Legal Research
Cases
Top Plus Pty Ltd v K Square Pty Ltd

Top Plus Pty Ltd v K Square Pty Ltd

Case [2009] FMCA 900 15 September 2009

Exclusive Licence

Injunction

Interlocutory Orders

Intellectual Property Law

Type to search within this case.

FEDERAL MAGISTRATES COURT OF AUSTRALIA

TOP PLUS PTY LTD & ORS v K SQUARE PTY LTD & ORS

[2009] FMCA 900

COPYRIGHT – Cinematograph film – infringement of copyright in karaoke videos over which applicant claims exclusive licence – where videos commissioned by record companies in Hong Kong and subject to the laws of that country – whether copyright assigned to the record companies purporting to grant exclusive licences – whether Australian law applies – Moçambique rule – whether Australian courts can determine ownership of intellectual property rights originating in another country – whether agreements between applicant and record companies granted exclusive licenses.

PRACTICE & PROCEDURE – Injunctions – interlocutory injunction – balance of convenience – delay in initiating proceedings and adequacy of undertakings as to damages considered.

Copyright Act 1968 (Cth), ss.86, 98, 115, 119, 126B

ABC v O’Neill (2006) 227 CLR 57
Tisand Pty Ltd v Owners of Ship MV “Cape Moreton”(Ex “Freya”) (2005) 219 ALR 48
Damberg v Damberg (2001) 52 NSWLR 492
National Auto Glass Supplies (Australia) Pty Limited v Nielsen and Moller Autoglass (NSW) Pty Limited (No 8) [2007] FCA 1625
British South Africa Co v Companhia de Moçambique [1893] AC 602
Pearce v Ove Arup Partnership Ltd [2000] Ch 403
TS Production LLC v Drew Pictures Pty Limited (2009) 252 ALR 1
Potter v Broken Hill Proprietary Company Limited (1906) 3 CLR 479
Def Lepp Music v Stuart Brown [1986] RPC 273
Tyburn Productions Ltd v Conan Doyle [1991] Ch 75
Commonwealth of Australia v John Fairfax & Sons Limited (1980) 147 CLR 39

Garnett, Davies and Harbottle, Copinger and Skone James on Copyright, 15th ed (2005)

First Applicant:

TOP PLUS PTY LTD (ACN 115 594 477)

Second Applicant:

GOLD TYPHOON ENTERTAINMENT LTD

Third Applicant:

EMPEROR ENTERTAINMENT (HONG KONG) LTD

Fourth Applicant:

UNIVERSAL MUSIC HONG KONG LTD

Fifth Applicant:

BMA RECORDS LTD

First Respondent:

K SQUARE PTY LTD (ACN 102 871 778)

Second Respondent:

EAST ASIA MUSIC (HOLDINGS) LTD

Third Respondent:

EAST ASIA RECORD PRODUCTION CO LTD

File Number:

SYG 1429 of 2009

Judgment of:

Raphael FM

Hearing date:

7 July, 17 – 18 August 2009

Date of Last Submission:

31 August 2009

Delivered at:

Sydney

Delivered on:

15 September 2009

REPRESENTATION

Counsel for the Applicant:

Mr H Bevan

Solicitors for the Applicant:

DLA Phillips Fox

Counsel for the Respondent:

Ms J Rawlings

Solicitors for the Respondent:

Pancific Legal

ORDERS

Application for interim injunction dismissed.
Parties to bring in short minutes of order reflecting the matters referred to in [44] of these reasons within seven days.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA AT
SYDNEY

SYG 1429 of 2009

TOP PLUS PTY LTD (ACN 115 594 477)

First Applicant

GOLD TYPHOON ENTERTAINMENT LTD

Second Applicant

EMPEROR ENTERTAINMENT (HONG KONG) LTD

Third Applicant

UNIVERSAL MUSIC HONG KONG LTD

Fourth Applicant

BMA RECORDS LTD

Fifth Applicant

And

K SQUARE PTY LTD (ACN 102 871 778)

First Respondent

EAST ASIA MUSIC (HOLDINGS) LTD

Second Respondent

EAST ASIA RECORD PRODUCTION CO LTD

Third Respondent

REASONS FOR JUDGMENT

Introduction

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.

Continue reading Top Plus Pty Ltd v K Square Pty Ltd

Details

AGLC: Top Plus Pty Ltd v K Square Pty Ltd [2009] FMCA 900
Case: [2009] FMCA 900
Decision Date: 15 September 2009

CaseChat Overview and Summary

Top Plus Pty Ltd initiated legal action against K Square Pty Ltd, seeking an injunction to prevent the alleged infringement of copyright in a series of karaoke videos. The dispute centred on whether the copyright in these videos, which were commissioned by record companies in Hong Kong, had been lawfully assigned to the record companies, thereby granting them exclusive licences. The application for an interlocutory injunction was heard in the Federal Court of Australia. The court was tasked with determining whether the copyright in these videos had indeed been assigned to the record companies and if Australian courts had the jurisdiction to decide on the ownership of intellectual property rights originating in another country. Additionally, the court had to consider whether the agreements between Top Plus and the record companies granted exclusive licences, and the balance of convenience in issuing an interlocutory injunction, taking into account the delay in initiating proceedings and the adequacy of the undertakings as to damages.

The court examined the applicable laws and the principle known as the Moçambique rule, which addresses the determination of intellectual property rights originating in another country. It assessed the arguments presented regarding the validity of the assignment of copyright and the exclusive licences granted. The court also weighed the factors relevant to the balance of convenience, including the delay in bringing the proceedings and the adequacy of the undertakings as to damages. After careful consideration, the court concluded that the copyright had not been validly assigned, and that the Moçambique rule did not support the assertion of Australian jurisdiction over the intellectual property rights. Consequently, the application for an interlocutory injunction was dismissed, and the parties were directed to bring in short minutes of order reflecting the matters referred to in [44] of these reasons within seven days.

Orders

Orders of the court

Application for interim injunction dismissed.

Parties to bring in short minutes of order reflecting the matters referred to in [44] of these reasons within seven days.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Citations

AGLC Citation

Top Plus Pty Ltd v K Square Pty Ltd [2009] FMCA 900

Most Recent Citation

Top Plus Pty Ltd and Ors v K Square Pty Ltd and Ors (No.2) [2010] FMCA 67

Cases citing this decision · 1 of 1 shown

Top Plus Pty Ltd and Ors v K Square Pty Ltd and Ors (No.2)
[2010] FMCA 67 Para 6

…a letter dated 19 December 2008 to K Square. That letter is reproduced in full at [8] of my judgment Top Plus Pty Ltd & Ors v K Square Pty Ltd & Ors [2009] FMCA 900. The letter explained that Phillips Fox were acting in negotiating and concluding the agreements. The letter continued: “Should you fail to enter int…

View all 1 citing cases →

Cases cited in this decision · 16 of 16 shown

TS Production LLC v Drew Pictures Pty Ltd
[2008] FCAFC 194

…ted (No 8) [2007] FCA 1625 British South Africa Co v Companhia de Moçambique [1893] AC 602 Pearce v Ove Arup Partnership Ltd [2000] Ch 403 TS Production LLC v Drew Pictures Pty Limited (2009) 252 ALR 1 Potter v Broken Hill Proprietary Company Limited (1906) 3 CLR 479 Def Lepp Music v Stuart Brown [1986] RPC 273 Tyburn Productions Ltd v Conan Doyle [1…
National Auto Glass Supplies (Australia) Pty Limited v Nielsen and Moller Autoglass (NSW) Pty Limited (No 8)
[2007] FCA 1625 Para 2

…similarity was considered by Graham J in National Auto Glass Supplies (Australia) Pty Limited v Nielsen and Moller Autoglass (NSW) Pty Limited (No 8) [2007] FCA 1625 and stated at [41]: “As I understand the relevant authorities, the general presumption that, in the absence of evidence to the contrary, foreign law…
Australian Broadcasting Corporation v O'Neill
[2006] HCA 46 Para 2

…l be an inadequate remedy; · The balance of convenience favours the granting of an injunction. See Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 at 81 [65] and 83 [71] per Gummow and Hayne JJ; with whom Gleeson CJ and Crennan J agreed (at 68 [19]); see also Australian Broadcasting Corporation v Len…
Neilson v Overseas Projects Corporation of Victoria Ltd
[2005] HCA 54 Para 2

…nce to the contrary, the law of Hong Kong is presumed to be the same as Australian law; Neilson v Overseas Projects Corporation of Victoria Limited (2005) 223 CLR 331.” Under s.98 of the Australian Copyright Act the copyright in the commissioned film belongs to the person commissioning the film: “Ownership of copyrig…
Tisand Pty Ltd v The Owners of the Ship MV Cape Moreton (Ex Freya)
[2005] FCAFC 68

…ABC v O’Neill (2006) 227 CLR 57 Tisand Pty Ltd v Owners of Ship MV “Cape Moreton” (Ex “Freya”) (2005) 219 ALR 48 Damberg v Damberg (2001) 52 NSWLR 492 National Auto Glass Supplies (Australia) Pty Limited v Nielsen and Moller Autoglass (NSW) Pty Limited (No 8) [2007] FCA 1625 British South Africa Co v Companhia de Mo…
Damberg v Damberg (No 2)
[2001] NSWCA 433

…ABC v O’Neill (2006) 227 CLR 57 Tisand Pty Ltd v Owners of Ship MV “Cape Moreton” (Ex “Freya”) (2005) 219 ALR 48 Damberg v Damberg (2001) 52 NSWLR 492 National Auto Glass Supplies (Australia) Pty Limited v Nielsen and Moller Autoglass (NSW) Pty Limited (No 8) [2007] FCA 1625 British South Africa Co v Companhia de Moça…
Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd
[2001] HCA 63 Para 2

…ow and Hayne JJ; with whom Gleeson CJ and Crennan J agreed (at 68 [19]); see also Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 217 [13] per Gleeson CJ, citing Mason A-CJ in Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153.”…
Tritech Technology Pty Ltd v Gordon
[2000] FCA 75 Para 4

…yright); Tyburn Productions Ltd v Conan Doyle (1990) 19 IPR 455 (patent, copyright and trade mark); Tritech Technology Pty Ltd v Gordon (2000) 48 IPR 52 (patent). But in Pearce v Ove Arup Partnership Ltd [2000] Ch 403 the Court of Appeal drew a distinction between actions involving the title to intellectual propert…
Castlemaine Tooheys Ltd v South Australia
[1986] HCA 58 Para 2

…oration v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 217 [13] per Gleeson CJ, citing Mason A-CJ in Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153.”…
Commonwealth v John Fairfax & Sons Ltd
[1980] HCA 44 Para 9

…the appropriate remedy for copyright infringement. They argues that damages are not adequate; Commonwealth of Australia v John Fairfax & Sons Limited (1980) 147 CLR 39 at [58] per Mason J. In ordinary circumstances I would be in full agreement with this submission. The infringement of copyright is the unlawful use o…
Norbert Steinhardt and Son Ltd v Meth
[1961] HCA 33 Para 6

…hich are also intangible rights in a limited and defined territory: see Potter v Broken Hill Proprietary Co Ltd [1905] VLR 612; (1906) 3 CLR 479: Norbert Steinhardt & Son Ltd v Meth (1960) 105 CLR 440. We doubt whether the Potter case, at least in the High Court of Australia, can properly be regarded as authority for the proposition that an…
Potter v Broken Hill Proprietary Co Ltd
[1906] HCA 88 Para 5

…purposes of its consideration. In particular the Court considered the decision of the High Court in Potter v Broken Hill Proprietary Company Limited (1906) 3 CLR 479 and expressed approval of the conclusions of O’Connor J at [515-6]: “… I am of opinion that the Supreme Court of Victoria could not try this case wit…
[1893] AC 602
[1893] AC 602 Para 4

…ect to Hong Kong law. This it argues is contrary to what is known as the “ Moçambique ” rule; British South Africa Co v Companhia de Moçambique [1893] AC 602. The scope of that rule was considered most recently in TS Production LLC v Drew Pictures Pty Limited [2009] 252 ALR 1 by a Full Bench of the Federal Court…
[1958] SCR 3
[1958] SCR 3 Para 1

…ee, in particular, the different approaches in Purdom v Pavey & Co (1896) 26 SCR 412; Hellens v Densmore [1957] SCR 768, 780; Gray v Kerslake [1958] SCR 3; The Ship `Mercury Bell' v Amosin (1986) 27 DLR (4 th ) 641; and Schnaider v Jaffe [1916] CPD 696, all referred to by Heydon JA in Damberg v Damberg .” I was…
[1957] SCR 768
[1957] SCR 768 Para 1

…will form part of the presumption. See, in particular, the different approaches in Purdom v Pavey & Co (1896) 26 SCR 412; Hellens v Densmore [1957] SCR 768, 780; Gray v Kerslake [1958] SCR 3; The Ship `Mercury Bell' v Amosin (1986) 27 DLR (4 th ) 641; and Schnaider v Jaffe [1916] CPD 696, all referred to by Heyd…
Purdom v Pavey & Co
(1896) 26 SCR 412 Para 1

…neral law' of the law of the forum, it will form part of the presumption. See, in particular, the different approaches in Purdom v Pavey & Co (1896) 26 SCR 412; Hellens v Densmore [1957] SCR 768, 780; Gray v Kerslake [1958] SCR 3; The Ship `Mercury Bell' v Amosin (1986) 27 DLR (4 th ) 641; and Schnaider v Jaffe [191…

Legislation cited in this decision · 3

Copyright Act 1968 (Cth)
115, 119, 126B, 86, 98 6 mentions (from Para 10)
Copyright Act 1956 c.74
1 mention (from Para 6)
NAIS v Minister for Immigration and Multicultural and Indigenous Affairs
1 mention (from Para 6)