Thomas v Arbitron T/As SA Video Warehouse No. DCCIV-97-380 Judgment No. D3757

[1998] SADC 3957

WILLIAM THOMAS v ARBITRON PTY LTD t/as SA VIDEO WAREHOUSE

Civil
Judge Lunn

The plaintiff sued the defendant in this Court for alleged infringement of his copyright in various video tapes.  The cause of action was based on the Commonwealth Copyright Act 1968 (“the Act”).

At the commencement of the trial I raised with both counsel the issue whether the District Court had jurisdiction to deal with infringement proceedings under the Act.  Regrettably the issue is not clear cut and there is no reported authority upon it.

Division 4A of Part V of the Act deals, inter alia, with jurisdiction.  Its relevant provisions are:

“s131A. The jurisdiction of the Supreme Court of a State or Territory in an action under this Part shall be exercised by a single Judge of the Court. .....

s131B(1). Subject to subsection (2) a decision of a Court of a State or Territory (however constituted) under this Part is final and conclusive.

(2)  An appeal lies from a decision of the Court of a State or Territory under this Part:

(a).... to the Federal Court of Australia; or

(b)... by special leave of the High Court, to the High Court.

s131C.  Jurisdiction is conferred on the Federal Court of Australia with respect to actions under this Part.”

Section 203 of the Act provides:

“Nothing in this Act authorises a State Court or a Court of a Territory to grant relief by way of injunction or account of profits if that Court would not, apart from this Act, have power to grant such relief.”

There is nothing in Division 4A or s203 which would in itself confer jurisdiction upon the District Court of South Australia.

Paragraph [349] of Part 23.1 of “The Laws of Australia” states:

“Original jurisdiction in respect of proceedings for infringement of copyright is conferred on State and Territory Supreme Courts and the Federal Court of Australia.”

By implication this would seem to mean that the District Court does not have original jurisdiction under the Act.  However, for the reasons following I consider that this statement of the law in “The Laws of Australia” is misleading in that the District Court does also have jurisdiction under the Act.

Section 51(xviii) of the Commonwealth Constitution confers power on the Commonwealth Parliament to make laws with respect to copyright. Section 76 of the Constitution enables the Commonwealth Parliament to make laws conferring original jurisdiction on the High Court of Australia in any matter arising under the Constitution, which by virtue of s51(xviii) includes copyright. No Act in fact confers such original jurisdiction on the High Court in copyright, but such jurisdiction can be conferred upon it by virtue of s76.

Section 39(2) of the Judiciary Act provides:

“The several Courts of the States shall within the limits of their several jurisdictions ...... be invested with Federal jurisdiction, in all matters in which the High Court has original jurisdiction or in which the original jurisdiction can be conferred upon it” (although subject to a number of exceptions which are not relevant here.)  

A Court of a State for the purposes of the Judiciary Act includes the District Court. Thus by virtue of s39(2) of the Judiciary Act the original jurisdiction which the Constitution provides can be given to the High Court in copyright is vested in the District Court as a Court of the State.

There is nothing in Division 2A of the Act which would impliedly exclude the operation of s39(2) of the Judiciary Act.  The references in s131B of the Act to “a Court of the State” are wide enough to include the District Court.  Section 203 of the Act envisages that jurisdiction under the Act may be invested in inferior Courts.  There is nothing in Division 2A to suggest that exclusive jurisdiction under the Act has been vested in the Federal Court or in the Federal Court and Supreme Courts.

This indirect vesting of jurisdiction under the Act in the District Court by virtue of s39(2) of the Judiciary Act is recognised in paragraph 240-3100 of “Halsburys Laws of Australia”, volume 15 and in McKeough & Stewart “Intellectual Property in Australia”, para 146.

For these reasons I ruled that the District Court did have jurisdiction to entertain the proceedings.  Shortly afterwards they settled.