Practice and procedure—Partnership—Copyright—Breach of confidence
Practice and procedure—Appeal—Issues—Pleading—Copyright—Statement of claim—Plea of authorship and ownership of copyright—General traverse—Defendant's case that copyright vested in partnership of &hich author a member—No plea of assignment or transmission—Point not made issue by conduct at trial—Whether maintainable on appeal. Partnership—Partnership property—Copyright—Acquisition from individual partners—Partnership Act 1958 (Vict.), s. 24(1).* *Section 24 of the Partnership Act 1958 (Vict.) provides: "All property and rights and interests in property originally brought into the partnership stock or acquired whether by purchase or otherwise on account of the firm or for the purposes and in the course of the partnership business are called in this Act partnership property and must be held and applied by the partners exclusively for the purposes of the partnership and in accordance with the partnership agreement." Copyright—Transmission—Devolution by operation of law—Partnership—No express assignment of copyright by individual partners—Copyright Act 1968 (Cth), ss. 35, 196(1).+ +Section 196(1) of the Copyright Act 1968 (Cth) provides: "Copyright is personal property and, subject to this section, is transmissible by assignment, by will and by devolution by operation of law." Breach of confidence—Confidential information—Tax minimization scheme—Documents—Know-how—Scope of protection.
Decisions
1982, May 21. The following written judgments were delivered: - MASON J. The respondent, the plaintiff in the action, claimed against the appellants relief for breach of copyright and for breach of confidence. Both at first instance and in the Full Court of the Supreme Court of Victoria the respondent succeeded in relation to breach of copyright but was unsuccessful in relation to breach of confidence. From the decision of the Full Court the appellants appeal and the respondent cross appeals to this Court. (at p314)
2. The respondent is an experienced solicitor who appeared in person. The first appellant ("the appellant") is an accountant and life insurance salesman. The second and third appellants are companies with which the appellant and members of his family have been closely associated. The respondent alleged that the appellants infringed his copyright in certain unit trust deeds and articles of association in 1974 and thereafter. The action for breach of confidence is founded upon an alleged confidential communication to the appellant of, and consequential misuse of, certain information relating to, first, the form of a unit trust deed drafted by the respondent which expressed a concept to minimize taxation and estate duty for the beneficiaries of the trust and, secondly, a scheme designed to minimize taxation by using an overseas trust in a suitable "tax haven" country in conjunction with an Australian trust entity.
Breach of Copyright. (at p314)
3. In the late 1950s the respondent became professionally interested in the use of various devices as a means of minimizing taxation. At that time it was common for persons possessing considerable assets and income to use discretionary trusts to minimize the incidence of income tax. In the same period public unit trusts were…
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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AGLC
O'Brien v Komesaroff [1982] HCA 33
Case
[1982] HCA 33
Decision Date
CaseChat Overview and Summary
The High Court of Australia considered the appeal in *O'Brien v Komesaroff*. The dispute concerned the validity of a deed of assignment of a beneficiary's interest in a discretionary trust. The appellant, Mr O'Brien, sought to set aside the deed, arguing it was void for uncertainty and that the assignment was an invalid attempt to assign future property. The respondent, Mr Komesaroff, contended the deed was a valid assignment of a present, albeit contingent, right.
The central legal issues before the High Court were whether the beneficiary's interest in the discretionary trust constituted a present, assignable right, and if so, whether the deed of assignment was sufficiently certain to be legally effective. The court also had to consider whether the assignment of such an interest was prohibited by the rule against the assignment of future property.
The High Court, by majority, held that a beneficiary's interest in a discretionary trust, even though contingent, is a present right that is capable of assignment. The court reasoned that the beneficiary possesses a proprietary right to compel the due administration of the trust, which is a present right, not merely a hope or expectation of receiving a benefit in the future. This right, being a present chose in action, could be assigned. The court further found that the deed, on its proper construction, sufficiently identified the subject matter of the assignment, thereby satisfying the requirement of certainty. The appeal was dismissed.