Top Plus Pty Ltd v Mix Entertainment Pty Ltd
[2022] FedCFamC2G 981
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 2020.
3.ORDERS that the respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making copies of, communicating to the public, or causing or authorising to be seen or heard in public, any karaoke music video identified at Annexure CC‑3 of the Affidavit of Christopher Chan affirmed 2 September 2020 (KMV Films) without the licence of the first applicant or the second applicant.
4.ORDERS destruction upon oath of all copies of any KMV Films, and permanent deletion of all digital and electronic copies in the possession, power, custody or control of the respondents (or either of them) within 28 days after service upon them of this Order.
5.ORDERS pursuant to s 115(2) of the Copyright Act 1968 (Cth), that the respondents jointly and severally pay the first applicant damages in the sum of $179,616.70.
6.ORDERS pursuant to s 115(4) of the Copyright Act, that the respondents jointly and severally pay the first applicant additional damages in the sum of $90,000.00.
7.ORDERS the respondents pay the first applicant interest pursuant to s 211 of the Federal Circuit and Family Court of Australia Act 2021 (FCFCOA Act) in the amount of $29,175.41.
8.ORDERS the respondents pay the applicants’ costs in the sum of $11,841.00.
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
JUDGE BAIRD
Introduction
The applicants seek summary judgment against the first respondent, Mix Entertainment Pty Ltd, and the second respondent, Mr Yiren Wang, for infringement under ss 115 and 116 of the Copyright Act 1968 (Cth) of copyright in certain cinematograph films owned by the second applicant, Universal Music Limited, and exclusively licensed to the first applicant, Top Plus Pty Ltd. The cinematograph films in issue are karaoke music videos (KMVs). They comprise some 6,214 Chinese (both Mandarin and Cantonese) and English KMVs, and new releases of KMVs added from time to time, owned and controlled by Universal Music, released in Hong Kong and Australia, and/or supplied commercially in Australia in VCD/DVD format or electronic form (collectively, the KMV Films).
The parties have some history regarding Mix Entertainment’s alleged unlicensed use of copyright in the KMV Films in infringement of applicants’ rights. That earlier dispute was resolved in 2012 prior to the commencement of suit by entry into a written non‑exclusive licence agreement between Top Plus and Mix Entertainment, signed by Mr Wang in his capacity as sole director of Mix Entertainment on 30 April 2012 (2012 Agreement). Pursuant to the 2012 Agreement, Top Plus permitted Mix Entertainment to offer the licensed content – the KMV Films – for viewing and singing by customers in up to 13 rooms at Mix Entertainment’s karaoke outlet ‘Mix Karaoke’ (which I define below as the Premises) for the period of the licence. The 2012 Agreement expired on 31 December 2012.
The proceeding
The applicants commenced this proceeding on 21 November 2019 by originating application and statement of claim both dated 19 November 2019. The applicants rely on the Amended Statement of Claim filed 4 September 2020, amended pursuant to orders made by me on 7 July 2020 and 12 August 2020. They allege that following the expiration of the 2012 Agreement, Mix Entertainment has continued to provide and to offer to provide the KMV Films to its customers to copy, communicate and perform in public at the Premises without a licence or payment of any licence fee thereby infringing copyright and Top Plus’ rights as exclusive licensee, including the right to collect the associated licence fees.
I interpose here that whilst the applicants plead (at Claim [13]‑[15]) that Mix Entertainment’s conduct was unlicensed since at least 10 January 2011, they also plead reliance on the 2012 Agreement, and the applicants’ counsel, Mr Tsang, in his submissions acknowledges that the claimed infringement period commences after the expiration of the 2012 Agreement (as it must by reason of s 134 of the Copyright Act, in any event).
The applicants and the subject matter
Universal Music is a company incorporated under the laws of Hong Kong and based in Hong Kong. Universal Music is engaged in the creation of KMVs and licensing the copying, communication and public performance of KMVs, including in Australia. As I have said above, it owns and controls the KMV Films. Universal Music uses the name “Universal Music Hong Kong” to differentiate itself from other companies within the Universal group of companies. The evidence establishes specifically that Universal Music has used the name together with the Logos (described later in these reasons) on the 10 KMV Films the subject of the investigatory evidence adduced on the Application before me. As I expand upon later in these reasons, those 10 KMV Films are relied upon by the applicants as specific examples of the respondents’ infringing conduct, and form part of what for convenience I refer to as the Infringement Examples.
Universal Music has conveyed certain exclusive rights in the KMV Films to Top Plus under a number of written Licence Agreements. The Licence Agreements allow Top Plus to sublicense the use of copyright in the KMV Films in karaoke outlets in Australia and New Zealand. The Licence Agreements before me cover the period from 10 March 2006 to 31 December 2020 (Licence Period).
Top Plus carries on the business of licensing the copying, communication and public performance of KMVs including, pursuant to its exclusive licence, the KMV Films in Australia. Further to its exclusive rights with respect to the copyright in the KMV Films, Top Plus sublicenses its rights in the KMV Films non‑exclusively to ‘karaoke outlets’ under written licence agreements pursuant to a licence fee calculated per room or per day. That is, Top Plus’ licensing regime to karaoke outlets does not comprise a licence per film.
Karaoke outlets are commercial venues dedicated to providing karaoke, which is the entertainment of viewing and singing to a karaoke machine, for customers. A karaoke machine is a music system such as a video‑on‑demand system, which plays simultaneously a video clip of a song with subtitled lyrics and the backing tape of the song, and is equipped with microphones for the use of persons to sing along with. Karaoke outlets are often karaoke bars, or karaoke restaurants.
The respondents
Mix Entertainment is the proprietor of ‘Mix Karaoke’, a karaoke outlet operating in Queensland, Australia located at Shop 4, 21 Farne Street, Sunnybank Hills, 4109 (the Premises). According to the Australian Securities and Investments Commission (ASIC) records in evidence before me, the Premises are both Mix Entertainment’s registered office and its principal place of business. On the evidence before me, at the relevant times Mix Entertainment had 13 rooms at the Premises for hire in which it offered to provide, and provided, to its customers KMVs for their viewing and singing karaoke.
Mr Wang is the sole director and majority shareholder of Mix Entertainment. According to the evidence before me, Mr Wang owns 52.5 per cent of the shares in the company, and is one of five shareholders. As I have stated above, Mr Wang executed the 2012 Agreement as Mix Entertainment’s director.
In the applicants’ written submissions, Mr Tsang identifies the alleged “relevant infringement period” as 12 November 2013 to 11 November 2019 by reason of the date the proceeding was commenced. Counsel has correctly identified the limitation period set out under s 134(1) of the Copyright Act, namely, ‘an action shall not be brought for an infringement of copyright…after the expiration of six years from the time the infringement took place....’. It may be that the identified dates are simply typographical errors, as the proceeding in fact was commenced on 21 November 2019 by the filing of the originating application and statement of claim. Accordingly, the relevant Infringement Period the subject of this claim dates back to 22 November 2013 (6 years prior to filing on 21 November 2019). Infringements that have occurred since 2013 including continuing infringements after the commencement of the proceeding are encompassed within that period.
The respondents limited/non‑participation in the proceeding
Mix Entertainment was legally represented at the first directions hearing before me on 11 December 2019 and filed a notice of address for service that day. There was no appearance by, or on behalf of Mr Wang on this occasion, or any later occasion. Mr Wang has not participated in the proceeding at all.
On 11 December 2019, by consent between the applicants and Mix Entertainment, a timetable for pleadings and any application for default or summary judgment with supporting evidence was ordered, including that by 10 January 2020 the applicants serve by hand on Mr Wang copies of the originating application, statement of claim and genuine steps statement, together with a copy of the order (collectively referred to as the Documents). The proceeding was listed for further case management on 3 March 2020.
On 20 February 2020, I made an order in Chambers by consent of the applicants and Mix Entertainment to extend time for the respondents to file a defence, response, and genuine steps statement, and for the applicants to file any application for default or summary judgment. No defence, response or evidence has been filed or served by the respondents in this proceeding.
On 9 April 2020, legal representatives for Mix Entertainment emailed to the Queensland Registry of the Court, the applicants, and to my Chambers a Notice of Withdrawal as Lawyer and enclosing a Notice of Intention to Withdraw as Lawyer in accordance with r 9.03 of the Federal Circuit Court Rules 2001 (Cth) (now r 9.03 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (GFL Rules)). As required by r 9.03(5), the Notice of Withdrawal set out the last known address for Mix Entertainment, which was the address of the Premises, and also specified an email address that appears on its face to be an email associated with Mr Wang, as it comprises his name and date of birth according to ASIC records for Mix Entertainment. Thereafter the applicants proceeded on the basis that the Notice of Withdrawal was effective from 9 April 2020. After prompting by the applicants the Notice of Withdrawal was filed by the legal representatives for Mix Entertainment on 9 September 2020.
At the case management conference on 14 April 2020, I made an order dispensing with service on Mr Wang, and for substituted service on Mix Entertainment pursuant to r 6.14 of the Rules (now r 6.14 of the GFL Rules) and referencing s 83(b) [sic] of the Federal Circuit Court of Australia Act 1999 (Cth) (FCCA Act). I was satisfied that Mix Entertainment had been served with the Documents, and that reasonable steps had been taken to serve Mr Wang with the Documents and that it was likely that the steps taken brought the Documents to his attention. There was no appearance by, or on behalf of, Mix Entertainment on this occasion, or any later occasion. Mix Entertainment has not participated in the proceeding since the legal representatives for Mix Entertainment served their Notice of Withdrawal.
On 7 July 2020, upon being satisfied that the respondents had been served with a copy of the order proposed, I made an order in Chambers for the applicants to file and serve any amended statement of claim, and extended the time for the filing of any application for summary judgment by 31 July 2020. I listed the matter for further case management on 13 August 2020.
On 12 August 2020, I made an order in Chambers further extending time for the applicants to file and serve any amended statement of claim and any application for summary judgment by 4 September 2020, and listed the matter for further case management on 16 September 2020. In the context of the events set out below at [21], this further case management conference was vacated.
Application for summary judgment
On 4 September 2020, the applicants filed an Application in a case for summary judgment pursuant to s 17A of the FCCA Act (now s 143 of the Federal Circuit and Family Court of Australia Act 2021 (FCFCOA Act)) and r 13.07 of the Rules (now r 13.10 of the GFL Rules).
In support of the Application, the applicants rely on the following:
(a)affidavit of Mr Christopher Chan affirmed 2 September 2020, and filed 4 September 2020, including annexures, and exhibit CC‑6;
(b)affidavit of Ms Tong Lai Ming affirmed 2 September 2020 and filed 4 September 2020;
(c)affidavit of Ms Carmen Chow sworn and filed 9 April 2020 (paragraph 2 only), including Annexure CC-1 (Chow 1);
(d)second affidavit of Ms Chow sworn 11 August 2020, filed 4 September 2020, including an annexure, and exhibit CCW‑2 (Chow 2);
(e)affidavit of Mr Hon Yin Wong affirmed 4 September 2020, including an annexure, and exhibit HYW‑2;
(f)affidavit of Mr Raymond Marshall affirmed and filed 2 October 2020, including annexures (Marshall 1); and
(g)affidavit of service of Mr Marshall affirmed and filed 9 October 2020, including annexures (Marshall 2).
On 8 September 2020, I made an order in Chambers giving effect to the applicants’ request to have the Application heard and determined on the papers.
Relief sought in the Application and concordance with pleadings
What I have defined as the KMV Films (see above at [1]) are defined in the Claim as ‘UML works’ and particularised in Claim [5] as a list of the KMVs to be provided on request or available for inspection at the applicants’ solicitors’ office. Particulars of alleged infringement are annexed to the Claim (particulars to Claim [14]) in the form of a schedule titled ‘Applicant’s Particulars’ which comprises lists of what appears to be a subset of the UML works alleged infringed in the years 2015 to 2019, with duplications - indicating multiple instances of infringements of some KMVs (473 instances in total). These particulars include some of the Infringement Examples (for the 2015‑2019 years).
In the originating application the applicants’ claim, among other relief, declarations of infringement of copyright in the UML works and an order that the respondents be permanently restrained from infringing copyright in any of the KMVs contained in the UML works.
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 the
facts on which the claim or part is based; and
(b)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 part; or
(ii)the Court is satisfied that the opposing party has no reasonable
prospect of successfully defending the claim or part.
(2)The Court may give judgment on that claim or part and make any orders or
directions 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
I am satisfied on the evidence before me that the respondents have been made aware of the proceeding, first, by the legal representation of Mix Entertainment to the time of the Notice of Withdrawal, and, subsequently, by service effected by solicitors for the applicants in compliance with the above orders.
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.
In substance, the Spreadsheet stands as the catalogue of the KMV Films. For convenience, on occasion I also refer to the spreadsheet as the catalogue where I consider it appropriate to distinguish between one or more KMV Films, and the entirety of the KMV Films owned and controlled by Universal Music and licensed to Top Plus.
Ms Tong is the finance director of Universal Music and has been employed in various roles at Universal Music since 1994. Ms Tong gives evidence of Universal Music’s uses of the name and the Logos (see further below at [48]‑[49]).
Ms Chow and Mr Wong have each undertaken investigative work for Top Plus relating to infringements of the KMV Films, since 2011 in Ms Chow’s case, and since 2017 in Mr Wang’s case. They each give evidence of their familiarity with each of KMVs, karaoke systems and karaoke outlets, the KMV Films and the subset of KMV Films listed in the Inspection Lists given to them by Mr Chan.
Ms Chow’s experience includes her ownership and involvement in karaoke outlets over 10 years, including as a licensee of Top Plus in South Australia in 2008‑2010. Ms Chow gives evidence of the steps she took to collect evidence of infringement in the period 2013 to 2016 (including some of the Footage). In Chow 2, she annexes the ASIC extract for Mix Entertainment.
Mr Wong’s experience includes as a keen karaoke enthusiast and attendee at karaoke outlets since the late 1990s, including at least 10 visits to Mix Karaoke (that is, the Premises) prior to undertaking infringement investigations of the respondents’ activities for Top Plus. Mr Wong gives evidence of the steps he took to collect evidence of infringement in the period 2017 to 2019 (including some of the Footage).
Mr Marshall, employed solicitor of Thomson Geer, solicitors for the applicants, gives evidence of correspondence between the solicitors for the applicants and the former solicitors for Mix Entertainment, and annexes pages inadvertently omitted from one of the Licence Agreements Mr Chan annexes (licence agreement between Top Plus and Universal Music dated 1 January 2017).
Overview of the applicants’ principal contentions on the Application
The applicants submit that the Court should be satisfied on the evidence and Copyright Act presumptions that there is evidence on which the Claim is based, and the respondents have no reasonable prospects of successfully defending the Claim. In sum, the applicants submit:
(a)the Court is to presume by reason of the presumptions set out under ss 126 and/or 131 of the Copyright Act that copyright subsists in the KMV Films and is owned by Universal Music;
(b)Top Plus has adduced evidence of the terms of its exclusive licences, which terms establish that it has at all material times been exclusive licensee of the rights otherwise conferred on Universal Music as the owner of copyright in cinematograph films under s 86 of the Copyright Act, relevantly, the KMV Films;
(c)the evidence before the Court is that since November 2013 the respondents have engaged in a commercial enterprise that invites members of the public to use the respondents’ facilities at the Premises for the specific purpose of causing cinematograph films, including one or more of the KMV Films (not limited to the Infringement Examples), to be performed in public and to be communicated to the public; and
(d)the evidence is that at all material times the respondents have not been licensed by Top Plus (and thus, nor by Universal Music) to use the KMV Films or, more specifically, to authorise their copying, performance and communication to the public.
Summary of conclusion
Pursuant to r 13.10(1) and (2) of the GFL Rules, and applying the principles I discuss above, for the reasons that follow I am satisfied that in the circumstances of this case and the evidence read on this Application, it is appropriate to order summary judgment. The affidavit evidence establishes the facts I set out in the below paragraphs, and I so find.
Discussion
KMVs are cinematograph films
Section 86 of the Copyright Act provides that the copyright owner of a cinematograph film has the exclusive right to:
(a)make a copy of the film;
(b)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; and
(c)to communicate the film to the public.
Section 10(1) of the Copyright Act provides:
“cinematograph film” means the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing:
(a)of being shown as a moving picture; or
(b)of being embodied in another article or thing by the use of which it can be so shown;
and includes the aggregate of the sounds embodied in a sound‑track associated with such visual images.
Section 10(1) of the Copyright Act also provides:
“communicate” means 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.
Whether or not a performance will be considered ‘in public’ is to be determined by reference to the context in which the performance occurs. Where the performance occurs as an adjunct to a commercial activity – such as, relevantly, the performance of KMVs in a karaoke outlet – it is likely to be regarded as ‘in public’: Australasian Performing Right Association Ltd v Commonwealth Bank of Australia (1992) 25 IPR 157 at 171.
I am satisfied on the evidence that the KMV Films are cinematograph films within the meaning of the Copyright Act. I am also satisfied on the evidence and for the reasons I expand upon below that the playing of KMVs on the video‑on‑demand systems at the Premises is the doing of the acts in copyright of copying, public performance and communication within the meaning of the Copyright Act.
Subsistence and ownership of copyright in the KMV Films
The applicants seek to rely on the presumption set out in s 126 of the Copyright Act; relevantly,
(a)first, that copyright is presumed to subsist in the subject matter to which the action relates if the respondents do not put the question of subsistence of copyright in issue; and
(b)secondly, where the subsistence of copyright is established then the plaintiff – in the present case, Universal Music – shall be presumed to be the owner of the copyright if it claims to be the owner of the copyright and the respondents do not put in issue the question of ownership of copyright in issue.
Further, and in the alternative, the applicants seek to rely on the presumption contained in s 131(1) of the Copyright Act; specifically, where the name of a person appears on copies of a cinematograph film as made available to the public in such a way as to imply that the person was the maker of the film … then that person is presumed to be the maker of the film and to have made the film in circumstances to which subsection 98(3) of the Copyright Act does not apply.
The applicants adduced evidence from Ms Tong that Universal Music uses the name Universal Music Hong Kong and with that name often uses the following Logos in its KMVs:
The above Logos both display Universal Music’s name, and add to it the words ‘Hong Kong’ as a means of distinguishing Universal Music from other companies in the broader Universal group of companies. Each of the 10 KMV Films comprised within the Infringement Examples display one of the above Logos.
The respondents have not participated in any substantive part of the proceeding, nor appeared or filed any documents to bring into issue the subsistence of copyright in the KMV Films. Accordingly, I am satisfied that the presumption in s 126 of the Copyright Act applies: copyright subsists in each of the cinematograph films comprising the KMV Films and Universal Music owns the copyright in the KMV Films. I note that this is the approach I adopted in Phonographic Performance Company of Australia v Hairy Little Sista [2018] FCCA 2794 at [15]‑[16].
Although I do not consider it necessary to find given my conclusion in the preceding paragraph, I am also satisfied on the evidence before me that the 10 KMV Films comprised within the Infringement Examples each display Universal Music’s name by use of one or other of the above Logos, and thus the presumption under s 131(1) of the Copyright Act applies: Universal Music owns copyright in those KMV Films.
Licence Agreements
The applicants submit that the Licence Agreements between Universal Music and Top Plus establish Top Plus’ rights as exclusive licensee to copyright in the KMV Films.
Clause 2 of each of the Licence Agreements sets out the scope of rights granted from Universal Music to Top Plus. It provides as follows (adopting the emphasis given by applicants in their submissions):
2SCOPE OF RIGHTS GRANTED
Upon the terms and conditions set forth in this Agreement, [Universal Music] grants to [Top Plus], during the Term and Territory, the exclusive rights as set forth in this Section 2.
(a)The right to reproduce and use authorize reproduction and usage of the Licensed Contents (and copies thereof) in the authorized Outlets via the Karaoke System therein, including:
(i)...
(ii)where technically feasible and available, the right to authorize encoding and inclusion of the Licensed Contents in the computerized Karaoke System in the authorized Outlets (if necessary) and the right to allow transmission of the Licensed Content to the boxes/screens/television‑sets connected to such system in those Outlets for Karaoke Performances therein; in sum, [Universal Music] grants to [Top Plus] exclusively the right to copy and reproduce (including switching media (i.e. copying information from a disc to a hard drive)) any and all copyrighted songs, images or video which are included in the Licensed Content in the computerized Karaoke System of the authorized Outlets.
(b)The rights to collect fees relating to karaoke Performances and relevant licence fees from the Outlets with respect to the usage and/or exploitation of the Licensed Contents via the karaoke System therein.
(c)...
(d)The right to sub-license the rights as specified in Sections 2(a) to 2(c) above to its affiliates, and authorized Outlets in the Territory save that the duties and obligations of [Top Plus] shall remain unaffected …
In the relevant periods, clause 1 of each of the Licence Agreements defines the terms ‘Karaoke Systems’, ‘Karaoke Performance’, ‘Licensed Contents’, and ‘Outlet’ that are used in clause 2 relevantly as follows:
…
(b)“Karaoke Systems” means the closed end karaoke system set up and maintained in each Outlet for the purpose of karaoke singing and performances therein.
(c)“Karaoke Performance” means singing and performing the Licensed Contents by customers of the Outlets.
(d)“Licensed Contents” means the karaoke version of the music videos, no[t] limit[ed] to concert version of karaoke (mainly performed in Mandarin and Cantonese) as owned and/or controlled, and released by the [Universal Music] and its subsidiaries in Hong Kong and as determined by the [Universal Music] from time to time throughout the Term.
...
(f)“Outlet” means a physical commercial premise/venue in the Territory that operates and/or offers karaoke singing services to the public via Karaoke System(s) therein, such as a KTV, a karaoke bar, a pub and a restaurant, as permitted by legal license.
I am satisfied for the purposes of summary judgment that the definition of ‘Licensed Contents’ can sensibly be understood as defining the KMV Films, which fall within the definition of cinematograph films under s 10(1) of the Copyright Act.
The applicants submit, and for the purposes of summary judgment I accept, that the Letter and the Spreadsheet provide confirmation that the KMV Films were, at all material times, the subject of the Licence Agreements.
The applicants submit, and for the purposes of summary judgment I am satisfied, that pursuant to clause 2 of each of the Licence Agreements, Top Plus was granted the exclusive rights to do the following and to sub‑license the doing of the following:
(a)make copies of the KMV Films in karaoke systems used by karaoke outlets;
(b)cause the KMV Films to be seen and heard in public. In this regard, the right to ‘use’ the Licensed Contents in karaoke outlets via karaoke systems can be sensibly characterised as engaging the performance right within the meaning in s 86 of the Copyright Act; and
(c)communicate the KMV Films to the public. In particular, clause 2(a)(ii) refers to the right to allow transmission of the Licensed Contents to the screens and television-sets connected to the karaoke systems in the karaoke outlets and, as I have noted above, the communication right in s 86 of the Copyright Act includes the right to ‘electronically transmit’ the cinematograph film to the public.
Top Plus is exclusive licensee
Top Plus submits that the Licence Agreements, the Letter and the spreadsheet establish it is the exclusive licensee in copyright of the KMV Films and accordingly it has the benefit of s 119 of the Copyright Act. Section 119 of the Copyright Act provides:
Subject to the succeeding sections of this Division:
(a)except against the owner of the copyright, the exclusive licensee has the same rights of action as he or she would have, and is entitled to the same remedies as he or she would be entitled to, by virtue of section 115 or 115A if the licence had been an assignment, and those rights and remedies are concurrent with the rights and remedies of the owner of the copyright under that section;
(b)except against the owner of the copyright, the exclusive licensee has the same rights of action as he or she would have, and is entitled to the same remedies as he or she would be entitled to, by virtue of section 116 if the licence had been an assignment; and
(c)the owner of the copyright does not have any rights of action that he or she would not have, and is not entitled to any remedies that he or she would not be entitled to, by virtue of section 116 if the licence had been an assignment.
I accept the applicants’ submission that the KMV Films are and were in the Infringement Period the subject of the Licence Agreements, and that they are shown to be at all material times exclusively licensed to Top Plus for the territory of Australia. I am satisfied that the Licence Agreements conferred on Top Plus the exclusive right in respect of the KMV Films arising under s 86 of the Copyright Act. Accordingly, pursuant to s 119 of the Copyright Act, Top Plus has the same rights of action conferred on Universal Music as the copyright owner under ss 115, 115A and 116 of the Copyright Act.
Copyright infringement
Section 101(1) of the Copyright Act provides:
(1)Subject to this Act, a copyright subsisting by virtue of this Part 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 authorizes the doing in Australia of, any act comprised in the copyright.
Following the expiration of the 2012 Agreement (see above at [2]), Mix Entertainment has not entered into any subsequent licence agreement with Top Plus. There is no evidence before me to suggest that Mix Entertainment has performed either of the requirements set out in clause 16 of the 2012 Agreement: on the expiration of the licence to either (at the option of Top Plus):
16.1.1[r]eturn all licensed content and all related materials, including copies (if any) and permanently delete or destroy any further copies or related materials which may have remained (if any) to the absolute satisfaction of Top Plus; or
16.1.2[d]estroy all licensed content and all related material including copies thereof under supervision of Top Plus to its absolute satisfaction and file a written statement that it has done so.
To the contrary, Top Plus’ evidence is that Mix Entertainment has not fulfilled the requirements of clause 16.1.1 or 16.1.2, and further, as I set out below, there is evidence of its subsequent exploitation of copyright in the 10 KMV Films comprising the Infringement Examples.
Evidence of infringement
In each of the relevant years in the Infringement Period, Mr Chan, managing director of Top Plus, instructed either Ms Chow (in the period 2013‑2016) or Mr Wong (in the period 2017‑2019) (collectively, and individually Agent(s)) on behalf of Top Plus, to attend the Premises to ascertain whether Mix Entertainment was offering any of the KMV Films to its customers, and to collect evidence of such activities. The Agents conducted their investigations on each visit to the Premises with reference to an Inspection List prepared by Mr Chan, which comprised a select number of KMV Films, and included the Universal Music Code, the song name, and the name of the artist (that is, the performer) for each of the selected KMV Films. From time to time during the Infringement Period the Inspection List given to the Agents varied in their nomination of various of the KMV Films to check. Copies of the Inspection Lists for each of the relevant years in the Infringement Period are in evidence.
At the behest of Mr Chan, Ms Chow attended the Premises on the following dates:
(a)23 November 2013;
(b)14 November 2014;
(c)6 November 2015; and
(d)21 November 2016.
At the behest of Mr Chan, Mr Wong attended the Premises on the following dates:
(a)9 November 2017;
(b)21 December 2018; and
(c)7 October 2019.
On each of the above identified occasions, Ms Chow or Mr Wong (as identified above) attended the Premises for approximately 2 hours, observed the layout of the reception and entrance areas of the Premises, counted the number of karaoke rooms at the Premises, and confirmed the number of rooms counted with the receptionist. On each of the above occasions, they confirmed that there were 13 karaoke rooms for hire at the Premises. Following these steps, Ms Chow or Mr Wong (as the case may be) hired a karaoke room. Each of the rooms allocated to them on each of the identified occasions featured:
(a)a video‑on‑demand system through which a selection of karaoke music could be selected for play;
(b)a television screen on which a selection menu, and then the selected KMV was displayed by the video‑on‑demand system;
(c)a remote control which operated the video‑on‑demand system;
(d)amplifiers and speakers through which the audio accompaniment to the KMV was played; and
(e)microphones for a person to sing along to the KMV as it played.
On each of the identified occasions, through the video‑on‑demand system provided in the karaoke room they hired at the Premises, relevantly Ms Chow or Mr Wong by reference to the KMV Films listed in the Inspection List they had selected a series of one or more of the KMVs from those displayed on the system,. That is, they identified the KMV on offer by the song name and artist corresponding to a KMV Film detailed in the Inspection List. They played the selected KMV and took photographs or recorded video footage of that KMV as it played through the karaoke system. After each visit Ms Chow and Mr Wong provided the photo/video footage they obtained to Mr Chan. Ten items of that footage are in evidence, exhibited to their affidavits variously by Ms Chow or Mr Wong, and Mr Chan (collectively, the Footage).
Infringement Examples
Whilst the applicants seek final injunctive relief in respect of all the KMV Films, for the purposes of establishing infringement on this Application, the applicants rely specifically, and by way of example only, on the evidence of the 10 KMV Films and corresponding 10 items of Footage set out in Table 1 to these reasons (Infringement Examples).
The Inspection Lists used by Ms Chow and Mr Wong include the original song name of each of the nominated KMV Films, and where the song name is in Chinese characters also an ‘English Pinyin’ of the song name. There are three variations to the spelling of the English Pinyin for the KMV Film Code 9204161, see Table 1. ‘Hei Se Huan Mi’ is the English Pinyin transliteration used in Inspection List for 2015, a copy of which is attached to the Claim, and is the year Ms Chow obtained the Footage for that song, and gives evidence of infringement; ‘Hei Se Kuang Mi’ is the English Pinyin transliteration for the song name of the same KMV Film used in the Spreadsheet and the Inspection Lists for 2016, 2017, 2018, and 2019; ‘Hei Se Kuan Mi’ is the English Pinyin transliteration for the song name of the same KMV Film listed in the Application. In each document the other details specified for the KMV Film corresponding to code 9204161 are the same (noting that all documents specify at a minimum the code number, song name, artist in Chinese characters, English Pinyin and English). I consider that in each instance the evidence refers to the same KMV Film and the infringement evidence of that film comprised in the Footage, and that the variations in the spelling of the English Pinyin are immaterial.
To his affidavit, Mr Chan exhibits the following:
(a)a copy of the original version of each of the 10 KMV Films in the list of 10 Infringement Examples identified in Table 1;
(b)a copy of the Footage provided to Mr Chan by Ms Chow and Mr Wong for each of the occasions one or other of Ms Chow or Mr Wong attended the Premises to gather evidence of infringement, including the 10 items of Footage identified in Table 1. (As noted above, the evidence includes more than the 10 Infringement Examples listed in Table 1);
(c)screenshots provided to Mr Chan by the applicants’ solicitors presenting still images of the evidence in the preceding sub‑paragraph (b); and
(d)a copy of an excel document that lists the KMV Films copies of which are captured in the Footage.
I have been assisted by a side‑by‑side guide to the locations in the infringement evidence provided as part of the applicants’ submissions. The guide identifies each of the 10 Infringement Examples by reference to their individual Universal Music Code, includes detail of the KMV Film’s song name (with ‘English Pinyin’), the ‘original’ song name of the song, the artist, the location of the KMV Film in the spreadsheet, a pinpoint reference within the original version (i.e. KMV Film identified in paragraph [70(a)] above) where one of the Logos is displayed in the KMV Film, and the pinpoint reference within the Footage where the same Logo and visual image of the KMV Film is displayed (identified in paragraph [70(b)] above).
The items of Footage provided by Ms Chow from her visit to the Premises on 6 November 2015 and 21 November 2016 (both video recordings) identified in Table 1 do not include sound. There is no utility in those KMVs being offered to customers at a karaoke outlet unless they comprise audio‑visual content, and thus sound as well as visual images. Accordingly, I consider that it is reasonable to infer and I find that the KMVs recorded in the video recordings by Ms Chow on those visits were accompanied by the relevant soundtrack of the original KMV Films.
Conclusions on infringement – the Infringement Examples
For the reasons I have given above I am satisfied that copyright subsists in the 10 KMV Films of the Infringement Examples, that they are owned and controlled by Universal Music, they are listed in the Spreadsheet and they were exclusively licensed to Top Plus in the relevant period.
I am satisfied on the evidence discussed above that each of the 10 items of Footage identified in Table 1 evidences that a copy of the corresponding KMV Film was available to Mix Entertainment’s customers for their play on the identified occasion of the Agent’s visit to the Premises and infringed copyright by a substantial part of the identified KMV Film being:
(i)caused to be seen and heard in public; and
(ii)communicated to the public, by way of being electronically transmitted to the karaoke television screen of the video-on-demand system,
in contravention of the exclusive rights in copyright under ss 86(b) and 86(c) of the Copyright Act conferred on Universal Music, and exclusively licensed to Top Plus.
Letters of demand and notice of infringement
Mr Chan states that in the period 28 February 2013 to 6 December 2019, Top Plus attempted to notify Mix Entertainment of its alleged infringements by sending, or causing to be sent 24 letters of demand (Letters of Demand) to Mix Entertainment at the Premises, which sought to notify Mix Entertainment, inter alia, of their requirement to hold a licence from Top Plus. Mr Chan also states that the first letter in each calendar year enclosed a copy of the Information Kit for that year, a licence application form, and a fact sheet providing some brief information about copyright in Australia, all of which Mr Chan says were also published on Top Plus’ website on about 1 January of that year. The applicants never received any response to any of the Letters of Demand. They submit that the Letters of Demand put Mix Entertainment on notice of its alleged infringements and that the non‑responses evidence the respondents’ continuing infringement in contumelious disregard of the applicants’ rights.
The ASIC records for Mix Entertainment in evidence state that throughout the Infringement Period the address of Mix Entertainment’s Registered Office and Principal Place of Business were the same, namely the address of the Premises – Shop 4, 21 Farne Street, Sunnybank Hills QLD 4109 (emphasis added) (the correct address).
Upon inspection and examination of the Letters of Demand, however, I observe that 23 of the letters were addressed to an incorrect address: ‘Shop 4, 21 Fame Street, Sunnybank QLD 4109’ (emphasis added). That is, ‘Fame’ instead of ‘Farne’, and ‘Sunnybank’ instead of ‘Sunnybank Hills’. These 23 letters are dated: 28 February 2013; 1 May 2013; 1 July 2013; 5 January 2014; 1 March 2014; 1 May 2014; 14 May 2014; 4 January 2015; 1 March 2015; 1 May 2015; 3 January 2016; 1 March 2016; 1 May 2016; 3 January 2017; 1 March 2017; 1 May 2017; 3 January 2018; 1 March 2018; 1 May 2018; 3 January 2019; 1 March 2019; 1 May 2019; and 6 December 2019. Of these 23 letters, 22 were sent by Top Plus itself, whilst the letter dated 14 May 2014 was sent by Top Plus’ external lawyers. The 24th Letter of Demand, a letter dated 14 January 2019 (January 2019 Demand), was correctly addressed and was sent by Top Plus’ external lawyers. There is no explanation why 23 Letters of Demand were sent to an incorrect address.
In the circumstances, I am not reasonably satisfied on the evidence that any of the 23 incorrectly addressed Letters of Demand were received by the respondents or either of them. I am satisfied that the correctly addressed January 2019 Demand was received by Mix Entertainment (on the postal acceptance rule), and that the respondents were by that date on notice of the allegations of infringement, and the consequence of continuing their activities in relation the KMV Films without licence after notice.
Notwithstanding the above issues with the 23 incorrectly addressed Letters of Demand, I consider that the facts of the parties’ entry into the 2012 Agreement, the terms of that Agreement, and Mix Entertainment’s obligations upon expiration of the 2012 Agreement sufficient to establish that the respondents were aware, or at least had reasonable grounds for suspecting, that continuing to make the KMV Films available to their customers after the 2012 Agreement had expired were acts that would constitute copyright infringement.
Whilst the fact that 23 Letters of Demand were sent to an incorrect address does not affect my ability to find that copyright has been infringed (as I have found), it is relevant to my consideration of the appropriate relief for the infringement, including any award of additional damages, as I address below.
Authorisation of infringement
Section 101(1A) of the Copyright Act provides:
(1A)In determining, for the purposes of subsection (1) [set out above in these reasons at [61]], whether or not a person has authorised the doing in Australia of any act comprised in a copyright subsisting by virtue of this Part without the licence of the owner of the copyright, the matters that must be taken into account include the following:
(a)the extent (if any) of the person’s power to prevent the doing of the act concerned;
(b)the nature of any relationship existing between the person and the person who did the act concerned;
(c)whether the person took any other reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.
Sections 101(1) and (1A) of the Copyright Act are in substantially the same terms as ss 36(1) and 36(1A) of the Copyright Act. I set out the relevant legal test for authorisation under ss 36(1) and ss 36(1A) of the Copyright Act in Microsoft Corporation v CPL Notting Hill Pty Ltd (No 7) [2022] FedFamC2G 590 at [676]. It is convenient to adopt what I said there:
[676] As to the legal test of authorisation under the Copyright Act, and noting, relevantly to infringement under s 36, the matters that must be taken into account in determining authorisation under s 36(1A):
(a)generally, to ‘authorise’ is to ‘sanction, approve or countenance’: University of New South Wales v Moorhouse(1975) 133 CLR 1 at 20-1. The power to prevent the conduct may be a necessary condition for authorise, but it may not be a sufficient condition: Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366; 110 IPR 82 at [391]-[393] (Beach J);
(b) a director or other officer of a company can be considered in some circumstances to ‘authorise’ the relevant conduct separate to that of the company, but a director merely by their position alone cannot be said to authorise: Inverness Medical Switzerland GMBH v MDS Diagnostics Pty Ltd [2010] FCA 108; (2010) 85 IPR 525 at 569-570 [200]-[202]. It is necessary to show actions of the director that demonstrate that they sanctioned, approved or countenanced the acts: see also, Moorhouse at 12-13; Streetworx at [393];
(c) engaging or personally participating in relevant acts of infringement coupled with the power to prevent may be sufficient to demonstrate such sanctioning, approval or countenancing. Personally directing the acts which constitute infringement may establish authorisation, although something less than that may be sufficient: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (1998) 42 IPR 111 at 129; Streetworx, at [393]; Campaigntrack Pty Ltd v Real Estate Tool Box [2022] FCAFC 112, [262]‑[270];
(d) a director cannot be said to have authorised an infringement by reason of their position of being a director, if they neither knew nor had reason to suspect that the act constituted the infringement might be done: Moorhouse at 12-13. A director does not authorise an infringement by reason of mere knowledge and a failure to act to prevent the infringement: Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587 at [119]; citing Nominet UK v Diverse Internet Pty Ltd [2004] FCAFC 1244; (2004) 63 IPR 543 at [129];
(e)no intention to infringe, or knowledge that the relevant acts would be likely to infringe is necessary. The question is whether the director knowingly pursued a course of conduct which, judged objectively, led to infringement or was likely to constitute infringement or reflected indifference to the risk of infringement: JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; (2016) 116 IPR 440[344] (discussing Inverness), but see at [354]-[361].
The applicants in this proceeding rely principally on Moorhouse, in which the High Court unanimously held that the University library had authorised the infringement of copyright by allowing coin‑operated photocopying machines within its premises to be used for the purpose of making infringing copies of a literary work, notwithstanding that it had no prior knowledge of the infringements taking place. The applicants emphasise certain passages within that decision, at 20‑21 (as emboldened):
…Where a general permission or invitation may be implied it is clearly unnecessary that the authorizing party have knowledge that a particular act comprised in the copyright will be done.
...…There was no express permission given to [the person photocopying] but the real question is whether there was in the circumstances an invitation to be implied that he, in common with other users of the library, might make such use of the photocopying facilities as he thought fit. The question may be examined by assuming first a library open to all persons either freely or on payment of a fee. Assume that the owner places copying machines in the library which can be operated on payment of a fee whereby a profit accrues to the owner of the library. Is this not an invitation to any user to make such use of the machines as he sees fit and therefore an invitation which extends to the doing of acts comprised in the copyright of authors whose books are on the library shelves? And is not such an invitation an authorizing of acts done in response to the invitation? I would certainly answer "Yes". The invitation to use is on the face of it an unlimited invitation. Authorization is given to use the copying machine to copy library books. It can hardly be said that the authorization is limited to the copying only of those books or parts of books which in the particular circumstances may be copied without infringement of copyright. In such a case knowledge of the prior doing of acts comprised in the copyright would not need to be proved nor would other positive or particular acts of invitation or authorization need to be shown.
The emphasised passages, read in light of the more recent authorities referred to in my exposition of the legal test in the preceding paragraph above, are applicable to the present circumstances of the respondents.
The applicants submit, and I accept, that the evidence of the 2012 Agreement, and the evidence of Mr Chan, Ms Chow and Mr Wong, establishes that:
(a)Mix Entertainment operates a business of hiring of rooms in its Premises for the purposes of facilitating karaoke performances;
(b)in the Infringement Period Mix Entertainment offered 13 rooms for hire;
(c)Mix Entertainment has caused to be placed in each of the rooms a karaoke machine for that purpose;
(d)members of the public are invited to hire the karaoke rooms for limited periods;
(e)members of the public are required to pay a hire fee to Mix Entertainment;
(f)in return, members of the public who hire the rooms are permitted to make use of the karaoke machine located in the room, including to cause one or more of the KMV Films to be seen and heard in public and also be communicated to the public by transmission to the karaoke television screens; and
(g)in at least 10 instances evidenced by the Infringement Examples (KMV Films and items of Footage), Mix Entertainment did each of the above identified in sub‑paragraphs (a)‑(f), in respect of the Infringement Examples.
Having regard to the matters set out in s 101(1A) of the Copyright Act, I am satisfied that:
(a)Mix Entertainment, as operator of the business at the Premises, had the power to prevent the doing of the infringing acts by its customers by deleting or otherwise preventing access to any local copies of the KMV Films from its karaoke systems after the 2012 Agreement expired, and thereafter also not to make available copies of more recent KMV Films released;
(b)the relationship between Mix Entertainment and each of its customers who hires a room for karaoke entertainment is a commercial relationship of supplier of entertainment, specifically karaoke entertainment for karaoke performances, and the consumer or user of karaoke;
(c)there is no evidence that Mix Entertainment took any steps to prevent or avoid the infringements. Reasonable steps could have included Mix Entertainment removing from its karaoke systems at the Premises any unlicensed karaoke music videos, including the KMV Films following the expiration of the 2012 Agreement (as set out in Clause 16 of the 2012 Agreement, and as I have said above), or obtaining further licences from Top Plus.
I am satisfied that Top Plus was prepared to license Mix Entertainment to continue using the KMV Films on the terms and for the licence fees set out in the Information Kits, and as per the terms of the 2012 Agreement. I consider that Mix Entertainment had the ability to prevent infringements from occurring after the expiration of the 2012 Agreement by entering into further licence agreements with Top Plus. Obtaining and performing the obligations of a further licence from Top Plus would have rendered any performance, transmission and reproductions of KMV Films in the course of its conduct of its karaoke business non‑infringing.
Applying the relevant principles for summary judgment, I am also satisfied that Mr Wang is responsible for the conduct of Mix Entertainment. I consider that his execution of the 2012 Agreement as sole director of Mix Entertainment, in the circumstances where the 2012 Agreement resolved earlier disputes about Mix Entertainment’s alleged infringement of copyright in the KMV Films, and by reason of his majority shareholding in the company sufficient in this case to satisfy me that he is responsible for the company’s ongoing infringing conduct and that he had the power to prevent Mix Entertainment’s activities and thus its authorisation of customers infringement of copyright in the KMV Films at the Premises.
For the above reasons, I am satisfied that each of Mix Entertainment and Mr Wang have infringed copyright in the KMV Films, and specifically, the 10 Infringement Examples.
Relief
As I have identified above, on the Application the applicants seek the following relief against the respondents:
(1)declaratory relief in respect of the 10 Infringement Examples;
(2)permanent injunctive relief restraining the respondents from engaging in further infringements of copyright subsisting in each of the KMV Films;
(3)orders for delivery up or destruction of all infringing copies of any KMV Film in the respondents’ possession, power, custody or control, or, at the applicants’ election, permanent deletion of the same;
(4)compensatory damages pursuant to section 115(2) of the Copyright Act;
(5)additional damages pursuant to section 115(4) of the Copyright Act;
(6)pre-judgment interest; and
(7)costs.
Declaratory relief
The applicants first seek a declaration that the respondents have infringed the 10 specific Infringement Examples. Further to my conclusions above, applying the summary judgment provisions and principles, and on the evidence read on this Application, I am satisfied that it is appropriate to make a declaration in the terms sought.
Permanent injunction
The injunctive relief sought in the Application encompasses the KMV Films, that is, the entire catalogue of KMVs owned and controlled by Universal Music from time to time, including as contained in the Spreadsheet.
The granting of an injunction under s 115(2) of the Copyright Act is discretionary. Matters that are relevant to the exercise of the discretion include the period over which the infringing conduct has taken place, the flagrancy of the infringement and other matters which prevent the Court from being satisfied that there is no substantial risk the respondents will again infringe copyright: Australasian Performing Right Association v Escape Bar & Night Club [2017] FCCA 2690 at [48].
I have found that the respondents have been aware at least since 2012 of Top Plus’ rights as exclusive licensee of the KMV Films, and that in the Infringement Period they have infringed the copyright in the Infringement Examples by authorisation. They have continued to exploit the copyright in the KMV Films after the expiration of the 2012 Agreement knowing of its terms and Mix Entertainment’s obligations under the Agreement, and they continued to do so after being put on express notice by the January 2019 Letter of Demand.
Further, the respondents have failed to engage in any meaningful sense in this proceeding. In these circumstances I am satisfied that without an order of the Court restraining the respondents from further unlicensed conduct there is a likelihood they will continue to infringe the applicants’ rights in the KMV Films, and that there is a continuing likelihood of damage, being at least, the non‑payment of licence fees. I am satisfied that it is appropriate to order permanent injunctions in the terms sought.
Delivery up, destruction or deletion
The applicants submit that delivery up, destruction or deletion of the KMV Films is justified because the respondents have continuously had disregard for the applicants’ copyright over an extended period despite repeated invitations being made by Top Plus to enter into licensing arrangements. Further, apart from Mix Entertainment’s appearance at the first Court date, neither of the respondents have taken an active part in the proceeding. Both the respondents have failed to comply with the Court’s procedural orders, which the applicants submit infers a likelihood that the respondents are unlikely to comply with any injunction ordered by this Court. In the exercise of my discretion, I am satisfied that it is appropriate to order the destruction and permanent deletion of all infringing copies of the KMV Films in the possession, power, custody or control of the respondents in order to protect the applicants from any further infringements in the future. In the circumstances I am not prepared to order, at Top Plus’ option, the alternative of delivery up.
Compensatory damages – s 115(2) of the Copyright Act
Section 115(2) of the Copyright Act provides:
(2)Subject to this Act, the relief that a court may grant in an action for an infringement of copyright includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits.
An award of damages under s 115(2) of the Copyright Act is compensatory and designed to put the copyright owner, or in this case the exclusive licensee, in the position that they would have been in if the infringement had not occurred. In the present case the applicants seek an order that the respondents pay Top Plus compensatory damages pursuant to s 115(2) of the Copyright Act on a “lost licence fee” basis.
I have found that Mix Entertainment operated 13 rooms for karaoke hire in each year of the Infringement Period. The standard Information Kits sent out by Top Plus are in evidence through Mr Chan. They evidence the annual per room licence fee nominated by Top Plus under its standard licensing regime for the KMV Films in each of the years of the Infringement Period.
The applicants in their submissions calculate the s 115(2) Copyright Act compensatory damages Top Plus seeks by reference to the per room, per year licence fee disclosed in its Information Kits for the relevant year and published on Top Plus’s website, and the number of rooms Mix Entertainment offered for hire for karaoke entertainment in the Infringement Period, as follows:
Table 2 – Licence Fees
Year Licence fee
(per room, per year excl GST)
No. of rooms Licence fee payable 2013
(one month)
$2,200.00 13 $2,383.33** 2014 $2,000.00 13 $26,000 2015 $1,500.00 13 $19,500 2016 $2,500.00 13 $32,500 2017 $2,600.00 13 $33,800 2018 $2,700.00 13 $35,100 2019 $2,800.00 13 $30,333.33 Total (excluding GST) $179,616.70 ** In the above table, the calculation in the 2013 year is for the one month of December 2013 falling within the Infringement Period. It is calculated by reference to the per room licence fee for the 2013 year multiplied by 13 (for the 13 rooms Mix Entertainment offered for hire), and divided by 12 (for the one month of 2013 the beginning of the Infringement Period to 31 December 2013): thus, ($2,200 x 13) x (1/12) = $2,383.33.
I am satisfied that it is appropriate to adopt a lost licence fee approach for s 115(2) damages in this case. This is the same approach I adopted in Hairy Little Sista. I am satisfied on the evidence that that licence fee is the gross licence fee (excluding GST) that Top Plus would have granted a licence for each year. There is a lacunae in the applicants’ evidence, in that there is no evidence before me of what licence or other fees Top Plus paid or is required to pay Universal Music under the Licence Agreements further to any sub‑licence it granted. Universal Music is not seeking however, any damages or other pecuniary relief. In the present circumstances, I am prepared to accept the gross licence fee (excluding GST) Top Plus seeks as its lost licence fees. By reference to the applicable licence fees nominated in the Information Kits, by way of compensatory damages I award the sum of $179,616.70 under s 115(2) of the Copyright Act. I will make orders that the respondents jointly and severally pay to Top Plus by way of damages under s 115(2) of the Copyright Act the sum of $179,616.70.
Additional damages – s 115(4) of the Copyright Act
The applicants’ seek orders that additional damages pursuant to s 115(4) of the Copyright Act in the sum of $150,000.00 be paid by the respondents to Top Plus.
Section 115(4) of the Copyright Act provides:
(4)Where, in an action under this section:
(a)an infringement of copyright is established; and
(b)the court is satisfied that it is proper to do so, having regard to:
(i)the flagrancy of the infringement; and
(ia)the need to deter similar infringements of copyright; and
(ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and
(ii)whether the infringement involved the conversion of a work or other subject‑matter from hardcopy or analog form into a digital or other electronic machine‑readable form; and
(iii)any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv)all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
The award of additional damages is discretionary. In order to receive an award of additional damages under s 115(4) of the Copyright Act, a party must first be awarded compensatory damages under s 115(2) of the Copyright Act. As I have found that Top Plus is entitled to an award of compensatory damages under s 115(2) of the Copyright Act on a lost licence fee basis for the Infringement Period, it is open to me to award Top Plus additional damages pursuant to s 115(4) of the Copyright Act.
I set out the relevant principles governing the award of additional damages in Microsoft at [717]‑[721] as follows (correcting a typographical error in [718]):
[717]The principles related to additional damages are set out in many cases in the Federal Court and relied on and applied intellectual property proceedings in this Court, inter alia, by me in Henley Arch v Del Monaco [2019] FCCA 3848 at [102]‑[105]. I have found useful the discussion of such damages in the decision of Bromwich J (and the decisions to which he refers) in Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd (No 5) [2017] 122 IPR 279 at [74].
[718]In sum, the following principles may be summarised from the authorities. First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages. Secondly, an award of additional damages involves an element of penalty. Thirdly, part of the [function] of an award of additional damages is to mark the Court’s disapproval or opprobrium of the infringing conduct. Fourthly, the matters set out in sub-s 115(4)(b) of the Copyright Act are not preconditions to an award of such damages. Fifthly, conduct that may properly be seen as flagrant (per s 115(4)(b), Copyright Act) includes conduct which involves a deliberate and calculated infringement, a calculated disregard of an applicant’s rights, or a cynical pursuit of benefit.
[719]In Henley Arch I noted at [104] to [105]:
[104]Perram J in Halal Certification Authority v Scadilone Pty Limited [2014] FCA 614; (2014) 107 IPR 23, observed that if additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law. Further, as Bromwich J in Geneva observed, at [80] (referring to Truong), specific deterrence has a role to play, including general deterrence.
[105]It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. I adopt what Bromwich J said in Geneva at [82]:
[82] Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future-looking considerations of specific and general deterrence.
His Honour continued at [83]:
[83] …it might be said that it is important to make sure that it is seen to be simply “not worth the candle” for anyone else to engage in such conduct in the future…
[720]A key consideration when deciding to exercise the discretion afforded to the Court under s 115(4) of the Copyright Act is whether the infringement was flagrant (see above, fifth noted principle). As noted by Beach J in Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217; 120 IPR 137 at [244] (citations omitted):
[244] …in this context flagrancy means more than copying. It also means more than mere mistakes or carelessness. It connotes reprehensible conduct or scandalous conduct which may be demonstrated by deliberate and calculated acts of infringement. But it is not necessary to demonstrate a consciousness of copyright infringement. A consciousness of wrongdoing may be sufficient.
[721]In Truong Giang Corporation v Quach [2015] FCA 1097; (2015) 114 IPR 498, discussing the relevant principles in the trade mark context, applicable also to the copyright context, per s 115(4)(b)(ib), Copyright Act) Wigney J said at [138]-[139]:
[138]Sixth, post-infringement conduct within s 126(2)(c) of the [Trade Mark Act 1995 (Cth) (TM Act)] is unlikely to include the respondent’s conduct of the infringement proceedings. Such conduct is more relevant to the appropriate order as to costs. That said, it is difficult to see why some aspects of the conduct, by a respondent, in defence of infringement proceedings, might not be relevant to the award of additional damages. Conduct of the proceedings which involved high-handedness, dishonesty, recalcitrance, or flagrant disregard of, or deficiencies in compliance with, discovery orders or notices to produce, might, at the very least, suggest a greater need for an award of additional damages that would deter future infringing conduct by the respondent.
[139]Seventh, an award of additional damages can encompass damages which, at common law, would be aggravated or exemplary damages. The matters specified in s 126(2) of the TM Act are of a kind which are taken into account in determining whether a party is entitled to aggravated or exemplary damages at common law, but in the end result the damages to be awarded are not aggravated or exemplary damages, but additional damages, being of a type sui generis.
The applicants submit, and I accept, that by Mix Entertainment entering into the 2012 Agreement it can be inferred that it thereby acknowledged the existence of Top Plus’ exclusive rights, at least for the period up to the expiration of the 2012 Agreement.
The applicants also submit that the respondents have shown contumelious disregard of Top Plus’s exclusive rights for the whole of the Infringement Period as they failed to provide a single response to any of the Letters of Demand. As I have stated above, however, I am not satisfied that all the Letters of Demand were received by the respondents, or either of them.
While the amount of additional damages is uniquely a matter for the Court, the applicants have indicated a range of additional damages that have been awarded in other decisions of this Court and in the Federal Court of Australia. The applicants submit that an award of $150,000.00 by way of additional damages would not be inconsistent with the cases to which they referred, in particular Hairy Little Sista, which they say bears a number of factual similarities to this proceeding.
Hairy Little Sista was a copyright case where the Court found that the respondents had acted in contumelious disregard of copyright by their unauthorised use of sound recordings over a 6 year period. The evidence established that prior to the commencement of the proceeding one or other of the respondents had received numerous forms of correspondence from the first applicant, including some 20 letters and 18 emails notifying them of the requirement to hold a licence if they played any of the subject sound recordings at the venue. In addition, the first applicant had contacted the second respondent director over 40 times by telephone. The evidence included several telephone conversations between the applicants’ witness and the second respondent about the requirement to be licensed.
In the present case, however, the evidence falls short of establishing that after the expiration of the 2012 Agreement and prior to the January 2019 Demand, Top Plus had expressly and repeatedly put the respondents on notice of its claims of infringement, and that the respondents repeatedly ignored those notices. Further, Top Plus relies on the terms of the 2012 Agreement in circumstances where it is not apparent that Top Plus ever communicated any election under clause 16, nor (apart from the incorrectly addressed Letters of Demand) followed up to ensure Mix Entertainment complied and continued to comply with its continuing obligations after expiration of the 2012 Agreement. There is no evidence of the level of personal engagement by Top Plus personnel with the respondents by telephone as was the case in Hairy Little Sista, nor by personal attendance, or personal service. There is no evidence from which I consider I can infer that notwithstanding Letters of Demand were sent to an incorrect address, they were received and ignored. I consider the circumstances of the present case factually different to those in Hairy Little Sista.
As the authorities make clear, however, an award of additional damages involves an element of penalty, and functions to express the Court’s disapproval of the infringing conduct, and to operate as a deterrent. An award thus seeks to deter future infringements by the respondents, and to inform the respondents and third parties inter alia that the Court disapproves of such conduct. In the present case, the respondents’ lack of respect for Top Plus’ exclusive rights in the KMV Films since the 2012 Agreement expired, the continuance of infringing conduct after being put on express notice by the January 2019 Demand – see the October 2019 Infringement Example in Table 1, and the lack of continued engagement with the proceeding are all matters I consider relevant.
Whilst there is no evidence of continued infringement after the commencement of the proceeding, the respondents have not put on any defence, or any evidence that they ceased infringing upon being sued or otherwise explaining their conduct. Taking all of the evidence into account, I consider that an award of additional damages in the sum of $90,000.00 payable by the respondents jointly and severally is appropriate, and I will so order.
Pre‑judgment interest
The applicants also seek pre‑judgment interest pursuant to s 76 of the FCCA Act (now s 211 of the FCFCOA Act). Relevantly, ss 211(2) and (3) of the FCFCOA Act provide:
Application for interest order
(2)A party to proceedings that are:
(a)in the Federal Circuit and Family Court of Australia (Division 2); and
(b)for the recovery of any money (including any debt or damages or the value of any goods) in respect of a particular cause of action;
may apply to the Court or a Judge for an order under subsection (3).
Interest order
(3)If:
(a)an application is made under subsection (2); and
(b)the Federal Circuit and Family Court of Australia (Division 2) or the Judge is not satisfied that good cause has been shown for not making an order under this subsection;
the Court or the Judge must either:
(c)order that there be included in the sum for which judgment is given interest at such rate as the Court or the Judge thinks fit on the whole or any part of the money for the whole or any part of the period between:
(i)the date when the cause of action arose; and
(ii)the date as of which judgment is entered; or
(d)without proceeding to calculate interest in accordance with paragraph (c), order that there be included in the sum for which judgment is given a lump sum in lieu of any such interest.
The applicants submit that there is no evidence before the Court upon which it might be satisfied that good cause has been shown for not making an order under s 211 of the FCFCOA Act.
The applicants further submit that it would be appropriate to take a similar approach to that taken by the Court in Henley Arch at [96]‑[97], where I awarded interest at the Federal Court scale starting from the date that the respondent received the applicants’ letter of demand. The applicants submit, and I accept, that the January 2019 Demand put the respondents clearly on notice that the applicants were thenceforth claiming lost licence fees in respect of the whole of the period of infringement available to them, subject to the limitation of the period pursuant to s 134 of the Copyright Act.
The applicants identify that (unlike in Henley Arch), the January 2019 Demand was sent by post and therefore it would be reasonably open to the Court to adapt the approach I took in Henley Arch by awarding interest at the then current Federal Court scale of 4.25 per cent, commencing 28 January 2019 – two weeks after the date of the January 2019 Demand (again noting the application of the postal acceptance rule).
I accept the applicants’ submission. I will order interest on the sum of $179,616.70 awarded pursuant to s 115(2) Copyright Act at the scale of 4.25% commencing on 28 January 2019, to the date of judgment on 23 November 2022. This is a total of $29,175.41 of pre‑judgment interest. Interest does not accrue on additional damages awarded under s 115(4) Copyright Act.
Costs
The applicants seek an order for costs. The applicants submit that in view of the extended period and flagrancy of the respondents’ infringements, it would be appropriate for the Court to make an ‘otherwise order’ under r 21.10 of the Rules (now r 22.09 of the GFL Rules) for the applicants’ costs to be taxed in accordance with r 21.11 of the Rules (now r 22.10 of the GFL Rules).
Aside from the Letters of Demand the applicants have not put on evidence that the conduct of the respondents in the proceeding or the complexity of the proceeding, or of any other matters that in my view could support an order that the applicants’ costs be taxed under the Federal Court scale. The applicants have not put any evidence as to the quantum of their costs. I am not persuaded that it is appropriate to make an otherwise order that the applicants’ have their costs taxed under the Federal Court scale: cf rr 22.09 and 22.10 of the GFL Rules.
In the alternative, the applicants submit it would be appropriate for the Court to award costs by reference to the scale set out in Part 1 of the Schedule 1 of the Rules (now set out in Schedule 2 Part 1 of the GFL Rules). Updating the applicants’ calculation of these scheduled costs with the current amounts specified in Schedule 2 as at the date of these reasons, the costs Top Plus seeks are as set out in the following table:
Table 3 – Schedule 2 relevant costs and disbursements
Item Description Event Amount (including GST) 1 Initiating or opposing an application up to the completion of the first court date Initiating application up to completion of first court date on 11 December 2019 (short mention) Both:
(a) $3,147; and
(b) The daily hearing fee mentioned in item 9 that applies to the hearing ($321).
= $3,468.00
3 Interim or summary hearing as a discrete event
Note: This stage applies to an interim application or a summary proceeding of a type not otherwise addressed in this fee structure. It does not include item 1 or 2 component.
Hearing on 14 April 2020 seeking orders for substituted service (short mention) Both:
(a) $1964; and
(b) The daily hearing fee mentioned in item 9 that applies to the hearing ($321).
= $2,285.00
10 Advocacy loading Advocacy loading for hearing on 14 April 2020 seeking orders of substituted service (above in item 3) 50% of the daily hearing fee mentioned in item 9 that applies to the hearing
= $160.50
11 Disbursements – Court fees and other fees and payments to the extent that they have been reasonably incurred Filing of originating application The amount of the fees and payments = $1,625.00 Application in a case for summary judgment The amount of the fees and payments
= $1000.00
Total $8,538.50
The applicants submit that it was reasonable for an advocate to be employed at the telephone hearing on 14 April 2020 seeking orders for substituted service, and they seek a certification pursuant to r 21.16 of the Rules (now r 22.15 of the GFL Rules) accordingly. As it is determined on the papers, the applicants do not seek any costs in respect of a hearing of this Application.
Discussion
I consider that it was reasonable for an advocate to be employed at each of the first court date and also the hearing on 14 April 2020 seeking substituted service (noting that this results in a further sum of $160.50 in addition to the total in Table 3). I certify accordingly pursuant to item 10 of Schedule 2.
Notwithstanding [119] above, I am persuaded, having regard to the Application, the affidavit evidence relied upon, including affidavit of service (Marshall 2), and the advocacy evident in the applicants’ submissions for summary judgment, that it is appropriate to make ‘an otherwise order’ in respect of certain costs that it is apparent have been incurred in respect of the Application and to award an amount of costs equivalent to Schedule 2 item 3, being (a) $1,964.00, and (b) $1,178.00 (as a half day hearing per item 9) being a total of $3,142.00. This amount is in addition to the costs sought pursuant to Schedule 2 as set out in Table 3, to which I also add the advocacy loading fee for the two Court dates.
I otherwise consider it appropriate to order costs in accordance with Schedule 2 pursuant to items 1, 3, and 11 in the table in [119] above. The total costs that I will order the respondents pay are the total of $11,841.00 (comprising $8,538.50 + $160.50 + $3,142.00).
Disposition
I have concluded that the applicants have established their claim and that the Application should be allowed. For the reasons I have set out above I have concluded that it is appropriate to make declarations, order permanent injunctions and make other orders, and award damages and additional damages, pre‑judgment interest and costs.
I certify that the preceding one hundred and twenty-five (125) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 23 November 2022
Table 1
| Second Applicant’s Cinematograph Film | Evidenced Infringement | |||
| Universal Music’s KMV Code (catalogue number) | Song name (‘English Pinyin’) | Song name (‘Original’) | Artist (‘Original’ and ‘English Pinyin’) | Date performed at Premises as evidenced in the Footage |
| 9204151 | Wen Hao | Agajiang Hai Jia | 23 November 2013 | |
| 9204200 | Different Man | Different Man | Wu Jian Hao | 14 November 2014 |
| 9204154 | Everyone | Everyone | MR. | 6 November 2015 |
| 9204161 | Hei Se Huan Mi[1]/ Hei Se Kuang Mi[2]/ Hei Se Kuan Mi[3] | MR. | 6 November 2015 | |
| 9204168 | Zuo Tian | MR. | 21 November 2016 | |
| 9204234 | Shi Jian You Lei | Zhang Xue You | 9 November 2017 | |
| 9206680 | Ke | Sun Yan Zi | 9 November 2017 | |
| 9204299 | Zhe Yi Lu Zou Lai | Yang Zhong Wei | 21 December 2018 | |
| 9206698 | Ku Gua | Chen Yi Xun | 21 December 2018 | |
| 9206711 | Yes & No | Yes & No | Zhang Jing Xuan | 7 October 2019 |
[1] ‘English Pinyin’ transliteration used in the Inspection List for 2015, a copy of which is in the Claim
[2] ‘English Pinyin’ transliteration used in the Inspection List for 2016, 2017, 2018, and 2019
[3] ‘English Pinyin’ transliteration used in the Inspection List in the Application
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