KIEFEL CJ, GAGELER, GORDON, EDELMAN AND STEWARD JJ
Matter No S57/2022
REALESTATE.COM.AU PTY LTD APPELLANT
AND
JAMES KELLAND HARDINGHAM & ORS RESPONDENTS
Matter No S58/2022
RP DATA PTY LIMITED APPELLANT
AND
JAMES KELLAND HARDINGHAM & ORS RESPONDENTS
Realestate.com.au Pty Ltd v Hardingham RP Data Pty Limited v Hardingham
[2022] HCA 39
Date of Hearing: 11 October 2022 Date of Judgment: 14 December 2022
S57/2022 & S58/2022
ORDER
Matter No S57/2022
1. Appeal allowed in part.
2.Set aside the orders of the Full Court of the Federal Court of Australia made on 8 September 2021, 13 September 2021, and 1 October 2021 and, in their place, order that the appeal and cross-appeal be dismissed with costs.
3. The first and second respondents pay the appellant's costs.
Matter No S58/2022
1. Appeal allowed.
2.Set aside the orders of the Full Court of the Federal Court of Australia made on 8 September 2021, 13 September 2021, and 1 October 2021 and, in their place, order that the appeal and cross-appeal be dismissed with costs.
3. The first and second respondents pay the appellant's costs.
On appeal from the Federal Court of Australia
Representation
A J L Bannon SC with H P T Bevan SC for the appellant in S57/2022 and the third respondent in S58/2022 (instructed by King & Wood Mallesons)
R Cobden SC with J Sleight and G R Rubagotti for the first and second respondents in each matter (instructed by Neville Hourn and Borg Legal)
M D Martin KC with A F Messina for the appellant in S58/2022 and the third respondent in S57/2022 (instructed by Mills Oakley)
Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.
CATCHWORDS
Realestate.com.au Pty Ltd v Hardingham RP Data Pty Limited v Hardingham
Contract – Informal agreements – Implied term – Inferred term – Copyright – Where real estate agencies informally commissioned professional photographer and his company to take photographs and prepare floor plans of properties for use on platforms concerning marketing of properties for sale or lease – Where photographs and floor plans provided to each agency were uploaded to platform operated by Realestate.com.au Pty Ltd ("REA") – Where REA's terms and conditions provided that agency granted licence to REA to use and sub-license copyright in photographs and floor plans – Where REA sub-licensed copyright in photographs and floor plans to RP Data Pty Ltd ("RP Data") – Where RP Data kept photographs and floor plans from historical sales on subscription website –Whether agencies' licence and right to grant sub-licence limited to period of marketing campaign for sale or lease of property.
Words and phrases – "all the circumstances", "business efficacy", "copyright", "implied term", "inferred term", "informal contract", "intention", "licence", "mutual understanding", "objective theory of contract", "reasonable person", "words and conduct".
KIEFEL CJ AND GAGELER J. Mr Hardingham is a professional photographer and the sole director of Real Estate Marketing Australia Pty Ltd ("REMA"). REMA's business has…
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
Realestate.com.au Pty Ltd v Hardingham [2022] HCA 39
Case
[2022] HCA 39
Decision Date
CaseChat Overview and Summary
The dispute before the High Court of Australia concerned alleged copyright infringement of photographs and floor plans created by Mr Hardingham and his company, Real Estate Marketing Australia Pty Ltd (collectively "H/REMA"), for real estate agencies. H/REMA had commissioned professional photographers to produce these materials for marketing properties for sale or lease. The agencies subsequently uploaded these materials to the platform operated by Realestate.com.au Pty Ltd ("REA"). REA, in turn, sub-licensed the copyright in these materials to RP Data Pty Ltd ("RP Data"), which then used them on its subscription website. H/REMA alleged that RP Data infringed its copyright.
The central legal issue before the court was the scope of the licence granted by H/REMA to the real estate agencies, and consequently, the scope of the sub-licence granted by the agencies to REA and RP Data. Specifically, the court had to determine whether the licence and the right to grant a sub-licence were limited to the period of the agency's marketing campaign for the sale or lease of a particular property, or if they extended beyond that period. This question was crucial in determining whether RP Data's use of the photographs and floor plans constituted copyright infringement.
The High Court reasoned that when dealing with informal contracts, the objective intention of the parties must be ascertained by considering the whole of the evidence, including their conduct, commercial aims, and surrounding circumstances. The court found that a reasonable observer would conclude from the conduct of H/REMA and the agencies, including what was said and not said, that there was a mutual understanding or agreement that the licence to use the works and the right to grant a sub-licence extended beyond the marketing campaign. This understanding was based on the evident commercial aims and expectations of the parties. Consequently, the court determined that RP Data did not infringe H/REMA's copyright.
The High Court allowed the appeals in part, setting aside the orders of the Full Court of the Federal Court of Australia. The court ordered that the appeals and cross-appeals be dismissed with costs, and that the first and second respondents (RP Data and REA respectively) pay the appellant's (H/REMA's) costs.
Orders
Orders of the court
Matter No S57/2022
1. Appeal allowed in part.
2. Set aside the orders of the Full Court of the Federal Court of Australia made on 8 September 2021, 13 September 2021, and 1 October 2021 and, in their place, order that the appeal and cross-appeal be dismissed with costs.
3. The first and second respondents pay the appellant's costs.
Matter No S58/2022
1. Appeal allowed.
2. Set aside the orders of the Full Court of the Federal Court of Australia made on 8 September 2021, 13 September 2021, and 1 October 2021 and, in their place, order that the appeal and cross-appeal be dismissed with costs.
3. The first and second respondents pay the appellant's costs.
Background
Background to the litigation
When dealing with an informal contract, finding what was the objective intention of the parties requires consideration of the whole of the evidence, not just evidence about what was said. As will be seen, a reasonable observer would conclude from the conduct of H/REMA and the agencies, including what was said and not said, the evident commercial aims and expectations of the parties and the surrounding circumstances, that there was an understanding or agreement – a manifestation of mutual assent – that the licence to use the Works and the ability to grant a sub‑licence for the use of the Works granted by H/REMA to each agency extended beyond the campaign[63]. Accordingly, RP Data did not infringe H/REMA's copyright in the Works.[63]King [2016] NSWSC 1798 at [65]-[69].Facts It is necessary to make some more detailed reference to the facts of this case. The following summary is drawn from the reasons of the decisions below. The primary evidence adduced in respect of the arrangements between H/REMA and the real estate agencies was "minimal" and consisted primarily of Mr Hardingham's affidavit evidence and invoices issued by REMA. Since its incorporation in 2009, H/REMA has been commissioned by various agencies to produce photographs and floor plans of properties for use in marketing campaigns for the sale or lease of the properties. The separate question was limited to photographs and floor plans in respect of 20 properties – "the Works" – which were taken and prepared between September 2014 and June 2018. Mr Hardingham's evidence, which applied to each contract the subject of the separate question, was that H/REMA was usually engaged to supply photographs and floor plans to agencies as a result of a telephone call from an agent. Typically, an agent on behalf of an agency would say to Mr Hardingham "Hi James, we have just listed [property address]. The campaign is due to start [date]. Can you attend this week to take the photos for the campaign?". Sometimes he would be asked to prepare a floor plan. Neither REA nor RP Data was a party to the oral agreement made between H/REMA and the agency for each of the Works. The parties proceeded at trial on the basis that Mr Hardingham took the photographs and prepared the floor plans. H/REMA provided the agencies with the photographs and floor plans in an editable digital form and the agencies paid invoices issued by REMA. As H/REMA acknowledged, each of the agencies then uploaded the photographs and floor plans to the realestate.com.au platform. H/REMA knew that one of the principal purposes for which the Works had been commissioned was to enable the Works to be uploaded to that platform. REA operates the realestate.com.au platform. Many agencies in Australia list and advertise residential properties for sale or lease on behalf of vendors and landlords on this platform. The evidence at trial established that the overwhelming majority of Australian real estate agencies use the realestate.com.au platform and, as a matter of practical commercial reality, would use the platform in marketing properties. REA supplies these residential property listing services to agencies by selling "listing subscriptions" to the agencies. Each subscription agreement included an express acknowledgement by the agency that the "terms stipulated in this form and in the Terms and Conditions contained on our website [ form part of this Agreement". The terms and conditions included an express licence granted by the agency to REA:"5. Your acknowledgementsYou acknowledge and agree that at all times during the Term of this Agreement:(a)in consideration for us granting a right to upload listings to the Platform and the other services we provide, you grant us an irrevocable, perpetual, world‑wide, royalty free licence to publish, copy, licence to other persons, use and adapt for any purpose related to our business any content you provide to us during the Term, and this licence survives termination of this Agreement by you or us; ..."
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
KIEFEL CJ
GAGELER J
(dissent)
GORDON J
EDELMAN AND STEWARD JJ
(dissent)
In these circumstances no question as to whether a term needs to be implied in the sub‑licence to REA arises.Conclusion and orders The appeals should be allowed. We agree with the orders proposed by Gordon J, including the orders as to costs. Mr Hardingham[34] is a professional photographer and the sole director of Real Estate Marketing Australia Pty Ltd ("REMA")[35]. Since its incorporation in 2009, REMA has been commissioned by various real estate agencies to produce photographs and floor plans of properties for use in marketing campaigns for the sale or lease of the properties. [34]The first respondent in both appeals.[35]The second respondent in both appeals. In 2018, Mr Hardingham and REMA ("H/REMA") brought proceedings in the Federal Court of Australia against RP Data Pty Ltd[36] alleging that RP Data had, contrary to s 36 of the Copyright Act 1968 (Cth), infringed, and was continuing to infringe, H/REMA's copyright in a number of its photographs and floor plans[37]. RP Data operates the website Through that website, subscribers can access a product called "RP Data Professional". RP Data Professional includes reproductions of a number of H/REMA's photographs and floor plans. RP Data obtained the photographs and floor plans from Realestate.com.au Pty Ltd ("REA")[38]. REA is a wholly owned subsidiary of REA Group Ltd. REA Group supplies online residential property listing services to real estate agencies, including through the realestate.com.au website and mobile applications (collectively, "the realestate.com.au platform").[36]The appellant in appeal S58 of 2022 and third respondent in appeal S57 of 2022.[37]It was common ground that, for the purposes of the Copyright Act, the works in issue were original artistic works in which copyright subsisted, that Mr Hardingham was the author of each of the works and that ownership of the copyright vested in him and was the subject of an exclusive licence granted by him to REMA.[38]The appellant in appeal S57 of 2022 and third respondent in appeal S58 of 2022. There was no dispute that on each occasion that H/REMA was engaged by a real estate agency to provide photographs and floor plans of a property, the contract between H/REMA and the agency included a term that H/REMA granted the real estate agency a licence to use the photographs and floor plans for the purpose of marketing the property in question, and a right to grant a sub‑licence for that purpose (which would include granting a sub-licence to REA and RP Data). The central issue was and remains the scope and terms of that licence and sub‑licence and, in particular, whether the licence and the right to grant a sub‑licence to REA and RP Data to use the photographs and floor plans was limited to the period of the agency's marketing campaign to sell or lease the property, or extended after the campaign. The trial judge ordered that questions of liability for infringement of copyright of the photographs and floor plans in respect of 20 properties[39] ("the Works") were to be heard and determined separately and before the hearing and determination of questions of any infringement of other works and questions of pecuniary relief. The 20 contracts between H/REMA and different agencies for preparation of the Works were entered into on various dates between September 2014 and June 2018. The agencies were not parties to the proceeding.[39]The 20 properties identified were chosen by H/REMA.