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Milwell Pty Ltd v Olympic Amusements Pty Ltd

Milwell Pty Ltd v Olympic Amusements Pty Ltd

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Case Copied 16 February 1999 35 min read

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FEDERAL COURT OF AUSTRALIA
Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63
COPYRIGHT – infringement – prize scales for poker video games – whether each prize scale an “original literary work” – whether each prize scale a “work of joint authorship” – whether infringement innocent within Copyright Act 1968 (Cth) s 115(3) – where respondent denied infringement and no evidence exists as to respondent’s state of mind – whether s 115(3) applies where respondent believes that copyright could not subsist in a particular form of work
Copyright Act 1956 (UK)
Copyright Act 1912 (Cth)
Copyright Act 1968 (Cth) ss 10, 32, 35, 78, 115(3)
Smith’s Newspapers Ltd v The Labor Daily (1925) 25 SR (NSW) 593 discussed
Hollinrake v Truswell [1894] 3 Ch 420 discussed
Francis Day v Twentieth Century Fox Corporation Limited & Ors [1940] AC 112 discussed
Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch 119 applied
Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 cited
University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 cited
Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 cited
Interlego A.G. v Croner Trading Pty Ltd (1992) 39 FCR 348 cited
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 discussed
A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 34 IPR 306 cited
Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 cited
Cala Homes (South) Limited v Alfred McAlpine Homes East Limited cited
Pollock v J C Williamson Ltd [1923] VLR 225 applied
Finn v Pugliese (1918) 18 SR (NSW) 530 cited
Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 34 IPR 84 discussed
Byrne v Statist Co [1914] 1 KB 622 cited
John Lane The Bodley Head Ltd v Associated Newspapers Ltd [1936] 1 KB 715 cited
Z S Projects Pty Ltd v G & R Investments Pty Ltd (1987) 8 IPR 460 referred to
Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 discussed
MILWELL PTY LIMITED v OLYMPIC AMUSEMENTS PTY LIMITED
NG 585 OF 1998
LEE, VON DOUSSA AND HEEREY JJ
SYDNEY
16 FEBRUARY 1999

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 585 OF 1998

BETWEEN:

MILWELL PTY LIMITED
Appellant

AND:

OLYMPIC AMUSEMENTS PTY LIMITED
Respondent

BETWEEN:

OLYMPIC AMUSEMENTS PTY LIMITED
Cross-Appellant

AND:

MILWELL PTY LIMITED
Cross-Respondent

JUDGES:

LEE, VON DOUSSA AND HEEREY JJ

DATE OF ORDER:

16 FEBRUARY 1999

WHERE MADE:

SYDNEY

THE COURT ORDERS AND DECLARES THAT:
1. The appeal be dismissed.
2. The cross-appeal be allowed.
3.Orders 5 and 8 of the orders made by Wilcox J on 7 April 1998 be set aside and the following inserted in lieu thereof:
“5.The cross-appellant is entitled to, upon its election, an account of any profits made by the appellant or an award of damages (including additional or conversion damages) pursuant to ss 115 and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1999] FCA 63
Decision Date: 16 FEBRUARY 1999

CaseChat Overview and Summary

This case concerned an appeal and cross-appeal in the Federal Court of Australia, between Milwell Pty Ltd (Milwell) and Olympic Amusements Pty Ltd (Olympic), relating to copyright infringement in prize scales for video poker games. Milwell, a competitor in the amusement machine industry, was found by the primary judge to have infringed Olympic's copyright in prize scales for its Wildcard 5 and Wildcard 14 draw poker video games. The primary judge held that the prize scales were original literary works, that Olympic was a joint author of the literary works, and that the infringement was innocent within the meaning of s 115(3) of the Copyright Act 1968 (Cth) (the Act). Milwell challenged the findings that the prize scales were original literary works and that Olympic was a joint author, while Olympic cross-appealed against the finding that Milwell's infringement was innocent.

The court held that the prize scales were original literary works, rejecting Milwell's argument that the prize scales were too unsubstantial to attract copyright protection. The court found that the prize scales contained the expression of some ideas that were not novel or inventive together with some that were. The originality of the prize scales should be assessed by considering them in their entirety, and as an expression of ideas to which the considerable work and skill of the mathematicians contributed. The court also held that the evidence supported the finding of the primary judge that the prize scales were works of joint authorship, and that Olympic, through its employees, was one of the authors.

The court found that his Honour erred in upholding Milwell's claim for the protection of s 115(3) of the Act. The court held that to obtain the protection of s 115(3) a defendant must establish (i) an active subjective lack of awareness that the act constituting the infringement was an infringement of the copyright, and (ii) that, objectively considered, he or she had no reasonable grounds for suspecting that the act constituted an infringement. Milwell failed to satisfy either limb. The court allowed the cross-appeal and varied the order of the primary judge in the terms sought by Olympic in the cross-appeal. Milwell was ordered to pay Olympic's costs of the appeal and cross-appeal.

Orders