Nintendo Company Ltd v Centronics Systems Pty Ltd - [1993] HCATrans 291

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IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Melbourne No M91 of 1993
B e t w e e n -
NINTENDO COMPANY LTD

Appellant

and
CENTRONICS SYSTEMS PTY LTD,
MAURICE LATIN, TIBERIO SALICE
and FABRIZIO LATIN

Respondents

MASON CJ
BRENNAN J
DEANE J

DAWSON J

TOOHEY J

GAUDRON J

Nintendo(2)

6/10/93

McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON WEDNESDAY, 6 OCTOBER 1993, AT 10.02 AM

(Continued from 5/10/93)

MASON CJ: Yes, Mr Macaw.

MR MACAW:

I was taking the Court last evening to

paragraph 9 of our outline, and I would like to
take the Court briefly to Sillitoe v McGraw-Hill
Book Co, (1983) FSR 545. It is a copyright case and deals with the question of knowledge in a
provision similar to that of sections 37 and 38 of
our Copyright Act, that is to say knowledge of the

subsistence and infringement of copyright. What it
and other like cases stand for is the proposition
that being put on notice of the relevant facts and
in some circumstances having a reasonable time for
inquiry will constitute knowledge for that purpose.
In Sillitoe's case, as the Court will see from

the headnote, literary copyright was involved in

0 level literature studies. The Court will see
from point (iv) at the foot of page 545 one thing
that was contended by the defendants was:
having obtained counsel's opinion, they did
not have the knowledge required by section 5 -

counsel having advised that there was no
infringement. At the foot of page 555, the point
that is reminiscent of the way the respondents here
wish to conduct the case:
Mr Jeffs's final point was that there

cannot be "knowledge" on the part of the
defendants if it takes a law suit to determine
whether or not there is an infringement.
Here, he said, the defendants had seen an
Advice of counsel concerning the plaintiffs' claim and in the Advice those claims were

rejected. The defendants had gone ahead in
reliance on the Advice. This argument means,
as I understand, that a defendant who does not

dispute the facts can nevertheless rely on having no "knowledge" within section 5(2) if he accepts and acts on legal advice, whether
the advice turns out to be right or wrong.

And, in the middle of that page, 556, there is
reference made to the New South Wales decisions of
Albert v Hoffnung and RCA Corporation v Custom
Cleared Sales. In that latter case:
The judgment of the court includes these
words:
"In other words, the true position is

that the court is not concerned with the
knowledge of a reasonable man but is concerned
with reasonable inferences to be drawn from a

Nintendo(2)

6/20/93

concrete situation as disclosed in the
evidence as it affects the particular person
whose knowledge is in issue."
It follows that one must consider the

concrete situation disclosed by the evidence
in this case…

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.

Continue reading Nintendo Company Ltd v Centronics Systems Pty Ltd

Details

AGLC: Nintendo Company Ltd v Centronics Systems Pty Ltd [1993] HCATrans 291
Case: [1993] HCATrans 291
Decision Date

CaseChat Overview and Summary

The High Court of Australia heard an appeal concerning copyright infringement. The parties involved were Nintendo Company Ltd (appellant) and Centronics Systems Pty Ltd, Maurice Latin, and Tiberio Salice (respondents). The dispute centred on whether the respondents had the requisite knowledge of copyright subsistence and infringement to be liable under the Copyright Act 1968 (Cth).

The primary legal issue before the High Court was to determine the meaning of "knowledge" as it pertains to copyright infringement under sections 37 and 38 of the Copyright Act, and the related concept of what a party "ought reasonably to have known." Specifically, the court had to consider whether relying on legal advice that denied infringement, despite being put on notice of a claim, could negate the knowledge requirement.

The court considered various authorities, including *Sillitoe v McGraw-Hill Book Co* and New South Wales decisions such as *Albert v Hoffnung* and *RCA Corporation v Custom Cleared Sales*. The reasoning emphasised that "knowledge" is not solely about a reasonable person's general understanding, but rather about the inferences that can be drawn from the concrete factual situation as it affects the particular person whose knowledge is in question. This includes express knowledge or knowledge that the defendants must have had, or ought reasonably to have had, given the circumstances and the passage of a reasonable time after notice of a claim. The court noted that the statutory language in sections 37 and 38 uses "knowledge," while section 19(3) also incorporates the concept of "ought reasonably to have known."

Orders