Tomich v van der Voort
[2023] FedCFamC2G 769
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Tomich v van der Voort [2023] FedCFamC2G 769
File number(s): BRG 342 of 2022 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 24 August 2023 Catchwords: INTELLECTUAL PROPERTY – Copyright – hearing of claim for relief in relation to infringement of copyright in cinematograph film – no appearance by respondents – whether respondents properly served – respondents not properly served – proceeding stayed subject to applicant having liberty to apply to discharge stay if the respondents are served or if the applicant wishes to apply for an order for substituted service. Legislation: Copyright Act 1968 (Cth) ss 10(1), 13(1), 86, 101(1)
Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 1.06(3), 6.14
Federal Court Rules 2011 (Cth) Div 10.4, rr 10.43b, 10.49, Div 10.5
Cases cited: Commissioner of Taxation v Zeitouni [2013] FCA 1011
Laurie v Carroll (1957) 98 CLR 310
Division: General Number of paragraphs: 34 Date of hearing: 4 October 2022 Place: Sydney The Applicant: Appeared in person, by telephone The Respondents: No appearance by, or on behalf of, the respondents ORDERS
BRG 342 of 2022 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: CARL TOMICH
Applicant
AND: JORDY XANDER VAN DER VOORT
First Respondent
LORYN ELLIS MCLEOD
Second Respondent
order made by:
JUDGE MANOUSARIDIS
DATE OF ORDER:
24 August 2023
THE COURT ORDERS THAT:
1.Subject to orders 2 and 3, the proceeding is stayed.
2.Order 1 does not prevent the applicant from seeking to serve the application on the respondents in Australia, or outside Australia in accordance with Div 10.4 or Div 10.5 of Part 10 of the Federal Court Rules 2011 (Cth) (FC Rules).
3.The applicant have liberty to apply to discharge order 1 on any one of the following grounds:
(a)The applicant has served the application on either or both of the respondents in Australia.
(b)Either or both of the respondents is or are in Australia, and the applicant wishes to apply for an order for substituted service pursuant to r 6.14 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
(c)Either or both of the respondents is or are not in Australia, and the applicant has served the application, together with a completed Form 26A referred to in r 10.43B of the FC Rules, on either or both of the respondents in accordance with the rules governing the service of court documents that apply at the place at which either or both of the respondents is or are served.
(d)Either or both of the respondents is or are not in Australia, and the applicant wishes to apply for an order for substituted service under r 10.49 of the FC Rules.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
The applicant, Mr Tomich, a freelance film maker, claims that the respondents, Mr Jordy Xander van der Voort and his partner, Ms Loryn Ellis McLeod, infringed the copyright Mr Tomich owns in videos he filmed and edited that documented a yacht Mr van der Voort owned, and voyages taken on the yacht.
I begin by setting out the background out of which Mr Tomich’s claims arise. The background is based on affidavits Mr Tomich has filed but which have not been tested. For reasons that will appear later, the facts I state in these reasons that are based on the affidavits on which Mr Tomich relies, are not to be taken to constitute findings of the facts I state, but as facts I would find, if I were to accept Mr Tomich’s evidence.
BACKGROUND
In late 2020 or early 2021 Mr van der Voort, who is from the Netherlands, bought a sailing yacht known as the “Samara” (Yacht). In early 2021, Mr van der Voort was seeking to put together a small crew to help him transport the Yacht to Europe, and to document the experience as part of a documentary film. Mr van der Voort placed an online advertisement in which he said he was looking for someone with sailing and film making experience to help him transport the Yacht to Europe.
Mr Tomich read the advertisement, and viewed it as an opportunity to make a new documentary. Mr Tomich had previously worked on several documentaries of his own. On 16 January 2021, Mr Tomich responded to the advertisement by telephoning and having a conversation with Mr van der Voort. Mr van der Voort was eager to have Mr Tomich on board, because he said he would be able to “re-watch” his experience, and share it with his family.
In around June 2021 Mr Tomich, Ms Lori Jane Rinckens, Ms McLeod, and Mr van der Voort sailed the Yacht to the Low Isles in far north Queensland on three occasions. Mr Tomich created videos of the trips which, after editing, he shared with Mr van der Voort.
On 12 July 2021 Mr Tomich, Mr van der Voort, and Ms McLeod boarded the Yacht at Port Douglas, and commenced their intended journey to Europe. In the course of the journey from Port Douglas to Darwin, Mr Tomich filmed and edited a number of additional videos which he also shared with Mr van der Voort.
On 20 August 2021, when in Darwin, Mr Tomich left the Yacht; and all contact between Mr Tomich and Mr van der Voort ceased after 5 September 2021.
On 2 September 2021 Mr van der Voort posted, on a website known as “Patreon”, one of the videos Mr Tomich had filmed and edited. Mr van der Voort used the Patreon website to raise money from subscribers who wished to watch early previews of content that is shared via YouTube and other platforms. On 10 September 2021 Mr van der Voort posted on the Patreon website episode 15 of the videos Mr Tomich had created. Mr van der Voort did so without the consent of Mr Tomich, and after editing out the portion of the video that stated Mr Tomich was the creator of the video.
On 17 October 2021 Mr van der Voort posted on his Facebook page the following:
Hi guys,
Finally left the safe haven Australia. We are officially on our way back to Europe [sic]
First stop Indonesia. This season we are slowly heading to Raja Ampat, follow us to find out where to travel next, when the world opens … See more
This post contained a link to a YouTube video which featured an “intro video” Mr Tomich had created.
On 27 December 2021 Mr Tomich sent an email to “You Tube Copyright” in which Mr Tomich listed 14 links to You Tube containing episodes “EP14” – “EP27” respectively, being films Mr Tomich created and edited while on board the Yacht. Mr Tomich stated that the introductory scene of each video, which he filmed and created, has his image and voice; and, for that reason he did not want the videos to remain online. On 28 December 2021 YouTube complied with Mr Tomich’s request, and removed the videos.
On 14 January 2022 Mr Tomich, without legal representation, commenced a proceeding in this Court (Earlier Proceeding) against Mr van der Voort by filing an application in which he claimed, among other things, a “declaration that the applicant is the owner of the material”; and an “injunction restraining the respondent from using the material”. In that application Mr Tomich alleged as follows:
(a)Mr Tomich is a sole trader and sole director of a videography and media company trading under Carl Tomich and resident of Cairns, Australia.
(b)Mr van der Voort is a Dutch backpacker on a working holiday visa residing in Australia.
(c)On 15 November 2020 Mr van der Voort advertised a position on a sailing yacht to help document a journey in the form of a video or film, and also to help sail his boat from Port Douglas, Queensland to Europe in April 2021.
(d)On 16 January 2021 Mr Tomich entered into a “verbal agreement” with Mr van der Voort under which Mr Tomich would help Mr van der Voort to film and relocate the Yacht in exchange for a trip to Europe.
(e)On 13 June 2021 Mr Tomich and Mr van der Voort entered into a “verbal agreement” about “how future royalties and earning’s [sic] from [Mr Tomich’s] video and social media would be split”.
(f)On 16 June 2021 Mr Tomich created the first 10 videos that would be uploaded to YouTube on the channel named “LostSails”; Mr Van der Voort gave Mr Tomich the password to the YouTube channel to create and upload the videos.
(g)On 24 June 2021 Mr Tomich created and uploaded a second lot of 10 videos, and on 30 June 2021 a further 10 videos.
(h)On 16 August 2021 Mr van der Voort informed Mr Tomich that they would no longer be continuing the trip past Darwin until the next sailing season in 2022.
(i)Between 12 July and 28 August 2021 Mr Tomich continued to film, upload, and market weekly content, creating a further 10 videos.
(j)On 19 August 2021 Mr Tomich left the Yacht; and between 20 to 27 August 2021 Mr van der Voort changed the password of the LostSails You Tube channel, thus preventing Mr Tomich “from being able to make any changes”.
(k)On 4 October 2021 Mr van der Voort and Ms McLeod left Australia without informing Mr Tomich.
(l)On 16 October 2021, without Mr Tomich’s permission, Mr van der Voort posted a video online that featured an introduction video Mr Tomich had created.
(m)Between 16 October and 22 December 2021 Mr van der Voort, without Mr Tomich’s permission, “continued to post weekly videos using the 20 second introduction scene created by [Mr Tomich] with [his] face removed but still with the video footage created, edited and filmed by the” Mr Tomich.
In the section of the application headed “Important Notice to Respondent/s”, Mr van der Voort is said to have an address in the Netherlands. Mr Tomich purported to serve the application by email to a “gmail.com” address.
On or about 23 March 2023 Mr Tomich and Mr van der Voort agreed to settle that Earlier Proceeding on the terms contained in a document titled “Terms of Settlement” which both Mr Tomich and Mr Van der Voort signed (Settlement Agreement). Those terms included the following:
1.This is an agreement to settle any and all claims relating to the copyright breach for the video work created by Carl Phillip Tomich of an “introduction video” in all episodes publicly listed afterwards 14 - 27 on the YouTube channel YouTube.com/lostsails, and to the copyright ownership of material created by Carl of episodes 3 - 13.
2.This signed agreement will attest to the true owner and creator is Carl Phillip Tomich and the respondent Jordy Van Der Voort altered and publicly displayed content created by Carl in contravention to agreement.
3.The Applicant of the court case (carl Tomich) and the respondent (Jordy Van Der Voort) will in agreement not have any further use of the footage depicting Jordy or his partner Loryn Mcleod filmed by Carl during this time, nor will Jordy use or display any video’s or images of the applicant.
Mr Tomich discontinued the Earlier Proceeding on 25 March 2022.
On 13 June 2022 Mr van der Voort submitted to “BASCO Boating” an offer to sell the Yacht. “BASCO Boating” is the name of an online market for the sale and purchase of boats. Mr van der Voort’s submission contained a link to a YouTube video, which is one of the videos Mr Tomich had filmed and edited.
On 8 August 2022 Mr Tomich sent a document titled “Breach of Contract Notice” to Mr van der Voort in which he stated that Mr van der Voort had breached the Settlement Agreement. On the following day Mr Tomich sent an email to BASCO Boating in which he referred to the video “you have put up, regarding the sale of [the Yacht] for Jordy van der Voort”, and then stated that Mr van der Voort “does not own the right to the footage”. A person from the BASCO Boating Support section responded to Mr Tomich with an email on 18 August 2022 in which he stated that “we will be removing the copyrighted content”.
COURSE OF PROCEEDING
On 16 August 2022 Mr Tomich filed a fresh application, in which he made the following allegations:
(a)Mr Tomich is a sole trader and sole director of a videography and media company trading under Carl Tomich and resident of Cairns, Australia.
(b)Mr van der Voort is a Dutch backpacker on a working holiday visa residing in Australia.
(c)On 15 November 2020 Mr van der Voort advertised a position on a sailing yacht to help document a journey in the form of video or film, and also help sail his boat from Port Douglas, Queensland to Europe in the month of April 2021.
(d)In August 2021 Mr van der Voort asked Mr Tomich to leave the boat and then infringed Mr Tomich’s copyright.
(e)On 8 January 2021, Mr Tomich sent to Mr van der Voort a letter demanding that he “take down the unsolicited content, in which [Mr van der Voort] illegally and falsely claimed ownership of this material”.
In the section of the application headed “Important Notice to Respondent/s”, Mr van der Voort is said to have an address in the Netherlands, and also an address in Pyalong, Victoria.
The matter came before me on a first court date at 9:30 am on 14 September 2022. Mr Tomich appeared by telephone, but there was no appearance by the respondents. I ordered that the matter be listed for directions at 9:30 am on 30 September 2022. At the directions hearing on 9:30 am on 30 September 2022 Mr Tomich appeared but, again, there was no appearance by the respondents. I ordered that the matter be listed for hearing at 2:15 pm on 4 October 2022, and that, by 10:15 am on that day Mr Tomich file an affidavit of service.
At 2:15 pm on 4 October 2022 Mr Tomich appeared but, again, the respondents did not appear. I invited Mr Tomich to identify the affidavits on which he intended to rely. Mr Tomich identified, and I accordingly read, the following affidavits:
(a)the affidavits Mr Tomich made on 25 August 2022 and 30 September 2022 which he filed in this proceeding, and an affidavit he made on 24 February 2022 which he filed in the Earlier Proceeding;
(b)an affidavit made by Mr Bastien Eric Grion on 22 February 2022 filed in the Earlier Proceeding;
(c)an affidavit made by Ms Lori Jane Rinckens on 23 February 2022 filed in the Earlier Proceeding; and
(d)an affidavit made by Mr Evan on 22 February 2022 filed in the Earlier Proceeding.
I then heard brief submissions from Mr Tomich.
DETERMINATION
As should be apparent from what I have set out above, I have considered the material on which Mr Tomich relied at the hearing; and in the course of my doing so, two issues have arisen, one of which prevents me from granting to Mr Tomich the relief he seeks.
Service
The first relates to service. Mr Tomich has purported to serve the application on the respondents by sending the application to Mr van der Voort’s Gmail email address. If the evidence had suggested Mr van der Voort resided in Australia, I may have been minded to make an order under r 6.14 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules) dispensing with personal service of the application, and confirming that Mr Tomich’s sending the application by email would have constituted service. The evidence, however, strongly suggests that Mr van der Voort is a national of the Netherlands, and that he left Australia in around September 2022. In those circumstances, it would not be open to me to make an order under r 6.14 of the GFL Rules because that would subvert the rules that deal with the service of originating process on respondents who are not present in Australia.[1] The relevant rules are contained in Div 10.4 and Div 10.5 of Part 10 of the Federal Court Rules 2011 (Cth) (FC Rules).[2]
[1] See Laurie v Carroll (1957) 98 CLR 310. See also Commissioner of Taxation v Zeitouni [2013] FCA 1011, at [26],where Katzmann J said: “[T]here is a line of authority to the effect that where the person to be served is in a foreign country, it is inappropriate for a court to consider an order for substituted service unless an order has first been obtained for service outside Australia.”
[2] Which, under r 1.06(3) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth), apply to general federal law proceedings in the Federal Circuitand Family Court of Australia (Division 2)
The position in relation to Ms McLeod is less clear. The evidence suggests Ms McLeod is Mr van der Voort’s partner; and that she had left Australia on the Yacht together with Mr van der Voort. In these circumstances, I am not satisfied it would be open to me to make an order under r 6.14 of the GFL Rules in relation to Ms McLeod.
I am therefore not satisfied that the respondents have been served as required by the GFL Rules, or by Div 10.4 and Div 10.5 of Part 10 of the FC Rules; and, for that reason, it is not open to me to make any substantive order against either of the respondents.
Infringing activity in Australia
Although Mr Tomich does not identify by reference to the Copyright Act 1968 (Cth) (Copyright Act) the subject matter in which he claims to own copyright, it is clear that Mr Tomich claims that the videos he created each constitutes a “cinematograph film” within the meaning of s 10(1) of the Copyright Act; and the nature of the rights he claims in relation to those videos are the rights specified in s 86 of the Copyright Act, namely:
. . . the exclusive right to do all or any of the following acts:
(a) to make a copy of the film;
(b)to cause the film, in so far as it consists of visual images, to be seen in public, or, in so far as it consists of sounds, to be heard in public;
(c) to communicate the film to the public.
The word “communicate” is defined in s 10(1) to mean:
make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter, including a performance or live performance within the meaning of this Act.
The expression “to the public” is defined is 10(1) to mean “to the public within or outside Australia”.
Under s 101(1) of the Copyright Act, a copyright subsisting in a cinematograph film “is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright” (emphasis added). Under s 13(1) of the Copyright Act, the expression “act comprised in the copyright”, as it relates to, among other things, cinematograph films, is to be read as “any act that, under this Act, the owner of the copyright has the exclusive right to do”.
The act that Mr Tomich, in the application, appears to claim constituted an infringing act is Mr van der Voort’s submitting to BASCO Boating a link to one of the videos Mr Tomich created. The relevant alleged infringing act, therefore, appears to be either Mr van der Voort’s causing the video to be seen in public, or Mr van der Voort’s communicating the video to the public, that is, making the video available on line. For such act to constitute an infringement within the meaning of s 101(1) of the Copyright Act, however, it must occur in Australia.
The application, and the affidavits on which Mr Tomich relies, do not identify where Mr van der Voort carried out the act by which he caused BASCO Boating to publish the link to the video. It may be that Mr Tomich intends to claim that, by providing to BASCO Boating the link to Mr Tomich’s video, Mr van der Voort authorised BASCO Boating to communicate the video to the public, which includes the public in Australia.
FURTHER PROGRESS
The evidence suggests that it may be difficult for Mr Tomich to determine where the respondents reside. In those circumstances, the orders I make should provide for the possibility that Mr Tomich wishes to make enquiries to determine where the respondents may be served, and that he successfully serves the application on one or both of the respondents. This possibility will be accommodated by my making an order staying the proceeding, but subject to Mr Tomich being at liberty to attempt to serve the respondents, either in Australia or overseas, and to his being at liberty to apply to discharge the stay on any one of the following grounds:
(a)Mr Tomich has served the application on either or both of the respondents in Australia; or
(b)either or both of the respondents is or are in Australia, and Mr Tomich wishes to make an application for an order for substituted service pursuant to r 6.14 of the GFL Rules; or
(c)either or both of the respondents is or are not in Australia, and Mr Tomich has served the application, together with a completed Form 26A of the forms made under the FC Rules, on either or both of the respondents in accordance with the rules governing the service of court documents that apply at the place at which either or both of the respondents is or are served; or
(d)either or both of the respondents is or are not in Australia, and Mr Tomich wishes to apply for an order for substituted service under r 10.49 of the FC Rules, which provides:
If service on a person outside Australia, in accordance with a convention, the Hague Convention or the law of a foreign country, was not successful, a party may apply to the Court without notice for an order:
(a) substituting another method of service; or
(b)specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person;
(c) specifying that the document is taken to have been served:
(i) on the happening of a specified event; or
(ii) at the end of a specified time
I propose to make an order staying the proceeding subject to the conditions I have identified above.
I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 24 August 2023
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