contextual imputations were conveyed – two contextual imputations conveyed which were substantially true – whether the contextual imputations operate as a complete or partial defence – fair comment and honest opinion – defence not made out – publication of public documents – defence not made out
CONSUMER LAW – claim under Competition and Consumer Act 2010 (Cth) Sch 2, Australian Consumer Law (ACL) for misleading or deceptive conduct –representations made to a journalist – representations in a Facebook Post which provided a link to a newspaper article – whether conduct was “in trade or commerce” – whether the representations were in fact conveyed by the relevant conduct – whether representation a statement of fact or opinion – whether the representations conveyed were misleading or deceptive or likely to mislead or deceive
CONSUMER LAW – claim under the ACL for misleading or deceptive conduct – whether website content conveyed representations about authorship of a novel – whether the conduct was in “trade or commerce” – whether the representations were in fact conveyed by the relevant conduct – claim for declaratory relief – whether any benefit to making of the declaration – whether financial loss or damage sustained from the conduct – declaratory relief refused
COPYRIGHT – whether infringement of copyright – whether the work was an adaption – claim for injunctive relief – copyright claim dismissed
COPYRIGHT – whether use of photographs on website was an infringement of copyright – whether copyright was assigned as alleged – whether licence granted – where photographs removed a reasonable time after demand
TORTS – detinue – whether property wrongfully detained – whether sufficient demand made – whether respondent made clear and unqualified refusal to comply with the demand – whether the refusal to comply was unreasonable – whether goods were detained for a reasonable time
Legislation: Competition and Consumer Act 2010 (Cth) s 6(3), Sch 2 cl 18
Copyright Act 1968 (Cth) ss 10, 13, 31, 36, 115, 196
Defamation Act 2005 (NSW) ss 4, 25, 26, 28
Fair Trading Act 1987 (NSW) s 4, Div 2 ss 27, 28, 29, 30, 31, 32, Div 3 ss 33, 34
Cases cited: .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521
ACCC v Coles Supermarkets (Australia) Pty Ltd (2014) 317 ALR 73
ACCC v Kimberly‑Clark Australia Pty Ltd [2019] FCA 992
ACCC v Telstra Corp Ltd (2007) 244 ALR 470
ACCC v TPG Internet Pty Ltd (2013) 250 CLR 640
Adidas AG v Pacific Brands Footwear Pty Ltd (No 4) (2013) 308 ALR 143
Amalgamated Television Services v Marsden (1998) 43 NSWLR 158
Anyanwu and Another v South Bank Student Union and Another (No 2), The Times Law Reports, December 5, 2003, 678
Aqua-Marine Marketing Pty Ltd v Pacific Reef Fisheries (Australia) Pty Ltd (No 5) [2012] FCA 908
Bank of New South Wales v The Commonwealth (1948) 76 CLR 1
Banks v Ferrari [2000] NSWSC 874
Besser v Kermode (2011) NSWLR 157
Brisbane City Council v Group Projects Pty Ltd (1979) 145 CLR 143
Butcher v Lachlan Elder Realty Pty Ltd (2004) 218 CLR 592
Campbell v Backoffice Investments Pty Ltd (2009) 238 CLR 304
Chakravarti v Advertiser Newspapers Ltd (1998) 193 CLR 519
Channel Seven Adelaide Pty Ltd v Manock (2007) 232 CLR 245
Channel Seven Sydney Pty Ltd v Mahommed (2010) 278 ALR 232
Civil Service Co-operative Society of Victoria Ltd v Blyth (1914) 17 CLR 601
Clayton v Le Roy [1911] 2 K B 1031
Codelfa Construction Pty Ltd v State Rail Authority of NSW (1982) 149 CLR 337
Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46
Con-Stan Industries of Australia Pty Ltd v Norwich Winterthur Insurance (Australia) Ltd (1986) 160 CLR 226
Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594
Cross v Queensland Newspapers Pty Ltd [2008] NSWCA 80
Cummings v Fairfax Digital Australia & New Zealand Pty Ltd [2017] NSWSC 657
Cummings v Fairfax Digital Australia & New Zealand Pty Ltd (2018) 99 NSWLR 173
David v Abdishou [2012] NSWCA 109
David Syme & Co v Canavan (1918) 25 CLR 234
Davis Contractors Ltd v Fareham Urban District Council [1956] AC 696
Derry v Peek (1889) 14 App Cas 337
DGM Commodities Corp v Sea Metropolitan SA (The “Andra”) [2012] 2 Lloyd’s Rep 587
Dow Jones & Co Inc v Gutnick (2002) 210 CLR 575
Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934
EE McCurdy Ltd (in liq) v Postmaster-General [1959] NZLR 553
E W Savory Ltd v World of Golf Ltd [1914] 2 Ch 566
Electricity Generation Corporation v Woodside Energy Ltd (2014) 251 CLR 640
Flowfill Packaging Machines Pty Ltd v Fytore Pty Ltd (1993) Aust Torts Reports 81-244
Given v Pryor (1979) 24 ALR 442
Goodman v Boycott (1862) 2 B & S 1
Google Inc v ACCC (2013) 429 CLR 435
Greenfield Products Pty Ltd v Rover Scott Bonnar Ltd (1990) 95 ALR 275
Grundt v Great Boulder Proprietary Gold Mines Limited (1937) 59 CLR 641
Hall-Gibbs Mercantile Agency Ltd v Dun (1910) 12 CLR 84
Hockey v Fairfax Media Publications Pty Ltd (2015) 237 FCR 33
Houghland v RR Low (Luxury Coaches) Ltd [1962] 1 QB 694
Hunter BNZ Finance Ltd v CG Maloney Pty Ltd (1988) 18 NSWLR 420
John F Goulding Pty Ltd v Victorian Railways Commissioners (1932) 48 CLR 157
John Fairfax Publications Pty Ltd v Obeid (2005) 64 NSWLR 485
Lewis v Daily Telegraph Ltd [1964] AC 234
Louis Vuitton Malletier SA v Knierum [2004] FCA 1584
Madden v SeafollyPty Ltd (2014) 313 ALR 1
Mirror Newspapers Ltd v Harrison (1982) 149 CLR 293
Mirror Newspapers Ltd v World Hosts Pty Ltd (1979) 141 CLR 632
Nelson & Anor v Nelson [1923] St R Qd 37
Nine Films & Television Pty Ltd v Ninox Television Ltd [2005] FCA 1404
O’Brien v Australian Broadcasting Corporation (2017) 97 NSWLR 1
Oliver v Nine Network Australia Pty Ltd [2019] FCA 583
oOh! Media Roadside Pty Ltd (formerly Power Panels Pty Ltd) v Diamond Wheels Pty Ltd (2011) 32 VR 255
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191
Plimer v Roberts (1997) 80 FCR 303
Radio 2UESydney Pty Ltd v Chesterton (2009) 238 CLR 460
Reader’s Digest Services Pty Ltd v Lamb (1982) 150 CLR 500
Ross McConnel Kitchen & Co Pty Ltd v John Fairfax & Sons Ltd [1980] 2 NSWLR 845
Shape Shopfitters Pty ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474
Sims v Jooste (No 2) [2016] WASCA 83
Slim v Daily Telegraph Ltd [1968] 2 QB 157
Slaveski v State of Victoria [2010] VSC 441
Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) (2011) 282 ALR 43
Sungravure Pty Ltd v Middle East Airlines Airliban SAL (1975) 134 CLR 1
SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466
Timewell v Virgoe (1868) 5 WW&A’B L 147
The Elizabeth (1819) 2 Dods 403
Thompson v Palmer (1933) 49 CLR 507
Thompson v Riley McKay Pty Ltd (1980) 29 ALR 267
Universal Communication Network Inc t/as New Tang Dynasty v Chinese Media Group (Aust) Pty Ltd & Chan [2008] NSWCA 1
Voxson Pty Ltd v Telstra Corporation Limited (No 10) [2018] FCA 376
Wake v John Fairfax & Sons Ltd [1973] 1 NSWLR 43
Walker v Sell (2016) 245 FCR 308
Heydon, J D, Heydon on Contract (Thomson Reuters, 2019)
Date of hearing: 5 to 14 March 2019, 3 May 2019 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 731 Counsel for the Applicants: Mr HPT Bevan with Ms CK Amato Solicitor for the Applicants: Bird & Bird Counsel for the Respondent in NSD 266 of 2017: Mr MR Hall SC with Ms EE Whitby Solicitor for the Respondent in NSD 266 of 2017: Banki Haddock Fiora Counsel for the Respondent in NSD 327 of 2017 Mr R Potter Solicitor for the Respondent in NSD 327 of 2017 Blueprint Law Pty Limited ORDERS
NSD 266 of 2017 BETWEEN: JWR PRODUCTIONS AUSTRALIA PTY LTD
First Applicant
JONATHAN ROCKEFELLER
Second Applicant
AND: THOMAS DUNCAN-WATT
Respondent
JUDGE:
THAWLEY J
DATE OF ORDER:
5 MARCH 2020
THE COURT ORDERS THAT:
1.The proceedings be dismissed.
2.Unless any party applies within 7 days for a different order with respect to costs, the applicants pay the respondent’s costs.
3.If any party applies for a different order as to costs in accordance with order 2:
(a)the party applying for such an order file with the application for costs:
(i)a submission of not more than 3 pages identifying the order sought and why it is contended such an order should be made and stating whether the party wishes to be heard in respect of the application;
(ii)any evidence proposed to be relied upon;
(b)the party against whom such an order is sought file within 3 days of receipt of the application:
(i)a responding submission of not more than 3 pages, which includes a statement as to whether the party wishes to be heard; and
(ii)any evidence relied upon.
4.Unless otherwise ordered, any application for costs be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ORDERS
NSD 327 of 2017 BETWEEN: JWR PRODUCTIONS AUSTRALIA PTY LTD
First Applicant
JONATHAN ROCKEFELLER
Second Applicant
AND: NEIL GOODING
Respondent
JUDGE:
THAWLEY J
DATE OF ORDER:
5 March 2020
THE COURT ORDERS THAT:
1.The proceedings be dismissed.
2.Unless any party applies within 7 days for a different order with respect to costs, the applicants pay the respondent’s costs.
3.If any party applies for a different order as to costs in accordance with order 2:
(a)the party applying for such an order file with the application for costs:
(i)a submission of not more than 3 pages identifying the order sought and why it is contended such an order should be made and stating whether the party wishes to be heard in respect of the application;
(ii)any evidence proposed to be relied upon;
(b)the party against whom such an order is sought file within 3 days of receipt of the application:
(i)a responding submission of not more than 3 pages, which includes a statement as to whether the party wishes to be heard; and
(ii)any evidence relied upon.
4.Unless otherwise ordered, any application for costs be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
THAWLEY J:
A OVERVIEW
[1]
B FACTUAL BACKGROUND
[23]
B.1 The Golden Girls television series
[23]
B.2 Dramatis personae
[26]
B.2.1 Jonathan Rockefeller
[26]
B.2.2 Thomas Duncan-Watt
[32]
B.2.3 Neil Gooding
[34]
B.2.4 Matthew Henderson
[38]
B.3 Credibility and reliability
[40]
B.4 The development of Thank You For Being a Friend: 2012 to July 2013
[43]
B.5 Early discussions with Mr Gooding and Mr Henderson; Mr Rockefeller’s misrepresentation to Mr Duncan-Watt: January 2013 to July 2013
[56]
B.6 The 9 July 2013 Writers Assignment Agreement
[74]
B.7 The 17 July 2013 Licence Agreement
[78]
B.8 Payment for puppets: July 2013 to November 2013
[88]
B.9 Conversation between Mr Duncan-Watt and Mr Gooding on 18 October 2013
[95]
B.10 Mr Rockefeller agreed to execute a new Licence Agreement, with Mr Duncan-Watt as a licensor
[105]
B.11 The 25 November 2013 Licence Agreement
[117]
B.12 Thank You For Being A Friend is revised and finalised: November and December 2013
[142]
B.13 Thank You For Being A Friend is performed from January 2014
[145]
B.14 Mr Rockefeller moved to New York in June 2014
[146]
B.15 Mr Duncan-Watt commences work on Mr Rockefeller’s novel: June to September 2014
[148]
B.16 Neil Gooding Productions and Mr Henderson execute a “Booking Services Agreement” and have a discussion with Mr Rockefeller: September and December 2014
[153]
B.17 Mr Rockefeller, Mr Duncan-Watt and the photo shoot: November and December 2014
[157]
B.18 Lilianfels and the Author Collaboration Agreement: December 2014
[170]
B.19 Mr Rockefeller considers a new Golden Girls puppet parody: January 2015
[176]
B.20 Mr Rockefeller raises possible breaches of the Licence Agreement with Mr Duncan-Watt: February and March 2015
[178]
B.21 Mr Rockefeller obtains legal advice, including as to whether the Licence Agreement can be terminated: March 2015
[183]
B.22 Mr Rockefeller continues to pursue the new Golden Girls puppet parody with Mr Duncan-Watt: March to May 2015
[194]
B.23 The “Scriptwriter Agreement” between JWR Productions LLC and Mr Duncan-Watt: 11 May 2015
[201]
B.24 Dinner at Rosa Mexicano in New York: June 2015
[205]
B.25 Work continues on 5 ½ and The Goldenish Girls: July to September 2015
[215]
B.26 Mr Rockefeller learns about the agreement with East Bank Entertainment: 12 September 2015
[223]
B.27 Mr Duncan-Watt writes substantial pars of No. 5½ from October 2015
[235]
B.28 Telephone conference of 14 October 2015 and subsequent events
[236]
B.29 A Canadian producer expresses interest in Thank You For Being A Friend: January 2016
[240]
B.30 Events from February to March 2016
[244]
B.31 Mr Rockefeller terminates the Author Collaboration Agreement: 14 May 2016
[258]
B.32 Mr Rockefeller requests return of material, and further deterioration of relationship: May to June 2016
[262]
B.33 Mr Rockefeller terminates the Scriptwriter Agreement: 27 June 2016
[267]
B.34 The events of July 2016
[289]
B.35 Mr Gooding learns about That Golden Girls Show!: August 2016
[292]
B.36 That Golden Girl Show! opens: 19 September 2016
[300]
B.37 The respective contributions of Mr Rockefeller and Mr Duncan-Watt to The Goldenish Girls plot and script and the similarities between the two
[310]
B.37.1 The plot
[316]
B.37.2 The script
[330]
B.38 Similarities between Thank You For Being A Friend and That Golden Girls Show!
[337]
B.39 The New York proceedings
[360]
B.40 The New York Times Article
[361]
B.41 Mr Gooding’s Facebook post
[363]
C DEFAMATION
[364]
C.1 Introduction
[364]
C.2 Publication
[369]
C.3 Identification
[373]
C.4 Was the publication defamatory?
[375]
C.4.1 Relevant principles
[375]
C.4.1.1 The ordinary reasonable reader
[377]
C.4.1.2 Whether the imputation is conveyed
[380]
C.4.1.3 Whether the imputation is defamatory
[387]
C.4.2 Were the imputations conveyed?
[388]
C.4.2.1 The pleaded imputations
[388]
C.4.2.2 Preliminary observations
[389]
C.4.2.3 Imputations (a) to (c)
[404]
C.4.2.4 Imputation (d)
[416]
C.4.2.5 Imputation (e)
[428]
C.4.2.6 Imputation (f)
[435]
C.4.2.7 Imputation (g)
[440]
C.4.3 Were the imputations defamatory?
[445]
C.5 Defences
[447]
C.5.1 Introduction
[447]
C.5.2 Justification
[448]
C.5.3 Contextual truth
[459]
C.5.3.1 Contextual imputation (a)
[461]
C.5.3.2 Contextual imputation (b)
[463]
C.5.3.3 Contextual imputations (c) and (d)
[468]
C.5.3.4 Complete or partial defence?
[469]
C.5.4 Fair comment and honest opinion
[471]
C.5.5 Publication of public documents
[482]
C.6 Conclusion in relation to defamation
[493]
D ACL CLAIMS AGAINST BOTH MR DUNCAN-WATT AND MR GOODING
[494]
D.1 Jurisdictional issues
[495]
D.2 Relevant principles
[499]
D.3 The claims against Mr Gooding
[508]
D.3.1 The conduct
[508]
D.3.2 Was the conduct in trade or commerce?
[511]
D.3.3 Was the first representation conveyed?
[512]
D.3.4 Was the first NG representation misleading or deceptive?
[523]
D.3.5 Was the second NG representation conveyed?
[524]
D.3.6 Was the second NG representation misleading or deceptive?
[528]
D.3.6.1 The applicants’ contentions
[528]
D.3.6.2 Mr Gooding’s contentions
[529]
D.3.6.3 Consideration
[533]
D.3.7 Conclusion with respect to ACL claims against Mr Gooding
[555]
D.4 Mr Duncan-Watt
[558]
D.4.1 The conduct
[558]
D.4.2 Was the conduct in trade or commerce?
[563]
D.4.3 Was the first TDW representation conveyed?
[572]
D4.4 Was the first TDW representation misleading or deceptive?
[577]
D.4.5 Was the second TDW representation conveyed by Mr Duncan-Watt’s conduct?
[578]
D.4.6 Was the second TDW representation misleading or deceptive?
[588]
D.4.7 Conclusion with respect to ACL claims against Mr Duncan-Watt
[604]
E SATISFACTION AND NO. 5½
[607]
E.1 Introduction
[607]
E.2 The ACL Claims
[622]
E.2.1 The pleaded representations
[622]
E.2.2 Trade or commerce
[623]
E.2.3 Were the representations conveyed?
[626]
E.2.3.1 The parties’ submissions
[626]
E.2.3.2 Consideration
[631]
E.2.4 Was the conveyed representation misleading or deceptive
[640]
E.2.5 Relief
[641]
E.3 The Copyright Claims
[647]
F COPYRIGHT CLAIM – PHOTOGRAPHS
[659]
F.1 Overview
[659]
F.2 No agreement to charge Mr Duncan-Watt for the photographs or their use
[665]
F.3 Any assignment of copyright was on 21 December 2016, not in 2014 or 2015
[679]
F.4 Period over which photographs were published
[683]
F.5 Conclusions
[689]
G DETINUE CLAIM – THE SCRIPTS
[695]
G.1 The subject matter of the claim
[695]
G.2 Relevant legal principles
[699]
G.3 A pleading point
[702]
G.4 Consideration: the “Returned Material”
[705]
G.5 Consideration: the “Other Material”
[725]
G.6 Conclusion
[730]
H. CONCLUSION
[731]
A OVERVIEW
Thank You For Being A Friend is a puppet parody of the famous television series, The Golden Girls. It was jointly created by Mr Jonathan Rockefeller and Mr Thomas Duncan‑Watt and successfully debuted as a small production in Sydney on 13 February 2013.
With a view to improving the profile of the production and taking the show around Australia and internationally, Mr Rockefeller and Mr Duncan-Watt decided to licence the show to Neil Gooding Productions Pty Ltd (Mr Gooding) and Matthew Management (Mr Henderson) as producers. A licence was first granted in July 2013. The script was revised, a proper set was created, and the producers commenced performances in Australia in January 2014.
Mr Rockefeller and Mr Duncan-Watt worked on other projects together. These included a novel, No. 5½, on which they collaborated from about June 2014.
In 2015, after Mr Rockefeller had moved to the United States of America (US), Mr Rockefeller asked Mr Duncan-Watt to write a new script with a view to the two of them producing a puppet parody of The Golden Girls, called The Goldenish Girls: A Puppet Parody. The aim was to produce this show internationally, debuting in New York.
Mr Duncan-Watt was concerned this would not be possible whilst Thank You For Being A Friend was the subject of an exclusive licence to Neil Gooding Productions and Matthew Management. Mr Gooding and Mr Henderson were in the process of bringing that show to the US. Mr Rockefeller reassured Mr Duncan-Watt that his lawyers had matters in hand and that the licence to Neil Gooding Productions and Matthew Management in respect of Thank You For Being A Friend would be terminated.
Mr Rockefeller sought advice, including as to whether he could prevent Mr Gooding and Mr Henderson from bringing Thank You For Being A Friend to the US or whether he could terminate the relevant licence agreement for breach. He did not receive positive answers to either of these questions.
Mr Duncan-Watt wrote the script for The Goldenish Girls with some input from Mr Rockefeller. The major part of the writing was done over the period May 2015 to 9 September 2015. Thereafter, Mr Duncan-Watt resumed work on the novel No. 5½.
New script in hand, Mr Rockefeller became increasingly uncooperative with Mr Gooding and Mr Henderson, making it difficult to progress a timely US tour of Thank You For Being A Friend.
The relationship between Mr Rockefeller and Mr Duncan-Watt soured. In May 2016, Mr Rockefeller wrote to Mr Duncan-Watt stating he was terminating the agreement under which Mr Duncan-Watt was writing No. 5½ (the Author Collaboration Agreement).
Then, on 27 June 2016, Mr Rockefeller wrote stating he was terminating the agreement under which Mr Duncan-Watt had written The Goldenish Girls (the Scriptwriter Agreement) for which they were to be jointly credited.
Not three months later, on 19 September 2016, Mr Rockefeller opened a show on Off-Off-Broadway billed as Jonathan Rockefeller’s That Golden Girls Show!. It was a puppet parody of The Golden Girls television show. It was based on the production format and ideas of Thank You For Being A Friend. It used the identical plot of The Goldenish Girls. Mr Rockefeller had prepared the script for That Golden Girls Show! from the script Mr Duncan‑Watt had written for The Goldenish Girls.
Before That Golden Girl Show! opened, Mr Rockefeller advertised and billed the show as solely his creation. In promoting That Golden Girls Show! he used material which related to Thank You For Being A Friend, including the line “‘The Golden Girls with Puppets: SOLD’ – Time Out Magazine”. Time Out had not reviewed That Golden Girls Show!. Mr Rockefeller described That Golden Girls Show! in a radio interview as a “second version” of Thank You For Being A Friend. He supplied reviews of Thank You For Being A Friend to US reviewers for the purpose of promoting That Golden Girls Show!.
At the time he was promoting That Golden Girls Show! in this way, he told Mr Gooding and Mr Henderson that his show was “100% different”, that he had “assiduously differentiated” his show from Thank You For Being A Friend and that he had “gone to great lengths” to communicate that his “brand new show” had no connection and bore no relation whatsoever to Thank You For Being A Friend.
None of this rang true to Mr Gooding when he watched the opening performance of That Golden Girls Show! on 19 September 2016.
On 19 October 2016, Mr Duncan-Watt, Mr Gooding and Mr Henderson commenced proceedings in the Supreme Court of New York. They alleged that Mr Rockefeller falsely claimed to be the sole creator of That Golden Girls Show! when, in truth, Mr Rockefeller had taken the script for The Goldenish Girls written by Mr Duncan-Watt and applied it to the production format and set design of Thank You For Being A Friend.
The New York proceedings came to the attention of The New York Times. On 23 October 2016, The New York Times published an article entitled “Lawsuit Filed Over ‘Golden Girls’ Parody”. The article summarised the allegations which had been made against Mr Rockefeller in the proceedings. The article also quoted Mr Duncan-Watt and Mr Gooding and reported comments from others, including Mr Rockefeller’s legal representatives. A journalist had contacted those people for comment before the article was published.
The next day, Mr Gooding published a Facebook post which included a link to the article.
In February 2017, Mr Rockefeller and his company, JWR Productions Pty Ltd, commenced two proceedings in this Court, one against Mr Gooding and one against Mr Duncan-Watt. Those proceedings, which are the subject of this judgment, were heard together.
The allegations made by Mr Rockefeller against Mr Gooding were, in summary, that Mr Gooding:
(1)had defamed him. This was said to arise from Mr Gooding’s Facebook post, which provided a link to The New York Times article – see: Section C of these reasons;
(2)had engaged in conduct, in trade or commerce, which was misleading or deceptive. This was said to arise from Mr Gooding’s conversation with a journalist from The New York Times and Mr Gooding’s publication of the Facebook post – see: Section D.3.
The allegations made by Mr Rockefeller against Mr Duncan-Watt were, in summary, that Mr Duncan-Watt:
(1)engaged in conduct, in trade or commerce, which was misleading or deceptive in conveying certain representations to a journalist from The New York Times – see: Section D.4;
(2)engaged in conduct, in trade or commerce, which was misleading or deceptive and threatened breach of copyright, by continuing to include on his website certain material relating to the novel No. 5½ after Mr Rockefeller had terminated the Author Collaboration Agreement – see: Section E below;
(3)breached Mr Rockefeller’s copyright in two photographs which appeared for a time on Mr Duncan-Watt’s website – see: Section F below; and
(4)unreasonably failed to return items of Mr Rockefeller’s personal property after Mr Rockefeller had demanded their return – see: Section G below.
For the reasons given below, each claim brought by Mr Rockefeller and JWR Productions Pty Ltd must be dismissed.
Before turning to the specific claims and the reasons each must be dismissed, it is necessary to set out the factual background. This is done next, in Section B. In setting out the background it has been necessary to reach various conclusions as to the legal effect of what the parties did. This is because of the relevance of these matters to the claims which are dealt with later, particularly the defence of truth which Mr Gooding successfully propounded in the defamation case brought against him.
B FACTUAL BACKGROUND
B.1 The Golden Girls television series
The Golden Girls was a critically acclaimed American television sitcom of the 1980s and 1990s televised in around 30 countries. Repeats of the show continue to be televised today. The series featured four central female characters living out their ‘golden’ years as house-mates in Miami, Florida. It is desirable in order to understand the issues and resolve questions about the similarity or otherwise between Thank You For Being A Friend and That Golden Girls Show! to know a little about the four central characters. They were:
(1)Blanche Devereaux: a Southern belle with a renowned sexual confidence;
(2)Dorothy Zbornak: a substitute school teacher originally from Brooklyn, New York who was the intellectual of the group;
(3)Rose Nylund: a Scandinavian American from St Olaf, Minnesota who was naïve to the point of stupidity and told long stories about her home town;
(4)Sophia Petrillo: Dorothy’s mother who regularly reminisced about her early life in Sicily, Italy.
A regular fifth character was Stanley (Stan) Zbornak, Dorothy’s ex-husband, to whom Dorothy had given the best years of her life.
The Golden Girls portrayed the family, friendship and romantic issues faced by Dorothy, Rose, Blanche and Sophia as well as the various daily stresses of the characters. The women each have recurring plot lines throughout the series, including dating escapades, money-making ventures and the highs and lows of ageing. These recurring themes were often brought together and dissected over cheesecake in the kitchen. The show is well known for its acerbic humour, racy dialogue, sexual innuendo, and for its theme song – Thank You For Being A Friend – written by Andrew Gold in 1978 and re-recorded in 1985 by Cynthia Fee for the television series.
B.2 Dramatis personae
B.2.1 Jonathan Rockefeller
Mr Jonathan Graham Worsley Rockefeller is a scriptwriter, director and producer of theatrical works. During the earlier stages of the events described below Mr Rockefeller was known as Mr Worsley. This was before he married Mr Jones, whose full name is Mr Eugene Wilson Rockefeller Jones.
From about February 2015, Mr Worsley commenced regularly using the surname “Rockefeller”, rather than “Worsley” on his written communications. For convenience and to avoid confusion he is referred to as Mr Rockefeller throughout these reasons.
From 2003 to 2006, Mr Rockefeller worked for Baz Luhrmann in various of his productions including doing research, design, writing, directing, editing, producing, marketing and advertising. He worked on La Bohème on Broadway, the Chanel No 5 commercial which starred Nicole Kidman, and the films Alexander the Great and Australia.
Mr Rockefeller was employed as an Executive Producer at the advertising agency Naked Communications from 2008 to 2011. The team of which he was a member was nominated for a “Cannes Lion” award and won a “Clio Award” during this time.
Mr Rockefeller has worked as a screenwriter, including writing the screenplays Satisfaction and Coming of Age. Mr Rockefeller’s production of The Very Hungry Caterpillar Show is both well-known and critically acclaimed.
Mr Rockefeller was at relevant times a director of and the sole shareholder in JWR Productions Australia Pty Ltd (JWR Productions). JWR Productions was formerly known as Joey Creative Management Pty Ltd. Mr Rockefeller also had an interest in JWR Productions LLC, a company registered in the United States.
B.2.2 Thomas Duncan-Watt
Mr Thomas Duncan-Watt is a professional writer. He has worked as such since 2006 and, more specifically, as a screenwriter since around 2012. He has been a member of the Australian Writers Guild since 2011.
Mr Duncan-Watt has written and co-written on well-known comedy series including Good News Week (Australia) and NewsJack (United Kingdom). He has written and co-written animations such as The Deep, Pirate Express, Winston Steinburger & Sir Dudley Ding Dong, Beat Bugs and Dennis the Menace & Gnasher.
B.2.3 Neil Gooding
Mr Neil Gooding has worked since 1997 in various capacities on many well-known and critically acclaimed theatre and arena productions.
He has received various award nominations for his work as a director. Shows that he has directed have won major awards. He has also received awards and nominations for his work as a producer.
In 2014, Mr Gooding received a Chief Glug Award for excellence behind the scenes in Australian musical theatre. His 2014 production of Sweet Charity was nominated for several Helpmann Awards, Sydney Theatre Awards and Green Room Awards and won in many of its categories.
Mr Gooding is the sole director of Neil Gooding Productions Pty Ltd.
B.2.4 Matthew Henderson
Mr Matthew Henderson has been involved in the business of stage managing, producing and directing live theatre shows since 2002. He has worked within the Australian entertainment industry on many Australian and international theatre productions variously as a producer, co‑producer, director, stage manager or assistant. The shows he has worked on include: The Boy From Oz, Fame, Shout!, We Will Rock You, The Lion King, Miss Saigon, High School Musical, Madame Butterfly, Jerry Springer The Opera, Mary Poppins and Aladdin.
At the times relevant to the issues in this case, Mr Henderson traded under the business name “Matthew Management”.
B.3 Credibility and reliability
The factual findings set out below are based primarily on the contemporaneous documentary evidence and inferences drawn from that evidence and the known or probable facts.
In relation to certain contested events, particularly conversations, there were no or few contemporaneous documents which shed light on which account was to be preferred. The parties gave different accounts of a number of conversations. I found Mr Duncan-Watt’s account of those conversations to be significantly more reliable than Mr Rockefeller’s. Mr Duncan-Watt’s accounts were more probable than the accounts given by Mr Rockefeller when assessed against the surrounding events and were more consistent with contemporaneous documentary evidence where such documents were available. His evidence was given in a more objective and less argumentative way. As will become apparent, Mr Rockefeller’s evidence was unreliable in several respects.
As Mr Rockefeller’s counsel submitted, it is necessary to put Mr Rockefeller’s often defensive and argumentative evidence into context. It is clear that he was at times emotionally affected. It is also clear that he was hurt by the publication of The New York Times article. I accept those matters and have sought to bring them to account in assessing the reliability of Mr Rockefeller’s evidence. In the end, however, I generally found Mr Rockefeller’s evidence to be unreliable, and Mr Duncan-Watt’s evidence to be reliable. That conclusion is not based on demeanour.
B.4 The development of Thank You For Being a Friend: 2012 to July 2013
Mr Duncan-Watt and Mr Rockefeller met in 2006 or 2007. They became close friends. At some point before September 2012, Mr Duncan-Watt and Mr Rockefeller had discussed creating a dramatic parody, including a puppet parody.
At a meeting in about September 2012, Mr Duncan-Watt suggested to Mr Rockefeller that they might create a puppet parody of The Golden Girls.
Mr Duncan-Watt and Mr Rockefeller commenced developing the concept for Thank You For Being A Friend. The name was derived from the theme song of The Golden Girls television series. The parody Thank You For Being A Friend featured Dorothy, Rose, Blanche and Sophia portrayed by puppets, and introduced a new character, Jeremiah, a gay son of Blanche. The puppets were to be operated by actors or performers whose operation of the puppets would be on stage and therefore seen, and whose facial expressions and voices were integral to the show.
Mr Duncan-Watt and Mr Rockefeller had various discussions which resulted in an understanding that they would jointly own copyright in Thank You For Being A Friend, each would contribute 50% of the funds required to create and produce the show, and they would share equally in any profits.
Mr Rockefeller began sourcing the puppets to be used in the show in September 2012. The puppets were received in January 2013.
Mr Duncan-Watt and Mr Rockefeller agreed to submit Thank You For Being A Friend to the Sydney Mardi Gras Festival in October 2012.
Mr Rockefeller prepared a handwritten budget and a contract which the parties signed on 28 October 2012. The contract stated:
This is a contract to specify that Thomas Duncan-Watt and Jonathan Worsley will each individually mount 50% of the costs of “Thank You for Being a Friend” and in return receive 50% of the profits split evenly after all costs, expenses and taxes are paid.
Any additional costs and expenses incurred will be split evenly or the party who mounts the additional funds will receive an additional percentage pro-rata of the funds above and beyond the 50%.
Any future licensing or royalties allocated with “Thank You for Being a Friend” will be paid in a 50/50 split to the intellectual property owners, Thomas Duncan-Watt and Jonathan Worsley.
The script development of Thank You For Being A Friend was a collaborative exercise. Mr Duncan-Watt did the majority of the writing. Mr Rockefeller reviewed the draft script and assisted in re-writes. It was Mr Rockefeller’s evidence that he talked regularly with Mr Duncan‑Watt in relation to the script, that they met approximately once per week to work on script development and otherwise discussed the project on the telephone. Mr Duncan-Watt gave evidence that he and Mr Rockefeller spent a lot of time talking in person and communicating about the script by email. The script was a joint creation; Mr Duncan-Watt performed the majority of the writing.
Thank You For Being A Friend had its debut between 13 and 20 February 2013 at the Comedy Store in Sydney.
Mr Rockefeller (JWR) gave an account of a conversation with Mr Duncan-Watt (TDW), around 20 February 2013, as follows:
JWR:Tom, you have not paid your fair share of the budget. The original agreement was 50:50. You are not paying anything I send to you. We need to go off what we agreed to in our original agreement. Whatever you put in, you get back as a percentage.
TDW:Yeah, but that’s not really fair now because the show has made a profit, so you should get back what you put in and then it should be 50:50 from there on.
Mr Duncan-Watt’s account of the conversation was as follows:
JWR:The show has made a profit. I paid for more than half of the costs of the show. I should have more like 80% of the profit and the ownership of the show.
TDW:Why did you do that? We agreed we would both put in half. You never asked me to give you any more money and we agreed we would own the show jointly. Besides, we already knew that ticket sales had covered the rest of our expenses before the show even opened. That’s why I assume you didn’t ask me for more money. If you just paid some of our invoices off with your own money without telling me – knowing the money is coming anyway ‑ it doesn’t mean you get to own more of the show. Why are you being so stupid? Are you trying to rip me off?
JWR:OK, yes we do own the show jointly, but I should recoup my costs out of the profits.
TDW:Of course you should.
Mr Duncan-Watt and Mr Rockefeller ultimately agreed that Mr Rockefeller would get back what he put in but that the profit would be split equally.
Between about February and July 2013, Mr Duncan-Watt worked on improvements to the script, making numerous alterations. He consulted Mr Rockefeller from time to time.
B.5 Early discussions with Mr Gooding and Mr Henderson; Mr Rockefeller’s misrepresentation to Mr Duncan-Watt: January 2013 to July 2013
Mr Rockefeller informed Mr Henderson in late January 2013 that he and Mr Duncan-Watt had produced Thank You For Being A Friend. Mr Rockefeller sent a copy of the script to Mr Henderson by email on 18 April 2013. Mr Henderson and Mr Rockefeller had a further conversation about Mr Henderson’s participation in producing the show in late April 2013, and Mr Henderson contacted Mr Gooding about his potential involvement in May 2013.
By at least 21 May 2013, Mr Rockefeller was in discussions with Mr Gooding and Mr Henderson about the possibility of licensing to them the performing rights to Thank You For Being A Friend.
At some point between April and June 2013, Mr Rockefeller informed Mr Duncan-Watt that Mr Gooding and Mr Henderson were interested in acquiring the rights to produce the show. At that time, Mr Duncan-Watt knew Mr Gooding to be an Australian theatrical producer and Mr Henderson to be an experienced Australian stage manager who wanted to do more producing. He was keen for them to produce the show.
Mr Duncan-Watt stated that Mr Rockefeller informed him, around June 2013, that Mr Gooding was insisting on the licensing rights for the show coming through a single company. Mr Duncan-Watt’s account of one of the conversations was that Mr Rockefeller said:
Neil [Gooding] won’t deal with both of us – he insists on the rights coming through a single company. If we want to do the deal, you and I will have to assign all of our rights in the show to JWR Productions, and then I’ll license the rights to Neil through that company.
Mr Gooding denied ever raising as an issue with Mr Rockefeller a desire to deal with only one company. It was uncontentious that Mr Gooding never said he would only deal with one company.
Although he was resistant to the idea of assigning his rights to JWR Productions, Mr Duncan‑Watt wanted the show to go to experienced producers and was prepared to assign his rights to JWR Productions if that was required to achieve such a result.
In his evidence, Mr Rockefeller emphatically denied having a conversation in which he stated to Mr Duncan‑Watt that Mr Gooding had insisted on any licence agreement being made with a single company. Mr Rockefeller agreed that he discussed with Mr Duncan-Watt assigning copyright to Thank You For Being A Friend to his company, JWR Productions (then Joey Creative Management Pty Ltd), but insisted this was in line with industry practice to protect individuals from personal liability and because Mr Duncan-Watt was not paying his fair share of expenses. Mr Rockefeller stated that he therefore threatened to pull out unless Mr Duncan‑Watt assigned his copyright to Mr Rockefeller’s company.
For the reasons which follow, I do not accept Mr Rockefeller’s denial that he stated to Mr Duncan-Watt that Mr Gooding had insisted on any licence agreement for Thank You For Being A Friend being made with a single company.
At the relevant time, Mr Duncan-Watt had been consulting Mr Bruce Pulsford, a lawyer at the Australian Writers’ Guild. Mr Duncan-Watt wrote an email to Mr Pulsford on 1 July 2013, referring to a meeting he and Mr Pulsford had on 28 June 2013. The email included:
… Neil Gooding ‑ is the right fit, but Jonathan (my co-creator) is still adamant that they only want to deal with one production company [Joey Creative Management Pty Ltd] …
Mr Duncan-Watt’s email to Mr Pulsford of 1 July 2013 also indicated that the proposed amendments to the “Writers Assignment Agreement” should contain an extra clause which Mr Pulsford had recommended, to the effect that, if a licence agreement with Mr Gooding and Mr Henderson was not achieved within 3 months, the rights given by Mr Duncan-Watt to Joey Creative Management Pty Ltd would revert to Mr Duncan-Watt. This recommendation became cl 10 of the “Writers Assignment Agreement”, executed a little over a week later. Clause 10 was in the following terms:
10.This contract will automatically terminate if, within the date which is 3 months from the date of this contract, a legally binding agreement in writing is not in existence between the Production Company (as licensor) and Matthew Management and Neil Gooding Productions Pty Limited (as licensee) the minimum terms of which have been already consented by the writer.
It was submitted for Mr Rockefeller that a simple explanation for Mr Duncan-Watt’s words in his email of 1 July 2013 to Mr Pulsford was that Mr Duncan-Watt was mistaken or confused about what Mr Rockefeller had said. That is most unlikely for a number of reasons.
First, Mr Duncan-Watt’s email makes it clear that his understanding of what Mr Rockefeller had said came from more than one conversation: the email states that Mr Rockefeller was “still adamant”. Mr Duncan-Watt was cross-examined on his email and did not waiver from the proposition that Mr Rockefeller had insisted that Mr Gooding would only deal with one licensor. I accept Mr Duncan-Watt’s evidence.
Secondly, the fact that Mr Rockefeller made the misrepresentation is consistent with Mr Duncan‑Watt’s desire to insert cl 10 into the Writers Assignment Agreement, providing for the rights to revert to him if no agreement were reached with Mr Gooding and Mr Henderson.
Thirdly, the probabilities strongly favour that Mr Duncan-Watt was giving a frank account of relevant events in order to obtain the best possible advice. In July 2013, there was no dispute between Mr Rockefeller and Mr Duncan-Watt of any significance and Mr Duncan‑Watt could not possibly have foreseen the events which would later eventuate.
When Mr Rockefeller was asked in cross-examination why Mr Duncan‑Watt would possibly lie to his lawyer on 1 July 2013, Mr Rockefeller stated: “Mr Duncan-Watt does have a tendency to manipulate things to be put forward in his better scenarios”. There was nothing about Mr Duncan-Watt’s evidence or the manner in which it was given, nor was there anything in the contemporaneous documents, to suggest any “tendency [on the part of Mr Duncan‑Watt] to manipulate things”. I do not accept that Mr Duncan-Watt was otherwise than truthful in what he said to his lawyer in his email of 1 July 2013 and in giving his evidence.
Fourthly, the fact that Mr Rockefeller made the misrepresentation is supported by:
(1)Mr Gooding’s evidence of a conversation with Mr Duncan-Watt in October 2013 which confirmed that Mr Rockefeller had misrepresented Mr Gooding’s position with respect to wishing to deal with only one licensor – see: [95] to [99] below;
(2)Mr Duncan-Watt’s email of 21 October 2013 – see: [100] to [104] below;
(3)the events in October and November 2013 referred to below, culminating in the signing of a new licence agreement on 25 November 2013 which included Mr Duncan-Watt as a licensing party – see: Sections B.10 and B.11 below.
Having seen Mr Duncan-Watt’s and Mr Rockefeller’s cross‑examination on this topic, but relying principally on the contemporaneous documents, I have no hesitation in concluding that Mr Rockefeller lied to Mr Duncan-Watt in April to June 2013 by stating that Mr Gooding was insisting on dealing with one production company when licencing Thank You For Being A Friend. Mr Rockefeller saw the 1 July 2013 email from Mr Duncan-Watt to Mr Pulsford before swearing his affidavit in reply but continued to deny that he had any such conversation with Mr Duncan-Watt. This fact, and Mr Rockefeller’s continued denial of making the misrepresentation in his affidavit evidence and the evidence he gave in cross-examination, reflect poorly on Mr Rockefeller’s credibility.
Contrary to Mr Rockefeller’s evidence and submissions, there was nothing which could warrant the conclusion that Mr Duncan-Watt assigned copyright to Mr Rockefeller because of “industry practice” or any disparity in financial contribution as between him and Mr Rockefeller.
B.6 The 9 July 2013 Writers Assignment Agreement
Thank You For Being a Friend’s second run occurred at the Darlinghurst Theatre in Sydney from about 2 to 7 July 2013.
The “Writers Assignment Agreement” was entered into on 9 July 2013. Both Mr Rockefeller and Mr Duncan-Watt assigned copyright in Thank You For Being A Friend to Mr Rockefeller’s company, JWR Productions (then called Joey Creative Management Pty Ltd). Under the agreement each of them was to receive 50% of the royalties from future productions of Thank You For Being A Friend and to be credited as co-authors wherever it played.
I am satisfied that Mr Duncan-Watt agreed to enter into this agreement and assign copyright to JWR Productions because he wanted to secure Mr Gooding and Mr Henderson to produce the show, and because he understood from the false representation made to him by Mr Rockefeller that Mr Gooding insisted on dealing with only one licensor.
Mr Duncan-Watt would not have assigned copyright to JWR Productions if the false representation had not been made to him by Mr Rockefeller. Mr Duncan-Watt’s desire to include a clause for the rights to revert to him if no licence agreement was entered into within three months indicates a genuine concern about assigning copyright. This conclusion is also supported by the matters set out in Sections B.9 to B.11 below.
B.7 The 17 July 2013 Licence Agreement
On 12 and 17 July 2013, a “Licence Agreement” dated 18 June 2013 was executed by:
(1)the “Licensor”, JWR Productions (then Joey Creative Management Pty Ltd); and
(2)the “Originating Producers”, Matthew Management and Neil Gooding Productions.
The chapeau included:
… The Licencor licenses to the Originating Producers the right to produce and present the dramatico-musical work entitled THANK YOU FOR BEING A FRIEND (the “Work”) by JONATHAN WORSLEY and THOMAS DUNCAN-WATT (“Authors”) for theatrical productions upon the following terms and conditions:
Clause 2 provided:
2. Scope of Originating Producers’ Licence
The Licensor hereby licences to the Originating Producers the right in the Territory to the originating production of the Work on the Theatrical Stage.
The term “Territory” was defined in cl 1 as “The World”.
Clause 5.4 provided (emphasis in original):
5.4The Licensor agrees to deliver to Originating Producers the four existing puppets that have been built for the Work. The Originating Producers agree to pay the Licensor the sum of $4000 (plus GST if applicable) in consideration for these. Payment shall be made within Fourteen (14) days of a valid Tax Invoice being submitted to the Originating Producers by The Licensor.
Clause 6 dealt with the form of billing and credits. It provided (emphasis in original):
6. Billing and Credits
Originating Producers agree that every billing of the Work and the Authors shall appear on all programs, house boards and displays in the following manner:
Thank You For Being A Friend
By Jonathan Worsley & Thomas Duncan-Watt
The Authors to receive billing credit in all forms of publicity and advertising under the control of the Originating Producers, wherever and whenever the title of the Work appears.
In addition, the Originating Producers agree that the following billing will appear in production programs:
Puppets designed by Joey Creative
Original Production produced by Jonathan Worsley
Clause 7 dealt with payments, royalties and accounting.
Clause 13 was headed “Reservation of Rights” and provided:
The Licensor reserves for its use and disposition in the Territory and throughout the world at any and all time, all rights of any kind or nature other than the rights specifically licensed to Originating Producers hereunder, whether such rights are now known or shall hereafter come into existence, and whether such rights are of a competing nature with the rights licensed hereunder. The said reserved rights shall include, but shall not be limited to, all motion picture, synchronisation, broadcast, recording, television, radio, stage (other than the first-quality stage), electrica[l], or mechanical reproduction, commercial tie-in and publication rights of all kinds. The Licensor shall have the right to use and exercise and to permit others to use and exercise such reserved rights at any time, free from any claim or interference by the Originating Producers.
By cl 14, JWR Productions granted to Neil Gooding Productions and Matthew Management “the first right of refusal to produce, or invest, in any future productions of the Work in the Territory specified in this License, or throughout the World”.
The governing law of the agreement was that of New South Wales: cl 24.
B.8 Payment for puppets: July 2013 to November 2013
On 29 July 2013, Neil Gooding Productions and Matthew Management paid JWR Productions $4,400 for the cost of the four puppets. The puppets were delivered to them in accordance with cl 5.4 of the Licence Agreement.
In his affidavit, Mr Duncan-Watt gave the following account of a conversation with Mr Rockefeller in July or August 2013:
TDW:Are we selling the puppets to Neil [Gooding] and Matt [Henderson] as part of the deal?
JWR:I wasn’t able to get any extra money from them, they will be included free as part of the deal.
Mr Duncan-Watt then gave an account of a telephone conversation with Mr Henderson which occurred on 2 November 2013 to the following effect:
MH:I’m starting to question whether Jonathan has been entirely truthful in his business dealings with us. Are those puppets we’ve bought really worth $4000?
TDW: You bought the puppets for $4000?
MH: Yes, the Golden Girls puppets.
Mr Duncan-Watt said he rang Mr Rockefeller and had the following conversation:
TDW:Matt Henderson just told me they paid you $4000 for the puppets. You told me we’d given them away for free.
JWR:I was waiting to do the accounts for the whole deal, I wanted to see if there was any money left over to surprise you with a profit.
Mr Duncan-Watt’s partner, Mr Policarpio, gave evidence that he was woken by a late night phone call from Mr Duncan-Watt on the same day, when Mr Duncan-Watt told him that Mr Rockefeller had sold the puppets without Mr Duncan-Watt’s knowledge. Mr Policarpio made a journal entry at the time which confirmed the conversation.
Mr Rockefeller gave the following account of a conversation with Mr Duncan-Watt (which Mr Rockefeller considered occurred shortly after 14 November 2013):
TDW:Speaking of money, I haven’t received my half of the proceeds for the puppets yet. Neil [Gooding] said he sent it to you and it was the first I’ve heard about it.
JWR:You and I agreed to the minimum terms and I negotiated a better deal with more money for us both. Why exactly are you complaining?
TDW:Where’s my money? I don’t have my half yet.
JWR:If you will recall on the first show I overpaid you by two thousand dollars and it took six months to get that money back from you. Once we finalise the reconciliations you will be paid your share. I think you conveniently forget how much more I’ve paid out of my pocket than you have. Remember – the whole entire reason we went into the assignment agreement in the first place was because you did not want to pay for legal fees, insurance and other costs. You don’t take any responsibilities – you put them all on me – yet you want all the rewards.
I accept Mr Duncan-Watt’s account of the conversation. Mr Rockefeller later paid Mr Duncan‑Watt his share of the sale price of the puppets.
B.9 Conversation between Mr Duncan-Watt and Mr Gooding on 18 October 2013
Mr Duncan-Watt and Mr Gooding spoke by telephone in October 2013. Although Mr Duncan‑Watt stated in his affidavit that this telephone call was with both Mr Gooding and Mr Henderson, I conclude that he was honestly mistaken in recalling Mr Henderson as having been present. Mr Gooding’s clear recollection was that Mr Henderson was not present during this call. Mr Henderson did not refer to the conversation in his affidavit. The fact that the conversation was only between Mr Duncan-Watt and Mr Gooding is consistent with Mr Duncan-Watt’s email of 21 October 2013 referred to below.
Mr Duncan-Watt’s account of the conversation was as follows:
TDW:The only reason I assigned my rights in the show to Jonathan’s company was that he told me you guys would only deal with one licensor.
NG:That’s not true. We could just as easily have an agreement with two licensors. We do that all the time.
TDW:Is it too late to change it?
NG:No, we can get a new version drawn up.
Mr Gooding’s evidence in cross-examination included:
… And then Mr Duncan-Watt in that phone call said to me that Mr Rockefeller had told him that Matthew [Henderson] and I would not sign the licence with the two of them as licence – as co-writers and that the rights had to be bundled into one company.
Mr Gooding confirmed that he had not said to Mr Rockefeller that he and Mr Henderson would not sign a licence with two licensors. He stated he had licensed a number of shows with writers and almost always done so “with multiple writers in their own capacity”.
Mr Gooding confirmed that he said to Mr Duncan-Watt in the conversation in October 2013 that he and Mr Henderson could equally have had an agreement with two licensors. He confirmed that Mr Duncan-Watt asked if it was too late to change the agreement. Mr Gooding confirmed that he said to Mr Duncan-Watt that he could have a new version drawn up.
The substance of this conversation between Mr Duncan-Watt and Mr Gooding was confirmed by a contemporaneous email sent by Mr Duncan-Watt on 21 October 2013 to Mr Tom Hillyard, a lawyer at the Australian Writers’ Guild. In that email, Mr Duncan-Watt described the history behind the Licence Agreement in the following terms (emphasis and errors in original):
Basically in January/February, the person I co-created the show ‘Thank You For Being a Friend’ with, Jonathan Worsley (and the owner of half the copyright) told me and Bruce Pulsford that in order to sell this show to new producers (Neil Gooding and Matthew Henderson) these new producers were insisting they would only sign a contract with a single Pty Ltd company. Based on that fact (an[d] in consultation with Bruce, to whom Jonathan also reiterated this ‘condition’ to) we agreed I would sign a writer’s agreement (attached), assigning my copyright to his production company on the proviso that the sale would go through and that the final contract met certain key criterion.
The email then described how Mr Duncan-Watt had found out about Mr Rockefeller’s misrepresentation from Mr Gooding:
On Friday last week [namely 18 October 2013], however, I learned – while meeting with one of the new producers, Neil [Gooding] regarding rewrites – that this ‘pty ltd company’ condition was a complete fabrication by Jonathan, and that not only did the new producers (both Neil and Matthew [Henderson]) never suggest they wouldn’t sign a contract with an individual writer (me), they would prefer to have my name on the contract!
Mr Duncan-Watt then gave in the email an account of a conversation he had with Mr Rockefeller:
Since I only found this out on Friday, I immediately contacted Jonathan [Rockefeller] about it, informing him that – for whatever reason – he misled both myself and Bruce [Pulsford] in his dealings. As a result of this information coming to light both myself and the new producers are keen that I be on the contract, so I need Bruce’s help on what the best procedure is. Jonathan has also grudgingly agreed to this process so long as I take care of any rewrites to the contract!
Mr Duncan‑Watt then recorded that Miriam (who worked at the Australian Writers’ Guild) had suggested three possible courses of action, and asked for Mr Hillyard’s advice in relation to those suggestions:
So, basically what Miriam suggested was that there were a couple of ways of dealing with this smartly and efficiently. What I need is Bruce’s advice and help on whether I need to:
1. ‘Rescind’ the writer’s agreement I have with Jonathan?
2.Simply do an addendum to the existing contract adding me as one of the people signing it?
3. Rewrite the contract?
Then I just need help execut[ing] this as simply and painlessly as possible. I already agree to everything in the final contract as it exists currently (except for the credit which Jonathan has agreed to change back to ‘By Thomas Duncan-Watt & Jonathan Worsley’ period), bar the absence of my name on the contract, rather than assigning any rights to Jonathan’s production company via a writer’s agreement.
I accept that the October 2013 conversation between Mr Duncan-Watt and Mr Gooding occurred in accordance with the evidence of Mr Duncan-Watt and Mr Gooding, as confirmed by Mr Duncan-Watt’s contemporaneous email. Based on the email, I conclude that it occurred on 18 October 2013.
B.10 Mr Rockefeller agreed to execute a new Licence Agreement, with Mr Duncan-Watt as a licensor
Mr Rockefeller stated in his first affidavit that – at the end of a conversation concerning his non-payment to Mr Duncan-Watt of a share of the proceeds from the sale of the puppets (which he incorrectly considered occurred on 14 November 2013) – the following was said:
TDW:I want my interest back.
JWR:You’ve assigned it away. You didn’t want it. If you wanted to retain it you would have paid 50% of everything and lived up to your responsibilities – but you haven’t and don’t want to. I would never reverse the assignment agreement with you because you don’t pay for anything and don’t honour your promises.
The contemporaneous documents indicate that the conversation with respect to the sale of the puppets occurred on or about 2 November 2013.
Mr Duncan-Watt stated that, after his conversation with Mr Gooding on 18 October 2013, he had a conversation with Mr Rockefeller in which he understood Mr Rockefeller to have agreed to sign a new licence agreement which named both Mr Duncan-Watt and Mr Rockefeller as the licensors. Mr Duncan-Watt thought this occurred in November 2013. For reasons I will come to, I conclude that such conversations occurred on 18 October 2013 and possibly in a further conversation or conversations on or shortly before 3 November 2013. Mr Duncan-Watt said the conversation was in the following terms:
TDW:Neil Gooding just told me that they’d never insisted on only signing with one proprietary limited company to do the license agreement? Why did you tell me they had?
JWR:That’s not what they told me.
TDW:Well, now it’s clear there’s no reason to assign rights to your company, you won’t have any objections to us signing a new agreement naming me as co‑licensor then, right?
JWR:Fine, as long as you take care of any legal fees.
TDW:That’s fine.
I accept the conversation occurred substantially in those terms. I conclude the conversation occurred at least on 18 October 2013. That is consistent with the email of 21 October 2013. It may also have been repeated in early November 2013.
In his second affidavit, Mr Rockefeller denied the conversation was in the terms just described and put forward the following account of the conversation:
TDW: I want to sign the licensing agreement.
JWR:Signing won’t make any material difference. You do understand that the copyright is in the company and signing an agreement won’t have any effect on the ownership of the copyright.
TDW: But I co-wrote it. I think I should have signed it.
JWR: But you don’t own the copyright.
TDW: Then, can I get it back?
JWR: No.
I do not accept that a conversation occurred in those terms. I conclude that Mr Rockefeller gave that evidence solely because he considered it would advance his case.
On Sunday, 3 November 2013, Mr Duncan-Watt wrote an email to Mr Gooding and Mr Henderson stating that he and Mr Rockefeller had come together over the weekend and agreed to two amendments to the Licence Agreement. The first was to the order of credits and the second was that Mr Duncan-Watt would now also be a signatory to the Licence Agreement.
Mr Duncan‑Watt recorded in the email that his lawyer suggested including a clause stating that the new contract with all four signatories would supersede any previous contracts. Consistently with his conversation with Mr Gooding on 18 October 2015, this email referred to Mr Duncan‑Watt’s understanding that Mr Gooding and Mr Henderson were amenable to both revisions. That understanding was evidently correct: the proposed amendments were implemented by Mr Gooding without any issue being raised. Mr Duncan‑Watt’s email of 3 November 2013 is consistent with the 21 October 2013 email and with Mr Gooding’s evidence.
On 14 November 2013, Mr Gooding sent to Mr Duncan-Watt and Mr Rockefeller a revised licence agreement. This included as licensors, both Joey Creative Management Pty Ltd (now JWR Productions) and Mr Duncan-Watt. It also made changes to cl 6 dealing with “billing and credits”. It included a new cl 26 providing that “all previous signed contracts will be superseded”.
Having received from Mr Gooding the revised Licence Agreement on 14 November 2013, Mr Duncan-Watt suggested further minor changes by email sent on 15 November 2013. Mr Rockefeller wrote nothing to suggest that the revised Licence Agreement was not what had been agreed, or that he disputed it should be executed. A further draft was circulated by Mr Gooding by an email dated 20 November 2013.
I conclude that Mr Rockefeller agreed with Mr Duncan-Watt that he would execute a new licence agreement which provided for both Mr Duncan-Watt and JWR Productions to be the licensors. I conclude that Mr Rockefeller, on behalf of JWR Productions, represented that Mr Duncan-Watt’s original assignment of copyright to JWR Productions would be accepted as ineffective by reason of the manner in which it had been procured by Mr Rockefeller (namely by a knowingly false representation), or that copyright would be assigned by JWR Productions back to Mr Duncan-Watt for the same reason. This occurred through the conversations and conduct between 18 October 2013 and 3 November 2013, set out above.
As will next be seen, Mr Rockefeller executed the 25 November 2013 Licence Agreement without demur. There was no contemporaneous documentary record which suggested that Mr Rockefeller did not agree to all aspects of the 25 November 2013 Licence Agreement.
B.11 The 25 November 2013 Licence Agreement
In his first affidavit, Mr Rockefeller referred to a “revised Licence Agreement which appears on its face to have been signed by all of the parties”. Mr Rockefeller stated in that affidavit that he had no recollection of ever signing that document and that he denied executing it in Mr Gooding’s presence.
Mr Rockefeller’s opening submissions stated that there was “some controversy” about the genesis and execution of this new Licence Agreement.
When cross-examined, Mr Rockefeller readily accepted that it was his signature on the new Licence Agreement, and ultimately accepted that he had signed the document on or around 25 November 2013. The “controversy” was thus largely if not entirely quelled.
It was submitted by Mr Rockefeller that the genesis of the 25 November 2013 Licence Agreement was Mr Duncan-Watt’s concerns with respect to the form of the credits for Thank You For Being A Friend. This submission was made in aid of Mr Rockefeller’s case that the 25 November 2013 Licence Agreement did not replace the July 2013 Licence Agreement and that Mr Duncan-Watt had nothing to licence because he had already assigned copyright to JWR Productions.
The “genesis” of the 25 November 2013 Licence Agreement could be said to have been the form of credits only in the limited sense that the first issue to arise between Mr Duncan-Watt and Mr Rockefeller was one concerning the form of credits. On 9 September 2013, Mr Rockefeller (then Mr Worsley) wrote an email to Mr Gooding and Mr Henderson confirming that he and Mr Duncan‑Watt had “revised the way that we’re billing ourselves.” Mr Rockefeller confirmed that this would not affect anything in the contract other than the order of their names. This email followed a conversation between Mr Rockefeller and Mr Duncan-Watt in which they agreed that Mr Duncan-Watt’s name would go first in the credits. It was not proposed to replace the July Licence Agreement at that stage. Rather, in the email of 9 September 2013, Mr Rockefeller proposed that the parties agree to an addendum to the July Licence Agreement.
However, a second issue had arisen by 18 October 2013. As set out above, Mr Duncan‑Watt had discovered that he had been misled by Mr Rockefeller’s false representation into thinking that he had no real option other than to assign copyright to JWR Productions. Mr Duncan-Watt had learned that, contrary to Mr Rockefeller’s earlier representations, it had not been a requirement of Mr Gooding that a licence agreement be entered into with a single licensor. Mr Duncan-Watt raised this with Mr Rockefeller and consulted a lawyer from the Australian Writers’ Guild. He received advice which ultimately resulted in the parties entering into the 25 November 2013 Licence Agreement.
Under the 25 November 2013 Licence Agreement, Mr Duncan-Watt was one of the licensors, together with JWR Productions (then Joey Creative Management). Clause 6 was changed (see [83] above) and now provided:
6. Billing and Credits
Originating Producers agree that every billing of the Work and the Authors shall appear on all programs, house boards and displays in the following manner:
Thank You For Being A Friend
Conceived and Written by Thomas Duncan-Watt & Jonathan Worsley
The Authors to receive billing credit on Posters, DL Flyers and websites under the control of the Originating Producers.
In addition, the Originating Producers agree that the following billing will appear in production programs and any printed collateral where any credits appear:
Originally produced by Jonathan Worsley & Thomas Duncan-Watt
Puppets designed by JOEY
Clause 26 was added. It provided that all previous contracts between the parties were superseded:
26. Superseding Contract
It is agreed between the parties, that upon the full execution of this contract, all previous signed contracts will be superseded, and this will be the only valid contact between the parties in relation to the production.
Mr Rockefeller submitted that cl 26 had no practical or legal effect:
(1)First, he submitted that the clause only bound the parties to “this” contract and had no effect on other contracts to which the same parties were not privy.
(2)Secondly, he submitted that Mr Duncan-Watt had assigned his rights to JWR Productions and that those rights had not been assigned back to him. Mr Duncan‑Watt had nothing of legal consequence to give. It was submitted that “[h]is inclusion on the licence agreement may have meant something to him (and seemingly quite a lot) but it was redundant in any relevant sense”. Mr Rockefeller submitted that the 25 November 2013 Licence Agreement could not operate as an assignment of copyright back from JWR Productions to Mr Duncan-Watt under the Copyright Act1968 (Cth).
For the reasons which follow, I reject these contentions.
As to the first contention, each of the three parties to the 9 July 2013 Licence Agreement executed the 25 November 2013 Licence Agreement. The 25 November 2013 Licence Agreement introduced a fourth party, Mr Duncan-Watt. It could not have been clearer that the parties’ intention, objectively ascertained from the words they employed, was that Mr Duncan‑Watt was one of the licensors.
The opening words of the 25 November 2013 Licence Agreement expressly stated that Mr Duncan-Watt was one of the two licensors, defined as the “Licensors”. Clause 1 then confirmed that the “Licensors [one of whom was Mr Duncan-Watt] represent[ed] that they have the right to licence the production and presentation of the Work”. This representation was repeated in cl 10.
Clause 23 had previously provided for all royalty payments to be made to Joey Creative Management (JWR Productions). This was changed to provide that payments were to be made equally to the two “Licensors”, Joey Creative Management (JWR Productions) and Mr Duncan-Watt:
23. Notices
Notices to the Originating Producers shall be sent to Neil Gooding Productions Pty Ltd [address]. All payments (can be made by wire transfer) and statements due to the Licensors hereunder shall be addressed to JOEY CREATIVE MANAGEMENT PTY LTD (ABN 83 130 449 428) [JWR PRODUCTIONS] [address] and THOMAS DUNCAN‑WATT (ABN 83 534 482 677). Payments to the Licensors shall be split 50% to JOEY CREATIVE MANAGEMENT PTY LTD and 50% to THOMAS DUNCAN-WATT.
Mr Duncan-Watt requested this alteration in his email of 15 November 2013.
The new clause 26 (“Superseding Contracts”) must be read against the factual context in which the new Licence Agreement came into existence. The contract came into existence because the parties had discovered that Mr Rockefeller had, through a knowingly false representation, secured for the benefit of his company an assignment of Mr Duncan-Watt’s copyright. The parties wanted to undo that wrongdoing.
Clause 26, understood in the context of the circumstances known to the parties, and in context of the agreement as a whole, was objectively intended to apply both to the 9 July 2013 Licence Agreement (between JWR Productions, Neil Gooding Productions and Mr Henderson) and to the Writers Assignment Agreement (between JWR Productions, Mr Rockefeller and Mr Duncan-Watt). If cl 26 was intended to refer only to the 9 July 2013 Licence Agreement it would not have referred to “all previous signed contracts”, it would have referred only to the previous Licence Agreement.
As to the second contention, Mr Rockefeller relied upon s 196 of the Copyright Act which provides that copyright is personal property, transmissible by – amongst other things – assignment. Subsection 196(3) provides:
An assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor.
Mr Rockefeller submitted that the 25 November 2013 Licence Agreement did not satisfy the requirements of s 196(3) of the Copyright Act, in that it was not an assignment in writing, signed by or on behalf of the assignor.
The better view of events is that the purported assignment of copyright by Mr Duncan-Watt to JWR Productions under the “Writers Assignment Agreement” was voidable by Mr Duncan-Watt, it having been procured by Mr Rockefeller’s fraud – see: Derry v Peek (1889) 14 App Cas 337; Civil Service Co-operative Society of Victoria Ltd v Blyth (1914) 17 CLR 601 at 609 ‑ 610. Mr Duncan-Watt rescinded the assignment to JWR Productions, as he was entitled to do – see: Hunter BNZ Finance Ltd v CG Maloney Pty Ltd (1988) 18 NSWLR 420. That rescission was unequivocally communicated by Mr Duncan-Watt’s conduct in entering into the 25 November 2013 Licence Agreement under which Mr Duncan-Watt was a joint licensor of the rights – see: Heydon on Contract at [31.190].
An alternative view is that the proper construction of the 25 November 2013 Licence Agreement is that JWR Productions impliedly assigned back to Mr Duncan-Watt the copyright Mr Duncan-Watt had assigned to it under the Writers Assignment Agreement. The implication is necessary to give the contract business efficacy. The terms of the 25 November 2013 Licence Agreement made it clear that the parties’ intention was for both JWR Productions and Mr Duncan-Watt to be the “Licensors”. This only made sense if Mr Duncan-Watt had copyright to licence. Clauses 1, 10 and 23 reveal that the implication is so obvious it goes without saying. The contract is a non-sense without the implication.
On this alternative view, if the assignment of copyright from Mr Duncan-Watt to JWR Productions was not rescinded, that company assigned copyright back to Mr Duncan‑Watt, and the 25 November 2013 Licence Agreement is sufficient “writing” reflecting the assignment for the purposes of s 196(3). It is well-established that documents which do not in express terms assign copyright, or identify the subject matter of the assignment, can suffice for the purposes of a provision such as s 196(3): E W Savory Ltd v World of Golf Ltd [1914] 2 Ch 566; Greenfield Products Pty Ltd v Rover Scott Bonnar Ltd (1990) 95 ALR 275 at 280.
In any event, JWR Productions would have been estopped from denying that Mr Duncan-Watt was a joint licensor under the 25 November 2013 Licence Agreement, as a joint holder of copyright, with an entitlement to 50% of the payments required to be made by the “Originating Producers” as licensees.
All the elements of a common law estoppel by convention were made out. Where parties to a contract conduct themselves on the basis of an assumed state of affairs – including that a contract has a particular effect or its terms have a particular meaning – on the faith of which each to the others’ knowledge acts in the conduct of their affairs, they are bound by that assumed state of affairs (or understanding or interpretation) if it would be unconscionable or inequitable to allow departure from it: Thompson v Palmer (1933) 49 CLR 507; Grundt v Great Boulder Proprietary Gold Mines Limited (1937) 59 CLR 641; Con-Stan Industries of Australia Pty Ltd v Norwich Winterthur Insurance (Australia) Ltd (1986) 160 CLR 226.
The parties adopted a common understanding of that which governed their relations in circumstances which would render it unjust to allow departure from that understanding. The parties conducted themselves on the basis that Mr Duncan-Watt was the joint holder of copyright in Thank You For Being A Friend and that he was entitled to 50% of the payments due under the 25 November 2013 Licence Agreement.
It would be unconscionable to allow departure from that common assumption. Mr Duncan‑Watt would not have let the matter rest if Mr Rockefeller had denied that Mr Duncan-Watt was the joint owner of copyright, rather than executing for JWR Productions an agreement which necessarily implied that Mr Duncan-Watt was the joint holder of copyright and proceeding to deal with all parties on that basis – see, for example: [224], [229] and Section B.29 below, particularly [240] to [242]. Mr Duncan-Watt would have taken action to protect his position, for example by seeking a declaration that the Writers Assignment Agreement had been rescinded. That inference arises from the facts outlined above, particularly Mr Duncan-Watt seeking legal advice immediately after he became aware of Mr Rockefeller’s wrongdoing – see: in particular, Section B.9 above.
B.12Thank You For Being A Friend is revised and finalised: November and December 2013
During November 2013, Mr Duncan-Watt made revisions to the script for Thank You For Being A Friend. Some revisions were made as a consequence of suggestions from Mr Gooding and Mr Henderson. The revisions were approved by Mr Rockefeller.
Mr Rockefeller stated that he and Mr Duncan-Watt “went through a process of amending the script” of Thank You For Being A Friend and stated that this was a “very collaborative process” between Mr Duncan-Watt and himself. I am satisfied that the revisions were written almost entirely by Mr Duncan-Watt and approved by Mr Rockefeller.
The set for Thank You For Being A Friend had been constructed by December 2013 and the show was in rehearsals. The final version of the script for Thank You For Being A Friend was completed on around 12 December 2013.
B.13Thank You For Being A Friend is performed from January 2014
Thank You For Being A Friend was performed at the Theatreworks in Melbourne in January 2014. In February 2014 it was performed at the Seymour Centre in Sydney as an official Mardi Gras festival event. It was performed on subsequent occasions and attracted positive reviews.
B.14 Mr Rockefeller moved to New York in June 2014
Mr Rockefeller moved to New York in June 2014. According to Mr Duncan-Watt, Mr Rockefeller said to him in 2014, during a telephone conversation:
I wish we had never signed the agreement with them now that I have the money and contacts in New York. I could produce the show here myself.
Mr Rockefeller denied saying this but agreed that he said:
They aren’t doing well enough with the show overseas. I could do it much better from here.
B.15 Mr Duncan-Watt commences work on Mr Rockefeller’s novel: June to September 2014
On 19 June 2014, Mr Rockefeller gave to Mr Duncan-Watt a synopsis of a proposed novel, then with the title Blood, Sweat and Perfume. It was later renamed No. 5½. It was based on a screenplay written by Mr Rockefeller called Satisfaction.
The script for Satisfaction was an auto-biographical story of Mr Rockefeller’s life and career experiences working with Baz Luhrmann. Mr Rockefeller described Satisfaction as being based on his experiences “working with Baz on La Bohème and on his Chanel No. 5 advertising commercial which featured Nicole Kidman”. Mr Rockefeller had worked on writing Satisfaction for about 10 years and had prepared 10 versions of the script.
A revised synopsis of Blood, Sweat and Perfume was sent to Mr Duncan-Watt on 28 June 2014.
Mr Duncan-Watt began writing the novel in July 2014. The arrangement was that Mr Duncan‑Watt would write the novel inspired by Mr Rockefeller’s material, Mr Duncan‑Watt and Mr Rockefeller would “plot it” together, and Mr Rockefeller would review and comment on what Mr Duncan-Watt had written. Mr Rockefeller and Mr Duncan‑Watt reached an agreement, orally, that Mr Duncan-Watt was to be paid for his work, that copyright would be jointly owned and that both would be credited as authors.
Mr Duncan-Watt denied that he had been given any of the material apart from the Returned Material and the book My Week with Marilyn (Other Material).
G.2 Relevant legal principles
The elements of the tort of detinue are as follows:
(1)First, the applicant must make a sufficient written or oral demand for the return of the goods at a time when the applicant has the immediate right to possession: Timewell v Virgoe (1868) 5 WW&A’B L 147 at 151 (Stawell CJ); Banks v Ferrari [2000] NSWSC 874 at [60] (Dowd J); Slaveski v State of Victoria [2010] VSC 441 at [318], [320], [321] (Kyrou J). A demand may be made even where the respondent is not in possession of the goods at the time of the demand: EEMcCurdy Ltd (in liq) v Postmaster-General [1959] NZLR 553 at 556-557, note 8 (McGregor J); Slaveski at [326], referring to Goodman v Boycott (1862) 2 B & S 1 and John F Goulding Pty Ltd v Victorian Railways Commissioners (1932) 48 CLR 157 at 167.
(2)Secondly, the respondent must refuse to comply with the demand: McCurdy at 556‑557; Nelson & Anor v Nelson [1923] St R Qd 37 at 40 (McCawley CJ); Slaveski at [318]. The refusal must be clear and unqualified: Slaveski at [323]. Where the chattel is in the respondent’s possession, the refusal to comply with the demand must be unreasonable. Where the chattel is not in the respondent’s possession, the respondent must have wrongfully parted with possession; the onus of establishing that the parting of possession was not wrongful is on the respondent: John F Goulding at 167, 169; Houghland v RR Low (Luxury Coaches) Ltd [1962] 1 QB 694 at 698-9.
As to the sufficiency of the demand required by the first element, Kyrou J in Slaveski observed that a demand will be insufficient if it would require the defendant to do more than to permit the plaintiff to come and collect the goods. His Honour stated at [322]:
A demand will be insufficient if it would require the defendant to do more than to permit the plaintiff to come and collect the goods: [Capital Finance Co Ltd v Bray [1964] 1 WLR 323, 328-9; Crowther (1985) Aust Torts Reports ¶80-709, 69,102]. In Capital Finance Co Ltd v Bray [[1964] 1 WLR 323, 328-9], the action in detinue failed because the letter of demand required the recipient to deliver up a car, at his own expense, to one of three named addresses. The result in this case is consistent with the decision of the Supreme Court of New South Wales in Lloyd v Osborne [(1899) LR (NSW) 190]. In the latter case, a letter sent to the defendant demanded that he immediately deliver certain sheep in his possession to the plaintiff or her agent. The demand was held to be insufficient because it did not state where the sheep were to be delivered or identify the plaintiff’s agent, but it was also observed that the demand could not impose upon the defendant a positive burden in relation to the delivery of the goods. Darley CJ said:
The letter says, ‘You will at once deliver to her or her agent all the sheep,’ but it does not say where they are to be delivered, nor does it say who the agent is. Is [the defendant] to drive the sheep into Jugiong for delivery to [the plaintiff]? The law casts no such duty on him. If the letter of demand had said, ‘you must deliver the sheep to the bearer of this letter,’ and the bearer had then gone to [the defendant] and demanded the sheep, and [the defendant] had then done nothing, there would have been sufficient evidence of a demand and a refusal [Lloyd v Osborne (1899) LR (NSW) 190, 194].
The cause of action accrues at the time of refusal: John F Goulding at 166; Slaveski at [323].
G.3 A pleading point
In closing submissions, Mr Duncan-Watt submitted that the demands relied upon were not sufficient to establish the first element of the test. In response, Mr Rockefeller submitted that the fact of the demands had been admitted on the pleadings. To this, Mr Duncan-Watt rejoined that he had opened his case on the basis that “Mr Duncan-Watt was not unreasonable in refusing [to return the chattels] having regard to the courier expenses of returning these materials, but that he has always made those materials available for Mr Rockefeller’s collection”.
It is clear that Mr Duncan-Watt’s case was that there was no unreasonable refusal on his part to return the chattels and the case was fought on that basis. The unreasonable refusal to comply with a demand, required by the second element of the tort, is necessarily linked to the nature of the demand required by the first element of the tort. For example, if the demand required the defendant to pay for delivery of the goods (which would mean that the demand was not sufficient for the purposes of establishing the first element of the tort), the refusal to comply with the demand would not be unreasonable.
Mr Duncan-Watt admitted the simple fact that Mr Rockefeller had demanded that he return the chattels. The specific demands identified were the demand by Brett Oaten Solicitors dated 13 September 2016 and the demand from Minter Ellison dated 20 December 2016. By admitting the fact that demands had been made, Mr Duncan‑Watt did not thereby admit that what each and every demand required was reasonable, or that the demands were sufficient for the purpose of establishing the tort of detinue. Indeed, Mr Rockefeller did not plead that the demands were sufficient.
G.4 Consideration: the “Returned Material”
As set out earlier, on 24 June 2016, Mr Duncan-Watt wrote an email to Mr Rockefeller stating his position that it was unreasonable for him to have to meet the expense of returning Mr Rockefeller’s chattels, but they could be collected. His email included:
I have offered to make myself available to receive a courier or any other person of your choosing to pick up the materials that I have been storing for you at my place. Naturally, arrangements would need to be made for a suitable time. If that is difficult for you to arrange I have also offered to drop off the materials to an address in Sydney that suits you. I do not, however, intend to pack and send the materials to New York at my own expense. To demand that I do so is unreasonable.
…
Jonathan, I have said to you on many occasions I am available and willing to talk through and try to resolve any issues of concern to you that have an impact on our professional relationship. That remains the case.
On 13 September 2016, Brett Oaten Solicitors wrote to Mr Duncan-Watt demanding that the “Loaned Materials” be delivered to Mr Rockefeller in New York. The “Loaned Materials” was identified as:
(a)10 copies of the script titled Satisfaction;
(b)7 copies of the script titled Coming of Age;
(c)1 copy of the script titled The Good Old Days; and
(d)work product and research materials relating to each of the scripts referred to in paragraphs (a) – (c) (inclusive) above.
It was asserted that Mr Duncan-Watt’s refusal to return the material was a breach of the contract made in January 2015 “and/or [a] breach of applicable criminal laws”. This demand did not refer to detinue and was plainly insufficient as a demand for the purposes of that tort.
On 16 September 2016, Mr Duncan-Watt responded to Brett Oaten Solicitors by an email which again stated that Mr Duncan‑Watt considered returning the material at his own expense to be an unreasonable request. His email included:
I refer to your letter dated 13 September, 2016 demanding that I return “Loaned Materials” by courier to your client at my expense.
To my knowledge, there is no agreement between myself and your client from January 2015 as referred to in your letter. There is an Author Collaboration Agreement dated 24 December 2014 between us but this agreement contains no such terms and conditions referred to in your letter. I suggest you request a copy from your client so that you can satisfy yourself of the same.
I have no objection to your client retrieving his “Loaned Materials” from me and have stated this to your client on several occasions. However, I do not believe that returning materials that he has left with me for several years now and refused to collect is an expense for which I am responsible for or have ever consented to pay for under a written agreement or otherwise.
Accordingly, there has been no such breach of any agreement or criminal law by me in this matter. You may not be aware that there is now a long history of dispute between myself and your client over a number of issues, of which this “complaint” appears to be frivolous and retaliatory for my filing of valid civil and now criminal actions to protect myself and my rights.
Should your client not wish to arrange for collection of his “Loaned Materials” at his own expense by 30 September 2016, I would be happy to destroy them in the alternative. Please advise what your client would prefer.
I hereby reserve all of my rights.
The penultimate paragraph was perhaps unnecessarily provocative, but understandable in light of the sorts of communications which Mr Rockefeller had earlier made to Mr Duncan-Watt or instructed be made on his behalf. Leaving that aside, the email made Mr Duncan-Watt’s position perfectly clear: Mr Rockefeller was free to have his material collected by 30 September 2016. Mr Duncan-Watt had offered for the material to be collected previously and he considered it unreasonable that he, Mr Duncan-Watt, be required to pay for delivery of the material to Mr Rockefeller.
On 20 December 2016, Minter Ellison wrote to Mr Duncan-Watt in a lengthy letter headed “Unlawful Conduct”. The letter included:
4. Failure to return scripts
We are also instructed that you are in possession of personal property which is owned by Mr Rockefeller. In particular, you are in possession of:
(a) 10 copies of the script titled “Satisfaction”;
(b) 7 copies of the script titled “Coming of Age”;
(c) 3 copies of the script titled “Live Out Loud”;
(d) 1 copy of the script titled “The Good Old Days”; and
(e)documents recording work product and research materials relating to each of the scripts referred to above.
Those documents are the property of Mr Rockefeller. We are instructed that numerous requests have been made for the return of that property, including but not limited to via letters from Brett Oaten Solicitors. Despite those requests, you have failed to return that property. Such conduct amounts to the tort of detinue.
Our client is also concerned that your retention of those documents constitutes a threat by you to use the scripts in a manner which would infringe his copyright in those materials.
5. Required Action
The conduct referred to above has caused, and will continue to cause, significant damage to our clients. Our clients will not tolerate these serious infringements of their rights.
We have been instructed to demand that you provide the undertakings set out below by no later than 29 December 2016.
You are required to undertake that you (whether by yourself, your servants, agents or otherwise) will:
…
(j)deliver up to MinterEllison, at Level 40, Governor Macquarie Tower, 1 Farrer Place, Sydney NSW 2000 marked to the attention of Lynne Lewis, copies of each of the documents referred to in paragraphs 4 (a) to (e) above.
This demand did refer to the tort of detinue. However, the letter does not expressly demand the return of the original scripts at all. That is left for implication. In the circumstances which then prevailed – namely that Mr Rockefeller had consistently demanded that the scripts be returned to him in New York (see for example Mr Jaime Robbins’ email of 25 June 2016 at [266] above) – the demand might be understood as repeating the demand made by Brett Oaten Solicitors that Mr Duncan-Watt return the scripts, at his expense, to Mr Rockefeller in New York.
If the Minter Ellison letter was intended to demand the return of the original scripts to Mr Rockefeller in New York as well as the provision of copies of those scripts to Minter Ellison, the demand for delivery of copies to Minter Ellison made the letter of demand even more unreasonable than that of Brett Oaten Solicitors and, equally, made Mr Duncan‑Watt’s refusal to comply with the demand more reasonable.
If the Minter Ellison letter was intended to demand the return of the original scripts to Minter Ellison, then the demand was insufficient for two reasons: first, the demand was not sufficiently clear because it did not in fact state that the original scripts should be delivered to Minter Ellison; secondly, if that was the intention, the corollary was that Mr Duncan-Watt had to return the scripts at his expense.
Mr Duncan-Watt had made his position clear: Mr Rockefeller’s chattels could be collected from him. Mr Duncan-Watt had repeatedly indicated that it was unreasonable for him to be required to return the chattels at his own expense.
Consistently with the observations of Kyrou J in Slaveski and the cases referred to in the passage set out at [700] above, Young J held in Flowfill Packaging Machines Pty Ltd v Fytore Pty Ltd (1993) Aust Torts Reports 81-244 at 62,522, that in detinue:
… the defendant must merely make available the plaintiff’s goods again to the plaintiff by informing the plaintiff of the whereabouts of the goods and by indicating that there would be no interference with the plaintiff retaking possession.
That is, in substance, what Mr Duncan-Watt did.
Mr Rockefeller did not retake possession as Mr Duncan-Watt had offered simply because he, Mr Rockefeller, would not abandon his position that Mr Duncan-Watt should, at Mr Duncan‑Watt’s expense, return the chattels to Mr Rockefeller or his agent. Mr Rockefeller failed to avail himself of the only lawful remedy to which he was entitled.
The evidence does not reveal why neither Brett Oaten Solicitors nor Minter Ellison were instructed to send someone to collect the chattels from Mr Duncan-Watt.
In cross-examination, Mr Rockefeller referred to asking his accountant to pick up materials from Mr Duncan-Watt. However, there was no evidence of Mr Rockefeller speaking to his accountant, Mr Rockefeller’s accountant speaking to Mr Duncan-Watt, or Mr Rockefeller speaking to Mr Duncan-Watt in relation to an arrangement for Mr Rockefeller’s accountant to collect the materials.
Mr Rockefeller admitted that he had known Mr Duncan-Watt had made an offer that the Returned Materials could be picked up from Mr Duncan-Watt’s home, but had then not sent any courier or any other person to collect them. His evidence in cross-examination included:
Q: Did you send a courier?
A: Did I send a courier?
Q: Yes?
A: No. Thomas Duncan-Watt wouldn’t be home to receive a courier.
Q: Did you send a mutual friend?
A: No.
Mr Duncan-Watt did not unreasonably refuse a sufficient demand and certainly did not refuse to permit Mr Rockefeller to collect his chattels from him.
There is another aspect of the case so far as concerns the Returned Material that warrants mentioning in the event that I am wrong in the conclusion just reached. A respondent does not act unlawfully in refusing a demand for the return of a chattel, if the goods are detained a reasonable time, for example, to inquire into the title of the plaintiff: EE McCurdy at 557, citing Clayton v Le Roy [1911] 2 K B 1031.
Mr Duncan-Watt called this principle in aid for the submission that it was reasonable for him to detain the chattels in order to make certified copies of them in order to defend a potential later claim that anything he wrote was a copy of Satisfaction or breached copyright in material which had been provided to him.
I accept that argument at the level of principle: it would have been reasonable for Mr Duncan‑Watt to refuse a sufficient demand for a reasonable time to allow the making of certified copies. However, if I had concluded (which I do not) that Mr Duncan-Watt unreasonably refused a sufficient demand for return of the chattels, I would not have accepted that the chattels were kept only for a reasonable time. Mr Duncan-Watt did not keep the chattels only for so long as was reasonably necessary to make certified copies. The Returned Material was not provided to Mr Rockefeller’s solicitors until 30 January 2019.
G.5 Consideration: the “Other Material”
That leaves for consideration the Other Material. With the exception of the book My Week with Marilyn, Mr Duncan-Watt denied ever having this material.
Mr Rockefeller submitted that his evidence as to what material was provided to Mr Duncan‑Watt at Lilianfels should be preferred to Mr Duncan-Watt’s evidence. Particular reliance was placed on the fact that the items were of personal significance to him and, presumably, that his recollection should therefore be preferred. The Other Material was said to comprise:
•3 versions of the script entitled ‘Live out Loud’;
•1 copy of the script entitled ‘The Good Old Days’;
•synopses of the versions of ‘Satisfaction’ and ‘Coming of Age’;
•documents containing notes and feedback from producers relating to ‘Satisfaction’ and ‘Coming of Age’ including evaluations of the scripts for project viability from producers including Anne Mary Bell, Weinstein Co., Screen Australia and Sony Classics;
•personal journal notes that Jonathan wrote during his time working with Baz Luhrman which recorded his day-to-day experiences;
•call sheets from the filming of Chanel No. 5 commercial;
•call sheets from rehearsals and performances of ‘La Boheme’;
•a series of magazine clippings that Jonathan gathered over the years that relate to characters and events which are references in Satisfaction; and
•a book entitled ‘My Week with Marilyn’.
It is striking that many of these items of Other Materials were not specified in any demand made for the return of Mr Rockefeller’s chattels whether in the earlier email demands from Mr Rockefeller, the Brett Oaten Solicitors letter or the Minter Ellison letter. Many of the items were not specified in the Statement of Claim or Originating Application filed on 23 February 2017. The Brett Oaten Solicitors letter stated that Mr Rockefeller owned copyright in all of the materials he wished returned. That would be true of the scripts and screenplays, but not of many or most of the items in the list of Other Materials.
Mr Rockefeller bears the onus of establishing his claim. Mr Duncan-Watt denied in cross‑examination that he had ever had the Other Materials, although he readily accepted that he had been given, but could no longer find, the book My Week with Marilyn. I accept Mr Duncan‑Watt’s evidence. Mr Rockefeller has not discharged the onus of establishing that – apart from My Week with Marilyn – he gave the Other Material to Mr Duncan-Watt.
With respect to the book My Week with Marilyn, Mr Duncan-Watt bore the onus of establishing that he parted with possession lawfully. The evidence did not deal in any detail with how or why he could no longer find the book. I conclude that Mr Duncan-Watt has lost it given that he has returned all the other material. The only relief claimed was delivery-up on the basis of the tort of detinue. That order cannot properly be made in circumstances where Mr Duncan‑Watt has lost the book. No claim was made for conversion and no damages were sought.
G.6 Conclusion
Mr Rockefeller has not made good his claim in detinue except perhaps with respect to the book My Week with Marylin. To the extent the claim is successful with respect to that book, an order for delivery up should not be made for the reasons indicated.
H. CONCLUSION
The proceedings against both Mr Gooding and Mr Duncan-Watt must be dismissed.
I certify that the preceding seven hundred and thirty-one (731) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Thawley. Associate:
Dated: 5 March 2020
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