Seven Network (Operations) Limited (ACN 052 845 262) v TCN Channel Nine Pty Limited (ACN 001 549 560)
[2005] FCA 476
•21 APRIL 2005
FEDERAL COURT OF AUSTRALIA
Seven Network (Operations) Limited (ACN 052 845 262) v TCN Channel Nine Pty Limited (ACN 001 549 560) [2005] FCA 476
COPYRIGHT – whether parties joint makers of cinematograph film – whether later transfer of beneficial title to film and copyright to one joint owner – licence to third party
COPYRIGHT – where no inference of conscious or subconscious copying
Copyright Act 1968 (Cth), ss 22(4), 98, 101
Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199, distinguished
Cooper v Stephens [1895] 1 Ch 567, distinguished
Francis Day and Hunter Ltd v Bron [1963] Ch 587, cited
W Marshall & Co Ltd v AH Bull Ltd (1901) 85 LT 77, distinguished
Prior v Sheldon (2000) 48 IPR 301, citedS Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information, LBC Information Services (looseleaf), Sydney, 1999-
H Laddie, P Prescott and M Vitoria, Modern Law of Copyright and Designs, 2nd edn, Butterworths, London, 1995
J Lahore, Copyright and Designs, Butterworths (looseleaf), Sydney, 1996-SEVEN NETWORK (OPERATIONS) LIMITED (ACN 052 845 262) AND CHANNEL SEVEN SYDNEY PTY LIMITED (ACN 000 185 246) v TCN CHANNEL NINE PTY LIMITED (ACN 001 549 560), NBN LIMITED (ACN 000 232 486), BRETT MURRAY, D.A.R.E. OPERATIONS PTY LIMITED (ACN 108 345 446), LOOK TELEVISION PRODUCTIONS PTY LIMITED (ACN 008 685 407) AND LOOK FILM PRODUCTIONS PTY LIMITED (ACN 002 486 384)
NSD 466 OF 2005
GYLES J
21 APRIL 2005
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 466 OF 2005
BETWEEN:
SEVEN NETWORK (OPERATIONS) LIMITED (ACN 052 845 262)
FIRST APPLICANTCHANNEL SEVEN SYDNEY PTY LIMITED (ACN 000 185 246)
SECOND APPLICANTAND:
TCN CHANNEL NINE PTY LIMITED (ACN 001 549 560)
FIRST RESPONDENTNBN LIMITED (ACN 000 232 486)
SECOND RESPONDENTBRETT MURRAY
THIRD RESPONDENTD.A.R.E. OPERATIONS PTY LIMITED (ACN 108 345 446)
FOURTH RESPONDENTLOOK TELEVISION PRODUCTIONS PTY LIMITED (ACN 008 685 407)
FIFTH RESPONDENTLOOK FILM PRODUCTIONS PTY LIMITED (ACN 002 486 384)
SIXTH RESPONDENTJUDGE:
GYLES J
DATE OF ORDER:
21 APRIL 2005
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1. The proceeding be dismissed.
2. The applicants are to pay the costs of the respondents, save for costs of the day of 19 April 2005.
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
NSD 466 OF 2005
BETWEEN:
SEVEN NETWORK (OPERATIONS) LIMITED (ACN 052 845 262)
FIRST APPLICANTCHANNEL SEVEN SYDNEY PTY LIMITED (ACN 000 185 246)
SECOND APPLICANTAND:
TCN CHANNEL NINE PTY LIMITED (ACN 001 549 560)
FIRST RESPONDENTNBN LIMITED (ACN 000 232 486)
SECOND RESPONDENTBRETT MURRAY
THIRD RESPONDENTD.A.R.E. OPERATIONS PTY LIMITED (ACN 108 345 446)
FOURTH RESPONDENTLOOK TELEVISION PRODUCTIONS PTY LIMITED (ACN 008 685 407)
FIFTH RESPONDENTLOOK FILM PRODUCTIONS PTY LIMITED (ACN 002 486 384)
SIXTH RESPONDENT
JUDGE:
GYLES J
DATE:
21 APRIL 2005
PLACE:
SYDNEY
REASONS FOR JUDGMENT
This proceeding seeks injunctions to restrain alleged breaches of copyright in cinematograph films and other relief. The commercial utility of the proceeding substantially depends upon it being decided prior to the coming ANZAC weekend. Therefore the matter has been afforded considerable expedition. Nonetheless, a hearing of some days only ended on the afternoon of 19 April 2005. These reasons will necessarily be more economical than would be the case if the demands of time were not so insistent and there has not been the usual opportunity for editing and revision. I will rely upon counsel to remind me of errors and omissions.
The issues are those arising on the pleadings. The matter has proceeded strictly in accordance with them. A verbatim transcript records the affidavit evidence that has been read, the rulings on evidence and other procedural issues, the oral evidence, the documents tendered and the final submissions of counsel. The extensive written submissions of counsel have been placed in a folder marked for identification 22 and will be retained with the papers. I will not endeavour to canvass all of that material or all of the arguments but will concentrate on making necessary findings and explaining why I have done so.
On 21 May 2004, Christopher John Barrington Simond (Simond), a representative of the applicants Seven Network (Operations) Limited and Channel Seven Sydney Pty Limited (together called ‘Seven’ as no distinction has been drawn between them in the course of the hearing), handed over a number of DV Pro tapes of cinematograph film (‘the Camera Tapes’ which include both the Single Tape Films and All Tape Films as defined in the Statement of Claim) to the third respondent, Brett Murray (Murray), who was a representative of the fourth respondent, D.A.R.E. Operations Pty Limited (DARE). The Camera Tapes were later utilised with the authority of DARE by the fifth and sixth respondents, Look Television Productions Pty Limited and Look Film Productions Pty Limited (together called ‘Look’ as no relevant distinction was drawn between them in the course of the hearing) to produce a documentary film of approximately one hour in length entitled ‘DARE-ing the Kokoda’ (the Look Documentary) in conjunction with the first respondent, TCN Channel Nine Pty Limited (Nine). It is proposed that the Look Documentary be screened over the ANZAC weekend on television channels associated with Nine and the second respondent, NBN Limited.
Seven claims that it is the owner of the Camera Tapes and the copyright in the content of them and that they were given to DARE on terms that would prevent the use of them in the manner which has occurred and is to occur. It is claimed, in substance, that the Camera Tapes could only be used for promotional purposes by DARE itself and not for the kind of commercial use by third parties that has occurred and is threatened. Seven also claims that it is entitled to the return of the Camera Tapes on demand. DARE’s case is that the Camera Tapes were given to it out and out without such terms and that they, and all rights inherent in them including copyright, became the property of DARE without restriction or limitation.
There is much that can be (and has been) said for both sides and my views have fluctuated. However, I am satisfied that, after the Camera Tapes were received on or about 21 May 2004 by DARE, it thereafter had all rights of property in the Camera Tapes including copyright without restriction as to what may done with them and, in particular, without restriction as to the copying that has taken place on the part of Look and the proposed broadcasting by Nine.
Seven also claims that its undisputed copyright in the film of a television program broadcast by it known as ‘DARE Kokoda’ (referred to in the pleadings as ‘the Selected Footage Film’) was breached by Look copying segments of it in making the Look Documentary. As will appear, I am not satisfied that that was the case.
The issues concerning the Camera Tapes largely turn upon what took place at a meeting on 11 February 2004 attended by nine of the witnesses. It is necessary to put that meeting into its context and to trace what occurred thereafter in assessing what took place at the meeting.
Some time ago Murray commenced activities using the name DARE, which stands for Discipline and Responsibility Encounter, to help young people from disadvantaged backgrounds pursue their goals and dreams. He developed various programs for this purpose, including camps for young people. I shall describe the activities as DARE regardless of the formal structure. The activity was often also described as Camp DARE. Those programs required resources which Murray did not have. He was heavily dependent upon sponsorship in money and kind, including the provision of volunteer services. In order to obtain sponsorship and such assistance, Murray sought media coverage of the activities of DARE. During 2003, Murray met Simond in that connection. Simond was a reporter for the Seven current affairs show ‘Today Tonight’, a half hour current affairs show screened each week night over the Seven network, which is one of the three major commercial free-to-air networks in New South Wales. It is in direct and fierce competition with Nine and its network and ‘Today Tonight’ is in direct competition with the Nine program ‘A Current Affair’.
As a result of that meeting, Simond arranged for a segment on a camp conducted by DARE for young people at Ulladulla to be broadcast on ‘Today Tonight’. By 16 September 2003 footage had been shot but the program had not gone to air. On that day Murray sent an email to Sonia Lear at Seven, she being connected to the ‘Today Tonight’ program. He said, inter alia:
‘Oh just wanted to ask, is it possible to get a copy of the footage shot at Camp DARE, I just want to put together a promo video to send out to high schools, Adam the camera man said he had 7 hours of footage, it would be a great help, I won’t tell anyone!’
Murray accepted in cross-examination that it was more than likely that the reason he said ‘I won’t tell anyone!’ was that he knew it was unusual to get access to raw footage. Murray had initially denied having sought raw footage from Seven prior to 11 February 2004, asserting that he had only asked for ‘stuff they had put to air’. When the inconsistency was pointed out, Murray was reluctant to concede it, relying upon his lack of knowledge at the time. The terms of the email are too precise to be explained in that way.
The program went to air prior to 9 October 2003, as on that date Murray emailed Simond and said, inter alia:
‘… oh the response to the story has been phenomenal. Thank you again.’
A follow up story was also broadcast.
Murray’s evidence was that all he received in response to his request of Seven for the footage was VHS copyies of the program as it went to air and that those copies were used by DARE for promotional purposes thereafter.
In the meantime, Murray had seen an article in the Sydney Daily Telegraph in which Punchbowl Boys’ High School was described as a ‘war zone’ due to student violence amongst its largely Muslim Lebanese population. Murray conceived the idea of taking students from that school to a real war zone, namely the Kokoda Track. He wanted to challenge the stereotype of those students and also show them what Australia stood for. He contacted the school Principal and obtained his consent and co-operation.
Murray introduced Simond to the idea virtually immediately. An email of 1 October 2003 to Simond titled ‘Dare on the Kokoda’ commenced:
‘Hi Chris, here is a brief about the idea I have for the Kokoda trail special for Anzac Day.’
After setting that idea out in some detail the email concluded:
‘This is the idea, hope you like it, the team of adults is ready to go, and with a committment from Channel Seven to do it as a special either on ANZAC DAY or the day before or even on the evening of ANZAC DAY, I can get the sponsorship needed to fund the whole thing, again we have the chance to dramatically impact the lives of 20 people, their families and their community, as well as a national audience can come on the journey with us and cherish the spirit of the ANZAC.
Let me know what the EP and you think.’
The EP is the executive producer of ‘Today Tonight’, Craig Donald McPherson (McPherson).
Simond says that he recommended to Murray that he contact Charles Lynn (Lynn), a Member of Parliament and an ex- soldier who had taken various expeditions on the Kokoda Track, to lead the expedition. Murray denies that he contacted and retained Lynn as a result of the suggestion made by Simond. I accept Simond on that point. An email of 9 October 2003 from Murray to Simond included the following:
‘Well I’ve followed your advice, I have contacted Charlie Lynn and he is super keen to help us out with the whole project of Camp DARE on the Kokoda, with setting up guides and routes to take on the track, historical information the whole bit.
He suggested we get together and see when is feasable to do it, we are looking at mid January to give us time to get a financial backer and also to give you guys time to select the right team for the job as the trail is extremely difficult and trying, you really want a camera man and sound man up to the challenge. I’m sure you know who would be great for it, I really would like it if you can come on the adventure with us as well as the presenter.
This will also allow channel seven enough time to follow up the 10 participants and then edit it ready for ANZAC DAY.
…
So, lots of info there. I think with the Kokoda special we can beat the effort Aca did back in ’96 with Angry Anderson, and the Kokoda trail they did, It’s still their highest rating program they ever did. Charlie has informed me as well, that this would be a great build up for 2005 which will mark the 60th anniversary of the Trail in war time.’The reply from Simond included the following:
‘… so quickly wanted to inform you that my EP is interested in the idea. While he wants to discuss it more before committing budget and resources he likes it sufficiently to say he’d consider two breaks on Today Tonight on Anzac Day, possibly 10–15 minutes of the programme .. Needless to say it’s a great starting point .. we’ll be talking.’
The reply from Murray to Simond included the following:
‘The 10 – 15 minutes sounds great as you said, a good starting point, but we really are looking for a 1 hour special, this will have so many spin off effects, especially with the 60th anniversary next year, we could do this one and announce a special for next year and be Johnny on the spot for it and get the jump on the other networks, even take up the same team to visit the track twelve months on.
I hope your EP sees the value historically, educationally, emmotionally for this story and the positive effect on the community.’
After several other emails, Simond emailed Murray on 4 December 2003 as follows:
‘Everything is looking good .. While Today Tonight is committed to ‘two breaks’ of 10–15 minutes, the concept is being lobbied elsewhere within Seven for further support. I spoke today to Peter Ritchie, who I know you’ve already spoken to, and he’s keen to lobby the head of Current Affairs and Programming once more to see if we can improve on our contribution timewise in a separate timeslot to TT around Anzac Day.
The key to everything is the cinematographer lady you mentioned. If she is keen to come and is available we need to talk to her immediately about our needs/her needs and the kind of costs likely to be incurred.
Can you provide me with the final dates of departure and return and the availability of the Punchbowl kids and their families for interviews prior to departure.
The wheels are moving .. look forward to talking to you. Tried to raise you on the mobile but it rang out .. talk to you Friday.
Best Wishes’Peter Ritchie was a non-executive director of Seven.
The reply of 5 December 2003 included the following:
‘Our Cinematographer is all set to go. Her name is Honie Rowley, she is currently on tour with Robbie Williams in NZ at the moment, but she is locked in. You can email her, [email protected]
…
As far as the parents being interviewed I’m not prepared to ask that question until we have the commitment from channel 7 in writing, simply because of the sensitive nature of the culture and the way they have been portrayed in the media.
…
We are now leaving for the Kokoda on March 1st and we have a deadline to be back by March 14th, simply because we needed more time for fitting of gear, securing more sponsorship and allow the kids more conditioning time.
It is all go now though, so contact Honie, she is happy for you to do that and the rest will be history, Pete Richie spoke to me yesterday and said he will be speaking to the powers that be to see if we can’t get more air time, but no promises, here’s hoping.’
Between 5 December and 18 December 2003, Simond submitted to Peter Meakin, Head of News and Current Affairs at Seven, Murray’s proposal that Seven make a stand alone documentary based upon the DARE Kokoda project, either in addition to or instead of a Today Tonight story. That proposal was rejected by Seven management.
That was communicated to Murray by email of 18 December 2003 as follows:
‘Unfortuneately management has knocked back the idea of a half hour special but Today Tonight is still keen to support the project with 2 breaks, approx 10 minutes, on or around Anzac Day next year, assuming we can confirm a few elements.
I tried to contact the camerawoman you suggested, Honie Rowley on [email protected] but as yet I haven’t heard back. We need to know exactly what she can do for us, what equipt she has etc.
Since she was going on the trek anyway, I presume our costs will be primarily in the area of tape stock but need to find out exactly what her interest/availability is. If She’s not available we need to discuss alternatives quickly.
We also need to confirm the availability of the participants, students from Punchbowl High and their parents for pre and post Kokoda interviews.
May I suggest in my holiday absence during January you keep in contact with our Supervising Producer, Frank Pangallo and Sonia Lear to progress things.
All the Best for Christmas and a trekking New Year.’
Murray replied on 19 December 2003 as follows:
‘Bit of a bummer about the management, doesn’t seem they know a good thing when they see it, oh well, we have 12 or 13 kids ready to go with us, we will be sorting out the final list from Jan 28th with the Principal Michael Glenday. So far all of the parents are happy to be interviewed as well, here’s a thought, you could film us when we go in to meet with the final 10 with some of the members of our team early Feb just as an intro & then go to their homes etc etc.
Have a great holiday, I’ll stay in touch with the guys you suggested as details emerge.
Cheers.’
On 27 January 2004 Murray emailed Simond as follows:
‘Sorry for interupting your holiday, hope you had a refreshing one. This is the itinerary that Charlie Lynn did for us. We will be following this itnerary as close as possible. Charlie is organising for our camera guy, Paul Croll and his sound man, Camp DARE will cover their food, accomodation, flights and kit out. Next week some time we will be going to Punchbowl Boys high and selecting the ten participants, with our DARE team and Charlie Lynn. We will need to meet early next week to go through the logistics and vision.
Any more info you need don’t hesitate to contact me,
Cheers’
By early February the proposed photographer, Honie Rowley, was unavailable as she had apparently broken her leg whilst skiing. Paul Croll and his sound person had been identified in the email of 27 January 2004. There is little evidence about Paul Croll but, by early February, Simond had decided that Stuart Leonard Shannon (Shannon) was the appropriate cameraman. He was at that time contracted to Seven on a month to month basis in the absence of a permanent employee. He was extremely physically fit and so able to cope with the rigours of the Track as well as being a professionally competent cameraman. Simond also identified a sound recorder, Matthew Barry Lynch (Lynch), who was also contracted to Seven at the same time. He regarded him as both an excellent sound recordist and as very physically fit. Both Shannon and Lynch agreed to accompany the expedition to the Kokoda Track.
By that time, preparation for the expedition was well advanced. Murray described the organisation of it as ‘intense work by me with the assistance of a number of volunteer workers’. That is a reasonable description. The 10 students had to be selected and the consent of parents obtained; there needed to be contact with the students and parents to obtain trust; team meetings between DARE volunteers and staff from the school were necessary; there were high and low ropes courses for team building with the students at Galston Gorge; an itinerary had to be developed; insurance cover arranged and financial and in kind support arranged to provide the participants with all the necessary equipment for the trek, together with fares, accommodation and food. The ultimate cost of the trip was estimated by Murray to have been in the vicinity of $150,000, some of which required cash outlay and some were donated goods or services. There had still been no formal confirmation of Seven’s involvement in the project. All dealings in regard to the project had been with Simond. A meeting was to be held with McPherson who, it was understood, did have the power to commit Seven.
On 29 January 2004 two supporters of DARE met with Murray in anticipation of the meeting with Seven. One was Kevin William Watt (Watt), a self-employed corporate consultant specialising in coaching managers and owners of small to medium sized enterprises on matters including business structures, human resources, development opportunities and professional services. His background is in manufacturing and distribution in both Australia and the United States. He met Murray by chance in late 2003 and, as a result, offered to assist DARE with management, financial and other commercial advice. His role was to assist the organisation in developing a commercial structure by which its funds and other assets could be managed and to introduce it to potential corporate sponsors.
The other, Ross Brian Townhill (Townhill), a certified practising accountant, was introduced to Murray by Watt, who was a business associate of Townhill. He agreed to donate his time and accounting expertise to Murray to assist him to formalise Camp DARE’s business structure and to introduce potential corporate sponsors to the organisation, in addition to donating a sum of money. On or about 23 January, Townhill had made a note in his handheld personal computer which read:
‘C 7 written commitment confirmation of DARE ownership of rights. Today Tonight. BM’
with a date 28 January. He says that that was advice he gave to Murray to put into effect.
The evidence of the participants is that there was discussion at that meeting about obtaining rights to the footage for DARE and, indeed, discussion about obtaining confirmation in writing on that point. Murray’s version is that Watt volunteered to take care of raising the rights issue. Townhill’s contemporary note on his handheld personal computer did not include that item but did include an item:
‘Channel 7 – verbal OK but need to go to air 1 hour – linchpin. BM follow up.’
I find that the priorities set by DARE for the meeting with Seven were:
(1)to receive a binding commitment from Seven to participate and put an item to air on ‘Today Tonight’ that was as long as possible.
(2)to arrange for a one hour special on the Kokoda expedition to go to air.
(3)to secure the Camera Tapes and the rights thereto for DARE.
The meeting took place on 11 February 2004 at McPherson’s office at Seven. The participants on Seven’s side were McPherson and Simond with Shannon and Lynch attending for part of the meeting. On the DARE side, the participants were Murray, Watt and Townhill plus two others. The first was Thomas Lee Aguilar, who is a youth worker and camp instructor with some years of experience in working with troubled youth and disadvantaged youths in Australia and the United States. He met Murray through the Christian City Church in Parramatta in late 2002 and commenced helping him with DARE in about May or June 2003. He was involved in the Ulladulla camp. He took a role in relation to the Kokoda project. He assisted with administration and planning and also agreed to personally undertake the trek. The other was Iain James Cook (Cook), a self-employed personal fitness trainer, with a particular focus on organising and running intensive fitness training camps known as ‘boot camps’ who provided those services to several organisations. Having heard of the work of DARE, he approached Murray and offered assistance and became involved. He also attended the Ulladulla camp. He became involved in assisting the planning for the Kokoda expedition. His role was to use his business contacts in the personal fitness industry to organise physical requirements of the expedition, such as camping equipment, footwear, clothing, back packs, food and other like items. He also agreed to take the trek himself.
The meeting on 11 February 2004 extended for more than an hour. On any view, McPherson committed Seven at that meeting to screening a piece on the Kokoda expedition on ‘Today Tonight’, although the length of the piece was undetermined. He also committed to sending Shannon and Lynch on the basis that all fares, accommodation and expenses including outfitting would be met by DARE. Murray raised the question of a one hour special documentary but McPherson made it clear that that would be a decision for others to make and that it would be made in the light of the footage which came back. I will return to this meeting later.
The evidence is that Seven’s practice was that raw footage or Camera Tapes would be erased and recycled as a matter of course once any program made from the tapes had gone to air.
Simond had various discussions with Shannon as to what should take place on the expedition so far as filming was concerned and prepared a brief, which he handed to Shannon and Lynch, with a copy to Murray, prior to departure.
The expedition took place between 1 March and 9 March 2004. Shannon recorded about 30 hours of film. Whilst Murray, Lynn and, no doubt, others contributed to decisions as to what would and would not be filmed, I am satisfied that Shannon made and executed the decisions. I am also satisfied that he endeavoured to comply with the brief he had received from Simond.
Shortly after return from Kokoda, the DV tapes, which contained the film shot on the expedition, were copied on to DV Pro tapes and delivered to Simond. The DV tapes were then erased and recycled in accordance with Seven’s practice. Shannon and Lynch billed Seven for their time and, in Shannon’s case, for the use of one camera of his. The remaining camera equipment was supplied by Seven, including the DV tapes.
Simond received the DV Pro tapes on or about 12 March 2004 and then spent approximately five working days playing all of those tapes in order to watch all of the footage. He also watched tapes of footage shot at:
(a)Punchbowl High School, by cameraman Alan Dent and sound recordist Dean Casciato;
(b)a farewell function at the Bankstown home of one of the student’s parents, by cameraman Shannon and sound recordist Lynch;
(c)the departure of the expedition group at Sydney Airport, shot by Shane Cameron and sound recordist Scott Mills on or about 1 March 2004; and
(d)the return of the group at Sydney Airport by cameraman Jason Hinsch and sound recordist Scott Mills.
The evidence is that Messrs Dent, Casciato, Cameron, Mills and Hinsch were contracted to, or employed by, Seven at the relevant time. Simond prepared a transcript and a shot list, logging all vision and sound on the Camera Tapes, which included the additional footage referred to. He eventually selected approximately 12 and a half minutes of the footage for the ‘Today Tonight’ story, and wrote a script for the story, for which he provided the voice-over.
The program was broadcast on 23 April 2004. Simond was the reporter. On 26 April 2004 a follow-up story was broadcast on ‘Today Tonight’ which showed World War II veterans meeting with the school boys who had gone on the Kokoda expedition.
D.A.R.E. Operations Pty Limited was incorporated on 12 March 2004 and D.A.R.E. International Pty Limited incorporated on 15 March 2004 and thereafter the companies conducted the activities of DARE. Murray is the managing director.
In early May, Murray contacted Simond and there was a discussion about the provision of tapes. Simond’s version of the conversation was that Murray had said:
‘Those tapes [the Camera Tapes from Kokoda] now that the story has gone to air we’d like to get our hands on those.’
and he said:
‘Not a problem.’
Murray also asked Simond whether there was a chance of getting VHS copies of the story that went to air on ‘Today Tonight’ for the boys who had gone on the trip and for the Camp DARE staff members, to which Simond replied:
‘I don’t see any problem with that. I’ll arrange to dub, transfer from our master tapes onto VHS, that story and we’ll be able to hand them over together with the camera tapes.’
Simond then said:
‘I think I told him how lucky I thought he was in getting hold of these tapes because in my experience it had never happened before that we had handed them over so obviously I said “Use them wisely”.’
Murray’s version in chief was that he had approached Simond in connection with a camp that he had planned on the Central Coast, inviting him to come and film it, that Simond was receptive and then Murray said:
‘… oh, by the way, this stuff has gone to air now, can we have the tapes’
The response by Simond being:
‘Yes, I will talk to Craig about it’.
In cross-examination, Murray accepted that he said to Simond in that conversation:
‘I want the tapes for a DVD to send out to potential sponsors’.
On or about 21 May 2004, Simond was at Soldier’s Point on the Central Coast during filming of the DARE camp. On that occasion, Simond handed all of the existing DVD Pro Camera Tapes and a number of VHS copies of the ‘Today Tonight’ story that went to air (the Selected Footage Film) to Murray. Murray’s evidence is that this took place after he had contacted Seven’s program developers as to a documentary without any conclusion. Murray’s version is that Simond called him over to his car and said:
‘My friend … I come bearing gifts’
and then handed him a box containing all the tapes. Murray said:
‘Man, I can’t believe you have given me these, well done, good luck.’
He did not recall Simond saying ‘use them wisely’ or words to that effect. Simond’s version is that there wasn’t a great deal of exchange – he said:
‘These are the tapes you’ve asked for, use them wisely, good luck.’
On or about 17 May, Murray had a conversation with Peter Faiman, who was a supporter of DARE and had been the Director of the film ‘Crocodile Dundee’. He was connected with Nine. Murray’s proposal for a documentary based upon the Kokoda expedition was discussed and Faiman put him in contact with Llewellyn Willis Davies (Davies), the Managing Director of Look who, he said, produced documentaries.
Murray then made contact with Davies. The conversation with Davies concerned the making of a documentary for television and occurred on the footing that Murray had possession of the Camera Tapes, as had the conversation with Faiman. Davies was favourable and suggested an approach to the ABC. Steps were taken immediately to initiate that contact. The date of the meeting between Murray and Davies is accurately placed at 19 May 2004, as that is supported by contemporaneous emails and diary entries. It follows that either the date of 21 May date for the Soldier’s Point meeting is incorrect or Murray was acting on the basis that he had the tapes ‘in the bag’.
Look went ahead and made a promotional video for DARE which included use of the Selected Footage Film. For this purpose, Murray obtained a more suitable Betacam version of the footage from Shannon, although it is unclear whether Shannon obtained that from Seven or created it himself from the VHS tape. By that stage Shannon was freelancing and gave assistance to Murray. The promotional video was shown to schools, Rotary Clubs, potential sponsors and the like.
Murray and Aguilar asserted to Davies that DARE had unrestricted rights to the Camera Tapes including copyright for all purposes. Aguilar, in answer to questions from Davies:
‘Does Channel Seven have any copyright ownership to the Kokoda footage? Is this owned TOTALLY by Camp DARE?’
said:
‘As far as the Kokoda goes, our agreement is that we own all the footage from the Kokoda outright. They only retain ownership until their segments have been aired. They gave us the tapes knowing we were going to use them for commercial purposes.’
Murray was aware of that reply.
By 5 July 2004, Davies had the view that the ABC had been given enough time and suggested approaching SBS or Seven. Murray’s response to that was as follows:
‘Great to hear from you. Channel 7 were the first to take us on board, spoke to Chris Simmond (reporter for Today Tonight), today about it, he said he would put it upstairs as he calls it, to express it to them, they have the documentary slot now on sunday nights so they may well be very interested.
I suppose we try them and SBS after that. Look forward to hearing from Tim as well, have to confirm dates by this Friday.’Murray’s version of the conversation with Simond was that he was chasing him up about the Soldier’s Point story, which had not by then gone to air. He then mentioned to him:
‘… well you know what about the doco. I mentioned to him that we had gone to the ABC about a doco and they were quite interested and mentioned to him the fact that they were looking at paying about $80,000 for it, a figure around that amount, and he said, oh fantastic you will finally be able to feed your wife and kids, and I said, yes, well let’s hope. I said well what about you guys, there’s nothing, we haven’t sorted anything out so what about you guys, do you want to do it and he said well all I can do is take it to the boys upstairs it’s a programming thing. I said okay no worries.’
Simond denies any mention of the ABC.
Nothing came of the approach to Seven and SBS were also unsuccessfully approached. That left Nine. Lauren Sidler from Nine exhibited an interest in the documentary in early September. This led to a commitment by Nine culminating in a licence agreement between Look and Nine, which was entered into in late December 2004. The consideration for the licence was $30,000. Davies estimates the cost of production was at least $25,000 and DARE was given a fee of about $2,000. Work on developing the documentary had progressed during late 2004. It was not until February 2005 that Davies converted the Camera Tapes into suitable format to be utilised and incorporated into the documentary. It was proposed to broadcast the documentary over the ANZAC weekend 2005.
On 21 March 2005 Simond noticed a program called ‘DARE-ing The Kokoda’ listed in a program guide and, on the following day, drew it to the attention of McPherson. About the same time, McPherson saw a Nine promotion of that program on television and recognised shots that had been on the Selected Footage Film. He immediately rang Murray. His account of the conversation is as follows:
‘I said “Brett, what the fuck are you doing?” He said “What are you talking about?” I said “I’ve just seen a promo on Channel Nine with all our footage”. He said “Mate, I need to raise funds, I need the money”. I said “Brett, you can’t effing do that. The tapes are effing ours”. He said “Mate, I need the money”. I said “Mate, I hope you’ve got an effing amount of money to get yourself an effing good lawyer” and hung up on him.’
In cross-examination, McPherson agreed that Murray said:
‘But you said I could make a documentary with the tapes and you guys didn’t want it.’
Murray denied that McPherson had sworn at him but described him as quite abrupt. Murray denied saying:
‘We need funds. I need the money.’
I accept the gist of McPherson’s version.
The reply to the letters of demand from the solicitors for Seven by the solicitors for Nine alleged that the relevant copyright in the Camera Tapes was owned by Murray pursuant to an agreement with McPherson. It was said:
‘The relevant agreement was, we are instructed, between Craig McPherson on behalf of your client and Brett Murray pursuant to which Brett Murray agreed, amongst other things, to allow your client’s representatives access to Camp Dare for the purpose of filming a Today Tonight story provided that, in return for the payment of airfares, accommodation, kit and food for Craig McPherson and other representatives of your client by Brett Murray, that all right, title and interest in the unedited film shot by Craig McPherson would pass to Brett Murray. Chris Simmond, another Seven representative, in performance of this agreement by your client, delivered up to Brett Murray at Soldiers Beach on the Central Coast a box of that unedited footage. It is the unedited footage that forms the Nine program.’
It is now necessary to return to the meeting of 11 February 2004. Each of the nine participants has given evidence. There are differences between all of them as to what was said on the topic of the Camera Tapes. That is not surprising. The meeting lasted for more than an hour, covered many topics and took place more than a year ago. At least on the Seven side, none of the witnesses had occasion to recall the detail of the conversation until recently. I am not sure about the DARE side.
All participants, with the possible exception of Lynch and Shannon, cannot help but be influenced by what has occurred since the meeting. Simond and McPherson are faced with an arch rival broadcasting a well-publicised documentary using film taken by a Seven crew in circumstances where neither had authority to assign any copyright which might exist in Seven. Apart from the obvious potential problem with senior management, each, but particularly McPherson, would be embarrassed to think that he may have been bested in a commercial negotiation by people he would see as enthusiastic amateurs. Simond may also feel somewhat betrayed by the trust he perceived that he had placed in Murray. He had done his best to assist him at all times and there is no suggestion that the possibility of using the Camera Tapes to make a documentary to be broadcast by any commercial competitor of Seven was ever expressed prior to handing over of the tapes. He would be seen within Seven, and was, Murray’s champion.
On the other hand, DARE has expressly authorised Look and Nine to produce and broadcast the documentary on the basis that it had copyright in the Camera Tapes and that representation has been acted upon. If that is wrong, there would, no doubt, be adverse legal consequences and also great damage to the reputation of DARE and the individuals involved. More directly, the opportunity for powerful publicity for DARE will be lost if this case succeeds. Murray and Aguilar are clearly highly committed to the cause and would be inclined to place what they see as altruistic motives above purely commercial interests. Watt and Townhill are experienced in business although not particularly in relation to the media. Both are committed to the cause and would be anxious to secure whatever advantage there was for DARE. Cook was the least involved in what might be called the contractual side of things.
Those least affected by personal considerations – Lynch and Shannon – were not present for the whole of the meeting and also had the least interest in the contractual details – they were technical crew. Further, Shannon is friendly with Simond.
I shall not burden these reasons by setting out the various versions of the witnesses given in examination and cross-examination or with all of the points going to credit. That has been done in detail in the written submissions. It is not possible to recreate a precise verbatim version of what occurred. The commercial context, what occurred before and after the meeting, my assessment of the witnesses and consideration of the detail of the evidence given as to the meeting satisfies me of certain matters relating to the Camera Tapes:
(1)That provision of the Camera Tapes by Seven to DARE was raised separately by Murray and by Watt.
(2)That the reason advanced by Murray for the request was use by DARE of the Camera Tapes for promotional purposes and there was no mention of any other particular proposed use. I am not satisfied that there was an express reference to any general discretion to use the Camera Tapes as DARE saw fit or that, if mentioned, it was heard, understood or accepted by McPherson.
(3)That Watt raised the topic after Murray and that he referred in that context to DARE financing the expedition and paying all the expenses for Shannon and Lynch.
(4)That Watt referred to rights as well as the physical tapes. He had planned to do so in advance.
(5)That McPherson unequivocally committed Seven to providing the only copy of the Camera Tapes to DARE once whatever program or programs that Seven chose to broadcast had gone to air without any express limitation as to the use of the Camera Tapes by DARE.
In my view, McPherson was influenced to do as he did by:
(1)The unusual nature of the arrangement whereby Seven was only contributing the equivalent of wages and the use of equipment in obtaining film of an unusual, indeed exotic, and expensive overseas event with obvious television appeal with all other expenses to be met by DARE.
(2)The fact that as the Camera Tapes would be erased and recycled after any program had gone to air, there was no possibility of any further commercial exploitation by Seven of any copyright in the Camera Tapes thereafter.
(3)A desire to assist a good cause championed by Simond.
(4)As the reference by Murray to the use for promotional purposes did not ring any warning bells with him. I am satisfied that if the possibility of any part of the Camera Tapes being broadcast on Nine had been raised, it is likely that McPherson would not have agreed to that possibility.
The first issue to be considered is the ownership of copyright in the Camera Tapes on return from Kokoda. It was an unusual situation. Ownership of copyright in cinematograph films is dealt with by s 98 of the Copyright Act 1968 (Cth) (the Act) that is in the following terms:
‘98 Ownership of copyright in cinematograph films
(1) This section has effect subject to Parts VII and X.
(2) Subject to the next succeeding subsection, the maker of a cinematograph film is the owner of any copyright subsisting in the film by virtue of this Part.
(3) Where:
(a)a person makes, for valuable consideration, an agreement with another person for the making of a cinematograph film by the other person; and
(b)the film is made in pursuance of the agreement;
the first-mentioned person is, in the absence of any agreement to the contrary, the owner of any copyright subsisting in the film by virtue of this Part.’
Section 22(4) of the Act provides as follows:
‘For the purposes of this Act:
(a)a reference to the making of a cinematograph film shall be read as a reference to the doing of the things necessary for the production of the first copy of the film; and
(b)the maker of the cinematograph film is the person by whom the arrangements necessary for the making of the film were undertaken.’
The general view is that the effect of s 22(4) is that the producer of a film is the maker of it rather than, for example, the camera operator or the director (S Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information, LBC Information Services (looseleaf), Sydney, 1999-, par 5.45; cf H Laddie, P Prescott and M Vitoria, Modern Law of Copyright and Designs, 2nd edn, Butterworths, London, 1995, par 5.46; J Lahore, Copyright and Designs, Butterworths (looseleaf), Sydney, 1996-, par 20, 145). That does not help very much in these circumstances. It seems to me that here, the arrangements necessary for the making of the film were undertaken primarily by DARE, but that Seven also played a part. It was, in effect, a joint venture. In my opinion, these circumstances do not fit within s 98(3) of the Act. Copyright in the Camera Tapes was jointly held between DARE and Seven.
At that stage, Murray was DARE. The companies were incorporated shortly after. It can be taken that any rights held by Murray have been or will be assigned to one or other company. That is of little significance in this proceeding. Seven is the applicant. It is bound by the contractual arrangements. Each of Murray and the two companies are respondents. Seven cannot take any point about authorisation of Look and Nine by one or other of those parties.
The terms of the joint venture were settled at the meeting of 11 February 2004. One term was that the existing copy of the Camera Tapes would be given to DARE once the Seven program(s) had been broadcast in lieu of being destroyed as would otherwise occur. It may be accepted that, absent special provision, one joint owner cannot exploit copyright without the consent of the other (cf Prior v Sheldon (2000) 48 IPR 301 at 320). That is always subject to the contractual relations, as here, between the parties.
Counsel for Seven has referred to Cooper v Stephens [1895] 1 Ch 567, approved and followed in W Marshall & Co Ltd v AH Bull Ltd (1901) 85 LT 77, for the proposition that the outright sale of a chattel does not carry with it an assignment of copyright. The extent of the rights implied by sale of a chattel can be a vexed question in copyright and patent law (eg Beck v Montana Constructions Pty Ltd [1964–5] NSWR 229; (1963) 5 FLR 298; (1963) 80 WN (NSW) 1578; Interstate Parcel Express Co Pty Ltd v Time-Life International(Nederlands) BV (1977) 138 CLR 534; R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701; (1986) 84 FLR 232; De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99). Those authorities have little to do with joint copyright, particularly in circumstances where one of the joint holders has no continuing use for the subject matter of the copyright after a certain point in time.
The argument that there was no consideration for the obligation to transfer property in the Camera Tapes to DARE is misconceived. It was one term of a larger arrangement. Even looked at in isolation, the payment of all expenses for the camera crew is adequate consideration.
The statement on the part of DARE about the purpose for use being promotional was representational (and had an influence as such) rather than promissory. It was not a term or condition of the agreement to transfer title. Even if promissory, or a limitation, it is by no means clear to me that the broadcast of the documentary would not have borne that characterisation from the point of view of DARE.
Seven has not established its case concerning the Camera Tapes.
It remains to deal with the case on the Selected Footage Film. Seven’s case is that the overlap between the shots on the Selected Footage Film on the one hand, and the Look Documentary on the other, are too great to be co-incidence, and that there is a strong inference of copying. Davies expressly denied using the Selected Footage Film in any way in compiling the Look Documentary. He was not shaken in any significant way by cross-examination. I accept his evidence. I am satisfied that the films are so different in nature and structure as to render the Selected Footage Film of little value to an experienced maker of a one hour special documentary. For the same reason, subconscious copying is unlikely (cf Francis Day and Hunter Ltd v Bron [1963] Ch 587 at 614–5). It is not surprising that some highlights chosen for a relatively short current affairs film would be sufficiently newsworthy to be independently chosen for inclusion in a longer film.
A separate point was taken based upon a passage in the judgment of Gummow and Hayne JJ in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at [102]–[103]. It was submitted that the use by Look of the Selected Footage Film in making the promotional video when combined with use made of the promotional video in persuading Nine to agree to the licence, lead to the conclusion that the Look Documentary was made in circumstances involving the invasion of the legal or equitable rights of Seven or a breach of the obligation of the maker to Seven. It would be inequitable and against good conscience for Look to assert ownership of the copyright against Seven and to broadcast the film.
I disagree. If there were any breach of copyright in the Selected Footage Film in what was done by Look, it could be the subject of proceedings. There is no relevant link between any such conduct and broadcasting of the Look Documentary that could prevent the broadcast of that film.
My conclusion as to property in, and the rights inherent in, the Camera Tapes is an effective answer to all the other pleaded causes of action.
The proceeding is dismissed. Seven is to pay the costs of the respondents, save for costs of the day of 19 April 2005.
I certify that the preceding seventy (70) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.
Associate:
Dated: 22 April 2005
Counsel for the Applicants:
RG McHugh, PW Flynn
Solicitor for the Applicants:
Mallesons Stephen Jaques
Counsel for the Respondents:
BR McClintock SC, JM Hennessy
Solicitor for the Respondents:
Gilbert + Tobin
Dates of Hearing:
11–15, 18–19 April 2005
Date of Judgment:
21 April 2005
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