Top Plus Pty Ltd v Mix Entertainment Pty Ltd

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Federal Circuit and Family Court of Australia

(DIVISION 2)

Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FedCFamC2G 981

File number(s): BRG 1007 of 2019
Judgment of: JUDGE BAIRD
Date of judgment: 23 November 2022
Catchwords: COPYRIGHT – Infringement of copyright in protected cinematograph films – where cinematograph films played in karaoke venue operated by the respondents without licence – proceedings brought by copyright owner and exclusive licensee after previous agreement between exclusive licensee and first respondent expired – damages claimed on loss licence fee basis – no substantive participation by first respondent – no appearance by the second respondent – application in a case for summary judgment – infringement established by authorisation – application allowed – declarations – permanent injunctions – damages under s 115(2) of the Copyright Act 1968 (Cth) – additional damages under s 115(4) of the Copyright Act 1968 (Cth) awarded.
Legislation:

Copyright Act 1968 (Cth), ss 10, 36, 86, 98, 101, 115, 115A, 116, 119, 126, 131

Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 6.14, 9.03, 13.10, Pt 1 Schedule 2

Federal Circuit and Family Court of Australia Act 2021 (Cth) s 211

Federal Circuit Court of Australia Act 1999 (Cth), ss17A, 76, 83

Federal Circuit Court Rules 2001 (Cth), rr 6.14, 9.03, 13.07

Federal Court of Australia Act 1976 (Cth), s31A
Cases cited:

Australasian Performing Right Association Ltd v Commonwealth Bank of Australia (1992) 40 FCR 59; (1992) 25 IPR 157

Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300

Henley Arch v Del Monaco [2019] FCCA 3848

Phonographic Performance Company of Australia v Hairy Little Sista [2018] FCCA 2794

PositiveG Investments Pty Ltd as Trustee for the PositiveG Trust v Li [2020] FCCA 2548

University of New South Wales v Moorhouse (1975) 133 CLR 1
Division: Division 2 General Federal Law
Number of paragraphs: 125
Date of last submission/s: 2 October 2020
Date of hearing: Determined on the papers
Place: Sydney
Counsel for the Applicants Mr G Tsang
Solicitor for the Applicants Thomson Geer
Solicitor for the Respondents No appearance by, or on behalf of, the Respondents

ORDERS

BRG 1007 of 2019

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:

TOP PLUS PTY LTD (ACN 115 594 477)

First Applicant

UNIVERSAL MUSIC LIMITED

Second Applicant
AND:

MIX ENTERTAINMENT PTY LTD (ACN 145 963 542)

First Respondent

YIREN WANG

Second Respondent

order made by:

JUDGE BAIRD

DATE OF ORDER:

23 November 2022

THE COURT:

1.ORDERS summary judgment against the respondents pursuant to s 143 of the Federal Circuit and Family Court of Australia Act 2021 (FCFCOA Act) and r 13.10 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules). 

2.DECLARES that the respondents have infringed the second applicant’s copyright in the cinematograph films set out in Annexure A, each of which is identified in the Application in a Case for summary judgment dated 4 September…

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Details
Case
[2022] FedCFamC2G 981
Decision Date

CaseChat Overview and Summary

The case of Top Plus Pty Ltd v Mix Entertainment Pty Ltd was heard in the Federal Circuit and Family Court of Australia, with the primary dispute centering around alleged copyright infringement by Mix Entertainment of karaoke music videos (KMV Films) licensed by Top Plus. The applicants, Top Plus, sought summary judgment against the respondents, Mix Entertainment, for the alleged unauthorised use of the licensed KMV Films. The legal issues before the court revolved around whether Mix Entertainment had any reasonable prospect of successfully defending the claims of copyright infringement. The applicants argued that the respondents had no reasonable prospect of defending the claims, primarily due to the absence of a defence or counter-evidence to the detailed claims and supporting documentation provided by Top Plus.

The court examined the principles and provisions governing summary judgment, referencing relevant sections of the Federal Circuit and Family Court of Australia Act and Rules. It noted that the moving party (Top Plus) bore the onus of proving that Mix Entertainment had no reasonable prospects of success in defending the claims. The court found that Top Plus had adequately demonstrated the existence of facts supporting their claims through detailed affidavits, evidence of licensing agreements, and specific examples of infringement. Furthermore, the court considered the lack of a defence or counter-evidence from Mix Entertainment, concluding that there was no reasonable prospect of a successful defence. The court was also satisfied that Mix Entertainment had been duly served with all relevant documents and notices, ensuring they were aware of the proceedings and the claims against them.

Based on the evidence and arguments presented, the court granted the application for summary judgment in favor of Top Plus. It found that Mix Entertainment had no reasonable prospect of successfully defending the claims of copyright infringement. The court issued a declaration regarding the infringement of the specified KMV Films and granted final injunctive relief, including a catalogue order, against Mix Entertainment. This decision effectively prohibited Mix Entertainment from further using or distributing the copyrighted KMV Films without proper authorisation from Top Plus.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

I am also satisfied on the evidence of Marshall 2 that the Application and supporting affidavits each listed above (see [20]), the Claim, the Applicant’s written submissions dated 2 October 2020, and my orders dated 7 July 2020, 12 August 2020, and 8 September 2020, together with a further copy of the originating application, have been duly served on the respondents by express or registered post to the Premises, and also emailed to the email address provided in the Notice of Withdrawal. It follows that the respondents have been made aware of the Application and are on notice of the material relied upon (including the Spreadsheet of KMV Films, and the 10 Infringement Examples) and the arguments the applicants make for the relief sought, and that I will determine the matter on the papers. Applicants’ witnesses and overview of evidence Mr Chan is the managing director of Top Plus, and has 18 years’ experience in the operation and management of karaoke venues in Australia. Mr Chan gives evidence (including annexing or exhibiting documents and articles) of the following:(a)the features of KMVs;(b)the characteristics of modern karaoke systems and the distribution of KMVs;(c)the KMV Films (including exhibiting the catalogue of KMVs licensed to Top Plus in the form of the Spreadsheet that I discuss at [32]);(d)the Licence Agreements;(e)Top Plus’ licensing of karaoke outlets;(f)the 2012 Agreement and the dispute preceding it;(g)24 Letters of Demand (identified below) and accompanying standard licensing Information Kits published each year and sent by or on behalf of Top Plus after the expiration of the 2012 Agreement;(h)the licence fees nominated by Top Plus under its licensing regime for KMV Films to karaoke outlets over the Licence Period (published in the Information Kits); and (i)the instructions (including the Inspection Lists identified below) he gave to Ms Chow and Mr Wong to attend the Premises and collect evidence of infringement in the period from 2013 to 2019. In relation to the KMV Films, Mr Chan annexes a letter dated 6 August 2020 from Universal Music signed by Mr Duncan Wong, the managing director (Letter), which lists the relevant exclusive licence agreements between the applicants, and attaches a Spreadsheet listing the 6,214 KMV Films that he attests are and have been since their release the subject of the exclusive licence to Top Plus. For each itemised KMV Film, the spreadsheet lists in 9 columns: (i) its allocated reference code (Universal Music catalogue number), (ii) the song name (written in Chinese characters or English, as the case may be), (iii) the song name in ‘Pinyin English’ (that is, a transliteration of the Chinese characters of the song name into the Roman alphabet) and if an English song name, repeating that name in this column, (iv) the language of the KMV (Cantonese, Mandarin or English), (v) the version (stated variously to be concert, music video clip, ‘original’), (vi) the name of the singer (Chinese characters or English), (vii) the ‘Pinyin English’ name of the singer, (viii) the logo on the KMV, and (ix) the year and place of first publication.

Decision

Reasons for decision

In the Application, by way of summary judgment, the Applicants seek, inter alia, a declaration limited to the 10 Infringement Examples, and final injunctive relief by way of a catalogue order in relation to the KMV Films (referring to an itemised list of 6,214 KMV Films comprised in the Spreadsheet in evidence I identify and discuss further below). On a fair reading of the pleading and originating application I am satisfied that the term ‘UML works’ as used in those documents and the list of KMVs particularised to Claim [5] are the KMV Films comprised in the Spreadsheet (identified at [32] of these reasons below). Relevant provisions & principles for summary judgment Section 143 of the FCFCOA Act is in the same terms as formerly provided in s 17A of the FCCA Act. Section 143 of the FCFCOA Act provides:(1)The Federal Circuit and Family Court of Australia (Division 2) may give judgment for one party against another in relation to the whole or any part of a proceeding if:(a)the first party is prosecuting the proceeding or that part of the proceeding; and (b)the Court is satisfied that the other party has no reasonable prospect of successfully defending the proceeding or that part of the proceeding....(3)For the purpose of this section, a defence or a proceeding or part of a proceeding need not be:(a)hopeless; or (b)bound to fail; for it to have no reasonable prospect of success. Rule 13.10 of the GFL Rules provides:(1)This rule applies if, in a proceeding:(a)in relation to the whole or part of a party’s claim there is evidence of thefacts on which the claim or part is based; and(b)either:(i)there is evidence given by a party or by some responsible personthat the opposing party has no answer to the claim or part; or(ii)the Court is satisfied that the opposing party has no reasonableprospect of successfully defending the claim or part.(2)The Court may give judgment on that claim or part and make any orders ordirections that the Court considers appropriate. Rules 13.10(1) and (2) of the GFL Rules (formerly 13.07(1) and (2) of the Rules) read together provide relevantly that if in a proceeding there is evidence of the facts on which the claim is based, and either: (i) there is evidence given by a party or by some responsible person that the opposing party has no answer to the claim; or (ii) the Court is satisfied that the opposing party has no reasonable prospects of defending the claim, then the Court may give judgment on that claim and may make any orders or directions that the Court considers appropriate. I set out the relevant principles applicable to summary judgment in PositiveG Investments Pty Ltd as Trustee for the PositiveG Trust v Li [2020] FCCA 2548 at [18] to [24]. It is convenient to set out what I said there:[18]The principles guiding the exercise of summary judgment have been set out in a number of cases, including in the Full Court of the Federal Court of Australia in Jefferson Ford Pty Limited v Ford Motor Company of Australia Limited [2008] FCAFC 60; (2008) 167 FCR 372 at [124] to [132], and, in this Court, conveniently summarised in, inter alia, Ritter & Ritter & Anor [2019] FCCA 782 at [4] to [13] by Judge Obradovic, and also by Judge Lucev in Ellis v Wadjemup Trading (No.3) [2018] FCCA 3075 at [2] to [11]. [19]Section 17A of the [FCCA Act] [now, s 143 of the FCFCOA Act] empowers the Court to give judgment for one party against another party, … in relation to any part of a proceeding if the Court is satisfied that, in this case, the Respondent party has no reasonable prospect of successfully defending the proceeding. [20]Although there is no defence filed in this proceeding [and nor, I interpose, in this proceeding], I note that section 17A(3) of the [FCCA Act] [now, s 143 of the FCFCOA Act] provides that a defence need not be hopeless or bound to fail for it to have no reasonable prospect of success. [21]The provisions of the Act are in the same terms as s.31A of the Federal Court of Australia Act 1976 (Cth), and the approach taken in cases concerned with that section are generally seen as apposite to s.17A of the [FCCA Act] [now, s 143 of the FCFCOA Act]. [22]In sum, these principles relevantly provide:(a)the test is less stringent than applicable under earlier regimes. The power to order summary judgment should, however, be exercised with caution; (b)the assessment of reasonable prospects involves identifying the pleaded cause of action, including the pleaded facts, and any supporting evidence together with the facts, if any, pleaded; (c)the moving party bears the onus of persuading the Court that the Respondent has no reasonable prospects of success; and (d)the exercise of the power requires a practical judgment by the Court as to whether, in this case, the Respondent, has more than a fanciful prospect of success. This may be a judgment of law or of fact or of mixed law and fact. [23]The concept of “no reasonable prospect of success” is a different concept to “no real prospect of success” and encompasses defences that need not be hopeless or bound to fail. The inquiry is directed to whether there is no reasonable prospect of defending the proceeding, not an inquiry directed to whether a certain concluded determination should be made that the defence would necessarily fail. [24]Further, in discerning whether a real issue of fact exists such as to preclude summary judgment, the Court must draw all reasonable inferences in favour of the non-moving party. I note also, in Jefferson Ford, Gordon J’s observation that the word “may” in “the Court may give summary judgment” is used in an empowering sense rather than as denoting the exercise of a discretion, c.f. Kowalski v MMAL Staff Superannuation Fund Pty Ltd [2009] FCAFC 117; (2009) 178 FCR 401 at [28]-[31]; Nichol v Discovery Africa Ltd; Van Den Bergh v Discovery Africa Ltd [2016] FCAFC 182; (2016) ALR 594. Respondents are aware of the proceeding and the Application

Ratio Decidendi

Legal Principle Established

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