Copyright - constructive knowledge for purposes of infringement under ss. 102 and 103 in respect of importation of compact discs - nature of objective test of knowledge - additional damages - discussion of “flagrancy” - circumstances justifying an award of $15,000 additional damages, although compensatory damages (on the conversion basis) amounted only to $275.
Pontello v Giannotis(1989) 16 IPR 174 L.A. Gear Inc. v Hi-Tec Sports plc [1992] 19 FSR 121 RCA Corporation v Custom Cleared Sales Pty Ltd(1978) 19 ALR 123 Apple Computer Inc v Computer Edge Pty Ltd(1984) 53 ALR 225; (1984) 2 IPR 1 Computer Edge Proprietary Limited v Apple Computer, Inc(1986) 161 CLR 171 Milpurrurru v Indofurn Pty Ltd(1994) 54 FCR 240 Autodesk Inc v Yee(1996) 139 ALR 735 Cala Homes (South) Limited v Alfred McAlpine Homes East Limited(No 2) [1996] FSR 36 International Credit Control Ltd v Axelsen[1974] 1 NZLR 695 Prior v Lansdowne Press Pty Ltd(1975) 12 ALR 685; [1977] VR 65 Tesco Supermarkets Ltd v Nattrass[1972] AC 153 Hamilton v Whitehead(1988) 166 CLR 121 Albert v S Hoffnung & Co Ltd (1921) 22 SR(NSW) 75 Nintendo Co Ltd v Centronics Systems Pty Ltd(1994) 181 CLR 134 Golden Editions Pty Ltd v Polygram Pty Ltd(1995) 34 IPR 84 Taylor’s Central Garages (Exeter) Ltd v Roper[1951] WN 383 Allied Pastoral Holdings Pty Ltd v The Commissioner of Taxation [1983] 1 NSWLR 1 Dolan v Australian and Overseas Telecommunications Corporation(1993) 42 FCR 206 Marelic v Comcare(1993) 121 ALR 114 Concrete Systems Pty Ltd v Devon Symonds Holdings Pty Ltd(1978) 20 SASR 79 Williams v Settle[1960] 1 WLR 1072 Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV (1977) 138 CLR 534 Star Micronics Pty Ltd v Five Star Computers Pty Ltd(1990) 18 IPR 225
RABEN FOOTWEAR PTY LIMITED -V- POLYGRAM RECORDS INC & ANOR
NG 792 of 1996
Burchett, Tamberlin and Lehane JJ Sydney 16 May 1997
IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 792 of 1996 ) GENERAL DIVISION )
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN: RABEN FOOTWEAR PTY LIMITED
Appellant
AND: POLYGRAM RECORDS INC
1st Respondent
AND: POLYGRAM RECORDS PTYLIMITED
2nd Respondent
Coram: Burchett, Tamberlin and Lehane JJ Place: Sydney Date: 16 May 1997
MINUTE OF ORDERS OF THE COURT
THE COURT ORDERS THAT the appeal be dismissed with costs.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 792 of 1996 ) GENERAL DIVISION )
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN: RABEN FOOTWEAR PTY LIMITED
Appellant
AND: POLYGRAM RECORDS INC
1st Respondent
AND: POLYGRAM RECORDS PTYLIMITED
2nd Respondent
CORAM: Burchett,…
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
AGLC
Raben Footwear Pty Ltd v Polygram Records Inc [1997] FCA 370
Case
[1997] FCA 370
Decision Date
CaseChat Overview and Summary
Raben Footwear Pty Limited (Raben) appealed against the decision of Foster J who awarded damages to the respondents (Polygram) for copyright infringement. The damages consisted of $275.00 by way of compensatory damages and $15,000.00 additional damages. The appellant submitted that the primary judge erred in law in his approach to the issue of knowledge when he said that, as Raben knew that it held no licence to manufacture the CDs from whomever the owner of the copyright might be, then it would necessarily know that if it made them in Australia it would infringe the copyright. The approach of the primary judge was said to be too wide because it would have the practical effect of imposing strict liability in circumstances where an importer does not have a licence to manufacture the article and is aware of the general proposition that a licence to import is not a licence to manufacture. The appeal was dismissed with costs. The appeal was dismissed with costs. The knowledge required to establish infringement can be actual or constructive, in the sense that the infringer ought reasonably to have known, that there would be an infringement of copyright if the article had been made in Australia. Constructive knowledge focuses attention on the reasonableness of the conduct of the alleged infringer. The question is not simply whether there were reasonable grounds to suspect or believe, though this can be part of the exercise. The relevant dealing for this purpose is the hypothetical making of the article, not the importation. The primary judge made findings about knowledge both in relation to a hypothetical making of the CDs and in relation to the circumstances of their actual importation. It was open to his Honour to find that the appellant's directors, as its directing minds, ought reasonably to have known the matters set out in ss 102 and 103. The judge considered that this situation evinced a blatant disregard for the rights of the copyright owner. In my opinion he was justified in his conclusion. The circumstances entitled him to see the appellant's conduct as much more serious than a mere neglect to make all proper enquiries. Neglect, where a careful person might enquire, is one thing; abstention from pursuing a plain indication that a necessary licence has not been obtained is another thing altogether. The award of additional damages was not excessive. It was open to the Court to award additional damages, in the present circumstances, where his Honour found that the Lewys were well aware that they were taking a risk in order to secure an undeserved but substantial profit.